Cited Reference Invalidates Claim based on Procedural Approach to Broad Construction

In Prima Tek II, L.L.C., et al. v. Polypap, et at. (June 22, 2004) the Federal Circuit invalidated a claim under a broad claim construction in light of a prior art reference had been considered by the Examiner during prosecution. The court appeared to give little deference to the Examiner's consideration of the prior art:

In considering questions of anticipation, we are mindful that if an invalid patent is issued, competitors may be deterred from challenging it by the
substantial cost of litigation. Even if a successful challenge is brought,
competition may be suppressed during the pendency of the litigation. The risk of
antitrust liability or litigation sanctions may deter some from seeking to
secure or enforce invalid patents, but our patent system depends primarily on
the Patent and Trademark Office’s ("PTO’s") care in screening out invalid
patents during prosecution.

Anticipation is ultimately a question of fact, but also depends on proper claim construction—a legal issue. We review the district court’s claim construction without deference, and its factual determinations for clear error. Here, extensive prior art exists regarding products and methods for displaying floral groupings, and the district court considered prior art stretching back over a century. It appears likely that the asserted claims are anticipated by the 1899 Bertels reference, but for
simplicity we address only the more recent Charrin reference, which the district
court found to be "substantially identical" to the much earlier Bertels
reference. Under the appropriate standard, the Charrin prior art reference, which was before the examiner during prosecution of the ’532 patent, clearly anticipates the asserted claims of the patents in suit.

The court then went on to apply the so-called "procedural approach" in construing three of the claim limitations:

When construing claims, we look first "to the words of the claims themselves . .
. to define the scope of the patented invention." Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "[W]ords in a claim are
generally given their ordinary and customary meaning" unless some "special
definition of the term is clearly stated in the patent specification or file
history." Id. We may consult with dictionaries "in determining the ordinary and
customary meanings of claim terms." Tex. Digital Sys., Inc. v. Telegenix, Inc.,
308 F.3d 1193, 1202 (Fed. Cir. 2002). "Pot" is defined as a "rounded metal or
earthen container of varying size used chiefly for domestic purposes." Webster’s
Third New International Dictionary 1774 (2002). The Charrin reference clearly
satisfies the "without a pot means" limitation. It does not use a metal or
earthenware container. Prima Tek’s argument that the wire or string tied around
the moss of the Charrin reference is a pot means is without merit.

Costs were awarded to the alleged infringer. . . ouch.

The Federal Circuit Predicter tool would have predicted the same result. According to their model, there was an 80% probability that this panel would use a procedural claim construction approach "characterized by adherence to a relatively strict rules-based hierarchy of interpretive sources, with a particular emphasis on the ordinary meaning of disputed patent claim language." Based upon their current data, the odds appear to be running at about 2:1 in favor of such a procedural outcome in the next en banc decision.