Claim Construction: The Difference Between Using “The” and “A” | BakerHostetler
Patent attorneys regularly use indefinite articles (i.e., “a” or “an”) in claim drafting to introduce patent limitations. In Apple Inc. v. Corephotonics, Ltd., however, the Federal Circuit made a ruling that may require practitioners to think twice about using such articles, particularly when they could be used to later broaden the claims during an invalidity analysis.
In the Apple case, Apple Inc. (Apple) appealed two final written decisions of the Patent Trial and Appeal Board (PTAB), both of which had upheld a patent owned by Corephotonics, Ltd. (Corephotonics). The patent, which is directed to creating photos in “portrait” mode, discloses a limitation that requires a “fused image with a point of view (POV) of the Wide camera.” Before the PTAB, the parties disputed whether this limitation required that the fused image retain perspective POV or position POV, or whether it required both. The PTAB, agreeing with Corephotonics, found that it required both. Apple appealed.
On appeal, the Federal Circuit reviewed the PTAB’s claim construction as a matter of law. Starting with the claim language, the court found it “informative” that the claim refers to “a” point of view instead of “the” point of view. The court then examined the specification and found that it discloses “different types of point of view.” Because the claim language only disclosed “a” point of view, the court read this to mean “only one of the disclosed types of [] point of view.” Based on this reading, the court held that the claim term requires that the fused image retain perspective POV or position POV but does not require both. It vacated and remanded the PTAB’s final written decision.
This decision highlights the heavy weight that can be placed on indefinite articles in claim construction. While patent practitioners regularly use indefinite articles to introduce new claim limitations, especially if they need to provide an antecedent basis for the limitation in later claims, they should be aware that it may support a broader construction during litigation. To the extent that this is not the intent, practitioners should use clear structure to capture exactly what is being claimed.
[View source.]
