The disputed claim terms were over whether a "carrier frame" was necessarily rectangular, and whether "around" meant what we all think it means.

We begin our claim construction analysis with the words of the claims themselves. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). We are not limited to considering just the language of claim 29 because “[o]ther claims of the patent in question, both asserted and unasserted, [are] valuable sources of enlightenment as to the meaning of a claim term.” Id. at 1314. In this case, the term “carrier frame” in claim 29 also appears in claim 1 where it is specifically described as including “right and left longitudinal elements” adjacent to “front and rear transverse elements.” ’062 patent col.6 ll.64-65, col.7 ll.1-2. The parties agree that the structure described as a “carrier frame” in claim 1 is “a four-sided or rectangular-shaped carrier frame” that surrounds the container on all sides. Claim Construction Order, slip op. at 2. We apply a “presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001); see also, e.g., Phillips, 415 F.3d at 1314; Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). PODS has pointed to no evidence in the specification or the prosecution history that the term “carrier frame” in claim 29 has any meaning other than the uncontested meaning in claim 1. To the contrary, the only embodiments disclosed in the specification are four-sided. Also, as discussed in the next section, during prosecution the Dousset prior art patent was distinguished on the ground that the ’062 patent claimed a rectangular-shaped frame, thus suggesting that all claims were limited to a four-sided device. See Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995) (“[A]rguments made during prosecution regarding the meaning of a claim term are relevant to the interpretation of that term in every claim of the patent absent a clear indication to the contrary.”). We therefore conclude that the term “carrier frame” in claim 29, as in claim 1, requires “a four-sided or rectangular shape.”

As PODS itself notes, in a claim that “recites a four-sided ‘carrier frame’…placing that four-sided carrier frame ‘around the container’ would result in ‘all four sides’ of the carrier frame being ‘around’ the container.” Appellee’s Br. at 24-25. Thus, since we construe the term “carrier frame” in claim 29 to require a four-sided structure, we necessarily construe the term “around” to require the frame to be on all sides of the container. This construction is confirmed by the ordinary meaning of “around,” which in this context is defined as “along the outer edge or boundary of…on all sides of…so as to encircle or enclose…about.” Webster’s Third New International Dictionary 120 (2002) (emphases added).

Prosecution estoppel precluded PODS from plying the doctrine of equivalents, having argued over the prior art because the claims went to a rectangular carrier frame.

The district court found infringement by equivalents of claims 1 and 32 of the ’062 patent. However, “prosecution history estoppel limits the range of equivalents available to a patentee by preventing recapture of subject matter surrendered during prosecution of the patent.” Southwall Techs., 54 F.3d at 1579. “[W]here a patent applicant sets forth multiple bases to distinguish between its invention and the cited prior art,” “the separate arguments [can] create separate estoppels” as long as the prior art was not distinguished based on the combination of these various grounds. Id. at 1581-83. “To invoke argument-based estoppel…the prosecution history must evince a clear and unmistakable surrender of subject matter.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1364 (Fed. Cir. 2006) (internal quotation marks omitted).

PODS' lawyers brewed a thin gruel by arguing that the prosecution arguments were unnecessary. The CAFC reminded that you can't take back what you said. Estoppel applies to all claims for a term which an argument was made to overcome prior art.

PODS argues that it was unnecessary to distinguish Dousset on the rectangular-shape ground since the examiner had acknowledged that Dousset “comprises two separate end-fitted units rather than a single rectangular-shaped frame” and relied on another reference to satisfy the rectangular frame limitation of claim 1. J.A. at 45. However, “[c]lear assertions made during prosecution in support of patentability, whether or not actually required to secure allowance of the claim, may also create an estoppel,” Southwall Techs., 54 F.3d at 1583, because “[t]he relevant inquiry is whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter,” Conoco, 460 F.3d at 1364 (quoting Cybor, 138 F.3d at 1457). In this case, PODS, in support of its assertion of patentability over Dousset, clearly stated that its claimed frame was rectangular in shape. A competitor would reasonably believe that PODS had surrendered any claim to a frame that was not rectangular or four-sided in shape, such as Porta Stor’s three-sided, u-shaped device.

Thus, PODS’s arguments during prosecution bar it from asserting that Porta Stor’s device infringed claim 1 of the ’062 patent under the doctrine of equivalents. Moreover, although the arguments distinguishing Dousset do not directly apply to claim 32, which was added after the obviousness rejection, “once an argument is made regarding a claim term so as to create an estoppel, the estoppel will apply to that term in other claims.” Southwall Techs., 54 F.3d at 1584.

District court ruling of infringement reversed.