I was curious whether Judge Lourie had ever relied upon the Supreme Court case of Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961) (“Aro I”) in the opinions that he has authored for the court. It turns out that he has. Here are some examples.
This court, however, has rejected a claim construction process based on the “essence” of an invention. See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed.Cir.2002) (“It is well settled that `there is no legally recognizable or protected essential element, gist or heart of the invention in a combination patent.'”) (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)).
Ormco v. Align, 498 F.3d 1307, 1322 (Fed. Cir. 2007).
We agree with Cooper, however, that the district court erred in granting summary judgment that the asserted claims of the ‘119 patent are invalid for failure to meet the written description requirement. In Vas-Cath, we held that “under proper circumstances, drawings alone may provide a `written description’ of an invention as required by § 112.” 935 F.2d at 1565, 19 USPQ2d at 1118. Drawings constitute an adequate description if they describe what is claimed and convey to those of skill in the art that the patentee actually invented what is claimed. Id. at 1566, 935 F.2d 1555, 19 USPQ2d at 1119. In Vas-Cath, we reversed the district court’s grant of summary judgment of invalidity of claims to a double lumen catheter having a combination of features. In particular, we disagreed with the court’s statement that one could not tell from the drawings what combination of the disclosed features constituted “the invention” because “[t]hat combination invention is what the [patent’s] drawings show.” Id. at 1565, 935 F.2d 1555, 19 USPQ2d at 1118. The court’s concern with “what the invention is” was misplaced, we explained, because there is no “legally recognizable or protected `essential’ element, `gist’ or `heart’ of the invention in a combination patent.” Id. (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)).
Cooper Cameron v. Kvaerner Oilfield Products, 291 F.3d 1317, 1322 (Fed. Cir. 2002)
The disputed term at issue, “perforated,” appears not in the claims but rather in the district court’s construction of a disputed claim term. We note, as an initial matter, that “we do not ordinarily construe words that are not in claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed.Cir. 2009); see also AroMfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (“[T]he claims made in the patent are the sole measure of the grant.”). However, in those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim’s meaning.
Advanced Fiber Technologies Trust v. J & L FIBER, 674 F. 3d 1365, 1373 (Fed. Cir. 2012)