# Petition for Writ of Certiorari — Izumi Products Products Co. v. Koninklijke Philips Electronics Electronics N.V. (No. 05-961) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386016_0771%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 2005 ## Text 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 per [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386016_0771%3A1. Public record. Not legal advice.