Appeal No. 2005-2643
Reexamination Control No. 90/005,842
judicial statements regarding the scope of patent claims are entitled
to collateral estoppel effect in a subsequent infringement suit only
to the extent that determination of scope was essential to a final
judgment on the question of validity or infringement.
A.B. Dick Co., 713 F.2d at 704, 218 USPQ at 968. This court has warned,
however, that statements regarding the scope of patent claims made in a
former adjudication should be narrowly construed. Id. Additionally, to
apply issue preclusion to a claim interpretation issue decided in a prior
infringement adjudication, "the interpretation of the claim had to be the
reason for the loss [in the prior case] on the issue of infringement."
Jackson Jordan, Inc. v. Plasser American Corp., 747 F.2d 1567, 1577,
224 USPQ 1, 8 (Fed. Cir. 1984).
Freeman, 30 F.3d at 1466, 31 USPQ2d at 1449. The district court action at issue here
concluded with a dismissal rather than with a judgment on validity or infringement.
In giving claims their broadest reasonable construction, the PTO will “tak[e] into
account whatever enlightenment by way of definitions or otherwise that may be afforded
by the written description contained in the applicant's specification.” Morris, 127 F.3d at
1054, 44 USPQ2d at 1027. However, we are not permitted to read limitations from
the disclosed embodiments or examples into the claims. See American Academy, 367
F.3d at 1369, 70 USPQ2d at 1834:
We have cautioned against reading limitations into a claim from the
preferred embodiment described in the specification, even if it is the only
embodiment described, absent clear disclaimer in the specification. See
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 [69 USPQ2d
1801] (Fed. Cir. 2004) (“Even when the specification describes only a
single embodiment, the claims of the patent will not be read restrictively
unless the patentee has demonstrated a clear intention to limit the claim
scope using ‘words or expressions of manifest exclusion or restriction.’”);
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 [63 USPQ2d
1374] (Fed. Cir. 2002).
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