Examiner's Amendment Presumed to Be Limiting in Claim Construction

Case: Schoenhaus v. Genesco, Inc., No. 05-1278 (Fed Cir. 3/15/06)


The One Sentence Summary: The panel affirmed summary judgment based on implied claim construction rulings where the term "orthotic device" had to be interpreted consistently across all claims where it appeared, and the term "rigid" added by Examiner's Amendment must be interpreted to exclude semi-rigid elements.


What They Were Fighting About: The district court granted summary judgment of non-infringement, holding that a claim for an "ortothic device" could not be interpreted to encompass a shoe with rigid elements, and that the term "rigid" added by Examiner's Amendment excluded semi-rigid elements.

Federal Circuit Holdings:

• The term "orthotic device" appearing in both claims 1 and 2 was presumed to have the same meaning unless it was clear from the specification and prosecution history that the term had different meanings at different portions of the claim.
• Substituting plaintiff's proposed construction of orthotic device as a shoe lead to a nonsensical construction that must be rejected.
• While an applicant may be his own lexicographer, the specification and prosecution history did not show evidence that the term "rigid" was defined to include "semi-rigid."
• An Examiner's amendment to include the word "rigid" must be presumed to be added as a limiting element for a substantial reason related to patentability.
• The broader disclosure of the specification for a semi-rigid construction was surrendered to the public when the claims had narrower scope of "rigid" material.