[co-author: Yuke Wang， Patent Agent]
Claim construction is the heart of validity and infringement for almost every patent proceeding. Yet， at least two recent cert petitions brought from separate cases by Intel and Akeva have argued the Federal Circuit has two competing claim construction schemes and only one should be followed going forward. We will first discuss the core disputes brought out in the Intel and Akeva cert petitions about the so-called "single step/holistic" approach versus the "two-step" approach. We then provide some insights into how the patent bar views the petitions compared to the cases they rely on.
The Intel Cert PetitionStemming from Continental Circuits LLC v. Intel Corporation， 915 F. 3d 788 (Fed. Cir. 2019)， Intel’s cert petition was denied on December 9， 2019. The Intel petition ("Intel petition，" October 28， 2019) asserts that the case presents a fundamental question of patent law on which the judges of the Federal Circuit are intractably divided， because some cases follow a "two-step" approach while some other cases follow an allegedly conflicting "single-step" approach. Specification of a patent affects the meaning of a claim term in different ways according to the "two-step" approach or the "single-step" approach.The Akeva Cert PetitionStemming from Akeva L.L.C. v. Nike， INC.， 817 Fed. Appx. 1005 (Fed. Cir. 2020)， Akeva’s cert petition was denied on February 22， 2021. The Akeva petition ("Akeva petition，" December 14， 2020) asserts a similar intra-circuit split in claim construction cases. For cases following a "heavy presumption" of ordinary meaning principle， the specification can affect the meaning of a claim term only by meeting the "exacting" standard and demonstrating (i) a "clear" disclaimer of claim scope， or (ii) "clear" lexicography. On the other hand， for cases following a "holistic" approach， the specification can affect the claim meaning even when it does not demonstrate an "exacting" disclaimer or lexicography.
The Akeva petition asserts that Nystrom v. TREX Co.， 424 F.3d 1136， (Fed. Cir. 2005) follows the "holistic" approach and restricts a claim term - without regard to any "heavy presumption" of ordinary meaning or showing of a clear disclaimer or lexicography. The Akeva petition also cites to SciMed Life Systems，国家版权局保护中心， Inc. v. Adv. Cardiovascular Systems， Inc.， 242 F.3d 1337 (Fed. Cir. 2001) as an example of the "holistic" approach case when specification statements indicate limitations by "all embodiments."Comparing Intel and Akeva’s Arguments and their definition of single v two-step claim constructionEven though worded slightly differently，版权查询网， the "two-step" approach in the Intel petition is similar to the "heavy presumption" of ordinary meaning principle in the Akeva petition. And the "single-step" approach in the Intel petition is similar to the "holistic" approach in the Akeva petition.
The Intel petition asserts that the "two-step" approach is incorrect in general， and claim constructions should follow the "single-step" approach. For example， a different result will be allegedly reached if the "single-step" approach is applied to Continental Circuits.
On the other hand， the Akeva petition asserts that the cases following the "single-step/holistic" approach are often unpredictable as to what aspect of the specification or analysis can affect the scope of the claim-at-issue. Instead， the "two-step/heavy presumption" of ordinary meaning approach should be applied. The Akeva petition further asserts that in deciding Akeva， the Federal Circuit incorrectly followed the "holistic" approach， and a different result would have been reached if the "heavy presumption" of ordinary meaning approach were to be applied.Intel’s Case for CertDefendant Intel asked the district court and Federal Circuit to limit disputed claim terms to a specific process，四川省版权登记中心， a "repeated desmear" process， used in manufacturing computer chip components. The asserted claims include phrases， such as "etching the dielectric material，" "removal of a portion of the dielectric material，" "a surface of a layer of a dielectric material，" or other similar terms used to describe a process for manufacturing computer chip components. A general process for manufacturing computer chip components may include a single desmear process or a double desmear process. But Defendant Intel contended that each disputed phrase should be construed to include a requirement that the etching， removal， or modification of the dielectric material be "produced by a repeated desmear process，" which are not the actual words of the claims.
In deciding the case， the district court used the "two-step" approach. First， the district court applied Phillips， that words of a claim are generally given the ordinary and customary meaning. The district court found the plain and ordinary meaning did not include the Defendants’ proposed limitation. Second， the district court applied "clear and unmistakable" disavowal and found that the patent disavowed the single desmear process because various statements in the specification disparaged the "single desmear" process， the use of "present invention，" the prosecution history， and extrinsic evidence.