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Preferred Or Illustrated Embodiments Not Covered Where Patentee Does Not Alter A Term’s Ordinary Meaning

Jun.10.2008

In Helmsderfer et al. v. Bobrick Washroom Equipment, Inc. et al. (No. 2008-1027; June 4, 2008), a Federal Circuit panel affirms a district court's decision granting a final judgment of non-infringement. The claim limitation at issue concerns the language "partially hidden from view", which the district court construed as "hidden from view to some extent but not totally hidden from view". The patentee, Helmsderfer, argued that the term should have been construed to mean "positioned so at least some of the top surface is blocked from being seen" and that the district court erred when it construed the term to exclude totally hidden from view. In affirming the district court's claim construction ruling, the panel notes that the specification never utilizes the term "partially hidden from view" to describe the platform top surface and that the only place where the platform top surface is described is in claim itself. In addition, Helmsderfer is seen to have used the terms "generally" and "at least" elsewhere in the claim. The panel thus presumes that different claims terms have different meanings.

In addressing Helmsderfer's next argument, specifically that the district court gave too much weight to extrinsic evidence, the panel notes that a court may look to extrinsic evidence so long as that evidence does not contradict the meaning otherwise apparent from the intrinsic record. And when the intrinsic evidence is silent as to the plain meaning of a term, it is deemed appropriate to look to dictionaries or other extrinsic sources to give plain meaning to a term. In this case, the term "partially" is not defined in the patent and in fact, the term "partially hidden from view" does not even appear in its written description. Accordingly, after consulting several dictionaries the panel holds that the ordinary and accustomed meaning of "partially" excludes "totally".

Finally, the Federal Circuit addresses Helmsderfer's final argument that the district court's construction is erroneous as it excludes both the preferred embodiment and every illustrated embodiment from these particular claims. The panel notes that while it is true that the plain meaning of "partially hidden from view" does not include totally hidden from view and therefore, the two claims do not cover the preferred embodiment or illustrated embodiments, this does not mean that the embodiments are all excluded from the scope of the invention, but rather only from the scope of these particular claims. Accordingly, the Federal Circuit holds that as the patentee did not act as its own lexicographer and alter the ordinary meaning of the term "partially", it could not construe those two claims to encompass the preferred embodiment or other illustrated embodiments.

[http://fedcir.gov/opinions/08-1027.pdf]

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Mark Supko
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