It is normally improper to construe claims in a manner that would exclude the preferred embodiment, especially where it is the only disclosed embodiment. In particular, “where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary.”
Background / Facts: The patents being asserted here are directed to light-emitting diode (LED) string lights, including an optical element that houses an LED and interacts with the light emitted therefrom to increase its viewing angle. The claims specify a design in which the optical element has “a substantially ellipsoidal inner profile and generally spherical outer profile.”
Issue(s): Whether the claims can be met if a mere portion of the inner profile is substantially ellipsoidal rather than requiring that the entire inner profile be substantially ellipsoidal.
Holding(s): Yes. “[W]ere we to adopt [the alternative] construction, that the entire inner profile must be substantially ellipsoidal, we would exclude the specification’s only disclosed embodiment. … We normally do not construe claims in a manner that would exclude the preferred embodiment, especially where it is the only disclosed embodiment.” No evidence was found to require the court to otherwise construe “substantially ellipsoidal inner profile” in a manner that would exclude the preferred embodiment. “There are no statements during prosecution or in the specification that indicate the patentee’s intent to limit his claim to an entire inner profile that is substantially ellipsoidal. And the specification makes clear that the patentee considered [the preferred embodiment in] Figure 7 to have an ‘ellipsoidal inner profile.’”