Petition for Writ of Certiorari — Turn-Key-Tech, LLC v. National Film Laboratory, Inc.
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Supreme Cowt.! .
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~~ No, 931138 FEB 3 - 2008
OFFICE OF Tht Ci sik
IN THE
Supreme Court of the United States |
TuRN-Key-TEcu, LLC,
- Petitioner,
v.
NaTIONAL FILM LaBoratory, INC. (D/B/A Crest NATIONAL OPTICAL
Mep1A), Music City Optica Mepia, inc., HoLLywoop REcorDs,
INc., ConcorD Disc MANUFACTURING Corp., KRAUSS MAFFEI
CORPORATION, AND KRAUS MaFFEI KUNSTSTOFFTECHNIK GMBH,
Respondents.
On PETITION FOR A WRIT OF CERTIORARI
TO THE COURT OF APPEALS FOR THE FEDERAL CIRCUIT
PETITION FOR A WRIT OF CERTIORARI
Of Counsel: Boris ZELKIND
Counsel of Record
Patricia A. SHACKELFORD
ZELKIND & SHACKELFORD LLP
Davip C. FREDERICK
RICHARD H. STERN
KELLOGG, HuBER, HANSEN,
Toop & Evans, P.L.L.C. Sorrento Towers North
1615 M Street, N.W. 5355 Mira Sorrento Place
Suite 290
Suite 400
Washington, D.C. 20036
(202) 326-7900
San Diego, CA 92121
(858) 558-6745
Counsel for Petitioner
— g RECEIVED
COUNSEL PRESS
(800) 274-3321 + (800) 359-6859 FERS - 2004
OFFICE OF THE CLERK
SUPREME COURT, US.
QUESTION PRESENTED
The Federal Circuit affirmed the District Court’s
summary judgment of noninfringement on new grounds based
on the Federal Circuit’s own interpretation of a non-disputed
patent claim element, which was first raised sua sponte at
oral argument and never addressed by the parties or the
District Court below. The question presented is:
Whether this Court should limit the Federal Circuit’s
practice, which is in conflict with other appellate court
holdings that sua sponte rulings on mixed questions of fact
and law without notice and hearing violate a litigant’s
substantial rights, of entering judgments based on its
sua sponte interpretations of patent claims.
ee
i
RULE 29,6 CORPORATE
DISCLOSURE STATEMENT
Petitioner Turn-Key-Tech, LLC has no parent corporation
and no publicly held company owns 10 percent or more of
Turn-Key-Tech, LLC’s stock.
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TABLE OF CONTENTS
EE vias b seks ter sacons sd neens
Rule 29.6 Corporate Disclosure Statement .......
eee evens ees
Table of Cited Authorities .....................
cans brad cess dn ni sine es
Ne vin wee du oo
SE ee
SOs Co
Constitutional Provision Involved ..............
Ce nak hehe we ees
Reasons for Granting the Petition ..............
I.
The Federal Circuit’s Practice Of Issuing
Sua Sponte Constructions Of Patents Without
Giving Affected Parties Notice And An
Opportunity To Be Heard Is Inconsistent With
This Court’s Decisions And Those Of Other
Courts As To When Sua Sponte Rulings May
| Pree ee eee
Page
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to
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Conclusion
iv
Contents
The Federal Circuit Has Developed A
Weli-Entrenched Practice Of Deciding
Patent Claim Construction Cases On A
Sua Sponte Basis ..................
The Federal Circuit’s Practice As
Applied In This Case Deprives
Petitioners Of Substantial Rights In
Conflict With This Court’s Decisions
re ee ee eR OER OS IETS eee i a ee teas oe
The Federal Circuit’s Judgment
Conflicts With Numerous Court
Decisions Hotding That Mixed
Questions Of Fact And Law Such As
Patent Claim Construction May Not Be
Decided By Courts Through Sua Sponte
We eeger eens se
This Case Is An Ideal And Important
Vehicle For Deciding Whether The
Federal Circuit’s Practice Is Permissible
In Patent Cases....................
Be ee eee ee 8 MO, ROPER Re eee ie an eile el gir a aes Oe
Page
1]
19
24
26
AD Ni kG ERLE tH
TABLE OF CITEDAUTHORITIES
Page
FEDERAL CASES
Arcadia, Ohio v. Ohio Power Co., 498 U.S. 73 (1990)
Pe ee re ee et ne ee ee 15
Bendet v. Sandoz Pharm. Corp., 308 F.3d 907
gl ee ores ee rere yee oy en 20
Boddie v. Connecticut, 401 U.S. 371 (1971) ...... 14
Canaan Prods., Inc. v. Edward Don & Co., 388 F.2d
a | eer Serre eka 6
Carducci v. Regan, 714 F.2d 171 (D.C. Cir. 1983)... 22
Clorox Co. Puerto Rico v. Proctor & Gamble
Commercial Co., 228 F.3d 24 (1* Cir. 2000) ... 20
Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448
qs te. Pepweeererrerrrrr ss) te) 17, 18
Dickinson v. Zurko, 527 U.S. 150 (1999) ........ 9
Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d
eke, Es i.) meer he rucs 8
Exxon Chem. Patents, Inc. v. Lubrizol Corp.,
137 F.30 1475 (Ped. Cor. VOR) wont accc cade 14
Franklin v. Oregon State Welfare Div., 662 F.2d 1337
‘cg Ae: ) ne eer err ere ry 21
ee
Wi
Cited Authorities
Page
Glaxo Group Ltd. v. TorPharm, Inc., 153 F.3d 1366
BPN Oe WPI ls 84x he ee ee 18
Graham v. John Deere Co., 383 U.S. | (1966) .... 17
Hartmann v. Prudential Ins. Co. of America, 9 F.3d
EOE GA BID ois bewkewcanecex, 23-24
Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F. -
cit a |) err annie ae 6
In re Arthur Treacher’s Franchisee Litigation,
689 F.2d 1137 (3" Cir. 1982) ................ 23
In re Cortright, 165 F.3d 1353 (Fed. Cir. 1999) ... 9
Juidice v. Vail, 430 U.S. 327 (1977) ............ _15
Kamen v. Kemper Financial Servs., Inc., 500 U.S.
via Sh | Ee EN ne, Al ok 15
Kolstad v. American Dental Ass’n, 527 U.S. 526
PRE GS sic sso a as ee ee 16
Landon v. Plasencia, 459 U.S. 21 tee 19
Lankford v. Idaho, 500 U.S. 110(1991) ......... 19
Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 737 (1976)
Vil
Cited Authorities
Page
Lufkins v. Leapley, 965 F.2d 1477 (8" Cir. 1992) .. 13
Mannesman Demag Corp. v. M/V Concert Express,
rei MB ee a | eae 20
Markman vy. Westview Instruments, Inc., 52 F.3d 967
(Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996) ... = 25
Markman vy. Westview Instruments, Inc., 517 U.S. 370
PN Ut ceca akan eae erate ere 4,16, 17, 18
Massey v. Congress Life Ins. Co., 116 F.3d 1414
‘Rig ef 2 Eee ear ere ey erreur 21
Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d
1545 (Fed. Cir. 1996), abrogated on other
grounds, Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000)
Fe AT POL OPEN Te eae STE 6
Mullane v. Central Hanover Bank & Trust Co.,
(gtk Me fk) | rrr ee ewer are te 14
Nelson v. Adams USA, Inc., 529 U.S. 460 (2000) .. 13, 14, 20
Nolen v. Gober, 222 F.3d 1356 (Fed. Cir. 2000) ... 23
Otis Elevator Co. v. George Washington Hotel Corp.,
gee’ Fi i | Breer 20-21
Vil
Cited Authorities
Page
Principal Mutual Life Ins. Co. y. Charter Barclay
Hosp., Inc., 81 F.3d 53 (7" Cir. 1996) ......... 13
Rochin v. California, 342 U.S. 165 (1952) ....... 14
Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294
(Fed. Cir. 1999) ..... Sete ere ee ro 8
Seal-Flex, Inc. v. Athletic Track & Court Constr.,
172 F.3d 836 (Fed. Cir. 1999) ............... 9,10
Shockley v. Jones, 823 F.2d 1068 (7" Cir. 1987)... aa
Snider v. Melindez, 199 F.3d 108 (2d Cir. 1999)... 20
Steel Co. v. Citizens for a Better Env t, 523 U.S. 83
SFE caesar ee awe Ca eee ee 15
Stewart Title Guar. Co. v. Cadle Co., 74 F.3d 835
(Fo Ge WE is eeepc eos 13, 23
Stoyanov v. Immigration & Naturalization Serv.,
172 F.3d 731 (9" Cir. 1999) ................. 22-23
Thomas R.W. v. Massachusetts Dept of Educ.,
130 F.3d 477 (1" Cir. 1997) ................. 13
U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems.
Corp., 315 U.S. 668 (1942) ................. 17
ix
- Cited Authorities
Page
United States v. Burke, 504 U.S. 229 (1992) ... 15-16, 19
United States v. Feola, 420 U.S. 671 (1975) ......
United States v. James Daniel Good Real Property,
pie Ee St |) Sn near eerie
Williams v. Chrans, 894 F.2d 928 (7" Cir. 1990) ..
STATE CASES
Brown y. Triple “D” Drilling Co., 585 P.2d 987
OE 2 rrr errr ees eee eer coe
Cortina v. Cortina, 98 So.2d 334 (Fla. 1957) .....
Gall v. Scroggy, 725 S.W.2d 867 (Ky. Ct. App. 1987)
PEE. 2p ek een ch ens cea ekees Coreeees
Holzer v. Jochim, 557 N.W.2d 57 (N.D. 1996) ....
Kerrigan, Estess, Rankin & McLeod v. State,
711 So.2d 1246 (Fla. Dist. Ct. App. 1998) .....
Storer Communications of Jefferson County, Inc. v.
Oldham County Bd. Of Educ., 850 S.W.2d 340
Cy, CL Bg. TOE) ona cen cate cdecssins
19
14
23
21
Cited Authorities
Page
UNITED STATES CONSTITUTION
Be 2,14
STATUTE
Oe a BEE his kde see eek whole 2
OTHER AUTHORITIES
Gregory D. Leibold, Jn Juries We Do Not Trust:
Appellate Review of Patent Infringement
Litigation, 67 U. Colo. L. Rev. 623 (1996) ..... 1]
William C. Rooklidge & Mathew F. Weil, Judicial
Hyperactivity: The Federal Circuit's Discomfort
with Its Appellate Role, 15 Berkeley Tech. L.J. 725
SE eek ey ea eek ura 9,11
x1
TABLE OF APPENDICES
Appendix A — Opinion Of The United States Court
Of Appeals For The Federal Circuit Dated
September 8, 2003 .. 2... cece ese e ere enene
Appendix B — Judgment Of The United States
District Court For The District Of California Filed
OC ee eee ee ee
Appendix C — Order Of The United States District
Court For The Central District Of California Filed
June 6, 2002 And Entered June 10, 2002 ......
Appendix D — Order Construing Claims Of U.S.
Patent 4,422,998 Or The United States District
Court For The Central District Of California Dated
January 8, 2002 And Filed January 18, 2002 ...
Appendix E — Order Of The United States Court
Of Appeals For The Federal Circuit Denying
Petition For Rehearing Dated And Filed October
Rp. ee Pee Oe re rere Poe re ree Tee
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Turn-Key-Tech, LLC, respectfully petitions for a writ of
certiorari to review the judgment of the United States Court of
Appeals for the Federal Circuit in this case.
INTRODUCTION
This case involves an egregious exercise of a court’s power
to definitively resolve a case by issuing a sua sponte ruling on
an issue not raised in the District Court or argued by either party
on appeal. Without giving petitioner any notice that it intended
to foreclose petitioner’s suit for patent infringement against
respondents and an opportunity to present arguments against
the court’s newfound theory, the Federal Circuit sua sponte
affirmed summary judgment against petitioner on an alternate
ground that had not been briefed by the parties or passed on by
the District Court. That decision runs counter to numerous
decisions of this Court holding that a party’s substantial rights
may not be adjudicated by a court in a sua sponte ruling without
notice and an opportunity to be heard. It also directly conflicts
with the decisions of seven other circuits which hold that a court
may not sua sponte grant summary judgment against a party
without affording that party notice of the grounds for judgment
and an opportunity to present evidence and argument.
The Federal Circuit’s decision here was not an isolated error,
but rather the latest manifestation of an accepted practice of
issuing sua sponte claim constructions that has drawn dissent
from a distinct minority on the court. Because the question
presented goes fundamentally to the manner of how patents are
adjudicated and there is no expectation that the Federal Circuit
will reverse itself on its own, this Court’s review is necessary.
OPINIONS BELOW
The court of appeals’ opinion (App. 1a-8a) is not officially
reported. It is reported unofficially at 74 Fed. Appx. 58, 2003
WL 22097823. The court of appeals’ order denying rehearing
2
(App. 72a-73a) is unreported. The final judgment of the district
court and its underlying claim construction and summary
judgment orders (App. 9a-10a, 39a-71a, 11a-38a) are not
reported.
JURISDICTION
The court of appeals entered its judgment on September 8,
2003. Petitioner, Turn-Key-Tech, LLC (“Turn-Key”), timely
filed a petition for rehearing, which was denied on October 14,
2003. The Chief Justice subsequently extended the time within
which to file a petition for a writ of certiorari to and including
February 3, 2004. App. No. 03A526. This Court has jurisdiction
under 28 U.S.C. § 1254(1).
CONSTITUTIONAL PROVISION INVOLVED
The Fifth Amendment to the Constitution provides, in
pertinent part: “No person shall be. . . deprived of life, liberty,
or property, without due process of law. . . .”
STATEMENT
Although the question presented does not require the Court
to grasp the technology underlying this patent infringement
dispute, the consequences of the Federal Circuit’s erroneous
sua sponte ruling is best understood against the backdrop of
Turn-Key’s underlying claim of infringement. The invention of
the Sorensen patent (U.S. Pat. No. 4,422,998, App. 74a-92a) is
an improved method or process for making injection molded
plastic articles, such as the compact discs (“CD”) and digital
versatile discs (“DVD”’) that are the subject of the infringement
claim in this case. Sorensen’s invention introduced to the field
of injection molding the new concept of using a substantially
enclosed mold that permits a finished plastic article to be
removed from the mold without fully opening the mold.
3
Sorensen accomplished this by providing an enclosed
passageway or “guide conduit” formed in the mold as the two
halves of the mold separate slightly. The finished CD or other
plastic article then exits the mold via the guide conduit. Without
use of the invention, manufacturers of CDs have to open molds
fully and use expensive and complicated robotic arms to reach
into the opened molds to extract the discs. Sorensen’s invention
makes such equipment unnecessary and permits much faster,
and thus more efficient and economical, production of molded
articles.
In May 2001, Sorensen’s exclusive licensee, Turn-Key, filed
three complaints in the Central District of California against
the respondent manufacturers of CDs and DVDs, accusing them
of infringing the patent. The fourth and fifth respondents, the
disc manufacturing equipment! suppliers for the three firms that
Turn-Key sued, brought an action for a declaratory judgment of
non-infringement and invalidity. All four cases were
consolidated.
The guide conduit of the claimed molding process is
claimed in paragraph (d) of claim 1:
(d) Separating the two mold parts . . . to create
a substantially enclosed guide conduit . . . ;
The removal of the plastic article via the guide conduit is
claimed in paragraphs (e) and (f) of claim 1:
(e) Ejecting the plastic product into said guide
conduit; and
1. The disc manufacturing equipment that the respondents
respectively sell or use include the CD-94 mold. The infringement issue
is whether the CD-94 mold, when used in its normal manner, carries out
the patented process. That in turn depends, in this case, on whether the
CD-94 mold uses a guide conduit as described in the patent.
4
(f) Guiding and transporting the ejected product
from between the mold parts through the guide
conduit.
In January 2002, after a “Markman hearing,” the district
court issued an order construing the claims. (App. 39a-7 1a).
Based entirely on the claim construction order’s interpretation
of the term “guide conduit” of paragraph (d), respondents moved
for summary judgment of noninfringement. They asserted that
the machines that they respectively sold or used did not contain
a “substantially enclosed guide conduit,” as that term was
construed by the District Court. In June 2002, the court granted
the motion and subsequently entered judgment holding that
respondents do not infringe the patent. (App. 11a-38a, 9a-10a).
The court made no findings regarding any aspect of the case or
the patent other than paragraph (d) of claim 1. Among
other things, the court did not address whether the molded
product was ejected into the guide conduit, as described in
paragraph (e) of the claim.’ (App. lla-38a).
Turn-Key timely appealed the judgment to the Federal
Circuit. In its briefs, Turn-Key argued that the judgment was
based on an erroneous interpretation of the term “guide conduit”
in paragraph (d) of claim 1. Turn-Key argued that under a proper
claim construction, the respondents’ process included the guide
conduit of the claimed invention and, thus, infringed the patent.
2. The name refers to this Court’s decision in Markman v. Westview
Instruments, Inc., 517 U.S. 370, 388-89 (1996) (holding that issues of
claim construction are matters more suitable for determination by judge
than by jury).
3. The only discussion of the ejection step below was in the
Markman phase of the District Court proceedings and concerned whether
ejection included pulling the article from the mold as contrasted with
forcefully pushing or discharging it out. (App. at 62a-64a, 63a n.8).
ere
5
Respondents in turn argued in their brief only that the district
court properly interpreted paragraph (d) and that, under that
claim construction, they did not infringe. None of the parties
briefed other issues, such as how ejection of the article is
accomplished under paragraph (e) and whether the respondents’
process ejects CDs and DVDs in that same way.
At the end of oral argument of the appeal, Turn-Key was
asked for the first time whether infringement would occur if a
new interpretation were given to the language of paragraph (e)
of the claim. The new interpretation, never asserted before the
District Court by any party, never addressed by the District Court,
and never before suggested by any party, became the basis of
the Federal Circuit’s opinion. (App. 5a).
On September 8, 2003, the Federal Circuit affirmed the
District Court’s decision of noninfringement in favor of
respondents. (App. 1a-8a). The Federal Circuit agreed with
Turn-Key that the District Court had misinterpreted the patent
by inserting into paragraph (d) an extraneous limitation about
the guide conduit. (App. 4a). But the Federal Circuit found the
error to be “harmless” because of the court’s new, sua sponte
interpretation of paragraph (e). (App. 5a, 8a). Paragraph (e)
requires that the molded articles be ejected into the guide
conduit. According to the Federal Circuit, that paragraph requires
the two mold halves to first finish separating before the molded
article can be ejected into the guide conduit. (App. 5a).
But without input or briefing from the parties, the Federal Circuit
misunderstood the patented method, which actually ejects the
article into the guide conduit before the two mold parts finish
separating. The respondents practice their molding method in
the same way, by ejecting CDs and DVDs before the mold parts
finish separating, but under the Federal Circuit’s sua sponte
construction such ejection was not covered by the patented
method.
6
Turn-Key petitioned for rehearing, pointing out that the
district court had never considered the new claim interpretation
and that Turn-Key had never had an opportunity to brief the
new issue. Turn-Key also pointed out that the court’s novel,
sua sponte claim construction excluded from the scope of the
claim the very process described in the patent specification,
contrary to established canons of patent claim construction.‘
The Federal Circuit denied rehearing on October 6, 2003.
(App. 72a-73a).
REASONS FOR GRANTING THE PETITION
I. THE FEDERAL CIRCUIT’S PRACTICE OF
ISSUING SUA SPONTE CONSTRUCTIONS
OF PATENTS WITHOUT GIVING AFFECTED
PARTIES NOTICE AND AN OPPORTUNITY TO
BE HEARD IS INCONSISTENT WITH THIS
COURT’S DECISIONS AND THOSE OF OTHER
COURTS AS TO WHEN SUA SPONTE RULINGS .
MAY PROPERLY BE ISSUED
The Federal Circuit held that Turn-Key’s patent had not
been-infringed based upon a sua sponte claim construction ruling
4. See, e.g., Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 ¥.3d
1545, 1550 (Fed. Cir. 1996) (“a claim interpretation that would exclude
the inventor’s device is rarely the correct interpretation; such an
interpretation requires highly persuasive evidentiary support”), abrogated )
on other grounds, Festo Corp v. Shoketsu Kinzoku Kogyo Kabushiki i
Co., 234 F.3d 558 (Fed. Cir. 2000); Canaan Prods., Inc. v. Edward Don i
& Co., 388 F.2d 540, 544 (7th Cir. 1968) (“The terms [patentee] uses
should be interpreted to read upon the structure he describes in the
patent.”); see also Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d
1575, 1581 (Fed. Cir. 1996) (““We share the district court’s view that it
is unlikely that an inventor would define the invention in a way that
excluded the preferred embodiment, or that persons of skill in this field
would read the specification in such a way.”).
7
regarding claim terms not disputed by the parties on appeal.
The court failed to afford Turn-Key adequate notice of the newly
identified claim construction issue and a meaningful opportunity
to be heard on that issue. That ruling is thus fundamentally
flawed and must be vacated. The decision below is merely the
latest in a long series of decisions in which the Federal Circuit
has arrogated to itself the authority to decide how to construe a
patent, without regard to what the Patent Office originally
concluded in patenting the invention or what the parties
themselves might argue in support of or opposition to a claim
of infringement. Because patents represent valuable property
interests recognized explicitly in the Constitution, and because
the Federal Circuit’s practice of deciding patent cases with
sua sponte rulings impinges on a patent holder’s substantial
rights, the petition should be granted and the decision below
vacated. The issue presented in this case goes to the heart of the
patent dispute resolution process designed by Congress.
A. The Federal Circuit Has Developed A Well-
Entrenched Practice Of Deciding Patent Claim
Construction Cases On A Sua Sponte Basis
The decision below represents simply the latest in a line of
cases in which the Federal Circuit has reached out to determine
issues of claim construction not raised or briefed by any of the
parties on appeal. Although the prevalence of that approach is
difficult to quantify, a number of published decisions in recent
years reveals a substantial gap between a clear majority of the
judges on the court and a vocal, if unheeded, minority. On a
recurring basis, the Federal Circuit routinely feels itself
unconstrained by any authority from engaging in sua sponte
claim construction without permitting input from the parties or
consideration in the first instance by the district court charged
with developing a factual record to inform the construction of
the patent. A distinct minority of judges on the Federal Circuit
8
has complained in published dissenting or concurting opinions
about that practice, but has been unable to garner enough votes
to force an en banc reassessment of the court’s rule and thus
has been functionally muzzled by a clear majority that sees no
difficulty in deciding fundamental issues of patent claim
construction without briefing or argument from the parties. In
adopting its practice, however, a majority on the Federal Circuit
has never articulated a justification for it or a source of judicial
authority for deciding such important property interests without
giving the affected parties an opportunity to be heard on the
precise point of law or fact at issue.
In Exxon Chem. Patents, Inc. y; Lubrizol Corp., 64 F.3d
1553, 1557-61 (Fed. Cir. 1 995), for example, the Federal Circuit
adopted a claim construction that was advanced by neither party
on appeal. See 64 F.3d at 1569 (Nies, J -, dissenting). As Judge
Nies observed in dissent in that case, “[b]y advocating a different
interpretation of the claim sua sponte, the majority required
Exxon to litigate during trial not only its opponent’s position
but also the unknowable position of the [Federal Circuit].” Jd.
But the Federal Circuit has demonstrated that it does expect
litigants to anticipate such unknowable positions. A few years
later, the court showed that its sua sponte approach to claim
construction in the Exxon case was not an isolated instance.
In Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294 (Fed. Cir.
1999), the Federal Circuit took precisely the same approach.
The court there reversed the district court on an issue of claim
construction that neither party had raised or briefed on appeal.
See id. at 1302.
The Federal Circuit’s sua sponte claim construction practice
is not limited to appeals from district courts in patent
infringement cases. It extends as well to the court’s appellate
review of Patent Office refusals to issue patents to applicants.
In a setting comparable to that of this case, the Federal Circuit
9
reversed the agency’s rejection of aclaim to a method to “restore
hair growth” on the basis of a sua sponte claim construction.
In re Cortright, 165 F.3d 1353, 1359 (Fed. Cir. 1999).
The agency rejected the claim based on its interpretation of
“restore hair growth” as a total, rather than partial, cure of
baldness as understood by a person of ordinary skill in the art.
The Federal Circuit conducted its own prior art search and found
a number of patents, not considered by the Office or the applicant
~ in the proceedings below, which supported the court’s conclusion
that a person of ordinary skill would interpret the phrase to mean
a partial cure of baldness. Jd. at 1356-59; see William C.
Rooklidge & Mathew F. Weil, Judicial Hyperactivity:
The Federal Circuits Discomfort with Its Appellate Role,
15 Berkeley Tech. L.J. 725, 730-31 (2000) (“Judicial
Hyperactivity”). The court therefore reversed the agency
determination of unpatentability. The Office sought rehearing,
on the ground that proper appellate review of agency action
must be on the basis of the record before the agency,
cf. Dickinson v. Zurko, 527 U.S. 150 (1999) (requiring APA-
based appellate review of Patent Office determinations), but
the Federal Circuit denied rehearing. Judicial Hyperactivity,
supra at 731-34.
The discomfort with the Federal Circuit’s prevailing practice
among a distinct minority of the judges came into full view in
Seal-Flex, Inc. v. Athletic Track & Court Constr., 172 F.3d 836
(Fed. Cir. 1999) (per curiam), which addressed a sua sponte
construction of a patent offered by Judge Rader. The Federal
Circuit had decided the case in a per curiam decision, noting
that “where, as here, the parties agree to a particular construction
of the claims which is adopted by the district court, and neither
party disputes that construction on appeal, this court declines
to raise an issue sua sponte which the parties have not presented
on appeal.” Jd. at 842. In a separate opinion, however, Judge
10
Rader concurred in the result based upon his sua sponte claim
construction analysis. /d. at 847-51. Ina separate concurrence,
Judges Bryson and Newman strenuously disagreed with Judge
Rader’s approach and stressed their Joint opinion that the Federal
Circuit should not engage in sua sponte claim construction
(id. at 851-52):
The requirement that appellate courts normally limit
themselves to issues that the parties have preserved
below and raised on appeal serves important interests
of both trial and appellate processes. The trial process
benefits from a preservation-of-error requirement
because it frees trial courts to focus on the factual
and legal issues the parties identify as being in
dispute, without having to worry that a misstep on
an issue not disputed or objected to by the parties
will result in a reversal. The requirement benefits
the appellate process by letting appellate courts focus
on issues that the trial courts have expressly ruled
on and that the parties have briefed on appeal, rather
than having to venture opinions regarding issues that
have never been briefed, argued, or even adverted
to in the course of the proceedings.
Thus, on those occasions when the Federal Circuit panel is
composed of judges from the minority on that court which
disapproves of the practice of sua sponte appellate claim
construction, the litigants may be protected from the unfairness
that the practice creates. On most other occasions, however,
as in the present case, litigants are vulnerable to being deprived
of notice and an opportunity to be heard on claim construction.
A party’s property rights to have a patent adjudicated in
accordance with due process standards should not rest on the
fortuity of drawing a panel that consists of at least two members
of the minority of Federal Circuit judges who believe that
1]
sua sponte rulings of patent claim construction issues are
improper.
The Federal Circuit’s internal debate and split over
sua sponte claim constructions has not gone unnoticed by
commentators. They have sharply criticized the Federal Circuit’s
predominant view that such sua sponte rulings are a proper
exercise of judicial power. As one commentator observes,
“Now the bar is left to wonder why and when the court will
consider arguments raised for the first time on appeal and
arguments not made by either party but concocted by the court
itself.” Judicial Hyperactivity, supra at 736-39, 745-47. Another
commentator criticizes the Federal Circuit’s sua sponte ruling
practice because it alters fundamentally the role of judge and
jury in patent infringement cases. “[I]f the Federal Circuit
persists in applying its own interpretation of the claims to the
facts without a new trial, there truly is no remaining purpose
for a jury in this process.” Gregory D. Leibold, /n Juries We Do
Not Trust: Appellate Review of Patent Infringement Litigation,
67 U. Colo. L. Rev. 623, 670 (1996).
B. The Federal Circuit’s Practice As Applied In This
Case Deprives Petitioners Of Substantial Rights In
Conflict With This Court’s Decisions
1. In this case, the Federal Circuit applied its sua sponte
claim construction practice by devising a wholly new
construction of the patent and deciding based on that
construction that the patent had not been infringed.
That conclusion occurred after the Federal Circuit was persuaded
by Turn-Key that the District Court had erroneously rejected
Turn-Key’s infringement claim based on paragraph (d) of claim
1. Thus, Turn-Key’s substantial property rights in its claim of
infringement against respondents were adversely affected by
the Federal Circuit’s sua sponte ruling concerning the claim
12
~
construction of the “ejection” step of paragraph (e) of claim |
of the patent. Turn-Key was denied both reasonable notice and
any meaningful opportunity to respond to the Federal Circuit’s
newly raised issue of claim construction, one that was not raised
or briefed by the parties on appeal, nor ever argued to or
addressed by the District Court. Turn-Key had appealed the
District Court’s summary judgment ruling based on the District
Court’s erroneous construction of the term “guide conduit” in
paragraph (d) of claim 1 of Turn-Key’s patent. The parties’
briefing addressed only that specific claim element and the
propriety of the District Court’s interpretation of that claim
element. The Federal Circuit agreed with Turn-Key that the
District Court erred in construing the term “guide conduit” by
importing an extraneous limitation. But then the Federal Circuit
also determined that a different claim element, “ejection”
(and its timing in relation to mold opening), which was not in
dispute on appeal and which was not raised or briefed by the
parties, was determinative of the case.
The Federal Circuit did not provide any indication to
Turn-Key prior to oral argument that this new issue was under
judicial consideration. The Federal Circuit did not request
supplemental briefing about the claim element that it, and not
the parties, felt was dispositive of the matter. The Federal
Circuit’s only indication that it was considering an entirely
different claim construction issue from the one raised by the
parties occurred in the final two minutes of rebuttal in the oral
argument. Not realizing that the court’s decision would turn on
an undisputed issue on appeal, Turn-Key spent the entirety of
its written submissions and Opening argument, and the majority
of its rebuttal argument, addressing issues relating to the
interpretation of the term “guide conduit” of paragraph (d) of
claim 1, upon which the underlying summary judgment motion
and the resulting District Court decision was based.
ok WW wena 4A
13
The mere asking of three questions at the end of oral
argument did not provide Turn-Key with reasonable notice that
paragraph (e) of claim 1 would be subjected to interpretation
by the Federal Circuit on this appeal and furthermore would
provide the basis for the court’s affirmance of the
noninfringement judgment. Those questions amounted to
nothing more than a glimpse into the panel’s thinking and
certainly did not afford Turn-Key a proper and fair opportunity
to respond to or put forth its best evidence regarding the newly
raised issues of claim construction and infringement.’
In that respect, the Federal Circuit’s error was closely
analogous to the one corrected by this Court in Nelson v. Adams
USA, Inc., 529 U.S. 460 (2000). There, this Court reversed a
Federal Circuit judgment that an officer was immediately liable,
upon the filing of an amended pleading, for an attorney fee award
against the officer’s company in a patent infringement case.
As this Court made clear, “due process does not countenance
such swift passage from pleading to judgment in the pleader’s
favor.” Id. at 465. Because the officer there “was never afforded
a proper opportunity to respond to the claim against him,” this
Court held that “due process affords him” the “right to contest
on the merits” the substance of his argument. Jd. at 468, 472.
2. The Federal Circuit’s decision to rule sua sponte on the
patent construction and infringement claims was inconsistent
5. Asa general rule, federal appellate courts do not consider points
raised for the first time at oral argument, in order to avoid the injustice
and surprise that such a situation presents. See, e.g., Thomas R.W. v.
Massachusetts Dep't of Educ., 130 F.3d 477, 480 (1st Cir. 1997);
Principal Mutual Life Ins. Co. v. Charter Barclay Hosp., Inc., 81 F.3d
$3, 56 (7th Cir. 1996); Stewart Title Guar. Co. v. Cadle Co., 74 F.3d
835, 836-38 (7th Cir. 1996); see also Lufkins v. Leapley, 965 F.2d 1477,
1485 (8th Cir. 1992) (Heaney, J., dissenting); Williams v. Chrans, 894
F.2d 928, 932 n.1 (7th Cir. 1990). The same reasoning applies here.
14
with this Court’s decisions in analogous areas of law. As a matter
of elemental due process, this Court has long held that the
Constitution, at a minimum, requires prior notice and an
opportunity to be heard. Mullane v. Central Hanover Bank &
Trust Co., 339 U.S. 306, 314 (1950); Boddie v. Connecticut,
401 U.S. 371, 377 (1971); United States v. James Daniel Good
Real Property, 510 US. 43, 53 (1993). These procedural due
process safeguards are deeply rooted in our judicial system.
Rochin v. California, 342 U.S. 165, 170-171 (1952). The Federal
Circuit denied Turn-Key those procedural safeguards when it
affirmed the finding of non-infringement based entirely upon
its sua sponte claim construction without input from the parties.
See Nelson, 529 U.S. at 468 (party must be “afforded a proper
opportunity to respond to a claim” before it is adjudicated against
that party); Mullane, 339 U.S. at 314 (“{t]he notice must be of
such nature as reasonably to convey the required information”);
Boddie, 401 U.S. at 377 (“persons forced to settle their claims
of right and duty through the judicial process must be given a
meaningful opportunity to be heard.”).°
6. Turn-Key’s opportunity under appellate rules of procedure to
request a rehearing (which it, in fact, did) cannot substitute for the type
of process necessary to present its arguments on the issue of claim
construction to counter the sua sponte decision of the court. As is the
case with the vast majority of all such petitions, the rehearing petition
here was summarily denied. (App. 72a-73a). Because there is such a
heavy presumption against the likelihood that a rehearing petition will
have merit, arguments that might have carried more substantial weight,
if not carried the day, simply are not given the same credence as if they
had been presented when the case was still being briefed, argued, and
considered for decision by the panel. As the federal courts of appeals
have recognized, a summary denial of a rehearing petition does not
constitute a decision on the merits of the arguments raised in the petition.
Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475, 1479-80
(Fed. Cir. 1998) (collecting cases). Thus, a summary denial of a rehearing
petition does not provide the opportunity to be heard required by the
Fifth Amendment.
15
To safeguard inadvertent intrusions by courts on litigants’
substantial rights, this Court has been careful to employ and
sanction sua sponte rulings only in situations where due process
rights were not implicated — indeed, only where the very power
of the court is at issue. See, e.g., Liberty Mut. Ins. Co. v. Wetzel,
424 U.S. 737, 740 (1976) (determination that court lacks
jurisdiction over case); Juidice v. Vail, 430 U.S. 327, 331 (1977)
(issue of party’s standing to litigate also an appropriate subject
for sua sponte rulings because it goes to constitutional power
of court to exercise judicial power). That limitation is
appropriate, for where the court itself lacks power to determine
the rights of parties, the court must acknowledge that fact even
on its own motion. See Steel Co. v. Citizens for a Better Envt,
523 U.S. 83, 94 (1998) (“Without jurisdiction the court cannot
proceed at all in any cause. Jurisdiction is power to declare the
law, and when it ceases to exist, the only function remaining to
the court is that of announcing the fact and dismissing the
cause.”’).
The second area in which this Court has upheld the practice
of issuing sua sponte rulings is when a court considers purely
legal issues underlying or governing the dispute that the parties
have brought directly to that court. As this Court explained in
Kamen v. Kemper Financial Servs., Inc., “[w]hen an issue or
claim is properly before the court, the court is not limited to the
particular legal theories advanced by the parties, but rather
retains the independent power to identify and apply the proper
construction of governing law.” 500 U.S. 90, 99 (1991).
Thus, issues about the validity or even applicability of the law
that has been assumed by the parties to apply to the issue at
hand can properly be ruled on by a court sua sponte. Arcadia,
Qhio v. Ohio Power Co., 498 U.S. 73, 77 (1990) (Court
sua sponte found statute not applicable to dispute where parties
did not question applicability of statute); United States v. Burke,
16
504 U.S. 229, 246 (1992) (Scalia, J., concurring) (arguing for
sua sponte consideration of validity of statute allegedly
governing dispute); see also Kolstad v. American Dental Ass n,
527 U.S. 526, 540 (1999) (issue of proper legal standards for
imputing liability to employer in punitive damages context was
“so integral to decision of the case that they could be considered
‘fairly subsumed’ by the actual questions presented” and thus
appropriate for sua sponte consideration). But that does not mean
that a court is free, as the Federal Circuit erroneously thought
here, to issue a ruling on a wholly different claim term from
that which the parties appealed to the court.
3. The Federal Circuit’s error is particularly plain in view
of this Court’s recognition that an issue of patent claim
construction is a mixed question of fact and law. Moreover, an
issue of claim construction does not go to the court’s power to
hear the case. Accordingly, claim construction falls into neither
of the two categories judicially recognized as appropriate for
sua sponte consideration.
That claim construction is a mixed fact/law issue was made
clear in this Court’s decision in Markman vy. Westview
Instruments, Inc., 517 U.S. 370 (1996). Even as the Court was
holding that patent claims should be decided by judges, not
juries, it explained that claim construction is ceded to a judge
“notwithstanding its evidentiary underpinnings,” id. at 390, only
because judges are more suited than juries to interpret complex
legal instruments (id. at 388):
We said in Miller v. Fenton, 474 US. 104, 114
(1985), that when an issue “falls somewhere between
a pristine legal standard and a simple historical fact,
the fact/law distinction at times has turned on a
determination that, as a matter of the sound
administration of justice, one judicial actor is better
on
17
positioned than another to decide the issue in
question.” So it turns out here, for judges, not juries,
are the better suited to find the acquired meaning of —
patent terms.
Id. at 388 (citation omitted).
Before so concluding, the Court repeatedly referred to the
evidentiary proof and expert testimony often needed to aid claim
construction. E.g., id. at 378 (“receipt of evidence”),
385 (“evidentiary proof’), 387 (“aided by expert testimony”);
see also id. at 386 (“ultimate issue of mixed fact and law’’).
In recognizing that claim construction involves determination
of a mixed fact/law question having factual and evidentiary
underpinnings, the Court adopted a similar standard to the one
set out for “obviousness” in Graham y. John Deere Co.,
383 U.S. 1, 17 (1966) (holding obviousness an issue of law
subject to factual inquiries into scope and content of prior art,
differences between prior art and claims at issue, and level of
ordinary skill in pertinent art). See also U.S. Indus. Chems.,
Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 678
(1942) (court often must receive expert testimony to ascertain
meaning of technical or scientific terminology so that court is
aided in its understanding of patent).
4. Notwithstanding this Court’s clear statements in its
Markman opinion that a patent claim presents a mixed question
of fact and law, the Federal Circuit has construed Markman to
mean that judges may decide a patent claim as an issue of pure
law — and that misreading has become accepted dogma for the
Federal Circuit. Thus, in Cybor Corp. v. FAS Technologies, Inc.,
138 F.3d 1448 (Fed. Cir. 1998) (en banc), the court chose to
read the foregoing passage from this Court’s Markman decision
as “addressing under which category, fact or law, claim
construction should fall and not whether it should be classified
Nt
18
as having two components, fact and law.” /d. at 1455.’
Based on that misreading of Markman, the Federal Circuit
erroneously perceived this Court ‘as reaffirm[ing] that, as a
purely legal question, we review claim construction de novo on
appeal including any allegedly fact-based questions relating to
claim construction.” /d. at 1456.8 The Federal Circuit’s
misunderstanding of Markman has thus led it to the erroneous
view that it has the authority to make sua sponte claim
construction determinations — as though the words of a patent
claim exist in a vacuum untethered to the practical context of
the device being described and the art surrounding the invention.
See Glaxo Group Ltd. v. TorPharm, Inc., 153 F.3d 1366, 1373-
74 (Fed. Cir. 1998) (reaffirming Federal Circuit’s reading of
Markman to hold that court can consider alternate grounds for
summary judgment because claim construction raises “question
of law’”’).
7. Compare Markman, 517 U.S. at 384 n.10 (stating that Court is
not deciding case on basis of “law/fact distinction” because it has “more
specific reason for decision” — which is that judges are better suited
than juries to interpret complex legal instruments).
8. That reading of this Court’s decision in Markman sparked
disagreement among some of the Federal Circuit judges. Judge Bryson,
for example, perceived that this Court left room for the Federal Circuit
to take into account a district court’s “superior access to one of the
pertinent tools of construction,” facts that might be developed to show
the meaning of the patent language. Cybor Corp., 138 F.3d at 1463
(Bryson, J., concurring). Chief Judge Mayer (joined by Judge Newman)
read Markman as “stopp[ing] short of authorizing us to find facts de
novo when evidentiary ¢@isputes exist as part of the construction of a
patent claim and the district court has made these findings without
committing clear error.” /d. at 1464 (Mayer, C.J., concurring); see also
id. at 1473-78 (Rader, J., concurring in part and dissenting in part).
19
C. The Federal Circuit’s Judgment Conflicts With
Numerous Court Decisions Holding That Mixed
Questions Of Fact And Law Such As Patent Claim
Construction May Not Be Decided By Courts
Through Sua Sponte Rulings
1. Numerous Supreme Court Justices — including Justices
Stevens, O’Connor, Scalia, and Ginsburg — have deplored the
type of practice applied by the Federal Circuit in this case.
They have stressed that sua sponte rulings, when made without
the necessary procedural safeguards, are contrary to the
adversarial nature of our judicial system. For example, Justice
Stevens has noted that sua sponte rulings issued without notice
and a hearing deprive a court of the benefits of the adversary
process, which plays a critical role in our system of justice.
Lankford v. Idaho, 500 U.S. 110, 127 (1991). Justice Scalia has
stated that “[t]he rule that points not argued will not be
considered is more than just a prudential rule of convenience;
its observance, at least in the vast majority of cases, distinguishes
our adversary system of justice from the inquisitorial one.”
Burke, 504 U.S. at 246 (Scalia, J., concurring). Those views are
in accord with the position taken by Justice Stewart, who
described the refusal to consider issues neither briefed nor argued
by counsel as “the most basic principle of our adversary system
of justice.” United States v. Feola, 420 U.S. 671, 697 (1975)
(Stewart, J., dissenting). The importance of giving counsel a
reasonable opportunity to comment on an issue that has been
raised sua sponte by the court stems from “[o]Jur belief that
debate between adversaries is often essential to the truth-seeking
function of trials.” Lankford, 500 U.S. at 127; see also Landon
v. Plasencia, 459 U.S. 21, 36-37 & n.9 (1982) (O’Connor, J.)
(opinion for the Court noting that if “hearing is to ensure fairness,
it must provide [affected party] an opportunity to present her
case effectively” before issues are resolved without proper
20
briefing and argument). And Justice Ginsburg’s opinion for the
Court in Ne/son stressed the due process error of “adding ...a
party and simultaneously amending the judgment to obiigate
him individually” without affording him an opportunity to be
heard. 529 U.S. at 465.
2. The Federal Circuit’s decision also conflicts with the
consistently applied procedural rule that a party’s claim — here,
Turn-Key’s infringement claim — shall not be dismissed on the
merits sua sponte “without at least giving plaintiffs notice of
the proposed action and affording them an Opportunity to address
the issue.” Clorox Co. Puerto Rico v. Proctor & Gamble
Commercial Co., 228 F.3d 24, 30 (1st Cir. 2000). Yet that is
exactly what the Federal Circuit did. The court affirmed a ruling
of summary judgment against Turn-Key on an alternative round
created sua sponte by the appeals court without affording
Turn-Key notice and “an opportunity to address the issue.” Jd.
When considering the type of mixed questions of law and fact
that arise in summary judgment motions, numerous federal
circuits have rejected that type of approach as violating a basic
right of due process reflected in the Federal Rules of Civil
Procedure. See, e.g., id. at 30; Bendet v. Sandoz Pharm. Corp.,
308 F.3d 907, 912 (8th Cir. 2002) (“A district court may grant
summary judgment sua sponte only if the ‘party against whom
judgment will be entered was given sufficient advance notice
and an adequate opportunity to demonstrate why summary
judgment should not be granted.’”) (citation omitted);
Mannesman Demag Corp. v. M/V Concert Express, 225 F.3d
587, 595 (Sth Cir. 2000) (“A court may grant summary judgment
sua sponte but must provide adequate notice and an opportunity
to respond akin to that required by Fed. R. Civ. P. 56(c).”);
Snider v. Melindez, 199 F.3d 108, 114-15 (2d Cir. 1999)
(reversing sua sponte direction of entry of a “strike” in judgment
dismissing prisoner’s complaint); Otis Elevator Co. v. George
21
Washington Hotel Corp., 27 F.3d 903, 910 (3d Cir. 1994)
(holding that court “may not grant summary judgment sua sponte
unless the court gives notice and an opportunity to oppose
summary judgment”).
The Federal Circuit’s sua sponte judgment directing entry
of summary judgment against Turn-Key without affording Turn-
Key notice and an opportunity to oppose such a ruling on the
wholly new ground concocted by the court unquestionably runs
afoul of a rule followed in at least seven other circuits. As the
Ninth Circuit has explained, a court “may dismiss an action on
its own motion for failure to state a claim, but only after the
court takes the proper procedural steps.” Franklin v. Oregon
State Welfare Div., 662 F.2d 1337, 1340-41 (9th Cir. 1981)
(explaining that process includes “notify[ing] the plaintiff of
the proposed action and afford[ing] him an opportunity to submit
written argument in opposition”); see also Massey v. Congress
Life Ins. Co., 116 F.3d 1414, 1417 (11th Cir. 1997) (“courts
have strictly enforced the requirement that a party threatened
by summary judgment must receive notice and an opportunity
to respond”) (collecting cases).
—
3. The Federal Circuit’s judgment conflicts more generally
with numerous lower courts at both the federal and state levels
that have addressed the proper scope of sua sponte rulings in a
variety of substantive contexts. Where a sua sponte ruling affects
substantial property interests without affording the affected party
both reasonable notice and an opportunity to be heard, courts
have held that such rulings violate a litigant’s due process rights.
See, e.g., Brown v. Triple “‘D” Drilling Co., 585 P.2d 987, 990
(Kan. 1978) (finding that a sua sponte trial court order reinstating
an action on a promissory note against one of the defendants
did not afford the defendant due process of law); Kerrigan,
Estess, Rankin & McLeod vy. State, 711 So.2d 1246, 1248-49
(Fla. Dist. Ct. App. 1998) (per curiam) (holding that trial court
i iis
fe
sua sponte ruling that law firm’s contingency fee contract was
unenforceable violated firm’s rights to adequate notice and an
opportunity to be heard); Grissom v. Grissom, 886 S.W.2d 47,
57-58 (Mo. Ct. App. 1994) (reversing trial court sanctions
imposed sua sponte on two attorneys for failing to meet certain
pleading requirements on the ground that sua sponte sanctions
order in this context failed to afford the attorneys due process
rights of notice and a hearing). In Grissom, one of the attorneys
was not present and therefore had no notice of a possibility of
sanctions; the other attorney was present at the hearing, but only
became aware of the proposed sanctions minutes before the
hearing and had only fifteen minutes to prepare his arguments.
The Missouri Court of Appeals held that such notice was
inadequate and, further, that any argument that occurred at the
hearing on the issue of sanctions was not meaningful given the
short notice afforded counsel. Grissom, 886 S.W.2d at 57-58.
The positions of those state courts — that a litigant’s
substantial rights on mixed questions of fact and law may not
be adjudicated through sua sponte rulings — mirrors the position
taken by federal courts of appeals that have addressed analogous
claims in a variety of circumstances. The D.C. Circuit, for
example, has declined to address sua sponte a putative
constitutional violation of an employee’s complaint about a
reassignment. As then-Judge Scalia wrote for the court,
“[t]he premise of our adversarial system is that appellate courts
do not sit as self-directed boards of legal inquiry and research,
but essentially as arbiters of legal questions presented and argued
by the parties before them.” Carducci v. Regan, 714 F.2d 171,
177 (D.C. Cir. 1983). In similar fashion, the Ninth Circuit has
held that the Board of Immigration Appeals (“BIA”) overstepped
constitutional boundaries when it raised and decided sua sponte
the issue of an asylum seeker’s credibility. Stoyanov v.
Immigration & Naturalization Serv., 172 F.3d 731, 734-35
2
wy)
(9th Cir. 1999). The court found that the BIA’s sua sponte
credibility ruling violated Stoyanov’s right to due process. /d.
Even the Federal Circuit itself has reprimanded a lower
court for exceeding constitutional limitations with a sua sponte
ruling. In Nolen v. Gober, the Court of Appeals for Veteran
Claims sua sponte had reconsidered the issue of whether the
veteran’s claim was well grounded, rather than directly
addressing the veteran’s contentions regarding the merits of his
disability claim. 222 F.3d 1356, 1360 (Fed. Cir. 2000).
The Federal Circuit noted that the decision of the Court of
Appeals for Veteran Claims that the claim was not well grounded
— an issue which neither party raised nor briefed — implicated
‘fundamental principles of fairness.” Jd. at 1360-61.°
As Judge Posner has observed for the Seventh Circuit,
“[o]ur system unlike that of the Continent is not geared to having
judges take over the function of lawyers.” Hartmann y.
Prudential Ins. Co. of America, 9 F.3d 1207, 1214 (7th Cir.
9. Numerous other state courts, both of last resort and appellate,
as well as federal appellate courts, have ruled that sua sponte orders
violate due process. See, e.g., Stewart Title, 74 F.3d at 836-37; Holzer v.
Jochim, 557 N.W.2d 57, 58-59 (N.D. 1996); Storer Communications of
Jefferson County, Inc. v. Oldham County Bd. of Educ., 850 S.W.2d 340,
341-42 (Ky. Ct. App. 1993); Gall v. Scroggy, 725 S.W.2d 867, 869 (Ky.
Ct. App. 1987); see also In re Arthur Treacher s Franchisee Litigation,
689 F.2d 1137, 1148-49 (3rd Cir. 1982) (Third Circuit found that district
court did not properly exercise its discretion when it sua sponte without
notice ordered different relief which franchisor had not requested and
to which franchisee had no opportunity to defend, argue, or present
evidence); Shockley v. Jones, 823 F.2d 1068, 1072-73 (7th Cir. 1987)
(dismissal under Rule 12(b)(6) without notice or hearing is improper
because it is a decision on the merits with full res judicata effect); Cortina
v. Cortina, 98 So.2d 334, 336-37 (Fla. 1957) (Chancellor’s sua sponte
modification of child support decree without notice and hearing was
voidable on appeal).
24
1993). In his view, permitting appellate courts to decide cases
on issues not raised or briefed by the parties would effectively
eliminate the adversary system of justice in the federal courts.
Id. at 1215.
D. This Case Is An Ideal And Important Vehicle For
Deciding Whether The Federal Circuit’s Practice
Is Permissible In Patent Cases
The court below issued an unpublished, memorandum
decision definitively acknowledging that the district court had
erred in rejecting petitioner’s claims on the one issue presented
by the parties for review to the Federal Circuit. On its own,
without notice to the parties, the court reached out to affirm the
District Court’s judgment of noninfringement based on its
sua sponte consideration of a different element of the patent
claim. As a legal issue, therefore, the case presents the question
of the propriety of sua sponte rulings in a neat, clean vehicle
uncluttered by other collateral issues. This Court can decide
whether the Federal Circuit appropriately exercised its authority
and then vacate and remand the case for a proper consideration
of petitioner’s case (including briefing and argument).
In reaching a decision on the question presented, the Court need
not understand the science or engineering underlying the patent
itself but rather must determine simply whether claim
construction is suitable for a sua sponte ruling.
This case also presents an ideal vehicle because the issue is
one of claim construction, which this Court has stressed is a
mixed question of law and fact. To properly interpret claim
language, a court must have a full understanding of the technical
teaching of the patent. However, the Federal Circuit does not
and cannot be expected to have a working knowledge of every
possible field of invention. It is the role of the parties and their
witnesses to supply the court with the information necessary
Pe
for it to understand the invention and make an educated
interpretation of the patent claims. But the Federal Circuit should
not be empowered to disregard those critical advocacy functions
in determining the existence of a patent or an infringement of
it. Without a proper recognition that the parties’ advocacy efforts
illuminate the court’s decision-making, there is a substantial
risk (as exemplified in this case) that the court will not recognize
the true scope or meaning of the claim terms in light of the
written specifications viewed from the perspective of one of
ordinary skill in the art. See Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979-80, 986 (Fed. Cir. 1995), aff'd, 517 U.S.
370 (1996). Thus, this case also presents this Court with an
opportunity to clarify that the Federal Circuit’s reading of
Markman is erroneous and the likely cause of its misapplication
of judicial authority to issue sua sponte rulings.
Whether the Court also chooses to issue any broader
pronouncement about the general propriety of a court’s issuing
sua sponte rulings is a question the Court need not confront at
the certiorari stage. What is evident from the reported cases and
commentaries is that the Federal Circuit’s practice of issuing
sua sponte claim construction rulings in patent cases appears to
be by far the most consistent and prevalent use of sua sponte
authority among all the courts in the Nation in an area of
litigation involving the substantial constitutional rights of a party.
Thus, it is especially appropriate for this Court to rein in the
Federal Circuit as an excessive abuser of judicial authority to
decide matters without further hearing or argument from the
parties.
For that reason as well, this case also raises important
questions about the administration of justice for the patent
system, devised to protect one of the most significant
constitutional rights enjoyed under the Constitution — the right
to protect the fruits of one’s creative genius with a patent.
26
But that right is substantially devalued when a patent holder
claiming infringement has no assurance of being able to present
arguments to the court of last resort in the vast bulk of all patent
cases because of the Federal Circuit’s assumption of authority
to issue sua sponte claim construction rulings. Given the Federal
Circuit’s exclusive jurisdiction over appeals in patent cases, this
Court should therefore grant review to correct the court of
appeals’ errant approach, which encroaches impermissibly on
the rights of litigants in patent cases.
CONCLUSION
The petition for a writ of certiorari should be granted.
In the alternative, the Court may wish to reverse summarily or
to grant, vacate, and remand with instructions to remand the
case for further proceedings in the District Court.
Respectfully submitted,
Of Counsel: Boris ZELKIND
Counsel of Record
Patricia A. SHACKELFORD
ZELKIND & SHACKELFORD LLP
Sorrento Towers North
5355 Mira Sorrento Place
Suite 290
San Diego, CA 92121
(858) 558-6745
Davip C. FREDERICK
RICHARD H. STERN
KELLOGG, HuBER, HANSEN,
Topp & Evans, P.L.L.C.
1615 M Street, N.W.
Suite 400
Washington, D.C. 20036
(202) 326-7900
Counsel for Petitioner
February 3, 2004
APPENDIX
la
APPENDIX A — OPINION OF THE UNITED STATES
COURT OF APPEALS FOR THE FEDERAL CIRCUIT
DATED SEPTEMBER 8, 2003
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
02-1613, -1614, -1615, -1616
TURN-KEY-TECH, LLC,
Plaintiff-Appellant,
v.
NATIONAL FILM LABORATORY, INC.
(doing business as Crest National Optical Media),
MUSIC CITY OPTICAL MEDIA, INC.,
HOLLYWOOD RECORDS, INC., CONCORD DISC
MANUFACTURING CORP., KRAUSS MAFFEI
CORPORATION, and KRAUSS MAFFEI
KUNSTSTOFFTECHNIK GMBH,
Defendants-Appellees.
DECIDED: September 8, 2003
Before MAYER, Chief Judge, BRYSON, and LINN, Circuit
Judges.
LINN, Circuit Judge.
Turn-Key-Tech, LLC (“Turn-Key”) appeals from
decisions of the United States District Court for the Central
2a
Appendix A
District of California, which granted summary judgment in
favor of all named defendant manufacturers and sellers of
injection mold systems, holding that the accused systems do
not utilize the process claimed in U.S. Patent No. 4,422,998
(“the ‘998 patent”). We affirm.
sane
Se en ee ee
The °998 patent is directed to a controlled ejection
method for injection molding. Claims 1 and 2 provide:
Pairs WE ahaha CNN
1. A method of cyclic injection molding of plastic
where the mold comprises two parts which are
separated by a parting surface and at least one
cavity situated internally to the boundaries of the
parting surface, and wherein each production cycle
comprises the steps of:
We Reread bans
ee noe aa tks Me Me einen eked wo
(a) Combining the two mold parts by
moving, in a predetermined direction, the
mold parts in relation to each other:
(b) Injecting plastic in a fluid state into a
cavity situated within the parting surface:
AOA SER we (6s Rs De wilh
(c) Solidifying the injected plastic in the
cavity, thereby creating a plastic product;
(d) Separating the two mold parts by
moving, in a direction opposite to the
predetermined direction, said mold parts
in relation to each other to create a
Sitde R Le MASINI BAT on ON RK dake 200 alse
3a
Appendix A
substantially enclosed guide conduit having
contours defined by the regions of the parting
surface and the internally positional cavity/
ies that are exposed subsequent to separation
and leading in a direction substantially
perpendicular to said predetermined
direction;
(e) Ejecting the plastic product into said
guide conduit; and
(f) Guiding and transporting the ejected
product from between the mold parts through
the guide conduit.
2. A method according to claim 1, wherein step (f)
comprises the step of:
(g) Transporting the ejected product through
the guide conduit at an orientation directed
by the contours of the guide conduit.
°998 patent, col. 5, |. 27-col. 6, |. 21.
Defendant Kraus Maffei Corp. manufactures and sells an
injection molding machine with a mold set (“CD-94 mold’)
designed to manufacture an optical disc. The other defendants
use that machine to manufacture CDs and DVDs. The district
court described in its opinion the composition and operation of
the CD-94 mold, and none of the parties raises any disputed
issues of material fact regarding the district court’s description
of the device used to perform the accused process.
a ee
4a
Appendix A
The primary dispute in this case focuses on the construction
of the term “guide conduit” found in limitation (d) of claim 1,
in such cases, “[w]here the parties do not dispute any relevant
facts regarding the accused product ... but disagree over
possible claim interpretations, the question of literal
infringement collapses into claim construction and is amenable
to summary judgment.” General Mills, Inc. v. Hunt- Wesson, Inc.,
103 F.3d 978, 983 (Fed. Cir. 1997) (citing Athletic Alternatives,
Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578 (Fed. Cir. 1996)).
In its claim construction ruling, the district held that the
“substantially enclosed guide conduit” is “a tube or channel
that is almost entirely closed in from the outside environment,
and that carries materials from one place to another and that
helps to direct the materials’ progressive motion.” The district
court later clarified its claim construction, holding that “the guide
conduit itself nevertheless must help to Carry and direct the
molded product’s progressive motion.” Based on that modified
construction, the district court granted defendants’ motions for
summary judgment of non-infringement, concluding that the
guide rails, kicker plate, and discharge chute of the CD-94 mold
do not comprise a guide conduit as construed by the court.
We hold that the district court erred in its interpretation of
guide conduit. A review of the claim language, written
description, and prosecution history show that a guide conduit
is simply a passageway through which a plastic product is
moved. The plain language of the claims describes the guide
conduit as an area within the mold. The district court’s definition
attributes a function to the guide conduit, namely that it direct
the material’s motion. That is an added limitation not found in
the claim language or properly imposed by the intrinsic record.
SR
Sa
Appendix A
Even though the district court unduly narrowed the guide
conduit limitation, summary judgment of non-infringement
is nonetheless appropriate in this case because under the
correct claim construction, the CD-94 mold still does not
have a guide conduit as defined by the claims. See Zelinski
v. Brunswick Corp., 185 F.3d 1311, 1316 (Fed. Cir. 1999)
(affirming grant of summary judgment of non-infringement
despite district court’s unduly narrow claim construction).
Because the CD-94 mold lacks a guide conduit, the defendant
manufacturers and users of the CD-94 mold do not practice
the claimed method of injection molding. To the extent that
there is a passageway through which a plastic product is
moved, that passageway is not formed by “[s]eparating the
two mold parts” as required by the claims. The cavity created
by the separation of the mold parts is not a guide conduit.
Part (e) of claim 1 requires that the plastic product be ejected
“into said guide conduit.” The plastic product is already in
the cavity upon separation. Moreover, the guide conduit must
“lead[ ] in a direction substantially perpendicular to said
predetermined direction.” The cavity created by separating
the two mold parts in the device used in the accused process
only leads in a direction parallel to the predetermined
direction. It is not until the product begins moving in a
perpendicular direction that it enters the guide conduit.
In the CD-94 mold, the plastic product moves perpendicularly
into a discharge chute with the assistance of the guide rails.
Neither the guide rails nor the discharge chute are created by
the separation of the mold parts. Thus, use of the CD-94
mold does not involve a guide conduit as described in the
method claim, and no reasonable juror could conclude
otherwise.
6a
Appendix A
With respect to infringement under the doctrine of
equivalents, the parties dispute whether the amendment to
claim 1 constituted a narrowing amendment and triggered
prosecution history estoppel. The original claims did not
require that the guide conduit be “substantially enclosed.”
Specifically, the relevant June 10, 1983 amendment to claim
1 provided:
(d) Separating the two mold parts by moving, in
a direction opposite to the predetermined
direction, said mold parts in relation to each other
to create a substantially enclosed guide conduit
having contours defined by the regions of the
parting surface and the internally positional
cavity/ies that are exposed subsequent to
separation and leading in a direction substantially
perpendicular to said predetermined direction;
(e) Ejecting the plastic product into [a] said guide
conduit [which leads in a direction substantially
perpendicular to said predetermined direction];
and
(f) Transporting the ejected product through the
guide conduit[, the contours of said conduit,
substantially being defined by regions of the
parting surface and the internally positioned
cavity/ies, which are exposed subsequent to
separation].
We agree with the district court that this is a narrowing
amendment. The original claim did not require that the guide
7a
Appendix A
conduit be substantially enclosed. Turn-Key admits that the
amendment narrowed the claim in that respect, but argues
that the claim was broadened because the amended claim
removed a limitation that substantially all of the contours of
the guide conduit be defined by regions of the parting and
cavity surfaces. We disagree. There is little meaningful
difference between the language “the contours of said guide
conduit substantially being defined by the regions of the
parting surface ...” and “a substantially enclosed guide
conduit having contours defined by the regions of the parting
surface. .. .”” Regardless whether the claim was broadened
in any way, the claim was narrowed with respect to the new
requirement that the guide conduit be substantially enclosed.
Prosecution history estoppel was triggered with respect to
that limitation. See generally Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 535 U.S. 722, 737-40 (2002) (noting
that narrowing amendments may give rise to a rebuttable
presumption of prosecution history estoppel) (citing Warner-
Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33
(1997)). Other than arguing that the claim was not in fact
narrowed, Turn-Key did not present any argument to this
court that it overcame any presumption of surrender.
Even if Turn-Key could rebut any presumption of
surrender, no reasonable juror could conclude that the accused
CD-94 mold operates in the same way as the claimed
invention. The claims require that the mold parts separate to
create a substantially enclosed guide conduit. While the use
of guide rails and a discharge chute may perform the same
function and achieve the same result as the claimed process,
they do so in a different way. Because the way in which the
accused device operates is different from the method claimed,
8a
Appendix A
the differences are not insubstantial, the claims cannot be
infringed under the doctrine of equivalents, and no reasonable
juror could conclude otherwise.
II
The district court misconstrued the term “guide conduit.”
That error, however, was harmless because under the correct
claim construction, the CD-94 mold lacks a guide conduit.
Without a guide conduit, the defendant users and
manufacturers of the CD-94 mold do not practice the claimed
method. Therefore, summary judgment of non-infringement,
both literally and under the doctrine of equivalents was
appropriate.
9a
APPENDIX B— JUDGMENT OF THE UNITED STATES
DISTRICT COURT FOR THE DISTRICT OF
CALIFORNIA FILED AUGUST 9, 2002
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CV 01-4158 LGB (MCx)
CV 01-4165 LGB (MCx)
CV 01-4536 LGB (MCx)
CV 01-5314 LGB (MCx)
IN RE: TURN-KEY-TECH MATTERS AND ALL
CONSOLIDATED ACTIONS
This Document Relates to: All Actions
JUDGMENT
Pursuant to this Court’s June 10, 2002 summary judgment
order regarding non-infringement of U.S. Patent 4,422,998 and
August 9, 2002 order granting Defendants Hollywood Records
and Krauss Maffei Kunststofftechnik’s motion for summary
judgment, Defendant National Film Laboratory Inc., dba Crest
National Optical Media’s motion to voluntarily dismiss its
remaining counterclaims without prejudice pursuant to Fed. R.
Civ. P. 41(a) (2), and Defendants Krauss-Maffei, Krauss Maffei
Kunststofftechnik, Concord Disc Manufacturing Corp., Music
City Optical Media, Inc., and Hollywood Records, Inc.’s motion
to dismiss all remaining counterclaims and claims without
10a
Appendix B
prejudice pursuant to Fed. R. Civ. P. 41(a) (2), ITIS HEREBY
ORDERED, ADJUDGED, AND DECREED AS FOLLOWS:
1) Defendants have not infringed and do not infringe the
4,422,998 patent;
2) Plaintiff Turn-Key-Tech shall take nothing by its
complaint; and
3) This judgment hereby terminates Case Nos. CV 01-
4158, CV 01-4165, CV 01-4536, and CV 01-5314.
IT ISSO ORDERED.
Dated: August 9, 2002
s/ Lourdes G. Baird
LOURDES G BAIRD
United States District Judge
lla
APPENDIX C — ORDER OF THE UNITED STATES
DISTRICT COURT FOR THE CENTRAL DISTRICT
OF CALIFORNIA FILED JUNE 6, 2002 AND
ENTERED JUNE 10, 2002
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CV 01-4158 LGB (MCx)
CV 01-4165 LGB (MCx)
CV 01-4536 LGB (MCx)
CV 01-5314 LGB (MCx)
IN RE: TURN-KEY-TECH MATTERS AND ALL
CONSOLIDATED ACTIONS,
This Document Relates to: All Actions
ORDER GRANTING DEFENDANTS CREST, KM,
CONCORD, AND MC’S MOTIONS FOR
SUMMARY JUDGMENT
I. INTRODUCTION
In these consolidated cases, Turn-Key-Tech
(“Turn-Key’’) accuses National Film Laboratories, Inc. d.b.a.
Crest National Optical Media (“Crest”), Krauss-Maffei
Corporation (“KM”), Concord Disc Manufacturing
Corporation (“Concord”), Music City Optical Media Inc.,
(“MC”), and Hollywood Records of patent infringement.
Specifically, it alleges that these Defendants have been
practicing a process claimed in U.S. Patent 4,422,998 patent
(“the 998 patent”) which was issued to Jens Ole Sorensen
on December 27, 1983. Turn-Key brings the instant actions
as the exclusive licensee of the 998 patent which expired
12a
Appendix C
on April 22, 2002. The Court held a Markman hearing on
January 14, 2001 and issued its order (“Markman Order’)
construing the contested patent claims on January 18, 2001.
Defendants KM, Crest, Concord, and MC now bring two
motions for summary judgment regarding literal
non-infringement and non-infringement under the doctrine
of equivalents. Because both motions for summary judgment
make essentially similar arguments, the Court collectively
deals with them here.
For reasons set forth below, the Court GRANTS
Defendants’ motions for summary judgment.
Il. FACTUAL AND PROCEDURAL BACKGROUND
Turn-Key accuses Defendants of infringing the ’998
patent. Specifically, at issue in the ’998 patent are Claims 1,
2,5, and 16. The following facts are taken from the Markman
Order. Moreover, undisputed facts regarding Defendants’
allegedly infringing product, the CD-94 mold, are delineated
here as well.
A. Background on the Patent
The °998 patent entitled “Controlled Ejection Method
for Injection Molding” was issued to Sorensen on December
27, 1983 and relates to the field of injection molding plastics.
Injection molding is a manufacturing process used to make
plastic products by injecting fluid plastic into a mold cavity
and allowing the plastic to solidify into the general shape of
the mold cavity to produce the plastic part. Once the product
is removed from the mold, the process continuously repeats.
13
3a
Appendix C
Sorensen stated that the method protected by the ’998 patent
constituted an improvement from prior art in terms of the
orientation, speed of injection, and the sterility involved. ’998
patent at Col. 1. 11. 27-30. The method, moreover, could be
performed basically without the need of auxiliary moving
parts or vulnerable stationary elements such as pins and
blades. /d. at 11.
B. Claim 1 of the ’998 Patent
Though Claims 1, 2, 5, and 6 of the ’998 patent are
specificaly at issue in the present litigation, Claim 1 is the
only independent claim in the 998 patent. Moreover, because
the Court finds an analysis of Claim 1(d) to be dispositive
for purposes of the instant motions, only Claim 1 is directly
addressed here. Claim | reads:
[] a method of cyclic injection molding of plastic
where the mold comprises two parts which are
separated by a parting surface and at least one
cavity situated internally to the boundaries of the
parting surface, and wherein each production cycle
comprises the steps of:
(a) Combining the two mold parts by
moving, in a predetermined direction,
the mold parts in relation to each other;
(b) Injecting plastic in a fluid state into
a cavity situated within the parting
surface;
14a
Appendix C
(c) Solidifying the injected plastic in
the cavity, thereby creating a plastic
product;
(d) Separating the two mold parts by
moving, in a direction opposite to the
predetermined direction, said mold parts
in relation to each other to create a
substantially enclosed guide conduit
having contours defined by the regions
of the parting surface and the internally
position[ed] cavity/ies that are exposed
subsequent to separation and leading in
a direction substantially perpendicular
to said predetermined direction;
(e) Ejecting the plastic product into said
guide conduit; and
(f) Guiding and transporting the ejected
product from between the mold parts
through the guide conduit.
Exhibit 2 to Decl. of Robinson in Support of KM’s Motion,
998 patent at Col. 5 11. 27-38, Col. 6 11. 1-16.
C. Claim Interpretation Law
In Markman vy. Westview Instruments, Inc., 517 U.S. 370
(1996), the Supreme Court held that the interpretation of a
patent claim is a matter of law exclusively within the
scope of the court and is not a factual question for the jury.
lSa
Appendix C
Id. at 372. The Markman decision suggested that trial courts
could consider various types of evidence when interpreting
a patent, including expert testimony. See id. at 388-90. Shortly
after the Supreme Court handed down Markman, the Federal
Circuit expanded on the Court’s dicta concerning evidence
available to trial courts in interpreting patent claims.
See Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1581-83 (Fed. Cir. 1996). The Federal Circuit held that if
intrinsic evidence can, by itself, resolve ambiguity in a patent
term, then a court may not rely on extrinsic evidence, such
as expert testimony, to construe the term. /d. at 1583. Trial
courts may use extrinsic evidence only when intrinsic
evidence fails to illuminate the meaning of the disputed claim.
Id. Moreover, extrinsic evidence cannot broaden the reach
of a claim or contradict explicit language. /d. Thus, courts
can only examine extrinsic evidence if the evidence does
not contradict the claim language, the specification, or the
prosecution history but instead supplements it. /d. at 1584-85.
The Federal Circuit detailed a hierarchy of specific types
of evidence that courts may consider. Thus, when interpreting
a patent, trial courts must <irst look at the language of the
claim itself. Jd. at 1582. « «arts should typically construe
terms by their common, customary meaning, but a patentee
is allowed to define his own terms in the specification section
of the patent. Jd. Therefore, courts must always review the
specification which, when setting forth an embodiment of
the invention, frequently provides explicit definitions of the
claim terms. /d. The language in the specification is
dispositive, and “it is the single best guide to the meaning of
the disputed term.” /d. However, a patent’s claims are not
limited to the specification’s best mode, preferred
loa
Appendix C
embodiment, specific objects, or illustrative examples, and
it is erroneous to read limitations from the specifications into
the claims. See Laitram Corp. v. Cambridge Wire Cloth Co.,
863 F.2d 855, 865 (Fed. Cir. 1988) (“References to a preferred
embodiment, such as those often present in a specification,
are not claim limitations.”); Rolls-Royce Ltd. v. GTE Valeron
Corp., 800 F.2d 1101, 1108 (Fed. Cir. 1987) (“Reference to
an object does not constitute in itself a limitation in the
claims.”). In addition, a court may consider the prosecution
history of the patent as evidence of meaning. /d. This history
contains the complete record of all the filings and
examinations before the Patent and Trademark Office,
including representations made by the applicant regarding
the significance of claims and terms. /d. The history also
limits the interpretation of terms by recording the exclusion
of any term definition disclaimed during the prosecution. Jd.
D. Markman Order Regarding Claim 1 of the °998
patent
In applying the aforementioned standards, the Court
concluded that:
1. “Two mold parts” refers to the mating halves
of the mold as a whole and not to individual
components that the halves may possess.
2. “Parting surface” refers to the faces of the two
mold parts that either touch or lie adjacent when
the mold parts are brought together. The faces of
the two mold parts must touch each other at some
point.
17a
Appendix C
3. “Cavity” refers to the hollow space that is
surrounded by a parting surface.
4. “Combining” refers to the act of bringing the
two mole halves into or joining the two mold
halves in a close union or whole by moving one
or both of them towards each other.
5. “Injecting plastic in a fluid state into a cavity
situated within the parting surface” refers to the
act of forcefully introducing plastic that is capable
of flowing into a hollow space surrounded by a
parting surface.
6. “Solidifying the injected plastic in the cavity,
thereby creating a plastic product” refers to the
act of changing the fluid plastic to a state where
the plastic has relative firmness, coherence of
particles, or persistence of form.
7. “Separating” in Element (d) refers to the act
of keeping apart or dividing the two mold halves
by moving one or both of them away from each
other.
8. “[T]o create a substantially enclosed guide
conduit” in Element (d) refers to the process
whereby the result is a substantially enclosed
guide conduit.
18a
Appendix C
9. The “substantially enclosed guide conduit”
refers to a tube or channel that is almost entirely
closed in from the outside environment, and that
carries materials from one place to another and
that helps to direct the materials’ progressive
motion.
10. The portion of the Element (d) language
stating that the “substantially enclosed guide
conduit having contours defined by the regions
of the parting surface and the internally
position[ed] cavity/ies that are exposed
subsequent to separation” refers to the
requirement that the outlines of the body or figure
cf the conduit be formed only from the regions of
the parting surfaces and cavity surfaces that are
revealed or uncovered after the “separating”
process so that they can be viewed by the eye.
11. The portion of the Element (d) language stating
that the “substantially enclosed guide conduit”
lead “in a direction substantially perpendicular to
[the] said predetermined direction” refers to the
requirement that the conduit lead in a direction
almost entirely perpendicular to the predetermined
direction that one or both of the mold parts were
moving toward the other during the process when
they were being brought together.
12. “Ejecting the plastic product into said guide
conduit” refers to the process of expelling or
otherwise driving the molded plastic product into
the conduit.
19a
Appendix C
13. “Guiding and transporting the ejected product
from between the mold parts through the guide
conduit” refers to the process of carrying or
directing of the product from the space between
the mold parts to the end or to an exit of the
conduit.
Markman Order at 29-30.
E. Defendants’ CD-94 Mold
KM manufactures and sells optical disc manufacturing
systems to companies which manufacture and distribute
optical discs such as CDs, DVDs, CD-R, CD Single, DVD
Mini, and a full range of optical business cards. KM’s
Statement of Uncontroverted Facts and Conclusions of Law
(“KM’s Statement of Facts”) §] 5. KM customers MC, Crest,
and Concord use the KM optical disc manufacturing system.
Id. § 8. The KM equipment includes an injection molding
machine equipped with a mold set (“CD-94 mold”) designed
to manufacture an optical disc. Jd. § 9; Crest’s Statement of
Uncontroverted Facts and Conclusions of Law (“Crest’s
Statement of Facts”) § 2. The CD-94 mold has a movable
mold half and a stationary mold half. Crest’s Statement of
Facts § 4; Turn-Key’s Statement of Genuine Issues of Material
Fact (“Turn-Key’s Statement of Genuine Issues)
4 5-6. The female mold part has a female cavity surface.
KM’s Statement of Facts § 13. Radially outside of the female
cavity surface is the mold ring. Jd. § 15. The female mold
part also contains a conical side which connects the face of a
female centering ring with the mold ring. /d. §j 16. In the
center of the female cavity surface is a sprue bushing
20a
Appendix C
including a sprue channel through which molten resin is
forced during the molding process. Jd. 4 17. The female
centering ring has four radial channels. The first radial
channel contains a mobile guide rail located near the top of
the female mold part. /d. § 18. The rail is actuated by an
external pneumatic cylinder and is attached to the cylinder’s
rod. /d. The second radial channel contains a second mobile
guide rail located near the bottom of the female mold part.
Id. 4 19. This rail is also actuated by an external pneumatic
cylinder and is attached to the cylinder’s rod. Jd. The third
radial channel contains a movable kicker plate which pushes
the molded disc along the movable guide rails into a discharge
chute. This kicker is actuated by an external pneumatic
cylinder and is attached to the cylinder’s rod. Jd. § 20.
The fourth radial channel is the discharge chute which
allows the disc to exit from the mold after the disc is formed.
Id. | 21. It is a permanent opening in the female mold
part and its shape does not change during the mold cycle.
Id.,; see Crest’s Statement of Facts § 26. At the exit of the
chute is an external rail upon which the disc travels after
discharge for further processing. KM’s Statement of Facts
q 22.
The male mold part contains a male cavity surface.
KM’s Statement of Facts § 23. Radially outside of the male
cavity surface is the stamper ring zone. The stamper is
supported by a stamper mirror. /d. § 24. In the center of the
male cavity surface is the face of the ejector sleeve assembly
and radially outside of the ejector sleeve is the guide bushing
and the stamper support bushing. Jd. §§ 25-26. During the
injection molding process, the male and female mold parts
are brought together and clamping force is applied. Resin is
2la
Appendix C
subsequently injected into the mold cavity and eventually
cools to form the disc. /d. § 28; Turn-Key’s Statement of
Genuine Issues 4] 16-18; Crest’s Statement of Facts 4 5. Once
the disc is hardened, the mold parts are separated with the
result that the disc is positioned approximately in the middle
of the separated mold parts. KM’s Statement of Facts {| 28.
The space created by the separation of the mold parts is
generally cylindrical in shape. Crest’s Statement of Facts
432. The mobile guide rails are subsequently advanced from
behind the conical side wall of the female mold part into the
space between the separated mold parts to hold the disc at
two points. KM’s Statement of Facts | 29. With the disc being
held by the mobile guide rails, operation of the sprue removal
device separates the sprue from the disc so as to form the
center hole of the disc. /d. Once the sprue is removed, the
disc is then pushed inio the discharge chute in the female
mold part by the movable kicker plate which is actuated from
behind the parting surface of the female mold part into the
space between the separated mold parts. /d.
Ill. LEGAL STANDARDS AND ANALYSIS
A. Legal Standards
Rule 56 of the Federal Rules of Civil Procedure provides
that a court shall grant a motion for summary judgment if
“the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show
that there is no genuine issue as to any material fact and that
the moving party is entitled to judgment as a matter of law.”
Fed. R. Civ. P. 56 (c) . Material facts are those that may affect
the outcome of the case. See Anderson vy. Liberty Lobby, Inc.,
22a
Appendix C
477 U.S. 242, 248 (1986). A dispute as to a material fact is
genuine if there is sufficient evidence for a reasonable jury
to return a verdict for the nonmoving party. /d.
The party moving for summary judgment bears the initial
burden of informing the district court the basis of the
summary judgment motion, and of demonstrating the absence
of a genuine issue of material fact for trial. See Celotex Corp.
v. Catrett, 477 U.S. 317, 323 (1986); Katz v. Children's Hosp.
of Orange County, 28 F.3d 1520, 1534 (9th Cir. 1994).
On an issue for which the nonmoving party has the burden
of proof at trial, the moving party need only point out
“that there is an absence of evidence to support the
nonmoving party’s case.” Celotex, 477 U.S. at 325. Once
this initial burden is satisfied, the non-moving party is
required to “go beyond the pleadings and by her own
affidavits, or by the depositions, answers to interrogatories,
and admissions on file, designate ‘specific facts’ showing
that there is a genuine issue for trial.” Celotex, 477 U.S. at
324 (internal quotations omitted); see Nilsson, Robbins,
Dalgarn, Berliner, Carson & Wurst v. Louisiana Hydrolec,
854 F.2d 1538, 1544 (9th Cir. 1988). Where the standard
of proof at trial is preponderance of the evidence, the
non-moving party’s evidence must be such that a
“fair-minded jury could return a verdict for the [non-moving
party] on the evidence presented.” Anderson, 477 U.S. at 252.
The determination of infringement is a two-step process.
First, the court must construe the asserted claims as a matter
of law to ascertain their meaning and scope. Dawn Equip.
Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1014 (Fed. Cir.
1998). Second, the claims as construed are compared to the
23a
Appendix C
allegedly infringing device. /d. To infringe a claim, each claim
limitation must be present in the accused product, either
literally or equivalently. Sofamor Danek Group, Inc. v.
DePuy-Motech, Inc., 74 F.3d 1216, 1220 (Fed. Cir. 1996).
Where the parties do not dispute any relevant facts regarding
the accused product, but disagree over possible claim
interpretation, the question of literal infringement collapses
into claim construction and is amenable to summary
judgment. Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1324
(Fed. Cir. 2002).
The doctrine of equivalents prevents an accused infringer
from avoiding liability for infringement by changing only
minor or insubstantial details of a claimed invention while
retaining the invention’s essential identity. Festo Carp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 2002 WL
1050479 * 8 (May 28, 2002). But actions by the patentee,
including claim amendments and arguments made before the
Patent Office, may give rise to prosecution history estoppel.
Id. Prosecution history estoppel precludes a patentee from
obtaining under the doctrine of equivalents coverage of
subject matter that has been relinquished during the
prosecution of its patent application. /d. Pursuant to the
Supreme Court’s recent Festo decision, prosecution history
estoppel does not necessarily completely bar the inventor
from asserting infringement against any equivalent to the
narrowed element. /d. * 11. Rather, though estoppel can bar
challenges to a wide range of equivalents, its reach requires
an examination of the subject matter surrendered by the
narrowing amendment. /d.
24a
Appendix C
B. Analysis
Because Claims 2, 5, and 6 depend from Claim 1 and
incorporate all of its limitations, Defendants focus upon Claim
1(d) in the instant motions for summary judgment. Specifically,
they contend that Crest’s CD-94 molds do not infringe the ’998
patent because they do not have a “guide conduit” meeting the
following criteria identified by this Court’s Markman order:
1) that the conduit be a “tube” or “channel” leading almost
entirely perpendicular to the direction that the mold parts move
apart, 2) that the “tube” or “channel” be brought into existence
by the moving apart of the two halves of the mold, 3) that the
contours of the conduit be entirely defined by parting surfaces
and cavity surfaces of the mold, and 4) that the conduit “guide”
the molded plastic parts out of the mold. “There is no structure
in Crest’s CD-94 molds that even comes close to fulfilling the
Court’s criteria for a ‘guide conduit.’” Crest’s Motion at 1.
Defendants argue that Turn-Key cannot invoke the doctrine of
equivalents to remedy this lack of the required guide conduit.
In opposition, Turn-Key argues that Defendants’ usage of
the CD-94 mold indeed includes every step and limitation of at
least Claim 1 of the ’998 patent and thus literally infringes the
’998 patent. In doing so, they contest each and every one of
Defendants’ above-mentioned arguments. However, Turn-Key
alternatively posits that fact questions exist as to whether
Defendants use an “equivalent” process, thereby precluding
summary judgment. Turn-Key’s Opposition to Ds’ Motions for
SJ at 25.
- 25a
Appendix C
1. Literal Infringement
It is unnecessary for the Court to address each and every
one of the parties’ arguments for purposes of the instant
motions for summary judgment. This is because Turn-Key’s
argument that the cylindrical space created by the separation
of the movable mold part and the stationary female mold
part constitutes the required “guide conduit” suffers from a
number of fatal flaws, even assuming that the space is a
“tube” or “channel” leading almost entirely perpendicular to
the direction that the mold parts move apart. Turn-Key’s
Opposition at 17; Crest’s Reply Brief at 5-8; KM’s Reply
Brief at 6-8.
Turn-Key argues that the “guide conduit” is a narrow, 8
millimeter channel whose contours include a crescent-shaped
exit port defined by the conical wall parting surface.
Turn-Key’s Opposition at 17. This exit port, in turn,
“communicates with the discharge chute” and “is the only
place where the channel of the [ ] mold is open to the outside
environment.” Jd. The evidence submitted including the
animations proffered by both Turn-Key and Defendants,
however, convinces the Court that the space identified by
Turn-Key as the “guide conduit” simply does not perform
any guiding function. That is, it does not “carry materials
from one place to another and [does not] help[ ] to direct the
materials’ progressive motion.” Markman Order at 15, 30.
It appears that three specific structures function to carry the
molded disc product from between the separated mold
parts and to direct the product’s progressive motion out of
the mold: 1) the mobile guide rails, 2) the kicker plate, and
3) the discharge chute. The guide rails hold the molded
26a
Appendix C
product by its edges in v-shaped grooves and the kicker plate
subsequently pushes the product into the discharge slot.
Exhibit 5 to Decl. of Robinson in Support of KM’s Motion
for SJ, Decl. of Hillenbrand §| 27. None of these structures,
however, can make up the required “guide conduit” for two
basic reasons.
First, they cannot satisfy this Court’s requirement that
the outlines of the body of the “guide conduit” be formed
only by the regions of the parting surfaces and cavity surfaces.
Markman Order at 18. The guide rails and kicker plate are
attached to rods protruding from the bottom of pneumatic
cylinders which are themselves attached to the exterior of
the female mold part. Exhibit 5 to Decl. of Robinson in
Support of KM’s Motion for SJ, Decl. of Hillenbrand § 10.
Both the guide rails and the kicker plate are retractable pieces
which remain behind the conical side wall of the female mold
part until after the “separating” process is finished and the
molded product is already situated in the middle of the
separated mold parts. /d. 27. Only then are the guide rails
“advanced” from behind the conical wall to hold the molded
product at two points. /d. In a similar vein, the kicker plate
is “actuated” from behind the conical wall into the space
between the separated mold parts in order to push the disc
into the discharge slot only after the sprue has already been
removed from the molded disc. /d. Clearly, the guide rails
and the kicker plate cannot constitute “parting surface”
because they remain behind the wall of the female moid part
during the “combining process” and as such, do not qualify
as “the faces of the two mold parts that either touch or lie
adjacent when the mold parts are brought together in the
27a
Appendix C
‘combining process.’”! Markman Order at 7. Nor can they
constitute “cavity surface” since this Court has defined that
phrase as “the hollow space that is surrounded by a parting
surface.” /d. at 9.? Under this definition, the cavity surfaces are
those surfaces of the cavity that ultimately touch the molten
plastic upon injection. However, both the guide rails and the
kicker plate clearly never actually touch the molten plastic upon
injection since they are in their retracted position during that
Stage of the process. Similarly, the discharge chute constitutes
neither “parting surface” nor “cavity surface” since it passes
1. Moreover, the guide rails and kicker plate cannot constitute
“parting surface” for an even more basic reason. In the Markman
Order, the Court noted that “though the mold halves can possess
component parts, ‘the mold comprises two parts’ language should
be interpreted as ‘referring to the mold halves of the mold as wholes,
and not to their individual components.” Markman Order at 6.
The guide rails and the kicker plate fall under the rubric of these
“individual components” and as such cannot be considered “mold
parts.” In addition, they therefore cannot be considered to be the
“faces” of the two mold parts that touch or lie adjacent during the
“combining process.” See Crest’s Reply Brief at 17; KM’s Reply
Brief at 15-17.
2. Because the Markman Order may have been unclear as to
the specific parameters of “cavity surface,” the Court here clarifies
that the phrase refers to the portion of the “parting surface” that forms
the contours of the “hollow space” in which the disc is actually
molded. The Court agrees with KM that this is the only meaning of
“cavity” that is consistent with other uses of this term elsewhere in
Claim 1 of the 998 patent including Claim 1(c) which requires
“(solidifying the injected plastic in the cavity.” KM Brief at 14;
KM’s Reply Brief at 6; see Phonometrics, Inc. v. Northern Telecom,
Inc., 133 F.3d 1459, 1465 (Fed. Cir. 1998) (“[a] word or phrase used
consistently throughout a claim should be interpretéd consistently”).
28a
Appendix C
through the side of the female mold part and is situated on a
plane different from that of the parting or cavity surfaces.
Turn-Key’s attempts to characterize the chute as an “internally
positioned cavity” fails, given this Court’s clarification of the
term “cavity” because the chute clearly has nothing to do with
and is not part of the molding cavity. KM’s Reply Brief at 6;
see Turn-Key’s Opposition at 19 n. 6.
Second, the guide rails, kicker plate, and discharge chute
cannot make up the required “‘guide conduit” for an independent
reason—they are not the “result of the process of bringing apart
the molds.” Markman Order at 14. This Court construed Claim
1(d) to require that “[t]he separation of the mold parts thus results
in something—the conduit—that was not there when the mold
parts were in the process of being brought together.” /d.
However, each one of these three structures clearly exists even
during the “combining process” when the mold parts are being
brought together. Both the guide rails and the kicker plate are
separate plastic parts that remain constant in shape throughout
each mold cycle but extend into the space between the mold
halves after the “separating” process has been completed.
Turn-Key argues that the movement of the rails into the space
is a “direct result” of the separation because “[w]ithout the
separation, [they] sit up against the adjacent parting surface of
the movable mold half not able to move any further into the
interior of the mold.” Turn-Key’s Opposition at 18. This
argument, however, shows that the separation of the mold parts
is, at best, a “precondition required to clear the way
for movement of the guide rails.” Crest’s Reply Brief at 15.
The Court agrees with Defendants that providing a precondition
for other actions to “create” a guide structure is not equivalent
to “creating” the guide conduit by the “[s]eparating [of] the two
29a
Appendix C
mold parts” as required by the ’998 patent. /d. This point is
accentuated by the fact that in the invention covered by the ’998
patent, the “result” of the two mold halves moving apart is a
tube that did not exist in any form prior to the “separation”
process. For similarly obvious reasons, the chute is not the
“result” of the separation of the mold parts because its form is
fixed in shape and is not altered by the “separating” process.
The fact that access to the chute is blocked until separation of
the mold parts does not qualify as “creating” the conduit, for it
merely entails the removal of an obstacle in front of the
preexisting chute.
Turn-Key makes additional arguments in an effort to avoid
summary judgment regarding literal non-infringement of the
"998 patent. Turn-Key argues that “the evidence that the guide
conduit of the [CD-94 mold] helps to direct the progressive
motion of the disc is overwhelming.” Turn-Key’s Opposition at
20. Turn-Key posits that
[t]he narrow channel restricts the disc’s progressive
motion [because] the disc cannot travel outside of
the narrow channel boundaries, and will remain
within those boundaries until it exits the conduit.
There is no room for the disc to flip or turn over
within the channel.... The guide conduit is so
narrow that the guide rails can only be brought into
the conduit in exact alignment with the direction in
which the channel leads... . The guide rails work
in concert with and within the constraints of the
conduit to direct the disc from between the mold
parts.
Id. at 20-21. This argument amounts to nothing more than
the proposition that the channel constitutes the required
30a
Appendix C
“guide conduit” because it provides the space in which other
structures, namely the guide rails, perform the guiding function.
Such a proposition, however, fails because the Court agrees with
Defendants that “if this were enough, then any substantially
enclosed mold from which parts are removed would have a
‘guide conduit’.” Crest’s Reply Brief at 11. To adopt such a
reading would effectively render Claim 1(d) meaningless.
In addition, such a proposition fails to comport with this Court’s
Markman Order. During the Markman hearing, Defendants
requested that the Court require the “guide conduit” be the sole
mechanism helping to direct the molded products’ progressive
motion but the Court rejected such a position. Markman Order
at 16n.5. Incontrast, Turn-Key requested that the Court construe
the “guide conduit” to be merely a “passageway through which
the molded product is guided and transported” and argued that
the construction of the “guide conduit” as helping to direct the
travel of the molded plastic product in Claim 1 rendered Claim
2 which specifically requires the orientation of the molded plastic
product to be directed by the contours of the “guide conduit”
superfluous. /d. at 14-15. The Court rejected both of Turn-Key’s
contentions and in doing so, noted that
Claim 1 is an independent claim which merely
introduces the guide conduit and Claim 2, a
dependent claim, describes the guide conduit’s role
in one of the steps of the patented process.
It is inconsistent for Turn-Key to concede that the
guide conduit plays a role in directing the molded
plastic product’s orientation on the one hand and
then to reject a definition of the conduit taking that
role into consideration on the other hand.
Id. at 15-16. Consequently, if the Markman Order is not a model
of clarity, the Court clarifies that though auxiliary parts such as
3la
Appendix C
guide rails can certainly be used with the “998 patent as a
supplement, the guide conduit itself nevertheless must help
to carry and direct the molded product’s progressive motion.
Turn-Key is essentially resurrecting its argument that the
“guide conduit” need only be a passageway; that argument
was buried by the Court in its Markman Order and remains
so here on Defendants’ instant motions for summary
judgment.
Turn-Key also argues that the crescent-shaped exit port
“determines the required direction of travel and orientation
of the disc within the guide conduit” because it “only allow(s]
the disc to pass if [the disc] is precisely aligned with the exit
opening.” Turn-Key’s Opposition at 21. There is, however,
no evidence to suggest that this opening acts as anything more
than the place to which the guide rzils and kicker plate
together push the disc through. To hold thet the opening
“guides” the disc would once again render Claim 1(d)
meaningless since any substantially enclosed mold with an
opening through which parts are removed would constitute
the required “guide conduit.”
Turn-Key notes that the contours of the space between
the mold parts “include rectangular openings that control the
position and configuration of the guide rails.” /d. Turn-Key
stresses that these rectangular openings “play a role in holding
the guide rails or stabilizing the guide rails when the guide
rails are moved into the guide conduit.” /d. Thus, “the
contours of the guide conduit cooperate with the guide rails
and control their orientation and geometry-helping to direct
the disc’s progressive motion.” /d. This argument too fails,
for the Court agrees with Crest that “[m]erely providing a
32a
Appendix C
location through which a guiding device can move is not the
same as performing the actual guiding function.” Crest’s
Reply Brief at 13.
In sum, Turn-Key’s efforts to muster up evidence that
the contours of the cylindrical space resulting from the
separating of the mold parts carries or helps to direct the
movement of the molded disc product fall far short.
Consequently, Defendants are entitled to summary judgment
regarding the literal non-infringement of the CD-94 mold.
2. The Doctrine of Equivalents
In their opening briefs, Defendants argued that Turn-Key
was barred from claiming infringement under the doctrine
of equivalents for a number of reasons. Crest’s Motion at
8-14; KM’s Motion at 18-22. First, they cited to the Federal
Circuit’s Festo decision for the proposition that an
amendment that narrows the scope of a claim for any reason
related to the statutory requirements for a patent will give
rise to prosecution history estoppel with respect to the
amended claim element. “When a claim amendment creates
prosecution history estoppel, no range of equivalents is
available for the amended claim element.” Crest’s Motion at
8-9: see KM’s Motion at 18. In an interrelated argument,
Defendants contended that even under pre-Festo case law,
prosecution history estoppel prevents Turn-Key from relying
upon the doctrine of equivalents. In Warner-Jenkinson Co,
Inc. v Hilton Davis Chemical Co., 520 U.S. 17, 30 n. 5
(1997), the Supreme Court noted that in a number of cases,
it had applied the principle of prosecution history estoppel
to amended claims where the original claim was rejected
iii | Ba SR a ae
33a
Appendix C
based on the lack of invention over prior patents. Here,
Defendants point out that Sorensen amended Claim 1(d)
because the Patent Office had determined that, without the
amendment, the “guide conduit” described in the ’998 patent
application would have been redundant with what was already —
in the prior art. Crest’s Motion at 10; see Decl. of Taillieu,
Exhibit A-3 at 2 (“Claims 1, 2, 3, 5/1, 5/2, 5/3, 6 are rejected
under 35 U.S.C. § 103 as being unpatentable over Smolenski
alone or in view of Tait”); id., Exhibit A-7 at 2 (stating
that “[a]pplicant has not pointed out how his invention
differs from the prior art ... in an unobvious manner... .
The conduit of the prior art is . . . ‘substantially defined’ by
the opened mold parting surfaces”). Therefore, Defendants
argue that “classic prosecution history estoppel as defined
by the Supreme Court bars the °998 patent from
encompassing injection molds having ‘guide conduits’ that
are not completely defined by the mold’s parting surfaces
and cavity surfaces.” Crest’s Motion at 10.
Though the merits of Defendants’ Festo and Warner-
Jenkinson argument is somewhat dampened by the Supreme
Court’s recent decision in Festo, the Court agrees that
Turn-Key is prevented from claiming infringement against a
“ouide conduit” that is not completely defined by parting
and cavity surfaces. After granting certiorari in Festo, the
Supreme Court disagreed with the Federal Circuit’s holding
that estoppel necessarily completely bars an inventor from
asserting infringement against any equivalents to the
narrowed element. Rather, a determination of the reach of
the doctrine of estoppel requires an examination of the subject
matter surrendered by the narrowing amendment. Festo,
2002 WL 1050479 * 11. In the Markman Order, the Court
34a
Appendix C
noted that the prosecution history in the instant case shows
that Claim 1(d) was amended from “contours of said conduit,
substantially being defined by regions of the parting surface
and the internally positioned cavity/ies, which are exposed
subsequent to separation” to “a substantially enclosed guide
conduit having contours defined by the regions of the parting
surface and the internally positioned cavity/ies that are
exposed subsequent to separation and leading in a direction
substantially perpendicular to said predetermined direction.”
Markman Order at 18. The Court rejected Turn-Key’s
argument that the amendment broadened, rather than
narrowed, the claim language with respect to the contours of
the guide conduit and instead found that though the claim
language had previously required that the contours of the
conduit be mostly determined by the regions of the parting
and cavity surfaces, the final language requires that the
contours be determined by those regions. /d. at 19. Because
the purpose of applying estoppel is to hold the inventor to
representations made during the application process and to
the inferences that may reasonably be drawn from the
amendment, the Court finds that Sorensen is deemed to have
conceded that the patent does not extend as far as the original
claim—in other words, he cannot now claim infringement
against an invention that includes contours not defined by
parting and cavity surfaces. This is especially so, given that
a patentee bears the burden of showing that an amendment
does not surrender the particular equivalent in question.
Festo, 2002 WL 1050479 * 12.
In their briefs, Defendants also pointed out that the scope
of equivalency here is limited by statements in the
specification of the °998 patent where Sorenson noted the
35a
Appendix C
deficiencies and disadvantages of the prior art. In Dawn
Equipment, 140 F.3d at 1009, the Federal Circuit emphasized
that the Background of the Invention section of the '282
patent at issue described the problems with prior art
“multi-holed pinned height adjustment” mechanisms.
Id. at 1016-17. In so doing, the court stated that
The patent teaches that such mechanisms are
time-consuming to adjust and are prone to
misadjustment by inserting the pin in the
wrong holes, and furthermore the loose pins in
such mechanisms are easily lost. [citation
omitted]. Kentucky Farms’ multiple-hole, pinned
height-adjustment mechanism is such a mechanism
and shares these same problems. In contrast, the ’282
patent teaches that the mechanism provided by the
patented invention is directed at solving these
problems. [citation omitted]. These statements in the
patent alone strongly suggest, if not mandate,
judgment in Kentucky Farms’ favor. [citation
omitted].
Id. Defendants argue that the ’998 patent includes similar, if
not stronger, criticisms of prior art features—including the
use of mobile guide rails such as those used in the CD-94
mold. In particular, they point to the following passages:
Heretofore controlled ejection of injection molded
plastic products have employed complicated
mobile guide rails or guide pins, which wear
down and reduce production stability. Other
methods have employed stationary elements such
36a
Appendix C
as pins or blades which may be received in
recesses of the confronting mold part in the
closure position. But such pins or blades are quite
vulnerable, particularly in case a molded product
gets caught between the mold part during the
closing action. Also the recesses are quite difficult
to clean in case the injected plastic material by
accident flashes and finds its way into the recesses.
* * *
Among the objects of the invention are to facilitate
controlled ejection of the injection molded
product in relation to its orientation, speed of
injection, and/or sterility basically without the
need of auxiliary moving parts or vulnerable
elements such as pins or blades.
Crest’s Motion at 12 (emphases in brief); see ’998 patent at
Col. 1 11. 12-23; id. at Co. 1 11. 27-30. Defendants conclude
that the aforementioned statements disclaim exactly what the
CD-94 mold does:
[I]t uses guide rails that are recessed in the
stationary mold part when the mold is in the
closure position. Moreover, not only does the
CD-94 mold use these criticized devices, it
requires them to guide molded discs out of the
mold.
Crest’s Motion at 12-13. Thus, “[l]ike the patentees in Dawn
Equipment . . . Turn-Key cannot reclaim through the doctrine
of equivalents what it has so clearly criticized.” /d
37a
Appendix C
In its opposition brief, Turn-Key concedes that Fesfo and
the principle of prosecution history estoppel would apply if it
were arguing that Defendants’ CD-94 mold included other
contours not defined by parting surface and cavity surface.
Turn-Key’s Opposition at 25 (“Prosecution history estoppel and
the Festo decision would only apply if Turn-Key was arguing
that Defendants’ conduit included other contours not defined
by parting surface and cavity surface.’’). In light of the clear
precedents of Festo, Warner- Jenkinson, and Dawn Equipment,
the Court finds that Turn-Key really cannot do anything but
make such a concession. Turn-Key nevertheless argues that it
is not barred, as a matter of law, from showing equivalents
because “it would not be arguing that other contours not defined
by parting surface and cavity surface constitute the required
‘guide conduit.’”’ Tumn-Key’s opposition at 25. Instead Turn-Key
states that it “would show that by using additional structures or
auxiliary parts within the conduit having contours defined only
by parting surfaces and cavity surfaces, Defendants perform the
equivalent step of creating a guide conduit, and the °998
prosecution history does not preclude such an analysis as a matter
of law.” Jd. However, the Court agrees with Defendants that
“{ajt this stage ... Tur-Key needs to do better than simply
allege that it ‘would’ show. In order to avoid summary judgment,
Turn-Key cannot merely rely on allegations, it must produce
evidence.” Crest’s Reply at 20. Turn-Key merely reiterates its
argument that the usage of additional structures to “guide” and
“direct” the movement of the molded product within the conduit
satisfies Claim 1(d) of the ’998 patent even if the contours of
the conduit themselves never actually perform these functions.
The Court once again rejects this position on the grounds that it
is too broad of a reading of the ’998 patent and this Court’s
Markman order. y
38a
Appendix C
In short, Turn-Key’s mere conclusory statements of what
it would show cannot defeat Defendants’ motion for summary
judgment regarding the doctrine of equivalents.’
IV. CONCLUSION
Based on the foregoing, the Court GRANTS Defendants’
motions for summary judgment.
IT IS SO ORDERED.
Dated: June 4, 2002
s/ Lourdes G. Baird
LOURDES G. BAIRD
United States District Judge
3. Because the Court finds Festo, Warner-Jenkinson, and Dawn
Equipment to be sufficient for purposes of barring Turn-Key from
using the doctrine of equivalents, the Court need not address
Defendants’ argument that the recent Federal Circuit case of Johnson
& Johnson Assocs. Inc. v. R.E. Service, Co., No. 99-1076, 2002 WL
466547 (Fed. Cir. March 28, 2002) (en banc) (per curiam) also
precludes Turn-Key from “recapturing” auxiliary parts such as the
guide rails and the kicker plate through the doctrine of equivalents.
Crest’s Reply Brief at 18-19; KM’s Reply Brief at 19-20. In addition,
the Court also declines to address Crest’s argument that the CD-94
mold does not meet the “insubstantial differences” standard for
infringement under the doctrine of equivalents even in the absence
of estoppels and disclaimers, Crest’s Motion at 13-14, and KM’s
additional argument that Turn-Key is also barred from using the
doctrine of equivalents under the “‘all elements rule.” KM’s Motion
at 20.
39a
APPENDIX D — ORDER CONSTRUING CLAIMS OF
U.S. PATENT 4,422,998 OF THE UNITED STATES
DISTRICT COURT FOR THE CENTRAL DISTRICT
OF CALIFORNIA DATED JANUARY 8, 2002
AND FILED JANUARY 18, 2002
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CV 01-4158 LGB (MCx)
IN RE: TURN-KEY-TECH MATTERS AND
ALL CONSOLIDATED ACTIONS,
This Document Relates to: All Actions
ORDER CONSTRUING CLAIMS OF
U.S. PATENT 4,422,998
(“ ‘THE 998 PATENT”)
I. INTRODUCTION
In these consolidated cases, Turn-Key-Tech (“Turn-Key’”)
accuses National Film Laboratories, Inc. d.b.a. Crest National
Optical Media (“Crest”), Concord Disc Manufacturing
Corporation (“Concord”), Music City Optical Media Inc.,
(“MC”), and Hollywood Records of patent infringement.
Specifically, it alleges that these Defendants have been practicing
a process claimed in U.S. Patent 4,422,998 (“‘the 998 patent”’)
which was issued to Jens Ole Sorensen on December 27, 1983.’
Turn-Key brings the instant actions as the exclusive licensee of
1. Turn-Key also accuses Defendants of contributory
infringement and have also named certain Doe Defendants in their
(Cont’d)
40a
Appendix D
actions as the exclusive licensee of the *998 patent which
expires on April 22, 2002. This matter is before the Court
for purposes of the interpretation of disputed claims of the
998 patent.
Il. THE 7998 PATENT
For purposes of the Court’s claim instruction endeavor
here, it suffices to note that Turn-Key accuses Defendants of
violating the ‘998 patent. The 998 patent entitled “Controlled
Ejection Method for Injection Molding” was issued to
Sorensen on December 27, 1983 and relates to the field
of injection molding plastics. Injection molding is a
manufacturing process used to make plastic products by
injecting fluid plastic into a mold cavity and allowing the
plastic to solidify into the general shape of the mold cavity
to produce the plastic part. Once the product is removed from
the mold, the process continuously repeats.
(Cont’d)
complaints. Defendants, in turn, have filed counter-claims for
- declaratory judgment of non-infringement and invalidity and
unenforceability of the °998 patent. Krauss-Maffei Corporation
(“KM”) has also brought an action against Turn-Key for declaratory
judgment of non-infringement, invalidity and unenforceability of the
’998 patent, common law tortious interference with existing business
relationships, common law trade disparagement and injurious
falsehood, and unfair competition. These claims stem from KM’s
licensing of certain patents relating to an optical disc manufacturing
process and its sale of manufacturing systems utilizing the licensed
technology because Turn-Key has alleged that the manufacture of
optical discs using KM’s equipment infringes the °998 patent.
Turn-Key answered KM’s complaint and a brought counterclaims
for contributory infringement and active inducement of infringement
vis-a-vis KM.
4la
Appendix D
Sorensen stated that the method protected by the °998
patent constituted an improvement from prior art in terms of
the orientation, speed of injection, and the sterility involved.
’998 patent at Col. 1. 1]. 27-30. The method, moreover, could
be performed basically without the need of auxiliary moving
parts or vulnerable stationary elements such as pins and
blades. Jd. at ll. 30-34. Claims 1, 2, 5, and 6 of the °998
patent are specifically at issue. Claim | is the only
independent claim in the ’998 patent.
Ill. CLAIM INTERPRETATION LAW
In Markman vy. Westview Instruments Inc., 517 U.S. 370
(1996), the Supreme Court held that the interpretation of a
patent claim—the portion of the patent document that defines
the scope of the patentee’s rights—is a matter of law
exclusively within the scope of the court and is not a factual
question for the jury. Jd. at 372. The Markman decision
suggested that a trial court could consider various types of
evidence when interpreting a patent, including expert
testimony. See id. at 388-90. Shortly after the Supreme Court
handed down Markman, the Federal Circuit, in Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996),
expanded on the Court’s dicta concerning evidence available
to a trial court in interpreting patent claims. See id. at 1581-
83. The Federal Circuit held that if intrinsic evidence can,
by itself, resolve ambiguity in a patent term, then a court
may not rely on extrinsic evidence, such as expert testimony,
to construe the term. See id. at 1583. A trial court may only
use extrinsic evidence when intrinsic evidence fails to
illuminate the meaning of the disputed claim. /d. Moreover,
42a
Appendix D
extrinsic evidence cannot broaden the reach of a claim or
contradict explicit language. /d. The policy rationale
supporting this evidentiary limitation is that prospective
patentees must have access to public records concerning the
patent to “design around” a prior art. /d. If expert testimony
or other extrinsic evidence were permitted to alter the record,
then this public benefit would be frustrated. Jd. Thus, a court
can only examine extrinsic evidence if the evidence does
not contradict the claim language, the specification, or the
prosecution history but instead supplements it. /d. at 1584-85.
The Federal Circuit detailed a hierarchy of specific types
of evidence that a court may consider. Thus, when interpreting
a patent, a trial court must first look at the language of the
claim itself. See id. at 1582. Courts should typically construe
terms by their common, customary meaning, but a patentee
is allowed to define her own terms in the specification section
of the patent. See id. Therefore, courts must always review
the specification, which, when setting forth an embodiment
of the invention, frequently provides explicit definitions of
the claim terms. See id. The language in the specification is
dispositive, and “it is the single best guide to the meaning of
the disputed term.” Jd. However, a patent’s claims are not
limited to the specification’s best mode, preferred
embodiment, specific objects, or illustrative examples, and
it is erroneous to read limitations from the specification into
the claims. See Laitram Corp. v. Cambridge Wire Cloth Co.,
863 F.2d 855, 865 (Fed. Cir. 1988) (“References to a preferred
embodiment, such as those often present in a specification,
are not claim limitations.”’); Rolls-Royce Ltd. v. GTE Valeron
Corp., 800 F.2d 1101, 1108 (Fed. Cir. 1987) (“Reference to
an object does not constitute in itself a limitation in the
claims.”’). In addition, a court may consider the prosecution
43a
Appendix D
history of the patent as evidence of meaning. /d. This history
contains the complete record of all the filings and
examinations before the Patent and Trademark Office,
including representations made by the applicant regarding
the significance of claims and terms. /d. The history also
limits the interpretation of terms by recording the exclusion
of any term definition disclaimed during the prosecution. /d.
IV. CLAIM INTERPRETATION AND ANALYSIS
The parties have agreed to construe the language
contained in the preamble of Claim 1, “[a] method of cyclic
injection molding of plastic,” as requiring “a repeating cycle
involving the introduction of plastic under pressure into a
mold to form plastic objects.” Corrected Joint Claim
Construction Statement (“Joint Statement”) at 2. In addition,
they also have agreed to construe language contained in
Claim 3, “[a] method according to claim 1, wherein step (a)
comprises the step of: (g) Combining the two mold parts in
a horizontal direction,” as requiring that “one or both of the
two mold parts moves towards the other in a direction parallel
to the plane of the earth’s surface pursuant to the parties’
respective constructions of step (a) of Claim 1.” /d. at 2-3.
The remaining language of Claims 1, 2, 5, and 6 in the °998
patent is disputed.
44a
Appendix D
A. Claim 1 of ’998 Patent
1. The Preamble
The preamble of Claim | of the ‘998 patent states that
the invention comprises “[a] method of cyclic injection
molding of plastic where the mold comprises two parts which
are separated by a parting surface and at least one cavity
situated internally to the boundaries of the parting surface,
and wherein each production cycle comprises the steps
of....” The parties disagree on the interpretation of the
following three terms/phrases contained in the preamble:
a. “Two mold parts”
Turn-Key argues that this limitation must be construed
to require that the two mold parts are a first mold part and a
second mold part including all of their respective
components. It asserts that these components can include
mold plates, cavity inserts, alignment components, screws,
heating and cooling assemblies, ejector assemblies, pins,
blades, guide assemblies, etc. Pl’s Opening Brief at 5.
Conversely, Defendants argue that the two mold parts referred
to are “not just any parts, but the two mating halves of an
injection mold” and that though the mold “may have other
components .. . these should not be confused with the two
mold halves to which this claim term is intended to refer.”
Crest’s Responsive Brief at 11. The parties thus appear to
agree that the phrase “mold comprises two parts” signifies
the mating halves of a mold and that the mold parts
themselves may contain individual components. Crest’s
Responsive Brief at 11; Pl’s Opening Brief at 5. The dispute
45a
Appendix D
is whether the phrase refers to the mold halves as wholes or
whether it includes specific auxiliary parts.
The Court agrees with Defendants that though the mold
halves can possess component parts, the “mold comprises
two parts” language should be interpreted as “referring to
the two mating halves of the mold as wholes, and not to their
individual components.” Crest’s Responsive Brief at 11. This
interpretation comports with the ordinary and customary
meaning of the phrase which solely refers to “two parts” and
the specification does not show that Sorenson, as patentee,
intended to define the phrase in his own terms rather than by
the terms’ common, customary meaning. See Vitronics, 90
F.3d at 1584-85.
b. “Parting surface”
Turn-Key argues that this limitation must be construed
as referring to the surfaces of the two mold parts between
the two mold parts that either touch or lie adjacent to the
other mold part before the mold parts separate, excluding
the product molding cavity(ies) that is situated internally to
the parting surfaces. In so arguing, Turn-Key specifically
objects to the “additional limitations” of Defendants’
interpretation. Pl’s Opening Brief at 7-8. Defendants argue
that a parting surface consists of those faces of each of the
two mold parts that touch each other when the mold is closed
and that oppose each other when the mold is open. They,
however, note that portions of these faces may be slightly
relieved so that they do not touch each other when the mold
is closed but face each other in close proximity and with no
intervening structure. Crest’s Responsive Brief at 11-13;
KM, MC & Concord’s Brief at 5. The dispute over the
interpretation of “parting surface” thus centers around (1)
46a
Appendix D
whether the faces of the mold parts must touch each other,
(2) whether the faces must oppose each other when the mold
is “open,” and whether (3) there can be no intervening
structure.”
The Court construes “parting surface” to signify the faces
of the two mold parts that either touch or lie adjacent when
the mold parts are brought together in the “combining”
process described in Element (a). See supra at Section IV.A.2.
In applying the ordinary and customary meaning of
“combining” as the act of bringing into or joining in a close
union or whole, the Court finds that not all of the faces of
the two mold parts are required to actually touch each other;
they need to be only in some proximity to each other. Random
House Webster’s College Dictionary at 261. Having said that,
however, the Court notes that there must be at least some
point at which the faces of the two mold parts touch other,
thus preventing the fluid from leaking out of the cavity before
it is molded into the plastic product. The Court declines to
construe the mold parts as “opposing” each other when they
are being kept apart in the “separating” process described in
the first portion of Element (d) on the grounds that it adds an
extra limitation not present in the claim language. See supra
Section IV.A.5.a.* In addition, the Court further declines to
construe this claim as requiring an absence of an intervening
structure on the grounds that it adds an extra limitation not
present in the claim language.
2. Here, Defendants utilize the term “open” to refer to the position
of the mold parts during the “separating” process described in Element
(b). See 1V.A.3.
3. The Court agrees with Turn-Key that with a “clam” model mold,
the parting surfaces would not “oppose” each other like paired opposites
upon opening their book-like hinges. Pl’s Reply Brief at 19.
47a
Appendix D
ec. “Cavity”
Turn-Key argues that the limitation “cavity situated
internally to the boundaries of the parting surface” must be
construed as referring to “‘at least one product molding cavity
that is surrounded by the parting surface.” Pl’s Opening Brief
at 8. Defendants, conversely, assert that the “cavity” is a space
that is surrounded by a parting surface in all directions
(i.e., all directions in the plane of that parting surface). In so
arguing, they specifically object to Turn-Key’s inclusion of
the cavity walls of the mold which form the cavity into the
definition of “cavity.” KM, MC & Concord’s Brief at 5;
Pl’s Opening Brief at 8. Turn-Key, by contrast, objects to
Defendants’ description of the cavity as being surrounded in
the “plane of that parting surface on the grounds that this
wording leads to the “erroneous conclusion that the parting
surface is only in one plane.” Pl’s Opening Brief at 8.
The Court finds that Defendants’ briefs do not make any
argument about the cavity being surrounded in the “plane of
that parting surface” and as such, considers this interpretation
to be waived. Consequently, the only dispute concerns
whether the cavity walls should be included in the definition
of the term “cavity.”
The Court construes “cavity” according to its ordinary
and customary meaning, thus signifying a hollow space,
Random House Webster’s College Dictionary at 209,
and specifically construes “cavity” within the context of the
’998 patent as a hollow space that is surrounded by a parting
surface. In keeping with this interpretation, the Court declines
to construe the “cavity” to include the cavity walls which
actually form the hollow space. Nothing in the specification
48a
Appendix D
suggests that Sorenson, as patentee, intended to define
“cavity” in his own terms rather than by its ordinary,
customary meaning.
2. Element (a)
Element (a) states that the invention requires
“{cJombining the two mold parts by moving, in a
predetermined direction, the mold parts in relation to each
other.” Turn-Key argues that this limitation must be construed
to require “combining the two mold parts by moving one or
both of the mold parts in a direction toward the other.”
Pl’s Opening Brief at 8-9. In so arguing, Turn-Key states that
“combining” has no special or uncommon meaning and
should not be substituted with language that may change the
meaning and scope of Claim 1. /d. Defendants argue that the
limitation should be construed as “[cjlosing the mold by
moving the two mold parts” and that “[i]n closing the mold,
one or more of the two mold parts is moved towards the
other mold part along a straight path running between the
two parts.” Joint Statement at 25. The dispute over this
portion of the claim language thus centers around whether
“{c]losing” should be substituted for “[c]ombining” and
whether the movement of the mold parts must be along a
straight path.
The Court finds “combining,” as previously mentioned,
to be utilized in its ordinary and customary sense here, thus
signifying the act of bringing into or joining 1n a close union
or whole, and that it would therefore be inappropriate to
substitute other terms to further define it. In particular, the
Court declines to substitute “closing” because it represents
49a
Appendix D
an extra limitation that is not present in the claim’s language."
The Court also declines to adopt the construction that the
mold parts must move along a straight path on the grounds
that it adds an extra limitation not present in the patent’s
language. For instance, in a “clam” model mold, the two mold
parts would not move ina straight path but rather in an almost
half-circular motion. Thus, the Court finds that Element (a)
only requires that the moveménm ofthe mold parts towards
each other occur in a predetermined direction, as stated by
the claim language.
3. Element (b)
Element (b) states that the invention requires “Injecting
plastic in a fluid state into a cavity situated within the parting
surface.” Turn-Key’s construction follows the plain language
of the claim on the grounds that no rewording is necessary
to interpret the language since the inventor’s choice of words
is clear. Pl’s Opening Brief at 9. Defendants argue that this
limitation should be construed as requiring that “[p]lastic
that is sufficiently liquid to flow is forcefully introduced into
the mold cavity.” Joint Statement at 26.
The dictionary defines “fluid” to be a “substance, as a
liquid or gas, that is capable of flowing and that changes its
shape at a steady rate when acted upon by a force.” Random
House Webster’s College Dictionary 500. Applying this
4. The Court has already noted that not all of the faces of the
mold parts (i.e. parting surfaces) have to touch each other during the
“combining” process but only that they touch at some point to ensure
that no liquid plastic leaks out before the plastic is converted into a
molded product. “Closing,” on the other hand, signifies the act of
stopping or obstructing a// gaps. Random House Webster’s College
Dictionary at 247.
S0a
Appendix D
definition to the limitation “plastic in a fluid state,” the Court
reads the limitation to mean plastic “that is capable of
flowing.” In addition, the Court finds that the parties’
agreement to construe the limitation, “ [a] method of cyclic
injection molding of plastic,” contained in the preamble of
Claim | as “ta repeating cycle involving the introduction of
plastic under pressure into a mold to form plastic objects,”
Joint Statement at 2, binds them to a construction of
“injecting” in the Element (b) limitation as the process of
“forcefully introducing.” Defendants and Turn-Key have
agreed to define “injection” as “the introduction of plastic
under pressure” and the Court finds that the essence of “under
pressure” is equally expressed by the ordinary and customary
meaning of the term “forcefully.”
4. Element (c)
Element (c) states that the invention requires “Solidifying
the injected plastic in the cavity, thereby creating a plastic
product.” Turn-Key’s construction follows the plain language
of the claim on the grounds that there are no additional words
of special or uncommon meaning that need to be additionally
defined. Joint Statement at 7; Pl’s Opening Brief at 9.
Defendants argue that the limitation should be construed as
requiring that “The liquid plastic hardens in the mold cavity
to create a hardened plastic product. The cavity imparts a
predetermined shape to the liquid plastic and thus to the
molded plastic product.” Joint Statement at 27. Turn-Key
objects to Defendants’ usage of the term “harden” on the
grounds that it “unnecessarily limits the claim because the
hardness of the product 1s a function of the polymer used
and certain materials (e.g. rubbery plastic) remain quite soft
after they solidify.” Pl’s Opening Brief at 9.
Sla
Appendix D
The dictionary defines “solidify” as: 1. To make solid;
make into a hard or compact mass; change from a liquid or
gaseous to a solid form. 2. To unite firmly or consolidate.
3. To form into crystals; to make crystallized. 4. To become
solid. 5. To form into crystals; become crystallized. Random
House Webster’s College Dictionary at 1229. In light of the
previous limitation that the plastic, as first injected, is in a
state where it is capable of flowing, the Court finds that the
ordinary and customary meaning of “solidify” within the
context of the ’998 patent is to “change from a liquid or
gaseous to a solid form.” The Court construes the ordinary
and customary meaning of “solid,” in turn, as having relative
firmness, coherence of particles, or persistence of form.
Random House Webster’s College Dictionary at 1229.
In doing so the Court agrees that “harden” adds a limitation
not present in the claim language.
5. Element (d)
a. The first portion
The first portion of Element (d) requires “[s]eparating
the two mold parts by moving, in a direction opposite to the
predetermined direction, said mold parts in relation to each
other to create a substantially enclosed guide conduit.” Joint
Statement at 7.
52a
Appendix D
i. “Separating the two mold parts by
moving, in a direction opposite to the
predetermined direction, said mold
parts in relation to each other’
Turn-Key argues that this portion must be construed as
“Separating the two mold parts by moving one or both of the
mold parts away from the other, in the opposite direction to
the combining direction.” Joint Statement at 8. Defendants
argue that this limitation must be construed as “[o]pening
the mold by moving one or both of the two mold parts away
from the other along the same path along which one or both
of the mold parts were moved in closing the mold.” Joint
Statement at 28.
The Court finds “separating” to be utilized in its ordinary
and customary sense here, thus signifying the act of keeping
apart or dividing, Random House Webster’s College
Dictionary at 1179, and that it would be inappropriate to
substitute other terms to further define it. In particular, the
Court declines to substitute “opening” because it represents
an added limitation not present in the claim language.
The Court further declines to adopt the construction of “along
the same path along which one or both of the mold parts
were moved in closing the mold” on the grounds that, it does
not convey the ordinary and customary meaning of “in a
direction opposite to the predetermined direction” and that
it adds an extra limitation which does not appear in the claim
language itself. See supra Section IV.A.2.
53a
Appendix D
ii. “[T]o create a substantially enclosed
guide conduit”
Turn-Key argues that this part of Element (d) must be
construed to require that the process described above “form{s]
a substantially enclosed guide conduit by the configuration
or shaping of the mold parts.” Joint Statement at 8.
Defendants argue that this portion of Element (d) requires
that “the motion of the two mold parts brings into existence
a substantially enclosed guide conduit, which does not exist
when the mold is closed.” Joint Statement at 29; Crest’s
Responsive Brief at 11; KM, MC, & Concord’s Brief at 6.
The Court construes this portion of the claim language to
signify that the result of the process of bringing apart
the molds in the fashion described in the previously
discussed claim language is a substantially enclosed conduit.
The separation of the mold parts thus results in something—
the conduit-that was not there when the mold parts were in
the process of being brought together.
Turn-Key argues that the phrase “substantially enclosed
guide conduit” must be construed as “a passageway through
which the molded product is guided and transported that is
formed within and substantially enclosed by the surfaces of
the two mold parts.” Joint Statement at 9. Defendants argue
that this phrase must be construed as “a duct or channel for
conveying material” and that the insertion of the term “guide”
means that the conduit “directs the motion of material that
passes through it, including molded plastic products as set
forth below, thus determining, at least in part, the path of
such material.” Joint Statement at 29.
S4a
Appendix D
The Court construes “conduit” in its ordinary and
customary sense, thus signifying a tube or channel for
carrying or taking materials from one place to another.
Random House Webster’s College Dictionary at 275.
In addition, the Court construes “guide” in its ordinary
meaning, thus signifying something that helps to direct an
object’s travel or its progressive motion. /d. at 577. The Court
consequently construes the “guide conduit” to be a tube or
channel that carries materials from one place to another
and that helps to direct the materials’ progressive motion.
The Court rejects Turn-Key’s argument that the construction
of the “guide conduit” as helping to direct the travel of the
molded plastic product here in Claim 1 rendérs Claim 2 which
specifically requires the orientation of the molded plastic
product to be directed by the contours of the “guide conduit”
superfluous. Claim | is an independent claim which merely
introduces the guide conduit and Claim 2, a dependent claim,
describes the guide conduit’s role in one of the steps of the
patented process. It is inconsistent for Turn-Key to concede
that the guide conduit plays a role in directing the molded
plastic product’s orientation on the one hand and then to reject
a definition of the conduit taking that role into consideration
on the other hand.°
5. During oral argument, counsel for Crest requested that the
Court construe “guide conduit” to be a tube or channel that carries
materials from one place to another and that solely helps to direct
the materials’ progressive motion. The Court, however, rejects this
position because it is ultimately based upon Defendants’ mistaken
belief that the ’998 patent cannot be used with the auxiliary parts
that Sorensen criticized in the abstract and Objects of the Invention
sections of his patent. This position misreads Sorensen’s criticism of
(Cont'd)
55a
Appendix D
Turn-Key argues that “substantially enclosed” must be
construed to mean that the conduit is “almost entirely
enclosed or non-open from the outside environment along
its length.” Joint Statement at 10; P1’s Opening Brief at
11-12. Defendants argue that “‘substantial!y enclosed” must
be construed to mean that the conduit has “no significant
openings except for an inlet and outlet.” Joint Statement at
29: Crest’s Responsive Brief at 10; KM, MC, & Concord’s
Brief at 6-7. The Court construes the phrase “substantially
enclosed” according to its ordinary and customary meaning,
thus signifying a conduit that is almost entirely closed in
from the outside environment. The Court declines to construe
the phrase as requiring an inlet and an outlet on the grounds
that it adds an extra limitation present in neither the
claim language nor in the essence of the term “conduit.”
See Random House Webster’s College Dictionary at 275.
(Cont’d)
the parts and has already been rejected by the Court. See supra Section
IV.A.1.a; see also Rolls-Royce, 800 F.2d at 1108 (“Reference to an
object does not constitute in itself a limitation in the claims.”).
The case cited by Crest’s counsel during oral argument, O./. Corp. v.
Tekmar Co. Inc., 115 F.3d 1576 (Fed. Cir. 1997), does not sway the
Court to the contrary because there, the Federal Circuit found that
the written description in the patent “expressly distinguishes over
prior art passages by stating that those passages are generally smooth-
walled.” /d. at 1581. Here in contrast, the abstract and objects section
of the 998 patent does not expressly distinguish Sorensen’s invention
over prior art by stating that auxiliary moving parts cannot be used
but only that they need not be used. Though Crest’s counsel argues
that all three preferred embodiments in the specification show the
guide conduit as being the sole mechanism that directs the movement
of the molded product, the Court once again notes that it is the claim
which measures the invention, not the specification.
See SRI, 775 F.2d at 1121.
56a
Appendix D
Though it is true that the drawings of the preferred
embodiments depict two openings, it is the claim which
measures the invention, not the specification. See SR/
International vy. Matsushita Electric Corp., 775 F.2d 1107,
1121 (Fed. Cir. 1985). Thus, the Court focuses on the claim’s
language. The Court agrees with Turn-Key that a conduit, in
its ordinary sense, need not possess two major openings.°
Taking into account the specification, the Court notes that
Defendants’ contention that the inlet is necessary to allow
for the introduction of air to transport the product, KM, MC,
& Concord’s Brief at 6, is belied by the first and second
preferred embodiments which do not use a stream of air.
b. The second portion of Element (d)
The second portion of Element (d) of the invention
requires a substantially enclosed guide conduit “having
contours defined by the regions of the parting surface and
the internally positional cavity/ies that are exposed
subsequent to separation.” Turn-Key argues that this portion
of Element (d) requires that the conduit, “at minimum, has
contours substantially defined by regions of the parting
surface and internally positioned cavity/ies that are exposed
to the void within the mold after the mold parts separate.”
Joint Statement at 11; Pl’s opening Brief at 12-14. Defendants
argue that this portion of Element (d) must be construed as
requiring all internal surfaces of the guide conduit to be
6. For example, a thermometer is described as a sealed glass
tube which contains a column of liquid, as mercury, that expands
and contracts with temperature changes. See Random House
Webster’s College Dictionary at 1336. Ona basic level, a thermometer
is thus a “conduit” which carries liquid from one place to another.
S7a
Appendix D
formed only by areas of the parting surfaces and of the mold
cavity. Crest’s Responsive Brief at 13-14; KM, MC &
Concord’s Brief at 7-9.
The Court construes “contours” according to its ordinary
and customary meaning, thus signifying the outline of a figure
or body, Random House Webster’s College Dictionary at 287,
and “define” according to its ordinary and customary
meaning, thus signifying to determine or fix the boundaries
or extent of. Random House Webster’s College Dictionary
at 346. In applying these meanings, the Court thus construes
this portion of Element (d) to require that the outlines of the
body of the conduit be determined or fixed by the regions of
the parting surface and cavity surfaces; in other words, the
contours are formed only by these regions. The prosecution
history supports this plain language reading of the claim as
it records the exclusion of the term “substantially” which
was disclaimed by Turn-Key during the prosecution.
See Rolls-Royce, 800 F.2d at 1108; Exhibit B to Decl. of
Gaffin at 29, 55, 63 (showing that the claim language of the
“contours of said conduit, substantially being defined by
regions of the parting surface and the internally positioned
cavity/ies, which are exposed subsequent to separation” was
amended to “a substantially enclosed guide conduit having
contours defined by the regions of the parting surface and
the internally positioned cavity/ies that are exposed
subsequent to separation and leading in a direction
substantially perpendicular to said predetermined direction”).
Specifically, the history shows that the Examiner rejected
Sorensen’s patent application, in part, because “(t]he
invention, as does the prior art utilized an air ejection of
58a
Appendix D
molded plastic articies from mold cavities upon opening of
the mold parts. The conduit of the prior art is thus
‘substantially defined’ by the opened mold parting surfaces.”
Exhibit B7 to Decl. of O’Brien at 110. In a June 2, 1983
Examiner Interview Summary Record, the Examiner writes
that Sorensen’s counsel, Edward Callan
pointed out that separate mold part define the
guide conduit in which artic[le] [is] transported.
Examiner suggested that amendment of claim to
positively recite formation of such guide conduit
by configuration (shaping) of such mold parts
defines and is allowable over art of record.
Exhibit B8 to Decl. of O’Brien at 112. The final language of
Element (d) reflects this suggested change. The Court finds
that this history defeats Turn-Key’s position that the
amendment broadened, rather than narrowed, the claim
language with respect to the description of the contours of
the guide conduit. P1’s Reply at 10-11.’ For though the claim
7. Turn-Key’s position is based upon its argument that “having”
‘is an “open” claim term designating “that the named elements are
essential, but [that] other elements maybe added and still form a
construct within the scope of the claim.” Pl’s Reply at 11. “The term
‘having’ does not mean ‘including only”’ but means “including at
least.” Jd. Turn-Key thus argues that the sentence, “a car having
front doors,” does not mean that a car can only have front doors. Pl’s
Opening Brief at 12 (emphasis in original). Rather, “(t]he car can
have other doors and still be covered by the claim. The car with
front doors would not avoid infringement if it also had wheels, back
doors, and a hatchback, for example. The front doors would be an
essential element of the claim, but would not exclude any other
(Cont’d)
59a
Appendix D
language had previously required that the contours of the
conduit be mostly determined by the regions of the parting
and cavity surfaces (“substantially being defined by”), the
final language requires that the contours be determined by
those regions (“having contours defined by’).
The parties also dispute the interpretation of “exposed
subsequent to separation’—Turn-Key, on the one hand,
argues that this language should be interpreted to refer to the
regions of the parting surface and internally positioned cavity/
ies that are exposed to the void within the mold after the
mold parts separate. Pl’s Opening Brief at 14; P1’s Reply
Brief at 12-13. Defendants, on the other hand, argue that
“exposed subsequent to separation” refers to the areas of the
parting surface and of the surfaces of the mold cavity that
are exposed to the molded plastic part after the mold is
opened. Crest’s Responsive Brief at 14; KM, MC, &
Concord’s Brief at 7 n.7. Turn-Key and Defendants both point
to the specification to support their respective interpretations
Turn-Key argues that Figures 3, 5, 7, 9, and 11 show that
“only surfaces that are exposed to the void within the mold
are designated as contours of the guide conduit,”
Pl’s Opening Brief at 14, and Defendants argue that Figures
3 and 5 “show that all of the indicated contours are exposed
(Cont'd)
elements.” /d. Though Turn-Key’s observations about the car example
may be valid, the Court finds that the analogy is inapplicable to the
case at hand because the phrase at issue here is “having contours -
defined by.” Turn-Key’s car example, in contrast, only involves the
term “having” and as such, analogizing the car example to the present
case necessarily reads the term “defined” out of existence of Element
(d) of Claim 1.
60a
Appendix D
to the molded product part (petri dish 6), i.e. not separated
from the dish by any intervening structure. The same can be
seen in [Figure] 9.” Crest’s Responsive Brief at 14.
The Court, however, is persuaded by neither of these
proposed interpretations because both Plaintiff and
Defendants, at bottom, are attempting to read what they
perceive to be limitations contained in the preferred
embodiments into the claim language. See SRI International,
775 F.2d at 1121; see also Laitram Corp., 863 F.2d at 865
(“References to a preferred embodiment, such as those often
present in a specification, are not claim limitations.”).
In addition, the Court agrees with Defendants that Turn-Key’s
interpretation is circular because the “void within the mold”
is none other than the guide conduit itself, aud the “exposed”
contours are themselves the defining features of the guide
conduit. Thus, Turn-Key’s construction ‘“define[s] the
contours of the guide conduit in terms of the conduit itself.”
Crest’s Responsive Brief at 14. The Court, however, also
rejects Defendants’ construction because it is premised on
the proposition that there can be no intervening structures
between the contours of the guide conduit and the product.
Id. This position has already been rejected by the Court.
See supra Ill.A.1.b.
The Court looks at the language of the claim itself, as it
must, to interpret the phrase “exposed subsequent to
separation.” Vitronics, 90 F.3d at 1578. The dictionary defines
“expose,” in part, as “to uncover, bare,” “to present to view,
exhibit,” or to “make known [or] reveal.”” Random House
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Webster’s College Dictionary at 460. The Court, in applying
the ordinary and customary meanings of the word “expose,”
construes the phrase to refer to the regions of the parting
surfaces and the cavity surfaces that are revealed or uncovered
after the “separating” process described above, see supra
Section IV.A.5.a.i, so that they can be viewed by the eye.
- Nothing in the specification suggests that Sorenson, as
patentee, intended to define the phrase in his own terms rather
than by the phrase’s common, customary meaning. Vitronics,
90 F.3d at 1584-85.
c. The third portion of Element (d)
The third portion of Element (d) of the invention requires
that the substantially enclosed guide conduit be “leading in
a direction substantially perpendicular to said predetermined
direction.” Turn-Key argues that this language must be
construed to require that the conduit lead in a direction
substantially perpendicular to the direction that one or both
of the mold parts move toward the other. Joint Statement at
12; Pl’s Opening Brief 14. Turn-Key argues that its
construction follows the plain language and that no rewording
is necessery to interpret the claim. Defendants, on the other
hand, argue that “leading in a direction” means “determining
a single path that is used for movement of molded plastic
products” and that “said predetermined direction” means “the
straight path running between the two mold parts, along
which they were moved in closing the mold and in opening
the mold.” Joint Statement at 16. Thus, Defendants conclude
thai “the guide conduit determines a single path for movement
of molded plastic products, which is in a plane substantially
perpendicular to the path of mold opening and closing.” Id.
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In line with the Court’s construction of Element (a) and
the first portion of Element (d), the Court rejects Defendants’
attempts to construe “direction” and “predetermined
direction” in such a restrictive manner as to signify a “straight
path.” See supra at Section IV.A.2 and IV. A.5 (a)(i). Rather,
the Court construes the third portion of Element (d) to require
that the substantially enclosed guide conduit lead in a
direction almost entirely perpendicular to the predetermined
direction that one or both of the mold parts were moving
toward the other during the process when they were being
brought together. In so construing, the Court finds
“perpendicular” to be utilized in its everyday, ordinary sense
and concludes that as such, it need not be further defined.
6. Element (e)
Element (e) of Claim 1 requires “Ejecting the plastic
product into said guide conduit.” Joint Statement at 12.
Turn-Key argues that this element must be construed to
require “Removing the plastic product from one of the mold
parts” into the substantially enclosed conduit. /d.; P1l’s
Opening Brief at 14-15. Defendants conversely argue that
the phrase means “forcefully discharging each molded plastic
product from a surface of the mold cavity so that it enters
the guide conduit and so that it is free to move within the
guide conduit and is not held away from the walls of the
guide conduit by any intervening structure.” Joint Statement
at 38; Crest’s Responsive Brief at 15-16; KM, MC, &
Concord’s Brief at 10.
The dictionary defines “eject” as: 1. To drive or force
out; expel. 2. To dismiss, as from office. 3. To evict. 4. To
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Appendix D
throw out or throw off. 5. To propel oneself from a disabled
airplane, especially by an ejection seat. Random House
Webster’s College Dictionary at 419. In applying this
definition to the ’998 patent, the Court construes Element
(e) to require that the plastic product be expelled or otherwise
driven into the substantially enclosed conduit.’ The Court,
however, declines to construe Element (e) as requiring either
that the plastic product be free to move within the guide
conduit after its ejection or that it is not held away from the
walls of the guide conduit by any intervening structure on
the grounds that they represent extra limitations not present
in the claim language. The patent’s language does not disclose
a specific ejection method to be utilized and the
specification’s references to particular methods (i.e. stripper
plate) should not be read into the actual claim itself. See
Laitram, 863 F.2d at 865 (“References to a preferred
embodiment, such as those often present in a specification,
are not claim limitations.”); see also ’998 patent at Col. 5 11
6-11; 11.15-17; 23-25 (“While the above description contains
many specificities, these should not be construed as
limitations on the scope of the invention, but rather as an
exemplification of one preferred embodiment thereof... .
8. Dur
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