Markem-Imaje v. Zipher and VideoJet Technologies (CAFC 2010-1305) precedential; Judges Newman (dissent), Clevenger and Linn (per curiam)

Per curiam decisions are typically unanimous and unrevealing.

Claim construction receives plenary review on appeal. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). The grant of summary judgment also receives plenary review.

On our holding that "drive" is properly construed to mean the application of torque to the spools, whether the torque causes rotation or resists it, we vacate the judgment of non-infringement, and remand for determination of infringement on the corrected claim constructions.

Backing the district court judge, Judge Newman argued that the specification makes clear an inherent claim limitation - tension measurement:

The panel majority's contrary result ignores the paramount importance of the specification in claim construction. See Retractable Techs., Inc. v. Becton, Dickinson & Co., 2011 WL 2652448, at *8 (Fed. Cir., July 8, 2011) ("In reviewing the intrinsic record to construe the claims, we strive to capture the scope of the actual invention, rather than . . . allow the claim language to become divorced from what the specification conveys is the invention.").

Claims do not stand alone, but rather, are part of a "fully integrated written instrument," consisting of a specification that concludes with claims. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed Cir. 2005) (en banc) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995) (en banc)). As recognized by the Supreme Court, it "is fundamental that claims are to be construed in light of the specifications and both are to be read with a view to ascertaining the invention," United States v. Adams, 383 U.S. 39, 49 (1966), and as stated by Judge Rich for this court, "the descriptive part of the specification aids in ascertaining the scope and meaning of the claims inasmuch as the words of the claims must be based on the description. The specification is, thus, the primary basis for construing the claims." Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).

The specification "is the single best guide to the meaning of a disputed term," Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, 90 F.3d 1567, 1582 (Fed. Cir. 1996)), for the specification shows what the inventor actually invented. See Bass Pro Trademarks v. Cabela's Inc., 485 F.3d 1364, 1369 (Fed. Cir. 2007) ("Claims are construed to implement the invention described in the specification."). Where the specification clearly and consistently sets the scope of a disputed claim, that scope governs the construction of the claim. See On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1339-40 (Fed. Cir. 2006) ("In general, the scope and outer boundary of claims is set by the patentee's description of his invention." (citing Phillips, 415 F.3d at 1313- 14)). This court has no authority to enlarge the scope of the patent beyond what the patentee described as its invention, notwithstanding my colleagues' curious analogy to a car and its tailpipe. Maj. Op. at 15-16. Where a limitation is placed in a claim by the specification, the claim must be construed to include the limitation. See, e.g., Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 990 (Fed. Cir. 2007) (construing the claim term "look ahead distance" to include a time limitation because "time is inherent in the calculation of 'look ahead distance,'" as shown by the specification); Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1360 (Fed. Cir. 2005) (limiting the term "download component" to a component capable of performing certain functions, based on the consistent usage in the specification). The claims cannot transcend the invention that entitles the inventor to a patent. See Topliff v. Topliff, 145 U.S. 156, 171 (1892) ("The object of the patent law is to secure to inventors a monopoly of what they have actually invented or discovered . . . .").

[I]n this case the specification fully supports the district court's construction. Although the claim does not explicitly include terms for measuring tension, the specification describes as the invention the maintaining of the ribbon tension (t) within a predetermined amount, and "mathematical processing" whereby the "addition or removal of ribbon maintains ribbon tension within acceptable limits." U.S. Patent No. 7,150,572, col.22 ll.38-42. As the district court found, "some method of deriving a tension measurement, whether directly or indirectly" is required. Markem, 2008 WL 4116666 at *12. Simply put, the printer must be able to measure tension so that the controller can "calculate a length of tape to be added to or subtracted from tape extending between said spools in order to maintain tension in said tape between predetermined limit values." '572 patent, claim 1. The specification states that "a measure of tape tension may be calculated by reference to a measure of motor step rate, the calibration data related to the step rate, and the power consumed by the motor," and further, that a "measure of tension t may be calculated from the measures of power supplied to the two motors, measures of the spool radii, calibration factors for the two motors related to the step rate of the motors." Id. at col.5 ll.19- 22, 30-34. Thus while the invention is flexible as to how tension is measured, and permits measurement through indirect methods, some method of measurement is contemplated and required, as found by the trial court.