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Claim Constructions Should Not Use “Consisting of” Lightly

By R. David Donoghue on May 8, 2009

SRAM Corp. v. Formula S.R.L., No. 06 C 1025 & 07 C 1565, Slip Op. (N.D. Ill. Apr. 3, 2009) (Kocoras, J.).*

Judge Kocoras construed the terms of plaintiff SRAM’s patents to components of a hydraulic disc brakes for bicycles.  Of particular interest, the Court construed the following terms:

  • “One-piece lever” did not require further construction.  Defendant’s proposed construction — a lever consisting of only one piece — was unnecessarily limiting.  Furthermore, the use of patent term of art “consisting of” would have “drastic consequences” to the scope of the inventor’s protection.  Similarly, defendant’s other construction — only one piece — was unnecessary.  It did not add anything to the term “one-piece.”
  • “Attached” did not require a direct connection between two components, as proposed by defendant.  Defendant’s reliance upon the patent’s figures was pertinent, but not dispositive.  In fact, the specification specifically identified an attachment between two components by a third component.  Attached, therefore, meant the connection of two components, whether or not the connection used an intermediate component.

*  I am posting about this decision on the eve of the first Grand Tour of 2009, the Giro d’Italia.  Good luck to Lance Armstrong, Levi Leipheimer, and the American teams, High Road and Slipstream.

  • Posted in:
    Intellectual Property
  • Blog:
    Chicago IP Litigation
  • Organization:
    R. David Donoghue
  • Article: View Original Source

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