That Uncertain Region Provokes Tension in the Districts.

Ah, the smell of the first nonprecedential opinion and a cup of java to start the morning. In a judgment order, the CAFC affirmed the non-infringement ruling in Airgo v. ArvinMeritor. Was the uncertain region between interpreting the spec and importing elements into the claims mentioned? The CAFC mentioned nothing, but in reply to the patentee’s contention that the Markman ruling had “import[ed] a feature from the preferred embodiment into the claims” the uncertain region was noted by the District Judge.

However, there is tension between the principle that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, i.e., the inventor’s lexicography, and the principle of claim differentiation”.

The tension was around elements that were claimed as “tubular” and “flexible” (callling to mind my two-hour interview with an examiner over the relative breadth of the terms “cylindrical,” “tubular,” and “hollow” ;and another time debating “resilient” versus “flexible”). The noted “tension” did not subside entirely, because the Judge worried he may not have navigated the uncertain region correctly. In denying prevailing party and exceptional case attorney fees, the District Judge all but acknowledges his uncertainty about claim intepretation as one factor that negated a finding of bad faith:

“Plaintiffs’ patent infringement claim was certainly not objectively baseless. The single most difficult issue in this case was construction of the claim term “tubular member” in Claim 1 of Plaintiffs’ ‘645 Patent. It was certainly at least arguable that the “tubular member” as used therein could be flexible, rigid or part flexible and part rigid depending upon the precedence given to differing rules of claim term construction.”

Should district judges, after reading all the CAFC rules of interpretation, be left wondering about what ‘precedence [need be] given to differing rules of claim term construction?’ Guess that the Airgo appeal was not the sort of ‘vehicle’ the CAFC looks for to re-map the uncertain region between interpretation and importation.  
It sort of was Don Dunner week at the CAFC. In this week’s rulings, Mr. Dunner represented appellants in Airgo v. ArvinMeritor, in Mangosoft v. Oracle, and in Aventis Pharm v. Amphastar. But then, maybe it wasn’t the week that Dunner hoped for, since the CAFC affirmed in each case.