'Heavy Presumption' That Patent Claim Carries Ordinary and Customary Meaning Revisited

Author:Mr Paul Devinsky
Profession:McDermott Will & Emery

The U.S. Court of Appeals for the Federal Circuit, following up on its recent decision in CCF Fitness v. Brunswick (reported in IP Update, Vol. 5, No. 5), has construed a claim broadly based on the "'heavy presumption' that a claim term carries its ordinary and customary meaning." Teleflex, Inc., v. Ficosa North America Corp., et al, Case No. 01-1372 (Fed. Cir. June 21, 2002).

The patent in question (the '182 patent) is directed to a component of a two-piece shift cable used in connection with automatic transmissions. Because the cable is in two pieces, it facilitates the automobile manufacturing process and permits the cable to be taken apart if transmission or shifter servicing is later required. The claim includes a recitation to a "clip" that is part of the connection between the two cable pieces. Only a single embodiment of a clip was disclosed in the '182 patent. That clip includes a single pair of legs extending into the connection.

Ficosa prevailed on the claim construction issue, the lower court holding that the claimed "clip" is limited to the single embodiment disclosed, i.e., the district court construed the claim as limited to a clip having a single pair of legs, but the jury nevertheless returned a verdict of literal infringement. Both sides appealed.

The Federal Circuit took the opportunity to present a primer on claim construction, noting that the Court engages in a "'heavy presumption' that a claim term carries its ordinary and customary meaning" (citing its recent decision in CCS Fitness regarding limited exceptions to that rule).

The Court noted that a specification may limit specific claim terms where the inventor chooses to be his own lexicographer or may be used to resolve an ambiguity where a claim term lacks clarity or where the specification expresses an exclusion or restriction "representing a clear disavowal of claim scope." Similarly, the Court sanctioned use of the prosecution history to limit a claim where...

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