Fargo Electronics v. IRIS (CAFC 2007-1523) non-precedential (Latin for: keep it to yourself)

[T]he district court determined that independent claim 8 of the '519 Patent is invalid as indefinite under 35 U.S.C. § 112, ¶ 2. Summary Judgment Order, at *15-16. Claim 8 recites:

An ink ribbon supply roll comprising a roll core, a plurality of supports comprising a first support and a plurality of second supports formed in a member movable with the roll core and radially spaced from an axis of rotation of the roll core when the roll core rotates as ribbon thereon is removed, and first identifier indicia comprising an unmagnetized magnetic material in a first support to indicate a home position, the second supports other than the being oriented at known positions relative to the home position and at least one second support carrying a removable unmagnetized magnetic material identifier indicia.

'519 Patent col.7 l.46-col.8 l.9 (emphasis added).

The claim missed an object for "the second supports other than the..."

Fargo argued to the district court that claim 8 does not have an error and that it should be construed according to standard principles of claim construction.

The district court concluded that claim 8 contains an error, and that both of the proposed "constructions" require the addition or subtraction of claim terms. Id. Thus, the district court determined that correction of the claim would require the application of principles of claim correction as explained by this court in Novo Industries, rather than standard principles of claim construction. It noted that in Novo Industries this court held that a district court may only correct an error in a patent by interpretation of the patent "if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims." 350 F.3d at 1354. After considering the parties' arguments and proposed constructions, the district court determined that it "would have to engage in conjecture" in order to assign a meaning to the phrase "second supports other than the." Summary Judgment Order, at *15. It concluded that it could not correct claim 8 under Novo Industries and, accordingly, that independent claim 8 is invalid as indefinite. Because dependent claims 9 through 15 depend from claim 8, the district court found that they are also invalid as indefinite.

A plain reading of claim 8 shows that there is an error. We reject Fargo's argument to the contrary. As the district court noted, "the phrase 'second supports other than the' naturally leads the reader to expect a description of a further subset of that category of supports known as 'second supports.'" Summary Judgment Order, at *13. Claim 8 as issued, however, does not identify the object of the phrase "other than the." Absent correction, "[t]he claim is invalid for indefiniteness because it is 'insolubly ambiguous' and not 'amenable to construction.'" Novo Indus., 350 F.3d at 1358 (quoting Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)). Thus, the district court did not err by engaging in a claim correction analysis under Novo Industries.

Next, the issue of whether the claim was construable. It wasn't.

Accordingly, we next turn to the question of whether the district court properly determined that it could not correct the error in claim 8 under Novo Industries... While the parties do not appear to dispute that there are multiple reasonable ways to correct the error in claim 8 (in fact Fargo itself has proposed several possible corrections), they disagree as to whether there is a reasonable debate as to the proper correction and whether all of the reasonable corrections would result in the same claim scope.

On reasonable repair -

As the district court noted, "[l]iability under § 271(b) and (c) is dependent on the existence of an underlying act of direct infringement." Summary Judgment Order, at *16-17. After considering the relevant factors, including the fact that "[t]he printer ribbon is a readily replaceable part that must be replaced after a set number of uses," the district court stated that "[t]he facts of this case fall squarely within these earlier precedents finding repair." Id. at *19. Thus, the district court concluded that IRIS does not infringe combination claims 1 through 7 of the '519 Patent contributorily or by inducement because the reasonable repair doctrine applies such that there is not an underlying act of direct infringement. Id. at *23.

Affirmed.