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Claim Construction Principles Revisited: Distinguishing Radios From Radiators

Ordinary meaning can limit features in claims to the features’ purpose and principal use, according to the Federal Circuit’s recent decision in Asetek Danmark A/S v. CMI USA Inc., No. 16-1026 (Fed. Cir. 2016).

Radio, ChipThe patents-in-suit are directed to systems and methods for cooling the “central processing unit (CPU) or other processing unit of a computer system” using cooling liquid.  The patents describe a system with an upper and lower chamber referred to as a “pump chamber” and “thermal exchange chamber,” respectively.  At issue was the accused infringer’s theory that the prior art’s disclosure of a “sucking channel” was a “thermal exchanger” as required by the claims because the sucking channel “exchanges some heat.”

As colorfully illustrated and explained at page 12 of the Slip Opinion, that argument won’t do:

No ordinary meaning or claim construction requires appellants’ conclusion that Koga’s “sucking channel” is a “thermal exchange chamber” simply because it exchanges some heat.  No meaning of the claim phrase precludes its limitation only to devices with certain device-defining characteristics such as purpose and principal use, excluding other structures that occasionally or in minor ways produce the same result—any more than a bedside plugin radio must be considered a room radiator because it unavoidably gives off some heat.

The Court’s opinion is necessarily limited to the facts at hand.  Nevertheless, this claim construction principle may help guard against the possibility of an Examiner or litigant offering a claim interpretation that would encompass structures that are not realistically comparable to the claimed invention.

© 2020 Covington & Burling LLPNational Law Review, Volume VI, Number 350


About this Author

Peter Flanagan, International trade attorney, Covington

Peter Flanagan counsels clients on a broad range of compliance requirements affecting international trade and investment. These include most notably export controls, economic sanctions constraints, defense trade limitations, and the implications of related non-U.S. requirements. He also has experience in financial services regulation.

Mr. Flanagan has advised leading companies in the oil and gas sector, pharmaceutical and medical technology companies, defense contractors, manufacturing entities, financial institutions and private equity firms, software and high-...