Thorner and the (Not So) Bright Line Rules of Claim Construction
Patent – Patently-O 2024-12-01
Summary:
by Dennis Crouch
The Federal Circuit’s 2012 decision in Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362 (Fed. Cir. 2012) has become one of the court’s most cited cases from the past 15 years. In fact, the decision has over 9,000 citations since being released 12 years ago (according to Westlaw search). The case did not really make new ground, but is most often cited for Judge Moore’s statement of the clear boundaries for when courts can permissibly deviate from the “plain and ordinary meaning” of claim terms. While the decision presents these as bright-line rules, I would argue that the reality is much more nuanced.
Thorner’s patent (US 6,422,941) covered a “tactile feedback system” for video games – think vibrating controllers. The key dispute centered on two claim terms: whether actuators “attached to” a pad included both internal and external attachments. The district court had limited “attached” to only external attachments, based upon consistent usage of that language in the specification. However, the appellant thought that the term should be more broadly defined.
Judge Moore’s decision begins by reiterating the fundamental principle that claim terms receive their “ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Phillips v.