Yesterday, in a 2-1 decision, Arlington Indus., Inc. v. Bridgeport Fittings, Inc., __ F.3d __, 2011 WL 179768 (Fed. Cir. 2011)(Rader, J.), a fundamental point of tension in the fundamental Federal Circuit role in claim construction was played out once again and points to the need for a final resolution of a festering sore of uncertainty in Federal Circuit patent jurisprudence.
Now, more than twenty years after they both joined the Court in 1990, the fundamental debate continues between the two remaining active members appointed that year over the issue of the role of the specification in the interpretation of the scope of protection:
Should the specification play a role in understanding and interpreting the meaning of claim terminology, or should the specification always play a role in determining what the inventor has invented and thus help shape the scope of protection?
The dissent-in-part explains the latter viewpoint:
“[T]he basic mandate is for claims to be interpreted in light of the specification of which they are a part because the specification describes what the inventors invented. Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed.Cir.1996). The specification is the heart of the patent. In colloquial terms, “you should get what you disclose.” * * *
“[A]t bottom, we are reading a patent specification to see what the inventors invented, what they disclosed, and how they conveyed that information. A patent is a teaching document. In almost all cases, the inventors, and their patent solicitors, knew what was invented and generally disclosed their invention in competent language.” Arlington Indus. v. Bridgeport Fittings, __ F.3d at __(Lourie, J., dissenting-in-part).
The majority answers that “[t]he . dissent-in-part characterizes the specification as the ‘heart of the patent’ and, using ‘colloquial terms,’ states that ‘you should get what you disclose.’ This devalues the importance of claim language in delimiting the scope of legal protection. ‘Claims define and circumscribe, the written description discloses and teaches.’ Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed.Cir.2010) (en banc). To use a colloquial term coined by Judge Rich, ‘the name of the game is the claim.’ Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499, 501 (1990). Indeed, unclaimed disclosures are dedicated to the public. Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1051 (Fed.Cir.2002) (en banc).” Arlington Indus. v. Bridgeport Fittings, __ F.3d at __ n.2.
Until there is a final resolution of this debate there will never be clarity in claim construction at the Federal Circuit. No matter which side is correct in this debate, the more important point is that the debate should be fully aired and settled, one way or the other, for the sake of providing the trial courts a clear scheme for patent claim construction.
The debate over claim construction between the two remaining active members of the Federal Circuit “class of 1990” continues. Yesterday, Hastings scholar Jason Rantanen comments on the dissenting views of the senior member of the panel and considers the merits of the narrower scope of protection advocated by this senior member:
“Judge Lourie’s articulated ideology of claim construction offers a window into a deeper worldview: that fundamentally, patents should be narrow, limited to only that which the inventor actually contemplated at the time of filing. If an inventor invents a circular tanged clip with a slot, the inventor should not be able to claim circular tanged clips that lack slots, period. Following Judge Lourie’s reasoning a bit further, if an inventor contemplates a circular tanged clip made out of steel, the inventor should not be able to claim circular tanged clips made out of aluminum. Perhaps aluminum clips might be held to infringe under the doctrine of equivalents, but they are not within the literal claim scope.
“This view has merit. By placing a heavy onus on the patent applicant to think of all the possible permutations of the invention, applicants would need to think more carefully about their disclosures and patent scope would be limited to only present ideas. Of course, inventors would necessarily be penalized because it may be impossible to imagine all permutations, especially those that rely on not-yet-envisioned technologies. But Judge Lourie seems willing to pay this cost because of the greater certainty and narrower scope that he believes flows from limiting the inventor to only what he or she invented.”
Jason Rantanen, Arlington Industries v. Bridgeport Fittings: “The specification is the heart of the patent”, Patently O (January 25, 2011).
Click here to download the Patent Factor report in PDF format for patent-in-suit US 5,266,050.