# Appendix — Fromson v. Anitec Printing Plates, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386006_1614%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1998 - **Citation:** 525 U.S. 817 ## Text Le NS SO OEMS CRE! LN he ww YO ly a en ie” IS Appealed from the United States Distric | UNITED STATES COURT 4 5 : 3 t Fy | WN al ie dts LISS OD AE LANG is aS ighe ay aN DSi Bela R iN kite Sig eR ales Ja 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 0 | Y | % | : 4la 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 ; 3 S ) 5 A Fd ’ § ; * - 2 4 i | . $ degree. It is a difference in kind. Something entirely different iS gOing on. E 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. petetiad wy ae, wey — arta, 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. teh ig wh ade Rb ay Be ih Re toge ee ee * £ innit é z - 47a 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 Se Dal di deal eat See 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. in eld eI EO Sla § 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 “ af _—" P it lt 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 = ¥ 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 informed by additional discovery and expert testimony, and where it can be checked by appellate review as a matter of right. If claim construction is only a question of law to be reviewed by this court de novo, then the absence of review as a matter of right over our claim constructions, which may be new and unsupported by legal analysis, or may never have been tested by the adversarial process, would transform this court into a trial court of first and usually last resort. 86a Il. METHOD OF REVIEW To determine whether a patent has been infringed, a district judge must partake of a two-step analysis: (1) construction of the claims to determine their legal effect by examining and resolving, inter alia, factual disputes over the meaning and scope of technical words or terms of art used in the patent, see Fromson, 132 F.3d at 1442, 45 U.S.P.Q.2D (BNA) at 1272; Markman, 52 F.3d at 999, 34 U.S.P.Q.2D (BNA) at 1347 (Newman, J., dissenting); and (2) a comparison of the properly construed claims to the accused device, see Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1576, 27 U.S.P.Q.2D (BNA) 1836, 1839 (Fed. Cir. 1993). The first step, construction of the claim, is ultimately a question for the judge. See Markman, 116 S. Ct. at 1395 (“So it turns out here, for judges, not juries, are the better suited to find the acquired meaning of patent terms.”) In construing the claims, a judge looks to the claims themselves, the specification, the prosecution history of the patent, see Minnesota Mining and Mfg. Co., v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1566, 24 U.S.P.Q.2D (BNA) 1321, 1327 (Fed. Cir. 1992), and, if necessary, extrinsic evidence for information or to resolve disputes over the meaning of terms, see Texas Instruments, Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1171, 26 U.S.P.Q.2D (BNA) 1018, 1023 (Fed. Cir. 1993). Although Markman, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577, requires the judge to make the ultimate determination about the meaning and legal consequence of a claim, it does not prohibit him from submitting subsidiary factual disputes to a jury, even if it does not encourage it. The judge follows the same first step to construe claims containing means-plus-function limitations under 35 U.S.C. § 112(6) (1994). See Alpex, 102 F.3d at 1220, 40 U.S.P.Q.2D (BNA) at 1672; Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388, 2] U.S.P.Q.2D (BNA) 1383, 1387 (Fed. Cir. 1992). However, to complete the construction of these means- plus-function terms, the judge must look to the structures, materials, or acts disclosed in the patent’s specifications and 87a to their equivalents. /d., 952 F.2d ar 1388, 2] U.S.P.0.2D (BNA) at 1387. To determine the scope of such equivalents, the district court must resolve questions of fact by resorting to the expertise of the fact finder. Cf. Markman, 52 F.3d at 977 n.8, 34 U.S.P.0.2D (BNA) at 1337, n.8 (expressly declin- ing to reach “the issue of whether a determination of equiv- alents under § 112, para. 6 is a question of law or fact”): Jn re Hayes Microcomputer Prods., Inc.. 982 F.2d 1527, 1541-43, 25 U.S.P.Q.2D (BNA) 1241, 1253 (Fed. Cir 1992) (“This list lof factors that may be considered when determining the Scope of a means-plus-function limitation] is not exhaustive and reasonable inferences by the fact finder are appropri- ate.”); King Instrument Corp. v. Otari Corp., 767 F.2d 853, 862-63, 226 U.S.P.Q. (BNA) 402, 408-09 (Fed. Cir. 1985); Palumbo v. Don-Joy Co., 762 F2d 969, 975-76, 226 U.S.P.Q. (BNA) 5, 8 (Fed. Cir. 1985) (“Whether that accused device is a§112 equivalent. . isa question of fact.”); D.M.1., Inc. v. Deere & Co., 755 F.2d 1570, 1575. 225 U.S.P.Q. (BNA) 236, 239 (Fed. Cir. 1985). For pragmatic reasons, the resolution of this factual determination is often made at the same time the fact finder determines infringement (step two, described below). The second step of the infringement analysis requires a fac- tual comparison of the claimed invention to the accused device, which is done by the fact finder. See Winans v. Den- mead, 56 U.S. (15 How.) 330, 338, 14 L. Ed. 717 (1853). To prove literal infringement, the patentee must show that the accused device contains every limitation in the asserted claims. See Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 397, 29 U.S.P.0.2D (BNA) 1767, 1769 (Fed. Cir. 1994). If tried to a jury, it is the jury’s factual findings on infringe- ment that are reviewed by this court for lack of substantial evidence, see Genentech, 29 F.3d at 1565, 31 U.S.P.0.2D (BNA) at 1168-69, as part of this court’s reapplication of the standard for judgment as a matter of law. A claim of infringement under the doctrine of equivalents modifies this second step by requiring that the fact finder 88a determine whether differences between particular elements of the accused device and the asserted claims are insubstantial. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 137 L. Ed. 2d 146, 117 S. Ct. 1040, 1054 (Mar. 3, 1997). However, because they have separate origins, purposes, and applica- tions, determining equivalence under paragraph i12(6) requires an analysis different from that used to determine equivalence under the doctrine of equivalents. See Alpex, 102 F.3d at 1222, 40 U.S.P.Q.2D (BNA) at 1673 (“Under § 112, the concern 1s whether the accused device, which performs the claimed function, has the same or an equivalent structure as the structure described in the specification corresponding to the claim’s means. Under the doctrine of equivalents, on the other hand, the question is whether the accused device is only insubstantially different than the claimed device.”) (internal citations omitted). After the judge construes the means-plus-function limita- tions identifying structures, materials, or acts described in the patent’s specification, and their equivalents as determined by the fact finder (step one, described above), the judge gives the construed claims to the fact finder, in this case a jury, for a determination of infringement. See D.M.]/., 755 F.2d at 1575, 225 U.S.P.Q. (BNA) at 239. For literal infringement, the fact finder must determine whether the accused device performs an identical function to the one recited in the means-plus- function clause. See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 U.S.P.Q.2D (BNA) 1737, 1739 (Fed. Cir. 1987) (if the identical function is not performed, literal infringement is not possible). If the identical function is per- formed, the fact finder must then determine whether the accused device utilizes the same structure or materials as described in the specification, or their equivalents. Just as the fact finder’s infringement analysis differs between equivalence under paragraph 112(6) and the doctrine of equivalents, so too differs the analytical effect of state- ments made during the prosecution of the patent on con- struction of the claims. Under paragraph 112(6), a statement - VT athe wg OU 89a made during prosecution may confine the range of equivalent structures, materials, or acts that are directly claimed by the patent. However, in the context of a doctrine of equivalents analysis, the patentee seeks protection beyond that claimed by the patent directly. As such, the judge’s construction of the claims—which includes the interpretation of claim terms—may not be sufficient to remove from the jury’s consideration all subject matter that was disclaimed during prosecution. Prosecution history estoppel addresses this problem by excluding equivalents surrendered during prosecution. Under this doctrine, statements made to overcome rejections based, as here, on prior art estop the patentee from extending its right to exclude others from making, using, or selling subject matter known to be insubstantially different from, or inter- changeable with, claimed elements at the time of the alleged infringement. Warner-Jenkinson, 117 S. Ct. at 1053. Although both forms of equivalence require the district court to exam- ine the prosecution history as part of its construction of the claims, under the doctrine of equivalents, the judge gives the claim, properly construed to exclude disclaimed subject mat- ter, to the jury and then, where appropriate, also instructs the jury on the possible range of equivalents that it may or may not consider due to prosecution history estoppel. Ill. REVIEW + As depicted in figure two of the patent, ante at 3 [ma). opn], the 837 patent discloses a dual-stage pump. It claims a first pumping means that pumps fluid through a filtering means “to” a “second pumping means.” It also claims a “means to enable said second pumping means to collect and/or dispense the fluid, or both,” at rates or during periods that are independent of the operation of the first pumping means. As a result of this structure, the pump described in the ’837 patent is able to accumulate fluid for later dispense, dis- pense fluid immediately, or partially accumulate and partially dispense fluid in precise measurements and at precise times. 90a The preferred embodiment describes a second pumping means where the second pump collects and dispenses the fluid from its own internal reservoir. Like the pump disclosed in the °837 patent, Cybor Corpo- ration’s Model 5226 dual-stage pump also allows users to pump or dispense highly accurate amounts of liquid chemicals in increments as small as 0.1 microliter. Both pumps are pri- marily used for accurately dispensing chemicals—such as photoresist and polimide—onto semiconductor wafers during their fabrication. Of relevance to this appeal, in construing the ’837 patent the district judge interpreted the disputed term “to” and sub- mitted the term to the jury for a determination of infringe- ment. The judge also submitted the terms “second pumping means,” “means to enable said second pumping means,” and “or both” to the jury as means-plus-function terms, along with structures in the °837 patent’s specification, for a determi- nation of infringement. The judge left the task of considering prosecution history estoppel to the jury.” The jury found that Cybor’s Model 5226 pump literally infringed claims 1-10, 13-15, and 17-20, and that it infringed claims 11, 12, and 16 under the doctrine of equivalents. It is unclear which combination of components in Cybor’s Mode] 5226 pump the jury found to infringe claims 1-10, 13-15, and 17-20. It may have interpreted “second pumping means” in such a way that it found either Cybor’s second pump or the combination of its second pump and its external reservoir to be equivalent structures to those provided in the specification of the °837 patent corresponding to the “second pumping means.” Likewise, the jury may have interpreted “means to enable said second pumping means” in such a way that it ll Although having a jury make a legal determination of the effect of statements made during prosecution of the patent is error, alone this error was harmless because to find infringement, the jury must have arrived at the same legal conclusion that we did on appeal: that the pros- ecution history does not exclude Cybor’s external reservoir from the jury’s consideration of equivalents under paragraph 112(6). 9la found either Cybor’s external reservoir or the combination of its external reservoir and its second pump to be equivalent structures to those provided in the specification of the ’837 patent corresponding to the “means to enable said second pumping means.” In total, there are five possible combina- tions of claim term interpretations and findings of paragraph 112(6) equivalents that would have led the jury to its infringe- ment verdict. Cybor renewed its earlier motion for judgment as a matter of law pursuant to Rule 50(b) and for a new trial pursuant to Rule 59 of the Federal Rules of Civil Procedure. on the basis that no reasonable juror could find that its pump infringes the ‘837 patent. The court denied the motion. finding “that the jury’s infringement verdict is supported by the evidence . the jury instructions were proper and the verdict was not against the clear weight of the evidence or contrary to the instructions.” Cybor moved for reconsideration, arguing that this court’s then recently issued Markman. 52 F.3d 967, 34 U.S.P.Q.2D (BNA) 132], required that the judge, and not the jury, interpret all the claims. The district court denied the motion and entered final judgment, from which Cybor appealed. On appeal, Cybor argues that had the district court properly analyzed the prosecution history of the ’837 patent, it would have excluded reservoir structures like Cybor’s from con- sideration as an equivalent under paragraph 112(6). Cybor further argues that the judge would have instructed the jury not to consider its reservoir when determining whether Cybor’s second pump has the same or an equivalent structure as the structure in the portions of the ’837 patent’s specifi- cation corresponding to the second pumping means. Without its reservoir, Cybor argues that its second pump cannot infringe the “second pumping means” limitation, the “or both” functional limitation, or the filter means “to” second pumping means limitation. Cybor also argues that the district judge erred in failing to identify the corresponding structures in the specification, and in permitting the judge to consider 92a the effect of statements made during prosecution of the °837 patent. FAS responds that the district court properly considered and rejected Cybor’s argument about the prosecution history of the °837 patent, that it properly construed the necessary claims, and that it properly submitted them along with rele- vant corresponding structures—as described in the specifi- cation—to the jury for a determination of infringement. FAS further argues that the district court was not obliged, either before or after Markman, to submit complete claim con- structions to the jury so long as the judge’s ultimate claim construction is supported by the jury’s factual findings, pre- sumed or expressed, regarding disputed claim terms, and so long as the judge later evaluates and sustains the jury’s factual findings. Claim | of the °837 patent contains three disputed limita- tions and is representative of how these limitations are used, where they appear throughout the 20 asserted claims: In a device for filtering and dispensing fluid in a precisely 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 rate or during periods of oper- ation, or both which are independent of rates or periods of operation, or both, respectively, of said first pumping means. 93a "837 patent, col. 9, lines 45-61 (emphasis and formatting added). The specification of the ’837 patent further describes the “second pumping means” as having tubing that connects the pump to the second incremental pump advancement means, col. 5, lines 49-52, a diaphragm inside the second pump, col. 6, lines 2-3, and a separate inlet passage and out- let passage, col. 7, lines 10-20. During prosecution, the inventors further limited the scope by making the following statements to overcome a prior art rejection that the claimed invention was unpatentable over Storkebaum et al., U.S. Patent No. 4,749,476. Additionally, Storkebaum specifically provides a separate container 12 for collecting the permeate. Obviously, Storke- baum does not teach the collection of fluid in a second pump- ing means. . . . Storkebaum discloses a permeate collecting container 12 that is separate from the conveying pump 13. Nothing in Storkebaum discloses or makes obvious the claimed invention, nor the precise and flexible control provided by the second pump means of Claim 1. Given the nature and function of the Storkebaum container. these statements were made to distinguish the invention over the prior art. They confine the possible interpretation of terms in the claims under paragraph 112(6)-and they may prevent FAS’s desired use of the doctrine of equivalents. See Warner- Jenkinson, 117 S. Ct. at 1051 n.7. However, in this case the limitation of possible equivalents extends only so far as was necessary to distinguish aspects of the invention’s “second pumping means” from Storkebaum’s external container. The statements do not require that the district judge provide the jury with more specific interpretations of claim terms because the inventors disclaimed the use of a separate, physically unattached reservoir that cannot achieve differential pumping rates between the two pumps by accumulating fluid in a reser- voir—the function performed by the ’837 patent’s “means to enable said second pumping means.” Storkebaum’s separate container collects permeate and vents the fluid; it is designed to feed a conveying pump that [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386006_1614%3A2. Public record. Not legal advice.