C.R. Bard, et al. v. United States Surgical Corp.
the Summary of the Invention將會是決定請求項用語的較重要考慮
20. An implantable prosthesis for repairing a tissue or muscle wall defect, comprising:
a hollow plug, ...... the surface of said hollow plug being conformable ......,
said hollow plug being extremely pliable, .......
於請求項清楚地記載沒有包含“pleated”。
The Summary of the Invention states that “[t]he present invention is an implantable prosthesis” and that “[t]he implant includes a pleated surface
The Abstract describes “[a]n implantable prosthesis including a conical mesh plug having a pleated
In particular, during the reexamination, Bard stated that “the surface of the inventive plug is pleated.”
清楚地記載包含“pleated”
若Surgical販售一個包含在請求項20文義範圍內但沒有pleated的implantable prosthesis，會落入Bard的專利請求項20的權利範圍嗎？
法官們的判決是，沒有落入Bard申請專利範圍第20項內，因為
Under this approach, where the ordinary meaning of a claim term is thus evident, the inventor’s written description of the invention, for example, is relevant and controlling insofar as it provides clear lexicography or disavowal of the ordinary meaning. See id. (“[T]he presumption in favor of a dictionary definition [of a claim term] will be overcome where the patentee, acting as his or her own lexicographer, has clearly set forth an explicit definition of the term different from its ordinary meaning. Further, the presumption also will be rebutted if the inventor has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.”
As demonstrated below, both the specification and the prosecution history require that the plug in claim 20 be pleated.
See Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998) (relying on “global comments made to distinguish the applicants’ ‘claimed invention’ from the prior art” during the prosecution of the patent in construing a claim term). Statements that describe the invention as a whole are more likely to be found in certain sections of the specification, such as the Summary of the Invention. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1348 (Fed. Cir.) (“Those statements, some of which are found in the ‘Summary of the Invention’ portion of the specification, are not limited to describing a preferred embodiment, but more broadly describe the overall inventions of all three patents.”),
解譯申請專利範圍用語的順序
Language in some of our recent cases, however, suggests that the intrinsic record, except for the claims, should be consulted only after the ordinary and customary meaning of claim terms to persons skilled in the pertinent art is determined.
第一：ordinary and customary meaning
When an analysis of intrinsic evidence resolves any ambiguity in a disputed claim term, it is improper to rely on extrinsic evidence to contradict the meaning so ascertained. [E]vidence extrinsic to the patent document “can shed useful light on the relevant art,” but is less significant than the intrinsic record in determining the “legally operative meaning of disputed claim language.”
第二：intrinsic evidence
第三：extrinsic evidence
但 是，[T]he presumption in favor of a dictionary definition [of a claim term] will be overcome where the patentee, acting as his or her own lexicographer, has clearly set forth an explicit definition of the term different from its ordinary meaning. Further, the presumption also will be rebutted if the inventor has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.
就這樣一句話，就把intrinsic evidence排到ordinary and customary meaning前面了，真混亂。
字 典屬於intrinsic evidence還是extrinsic evidence？技術性字典和一般性字典應該是屬於ordinary and customary meaning吧？那哪一個較屬於ordinary and customary meaning？
當字典和intrinsic evidence，不一致的時候怎麼辦？
Bard block quotes language from Texas Digital Systems, which advises that dictionaries might be more objective and reliable than other sources for determining the meaning of claim terms. In those two constructions, the Texas Digital Systems court concluded that the dictionary definition and intrinsic record were consistent with one another. Thus, Texas Digital Systems cannot be read as holding that a dictionary definition trumps the intrinsic record.
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