Docket No. 2016-1200
PROST, REYNA, HUGHES
October 14, 2016
Brief Summary: DC claim construction based on “clear and unequivocal statements” in the specification and during prosecution affirmed.
Summary: Poly-America appealed DC claim construction of the term “short seal” in US 8,702,308 based on “clear and unequivocal statements that the inventor intended to limited the claimed invention to a trash bag with ‘short seals’ at its upper corners that extend inwardly to narrow the bag’s upper opening” (e.g., the advantage being that “the narrowed opening allows those drawstrings to wrap around the rim of a trash receptacle more securely than prior art trash bags”). API’s product was found not to infringe claim 10 under the DC’s construction. In explaining where “the ‘308 specification indicates the significance of the extended short seal feature”, the FC panel opinion points to “the title of the invention” (“Reduced Opening Elastic Drawstring Bag”), the Abstract (e.g., “the reduced upper opening width”), the Background of the Invention section (e.g., explaining “that prior art trash bags do not have extended short seals and can be difficult to secure over the lip of a trash receptacle”), and the written description (e.g., “In looking at both FIG. 1 and FIG. 2, it is important to note that one of the characteristics of the present invention is a reduction in the upper width…of the bag resulting from the extended short seals.”) And during prosecution, the applicants distinguished the prior art “on the basis that [the prior art’s] short seals were not extended to reduce the bag’s ‘relaxed upper opening width’ in relation to the ‘bag proper width’”. The examiner then withdrew the rejections because “the prior art failes to teach elastic drawstrings welded into the bag hem at short seals that form an upper opening that is smaller than the width of the bag.” The FC opinion explains that under Teva “[w]here the [DC’s] claim construction relies on intrinsic evidence”, it is reviewed de novo (Teva, US 2015) with “claims…generally given their ordinary and customary meaning” (Phillips, FC 2005) except where “a patentee acts as his own lexicographer” or “disavows the full scope of the claim term in the specification or during prosecution” (Hill-Rom Servs., Inc. v. Stryker, FC 2014 (“clear and unequivocal evidence that the claimed invention includes or does not include a particular feature” (Openwave, FC 2015), although “it need not be explicit” (Trs. of Columbia, FC 2016 (“Utlimately, the only meaning that matters in claim construction is the meaning in the context of the patent.”)). The FC panel found the description of “FIG. 1 and FIG. 2” to be a “clear statement”, the statement that prior art bags are difficult to secure which is solved using short seals, and the statements during prosecution all provided the required “clear and unequivocal evidence that the inventor intended to disavow any claim scope encompassing short seals that are not inwardly extended”. It also explained that “claim differentiation” (e.g., dependent claims explicitly providing reduced upper opening width”) “does not serve to broaden claims beyond their meaning in light of the patent as a whole” and this construction does not “render the more specific range provided by dependent claim 13 redundant.” The DC decision was therefore affirmed.