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IP Alert: Federal Circuit Clarifies Claim Construction Doctrines

February 4, 2016

On February 2, 2016, in Trustees of Columbia University v. Symantec Corp., the U.S. Court of Appeals for the Federal Circuit clarified two aspects of patent claim construction. First, the court rejected the patentee’s argument that there is a presumption of a “plain and ordinary meaning” for a claim term that can be overcome only with express definition or disavowal. Second, the court explained that similar claim terms used in different patents need not be construed similarly if the patents are not members of the same patent family.

In the seminal case Phillips v. AWH Corp., the Federal Circuit specifically rejected a line of cases under Texas Digital Systems, Inc. v. Telegenix, Inc., which had held that claim terms have a presumptive ordinary meaning. Some subsequent cases, such as Thorner v. Sony Computer Entertainment America LLC, have held that disavowal of claim scope requires a clear expression by the patentee.

For some of the claim terms at issue in Symantec, the district court had rejected the patentee’s proposed construction. Citing Thorner, the patentee argued that claim terms carry an “accustomed meaning in the relevant community at the relevant time,” which can only be overcome where the patentee has expressly defined a claim term or expressly disavowed the “full scope” of the claim. The court disagreed, holding that its case law “does not require explicit redefinition or disavowal.” Instead, the court observed that the Phillips case requires construction of the claims in the context of the patent specification, a more fluid standard than that argued by the patentee. The court therefore rejected the patentee’s assertion that claims have a presumptive plain and ordinary meaning and affirmed the district court’s construction.

For other claim terms, the district court also had rejected the patentee’s proposed construction, and had relied on a construction of other claim terms from two different patents asserted by the patentee. The Federal Circuit held that this methodology was improper. The court noted that although claim terms should be interpreted consistently across a series of patents that share a parent application and many common terms, in this case the terms in question stemmed from two distinct patent families. The patents shared one common inventor, but otherwise were dissimilar—they were drawn to different inventions, did not result from the same patent specification, and, in fact, were filed years apart. The Federal Circuit went on to construe the terms in question in the context of the specifications of the patents in which the terms were used, without regard to the otherwise unrelated patents, and reversed the district court’s construction of those terms.

The Federal Circuit’s decision in Symantec confirms the primacy of the patent specification in construing claim terms, and clarifies the Phillips doctrine as it pertains to disavowal of claim scope and construction across multiple patents. Please contact any Fitch Even attorney with questions or comments on the above.

--Written by Fitch Even attorney Christian C. Damon


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