Claims Need Not Be Construed to Encourage an Embodiment that was Part of a Restriction Requirement

Posted on June 16, 2010 by R. David Donoghue

Albecker v. Contour Prods., Inc., No. 09 C 6312, Slip Op. (N.D. Ill. May 3, 2010) (Castillo, J.).

Judge Castillo construed the claims in this patent case involving a wedge-shaped backrest and legless leisure chair. Of particular interest, the Court construed the following terms:

  • "Secured to" was defined as "attached using attachment means" that connect a type cushion to a foundation. The "secured to" definition excluded unitary top cushion foundations. The fact that the Court's definition excluded one embodiment because that embodiment was part of a restriction requirement; and
     
  • "face of the generally wedge shaped foundation" was not properly briefed, but the Court held that the face was top surface.

The Court declined to construe other claim terms because the parties told the Court that the construed terms were the key terms.

The Court also noted that the parties' Local Patent Rule 4.2(b) joint appendix failed to provide a complete prosecution history – a violation of the LPR 4.2(b).

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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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