Federal Circuit Summary

Before Lourie, Linn, and Taranto. Appeal from the United States District Court for the District of Arizona.

Summary: Reading a process limitation into a product claim is improper where the patentee did not clearly and unmistakably disavow claim scope and also did not make clear that the process is an essential part of the claimed invention.

Continental sued Intel for patent infringement, asserting claims to a dielectric material. The district court read a limitation into the claims to require the dielectric material to be made via a repeated etching process. Based on this construction, the parties stipulated to non-infringement and the court entered judgment accordingly. Continental appealed, challenging only the district court’s claim construction.

On appeal, the Federal Circuit agreed with Continental that the district court erred in limiting the claims to require a repeated etching process. The Federal Circuit noted that the plain language of the claims were not limited to a repeated etching process. The Federal Circuit concluded that the statements in the specification did not rise to the level of a clear and unmistakable disclaimer or disavowal of claim scope. The statements in the specification simply described a preferred method and did not amount to a clear disavowal. Similarly, with respect to the prosecution history, the Federal Circuit found that an expert’s declaration responding to indefiniteness and written description rejections was not a clear disavowal. Statements regarding a particular claim term to overcome indefiniteness and lack of written description are not the same as a disavowal. The Federal Circuit also noted that because it was not clear that the repeated etching process is “an essential part of the claimed invention,” it was improper to read the process limitation into the product claims. The Federal Circuit vacated the judgment of non-infringement and remanded for further proceedings.

This case is: CONTINENTAL CIRCUITS LLC v. INTEL CORPORATION

Edited by: Paul Stewart

Written by: Josepher Li and Kendall Loebbaka