Intrinsic Evidence Overcomes Patent Doctrine of Claim Differentiation

Posted on July 23, 2010 by R. David Donoghue

Kathrein-Werke KG v. Radiacion y Microondas S.A., No. 07 C 2921, Slip Op. (N.D. Ill. May 17, 2010) (Guzmán, J.).

Judge Guzmán construed the contested terms of plaintiff's patent to a high frequency phase shifter unit having a pivotable tapping element. Of particular note, the Court construed:

  • "Stripline" was a conductive strip, but it did not need to be a flat, conductive strip. Nothing in the claim or specification required striplines be flat, and plaintiff's extrinsic evidence could not overcome the intrinsic evidence.
     
  • "Stripline sections", "stripline segments" and "stripline elements" were construed to mean the same thing. While claim differentiation creates a presumption that different terms have different meanings, that presumption was overcome by the intrinsic evidence which showed patentee "obstinately" using the terms to mean the same thing.
     
  • "Extending" was given its ordinary meaning of "lengthening." The Court held that plaintiff's definition "lengthening in one or more direction" included an unnecessary element that was not supported by the intrinsic evidence.
     
  • "Transformers" were defined as "devices that transfer electrical signals and match impedance values." The Court also construed the statement that transformers "share power" as meaning that transformers "permit the sharing of power" because the parties agreed that transformers cannot share power.
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Claim Constructions Result in Invalidity Summary Judgment

Posted on July 1, 2009 by R. David Donoghue

 

Microthin.com, Inc. v. SiliconeZone USA, LLC, No. 06 C 1522, Slip Op. (N.D. Ill. May 6, 2009) (Kendall, J.).

Judge Kendall construed the claims of plaintiff Microthin's patents to non-slip mats and based on the constructions granted defendant SiliconeZone summary judgment of invalidity as to the first claim of each patent. Of particular interest, the Court construed the following terms:

  • Non-Slip meant reducing or preventing smooth sliding motion, but the Court declined to add Microthin's proposed requirement that it not be sticky to the touch because there was an independent claim that only added the requirement that the non-slip surface was not sticky to touch.
     
  • Consisting of was construed as a closed transitional phrase, as it is normally used in patent law.

Based on its construction of non-slip, the Court held the first claims of each patent invalid. Microthin's sole argument against the asserted prior art was that it did not teach a non-slip surface because the surface was sticky to the touch. Because the Court construed non-slip without the sticky limitation, the first claims of each patent were invalid.

 

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Preferred Embodiments Generally Do Not Limit Claims

Posted on January 4, 2007 by R. David Donoghue

Andrew Corp. v. Beverly Mfg. Co., No. 04 C 6214, 2006 WL 3486884 (N.D. Ill. Dec. 1, 2006) (Holderman, Chief J.).

In this claim construction opinion regarding several patents relating to cable hangers used for telecommunications towers, Judge Holderman refuses to limit several claim terms based upon the preferred embodiments described in the specifications.  The Court explained that "district courts should not generally rely on preferred embodiments in specifications to confine claims unless the embodiment defines the outer limit of the claim." 

The Court also relies upon claim differentiation in interpreting several terms.  For example, the Court held that limiting a "bail" to a semi-circular or hoop-like shape instead of the more general "hinged band" that the Court chose would render the dependent claim which required a bail with a C-shaped profile meaningless.

Finally, at the beginning of the opinion, Judge Holderman provided a very detailed explanation of the current claim construction standards.

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