The Claims Interpreted Report
Markman Order Broadens Claim Construction with Claim Differentiation
By Chris Francis
Categories: The Claims Interpreted Report
The Court construed “slidably interconnected” to include both direct and indirect connection based on claim differentiation in the Markman order in National Products, Inc. v. Arkon Resources, Inc. (Case No. C15-1984JLR, WDWA, Sept. 30, 2017)
A representative claim is:
1. A mounting platform, comprising:
first and second frame members being slidably interconnected along a first direction, at least one of the first and second frame members including a device mounting surface positioned relative to the first direction;
one or more clamping members coupled to each of the first and second frame members, each of the clamping members including:
a base portion structured for mounting on a surface of one of the first and second frame members,
a clamping surface being spaced above and inclined toward the device mounting surface, and
a jaw portion extending from the base portion at an angle between approximately 120 ions and 150 degrees, the clamping surface being formed as a facet of the jaw portion; and
a biasing member coupled between the first and second frame members for biasing the first and second frame members toward one another along the first direction.
The order stated that the Defendant argued that “slideably interconnected” requires a direct connection, and it appears that the Plaintiff argued that this term includes both direct and indirect connection.
Specifically, the Defendant argued that the specification and figures only disclose a single embodiment that includes a direct connection between the first and second frame members in the form of a track-and-slide system, and thus, “slidably interconnected” must mean a direct connection. The Court rejected this argument stating that there are no “repeated and definitive remarks” in the specification that the embodiments described are the only ones contemplated, citing Comput. Docking Station Corp., 519 F.3d 1366, 1374 (Fed. Cir. 2008). Interestingly, the Court actually points to boilerplate in the specification that states that “[w]hile the preferred embodiment of the invention has been illustrated and described, it will be appreciated that various changes can be made therein without departing from the spirit and scope of the invention.”
In what appears to be a pivotal fact in the eye of the Court, the order notes that dependent claim 6 claims the “track-and-slide system” that provides the direct connection between the first and second frame members. Since this limitation is in a dependent claim, the Court held that claim 1 is not limited to the “track-and-slide system,” which was central to the Defendant’s argument that claim 1 was limited to a direct connection. Since the Court relied on claim to arrive at the broader claim construction, this case can be compared and contrasted to a recent post in which the Court specifically addressed the Doctrine of Claim Differentiation, but declined to apply the doctrine.
On a practical note, when terms like “connected,” “coupled,” and “engaged,” are used in claim language, it is good practice to consider, given the fact pattern of the application being drafted, whether the specification should go into detail to describe these terms as being direct interaction, indirect interaction through an intermediate component, or both.