In Thorner v. Sony Computer Entertainment, 2011-1114 (Fed. Cir. 2012), the Federal Circuit recently reaffirmed some of the rules of claim construction described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc). The patent in Sony described a tactile feedback system for video game controllers. The patent claimed vibrations created by a series of actuators that were “attached” to a flexible pad.
Sony argued that the term “attached” could only mean “affixed to the outer surface” of an object. Sony pointed to the fact that the patent used the term “embedded” elsewhere in the claim to describe actuators attached inside other objects. The patentee claimed that “attached” could mean affixing an item to either an interior or exterior surface, and argued that “embedded” is just a narrower term that covers only an attachment to an interior surface. Thus, in the patentee’s view, something that was embedded was also attached, but something that was attached was not necessarily embedded.
The district court concluded that the term “attached” was implicitly redefined by the way the term was used in the embodiments in the specification. The district court agreed with Sony that only external attachments were included within the term “attached.” Based on this definition of “attached,” the parties stipulated to non-infringement, but preserved the ability to challenge the court’s claim construction on appeal.
The Federal Circuit provides specific guidance to district courts engaged in claim construction. In construing patent claims, courts are required to give words their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. There are only two exceptions to this rule. First, when a patentee provides a specific definition for a term, the Court will use the patentee’s definition even if it is different than the term’s plain and ordinary meaning. The second exception allows a patentee to specifically disavow the full scope of the claim in the patent specification or during prosecution.
The Federal Circuit noted in Sony that to fall under the first exception, “[i]t is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must clearly express an intent to redefine the term.” The second exception is likewise very narrow, requiring “expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thus, limitations in an embodiment disclosed in the patent specification (or even a limitation present in all of the embodiments) cannot be implicitly transferred into the claims to redefine words, unless the patentee makes “a clear and unmistakable disclaimer” in the form of a “clear and explicit statement.”
Applying these rules of construction to the question at hand, the Federal Circuit held that “attached” was to be given its “plain and ordinary meaning which encompasses either internal or external attachments.” Therefore, the district court erred when it decided that “attached” meant “affixed to the outer surface,” and limiting the claim was improper because the patentee had not clearly redefined “attached” or disavowed internal attachments.