Still the Most Unclear Region in the Area Between the Described and Claim Embodiments.

In a semantic universe created perfectly, where all lines and orbits are uniform, there would be no need for Markman rulings. Everything would be clear. If that universe was instead, near-perfect, then the interpretive rules would uniformly delineate when the description of the preferred embodiment is done to provide an enlightened interpretation, and done to avoid importing limitations into the claim. In our world, each CAFC ruling on the subject stands as a pillar, separate from others in result, but with a monolithic reliance on the same interpretive rules.

Decided today was Lucent v. Gateway (CAFC 5/8/08) involving a claimed “terminal device” that may or may not be confined to a ‘smartphone.’ The CAFC takes one sentence to dissect the twin levels of analysis that only those registered to practice before the PTO tend to grasp. “We agree with Lucent that the smartphone in the Detailed Description is merely a preferred embodiment but disagree that it cannot be considered in interpreting the meaning of the claims.” If a mental scalpel can slice that apart, then before sewing it all up, consider first whether the applicant had disclaimed or is estopped from so “interpreting the meaning.” That procedure entails not only the region between interpretation and description in a confined area, but is more broad, since any alleged disavowing “statements by the applicants must be read in the context of its overall argument “. Not here, there; no there, and there; you know what I’m saying.

In this case, the district court worked hard to apply CAFC precedent, and in that court and before the CAFC, counsel did a excellent job of arguing the competing rules and exceptions implicit in CAFC jurisprudence.
It’s a “terminal device” for the love of Pete, is that term all that hard to interpret? Yes, in an imperfect universe with misaligned, asymmetric rules of interpretation.