Calcar And Thorner: Attempting To Reconcile The Federal Circuit's Claim Construction Jurisprudence

In Thorner v. Sony Computer Entertainment America, LLC, 669 F.3d 1362 (Fed. Cir. 2012) (Moore, Rader & Aiken (D. Or. sitting by designation)), the Federal Circuit explained that, under Phillips, a claim term is given its ordinary and customary meaning as understood by a person of ordinary skill in the art except under one of the following two circumstances: (1) the patentee acted as his own lexicographer and clearly demonstrated his intent to redefine the term; or (2) the patentee clearly disavowed the scope of the claim either in the specification or during prosecution.1 In American Calcar v. American Honda, 651 F.3d 1318 (Fed. Cir. 2011) (Lourie, Bryson, Garjasa), the Federal Circuit set out a claim construction framework that is apparently inconsistent with that of Thorner. This article identifies the apparent inconsistency between the claim construction frameworks of Thorner and Calcar and proposes a way to reconcile the inconsistency or, in the alternative, explain its cause.

In Thorner, the Federal Circuit considered the construction of the phrase "attached to said pad," which the district court construed to mean an actuator that was attached to an exterior surface of the pad. The district court relied on the specification's use of the term "attached" only in connection with embodiments where the actuator was attached to a pad's outside surface, and contrasted it to an embodiment where the actuator was attached inside the pad, but was described in the specification as being "embedded" in the pad. After the claim construction order by the district court, the parties stipulated to noninfringement and appealed.

The Thorner panel reversed, finding that the district court erred in its reliance on the specification and its use of "attached" for embodiments having external actuators and "embedded" for embodiments having an internal actuator. While acknowledging that the specification never uses the word "attached" when referring to an actuator located on the interior of a controller, the panel held that this does not rise to the level of either lexicography or disavowal. The panel stated that these two potential exceptions require a clear and explicit statement by the patentee; it is not enough that the patentee used the term "attached" when referring to a connection to an outer surface of the pad in every embodiment.

The holding of Thorner regarding the two exceptions to the ordinary and customary meaning appears to be in conflict with the holding of the earlier Federal Circuit case of Calcar, with respect to one of the disputed claim terms. In Calcar, American Calcar (ACI) sued Honda for infringing 15 patents. The patents fell into various functional categories, including the following three categories relevant to the issue of claim...