By Nam Kim and Martin Bader

In Thorner v. Sony Computer Entertainment America, LLC, 669 F.3d 1362 (Fed. Cir. 2012) (Moore, Rader & Aiken (D. Or. sitting by designation)), the Federal Circuit explained that, under Phillips, a claim term is given its ordinary and customary meaning as understood by a person of ordinary skill in the art except under one of the following two circumstances: (1) the patentee acted as his own lexicographer and clearly demonstrated his intent to redefine the term; or (2) the patentee clearly disavowed the scope of the claim either in the specification or during prosecution.[1] In American Calcar v. American Honda, 651 F.3d 1318 (Fed. Cir. 2011) (Lourie, Bryson, Garjasa), the Federal Circuit set out a claim construction framework that is apparently inconsistent with that of Thorner. This article identifies the apparent inconsistency between the claim construction frameworks of Thorner and Calcar and proposes a way to reconcile the inconsistency or, in the alternative, explain its cause. In Thorner, the Federal Circuit considered the construction of the phrase “attached to said pad,” which the district court construed to mean an actuator that was attached to an exterior surface of the pad. The district court relied on the specification’s use of the term “attached” only in connection with embodiments where the actuator was attached to a pad’s outside surface, and contrasted it to an embodiment where the actuator was attached inside the pad, but was described in the specification as being “embedded” in the pad. After the claim construction order by the district court, the parties stipulated to noninfringement and appealed.

The Thorner panel reversed, finding that the district court erred in its reliance on the specification and its use of “attached” for embodiments having external actuators and “embedded” for embodiments having an internal actuator. While acknowledging that the specification never uses the word “attached” when referring to an actuator located on the interior of a controller, the panel held that this does not rise to the level of either lexicography or disavowal. The panel stated that these two potential exceptions require a clear and explicit statement by the patentee; it is not enough that the patentee used the term “attached” when referring to a connection to an outer surface of the pad in every embodiment.

The holding of Thorner regarding the two exceptions to the ordinary and customary meaning appears to be in conflict with the holding of the earlier Federal Circuit case of Calcar, with respect to one of the disputed claim terms. In Calcar, American Calcar (ACI) sued Honda for infringing 15 patents. The patents fell into various functional categories, including the following three categories relevant to the issue of claim construction: (1) "Car-Mail" patents directed to notifying drivers about a "faulty condition" such as a condition for which the manufacturer issues a recall; (2) a "Radio" patent directed to a centralized entertainment system for use in vehicles to facilitate a user’s control and management of entertainment program selection; and (3) "Service Provider" patents directed to identifying a service provider when a vehicle needs a service.

The district court narrowly construed disputed claim terms based on the specifications and prosecution histories of the patents. For the Car-Mail patents, the term "message" was construed as requiring an address in the format "<vehicle-id>@<domain>" instead of "communications" as ACI had argued. For the Radio patent, the claim term "source" was construed to require a broadcast from a fixed location on a specified frequency instead of "any point from which information originates" as ACI had argued. For the Service Provider patents, the claim terms "in response to" and "when" were construed as requiring a second event occurring after a first event without any intervening action by the user (a cause-and-effect limitation added by the district court) between the two events instead of one event happening before the other as ACI had argued.

The Federal Circuit panel in Calcar agreed with the district court’s narrow constructions of all of the above claim terms. For the "message" term, the panel agreed with the district court’s narrow construction based on the specification, including the following description that Honda pointed to as the definition of the term: "However, in accordance with the invention, a C-mail address is in the format of <vehicle-id>@<domain>." The panel observed that "Given the manner in which the specification emphasizes the similarity of a car-mail message to a typical e-mail message, it is essential that a car-mail message have an address that includes an identifier unique to the vehicle," citing to Hologic, Inc. v. SenoRx, Inc., No. 2010-1235, 2011 WL 651791, at *8 (Fed. Cir. Feb. 24, 2011) (limiting the construction of a term where “the specification, including the figures, consistently and exclusively” disclose only one embodiment, and “that is clearly what the inventors of the . . . patent conceived of”).

Regarding the term "source," the Calcar panel agreed with the district court that the term refers to a fixed source of broadcast on a specified frequency, relying solely on the specification. In particular, the panel noted that "[t]he specification characterizes sources as radio stations with limited geographic coverage, explaining how a user can lose the radio signal by travelling outside the coverage area" and that "[t]he patent also discloses the use of a frequency scanner to find and list radio stations in the receiving range." Based on these disclosures in the specification, the panel decided that it was proper to limit the term "source" in the manner that the district court did, citing to Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (en banc) ("[We] may reach a narrower construction limited to the embodiment(s) disclosed in the specification, when the claims themselves, the specification, or the prosecution history clearly indicate that the invention encompasses no more than the confined structure or method."). The panel further noted that ACI’s broad reading of the term "source" as any source of information is not supported in the specification.

For the term "in response to," the Calcar panel agreed with the district court in requiring a cause-and-effect relationship. For the term "when," the panel also agreed with the district court with regards to the negative limitation that there must not be any intervening action by the user between the two events. Regarding the cause-and-effect relationship, the panel observed that the language "in response to" connotes that the second event occurs in reaction to the first event. Hence, the language of the claim itself suggests that when a vehicle condition is detected, the processing element identifies a provider automatically as opposed to requiring further user interaction. As for the negative implication that there be no intervening action by the user , the panel noted that during prosecution the applicants distinguished a prior art patent that disclosed an intervening action taken by the user between two events.

The question is whether Calcar‘s claim construction holding is consistent with the Thorner framework and, more specifically, whether the rationale used for limiting the scope of each disputed claim term in Calcar falls within the Thorner exceptions to the ordinary and customary meaning, namely, that the patentee acted as his own lexicographer or expressly disavowed the meaning either in the specification or during prosecution.

For the disputed terms at issue in the Car-Mail patents and the Service Provider patents, it appears that the cases can be reconciled. For example, regarding the term "message," the patentee arguably redefined the term as requiring an address in the format "<vehicle-id>@<domain>" by describing in the specification that "C-mail address is in the format of <vehicle-id>@<domain>." Regarding the phrase "in response to," the ordinary and customary meaning of the phrase arguably requires a cause-and-effect relationship and, therefore, the phrase was given its ordinary and customary meaning. For the term "when," the patentee arguably disavowed the scope of the term through the operation of prosecution history estoppel, i.e., the second Thorner exception.

However, the term "source" at issue in the Radio patent presents difficulties in reconciling the two cases. For this term, there was no factual allegation that the patentee acted as his own lexicographer to redefine the term or expressly disavowed its scope in the specification or during prosecution. Nevertheless, the Calcar panel limited the scope of the term to a fixed source of broadcast on a specified frequency by relying solely on the disclosure, which characterizes “sources” as radio stations with limited geographic coverage, and because of the use of a frequency scanner to find and list radio stations in the receiving range. There was no allegation that the term "source" in the context of the Radio patent had an ordinary and customary meaning narrower than what ACI argued, namely, any source of information. How can, then, this narrow construction of the term "source" in Calcar be reconciled with Thorner?

One possible way to explain the apparent inconsistency is to assume that a clear and intentional disavowal of claim scope to the embodiment(s) disclosed in the specification exists if conferring the ordinary and customary meaning to a claim term renders the claimed invention inconsistent with the written description. For example, claim 21 of the Radio patent is directed to presenting a list of sources (e.g., radio stations) from which the vehicle can selectably receive entertainment programs. The specification of the Radio patent at Column 20, lines 43-53 describes the list of radio stations as follows:

In accordance with an aspect of the invention, the frequencies of the selected stations are stored based on geographic locations such as Los Angeles, Santa Ana and Irvine. As is well known, the geographic coverage of each station is limited. As a user travels beyond the coverage, the broadcast from that station becomes too weak to receive. As such, processor 103 continually causes a frequency scanner to update the listed stations which are within the receiving range. The user may save a subset of the listed stations as his/her favorite stations according to the current vehicle location.

In the accused products, the source of the XM radio signal was a satellite that can cover the entire Southern California. Therefore, if the term "source" is afforded the ordinary and plain meaning of "any source of information" including a satellite as ACI argued, the above-identified description relating to maintaining and updating a list of radio stations within the receiving range becomes nonsensical. To put it differently, the claimed invention becomes inconsistent with the description if the claim term is assumed to have an ordinary and customary meaning, i.e., "any source of information" including a satellite. Only by limiting the scope of the term to the described embodiment (i.e., a fixed source of broadcast) as the district court did, does the claimed invention have a sensible support in the specification.

This is not the case with the phrase "attached to said pad" at issue in Thorner. The specification described two different embodiments, one embodiment with an actuator "attached to" an exterior surface of the pad and another embodiment with an actuator "embedded" inside the pad. Accordingly, the claimed invention is consistent with its written description when the phrase is afforded the ordinary and customary meaning that encompasses both external and internal attachments.

Another potential explanation for the apparent inconsistency between Thorner and Calcar is that it was just a luck of the draw. In other words, the Thorner panel happened to have more judges who believe that the scope of a claimed invention is defined by the language of the claim and not by what is described about the invention in the specification, while the Calcar panel happened to have more judges who believe that the scope of the claim should not be extended beyond what the inventor actually invented as gleaned from the written description. This apparent inconsistency between Thorner and Calcar may be therefore emblematic of a divide among the Federal Circuit judges regarding the proper role of the specification in the claim construction process. If this explanation is correct, at least to some judges, there is a third exception for the ordinary and customary meaning if the specification clearly indicates that the invention encompasses no more than the described embodiment(s) even if there is no express redefinition or disavowal in the specification or prosecution history. Ultimately, an en banc Federal Circuit review of a case presenting facts like Calcar may resolve this apparent inconsistency.