Judicial Estoppel Archives

Reframing the claim: Plain and ordinary meaning falls to lexicography

The US Court of Appeals for the Federal Circuit affirmed a district court’s construction of a claim, finding that the plain and ordinary meaning of a disputed term was redefined by the patentee under principles of lexicography and use of intrinsic claim construction evidence. Aortic Innovations LLC v. Edwards Lifesciences Corp., et al., Case No. 24-1145 (Fed. Cir. Oct. 27, 2025) (Prost, Reyna, Chen, JJ.)

Aortic sued Edwards Lifesciences for infringing its patents directed toward a transcatheter valve with a frame component. During claim construction, the district court determined that Aortic had acted as its own lexicographer and redefined the term “outer frame” to be “a self-expanding frame,” based on the interchangeable use of the terms “outer frame,” “self-expanding frame,” and “self-expanding outer frame” when referring to the same structure in two embodiments. Based on this construction, the parties stipulated to noninfringement of the asserted patents since Edwards’ accused valve did not have a self-expanding frame. Aortic appealed the judgment of noninfringement, challenging the district court’s construction of the claim term “outer frame.” Aortic appealed.

Aortic contended that “outer frame” should be given its plain and ordinary meaning of “positioned outside” and argued that the specification did not support limiting “outer” to require “self-expanding.” The Federal Circuit disagreed, relying on both lexicographical and specification-based grounds for its construction.

In applying principles of lexicography, the Federal Circuit reasoned that if a person of ordinary skill in the art (POSITA) would understand that two claim terms were used consistently and interchangeably throughout a patent specification, those terms may be considered definitionally equivalent. Referring to several examples, the Court observed that Aortic used “outer frame,” “self-expanding frame,” and “self-expanding outer frame” interchangeably throughout the specification when describing the frame, and concluded that “outer frame” was properly construed to require “self-expanding.”

With regard to using the specification as intrinsic claim construction evidence, the Federal Circuit reasoned that the specification consistently described the “outer frame” as a “self-expanding frame” and did not restrict that feature to a particular embodiment. From this, the Court concluded that the absence of any express exception or explanation would lead a POSITA to understand that the valve’s construction required a self-expanding outer frame in all embodiments.

Aortic alternatively argued that Edwards should be judicially estopped from arguing for a construction of “outer frame” that departed from its plain and ordinary meaning. Aortic asserted that Edwards had previously argued before the Patent Trial & Appeal Board that “outer frame” should be defined using its plain and ordinary meaning, but later adopted a contrary position in front of the district court, contending that the term referred only to a “self-expanding frame.” The Federal Circuit disagreed and explained that Aortic failed to sufficiently develop its judicial estoppel argument before the district court. Absent any exceptional circumstances, the Court concluded that Aortic had forfeited the argument.

Finding Aortic’s arguments unpersuasive, the Federal Circuit affirmed the district court’s judgment of noninfringement as to the asserted patents, upholding the district court’s construction of the disputed claim [...]

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Logic to Modify: Even Deceptive Intent Does Not Bar Inventorship Correction

The US Court of Appeals for the Federal Circuit vacated a district court invalidity determination finding that judicial estoppel prevented a patent owner from relisting an inventor previously removed for strategic litigation purposes. Egenera, Inc. v. Cisco Sys., Inc., Case Nos. 19-2015, -2387 (Fed. Cir. Aug. 28, 2020) (Prost, C.J.).

Egenera sued Cisco for infringement of a patent directed to a reconfigurable virtual network that included a “logic to modify” and transmit received messages. In response Cisco petitioned for inter partes review (IPR). During the IPR’s pendency, Egenera realized that all claim limitations were conceived of before inventor Schulter began working at the company, and petitioned the US Patent and Trademark Office (PTO) to remove Schulter as a listed inventor. The Patent and Trial Appeal Board (PTAB) declined to institute Cisco’s IPR, and the PTO granted Egenera’s petition to remove Schulter shortly thereafter.

During the litigation, the district court construed the patent claims’ “logic” terms as means-plus-function elements and concluded that the “logic to modify” limitation corresponded to a “tripartite structure” described in the specification. Cisco then asserted invalidity under pre-America Invents Act (AIA) § 102(f), contending that Schulter invented the tripartite structure, and that the patent therefore did not list all inventors. Egenera attempted to re-correct inventorship to include Schulter, but the court rejected the attempt. The district court found the patent invalid under § 102(f), reasoning that judicial estoppel precluded Egenera from “resurrecting” Schulter’s inventorship. Egenera appealed both the means-plus-function construction and the judicial estoppel finding.

The Federal Circuit first addressed whether Egenera could correct inventorship absent any judicial estoppel. The Court looked to the plain meaning of post-AIA § 256, which provides that “the error of omitting inventors . . . shall not invalidate the patent . . . if it can be corrected.” Notably, post-AIA § 256 removed the requirement that an inventorship error occur “without . . . deceptive intent.” The Federal Circuit stated it plainly: “‘Error’ is simply the incorrect listing of inventors” and does not exclude even deceptive intention. The Court explained that the inequitable conduct rules provide a safety valve for such actions, not § 256. The Court also noted that at the time Egenera removed Schulter as an inventor, no one had argued that “logic to modify” was means-plus-function language, which it presumptively was not. Egenera’s preferred construction of that term was consistent with its assertion that Schulter was not an inventor. The omission of Schulter as inventor was thus an “error” within the scope of § 256.

The Federal Circuit next turned to whether Egenera was judicially estopped from relisting Schulter as an inventor. Applying the First Circuit’s New Hampshire factors, the Federal Circuit looked to whether Egenera’s positions were inconsistent, whether its first position was successfully accepted by the court, and whether Egenera would derive an unfair advantage if not estopped. The Federal Circuit found that the district court erred in finding Egenera’s changing inventorship positions inconsistent. The Court explained that inventorship is complex and can depend on claim [...]

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Reframing the claim: Plain and ordinary meaning falls to lexicography

Logic to Modify: Even Deceptive Intent Does Not Bar Inventorship Correction

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