Intrinsic Evidence Establishing the Context of a Claim Term Can Limit Claim Scope

Knobbe Martens

Knobbe Martens


Before Reyna, Mayer and Taranto. Appeal from the United States District Court for the Central District of California.

Summary: The scope of a claim term may be limited when intrinsic evidence establishes the context of the patent to be narrowly focused.

McRO sued a number of game developers (“Developers”) for infringement of a patent related to a method of automatically animating lip movement and facial expression in three-dimensional characters. The district court initially granted the Developers’ motion for summary judgment of patent ineligibility of the asserted claims under 35 U.S.C. § 101. The Federal Circuit reversed, finding the claims patent eligible. On remand, the district court construed the claim term “morph set weight” to require three-dimensional vectors, and granted the Developers’ motion for summary judgment of non-infringement and invalidity for non-enablement. McRO appealed.

On appeal, the parties did not dispute that when “morph set weight” is construed to require three-dimensional vectors, the Developers do not infringe. McRO argued that the district court erred in construing the term “morph set weight” by narrowly construing “vector” to require three-dimensional vectors, rather than adopting McRO’s broader construction of “vector” which included any ordered set of numbers. The Federal Circuit rejected McRO’s argument finding spatial terms such as “vertex” and “topology” used in the specification to describe the claimed process, as well as recitation of “three-dimensional characters” in the preamble of the asserted claims “strongly favor[ed] the narrow geometric meaning of ‘vector’.” The Federal Circuit also found support in an equation summarizing the claimed process. Because the equation required addition of a three-dimensional vector with a sum of the vectors at issue, the court concluded the summed vectors must also be three dimensional. The Federal Circuit concluded that the meaning most appropriate in the context of the patent was that “vector” required three-dimensional vectors and affirmed the district court’s claim construction and finding of non-infringement.

The Federal Circuit also addressed the district court’s finding of invalidity for lack of enablement on appeal. The Federal Circuit explained that a determination of enablement requires the identification of at least some embodiments that are or may be within the scope of the claim that is not enabled. However, the only specific embodiments identified by the district court and the Developers were the accused products and a second embodiment, all of which were outside the scope of the claims when construed to require the “vector” be a three-dimensional. The Federal Circuit declined to depart from the existing requirement that the challenger identify specifics that are or may be within the claim but are not enabled. Without “concrete identification of matter that is not enabled” but within the claim scope, the Developers could not meet the burden to show non-enablement by clear and convincing evidence. The Federal Circuit vacated the district court’s summary judgment of invalidity for lack of enablement and remanded for further proceedings.

Editor: Paul Stewart

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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