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September 27, 2007

Comprised of Counterfeit

5,283,422, owned by CIAS, claims a counterfeit detection system, intended for slot machines and the like. '422 was asserted against Alliance Gaming. Alliance successfully got a summary judgment of non-infringement which the appeals court affirmed, even though the district court's claim construction was a bit off.

The little claim construction gem here is the CAFC chatting about the fabled claim term family: "comprising," and its down-at-the-heel cousin: "consists of."

CIAS v. Alliance Gaming and Bally Gaming (CAFC 2006-1342)

The claims of the patent establish and limit the patentee's right to exclude, by "describing the outer boundaries of the invention." Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 n.4 (1997).

The '422 patent describes and claims a system for detecting counterfeit objects such as gambling chips, labels, currency, commercial paper, and other objects. The system is a computer-directed process whereby each authentic object is assigned coded identification information, such as by a bar-code, that is recorded on the object and also stored in a machine-readable facility; then, upon presentation of the object for authentication, the computerized system compares the object's coded information with the stored information and determines whether the object is authentic or counterfeit.

The district court had determined that the resolution of Alliance's motion for summary judgment required construction of several claim terms, viz., "unique authorized information," "comprised of," "machine-readable code elements," "detectable series," and "randomly selected." CIAS appeals only the construction of "unique authorized information," "comprised of," and "randomly selected."

Patent claims are construed as they would be understood by persons experienced in the field of the invention, on review of the patentee's description of the invention in the specification and the proceedings in the Patent and Trademark Office. See generally Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claims are construed in light of the specification and the prosecution history).

As every prosecutor knows, the most open-ended transitional term is "comprising." Here, confirmation that "comprised of" is just as good.

"Comprised of"

The district court found that the meaning of "comprised of" has not been clearly resolved in patent-specific precedent, and therefore the court held that the "ordinary and customary meaning" should be used. The court ruled that "comprised of" does not have the same open-ended meaning as "comprising," which also appears in claim 1, and that "comprised of" should be construed as a closed-end term that excludes the presence of all elements beyond those presented in the "comprised of" clause. Thus the court defined "comprised of" as "a limiting description of composition," reasoning that "[t]his construction preserves the distinction between 'comprised of' and 'comprising,' the latter of which in fact is a patent term of art when used in a transitional phrase . . . ."

We conclude that this ruling is not correct. Although "comprised of" is not used as regularly as "comprising," and "comprised of" is sometimes used other than as a "transition phrase," nonetheless it partakes of long-standing recognition as an open-ended term. See generally 3 Chisum on Patents '8.06[1][b], at 8-180-82 (2007) (claims usually are structured with a preamble, a "transition phrase," and the elements or steps that are necessary to the right to exclude). The usual and generally consistent meaning of "comprised of," when it is used as a transition phrase, is, like "comprising," that the ensuing elements or steps are not limiting. The conventional usage of "comprising" generally also applies to "comprised of."

Alliance had tried to narrow construction, bifurcating "comprised of" from "comprising;" a wrong interpretation.

Alliance argues that several judicial decisions have used "comprised of" to mean "consists of." However, these rare usages do not remove from "comprised of” its conventional meaning when used as a transition term. The only patent case that illustrates this casual usage appears to be Glaxo Grp. Ltd. v. Apotex, Inc., 376 F.3d 1339, 1343 (Fed. Cir. 2004)... This usage of "comprised of" was not as a claim transition term, but was the court's description of the defendant's product; there was no issue of whether "comprised of" was a limiting term in patent claim style. Similarly, in Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 346 (1961) the Court stated: "The decisions of this Court require the conclusion that reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity . . ."; this linguistic usage is not concerned with claim drafting; and, if anything, it is open-ended and non-limiting.

The CAFC differentiated the "comprise" family from the more limited "consists" clan. A helpful nod to 'comprising' alternatives, though perhaps not to be relied upon in litigation without a tussle: "[o]ther words, less often used, have been given the same meaning in patent claim interpretation as 'comprising': 'including,' 'having,' 'containing,' and even 'wherein.'"

In the patent claim context the term "comprising" is well understood to mean "including but not limited to." In Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 811 (Fed. Cir. 1999) the court explained that patent claims "use the signal 'comprising,' which is generally understood to signify that the claims do not exclude the presence in the accused device or method of factors in addition to those explicitly recited." In Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 1327-28 (Fed. Cir. 1999) the court explained that "the terms 'comprise' and 'consist' have different meanings; . . . 'comprising' . . . is inclusive or open-ended and does not exclude additional, unrecited elements or method steps . . . . From these definitions it is clear that 'comprise' is broader than 'consist.'" Similarly, our predecessor court explained that this usage of "comprising" also embraces "comprises" and "which comprises." Application of James F. Hunter, 288 F.2d 930 (CCPA 1961) (the term "comprises" does not limit the claim to the steps that are listed).

The contrast, in patent lexicography, is with "consisting of," not with variations of "comprises." It is equally well understood in patent usage that "consisting of" is closed-ended and conveys limitation and exclusion. See Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004) ("'consisting of' is a term of patent convention meaning that the claimed invention contains only what is expressly set forth in the claim . . . [however] it does not limit aspects unrelated to the invention"); In re Gray, 53 F.2d 520 (CCPA 1931) (the use of the claim term "consists" is limited to the claim's enumerated alloy metals without other elements, unlike the term "comprising" which permits the inclusion of other metals than those claimed"). Robert A. Faber, Landis on Mechanics of Patent Claim Drafting '2:5, 2-15 (5th ed. 2006) also elaborates that "[o]ther words, less often used, have been given the same meaning in patent claim interpretation as 'comprising': 'including,' 'having,' 'containing,' and even 'wherein.'"

The appeals court smiled approvingly upon district court concurrence through time.

District court cases illustrate this routine construction of "comprised of" in the same way as "comprising," as meaning "including but not limited to." E.g., SKW Americas v. Euclid Chem. Co., 231 F. Supp.2d 626, 637 (N.D. Ohio 2002) ("Because the hydraulic cement mix is 'comprised of' the four elements listed . . . it may include other elements as well."); B.F. Goodrich Flight Sys., Inc. v. Insight Instruments Corp., 22 USPQ2d 1832, 1840, 1992 WL 193112, at *9 (S.D. Ohio Feb. 25, 1992) ("Use of the term 'comprised' renders this claim an 'open' claim which will read on devices which merely add additional elements or steps."), aff'd, 991 F.2d 810 (Fed. Cir. 1993) (Table); Univ. of Fla. Research Found., Inc. v. Orthovita, Inc., No. 1:96-CV-82-MMP, 1998 WL 34007129 (N.D. Fla. Apr. 20, 1998) ("comprised of" is broader than "consisting essentially of" when used in patent claims).

These cases reflect the general understanding and usage of "comprised of" in patent convention as having the same meaning as "comprising." For patent claims the distinction between "comprising" and "consisting" is established, along with the meaning of "comprised of" as related to "comprising," not "consisting of." Correctly construed, "comprised of" does not of itself exclude the possible presence of additional elements or steps.

Another construed claim term: "unique authorized information," limited the scope of the claimed invention by prosecution estoppel to overcome prior art. That was the genuine ticket to non-infringement.

The CAFC gave a coda case law capsule on doctrine of equivalents. CIAS tripped on prosecution estoppel in trying to clear the DOE hurdle.

As held in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002), when the accused subject matter is within the range of surrendered subject matter, the patentee must satisfy certain criteria in order to reach that subject matter through equivalency; the patentee must show that the asserted equivalent either was unforeseeable, or that the rationale underlying the surrender had only a tangential relation to the equivalent in question, or some other reason why the patentee could not reasonably have described and continued to claim the substitute in question.

Posted by Patent Hawk at September 27, 2007 12:26 PM | Claim Construction


A small victory for common sense (though "common sense" itself makes me tremble when it comes from the mouths of the judiciary).

Posted by: Jeff Lindsay at September 27, 2007 12:45 PM

Again, this opinion is full of common sense. It was authored by J. Newman.

Posted by: Joyce at September 27, 2007 3:03 PM

Right on about Newman. She should decide all the cases.

Posted by: Sean at September 28, 2007 9:20 AM

Doesn't Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004)and, even more recently, Conoco v EEi (Fed. Cir. 2006) have precedent over the more restrictive Gray, 53 F.2d 520 (CCPA 1931)?

Yet, the U.S. Patent and Trademark office examiners use Gray and ignore Norian and Conoco. Gray can lead to an inventor being denied the right to exclude.

Posted by: Lawnie Taylor at May 7, 2010 1:24 PM