Choose Your Words Carefully: Inventors Are Masters of Their Claims, and the Words They Use to Describe and Claim Their Invention Control

| Hans L. Mayer


Before Newman, Lourie, and Dyk. Appeal from the ITC.

Summary: Patentees cannot escape the bounds of their claims by promoting oversimplified characterizations of those claims.

Bio-Rad brought an ITC action against 10X Genomics over the importation of certain microfluidic chips. The ITC found that some 10X products infringed Bio-Rad asserted patents, and both parties appealed. Among other issues, Bio-Rad argued on appeal that because the structural limitations recited in its claims are all included in 10X’s products, the ITC should have found infringement of all asserted patents.

The Federal Circuit affirmed the ITC after finding that Bio-Rad’s structural limitations argument was premised on rewriting the claims in an oversimplified form and removing all limitations that differentiate the recited structures from each other. The Federal Circuit stated that the inventors chose to characterize the invention based on its materials, not structure, and that Bio-Rad could not escape that choice by pointing to the general proposition of law that “apparatus claims cover what a device is, not what a device does.” The Federal Circuit noted that it would be improper to disregard almost all of the words of the claim simply because the claim limitations are structural.

Editor: Paul Stewart