Tuesday, August 06, 2013

Written description analyzed in 3M Innovative Properties v Tredegar; the patentee’s words that define the claim

Written description is at issue in 3M Innovative Properties

This appeal deals with claim construction disputes
arising out of 3M Innovative Properties Company and 3M
Company’s (collectively, “3M”) allegations of patent infringement
brought against Tredegar Corporation and
Tredegar Film Products Corporation (collectively,
“Tredegar”) in the United States District Court for the
District of Minnesota (“district court”). 3M competes in
the elastomeric laminate industry with Tredegar. 3M is a
global manufacturing company that sells laminate products
such as diapers. Tredegar is a supplier of breathable
and nonwoven film laminates for personal care products,
including baby diapers, training pants, and adult incontinence
products. (...)

We affirm the appropriate
scope of the claim terms “continuous contact” and “continuous
microtextured skin layer over substantially the
entire laminate,” but clarify the appropriate scope of those
claim terms. We reverse the district court’s claim constructions
relating to the terms grouped as “preferential
activation zone” and the term “ribbon.” Because the
district court erroneously limited certain claim terms in a
manner that is inconsistent with the intrinsic disclosures,
we provide the appropriate constructions, vacate those
constructions that are inconsistent with the analysis
herein, and remand for further proceedings.

As to history:

3M, the assignee of the Krueger and Hanschen Patents,
brought suit against Tredegar on November 23,
2009. 3M sought injunctive relief as well as compensatory
damages for alleged willful infringement. In its Answer,
Tredegar filed counterclaims seeking declarations
that the asserted claims were not infringed and that the
patents are invalid and/or unenforceable.


Claim construction is a question of law that we review
without deference. Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1455–56 (Fed. Cir. 1998) (en banc). To the
extent possible, claim terms are given their ordinary and
customary meaning, as they would be understood by one
of ordinary skill in the art in question at the time of the
invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc). Idiosyncratic language, highly
technical terms, or terms coined by the inventor are best
understood by reference to the specification. Id. at
1315−16. While we construe the claims in light of the
specification, limitations discussed in the specification
may not be read into the claims. Intervet Inc. v. Merial
Ltd., 617 F.3d 1282, 1287 (Fed. Cir. 2010); Abbott Labs. v.
Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009).
Courts may rely on dictionary definitions when construing
claim terms, so long as the dictionary definition does not
contradict any definition found in or ascertained by a
reading of the patent documents. See Advanced Fiber
Tech. (AFT) Trust v. J & L Fiber Servs., Inc., 674 F.3d
1365, 1374−75 (Fed. Cir. 2012) (internal citations omitted).

As to the use of the word "substantially":

It was
amended for a first time, adding the limitation “substantially
continuous contact,” to claim the interface between
the skin and core. In submitting the amendment, the
applicant noted that “substantially continuous contact”
was depicted in Figures 22 and 23. J.A. 1268. This first
amendment, however, was rejected as obvious in light of
Hazelton. Id. In response, the claim was amended a
second time by deleting the word “substantially” so that
the limitation required “continuous contact” between the
core and skin layers. J.A. 1278–80. The applicant did not
provide statements illuminating why “substantially” was


We do not find a clear and unmistakable disclaimer of
the cohesive contact depicted in Figure 23 in the prosecution
history. It is apparent from the prosecution history
that the applicant distinguished Hazelton, but there is no
statement that amounts to a disavowal of cohesive failure.
To the contrary, 3M presents a competing interpretation
that the applicant eliminated the word “substantially” to
more clearly recite that “continuous contact” was different
from Hazelton because Hazelton disclosed only intermittent


Given this reasonable, contrary reading of the prosecution
history, we cannot say with certainty that the ’679
Patent was intended to limit “continuous contact” to the
type of full skin-to-core contact depicted in Figure 22.
Where an applicant’s statements are amenable to multiple
reasonable interpretations, they cannot be deemed
clear and unmistakable. See Grober v. Mako Prods., Inc.,
686 F.3d 1335, 1342 (Fed. Cir. 2012) (rejecting prosecution
disclaimer arguments because the applicant’s ambiguous
statements distinguishing from prior art did not
focus on specific prior art features); see also Abbott Labs.,
566 F.3d at 1289. The district court erred when it concluded

Where, as here, a disavowal does not exist, the ordinary
and customary meaning of the claim term will be
given its full effect. In our view, the district court’s construction
of “full surface contact” properly includes instances
where the elastomeric layer fills the folds of the
microtextured skin but cohesively fails under the folds.
The district court’s claim construction of “full surface
contact” is affirmed with the clarification that the definition
includes the cohesive failure depicted in Figure 23.


While it may be beneficial, for purposes of litigation,
for 3M to argue
that if the inventors had wished to require
the microtexturing to be “continuous,” then they
would have used the adverb “continuously” instead of
“continuous,” our cases do not indulge hindsight. We are
satisfied—based on the clear indications in the written
description—that a person of ordinary skill would understand
that when the laminate is stretched to the point of
deformation, it is substantially the entire skin layer that
develops substantially uniform microtexturing.
We have no occasion to address in detail the prosecution
history because we conclude that none of the statements
contained therein rise to the level of a clear
disavowal or otherwise support a departure from the
claim language and the written description. We have
similarly considered comparisons to the Hanschen Patents
but do not read those disclosures to change the
meaning of the claims in the ’034 Patent. We affirm the
district court’s interpretation of “continuous microtextured
skin layer,” and as previously clarified, to be “continuous”
the microtexturing is “substantially uniform” as
opposed to limited to a single region or zone.

Thornier v Sony Computer is cited:

that one of skill in the art is informed by the claim disclosures,
it is unnecessary to limit the plain language based
on unclear statements in the specification and prosecution
history. Thorner v. Sony Computer Ent. Am. L.L.C., 669
F.3d 1362, 1367 (Fed. Cir. 2012) (emphasizing that “[t]he
patentee is free to choose a broad term and expect to
obtain the full scope of its plain and ordinary meaning,
unless the patentee explicitly redefines the term or disavows
its full scope”).

On predetermined:

We consult the written description to determine
whether the district court’s claim construction encroaches
on the straightforward definition provided in the claims.
Based on the use of “predetermined,” the district court
limited the scope of the claims and required a “preferential
activation zone” to have both clearly determined and
identifiable properties.9 We disagree.
Both 3M and Tredegar rely on the “predetermination”
references in the specification, but the parties use the
references differently in contesting whether the applicant
narrowed the meaning of “preferential activation zone.”
The fundamental point of distinction is that, while
Tredegar suggests that the zones must exist before activation,
3M suggests that the zones must be selected before
activation. 3M contends that even if a region of the
laminate is selected or predetermined for preferential
elongation, the zone is not in existence until activation
occurs. (...)

The district court’s use of “predetermined” in its claim
construction does not take into account the “controlled
localized stretching” that can create a “preferential activation
zone” by applying acute stress to a localized region
of the laminate. The passages discussing “controlled
localized stretching” contemplate an alternative embodiment
to that which the district court relies on in characterizing
preferential activation as occurring prior to
elongation. Our cases emphasize that an alternative
means of accomplishing the claimed result weighs against
a claim construction that would exclude that alternative.
Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
1379, 1383 (Fed. Cir. 2008) (cautioning against interpreting
a claim term in a way that excludes disclosed embodiments)
(citing Verizon Servs. Corp. v. Vonage Holdings
Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007)).

Patentee vs. examiner?

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.
See Elbex Video,
Ltd. v. Sensormatic Elec. Corp., 508 F.3d 1366, 1372−73
(Fed. Cir. 2007) (interpreting claim term in favor of
patentee when an ambiguous statement made to examiner
was not supported by a “shred of evidence from the
specification”); Renishaw PLC v. Marposs Societa’ per
Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“Ultimately,
the interpretation to be given a term can only be deter-
mined and confirmed with a full understanding of what
the inventors actually invented and intended to envelop
with the claim.”). We are hesitant to rely too heavily on
examiner statements over those of the patentee.
than relying on the examiner’s statement as dispositive
for claim construction purposes, this court previously
explained that an examiner’s statement during reexamination
was, at most, representative of how one of skill in
the art would understand the term. Biagro Western
Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1303 (Fed.
Cir. 2005). The same is true in this case; the claim construction
is not decided based on isolated statements of
one of skill in the art. Cf. C.R. Bard, Inc. v. U.S. Surgical
Corp., 388 F.3d 858, 869 (Fed. Cir. 2004) (determining
there was a clear disavowal because the patentee, to
overcome examiner’s rejection of that claim, made a clear
statement during reexamination that limited the scope of
the claim by adopting language substantially identical to
language suggested by examiner).

As to indefiniteness:

Tredegar’s indefiniteness arguments are unavailing.
In order to be indefinite, reasonable efforts at claim
construction must result in a definition that does not
provide sufficient particularity or clarity to inform a
skilled artisan of the bounds of the claim. Star Scientific,
Inc., v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371
(Fed. Cir. 2008). Such insoluble ambiguity is not applicable
for the term “ribbon” because, regardless of whether a
“ribbon” is half an inch wide or 10 inches wide, the plain
meaning is still ascertainable to one of skill in the art.
One only need look as far as the highly detailed description
in the claims to appreciate the scope of the claimed
“ribbon.” Wellman, Inc. v. Eastman Chemical Co., 642
F.3d 1355, 1367 (Fed. Cir. 2011) (explaining that to be
definite claims must be amenable to construction and
provide a boundary between what is claimed and what is
not claimed). In the absence of vagueness in the claim
term, there was no need to import the teachings of the
cited Rasmussen reference. Indeed, our claim construction
standards do not support exploring tangential prior
art references to understand the meaning of the claims.11
Thorner, 669 F.3d at 1365.

Because ordinary usage of ribbon comports with its
use in the ’034 Patent, it was against established principles
of claim construction
to impose an artificial one-inch
width requirement. Based on the foregoing, we reverse
the district court’s construction of “ribbon” and construe
that term to mean, simply, a “strip of film.”

Judge Pflager,in a concurring opinion, wrote:

I join the opinion of Judge Reyna and his claim construction
conclusions. This case is yet another example—
and an extreme example—of problems with claim drafting
and their ensuing consequences. To resolve the question
of whether the Tredegar product infringed 3M’s patents,
the district court was called upon to construe some thirty
separate terms, which it did in a fifty-five page opinion.
We in turn are being asked to review a number of the
district court’s constructions. Since we treat claim construction
as a question of law, we have reserved to the
appellate courts the last word on words. (...)

I appreciate that there are four different patents involved,
and that the particular technology for manufacturing
the product is quite detailed, although the products
themselves are fairly basic—the material at issue is used
for example in diapers. Nevertheless, when claims are
larded with terms such as “substantially,” “preferentially,”
and “relatively,” and when it takes four judges and
some seventy pages of densely written opinions to find
meaning in these terms, there is considerable evidence of
a failure by the claim drafters to be clear and precise, and,
beyond that, of a shortcoming in the patent examination
process that permits claims to be so drafted. (...)

Claim construction then becomes
a game of crystal ball gazing, not resolved until
this court’s gaze is announced.
The particular claim construction issue that divides
the three appellate judges provides a perfect example of
the problem. The claim term, “continuous microtextured
skin layer,” truly is perplexing. Does “continuous” apply
to the microtexturing, the skin layer, or both? Does it
mean the microtexturing is everywhere (except perhaps
for manufacturing flaws), or can it cover only a part of the
skin layer as long as that part is continuous? Relying on
the Chicago Manual of Style, 3M argues that “continuous”
and “microtextured” are adjectives that separately modify
“skin layer,” and thus, the claim term does not require
that the microtexturing itself be continuous. (...)

3M makes an interesting argument to be sure. But
the argument creates its own grammatical problems. For
example, there is no comma between “continuous” and
“microtextured.” And the Chicago Manual of Style also
tells us that adjectives that separately modify a noun are
generally separated by a comma, unless of course the
second adjective is a unit with the noun being modified
(which would favor Tredegar’s construction). The Chicago
Manual of Style § 6.33 (16th ed. 2010). The applicant
seems to have understood this comma concept, and in fact
used it when referring in the written description to a
“continuous, deeply textured, microstructured surface.”
’034 patent, col.15 ll.2-3. But the nuances of comma
usage, like 3M’s adverb argument, seem to me a tenuous
foundation for an entire claim construction on which
substantial liabilities may rest. See United States v.
Palmer, 16 U.S. 610, 638, 4 L. Ed. 471 (1818) (noting that
“the use of the comma is exceedingly arbitrary and indefinite”);
United States v. Ron Pair Enterprises, Inc., 489
U.S. 235, 249, 109 S. Ct. 1026, 1035, 103 L. Ed. 2d 290
(1989) (characterizing a comma as a “capricious bit of
punctuation”) (internal quotation marks omitted). (...)

Cases like this—claim construction issues such as this
one—may well deserve application of a principle analogous
to the contract doctrine of contra proferentem. See
Williston on Contracts § 32:12 (4th ed.). When a term is
ambiguous, a crystal ball matter, the ambiguity should be
construed against the draftsman. (Or better yet, the
claim should simply be invalidated as indefinite, though
our court has not seen fit to go there as yet.)
Without labeling it as such, we have already used this
principle to construe claims for compliance with 35 U.S.C.
§ 112. See Athletic Alternatives, Inc. v. Prince Mfg., Inc.,
73 F.3d 1573, 1581 (Fed. Cir. 1996) (“Where there is an
equal choice between a broader and a narrower meaning
of a claim, and there is an enabling disclosure that indicates
that the applicant is at least entitled to a claim
having the narrower meaning, we consider the notice
function of the claim to be best served by adopting the
narrower meaning.”); see also A Theory of Claim Interpretation,
14 Harv. J.L. & Tech. 1, 81 (2000).
The contra proferentem principle would require the
applicant to draft clear claims, using simple, direct sentences,
2 proper grammar, and definitions in the written
description where appropriate. It harmonizes with the
notice function of patent law. It would result in applicants—
and prospective patentees—investing more resources
on the front end, during drafting, and less
resources on the remedial end, during litigation. Better
drafting of patent applications can only improve the
efficiency of the patent system by clearly delineating a
patentee’s property rights, thereby reducing wasteful and
unnecessary litigation.

Specifically in this case, when I gaze in my crystal
ball, I see, in addition to the verbal jousting, a district
judge who struggled at length to make sense of the
claims, and I see a patentee (more correctly a patent
applicant) who had the last clear chance—infringement is
after all a tort—to avoid this kind of unnecessary claim
construction game.

Judge O'Malley dissented:

To conclude, I believe the term “continuous microtextured
skin layer over substantially the entire laminate”
should be construed as “a continuous skin layer, with
microtexturing that extends over substantially the entire
surface area of the laminate,” effectively the same wording
employed by the district court. I disagree, however,
with the majority and the district court to the extent they
believe this construction requires “continuous microtexturing”
over the entire skin layer. No such requirement is
mandated by the patents-in-suit. I dissent from the
portions of the majority opinion so holding and would
reverse the district court’s similar ruling.


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