In vacating a decision by a district court that granted summary judgment of non-infringement, the U.S. Court of Appeals for the Federal Circuit held that the prior art definition of the claim term "amorphous" was preferred over the dictionary definition. Kumar v. Ovonic Battery Co., Inc., et al., Case Nos. 02-1551, -1574, 03-1091 (Fed. Cir. Dec. 11, 2003).
The patent-in-suit is directed to a battery that employs a certain alloy to store hydrogen in a rechargeable battery, overcoming the inevitable fracturing associated with repeated recharging. The claimed alloy has a molecular structure that is less ordered than prior art materials, and thus more immune than highly ordered structures to material fracture caused by repeated recharging. The parties disputed the construction of the claim term "amorphous" and whether it should be construed to mean "completely amorphous," i.e., no ordering of molecules, or, using a prior art definition, be constructed to cover partially crystalline alloys with a long range order less than 100nm. The district court had found that the specification and prosecution history supported the plain meaning of the term "amorphous," and that the patentees had proposed a definition relying on a prior art reference that was "developed after his patent was filed, and therefore [could not] be taken to describe accurately what he sought to patent."
On appeal (where the patent owner appeared pro se), the Federal Circuit reversed. In its analysis, the panel (citing Texas Digital) looked to a dictionary to ascertain the plain meaning of the disputed claim term but then considered the alternative definition found in a prior art reference that was cited and extensively discussed during prosecution. The Court reasoned that "although the dictionary can be an important tool in claim construction by providing a starting point for determining the ordinary meaning of a term to a person of skill in the art, ‘the intrinsic record’ can solve ambiguity in claim language or, where clear, trump an inconsistent dictionary definition." The Court looked at the prior art cited in the patent as intrinsic evidence and further explained that "when prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning."
The Federal Circuit also considered the patentee’s own lexicography in defining the term "amorphous." After noting that its precedent will give significance to terms such as "completely" or "normally," the Court found that in this case the specification and prosecution history did not clearly and deliberately define the term "amorphous" as completely amorphous, and, thus, did not support a construction of the disputed term contrary to the meaning established in the prior art reference. The Court noted that it would be inappropriate to limit a broad definition of a claim term based on prosecution history that is itself ambiguous.
In a concurring opinion, Justice Bryson agreed with the panel, but did so after considering "the totality of the evidence" and indicated that he would have expanded the scope of the remand to determine whether a person skilled in the field of amorphous solids would find the phrase "random atomic orientation" indicative of a particular class of structures, or whether the term is too indefinite to provide any significant guidance as to the bounds of the term "amorphous."
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
