Patent Law Doctrines Give Special Meanings to the Words "First", "A" and "Adjacent"

Case: Free Motion Fitness, Inc. v. Cybex International, Inc., No. 05-1006 (Fed. Cir. 9/16/05)

The One Sentence Summary: The panel reversed the district court's summary judgment of non-infringement, finding that the court below had erred in: (1) interpreting the word "first" in a spatial sense; (2) construing "a cable" to mean a single cable; (3) interpreting "adjacent" to mean with no intervening pieces; (4) applying prosecution history estoppel.


What They Were Fighting About: Exercise machines with pivot points and cables.

Federal Circuit Holdings:

• The district court erred in construing the claim term "first pivot point" as being spatially related. The terms "first" or "second" in patents typically are used to distinguish between repeated elements in a claim.
• In interpreting the word "adjacent", the panel turned to dictionary definitions because there was no specialized meaning in the art. The court used the specification to choose between two possible meanings rather than automatically choosing the broadest meaning.
• The court refused to construe the term "adjacent" to preserve claim validity because that method is only used when the claim is ambiguous.
• References to "a" cable did not limit the claims to a single cable. Use of the indefinite article "a" or "an" means "one or more" in open ended claims using the word "comprising" unless there is a clear intent to limit the claim. The preferred embodiment that referred to a single cable could not be used to limit the claims. Later references to "the" cable also did not limit the claims to a single cable.
• Claim differentiation applied when later claims referred to a "single cable" - this implied that earlier references to "a cable" had a different scope.
• The district court erred in finding that prosecution history estoppel barred an assertion of equivalents against devices which added an element that was argued during the prosecution history to be an undesirable feature of the prior art. Adding additional elements to an open ended claim does not avoid infringement.
• Judge Prost dissented, arguing that the district court had ruled correctly.