Docket No. 2012-1241
O’MALLEY, PLAGER, REYNA
August 6, 2013
Brief Summary: Claim construction issues turned on plain and ordinary meaning, prosecution history and definition provided by claim. And, during prosecution, the court is “guided by legal principles dictating that we rest on the statements made by the patentee over conflicting statements of an examiner because it is the patentee’s words that define the claim.”
Summary: The parties stipulated to noninfringement after the DC claim construction ruling regarding 3M’s patents (US 5,501,679 and 5,691,034 (the Kruger patents); 5,648,428 and 5,344,691 (the Hanschen patents)) relating to laminate products such as diapers. 3M appealed the DC construction of “continuous contact”, “continuous microtextured skin layer over substantially the entire laminate”, “preferential activation zone” and “ribbon” (four of 30 disputed terms). Regarding “continuous contact”, the dispute centered on what was shown in the Figures and amendments made during prosecution. The FC panel concluded that the plain and ordinary meaning of the term supported a broad claim scope even though the claims were amended from “substantially continuous contact” to “continuous contact” (no clear and unmistakable disavowal (Lazare Kaplan, FC 2010; Omega Eng’g, FC 2003); “Where an applicant’s statements are amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable” (Grober, FC 2012)). The DC construction of the “continuous microtextured” phrase was affirmed because the panel was convinced a person of ordinary skill in the art would understand the meaning and nothing in the prosecution history “r[o]se to the level of a clear disavowal or otherwise support a departure from the claim language and written description.” The FC panel also concluded that the DC improperly read “predetermined” and “identifiable” into claims including the term “preferential activation zone” and reversed and remanded the conclusion. The term was found to be “specific to the claimed inventions” (no ordinary meaning outside the patents) and “the patentee [found to] offer an ascertainable definition in the body of the claim”. Thus, it was concluded that “it is unnecessary to limit the plain language based on unclear statements in the specification and prosecution history” (citing Thorner, FC 2012; “While the examiner’s statements could make this a close question, we are guided by legal principles dictating that we rest on the statements made by the patentee over conflicting statements of an examiner because it is the patentee’s words that define the claim.” (Elbex Video, FC 2007)). Regarding “ribbon”, 3M asserted that the DC construction was in error because it required a width of no more than one inch (Tredegar argued that any other reading rendered the term indefinite). The FC panel agreed with 3M, finding that “the plain meaning [of ribbon] is ascertainable to one of skill in the art” whether it is “half an inch wide or 10 inches wide”. Judge Plager wrote a concurring opinion regarding the ambiguity of certain claim terms (“competitor…should not have the risk of guessing wrong about what a claim term could possibly mean.”) Judge O’Malley concurred in part and dissented in part, arguing that the “continuous microtextured” term should have been construed differently.