Outside the Box Innovations (dba Union Rich) v. Travel Caddy and Rooster Products (dba The Rooster Group) (CAFC 2007-1253) [non-precedential]

Judges Archer and Bryson in the majority, narrowing the scope of "between"; decision penned by Archer.

A claim term “must be read in view of the specification of which [it is] a part.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d 517 U.S. 370 (1996)). However, the specification cannot be used to read nonexistent limitations into a claim. Prima Tek II, LLC v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003).

The district court construed the term “between” as “in the interval defined by two end points; here, the outer edge of the panels of the case” and “joined between” as “fastened in and through the interval defined by two end points; here the outer edge of the end panels of the case.” Outside the Box Innovations, No.1:05-cv-2482, slip op. at 7.

Travel Caddy argues that the district court unnecessarily restricted the meaning of the claim term “between” and “joined between.” Specifically, Travel Caddy asserts that “between” should be construed so as to include an embodiment in which the bottom, front, and back panels extend beyond the end panels, an embodiment Travel Caddy argues is illustrated in Figure 10 of the ’104 patent. We disagree.

Travel Caddy is correct that the preposition “between” could be used to describe something that extends beyond the bounds of the objects of the preposition. For example, if person C sits to the right of person A and to the left of person B, C is said to sit “between” A and B. If person C then puts his right arm around B’s shoulders and his left arm around A’s shoulders, C could still be said to sit “between” A and B. However, the written description and drawings of the ’104 patent do not support such a broad interpretation of the term “between” in the claims... [T]he written description demonstrates that the areas seen to be extending beyond the end panels are simply the bindings connecting fabric layers.

Considered in isolation, the ’104 patent’s Figure 10 appears to illustrate a bag having a portion that extends beyond the end panel. Travel Caddy argues that that portion is part of the bottom panel. However, the written description demonstrates that the areas seen to be extending beyond the end panels are simply the bindings connecting fabric layers.

DYK in dissent:

[In] my view, the majority incorrectly restricted the scope of claim 19 by construing the claim term “between” to mean “only between” and incorrectly approved the district court’s finding that Travel Caddy will not likely succeed in proving that appellee’s Heavy-Duty ProTool Bag (“ProTool Bag”) infringes claim 19.

The majority correctly recognizes that “the preposition ‘between’ could be used to describe something that extends beyond the bounds of the objects of the preposition.”

The problem in my view is the next step in the majority’s construction, which is to treat the “between” limitation as though it read “only between.” There is no support for such a reading in the claim language, the specification, or the prosecution history. Indeed, the claim’s use of the term “comprising” is directly inconsistent with such a construction. It is well established that “comprising” is a “term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495 (Fed. Cir. 1997); Manual of Patent Examining Procedure § 2111.03 “Transitional Phrases” (8th ed., Rev. 5, 2006) (“The transitional term ‘comprising' . . . is inclusive or open-ended and does not exclude additional, unrecited elements . . . .”). Here, the additional feature, extensions of the front and back panels beyond the end panels, is fully consistent with the “comprising” formulation and does not render the accused bags non-infringing.

The majority’s approach here is not unlike the approach we rejected in Stiftung v. Renishaw PLC, 945 F.2d 1173 (Fed. Cir. 1991)... See also Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1353 (Fed. Cir. 2005) (holding that an additional, undesirable prior art feature found in the infringing device did not preclude a finding of infringement).

The repeated inconsistency of the appeals court, particularly in claim constructions, recklessly leaves patent litigation a crap shoot. In this round, the reasoning in the dissent is the more compelling.