RENISHAW PLC v MARPOSS SOCIETA' PER AZIONI, ET AL.
要了解申請專利範圍的解譯這是一個很重要的判例，我覺得，它主要是探討是不是應將說明書中的限制條件，讀進申請專利範圍來限制權利範圍的情形。
Renishaw, of course, alludes to a familiar pair of claim construction canons: (a) one may not read a limitation into a claim from the written description, but (b) one may look to the written description to define a term already in a claim limitation, for a claim must be read in view of the specification of which it is a part. These two rules lay out the general relationship between the claims and the written description. See Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed. Cir. 1996); Markman v. Westview Instruments, Inc. , 52 F.3d 967, 979-80, 34 USPQ2d 1321, 1329-30 (Fed. Cir. 1995) (in banc), aff'd , 517 U.S. 370, 38 USPQ2d 1461 (1996). As rules at the core of claim construction methodology, they provide guideposts for a spectrum of claim construction problems.
Although no canon of construction is absolute in its application, these two rules share two underlying propositions. First, it is manifest that a claim must explicitly recite a term in need of definition before a definition may enter the claim from the written description. This is so because the claims define the scope of the right to exclude; the claim construction inquiry, therefore, begins and ends in all cases with the actual words of the claim, see AbTox, Inc. v. Exitron Corp. , 122 F.3d 1019, 1023, 43 USPQ2d 1545, 1548 (Fed. Cir. 1997) ("[T]he language of the claim frames and ultimately resolves all issues of claim interpretation."); Bell Communications Research, Inc. v. Vitalink Communications Corp. , 55 F.3d 615, 619-20, 34 USPQ2d 1816, 1819 (Fed. Cir. 1995). The intrinsic evidence, and, in some cases, the extrinsic evidence, can shed light on the meaning of the terms recited in a claim, either by confirming the ordinary meaning of the claim terms or by providing special meaning for claim terms. See Vitronics , 90 F.3d at 1583, 39 USPQ2d at 1577. However, the resulting claim interpretation must, in the end, accord with the words chosen by the patentee to stake out the boundary of the claimed property. See Thermalloy, Inc. v. Aavid Eng'g, Inc. , 121 F.3d 691, 693, 43 USPQ2d 1846, 1848 (Fed. Cir. 1997) ("[T]hroughout the interpretation process, the focus remains on the meaning of claim language.").
Thus, a party wishing to use statements in the written description to confine or otherwise affect a patent's scope must, at the very least, point to a term or terms in the claim with which to draw in those statements. Without any claim term that is susceptible of clarification by the written description, there is no legitimate way to narrow the property right. The Supreme Court has clearly stated the rationale for this requirement:
[W]e know of no principle of law which would authorize us to read into 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.
McCarty v. Lehigh Valley R.R. , 160 U.S. 110, 116 (1895). If we need not rely on a limitation to interpret what the patentee meant by a particular term or phrase in a claim, that limitation is "extraneous" and cannot constrain the claim. See Hoganas AB v. Dresser Indus., Inc. , 9 F.3d 948, 950, 28 USPQ2d 1936, 1938 (Fed. Cir. 1993) ("It is improper for a court to add 'extraneous' limitations to a claim, that is, limitations added wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim." (quoting E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co. , 849 F.2d 1430, 1433, 7 USPQ2d 1129, 1131 (Fed. Cir. 1988)); see also Specialty Composites v. Cabot Corp. , 845 F.2d 981, 987, 6 USPQ2d 1601, 1605 (Fed. Cir. 1988) ("Where a specification does not require a limitation, that limitation should not be read from the specification into the claims." (citing Lemelson v. United States , 752 F.2d 1538, 1551- 52, 224 USPQ 526, 534 (Fed. Cir. 1985)); cf. Constant v. Advanced Micro- Devices, Inc. , 848 F.2d 1560, 1571, 7 USPQ2d 1057, 1065 (Fed. Cir. 1988) (holding that the written description provided "no evidence to indicate that [] limitations must be imported into the claims to give meaning to disputed terms").
The other clear point provided by these two canons covers the situation in which a patent applicant has elected to be a lexicographer by providing an explicit definition in the specification for a claim term. In such a case, the definition selected by the patent applicant controls. The patentee's lexicography must, of course, appear "with reasonable clarity, deliberateness, and precision" before it can affect the claim. In re Paulsen , 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994); see Intellicall, Inc. v. Phonometrics, Inc. , 952 F.2d 1384, 1388, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992). If the patentee provides such a clear definition, the two canons require reference to the written description, because only there is the claim term defined as it is used by the patentee. The law provides a patentee with this opportunity because the public may not be schooled in the terminology of the technical art or there may not be an extant term of singular meaning for the structure or concept that is being claimed. See Lear Siegler, Inc. v. Aeroquip Corp. , 733 F.2d 881, 889, 221 USPQ 1025, 1031 (Fed. Cir. 1984).
Absent a special and particular definition created by the patent applicant, terms in a claim are to be given their ordinary and accustomed meaning. See York Prods., Inc. v. Central Tractor Farm & Family Ctr. , 99 F.3d 1568, 1572, 40 USPQ2d 1619, 1622 (Fed. Cir. 1996) ("Without an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning."); Carroll Touch, Inc. v. Electro Mechanical Sys., Inc. , 15 F.3d 1573, 1577, 27 USPQ2d 1836, 1840 (Fed. Cir. 1993). Thus, when a claim term is expressed in general descriptive words, we will not ordinarily limit the term to a numerical range that may appear in the written description or in other claims. See Modine Mfg. , 75 F.3d at 1551, 37 USPQ2d at 1612. Nor may we, in the broader situation, add a narrowing modifier before an otherwise general term that stands unmodified in a claim. See, e.g. , Bell Communications , 55 F.3d at 621-22, 34 USPQ2d at 1821 (faulting the district court for interpreting claim term "associating" to cover only explicit, and not implicit, association); Specialty Composites , 845 F.2d at 986-87, 6 USPQ2d at 1604 (refusing to limit the recited claim term "plasticizer" to external plasticizers where skilled artisans used the term broadly). For example, if an apparatus claim recites a general structure ( e.g. , a noun) without limiting that structure to a specific subset of structures ( e.g. , with an adjective), we will generally construe the claim to cover all known types of that structure that are supported by the patent disclosure. See, e.g. , Virginia Panel Corp. v. MAC Panel Co. , 133 F.3d 860, 865-66, 45 USPQ2d 1225, 1229 (Fed. Cir. 1997) (claim term "reciprocating" is given its ordinary meaning and not limited to mere linear reciprocation); Sjolund v. Musland , 847 F.2d 1573, 1581-82, 6 USPQ2d 2020, 2027 (Fed. Cir. 1988) (refusing to limit claim term "baffle" to only rigid baffles and term "panel" to only panels of lattice construction).
However, a common meaning, such as one expressed in a relevant dictionary, that flies in the face of the patent disclosure is undeserving of fealty. As one of our predecessor courts stated in Liebscher v. Boothroyd , 258 F.2d 948 (CCPA 1958):
Indiscriminate reliance on definitions found in dictionaries can often produce absurd results. . . . One need not arbitrarily pick and choose from the various accepted definitions of a word to decide which meaning was intended as the word is used in a given claim. The subject matter, the context, etc., will more often than not lead to the correct conclusion.
Id. at 951; see Digital Biometrics, Inc. v. Identix, Inc. , 149 F.3d 1335, ___, 47 USPQ2d 1418, 1426 (Fed. Cir. 1998); see also Intel Corp. v. United States Int'l Trade Comm'n , 946 F.2d 821, 836, 20 USPQ2d 1161, 1174 (Fed. Cir. 1991) (affirming construction of "permanent" as a relative term in light of the patent disclosure); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc. , 776 F.2d 281, 298, 227 USPQ 657, 668 (Fed. Cir. 1985) (claim limitation requiring that a process be carried out "under substantially anhydrous conditions with the removal of water above 100° C" covered only continuous removal of water, because the written description stated that failure to remove water continously would adversely affect the process). Thus, where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meaning.
Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. See Markman v. Westview Instruments, Inc. , 517 U.S. 370, 389 , 38 USPQ2d 1461, 1470 (1996). The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction. See Young Dental , 112 F.3d at 1142, 42 USPQ2d at 1593 (affirming the district court's claim construction as "a more natural reading of the claim language" than the appellant's construction); cf. Llewellyn, supra note 2, at 401 ("Plainly, to make any canon take hold in a particular instance, the construction contended for must be sold, essentially, by means other than the use of the canon: The good sense of the situation and a simple construction of the available language to achieve that sense, by tenable means, out of the statutory language ."). A claim construction is persuasive, not because it follows a certain rule, but because it defines terms in the context of the whole patent.
【摘錄】Thus, a party wishing to use statements in the written description to confine or otherwise affect a patent's scope must, at the very least, point to a term or terms in the claim with which to draw in those statements.
翻譯一：當事人想要用書面記載中的陳述，來限制申請專利範圍；或者不然，而是想要用來影響申請專利範圍，則必須至少指出申請專利範圍中的用語；以及於該些陳述中使用該些用語來進行描述。
翻譯二：當事人想要用書面記載中的陳述，來限制申請專利範圍；或者不然，而是想要用來影響申請專利範圍，則必須至少指出申請專利範圍中的用語；以及導出其定義的說明間的關係。
參考：舊blog。
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