Docket No. 2013-1200
RADER, TARANTO, CHEN
February 21, 2014
Brief Summary: DC construction that “‘a filler’ can contrain only ‘one material’” vacated as neither the specification nor the prosecution history excluded mixtures (“too many questions of apparent relevance to identifying a proper construction of the limitation”). Claim differentiation arguments rejected due to lack of information regarding “intended scope”.
Summary: Nooren appealed DC holding of non-infringement based on its construction of the claim term “a filler” (“can contain only ‘one material’”) and conclusion that “polypropylene in the accused products plays no role in meeting the filler/fractions limitation”. The FC panel disagreed with the construction of “a filler”, explaining that they had “been pointed to nothing about a customary usage of the term itself, and nothing in the specification’s use of it, that excludes from being ‘a filler’ a mixture of two different ‘materials’ (whether that word means a mixture of different molecules or something else)” and that the statement during prosecution that “‘polymer-based coatings with two fillers have already been patented’…does not support the court’s adoption of its otherwise-unwarranted narrowing of the term’s meaning.” And Amcorr’s claim differentiation argument was rejected because “the relation between claim 1 and claim 2 is obscure on its face…and results from a sloppy amendment process that conveys nothing about intended scope” (citing Marine Polymer Techs., FC 2012 (care must be taken in drawing inferences from claim differentiation)). The FC panel also disagreed with the DC regarding polypropylene’s role “in meeting the filler/fractions limitation” (the “sole explanation” being “[p]olypropylene mixes with polybutene to form a homogenous polymer mixture”) because it did “not explain the connection between its finding about a ‘homogenous polymer mixture’ and any construction of ‘a filler’”. And because “[t]here has been insufficient exploration in the record, both here and in the district court, of too many questions of apparent relevance to identifying a proper construction of the limitation” (no “meaningfully precise claim scope” determination (Halliburton, FC 2008 and MeadWestVaCo, FC 2013)), the FC declined to answer the question of infringement. The opinion reviewed the flaws in the DC analysis, explaining that “[i]t is the usual (though not invariable) rule that, in patent claims as elsewhere, the construction of a clause as a whole requires construction of the parts, with meaning to be give to each part so as to avoid rendering any part superfluous” (citing 3M, FC 2013; Duncan, US 2001; and Medlin, FC 2006) and that claim terms “always must be understood in the context of the whole document-in particular, the specification (along with the prosecution history, if pertinent” (citing Phillips, FC 2005 and Sandifer, US 2014). The opinion also reviewed particle size evidence, noting that it was not clear and “where results differ according to which of several quantitative techniques for applying a claim term is chosen, and the patent does not make clear which technique is meant, an indefiniteness problem may arise” (citing Honeywell, FC 2003). Thus, the DC judgement was vacated and remanded.
Federal Circuit summaries 