Repeated, Consistent and Exclusive Description Guides Claim Construction: Federal Circuit | Practical Law

Repeated, Consistent and Exclusive Description Guides Claim Construction: Federal Circuit | Practical Law

In In re Abbott Diabetes Care Inc., the US Court of Appeals for the Federal Circuit vacated in part and remanded the Board of Patent Appeals and Interferences' (BPAI) decision rejecting certain patent claims concerning methods and devices for monitoring glucose levels for diabetics. The Federal Circuit held that the BPAI's rejections were based, at least in part, on a claim construction that was contrary to the repeated, consistent and exclusive description of the claimed invention in the patent specification.

Repeated, Consistent and Exclusive Description Guides Claim Construction: Federal Circuit

by PLC Intellectual Property & Technology
Published on 02 Oct 2012 • USA (National/Federal)
In In re Abbott Diabetes Care Inc., the US Court of Appeals for the Federal Circuit vacated in part and remanded the Board of Patent Appeals and Interferences' (BPAI) decision rejecting certain patent claims concerning methods and devices for monitoring glucose levels for diabetics. The Federal Circuit held that the BPAI's rejections were based, at least in part, on a claim construction that was contrary to the repeated, consistent and exclusive description of the claimed invention in the patent specification.

Key Litigated Issue

The key issue before the US Court of Appeals for the Federal Circuit was whether the Board of Patent Appeals and Interferences (BPAI) erred in construing a claim term by requiring an explicit disclaimer in the patent specification when giving a claim term its broadest reasonable interpretation.

Background

Abbott Diabetes Care Inc. owns US Patent Nos. 6,175,752 ('752 Patent) and 6,565,509 ('509 Patent). These patents share a common specification that describes methods and devices for monitoring glucose levels for diabetics. The specification describes the prior art and notes that:
  • Other blood glucose monitoring devices exist, but some of these devices include sensor guides that are typically bulky and restrict freedom of movement.
  • These systems feature external wires and cables connecting the components that restrict the user's movements and activities.
The claimed invention includes an electrochemical sensor that uses conductive traces and contact pads to transfer signals to a sensor control unit.
On March 27, 2006, the USPTO granted third-party requests for ex parte reexamination of Abbott's patents. The USPTO examiner ultimately rejected all the claims as anticipated by prior art.
The Board of Patent Appeals and Interferences' (BPAI) upheld the examiner's rejection based, in part, on the claim construction that the term "electrochemical sensor" includes wires and cables connecting the sensor to its control unit.
Abbott sought a rehearing by the BPAI, which granted the rehearing but rejected Abbot's arguments. Abbott then appealed to the Federal Circuit.

Outcome

In a September 28, 2012 decision, the Federal Circuit vacated and remanded the BPAI's decision that Abbott's patents were anticipated by prior art. The court held, among other things, that the BPAI's construction of "electrochemical sensor" was unreasonable and inconsistent with the specification.
Abbott argued that the BPAI unreasonably construed "electrochemical sensor" to include external cables and wires connecting the sensor to its control unit because:
  • The BPAI improperly relied on language directed to the failings of the prior-art devices.
  • None of the descriptions of the claimed "electrochemical sensor" in the specification mention external cables or wires for connecting to the sensor control unit.
  • The plain language of the claims does not support an embodiment with external cables or wires attached to the sensors.
In support of the BPAI's construction, the USPTO argued that:
  • The specification acknowledges that sensors can include external cables or wires.
  • Abbott does not explicitly disclaim an "electrochemical sensor" with external cables or wires.
The Federal Circuit agreed with Abbott and held that the BPAI's construction of "electrochemical sensor" was unreasonable and inconsistent with the language of the claims and the specification because:
  • The claims themselves suggest connectivity without the inclusion of cables or wires.
  • Every embodiment in the specification shows an "electrochemical sensor" without external cables or wires.
The Federal Circuit brushed aside the USPTO's reliance on In Re American Academy of Science Tech Center and Retractable Technologies, Inc. v. Becton, Dickinson & Co., noting that in:
  • American Academy of Science, although the patentee argued it had disparaged and therefore disclaimed the use of "multi-user computers such as mainframes," the specification as a whole actually supported configurations that included multi-user computers.
  • Retractable Technologies, the patentee's supposed disclaimer of "cutting" was undermined by an embodiment that indicated that some forms of "cutting" fell within the scope of the claimed invention.
In contrast, nothing in the patents-in-suit suggests or even hints that the claimed "electrochemical sensor" can include external cables or wires.

Practical Implications

Patentees and parties challenging patents should take note that consistent language used in the claims and the specification guides proper claim construction. It is unnecessary for the patentee to include specific disclaimer language when the specification repeatedly, consistently and exclusively depicts a particular embodiment for the invention.

Court Documents