PSN Illinois v. Ivoclar Vivadent, and 13 others (CAFC 2007-1512)

Ivoclar and Dentsply, suppliers who sell materials used in the accused process, are accused of contributing to or inducing infringement. MicroDental and National Dentex are dental laboratories that manufacture veneers and thus are accused of direct infringement. Den-Mat acts as both a supplier and a dental laboratory.

The parties have agreed for the purposes of this appeal that all of the accused processes are "functionally identical" to Ivoclar's IPS Empress technique ("Empress process"). The accused Empress process is a "lost wax" process.

The process leads to veneer for applying to a patient's tooth.

In July 2005, Ivoclar filed a motion for summary judgment of non-infringement as to its Empress process. In December 2006, the district court issued a memorandum opinion and order, construing certain claim terms and granting summary judgment of non-infringement. PSN Illinois, LLC v. Ivoclar Vivadent, Inc., No. 04-CV-7232 (N.D. Ill. Dec. 7, 2006) ("Summary Judgment Opinion").

PSN asked for district court reconsideration of claim construction, but got none. Hence appeal.

The disputed term was "ready for mounting."

Claim 1, the only independent claim, requires "eroding away said statue from said porcelain veneer restoration leaving said restoration ready for mounting on said tooth." (emphasis added). The district court construed "ready for mounting" as "leaving the veneer restoration ready to be fitted to and cemented on a patient's tooth for which it was custom-made." Summary Judgment Opinion at 11. On appeal, PSN argues that the district court incorrectly construed the term "ready for mounting" as excluding all finishing activities. We agree that the district court erred in holding that a veneer could not be "ready for mounting" if any finishing step is performed following removal of the investment material.

The claim language itself provides no guidance as to what is meant by "ready for mounting," and the specification provides no explicit definition for "ready for mounting." Nevertheless, the specification illuminates the proper construction of the term.

Chief Judge Michel couldn't resist a pun in declaring all parts of a disclosure of equal weight.

When read in context of the claim language and the specification, we find that the district court was incorrect in holding that the description of a preferred embodiment had more bite than the description in the summary of the invention.

Even the slap at district court claim construction did PSN no good. PSN tried to build a bigger umbrella of infringement, but the CAFC wouldn't countenance it. The appeals court is willing to look to unasserted, even cancelled claims, to read the tea leaves for asserted claim stain. Ridiculous!

PSN cited Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) as supplemental recent authority for the proposition that "[a]t leas[t] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary." This statement from Oatey is not applicable in this case, because as discussed above, the term "ready for mounting" can and should be construed in a way that encompasses the preferred embodiment.

Additionally, we note that Oatey is not a panacea, requiring all claims to cover all embodiments. Instead, courts must recognize that disclosed embodiments may be within the scope of other allowed but unasserted claims. Likewise, during prosecution, an applicant may have cancelled pending claims but not amended the specification to delete disclosure relevant only to the cancelled claims. In such cases, unasserted or cancelled claims may provide "probative evidence" that an embodiment is not within the scope of an asserted claim.

In spite of that, the accused Empress process does not infringe.

The Empress process requires that substantial finishing be completed prior to mounting the veneer in the patient's mouth. We thus conclude that a veneer made by the Empress process is not "ready for mounting" once the investment material is eroded.