Claim language that “is tailored to, characterizes, and delimits” a claim element may be interpreted as an intrinsic requirement of that element rather than expressing a mere possibility. Here, for example, specifying that the claimed picture frame / display is “mountable” was found to require some sort of mounting feature rather than merely expressing the fact that one could mount the picture frame if desired. “Absent from the claims are words that embrace broader meaning, such as ‘capable of,’ ‘adapted to,’ or ‘configured to.’” It may therefore be best to avoid claiming mere possibilities of claim elements where there is special corresponding feature.
Background / Facts: The patent being asserted here is directed to a mountable digital picture frame for displaying digital images. The specification discusses how a user can display digital images on a wall or desktop similar to conventional photographs. The claims recite “a mountable picture frame adapted to digitally display at least one still image thereon.”
Issue(s): Whether being “mountable” requires not just the capability of being mounted but more specifically some intrinsic feature that facilitates the mounting.
Holding(s): Yes. “When read in view of the specification, the claims do not permit the expansive construction proposed by [the patentee]. The term ‘mountable’ is a modifying word in the claims: ‘mountable picture display’ (claims 1, 13, 22, 29, 31); ‘mountable picture frame’ (claims 1, 22, 29); ‘wall mountable’ (claims 6, 13, 22, 31); ‘desk top mountable’ (claims 6, 22). Absent from the claims are words that embrace broader meaning, such as ‘capable of,’ ‘adapted to,’ or ‘configured to.’ The claim language is tailored to, characterizes, and delimits the claimed ‘picture frame’ and ‘picture display.’”