Words May Limit a Claim, but a Picture Has Multiple Meanings

Profession:McDermott Will & Emery

By Mr Paul Devinsky and Ms Shanita Etienne-Cummings

The U.S. Court of Appeals for the Federal Circuit overturned a summary judgment of no literal infringement, finding that the district court improperly limited the scope of a claim term to the structure illustrated in the patent drawings. CCS Fitness, Inc. v. Brunswick Corp., Case No. 01-1139 (Fed. Cir., May 3, 2003).

The asserted patents describe a stationary exercise machine. In each asserted claim, the exercise machine is recited as including two reciprocating members. The only disclosure in the patent specification of a "reciprocating member" consists of an illustration of a single straight bar used to support the user footpads and enable the user to push on the footpads. Other than the illustration, the patents do not describe the shape of the reciprocating members or whether the members are formed of the single component or of multiple components. The defendant argued that the accused device did not infringe the asserted claims because, rather than a straight bar "reciprocating member," the accused device used "pedal levers" that curved upwards as they approached the frame end of the machine and were formed of multiple components. Brunswick further argued that the claim term "reciprocating member" was so lacking in structure as to essentially constitute a means plus function claim element.

The district court limited the claim term "reciprocating member" to the structure depicted in the figure, reasoning that "if [the patentee] wanted to claim a device whose reciprocating member included a curved, multi-component structure, its patents should have included an illustration that showed these embodiments." The district court granted summary judgment of no infringement. CCS appealed.

The Federal Circuit disagreed. In reversing, the Federal Circuit provided an analytical framework for analyzing when and how to apply the meaning rule. The Court started with the general rule that "we indulge a 'heavy presumption' that a claim term carries its ordinary and customary meaning…and that … dictionary definitions may establish a claim term's ordinary meaning … so long as the definition does not 'fly in the face of the patent disclosure' …."

The Court then explained that this presumption and dictionary definition cannot be overcome "… simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history." Rather, the Federal Circuit held...

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