CAFC reverses DNH in MARKEM-IMAJE; Newman partially dissents
The issues:
Zipher argues that the district court erred in limiting the claim phrase “drive the spools” to mean “rotate the spools.” Zipher argues that “drive” in this phrase has the inclusive meaning of not only rotate but also “hold steady in a commanded position.” The district court acknowl- edged that the ordinary meaning of “drive” can be broad enough to encompass not only the rotation of the spools but also application of a holding torque that prevents the spool from rotating. Markem, 2008 WL 4116666, at *3 & n.4. The district court observed that “[m]ost of the refer- ences to driving the spools in the specification could accommodate either proposed construction;” that is, “drive” could mean applying only rotational torque, or it could also include application of a holding torque. Id. at *6. However, the court found that other usages in the specification support limiting “drive” to mean only the narrower “rotate” and concluded that “when the specifica- tion uses ‘drive’ to refer to the spools, it supports Markem’s narrower construction of rotating the spools rather than merely controlling them.” Id. at *7.
AND
Zipher also appeals the district court’s construction that the claims require “some method of deriving a tension measurement,” Markem, 2008 WL 4116666, at *12. Markem had asked the district court to hold that “using a contactless means of tension measurement that occurs during the rotation of both motors is a necessary and inherent aspect of such measurement because the specifi- cation does not describe any other method of such meas- urement.” Id. The district court declined this request, but stated that “some method of deriving a tension meas- urement, whether directly or indirectly, is a necessary predicate to maintaining tension ‘between predetermined limit values.’” Id. The court reasoned that “[w]ithout having a reasonable estimate of the current tape tension, it is not possible to identify whether the tension is ap- proaching or exceeding the limit values.” Id.
Zipher argues that the claim does not explicitly recite measuring tension, and that construing the claims to require tension measurement would import a limitation into the claims from the specification and violate the mandate of Rambus Inc. v. Infineon Tech. AG that “the claims need not recite every component necessary to enable operation of a working device.” 318 F.3d 1081, 1093 (Fed. Cir. 2003). We agree with Zipher.
The CAFC elaborated:
That a device will only operate if certain elements are included is not grounds to incorporate those elements into the con- struction of the claims. A claim to an engine providing motive power to a car should not be construed to incorpo- rate a limitation for an exhaust pipe, though an engine may not function without one. Thus, though “some method of deriving a tension measurement” may be required to make a claimed device operational, it is not proper to incorporate that method into the claim construc- tion. We therefore reverse the district court’s determina- tion that the claims require “some method of deriving a tension measurement.”
Judge Newman dissented on the second point about tension measurement:
I concur in Part I of the court’s decision. I would, however, affirm the district court’s finding that “some method of deriving a tension measurement, whether directly or indirectly, is a necessary predicate to main- taining tension ‘between predetermined values.’” As the district court reasoned, “[w]ithout having a reasonable estimate of the current tape tension, it is not possible to identify whether the tension is approaching or exceeding the limit values.” Markem-Imaje Corp. v. Zipher Ltd., 2008 WL 4116666, *12 (D.N.H. Aug. 28, 2008). The panel majority’s contrary result ignores the paramount impor- tance 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.”). Accordingly, I respectfully dissent from Part II of the court’s decision.
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).
Judge Newman concludes: From my colleagues’ flawed view of the law of claim construction, and their reversal of the trial court’s correct and well reasoned construction, I respectfully dissent.
Zipher argues that the district court erred in limiting the claim phrase “drive the spools” to mean “rotate the spools.” Zipher argues that “drive” in this phrase has the inclusive meaning of not only rotate but also “hold steady in a commanded position.” The district court acknowl- edged that the ordinary meaning of “drive” can be broad enough to encompass not only the rotation of the spools but also application of a holding torque that prevents the spool from rotating. Markem, 2008 WL 4116666, at *3 & n.4. The district court observed that “[m]ost of the refer- ences to driving the spools in the specification could accommodate either proposed construction;” that is, “drive” could mean applying only rotational torque, or it could also include application of a holding torque. Id. at *6. However, the court found that other usages in the specification support limiting “drive” to mean only the narrower “rotate” and concluded that “when the specifica- tion uses ‘drive’ to refer to the spools, it supports Markem’s narrower construction of rotating the spools rather than merely controlling them.” Id. at *7.
AND
Zipher also appeals the district court’s construction that the claims require “some method of deriving a tension measurement,” Markem, 2008 WL 4116666, at *12. Markem had asked the district court to hold that “using a contactless means of tension measurement that occurs during the rotation of both motors is a necessary and inherent aspect of such measurement because the specifi- cation does not describe any other method of such meas- urement.” Id. The district court declined this request, but stated that “some method of deriving a tension meas- urement, whether directly or indirectly, is a necessary predicate to maintaining tension ‘between predetermined limit values.’” Id. The court reasoned that “[w]ithout having a reasonable estimate of the current tape tension, it is not possible to identify whether the tension is ap- proaching or exceeding the limit values.” Id.
Zipher argues that the claim does not explicitly recite measuring tension, and that construing the claims to require tension measurement would import a limitation into the claims from the specification and violate the mandate of Rambus Inc. v. Infineon Tech. AG that “the claims need not recite every component necessary to enable operation of a working device.” 318 F.3d 1081, 1093 (Fed. Cir. 2003). We agree with Zipher.
The CAFC elaborated:
That a device will only operate if certain elements are included is not grounds to incorporate those elements into the con- struction of the claims. A claim to an engine providing motive power to a car should not be construed to incorpo- rate a limitation for an exhaust pipe, though an engine may not function without one. Thus, though “some method of deriving a tension measurement” may be required to make a claimed device operational, it is not proper to incorporate that method into the claim construc- tion. We therefore reverse the district court’s determina- tion that the claims require “some method of deriving a tension measurement.”
Judge Newman dissented on the second point about tension measurement:
I concur in Part I of the court’s decision. I would, however, affirm the district court’s finding that “some method of deriving a tension measurement, whether directly or indirectly, is a necessary predicate to main- taining tension ‘between predetermined values.’” As the district court reasoned, “[w]ithout having a reasonable estimate of the current tape tension, it is not possible to identify whether the tension is approaching or exceeding the limit values.” Markem-Imaje Corp. v. Zipher Ltd., 2008 WL 4116666, *12 (D.N.H. Aug. 28, 2008). The panel majority’s contrary result ignores the paramount impor- tance 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.”). Accordingly, I respectfully dissent from Part II of the court’s decision.
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).
Judge Newman concludes: From my colleagues’ flawed view of the law of claim construction, and their reversal of the trial court’s correct and well reasoned construction, I respectfully dissent.
posted by Lawrence B. Ebert at 9:20 AM
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