« The Perils of Prosecution | Main | Exhaustion Exasperated »

January 15, 2008

A

Baldwin Graphic Systems sued Siebert for infringing 5,974,976 and Re 35,976, aimed at cleaning printing presses. After Markman, the district judge granted summary judgment of non-infringement of both patents. The CAFC differed on the claim construction by an 'a': 'a' not connoting singularity. On another point, similar terms may play differently in different claim classes.

Baldwin Graphic Systems v. Siebert (CAFC 2007-1262)

Summary judgment was granted in part because “a pre-soaked fabric roll” was construed to mean “a single pre-soaked fabric roll.” But 'a' does not imply a count; and later backward reference using 'the' "does not implicate, let alone mandate the singular."

First, as to the Reissue patent, “[t]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). That “a” or “an” can mean “one or more” is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one.” Id. The subsequent use of definite articles “the” or “said” in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning. An exception to the general rule that “a” or “an” means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule. See, e.g., Abtox Inc. v. Exitron Corp., 122 F.3d 1019 (Fed. Cir. 1997); Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098 (Fed. Cir. 1996).

This record does not contain a clear indication that the applicant departed from the general rule for the article “a.” Nothing in the claim language, specification, or prosecution history compels an exceptional reading of “a” in this case. The district court erred by misapplying the term “said fabric roll” later in the claim and the phrase “in intimate contact with the fabric roll” in the specification. Initial Order, slip op. at 8. As noted above, the use of a definite article (“said” or “the”) to refer back to an initial indefinite article does not implicate, let alone mandate the singular. Because the initial indefinite article (“a”) carries either a singular or plural meaning, any later reference to that same claim element merely reflects the same potential plurality. In grammatical terms, the instances of “said fabric roll” in the claim are anaphoric phrases, referring to the initial antecedent phrase. Because the initial phrase carries no definitive numerosity, the anaphoric phrases do not alter that meaning in the slightest.

Contrary to the district court’s analysis, § 2173.05(e) of the Manual of Patent Examining Procedure (MPEP) does not suggest otherwise. Section 2173.05(e) describes the need, in most cases, for claim terms to have proper antecedent bases:

The lack of clarity could arise where a claim refers to “said lever” or “the lever,” where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. Similarly, if two different levers are recited earlier in the claim, the recitation of “said lever” in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended.

MPEP § 2173.05(e). According to the district court, § 2173.05(e) “only strengthens” the exclusively singular nature of “a pre-soaked fabric roll,” because “the use of ‘said fabric roll’ implies that the prior reference to ‘a fabric roll’ should be read as a single roll, not one or more rolls, in order to avoid confusion.” Initial Order, slip op. 7. To the contrary, MPEP § 2173.05(e) is inapposite because the limitations in claim 32 all relate to proper antecedent bases. Thus, the confusion or indefiniteness problem addressed by § 2173.05(e) does not arise in this claim.

Another issue was over the "reduced air content cleaning fabric" in an apparatus claim and "reducing air content of a strip of cleaning fabric." The district court attempted to construe both similarly, and in doing so, imposed improper limitations. But an apparatus claim should not suffer process limitations, and construction of process claims should not unduly import limitations from the specification. Further, method step order is irrelevant unless required. While the CAFC does not draw the point out, one instance requiring order would be that a succeeding step uses the outcome product of a previous step.

Unfortunately this approach blurred an important difference between the two independent claims, namely that claim 1 is an apparatus claim and claim 14 is a method claim. Despite their similarities, these claims are directed toward different classes of patentable subject material under 35 U.S.C. § 101. Courts must generally take care to avoid reading process limitations into an apparatus claim, see AFG Industries, Inc. v. Cardinal IG Co., 375 F.3d 1367, 1372-1373 (Fed. Cir. 2004), because the process by which a product is made is irrelevant to the question of whether that product infringes a pure apparatus claim, see Vanguard Products Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2001) (“A novel product that meets the criteria of patentability is not limited to the process by which is was made.”).

Claim 1 and its dependent claims (asserted claims 7, 9, and 12) are pure apparatus claims. They have no process limitations. Claims 1, 7, 9, and 12 are therefore not limited to any particular process or method of making the claimed pre-packaged, pre-soaked cleaning system, or to any particular sequence of air content reduction relative to winding.

Unlike claim 1 and its dependent claims, claim 14 and its dependent claims (asserted claims 23 and 25) are method claims and each recites a series of steps. Therefore, and again unlike claim 1, the scope of claim 14 specifies the limits on the performance of those steps. As with any other type of claim, courts must carefully avoid importing limitations from the specification into method claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (“In examining the specification for proper context, however, this court will not at any time import limitations from the specification into the claims.”). Nonetheless the specification informs the meaning of the claims. In Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc), this court acknowledged the difficult distinction between “using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim.” This court explained, however, that the distinction is manageable “if the . . . focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.” Id. Also, although a method claim necessarily recites the steps of the method in a particular order, as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order. See Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001). The specification or prosecution history may also require a narrower, order-specific construction of a method claim in some cases. Id.

Because the claim construction, which was partly in error, drove the summary judgment, remanded.

Posted by Patent Hawk at January 15, 2008 2:07 PM | Claim Construction