Thursday, January 26, 2006

WRITTEN DESCRIPTION IN PATENT RULES WHEN 'ORDINARY MEANING' IS UNCLEAR:

Minebea Co. Ltd. v. Think Outside (05-1201 - January 25, 2005)

In a non-precedential opinion, the court reviewed the S.D. California's granting summary judgment of non-infringement in favor of Think Outside. The issue in this case was the claim limitation of "a pair of lever arms joined at intermediate portions thereof by a pivot to form a scissors-like linkage." Minebea argued that "pivot" included a sliding motion - Think Outside argued that it did not.

The term "pivot" in claim 1 was construed by the lower court to mean "a structure about which something turns or rotates that is fixed relative to the two arms." To arrive at its construction of the term "pivot," the court consulted various dictionaries, none of which, according to the court, expressly defined "pivot" as allowing for sliding motion. On the other hand, nothing in the dictionary definition excluded a sliding motion either. Turning to the written description of the patent, the court determined that a sliding motion was not within the scope of the claimed term.

The Federal Circuit agreed:

In Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005), we noted that it is "entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims." Although the dictionary definition of the term "pivot" does not appear to exclude sliding motion, the district court properly determined that the written description limits the scope of the claim term "pivot" to a structure that is fixed in position relative to the lever arms, and thus excludes sliding motion . . . Because the linkage in a pair of scissors is fixed in position relative to the scissors, it necessarily follows that the central pivot of the written description must also be in a fixed position, as the district court’s claim construction requires.

In Phillips, we also stated that "[q]uite apart from the written description and the prosecution history, the claims themselves provide substantial guidance as to the meaning of particular claim terms." . . . There is no question in this patent that sliding and pivoting are different motions. Indeed, claim 1 provides that certain structures will "slide in addition to pivot." Such language would be superfluous if sliding motion were subsumed in pivoting motion.

Affirmed.

1 Comentário:

David J. French said...

If you check on Google you will find some 174 references to a "sliding pivot".

On the USPTO web site there are over 400 uses of "sliding pivot" in patent documents and 96 references to this phrase in patent claims.

Of course, the intended meeting of "pivot" as used by the patentee in the patent claim should be understood by reference to the full disclosure in the specification. Without reviewing the document, we cannot say that the court was wrong.

The key lesson to be learned is that the courts are increasingly focusing on the intended meaning of the inventor/patent-drafter, as evidenced by the text of the disclosure. This parallels the direction of jurisprudence in Canada and other British-based patent jurisdictions.

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