Petition for Writ of Certiorari — Izumi Products Products Co. v. Koninklijke Philips Electronics Electronics N.V. (No. 05-961)

claiming the subject matter which the applicant re-

gards as his invention.” 35 U.S.C. § 112, 49 1-2.

STATEMENT

This case presents an important question of patent inter-

pretation that has repeatedly defied resolution by the Federal

Circuit. To make the boundaries of patents clear to courts,

patent holders, and the public, Congress directed that patents

include “one or more claims particularly pointing out and

distinctly claiming the subject matter which the applicant re-

gards as his invention.” 35 U.S.C. § 112, § 2. The claims

determine the scope of the patent holder’s temporary monop-

oly right; products or processes that lie within that scope are

infringing. In this case, however, the Federal Circuit relied

on inference from the enabling disclosure (i.e., non-claims)

portion of the patent to read limitations on the claims’ scope

that had no basis in the claims’ plain language. Specifically,

even though the ordinary meaning of the claim term “recess”

in Izumi’s razor-blade patent does not suggest any angular

limitation, the Circuit relied upon the enabling disclosure’s

description of concave razor-blade recesses to infer that

izumi’s claims cover only such recesses.

This method of interpretation, which provoked strong

dissent below, has been the subject of long-running dis-

agreement within and among panels of the Federal Circuit—

disagreement that the full court tried but failed to resolve in

Phillips v. AWH Corp., 415 F.3d 1303 (2005) (en banc), pet.

for cert. filed, Nov. 9, 2005, No. 05-602 (distributed for Con-

ference of Feb. 17, 2006).' The approach employed below

' The Phillips petition presents the question “[w]hether * * * all

aspects of a district court’s patent claim construction may be re-

viewed de novo on appeal.” Pet. for cert. in No. 05-602, at i.

Unlike the instant petition, the Phillips petition does not address

the merits of the Federal Circuit’s approach to patent interpreta-

tion. The instant petition stands on its own and, we respectfully

submit, presents a more compelling case for this Court’s interven-

3

(and encouraged by the en banc majority) is not only errone-

Ous as a matter of law, but, left uncorrected, will lead to un-

certainty and inefficiency in an area of central and increasing

importance to the Nation’s economy. This Court’s review is

accordingly warranted.

1. The modern patent statute requires that the patent

specification include “one or more claims particularly point-

ing out and distinctly claiming the ubject matter which the

appellant regards as his invention.” 35 U.S.C. § 112 (empha-

sis added). This “claims” requirement, which dates from at

least 1870, see Markman vy. Westview Instruments, Inc.,

517 U.S. 370, 379 (1996) (discussing Act of July 8, 1870,

16 Stat. 201), was made even more explicit in 1952 when

Congress placed it in a _ separate paragraph. See

35 U.S.C. § 112; 3D. CHISUM, CHISUM ON PATENTS

§ 8.02[4], at 8-16 (2005) (CHisUM).

The claims are the focal point of inquiry when a patent-

holder charges infringement and brings a lawsuit alleging

that the defendant made, used, or sold the invention without

authorization during the patent’s term. See Markman, 517

U.S. at 374 (discussing 35 U.S.C. § 271(a)). As this Court

explained in Markman: “Victory in an infringement suit re-

quires a finding that the patent claim ‘covers the alleged in-

fringer’s product or process,’ which in turn necessitates a

determination of ‘what the words in the claim mean.’” 517

U.S. at 374 (quoting H. SCHWARTZ, PATENT LAW AND PRAC-

TICE 80 (2d ed. 1995) (SCHWARTZ)). See also General Z!ec.

_ Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938)

(“The claims ‘measure the invention.’’’) (quoting Continental

Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419

(1908)) (footnotes omitted).

tion. If, however, this Court grants the Phillips petition and the

instant petition, the Court may wish to consolidate the cases for

argument and decision.

The second, “distinct elemen[t]” (Markman, 517 US. at

373) of the patent specification, sometimes referred to as the

“enabling disclosure” (3 CHISUM § 7.03, at 7-10), is a “de-

scription of the invention * * * in such full, clear, concise,

and exact terms as to enable any person skilled in the art to

which it pertains * * * to make and use the same * * *.”

35 U.S.C. § 112. This enabling disclosure must also “set

forth the best mode contemplated by the inventor of carrying

out his invention.” Jbid. or :

On numerous occasions, this Court has underscored the

importance of the claims from the standpoint of congres-

sional intent and policy. In Keystone Bridge Co. v. Phoenix

Iron Co., 95 U.S. (5 Otto) 274, 278 (1877), for example, this

Court observed that one purpose of the claims requirement is

to “reliev[e] the courts from the duty of ascertaining the exact

invention of the patentee by inference and conjecture, de-

rived from a laborious examination of previous inventions,

and a comparison thereof with that claimed by him.” Equally

important, this Court subsequently explained, are the needs

of the patent holder and the public:

“The limits of a patent must be known for the pro-

tection of the patentee, the encouragement of the in-

ventive genius of others and the assurance that the

subject of the patent will be dedicated ultimately to

the public. * * * The inventor must ‘inform the

public during the life of the patent of the limits of

the monopoly asserted, so that it may be known

> The “specification” encompasses the two distinct elements dis-

cussed in the text above. See 35 U.S.C. § 112 (“The specification

shall contain a written description * * *. The specification shall

conclude with one or more claims * * *.”). We note, however, that

courts, including this Court, sometimes use “specification” to refer

only to the non-claims portion of the patent. See, e.g., Markman,

517 U.S. at 378-79; R. HARMON, P ATENTS AND THE FEDERAL

CIRCUIT § 1.1(b), p. 10 n.41 (7th ed. 2005).

5

which features may be safely used or manufactured

without a license and which may not.’ The claims

‘measure the-invention.’” General Elec., 304 U.S.

at 369 (1938) (quoting, respéctively, Permutit Co. v.

Graver Corp., 284 U.S. 52, 60 (1931), and Conti-

nental Paper Bag, 210 U.S. at 419) (footnotes omit-

ted).

2. Despite the importance of predictability in interpreting

patents, the Federal Circuit has struggled to achieve this goal.

Its opinions instead have “reflected two contrasting ap-

proaches.” 5A CHISUM § 18.03[2], at 12 (2005 Supp.).

The first begins by attempting to ascertain the scope of

the claim from the “ordinary meaning” (Texas Digital Sys.,

Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002))

of the text of the claims. Under this approach, the enabling

disclosure is considered only if (1) the ordinary meaning is

elusive (id. at 1203); (2) the enabling disclosure “has clearly

set forth an explicit definition of the term different from its

ordinary meaning” (id. at 1204); or (3) the enabling disclo-

sure “clear[ly] disavow{s] * * * [the] claim[’s] scope.” Jbid.

See also, e.g., Johnson Worldwide Assocs. v. Zebco Corp.,

175 F.3d 985, 990 (Fed. Cir. 1999) (similar).

The second approach contemplates a broader (and pri-

mary) role for the enabling disclosure in ascertaining the

scope of the claims, deeming it “the single best guide to the

meaning of a disputed term.” Vitronics Corp. v. Concep-

tronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). See also,

e.g., Bell Atlantic Network Servs., Inc. vy. Covad Commc’ns

Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (“specifi-

cation may define claim terms ‘by implication’”) (quoting

Vitronics, 90 F.3d at 1582).

Federal Circuit panels repeatedly failed to reconcile these

conflicting approaches and often found themselves divided.

See, e.g., Housey Pharms., Inc. v. Astrazeneca UK Ltd., 366

F.3d 1348, 1356 (Fed. Cir. 2004) (Newman, J., dissenting)

(“My colleagues’ approach to construction is based on con-

fusing recent pronouncements of panels of this court, contra-

vening earlier statements of precedent, thus adding to the

confusion.”); SciMed Life Sys., Inc. v. Advanced Cardiovas-

cular Sys., Inc., 242 F.3d 1337, 1347 (Fed. Cir. 2001) (Dyk,

J., concurring) (“{OJur decisions provide inadequate guid-

ance as to when it is appropriate to look to the [enabling dis-

closure] to narrow the claim by interpretation and when it is

not appropriate to do so.”).

In 2004, the Circuit set out to resolve this intracircuit split

through the customary mechanism of en banc review. See

Phillips vy. AWH Corp., 376 F.3d 1382 (en banc) (per cu-

riam) (granting rehearing en banc),’ decided, 415 F.3d 1303

(2005) (en banc). The en banc majority refused to endorse

one aspect of the claim-focused approach—its focus on dic-

tionaries—but otherwise treated panel decisions adopting the

two contradictory approaches as each contributing valid in-

terpretive principles. See id. at 1312-19. For example, while

recognizing that it is improper to “rea[d] a limitation from the

written description [i.e., enabling disclosure] into the claims”

(id. at 1320 (quoting Sci-Med, 242 F.3d at 1340)), the major-

ity also observed that the enabling disclosure is “‘always

highly relevant to the claim construction analysis [and]

{uJsually * * * is dispositive.’” Phillips, supra, at 1315

(quoting Vitronics, 90 F.3d at 1582). In short, though the full

The order granting en banc review asked, among other ques-

tions, “Should the range of the ordinary meaning of claim lan-

‘guage be limited to the scope of the invention disclosed in the

specification, for example, when only a single embodiment is dis-

closed and no other indications of breadth are disclosed?” 376

F.3d at 1383. The Circuit welcomed amicus curiae briefs from

“bar associations, trade or industry associations, government enti-

ties, and other interested parties [and] [i]n particular, the United

States Patent and Trademark Office.” ibid. More than thirty amici

accepted the invitation. See 415 F.3d at 1306-08.

court had sought to resolve the conflict in its precedents, it

ended up “reaffirm[ing] (Phillips, 415 F.3d at 1312) most of

“the basic principles of claim construction outlined [in those —

cases]” (ibid.), see id. at 1312-19, and thus leaving intact the

essential interpretive tools of both lines of pre-Phillips prece-

dent.

As a dissenting opinion observed, this resolution was cer-

tain to perpetuate the inconsistency and uncertainty that had

led the full court to take up the issue:

“(A]fter proposing no fewer than seven questions,

receiving more than thirty amici curiae briefs, and

whipping the bar into a frenzy of expectation, we

say nothing new, but merely restate what has be-

come the practice over the last ten years—that we

will decide cases according to whatever mode or

method results in the outcome we desire, or at least

allows us a seemingly plausible way out of the

case.” Jd. at 1330 (Mayer, J., dissenting).

The majority too candidly acknowledged that, under its com-

promise approach, “there will still remain some cases in

which it will be hard to determine whether a person of skill in

the art would understand the embodiments [i.e., the enabling

disclosure] to define the outer limits of the claim term or

merely to be exemplary in nature.” /d. at 1323.

These predictions have been borne out by Federal Circuit

panel decisions, including the decision below, rendered con-

temporaneously with, or in the wake of, Phillips. Just as be-

fore Phillips, there continues to be division within and

among panels on the central question whether, and when, the

enabling disclosure may be consulted in discerning the scope

of the claims. See, e.g., App., infra, 19a (Linn, J., dissenting)

(“The two statements from the specification of the °749 pat-

ent relied on by the majority do not sufficiently evidence an

intention to depart from the ordinary meaning of ‘recess’ [in

the claims].”); Dorel Juvenile Group, Inc. v. Graco Chil-

8

dren’s Prods., Inc., 429 F.3d 1043, 1050 (Fed. Cir. 2005)

(Newman, J., dissenting) (“The majority’s approach to claim

construction strains this court’s attempts to restore consis-

tency of analysis to patent claims by placing the claims in the

context of the specification.”); Free Motion Fitness, Inc. v.

Cybex Int'l, Inc., 423 F.3d 1343, 1355 (Fed. Cir. 2005)

(Prost, J., dissenting) (“The majority’s approach * * * does

not attempt to determine what the inventor actually invented,

but rather takes the broadest available abstract meaning of a

claim term that is not explicitly rejected by the specifica-

tion.”).

3. As a comparison of the majority and dissenting opin-

ions below reveals, the choice of interpretive methodology

determines the outcome in this case. The majority’s judg-

ment of noninfringement rested on a limitation that is not ex-

plicit or even implicit in the text of the claims, but which the

majority purported to derive from the enabling disclosure.

Petitioner, Izumi, manufactures electric rotary razors for

the U.S. market under the Remington brand. In such razors,

inner cutter blades mounted in a circle rotate beneath a sta-

tionary outer cutter with slots. During shaving, the outer cut-

ter is brought into contact with the area to be shaved, the

hairs enter the slots, and the leading edges of the rotating in-

ner blades shear the hairs off. This confluence of the outer

cutter and the inner blade resembles that which occurs in an

ordinary pair of scissors when the two blades are brought into

contact.

In conventional models, this process generates substantial

friction between the inner blades and outer surface, which in

turn heais the surface to an uncomfortable temperature, re-

duces battery life, and wears out the motor. The friction

arises principally from the rubbing that occurs when the inner

cutter blades contact the under-side of the outer cutter, a con-

dition exacerbated by the build-up of shaving debris on the

backs of the inner cutter blades.

9

In 1995, Izumi obtained a U.S. patent (No. 5,408,749) for

an improved electric rotary razor designed to mitigate the

friction problem. The specific invention involves carving out

a small portion of the back of each inner cutter blade. This

recess makes it more difficult for shaving debris to adhere to

the back of the blade, one of the factors causing friction. To

the extent this recess is carved from the top of the back of the

inner cutter blade, it reduces friction in an additional way by

decreasing the surface area of contact between the inner cut-

ter and the outer cutter.

Pursuant to the second paragraph of 35 U.S.C. § 112,

Izumi set forth several claims to make clear the scope of its

proposed patent. As relevant here, Claim 3 recites an inner

cutter blade with a “recess formed be/ow [the] cutting edge

surface.” App., infra, 8la (emphasis added). Claim 1, by

contrast, describes an inner cutter blade with a “recess com-

prising an indentation formed immediately beneath said cut-

ting edge surface * * * whereby said cutting edge surface is

made thinner than a thickness of [the] cutter blade.” App.,

infra, 80a (emphasis added).

Izumi also addressed the enabling-disclosure requirement

of Section 112’s first paragraph, describing and diagramming

two preferred embodiments of the invention that are both

within the scope of Claim 1. In one, Izumi depicted the re-

cess as extending to the top of the inner cutter blade, with a

90-degree angle between the (indented) back of the inner cut-

ter blade and the horizontal shaving surface. In the second,

the recess again extended to the top of the inner cutter, but

took a concave shape such that the (indented) back of the in-

ner cutter blade formed a smaller-than- 90-degree angle with

the horizontal shaving surface.*

4

The Federal Circuit included these diagrams in its opinion be-

low. App., infra, 4a.

10

Respondents, Koninklijke Philips Electronics N.V., Phil-

ips Electronics North America Corp., and Philips Domestic

Appliance and Personal Care B.V. (collectively, “Philips”),

are Izumi’s principal competitors in the U.S. market for elec-

tric rotary shavers, marketing their products under the

Norelco brand. Since at least 1995, the inner cutter blades on

Philips’ shavers have had recesses on their backs that extend

to the top of the blades. Unlike the versions depicted in

Izumi’s enabling disclosure, Philips’ blades’ recesses form a

greater-than-90-degree angle with the horizontal shaving sur-

face.

4. In March 2002, Izumi filed this action, in the United

States District Court for the District of Delaware, against

Philips for willful infringement of Izumi’s patent. On cross-

motions for summary judgment, the district court ruled in

favor of Philips. App., infra, 22a.

In a decision issued July 7, 2005, a divided Federal Cir-

cuit panel affirmed. App., infra, 1la—14a.° The majority’s

analysis, before turning to the language of Claims | and 3,

focused on the enabling disclosure, paraphrasing it as stating

that “inner cutter blades having a recess with acr ut angle

of greater than 90 degrees between the rear side surface of

the inner cutter blade surface and the cutting edge surface, as

seen in the prior art electric rotary razors, will not prevent

shaving debris adhesion.” App., infra, 12a. Deeming this

disclosure “a critical aspect of the invention itself” (ibid), the

majority held that the claim term “recess” (which appears in

both Claim 1 and Claim 3) must be defined as a “cutout hav-

* We include diagrams of Philips’ inner cutter blades at Apy . in-

Sra, 82a.

° In a holding irrelevant to this Petition, the Federal Circuit af-

firmed the district court’s grant of partial summary judgment to

Izumi on the question whether Izumi’s patent was anticipated by

the prior art and therefore invalid. App., infra, 15a.

1]

ing an angle @ of 90 degrees or less between the rear side sur-

face of the inner cutter blade and the cutting edge surface.”

Ibid. Because Philips’ blades have an angle @ greater than 90

degrees, the majority affirmed the summary judgment of

non-infringement. App., infra, 13a—14a.

Judge Linn dissented in relevant part, criticizing the ma-

jority’s “restriction of the scope of the claimed recess to re-

quire this angular limitation [as] improperly read[ing] a

limitation from the [enabling disclosure, into the claims.”

App., infra, 16a. Instead, Judge Linn explained, the claim

term “recess” should be given “the full scope of its ordinary

and customary meaning[:] * * * a cutout” (App., infra, 17a),

which does not suggest any angular limitation. Given the

absence of “any redefinition of the term or any disavowal of

claim scope” in the patent, Judge Linn concluded that the or-

dinary meaning of the claims must prevail. App., infra, 21a.

Judge Linn corroborated this understanding of the claims’

ordinary meaning by contrasting Claim 1, which describes a

“recess . . . formed immediately beneath” the cutting edge

surface, with Claim 3, which describes a “recess formed be-

low” that surface. App., infra, 20a (alteration in original). In

an inner cutter blade with a recess formed “below” but not

“immediately beneath” the cutting edge surface, the upper-

most portion of the back of the blade would not be indented

at all, and therefore would form a greater-than-90-degree an-

gle with the cutting edge surface (as in Philips’ models).’

Indeed, Judge Linn observed, the majority’s construction of

Even aside from the contrast between Claims | and 3, Judge

Linn observed that the ordinary meaning of Claim 3’s phrase “re-

cess formed below” is a “cutout located ‘at a lower level’ than the

cutting edge surface” (App., infra, 2la (quoting WEBSTER’S

THIRD NEW INT’L DICTIONARY 202 (1993)), i.e., not necessarily

the nearest “lower level” to the cutting edge surface. Accord,

WEBSTER’S NEW INT’L DICTIONARY 250 (2d ed. 1958) (defining

“below” as “at a lower level than, whether near or far’).

12

the patent as encompassing only recesses formed immedi-

ately beneath the cutting edge surface, see App., infra, 12a—-

13a, nullifies the patent’s deliberate decision to phrase

Claim | (“immediately beneath”) differently from Claim 3

(“below”). App., infra, 20a. Accordingly, Judge Linn would

have vacated the district court’s summary judgment of non-

infringement. App., infra, 21a.

Soon after the panel issued its decision in this case, the en

banc court issued its decision in Phillips, 415 F.3d 1303

(July 12, 2005). Izumi timely petitioned for rehearing and

rehearing en banc on July 20, 2005, but the petition was de-

nied. App., infra, 62a.

REASONS FOR GRANTING THE PETITION

In 1982, Congress attempted to achieve certainty in the

patent system by centralizing patent appeals in the Federal

Circuit. The Circuit, despite its best efforts, has fallen short

of this mandate. A deep intracircuit split developed on the

proper approach to interpreting patent claims in infringement

cases, and the Circuit failed to resolve the split through the

usual method of en banc review. This Court remains as the

lone institution that can rectify the currently prevailing -

“zone of uncertainty which * * * discouragfe]s invention

only a little less than unequivocal foreclosure of the field.’”

Markman, 517 U.S. at 390 (quoting United Carbon Co. v.

Binney & Smith Co., 317 U.S. 228, 236 (1942)).

Uncertainty aside, the Circuit’s methodology contravenes

Congress’ careful separation in 35 U.S.C. § 112 of the claims

element from the enabling disclosure element. Congress in-

tended the claims to define the patent’s scope in infringement

cases, and the enabling disclosure to serve the wholly differ-

ent purpose of facilitating the public’s ability to practice and

improve upon the patented invention. In using the enabling

disclosure to narrow the claims, the Circuit’s approach frus-

trates the latter purpose by leading inventors to be extremely

circumspect in what they say in the enabling disclosure.

13

Unlike the Circuit’s ap,-oach, the statutorily mandated

interpretive method starts by examining the text of the claims

to discern their ordinary meaning, and consults the enabling

disclosure only if the claims’ ordinary meaning proves elu-

sive or the patent explicitly disavows the claims’ scope or

defines the claims’ text. This approach both respects the

separate functions of the claims and the enabling disclosure

delineated by Congress in Section 112 and has predictability

benefits similar to those that have flowed from this Court’s

statutory interpretation jurisprudence, which uses a statute’s

text not only as the starting point, e.g, Bailey v. United

States, 516 U.S. 137, 142 (1995), but also, when the text is

plain, as the stopping point. E.g., Lamie v. United States

Trustee, 540 U.S. 526, 534 (2004). This case, in which the

choice of interpretive approach straightforwardly determines

the outcome, presents an ideal vehicle for this Court to grant

review and enforce the statutorily mandated approach.

I. THE UNCERTAINTY INHERENT IN THE FED-

ERAL CIRCUIT’S INTERPRETIVE APPROACH

IMPEDES EFFICIENT INVESTMENT IN INNO-

VATION AND SPAWNS PATENT-

INFRINGEMENT LITIGATION,

As this Court has recognized, “clarity is essential [to the

patent system], because it enables efficient investment in in-

novation.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabu-

shiki Co., 535 U.S. 722, 730-31 (2002). “A natent holder

should know what he owns, and the public should know what

he does not.” /bid.* The Federal Circuit’s approach to patent

claim interpretation in infringement cases, however, is inher-

* Relatedly, clarity reduces litigation over the scope of the patent

holder’s rights and, to the extent litigation does occur, spares

courts from engaging in “inference and conjecture.” Keystone

Bridge, 95 U.S. (5 Otto) at 278.

i4

ently uncertain and therefore frustrates this critical require-

ment.

A. The Federal Circuit’s Interpretive Approach Is

Inconsistent and Unpredictable.

The unpredictability of the Federal Circuit’s interpretive

methodology is apparent from the Circuit’s many conflicting

opinio: s. Commentators have described the Circuit’s pre-

Phillips opinions as “reflect{ing] two contrasting ap-

proaches.” 5A CHISUM § 18.03[2], at 12 (2005 Supp.). Ac-

cord, e.g, J. Molenda, Understanding the Federal Circuit's

Internal Debate and its Decision To Rehear Phillips v. AWH

Corp. En Banc, 86 J. PAT. & TRADEMARK OFF. Soc’y 911,

911-12 (2004); R. Wagner & L. Petherbridge, /s the Federal

Circuit Succeeding? An Empirical Assessment of Judicial

Performance, 152 U. Pa. L. REV. 1105, 1133-34 (2004).

The first begins with the text of the claims and seeks to

ascertain the ordinary meaning of that text using dictionaries

and, where relevant, examining differences in the phrasing of

separate claims; this approach turns to the enabling disclo-

sure only where the ordinary meaning is not apparent or the

enabling disclosure explicitly defines claim terms or dis-

avows the claims’ scope. See, e.g., Texas Digital, 308 F.3d

at 1202-04; Molenda, supra, at 922-27 & nn. 47-76 (collect-

ing cases and labeling this the “claim-focused approach”’);

Wagner & Petherbridge, supra, at 1133-34 (labeling this the

“procedural” approach).

The second approach envisages a broader (indeed, pri-

mary) role for the enabling disclosure in discerning the scope

of the claims, deeming it “the single best guide to the mean-

ing of a disputed term” (Vitronics, 90 F.3d at 1582) and al-

lowing it to “define claim terms ‘by implication.’” Bell

Atlantic, 262 F.3d at 1268 (quoting Vitronics, supra, at

1582). See Molenda, supra, at 915 & nn.18-19 (collecting

cases and labeling this the “specification-focused approach”).

15

The Circuit’s panels struggled to reconcile these ap-

proaches, and often found themselves, divided. See, e.g.,

Housey Pharms., 366 F.3d at 1356 (Newman, J., dissenting)

(“My colleagues’ approach to construction is based on con-

fusing recent pronouncements of panels of this court, contra-

vening earlier statements of precedent, thus adding to the

confusion.”); SciMed, 242 F.3d at 1347 (Dyk, J., concurring)

(“[OJur decisions provide inadequate guidance as to when it

is appropriate to look to the [enabling disclosure] to narrow

the claim by interpretation and when it is not appropriate to

do so.”).?

In granting en banc review in Phillips, the Circuit set out

to resolve this confusion in its precedents, but ended up “re-

affirm[ing]” (415 F.3d at 1312) most of “the basic principles

of claim construction outlined [in those cases}” (ibid. ), see id.

at 1312-19, and hence effectively proffering a compromise

between the two approaches. Compare id. at 1320 (empa-

thizing with Texas Digital’s concern that the enabling disclo-

sure not be employed to narrow the scope of the claims), with

ibid. (criticizing Texas Digital for “plac[ing] too much reli-

ance on extrinsic sources such as dictionaries, treatises, and

encyclopedias”). Compare also, e.g., id. at 1314 (“In some

cases, the ordinary meaning of claim language as understood

by a person of skill in the art may be readily apparent even to

lay judges * * *.”), with id. at 1321 (the enabling disclosure

may define claim terms “by implication”).

In retaining elements of both approaches, Phillips’ com-

promise solution carried little promise of bringing certainty

to the field. Indeed, the Phillips majority itself acknowl-

” Relatedly, the outcomes of infringement appeals depended upon

the composition of the Federal Circuit panel assigned to hear the

appeal. See generally Wagner & Petherbridge, 152 U. PA. L. REV.

at 1163 (using regression analysis to “predict, with statistically

significant confidence, the impact of the methodological approach

of half (6 of 12) of ths «ive judges of the Federal Circuit’).

16

edged that its decision might not succeed in that crucial ob-

jective: “In the end, there will still remain some cases in

which it will be hard to determine whether a person of skill in

the art would understand the embodiments to define the outer

limits of the claim term or merely to be exemplary in nature.”

415 F.3d at 1323. An en banc dissenting opinion expressed

the point in somewhat more forceful terms:

“[A]fter proposing no fewer than seven questions,

receiving more than thirty amici curiae briefs, and

whipping the bar into a frenzy of expectation, we

say nothing new, but merely restate what has be-

come the practice over the last ten years—that we

will decide cases according to whatever mode or

method results in the outcome we desire, or at least

allows us a seemingly plausible way out of the

case.” /d. at 1330 (Mayer, J., dissenting).

Commentators agree that Phillips “provides precious lit-

tle by way of guidance for practitioners and decisionmakers

* * * fand hence] does not provide a fix for this broken pillar

of substantive patent law.” R. HARMON, PATENTS AND THE

FEDERAL CIRCUIT § 6.2, p. 51 (7th ed., 2006 Supp.). See

also, e.g., S. Maebius, et al, References Overshadowed:

Long-Awaited Case Holds That Patent Specifications Trump

Dictionaries, NAT'L L. J., Aug. 29, 2005, at $1, S14 (Phillips

“offers little practical guidance to judges”); D. Wolfsohn &

A. Goranin, Phillips v. AWH: The Federal Circuit's Missed

Opportunity, THE LEGAL INTELLIGENCER, Sept. 14, 2005, at 8

(“If courts and litigants must continue to rely on generic reci-

tations of the same ‘well-settled’ construction principles,

while guidance on thornier interpretative questions is

avoided, there is little reason to hope that the ad hoc and in-

consistent nature of claim construction will be ameliorated

anytime soon.”).

The post-Phillips precedents, including the decision be-

low, bear this out. As in the earlier cases, panels often find

17

themselves divided on the proper role of the enabling disclo-

sure in ascertaining the scope of the claims. See App., infra,

19a (Linn, J., dissenting) (“The two statements from the

specification of the ‘749 patent relied on by the majority do

not sufficiently evidence an intention to depart from the ordi-

nary meaning of ‘recess’ [in the claims].””); Dorel Juvenile

Group, 429 F.3d at 1050 (Newman, J., dissenting) (“The ma-

jority’s approach to claim construction strains this court’s

attempts to restore consistency of analysis to patent claims by

placing the claims in the context of the specification.”); Free

Motion Fitness, 423 F.3d at 1355 (Prost, J., dissenting) (“The

majority’s approach * * * does not attempt to determine what

the inventor actually invented, but rather takes the broadest

available abstract meaning of a claim term that is not explic-

itly rejected by the specification.”).

B. The Unpredictability Of The Federal Circuit’s

Methodology Impedes Efficient Investment In

Innovation And Spawns Patent-Infringement

Litigation.

This Court and Congress have long recognized the im-

portance of certainty to the patent system. In Markman, this

Court reviewed its precedents and explained:

“As we noted in General Elec. Co. v. Wabash Ap-

pliance Corp., 304 U.S. 364, 369 (1938), ‘[t]he lim-

its of a patent must be known for the protection of

the patentee, the encouragement of the inventive

genius of others and the assurance that the subject of

the patent will be dedicated ultimately to the pub-

lic.” Otherwise, a ‘zone of uncertainty which enter-

prise and experimentation may enter only at the risk

of infringement claims would discourage invention

only a little less than unequivocal foreclosure of the

field.” United Carbon Co. v. Binney & Smith Co.,

317 U.S. 228, °° 6 (1942), and *[{t}he public [would]

be deprived of rights supposed to belong to it, with-

18

out being clearly told what it is that limits these

rights.’ Merrill v. Yeomans, 94 U.S. 568, 573

(1877).” Markman, 517 U.S. at 390."

Relatedly, to the extent that case law on patent interpretation

provides scant guidance, the volume of infringement lawsuits

and appeals will increase. See, e.g., S. REP. NO. 97-275, at 5

(1981), reprinted in 1982 U.S.C.C.A.N. 11, 15 (if the field of

patent law can achieve more “uniformity * * * [,] the number

of appeals resulting from attempts to obtain different rulings

on disputed legal points can be expected to decrease”).

This Court has also explained the need for certainty from

the standpoint of judicial economy, observing—in the par-

ticular context at issue here—that the claims requirement

“was inserted in the law for the purpose of relieving the

courts from the duty of ascertaining the exact invention of the

patentee by inference and conjecture * * *.” Keystone

Bridge, 95 U.S. at 278. See also, e.g., McCarty v. Lehigh

Valley R. Co., 160 U.S. 110, 116 (1895) (“[I]f we once begin

to include elements not mentioned in the claim, in order to

limit such claim, * * * we should never know where to

stop.”).

'° Indeed, this Court found the goal of predictability sufficiently

important to invoke it as “an independent reason to allocate all is-

sues of [patent] construction to the court [rather than to a jury].”

Markman, 517 U.S. at 390.

'' We recognize, of course, that certainty does not invariably

trump other concerns of the patent system. See Festo, 535 U.S. at

732 (reaffirming the doctrine of equivalents notwithstanding that it

“renders the scope of patents less certain”). It hardly follows that

certainty should not be the guiding principle on most questions of

interpretive methodology, especially where, as here, the competing

concern cited in Festo—that, absent the doctrine of equivalents,

“({u]nimportant and insubstantial substitutes for certain elements

could defeat the patent” (535 U.S. at 731}—is not implicated.

19

In 1982, Congress, acknowledging these concerns, at-

tempted to achieve certainty and predictability by centraliz-

ing patent appeals in the Federal Circuit. See Federal Courts

Improvements Act, Pub. L. No. 97-164 (April 2, 1982), 96

Stat. 25 (codified in relevant part at 28 U.S.C. § 1295(a)(1)).

As demonstrated above, however, the Circuit has fallen short

of “this noble mandate.” Phillips, 415 F.3d at 1330 (Mayer,

J., dissenting). Instead, despite its best efforts, it has an-

nounced an interpretive methodology that has proven unpre-

dictable to the members of that court, the patent bar, and

those who invest and engage in innovation. This regime of

“inference and conjecture” (Keystone Bridge, supra, at 278)

has impeded efficient investment in innovation and magni-

fied the volume of infringement litigation—unquestionably

“important ramifications upon our economy as a whole.”

S. REP. No. 97-275, at 6, reprinted in 1982 U.S.C.C.A.N. at

16.’ See generally U.S. Const., Art. I, § 8, cl. 8.7

In light of the shortcomings of the en banc Phillips deci-

sion, this Court is uniquely situated to restore certainty to this

field and thereby forestall these substantially adverse practi-

2 Specifically, while other factors may also be at play, the number

of patent lawsuits rose by 90% between 1994 and 2004, compared

to a 19% increase in all civil district court cases over the same

period. See ADMIN. OFFICE OF THE UNITED STATES COURTS,

JUDICIAL FACTS AND FIGURES, TABLE es

http://www.uscourts.gov/judicialfactsfigures/table2.02.pdf.

'’ The importance of the patent system is further suggested by this

Court’s review in recent years of numerous Federal Circuit patent-

law decisions. See, e.g., eBay Inc. v. MercExchange, L.L.C.,

No. 05-130, cert. granted, Nov. 28, 2005; Lab. Corp. of Am. Hold-

ings v. Metabolite Labs., Inc., No. 04-607, cert. granted, Oct. 31,

2005; Merck KGAA v. Integra Lifesciences I, Ltd., 125 S.Ct. 2372

(2005); Holmes Group, Inc. v. Vornado Air Circ. Sys., Inc., 535

U.S. 826 (2002); Festo, 535 U.S. 722; JEM. AG Supply, Inc. v.

Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124 (2001); Pfaff v. Wells

Elecs., Inc., 525 U.S. 55 (1998).

20

cal consequences. See Wagner & Petherbridge, 152 U. PA.

L. REV. at 1178 (“The serious methodological split we iden-

tify in the Federal Circuit’s jurisprudence raises the possibil-

ity, particularly in the absence of meaningful activities by the

Federal Circuit to resolve the issue internally, of intervention

by the Supreme Court.”). As we explain in Point III, infra,

the approach mandated by 35 U.S.C. § 112 not only respects

Congress’s clear distinction between the claims and the ena-

bling disclosure (and the markedly different functions of

these two elements), but promises significantly greater cer-

tainty in application.

Il. THE FEDERAL CIRCUIT’S USE OF THE ENA-

BLING DISCLOSURE TO NARROW _ THE

CLAIMS CONTRAVENES THE. PATENT STAT-

UTE AND DETERS INVENTORS FROM PROVID-

ING A USER-FRIENDLY ENABLING

DISCLOSURE.

Even aside from the unpredictability of the Federal Cir-

cuit’s methodology, its “imprope[r] read[ing] [of] a limitation

from the [enabling disclosure] into the claims” (App., infra,

16a (Linn, J., dissenting)) (1) undermines the priority as-

signed to claims by the patent statute; and (2) deters inven-

tors from providing a user-friendly enabling disclosure, thus

inhibiting “the public * * * [from] pursu[ing] innovations,

creations, and new ideas beyond the inventor’s exclusive

rights.” Festo, 535 U.S. at 731.

A. The Federal Circuit’s Notion That The Enabling

Disclosure Can Implicitly Narrow The Scope Of

The Claims Contravenes The Patent Statute.

In its decision below, the majority tellingly began its

analysis with the enabling disclosure before examining the

text of the claims. App., infra, 12a. It proceeded to rely on

inferences from the enabling disclosure to read limitations on

the claims’ scope that have no basis in the claims’ plain lan-

21

guage. /bid. See also, e.g., Irdeto Access, Inc. v. Echostar

Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (“Even

when guidance is not provided in explicit definitional format,

the [enabling disclosure] may define claim terms by implica-

tion such that the meaning may be found in or ascertained by

a reading of the patent documents.”) (quoting Bel! Atlantic,

262 F.3d at 1268 (in turn quoting Vitronics, 90 F.3d at 1582,

1584 n.6)) (internal quotation marks omitted).

This elevation of the enabling disclosure over the claims

violates 35 U.S.C. § 112. That statute is clear in stating the

separate purposes of these two distinct elements. Whereas

the claims “particularly poin[{t] out and distinctly clai{m] the

subject matter which the applicant regards as his invention”

(35 U.S.C. § 112, § 2), the enabling disclosure “enable[s] any

person skilled in the art * * * to make and use the same.” 35

U.S.C. § 112,49 1. As described in the Statement, supra, and

in this Court’s decision in Markman, Congress’s treatment of

the claims as a “distinct” (517 U.S. at 373) element is an im-

portant development that dates from at least 1870, see Mark-

man, 517 U.S. at 379 (citing 1 A. DELLER, PATENT CLAIMS §

4, p. 9 (2d ed. 1971)), and was made even more explicit when

the claims requirement was placed in its own paragraph in

1952. Thus, the language, structure, and history of Section

112 powerfully demonstrate that the claims are the touch-

stone in determining the scope of the patent (and, relatedly,

the question whether the patent has been infringed, see

Markman, 517 U.S. at 373).

This Court’s decisions confirm this reading of Sec-

tion 112 and its similarly worded predecessors. In its 1938

decision in General Electric, for example, this Court ex-

plained that “[t]he claims ‘measure the invention.’” 304 U.S.

at 369 (quoting Continental Paper Bag, 210 U.S. at 419)

(emphasis added). See also General Elec., supra, at 369

(“The inventor must ‘inform the public during the life of the

patent of the limits of the monopoly asserted, so that it may

be known which features may be safely used or manufac-

-

22

tured without a license and which may ot.””) (quoting Per-

mutit, 284 U.S. at 60). More recently, in Markman, this

Court again confirmed that “an infringement suit * * * neces-

sitates a determination of ‘what the words in the claim

mean.’” 517 U.S. at 374 (quoting SCHWARTZ at 80) (empha-

sis added).

Indeed, this Court has specifically rejected reliance on

other elements to narrow or trump the claims for purposes of

determining the patent’s scope:

“We may take it that, as the statute requires, the

{enabling disclosure and preferred embodiment] just

detailed show a way of using the inventor’s method,

and that he conceived that particular way described

was the best one. But he is not confined to that par-

ticular mode of use, since the claims of the patent,

not its specifications, measure the invention. While

the claims of a patent may incorporate the [enabling

disclosure] by reference, and thus limit the patent to

the form described in the [enabling disclosure], it is

not necessary to * * * describe in the [enabling dis-

closure] all possible forms in which the claimed

principle may be reduced to practice.” Smith v.

Snow, 294 U.S. 1, 11 (1935) (citations omitted).

See also McCarty, 160 US. at 116 (“[I]f we once begin to

include elements not mentioned in the claim, in order to limit

such claim, * * * we should never know where to stop.”);

Markman, 517 US. at 379 (“[A]s early as 1850 ‘judges were

.. . beginning to express more frequently the idea that in

seeking to ascertain the invention ‘claimed’ in a patent the

inquiry should be limited to interpreting the * * * ‘claim’

*** ”) (quoting K. Lutz, Evolution of thé Claims of U.S.

Patents, 20 J. PAT. Orr. Soc. 134, 145 (1938)) (second al-

teration in original).

23

B. The Federal Circuit’s Use Of The Enabling

Disclosure To Narrow The Claims Discourages

Inventors From Providing A User-Friendly

Enabling Disclosure.

Important functional considerations underlie Section

112’s (and this Court’s) careful distinction between the

claims and enabling disclosure portions of the patent. Ironi-

cally, in elevating the enabling disclosure above the claims

for purposes of determining the claims’ scope, the Federal

Circuit undermines the function of the enabling disclosure:

to provide the public the means “to pursue innovations, crea-

tions, and new ideas beyond the inventor’s exclusive rights.”

Festo, 535 U.S. at 731 (citing Bonito Boats, Inc. vy. Thunder

Craft Boats, Inc., 489 U.S. 141, 150 (1989)). See also, e.g.,

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 481 (1974)

(enabling disclosure “stimulate[s] ideas and the eventual de-

velopment of further significant advances in the art”). Be-

cause inventors face the possibility that their patents’ claims

will be narrowed by the enabling disclosure, they attempt to

avoid that outcome by drafting an enabling disclosure that is

either too short, too long, or too obscure to facilitate the pub-

lic’s practice of the invention. See Note, The Disclosure

Function of the Patent System (or Lack Thereof), 118 HARV.

L. REV. 2007, 2026 (2005) (“{Applicants] disclose too much

information of insignificant value in an attempt to prevent

courts from narrowing the scope of their patents.”).

Put another way, inventors are deterred from drafting the

enabling disclosure in the most natural, user-friendly terms.

See ibid. (use of enabling disclosure to narrow claims has

“the unintended effect of penalizing patentees who wish to

file a single, concise description of the overall invention or

its best mode”). Increasingly, it is a lawyer, not the inventor,

who must take the leading role in drafting the enabling dis-

closure—and such drafting is focused far more on preventing

infringement than stimulating further advances. See P. Gar-

rity & S. Szczepanski, Federal Circuit Decisions Place a

24

Premium on Lawyering, N.Y.L.J., Oct. 17, 2005, at S2, S3,

S10 (“The [Federal Circuit’s] current approach to deciding

patent infringement puts a premium on the skills and knowl-

edge of the lawyer(s) who draft and prosecute the patent ap-

plication.”); Maebius et al., NATL L.J., Aug. 29, 2005, at

S14 (“[T]he Phillips decision places a premium on quality

patent draftsmanship.”’).

These adverse consequences are hardly a matter of specu-

lation: Engineers routinely complain that patents are “hard to

read”'* and “a less than ideal vehicle for communicating

technical information.” NAT'L RESEARCH COUNCIL OF THE

NAT’L ACADS., A PATENT SYSTEM FOR THE 21°’ CENTURY 63

(S. Merrill, et al. eds., 2004) (attributing this in part to the

fact that “a patent is written by an attorney or a patent agent

to persuade an examiner to grant and a court to uphold a

property right of the desired scope”). They underscore why

the Federal Circuit’s deviation from 35 U.S.C. § 112 war-

rants this Court’s review.

Ill. THE STATUTE MANDATES A CLAIM-FOCUSED

APPROACH, AND THIS CASE PROVIDES AN

EXCELLENT VEHICLE FOR THIS COURT SO

TO HOLD.

As discussed, Section 112 makes a clear distinction be-

tween the claims and enabling disclosure elements. Merging

the two during claim interpretation (1) undermines the cer-

tainty that the claims should provide regarding what will and

will not infringe, and (2) frustrates the function of the ena-

bling disclosure, which is to facilitate improvements upon the

invention.

'* R. Barr, Statement at the Fed. Trade Comm’n Roundtable on

Competition, Economic, and Business Perspectives on Substantive

Patent Law Issues: Non-Obviousness and Other Patentability Cri-

teria (Oct. 30, 2002), at 79, transcript available at

http://www.ftc.gov/opp/intellect/02 103 0trans.pdf.

Although this Court’s statutory interpretation jurispru-

dence rests on goals beside predictability, it provides a road-

map to achieving that important goal in patent claim

interpretation while also preserving the separate functions of

the claims and enabling disclosure. That jurisprudence uses

the text of the statute as the starting point, e.g, Bailey, 516

U.S. at 142, and also, when that text is amenable to interpre-

tation based on its plain meaning, as the stopping point. E.g.,

Lamie, 540 U.S. at 534; Hartford Underwriters Ins. Co. v.

Union Planters Bank, N.A., 530 U.S. 1, 6 (2000); United

States v. Ron Pair Enters., Inc., 489 U.S. 235, 241 (1989).

Of course, in those cases where a statute’s text is “suffi-

ciently ambiguous” (Eldred vy. Ashcroft, 537 U.S. 186, 209

n.16 (2003))}—which is to say, incapable of interpretation

according to its plain meaning—the interpretive task may

“warrant recourse to legislative history.” Ibid.

Here, the claims are akin to the text of a statute. A court

should thus begin the interpretive process by examining the

text of the claims to discern their ordinary meaning. This

threshold step may include an analysis of differences in lan-

guage between the claims and a consultation of objective

sources such as dictionaries. Only if the claims do not prove

susceptible to unambiguous interpretation in this manner

should the court turn to the enabling disclosure for clues to

resolve the ambiguity. (Additionally, even where the scope

of the claims can be discerned from their plain meaning, that

scope may be narrowed if the claims or the enabling disclo-

sure explicitly disavow that scope or explicitly define a claim

term in a restrictive way.'*)

Just as the plain meaning approach has provided an

“easy, relatively non-divisive way to resolve difficult issues”

'S To be sure, the analogy to statutory interpretation is inexact in

this last respect, for legislative history, no matter how explicit, is ~

seldom permitted to narrow an unambiguous statute.

(D. Strauss, Why Plain Meaning?, 72 NOTRE DAME L. REV.

1565, 1580 (1997)) in the statutory interpretation context, so

too will it bring predictability to the realm of patent claim

interpretation. See Wagner & Petherbridge, 152 U. PA. L.

REV. at 1162 (using statistical techniques to determine that “‘a

small group [of Federal Circuit judges] is substantially more

consistent” and that “this consistent group overlaps perfectly

with the Proceduralist [methodology] * * *”). Even more

important, in carefully circumscribing when the enabling dis-

closure may be consulted, it respects the different functions

35 U.S.C. § 112 assigns to the claims and enabling disclo-

sure, and allows inventors to draft their enabling disclosures

for the public good rather than self-interest.

While the Federal Circuit decides many patent infringe-

ment appeals, this case illustrates in an especially straight-

forward way how the choice of interpretive approach matters

to the outcome.’® There is no dispute that the enabling dis-

closure depicts and describes only razor blade recesses that

form a 90-degree or smaller angle with the horizontal shav-

ing surface. App., infra, 12a (majority), 17a—-19a (dissent).

Nor is there any dispute that the ordinary meaning of the

claim terms “recess,” “below,” and “immediately beneath”

provides no basis for an angular restriction. App., infra, 2la

(dissent).

Moreover, as the dissent observed and the majority did

not refute, the majority’s use of the enabling disclosure to

narrow the claims has the uncomfortable effect of nullifying

the obvious difference between “below” (Claim 3) and “im-

'° Phillips would also have been a good vehicle to address patent-

interpretation methodology if the petitioner had included an appro-

priate question presented. Compare Pet. for cert. in AWH Corp. v.

Phillips, No. 05-602, at i (presenting only the question “[w]hether

the Federal Circuit is correct in holding that all aspects of a district

court’s patent claim construction may be reviewed de novo on ap-

peal”). See also n.1, supra.

27

mediately beneath” (Claim 1). See App., infra, at 20a-21a

(dissent). This aspect of the case brings into play, again by

analogy to statutory interpretation jurisprudence, an espe-

cially powerful tool for discerning the claims’ plain meaning:

the principle that “[w]here Congress includes particular lan-

guage in one section of a statute but omits it in another sec-

tion of the same Act, it is generally presumed that Congress

acts intentionally and purposely in the disparate inclusion or

exclusion.” KP Permanent Make-Up, Inc. v. Lasting Impres-

sion I, Inc., 543 U.S. 111, 118 (2004) (quoting Russello v.

United States, 464 U.S. 16, 23 (1983) (in turn quoting United

States v. Wong Kim Bo, 472 F.2d 720, 722 (Sth Cir. 1972)))

(internal quotation marks omitted).

Finally, the question of which interpretive methodology

to adopt arises here in the context of a patent that is neither

unduly long nor technically complex. Accordingly, this case

provides an ideal opportunity to enforce the mode of inter-

pretation mandated by 35 U.S.C. § 112 and simultaneously

bring certainty to the field.

28

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted.

HAROLD A. BARZA

KENT J. BULLARD

VALERIE M, NANNERY

Quinn Emanuel Urquhart

Oliver & Hedges, LLP

865 S. Figueroa Street

Los Angeles, CA 90017

(213) 443-3000

DAVID T. GOLDBERG

99 Hudson St., 8th Flr.

New York, NY 10013

(212) 334-8813

JANUARY 2006

KATHLEEN M. SULLIVAN

(Counsel of Record)

DANIEL BROMBERG

Quinn Emanuel Urquhart

Oliver & Hedges, LLP

555 Twin Dolphin Drive

Redwood Shores, CA 94065

(650) 801-5000

SANFORD I. WEISBURST

JAMES M. GLASS

KETEVAN KULIDZHANOVA

Quinn Emanuel Urquhart

Oliver & Hedges, LLP

335 Madison Avenue, 17" Fir.

New York, NY 10017

(212) 702-8100

APPENDIX

la

United States Court of Appeals,

Federal Circuit.

04-1418, -1423

IZUMI PRODUCTS COMPANY,

Plaintiff-Appellant,

v.

KONINKLIJKE PHILIPS ELECTRONICS N.V.,

PHILIPS ELECTRONICS NORTH AMERICA CORPO-

RATION, and PHILIPS DOMESTIC APPLIANCES AND

PERSONAL CARE B.V.,

Defendants-Cross Appellants.

DECIDED: July 7, 2005

Before NEWMAN, LOURIE, AND LINN, Circuit Judges.

Opinion for the court filed by Circuit Judge LOURIE. Con-

curring-in-part and dissenting-in-part opinion filed by Circuit

Judge LINN.

LOURIE, Circuit Judge.

[zumi Products Company (“Izumi’’) appeals from the de-

cision of the United States District Court for the District of

Delaware granting summary judgment of noninfringement of

United States Patent 5,408,749 in favor of Koninklijke Phil-

ips Electronics N.V., Philips Electronics North America

Corp., and Philips Domestic Appliances and Personal Care

B.V. (collectively “Philips”). /zumi Prods. Co. v. Koninkli-

jke Philips Elecs. N.V., 315 F. Supp. 2d 589 (D. Del. 2004).

Philips cross-appeals from the decision of the district court

denying its motion for summary judgment of invalidity of the

‘749 patent. Because we agree with the district court that

Philips does not infringe the ‘749 patent and that Philips did

2a

not prove that the patent was invalid on the ground of antici-

pation by Japanese Patent Publication 55-47879, we affirm.

BACKGROUND

The patent in this case generally relates to electric rotary

razors. Conventional electric rotary razors are designed with

a stationary ring of outer cutter blades and a rotating ring of

inner cutter blades. An example of an inner cutter and an

outer cutter is shown below in figures 2 and 3, respectively,

as they appear in the patent.

When such razors are applied to a skin surface to be

shaved, the hairs on the skin pass through openings in the

Outer cutter and are sheared off by the inner cutter blades. To

provide a close shave, electric rotary razors may use springs

to keep the cutting edge surface of the inner cutter blades in

BEST AVAILABLE COPY

3a

constant contact with the bottom surface of the outer cutter

blades. According to the patent specification, the shortcom-

ings of such conventional electric rotary razors include

sheared hairs adhering to the rear side surface of the inner

cutter blades. '749 patent, col. 1, ll. 41-47. Another short-

coming of conventional electric rotary razors is that they

have a relatively large area of contact between the surfaces of

the outer and inner cutters. /d., col. 1, ll. 65-68. These short-

comings result in conventional rotary razors having increased

frictional resistance between the two cutters, increased power

consumption, and reduced rotational speed of the inner cut-

ter. Jd, col. 1, II. 47-55, 65-68. The increased frictional re-

sistance also generates heat on the surface of the outer cutter

that touches the skin, thereby causing discomfort. /d., col. 1,

Il. 56-61.

The patented invention seeks to improve upon conven-

tional electric rotary razors by reducing the surface area of

the cutting edge surface of the inner cutter blades and by de-

signing the inner cutter blades so that shaving debris does not

easily adhere to its rear side surface. /d., col. 2, II. 19-28. To

achieve both of these results, the patent specification dis-

closes an inner cutter blade with the-rear portion of the cut-

ting edge surface removed. /d., col. 2, II. 40-48; /d col. 4,

II. 56-58. As illustrated below in the embodiments shown in

figures 4 and 5, the specification further discloses that an in-

ner cutter blade (40) with a cutout (40(a)), or recess, having a

cutout angle 6 of 90 degrees (figure 4) or less (figure 5) be-

tween the cutting edge surface (41) and the rear side surface

of the inner cutter blade, will reduce shaving debris adhesion

to the rear side surface of the inner cutter blade. /d., col. 4, I.

58 to col. 5, 1. 8.

The specification contrasts the embodiments of the inven-

tion shown in figures 4 and 5 with the inner cutter blade (4)

of a conventional electric rotary razor, shown below in figure

8, which does not have a cutout. Without the cutout, the rear

side surface (4(b)) of the inner cutter blade is parallel to the

4a

front side surface, and the angle between the rear side surface

and the cutting edge surface is greater than 90 degrees. /d.,

col. 5, Il. 9-13. According to the patent specification, be-

cause this angle is greater than 90 degrees, shaving debris (5)

will not be prevented from adhering to the rear side surface.

Id.

FIG.8

PRIOR ART

In March 2002, Izumi filed suit against Philips alleging

infringement of the '749 patent. Specifically, Izumi accused

116 different electric rotary razor models manufactured by

Philips of infringing the ‘749 patent. Jzwmi Prods., 315

Sa

F.Supp.2d at 596. All of the accused electric rotary razors

have semi-cylindrical grooves on the rear side surface of the

inner cutter blades. Moreover, the grooves are cut at an an-

gle so that the rear side surface is parallel to the front side

surface, resulting in a cutout angle 6 of greater than 90 de-

grees, similar to the prior art inner cutter blade shown in fig-

ure 8 above. Philips denied Izumi's allegations of

infringement and filed counterclaims seeking a declaratory

judgment of noninfringement and invalidity. Izumi asserted

all three claims of the '749 patent in the district court pro-

ceeding.

Claim 1, one of two independent claims of the '749 pat-

ent, reads as follows:

An electric razor comprising;

at least one outer cutter with openings through

which whiskers penetrate;

at least one inner cutter having a plurality of cutter

blades, each one of said cutter blades having a cut-

ting edge surface at an upper end thereof that slides

on an inside surface of said outer cutter, said cutter

blades being inclined in a direction of rotation of

said inner cutter; and

a recess comprising an indentation formed immedi-

ately beneath said cutting edge surface and facing in

a direction opposite from said direction of rotation

of said inner cutter in each one of said plurality of

cutter blades whereby said cutting edge surface is

made thinner than a thickness of said cutter blade.

Claim 2 depends from claim |, and it includes limitations

regarding a cutter disk and the orientation of cutter arms rela-

tive to said cutter disk. Claim 3, the other independent claim,

reads as follows:An inner cutter used in an electric rotary ra-

zor comprising:

a cutter disk with a through hole at a center thereof;

6a

a plurality of cutter arms extending from an outer

edge of said cutter disk in a vertical direction rela-

tive to said cutter disk;

a cutter blade extending from each one of said cutter

arms and inclined in a rotational direction of said

inner cutter, each one of said cutter blades being

provided with a cutting edge surface at an end sur-

face of said cutter blade and with a recess formed

below said cutting edge surface; and wherein

said recess is formed on a rear surface of said cutter

blade, said rear surface facing in opposite direction

from the rotational direction of said inner cutter.

Izumi moved for summary judgment of infringement and

Phillips moved for summary judgment of noninfringement.

Following the parties’ respective motions, the district court

construed the limitations “a recess comprising an indentation

formed immediately beneath said cutting edge surface” and

“a recess formed below said cutting edge surface” of claims |

and 3, respectively. /zumi Prods. Co. v. Koninklijke Philips

Elecs. N.V., No. 02-156-SLR, 2004 WL 1043375, at *1

(D.Del. April 27, 2004). Both limitations were construed to

mean “A cut out formed directly under the cutting edge sur-

face and oriented in a horizontal direction, parallel to the cut-

ting edge surface.” /d In reaching this construction, the

court relied on the specification, which states: “It is ... possi-

ble to form a recess of a great amount of indentation on the

upper rear side surface of the cutter blade so that the recess is

located immediately beneath the rear edge of the cutting edge

surface that is on the opposite side from the direction of rota-

tion of the inner cutter.” /d. (citing '749 patent, col. 2, IT. 43-

48). The court further noted that “[t]he specification explains

that the purpose for the cut out is to prevent shaving debris

from adhering to the surface of the inner cutter.” /d.

After construing the claim limitations, the court ad-

dressed whether the accused products, as a matter of law, met

7a

the “recess beneath/recess below” limitations. In granting

summary judgment of no literal infringement,’ the court

found that the inner cutter blades of the accused products

have grooves that are positioned at or begin flush with the

cutting edge surface, as opposed to having a recess lying

immediately below the cutting surface, as the claim requires.

Izumi Prods., 315 F.Supp.2d at 598-99. Moreover, the court

noted that the grooves are not oriented in a horizontal direc-

tion or parallel to the cutting edge surface. /d.

The district court also granted Philips’ motion to preclude

Izumi's expert witness, Dr. Charles E. Benedict, from testify-

ing regarding infringement by the accused products under the

doctrine of equivalents. /d at 602. Although Dr. Benedict

was qualified as an expert, the court questioned the reliability

of his opinion on the effect of turbulence on shaving debris

adhesion to the rear side surface of the inner cutter blades of

an electric rotary razor. /d. The court noted that Dr. Bene-

dict's proffered opinion was not supported by tests conducted

on the accused products and that the opinion did not cite any

supporting literature. /d. Moreover, the court determined that

there was no valid scientific connection between Dr. Bene-

dict's turbulence theory and the way the grooved inner cutter

blade of the accused products functioned. Thus, the court

found that Dr. Benedict's testimony could potentially confuse

the jury, and it was therefore precluded from presentation to

the jury. Jd.

Finally, the district court addressed the parties' competing

motions for summary judgment of validity and invalidity of

' With respect to Philips' motion for summary judgment of nonin-

fringement under the doctrine of equivalents, the court found that

genuine issues of material fact existed as to whether the accused

products perform the same function in substantially the same way

as the electric razor claimed in the '749 patent. Jzumi Prods., 315

F.Supp.2d at 599. Philips, however, does not appeal the court's

disposition of that motion.

8a

the '749 patent under 35 U.S.C. § 102(b). The allegedly an-

ticipatory reference was Japanese Patent Publication 55-

47879 (the “Hamashima '879 publication”). Jd at 603. In

concluding that the patent was not anticipated, the court de-

termined that the Hamashima '879 publication did not dis-

close “a plurality of cutter arms extending from an outer edge

of said cutter disk in a vertical direction,” as required by

claims 2 and 3 of the '749 patent. /d. The court construed the

limitation to mean that “two or more projections extend in a

vertical direction from the outer edge of the cutter disk.”

Izumi Prods., 2004 WL 1043375, at *1. The court then ob-

served that the cutter arms in the Hamashima reference ex-

tended radially, and not from the outer edge of the cutter disk

in a vertical direction. J/zumi Prods., 315 F.Supp.2d at 603.

Thus, the court granted Izumi's motion for partial summary

judgment of no anticipation of claims 2 and 3 of the '749 pat-

ent and denied Philips' cross-motion for summary judgment

that the Hamashima '879 publication anticipates claim 3 of

the '749 patent. /d. at 604.

On May 4, 2004, the district court entered final judg-

ments of noninfringement of the '749 patent and a lack of an-

ticipation of claims 2 and 3 of the '749 patent by the

Hamashima '879 publication. The district court also dis-

missed all declaratory judgment counterclaims as moot.

Izumi timely appealed and Philips timely cross-appealed to

this court. We have jurisdiction pursuant to 28 U.S.C.

§ 1295(a)(1).

DISCUSSION

We review a district court's grant of summary judgment

de novo, reapplying the same standard used by the district

court. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp.,

149 F.3d 1309, 1315 (Fed.Cir.1998). Summary judgment is

appropriate if there is no genuine issue as to any material fact

and the moving party is entitled to a judgment as a matter of

law. Fed.R.Civ.P. 56(c). “The evidence of the non-movant

9a

is to be believed, and all justifiable inferences are to be

drawn in his favor.” Anderson v. Liberty Lobby, Inc., 477

U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

I. INFRINGEMENT

On appeal, [zumi challenges the district court's summary

judgment of noninfringement of the '749 patent, arguing that

the court erred in its claim construction analysis. Izumi con-

tends that the court erred by construing the limitation “recess

... formed immediately beneath,” as used in claim 1, to mean

a recess that is “directly under” the cutting edge surface.

Izumi argues that the court should have construed the limita-

tion to mean a recess that is “lower than the cutting edge sur-

face,” but not necessarily “directly under” the cutting edge

surface. Although the dictionary defines the term “beneath”

as both “directly underneath” and “lower than,” according to

Izumi, claim | would not cover the embodiment shown in

figure 4 under the court's construction since no portion of the

recess is “directly under” the cutting edge surface.

With respect to the limitation “recess formed below,” as

used in claim 3, Izumi argues that the district court erred by

also construing that term to mean “directly under.” As with

the claim term “beneath,” Izumi asserts that the proper mean-

ing of the term “below” is “lower than.” Izumi also contends

that the limitation “below” is broader than “immediately be-

neath,” since a “recess formed below” is not necessarily

“immediately beneath” the cutting edge surface. Thus, ac-

cording to Izumi, “recess formed below” should be construed

to mean a recess that is lower than the cutting edge surface,

but not necessarily “immediately beneath” the cutting edge

surface.

Izumi also argues that the district court erred by constru-

ing the “recess beneath/recess below” limitations of claims 1

and 3 to be “oriented in a horizontal direction, parallel to the

cutting edge surface.” According to Izumi, the court improp-

erly read into the claims an additional limitation. Aside from

10a

a horizontally-oriented recess not being disclosed in the pat-

ent, Izumi further points out that the recess in the embodi-

ment shown in figure 4 can be viewed as either a

horizontally-oriented recess or a vertically-oriented recess,

like the accused products. :

Finally, Izumi appeals from the district court's preclusion

of Dr. Benedict's testimony on infringement under the doc-

trine of equivalents. Izumi argues that, contrary to the dis-

trict court's finding, Dr. Benedict considered all of the

accused products in forming his opinion. Izumi also asserts

that the court committed legal error by requiring Dr. Benedict

to test the accused products or cite supporting literature.

Izumi argues that Dr. Benedict's testimony applying “well-

established” principles of turbulence to electric rotary razors

did not require testing or citation of supporting literature.

Izumi also disputes the court's finding of a lack of scientific

connection between Dr. Benedict's testimony and the func-

tionality of the grooved inner cutter blades. According to

Izumi, Dr. Benedict's testimony did explain how the grooved

inner cutter blades of the accused products reduce shaving

debris adhesion.

Philips responds with various counterarguments to sup-

port the district court's claim construction. To support the

court's choice of the dictionary definition “directly under,”

instead of “lower than,” Philips cites portions of the specifi-

cation stating that the cutout angle between the rear side sur-

face of inner cutter blade and the cutting edge surface must

be 90 degrees or less in order to reduce shaving debris adhe-

sion. Philips argues that a recess that is simply “lower than”

the cutting edge surface will not accomplish the patent's

stated objective. Philips also disputes Izumi's assertion that

the “directly under” construction would read out the em-

bodiment shown in figure 4. According to Philips, figure 4

represents an embodiment having a recess at the furthest

point where it can still be considered “directly under” the cut-

ting edge surface. Philips also argues that Izumi, by surren-

lla

dering claims reciting an inner cutter blade with a reduced

cutting edge surface, disclaimed inner cutter blades with a

recess that was simply “lower than” the cutting edge surface.

Philips also defends the court's construction requiring the

recess to be “oriented in a horizontal direction, parallel to the

cutting edge surface.” According to Philips, a recess that is

“directly under” the cutting edge surface will necessarily be

“oriented in a horizontal direction, parallel to the cutting edge

surface.” Moreover, Philips argues that a recess at or flush

with the cutting edge surface will be oriented in a vertical

direction.

Regarding the limitation “recess formed below,” as used

in claim 3, Philips disagrees with Izumi that that term is

broader in scope than “recess .... formed immediately be-

neath,” as used in claim 1. Philips notes that the specification

never uses the term “below” to describe the position of the

recess, but instead always uses the term “immediately be-

neath.” Moreover, Philips argues that contrary to the specifi-

cation, a recess that is not “immediately beneath” the cutting

edge surface will not reduce shaving debris adhesion at the

rear of the inner cutter blade.

Philips also responds to Izumi's argument that the district

court improperly precluded Dr. Benedict's testimony on in-

fringement under the doctrine of equivalents. Philips reiter-

ates the district court's position that Dr. Benedict's testimony

was unreliable because he offered no support for his testi-

mony, in particular, the lack of testing on the accused prod-

ucts and citation of supporting literature. Philips also asserts

that, given the lack of support in his testimony, the court ap-

propriately found insufficient connection between Dr. Bene-

dict's turbulence theory and the way the inner cutter blades of

the accused products function.

As an initial matter, we conclude that the court erred in

construing the limitations “recess ... formed immediately be-

neath” and “recess formed below” to mean “a cut out formed

l2a

directly under the cutting edge surface and oriented in a hori-

zontal direction, parallel to the cutting edge surface.” As

Izumi recognizes, under the district court's construction, the

embodiment shown in figure 4 would not meet either limita-

tion, and that result argues against the court's interpretation.

The recess of the embodiment shown in figure 4 does not

have any part of its cutout directly under the cutting edge sur-

face, as the district court's claim construction requires. In-

stead, the recess begins at a point immediately adjacent to the

point directly under the cutting edge surface.

We are not, however, prepared to give Izumi the broad

interpretation that it currently seeks. The specification states

that an objective of the disclosed invention is “to provide an

electric razor which assures that the shaving debris and other

substances do not easily adhere to the cutter blades of the in-

ner cutter.” '749 patent, col. 2, Il. 25-28. The invention ac-

complishes this objective by cutting out the rear portion of

the cutting edge surface. /d., col. 2, II. 40-44. The specifica-

tion further teaches that inner cutter blades having a recess

with a cutout angle 6 of greater than 90 degrees between the

rear side surface of the inner cutter blade surface and the cut-

ting edge surface, as seen in the prior art electric rotary ra-

zors, will not prevent shaving debris adhesion. /Jd., col. 5, Il.

9-13. In disclosing that the cutout angle 6 must be 90 de-

grees or less, the specification is not describing an embodi-

ment of the disclosed invention, but rather defining a critical

aspect of the invention itself. We therefore construe the

claim term “recess,” as used in both claims | and 3, to be a

cutout having an angle @ of 90 degrees or less between the

rear side surface of the inner cutter blade and the cutting edge

surface.

Furthermore, we reject Izumi's attempt to construe the

limitation “recess formed below,” as used in claim 3, more

broadly than the limitation “recess ... formed immediately

beneath,” as used in claim |. As we construe it, the claim

term “recess” has a cutout angle 6 between the rear side sur-

13a

face of the inner cutter blade and the cutting edge surface.

But there can be no cutout angle 6 if the “recess” is not im-

mediately below the cutting edge surface. Indeed, an inter-

vening section of the inner cutter blade would preclude the

existence of an angle between the rear side surface portion of

the cutout and the cutting edge surface. Thus, the “recess,”

as that term is used in claim 3, must be immediately below

the cutting edge surface. Moreover, Izumi's proposed con-

struction of “recess formed below” would be contrary to a

stated objective of the invention, viz., to minimize the contact

pressure between the surfaces of the inner and outer cutter

blades by reducing the thickness of the cutting edge surface

of the inner cutter blade. /d., col. 2, II. 19-24. Under Izumi's

construction, the cutting edge surface of the inner cutter

blade would not necessarily have a reduced thickness.

Next, we address the district court's construction requir-

ing the recess to be “orientated in a horizontal direction, par-

allel to the cutting edge surface.” We agree with Izumi that

the patent specification does not support this claim construc-

tion. As we have construed them here, the claims require

only a recess having a cutout angle 6 of 90 degrees or less. A

semi-cylindrical recess having a cutout angle 8 of 90 degrees

or less would not be “orientated in a horizontal direction,

parallel to the cutting edge surface,” but would otherwise ap-

pear to fall within the scope of the claim term “recess,” as we

have defined it. Thus, we conclude that the district court

erred in requiring the recess to be “orientated in a horizontal

direction, parallel to the cutting edge surface.”

Despite our differences with the district court's claim

construction, we will affirm its decision on infringement.

The court's errors were harmless. Under our construction of

the limitations “recess ... formed immediately beneath said

cutting edge surface” and “recess formed below said cutting

edge surface” to mean “a cut out having an angle 8 of 90 de-

grees or less between the rear side surface of the inner cutter

blade and the cutting edge surface, with the cutout also being

l4a

immediately lower than the cutting edge surface,” the ac-

cused products do not literally infringe claims | and 3 of the

'749 patent. Indeed, neither party disputes that the angle 0

between the rear side surface of the inner cutter blade and the

cutting edge surface of all of the accused products is greater

than 90 degrees. That being the case, there is no infringe-

ment.

Furthermore, we hold that the district court did not abuse

its discretion by precluding Dr. Benedict's testimony regard-

ing infringement under the doctrine of equivalents. Dr.

Benedict's testimony generally explained how inner cutter

blades shaped like the accused products could potentially

generate sufficient turbulence to prevent shaving debris ad-

hesion. The testimony then immediately jumped to the con-

clusion that the accused products “perform [ ] substantially

the same function in substantially the same way to achieve

the same result as the claimed invention.” The testimony,

however, was missing the essential analysis as to whether

inner cutter blades having the same physical dimensions and

operating parameters of the accused products generated suf-

ficient turbulence to prevent adhesion of shaving debris.

Such an analysis was necessary given that Dr. Benedict had

not tested whether shaving debris actually adhered to the rear

side surface of the inner cutter blades of the accused prod-

ucts. As the district court noted, without this minimal test-

ing, Dr. Benedict was merely providing his subjective

beliefs, which were not supported. We also reject Philips’

assertion that Dr. Benedict did consider tests that were per-

formed on the accused products. Aside from the question

whether Dr. Benedict relied on appropriate prior tests, from

our review of the testimony, even if Dr. Benedict did con-

sider the appropriate tests, it was not reflected in his conclu-

sory testimony. In view of these deficiencies, we conclude

that the district court did not abuse its discretion in finding

Dr. Benedict's testimony unreliable.

15a

Il. ANTICIPATION

Philips cross-appeals from the district court's decision

denying its motion for summary judgment of invalidity of the

'749 patent on the ground of anticipation by the Hamashima

'879 reference under 35 U.S.C. § 102(b). Philips also dis-

putes the court's construction of the limitation “a plurality of

cutter arms extending from an outer edge of said cutter disk”

to mean “two or more projections extend in a vertical direc-

tion from the outer edge of the cutter disk.”

Arguing that the court did not apply the plain meaning

rule, Philips requests that we construe the limitation to mean

an inner cutter comprised of a disk having cutter arms pro-

jecting from the disk at some position away from center of

the disk and at the disk's outer edge. Under its proposed con-

struction, Philips argues that the Hamashima reference meets

this limitation by disclosing cutter arms extending in a radial

direction from within the cutter disk. To further support its

proposed construction, Philips also argues that the cutter arm

arrangement disclosed in the Hamashima reference is “iden-

tical” to that in U.S. Patent 2,824,367, where, according to

Philips, the Examiner found cutter arms extending from an

outer edge of the cutter.

We affirm the district court's decision that the Hama-

shima '879 publication does not anticipate claims 2 and 3 of

the '749 under 35 U.S.C. § 102(b). Moreover, we conclude

that the court did not err in its construction of the limitation

“a plurality of cutter arms extending from an outer edge of

said cutter disk.” We agree with Izumi that the claims clearly

require some portion of the cutter arms to extend from the

outer edge of the cutter disk in a vertical direction. - The

Hamashima reference, however, only discloses cutter arms

extending from within the cutter disk, not from the outer

edge of the cutter disk. Indeed, no portion of the cutter arms

in Hamashima even touches the outer edge of the cutter disk.

Moreover, contrary to Philips’ assertion, the cutter arms in

16a

the Hamashima reference are not identical to the cutter arms

in the '367 patent. Unlike the cutter arms in the Hamashima

reference, a portion of the cutter arms disclosed in the '367

patent extends from the outer edge of the cutter disk. Thus,

the Hamashima reference does not anticipate claims 2 and 3

of the '749 patent.

We have considered Izumi's remaining arguments regard-

ing the '749 patent and find them not persuasive.

CONCLUSION

We affirm the district court's grant of summary judgment

of noninfringement of the '749 patent and summary judgment

of a lack of anticipation of claims 2 and 3 of the '749 patent

by the Hamashima '879 publication.

COSTS

Each party shall bear its own costs.

LINN, Circuit Judge, concurring-in-part and dissenting-in-

part.

While I concur in the majority's affirmance of the district

court's grant of summary judgment of lack of anticipation of

claims 2 and 3 of United States Patent No. 5,408,749 (‘the

'749 patent”) and its determination that the district court did

not abuse its discretion in excluding expert testimony, I must

respectfully dissent from its conclusion regarding nonin-

fringement. The majority concludes that there is no in-

fringement because the accused products have an angle 8,

between the rear side surface of the inner cutter blade and the

cutting edge surface, greater than 90 degrees and, thus, do

not read on the claimed “recess,” which, the majority con-

cludes, requires “having an angle 6 of 90 degrees or less.”

Ante at ----. In my view, the restriction of the scope of the

claimed recess to require this angular limitation improperly

reads a limitation from the specification into the claims. |

17a

can discern no proper basis to do so and would give the “re-

cess” limitation the full scope of its ordinary and customary

meaning.

The disputed claimed term “recess” appears in independ-

ent claims 1 and 3. Claim 1 recites an electric razor compris-

ing, among other things, “a recess ... formed immediately

beneath said cutting edge surface ... whereby said cutting

edge surface is made thinner than a thickness of said cutter

blade.” Claim 3 recites an inner cutter comprising, “a recess

formed below said cutting edge surface.”

Claim terms are to be given their ordinary and customary

meaning to one of skill in the relevant art. Johnson World-

wide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989

(Fed.Cir.1999). In the context of the specification, the ordi-

nary and customary meaning of “recess” is a cutout. The

specification states that “the rear portion of the cutting edge

surface (or the portion which faces a direction opposite to the

rotational direction of inner cutter) is cut out.” '749 patent,

col. 2, II. 40-43. The specification further states that “The

recess 40a is formed by cutting away a portion of the cutting

edge surface 41.” Jd., col. 4, II. 56-58.

The majority imposes an angular structural limitation on

the claim term “recess.” Specifically, the majority construes

the claim term “recess” to be a cutout having an angle 6 of 90

degrees or less between the rear side surface of the inner cut-

ter blade and the cutting edge surface. Ante at ----. The ma-

jority imposes such an angular limitation based on two

statements from the specification. In my view, neither state-

ment compels such a conclusion.

First, the majority contends that the “recess” is limited to

cutouts having angles of 90 degrees or less in order to ac-

complish an objective of the invention; namely, to prevent

shaving debris and other substances from adhering to the cut-

ter blades. The specification, however, merely identifies

preventing shaving debris from adhering as one of two objec-

18a

tives of the invention. The patent also identifies the objective

of “provid{ing} an electric razor which can minimize the con-

tact pressure of the inner cutter against the inside or bottom

surface of the outer cutter by securing a reduced amount of

surface area of the inner cutter that is in contact with the

outer cutter.” '749 patent, col. 2, II. 20-24. Our precedent is

clear that “the fact that a patent asserts that an invention

achieves several objectives does not require that each of the

claims be construed as limited to structures that are capable

of achieving all of the objectives.” Liebel-Flarsheim Co. v.

Medrad, Inc., 358 F.3d 898, 908 (Fed.Cir.2004). Here, cutter

blades with cutouts having angles greater than 90 degrees,

which would be excluded under the majority's construction,

would still achieve the objective of minimizing the contact

pressure of the cutter blade. The reduction in contact pres-

sure stems from the reduction in the thickness of the cutting

edge surface, regardless of any angular limitation. The iden-

tification of an objective that is not met when the claim is

given its ordinary meaning is not in itself a disclaimer that is

sufficient to narrow that ordinary meaning.

The second passage relied on by the majority, states: “In

the conventional inner cutter, the angle 8 is greater than 90

degrees as indicated by the dotted lines in [figures] 4 and 5.

Accordingly, the shaving debris, etc. tends to adhere to the

rear surface 40b of the cutter blade 40. ” '749 patent, col. 5,

II, 9-13. The majority interprets the quoted text as a re-

quirement that the cutout angle 6 must be 90 degrees or less.

I respectfully disagree.

While the angularity referenced in this statement of the

specification is described as affecting the tendency of shav-

ing debris to adhere to the blade, it has no effect whatsoever

on the second objective of the invention, namely, the reduc-

tion of friction. Thus, this description of inner cutters with

angles equal to or less than 90 degrees, when considered in

context, is not a disclaimer of subject matter, but simply an

explanation of why inner cutters having not only recesses but

19a

also these particular angles are preferred embodiments in

achieving one of the objectives of the invention. “Such a de-

scription, of course, does not limit the scope of the claims.”

Honeywell Inc. v. Victor Co. of Japan, 298 F.3d 1317, 1326

(Fed.Cir.2002) (holding that claim need not be construed in a

manner that would lead to the solution of both prior art prob-

lems discussed in the written description).

The two statements from the specification of the '749 pat-

ent relied on by the majority do not sufficiently evidence an

intention to depart from the ordinary meaning of “recess.”

Moreover, the specification here does “not suggest that [re-

cesses having angles of 90 degrees or less] are an essential

component of the invention, nor is there any language ... in

the specification, that disclaims the use of the invention in

the absence of [recesses having angles of 90 degrees or

less].” Liebel, 358 F.3d at 908. Nor is this case like SciMed

Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc.,

242 F.3d 1337 (Fed.Cir.2001), where the specification spe-

cifically disclaimed non-disclosed embodiments by stating

that the “s’mucture defined above is the basic ... structure for

all embodiments of the present invention contemplated and

disclosed herein.” Jd. at 1343 (quoting the patents at issue).

In sum, in this case I can discern no proper basis for deviat-

ing from the ordinary and customary meaning of recess, viz.,

a cutout.

Regarding the construction of the claimed phrase “recess

... formed immediately beneath” recited in claim 1, I agree

with the majority that “beneath” should not be construed

simply as “directly under” because that would exclude the

embodiment shown in figure 4. Ante at ----. Thus, consistent

with the ordinary meaning of recess and in the context of the

specification, I would construe the limitation “recess ...

formed immediately beneath” as “a cutout beginning at a

point immediately adjacent to the point directly under the

cutting edge surface.” But I would not read in an additional

limitation with respect to the angle @.

20a

The majority construes the limitation “recess formed be-

low” (claim 3) to have the same scope as “recess ... formed

immediately beneath” (claim 1). Ante at ----. Under the doc-

trine of claim differentiation, “there is presumed to be a dif-

ference in meaning and scope when different words or

phrases are used in separate claims.” Tandon Corp. v. United

States. Int'l Trade Comm'n, 831 F.2d 1017, 1023

(Fed.Cir.1987). Although claim differentiation only creates a

presumption that each claim in a patent has a different scope

and is “not a hard and fast rule of construction,” Kraft Foods,

Inc. v. Int'l Trading Co., 203 F.3d 1362, 1368 (Fed.Cir.2000)

(quoting Comark Communications, Inc. v. Harris Corp., 156

F.3d 1182, 1186 (Fed.Cir.1998)), in this case, I see no basis

to overcome the presumption.

The majority marshals two arguments in support of its

conclusion that the limitation “recess formed below” and the

limitation “recess ... formed immediately beneath” should be

construed identically. First, because the majority's construc-

tion of the term “recess” requires having a particular cutout

angle, the majority reasons that the presence of a cutout angle

necessitates construing the limitation “recess formed below”

as a recess located immediately beneath. Ante at ----. For the

reasons set forth above, I do not find that the claimed term

“recess” requires any structural angular limitation.

Second, the majority reasons that to read the limitation

“recess formed below” more broadly than “recess formed

immediately beneath” would be contrary to a stated objective

of the invention-to minimize contact pressure between the

surfaces of the inner cutter and outer cutter blades. Ante at --

--. But the invention has two objectives: minimizing contact

pressure and preventing shaving debris from adhering. Both

claim | and claim 3 need not be construed “in a manner that

would lead to the solution of both prior art problems.” Hon-

eywell, 298 F.3d at 1326; see Resonate Inc. v. Alteon Web-

systems, 338 F.3d 1360, 1367 (Fed.Cir.2003) (“The issue at

this point may be stated thus: when the written description

2la

sets out two different problems present in the prior art, is it

necessary that the invention claimed, and thus each and every

claim in the patent, address both problems? We conclude

that on the record in this case, the answer is no.”) Claim 3

only requires that the recess be located below, and not imme-

diately beneath, the cutting edge surface. Because I do not

find any redefinition of the term or any disavowal of claim

scope in the intrinsic evidence, I would ascribe to the limita-

tion “recess formed below” its ordinary and customary mean-

ing of a cutout located “at a lower level” than the cutting

edge surface. Webster's Third New International Dictionary

202 (1993).

I agree with the majority that the district court erred in its

claim construction in requiring the recess to be “oriented in a

horizontal direction, parallel to the cutting edge surface.” As

the majority notes, the patent specification does not support

this claim construction. Ante at ~--. Based on that error and

based on the district court's erroneous construction of the

limitations “recess formed below” and “recess ... formed

immediately beneath,” I would vacate the district court's

grant of summary judgment and remand.

For the foregoing reasons, I respectfully dissent.

22a

United States District Court, D. Delaware.

IZUMI PRODUCTS COMPANY, Plaintiff,

Ve

KONINKLIJKE PHILIPS ELECTRONICS N.V., a Dutch

corporation; Philips Electronics North America Corporation;

a Delaware corporation; and Philips Domestic Appliances

and Personal Care B.V., a Dutch corporation, Defendants.

No. CIV.02-156-SLR.

April 27, 2004.

MEMORANDUM OPINION.

SUE L. ROBINSON, Chief Judge.

I. INTRODUCTION

Izumi Products Company (“Izumi”) filed an action

against Koninklijke Philips Electronics and Philips Electron-

ics North America Corporation N.V. on March 1, 2002 for

willful infringement of U.S. Patent No. 5,408,749 (the “* '749

patent”) related to electric razors. (D.1.1) On May 9, 2002,

both defendants denied the allegations of infringement and

asserted nine affirmative defenses including invalidity, non-

infringement, estoppel, and laches. (D.I.5) Koninklijke Phil-

ips Electronics and Philips Electronics North America

Corporation N.V. also filed a counterclaim for declaratory

judgment of noninfringement, invalidity, and unenforceabil-

ity due to inequitable conduct. (/d.) lzumi denied the allega-

tions of the counterclaim on May 29, 2002. (D.I.7) Izumi

filed an amended complaint on December 29, 2002 to add

Philips Domestic Appliance and Personal Care B.V. as a de-

fendant in its infringement suit against Koninklijke Philips

Electronics and Philips Electronics North America Corpora-

tion N.V.. (D.I. 39 at £ 4) On January 15, 2003, Philips Do-

mestic Appliance and Personal Care B.V. denied

infringement of the '749 patent, asserted the same defenses as

23a

Koninklijke Philips Electronics and Philips Electronics North

America Corporation N.V., and also filed a counterclaim for

declaratory judgment of noninfringement, invalidity, and un-

enforceability due to inequitable conduct. (D.I.53) The court

wiil refer to Koninklijke Philips Electronics, Philips Elec-

tronics North America Corporation N.V., and Philips Domes-

tic Appliance and Personal Care B.V. collectively as

“Philips.”

Izumi is a corporation organized under the laws of Japan

with its principal place of business in Matsumoto, Nagano-

Ken, Japan. (D.I. 1 at § 1) Koninklijke Philips Electronics

N.V. is a corporation organized under the laws of the Nether-

lands with its principal place of business in the Amsterdam

and with business operations in the State of Delaware. (/d. at

€ 2) Philips Electronics North America Corporation is a cor-

poration organized under the laws of the State of Delaware

with its principal place of business in New York. (/d. at § 3)

Philips Domestic Appliances and Personal Care B.V. is or-

ganized under the laws of the Netherlands with its principal

place of business in Amsterdam. (D.I. 39 at § 4) The court

has original federal question jurisdiction over this action pur-

suant to 28 U.S.C. § § 1331 and 1338(a).

On December 9, 2002, Koninklijke Philips Electronics

and Philips Electronics North America Corporation N.V.

moved to bifurcate the issues of liability and damages or, in

the alternative, to stay discovery of damages. (D.I.34) The

court denied this motion on February 27, 2003. (D.I.77)

Presently before the court are the parties' numerous summary

judgment motions relating to infringement, invalidity, laches,

and lost profits.

Il. BACKGROUND

A. The '749 Patent

The patent in suit generally relates to an electric rotary

razor. ("749 patent, col. 1 at 11. 5) More particularly, the pat-

24a

ent in suit covers an electric rotary razor that inc! ides an in-

ner cutter located under an outer cutter. (/d. at 11. 6, 12-13)

As facial hair or “whiskers” penetrate through the outer cut-

ter, they are cut by a shearing force between the inner and

outer cutters, much like a strand of hair is severed when

caught between the blades of a pair of scissors. (Jd. at 11.

12-14) An example of an inner cutter is shown in the figurz

below.

(/d., fig. 2) An example of an outer cutter is shown in the

figure below.

(/d., fig. 3)

The electric rotary razor invention recited in the '749 pat-

ent was designed to reduce the contact pressure of the inner

cutter against the bottom surface of the outer cutter by de-

creasing the size of the inner cutter blade. (/d., col. 2 at 11.

19-24) It also was designed to prevent shaving debris and

25a

other substances from adhering to the blades of the inner cut-

ter. (Jd. at 11. 25-28) To accomplish these two design objec-

tives, “the rear portion of the cutting edge surface (or the

portion which faces a direction opposite to the rotational di-

rection of the inner cutter) is cut out.” (/d at 11. 40-43) The

court shall refer to this “cut out” on the inner cutter as “re-

cessed inner cutter.”

The application which eventually became the '749 patent

was filed on December 7, 1993. The '749 patent granted on

April 25, 1995 with three claims, all of which are in dispute

in the litigation at bar. Claims | and 3 are independent

claims, and claim 2 is dependent on claim 1. These claims

recite:

1. An electric razor comprising:

at least one outer cutter with openings through

which whiskers penetrate;

at least one inner cutter having a plurality of cutter

blades, each one of said cutter blades having a cut-

ting edge surface at an upper end thereof that slides

on an inside surface of said outer cutter, said cutter

blades being inclined in a direction of rotation of

said inner cutter; and

a recess comprising an indentation formed immedi-

ately beneath said cutting edge surface and facing in

« direction opposite from said direction of rotation

of said inner cutter in each one of said plurality of

cutter blades whereby said cutting edge surface is

made thinner than a thickness of said cutter blade.

2. An electric razor according to claim 1, wherein said

inner cutter further comprises a cutter disk with a through

hole at a center thereof and a plurality of cutter arms extend-

ing from an outer edge of said cutter disk in a vertical direc-

tion relative to said cutter disk and said plurality of said

cutter blades extend from said cutter arms.

26a

3. An inner cutter used in an electric rotary razor com-

prising:

a cutter disk with a through hole at a center thereof;

a plurality of cutter arms extending from an outer

edge of said cutter disk in a vertical direction rela-

tive to said cutter disk; a cutter blade extending

from each one of said cutter arms and inclined in a

rotationa! direction of said inner cutter, each one of

said cutter blades being provided with a cutting edge

surface at an end surface of said cutter blade and

with a recess formed below said cutting edge sur-

face, and wherein

said recess is formed on a rear surface of said cutter

blade, said rear surface facing an opposite direction

from the rotational direction of said inner cutter.

(/d., col. 7 at 11. 14-27; col. 8 at 11. 1-24)

Izumi manufactures electric rotary razors with recessed

inner cutters according to the claims of the '749 patent for

Remington. Remington, in turn, sells these razors in the

United States under the Remington label. (D.I. 182 at 4)

B. The Accused Infringing Products

Izumi allege. that 116 different electric rotary razors with

common features infringe the '749 patent.’ (D.I. 217 at 1)

' The accused infringing electric rotary razor models include the

following: 8894XL, 8831XL, 7825XL, 6856XL, 6828XL, 6617X,

8892XL, 8825XL, 7617X, 6853XL, 6826XL, 6615X, 8890XL,

7885XL, 7616X, 6848XL, 6756X, 6614X, 8881XL, 7867XL,

6891 XL, 6846XL, 6735X, 6613X, 8880XL, 7866XL, 6885XL,

6844XL, 6709X, 6424LC, 8867XL, 7865XL, 6867XL, 6843XL,

6706X, 6423LC, 8865XL, 7864XL, 6865XL, 6737X, 6705X,

5861XL, 8845XL, 7845XL, 6863XL, 6829XL, 6618X, 5885XL,

S5865XL, 5802XL, 4845XL, 4401LC, 31DB, HP1912; 5855XL,

5801 XL,

4826XL, 3805X, HQI56, HP1917/3, 5848XL, 5655X,

27a

Specifically, they have three outer cutters with slots through

which whiskers penetrate and three inner cutters with several

cutting blades. (D.I. 173 at 5) The accused infringing electric

rotary razors also employ a cutter disk with a hole in it.

Arms extend from the cutter disk in a vertical direction. (/d.

at 6) Cutting blades extend from the arms and are inclined in

the direction of rotation. (/d.)

The inner cutters used on the various accused infringing

electric rotary razors contain a groove on the backside to re-

duce the cutting surface. The court shall refer to this groove

on the inner cutter as a “grooved inner cutter” to distinguish

it from the recessed inner cutter of the claimed invention.

(D.I. 217 at 5) The Rota '93 was the first grooved inner cutter

blade used by Philips. Over time, Philips introduced other

grooved inner cutter blades identified as the Cirrus, Cleo,

Apollo, Neptunus Luna, and Jupiter for use in its electric ro-

tary razors. (/d.) For example, the 7885XL electric rotary

razor uses the Apollo inner cutter blade whereas the 6709X

electric rotary razor employs the Neptunus-Luna inner cutter

blade. (/d.)

Philips Domestic Appliance and Personal Care B.V.

manufactures the accused infringing electric rotary razors

and ships them to Philips Electronics North America Corpo-

ration N.V.. (D.I. 173 at 4) Norelco Products Company, a

subsidiary of Philips Electronics North America Corporation

N.V., sells the accused infringing electric rotary razors in the

United States. (/d.)

4821XL, 3605X, HQI56/2, HP1912/3, S846XL, 5625XX,

4816XL, 3405LC, HQS, HQ4/2, 5845XL, 5615X, 4805XL, 561X,

HQ6, HQ2, 5841XL, 5605X, 4606X, 486XL, HQ167, HQ2/2,

S825XL, 5603X, 4605X, 484XL, HQ4, HP1912/2, 5822XL,

S601X, 4604X, 482XL, HQ4 Plus, HQS, S821XL, 5426LX,

4601X, 400DX, HQ8, 5812XL, 4865XL, 4417LC, 282XL,

ISISXR, S811 XL, 4853XL, 4414LC, 242C, 191SXR2, 5810XL,

4852XL, 4413LC, 201DB, and HP1917. (D.I. 217 at 8-9)

28a

lil. STANDARD OF REVIEW

_ Acourt shall grant summary judgment only if “the plead-

ings, depositions, answers to interrogatories, and admissions

on file, together with the affidavits, if any, show that there is

no genuine issue as to any material fact and that the moving

party is entitled to judgment as a matter of law.”

Fed.R.Civ.P. 56(c). The moving party bears the burden of

proving that no genuine issue of material fact exists. Matsu-

shita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,

586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). “Facts

that could alter the outcome are ‘material,’ and disputes are

‘genuine’ if evidence exists from which a rational person

could conclude that the position of the person with the bur-

den of proof on the disputed issue is correct.” Horowitz v.

Fed. Kemper Life Assurance Co., 57 F.3d 300, 302 n. 1 (3d

Cir.1995) (internal citations omitted).

If the moving party has demonstrated an absence of mate-

rial fact, then the nonmoving party “must come forward with

‘specific facts showing that there is a genuine issue for

trial.’ ”” Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (quot-

ing Fed.R.Civ.P. 56(e)). The court will “view the underlying

facts and all reasonable inferences therefrom in the light most

favorable to the party opposing the motion.” Pennsylvania

Coal Ass'n v. Babbitt, 63 F.3d 231, 236 (3d Cir.1995). The

mere existence of some evidence in support of the nonmov-

ing party, however, will not be sufficient for denial of a mo-

tion for summary judgment; there must be enough evidence

to enable a jury reasonably to find for the nonmoving party

on that issue. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). If the nonmov-

ing party fails to make a sufficient showing on an essential

element of its case with respect to which it has the burden of

proof, then the moving party is entitled to judgment as a mat-

ter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106

S.Ct. 2548, 91 L.Ed.2d 265 (1986). In other words, the court

must grant summary judgment if the party responding to the

29a

motion fails to make a sufficient showing on an essential

element of his case with respect to which he has the burden

of proof. Omnipoint Comm. Enters., L.P. v. Newtown Town-

ship, 219 F.3d 240, 242 (3d Cir.2000) (quoting Celotex, 477

U.S. at 323, 106 S.Ct. 2548).

IV. DISCUSSION

A. Izumi's Motion for Summary Judgment of Literal In-

fringement and Philips's Cross-Motion for Summary

Judgment of Noninfringement

A patent is infringed when a person “without authority

makes, uses or sells any patented invention, within the

United States ... during the term of the patent.” 35 U.S.C. §

271(a). A court should employ a two-step analysis in making

an infringement determination. Markman v. Westview In-

struments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995). First, the

court must construe the asserted claims to ascertain their

meaning and scope. /d. Construction of the claims is a ques-

tion of law subject to de novo review. See Cybor Corp. v.

FAS Techs., 138 F.3d 1448, 1454 (Fed.Cir.1998). The trier

of fact must then compare the properly construed claims with

the accused infringing product. Markman, 52 F.3d at 976.

This second step is a question of fact. See Baiv. L & L

Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998). Literal in-

fringement occurs where each limitation of at least one claim

of the patent is found exactly in the alleged infringer's prod-

uct. Panduit Corp. v. Dennison Mfg. Co., 836 F.2d 1329,

1330 n. 1 (Fed.Cir.1987). The patent owner has the burden

of proving infringement and must meet its burden by a pre-

ponderance of the evidence. SmithKline Diagnostics, Inc. v.

Helena Lab. Corp., 859 F.2d 878, 889 (bed.Cir.1988) (cita-

tions omitted).

Izumi argues that the accused infringing electric rotary

razors meet every limitation recited in claims 1, 2, and 3 of

the '749 patent under its proposed claim construction. Izumi,

therefore, contends that there are no genuine issues of mate-

30a

rial fact regarding literal infringement and that summary

judgment should be granted in its favor. In rebuttal, Philips

asserts that its electric rotary razors do not contain the “recess

beneath/recess below” limitation of the asserted claims. Phil-

ips claims that the groove on its electric rotary razors is

formed instead at the cutting edge surface ard is orientated

vertically with respect to the cutting edge surface. As a re-

sult, Philips maintains that its electric rotary razors do not

infringe the '749 patent.”

Based upon the court's claim construction of the phrases

“a recess comprising an indentation formed immediately be-

neath said cutting edge surface/a recess formed below said

cutting edge surface,” the court agrees with Philips. The

court construed the “recess beneath/recess below” claim lan-

’ Philips also appears to argue that even if its accused infringing

electric rotary razors literally infringe, the reverse doctrine of

equivalents applies to shield it from liability. (See D.I. 217 at 17-

19) The reverse doctrine of equivalents can prevent infringement

“where a device is so far changed in principle from a patented arti-

cle that it performs the same or a similar function in a substantially

different way, but nevertheless falls within the literal words of the -

claims.” Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339

U.S. 605, 608-609, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). The re-

verse doctrine of equivalents is “an equitable doctrine” that was

judicially created “to prevent unwarranted extension of the claims

{of a patent] beyond a fair scope of the patentee's invention.”

Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d

1565, 1581 (Fed.Cir.1991); see also Amgen Inc. v. Hoechst

Marion Roussel, Inc., 314 F.3d 1313, 1351 (Fed.Cir.2003) (stating

that the reverse doctrine of equivalents “is equitably applied based

upon underlying questions of fact”). This court has previously

held that “a reverse doctrine of equivalents defense is grounded in

the rules of equity and is not required to be submitted to a jury for

decision.” Ciena Corp. & Ciena Prop., Inc. v. Corvis Corp., 2004

WL 253481, *2 (D.Del.2004). Accordingly, the court declines to

further consider this argument in the instant motion for summary

judgment made in anticipation of a jury trial.

3la

guage to mean “a cut out formed directly under the cutting

edge surface and orientated in a horizontal direction, parallel

to the cutting edge surface.” The 116 accused infringing

electric rotary razors contain one of six possible inner cutter

blades.’ (See D.I. 186 at 4) The grooves on these inner cutter

blades are positioned at or begin flush with the cutting edge

surface. They likewise do not lie immediately below or be-

neath the cutting surface. Additionally, the grooves are not

horizontal or parallel to the cutting edge surface. Rather,

they are orientated in a vertical direction, perpendicular to the

cutting edge surface. The court, consequently, finds that no

genuine issues of material fact exist as to the “recess be-

neath/recess below” limitation. The court grants summary

judgment in favor of Philips and against Izumi on literal in-

fringement grounds.

B. Philips's Motion for Summary Judgment of Nonin-

fringement Under the Doctrine of Equivalents

For there to be infringement under the doctrine of equiva-

lents, the accused product or process must embody every

limitation of a claim, either literally or by an equivalent.

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.

17, 41, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). An element

is equivalent if the differences between the element and the

claim limitation are “insubstantial.” Zelinski v. Brunswick

Corp., 185 F.3d 1311, 1316 (Fed.Cir.1999). One test used to

determine “insubstantiality” is whether the element performs

substantially the same function in substantially the same way

to obtain substantially the same result as the claim limitation.

Graver Tank, 339 U.S. at 608, 70 S.Ct. 854. This test is

commonly refe:red to as the “function-way-result” test. The

* Izumi appears to agree that the blades shown in Philips's memo-

randum of points and authorities in support of its motion for sum-

mary judgment of nonjnfringement accurately reflect the possible

cutting blades used on the 116 accused infringing razors. (See D.1.

207 at 3) -

32a

mere showing that an accused device is equivalent overall to

the claimed invention is insufficient to establish infringement

under the doctrine of equivalents. The patent owner has the

burden of proving infringement under the doctrine of equiva-

lents and must meet its burden by a preponderance of the

evidence. See SmithKline Diagnostics, Inc. v. Helena Lab.

Corp., 859 F.2d 878, 889 (Fed.Cir. 1988) (citations omitted).

Philips argues that the groove employed on its razors

does not satisfy the function-way-result test. Philips con-

tends that the groove does not prevent facial debris from ad-

hering to the cutting edge surface, contrary to the function of

the recess recited in the '749 patent. (See D.1. 182, Horen-

berg Declaration at § 19; Cameron Declaration § 15) Philips

also argues that, even if there were such an unintentional re-

duction in debris adherence, this reduction would not be ac-

complished in substantially the same way as described in the

'749 patent. To this end, Philips avers that the electric rotary

razor claimed in the '749 patent reduces friction by creating a

sharp trailing edge on the cutting surface whereas its 116 ac-

cused infringing razors reduce friction through a “Lift-and-

Cut” mechanism.* (See id, Horenberg Declaration at § 18,

Cameron Declaration at § 25)

The court finds that genuine issues of material fact exist

as to whether the 116 accused infringing electric rotary ra-

zors perform substantially the same function in substantially

the same way as the electric rotary razor claimed in the '749

patent. While Izumi's expert testified that the purpose of the

groove is to reduce friction during shaving, experts for Phil-

ips contend that the groove does not have any known effect

on debris adherence. Similarly, the parties' experts disagree

on how the '749 invention and the 116 accused infringing

electric rotary razors reduce friction, if at all. The court,

‘ A “Lift-and-Cut” mechanism pulls whiskers deeper into the

shaver on the front side of the inner cutter and away from the skin.

33a

therefore, denies Philips's motion for summary judgment of

noninfringement under the doctrine of equivalents.

C. Philips's Motion to Preclude Dr. Benedict's Opinion on

infringement Under the Doctrine of Equivalents

Federal Rule of Evidence 702 governs the admissibility

of expert testimony. This rule provides that “[i]f scientific,

technical, or other specialized knowledge will assist the trier

of fact to understand the evidence or to determine a fact in

issue, a witness qualified as an expert by knowledge, skill,

experience, training, or education, may testify thereto in the

form of an opinion or otherwise, if (1) the testimony is based

upon sufficient facts or data, (2) the testimony is the product

of reliable principles and methods, and (3) the witness has

applied the principles and methods reliably to the facts of the

case.” In Daubert v. Merrell Dow Pharms., Inc., 509 U.S.

579, 589, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993), the Su-

preme Court observed that Rule 702 “clearly contemplates

some degree of regulation of the subjects and theories about

which an expert may testify.” The Supreme Court held that

“([p]roposed testimony must be supported by appropriate

validation-i.e., ‘good grounds,’ based on what is known. In

short, the requirement that an expert's testimony pertain to

‘scientific knowledge’ establishes a standard of evidentiary

reliability.” /d The Supreme Court further held that Rule

702 requires that the evidence or testw#mony assist the trier of

fact to understand the evidence or 4% determine a fact in is-

sue. Pursuant to these teachings, the Third Circuit has con-

strued Rule 702 as embodying “three distinct substantive

restrictions on the admission of expert testimony: qualifica-

tions, reliability, and fit.” Elcock v. Kmart Corp., 233 F.3d

734, 741 (3d Cir.2000).

To qualify as an expert under Rule 702, a witness must

have sufficient qualifications in the form of knowledge,

skills, and training. The Third Circuit articulated the stan-

34a

dard for qualifying an expert in Waldorf v. Shuta, 142 F.3d

601 (3d Cir.1998). The Third Circuit stated:

Rule 702 requires the witness to have “specialized

knowledge” regarding the area of testimony. The

basis of this specialized knowledge “can be practical

experience as well as academic training and creden-

tials.” We have interpreted the specialized knowl-

edge requirement liberally, and have stated that this

policy of liberal admissibility of expert testimony

“extends to the substantive as well as the formal

qualification of experts.” However, “at a minimum,

a proffered expert witness ... must possess skill or

knowledge greater than the average layman.”

id. at 625 (citations omitted).

An expert's opinion is reliable if it is “based on the

‘methods and procedures of science’ rather than on ‘subjec-

tive belief or unsupported speculation’; the expert must have

‘good grounds’ for his or her belief.” Jn re Paoli Railroad

Yard PCB Litigation, 35 F.3d 717, 742 (3d Cir.1994)(quoting

Daubert, 509 U.S. at 589, 113 S.Ct. 2786). The Third Cir-

cuit has enumerated a list of factors that a district court

should consider in evaluating whether the proposed scientific

methodology is “reliable” based upon Daubert and United

States v. Downing, 753 F.2d 1224, 1238-41 (3d Cir.1985).

These factors include: “(1) whether a method consists of a

testable hypothesis; (2) whether the method has been sub-

jected to peer review; (3) the known or potential rate of er-

ror; (4) the existence and maintenance of standards

controlling the technique's operation; (5) whether the

method is generally accepted; (6) the relationship of the

technique to methods which have been established to be reli-

able; (7) the qualifications of the expert witness testifying

based on the methodology; and (8) the non-judicial uses to

which the method has been put.” Paoli, 35 F.3d at 742 n. 8.

In Kumho Tire Co., Lid. v. Carmichael, 526 U.S. 137, 119

35a

S.Ct. 1167, 143 L.Ed.2d 238 (1999), the Supreme Court ob-

served that this list is not exclusive and that each factor need

not be applied in every case. To this end, the Supreme Court

stated: “The trial judge must have considerable leeway in

deciding in a particular case how to go about determining

whether particular expert testimony is reliable. That is to

say, a trial court should consider the specific factors identi-

fied in Daubert where they are reasonable measures of the

reliability of expert testimony.” /d. at 152, 119 S.Ct. 1167.

Finally, Rule 702 requires that the expert testimony must

fit the issues in the case. In other words, the expert's testi-

mony must be relevant for the purposes of the case and must

assist the trier of fact. The Supreme Court explained that

“Rule 702's ‘helpfulness’ standard requires a valid scientific

connection to the pertinent inquiry as a precondition to ad-

missibility.” Daubert, 509 U.S. at 591-92, 113 S.Ct. 2786.

This standard, nevertheless, is not intended to be a high one

or to be applied in a manner that requires the plaintiffs “to

prove their case twice-they do not have to demonstrate to the

judge by a preponderance of the evidence that the assess-

ments of their experts are correct, they only have to demon-

strate by a preponderance of evidence that their opinions are

reliable.” Oddi v. Ford Motor Co., 234 F.3d 136, 145 (citing

Paoli, 35 F.3d at 744).

The district court acts as a “gatekeeper,” preventing opin-

ion testimony that does not meet the requirements of qualifi-

cation, reliability, and fit from reaching the jury. Daubert,

509 U.S. at 597, 113 S.Ct. 2786. “[T]}he trial judge must de-

termine at the outset, pursuant to Rule 104(a), whether the

expert is proposing to testify to (1) scientific knowledge that

(2) will assist the trier of fact to understand or determine a

fact in issue. This entails a preliminary assessment of

whether the reasoning or methodology underlying the testi-

mony is scientifically valid and of whether that reasoning or

methodology properly can be applied to the facts in issue.”

Id. at 592-92, 113 S.Ct. 2786. The party offering the expert

36a

must satisfy this burden “by a preponderance of proof.” /d.

at 593 n. 10, 113 S.Ct. 2786.

Philips argues that Dr. Charles E. Benedict's testimony

regarding infringement under the doctrine of equivalents is

inadmissible pursuant to Fed.R.Evid. 702 and Daubert.

Dr. Benedict opines that Philips's accused grooved inner cut-

ter performs substantially the same function as Izumi's re-

cessed inner cutter by creating turbulence in the facial grease

residue, thereby reducing or preventing the buildup of fat,

skin, hair and other debris on the rear surface of the inner

cutter blade. Philips challenges all three substantive restric-

tions identified by the Third Circuit regarding expert testi-

mony. That is, Philips contends that: (1) Dr. Benedict is not

qualified as an expert in the field of razor design; (2) his tes-

timony is both unreliable and unsupported; and (3) his testi-

mony would not assist the trier of fact.

The court disagrees in part as to Dr. Benedict's qualifica-

tion as an expert and agrees in part as to the reliability and fit

requirements. Dr. Benedict earned a Ph.D. in mechanical

engineering from the University of Florida and is a registered

professional engineer in Florida and Georgia. (See D.I. 208

at { 1) He worked for over thirty-five years as an electro-

mechanical design engineer during which time he designed,

developed, tested, and manufactured more than fifty products

and machine systems. (See id. at 4 2) Based upon Dr. Bene-

dict's academic training and his work experience, the court

finds that Dr. Bened’ ct certainly possesses skill or knowledge

greater than the average layman, the minimum requirement

to qualify as an expert under Rule 702. The fact that Dr.

Benedict has served as an expert witness in more than 200

cases, none of which involved patent litigation or razor tech-

nology, is of little consequence to his ability to qualify as an

expert in the case at bar. Moreover, the court is unpersuaded

by Philips's attempt to discredit Dr. Benedict's qualifications

by pointing out that three courts of the 200 courts before

which Dr. Benedict appeared as an expert excluded his opin-

37a

ion. Therefore, the court concludes that Dr. Benedict has the

proper qualifications to proffer an expert opinion, especially

considering that the Third Circuit has liberally interpreted the

requirement that a witness have specialized knowledge.

Turning to consider the reliability requirement, Dr. Bene-

dict reviewed the grooved inner cutter found on only two ac-

cused infringing electric rotary razors, namely, the Norelco

Model 7885XL-Quadra Action and the Norelco Model

710R6, in formulating his turbulence theory. (See id at § 10)

He did not consider the grooved inner cutters on any of the

other 114 accused infringing electric rotary razors. While the

court acknowledges that turbulence is a well established en-

gineering principle in the area of fluid dynamics, the court

finds that Dr. Benedict essentially applied this theory to ex-

plain the function of the accused infringing electric rotary

razors based sofely on his subjective belief.” He did not per-

form any testing on any of the accused infringing :lectric ro-

tary razors or, for that matter, on an electric rotary razor

manufactured by Izumi to validate his theory. He iikewise

did not cite any literature reference to substantiate the appli-

cation of the turbulence principle in the context of electric

rotary razors. Although the Third Circuit has recognized that

novel conclusions should not be excluded where the method-

ology and its application are reliable, Heller v. Shaw Indus.,

Inc., 167 F.3d 146, 153 (3d Cir.1999), the court concludes

that Dr. Benedict's theory is void of good grounds absent

some form of support. As a result, the court concludes that

Dr. Benedict's turbulence theory does not meet the tes’ for

admissibility.

Lastly, with respect to the fit requirement, the court does

not find a valid scientific connection between Dr. Benedict's

* Dr. Benedict applied the principle of turbulence in developing a

system to reclaim beaches, known as a permeable groin. (See id. at

" 5) A permeable groin, however, is very clearly not the same

thing as an electric rotary razor.

38a

turbulence theory and the function of the grooved/recessed

inner cutter. The jury, as such, potentially may be confused

by Dr. Benedict's expert opinion. The court, consequently,

concludes that Dr. Benedict's testimony will not aid the trier

of fact. The court grants Philips's motion to preclude Dr.

Benedict from testifying about turbulence in relation to in-

fringement under the doctrine of equivalents.

D. Izumi's Motion For Partial Summary Judgment of No

Anticipation of Claims 2 and 3 of the '749 Patent Under

35 U.S.C. § 102(B) and Philips's Cross-Motion for Sum-

mary Judgment of Anticipation of Claim 3 Under 35

U.S.C. § 102(b)

Under 35 U.S.C. § 102(b), “[a] person shall be entitled to

a patent unless the invention was patented or described in a

printed publication in this or a foreign country ... more than

one year prior to the date of the application for patent in the

United States.” The Federai Circuit has stated that “[t]here

must be no difference between the claimed invention and the

referenced disclosure, as viewed by a person of ordinary skill

in the field of the invention.” Scripps, 927 F.2d at 1576. In

determining whether a patented invention is explicitly antici-

pated, the claims are read in the context of the patent specifi-

cation in which they arise and in which the invention is

described. Glaverbel Societe Anonyme v. Northlake Mktg. &

Supply, Inc., 45 F.3d 1550, 1554 (Fed.Cir.1995). The prose-

cution history and the prior art may be consulted if needed to

impart clarity or to avoid ambiguity in ascertaining whether

the invention is novel or was previously known in the art. /d.

The prior art need not be ipsissimis verbis (i.e., use identical

words as those recited in the claims) to be anticipating.

Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d

707, 716 (Fed.Cir. 1984).

A prior art reference also may anticipate without explic-

itly disclosing a feature of the claimed invention if that miss-

ing characteristic is inherently present in the single

39a

anticipating reference. Continental Can Co. v. Monsanto

Co., 948 F.2d 1264, 1268 (Fed.Cir.1991). The Federal Cir-

cuit has explained that an inherent limitation is one that is

necessarily present and not one that may be established by

probabilities or possibilities. /d That is, “[t|he mere fact that

a certain thing may result from a given set of circumstances

is not sufficient.” Jd The Federal Circuit also has observed

that “[i]nherency operates to anticipate entire inventions as

well as single limitations within an invention.” Schering

Corp. v. Geneva Pharms. Inc., 339 F.3d 1373, 1380

(Fed.Cir.2003). Moreover, recognition of an inherent limita-

tion by a person of ordinary skill in the art before the critical

date is not required to establish inherent anticipation. /d. at

1377.

An anticipation inquiry involves two steps. First, the

court must construe the claims of the patent in suit as a mat-

ter of law. Key Pharms. vy. Hercon Labs. Corp., 161 F.3d

709, 714 (Fed.Cir.1998). Second, the finder of fact must

compare the construed claims against the prior art. /d A

finding of anticipation will invalidate the patent. Applied

Med. Res. Corp. v. U.S. Surgical Corp., 147 F.3d 1374, 1378

(Fed.Cir.1998).

Izumi argues that Japanese Patent Publication 55-47879

(the “Hamashima '879 publication”)® does not disclose “a

plurality of cutter arms extending from an outer edge of said

cutter disk in a vertical direction” as recited in claims 2 and 3

of the '749 patent. Izumi contends that the cutter arms dis-

closed in the Hamashima '879 publication extend “radially,”

and not from the outer edge of the cutter disk in a vertical

direction. The court agrees. The court construed the phrase

° Since the Hamashima '879 publication published in May 1980

and the '749 patent was not filed until 1993, the parties do not dis-

pute that the Hamashima '879 publication qualifies as prior art un-

der 35 U.S.C. § 102(b). The Hamashima '879 publication was not

cited during the prosecution of the '749 patent in the United States.

40a

“a plurality of cutter arms extending from an outer edge of

said cutter disk in a vertical direction relative to said cutter

disk” to mean that “two or more projections extend in a ver-

tical direction from the outer edge of the cutter disk.” This

construction does not provide for cutter arms that extend in a

radial direction as shown in the Hamashima '879 publication.

The court, therefore, concludes that the Hamashima '879

publication does not anticipate claims 2 and 3 of the '749 pat-

ent. The court grants Izumi's motion for partial summary

judgment of no anticipation of claims 2 and 3 of the '749 pat-

ent and denies Philips's cross-motion for summary judgment

that the Hamashima '879 publication anticipates claim 3 of

the "749 patent.’

E. Izumi's Motion for Partial Summary Judgment

of No On-Sale Bar

Under 35 U.S.C. 102(b), “[a] person shall be entitled to a

patent unless the invention was ... on sale in this country,

more than one year prior to the date of the application for

patent in the United States.” This statutory provision is

commonly referred to as the “on sale bar,” Brasseler,

USA, LP. v. Stryker Sales Corp., 182 F.3d 888, 889

(Fed.Cir.1999), and is intended to limit the time for an inven-

tor to commercialize an invention before filing a patent ap-

plication. Group One, Ltd. v. Hallmark Cards, Inc., 254 F 3d

1041, 1053 (Fed.Cir.2001). The date one year prior to the

date on which the patent application was filed, consequently,

is known as the “critical date.” Monon Corp. v. Stoughton

Trailers, Inc., 239 F.3d 1253, 1257 (Fed.Cir.2001). Since

"Izumi also moves to preclude Philips from relying on an untimely

written opinion of counsel concerning the invalidity of the '749

patent based upon the Hamashima ‘879 publication. (See D.1. 236)

In light of the court's conclusion that the Hamashima '879 publica-

tion does not anticipate claims 2 and 3 of the ‘749 patent, the court

denies !zumi's motion to preclude Philips from relying on an un-

tiraely opinion of counsel as moot.

4la

[zumi applied for the '749 patent on December 7, 1993, the

critical date in this case is December 7, 1992.

The on sale bar is not limited to sales by the inventor, but

also may result from activities of a third party that anticipate

the invention. /n re Epstein, 32 F.3d 1559, 1564

(Fed.Cir.1994). Additionally, a single sale or even a single

offer to sell for profit may trigger the on sale bar. Jn re

Caveney, 761 F.2d 671, 676 (Fed.Cir.1985). In any event,

whether a product is on sale within the meaning of 102(b) “is

a question of law with subsidiary issues of fact.” Jn re Ep-

stein, 32 F.3d at 1564.

In order for a patent to be held invalid under the on sale

bar of § 102(b), the Supreme Court has held that two condi-

tions must be satisfied prior to the critical date. “First, the

product must be the subject of a commercial [sale or] offer

for sale.... Second, the invention must be ready for patent-

ing.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 119 S.Ct.

304, 142 L.Ed.2d 261 (1998). An accused infringer, there-

fore, must demonstrate by clear and convincing evidence that

“there was a definite sale or offer to sell more than one year

before the application for the subject patent, and that the sub-

ject matter of the sale or offer to sell fully anticipated the

claimed invention.” Group One, 254 F.3d at 1047 (citations

omitted).

Though the Supreme Court in Pfaff did not elaborate on

what was meant by “a commercial offer for sale,*” the Fed-

eral Circuit has held that this prong consists of two sub-parts.

* In contrast, the Supreme Court explained at length the “ready for

patenting” prong. The Supreme Court stated that “[the second]

condition may be satisfied in at least two ways: by proof of reduc-

tion to practice before the critical date; or by proof that prior to the

critical date the inventor had prepared drawings or other descrip-

tions of the invention that were sufficiently specific to enable a

person skilled in the art to practice the invention.” Pfaff, 525 U.S.

at $9, 119 S.Ct. 304.

42a

That is, the court must find that: (1) there was a “commercial

offer;” and (2) said offer was for the patented invention.

Scaltech, Inc. v. Retec /Tetra, L.L.C., 269 F.3d 132). 1328

(Fed.Cir.2001). Recently, the Federal Circuit has defined

what constitutes an offer for sale for purposes of this statu-

tory bar. “Only an offer which rises to the level of a com-

mercial offer for sale, one which the other party could make

into a binding contract by simple acceptance (assuming con-

sideration), constitutes an offer for sale under 102(b).” Group

One, 254 F.3d at 1048. The Federal Circuit further has held

that

[t]he question of whether an invention is the subject

of a commercial offer for sale is a matter of Federal

Circuit law, to be analyzed under the law of con-

tracts as generally understood. To hold otherwise

would potentially mean that a patent could be inva-

lid in one state, when the patentee's actions

amounted to an offer under the laws of that state,

and valid in a second state, when the same actions

did not amount to an offer under the laws of that

second state. Such a result is clearly incompatible

with a uniform national patent system.

fd. at 1047. An important source of general contract law

for determining whether a communication or series of com-

munications rises to the level of a commercial offer for sale

is the Uniform Commercial Code. /d. at 1047 (citing Enercon

GmbH y. Int'l Trade Comm'n, 151 F.3d 1376, 1382

(Fed.Cir.1998)). The Supreme Court also has cited the Re-

statement of Contracts with approval in the commercial con-

tract law context.’ /d. at 1048 (citing Mobil Oil Exploration

” Under the Restatement, “an offer is the manifestation of willing-

ness to enter into a bargain, so made as to justify another person in

understanding et his assent to that bargain is invited and will

conclude it.” 4&4mea@r Tech. Corp. v. Micrel, Inc., 275 F.3d 1040,

1050 (Fed.Cir.2001) (quoting Restatement (Second) of Contracts §

43a

v. United States, 530 U.S. 604, 607, 120 S.Ct. 2423, 147

L.Ed.2d 528 (2000)}).

In any given circumstance, who is the offeror, and what

constitutes a definite offer, requires looking closely at the

language of the proposal itself. Language suggesting a legal

offer, such as ‘1 offer’ or ‘I promise’ can be contrasted with

language suggesting more preliminary negotiations, such as

‘[ quote’ or ‘are you interested.’ Differing phrases are evi-

dence of differing intent, but no one phrase is necessarily

controlling.

Id. (citing Restatement (Second) of Contracts § § 24, 26

(1981)). An offer for sale need not be accepted to implicate

the on sale bar. Scaltech, 269 F.3d at 1328 (citing UMC

Elecs. Co. v. United States, 816 F.2d 647, 653

(Fed.Cir.1987)).

Turning to consider the second sub-part, “the invention

that is the subject matter of the offer for sale must satisfy

each claim limitation of the patent, though it may do so in-

herently.” Scaltech, 269 F.3d at 1329. It is not necessary to

show that all embodiments of the invention were on sale be-

fore the critical date; it is sufficient to show only that one

embodiment was offered for sale more than one year before

the filing date of the patent application. /d. at 1330. Addi-

tionally, it is not necessary for the inventor to recognize ei-

ther the workings of his invention or its full potential when

he makes an offer for sale within the meaning of § 102(b).

Id. at 1331.

24 (1981)). “A man#festation of willingness to enter into a bargain

is not an offer if the person to whom it is addressed knows or has

reason to know that the person making it does not intend to con-

clude a bargain until he has made a further manifestation of as-

sent.” Linear Tech, 275 F.3d at 1050 (quoting Restatement

(Second) of Contracts § 26 (1981)).

44a

The parties dispute whether the invention recited in the

'749 patent was offered for sale pursuant to the first prong of

the Pfaff test. Specifically, Philips argues that Sears offered

to sell and sold the “Rotomatic” and the “Craftsman” electric

rotary razors in the United States in the late 1960s, 1970s,

1980s, and early 1990s through its consumer catalogs and

retail stores. Philips also contends that Distler offered to sell

and sold the “Town n' Country” electric rotary razor in the

United States in the 1950s and 1960s through its distributor,

the Daro Company.'° In response, Izumi charges that Philip's

evidence regarding the three electric rotary razors is inadmis-

sible and that, as a result, it cannot satisfy the clear and con-

vincing burden of proof to establish invalidity under §

102(b). Izumi likewise claims that, even if such evidence

were admissible, Philips failed to describe the specific con-

figuration of the inner cutters used in the three types of ra-

zors.

Viewing the underlying facts and all reasonable infer-

ences therefrom in a light most favorable to Philips, the court

finds that there are no genuine issues of material fact as to

whether the Rotomatic, Craftsman, and Town n' Country ra-

zors satisfy the first prong of the Pfaff test.'' The Rotomatic

and Craftsman razors were listed for sale in the Sears catalog

in the late 1960s, 1970s, and 1980s. Nevertheless, adver-

tisements, catalogs, and other promotional materials are gen-

erally considered invitations to solicit offers or enter into a

'° Throughout discovery, Philips advanced the argument that it

sold its Norelco Rota '93 electric rotary razors in the United States -

prior to the critical date. However, in its answering brief to the

instant motion, Philips stated that it “will not assert that its own

razors were offered for sale in the United States before the critical

date.” (D.I. 219 at 2)

'' The parties do not dispute the second prong of the Pfaff test, to

wit, whether the Rotomatic, Craftsman, and Town n' Country ra-

zors were “ready for patenting.”

4Sa

bargain, not offers themselves. Richard A. Lord, Williston

on Contracts § 4:7 at 286-87 (4th ed.1990); Restatement

(Second) of Contracts § 26, comment b. Indeed, the Federal

Circuit has observed that “[m]ere advertising and promoting

of a product may be nothing more than an invitation for of-

fers, while responding to such an invitation may itself be an

offer.” Group One, 254 F.3d at 1048. While the court ac-

knowledges that customers could readily have placed orders

for these razors, the record is void of evidence concerning

sales figures or the like to show that offers and/or sales, in

fact, were made before the critical date. Similarly, it is un-

clear based upon the present record whether the Town n'

Country razor ever was offered for sale or sold in the United

States prior to the critical date. To support its allegations

concerning this razor, Philips merely introduced two docu-

ments on the history of shaving, a few unidentified photo-

graphs, and an internet-based publication, stating: “The

Piccalo was a very small shaver with a rather large battery-

holder, which was used as a place to store the shaver as

well.” (See D.I. 220, ex. 24, 25, 26) Moreover, the record

completely fails to show whether the three razors meet all the

limitations recited in the claims of the '749 patent. In iight of

the foregoing, the court grants I[zumi's motion for partial

summary judgment of no on sale bar.

F. Philips's Motion for Summary Judgment of Invalidity

Under 35 U.S.C. 102(G) in View of Philips's Prior Inven-

tion

Under 35 U.S.C. § 102(g)(2), an applicant is not entitled

to a patent if “before the applicant's invention thereof the in-

vention was made in this country by another who had not

abandoned, suppressed, or concealed it.” The Federal Circuit

has explained that “if a patentee's invention has been made

by another, prior inventor who has not abandoned, sup-

pressed, or concealed the invention, § 102(g) will invalidate

that patent.” Apotex USA, Inc. v. Merck & Co., 254 F.3d

1031, 1035 (Fed.Cir.2001). The Federal Circuit also has ob-

46a

served that this section “retains the rules governing the de-

termination of priority of invention.” Hybritech, Inc. v.

Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376

(Fed.Cir.1986) (quoting Kimberly-Clark Corp. v. Johnson &

Johnson, 745 F.2d 1437, 1444 (Fed.Cir.1984)). To this end,

a party alleging prior invention can establish that he was the

first to invent by showing either: (1) he was first to reduce

the invention to practice; or (2) he was first to conceive the

invention and then exercised reasonable diligence in attempt-

ing to reduce the invention to practice from a date just prior

to the applicant's conception to the date of his reduction to

practice. 35 U.S.C. § 102(g)(“In determining priority of in-

vention ... there shall be considered not only the respective

dates of conception and reduction to practice of the inven-

tion, but also the reasonable diligence of one who was the

first to conceive and last to reduce to practice, from a time

prior to conception by the other.”). As recognized by the

Federal Circuit,

{a] principal purpose of § 102(g) is to ensure that a patent

is awarded to a first inventor. However, it also encourages

prompt public disclosure of an invention by penalizing the

unexcused delay or failure of a first inventor to share the

“benefit of the knowledge of [the] invention” with the public

after the invention has been completed.

Checkpoint Sys. v. United States Int'l Trade Comm'n, 54

F.3d 756, 761 (Fed.Cir.1995)(citing Paulik v. Rizkalla, 760

F.2d 1270, 1280 (Fed.Cir.1985)).

Conception is the “formation in the inventor's mind of a

definite and permanent idea of the complete and operative

invention, as it is hereafter to be applied in practice.” /fybri-

tech, 802 F.2d at 1376 (citations omitted). A conception

must encompass all limitations of the claimed invention, and

“is complete only when the idea is so clearly defined in the

inventor's mind that only ordinary skill would be necessary to

reduce the invention to practice, without extensive research

47a

or experimentation.” Singh v. Brake, 317 F.3d 1334, 1340

(Fed.Cir.2002) (citations omitted). Put differently, every

limitation must be shown to have been known to the inventor

at the time the invention is alleged to have been conceived.

Davis v. Reddy, 620 F.2d 885, 889 (Cust. &

Pat.App.1980)(citing Schur v. Muller, 54 C.C.P.A. 1095, 372

F.2d 546, 551 (1967); Anderson v. Anderson, 403 F.Supp.

834, 846 (D.D.C.1975)). Because conception is 4 mental act,

“it must be proven by evidence showing what the inventor

has disclosed to others and what that disclosure means to one

of ordinary skill in the art.” Jn re Jolley, 308 F.3d 1317,

1321 (Fed.Cir.2002) (quoting Spero v. Ringold, 54 C.C.P.A.

1407, 377 F.2d 652, 660 (Cust. & Pat.App.1967)). The Fed-

eral Circuit has opined that a court should apply the “rule of

reason” in determining conception. That is, the court should

examine, analyze, and evaluate reasonably all pertinent evi-

dence when weighing credibility of an inventor's story.

Holmwood vv. Sugavanam, 948 F.2d 1236, 1239

(Fed.Cir.1991). Evidence in the form of documents does not

need to be corroborated. /d. Rather, “[o]nly the inventor's

testimony requires corroboration before it can be consid-

ered.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed.Cir. 1993).

Reduction to practice may either occur actually or con-

structively. Actual reduction to practice requires a showing

by the inventor that “the invention is suitable for its intended

purpose.” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578

(Fed.Cir.1996). This may require actual testing for a compli-

cated invention or may require oniy the complete construc-

tion of a prototype for a simple invention with obvious

purpose and workability. /d. For a party alleging prior inven-

tion to establish that he actually reduced his invention to

practice by testimony, jie must corroborate his proffered tes-

timony with independent evidence, which is evaluated under

a rule of reason considering all the evidence. Loral Fairchild

Corp. v. Matsushita Elec. Indus. Corp. Ltd., 266 F.3d 1358,

1363 (Fed.Cir.2061). Notably, there is no requirement that

48a

the “prior invention” be commercialized in order for it to be

actually reduced to practice. Steinberg v. Seitz, 517 F.2d

1359, 1363 (Cust. & Pat.App.1975). The key is whether the

invention can be commercialized or has reached the point

where “practical men [would] take the risk of commercializ-

ing the invention.” Goodrich v. Harmsen, 58 C.C.P.A. 1144,

442 F.2d 377, 383 (Cust. & Pat.App.1971). Constructive re-

duction to practice, in contrast, occurs when a party alleging

prior invention files a patent application on the claimed in-

vention. Hybritech, 802 F.2d at 1376.

The party alleging prior invention must be able to show

diligence “from a date just prior to the other party's concep-

tion to ... {the date of] reduction to practice [by the party first

to conceive].” Monsanto Co. v. Mycogen Plant Science, Inc.,

261 F.3d 1356, 1369 (Fed.Cir.2002); Mahurkar, 79 F.3d at

1577. However, it is not necessary for a party alleging prior

invention to drop all other work and concentrate solely on the

particular invention involved. Rines v. Morgan, 45 C.C.P.A.

743, 250 F.2d 365, 369 (Cust. & Pat.App.1957). There also

need not be evidence of activity on every single day if a satis-

factory explanation is evidenced. Monsanto, 261 F.3d at

1369 (citations omitted). Additionally, determining whether

the required “reasonable diligence” has been satisfied in-

volves specific inquiry. /d. (citations omitted).

In order to avoid a finding that a prior invention was

abandoned, suppressed, or concealed, the party alleging prior

invention must take affirmative steps to make the invention

publicly known. Friction Div. Prods., Inc. v. E.]. Du Pont de

Nemours & Co., 658 F.Supp. 998, 1013 (D.Del.1987)(citing

Ralston Purina Co. v. Far-Mar-Co, Inc., 586 F.Supp. 1176,

1215 (D.Kan:1984)). The Federal Circuit has explained that,

when determining whether an inventor has aban-

doned, suppressed, or concealed an invention, a pe-

riod of delay between completion of the invention

and subsequent public disclosure may or may not be

49a

of legal consequence. The delay may be inconse-

quential if, for example, it is reasonable in length or

excused by activities of the inventor. Furthermore,

there is no particular length of delay that is per se

unreasonable. Rather, a determination of abandon-

ment, suppression, or concealment has “consistently

been based on equitable principles and public policy

as applied to the facts of each case.” A court must

determine whether, under the facts before it, any de-

lay was reasonable or excused as a matter of law.

Checkpoint, 54 F.3d at 761 (citations omitted).

Finally, the party alleging prior invention must establish

prior invention by clear and convincing evidence. Apotex,

254 F.3d at 1037-38. If the party alleging prior invention

does so, then the burden of production shifts to the patentee

to prod'ice evidence sufficient to create a genuine issue of

material {act as to whether the party alleging prior invention

abandoned, suppressed, or concealed the invention. /d. If the

patentee carries this burden of production, then the party al-

leging prior invention may rebut the evidence of abandon-

ment, suppression, or concealment with clear and convincing

evidence. /d.

Philips argues that it conceived and actually reduced the

grooved inner cutter to practice in the United States by No-

vember 1992. To this end, Philips asserts that its engineers

conceived of the grooved inner cutter in the United States

when they submitted their invention disclosure form written

in Dutch to Philips's Corporate Intellectual Property and

Standards Department in September 1990. In November and

December 1992, Philips claims that it incorporated the

grooved inner cutter into its Rota 95 line of electric rotary

razors and shipped these razors to Norelco in the United

States. Philips contends that these razors were then shown to

its U.S. customers and exhibited at the Housewares Show in

Chicago in January 1993. Philips charges that these activi-

50a

ties all occurred well before Izumi conceived of the claimed

recessed inner cutter in January 1993, filed a Japanese patent

application directed to such cutter in February 1993, and

brought said cutter into the United States in February 1993.

Philips maintains that it, therefore, qualifies as a prior inven-

tor under § 102(g) and that the '749 patent is invalid on prior

invention grounds.

For Philips to succeed in challenging the validity the '749

patent in the instant motion for summary judgment based on

§ 102(g), Philips must demonstrate by undisputed evidence

that: (1) it shipped electric rotary razors with grooved inner

cutters into the United States prior to February 1993; and (2)

Izumi did not conceive of the invention first and exercise

diligence in reducing it to practice. The court finds that Phil-

ips is unable to meet this burden as to its reduction to prac-

tice. While Philips claims that it mandated that all Rota 93

razors manufactured and shipped after November 6, 1992

contain the grooved inner cutter and that it produced 30,000

grooved inner cutters by week 38 of 1992 (see D.I. 237,

Horenberg Deposition at 72-74; Schiferli Deposition at 80-

81; D.I. 215, ex. 36 at P4228), there is evidence of record to

undermine these contentions. The invoices cited by Philips

as proof that it brought Rota 93 razors into the United States

in November and December 1992 do not contain any infor-

mation about the type of inner cutters used on the shipped

electric rotary razors.'* (See e.g., D.I. 193, ex. 11, 13, 14, 18,

19) Philips also made design changes to the grooved blades

as of December 7, 1992 and worked extensively on the

equipment used to mass produce those blades in January and

February 1993. As a result, it did not officially release the

Rota '93 electric rotary razor with grooved inner cutter for

production until later in 1993. (See D.I. 214, ex. 6 at 131-

133, 144-145, 172; D.I. 215, ex. 32, ex. 36; D.I. 239, ex.

'? Non-grooved blades were interchangeable with grooved blades

on the Rota '93 razor model. (See D.I. 214, ex. 8 at 60-61)

Sla

32) Given this contradictory evidence, the court concludes

that summary judgment is inappropriate as to Philips's reduc-

tion to practice in the United States.

With regard to Izumi's conception date, the court finds

that no genuine issues of material fact exist. Izumi conceived

in August 1991 of a recessed inner cutter with blades orien-

tated in a vertical direction with respect to the direction of

rotation. As noted above, conception must encompass all

limitations of the claimed invention. Izumi's 1991 inner cut-

ter, therefore, cannot qualify as a conception of the recessed

inner cutter recited in the '749 patent because the claimed

inner cutter blades are inclined in the direction of rotation,

not positioned vertically. Moreover, applying the rule of rea-

son, the court concludes that Izumi's own admission verifies

that it did not have the idea of inclining the inner cutter

blades in August 1991. Izumi argues in its answering brief to

the instant motion that “common sense” dictates inclining the

inner cutter blades since such orientation imparts a sharper

edge for cutting. Nevertheless, Izumi particularly acknowl-

edged in that same brief that it inclined the blades to improve

their sharpness in October 1991, after finding in September

1991 that the blades were not adequately supported. (See

D.I. 205 at 4) Accordingly, the court denies Philips's motion

for summary judgment on prior invention grounds in part as

to Philips's reduction to practice and grants said motion in

part as to Izumi's conception date.

G. Philips's Motion for Partial Summary Judgment on

Laches

Laches is an equitable defense to a claim for patent in-

fringement. A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,

960 F.2d 1020, 1028 (Fed.Cir.1992). Laches is defined as

“the neglect or delay in bringing suit to remedy an alleged

wrong, which taken together with lapse of time and other cir-

cumstances, causes prejudice to the adverse party and oper-

ates as an equitable bar.” /d. at 1028-1029. “In refusing to

52a

enforce a patentee's claim of infringement, the Supreme

Court invoked the maxim: ‘[cJourts of equity, it has often

been said, will not assist one who has slept upon his rights,

and shows no excuse for his laches in asserting them.’ ” /d.

at 1029 (quoting Lane & Bod’»y Co. y. Locke, 150 U.S. 193,

201, 14 S.Ct. 78, 37 L.Ed. 1049 (1893)). To establish the

defense of laches, the deferdant has the burden of proving

two elements: (1) that the plaintiff delayed in filing suit for

an unreasonable and inexcusable length of time after the

plaintiff knew or reasonably should have known of its claim

against the defendant; and (2) that the defendant suffered

material prejudice or injury as a result of the plaintiff's delay.

Id. at 1028.

With regard to the first prong of unreasonable delay,

“[t]he length of time which may be deemed unreasonable has

no fixed boundaries but rather depends on the circum-

stances.” /d. at 1032 (citations omitted). In determining

whether the plaintiff's delay in filing suit was unreasonable,

the court must look to the period of time beginning when the

plaintiff knew or reasonably should have known of the de-

fendant's alleged infringing activity and ending when the

plaintiff filed suit. The period does not begin, however, until

the patent issues. /d. (citations omitted). In addition, the

court must consider and weigh any excuses offered by the

plaintiff for its delay including, but not limited to: (1) other

litigation; (2) negotiations with the accused; (3) possible

poverty or illness under limited circumstances; (4) wartime

conditions; (5) the extent of the alleged infringement; and

(6) a dispute over the ownership of the asserted patent. /d. at

1033 (citations omitted).

A presumption of unreasonable delay arises if the pat-

entee delayed filing suit for six years after actual or construc-

tive knowledge of the defendant's acts of alleged

infringement. /d. at 1037. However, this presumption may

be rebutted if the plaintiff is able to show sufficient evidence

to generate a genuine issue of fact as to the existence of ei-

S3a

ther one of the factual elements associated with the laches

defense. Jd. at 1038. If the presumption of laches is rebut-

ted, the defense of laches is not eliminated. Rather, the de-

fendant can still establish laches by establishing the elements

for this defense based upon the totality of the evidence pre-

sented. /d. at 1038.

Turning to consider the second prong of material preju-

dice, the defendant can establish either economic prejudice or

evidentiary prejudice. /d Evidentiary prejudice may arise

where ..the delay has curtailed the defendant's ability to pre-

sent a full and fair defense on the merits due to the loss of

evidence, the death of a witness, or the unreliability of

memories. /d. Economic prejudice arises where a defendant

suffers the loss of monetary investments or incurs damages

which would have been prevented if the plaintiff had filed

suit earlier. /d. In this regard, courts must look for a change

in the economic position of the alleged infringer during the

period of delay; courts cannot simply infer economic preju-

dice from the possibility of damages pursuant to a finding of

liability for infringement. /d

“The application of the defense of laches is committed to

the sound discretion of the district court.” Aukerman, 960

F.2d at 1032 (citations omitted). Because it is equitable in

nature, “mechanical rules” do not govern its application. /d

at 1032. Instead, the court must consider all of the facts and

circumstances of the case and weigh the equities of the par-

ties. “The issue of laches concerns delay by one party and

harm to another. Neither of these factors implicates the type

of special considerations which typically trigger imposition

of the clear and convincing standard.” Consequently, the de-

fendant must establish the elements for the laches defense by

the preponderance of the evidence, consistent with the bur-

den of proof in equitable laches and estoppel cases. /ntuitive

Surgical, Inc. v. Computer Motion, Inc., 2002 WL 31833867,

n. 4 (D.Del.2002). When laches is applied, the patentee may

S4a

not recover any damages for the period of time prior to filing

suit. /d. at 1028.

Philips argues that it is entitled to a presumption of laches

because Izumi knew or should have known of the alleged in-

fringement before March |, 1996, six years before it filed its

complaint, given that Izumi: (1) considered Nore!co its only

competitor in the United States for electric rotary razors; (2)

was aware that Norelco introduced a new line of electric ro-

tary razors in early 1993; and (3) visited the Norelco booth

at the Housewares Show in January 1993 where the new line

of electric rotary razors with the accused infringing grooved

inner cutter was displayed. (See D.I. 183, ex. | at 15; DLL.

184, Izumi Dep. at 40-41) Philips asserts that a simple glance

at the inner cutter blades in the pop-open head of any

Norelco razor sold since 1993 would have revealed the pres-

ence of the groove. Philips also asserts that, even if the pre-

sumption is inapplicable, Izumi had actual knowledge of its

grooved inner cutter no later than March 1997 when it exam-

ined the inner cutters from three of its electric rotary razors.

(See D.I. 183, ex. 5, ex. 6 at 8; D.I. 184, Hirata Dep. at 575)

Philips likewise contends that it suffered both economic and

evidentiary prejudice as a result of [zumi's delay in filing

suit. In this regard, Philips charges that if it had been given

notice of Izumi's infringement allegations, then it could have

switched to one of several noninfringing substitute inner cut-

ters, thereby avoiding damages claims approximating $139

million for reasonable royalties and $86 million in lost prof-

its. Additionally, Philips avers that Izumi, in line with its

five or six year retention policy, destroyed or lost documents

involving competitive intelligence, consumer demand, and

product testing that were created between 1992 and 1997.

Philips complains that such documents were necessary for it

to present complete invalidity, noninfringement, and laches

defenses. (/d, Hirata Dep. at 283-285, 544-54, 570-571,

600, 629) Accordingly, Philips maintains that the equities

weigh in favor of applying the doctrine of laches to limit

SSa

Izumi's recovery for damages if it is found liable for in-

fringement.

The court disagrees. Viewing the evidence in a light

most favorable to Izumi, the court finds that partia! summary

judgment on Philips’s affirmative defense of laches is inap-

propriate because there are many genuine issues of material

fact. As to the presumption of laches, factual disputes exist

as to whether Izumi had actual or constructive knowledge of

Philips's use of a grooved inner cutter as of March 1, 1996.

Izumi personnel testified that they did not see the grooved

inner cutter before 1997. Specifically, Izumi's president,

Shunji Izumi, stated that he did not look inside Norelco ra-

zors at the Housewares Show in 1993 and never saw the

grooved inner cutter until January 1998 when he learned of

Philips's opposition to the European counterpart of the '749

patent. (See D.I. 214, ex. 10 at 250, 306-309) Mr. Izumi also

stated that no one at [zumi looked at the accused infringing

electric rotary razors in 1993, 1994, 1995, or 1996. (See D.L.

214 at 318-319) Additionally, despite the fact that Philips

was Izumi's only competitor in the electric rotary razor mar-

ket, Philips did not advertise the grooved inner cutter at any

time. (See D.I. 182 at 6; D.1. 189 at 3-4) Indeed, Philips's

own sales personnel reported that they were not aware of the

grooved inner cutter until the instant litigation. (See D.1. 214,

ex. 12 at 65-66, 75) This evidence suggests that nothing

prompted Izumi to investigate Philips's activities for possible

infringement, counter to Philips's allegations. Having recog-

nized this, the court, nevertheless, is mindful that “laches will

not be imputed to one who has been justifiably ignorant of

facts which create his right or cause of action. But ignorance

will not of itself excuse delay. The party must te diligent

and make such inquiry and investigation as the circumstances

reasonably suggest.” Wanlass v. Gen. Elec. Co., 148 F.3d

1334, 1338 (Fed.Cir.1998)(quoting Potash Co. Of Am. v. Int'l

Minerals & Chem. Corp., 213 F.2d 153, 155 (10th

56a

Cir.1954)). Thus, the court concludes that there is disputed

evidence regarding the presumption of laches.

Assuming, arguendo, that the presumption of laches does

not apply in the case at bar, the court finds genuine issues of

material fact concerning whether the delay from the date

Izumi knew about Philips's grooved cutter’ until it filed suit

in March 2002 was unreasonable. From January 1998 to

January 2002, Izumi engaged in an opposition proceeding in

Europe involving the European counterpart to the '749 patent.

Izumi claims that it waited to sue until the conclusion of the

opposition in order to determine the bases and merits of Phil-

ips's objections, since such objections potentially were rele-

vant to an infringement action in the United States. Izumi

likewise wa

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