Omission Of Claim Feature More Significant To Claim Interpretation Than That Feature's Inclusion In Specification Embodiment

The Federal Circuit, in Saunders Group, Inc. v. Comfortrac, Inc., (No. 2006-1576, June 27, 2007), reverses and remands a district court’s grant of summary judgment finding noninfringement, after determining that the district court improperly limited the scope of certain claims to include a feature that was not recited in the claims. In so doing, the panel concludes that the change in claim language between the parent application and the continuation-in-part application, and the resulting inclusion of the particular claim feature in certain claims and its omission from other claims, “is a sufficiently powerful indicator as to the proper construction of the asserted claims that outweighs the portion of the specification in which the invention is described narrowly.” The claim construction issue is made particularly difficult, says the panel, by the failure of the applicants to expressly state to the examiner the extent to which they intended their new claims to depart from the scope of the claims in the predecessor applications.