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Archived updates for Wednesday, August 24, 2005

Disclosed Embodiment Limits Flotation Units to Being Hollow and Airtight

In Ocean Innovations, Inc. v. Rick Archer (Fed. Cir., August 18, 2005, nonprecedential), the court concluded that one skilled in the art would understand the term "flotation units" in claim one of U.S. Patent No. 5,682,833 (left) to be referring to units that are "hollow as well as airtight:"

1. A method of placing a floating craft having a hull with an upwardly curved
bow onto a dry dock comprising the steps of:
selecting a plurality of
floatation units from a first group of floatation units having a first buoyancy
and a second group having a second buoyancy . . .

The court began by quoting from Phillips v. AWH Corp., Nos. 03-1269, -1286, __ F.3d __ (Fed. Cir. 2005) (en banc) that "the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms:"

We further noted that, "[i]n the end, there will still remain some cases in
which it will be hard to determine whether a person of skill in the art would
understand the embodiments to define the outer limits of the claim term or
merely be exemplary in nature." Id. slip op. at 30. However, we stated that "we
nonetheless believe that attempting to resolve [the] problem in the context of
the particular patent is likely to capture the scope of the actual invention
more accurately than either strictly limiting the scope of the claims to the
embodiments disclosed in the specification or divorcing the claim language from
the specification." Id. slip op. at 30 (emphasis added).

With those principles in mind, we turn to the term "floatation units" in the
’833 patent. Doing so, we conclude that one skilled in the art would understand
the term to be referring to units that are hollow as well as airtight.

The very first sentence of the patent [abstract] characterizes the overall invention of the ’833 patent as a "floating, drive-on dry dock assembly for small craft [that] is
assembled from two kinds of hollow floatation units." This communicates to one skilled in the art that a characteristic of a "floatation unit" in the invention of the ’833 patent is that it is hollow.

Continuing, the ’833 patent’s specification describes the claimed floatation units with reference to prior art devices that also contain hollow units. The "Background of the Invention" section of the patent describes the prior art with reference to U.S. Pat. Nos. 3,824,664 and 4,603,962. According to the ’833 patent’s specification, "[t]hese patents describe hollow cubical units[.]" In particular, the prior art units were "provided with bungholes so that the units could be partially flooded to lower the water line of some or all of the units."

Most importantly, the "Summary of the Invention" section of the patent states: The dock is "assembled from a combination of tall and short, hollow, air-tight floatation units." Finally, in the preferred embodiment "all of the floatation units 12a-l and 14a-g are hollow and air tight." In the preferred embodiment, the tall floatation units
(12a-l) are described as being "substantially similar to that shown in U.S. Pat.
Nos. 3,824,644 and 4,604, 962[.]" These are the same two patents previously described in the Background of the Invention section as containing "hollow" units that can be flooded with water.

We think that one skilled in the art reading the ’833 patent claims, in light of the ’833 patents’ disclosure, would understand that the "floatation units" in the claimed invention are hollow. See C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858, 863-864 (Fed. Cir. 2004) (where a patentee had "globally" defined a "plug" for an implantable prosthesis as having a pleated surface, the term "plug" was so construed); Scimed Life Sys. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) ("[T]he characterization of the coaxial configuration as ‘part of the
present invention’ is strong evidence that the claims should not be read to
encompass the opposite structure.").

Jet Dock’s argument to the contrary presumes the conclusion that it seeks. To assert that "hollow" is improperly importing a limitation into "floatation units" is to presume that the "floatation units," as claimed in the ’833 patent, are not characteristically hollow. That argument, however, presumes to know the meaning of "floatation units" to one skilled in the art—which is the very issue at hand. We do not think that to construe the "floatation units" as hollow is importing a limitation into the claims when the specification makes clear that hollowness is an inherent characteristic of the "floatation units" in the claimed invention. In sum, we construe claim 1 of the ’833 patent as directed to floatation units that are airtight and hollow.

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