Claim Construction Must Respect The Language Of The Claim, Even If The Result Makes Little Sense

The “claims themselves provide substantial guidance as to the meaning of particular claims terms.” Philips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). A court may not disregard claim language simply because it yields a construction that is nonsensical, or imposes a limitation that renders the invention inoperable. See Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004).

In Haemonetics Corp. v. Baxter Healthcare Corp., the patentee claimed a blood centrifuge using the following language:

A centrifugal unit comprising a centrifugal component and a plurality of tubes, said unit . . . includes: . . . a plurality of channels extending radially in the base of the centrifugal unit . . . with the centrifugal unit having a radius between 25 and 50 mm and a height between 75 and 125% of the radius.

607 F.3d 776, 780 (Fed. Cir. 2010) (all emphasis added). The parties agreed that “centrifugal component” referred to the vessel of the centrifuge in which blood components are separated. Id.

The district court held, and parties agreed, that “centrifugal unit,” as used in the preamble of the claim, meant “the combination of both the vessel and the tubing.” Id. (emphasis in original). However, the district court provided a different construction for the term “centrifugal unit” when used in the body of the claim, specifying that it referred to “only the vessel.” Id. The court noted that applying the limitation, “a radius between 25 and 50 mm and a height between 75 and 125% of the radius,” to the vessel together with its tubing, “would yield an absurdity.” Reasoning that the vessel and the tubing together must be larger than the vessel alone, the district court concluded that these later appearances of “centrifugal unit” referred only to the vessel. See id.

The Federal Circuit reversed. It held that the claim’s “beginning and, in our view, controlling language could hardly be clearer.” Id. at 781. The Federal Circuit rejected the argument that the definition of “centrifugal unit” did nothing more than state the claimed invention’s intended field of use. To the contrary, “centrifugal unit” was expressly defined as comprising a centrifugal component and a plurality of tubes, and provided an antecedent basis for other instances of the term “centrifugal unit” in the claim. Id. This conclusion was supported by the specification, which included an embodiment that tracked the language of the claim. See id. at 782. Thus, the proper construction was “a vessel and a plurality of tubes.” Id. at 783.

The Federal Circuit also reiterated that patent “claims function to delineate the precise scope of a claimed invention and to give notice to the public, including potential competitors, of the patentee’s right to exclude.” Id. at 781. It explained that this notice function would be undermined “if courts construed claims so as to render physical structures and characteristics specifically described in those claims superfluous.” Id. “As such, we construe claims with an eye toward giving effect to all of their terms, even if it renders the claim inoperable or invalid.” Id. (citation to Bicon, Inc. v. Straumann Co., 441 F.3d

945, 950 (Fed. Cir. 2006) omitted). The court further explained that “[a]n ‘error’ may have occurred in drafting . . . but it is what the patentee claimed and what the public is entitled to rely on.” Id. at 782–83. The court vacated the jury verdict and remanded for further proceedings, including to determine whether the claim, as properly construed, might be indefinite.

Cases Referenced

Bicon, Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006)

Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004)

Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776 (Fed. Cir. 2010)

Philips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)

From Federal Circuit review

Volume Three | Issue Five April 2011