Claim differentiation does not broaden claims beyond their meaning in light of the patent as a whole

Federal CircuitPoly-America, L.P. v. API Industries, Inc., 2016-1200, 2016 U.S. App. LEXIS 18486 (Fed. Cir. Oct. 14, 2016) (Before Prost, Hughes, and Reyna, C.J.) (Opinion for the court, Reyna, C.J.)

Poly-America sued API Industries, Inc. (API) for infringement of a patent for a trash bag with “short seals” at its upper corners that extend inwardly to narrow the bag’s upper opening. On appeal, the Federal Circuit analyzed the district court’s claim construction de novo and considered Poly-America’s arguments that the district court imported limitations from embodiments in the specification, misread the prosecution history, and ignored principles of claim differentiation.

The Court focused on whether the inventor had disclaimed trash bags with short seals that do not extend inwardly to narrow the upper opening width. The Court reiterated that the standard for such disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention does or does not include a particular feature – although a disavowal need not be explicit.

Disavowal can occur when the specification plainly describes “the present invention” as having that feature. Here, the specification states that an important characteristic of the present invention is a “reduction in upper width … resulting from the extended short seals.” Disavowal can also occur when the specification distinguishes or disparages prior art based on a specified feature. The specification did that here, by stating that prior art bags are difficult to secure over trash receptacle lips and explaining how the described short seals solve this problem.

Finally, the Court considered whether the “inwardly extending” claim construction of “short seals” would render a dependent claim redundant or would implicate the principles of claim differentiation. The Court concluded that construing short seals to require inward extension would provide for a distance less than 100 percent of the bag width. This did not make the more specific range of the dependent claim redundant. Claim differentiation furthermore does not serve to broaden claims beyond their meaning in light of the patent as a whole, and it cannot override clear statements of claim scope found the specification and prosecution history.

Accordingly, the Court held that the patentee had clearly and unequivocally disavowed claims comprising short seals that do not extend inwardly, and it affirmed the district court’s claim construction.

Claim differentiation does not broaden claims beyond their meaning in light of the patent as a whole, and cannot override clear statements of claim scope found the specification and prosecution history.

About Troutman Sanders and the Federal Circuit Review

Founded in 1897, Troutman Sanders LLP is an international law firm with more than 650 lawyers practicing in 16 offices located throughout the United States and Asia. Each week, partners Joe Robinson and Bob Schaffer, succinctly summarize the preceding week of Federal Circuit precedential patent opinions. They provide the pertinent facts, issues, and holdings. This Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. IPWatchdog.com is pleased to publish these summaries each week.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently No Comments comments.