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Oatey Co., v. IPS Corp: What happened?
In a confusing opinion that might have been better off as a nonprec the federal circuit reversed a district court claim construction and corresponding summary judgment of noninfringement in a case involving washing machine outlet boxes. See Oatey Co., v. IPS Corp., 2007-1214 (January 30, 2008).
It is hard to tell what a district judge faced with a claim construction is supposed to learn from this opinion.
Claim 1 of Oatey’s U.S. Patent No., 6,148,850, recites a washing machine outlet box that includes “first and second juxtaposed drain ports in said bottom wall, and a common tailpiece for both of said drain ports extending from said bottom wall.” At a Markman hearing, the district judge interpreted this language to define an outlet box of “two separate physical openings in the bottom wall of the outlet box,” and a tailpiece with a diameter encompassing the two separate openings. Because the accused device included a single opening in the bottom wall of the outlet box and a tailpiece containing an interior divider—so that the tailpiece, rather than the bottom wall, contained two channels (or by analogy, ports)—the district court entered summary judgment of noninfringement.
According to the core of the opinion, the primary reason that this construction and corresponding judgment of noninfringement is erroneous is because there is a picture in the patent depicting an embodiment of an outlet box with a single opening and tailpiece with an interior divider. The court went on to state (citations omitted):
We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification. However, we have interpreted claims to exclude embodiments of the patented invention where those embodiments are clearly disclaimed in the specification or prosecution history.There is no issue in this case of disclaimer or estoppel during prosecution, as would preclude recovery of such lost scope.
Pages 8-9. So at first glance, the court’s main argument appears to be that no matter the claim language selected by the applicant, the court will presume the applicant intended to claim all embodiments of devices depicted in the patent as long as they are not clearly disclaimed. But such a rule seems impractical for general application as in many cases not everything disclosed in a patent is patentable, and where it is, it may be the subject of a different patent than the one at issue.
A better reason, perhaps, which gets much shorter shrift in the opinion is that the specification appears to explicitly define “juxtaposed drain ports in said bottom wall” when it states: “the oblong opening in the bottom wall (in conjunction with the tailpiece) may itself define the drain ports." '850 patent, col. 2, lines 30-32; see also id. col. 4, lines 23-26.” Page 9.
And, finally, somewhat cryptically the opinion seems to suggest that the interior divider in the drainpipe in the emphasized figure extends far enough into the opening of the outlet box so that juxtaposed openings are actually formed in the bottom wall—rather than exclusively in the tailpiece. Page 10 (“In Figure 3 the juxtaposed drain ports are defined by the perimeter of the oblong opening in conjunction with the dividing wall.”). Thus, it would appear that the figure is helpful in expressly defining the claim language.
So why these different explanations when any one would have sufficed? One possible explanation is that this opinion is an example of different judges agreeing on the outcome, but not agreeing very well on why the outcome should be what it is. The opinion author, Judge Newman, is an established holistic jurist when it comes to claim construction who has in the past emphasized the written description portion of the patent document over the language of the claims. Assuming an opinion author is entitled to some liberty in the methodology described Judge Newman may have been emphasizing what she saw as the most informative source of information about the boundaries of the patentee’s rights in connection with this patent.
Judges Dyk and Linn, on the other hand, have in the past placed more emphasis than Judge Newman appears to place on what the claim language means to a person of ordinary skill in the art. Is the Federal Circuit Succeeding? Moreover, in the past their writings have historically reflected a greater discipline when it comes to showing that the written description should inform the meaning of claim language and showing how the written description does so.
So reading between the lines, one might see this case as an example of Judge Newman concluding that the picture in the patent does not align with the claim language, but emphasizing the importance of the picture because in her judgment that better reflects the patentee’s invention than the claims. Thus, in her view, the patentee wins. By contrast, Judges Dyk and/or Linn may have felt that the written description and figures were entirely consistent with and helped to define the claim language as reflected in the minor two arguments mentioned above. Thus, in their view, the patentee also wins.
And since Phillips informs that methodology does not matter, or perhaps for reasons of internal peace, the nonauthoring judges were not highly motivated to weaken the force of what seems to be the primary teaching in the opinion—that pictures in a patent depicting devices should be presumed to fit within a patentees right to exclude regardless of the words of the claim as long as there is no clear disclaimer in the intrinsic record.
Posted by at January 30, 2008 3:34 PM in Claim Construction, News & Commentary | Permalink
