The party opposing the summary judgment motion must come forward with sufficient facts to show that there is a genuine issue of material fact. Discussion TCI asserts that the claims added during the reexamination of the '896 patent are invalid because they violate 35 U.S.C. 305. Thus, the key issue is whether the new claims enlarge the scope of the original patent. If, in a new claim, a patentee omits a term or phrase appearing in an original claim, it does not follow automatically that the claim has been enlarged. Whether a new claim enlarges the scope of the original patent claims is a matter of claim construction.
Claim construction is itself a question of law.
However, resolution of that question may turn on underlying facts which, for example, may be illuminated by expert testimony. Courts also should look to the patent's specification and its prosecution history, if in evidence. Although extrinsic evidence may be used for the court's understanding of the claim, it may not be used to vary or contradict the terms of the claim. TCI first suggests that new Claims 33 to 47 are broader than original Claims 1 to 28 because they do not share those original claims' requirements of an originating chamber, a terminating chamber, and a sealing device. Environ counters that the only comparison which should be made is between the new claims and Claim 32, the broadest original claim.