Translucent Lights Did Not Infringe Patent Claiming a "Clear" Holder for Light Emitting Diodes

Case: Terlep v. Brinkman Corp., No. 04-1337 (Fed Cir. 8/16/05)


The One Sentence Summary: The district court properly interpreted claims for a "clear" cover for a LED (light emitting diode) to exclude translucent covers, and therefore properly granted summary judgment of non-infringement either literally or under the doctrine of equivalents.

Federal Circuit Holdings:

• Claim construction serves to "elaborate" the claims based upon the specification, prosecution history and dictionaries: "The construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims." Embrex, Inc., v. Serv. Eng’g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000) (internal quotations and citation omitted). Interpreting the asserted claims entails a review of the intrinsic evidence, which consists of the claim language, the written description, and the prosecution history. See id.; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). '[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.' Phillips v. AWH Corp., No. 03-1269, 03-1286, 2005 U.S. App. LEXIS 13954, at *29 (Fed. Cir. Jul. 12, 2005) (en banc) (internal quotations omitted). “[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id. at *36-37. Extrinsic evidence such as dictionaries also “may be considered if the court deems it helpful in determining the true meaning of the language used in the patent claims,” id. at *39 (internal quotations omitted), provided the court “attach[es] the appropriate weight . . . to those sources in light of the statutes and policies that inform patent law,” id. at *58."
• The contrasting of diffusion lenses in the written description supported the district court's interpretation of the word "clear."
• The prosecution history supported the meaning of the term "clear" found by the district court where the applicant had added the limitation for a "clear plastic tubular holder" after a rejection and distinguished the prior art having a rough or sandblasted side. "Because the "clear plastic tubular holder" limitation helped distinguish the prior art from the claimed invention, the prosecution history supports construing the term "clear" to exclude plastic holders that are translucent or otherwise diffuse the light emitted from the LED. See Seachange Int’l, Inc. v. C-Cor Inc., No. 04-1375, 04-1498, 2005 WL 1523382, at *8 (Fed. Cir. June 29, 2005) ("Where an applicant argues that a claim possesses a feature that the prior art does not possess in order to overcome a prior art rejection, the argument may serve to narrow the scope of otherwise broad claim language."). "
• The court properly considered dictionary definitions for "clear" and synonyms in that definition which distinguished translucent as not allowing clear vision. Int’l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1374 (2004) (holding that it was improper for the district court to adopt a definition that was attributed to a synonym of the disputed term while disregarding the distinction set forth in the usage note).
• "The district court correctly construed the term "clear" to mean "transparent or having the property of transmitting light without appreciable scattering so that bodies lying beyond are seen clearly," and nothing in the claims or the written description warranted giving the term "clear" an expansive meaning that would cover "translucent" holders."
• The patentee was barred from asserting the doctrine of equivalents because the amendment adding the clear holder to the claim was not tangential when the non-diffusive aspect of the holder was argued to distinguish the prior art.