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Federal Circuit Reaffirms That Specification Cannot Broaden Narrow Claim Language

Posted Friday, March 9, 2018 by Kyle Straughan

The Federal Circuit recently affirmed a patent drafting principle that practitioners and inventors should keep in mind. Specifically, that general disclosures in a specification along with statements that describe the included embodiments as non-limiting cannot broaden claims that were narrowly drafted and prosecuted.

Chikezie Ottah (“Ottah”), one of the inventors of U.S. Patent 7,152,840 (“Book holder”), a book holding device intended for use in vehicles, strollers, wheelchairs, etc, filed suit against Fiat Chrysler and a number of other auto manufacturers, claiming that they had infringed upon his patent. The crux of Ottah’s argument was that the book holder device could also be interpreted to include the cameras many automakers attach to their vehicles. In a previous case, the Federal Circuit had held that Ottah’s claim’s language excluded fixed mounts because of claim language reading that the device be “removably attached,” and statements made during the patent’s prosecution. They found no reason to overrule previous claim construction and ruled in the defendant’s favor. In the present case, the district court granted summary judgment of non-infringement in the defendant’s favor once more.

On appeal of the present case, the Federal Circuit upheld the district court’s grant of summary judgment on the grounds of the original Federal Circuit dismissal, but also that Ottah’s patent could not be construed to include the equivalent or be the equivalent of a camera. While the specification did include a statement that the book holder “may also be used to support such items as audio/video equipment, PDAs, or mobile phones, cameras” along with other standard language that the invention is not limited to the included embodiments, the Federal Circuit found those statements were not sufficient given the specific claim language relating to book holders.


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