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ARTICLE · 05 APRIL 2004

Only Ambiguous Claims May be Construed "to Preserve Validity"

McDermott Will & Emery
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In an opinion that may come as a surprise to those familiar with the old axiom that "claims should be construed when possible to preserve their validity," the U.S. Court of Appeals for the Federal Circuit has held the axiom applies only to ambiguous claim terms.

United StatesIntellectual Property
Arlyn Alonzo
Arlyn Alonzo
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In an opinion that may come as a surprise to those familiar with the old axiom that "claims should be construed when possible to preserve their validity," the U.S. Court of Appeals for the Federal Circuit has held the axiom applies only to ambiguous claim terms. Liebel-Flarsheim Co. v. Medrad, Inc., Case Nos. 03-1082, -1165 (Fed. Cir., Feb. 11, 2004) (Bryson, J.).

Applying the ordinary-meaning rule to Liebel-Flarsheim’s patent, the Court found the meaning of the claim terms to be unambiguous. That being the case, the Court found no need to consider whether the resulting construction might also render the patents invalid.

In addition to clarifying when to apply the axiom regarding preserving patent validity, the Liebel-Flarsheim case provided the Federal Circuit with a chance to underscore the prohibition of importing limitations from the specification into the claims. The specification of Liebel-Flarsheim’s patent described several preferred embodiments, all of which had pressure

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