explaining expert testimony can “provide background on the technology at issue, . . . explain how an invention works, . . . ensure that the court’s understanding of the technical aspects of the patent is consistent with that of a [POSITA], . . . [and] establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field” (citations omitted)
How later courts described this case
- explaining expert testimony can “provide background on the technology at issue, . . . explain how an invention works, . . . ensure that the court’s understanding of the technical aspects of the patent is consistent with that of a [POSITA], . . . [and] establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field” (citations omitted)
- holding that courts should “avoid the danger of reading limitations from the specification into the claim” and “To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so
- explaining that “the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so” and noting that “although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments”
- holding that “because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence” (emphasis added)
Written by the judges who cited it.
The opinion
LOURIE, Circuit Judge,
concurring in part and dissenting in part, with whom PAULINE NEWMAN, Circuit Judge, joins.
I fully join the portion of the court’s opinion resolving the relative weights of specification and dictionaries in interpreting patent claims, in favor of the specification. I could elaborate more expansively on that topic, but Judge Bryson’s opinion for the majority says it so well, there is little reason for me to repeat its truths. I also agree with the court that claims need not necessarily be limited to specific or preferred embodiments in the specification, although they are limited to what is *1329 contained in the overall disclosure of the specification.
However, I do dissent from the court’s decision to reverse and remand the district court’s decision. The original panel decision of this court, which implicitly decided the case based on the priorities that the en banc court has now reaffirmed, interpreted the claims in light of the specification and found that the defendant did not infringe the claims. We affirmed the district court, which had arrived at a similar conclusion. The dissent from the panel decision relied on the “dictionaries first” procedure, which the court now has decided not to follow. Thus, while the claim construction issue had to be decided by the en banc court, I see no reason for the court, having reaffirmed the principle on which the district judge and the panel originally decided the case, to send it back for further review.
The court premises its reverse-and-remand decision on the concept of claim differentiation and the reasoning that the contested term “baffle” need not fulfill all of the functions set out for it in the specification. Reasonable people can differ on those points. However, the court did not take this case en banc because the full court differed with the panel majority on those disputable criteria. It did so to resolve the claim construction issue, which it has now done so well. Having done so, I believe that it should simply affirm the district court’s decision on the merits, consistently with that court’s rationale and that of the panel that affirmed the district court, which it now adopts.
I will not critique in detail particular statements the majority makes in rationalizing its reversal of the district court’s decision, such as “that a person of skill in the art would not interpret the disclosure and claims of the ’798 patent to mean that a structure extending inward from one of the wall faces is a ‘baffle’ if it is at an acute or obtuse angle, but is not a ‘baffle’ if it is disposed at a right angle,” or that “the patent does not require that the inward extending structures always be capable of performing that function [deflecting projectiles]” in order to be considered ‘baffles’.
I will simply point out that the specification contains no disclosure of baffles at right angles. Moreover, as the majority correctly states, a patent specification is intended to describe one’s invention, and it is essential to read a specification in order to interpret the meaning of the claims. This specification makes clear that the “baffles” in this invention are angled. There is no reference to baffles that show them to be other than angled. The abstract refers to “bullet deflecting ... baffles.” Only angled baffles can deflect. It then mentions “internal baffles at angles for deflecting bullets.” That could not be clearer. The specification then refers several times to baffles, often to figures in the drawings, all of which are to angled baffles. A compelling point is that the only numbered references to baffles (15, 16, 26, 27, 80, and 31) all show angled baffles.
The specification further states that steel panels “form the internal baffles at angles for deflecting bullets.” It states that the baffles are “disposed at such angles that bullets which might penetrate the outer steel panels are deflected.” It explains that if bullets “were to penetrate the outer steel wall, the baffles are disposed at angles which tend to deflect the bullets.” There is no specific reference in this patent to a baffle that is not angled at other than 90.
While, as the majority states, the specification indicates that multiple objectives are achieved by the invention, none of the other objectives is dependent upon whether the baffles are at other than a 90 angle, whereas the constantly stated objective of *1330 deflection of bullets is dependent upon such an angle.
Finally, even though claim construction is a question of law, reviewable by this court without formal deference, I do believe that we ought to lean toward affir-mance of a claim construction in the absence of a strong conviction of error. I do not have such a conviction in this case, after considering the district court’s opinion and the patent specification.
For these reasons, while I wholeheartedly join the majority opinion in its discussion and resolution of the “specification v. dictionaries” issue, I would affirm the decision below.