June is off with a CAFC case in which the same counsel that prosecuted the patent argued for a non-literal interpretation of the issued claims. If the client thinks that the patent you prosecuted will protect against infringement, then when you are asked ‘does it cover this,’ you may wonder how Markman would interpret the saying, ‘in a pickle.’ In Helmsderfer v. Bobrick Washroom, the fascinating market for baby-changing stations is at issue, and specifically, the embodiments of anti-vandalism stations. That’s those things on the wall in airport restrooms where you set your laptop case while you’re downloading.
The patentee, through counsel, had claimed that an element was “partially hidden from view.” Apparently, the accused element was totally hidden, but the patentee, through counsel, argued that to be hidden totally is also to be hidden partially. That’d be completely partially – you know, like totally, dude.
You may’ve read many cases on claim differentiation, but this one is not the usual independent/dependent application of the doctrine. Here, the patentee in other, non-litigated claims used the modifiers, “at least” and “generally.” So, the CAFC applied differentiation to conclude that if you meant that the element was ‘at least partially’ hidden, then you would have so claimed it – you did not, and it will not be interpreted as if done.
When the CAFC invoked claim differentiation to interpret claimed terms based on terms in other, non-litigated claims, the patentee in a move reminicent of Spy v. Spy, rejoined that the CAFC’s resulting interpretion was contrary to its oft-stated proscription against interpretations that end up not covering the preferred embodiment. So, in a further Spy v. Spy manuver, the CAFC retreated within an appellate wall that kept it from determining whether any other, non-litigated claims might cover the preferred embodiment. That closed the circle, which started with the CAFC looking at the other, non-litigated claims when applying claim differentiation, then refusing (like Lot’s Wife) to look there again. Ah, to have the unfettered whim of de novo review – it’s so liberating and it makes everything come out the way you wish it to.
The point of this, and a recent post, is that you can convince your client that the patent he obtained from your prosecution will provide all the needed protection, but you may be unable to convince a court of that point.