concluding that the patentee disclaimed a dual lumen configuration for balloon dilation catheters where the patent described both a dual lumen (side-by-side) and coaxial lumen config- uration, but the specification disparaged the dual lumen design, described the coaxial lumen design as “the present invention,” and explained that the coaxial lumen design was the structure “for all embodiments of the present in- vention contemplated and disclosed herein”
How later courts described this case
- concluding that the patentee disclaimed a dual lumen configuration for balloon dilation catheters where the patent described both a dual lumen (side-by-side) and coaxial lumen config- uration, but the specification disparaged the dual lumen design, described the coaxial lumen design as “the present invention,” and explained that the coaxial lumen design was the structure “for all embodiments of the present in- vention contemplated and disclosed herein”
- holding that “[w]here the specification makes clear that the invention does not include a particular .feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.”
- holding that, “by defining the claim in a way that clearly excluded certain subject matter, the patent implicitly disclaimed the subject matter that was excluded and thereby barred the patentee from asserting infringement under the doctrine of equivalents”
- holding that the fact that the written description stated a particular feature that offered advantages over the prior art supported the conclusion that the claims cannot be read so broadly as to encompass the distinguished prior art.
Written by the judges who cited it.
The opinion
DYK, Circuit Judge,
concurring.
On the facts of this particular case, I agree with the result reached by the majority, and I join the opinion. I also agree with the majority that “the written description can provide guidance as to the meaning of the claims, thereby dictating the manner in which the claims are to be construed, even if the guidance is not provided in explicit definitional format.” The problem is that our decisions provide inadequate guidance as to when it is appropriate to look to the specification to narrow the claim by interpretation and when it is not appropriate to do so. Until we provide better guidance, I fear that the lower courts and litigants will remain confused.