It’s good to see the CAFC address the growing gap between claim construction during litigation and claim interpretation during prosecution, the inconsistencies of which can only hurt patentees. The CAFC firmly rejected the PTO’s rigid, mechanical approach in trying to require an “explicit disclaimer” of a given element to exclude it from a broadest reasonable interpretation. “[T]he PTO’s reliance on cases like American Academy of Science and Retractable Technologies is misplaced.” The CAFC pointed out that it has consistently held that “[e]ven when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” Iredeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004). When an application “repeatedly, consistently, and exclusively” depicts a given element without a certain feature while simultaneously disparaging that feature, it is not reasonable to infer its presence in the claimed invention. “Although the PTO emphasizes that it was required to give all claims their broadest reasonable construction, … this court has instructed that any such construction be consistent with the specification, and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2011).
Background / Facts: The patents at issue are under reexamination at the PTO and directed to devices for monitoring glucose levels for diabetics. The devices are intended to overcome problems in the prior art systems where external wires and cables connecting the various components would restrict the movements and daily life activities of the user. To this end, the claimed invention provides an “electrochemical sensor” having “contact pads” that are “coupl[ed]” to “conductive contacts.” Nevertheless, the BPAI found that neither the claims nor the specification explicitly require the term “electrochemical sensor” to exclude sensors that have external cables or wires. According to the PTO, Abbott was required to make a “clear disavowal” or an “express disclaimer” of claim scope to preclude such an interpretation.
Issue(s): Whether the broadest reasonable interpretation of Abbott’s “electrochemical sensor” includes external cables and wires connecting the sensor to its control unit.
Holding(s): No. The Board’s construction of “electrochemical sensor” was unreasonable and inconsistent with both the language of the claims and the specification. The claims themselves suggest connectivity without the inclusion of cables or wires by reciting the contact pad coupling, and that suggestion is only reinforced by the specification. It is true that the specification does not contain an explicit statement disclaiming electrochemical sensors with external cables or wires, but nothing suggests or even hints that the claimed electrochemical sensor can include external cables or wires. Instead, Abbott’s patents consistently show the opposite.