SRAM v. AD-II (Fed. Cir. 2006).
SRAM cases are always great because they involve interesting mechanical technology. This one involves a shift actuator for a bicycle derailleur. After claim construction, the district court granted summary judgment for SRAM and issued a permanent injunction against AD-II.
On appeal, AD-II argued that the lower court was too narrow in its construction, and that a proper broad construction of the claims would render them invalid. The CAFC agreed. Of note, during prosecution (and three reexamination proceedings) the PTO examiner construed the disputed term in the same fashion followed by the district court. (Not always explicitly). On appeal, the CAFC gave those interpretations no consideration.
[P]aradoxically in this case, the PTO construed the claim narrowly, rather than broadly, by reading in the same limitation as did the district court. In doing so, the PTO erred for the same reasons as did the district court. The Patent Examiner’s actions thus provide no support for SRAM’s argument. Furthermore, this court is not bound by the PTO’s claim interpretation because we review claim construction de novo.
Vacated and remanded.
Notes:
- Although claim construction is de novo this decision appears to rub against notions of prosecution-based-interpretation found in other cases
- For more information on bicycle patents and innovation, check out Patent Attorney Bob Shaver’s Patent Pending Blog.
This is a very useful case that hopefully will lead to better case law. Excessive deference (to PTO interpretations) is misplaced to the extent it excuses the established rule of giving the claims their broadest meaning during examination. While such deference is often useful, it is not necessary for efficient public notice.
To the extent PTO’s narrow construction serves to avoid invalidity without providing corresponding narrow definitions (without introducing new matter even by the Patent Office) for specific claims terms or clauses, it is better to enhance the risk of invalidity by enforcing the plain meaning instead of an unsupported (on dictionaries or other alternative grounds) narrow and peculiar claim construction by the Patent Office.
Enhancing reliance on the plain meaning is beneficial for the public because it reduces the need for patent attorneys to decipher claims on every patent ever brought to one’s notice. Otherwise, at first sight many claims would appear to be both infringed and invalid based on the plain meaning. Indeed, unchecked this may even seem to be a good strategy.
It is possible that unwieldy solutions like the limit on the number of claims or continuation applications being seriously considered presently in response to poor quality of many patents are due to, in part, issuance of less than accurate claim language. To keep the system healthy, it is preferable to occasionally penalize the patentee for grossly inaccurate description of the metes and bounds instead of routinely relying on the prosecution history to correct the claim scope.
Such insistence on the plain language does not negate the utility of the prosecution history. In this case, the patentee had the option to amend the claims to say what was meant. The patentee knew that the claim language was not accurate, but nevertheless opted for reliance on the file history. The proper advice is to not adopt a misleading description in the claims even if it seems to avoid presumptions triggered by claim amendments.
Also, insistence on quality serves to increase the value of good prosecution skills relative to cut-rate prosecution. The opposite happens if errors are corrected at the expense of alleged infringers during litigation. Such a shift in costs makes defense more expensive than necessary and encourages undesirable rent-seeking strategies.
Have a look at this case: Solomon v. Kimberly-Clark Corp., 216 F.3d 1372 (Fed. Cir. 2000)
The specification and prosecution history are integral to interpreting claims, and serve part of the notice function of issued claims. To allow post-issuance alteration of claim scope by the PTO would defeat that purpose. Claim construction of “issued claims” is a legal inquiry reviewed de novo by the CAFC.
However, I do agree that this case is somewhat puzzling. After all, the claims were all amended during reexamination, and essentially are the equivalent of reissued claims. I would agree that comments by the PTO during the re-issuance of claims “amended” in reexamination should be given deference.
Perhaps, the CAFC viewed the incorporation into the claim of an unrecited claim limitation, totally unwarranted. Note that the dispute was not about the “meaning” of a particular claim term, but rather about adding a general limitation to the claim as a whole.
Nonetheless, the statement in the opinion that “this court is not bound by the PTO’s claim interpretation because we review claim construction de novo” is wrong. The claims at issue were essentially reissued claims, and thus the court should have given some deference to the PTO and not reviewed them entirely de novo.
Anon, Thanks for the additional information on the case. I have not read the prosecution history, but assuming that you are correct on the facts — that the Examiner’s comments were only made during the reexamination.
Why should it make a difference if the examiner’s comments were made during the original prosecution or during a later reexamination?
The PTO comments that were dismissed by the CAFC concerned only comments made during reexamination and not comments of the exmainer during the prosecution of the original application. This is sensible. While comments during original prosecution should affect claim scope; once a claim is issued, the claim scope cannot be altered by a PTO examiner in the course of reexamination.
To be sure, when addressing the term “fixed handgrip” that was added in reexamination, the CAFC did find support in the reexamination prosecution.
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