Appendix — Fromson v. Anitec Printing Plates, Inc.

Le NS SO OEMS CRE! LN he ww YO ly

a en ie” IS

Appealed from the United States Distric

|

UNITED STATES COURT < ‘APPEALS

FOR THE FEDERAL CIRCUIT

No 96-1] 337

Decided Dec ember 30. 1997

HOWARD A. FROMSON

ANITEC PRINTING P| ATES, IN«

De ré ndant ippe lle Se

JAMES R SULLIVAN and THOMAS P RORKE.

Def Ndants- ippe Li€es

*t Court for the

District of Massachusetts Judge Ponsor

AFFIRMED IN PART, REVERSED IN PART

2a

JOHN E. LYNCH, Felfe & Lynch, of New York, New York.

argued for the plaintiff-appellant. With him on the brief was

Alfred H. Hemingway, Jr.

WILLIAM F. DUDINE, JR., Darby & Darby, P.C., of New

York, argued for defendant-appellee Anitec Printing Plates,

Inc. With him on the brief were S. Peter Ludwig and Robert

C. Sullivan, Jr. Of counsel was Michael J. Doyle, Interna-

tional Paper Co., of Tuxedo, New York.

ARTHUR F. DIONNE, Fishman, Dionne & Cantor, of Wind-

sor, Connecticut, argued for defendants-appellees James R.

Sullivan and Thomas P. Rorke.

Before MAYER, Chief Judge,* NEWMAN and PLAGER, Cir-

cuit Judges. Opinion for the court filed by Circuit Judge

NEWMAN, in which Chief Judge MAYER and Circuit Judge

PLAGER join. Separate opinion, concurring, filed by Chief

Judge MAYER.

NEWMAN, Circuit Judge.

Howard A. Fromson appeals the decision of the United

States District Court for the District of Massachusetts, ' ruling

that the process for continuously anodizing aluminum used by

Anitec Printing Plates, Inc. did not infringe Fromson’s United

States Patent No. Re. 29,754 (the '754 patent). The court also

ruled that the °754 patent was invalid on the ground of obvi-

ousness. We affirm the holding of non-infringement, and

reverse the holding of invalidity.

° Chief Judge Haldane Robert Mayer assumed the position of

Chief Judge on December 25, 1997.

Fromson v. Anitec Printing Plates, Inc., 1996 U.S. Dist. LEXIS

21731, No. 91-30139-MAP (D. Mass. March 15, 1996).

Bae.

The Patented Invention

This invention relates to an improved process for continu-

ously anodizing aluminum, whereby certain processing prob-

lems of electrical arcing and resistance heating are relieved,

resulting in improved products and procedures accompanied

by more rapid and efficient commercial production.

Metallic aluminum spontaneously oxidizes in air to form a

thin coating of aluminum oxide upon its surface. This oxide

coating protects the aluminum metal from further oxidation:

however, the air-formed oxide is relatively soft, readily

scratched and removed, and not of controllable durability and

other properties that may be desired for specific uses. By the

electrochemical process of anodization an aluminum oxide

coating of controlled properties can be formed. by passing an

electric current through a suitable oxygen-containing elec-

trolyte, using the aluminum metal as the positive electrode in

the circuit. Since the positive electrode is the anode. the pro-

cess 1s called anodization. The electrolytically formed alu-

minum oxide can be made to varying degrees of thickness,

porosity, and hardness, selected for specific end uses of the

anodized product. These properties are varied by adjusting the

electrolytic, physical, and chemical conditions of the process

in accordance with an extensive body of technical know ledge

experience, and skill.

The Fromson °754 patent is directed to a continuous

anodization process wherein aluminum sheet or wire or other

shapes, called the aluminum web, is passed through a tank

containing anodizing electrolyte. More rapid, continuous pro-

cessing increases production and reduces costs, but the faster

the speed at which the aluminum web is passed through the

anodizing cells the higher the electric current must be in order

to produce an oxide layer of the desired thickness. In turn. the

use of high electric current densities may produce arcing

when mechanical contacts are used to charge the moving alu-

minum web, or may produce burning when electrolytic con-

tact cells are used.

4a

High current densities also generate high heat at the inter-

face where the aluminum enters the electrolyte. Due to the

low resistance at the interface, surging of electrical current as

well as burning of the aluminum surface and possible boiling

of the electrolyte can occur as the hot metal enters the cells.

Another problem in commercial anodization processes is that

of resistance heating, wherein the aluminum heats up as it

conducts the anodizing current. Due to any of these events,

the product may be marred and unacceptable for use. This

combination of long-standing problems had not been Satis-

factorily solved at the time of Fromson’s °754 invention,

despite much effort over many years.

In the prior art it was known to conduct anodization by

passing the aluminum web through an initial cell called a con-

tact cell, before it entered the anodization cell. By using a

contact cell to electrolytically introduce the anodizing current

into the web, surface damage done by mechanical electrical

contacts, such as brushes and rollers, was eliminated. Accord-

ing to the °754 invention certain problems of prior contact

cell processes are ameliorated by directing the current flow so

that the aluminum web is passed through an anodizing cell

before it enters the contact cell, using two or more separate

power sources. In the first cell an initial anodized oxide coat-

ing is produced; this coating protects the aluminum from

surging current as it enters the contact cell and then a second

anodizing cell. Anodizing current in the first cell is intro-

duced by way of the cathodic contact cell, while a separate

source of direct current connects the contact cell and the sec-

ond anodizing cell. Additional cells and current sources may

also be present. Thus the °754 process uses two or more direct

current power sources, the first flowing between the first cel]

and the contact cell, the second flowing in the opposite direc-

tion between the contact cell and the second cell. The process

is illustrated in Figure 2 of the ’754 patent:

ANOOIZING OR OTHER ELECTROLYTIC

TREATMENT CELL

The claims in suit are 2, 11, and 13-15. Claim 2 is the

broadest claim:

2. In a process for continuously electrolytically anodizing

aluminum, the improvement which comprises introducing

anodizing direct current from two or more sources in a

cathodic contact cell having therein anodes connected to Said

sources of direct current, the aluminum having an anodized

oxide coating formed thereon before entering said cell

through the action of the direct current introduced in the con-

tact cell itself Sa

Claim 11 specifically recites that the anodizing current is

divided so as to flow through separate cross-sections of the

web:

11. In a process tor continuously electrolytically anodizing

a moving aluminum web using the cathodic contact cell tech-

nique, the improvement which comprises introducing anodiz-

ing direct current from at least two direct current sources into

said moving aluminum web into at least two cross-sections

thereof, portion of the anodizing being carried out before the

aluminum web enters the contact cel].

Claims 13-15 describe the process in greater detail. Claim

13, which depends from claim 1]. recites that the anodizing

currents flowing in two cross-sections of the web flow in

Opposite directions. Claims 14 and 15 both State that a porous

anodic oxide coating is formed on the aluminum before it

enters the contact cell. Claim 14 is illustrative:

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14. Process for continuously forming a porous anodic

oxide coating on aluminum which comprises:

(i) passing aluminum through a cathodic contact cell, said

aluminum having a Portion of the thickness of said porous

anodic oxide coating already formed thereon before entering

Said contact cell through the action of anodizing direct current

from a first source of direct current introduced into said con-

tact cell; and

(1i) further anodizing the already anodized aluminum to

form the remaining portion of the thickness of the porous

anodic oxide coating by introducing anodizing direct current

from a second source of direct current into said already

anodized aluminum in said contact cell.

I

INFRINGEMENT

The Anitec process. as illustrated in an Anitec document at

trial, also uses three cells, like the illustrated Fromson

embodiment, plus a rinse Step:

Gian Q pe

Phoephoric Rinse Contect Sulfuric

Anodizing Tenk Anodizing

I

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3

2

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The district court construed the '754 claims whereby the

oxide-forming action in Anitec’s first electrolytic cell is not

included in the meaning of “anodizing” and does not produce

an “anodized” coating, as those terms are used in the claims.

This was the major issue in dispute.

The claims define the patent grant and set its boundaries:

that is, they establish the patentee’s legal rights. When tech-

nical or scientific terms in the claims require definition or

explanation or understanding in the course of deciding

whether the claims are infringed, it is the judicial duty to do

so. Markman v. Westview Instruments, Inc., 517 U.S. 370. 116

S. Ct. 1384, 1387, 38 U.S.P.Q.2D (BNA) 1461, 1463. 134 on

Ed. 2d 577 (1996) (“We hold that the construction of a patent,

including terms of art within its claim, is exclusively within

the province of the court.”) In performing this construction.

certain of the technologic facts were undisputed and others

were strongly disputed insofar as technologic conclusions

based thereon were material to the issue of the meaning and

scope of the claims.

It was not disputed that Anitec uses a continuous elec-

trolytic process with direct current flowing from two sources

in a cathodic contact cell, and that the Anitec process forms

an Oxide coating on the aluminum in the first (phosphoric)

cell before the aluminum enters the contact cell. Anitec con-

ceded that its electrical connections. its cathodic contact cell,

and its second (sulfuric) anodizing cell, are all within the

meaning and scope of claims 2 and 11. There was no dispute

that in the Anitec process the direct current was introduced

from at least two sources into at least two cross-sections of

the moving aluminum web, as these Claims require.

However, Anitec argued that the first electrolytic cell in its

Process, although labelled by Anitec “Phosphoric Anodizing,”

is an etching and cleaning step, and that the formation of a

thin layer of barrier-form aluminum oxide is not “anodiza-

tion” as contemplated by the ’754 patent. Anitec argued that

its process does not, in the Phosphoric cell, produce an

“anodized oxide coating” (claim 2) or Carry out a “portion of

8a

the anodizing” (claim 11) before the aluminum web enters the

contact cell. Thus the question was whether the “anodized”

coating that the ’754 claims require before the aluminum web

enters the contact cell includes within its scope the oxide

coating formed in Anitec’s “phosphoric anodizing” cell. The

district court viewed the question as one of claim construction

under Markman v. Westview Instruments, Inc., 52 F.3d 967, 34

U.S.P.Q.2D (BNA) 1321 (Fed. Cir. 1995) (en banc), aff'd,

517 U.S. 370, 116 S. Ct. 1384, 38 U.S.P.Q.2D (BNA) 1461,

134 L. Ed. 2d 577 (1996).

Claim Construction

The analysis of infringement is a two-step progression. In

the first step the court construes the claims of the patent; that

is, the court explains and defines any disputed technical terms

and sets the scope and boundaries of the claims. In so doing

the court looks principally to the patent specification and any

explanatory information in the patent examination record. The

court may gain understanding of the state of the art at the time

the invention was made, from the prior art or from experts in

the technologic field. Physical and experimental evidence

may be helpful, as in this case.

The district court held that the first anodizing step of the

‘754 process, before the web enters the contact cell. requires

not only a porous oxide coating that is electrolytically pro-

duced on an aluminum anode, but a thicker layer of porous

oxide as distinguished from the thin, non-porous oxide layer

that is formed in the Anitec process. The district court relied

primarily on the °754 specification which describes From-

son's first anodization step as producing porous oxide, ona

Papst reference discussing formation of barrier oxide, and on

findings based on extrinsic evidence derived from expert tes-

timony, demonstrative evidence, and scientific tests. Fromson

disputes this claim construction, stating that Anitec admitted

that anodization occurs in its first electrolytic cell, that the

plain text of the 754 claims reads on the Anitec process, and

that the weight of the evidence supports Fromson’s interpre-

tation of the claims and their scope.

oe tre

9a

The Specification

To determine the meaning of disputed technica] terms in

claims, the first resource is the patent specification of which

they are a part. Slimfold Mfg. Co. v. Kinkead Industries, Inc.,

810 F.2d 1113, 1116, 1 U.S.P.Q.2D (BNA) 1563, 1566 (Fed.

Cir. 1987) (“Claims are not interpreted in a vacuum. but are

part of and are read in light of the specification.”) In general,

technical terms are deemed to have the same meaning in the

body of the specification as in the claims. Patent specifica-

tions are written for persons of skill in the technical field. not

for laymen, and often place the invention in the technologic

context in which it must be understood.

The '754 specification requires that an anodized oxide coat-

ing be formed on the aluminum web before it enters into the

contact cell, and teaches that the purpose of this preliminary

coating is to protect the web from burning and current surg-

ing in the contact cell. The specification shows this coating to

be porous oxide. While Fromson States, correctly, that a lim-

itation from the body of the specification is not read into the

claims unless the limitation is required to sustain patentabil-

ity, the claims must be construed in light of the specification.

Although the ’754 specification does not state that the

thickness of the oxide, as the aluminum emerges from the first

cell, must be greater than the thickness of naturally occurring

oxide, the district court so interpreted the Specification, con-

cluding with the help of extrinsic evidence that for the coat-

Ing to protect the web a thicker coating was required. The

court resolved disputed testimony and documentary evidence

to find that a thin barrier oxide layer enhanced burning rather

than inhibited it, and that porous oxide was necessary at that

stage. Thus the district court read the specification as sup-

porting Anitec’s position that since the oxide formed in its

Phosphoric cell is barrier oxide of under 5 nanometers in

thickness, no thicker than naturally occurring oxide, the

anodized oxide coating of the ’754 claims can not be con-

strued to include the Anitec process.

10a

The Prosecution History and Prior Art

Fromson argues that since the aluminum web serves as the

anode in Anitec’s first cell, and an oxide layer is formed elec-

trolytically, Anitec’s process is anodization, whatever the

structure of the oxide layer that is formed. The district court

did not agree, despite the admission that Anitec itself con-

sistently referred, in contemporaneous documents, to the pro-

cess in the phosphoric cell as anodization. In reaching its

conclusion the court relied not only on the specification, but

on the prosecution of the Fromson patent as originally granted

and during its reissue.

The prosecution history when a patent is reissued is part of

the framework in which the patent is construed, as is the pros-

ecution history of the original patent. Representations made

and explanations presented during the reissue procedure may

be relevant to interpretation of the claims. Fromson requested

reissue of the patent after he learned of a Papst reference,

German Patent No. 718,975, showing a two-cell anodization

process in which the aluminum web enters the anodizing cell

before it enters the contact cell. Fromson had originally

broadly claimed this “reverse anodization” step. On reissue

Fromson modified or cancelled certain broad claims, retain-

ing the claims that contained the limitation of two or more

separate direct current power sources and adding claims spe-

cific to formation of porous oxide in the first cell.

Fromson argues that the Papst reference was misapplied by

the district court, for whether porous oxide was formed was

not an issue in the reissue prosecution. Fromson States that he

always intended to cover, and did cover in Claims 2 and 11,

anodizing to form either porous or non-porous oxide in the

first cell. Fromson states that it was known that porous anodic

oxide is formed only ina dissolving electrolyte such as sul-

furic acid, and that barrier oxide was known to be formed in

a non-dissolving electrolyte such as phosphoric acid. From-

son states that the Papst reference did not add to this knowl-

edge, and that Papst did not circumscribe the Fromson

teaching in the specification so as to exclude from the claims

Ait eS.

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coverage of the formation of barrier oxide. Fromson states

that Papst was significant only because of its teaching of what

Fromson calls “reverse anodizing,” that is, the anodization

before entry of the web into the contact cell.

We take note that Papst states that its process can produce

barrier oxide, and that Fromson disputed whether a web bear-

ing barrier oxide can be used in further procedures such as

galvanic deposition of metal. We conclude that the reissue

prosecution does not of itself limit all of Fromson’s claims to

porous oxide, but that Papst’s (and Fromson’s) recognition

that barrier oxide can be formed, along with the other evi-

dence, supports the district court’s ruling.

Extrinsic Evidence

Fromson argues that when “anodized” is given its standard

definition, citing Webster’s Third International Dictionary, of

“to subject [a metal] to action by making [it] the anode of a

cell before coating with a protective or decorative film.” the

Anitec process fully meets this definition. Fromson states that

this standard definition is all that the claims require, and is

Supported by the specification and Prosecution history. From-

son states that since the term has a plain meaning, the district

court erred in relying on extrinsic evidence to change that

meaning, citing Markman 52 F.3d at 981, 34 U.S.P.Q.2D

(BNA) at 1331 (“Extrinsic evidence is to be used for the

court’s understanding of the patent, not for the purpose of

varying or contradicting the terms of the claims.”)

Although Markman presents a useful general rule, it is

adaptable to the needs of the Particular case. In this case the

technical experts not only aided the court’s understanding of

the technology, but they also provided evidence material to

the interpretation of the claims. On this evidence the court

enhanced the broadly stated dictionary definition of the pro-

cess of anodization, with the understanding of the finer points

of the technology that was provided by witnesses during the

trial. Based on expert testimony, the court concluded that

since not all electrolytically formed oxide coatings will pro-

12a

tect the web as it moves into the contact cell—a fundamental

purpose of the Fromson process—in the Fromson process the

“anodized” coating before entry into the contact cell requires

such a protective oxide.

Extrinsic evidence may be particularly helpful to the court

when a specific technical aspect that is potentially of dis-

positive weight was not discussed in the specification or

explored during the patent prosecution. This case illustrates

the use of extrinsic evidence in order to determine the mean-

ing and scope of a technical term asthe term is used in the

claims.

Witnesses explained that the web emerging from the first

anodizing cell, unless sufficiently coated with porous oxide,

would not be protected from current surging and burning in

the contact cell and the second anodizing cell. Although

Anitec’s expert Barkman testified that it was known as early

as 1958 that barrier oxide can prevent burning if precisely

controlled, the district court gave greater weight to Anitec’s

evidence that the barrier oxide formed in Anitec’s phospho-

ric cell did not have this effect. There was also presented ana-

lytical data that showed a thinning of the oxide layer while in

the phosphoric cell, instead of a buildup of a thicker oxide

layer.

There was also expert testimony and evidence based on

tests varying the voltage in the phosphoric cell, showing that

anodization as it occurred in the second anodization cell did

not occur at the voltage used in Anitec’s first cell, normally

8 volts. Other tests showed that line speed changes in Anitec’s

phosphoric cell did not change the oxide thickness of 4-5

nanometers, whereas line speed changes in the sulfuric cell

produced proportional changes in oxide thickness, as is char-

acteristic of the anodization process. There was evidence that

the oxide formed in Anitec’s first cell did not solve the burn-

ing problem, but exacerbated it. There was evidence that cer-

tain standard tests for anodization were not met for Anitec’s

barrier oxide (the eraser test, the bubble test, and the copper

sulfate test). An expert witness testified that “anodization has

lait Panett aren x

13a

different meanings in different contexts,” in explaining

Anitec’s use of “anodization” for its Phosphoric cell as con-

trasted with Fromson’s use of the term in the °754 process.

The district court’s findings of Scientific/technologic fact

were material to the issue of construction of the term “anodiz-

ing.” The district court concluded that the clause in claim 2

“the aluminum having an anodized Oxide coating found

thereon” must be construed as requiring a thicker layer of

oxide than that formed in air, and that it must be porous

oxide. Claim 11 was similarly construed. The court held that

the barrier oxide formed in the Phosphoric cell was not “an

anodized surface” as the term was used in the 754 claims:

I find that in 1973 no reasonable practitioner of this process

would have had the opinion that a non-porous non-adherent

oxide coating, as thin as the native 5 nanometer coating found

naturally in the environment, of post-phosphoric oxide, con-

stituted an anodized surface.

The district court found that “the difference between a

1,000 or 2,000 nanometers oxide coating and a 5 nanometer

Oxide coating is not a difference in degree. It is a difference

in kind. Something entirely different is going on.” Thus the

district court construed all of the claims in suit as limited to

a process that produces an anodized coating in the pre-contact

cell that achieves the Purpose of protection against entry

burning and resistance burning. The district court concluded

as follows:

I conclude . . . that the terms “anodization,” “anodized

coating,” and “anodized oxide coating” under Markman mean

an electrolytically formed, adherent, porous aluminum oxide

coating sufficiently thick (meaning thicker than native oxide)

to, (A) protect against the burning and arcing problems

addressed by the patent and optionally, (B) to provide a suit-

able porous base for other electrolytic treatments in the sec-

ond anodizing cell such as electrophoresis, for metal plating.

Fromson readily admits that these purposes prompted his

invention, but argues that the invention is not limited to these

purposes, but is based on the use of a cathodic contact cell

wherein an anodizing step occurs before entry into the contact

l4a

cell. Thus Fromson argues that it is irrelevant to his process

whether the oxide is porous or barrier, that either one can be

used in the first step of the process. However, on all of the

evidence, we agree that the district court correctly construed

these terms in the claims.

Claim Differentiation

Fromson argues that the doctrine of claim differentiation

prohibits interpretation of the broader claims of a patent so as

to import into such claims the limitations of narrower claims.

D.M.1., Inc. v. Deere & Co., 755 F.2d 1570, 1574, 225

U.S.P.Q. (BNA) 236, 239 (Fed. Cir. 1985). Thus Fromson

argues that since claims 14 and 15 specify the formation of a

porous oxide on the aluminum web before it enters the contact

cell, the doctrine of claim differentiation precludes importing

this “porous” limitation into claims 2, 11, and 13. Fromson

argues that this well-established doctrine precludes constru-

ing claims 2, 11, and 13 to require that the anodized coating

be restricted to porous oxide.

The district court limited all of the claims in suit. treating

as a matter of claim construction the issue of whether the

claims cover, and thus would be infringed by, barrier oxide

formation. Since the court was correct in its holding that

claims 2, 11, 13 are not entitled, as a matter of law, to a def-

inition of anodizing that embraces barrier oxide formation in

the pre-contact cell step, this doctrine can not. of itself,

restore to Fromson’s claims a scope that has been shown to be

unwarranted. See Tandon Corp. v. United States Int’! Trade

Comm'n, 831 F.2d 1017, 1024, 4 U.S.P.Q.2D (BNA) 1283,

1288 (Fed. Cir. 1987) (“Whether or not claims differ from

each other, one can not interpret a claim to be broader than

what is contained in the specification and claims as filed.”)

Literal Infringement

The district court construed “anodized” to mean an oxide

coating having specific properties, as “anodized” character-

izes the aluminum before it enters into the contact cell. The

lSa

court held that the coating produced in the Anitec phosphoric

cell is not “anodized” as the court construed this term. For the

reasons discussed in connection with claim construction, we

affirm the ruling that the Anitec process does not literally

infringe the claims in suit.

This case illustrates the conceptual and practical overlap of

“claim construction” as a matter of law, and the factual appli-

cation of the claims to the accused process. The district court

construed the °754 claims in the context of the anodized oxide

formation in the phosphoric cell of the Anitec process. The

extrinsic evidence on which the district court relied in its con-

Struction of the claims was geared to the infringement issue

raised. Thus the court was able to limit its study to the facts

placed in issue by the accused process.

We affirm the construction of the claims as correct. We do

not discern clear error in the court’s application of the claims.

as construed, to the accused process.

The Doctrine of Equivalents

Infringement may be found under the doctrine of equiva-

lents, although the claims as construed do not literally read on

the accused process, if the accused process contains the same

Or equivalent elements or steps as the patented process.

Warner-Jenkinson Co. v. Hilton Davis Chem. Co.. a) re

—— ——, 137 L. Ed. 2d 146, 117 S. Ct. 1040. 1054, 4]

U.S.P.Q.2D (BNA) 1865. 1875 (1997). Thus infringement

under the doctrine of equivalents may lie although the process

is not within the literal scope of the claims as correctly

construed.

Applying the criteria of Graver Tank & Mfg. Co. v. Linde

Air Prods. Co., 339 U.S. 605. 85 U.S.P.Q. (BNA) 328, 94 L.

Ed. 1097, 70 S. Ct. 854 (1950). as modified in Warner-Jenk-

inson, the accused process must perform substantially the

same steps as the patented process, in substantially the same

Way, to obtain the same result. Equivalency is a question of

fact, and findings thereon are reviewed for clear error. Clear

error exists when “the reviewing court on the entire evidence

16a

is left with the definite and firm conviction that a mistake has

been committed.” Anderson vy. City of Bessemer City, 470

U.S. 564, 573, 84 L. Ed. 2d 518. 105 S. Ct. 1504 (1985).

Fromson argues that on the district court’s claim con-

struction there is infringement under the doctrine of equiva-

lents. Fromson points out that the barrier oxide produced in

Anitec’s phosphoric cell is not natural oxide but the product

of anodization, and that because it is harder and more adher-

ent and protective than natural oxide it serves the function of

an anodized oxide. Thus Fromson argues that the Anitec bar-

rier Oxide is equivalent to the Fromson porous oxide, for both

are products of the same kind of electrolytic process and

serve the same function in substantially the same way, to

achieve the same result.

The district court did not agree. The court considered all of

the evidence concerning the patented and the accused Oxide

coatings, and determined that the Anitec oxide formed in the

Phosphoric cell did not have the Same properties as the From-

son oxide formed in the sulfuric cell, and did not serve the

same purpose and solve the same problem. The court found

that the primary function of the Phosphoric cell in Anitec’s

process was to clean and condition the aluminum, not to pro-

vide an anodized layer to protect the web from surges or burn-

ing at high current densities. The court found that the thin

barrier oxide coating initially formed on the Anitec web did

not provide such protection, unlike Fromson’s thicker porous

coating. Thus the court found that there was not equivalency

between the initial Anitec oxide and the “anodized coating”

required by the '754 claims, in that the functions were not

substantially the same. This finding has not been shown to be

clearly erroneous.

The decision that there is not infringement under the doc-

trine of equivalents is affirmed.

17a

I]

VALIDITY

The district court held the ‘754 claims invalid on the

ground that the invention would have been obvious in light of

the prior art. Obviousness is a question of law based on

underlying facts, Graham v. John Deere Co., 383 U.S. 1. 17,

148 U.S.P.Q. (BNA) 459, 467, 15 L. Ed. 2d 545, 86S. Ct. 684

(1966). Included are the factual] questions of the scope and

content of the prior art, the differences between the claimed

invention and the prior art, the level of Ordinary skill in the

field of the invention. and any objective evidence of unob-

viousness. Graham, 383 U.S. at 17-18, 148 U.S.P.Q. (BNA)

at 467; Glaverbel Societe Anonyme v. Northlake Mktg. & Sup-

ply, Inc., 45 F.3d 1550. 1555, 33 U.S.P.Q.2D (BNA) 1496,

1499 (Fed. Cir. 1995). The determination of whether the Sub-

ject matter as a whole would have been obvious to a person of

ordinary skill at the time the invention was made. is reviewed

for correctness as a matter of law. The underlying factual

determinations are reviewed on appeal for clear error. Due

consideration is given to the requirement that invalidation

based on obviousness must be established by clear and con-

vincing evidence. Id

The parties generally agree as to the prior art and its teach-

ings, and as to the level of Ordinary skill in this field in 1972.

The district court concluded that the patent was invalid “look-

ing at Chubb, Cook. Barkman, and the other inventions that

Preceded this one... .” Fromson points out. and we must

agree, that although much had been written on anodization, in

this highly studied field no reference or combination of ref-

erences showed or suggested the 754 process as a whole.

The Chubb reference describes producing an insulating

coating of aluminum oxide on wire to be used in electrica]

machinery. Chubb shows a contact cell and the countercurrent

movement of the electric Current, and teaches that “the elec-

tric current may be supplied to the conductor to be treated

either before or after it has received an insulating coating and

18a

also in either the direction in which the wire is moving or in

the opposite direction. . . .” This is quite different from the

Fromson process. Other distinctions are that Chubb involves

a single power source and shows only non-dissolving elec-

trolytes (to produce a non-porous coating); a boilerplate state-

ment that other “suitable liquids” can be used is insufficiently

specific to include dissolving electrolytes such as are used by

Fromson.

In the Barkman reference the contact cell precedes the pre-

anodizing cell in the processing of the web, a process shown

to have disadvantages that were remedied in the Fromson pro-

cess. Although Anitec argues that Fromson’s change in the

sequence of steps is simply an “obvious choice,” the choice

apparently escaped Barkman, along with the benefits reported

by Fromson. The Cook reference divides the anodizing cell

into two or more compartments in order to avoid burning, but

does not suggest use of an anodizing procedure before entry

into the contact cell. The other references before the district

court also contain differences from Fromson’s process. They

show the extensive effort expended in this area of technology,

but none shows the process of the ’754 patent.

That an inventor has probed the strengths and weaknesses

of the prior art and discovered an improvement that escaped

those who came before is indicative of unobviousness, not

obviousness. The district court did not correctly apply the law

of obviousness, for there is no Suggestion or teaching in the

prior art to select from the various known procedures and

combine specific steps, along with a new electrical structure,

in the way that is described and claimed by Fromson. The

judgment of invalidity is reversed.

Damages

Damages and other issues raised on appeal are mooted by

our affirmance of the judgment of noninfringement.

Costs

No costs.

AFFIRMED IN PART, REVERSED IN PART

19a

MAYER, Chief Judge, concurring.

I write separately to emphasize the incompleteness of this

court’s Markman! dissertation on the use of extrinsic evidence

in construing patent claims. Federal Rule of Evidence 702

Says that expert testimony and evidence is admissible not only

to educate but also to find facts. “If scientific, technical, or

other specialized knowledge will assist the trier of fact to

understand the evidence or to determine a fact in issue, a wit-

ness qualified as an expert by knowledge, skill, experience,

training, or education. may testify thereto in the form of an

opinion or otherwise.” (Emphasis added). If there is no dis-

agreement about the meaning of a term in a patent, even a

complex one, expert testimony can come in to educate, akin

to a motion for summary judgment as a matter of law on

undisputed material facts. But when, as here, there is vigor-

ous dispute and conflicting evidence about the meaning of a

term, the trial judge has to make findings of fact as he decides

the meaning to ascribe to the patent.

If this were truly an exercise in construing words and con-

cepts as a matter of law, absent any factual components,

Fromson might well prevail; at least he would have my vote.

[ “know” what anodization means from my own undergradu-

ate studies and experiments: the concept is not difficult and

I need no further education to grasp it. I happen to have a dic-

tionary in my chambers from the era pertinent here. which

would confirm my “knowledge” about anodization. Fromson

appeared to use the term without limit and, not Surprisingly,

SO proclaims; even Anitec personnel called its process by the

same name. But, I am neither an expert in the field nor one of

Ordinary skill in the art despite how much I think I “know”

about a process I-once studied. Nor do my colleagues on this

court or on the district court possess such expertise, and even

if they did, they would have to defer to the record made in the

Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 U.S.P.0.2D

(BNA) 1321 (Fed. Cir. 1995) (in banc).

i

i

20a

case. The trial judge performed his Daubert? duty and allowed

expert testimony and other evidence. not only so that he

might become better educated about the meaning of anodiza-

tion, but also so that he might develop the record and find the

meaning of anodization, as used in this patent, to one skilled

in the art in 1973. That he has done. We are affirming his

claim—construction—as a matter of law based on the facts

he found from conflicting evidence, which are not clearly

erroneous.

The trial court has comprehensively laid out and our opin-

ion reviews the evidence, and it defies reason to suggest that

the evidence was merely taken for its educational value. This

construction is correct as a matter of law on this record, but

only because of the factual predicate. This case could readily

and probably would have come out differently if we were

free, as some of our cases suggest, to decide the issue anew as

a matter purely of law. The court’s opinion, which I fully join,

demonstrates that the surest way to maintain consistency and

certainty in patent cases is for us to rely on the trial court’s

fact finding expertise and the record it makes and considers.

We do a disservice if we go off on a definitional inquest of

our own.

Daubert v. Merrell Dow Pharmaceuticals, Inc.. 509 U.S. 579, 125

L. Ed. 2d 469, 113 S. Ct. 2786 (1993); see also General Elec. Co. y. Joiner,

118 S. Ct. 512, 139 L. Ed. 2d 508. 1997 WL 764563 (U.S. 1997).

|

2la

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

No. 96-1337

Filed February 23, 1998

HOWARD A. FROMSON.

Plaintiff-Appellant.

—V.—.

ANITEC PRINTING PLATES, INC.. JAMES R. SULLIVAN

and THOMAS P. RORKE.

Defendants-Appellees.

ORDER

A combined petition for rehearing and Suggestion for

rehearing in banc having been filed by the APPELLANT, and

a response thereto having been invited by the court and filed

by the APPELLEE, and the petition for rehearing having been

referred to the panel that heard the appeal, and thereafter the

suggestion for rehearing in banc and response having been

referred to the circuit judges who are in regular active service.

UPON CONSIDERATION THEREOF. it is

ORDERED that the petition for rehearing be, and the Same

hereby is, DENIED and it is further

22a

ORDERED that the suggestion for rehearing in banc be. and

the same hereby is, DECLINED.

The mandate of the court wil] issue on March 2, 1998.

FOR THE Cour’.

JAN HORBALY, CLERK

Dated: February 23, 1998

By /s/ ALEX VAN VEEN

Alex Van Veen

Staff Law Clerk

cc: JOHN E. LynNcH

WILLIAM F. DUDINE, JR, ARTHUR F. DIONNE

FROMSON V ANITEC PRINTING PLATES. 96-1337

(DCT—91-CV-30139)

23a

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

Case No. 91-30139-MAP

HOWARD A. FROMSON.

—Y —_—

ANITEC PRINTING PLATES, INC., ET AL.

JUDGMENT IN A CIVIL CASE

C) Jury Verdict. This action came before the Court for a trial

by jury. The issues have been tried and the jury has ren-

dered its verdict.

M Decision by Court. This action came to trial or hearing

before the Court. The issues have been tried or heard and

a decision has been rendered.

IT Is ORDERED AND ADJUDGED.

24a

PER MEMORANDUM AND ORDER ENTERED March 15.

1996:

Judgment entered for defendants on all counts.

March 15, 1996 ROBERT J. SMITH, JR.

Date Clerk

/s/ [ILLEGIBLE]

(By) Deputy Clerk

nD,

25a

~L

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

Civil Action No. 91-30139-MAP

March 15, 1996

HOWARD A. FROMSON.

Plaintiff

—V —

ANITEC PRINTING PLATES, INC.,. ET AL

Defendants

MEMORANDUM AND ORDER

PONSOR, D.J.

On March 14, 1996, this court entered oral findings of fact

and conclusions of law into the record, deciding the case in

favor of the defendant. The basis of the decision was detailed

in the oral findings and conclusions; it is summarized below.

In essence, the court, after making a determination as to the

meaning and scope of the asserted claims and comparing

these to the accused process, concluded that the plaintiff had

failed to carry his burden of showing infringement by a fair

preponderance of the evidence. This conclusion extended both

to the claim of literal infringement and to the alternative

Claim of infringement by equivalents since the limitations of

26a

the patent claims were neither exactly found in Anitec’s

accused process or found by way of a substantial equivalent.

In addition, the court found that the defendant had proven

by clear and convincing evidence that the patent is invalid,

because it was anticipated and rendered obvious in view of

the prior art. In other words, regarding the ’754 patent, “the

subject matter as a whole would have been obvious at the

time the invention was made to a person having ordinary skill

in the art.” 35 U.S.C. § 103.

The court rejected the defendant’s defense of laches and res

judicata, and the defense that the patent was invalid because

of the plaintiff’s inequitable conduct.

Finally, the court stated, provisionally, that if a reviewing

court should conclude that the decision with regard to patent

infringement and patent invalidity were both incorrect, and

that plaintiff is entitled to money damages, then the theory of

damages offered by the defendant was the fairest and most

reasonable. Damages would be limited both due to the plain-

tiff’s failure to mark (as the court has previously found in

allowing the motion for summary judgment of the co-defen-

dants Sullivan and Rorke) and due to the complete absence of

adequate evidence to demonstrate any willfulness on the

defendant’s part, if infringement were to be found. Applying

the standards approved by the Federal Circuit, and positing a

hypothetical arm’s-length negotiation between a willing

patent owner and a willing potential user taking place at the

time of the infringement (assuming a reviewing court con-

cludes that infringement occurred), the court determined that,

if it had reached the issue of damages, it would have awarded

plaintiff $42,500, plus a 50% enhancement for a total damage

award of $63,750, with interest from the date of filing.

In conclusion, the court hereby orders entry of judgment in

favor of the defendant Anitec Printing Plates, Inc. based upon -

the oral findings of fact and conclusions of law entered on

March 14, 1996. Moreover, the court orders entry of judgment

for the co-defendants Sullivan and Rorke based upon its ear-

lier ruling on their motion for summary judgment. Obviously,

27a

if a reviewing court concludes that the ruling on Sullivan and

Rorke’s motion for summary judgment is incorrect. entry of

judgment in their favor would stil] be required based upon the

court’s findings of lack of infringement and invalidity.

The clerk is ordered to enter judgment for the defendants in

accordance with this memorandum.

/s/_ MICHAEL A. PONsoR

MICHAEL A. PONSOR

U.S. District Judge

28a

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

Docket No. CA 91-30139

March 14, 1996, Decided

HOWARD A. FROMSON

—_—vsS—

ANITEC PRINTING PLATES, INC.. JAMES R. SULLIVAN

and THOMAS P. RORKE

Verdict in favor of defendant on all counts in the complaint.

For plaintiff: Felfe & Lynch, By: John E. Lynch, New York,

NY.

For defendant: Darby & Darby, By: William F. Dudine. Jr..

S. Peter Ludwig, and Robert C. Sullivan, Jr., New York. NY.

HONORABLE MICHAEL A. PoNnsor. DISTRICT COURT JUDGE.

29a

JUDGE PONSOR’S ORAL FINDINGS OF FACT

AND CONCLUSIONS OF LAW

THE Court: Please be seated. It’s my intention now to

make my oral findings of fact and conclusions of law on the

record here. As I go through the findings and conclusions you

will see me referring to various documents, and, obviously,

these have not all been prepared in the last 15 or 20 minutes.

I did considerable work preparing for today’s hearing. But I

want to underline again that I did not have my mind made up

when I came out to hear the oral arguments. I have been able

to put things in order after hearing the oral arguments.

As you know, I’m going to be entering a verdict in this case

in favor of the defendant on all counts in the complaint.

The purpose of this presentation is to set down my findings

of fact and conclusions of law, those that I have determined

require me to decide the case this way.

Before I get to specifics, let me state a few preliminaries.

First, I realize that it may be hard to receive what I have to

Say face to face; nevertheless, I thinteit is proper for you to

hear directly from me the details of my decision.

I’ve told you all the bottom line ahead of time so that any-

one who feels that he or she may have difficulty sitting

through the reasons may leave and obtain a transcript of my

emarks for private review.

I expect everyone here now to listen to what I have to say

with courtesy and reserve with neither positive nor negative

expressions of any kind.

I’m not, obviously, going to debate my decision with coun-

sel. It's made. However, if I make an obvious error of fact in

terms of mis-citing a date or something of that nature, I am

not opposed to be being corrected.

Second, I reserve the right to smooth out and perhaps add

details to these oral remarks in a written form at a later date.

if necessary. I may or may not do that, but if I do, I will not. of

course, change the substance of my decision nor my reasoning.

30a

Third, please remember, a trial is not usually about who is

lying or who is telling the truth, and it was certainly not about

that in this case.

A trial, generally, and this case especially, is about whether

the party bearing the burden of proof, here the plaintiff,

Howard Fromson, has proved the case by a fair preponderance

of the evidence.

In my opinion, all parties to this case, plaintiff and defen-

dants alike, behaved with integrity and sincerity. I want to

underline that. It’s obvious that I’m reading from notes here

as I say that, but I do want to convey personally that I believe

everyone in this trial behaved with integrity and sincerity, and

there was no effort on anyone’s part to prevaricate or attempt

to mislead the court.

I have found for the defendants simply because I found that

the plaintiff’s case, in view of all the evidence, was not more

likely true than not true; that is simply the burden.

If the evidence is in equipoise, I must decide for the defen-

dant. The plaintiff bears the burden of proving its case by a

fair preponderance of the evidence.

This decision reflects no judgment on the personal integrity

of the plaintiff or anyone else. Let me say with equal force

that my decision in no way suggests that the defendant’s

attorneys outperformed the plaintiff's attorney. This case.

which was very difficult in many ways, was tried with equal

vigor and skill by both sides.

I truly cannot imagine an argument or piece of evidence

that either side could have brought out to support its case or

undermine its opponent's case that was not presented.

One of the great pleasures of being a trial judge is to preside

over a case well tried on both sides, and this was such a case.

I will tell you in the privacy of this room that many district

court judges look upon patent cases as a form of legal root

canal. I certainly cannot say that in my case and in connection

with this case. It has been a pleasure for me to try this case

and to preside over this case both because the issues were

inherently interesting, and because it was so effectively and

professionally presented-by both sides.

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3la

I'm now going to turn to a Summary of the facts that |

believe support the decision that I am making here. |]

Want to

emphasize that I am not addressing every

single fact that

night be adduced in defendant’s favor. or that I migh

considered. Given the length of the trial and th

record, this would be an almost endless task.

No one reviewing these findings, however, should assume.

because a fact or piece of evidence is not specifically

?

t have

’ -_ 4 kh

1€ S$ize of the

y men-

tioned, it was not considered. I have carefully considered

the evidence in this case in making my decision

[ want to turn now to a little bit of background mat

material

irom the patent, and I’m going to be using portions of

plaintiff's submissions in order to make my find

ndings in this

section

This is a patent infringement case in which Howard A

Fromson

a Connecticut resident, sued Anitec Printing Plates.

ed, which will be referred to as Anitec, James R

Sullivan, who I will refer to as Sullivan, and Thomas P

for infringement of process claims 2. 1]. 13

14, and 15 of United States Patent No. 29754

Anitec has tw manufacturing plants in Hol)

Massachusetts, and Sullivan and Rorke both reside j

Massachusetts

The individual defendants. as we all know, Sullivan and

we

rke, obtained summary judgment prior to this trial and are

parties,

active parties to the trial. Anitec was the

defendant during the course of trial.

Trial of this case took piace over three weeks in No’

, and my findings

7

tf 1995 f facts and conclusions of law dra

irom the entire record of this case.

i find that the plaintiff, Mr. Fromson. who Is the «

the 754 patent, obtained his degree in economics in 1943. In

, after years of employment by a company

metal for resale

wher of

O4S

that imported

. he established a company t

tnat imported non-

, f-e-r-r-0-u-s, including alumini

P ala .

lum, for resale in

32a

In the early 1950s Mr. Fromson learned of a German com-

pany, Metalloxyde, M-e-t-a-l-l-o-x-y-d-e, that was employing

a process for continuously anodizing coiled aluminum sheets

and began to import that company’s anodized aluminum for

resale.

Eventually, Mr. Fromson determined that his business

really required local manufacturing and he established

Anocoil Corporation which began continuously anodizing alu-

minum in Rockville, Connecticut.

His first anodizing line utilized a contact roll, an anodizing

tank containing electrolytes and cathodes, which are nega-

tively charged electrodes, and one rectifier, which is also

sometimes referred to as a DC power source to anodize a con-

tinuous web of aluminum.

Problems were inherent in this process which were being

addressed by the industry during this period of time. These

included arcing at the face of the aluminum web in the con-

tact roll resulting in burning of the aluminum web and even of

the roll itself and some scratching of the roll. These burning

and scratching problems limited the line speed of Anocoil’s

continuous anodizing operation.

Mr. Fromson subsequently modified Anocoil’s anodizing

process by replacing the contact roll with a contact cell or

tank which contained an electrolyte and anodes.

This modification permitted increased line speed, but burn-

ing of the aluminum web when the aluminum entered the

anodizing tank became a problem in this process because of

the phenomenon of heating that arises when the current car-

rying the aluminum web enters the anodizing tank electrolyte.

This form of burning as applied to anodizing in its worse

case manifests itself as an actual melting of the aluminum

web. Even in better situations, it results in the production of

an unsound oxide coating.

Two related problems were involved in increasing the pro-

duction line speed, both the burning problem described above

and the inherent process limitations imposed by the current-

carrying capacity of the continuous aluminum web being

anodized.

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33a

As will be seen, various companies and inventors were

experimenting in the mid-20th Century, and even as far back

as the Chubb patent at the beginning of the century, with dif-

ferent ways to address this problem.

Mr. Fromson theorized that if the electrode power required

for anodization could be distributed in a controlled fashion

simultaneously through more than one cross-section of the

aluminum web, he could alleviate two problems: A, the inher-

ent limitation arising from the uncontrolled resistance and

heating of the web due solely to the electric current being put

into the web, and B, the kind of burning problem encountered

in using the contact cell process.

His process for employing this concept was to utilize two

anodizing tanks, one contact cell, and two power sources.

This process permitted simultaneously delivering controlled

current to two cross-sectional areas of the aluminum web. and

was the subject of a May 18, 1973 patent application.

The May 18, 1973 patent application issued on February

11, 1975 as U.S. Patent No. 3865700, which will be referred

to as the 700 patent.

After issuance of the 700 patent, however, Mr. Fromson

learned of a German patent given to an entity known as Papst,

P-A-P-S-T. Since he believed that certain of the Claims in the

700 patent were too broad in view of the Papst patent, he filed

an application to re-issue the 700 patent with new claims in

January of 1977, and a new replacement patent, 29754, the

patent at issue in this case, was issued on September 5, 1978.

That is the background for the patent.

The background of the defendant’s production and the

development of its process is as follows: At various times the

corporate defendant has been known as Advanced Offset

Plate, Incorporated, or Graphcoat, G-R-A-P-H-C-O-A-T.

Incorporated, Cookson Graphics, Incorporated, and, finally,

Anitec Printing Plates. The entity has been called Anitec

throughout this trial for purposes of convenience.

Anitec was founded in 1972 to make and sell lithographic

printing plates of anodized aluminum by the defendants, Mr.

34a

Sullivan, who was president and the chief financial officer

until his departure in 1987, and his co-defendant, Mr. Rorke,

who was vice president in charge of manufacturing and tech-

nology until his departure in 1989.

When Anitec first began continuously anodizing aluminum

in 1972, it obtained a license to use a patented anodizing pro-

cess for a nominal royalty from Reynolds Aluminum. This

was the continuous anodizing process of U.S. Patent No.

3079308 which was issued to Mr. Barkman, who was a wit-

ness in this trial.

The Barkman continuous anodizing process licensed by

Anitec in 1972 and described by Mr. Barkman in his 308

patent employed a contact cell, one anodizing cell with mul-

tiple cathodes and a single power source.

From the outset, Anitec’s lithographic printing plates were

made of aluminum that had been anodized and subsequently

treated with silicate according to Fromson’s U.S. Patent

3181461.

Fromson sued Anitec for infringement on the 461 patent in

1976, and Anitec was found to have willfully infringed the

Fromson 461 patent. Those proceedings were not terminated

until 1986, and are referred to as the Advance case to the

extent that such reference is necessary in this decision.

The citations to the Advance case are contained in the

party's memoranda, but may be found at 720 F.2d 1565, (Fed.

Circuit 1983), and 755 F.2d 1549, (Fed. Circuit 1985).

By February 1975 Anitec had altered the Barkman process

by employing two power sources, one for each pair of four

cathodes in the main anodizing section. Thus, two months

before, even in plaintiff’s view of the facts, the defendants

ever knew of the Fromson patent, they were already using a

modification of the Barkman patent employing two power

sources.

In April of 1975, Attorney Arthur Dionne, Anitec’s patent

counsel, sent Rorke the abstract of several patents including

the Fromson 700 patent.

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35a

The evidence as to whether Mr. Rorke read this 700 patent

is essentially non-existent. Mr. Rorke did not himself recall

reading them. It is possible that he may have read them, but

it is, in essence, pure speculation to Suggest that he did any-

thing more than glance over the patents.

In any event, I want to find affirmatively here on a point

which is hotly contested in this trial, that the Anitec process

did not copy Mr. Fromson’s Process as a result of the receipt

of the 700 patent from Mr. Dionne. This is because the Bark-

man process as modified by Anitec gave them everything that

they needed to run their production line without any necessity

to employ the Fromson process.

So I want the record to affirmatively reflect my finding that

there was no copying of the Fromson patent by Anitec in its

production line as a result of the receipt of a copy of the 700

patent from Mr. Dionne in 1975.

In 1978, Mr. Fromson’s counsel inspected Anitec’s plant in

Holyoke in conjunction with what I have called the Advance

case which was then in litigation, having, as I noted, been

filed in 1976.

Anitec was then using precisely the process that the plain-

uff now accuses as infringing the Fromson patent.

In addition, the day after Mr. Lynch, representing Fromson

in that case, visited the Holyoke facility and observed the pro-

cess, he had an opportunity to depose Mr. Rorke, one of the

principals of Anitec, with regard to their processes.

I want to skip forward now to 1984. There’s no evidence of

any pertinent activity between 1978, when Mr. Lynch visited

the Anitec manufacturing facility, and May of 1984, between

1978 and 1984.

In May of 1984 Mr. Fromson obtained information that sug-

gested that a company unrelated to this litigation was using

his 754 anodizing process. His counsel therefore sent letters

to ten manufacturers of anodized aluminum lithographic

printing plates advising them of the 754 patent and solicited

comments.

Anitec’s president, Sullivan, was one of the recipients of

this notice and letter. The letter itself is extremely brief. It

36a

simply notes the existence of the patent and asks if there was

any comment.

Mr. Sullivan received the letter and consulted with his

attorney, Mr. Dionne, about the 754 patent. At this time in

1984 the litigation, which I’ve called the Advance litigation,

was still in process.

Mr. Dionne reviewed the 754 patent and made a recom-

mendation that there be an alteration in the production line at

Anitec in order to avoid infringing the 754 patent.

This advice was followed in the sense that one of the sul-

furic anodizing tanks was changed in location in relation to

the contact tank.

At this point I want to make another finding on the record,

that the decision by Anitec to alter its production line by

changing the configuration of the sulfuric anodizing tank was

made in a good faith effort to eliminate any infringement of

the 754 patent.

Although there is evidence on both sides, the stronger evi-

dence in this case has persuaded me that the decision to leave

the phosphoric anodizing tank in its position without chang-

ing it was based upon Anitec’s conclusion that the process

taking place in the phosphoric tank did not violate Mr. From-

son's patent. This is the explanation for why they changed the

location of the sulfuric tank but not the phosphoric tank. I'll

be getting into that in a little bit more detail in a moment.

At this point, however, I also want to make a finding that

the response to Mr. Fromson’s letter describing his 754 patent

and soliciting comments, to the effect that the defendant “had

no interest” in the 754 patent, was based upon the fact that the

defendant had altered its production line by changing the

location of the sulfuric anodizing tank and was convinced that

its production line did not infringe Mr. Fromson’s patent.

Since the reconfigured production line did not infringe Mr.

Fromson’s patent, the response that they had no interest in Mr.

Fromson’s patent is therefore understandable.

I want to turn now to a description of exactly what the

claims are in this case and where the Court is coming out on

7 ee

ahha nF CRA vale iio aa iw anal

Pesan i ore

37a

—

the important, and, indeed, the central question in this case,

which is infringement.

The plaintiff charges that the defendants infringed four

independent claims of the 754 patent. These are Claims 2, 11,

14, and 15.

Claim 2 reads as follows: In a Process for continuously

electrolytically, that’s e-l-e-c-t-r-0-1-y-t-i-c-a-l-l-y, anodizing

aluminum, the improvement which comprises introducing

anodizing direct current from two or more sources in a

cathodic, c-a-t-h-o-d-i-c, contact cell having therein anodes

connected to said sources of direct current, the aluminum hav-

ing an anodized oxide coating formed thereon before entering

said cell through the action of the direct current introduced in

the contact cell itself.

Claim No. 2 States—sorry, claim No. 11, which is the sec-

ond claim which the plaintiff asserts was infringed, states as

follows: In a process for continuously electrolytically anodiz-

ing a moving aluminum web using the cathodic contact cell

technique, the improvement which comprises introducing

anodizing direct current from at least two direct current

sources into said moving aluminum web into at least two

cross-sections thereof, portion of the anodizing being carried

out before the aluminum web enters the contact cell.

Claim No. 14: Process for continuously forming a porous

anodic oxide coating on aluminum which comprises: (i) pass-

ing aluminum through a cathodic contact cell, said aluminum

having a portion of the thickness of said porous anodic oxide

coating already formed thereon before entering said contact

cell through the action of anodizing direct current from a first

source of direct current introduced into said contact cell; and

(ii) further anodizing the already anodized aluminum to form

the remaining portion of the thickness of the porous anodic

Oxide coating by introducing anodizing direct current from a

second source of direct current into said already anodized alu-

minum in said contact cell.

15, Claim No. 15, the final claim asserted by the plaintiff

reads as follows: Process for continuously forming a porous

38a

anodic oxide coating on an aluminum web which comprises:

(1) passing said web through a first anodizing cell having

therein a cathode connected to a first source of direct current:

(11) passing said web from said first anodizing cell into a

cathodic contact cell having therein an anode connected to

first—to said first source of direct current and a second anode

connected to a second source of direct current; (iii) passing

said web from said contact cell into a second anodizing cell

having a cathode therein connected to said second source of

direct current; and (iv) introducing anodizing direct current

from said sources into said web in said contact cell thereby

forming a portion of the thickness of the porous oxide coat-

ing in said first cell and the remaining portion in said second

anodizing cell.

Before moving onto the Markman criteria and the task of

the court, I want to briefly comment upon my interpretation

of the language contained in Claims 14 and 15.

There has been a suggestion in this case that the formation

of a non-porous oxide in the first phosphoric cell would

infringe Claims 14 and 15 if a porous oxide were formed in

the second sulfuric cell. I do not believe that is a reasonable

reading of the language of Claims 14 and 15.

The reasonable reading of the language of Claims 14 and 15

requires that a porous oxide coating be formed in both the

first and second cell. This conclusion is supported by careful

reading of the language of Claims 14 and 15.

I want to move now to the legal standards which I must

apply in rendering my decision on the issue of infringement

in this case.

These claims that I have read from the 754 patent, the four

claims, must be the primary focus of the litigation and of my

analysis of the litigation brought by Mr. Fromson for patent

infringement.

The infringed claims or the claims for infringement must be

analyzed in terms of the way they are drafted in the patent

before us, and not in terms of the way that Anocoil, the plain-

tiff’s company, happens to use that patent. I recognize that

39a

fact as part of my responsibility, and to make the record clear

I want to emphasize that again.

In making my decision with regard to infringement, I am

analyzing the claims as set forth in the patent and I am not

focusing upon how the patent happens to be used in a par-

ticular industrial complex employed by Mr. Fromson.

Mr. Fromson has the burden of demonstrating by a fair pre-

ponderance of the evidence that defendant. Anitec, infringed

the 754 claims asserted either literally or by equivalence.

To prove infringement, Mr. Fromson must show that every

limitation of a patent claim is either exactly found in Anitec’s

accused process or found by a way of substantial equivalence.

The former infringement, if present, is termed literal infringe-

ment and the latter is termed infringement by equivalence.

Infringement, whether literal or under the Doctrine of Equiv-

alence, is a question of fact, and in making my determination

with regard to infringement, I am sitting as a fact finder: in

essence, a jury of one.

The assessment of a claim of infringement is a two-step

process and counsel agree upon this. First, the meaning and

scope of the asserted claims must be determined. Second,

these claims as construed must be compared to Anitec’s

accused process.

Both counsel agree that the most recent case articulately

setting forth this two-step process is called Markman,

M-A-R-K-M-A-N, v Westview Instruments, Incorporated, 52

F.3d 967 at 976 (Fed. Circuit 1995.)

That case is now under review by the Supreme Court but

counsel seem to agree that the articulation of the Standard is

not the point that’s under review.

In other words, the relevant questions are: What did From-

son's patent—what did Fromson patent by the asserted pro-

cess claims? And has Anitec, through the accused process,

used what Mr. Fromson patented by these claims?

The determination of the scope of the claim in issue is a

matter of law. This Court has the power and obligation to con-

strue as a matter of law the meaning of language used in the

patent claim.

40a

In determining the meaning of the patent claim, the court

should consider three principal sources: the claims them-

selves, as set forth in the patent; the specifications, as set

forth in the patent, which is just a term used in patent law to

describe the explanatory sections of the patent, which actually

precedes the claims contained in the patent; and, three, the

prosecution history.

I also am entitled as a matter of my discretion to consider

secondary sources such as expert testimony and other extrin-

sic evidence. And I want to here note that I have exercised my

discretion in this case to consider expert testimony and extrin-

sic evidence for the reasons that I will state in a moment. I

believe that such consideration has been essential, given the

slipperiness of the term “anodization.”

I’m going to turn now to the first portion of the Markman

task, construing the meaning and scope of the asserted claims.

[ said a moment ago that a problem in this case is the slip-

periness of the term “anodization.”

As I mentioned during the trial, Professor Hobbs and I hap-

pened to have been at Oxford at the same time, although we

— didn’t know each other. I read English language and literature.

I’m sure he was doing something more quantitative when he

was at Oxford. But I do find that this case, in essence, or in

many respects, boils down to Juliet’s question to Romeo:

“What is in a Name?” And her comment that “It is Thy Name

That is My Enemy.” And the enemy in this case to some extent

of all the parties is the term “anodization.”

I find that anodization in 1973 did have a fairly clear mean-

ing in terms of its industrial application, and that meaning is

consistent with the definition proposed by the defendants at

page 15 of their memorandum.

And I conclude for reasons that I will state in a moment

that the terms “anodization,” “anodized coating,” and

“anodized oxide coating” under Markman mean an elec-

trolytically-formed, adherent, porous aluminum oxide coat-

ing sufficiently thick (meaning thicker than native oxide) to,

(A) protect against the burning and arcing problems addressed

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by the patent and optionally, (B) to provide a suitable porous

base for other electrolytic treatments in the second anodizing

cell such as electrophoresis, e-l-e-c-t-r-0-p-h-0-r-e-s-i-s, for

metal plating.

I find that in 1973 no reasonable practitioner of this process

would have had the opinion that a non-porous non-adherent

oxide coating, as thin as the native 5 nanometer coating found

naturally in the environment, of post-phosphoric oxide con-

stituted an anodized surface. There are several reasons for

that and I want to go into them.

I have made a determination to assess the claims, the spec-

ifications, the prosecution history, and the extrinsic evidence

in making a determination of the meaning and scope of the

asserted claims because, as I noted, the claim containing the

word anodization carries no automatic meaning.

Defendant’s own expert, Professor Latanision’s, himself

noted that the word anodization has different meanings in dif-

ferent context.

I have determined that the meaning of anodization for pur-

poses of this litigation as it would have been understood in

1973 is as the defendants have proposed it for the following

reasons: First, it is the meaning that is most consistent with

the claims themselves. The claims themselves refer either to

an electrolytic process or to the formation of a porous oxide.

I want to emphasize again that the two claims that refer to

a porous oxide refer to the formation of a porous oxide in

both the preliminary anodizing tank and the secondary

anodizing tank.

Secondly, the meaning proposed by the defendant is most

consistent with the specifications contained in the patent,

which referred to a porous oxide and which referred to thick-

nesses sufficient to prevent burning.

I have a hard time imagining anyone reading the specifi-

cations along with the claims concluding that anything else

could have been intended by this patent.

Third, I find that the prosecution history is most consistent

with the defendant’s view of the appropriate construction of

the term anodizing.

42a

In particular, and as an example without limitation, the

abandonment of the 700 patent in view of the German Papst

patent, I believe, is clear evidence that there was no intended

claim in this patent based upon the formation of merely a bar-

rier_oxide in the first anodizing tank.

Finally, the extrinsic and expert testimony is, I would

describe, overwhelming in support of the defendant’s position

that an oxide coating in excess of 1,000 nanometers would

have been considered in 1973 a minimum for what any person

reasonably skilled in the art would have called anodization

As we all know, the thicknesses of the oxide coating pro-

duced by the phosphoric tank in this litigation were in the

neighborhood of 5 nanometers, 200 times smaller than the

minimum thickness that would have been considered anodiza-

tion in 1973.

Those are the reasons for my concluding that the definition

of the scope of the asserted claims and the Theaning of those

claims must include an electrolytic process forming a porous

Oxide with a thickness of many, many times the native oxide

of approximately 5 nanometers.

Now, when I compare the claims as I have construed them,

to the process at issue in this litigation, it is obvious that the

process does not infringe the Fromson patent.

First of all, the evidence is at best in equipoise as to whether

there is any oxide coating formed in the phosphoric cell.

Obviously, if there is no oxide formed in the phosphoric

acid cell, there can be no claim of any infringement of the

Fromson patent.

The formation of the oxide is rendered doubtful by the evi-

dence of Professor Hobbs’ TEM photos which shows a coat-

ing. an oxide coating which ts thinner after the phosphoric

tank than it was when it went into the phosphoric acid tank It

goes from a thickness of approximately 7 nanometers to

approximately 5 nanometers during that process.

Now, the plaintiff has an explanation for this, and Professor

Hobbs had an explanation for this, but the evidence is con-

flicting and in equipoise, I feel, as to whether there is any real

formation of oxide during the phosphoric processing.

43a

This doubt is underlined by the testimony of the defendant's

experts to the effect that there is no oxide formation at any

voltage under 12 to 13 volts. It is undisputed that the manu-

| facturing processes, which are the object of this infringement

; litigation, all took place at no more than 8 volts.

So if there was the formation of any Oxide coating in the

phosphoric acid tank, it did not occur as a result of any elec-

trolytic process.

In fact, the convincing and credible testimony is that the

same oxide coating would have occurred in the Phosphoric acid

tank if there had been no voltage running through that tank.

To summarize then, preliminarily, the Anitec process has

not been shown convincingly to produce any Oxide coating in

the phosphoric acid tank. Or if it does produce an oxide coat-

ing, it has not been shown to produce this oxide coating as a

result of any electrolytic process, which is an essential

requirement of the plaintiff’s patent.

In addition, the coating which does emerge from the phos-

phoric process, either as a result of something that happens in

the phosphoric tank or as a result of contact with the water or

air after leaving the phosphoric tank, does not result in a coat-

ing which could be described as anodized. Several factors

Support this conclusion.

First, as I noted before, the coating is exceeding thin. Five

E nanometers is roughly the coating that aluminum acquires

spontaneously in the open air. It is the coating that will form

almost instantaneously if you scratch a piece of aluminum

without doing anything else to it.

/ The difference between a 1,000 or 2.000 nanometers oxide

; coating and a 5 nanometer oxide coating is not a difference in

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In addition, whatever coating, or oxide coating emerged

from the phosphoric tank, whether as a result of something

that occurred in the phosphoric tank or whether it occurred in

the air and water after leaving the phosphoric tank, had no

effect whatsoever on the question of burning or arcing in the

44a

web. That coating did not assist the web in resolving this

problem.

In fact, the defendant's experts clearly showed that the

electrical impedance of the aluminum web on leaving the

phosphoric tank was less than it was when it went in, so the

problem of burning was not assisted; it was exacerbated by

the phosphoric tank.

Finally, standard tests used to determine the presence of

anodization—the so-called eraser test, the copper-sulfate test,

and the bubble test—all confirm that anodization does not

occur in the phosphoric tank.

This conclusion supports my earlier finding that the reason

that the phosphoric acid tank was not moved by the defendants

as a result of the letter from Attorney Dionne was because the

process simply did not infringe the Fromson patent.

It is true that the defendants frequently used the word

“anodization™ to refer to what happened in the phosphoric

tank. I considered that a tragedy, in fact, because I think that

if the tank had been referred to as a chemical etch tank or a

rinse tank or had some other term applied to it, this litigation

would never have occurred.

The word “anodization” was used loosely by employees of

the defendant to refer to the phosphoric tank simply because

the web was rendered anodic in the phosphoric tank and not

because there was anything that could be called anodizing as

that word is used as a term of art.

Anodizing did not occur in the phosphoric tank, in other

words, despite the fact that the word anodizing was used

loosely by the employees in connection with the manufac-

turing process.

Underlining this fact is the admitted fact that oxide for-

mation takes place in the etch tank. Indeed, plaintiff's own

expert, Professor Latanision’s, stated during his testimony

that using the term loosely, you could say that what happens

in the etch tank was anodization. Many things could be

described as anodization.

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45a

And the fact that Professor Latanision’s agreed that

anodization might occur in the etch tank merely underlines

and supports my conclusion that the mere use of the word

anodization by the defendants does not suggest or prove or

provide evidence of the fact that the anodization occurring, or

so characterized, in the phosphoric tank actually was the same

as the anodization described in the patent or in any way

infringed the patent.

For those reasons, applying the Markman test, I conclude

that the meaning and scope of the asserted claims are con-

sistent with those which the defendants have contended are

the most appropriate, and that by applying those claims or

comparing those claims to the process as construed by me and

used by the defendants must lead to the conclusion that there

was simply no infringement in this case.

I want to turn now to another issue. which is the question of

laches.

The defendants take the position that no later than 1978 the

plaintiff had sufficient Knowledge to conclude that it had a

cause of action against the defendant.

The facts underlying this have already been averted to

These are that counsel for Fromson visited the manufacturing

facility in 1978, observed the line, and had an opportunity to

interview a principal of the defendant about the manufactur-

ing process on the following day.

All of the processes being used now were in place then, and

the defendant argues the plaintiff knew or should have known

as Of 1978 that he had a cause of action against the defendant.

and that it constituted laches to wait for 13 years before

bringing this lawsuit.

This factual underpinning has two legal ramifications: one

is laches, which I'm talking about now, which would drasti-

cally reduce the damage period, and the other is res judicata,

which I will be talking about in a moment.

The elements of a claim for laches are described in the fed-

eral circuit case of A.C. Aukerman, Company vs RL Chaides,

46a

Construction Company, 960 F.2d 1020, which is a 1992 Fed.

Circuit case.

The two elements are that the plaintiff delayed filing suit

for an unreasonable and inexcusable length of time from the

time the plaintiff knew or reasonably should have known of

its claim against the defendant; and two, that the delay oper-

ated to the prejudice or injury of the defendant.

I have given this issue considerable thought, and I believe

that it is a somewhat close question, but it is my determina-

tion that the defendant has not made out its defense of laches.

I think it would be unfair or unreasonable to expect a per-

son who is an attorney—albeit an unusually experienced

attorney in this particular area—to notice from the production

line the configuration of the tanks with sufficient clarity to

form the basis for filing a lawsuit.

Having spent three weeks being educated myself through the

course of this trial and having had the configuration of the

tanks drawn for me more times than I care to remember, and

having visited the manufacturing site myself personally, I can-

not say that even someone who has been very thoroughly

indoctrinated in a short but intense course on this process

would be in a position by walking through a manufacturing

facility to be able to acquire the sort of specific information

that Rule 11, even in its version in 1978, would have required

to have in hand for the plaintiff to bring a lawsuit.

Similarly, the deposition of Mr. Rorke the next day, while

it did invoke some ambiguous testimony with regard to the

manufacturing process, did not enhance or enrich the knowl-

edge that Mr. Lynch would have gained in 1978 to the point

where I can say that it was unreasonable and inexcusable for

the plaintiff not to bring his lawsuit at that time.

My conclusion with regard to laches is obviously fatal to

the res judicata argument. Even if I were to find laches, I

would not find that the 1976 Advance litigation is res judicata

to this litigation. For one thing, the Advance litigation was

filed in 1976, two years before the plant visit. It would have

required Mr. Lynch to amend his 1976 complaint to add the

additional claim even if he knew of it in 1978.

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Finally, I have doubts as to whether this particular litigation

could be said to arise from exactly the same nucleus of facts

as the Advance litigation, and in any event, I don’t believe

that the defendant has carried its burden with regard to either

of those defenses.

My conclusion, however, is the Opposite with regard to the

defendant's asserted defense of invalidity based upon the

obviousness of the infringement—sorry, theobviousness of

the patent at the time that it was applied for.

Again, I have given this issue a great deal of thought, and

I recognize that the defendant bears the burden of demon-

Strating obviousness and subsequent or consequent invalidity

by clear and convincing evidence,

I am also very aware that the Court must make sure that it

is not using hindsight to determine in 1995 or 1996 what

should have been obvious many, Many years previous.

But I have to say that I found the testimony of Mr. Barkman

extremely convincing on this point, and I believe looking at

Chubb, Cook, Barkman, and the other inventions that pre-

ceded this one, that the patent itself would have been obvious

to an experienced, reasonably experienced person of ordinary

Skill at the time of the patent application, and for these rea-

sons | find that the patent was invalid as well as not infringed.

Turning to the next point, the question of inequitable con-

duct. I find that the defendant has not Carried its burden of

Showing inequitable conduct on the part of plaintiff and plain-

tiff’s counsel in the Prosecution of the patent application.

While an argument could be made that there was prior art,

including the Cook and Barkman material, which perhaps

Should have been disclosed, I do not believe that the decision

not to disclose this demonstrates by anything approaching a

clear and convincing standard of any impropriety on the part

of the patent applicant.

Beyond this, there is simply no evidence, no substantial

evidence beyond mere speculation demonstrating any intent

on the part of plaintiff's counsel to perpetuate any type of

fraud on the patent office. And I believe that the defense of

48a

inequitable conduct and invalidity of the patent based upon

the inequitable conduct has not been proved.

Finally, I want to address the issue of damages. On this

question, the plaintiff faces layers of hurdles in proving his

damages, and | want to address each one of them.

First, the potential damages in this case have already been

substantially limited by my previous decision granting sum-

mary judgment for the defendants, Sullivan and Rorke, for fail-

ure to mark as required by the applicable federal statute.

Secondly, I find, and I make this finding for purposes of

any future proceedings, that even if I am incorrect with regard

to my conclusion on infringement and incorrect with regard

to my conclusion as to obviousness, and a reviewing court

were to find that the patent was valid and infringed, there is

simply no convincing evidence of any willfulness on the part

of the defendant in infringing the patent, if indeed they are

found to have infringed.

In fact, the evidence is quite to the contrary. They

responded promptly to Mr. Dionne’s instruction that they had

violated the patent and reconfigured their production line.

As I said before, I believe this was done in good faith. Even

if a court were to disagree with me with regard to my finding

of infringement and find that in fact there was infringement

in the phosphoric tank, the oxide formation resulting from the

phosphoric tank is so minimal that as Professor Hobbs testi-

fied it could only be detected with the most advanced scien-

tific procedures. Even in 1995 the equipment and the skill to

use these proceedings can only be found in places like MIT.

They are not commercially available, let alone in 1978 at the

times that are relevant to this litigation.

My conclusion is that the defendants were in good faith

with regard to their own decision that nothing occurred in the

phosphoric tank that violated Mr. Fromson’s patent.

Certainly the plaintiff has not shown by clear and con-

vincing evidence any willfulness on the part of the defendant.

So just as there is a limitation on damages based upon the

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49a

failure to mark, there is also no enhancement of damages

based upon willfulness.

The final layer is that the defendant’s theory regarding the

calculation of damages is to me manifestly fairer and more

reasonable than the theory offered by the plaintiff for the cal-

culation of damages.

My recollection of the testimony is that witnesses who tes-

tified on behalf of the defendant confirmed that alternative

processes existed that would have produced a product of equal

quality without any infringement of Mr. Fromson’s patent.

I believe I am entitled—indeed. | believe I am obligated—

to take that fact into consideration in determining what appro-

priate and fair damages would be in this case.

I find that the defendants could, without risking the quality

of their product, have altered their production line in 1978 to

avoid infringing any patent of the plaintiff’s for a cost of

approximately $42,500.

If I had found that the defendants had infringed plaintiff's

patent, if I had found that plaintiff's patent was valid, I would

have imposed damages in the amount of $42,500 plus 50 per-

cent, for a total damage award of $61,750, which I believe

would have been consistent with the Georgia-Pacific descrip-

tion of the calculation of damages in this type of litigation. ]

would also have awarded the plaintiff interest from the date

of the filing of the lawsuit.

Obviously, I’m not going to be awarding any damages in the

case because I find that the patent was not infringed and | find

that the patent was not valid. but if a reviewing court were to

find that I am incorrect on either of those conclusions, I would

like to make it clear on the record to simplify subsequent pro-

ceedings that the damage award I would have made would

have been $61,750 plus interest from the date of filing.

Those constitute my findings of fact and conclusions of law

with regard to the issues raised in this case. I’ve gone on for

some time. I appreciate your all being here, and if there’s

nothing else from counsel, I will recess and bid you all good

bye for now.

50a

Anything further, Mr. Lynch?

Mr. LYNCH: Just one thing. When is this going to be

entered, Your Honor?

THE Court: I’m going to order that the clerk enter judg-

ment in favor of the defendant in accordance with my oral

findings and conclusions tomorrow.

Mr. LYNCH: Fine.

THE Court: And you will be receiving a copy of the judg-

ment.

Mr. LYNCH: Fine. Thank you.

Mr. DUDINE: Your Honor, | certainly don’t disagree with

the judgment, but two grammatical or maybe typographicals

that you might wish to consider in reviewing the transcript,

you referred to in the background of the patent to Mr. From-

son obtaining a new replacement patent. You might have

meant to say replacement patent, or you might have meant to

say re-issued patent, I don’t know. And the other one —

THE Court: (Interposing) I wouldn’t—I probably should

distinguish between the terms but I wouldn’t. That’s essen-

tially what I did mean, a re-issued patent.

MR. DUDINE: Fine. The second one was where you were

relating to Dr. Moran’s electrical impedance test showing that

the impedance of the web was less on exiting. I believe you

meant to indicate the impedance of the oxide on the web.

THE CourRT: What I meant to say, and I'll make this clear,

is that the vulnerability of the web to burning following the

phosphoric bath was greater and not lesser, and I think that’s

the essential point.

Mr. DUDINE: Thank you, Your Honor, and I’m sure Mr.

Lynch and I join in extending our appreciation for your

patience and courtesy.

THE Court: As I told both of you privately, I have enjoyed

working with both of you. I’ve enjoyed getting to know the

parties in the case. I’m sorry to have to decide against anyone

because the case was so well tried and the facts came across

so well. Thank you all very much. Court ts in recess.

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§ 103 Conditions for patentability; nonobvious subject

matter.

(a) A patent may not be obtained though the invention is

not identically disclosed or described as set forth in section

102 of this title, if-the differences between the subject matter

sought to be patented and the prior art are such that the sub-

ject matter as a whole would have been obvious at the time

the invention was made to a person having ordinary skill in

the art to which said subject matter pertains. Patentability

shall not be negatived by the manner in which the invention

was made.

(b) (1) Notwithstanding subsection (a), and upon timely

election by the applicant for patent to proceed under this sub-

section, a biotechnological process using or resulting in a

composition of matter that is novel under section 102 and

nonobvious under subsection (a) of this section shall be con-

sidered nonobvious if-

(A) claims to the process and the composition of matter

are contained in either the same application for patent or

in separate applications having the same effective filing

date; and

(B) the composition of matter. and the process at the

time it was invented, were owned by the same person

or subject to an obligation of assignment to the same

person.

(2) A patent issued on a Process under paragraph (1)-

(A) shall also contain the claims to the composition of

matter used in or made by that process, or

(B) shall, if such composition of matter is claimed in

another patent, be set to expire on the same date as such

other patent, notwithstanding section 154.

(3) For purposes of paragraph (1), the term “biotechno-

logical process” means-

§2a

(A) a process of genetically altering or otherwise induc-

ing a single-or multi-celled organism to-

(i) express an exogenous nucleotide sequence,

(11) inhibit, eliminate augment, or alter expression

of an endogenous nucleotide sequence, or

(ill) express a specific physiological characteristic

not naturally associated with said organism;

(B) cell fusion procedures yielding a cell line that

expresses a specific protein, such as a monoclonal anti-

body; and

(C) a method of using a product produced by a process

defined by subparagraph (A) or (B), or a combination of

subparagraphs (A) and (B).

(c) Subject matter developed by another person, which

qualifies as prior art only under subsection (f) or (g) of sec-

tion 102 of this title, shall not preclude patentability under

this section where the subject matter and the claimed inven-

tion were, at the time the invention was made, owned by the

Same person or subject to an obligation of assignment to the

same person.

$112 Specification - 35 U.S.C. § 112

The specification shall contain a written description of the

invention, and of the manner and process of making and using

it, in such full, clear, concise, and exact terms as to enable

any person skilled in the art to which it pertains, or with

which it is most nearly connected, to make and use the same,

and shall set forth the best mode contemplated by the inven-

tor of carrying out his invention.

The specification shall conclude with one or more claims

particularly pointing outp and distinctly claiming the subject

matter which the applicant regards as his invention.

A claim may be written in independent or, if the nature of

the case admits, in dependent or multiple dependent form.

53a

Subject to the following paragraph, a claim in dependent

form shall contain a reference to a claim previously set forth

and then specify a further limitation of the subject matter

claimed. A claim in dependent form shall be construed to

incorporate by reference all the limitations of the claim to

which it refers. ,

A claim in multiple dependent form shall contain reference,

in the alternative only, to more than one claim previously set

forth and then specify a further limitation of the subject mat-

ter claimed. A multiple dependent claim shall not serve as a

basis for any other multiple dependent claim. A multiple

dependent claim shall be construed to incorporate by refer-

ence all the limitations of the Particular claim in relation to

Which it is being considered.

An element in a claim for a combination may be expressed

as a means or step for performing a specified function with-

out the recital of structure, material. or acts In support

thereof, and such claim shall be construed to cover the cor-

responding structure, material, or acts described in the spec-

ification and equivalents thereof.

54a

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

96-1286, 96-1287

March 25, 1998, Decided

CYBOR CORPORATION,

Plaintiff-Appellant,

FAS TECHNOLOGIES, INC., and FASTAR LTD.,

Defendants-Cross Appellants.

Appealed from: U.S. District Court for the Northern Dis-

trict of California. 93-CV-20712. Judge Whyte.

AFFIRMED.

Tod L. Gamlen, Baker & McKenzie, of Palo Alto, Cali-

fornia, argued for plaintiff-appellant. With him on the brief

was David I. Roche, of Chicago, Illinois.

Douglas A. Cawley, Hughes & Luce, L.L.P.. of Dallas,

Texas, argued for defendants-cross appellants. With him on

the brief was Aubrey Nick Pittman.

SRE ss RARE TERE OR

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Oe Ee eat et IO aie Deed ie etn

55a

Before MAYER, Chief Judge,’ RICH, NEWMAN, Circuit

Judges, ARCHER, Senior Circuit Judge,? MICHEL, PLAGER.

LOURIE, CLEVENGER, RADER. SCHALL, BRYSON, and

GAJARSA, Circuit Judges. Opinion for the court filed by

Senior Circuit Judge ARCHER, in which Circuit Judges RICH,

MICHEL, PLAGER, LourRIE, CLEVENGER, SCHALL, BRYSON.

and GAJARSA join: Circuit Judge RADER joins as to part IV.

Concurring opinions filed by Circuit Judges PLAGER and

BRYSON. Opinions concurring in the judgment filed by Chief

Judge MAYER, which Circuit Judge NEWMAN joins, and Cir-

cuit Judge RADER. Additional views filed by Circuit Judge

NEWMAN, which Chief Judge MAYER joins.

ARCHER, Senior Circuit Judge.

Cybor Corporation (Cybor) appeals from the judgment of

the United States District Court for the Northern District

of California, 93-CV-20712 (Oct. 31, 1995), that Cybor

pump, Model 5226, infringes the claims of U.S. Patent No.

5,167,837 (the °837 patent), currently owned by FAStar. Ltd.

and exclusively licensed to FAS Technologies, Inc. (collec-

tively FAS). FAS cross-appeals the judgment as to the dam-

ages calculation, the denial of enhanced damages, and the

refusal to declare the case exceptional and to award attorney

fees. A panel heard oral argument on January 29, 1997.

Before its opinion issued. however, this court sua sponte on

September 5, 1997 ordered that this case be decided in banc

We affirm the district court's judgment in its entirety. In so

doing, we conclude that the Supreme Court’s unanimous affir-

mance in Markman vy. Westview Instruments, Inc.. 517 US

370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996) (Markmen II).

Chief Judge Haldane Robert Mayer assumed the posit.on of

Chief Judge on December 25, 1997

Senior Circuit Judge Glenn L Archer, Jr. vacated the position of

Chief Judge on December 24. 1997

S6a

of our in banc judgment in that case fully supports our con-

clusion that claim construction, as a purely legal issue, is sub-

ject to de novo review on appeal. See Markman v. Westview

Instruments, Inc., 52 F.3d 967, 979, 34 U.S.P.Q.2D (BNA)

132], 1329 (Fed. Cir. 1995) (in banc) (Markman I).

BACKGROUND

The °837 patent discloses a device and method for accu-

rately dispensing industrial liquids. The primary use of the

patented inventions is to dispense small volumes of liquid

onto semiconductor wafers. Claim 1 is representative and

reads:?

1. In a device for filtering and dispensing fluid in a pre-

cisely controlled manner, the combination of:

first pumping means;

second pumping means in fluid communication with

said first pumping means; and filtering means between

said first and second pumping means, whereby said first

pumping means pumps the fluid through said filtering

means to said second pumping means;

in which each of said first and second pumping means

includes surfaces that contact the fluid, said surfaces

being of materials that are non-contaminating to indus-

trial fluids which are viscous and/or high purity and/or

sensitive to molecular shear; and comprising means to

enable said second pumping means to collect and/or dis-

pense the fluid, or both, at rates or during periods of

operation, or both, which are independent of rates or

periods of operation, or both, respectively, of said first

pumping means.

The actual patent claim is not written in paragraph form as

shown here: we have added the breaks for ease of reference to the claim’s

limitations.

§ rc

a

=

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2

=4

Pa

Pd

~

bef

S7a

Figure 2 of the patent illustrates a preferred embodiment of

the invention:

[FIGURE FROM ORIGINAL OMITTED]

In the preferred embodiment, the fluid to be filtered enters

the system through tubing 14 and travels through the ball

valve 24 to the first pumping means 30 via tubing 41. The

pumping means 30 then pumps the liquid back through the

ball valve 24, which rotates to close tubing 14 and open tub-

ing 102. The liquid then flows to the filter means 100 in

which it is filtered. The filtered liquid (filtrate) then flows

through tubing 116 and into the second pumping means 120.

The filtrate can then be immediately dispensed, accumulated

in the upper compartment 131 of the pumping means 120, or

simultaneously accumulated and dispensed. The filtrate is

dispensed in precise measurements by the second pump-

ing means 120 through tubing 16 at rates and during periods

of operation that are independent of the first pumping means

30.

The dual stage pump manufactured by Cybor is used for

the same purpose as that of the patented invention—appli-

cation of liquid in precise, small volumes onto semiconduc-

tor wafers. It is illustrated below:

[FIGURE FROM ORIGINAL OMITTED}

In the accused device, pump | draws the liquid from a

source bottle through a feed line and through a three-way

solenoid valve. The solenoid valve then closes the passage

to the source bottle and opens the line to the filter, allow-

ing pump | to deliver the liquid to the filter. After the liquid

passes through the filter, the filtrate flows to a reservoir

external to pump 2, where it accumulates until dispensed by

pump 2. It is uncontested that the external reservoir, coupled

with the second pump, allows the system to accumulate, dis-

pense, or simultaneously accumulate and dispense filtrate.

The filtrate leaves the reservoir through another three-way

solenoid connector, or valve, and enters the second pump. The

58a

solenoid valve then closes the passage to the reservoir and

opens the dispense port, through which the second pump dis-

penses the filtrate back through the solenoid valve and on

through the dispensing port and line.

On September 23, 1993, Cybor sued FAS for a declaratory

judgment of non-infringement, invalidity, and unenforce-

ability of the ’837 patent. FAS counterclaimed? for infringe-

ment of all twenty claims and sought damages and injunctive

relief. The case proceeded to trial, and the jury found by spe-

cial verdict that the claims were not invalid, that Cybor lit-

erally infringed all the claims except 11, 12, and 16, and that

these three remaining claims were infringed under the doc-

trine of equivalents. The jury determined the infringement to

be willful for all claims except claim 16.

After the jury rendered its liability verdict, the district court

denied Cybor’s renewed motion for Judgment as a Matter of

Law (JMOL) that it did not infringe the °837 patent, and also

denied FAS’s motion for an exceptional case award of attor-

ney fees pursuant to 35 U.S.C. § 285 (1994). Prior to the entry

of final judgment, however, this court decided Markman I,

which held that claim construction is a matter of law to be

determined exclusively by the judge. Cybor then filed a

motion for reconsideration of its JMOL motion in light of that

decision, but the district court denied reconsideration. After

further proceedings on damages, the district court on October

11, 1995, filed its Findings of Fact and Conclusions of Law

permanently enjoining Cybor from making, using, or selling

its system, awarding FAS $130,912 in damages, and denying

FAS’s motion for enhanced damages under 35 U.S-C. § 284

(1994). The district court entered its final judgment on Octo-

ber 31, 1995, and these appeals followed.

4

Both FAStar and FAS Technologies filed an answer to Cybor’s

complaint. FAStar alone originally filed the counterclaim, but FAS Tech-

nologies was joined as a counterclaimant after the jury trial on liability

was completed.

59a

DISCUSSION

I.

A. This court reviews a denial of a motion for JMOL de

novo by reapplying the JMOL standard. See Read Corp. v.

Portec, Inc., 970 F.2d 816, 821. 23 U.S.P.Q.2D (BNA) 1426,

1431 (Fed. Cir. 1992). Under this Standard, we can reverse a

denial of a motion for JMOL only if the jury’s factual find-

ings are not supported by substantial evidence or if the legal

conclusions implied from the jury’s verdict cannot in law be

supported by those findings. See Kearns y. Chrysler Corp., 32

F.3d 1541, 1547-48, 3] U.S.P.0.2D (BNA) 1746, 1751 (Fed.

Cir. 1994). a

An infringement analysis involves two Steps. First, the

court determines the scope and meaning of the patent claims

asserted, see Markman II, 116 S. Ct. at 1387, and then the

properly construed claims are compared to the allegedly

infringing device, see Read Corp., 970 F.2d at 82], 23

U.S.P.Q.2D (BNA) at 143]. Although the law is clear that the

judge, and not the jury, is to construe the claims. this case

presents the issue of the proper role of this court in reviewing

the district court’s-claim construction.

In Markman I, we held that, because claim construction is

purely a matter of law, this court reviews the district court’s

claim construction de novo on appeal. See Markman I, 52

F.3d at 979, 981, 34 U.S.P.Q.2D (BNA) at 1329, 133]. In

reaching this conclusion, we recognized that through this pro-

cess of construing claims by, among other things, using cer-

tain extrinsic evidence that the court finds helpful and

rejecting other evidence as unhelpful, and resolving disputes

©n route to pronouncing the meaning of claim language as a

matter of law based on the patent documents themselves, the

court is not crediting certain evidence over other evidence or

making factual evidentiary findings. Rather, the court is look-

ing to the extrinsic evidence to assist in its construction of

the written document, a task it is required to perform. The

district court’s claim construction, enlightened by such extrin-

60a

sic evidence as may be helpful, is still based upon the patent

and prosecution history. It 1s therefore still construction, and

is a matter of law subject to de novo review. /d. at 98], 34

U.S.P.Q.2D (BNA) at 133] (emphasis in original and footnote

omitted).

After the Supreme Court’s decision in Markman II, panels

of this court have generally followed the review standard of

Markman I. See Serrano v. Telular Corp., 111] F.3d 1578, 42

U.S.P.Q.2D (BNA) 1538 (Fed. Cir. 1997); Alpex Computer

Corp. v. Nintendo Co., 102 F.3d 1214, 40 U.S.P.Q.2D (BNA)

1667 (Fed. Cir. 1996); Insituform Techs., Inc. v. CAT Con-

tracting, Inc., 99 F.3d 1098, 40 U.S.P.Q.2D (BNA) 1602 (Fed.

Cir. 1996); General Am. Transp. v. Cryo-Trans, Inc., 93 F.3d

766, 39 U.S.P.Q.2D (BNA) 1801 (Fed Cir. 1996). In some

cases, however, a clearly erroneous standard has been applied

to findings considered to be factual in nature that are incident

to the judge’s construction of patent claims. See Eastman

Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547,

1555-56, 42 U.S.P.Q.2D (BNA) 1737, 1742 (Fed. Cir. 1997);

Serrano, Ill F.3d at 1586, 42 U.S.P.Q.2D (BNA) at 1544,

(Mayer, J., concurring); Wiener v. NEC Elecs. Inc., 102 F.3d

534, 539, 4] U.S.P.Q.2D (BNA) 1023, 1026 (Fed. Cir. 1996);

Metaullics Sys. Co. v. Cooper, 100 F.3d 938, 939, 40

U.S.P.0.2D (BNA) 1798, 1799 (Fed. Cir. 1996).° We ordered

It is difficult to reconcile the language and reasoning in this

court’s recent opinion in Fromson v. Anitec Printing Plates, Inc., 132

F.3d 1437, 45 U.S.P.Q.2D (BNA) 1269 (Fed. Cir. 1997), with Markman

I, although the opinion purports to do so. As we stated in Markman I,

“extraneous evidence [such as the expert testimony in Fromson] is to be

used for the court’s understanding of the patent” and in doing so, the

court “is not crediting certain evidence over other evidence or making

factual evidentiary findings.” Markman I, 52 F.3d at 981, 34 U.S.P.Q.2D

(BNA) at 133] (emphasis in original). Rather, we considered such evi-

dence to be an aid to the court in coming to a correct conclusion as to the

true meaning of the language employed in the patent. See id. at 980, 34

U.S.P.Q.2D (BNA) at 1330. The Supreme Court in effect confirmed this

when it stated that the credibility determinations among experts “will be

subsumed within the necessarily sophisticated analysis of the whole doc-

ument.” Markman II, 116 S. Ct. at 1395. In Fromson, the district court

5

At agieapens> beh tO DL Bs. Ge “aus

61a

that this case be decided in banc to resolve this conflict, and

we conclude that the de novo standard of review as stated in

Markman I remains good law.

B. The Supreme Court framed the question before it in

Markman IJ in the ‘Iternative: “whether the interpretation of

a so-called patent claim. . . is a matter of law reserved

entirely for the court, or subject to a Seventh Amendment

guarantee that a jury will determine the meaning of any dis-

puted term of art about which expert testimony is offered.”

Markman II, 116 S. Ct. at 1387 (emphasis added). When it

answered that question by stating that “we hold that the con-

struction of a patent, including terms of art within its claim.

is exclusively within the province of the court,” id.. the Court

held that the totality of claim construction is a legal question

to be decided by the judge. Nothing in the Supreme Court’s

Opinion supports the view that the Court endorsed a silent.

third option—that claim construction may involve subsidiary

or underlying questions of fact.® To the contrary, the Court

expressly stated that “treating interpretive issues as purely

legal will promote (though not guarantee) intrajurisdictional

certainty through the application of stare decisis on those

questions not yet subject to interjurisdictional uniformity

under the authority of the single appeals court.” Id. at 1396

“relied primarily on the '754 specification which describes Fromson’s

first anodization step as producing [a] porous oxide” barrier. Fromson,

132 F.3d at 1442, 45 U.S.P.0.2D (BNA) at 1272. Although the extrinsic

evidence - expert testimony, prior art, and scientific tests - confirmed the

district court’s claim construction, it was directed primarily to whether

Anitec’s thin, nonporous oxide layer infringed the claims. To this extent,

the holding in Fromson affirming the district court’s claim interpretation

fo'lows Markman I. See Bell & Howell Document Management v. Altek

Sys., 132 F.3d 701, 705-06, 45 U.S.P.0.2D (BNA) 1033, 1038 (Fed. Cir

1997); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576. 1584, 39

U.S.P.Q.2D (BNA) 1573, 1578 (Fed. Cir. 1996).

If this were so, surely the Supreme Court would have discussed

whether subsidiary or underlying fact questions should be decided by the

judge or the jury.

62a

(emphasis added); see also id. at 1394 (“ ‘Questions of con-

struction are questions of law for the judge, not questions of

fact for the jury” ’ (quoting A. Walker, Patent Laws §75 at

173 (3d.ed. 1895))). Indeed, the sentence demonstrates that

the Supreme Court endorsed this court’s role in providing

national uniformity to the construction of a patent claim, a

role that would be impeded if we were bound to give defer-

ence to a trial judge’s asserted factual determinations incident

to claim construction.

The opinions in some of our cases suggesting that there

should be deference to what are asserted to be factual under-

pinnings of claim construction assert support from the

language in Markman II stating that “construing a term of art

after receipt of evidence” is a “mongrel practice,” id. at 1390,

and that the issue may “ ‘fall| ] somewhere between a pris-

tine legal standard and a simple historical fact,’ ” id. at 1395

(quoting Miller v. Fenton, 474 U.S. 104, 114, 88 L. Ed. 2d

405, 106 S. Ct. 445 (1985)). These characterizations,

however, are only prefatory comments demonstrating the

Supreme Court’s recognition that the determination of

whether patent claim construction is a question of law or fact

is not simple or clear cut; they do not support the view that

the Court held that while construction is a legal question for

the judge, there may also be underlying fact questions. To the

contrary, the court noted 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 sound administration of justice, one judi-

cial actor is better positioned than another to decide the issue

in question.” Id. (quoting Miller v. Fenton, 474 U.S. 104, 114,

88 L. Ed. 2d 405, 106 §. Ct. 445 (1985)) (emphasis added).

Thus, the Supreme Court was addressing under which cate-

gory, fact or law, claim construction should fall and not

whether it should be classified as having two components,

fact and law.

Further supporting the conclusion that claim construction

is a pure issue of law is the Supreme Court’s analysis of the

Se ee ET ee ee ee ae ee

63a

role of expert testimony in claim construction. Generally, the

Court has recognized the important role played by juries in

evaluating the credibility of a witness. a key consideration in

determining the appropriate judicial actor to decide an issue.

See Miller, 474 U.S. at 114. In the context of claim con-

struction, however, the Court reasoned that. while credibility

determinations theoretically could play a role in claim con-

struction, the chance of such an occurrence is “doubtful” and

that “any credibility determinations will be subsumed within

the necessarily sophisticated analysis of the whole document.

required by the standard construction rule that a term can be

defined only in a way that comports with the instrument as a

whole.” Markman II, 116 S. Ct. at 1395: see also id. at 1394-

95 (“ ‘The testimony of witnesses may be received. . . . But

in the actual interpretation of the patent the court proceeds

upon its Own responsibility, as an arbiter of the law. giving

to the patent its true and final character and force.’ ” (quoting

2 W. Robinson, Law of Patents § 732 at 481-83 (1890))). Such

a conclusion is consistent with the view that claim construc-

tion, as a form of “document construction.” id. at 1395, is

solely a question of law subject to de novo review, as noted

above. See Markman I, 52 F.3d at 98]. 34 U.S.P.0.2D (BNA)

at 133].

Moreover, while the Supreme Court's opinion conclusively

and repeatedly states that claim construction is purely legal,

another view of the Court’s decision also demonstrates that

our standard of review remains intact. The Court’s primary

concern in Markman II was the Seventh Amendment issue of

whether a right to a jury trial on claim construction inured to

a party due to any potential factual issues involved. Because

the Court did not discuss the appellate standard of review,

Markman II can be read as addressing solely the respective

roles of the judge and jury at the trial level and not the rela-

tionship between the district courts and this court. Although

our conciusion in Markman I that claim construction is a mat-

ter of law was affirmed in all respects, even this narrower

64a

view of Markman II leaves Markman I as the controlling

authority regarding our standard of review.

Thus, we conclude that the standard of review in Markman

I, as discussed above, was not changed by the Supreme

Court’s decision in Markman II, and we therefore reaffirm

that, as a purely legal question, we review claim construction

de novo on appeal including any allegedly fact-based ques-

tions relating to claim construction. Accordingly, we today

disavow any language in previous opinions of this court

that holds, purports to hold, states, or suggests anything to the

contrary, see, e.g., Fromson, 132 F.3d at 1444, 45 U.S.P.Q.2D

(BNA) at 1274 (“The district court’s findings of scientific/

technological fact were material to the issue of construction

of the term ‘anodizing.’”’); Eastman Kodak, 114 F.3d at 1555-

56, 42 U.S.P.Q.2D (BNA) at 1742 (affirming district court’s

claim construction “recognizing both the trial court’s ‘trained

ability to evaluate [expert] testimony in relation to the over-

all structure of the patent’ and the trial court’s ‘better position

to ascertain whether an expert’s proposed definition fully

comports with the specification and claims. . . .” (quoting

Markman I], 116 S. Ct. at 1395)); Wiener, 102 F.3d at 539, 4]

U.S.P.Q.2D (BNA) at 1026 (citing Markman II as controlling

our standard of review and parenthetically quoting language

from Markman II that claim construction “ ‘falls somewhere

between a pristine legal standard and a simple historical

fact.” ””); Metaullics, 100 F.3d at 939, 40 U.S.P.Q.2D (BNA) at

1799 (“Because claim construction is a mixed question of law

and fact, we may be required to defer to a trial court’s factual

findings. Where a district court makes findings of fact as part

of claim construction, we may not set them aside absent clear

error.” (citations omitted)).

Il.

Cybor argues in this appeal that the district court improp-

erly construed the two means-plus-function limitations in the

relevant claims of the '837 patent—the “second pumping

ieee als Seti elite IIS CRESS

6Sa

means” and the “means to enable” the second pumping means

to accumulate liquid, dispense liquid, or both. Cybor also

challenges the district court’s construction of the limitation

requiring that the fluid flow “to a second pumping means.”

All of these arguments turn on the question of whether the

district court erred in refusing to limit the scope of the claims

based on statements made to the examiner during prosecu-

tion.’ In particular, Cybor contends that the prosecution his-

tory does not allow the claimed “second pumping means” to

cover any reservoir for accumulating fluid that is external

to the second pump. Because Cybor’s reservoir is external,

Cybor argues that its second pump does not meet the second

pumping means limitation. Its second pump alone, without

regard to the external reservoir, is not able to satisfy the func-

tional limitation of enabling the second pumping means to

“accumulate liquid, dispense liquid, or both.” With an inter-

vening external reservoir, Cybor also argues that the fluid

does not flow “to” a second pumping means from the filter

means as required by the claims.

A. Under § 112, P 6, an accused device with structure not

identica! to the structure described in the patent will literally

infringe the patent if the device performs the identical func-

tion required by the claim with a structure equivalent to that

described in the patent. See Micro Chem.., Inc. v. Great Plains

Chem. Co., 103 F.3d 1538, 1547, 4] U.S.P.0.2D (BNA) 1238,

1245-46 (Fed. Cir. 1997). Prosecution history is relevant to

: Because Cybor’s claim construction arguments relate to the nar-

rowing of claim scope required by prosecution history, we need not con-

sider whether equivalence under § 112, P6is a question of law or fact.

See Markman I, 52 F.3d at 977 n.8, 34 U.S.P.Q.2D (BNA) at 1327 n.8.

Here, the question of equivalence was given to the jury and Cybor does

not challenge the equivalence of its accused device if prosecution history

does not narrow the scope of the claims as Cybor argues. One concurring

opinion also recognizes that Cybor’s claim construction arguments relate

solely to whether the prosecution history requires the exclusion of the

external “reservoir structures like Cybor’s from consideration as an

equivalent under § 112(6).” See Opinion Concurring in the Judgment of

Chief Judge Mayer, infra, at 13-14.

66a

the construction of a claim written in means-plus-function

form. See United States v. Telectronics, Inc., 857 F.2d 778,

782, 8 U.S.P.Q.2D (BNA) 1217, 1220 (Fed. Cir. 1988); Rite-

Hite Corp. v. Kelley Co., 819 F.2d 1120, 1123, 2 U.S.P.Q.2D

(BNA) 1915, 1917 (Fed. Cir. 1987). Indeed, “just as prose-

cution history estoppel may act to estop an equivalence argu-

ment under the doctrine of equivalents, positions taken before

the PTO may bar an inconsistent position on claim con-

struction under § 112, P 6.” Alpex, 102 F.3d at 1221, 40

U.S.P.Q.2D (BNA) at 1673. Clear assertions made in support

of patentability thus may affect the range of equivalents under

§ 112, P6. Cf. American Permahedge, Inc. v. Barcana, Inc.,

105 F.3d 1441, 1446, 41 U.S.P.Q.2D (BNA) 1614, 1618 (Fed.

Cir. 1997); Athletic Alternatives, /nc. v. Prince Mfg., Inc., 73

F.3d 1573, 1582, 37 U.S.P.Q.2D (BNA) 1365, 1373 (Fed. Cir.

1996). The relevant inquiry is whether a competitor would

reasonably believe that the applicant had surrendered the

relevant subject matter. See /nsituform Techs., Inc., v. CAT

Contracting, Inc., 99 F.3d 1098, 1107-08, 40 U.S.P.Q.2D

(BNA) 1602, 1608 (Fed. Cir. 1996).

Cybor relies on two responses by the inventors to the exam-

iner’s obviousness rejection of the claims for its position that

a pump structure with any external reservoir was given up

during prosecution. In each instance, the examiner had cited

Storkebaum et al., U.S. Patent No. 4,749,476 (Storkebaum).

Storkebaum’s container not only collects permeate; it also

vents or discharges the fluid. The container feeds a convey-

ing pump that powers the flow of a big circulation loop. The

design of Storkebaum is not for the controlled dispensing of

fluid. In the first response, the inventors argued that “Storke-

baum specifically provides a separate container 12 for col-

lecting permeate. Obviously, Storkebaum does not teach the

collection of fluid in a second pumping means.” (Emphasis

added). In response to a later rejection, the inventors argued

that “Storkebaum discloses a permeate collecting container 12

that is separate from the conveying pump 13. Nothing in

Storkebaum discloses or makes obvious the claimed inven-

Se ee ee eae a ae eee

67a

tion, nor the precise or flexible control provided by the sec-

ond pump means of Claim 1.” (Emphasis in original). From

these statements, Cybor contends that FAS is precluded from

asserting that a pump device with an external] reservoir is a

structural equivalent under § 112, P 6 to its patented device

and that the district court, as a matter of law. should not have

permitted the jury to consider its external reservoir in deter-

mining whether the differences between Cybor’s second pump

and the °837 patent's second pumping means were insub-

stantial. FAS responds that the district court made all of the

required determinations regarding claim construction and, in

doing so, fully considered the prosecution history at issue. It

then submitted the construed claims to the jury for its deter-

mination of infringement.®

We are not convinced that the district court erred in its

claim construction or in denying Cybor’s motion for JMOL.

The district court construed several limitations, or disputed

language, in the claims. With respect to the second pumping

means limitation, the jury was instructed that it “refers to a

structure identical to the structure disclosed in the specifi-

cation of the patent, or the equivalent to that structure, which

performs the function of fluid accumulator/dispense pump.”

With this instruction, the district court did not narrow the

scope of the claim language to exclude a pump with any

external reservoir as urged by Cybor. Instead, the jury was

instructed to determine whether Cybor’s device, with its pump

and attached reservoir, was Structurally equivalent and

whether it had the same functionality as the second pumping

means of the 837 patent.°

. Cybor contends that the jury was not adequately instructed on

the meaning of the claims. We note. however, that this case was tried

before Markman I and that, while a fuller instruction to the jury on the

meaning of the claim might be desirable. the instructions were not erro-

neous. Moreover, the district court’s denial of the motion for reconsid-

eration approved the additional. presumptive construction of the claims

by the jury.

9

One concurring opinion Suggests that this court cannot affirm

the decision below under a de novo standard of review, asserting that the

68a

From our reading of the patent document and the prosecu-

tion history, we agree with the district court’s construction

and jury instructions. While it is quite clear the inventors lim-

ited the scope of their claims to overcome the Storkebaum

reference, they emphasized the separateness of Storkebaum’s

container, both physically and functionally, as compared to

the claimed invention. For example, the statements noted that

Storkebaum “provides a separate container” and that it has a

container “that is separate from the conveying pump.” The

specification of the °837 patent elaborates on the structure of

the second pumping means and its “means to enable” as hav-

ing tubing connecting the second pumping means to the sec-

ond incremental pump advancement means, see col. 5, lines

49-52. While in the preferred embodiment, the ’837 patent

disclosed a storage reservoir inside the pump, it is not dis-

puted that the claimed second pumping means encompasses

both a pump and a reservoir having connecting tubing.

The Storkebaum device differs materially from the patented

invention. Storkebaum discloses a filtering system to separate

pressure sensitive substances from a liquid suspension. It has

a conveying pump that operates to circulate the fluid through

a large closed circuit loop. It also has a separate reservoir to

collect and regulate the amount of permeate in the closed cir-

cuit. Thus, the container in the Storkebaum apparatus has the

separate function and capability of venting or discharging

excessive liquid in order to prevent undesirable build up of

liquids in the system.

In view of the significant differences between the cited

Storkebaum patent and the claimed invention, including the

structurally separate container and independent function of

discharging excess fluid in Storkebaum, the prosecution state-

basis for the jury's decision is unclear. We disagree that the jury could

have had in mind the several variations posited by the concurrence. It is

patently impossible for Cybor’s pump, without a reservoir, to perform the

functions called for by the patent. Thus, the jury had to consider the com-

bination of Cybor’s pump and the external, attached reservoir as being a

“pumping means” equivalent to the structure disclosed in the patent,

which consisted of a pump with an internal reservoir.

69a

ments cannot properly be interpreted as precluding coverage

of every type of external reservoir. In particular, we agree

with the district court’s apparent conclusion that these state-

ments only disclaimed a physically unattached reservoir

which has independent functionality. They did not disclaim a

reservoir which is physically connected to the pump and

which only collects fluid to be dispensed by that pump. Thus,

we conclude that the district court did not err in instructing

the jury in a manner which would permit it to consider the

equivalency of Cybor’s pump and reservoir to the claimed

second pumping means. Further, it did not err in denying

Cybor’s JMOL motion on this issue.

B. Cybor further challenges the district court’s claim inter-

pretation regarding the claim limitation that the first pumping

means pumps the fluid through the filtering means “to” the

second pumping means. Cybor contends that this language

requires that the liquid flow directly from the filtering means

to the second pumping means without passing through any

additional components. Because the fluid in Cybor’s device

flows through the external reservoir, which C ybor views as a

component separate from the claimed second pumping means,

Cybor argues that it does not infringe.

We reject Cybor’s arguments because, as previously dis-

cussed, the external reservoir in the Cybor’s device was

apparently held by the jury to be a part of its “second pump-

ing means” and not a separate component.

We also agree with the district court’s interpretation that

the “to” limitation requires only that the liquid move from the

filter * ‘in a pathway with a destination of the second pumping

means” and does not preclude the fluid from passing through

intervening components. Cf. Webster’s II New Riverside

Univ. Dictionary 1214 (1984) (defining “to” as “in a direction

toward”); see Vitronics, 90 F.3d 1576 at 1584 n.6. 39

U.S.P.Q.2D (BNA) at 1578 n.3 (noting that, although techni-

cally extrinsic evidence, the court is free to consult dictio-

naries at any time to help determine the meaning of claim

70a

terms). Nothing in the specification or prosecution history

suggests the interpretation put forth by Cybor.

Applying the above interpretations, substantial evidence

supports the jury’s verdict that Cybor’s device literally

infringes the claims of the °837 patent. Accordingly, we con-

clude that the district court properly denied Cybor’s motion

for JMOL as to literal infringement.

III.

Cybor also challenges the denial of its JMOL motion on the

ground that its device does not infringe the ’837 patent under

the doctrine of equivalents. The jury determined that claims

11, 12, and 16 are not literally infringed but are infringed

under the doctrine of equivalents. Claims 10, 11, and 12 read:

10. A method for filtering and dispensing industrial

fluids which are viscous and/or high purity and/or shear

sensitive, comprising the steps of: pumping the fluid

through filtering means by first pumping means to sec-

ond pumping means; accumulating the fluid in second

pumping means at rates or during periods of operation,

or both, independent of the rates or periods of operation,

or both, respectively, of said first pumping means; and

dispensing the fluid by operating said second pumping

means.

11. The method of claim 10 wherein said accumulat-

ing step is achieved by operating said second pumping

means on an intake stroke at the same rate at which said

first pumping means is pumping said fluid through said

filter, so that the fluid which has been filtered is accu-

mulated in said second pumping means without being

dispensed from said second pumping means.

12. The method of claim 10 wherein said accumulat-

ing step includes operating said second pumping means

to draw said filtered fluid at a rate slightly greater than

Tla

the rate at which said filtered fluid is being pumped by

Said first pumping means, such that there is a slight

drawback of said fluid from a dispensing means of said

second pumping means.

(Emphasis added). Claim 16 is a combination claim that

reads:

16. In a device for filtering and dispensing high-purity

and/or viscous and/or shear-sensitive fluid, the combi-

nation of: a first diaphragm-type pump; filtering means

connected to receive the fluid from said first diaphragm-

type pump; and a second diaphragm-type pump con-

nected to receive the fluid from said filtering means, in

which each of said first and second diaphragm-type

pumps includes surfaces that contact the fluid. Said sur-

faces being of materials that are non-contaminating to

industrial fluids which are viscous and/or high purity

and/or sensitive to molecular shear: and comprising

means to enable said second diaphragm-type pump to

collect and/or dispense the fluid. or both, at rates or dur-

ing periods of operation, or both, which are independent

of rates or periods of Operation, or both, respectively of

said first diaphragm-type pump.

(Emphasis added).

An accused device that does not literally infringe a claim

may still infringe under the doctrine of equivalents if each

limitation of the claim is met in the accused device either lit-

erally or equivalently. See Warner-Jenkinson Co. v. Hilton

Davis Chem. Co., 137 L. Ed. 2d 146. 1]7 S. Ct. 1040, 1054

(1997); see also Pennwalt Corp. v. Durand-Wayland, Inc., 833

F.2d 931, 935, 4 U.S.P.0.2D (BNA) 1737, 1740 (Fed. Cir.

/987) (in banc). Prosecution history estoppel provides a legal

limitation on the application of the doctrine of equivalents by

excluding from the range of equivalents subject matter sur-

rendered during prosecution of the application for the patent.

See Warner-Jenkinson, 117 S. Ct. at 1049. The estoppel may

arise from matter surrendered as a result of amendments to

72a

overcome patentability rejections, see id., or as a result of

argument to secure allowance of a claim, see Wang Lab., Inc.

v. Mitsubishi Elecs., Inc., 103 F.3d 1571, 1578, 41 U.S.P.Q.2D

(BNA) 1263, 1269 (Fed. Cir. 1997). Prosecution history estop-

pel is a legal question subject to de novo review on appeal.

See Insituform, 99 F.3d at 1107, 40 U.S.P.Q.2D (BNA) at

1609.

Cybor argues that there is no infringement under the doc-

trine of equivalents because prosecution history estoppel pre-

cludes FAS both from claiming an external reservoir and a

pump as an equivalent to the second pumping means of claims

11 and 12 and from claiming an external, attached reservoir as

the equivalent to the means to enable the second diaphragm-

type pump in claim 16 to accumulate, dispense, or both accu-

mulate and dispense the liquid. Additionally, Cybor urges

that, because the accused device has an intervening reservoir,

the limitation requiring the filtrate to flow to the second

pumping means in claims 11 and 12 would not equivalently

be met.

These arguments are unpersuasive for the same reasons that

we rejected them under our § 112, P 6 claim construction and

literal infringement analysis. The inventor’s statements to the

PTO regarding the Storkebaum reference, given the marked

differences between the reference and the patented and

accused devices, do not show the deliberate, uneouivocal sur-

render of all external reservoirs. See Read Corp. v. Portec,

Inc., 970 F.2d 816, 824, 23 U.S.P.Q.2D (BNA) 1426, 1433

(Fed. Cir. 1992) (“Every statement made by a patentee during

a prosecution to distinguish a prior art reference does not cre-

ate a separate estoppel. Arguments must be viewed in con-

text.”). Because Cybor’s pump and reservoir with connecting

tubing do not fall within the range of subject matter relin-

quished, prosecution history does not preclude infringement

under the doctrine of equivalents. Accordingly, the district

court’s denial of Cybor’s motion for JMOL with respect to

infringement under the doctrine of equivalents was not error.

wo a OY he

On cross-appeal, FAS argues that, in light of the jury's

determination that Cybor’s infringement was willful, the dis-

trict court erred both by refusing to find this case exceptional,

and thus denying attorney fees under 35 U.S.C. § 285 (1994).

and by denying enhanced damages under 35 U.S.C. § 284

(1994). FAS also challenges the district court's approach in

calculating damages.

A. The determination of whether a case is exceptional and,

thus, eligible for an award of attorney fees under § 285 is a

two-step process. See Reactive Metais Alloys Corp. v. ESM.

Inc., 769 F.2d 1578, 1582, 226 U.S.P.Q. (BNA) 821, 824 (Fed.

Cir. 1985). First, the district court must determine whether a

case is exceptional, a factual determination reviewed for clear

error. See Baldwin Hardware Corp. v. Franksu Enter. Corp..,

78 F.3d 550, 563, 37 U.S.P.Q.2D (BNA) 1829, 1838 (Fed. Cir

1996). After determining that a case is exceptional, the

district court must determine whether attorney fees are appro-

priate, a determination that we review for an abuse of dis-

cretion. See Molins PLC v. Textron, Inc., 48 F.3d 1172. 1186.

33 U.S.P.Q.2D (BNA) 1823, 1833 (Fed. Cir. 1995). A district

court abuses its discretion when its decision is based on

clearly erroneous findings of fact, is based on erroneous inter-

pretations of the law, or is clearly unreasonable, arbitrary or

fanciful. See Fraige v. American-National Watermattress

Corp., 996 F.2d 295, 297, 27 U.S.P.Q0.2D (BNA) 1149, 115]

(Fed. Cir. 1993).

We conclude that the district court’s denial of exceptional

Status was not clearly erroneous. The court specifically noted

that it considered the evidence of willful infringement suffi-

cient but weak. Similarly, it considered the evidence of copy-

ing also to be weak. The court concluded that Cybor’s

arguments in litigation, while ultimately unsuccessful, were

not frivolous or asserted for an improper purpose and that

Cybor litigated in good faith. Finally, the court concluded that

74a

evidence supported Cybor’s contention that it in good faith

did not consider its system to be infringing.

Contrary to FAS’s assertions, a finding of willful infringe-

ment does not require a finding that a case is exceptional. See

Modine Mfg. Co. v. The Allen Group, Inc., 917 F.2d 538, 543,

16 U.S.P.Q.2D (BNA) 1622, 1624 (Fed. Cir. 1990). Moreover,

FAS’s mere argument that Cybor’s defenses and claims were

“baseless” and pursued in “bad faith” does not undermine the

district court’s conclusions to the contrary. The record evi-

dence supports the district court’s conclusion that Cybor acted

in good faith. Moreover, Cybor’s arguments, particularly

relating to claim construction and prosecution history estop-

pel, were not meritless, and resolution of those issues in

FAS’s favor was far from a foregone conclusion.

B. FAS further challenges the district court’s decision not

to enhance the damages in this case. The statute allows a

court to enhance damages “up to three times the amount

found or assessed.” 35 U.S.C. §284 (1994). A denial of

enhanced damages under § 284 is reviewed on appeal for an

abuse of discretion. See Electro Medical Sys., S.A. v. Cooper

Life Sciences, Inc., 34 F.3d 1048, 1056, 32 U.S.P.Q.2D (BNA)

1017, 1023 (Fed. Cir. 1994). Enhanced damages have been

awarded when a party is found to have willfully infringed or

to have acted in bad faith. Id. A finding of willfulness, how-

ever, does not mandate enhanced damages. See Read Corp.,

970 F.2d at 826, 23 U.S.P.Q.2D (BNA) at 1435. Instead, “the

paramount determination . . . is the egregiousness of the

defendant’s conduct based on all the facts and circum-

stances.” Id.

We conclude that the district court did not abuse its dis-

cretion in denying enhanced damages. Particularly, we note

that there is no merit to the argument that a finding of will-

fulness but a denial of enhanced damages ts necessarily an

abuse of discretion. See Modine, 917 F.2d at 543, 16

U.S.P.Q.2D (BNA) at 1624. Indeed, the district court deter-

mined that the evidence regarding willfulness and copying

was weak. Moreover, although Cybor was found to infringe

oS

75a

all twenty of the claims, this result does not mean that the

case was not close, particularly in light of its justifiable albeit

unsuccessful arguments regarding the prosecution history of

the 837 patent. Finally, nothing in the record supports FAS’s

arguments that Cybor litigated in an inappropriate fashion; the

district court actually found the contrary to be true. Thus, we

conclude that the district court did not abuse its discretion in

denying enhanced damages.

C. Finally, FAS contests both the district court’s method in

calculating damages and the court’s ultimate damages award.

Section 284 requires that the damages awarded to a claimant

must be adequate to compensate for infringement. See Rite-

Hite Corp. v. Kelley Co., 56 F.3d 1538, 1544. 35 U.S.P.Q.2D

(BNA) 1065, 1068 (Fed. Cir. 1995) (in banc). The amount

of damages determined by a district court is a question of

fact that is reviewed for clear error on appeal, while the

method used by a district court in reaching that determina-

tion is reviewed for an abuse of discretion. See Stryker Corp.

v. Intermedics Orthopedics, Inc., 96 F.3d 1409, 1413, 40

U.S.P.Q.2D (BNA) 1065, 1068 (Fed. Cir. 1996).

FAS argues that the district court abused its discretion by

using a method that was “too Stringent” and thus did not

afford adequate relief. We disagree. The district court per-

formed a thorough, well-reasoned analysis of the facts under-

lying the award of damages. Contrary to FAS’s assertions, the

court acted within its discretion in its evaluation of the two-

supplier market by concluding that FAS’s sale to the pur-

chaser would not have occurred at the same time that the

infringing sales occurred because of FAS’s prior history with

that purchaser. As to the other aspects of the methodology

challenged by FAS, we conclude that the district court

weighed the evidence before it in an appropriate fashion. We

decline FAS’s inappropriate invitation that we essentially

reweigh the record evidence.

76a

CONCLUSION

Because the district court properly denied defendant’s

motion for JMOL, did not abuse its discretion in its damages

methodology or in its decision not to enhance damages, and

did not clearly err in determining that this case was not

exceptional or clearly err in determining the amount of dam-

ages, we affirm.

AFFIRMED

PLAGER, Circuit Judge, concurring.

The concerned reader of the several opinions in this case

might be led to believe that there is more to this case than

there is. This otherwise unremarkable case was taken in banc

for the sole purpose of laying to rest any residual doubts

about how, in claim construction, the verbalizations sur-

rounding the familiar “fact-law” dichotomy should be under-

stood. I join the court’s opinion and judgment, eliminating the

unnecessary obfuscation that seems to have emerged since our

decision in Markman v. Westview Instruments, Inc., 52 F.3d

967, 34 U.S.P.Q.2D (BNA) 1321 (Fed. Cir. 1995) (in banc)

(hereinafter Markman I).

In Markman I we held that “claim construction is a matter

of law,” and that “the construction given the claims is

reviewed de novo on appeal.” Jd. at 979. The Supreme Court

agreed with our view, and concluded that the Seventh Amend-

ment right to trial by jury was not an obstacle. Markman v.

Westview Instruments, Inc., 517 U.S. 370, 134 L. Ed. 2d 577,

116 S. Ct. 1384, 1391-93 (1996) (Markman II).

At the trial stage of a patent infringement suit, this means

that the trial judge is obligated to determine the meaning of

the claims, and, if a jury is used for the infringement phase,

to instruct the jury accordingly. In the course of seeking to

understand the nature and scope of the invention set forth in

T7a

the claims, it is standard doctrine that the judge focuses on

the language of the claims, as explained by the patent’s writ-

ten description, and as constrained by the course of the

patent's prosecution. If need be, the trial judge may seek

understanding outside the patent proper, from relevant texts

and materials, and from experts in the art. None of this

involves “fact-finding” in the sense of the traditional fact-law

dichotomy. See, for example, the Supreme Court’s effort to

decide whether a tomato was a “fruit” or a “vegetable.”

Regarding the meaning of those words. the Court said: “Of

that meaning the court is bound to take judicial notice, as it

does in regard to all words in our own tongue; and upon such

a question dictionaries are admitted, not as evidence, but only

as aids to the memory and understanding of the court.” Nix v.

Hedden, 149 U.S. 304, 306-07, 37 L. Ed. 745, 13 S. Ct. 88]

(1893).

The effort is to understand the meaning of the terms in the

claims. To the extent that involves delving into factual mat-

ters, such matefials simply become part of the process of

understanding. It hardly seems necessary to state that the

point of seeking understanding of the terms in which the

claims are cast is not for the sake of understanding in

the abstract, but to ensure as much as the intrinsic nature of

language permits that the court’s interpretation is a correct

one.

On appeal, this court has the benefit of the trial judge’s

considered view, and the record of the effort made at trial to

assist the judge in understanding the terms of the claim.

Though we review that record “de novo,” meaning without

applying a formally deferential standard of re\ ‘ew, common

sense dictates that the trial judge’s view will carry weight.

That weight may vary depending on the care, as shown in the

record, with which that view was developed, and the infor-

mation on which it is based.

It may or may not be true that the trial judge will have had

virtually unlimited time and Opportunity to pursue the matter.

In any event, just where the comparative advantage in claim

78a

construction effort and accuracy lies in any particular case

will be observable on appeal, and will no doubt influence the

weight given to the trial court’s view. And just as three minds

are deemed better than one in deciding appeals, four minds

may often be better than three when a complex claim con-

struction is at issue.

This court’s decision in Markman I, reaffirmed today, sim-

ply means that we do not spend our and appellate counsels’

time debating whether the trial court’s information base con-

stitutes findings of “fact” or conclusions of “law,” with ver-

bally different standards of review. Instead both they and we

can focus on the question that the trial court addressed, the

question that counts: what do the claims mean? As we all rec-

ognize, that is not always easy to know, and much turns on

the answer.

The decision today should help institute a simplified and

clarified method by which both trial and appellate courts

address claim construction issues, pursuant to the rules estab-

lished in this court’s Markman I opinion. Our purpose is to

improve the process of patent infringement litigation for the

benefit of patentees and their competitors, and ultimately the

public. Whether this approach to patent litigation will in the

long run prove beneficial remains to be seen. There is every

reason to believe it will, and certainly to believe it is better

than what we had. But it may be some time before we have

enough experience with “Markman hearings” and with appel-

late review under the new regime to draw any empirically

sound conclusions. In such circumstances there is much to be

said for refraining from premature and argumentative judg-

ments about what it all means, and for allowing sufficient

time to actually see how it works.

ae

Se

79a

BRYSON, Circuit Judge, concurring.

While I join the opinion of the court without reservation,

I think it important to note that our adoption of the rule that

claim construction is an issue of law does not mean that we

intend to disregard the work done by district courts in claim

construction or that we will give no weight to a district

court’s conclusion as to claim construction, no matter how the

court may have reached that conclusion. Simply because a

particular issue is denominated a question of law does not

mean that the reviewing court will attach no weight to the

conclusion reached by the tribunal it reviews. In fact. review-

ing courts often acknowledge that as to particular legal issues

lower tribunals have special competence and their judgments

on those legal issues should be accorded significant weight.

For example, the Supreme Court typically defers to the con-

struction of a state statute adopted by the regional court of

appeals that includes that state. See Propper v. Clark, 337

U.S. 472, 486-87, 93 L. Ed. 1480, 69 S. Ct. 1333 (1949). Sim-

ilarly, this court has routinely noted that although contract

interpretation is a question of law, the interpretation of a con-

tract by a Board of Contract Appeals, in light of the Board’s

expertise in such matters, “is afforded careful consideration

and great respect.” Alvin, Ltd. v. United States Postal Serv.,

516 F.2d 1562 (Fed. Cir. 1987). Indeed. the Supreme Court

has made much the same point in referring to its review of

this court’s decisions on patent law, noting that the Court

would “leave such refinement [of the legal test for apply-

ing the doctrine of equivalents] to [the Federal Circuit’s]

sound judgment in this area of its special expertise.” Warner-

Jenkinson Co. v. Hilton Davis Chem. Co., 137 L. Ed. 2d 146,

117 S. Ct. 1040, 1054 (1997).

The Supreme Court in Markman stated that it would be a

rare case in which claim construction would turn on an issue

such as a credibility judgment between two competing expert

witnesses. See 1/6 S. Ct. at 1395. Such cases, however, may

arise, and in those cases it would be entirely appropriate—and

consistent with our characterization of claim construction as

80a

a question of law—to factor into our legal analysis the district

court’s superior access to one of the pertinent tools of con-

struction.

That does not mean that we defer to a district court on legal

matters unless we find that the court has committed clear

error with respect to an issue that should be characterized as

factual. What it means is that we approach the legal issue of

claim construction recognizing that with respect to certain

aspects of the task, the district court may be better situated

than we are, and that as to those aspects we should be cau-

tious about substituting our judgment for that of the district

court.

MAYER, Chief Judge, with whom NEWMAN, Circuit Judge,

joins, concurring in the judgment.

I am compelled to concur in the judgment of the court, but

I respectfully disagree with the opinion because it profoundly

misapprehends Markman v. Westview Instruments, Inc., 517

U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). The

Supreme Court concluded there that the historical record is

insufficiently firm to declare that juries construed patent

claims in England when the Seventh Amendment to the Con-

stitution was adopted in 1791. So it decided as a matter of

policy that judges, not juries, are better able to perform this

task given the complexity of evidence and documentation.

This was a perilous decision of last resort. For juries regularly

render verdicts in civil cases based on complex forensic and

documentary evidence of equal or greater difficulty than seen

in patent cases. And the implications for criminal cases under

Article III and the Sixth Amendment are even more profound.

Increasingly complex cases involving scientific and compli-

cated documentary evidence are presented to criminal juries

which, of course, decide matters of life and liberty, not

merely money. Nevertheless, having so ruled, it seems to me

8la

the Court would not also have repealed part of the Federal

Rules of Civil Procedure and Evidence without so much as a

mention that district courts no longer have discretion to admit

expert evidence, see Daubert v. Merrell Dow Pharmaceuti-

cals, Inc., 509 U.S. 579, 125 L. Ed. 2d 469, 113 S. Ct. 2786

(1993), and need not find facts when evidence is disputed in

these cases. Nor would it have so excused this court from the

normal, historical role of appellate courts to review for

reversible error, and installed it as a collegial trial court.

I. STANDARD OF REVIEW

We review the denial of a motion for judgment as a matter

of law de novo by reapplying the same standard. See Read

Corp. v. Portec, Inc., 970 F.2d 816, 821, 23 U.S.P.Q.2D

(BNA) 1426, 143] (Fed. Cir. 1992). Under this standard.

appellant must show that “the jury’s factual findings, pre-

sumed or express, are not supported by substantial evidence

or, if they are, that the legal conclusions implied from the

jury’s verdict cannot in law be supported by those findings.”

Alpex Computer Corp. v. Nintendo Co., 102 F.3d 1214, 1221.

40 U.S.P.Q.2D (BNA) 1667, 1672 (Fed. Cir. 1996) (quoting

Kearns v. Chrysler Corp., 32 F.3d 1541, 1547-48. 3]

U.S.P.Q.2D (BNA) 1746, 1751 (Fed. Cir. 1994)).

Our review of claim construction is controlled by the

Supreme Court’s judgment in Markman, 517 U.S. 370. 116

S. Ct. 1384, 134 L. Ed. 2d 577, not the opinion of this court it

reviewed, 52 F.3d 967, 34 U.S.P.0.2D (BNA) 1321 (Fed. Cir

1995); the Supreme Court did not adopt this court’s reason-

ing as its own. Though it could have done so easily, the Court

chose not to accept our formulation of claim construction: as

a pure question of law to be decided de novo in all cases on

appeal.'’ If it had, there would have been no need for its

Rather than bluntly force the square peg of claim construction

into the round hole of fact or law, the Court described the questions pre-

sented by claim construction in more chary terms: “but the sounder

course, when available, is to classify a mongrel practice,” “no clear

answers,” “in theory there could be a case,” “leaves us doubtful.” “in the

82a

extensive exegesis about the Seventh Amendment and

whether juries must construe claims that have evidentiary

underpinnings or whether the importance of uniformity 1s best

served by giving these evidentiary questions of meaning to a

judge. It would have been a simple matter for the Court to

give short shrift to this argument by proclaiming construction

purely, solely, and always a matter of law that would never

have gone to the jury.

The Supreme Court recognized that in some cases there will

be conflicting evidence that has to be resolved—where there

are factual determinations that are more than just incident to

claim construction—such as the understanding of one skilled

in the art at the time the patent application was filed. In these

cases, all that Markman stands for is that the judge will do the

resolving, not the jury. Wisely, the Supreme Court stopped

short of authorizing us to find facts de novo when evidentiary

disputes exist as part of the construction of a patent claim and

the district court has made these findings without committing

clear error. See Fromson v. Anitec Printing Plates, Inc., 132

F.3d 1437, 1446, 45 U.S.P.Q.2D (BNA) 1269, 1275 (Fed. Cir.

1998) (findings of fact made by a district court to resolve dis-

putes as to the meaning of claim terms are affirmed absent

clear error); Eastman Kodak Co. v. Goodyear Tire & Rubber

Co., 114 F.3d 1547, 1555-56, 42 U.S.P.Q.2D (BNA) 1737,

1742 (Fed. Cir. 1997) (reliance on expert testimony to clarify

ambiguous claim term is acceptable and deference is given to

the trial court’s credibility determination). Rather, when the

judge finds facts or accepts the factual determinations of a

jury, those facts are entitled to greater deference than de novo

fact finding on appeal.

main,” “we accordingly think there is sufficient reason to treat con-

struction of terms of art like many other responsibilities that we ceded to

a judge,” “independent reason to allocate,” “treating interpretive issues

as purely legal will promote. . . .” Markman, 517 U.S. 370, 116 S. Ct.

1384 at 1390, 134 L. Ed. 2d 577 (emphasis added). Even a cursory read-

ing of that opinion indicates that the Court meant to determine who

should interpret the claims, without mandating a standard of appellate

review to be used under all circumstances.

83a

In Fromson, the trial judge admitted expert testimony to

develop the record on the meaning of the word “anodized,” as

it was understood by one skilled in the art at the time of the

invention. Fromson, 132 F.3d at 1444-45, 45 U.S.P.0.2D

(BNA) at 1273-74. Based on that extrinsic evidence, he found

“in 1973 no reasonable practitioner of this process would

have had the opinion that a non-porous non-adherent oxide

coating, as thin as the native 5 nanometer coating found nat-

urally in the environment, of phosphoric oxide, constituted an

anodized surface.” Jd. at 1444, 45 U.S.P.Q.2D (BNA) at 1274.

This finding limited the meaning of the word anodized

beyond what a standard definition required: “To subject

[a metal] to action by making [it] the anode of a cell before

coating with a protective or decorative film.” Id., 45

U.S.P.Q.2D (BNA) at 1273 (quoting Webster's Third Int’]

Dictionary). This finding also conflicted with the alleged

infringer’s description of its own oxide coating process as

anodization. Nevertheless, the district court construed the

word anodized to mean: “an electrolytically formed, adherent.

porous aluminum oxide coating sufficiently thick (meaning

thicker than native oxide). . . .” /d. at 1445, 45 U.S.P.Q0.2D

(BNA) at 1274. Because the accused process did not form an

oxide coating thicker than native oxide. the district court

entered a judgment of noninfringement.

Even had we disagreed with the construction given by the

trial court in Fromson, we were not tasked by our standard of

review to reexamine de novo each of the days of testimony

and volumes of record relating to interpretation of the word

anodized. This court did not affirm the trial court’s judgment

because it had educed the best construction of the word

anodized. It did so because the district court’s construction

was properly predicated on a factual finding about what

anodized meant to one skilled in the art in 1973. which on the

appellate record presented by the parties was not clearly erro-

neous. The Supreme Court never contemplated in Markman

that we feign first-hand experience with the technology, or

that we embellish our abilities by construing a claim without

84a

the respect due both a trial court’s decision that a factual dis-

pute underlies the meaning of a claim term and its resolution

of that dispute.

Provided that no factual findings about disputed terms were

necessarily made in the course of construing the claim, our

making a claim construction that supersedes that of the

district court is not inconsistent with the Court’s opinion.

See Serrano v. Telular Corp., 11] F.3d 1578, 42 U.S.P.Q.2D

(BNA) 1538 (Fed. Cir. 1997) (construction of the claims

involved no factual disputed between the parties); /nter-

national Communication Materials, Inc. v. Ricoh Co., 108

F.3d 316, 318-19, 41 U.S.P.Q.2D (BNA) 1957, 1958-59 (Fed.

Cir. 1997); Alpex, 102 F.3d 1214 (using Alpex’s expert tes-

timony against Alpex, there were no factual dispute between

the parties); Metaullics Sys. Co. v. Cooper, 100 F.3d 938, 939,

40 U.S.P.Q.2D (BNA) 1798, 1799 (Fed. Cir. 1996); Insituform

Techs., Inc. v. CAT Contracting, Inc., 99 F.3d 1098, 40

U.S.P.0.2D (BNA) 1602 (Fed. Cir. 1996) (attorney argument

regarding claim construction presented no factual dispute

about the technology); 1 S. Childress & M. Davis, Federal

Standards of Review: Civil Cases and General Review Prin-

ciples, §§ 2.13, 2.14 (2d ed. 1991). If this court does not

believe the claim construction to be erroneous based on an

independent review of the legal conclusions and a review of

the constituent factual findings for substantial evidence, it

must affirm. See Bose Corp. v. Consumers Union of United

States, 466 U.S. 485, 514 n.31, 80 L. Ed. 2d 502, 104 S. Ct.

1949 (1984); see also Pullman-Standard v. Swint, 456 U.S.

273, 287-88, 72 L. Ed. 2d 66, 102 S. Ct. 1781 (1982).

This court may not, however, independently review the

constituent facts or disregard the jury’s findings, absent proof

that they lack sufficient evidence that “a reasonable mind

might accept as adequate to support” them. Consolidated Edi-

son Co. v. NLRB, 305 U.S. 197, 229, 83 L. Ed. 126, 59 S. Ct.

206 (1938); see Genentech, Inc. v. Wellcome Found. Ltd., 29

F.3d 1555, 1565, 31 U.S.P.Q.2D (BNA) 1161, 1169 (Fed. Cir.

1994). Nor may we construe a claim in a manner that is

85a

inconsistent with our function as a court of review: we cannot

divine new interpretations of terms in a claim or make find-

ings of fact from a record that cannot support them. See Avia

Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557.

1561, 7 U.S.P.Q.2D (BNA) 1548, 1551 (Fed. Cir. 1988).

Sometimes it may be necessary for an appellate court to

pronounce new legal principles during an appeal. However,

even if this court identifies a question of claim construction

as one of law—though its resolution is relevant to only the

particular litigation or document—it cannot elevate the activ-

ity to one of determining legal principles, as is for example,

Statutory construction. See Markman, 116 S. Ct. at 1396

(“Issue preclusion could not be asserted against new and inde-

pendent infringement defendants even within a given juris-

diction. . . .”); In re Freeman, 30 F.3d 1459, 1466, 3]

U.S.P.0.2D (BNA) 1444, 1450 (Fed. Cir. 1994); Jackson Jor-

dan, Inc. v. Plasser American Corp., 747 F.2d 1567, 1574- re 8

224 U.S.P.Q. (BNA) 1, 5-6 (Fed. Cir 1984) (second alleged

infringer not bound by prior claim construction unless it had.

inter alia, a full and fair opportunity to litigate the construc-

tion in the first infringement action). Thus. regardless of the

labels we attach to these questions, without the benefit of a

full record from the trial court, it is neither the function of

this court nor is it within our Capacity as an appellate court to

adopt new interpretations, most especially not if the inter-

pretation under review is of terms informed by conflicting

evidence. Such indiscriminate and conclusive review deprives

the parties of important substantive and procedural mecha-

nisms provided in the trial courts, where interpretation can be

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