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.
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