Another reminder to avoid characterizing the “invention” itself, as opposed to certain “embodiments” of the invention. The courts have repeatedly warned against confining claims to a particular embodiment and the need to avoid importing limitations from the specification into the claims. However, “this concern is tempered by the consideration that ‘[a]n inventor is entitled to claim in a patent what he has invented, but no more.’” Where the specification clearly limits the “invention” to a particular form, it is appropriate to construe the claims consistently with that limitation. See also Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (holding that the claims were limited to fuel filters, despite the fact that the claims contained no fuel filter limitation, because “[o]n at least four occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present invention … ’”).
Background / Facts: The claims at issue are directed to transmitting digital data across high data rate communications networks and recite the manipulation of modulated signal wave characteristics, each characteristic being represented by a dimension (e.g., the I and Q dimensions of Quadrature Amplitude Modulation) of a transmitted “signal point.” The parties agree that that one-dimensional signal points are conceivable in the abstract, but Cablevision asserts that, in the context of the patent, signal points are limited to only points on a two-dimensional constellation because the specification unambiguously refers to the invention as an improvement on an existing system (described in the inventor’s previous patent) using only two-dimensional signal point constellations, and that all references within the specification are consistent with that understanding. The district court agreed.
Issue(s): Whether the specification limits the term “signal point” to two-dimensional signal points and excludes signal points having only a single dimension.
Holding(s): Yes. When the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment. Here, the specification repeatedly refers to the “present invention” as a specific improvement on a known system and as limited to using two-dimensional signal points. The specification clearly defines the dimensionality of signal point and contemplates no variation on that system.