Claim Interpretation Should Include Disclosed Embodiments

Oatey v. IPS (Fed. Cir. 2008)

PatentLawPic179Oatey’s asserted claim is directed to a washing machine drain with “first and second juxtaposed drain ports.”  The patentee originally lost on summary judgment of noninfringement because the district court construed that element to require “two separate identifiable physical elements” and not simply a single divided drain port. Thus, the lower court agreed that the claim would cover the design showed in Figure 2 of the patent, but excluded the design shown in Figure 3.

PatentLawPic180On appeal, the CAFC reversed. Writing for a unanimous panel, Judge Newman held that absent disclaimer or estoppel, claims should normally be interpreted to include disclosed embodiments.

We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification. . . . At leas[t] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary.

Because there was no evidence of disclaimer or prosecution history estoppel, Judge Newman found that the claim must be given a broader construction.

Notes:

32 thoughts on “Claim Interpretation Should Include Disclosed Embodiments

  1. all I want to know is is Malcolm Mooney one or two (or more) people??? How come this person comments and then argues their own comment or answers their own question addressing themselves in the 3rd person?? That’s way more intriguing than the claim interpretation in my opinion…

  2. “I think Judge Newman’s claim construction was correct,”

    I agree, or at least I don’t have a reason to disagree.

    “Her choice of phrase was very unfortunate, but I don’t think she intended to create a new “doctrine.” This will get fixed when someone tries to rely on it”

    Eventually it will get fixed. Hopefully before some judge eats it up and screws somebody.

  3. Okay, Malcolm, since this case has you so exercised, I figured I would go back and look at it again. Turns out you’re mostly right. Judge Newman messed up – not in the reasoning or in the holding, but in how she stated it.

    When she said “We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification,” what she should have said, and what I think she meant was “We would require specific reasons to interpret a claim term (here, ‘first and second juxtaposed drain ports IN SAID BOTTOM WALL’) in such a way as to exclude an embodiment disclosed in the specification, when the specification clearly indicates that the disclosed embodiment illustrates that particular term.”

    That was the real issue here. The argument was whether the two openings could be “in the bottom wall” when one side of each opening was actually defined by a divider sticking up from the tailpiece. Fortunately for the patentee, the specification said “It should be understood that the test cap may be omitted and the obling opening, in combination with the tailpiece, may instead define the drain ports.”

    Frankly, I think Judge Newman’s claim construction was correct, and squarely within the spirit of Phillips. Her choice of phrase was very unfortunate, but I don’t think she intended to create a new “doctrine.” This will get fixed when someone tries to rely on it, because the “doctrine”, as you’ve expressed it, is so clearly wrong.

    Looking at the world through rose-colored glasses today,
    Leo.

  4. My 2 cents: This is a fascinating case, about Municipal Plumbing Codes. Does Fig 3 comply with the Code, or not? Up to the 1980′s, an outlet box for both of a washing machine and an air conditioner had a single drain in its bottom wall. Then the Code changed, prohibiting a common drain. So, Oatey built its 6 weld monstrosity. Belatedly, Oatey realised that a single drain would meet the requirements of the Code, provided one added a simple short plastic blade 72 down the middle of the single drain. Stroke of commercial genius, I’d say. What the case says about the brilliance of the definitions section in the Municipal Plumbing Code, I leave to others. Thinking of the bottom wall of my head, it has two pipes descending from it, one for air, the other for victuals. A bit like two separate drains, no? And no difficulty for anybody to distinguish between the two, because the two drains in my neck don’t drain together into the same common tailpiece. Newman was right, on Fig 3.

  5. “This has to do with the Doctrine of Express Disavowal of Claim Scope”

    Did you actually read the opinion?

    There was not “express disavowal of claim scope.” That is my point. That’s why Newman is wrong to introduce the issue in the first place. She even admits that “there was no issue of … disclaimer” in the case. Then why cite the cases?

    This was a simple case of claim construction and applying that construction to an infringing device. Read Newman’s summary of the lower court’s reasoning. There’s nothing shocking there. This was a case where the CAFC simply decided that its interpretation was better than the lower courts so it substituted its interpretation.

    There’s nothing “wrong” with that. That’s what appellate courts do sometimes. As I wrote upthread, after I put my glasses on and can see that divider in the drain pipe I don’t have a fault with either conclusion.

    What’s “wrong” is to pretend that there is some “doctrine” of “including all embodiments” that supports doing what Newman does here and there simply isn’t.

    It is simply false and wrong to state, as Newman does, that “We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.” Claims are interpreted in ways that exclude embodiments routinely. It is the abnormal situation where a claim is interpreted to includes every embodiment in the specification.

    Likewise, it is simply false and wrong to cite those cases as support for what Newman is doing here. This isn’t a question of choosing between two constructions of a disputed term, where one of the two constructions is at odds with all the Examples in a claim or fails to capture a specific embodiment that is plainly the focus of the application.

    Here, the court’s construction simply distinguishes between two embodiments that are indisputably different, where neither is described in the spec as being especially preferred. In the abstract, how can such a construction possibly be “abnormal” or “wrong” per se????? But Newman tells us that it is.

  6. Phew! I am glad some of you have taken the time to read this case. I could not believe that Newman could have been as far of as the above summary made her sound.

  7. “And the next time I read the word “dictionary” in a discussion about claim construction, I’m going to swear off patents forever. Next to poetry penned by angsty high-school students, the dictionary is the single worst reference for claim construction.”

    For some, like examiners posting on this site, it’s the only reference for claim construction.

  8. juxtaposed = side by side
    a port = an opening or hole

    Further evidence that you didn’t read the opinion. The main issue was which piece(s) define the two ports.

    And lo!, the patentee clearly spelled out how the two ports can be defined in the specification! His agent/attorney did a good job! But enough about that, let’s penalize them based on some knee-jerk definitions we can make up (maybe with the help of a dictionary).

  9. “Do you see the Doctrine of Interpreting Claims to Include All the Embodiments in Phillips?”

    Oh no, the sky is falling! Your statement does not equate to the statement in the opinion:

    “We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.”

    Seems perfectly reasonable: patentee gets the benefit of the doubt and is not bound by whims of grammar mavens.

    Seriously, given this fact situation how could it possibly be fair to ding the patentee for some strained interpretation of the claim?

    If I didn’t know any better, I’d say you saw Newman’s name and commented without reading the opinion. You may as well have just posted “first” and got on with reading the opinion.

    And the next time I read the word “dictionary” in a discussion about claim construction, I’m going to swear off patents forever. Next to poetry penned by angsty high-school students, the dictionary is the single worst reference for claim construction.

  10. MM,

    What a “softball” to respond to. Phillips is the wrong case to cite, except for the general rules on claim construction, including intrinsic evidence (claims, patent spec and prosecution history) usually comes before extrinsic evidence (such as dictionaries).

    Go see the Oatey opinion at pages 8-9, especially the Verizon, Invitrogen and Vitronics cases cited ther. This has to do with the Doctrine of Express Disavowal of Claim Scope, which Newman didn’t just make up (she knows far more than you’ll ever know about claim construction) and which normally means claims shouldn’t be interpreted to exclude exemplified embodiments unless the applicant makes a clear and express disavowal of them. Note that Newman was also careful to point out those cases where there was an express disavowal.

    Again, you complete ignorance of patent law, and especially proper claim construction, could fill volumes. Enough said, out.

  11. “Your complete ignorance of patent law, and especially proper claim construction, could fill volumes”

    All anyone needs to know about proper claim construction can be found in this case we call Phillips. Do you see the Doctrine of Interpreting Claims to Include All the Embodiments in Phillips? If you do, please provide the citation.

  12. “Face it, as Claims in Light of Specification correctly shows, Newman is absolutely right and you’re are absolutely wrong, as anyone the least skilled in patent law would know.”

    LOL! Of course Newman is “right” — she just created the Doctrine of Interpreting Claims to Include All Embodiments. Judge-made law. Enjoy.

    When a subsequent CAFC case goes out of its way to note that no such doctrine exists, then Newman will be (ahem) wrong.

    Let’s wait and see, shall we? I give it one year, two years max, before that happens. It’ll take some time while patentees try broadening their claims with Newman’s new doctrine before the smackdown arrives.

  13. MM,

    Face it, as Claims in Light of Specification correctly shows, Newman is absolutely right and you’re are absolutely wrong, as anyone the least skilled in patent law would know. Your complete ignorance of patent law, and especially proper claim construction, could fill volumes. And I’ll leave it at that.

  14. Juxtaposed means whatever the inventor says it means. Fig. 3 showed ‘em juxtaposed. End of story. If the inventor wanted juxtaposed to mean what a dictionary says it means, then the inventor would have included that info in the specification as filed. Don’t be rewriting the specification with some after the fact dictionary definition. Inventor’s are allowed what they disclose – no more that what they disclose and certainly no less than what they disclose. The above poster who identified herself as “Claims in Light of Specification” got it right.

  15. Once again, one wonders whether US judicial eyes are open wide enough to follow jurisprudence at the EPO. Applicants at the EPO are forced to present a specification amended to be in strict confomity with the allowable claims. Otherwise, refusal beckons. So, if Fig 2 fits with the claim, but Fig 3 doesn’t, one has to clarify in the specn, before one gets a Notice of Allowance, whether Fig 3 is within the scope, or not.

    Doesn’t half save a bundle of trouble, after issue.

  16. “The “reasonable interpretation” included the embodiment and there was no evidence supporting an exclusion of the embodiment. Maybe the CAFC got the decision wrong, but I don’t think the principle stated is incorrect.”

    I believe the opposite is true. Why does there need to be evidence affirmatively excluding the embodiment? Every claim construction excludes some embodiments. Are they all suspect now because the court didn’t present “evidence” of why those embodiments should be excluded?

    Newman took a simple case of claim construction and tries to invent a new Doctrine of Including All Embodiments. What gives?

  17. “They should be interpreted based on the skilled artisan’s understanding of what the MEANING of the words in the claim, based on the claim language itself, the specification, and statements in the prosecution history.”

    That’s pretty much what the good judge said. The “reasonable interpretation” included the embodiment and there was no evidence supporting an exclusion of the embodiment. Maybe the CAFC got the decision wrong, but I don’t think the principle stated is incorrect.

  18. Dictionary.com teaches otherwise: to place close together or side by side, esp. for comparison or contrast.

    o well, my bad.

  19. I’m pretty sure juxtaposed, in it’s literal meaning as pertaining to object orientations, means side by side, sides touching. This could be my bad though as I have not studied the history of the term “juxtaposed”.

  20. “At [least] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to exclude that embodiment, absent probative evidence to the contrary.”

    Bogus. Claims should not be interpreted “to include” a “specific embodiment.”

    They should be interpreted based on the skilled artisan’s understanding of what the MEANING of the words in the claim, based on the claim language itself, the specification, and statements in the prosecution history. If a statement in the prosecution history or specification suggests that a particular term is drawn to a particular embodiment, then that fact can inform claim construction. But unless the specification discloses only a single embodiment, claims should NOT be interpreted so that they include every embodiment in the specification by default.

    At least this doctrine has never before been invoked to my knowledge.

    As for the last clause in the quoted statement: of course it is incorrect to “exclude embodiments” arbitrarily. Whoever said otherwise? Why introduce this sort of worthless garbage into the case law?

  21. By the way, in this case, he way the decision was “digested” may be a little misleading. The quote “We normally do not interpret claim terms in a way that exclude embodiment disclosed in the specification.” was in the recitation of the case law part of the decision. The main holding was:

    “At [least] where claims can reasonably [be] interpreted to include a specific embodiment, it is incrocrrect to exclude that embodiment, absent probative evidence to the contrary.” IPS cannot support its statement that the structure of Figure 3 was disclaimed or subject to prosecution history estoppel.”

  22. “And what I think is significant is that the specification seems to describe the embodiment of Figs 2/3 in such a way that it arguably meets the relevant limitation in the claims.”

    Correct. And if you read the entire specification, it’s pretty clear that the idea they were trying to claim, barring prosecution history estoppel to the contrary, was the idea of allowing two drain ports to share the common tailpiece. FIG. 3 shows one embodiment while FIG. 2 and 3 together show a second, indicating that the heart of the invention is probably shown in FIG. 3. As noted, the test cap 52 with the two separate circular openings may be omitted i.e. is optional.

    If the specification and prosecution history indicate the FIG. 3 was meant to be covered by the claims, then FIG. 2 would necessarily be covered by the claims since FIG. 2 is really just an “addition” to the embodiment of FIG. 3. And this argument is further supported by the existence of Claim 6 which claims the test cap and two openings (knockout portions) of FIG. 2:

    6. A washing machine outlet box as set forth in claim 5 wherein a test cap covers said elongated opening in said bottom wall of said housing, said test cap including a base portion containing two knockout portions which when removed form said first and second drain ports.

    Based on the specification, the drawings and the claims, it sure looks like “juxtaposed” refers to the embodiment shown in FIG. 3.

  23. What does “juxtaposed” have to do with whether or not they are separated by a dividing wall? Juxtaposed means that they are side-by-side. The more fundamental question is that the claim says there are TWO ports which are located “in the bottom wall”. And what I think is significant is that the specification seems to describe the embodiment of Figs 2/3 in such a way that it arguably meets the relevant limitation in the claims.

  24. Okay I put on my glasses and I can see the divider in that opening now. Still doesn’t address the unnecessary legal weirdness in the holding.

    “Also in the illustrated embodiment, the test cap 52 defines the drain ports 54 and 56.”

    That’s one embodiment.

    “However, it should be understood that the test cap 52 may be omitted and the oblong opening 50, in combination with the tailpiece 22, may instead define the drain ports 54 and 56.”

    That’s another embodiment.

    Two embodiments. The first where the “two juxtaposed drain ports” are separated by the “test cap” (basically a mask with two round holes in it) and the other where the two ports are separated by a dividing wall (72) in the drain.

    The issue is whether “juxtaposed” includes separation by a dividing wall. It’s a basic claim construction issue (the answer is “yes”)and should be resolved according to Phillips, NOT by creating some weird new doctrine (or misinterpreting an old one) like Newman does here.

  25. “That is not what she means. Figure 2 (above) is in the patent and plainly depicts the embodiment described by the language at issue here.”

    Nice to see that MM is so brilliant he can interpret how to read a claim without looking at the specification.

    First, FIG. 2 and FIG. 3 are of the same embodiment.

    From the specification:

    “FIG. 2 is a top plan view of the bottom wall of the box of FIG. 1 prior to the condensate clamp and the plumbing being installed;

    FIG. 3 is an enlarged top front perspective view of the washing machine outlet box of FIG. 1 prior to the condensate clamp and the plumbing being installed”

    Second, the specification clearly indicates that FIG. 3 shows a “two port” embodiment:

    Also in the illustrated embodiment, the test cap 52 defines the drain ports 54 and 56. However, it should be understood that the test cap 52 may be omitted and the oblong opening 50, in combination with the tailpiece 22, may instead define the drain ports 54 and 56. In either event, both of the drain ports 54 and 56 are sized to accommodate the washing machine drain hose 18 (e.g., each may have a two inch diameter) so that the hose 18 may be inserted into either opening depending on the plumbing arrangement.

    MM’s disregard for the facts continues unabated.

  26. I have to agree with MM here – I have not taken to time to read the case, but this decision as presented appears to be based upon a faulty premise.

    I find this hard to believe coming from Newman, one of the only CAFC jusges actually qualified to be there and the justice with the most consistently accurate opinions.

  27. “When Judge Newman says, “We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification,” I assume she means excluded from the entire patent, not just excluded from the particular claim in question.”

    That is not what she means. Figure 2 (above) is in the patent and plainly depicts the embodiment described by the language at issue here.

  28. I agree with the general sentiment of Malcolm Mooney’s comment at 2:47.

    My understanding of the general principle regarding claims and preferred embodiments is that courts usually don’t construe claims such that NO claims cover disclosed embodiments. I.e. if a patentee said “this embodiment is an example of my invention,” the court presumes that the embodiment is claimed somewhere in the patent. Malcolm is right to say, though, that it often happens that disclosed embodiments are covered by some claims and not others.

    But I don’t think it’s clear that Judge Newman meant to say anything different. When Judge Newman says, “We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification,” I assume she means excluded from the entire patent, not just excluded from the particular claim in question.

    That distinction isn’t relevant in a lot of cases, though. I didn’t see an argument in this case that the other independent claims covered the embodiment in question, but claim 1 doesn’t.

  29. “We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification”

    For the record: to the extent the above can actually be understood, it’s blatantly false. Claims are construed EVERY DAY in ways that exclude embodiments of the invention that are disclosed in the specification. This is as it should be because most claims are not intended to be so broad as to include every embodiment disclosed in the specification. Most claims are intended to disclose a portion of the disclosed embodiments. In part, this is due to restriction practice.

  30. Newman!!!!!!!!

    Oh. My. God.

    juxtaposed = side by side.
    a port = an opening or hole

    Let’s get this straight. Newman just held that a claim that plainly and unambiguously recites TWO side-by-side drain ports covers an embodiment with ONE port. Why? Because Newman just made up a new doctrine of claim construction that says that claims must be interpreted to cover EVERY embodiment in the specification unless it is unreasonable to do so (never mind that this would be a classic example of an instance where it is unreasonable to do so).

    Newman’s disregard for Phillips continues unabated. The bad joke is on everybody else. It’s garbage like this that renders “patent reform” meaningless.

    Thanks, Pauline.

    I hope the defendant files for en banc review and has this worthless decision thrown out on its rear end.

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