Issue 253 | November 30, 2004
C.R. Bard Clairifies Role of Dictionaries
from Texas Digital Systems

Texas Digital Systems does not stand for the proposition that “a dictionary definition trumps the intrinsic record;” read properly, the case provides a methodology that will permit claim terms to be "more accurately determined."

In C.R. Bard, Inc. and Davol Inc., v. United States Surgical Corp., No. 4-1135 (Fed. Cir. October 29, 2004) the federal circuit affirmed the district court’s summary judgment grant of noninfringement based on claim construction.

Bard sued U.S. Surgical for infringement of its ‘432 patent, directed to surgical plugs for repairing hernias. At issue was claim 20, which recited that the plug be “extremely pliable” and the surface of the plug be “conformable.” Construing the claim at issue as requiring pre-formed pleats, the district court granted summary judgment of noninfringement for Surgical because its accused product did not contain pre-formed pleats or their equivalents.

Affirming the district court ruling, the federal circuit agreed that the claim was limited to a plug with a pleated surface, based on the specification, the prosecution history, and statements made during reexamination. Writing for the panel, Judge Michel made it clear that the “intrinsic record is the primary source for determining claim meaning” and that dictionary definitions could not alter the meaning discerned from the intrinsic record. The holding of Texas Digital Systems relied on by Bard, was narrow, and dicta cited by litigants that dictionaries could “trump” the intrinsic evidence in construing a claim term had been taken out of context. Notwithstanding, the court concluded it was unnecessary to decide the precise relationship between ‘ordinary meaning,’ ‘dictionary definitions’ and ‘the intrinsic record,’ because “[r]esolution of the question may be approaching (citing the pending Phillips en banc appeal).

Here, the specification as a whole, and in particular, the summary of the invention and the abstract all describe the plug as pleated. Although not determinative, statements made about the invention as a whole are more likely limiting on the claimed invention generally than statements referring to particular embodiments. The prosecution history also supported pre-formed pleats. In arguments made to overcome prior art, Bard distinguished the plug’s pleated surface from those found in the applied references. During the reexamination, Bard argued that “the surface of the inventive plug is pleated,” a statement the federal circuit found as a clear disavowal of any broader claim scope.

Judge Michel’s elegant harmonization of the much-cited Texas Digital Systems case with the seemingly opposed line of authority emphasizing the primary role of the intrinsic record in construing claim terms foretells of a possible theme for resolving the clash of construction theories in the pending Phillips en banc appeal.

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To discuss these topics further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC, USA.

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