By Jason Rantanen
Arlington Indus., Inc. v. Bridgeport Fittings, Inc. (Fed. Cir. 2011)
Panel: Rader (author) Lourie (concurring in part and dissenting in part), Moore
At first glance, Arlington v. Bridgeport presents a seemingly typical claim construction opinion, as the majority opinion reads like any another decision addressing the perpetual question of whether the district court improperly imported a limitation from the specification or instead correctly interpreted the claims in light of the specification and prosecution history. In an eloquent dissent, however, Judge Lourie reveals his deepest beliefs as to what patents should really be about: permitting the patent holder to claim what is disclosed in the specification – and nothing more.
The claim construction issue in this appeal involved the term "spring metal adaptor," a key component in the invention: a new fitting for an electrical junction box. Prior to the invention of Patent No. 5,266,050, held by Arlington, most junction box connectors used a threaded nut that was screwed into the junction box – a tricky operation. The '050 patent solved this problem by using a fitting with a spring metal adaptor (20) containing two types of outward pointing tangs (22 and 23). The new fitting could simply be snapped into place rather than needing to be screwed.
During the district court proceedings, the court construed the claim term "spring metal adaptor" to mean a "*split* spring adaptor," commenting that "a necessary feature of the "spring" metal adaptor is that it is 'split.' Without the split, it would not spring." Summary judgment of non-infringement was granted in Bridgeport's favor based on this construction.
Majority: The District Court Imported a Limitation from the Specification
Treating the appeal as a standard question of claim construction, Judge Rader, writing for the majority, held that the district court erred by importing a "split" limitation into its constructions of "spring steel adaptor." The majority first dismissed Bridgeport's argument that "spring" should be construed to mean that the metal adaptor performs a "springing" function, and instead held that it refers to the type of steel used in the adaptor. It then rejected the argument that "spring metal adaptor" should be defined by implication to require a split, considering both the specification and prosecution history, as well as the doctrine of claim differentiation, before concluding that the intrinsic evidence "reveals no intent to lit the term 'spring metal adaptor' by using it in a manner that excludes unsplit adaptors." Slip Op. at 15.
Judge Lourie's Dissent: "The specification is the heart of the patent"
Bringing to the boil an ideological disagreement that last eruped in Ariad, Judge Lourie's dissent takes issue less with the outcome of this particular appeal than with the CAFC's entire approach to claim construction. Expanding upon his discussion of claim construction in Phillips v. AWH Corp., 415 F.3d 1303, 1328 (Fed. Cir. 2005) and before, Judge Lourie writes: "the basic mandate is for claims to be interpreted in light of the specification of which they are a part because the specification describes what the inventors invented….The specification is the heart of the patent. In colloquial terms, you should get what you disclose." Arlington dissent at 2 (internal citation omitted). In his view, the problem is that the CAFC has gotten bogged down in its "focus on our muddy, conflicting, and overly formulaic rules…when the real task of claim interpretation is to read the specification and determine what the inventors meant when they used the language they did." Id. (internal citation omitted).
"Obviously the claims define the scope of protection accorded the owners of a patent. Phillips, 415 F.3d at 1312. But in construing the claims we should avail ourselves of the knowledge we glean from the patent specification to see what the inventors disclosed as their invention. The bottom line of claim construction should be that the claims should not mean more than what the specification indicates, in one way or another, the inventors invented."
Id. Thus, Judge Lourie would have ruled differently:
"In this case, the inventors made clear in the specification of the ‘050 patent that the spring metal adapters in their invention have an opening that prevents the adap-tors from forming a complete circle. The result that the panel majority arrives at here, on remand, could be that Bridgeport might be held to be an infringer of a patent that clearly indicates that there is a split in the adaptor, by making or selling an adaptor lacking such a split. That is not a result that the patent law ought to protect."
Id. (emphasis added).
Judge Lourie's articulated ideology of claim construction offers a window into a deeper worldview: that fundamentally, patents should be narrow, limited to only that which the inventor actually contemplated at the time of filing. If an inventor invents a circular tanged clip with a slot, the inventor should not be able to claim circular tanged clips that lack slots, period. Following Judge Lourie's reasoning a bit further, if an inventor contemplates a circular tanged clip made out of steel, the inventor should not be able to claim circular tanged clips made out of aluminum. Perhaps aluminum clips might be held to infringe under the doctrine of equivalents, but they are not within the literal claim scope.
This view has merit. By placing a heavy onus on the patent applicant to think of all the possible permutations of the invention, applicants would need to think more carefully about their disclosures and patent scope would be limited to only present ideas. Of course, inventors would necessarily be penalized because it may be impossible to imagine all permutations, especially those that rely on not-yet-envisioned technologies. But Judge Lourie seems willing to pay this cost because of the greater certainty and narrower scope that he believes flows from limiting the inventor to only what he or she invented.
Procedural note: There were actually two separate district court proceedings at issue, both arising in the same district. In the first proceeding, the district court declined to adopt a "split" construction and Bridgeport was found to infringe; that appeal was stayed while the appeal of the second proceeding (in which the court did adopt a "split" construction) was pending. The second proceeding also involved a related patent, No. 6,521,831, that contained an essentially identical term ("spring steel adapter"). The CAFC reversed the district court's construction of that term as well, a ruling Judge Lourie joined because the district court relied only on its construction of the term in the '050 patent and did not separately construe the term of the '831 in light of that specification.
Additional Commentary: In a recent article on IP Frontline, Hal Wagner offers a perspective on the ongoing discussion between Chief Judge Rader and Judge Lourie about the proper scope of claim construction. See Wagner, "Arlington Indus. v. Bridgeport Fittings: The 20 Year Claim Construction Debate."