INTERPRETING CLAIMS 771

B_

Inc. v. _Earth Resource Mapping, Inc., 433 F.3d 1373, 1377-78 (Fed. Cir.
Lizmdtec
2006) (Rader, J., dissenting from denial of rehearing en bane). Is it possible that the
F ederal Circuits precedents lead to broad constructions of claims, which are then
invalid under the written description requirement?

6. Claim Differentiation. As noted in Judge Louries dissent, the majority

ultimately places great weight on the doctrine of claim differentiation, which

requires different claims to be given different scope. Noting that claim 17 requires
the baffles to be projecting inwardly from the outer shell at angles tending to
deflect projectiles that penetrate the outer shell, the majority reasons that a
similar limitation should not be read into claim 1.

Claim differentiation is one of many more specific doctrinal devices employed by

the Federal Circuit in claim interpretation. These are summarized in the following

Note.

NOTE ON CAN CNS OF CLAIM INTERPRETATION

The law of claim interpretation presents the diligent student with a paradox. On

the one hand, the basic principles seem straightforward and the basic thrust of the

doctrine using claims as the primary source for defining patent rights but

looking to the specification to give meaning to the claims appears relatively

unchanging. On the other hand, the constant rush of claim interpretation cases
from the Federal Circuit presents a jumble of approaches, canons, subdoctrines.

and unspoken-but-identifiable practices. Phillips did lay to rest one controversial

approach, the dictionary uber alles school of thought. Even so, much complexity
and uncertainty remains. This is of course not surprising given the confluence of

three factors: (1) technology is often complex; (2) language is oftenZ-iinprecisc: and

(3) very small differences in meaning can translate into very large economic

i
importance. (Just one example of many that could be cited: the interpretation of
the word reference in the phrase reference means" was a $51 million issue in a

ionary recent case, Mcdtronic Navigation, Inc. r. BrainLab Mcdizinischc Conzputcmys.

)struct GmBH, 417 F.Supp.2d 1188 (1).Colo.200(i). (rift! in an unpublished decision. 2007
ws the US. App. LEXIS 2521 (Fed. Cir. 2007).) Complexity plus big dollar stakes means

one thing: everlarger teams of ever-sharper lawyers are paid everlarger fees to

baffles
litigate patent cases, insuring that every potential ambiguity and nuance in ii

ll. The
patent document will be scrutinized, analyzed, magnified. dressed up, and ushered
onto center stage with a grand flourish (hiring the patent trial. And this approach
low of
is far from irrational, compared to spending these resources up front" during the
i in the

5?
prosecution of each patent. Recall that very few a little more than 1:; of
issued patents are ever litigated.

The best way to get a feel for what this all means is to read a crosssection of

mg claim interpretation decisions from the Federal Circuit for six months or so (see

www.fedcir.gov). (Another helpful website. www.claimconstructionrom which is

run by Professor Polk Wagner at the University of Pennsylvania, analyzes all cases
:ed
on claim interpretation, though the classifications and analysis provided, while very
en
useful, are by necessity broad-brush and cannot. capture the essential nuance and
is
variation of the claim intei'preuition enterprise.) Only complete immersion in the
ust
case law can help you get a sense of the fact-speriiic nature of claim interpretation,
aah.
 CH. 8

772 INFRINGEMENT
355(

of tl
and of the way that doctrines and rules seem merely to float over the surface of a
not
vast sea of complexity, never fully capturing or containing it.

Id. at 12
As a modest second-best alternative, we have organized this vast and unwieldy
to expat
body of cases into several important sub-topics which we present here. Space
Circuit
limitations dictate that we keep this to a very limited selection, so we have chosen
litigants
what we believe to be the most important topics. The cases described also, not
Lion at 1
coincidentally, capture some of the complexity and contrariness of this area of law.
This is because, as we said, no amount of organizing or massaging can bring 2. (

complete order to this inherently unruly, fact-dependent area of law. hinge c

/
special
, 1. Narrow Construction to Save Validity. The first canon of construction may

terpretations are plausible, choose the distinct

be expressed as E rule of doubt: when two in
the
validity of the patent the narrower interpretation. ee,
one that preserx es the
183 F.3d 1342, 1345 (Fed. Cir. 1999) (claims should e so meanin
e.g., Rhine a Casio, Inc., s canon of interpretation has
claim ti
construed, if possible, as to sustain their validity). Thi
Yeomans case more than a
the art
a long pedigree; it was mentioned in the Merrill 1).
the pat
century ago.
So h
The Federal Circuit hashhowever, pushed this canon to the very end of the
art? Pl
aid now to b a last resort, not a first principle. BO Laboratories,
process. It is s
what a
Inc. v. Becton, Dickinson tf: 474 F.3d 1323, 1331 (Fed. Cir. 007).As the Federal
mean
Circuit described it in Phillips, we have limited the maxim to cases in which the
Specific
court concludes, after applying all the available tools of claim construction, that the
scientif
claim is still ambiguous. In effect, this approach makes the canon a very minor rule.
sum. Ol
Note that if the canon were more important, then validity issues would also take on
contex1
more importance in claim interpretation, but as previously mentioned, the Federal

Circuits case law has tried to divide validity and infringement issues to a great The

extent. skeleta
the wo
A cost of this approach
possibl
Medrad, Inc., 358 F.3d 898 ( . . , .
bones
district court first granted summary judgment of non-infringement after it inter-
goal in
preted the phrase high pressure power injector" in the claim to refer to an injector
requiri
having a pressure jacket." In reaching that interpretation. the district court relied
inventi
on the specification, in which every example of an injector included a pressure
contex
jacket. In the cases first appeal, the Federal Circuit reversed, finding no
ambiguity in the relevant claim language and "no reason to resolve the purported For

ambiguity by reading [the relevant language] restrictively." 358 F.3d at 905. the m

immec:
Three years later, the case returned to the Federal Circuit, this time after the
lleSy 1
district court' granted summary judgment of invalidity on the ground that a
eoHect
jacketless injector was not enabled in the specification. The Federal Circuit are m
affirmed, noting that, inter alia, nowhere does the specification describe an
:mrmi
injector . . . without a pressure jacket." 481 F.3d at 1379. LiebelFlarsheim seems hndi
correctly decided, especially in light of this part of the prosecution history:
3.
The claims in the originallyfiled application explicitly recited a pressure
Where
jacket . . . . Medrad asserted, and the district court agreed, that during
Patent
the prosecution[,] the applicants became aware of Medrads jacketless

injector system and then deleted all references to a pressure jacket in the
B. INTERPRETING CLAIMS 773

I cl at 1374. The patentee seems to have rea

ped its just reward for such an attempt
to expand its claimed invention after filing,
but did the case really need two Federal
Circuit appeals spread over three years? I
s the legal doctrine to blame? Or should

litigants be blamed for not seeking judgm

ents on both validity and claim construc-
tion at the same time?

/ 2. Ordinary vs. Contextual Meaning. Claim interpretation often seems to

hinge on disputes about whether to

give language an ordinary meaning or a
special contextual meaning derived from particular usage in the patent, but the
distinction is not sharp. In Phillips, for example, the court began with a presump-
tion that the words of a claim are ge rally given their ordinary and customary
the ordinary and customary meaning of a

meaning. But, the court continued, f

claim term is the meaning that the ter would have to a person of ordinary skill in

the art in question at the time of the inventiongie., as of the effective filing date of

the patent application.

So how does the court determine the meaning to a person of ordinary skill in the
art? Phillips teaches to 100k:to *those sources available to the public that show

what a person of skill in the art would have understood disputed claim language to

mean [including] the words of the claims themselves, the remainder of the

specification, the prosecution history, and extrinsic evidence concerning relevant

il I

scientific principles, the meaning of technical terms, and the state. of the art. In . t

. tp-U*
sum, ordinary meaning refers to a person of ordinary skill, which in turn refers to l v

contextual meaning. l
l
The importance of context is increased by general patent practice: Claims are

skeletal, employing as few Words as possible. (Remember that in general the fewer
the words, the broader the claim, and all claim di'aftcrs suck to obtain the broadest

possible valid claim.) Specifications, by contrast. are written to put'flesb on these

bones to provide background and depth to explain how ;m invention works. The

goal in drafting a specification is to satisfy the ciiziblcmcnt :md written description

requirements of 112 to tell people in [hv :tll how Ill.lllZIl\( and use the
` _ A-ml
invention. Usually all words used in a claim will also be used in the spet'ification. in
context.

For these reasons, it is generally true, as the court in Phillips recognized. that
the meaning of a claim term as understood by persons of skill in the art is often pot

immediately apparent and it also fair to say that patentees frequently use terms
idiosyncratically. Reliance on context is therefore crucial. Contextual analysts-is a
collection of doctrines and subdoctrines, rather than a single canon. These doctrines
are more fairly caller guidelines than rules because their application, pot

surprisingly, all depends on the context: They provule the grist fbi mam a
hard-fought contest over claim interpretation.
3- Contextual Meaning May Trump Ordinary Meaning. Phillips is a case

Where the court majority refused to imply a more narrow interpretation frgnth
patent specificatiOn. A good counterexample is Nystmm zv. THE); Co., Inc., 4 .
 E:
f
774 INFRINGEMENT CH. 8

This co
1136 (Fed. Cir. 2005), which involved claims to a new type of board for use in
example,
constructing a flooring surface for exterior use. Id at 1140 (quoting U.S. Patent
FIGS 1-5
5,474,831 (1995)). The patented board had a slightly convex top surface so it could
same gem
shed water, and a slightly concave bottom surface so that multiple boards could be
3, 11. 252
stacked easily for shipping. The accused infringer, TREX, sold exterior decking
install-atin
planks made from composites of wood fibers and recycled plastic." I d. TREX argued tion of the
that the term board in the patent claim should be interpreted to refer only to a
written di
board made from wood cut from a log. Id. at 1142. The district court agreed and
boards E
granted summary judgment to TREX. descriptit

On appeal, the patentee Nystrom stressed that the accused products fell Within
decking]

the ordinary meaning of boards, and indeed [e]ven in its appeal brief, TREX The court

refers to its product as "lrexs boards.' "Appellate Brief of Ron Nystrom (March 17,
The p
2003), available at 2003 WL 24028264, at 8. Nystrom also looked to dictionaries, as
with the
the Federal Circuit explained:
that the

Nystrom contends that although some dictionaries define board solely in uniform)

reference to its material composition, see Websters Third International other fin

Dictionary 243 (2002) (defining board as a piece of sawed lumber of little circumfe

thickness but considerable surface area usu. being rectangular and of a rejectioi

length generally exceding its width), not all dictionaries are so con- The l
strained. For example, the American Heritage Dictionaiy of the English the a

Language 203 (4th ed. 2000) defines board as 1. A long flat slab of sawed hund
lumber; a plank. 2. A fiat piece of wood or similarly rigid material adapted insta

for a special use. Nystrom argues that the ordinary meaning of the word clips
board encompasses both a piece of cut wood or sawn timber and a the l

similarly-shaped item made of a rigid material.

Amend

424 F.3d at 1144. Agreeing with the district court, however, the Federal Circuit obvious

not cor
relied on the specification to read board narrowly (id. at 114344):
board
An examination of the term board in the context of the written
will sh
description and prosecution history of the [Nystrom] patent. leads to the supper
conclusion that the term hoard must he limited to wood cut from a log. contox

The written description begins by noting that lal variety of specialized dcckin

flooring materials have been developed for interior and exterior use."
Id. at 1144
[Nystrom] patent, col. 1, 11.13-14. The discussion then proceeds to the
Ngstrwn l
specific context of wood flooring materials for exterior use. In the. context
of the discussion of wood flooring materials for exterior use, the patent 4. T ht

their own
states, In all conventional flooring materials known to applicant, the top
definition:
and bottom horizontal surfaces of these flooring materials are flat and
does rler
planar. As a result, water tends to stand on the surface of the decking
material, causing it to deteriorate more quickly than it otherwise would." A gum

Id. at ll. 5761. The discussion continues, Further, the process used to cut 1352 (Fer

such lumber from logs can produce inferior product on the outermost an edible

boards, often leading to scrap." Id. at 1]. 05-67. The Background of the he used

Invention, thus, frames the invention in the context of wood decking claimed l

materials cut from logs, even though it acknowledges that other materials machine.

exist.
 B. INTERPRETING CLAIMS 775

This context is maintained throughout the written description. For

example, the written description states, With particular reference to

FIGS. 1-5, it can be seen that the convex top surface 13 is curved in the

same general direction as the curvature of the growth rings GR. Id. at col.

3, 11. 2527. The written descm'ption goes on to note that the manner of
installation of conventional decking boards leads to accelerated deteriora-

tion of the boards when exposed to weather. Id. at 11. 34-35. Similarly, the

written description states, FIG. 4 shows the relationship of the outermost

boards B cut from a log L. Id. at 11. 6566. Throughout the written

description, N ystrom consistently used the term board to describe wood

decking material cut from a log.

The court used the prosecution history to reinforce the narrow meaning:

The prosecution history provides additional context that is consistent

with the written description. In a preliminary amendment, N ystrom stated

that the particular configuration and dimensions of the board result in a

uniformly superior product and reduction in waste or rejects due to bark or

.su-.n .mhl
other flaws along the edges of the board when it is cut from near the outer .~
'.4HI

circumference of a log. Prelim. Amendment at 2. In responding to a

rejection; Nystrom stated,

The present invention represents a unique and significant advance in

the art of exterior wood flooring. Wood doors have been in use for

hundreds of years, and except for the development of different

installation techniques, i.e., the use of nails, screws, various fastening

clips, and/or adhesives, very little has been done to the basic shape of
the board itself.

Amendment rec'd Sept. 30, 1993, at 2. Similarly, when arguing against an

obviousness rejection, N ystrom stated, [The Yoshida reference] is clearly

not concerned with materials made from wood, and especially an elongate

board for exterior use and having a convex top surface when installed that

nil] shed water and at the same time provide a surface that is suitable for

supporting furniture and comfortable to walk on." Id. at 4. . . . [Tlhe

context reflects Nystroms consistent use ol'theterm board to refer to wood

decking materials cut from a log.

Id. at 1144. Was the court reading in" a limitation from the specification? How can

Nysimm be distinguished from Phillips?

/

4." The Lexicographcr Rule. Courts often say thatiatentees are free to be
their own lexicographers Le, to define claim terms in a _ way they wish. Ihese

definitions are typically set forth in the specification. Yet, even when the p tentee
does define a term, the definition may be ambiguous.

A good example is Jack Guftnmu, Inc. u Kopykakc Enterprises, Inc., 302 F.3d

1352 (Fed. Cir. 2002), which involved a patent on a system for printing an image on

an edible sheet, which could then bc placed onto a cake for decoration (e.g., it could

be used to put pictures of children onto their birthday cakes). One step in the

claimed process required placing the relevant image on a copy glass of a photocopy
machine. In place of a photocopy machine, the accused infringer used a commercial
776 INFRINGEMENT CH. 8

scanner that was attached to a inkjet printer modified to use edible ink. One
question In the case was whether the term photocopy machine in the claims could
encompass the combination of a scanner with an inkjet printer. The patent

specification explicitly defined the term photocopy machine broadly:

Similarly, while the photocopy machine is shown as an integral unit, the

Rents
scanning and image reproducer aspects need not be in the same housing.
[WJherc the scanning and image mpmduction aspects are sepamte (within
or without the same housing), but cooperate to produce the effect of a plain
the p:

paper photocopy machine . . . , the two aspects are deemed to dejine a histor

photocopy machine as that term is used hemin.

Cu
302 F.3d at 1359-60 (quoting the patent specification; emphasis by the court).
am}

an im
The accused infringer, Kopykake, argued that this explicit definition merely
and s
ensured that the claim would cover photocopy machines with the scanning and

printing components in separate housings. The explicit definition was not, Kopy-
kake argued, supposed to cover any combination of scanning and printing capabili- C:

ties. The court disagreed, id. at 1360 (emphasis in original):

Had the patentee intended to claim only conventional plain paper photo-
Id. at
copy machines, Whether composed of a single housing or not, he would not

have used the phrase cooperate to pmduce the effect of a plain paper 9pr
with
photocopy machine." Such a phrase indicates that the term includes an
prior
apparatus that is not a conventional plain paper photocopy machine, but
what
that nonetheless possesses scanning and reproduction features that work
proct
together to produce the effect of such a photocopy machine.
Sce a

It is crucial to stress, however, that Jack Gutman E ntcrpriscs is a very rare case. puter
The vast majority of cases that cite the lexicographer rule" do not involve an inter

explicit definition. Rather, courts cite the rule to demonstrate that the patentee may
place an unusual construction on claim language, though that construction is prcvi
typically implicit rather than explicit. In these cases, the patentees are not really justil
being lexicographers. It is a poor lexicographer, after all, who Would trust to general versi
context and repeated usage to establish the meaning ntn Word. The essence of the SU 35

lexicographic art is a succinct and precise definition - the very opposite of the some

implicit contextual clues that courts have to use in interpreting claim language. datin

that
One final point on the lexicographer rule: Federal Circuit precedent holds that a
such
general discussion of an invention in a specification cannot provide a definition for
freqi
a claim term unless the discussion can be tied to a specific word or words in a claim.
State
A leading case explains:
it int

Fran
[A] party wishing to use statements in the written description to confine or
cons:
otherwise affect a patents scope must, at the very least. point to a term or

terms in the claim with which to draw in those statements. Without any
inopt

claim term that is susceptible of clarication by the written description. It

there is no legitimate way to narrow the property right. The Supreme tool,
Court [McCarty u Lehigh lht RR., 160 US. 110, 116 (1895)] has clearly Clar

stated the rationale for this requirement: seen

 B. INTERPRETIN G CLAIMS 777

know of no principle of law which would authorize us to read into

[WJe
a claim an element Which is not present, for the purpose of making out

a case of novelty or infringement. The difficulty is that if we once

begin to include elements not mentioned in the claim in order to limit

such claim. . . . , we should never know where to stop.

Remshaw PLC 'u. Marposs SocietaperAzioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).

/ Disclaimer of Subject Matter. A corollary of the lexicographer rule is that

tl} patentees statements in the specification or, more commonly, in the prosecution
1118 may limit or disclaim apparently broad claim language.

Cultor Corp. u A.E. Staley Mfg. 00., 224 F.3d 1328 (Fed. Cir. 2000) is a good

example of the disclaimer doctrine at work. Cultor was a dispute over a patent on
an improved process for making 'Rvater-soluble polydextrose, a substitute for flour

and sugar in food products. The specification stated:

As used herein, the expression water-soluble polydextrose . . . specifi-

cally refers to the water-soluble polydextrose prepared by melting and

heating dextrose . . . preferably with about 5-15% by weight of sorbitol
present, in the presence of a catalytic amount . . . of citric acid.

Id. at 1330 (quoting the patent specification). The court held that this statement

explicitly defined [the term water-soluble polydextrose] as limited to that prepared

with a citric acid catalyst and that it therefore effected a disclaimer of the other

prior art acids. Id. at 1331. Because [c]laims are not correctly construed to cover
.; ,gi what was expressly disdaimed, id., the court held that the claim did not cover

processes such as the defendants, which used phosphoric acid instead of citric acid.
See also Schering Corp. v. Amgeh Inc., 222 F.3d 1347, 1353 (Fed. Cir. 2000) (the

patentee expressly limited the meaning of the term IFN- to define the leukocyte
interferon (the inventor) described had in his original application).

v/6. Claim Differentiation: Contextual Meaning From Other Claims. As

previously mentioned, the Phillips majority used claim differentiation as one key
justification for its interpretation ofthe term little. This doctrine is the patent law
version of a general legal principle requirin mitten instrument to be interpreted

SO as not to render some language mere s lusageJThis interpretive canon

sometimes referred to as an anti-redundancy canon is supported by precedent

dating back to Mummy/'n Madison, 5 US. 137, 174 (1803) (It cannot be presumed
that any clause in the constitution is intended to be without effect; and therefore

such construction is inadmissible, unless the words require It has been

frequently applied in modern statutory construction too. See, e.g., Bailey u United
'. States, 516 US. 137, 146 (1995) (We assume that Congress used two terms because
it intended each term to have a particular, nonsuperuous meaning); Colautti u

Franklin, 439 US. 379, 392 (1979) (explaining that an elementary canon of
_CONStructon [is] that a statute should be interpreted so as not to render one part
_ HIOperative).

It is essential to recognize, however, that claim differentiation is merely a helpful

not an ironclad rule. See Akhil Reed Amar, Constitutional Redundancies and

.t'ilmm/ilg Clauses, 33 VAL. U. L. REV. 1, 2 (1998) ([M]ost lawyers and law students
**Saem tO misunderstand the true meaning and proper scope of [the antiredundancy]
778 INFRINGEMENT CH. 8 B-

rule of construction). Some provisions in a written instrument serve to clarify more the ta

amblguous provisions, see id., and thus the non-redundancy maxim is best viewed specific
as a mere guide. 0th

A good counterpoint to Phillips is once again found in Nystmm 'v. TREX. Recall u Apo

that the issue in Nystrom was the meaning of the word board, and the accused t languz

infringer wanted to limit the meaning of the claim to wooden boards. Nystrom Hacke
made the common sense argument that the meaning of board in claim I could not ? (Fed.

logically be limited to wooden boards, because claim 16 of the Nystrom patent with t
specifically claimed a wooden board. Interpreting board in claim 1 as implicitly ` 143 F.
meaning wooden board would render meaningless the limiting language found in becau
claim 16. If board in this patent means wooden board, then claim 16 would refer surfa(

to a wooden wooden board" -- a ridiculous proposition. Right? Not quite. Fix

The Federal Circuit began by reciting the doctrine of claim differentiation: style

When different words or phrases are used in separate claims, a difference in supra

meaning is presumed. 424 F.3d at 1143. But it is merely a presumption: heati

inter]
[S]imply noting the difference in the use of claim language does not end the descr

matter. Different terms or phrases in separate claims may be construed to

cover the same subject matter where the written description and prosecu- .

tion history indicate that such a reading of the terms or phrases is proper. )

Id. And so in Nystmm which is certainly not unique a consistent contextual A:

use of language ultimately proved decisive, despite the seemingly straightforward meat

logic of the claim differentiation canon. See also Laitram Corp. v. Momhouse strut
Industries, Inc., 143 F.3d 1456, 1463 (Fed. Cir. 1998) (overriding the presumption of Thus

claim differentiation with evidence of context). equii

/ 7. Purpose or Goal of the Invention. One contextual clue for supplying

meaning to a claim term is the purpose or goal of an invention. An example is found c dm
in Minnesota Mining & Manufacturing Co. u Johnson & Johnson Orthopaedics.

Inc., 976 F.2d 1559 (Fed. Cir. 1992). The plaintiff 3M held a series of patents related
to resin-based orthopedic casts, which have replaced old-fashioned plaster casts.

Several claims required the bandages for forming the cast to include a lubricant. l'

Some chemicals identified in the specification as effective lubricants had been used Bro

in prior art bandages, and the defendant argued that the claims were anticipated gre;

and therefore invalid. 'I

Although the prior art used similar chemicals for cast bandages, the prior art hea
bandages produced a tacky surface that caused problems in making the cast.3M'S that
patent taught ways to use chemicals including some found in the prior art tO Hy i
produce a lubricated or slippery surface. Relying on those teachingS, the district thai
court limited the claim term lubricant to mean substances capable of making the by .

bandage slippery when activated. The Federal Circuit affirmed, holding it Win
entirely proper to use the specification . . . to determine what the inventor dov
meant by terms and phrases in the claims. Id. at 1566. And in the specification, the d

Federal Circuit found that [t]he fundamental purpose and significance of the way
an

[patented] invention is to produce a non-sticky or non-tacky resin (i.e., a slippery

resin) to permit smoothing and forming of the casting tapes, thereby overcoming
 B. I INTERPRETING CLAIMS 779

the tacky resin problem of the prior art. This is evident throughout the patent
specification.

Other cases are to the same effect. See, e.g., Daiichi Phamwzceutical Co., Ltd

u Apotex, Inc., 380 F.Supp.2d 478 (D.N.J. 2005) (holding it proper to restrict claim

language in light of the fundamental purpose and significance of the invention);

Hockerson-Halberstadt, Inc. a Aria Group International, Inc, 222 F.3d 951, 956

(Fed. Cir. 2000) (affirming an interpretation of a claim phrase that was consonant
with the purpose of the invention.);Laitram Corp. u Morekouse Industries, Inc,

143 F.3d 1456 (Fed. Cir. 1998) (limiting the phrase driving surface to aflat surface

because the specification stressed benefits of the invention that required a flat

surface).

Finally, note that there is a close parallel between the contextual interpretation
style found in cases such as 3M and the written description cases (Chapter 4,
supra). Claims must be supported by the written description, and thus relying
heavily on the specification in claim interpretation may save some claims that, if
interpreted too broadly, would be invalid because they lack support in the written
description.

2. Equivalents and Means-Plus-Function Claims

As previously mentioned, 112(f) (formerly 116) requires claims containing

tual

'ard
means-plus-function elements to be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof."
ruse
Thus, in such claims, claim language is tied very tightly to the specification, with an
in of

equivalents analysis needed if the patentee wants to interpret the claim as covering
something not disclosed in the specification.- Does such an analysis limit patent
.ung claims to a very narrow scope? Consider the following case:
)und

dies, WRIGHT CO. v. PAULHAN

ated 177 F. 261 (CC. S.D.N.Y. 1910) (L. Hand. J.)
asts.

ant. [This case involves one of the most famous inventions in history, the Wright

used Brothers patent on a flying machine," and the decision was written by one of the

.ated greatest patent judges of all time. the celebrated Judge Learned Hand.

The Wrights patent focused on a vexing problem, which was how to construct a

heavier than air flying machine that could maintain stability in flight. A solution to
r art

3M`s that problem was to put it mildly very important since people do not like to

to fly in machines that lose stability and crash into the ground. The Wrights learned
strict that bending or warping the aircrafts wings changed the amount of lift gem-rated

g the
by each wing. Wing warping can help in balancing the aircraft. For example, if the

ng it wing on one side of the plane began to drop. that Mug could be temporarily warped
entor downward to add more lift on that side of the plane (see Figure 8-4; the side mark

d is being warped downward to add lift) while the wing on the opposite side was
i, the

f the warped in the opposite way to decrease lift (side The net effect Would be for the
aircraft to tend to rebalance itself.
)pery
.ming
l

i
i

*Lu