BPAI says Applicant who argues "own lexicographer" waives ordinary meaning

Takeaway: In the ex parte reexamination Ex parte Three-Dimensional Media Group, an Applicant referred to the "own lexicographer" rule in arguing for a narrower meaning of the claim term "3-D image." The Board found that the specification did not clearly establish a definition contrary to the plain meaning, so the Applicant lost the claim construction argument. Furthermore, the Board found that the Applicant waived argument on plain and ordinary meaning by invoking the "own lexicographer" rule.

Two takeaways here, one for the drafting stage and one for the prosecution stage. First, if you really want to be your own lexicographer, you gotta be thinking about that when you draft the spec, so you can make sure that you do in fact provide a special definition. Second, when you get to prosecution, before you trot out own lexicographer," check to make sure that your spec really does have a clear definition that's contrary to ordinary meaning. If you don't, you're unlikely to win the "own lexicographer" argument, so consider instead arguing that a reasonable interpretation must be consistent with the specification.

Details:
Ex parte Three-Dimensional Media Group
Appeal 2009004087, Reexam. Control No. 90/007,578, Tech. Center 3900
Decided July 30, 2010

The disputed claim term on appeal was "3-D image." The Examiner took the position that the term covered images which used shading, texturing, and perspective projection to give the impression of depth. The Applicant argued that the term covered only stereoscopic images, and excluded images which gave only the appearance of depth.

In arguing for a narrower meaning, the Applicant said that “an applicant may be his own lexicographer.” The Applicant filed declaration evidence in which the expert declarants referred to specific passages in the patent. The declarants opined that the patent clearly refers to stereoscopically created images:

As used in the ‘294 patent, it is unambiguous to anyone skilled in the art that the terms “3D” and “three-dimensional” refer to the stereographic imagery, where a different view is presented to each eye of the viewer. It is clear that, as used in the ‘294 patent, the terms do not refer to the use of shading, texturing, perspective projection, or other techniques employed to give the impression of depth (but no true stereoscopic depth effect) in a two-dimensional image when that single image is viewed by both eyes.

The Examiner responded in the Answer that the specification did not provide a special definition of "3-D image" so as to limit the meaning. The Examiner cited to MPEP § 2111.01: “[w]hen a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.” (quoting from Merck & Co., Inc. v. Teva Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005))

The Board found that the "entire specification of the ‘294 patent does not support Appellant’s argument (or the experts’ opinions) that 3-D always means stereographic." The Board then spent eight pages analyzing the specification and the declarations to explain its conclusion. For example:

• "The ‘294 patent does not consistently interchange '3-D' with 'stereoscopic 3-D.' "
• "Neither of the experts opines that the term 3-D always means stereoscopic 3-D in the ‘294 patent."
• "These arguments demonstrate, at most, that the ‘294 patent discloses a preferred embodiment wherein some frames in a video are converted by stereoscopy."
• "The ‘294 patent nonetheless specifically disavows any 'limiting' effect based on the 'illustrative' 'description' [in the specification, which reads:] 'It is intended that all matter contained in the above description or shown in the accompanying figures shall be interpreted as illustrative and not in a limiting sense.' "

Finally, the Board explained that the Applicant's invocation of the "own lexicographer" rule implied that the Applicant did not dispute plain and ordinary meaning and had waived such an argument.

By failing to clearly argue that the plain meaning of 3-D (or three-dimensional, or three-dimensional image) is in dispute in the opening Brief, Appellant has waived that potential argument.

My two cents: I find that the "own lexicographer" rule is one of the most misunderstood doctrines in patent pros. It seems to me this Applicant didn't understand it either. Most of the arguments under the heading "Applicant May Be His Own Lexicographer" relate to interpreting terms in light of the spec.

However, the "own lexicographer" doctrine is really about redefining a term in the spec:

When a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.” Merck & Co., Inc. v. Teva Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005).

I've read a lot of specs, and most don't redefine a term or provide a special definition. So what you probably want is the "broadest reasonable construction" doctrine, which is about being consistent with the spec:

“During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). 

The Board said that if you don't clearly argue ordinary meaning consistent with the spec on appeal, then you've waived your right to do so. Without more, you could read this as allowing for arguing both approaches in the alternative. But the way I read the opinion, the Board went further to say special meaning forecloses ordinary meaning.

In the Reply Brief, Appellant on the one hand maintains the “right to be his own lexicographer” but on the other hand, says that “Appellant is not attempting to read the limitation of stereoscopic into his claim from the specification” because the term “‘stereoscopic’ is not found in the disclosure” and “3-D” always refers to imagery where different images are presented to each eye of the viewer.” (Reply Br. 13.) This argument is confounding since a lexicographer typically seeks to establish a contrary meaning by reliance on the specification.

Finally, if you do decide to invoke the "own lexicographer" rule and argue special meaning, I strongly suggest you read this opinion to see one example of an Appellant that put in a lot of effort to do so – and still lost.

Postscript: The patentee has appealed to the Federal Circuit. I haven't seen the briefs – the Federal Circuit hasn't joined the new millenium yet by making briefs available on PACER – but I'd be surprised if they get the decision reversed.The Board's reasoning looks sound to me.

Related Posts: Bruce Horwitz of the Intellectual Property Directions blog offers his insight on this case here. Though my original version of this post mentioned only the lesson for patent prosecutors, it was Bruce who first pointed out the case also offers a great lesson in patent drafting. I updated my Takeaway to include this second point in response to Bruce's insight.