Failure to object to a special master’s claim construction within the period specified by court order or the Federal Rules is grounds for waiver, and the entire invention in a patent application should not be limited to the preferred embodiment solely because the preferred embodiment is referred to as the “present invention” when the specification does not uniformly refer to this embodiment as being co-extensive with the entire invention.

The plaintiffs sued their competitors for patent infringement, and the defendants counterclaimed for infringement of their patent. The district court entered summary judgment of non-infringement for each side.  Both sides appealed from this judgment.  The Federal Circuit affirmed in part, vacated in part, and remanded.

On appeal, the plaintiffs challenged certain of the special master’s claim constructions adopted by the district court and argued that even if these constructions were affirmed, genuine issues of material fact precluded summary judgment of non-infringement.  The Federal Circuit found that the plaintiffs waived their right to challenge these constructions by failing to object to them within the time limit specified in the district court’s order and the Federal Rules.  It was not persuaded by the plaintiffs’ assertion that they had presented their argument to the district court by offering their position prior to the special master's report on claim construction.  Despite upholding the district court’s constructions, the Federal Circuit agreed that genuine issues of material fact existed with respect to non-infringement.

On cross-appeal, the defendants challenged the special master’s claim construction of the term “semi-random rate” in their asserted claims and argued that there were genuine issues of material fact concerning non-infringement of their patent.  The special master construed this term as “normally taking place exactly once at a randomly chosen time during each occurrence of a repeating predetermined time interval.”  The special master reasoned that this time interval limitation was justified because the specification repeatedly referred to an embodiment with this limitation as the “present invention.”  The Federal Circuit disagreed with the special master’s reasoning, as the specification once noted that this time interval feature only "can be included in the present invention."  However, it affirmed this construction because the asserted claims themselves and the specification relating to those claims supported this limitation.  The Federal Circuit also found that there were no genuine issues of material fact precluding summary judgment of non-infringement.

A copy of the opinion can be found here.