REYNA, Circuit Judge.
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.
The district court construed claim terms in four asserted patents. After claim construction, the parties stipulated to noninfringement. 3M appeals the district court's construction for four of the thirty disputed claim terms or groups of terms. 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.
A. Technical Overview
The patents-in-suit relate to multi-layer elastomeric laminates found in the body-hugging areas of products such as the waistband or side tabs of disposable diapers or adult incontinence products. The claims disclose stretchable films or laminates that, once affixed to the diaper, allow the product to expand to fit around the person wearing them with the laminate stabilizing to recover its shape once stretching is complete.
The elastomeric nature of the laminate is discussed in all four patents.
The internal core and surrounding skin layers are central to the claimed inventions. E.g., '679 Patent col. 4 ll. 46-51. col. 15 ll. 15-17. One or more inelastic skin layers are outside an elastic or stretchable core layer. The flanking skin layers protect the elastomers in the core from degrading when exposed to oxygen. Depicted below is a scanning electron micrograph (100x) of the core and skin layers as seen in the written description of the Hanschen Patents. See '679 Patent col. 4 ll. 15-17.
In the absence of stretching, the core and skin layers are intact. But, when the
'034 Patent col. 3 ll. 42-46, col. 10 ll. 62-65. The microtexturing that occurs upon stretching provides elasticity, durability, and gives the expanded garment a soft feel. Id. at col. 11 ll. 35-42, col. 13 ll. 1-8, col. 13 ll. 22-30.
Both the Krueger and Hanschen Patents address problems resulting from the inflexibility of the materials used in the prior art to manufacture a diaper waistband or the protective back sheet or top sheet of a diaper. See, e.g., '034 Patent col. 3 ll. 1-8; see also '691 Patent col. 2 ll. 12-14 ("Problems with these elastomeric films include the difficulties inherent in applying a stretched elastic member to a flexible substrate such as a disposable diaper."). For example, the Krueger Patent disclosure explains that the lack of flexibility in earlier laminates results in an uncomfortable stiffness that can cause the material to "bite" or "grab" the wearer of the diaper. '679 Patent col. 3 ll. 6-11.
Additional problems were discussed with the PTO examiner during prosecution. In the application that later issued as the '679 Patent, the examiner considered U.S. Patent No. 4,880,682 ("Hazelton") and U.S. Patent No. 5,057,097 ("Gesp") and noted that "neither Gesp nor Hazelton et al. disclose films capable of recovering slowly over time at ambient conditions or capable of substantial heat activated recovery" as claimed in the '679 Patent application. J.A. 1257. In these prior art laminates, the outer skin layers deformed when stretched; the deformation impeding recovery because there was only intermittent contact between the skin and the core. E.g. J.A. 1526; see also J.A. 1257. 3M maintains that separated skin and core layers exposed the core to oxidation, thereby decreasing the effectiveness of earlier films.
The Krueger Patents overcome some of the problems associated with robust stretching by allowing the laminate to recover following deformation. The "continuous
'034 Patent col. 28 ll. 40-45. Claim 1 of the '679 Patent provides additional detail as to the nature of the micro-texturing found on the skin layer that is in "continuous contact" with the elastic core layer:
'679 Patent col. 28 l. 61 to col. 29 l. 2.
The Hanschen Patents depart from the Krueger Patents in that they teach a laminate with "preferential activation zones." As explained in the '691 Patent disclosure, the laminates claimed in the Hanschen Patents "are capable of becoming microtextured at specified areas along the laminate length." '691 Patent col. 3 ll. 11-13. The microtextured areas correspond to sections of the laminate that have been "activated from an inelastic to an elastomeric form." Id. col. 3 ll. 13-15. The Hanschen Patents thus limit elasticity to specific areas claimed as "preferential activation zones." Claim 1 of the '691 Patent is representative of the claims relating to "preferential activation zone." Claim 1 states:
'691 Patent col. 36 ll. 41-63.
The claimed zone can be activated by conditions producing designated stretch ratios. The Hanschen Patents depart from the Krueger Patents in that those patents require a lower stretch ratio to effectuate stretching or activate the microtextured laminate. See '691 Patent col. 3 ll. 34-49. In particular, the Hanschen Patent disclosure teaches that when stress is applied to a localized region, there will be preferential elasticization of the specified zone. See id. col. 3 ll. 38-58, col. 10 l. 11 (identifying methods of "post formation stress localization" or "controlled localized stretching").
B. Prior Proceedings
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. After briefing, the district court held a claim construction hearing on September 6, 2011 and issued a fifty-five page opinion construing thirty separate terms from the four patents.
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).
The meaning of the claim language is informed, as needed, by the prosecution history. Pass & Seymour, Inc. v.
It is with an eye to these tenets of claim construction that we review the district court's Markman Order pursuant to our jurisdiction under 28 U.S.C. § 1295(a)(1).
A. "Continuous Contact"
The terms "continuous contact" and "substantially continuous contact" appear in claims 1, 2, 4, 5, 7, and 8 of the '679 Patent, claims 1, 2, 5, and 6 of the '034 Patent, and claim 52 of the '691 Patent. The parties agree that the two terms should be given an identical construction. See Markman Order at *7, n. 8. The district court construed the terms to mean "full surface contact" in reference to the contact occurring between the elastomeric core layer and the folds of the microtextured skin. Id. at *8-10.
The parties' dispute is directed to three Figures in the specification of the Krueger Patents, wherein each Figure shows a varied mode of physical contact between the microtextured skin and the elastomeric layers. Figures 22, 23, and 24 set forth three distinct spatial relationships between the skin and the core during stretching; the spatial relationships depicted in the three figures frame the parties' competing understandings of the claim term's scope.
The '679 Patent describes an embodiment with the core and skin remaining in "full contact," whereby the core material fills the folds formed in the skin layers. '679 Patent col. 13 ll. 10-12. Figure 22, representative of the full contact mode, shows such a stretched laminate:
See id. col. 4 ll. 32-34. The parties agree that the full skin-to-core contact depicted in Figure 22 constitutes "continuous contact" as it is used in the claims.
The strained skin-to-core contact shown in Figure 23 is less than full contact. The Figure shows a stretched laminate with the folds of the skin pulling away from the core in a mode described as "cohesive failure."
See '679 Patent col. 411. 35-37. The specification describes this mode of contact as the elastomer filling the skin folds but cohesively failing under the folds. id. at col. 13 ll. 14-16. As discussed in more detail below, 3M and Tredegar offer competing views as to whether a laminate presenting cohesive failure should be understood to have "continuous" skin-to-core contact.
Figure 24 shows only intermittent skin-to-core contact because the stretching has caused a lapse in the adhesion between the two layers. In this mode of contact, known as "intermittent contact" or "adhesive failure," the extensive folding in the skin allows for only sporadic contact with the core.
See '679 Patent col. 4 ll. 38-40. The intrinsic teachings differentiate between "adhesive failure" and "continuous contact," with Figure 24 illustrating decreased skin-to-core contact. '679 Patent col. 6 ll. 46-49 (describing "adhesive failure of the skin to the core under the microtextured folds with intermittent skin/core contact at the fold valleys").
Tredegar counters by arguing that the cohesive failure mode is not a subset of "continuous contact" because, during prosecution, the applicant twice amended the claims to distinguish between Figures 22 and 23 so as to limit itself to the full contact depicted in Figure 22. Tredegar, however, does not point to anything in the written description that would compel such a conclusion.
The district court adopted Tredegar's proposed construction of "full surface contact" after examining amendments made by the applicant during the prosecution of the claim issuing as claim 1 in the '679 Patent. In the Markman Order, the district court traced the original application, noting that it was amended on two separate occasions to distinguish the Hazelton prior art reference.
Tredegar argued, and the district court agreed, that by removing the word "substantially" from the first amended claim, the second amendment surrendered any skin-to-core contact that was not "full surface" contact. Markman Order at *9-10. The district court found that the second amendment to the claim disavowed embodiments depicting cohesive failure — i.e., Figure 23. See id. at *10. The district court limited its interpretation of "full surface contact" to the embodiment illustrated in Figure 22. Id.
We begin our analysis with the language of the claims. The term "continuous contact," as used in the Krueger Patents, does not suggest whether the patentee intended the term to include the cohesive failure mode shown in Figure 23. Thus, while it is unclear whether the skin folds pulling away from the core qualify as remaining in "continuous contact," there is no basis to suppose that the claim term applies only to the full contact mode shown in Figure 22.
2. Written Description and Prosecution History
The written description and corresponding illustrations confirm that "continuous contact" includes the cohesive failure mode of contact. The written description provides a concise recitation of two variations of "continuous contact" that align with the modes of contact depicted in Figures 22 and 23. See '034 Patent col. 13 ll. 9-16. The disclosure first describes a situation in which "the core and skin remain in full contact," id. at col. 13 ll. 4-6, and then characterizes instances of cohesive failure as "a variation" of this "continuous contact construction." Id. at col. 13 ll. 8-11. The specification then distinguishes between cohesive failure and intermittent contact — as shown in Figure 24 — emphasizing that the two modes of contact are distinct. By explaining that instances of cohesive failure are "a variation" of full contact and then distinguishing those variations from the intermittent contact or adhesive failure, the written description includes both full and cohesive contact within the meaning of "continuous contact." See '034 Patent col. 13 ll. 13-16 (describing the intermittent contact shown in Figure 24 as "an entirely different skin/core adhesion mode" from the "variations" of "continuous contact").
Tredegar suggests that this reading of "continuous contact" is unsupported, but offers no competing written description reference that affirmatively requires narrowing the construction to include only Figure 22. The district court similarly failed to explain how the Krueger Patent disclosure requires excluding cohesive failure from the construction of "continuous contact."
Tredegar relies heavily on amendments made during prosecution to assert that, in narrowing claim 1 of the '679 Patent from "substantially continuous contact" to "continuous contact," the applicant simultaneously limited itself to the skin-to-core contact of Figure 22. We have fully considered the narrowing amendments in the prosecution history, including the applicant's stated reasons as to why the claims are patentable over Hazelton, and find Tredegar's arguments unpersuasive. Ultimately, Tredegar fails to demonstrate how the amendments are tied to the cohesive failure characterized in the issued patents as a "variation" of "continuous contact." Indeed, cohesive failure — or a description there-of — is not mentioned in the applicant remarks surrounding either amendment. The district court found that the amendments constituted a disclaimer, but our precedent requires that, in order for prosecution disclaimer to attach, the disavowal must be both clear and unmistakable. Lazare Kaplan Int'l, Inc. v. Photoscribe Tech., Inc., 628 F.3d 1359, 1370 (Fed.Cir.
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 contact.
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 otherwise.
* * *
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.
B. "Continuous Microtextured Skin Layer"
The term "continuous microtextured skin layer over substantially the entire laminate" appears in claims 1, 2, 5, and 6 of the '034 Patent. The district court concluded that the term should be read to require the microtexturing and the skin layer be "continuous" across "substantially the entire surface area of the laminate." Markman Order at *24. The district court qualified its construction, however, by acknowledging that the microtexturing is "substantially uniform over the elastomeric laminate surface." Id. at *23 (citing '034 Patent col. 11 ll. 35-37). We find the
In essence, the parties dispute the extent of the microtexturing on the skin of the laminate, with each side interpreting the disputed claim language in a different light. The disputed words are:
'034 Patent col. 28 ll. 40-43 (emphasis added) (remainder of the claim omitted). 3M would read the foregoing claimed laminate to have "at least one microtextured region," while Tredegar reads the same limitation as requiring the laminate, as a whole, to develop microtexturing. 3M argues that the district court improperly deviated from a plain reading of the claim term. It contends that the skin layer, not the microtexturing, must be "continuous" across the laminate because the adjective "continuous" only modifies the noun "skin layer."
3M's purported plain reading of the claim term applies the The Chicago Manual of Style in arguing that "continuous" is limited to modifying "skin layer" and cannot modify the entire phrase "microtextured skin layer." We do not adopt 3M's reliance on extrinsic evidence because we must first consider what a skilled artisan reading the claim would understand the limitation to mean. Here, the '034 Patent provides a skilled artisan with substantial guidance in deciphering the extent of the microtexturing. The written description is unambiguous in teaching that the microtexturing is continuous, but not restricted to a single zone or region of the skin layer. The Patent specifically refers to "unique continuous microstructured surfaces," '034 Patent col. 12 l. 11, and particularly characterizes the microtexturing as being "substantially uniform" over the laminate surface. '034 Patent col. 10 ll. 35-37.
When viewed contextually against the applicant's description of the invention, the extent of the microtexturing is ascertainable. To qualify as "continuous," the microtexturing need not be symmetrical or perfectly uniform across the entire surface of the skin layer. Rather, the '034 Patent confirms that stretching impacts the surface structure: "The unique continuous microstructured surfaces of the invention can be altered and controlled by the proper choice of materials and processing parameters." Id. at col. 12 ll. 11-13. A skilled artisan reading the disclosure
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.
C. "Preferential Activation Zones"
Eleven claim terms deriving from the baseline term "preferential activation zone" appear throughout the Hanschen Patents in claims 1, 19, 25, 29, 30, 51-53, 55, and 56 of the '691 Patent and claims 1 and 4 of the '428 Patent. In addition to "preferential activation zone" and "preferential activation regions,"
The term "preferential activation zone" does not have an ordinary meaning outside of the Hanschen Patents, yet the claims specify that these zones are an area of the film laminate that will "preferentially elongate when stretched." '691 Patent col. 36 ll. 41-63. The presence of both elastic and inelastic zones is in contrast to the claims of the Krueger Patents, which contemplate "continuous" microtexturing once stretched. Use of the term "preferential activation zone" thus limits the area of elasticization to designated zones or regions on the laminate. It is unambiguous
The district court adopted Tredegar's proposed construction and held that the "preferential activation zones" must be "predetermined" and "identifiable" before activation. Markman Order at *13. Based on this construction, the laminate must exist in two states — "an intermediate and a final state." Id. The district court construed the term as "identifiable predetermined areas of the laminate that are inelastic and, when the laminate is stretched as a whole, will elongate before or to a greater extent than adjacent areas." Id. at *15. The parties first dispute whether the intrinsic evidence supports construing the zones as "predetermined" and "identifiable." They also dispute how a "preferential activation zone" is formed.
3M maintains that the creation of the activation zone and the stretching can occur simultaneously. Specifically, it asserts that the specification teaches that "controlled localized stretching" requires the preferential elongation to occur in a single step. It proposes a construction for "preferential activation zone" that tracks the language of the claim: "the area of the multi-layer laminate which will preferentially elongate to form an elastic zone."
Relying on the specification and prosecution history, Tredegar asserts that the use of "predetermined" in the specification warrants inclusion of that limitation in the district court's construction. Tredegar also points to portions of the prosecution history to argue that a "preferential activation zone" is formed through a two-step process in which the selected laminate zones must progress through an intermediate state prior to activation.
We agree with 3M that the district court's construction for "preferential activation zone" improperly reads "predetermined" and "identifiable" into the claims. The district court further erred in determining that the claims require preferential elongation to occur through a two-step process.
1. Plain and Ordinary Meaning
"Preferential activation zone" is a term specific to the claimed inventions and should be understood in a way that does not render the actual words of the claim super-fluous. Digital-Vending Sys. Int'l, LLC v. University of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed.Cir.2012) (discussing, Phillips, 415 F.3d at 1314). A skilled artisan encountering the term for the first time would have the patentee's own descriptions in the claims to frame the meaning of an otherwise unfamiliar reference. To that end, claim 1 provides a contextual description of "preferential activation zone." There are no express restrictions to limit a "preferential activation zone" as "predetermined" or "identifiable." There is similarly no mention of the laminate achieving an intermediate state prior to activation. Instead, the claims indicate only that the laminate's "preferential activation zone" will "preferentially elongate when stretched" and then later recover. '691 Patent col. 36 ll. 41-63.
For this claim term the patentee offers an ascertainable definition in the body of the claim, and our cases do not support prescribing a more particularized meaning unless a narrower construction is required by the specification or prosecution history. E.g., Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1285 (Fed.Cir.2012) (declining to limit "angularly disposed" to any specific angle); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1275 (Fed. Cir.2010) (declining to limit the broad terms used in the [patent's] pharmaceutical claims to specific food conditions); TI Grp. Auto. Sys., 375 F.3d at 1138 (clarifying
2. Written Description References
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.
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 description in the Summary of the Invention is consistent with the broader understanding that a "preferential zone" can be "predetermined" or "selected" on the laminate without having yet undergone any of the alterations that accompany activation. It is apparent from a plain reading of the Summary of the Invention that the preferential activation regions are, in fact, "predetermined":
'691 Patent col. 3 ll. 24-33 (emphases added). The disclosure indicates that microtexturing occurs by stretching "predetermined regions of the skin," and such an event is "termed selective or preferential activation." Id. (emphasis added). Rather than being mutually exclusive, the concepts of predetermination and selection are linked. See '691 Patent Abstract; col. 3 ll. 24-33. The flexible use of "predetermined" in the written description does not mean that, just because the zone can be predicted or chosen upon concentration of stress, the zone, as claimed, must exist prior to stretching. One of skill in the art would recognize that predetermination can be synonymous with selection. We therefore have a basis to presume that "preferential activation" appearing in the claims, refers to the same thing as "selective or preferential activation" in the Summary of
"Controlled localized stretching," as disclosed in the written description, weighs against a claim construction that artificially separates predetermination from activation. The disclosure teaches that localized stretching will result in selection and activation of one region of the laminate, while surrounding regions will not be activated. See '691 Patent col. 9 ll. 53-56, col. 9 ll. 61-63. Such acute stretching provides the best illustration of simultaneous zone creation and activation because, in a single step, the interjection of stress both selects and activates the claimed zones.
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)).
Here, "controlled localized stretching" functions as such an alternative embodiment. As disclosed in column 3 of the '691 Patent, activation can be initiated through either uniform or localized stretching. '691 Patent col. 3 ll. 39-46. Both modes of activation create the claimed "preferential activation zone," but the treatment of the laminate varies depending on the type of stress applied to the laminate. Because there is no basis in the claim language to limit our understanding of the claim term and the disclosure teaches more than one activation method, the district court erroneously included "clearly determined  properties." Markman Order at *12.
3. Process of Creating a Preferential Activation Zone
The parties next argue over the related issue of whether the written description and prosecution history contemplate that the zones are created simultaneously at the point of activation or must first go through an intermediate state to achieve elasticity. On this point, we hold that the "preferential activation zone" can be created and activated simultaneously. The elasticization of the zones does not require an intermediate, pre-activation state.
Tredegar's argument for two distinct steps is premised on reading the claim to require the laminate to elongate when the "preferential activation zone" is created in a first step and activated in a second step. Such an understanding necessarily requires that "predetermined" zones be in existence exist prior to activation. As we have explained, however, the intrinsic evidence does not support this interpretation of "predetermined," and we reject any attempt to adopt an initial step that is separate and distinct from the activation step defined in the claims and specification.
Tredegar's most compelling argument for a two-step process is based on examiner statements during reexamination of the '691 Patent. There, in distinguishing the
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 determined 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. Rather 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).
Tredegar neither argues nor provides evidence of a disclaimer in the original prosecution or the reexamination. In the absence of such a showing, we decline to narrow the meaning of the claim term. The district court erred in relying on the prosecution history to support its conclusion that a "preferential activation zone" must exist before the laminate is stretched. The record indicates that during the course of the original prosecution, the applicant was asked about the meaning of "preferential activation zone" and broadly defined the term in a manner consistent with the claim language.
* * *
The term "preferential activation zone" is entitled to a broad meaning unencumbered by limitations not found in the claims, and the creation and activation of the claimed zone can occur simultaneously. We reverse the district court's construction of "preferential activation zone," as well as
The term "ribbon" appears in dependent claims 9 and 10 of the '034 Patent. The term refers to a multi-layer laminate in the shape of a "ribbon." The elastomeric "ribbon" disclosed in claims 9 and 10 requires at least two layers, one opaque layer and a colored layer. '034 Patent col. 29 ll. 7-10. The opaque skin layer is a microtextured outer layer, id. at col. 29 ll. 7-10, and the colored core layer is elastomeric. Id. at col. 29 ll. 11-13. While the claims describe the "ribbon" in terms of color and texture, the words of the claim are silent as to a particular size or any specific dimensions of the claimed "ribbon."
In the proceedings below, the parties proposed competing constructions of "ribbon." The parties generally agreed that a "ribbon" was a strip of film, but Tredegar proposed that the strip of film could be no wider than one inch. Markman Order at *25. The district court construed "ribbon" to mean "a strip of film having a width of no more than one inch." Id. at *26. To support its construction, the district court relied on U.S. Patent No. 4,143,195 ("Rasmussen"), a prior art reference disclosing "ribbon-like strips" of a specified width. Id.; J.A. 532-33.
3M asserts that the district court's construction was in error because requiring a width of no more than one inch defies the plain meaning of "ribbon" and is unsupported by the intrinsic record. Tredegar maintains that a width limitation is necessary because, in the absence of such a restriction, the claims would be indefinite under § 112, ¶ 2. Tredegar maintains that, to cure "ribbon" of its vagueness, it is proper to look to the Rasmussen reference cited on the face of the '034 Patent.
It is axiomatic that we will not narrow a claim term beyond its plain and ordinary meaning unless there is support for the limitation in the words of the claim, the specification, or the prosecution history. Douglas Dynamics, LLC v. Buyers Prods. Co., 717 F.3d 1336, 1342 (Fed.Cir.2013); Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1329 (Fed.Cir.2012) (citing Phillips, 415 F.3d at 1312). In this patent, as in everyday parlance, the term "ribbon" has a customary meaning that is not subject to specific size requirements. It is also uncontested that the written description and prosecution history do not provide additional information as to the parameters of the claimed ribbon. See Markman Order at *25.
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
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."
For the foregoing reasons, this court affirms the district court's claim constructions as to the terms "continuous contact" and "continuous microtextured skin layer of substantially the entire laminate" and provides specific clarifications on the proper scope of the disputed terms. We reverse the district court's constructions as to the terms "preferential activation zone" and "ribbon." Finally, this court remands all issues for further proceedings consistent with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED
PLAGER, Circuit Judge, Concurring.
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.
Our panel manages to agree on all but one of the contested constructions, affirming some and reversing some. But we disagree on one particularly convoluted claim phrasing, unfortunately one that runs through many of the claims.
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.
Sometimes such ambiguity is the result of sloppy drafting, and sometimes it appears that claims are drafted with a degree of indefiniteness so as to leave room to later argue for a broad interpretation designed to capture later-developed competition. The problem is exacerbated when, as here, there is a conflicting or
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. According to 3M, if the applicant wanted "continuous" to modify "microtextured," the applicant would have used the adverb "continuously."
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, 3 Wheat. 610, 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).
Much like the claim's grammar, the written description provides little help deciphering the meaning of the disputed term. Certainly, the '034 patent has a lot of disclosure: nearly 30 columns of it. The patent has 33 different examples, 16 tables, and 24 figures. The patent's problem does not lie in the quantity of its disclosure; it lies in the disclosure's relevance to the language used in the claims.
The applicant knew or should have known that the claim term "continuous microtextured skin layer" was highly relevant to the patented technology. The applicant wrote the term nine times in the first eight claims.
While ultimately I have voted to join Judge Reyna for the reasons I explain shortly, Judge O'Malley in her dissent-in-part makes an argument for the opposite construction based on the prosecution history. The argument is not without merit, although again, I do not find the prosecution history a shining example of clarity.
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,
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.
O'MALLEY, Circuit Judge, concurring in part and dissenting in part.
I agree with and join the majority's well-reasoned rulings on three of the four claim terms in dispute: "continuous contact," "preferential activation zone," and "ribbon." I disagree, however, with its analysis and conclusion regarding the fourth claim term, "continuous microtextured skin layer." I believe the district court erred in its treatment of the term and its rejection of 3M Innovation Properties Company and 3M Company's (collectively, "3M") argument — that skin layers having regions with and without microtexturing are within the plain meaning of the term. To the extent the majority affirms these errors, I
Turning first to the claim language, I do not believe that it excludes a skin layer where the extent of the microtexturing is anything other than "continuous" over the entire surface. The term "continuous microtextured skin layer over substantially the entire laminate" appears in claims 1, 2, 5, and 6 of U.S. Patent No. 5,691,034 ("the '034 patent"). The pertinent portion of claim 1 reads:
'034 patent col. 28 ll. 40-43 (emphasis added).
As a matter of grammar, the term is best interpreted as a skin layer that is continuous, microtextured, and extends over substantially the entire laminate. Under a natural reading of term, i.e., its plain and ordinary meaning, the word "continuous" modifies the term "microtextured skin layer." This follows simply from the grammatical structure of the phrase. "Continuous," as an adjective, modifies the noun "skin layer" (in the same way the adjective "microtextured" does). If this word were meant instead to describe the microtexturing, it would be more natural to use the adverb form, "continuously," since adverbs modify adjectives. Any reader, including a person of skill in the art, would thus understand the plain and ordinary meaning of the phrase to require a continuous "skin layer," not continuous microtexturing. And the plain and ordinary meaning is always our starting point in a claim construction analysis. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc) ("We have frequently stated that the words of a claim "are generally given their ordinary and customary meaning.""). Because the word "continuous" does not modify the word "microtextured," I agree with 3M on this point.
The question we must next ask is what does it mean for the skin layer to be "microtextured?" If the word "continuous" in the claim language does not define that term, then what does?
Since I find the claim language to impose no clear exclusion of skin layers that contain intermittent areas of microtexturing, I examine the written description for a clear disavowal of such skin layers. While the written description contains some language that may require complete microtexturing, I do not believe these passages meet the high burden necessary to limit the claim scope. See Bell Atl. Network Servs., Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001) ("We have previously held that, in redefining the meaning of particular claim terms away from the ordinary meaning, the intrinsic evidence must clearly set forth or clearly redefine a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term. We have also stated that the specification must exhibit an express intent to impart a novel meaning to claim terms.") (internal citations and quotation marks omitted). Specifically, the written description states:
'034 patent col. 10 ll. 33-36 (emphasis added).
By stating that the microtexturing is preferably "uniform" over the elastomeric laminate surface, the written description does not clearly require microtexturing over the entire skin layer. First, this excerpt describes a preferred embodiment, to which claims typically are not limited. See Phillips, 415 F.3d at 1323 ("Although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments."). Second, it is unclear that "uniform" means "complete" or "continuous," or that it refers to the amount of the skin layer that must exhibit microtexturing. It indicates instead, I believe, that the ridges in the skin layer that produce the microtexturing must have uniform dimensions,
Turning next to the prosecution history, while it does clearly limit claim scope, it does not do so in the way the district court believed. The '034 patent was rejected for obvious-type double patenting over U.S. Patent No. 5,344,691 ("the '691 patent"). To overcome the rejection, the applicants stated:
J.A. 1460-61 (emphasis added).
The laminate is elastomeric where it is microtextured. Therefore, this statement requires laminate material that is microtextured over "substantially the entire laminate." But this statement does not
I ultimately believe the wording of the district court's construction was very close to the correct one. Much like the trial court, I would construe the term as "a continuous skin layer, with microtexturing that extends over substantially the entire surface area of the laminate." I do not agree, however, with the district court's construction to the extent it requires that the "microtexturing" be "continuous" from start to finish.
In its claim construction opinion, the district court construed the term "continuous microtextured skin layer over substantially the entire laminate" as "substantially the entire surface area of the laminate." 3M Innovative Prop. Co. v. Tredegar Co., No. 09-3335, 2011 WL 6004023, at *24 (D.Minn. Nov. 30, 2011). On its face, the district court's construction seems to be one which requires microtexturing that extends over "substantially the entire surface area of the laminate," a construction with which I would agree.
The district court, however, went on to reject 3M's argument that "the term `continuous' relates to the skin layer but not the microtexturing and thus does not require continuous microtexturing." Id. at *23. As discussed above, I disagree with this aspect of the district court's construction; I agree with 3M.
The district court based this explanation of the scope of its construction on a distinction it saw between the two families of patents involved in this case — the "Krueger patents" (the '034 patent and U.S. Patent No. 5,501,679 ("the '679 patent")) and the "Hanschen patents" (U.S. Patent No. 5,468,428 and "the '691 patent"):
Id. Based on this distinction, the district court held that the microtexturing must be "continuous," or, that is, the claims of the '034 patent do not cover skin layers with regions that are not microtextured.
But, the distinction between the two families of patents does not mandate this conclusion. I agree that the Hanschen
Turning next to the majority's analysis, I do agree with some of it, in particular, the statement that "[c]lose examination of the intrinsic and extrinsic references supports the middle path identified by the district court in which a skin layer can have non-microtextured areas, but the microtexturing encompasses `substantially the entire surface area of the laminate.'" Majority Op. at 1327. This seems to fully align with my conclusion. If the majority reached this holding through the analysis I lay out above, I happily would join.
But the majority determines that "the written description is unambiguous in teaching that the microtexturing is continuous." Id. at 1327. As discussed above, I disagree. I believe the microtexturing need not be "continuous;" it only needs to extend over substantially the entire laminate.
The majority also looks for a potential narrowing of claim scope in the claim language or written description. Specifically, the majority asks whether the specification limits the microtexturing to "a single region." See id. ("The written description is unambiguous in teaching that the microtexturing is continuous, but not restricted to a single zone or region of the skin layer.") (emphasis added); id. at 1327 ("By contrast, there is no discussion in the written description that minimizes the microtexturing to 3M's suggested single region of the skin layer.") (emphasis added); id. at 1328 ("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.") (second emphasis added). This reasoning turns the disclaimer analysis on its head. The relevant inquiry is not whether the microtexturing is limited to a single region, but whether the term "continuous microtextured skin layer" was narrowed to exclude partially-microtextured skin layers, such as those with microtexturing in only one region.
Perhaps the majority was led astray by 3M's proposed construction: "one unified skin layer over substantially the entire laminate having at least one microtextured region." But this construction does not limit the microtexturing to a single region. Instead, it merely requires "at least" one microtextured region — thus including within its scope skin layers with some regions having no microtexturing, so long as at least one region is microtextured. Under this construction, the skin layer must be at least partially-microtextured, a concept with which I agree. I do, however, ultimately reject 3M's construction to the extent it reads on skin layers with microtexturing that does not extend over substantially the entire laminate.
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
'034 patent col. 10 l. 62 — col. 11 l. 14 (emphasis added). In fact, all of columns 11 and 12 of the '034 patent describe the different characteristics the microtexturing can have.