The razor-thin line between not limiting claims to preferred embodiments while reading claims in light of the specification of which they are a part is again sharpened. A divided court complicates a patentee’s task in seeking, obtaining, and enforcing claims whose scope is intended to be commensurate with, but not limited by, the patent specification.
In Gillette Co. v. Energizer Holdings, Inc., No. 04-1220 (Fed. Cir. April 29, 2005) (Rader. J.), the Federal Circuit vacated the denial of a preliminary injunction against Energizer’s Quattro® razor blade, based on an erroneous claim construction of Gillette’s ‘777 patent directed to a disposable safety razor.
Gillette’s ‘777 patent claims recite a safety razor blade “comprising a guard, a cap, and a group of first, second, and third blades” wherein the exposure of the first and third blade edges relative to the to the guard and the cap is defined in mm, and the second blade is located between the first and third blades. Although Energizer’s Quattro® razor had a guard, a cap, and four blades that met the blade edge exposure requirements, the district court denied a preliminary injunction based on its interpretation of Claim 1 as covering a razor with three blades, not four.
On appeal, the federal circuit relied on the claim terms “comprising” and “group of” as open-ended, permitting the inclusion of additional features not literally recited within the claim itself. The Court emphasized the primacy of intrinsic evidence in construing claim terms, and cited the specification’s reference to descriptions of the invention as having a plurality of blades. In addition, applicants argued in the prosecution of the European counterpart of the ‘777 patent that a claim (similar to Claim 1 in the U.S. application) would not exclude an arrangement with four or more blades. Accordingly, the federal circuit reversed and remanded for the development of a more complete record on claim construction.
Dissenting, Senior Judge Archer disagreed with the majority’s interpretation of “comprising”, since the location of that term in Claim 1 refers only to the total number of elements in the razor, not additional blades within the blade unit. Citing exhaustively the specification and the dependent claims, the dissent disagreed that the specification could support an interpretation of the claims that would include four blades. The specification repeatedly referred to the invention as having three blades, disclosed embodiments which did not vary the number of blades, and discouraged the use of more than two blades (except for the use of three blades with the claimed geometry).
The case is interesting to those anticipating claim construction guidance in the pending Phillips appeal from a fractioned court, divided on e.g., the role of the specification in interpreting claims. Judge Archer’s dissent presents a well-reasoned application of the other axiom of claim construction, reading the claims in view of the specification of which they are a part. See Liebel-Flarsheim, 358 F.3d at 907-08.
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