Claim Construction Is “Sticky” Business
December 02, 2003
Last Month at the Federal Circuit - January 2004
Judges: Clevenger (author), Linn, and Michel (dissenting)
In 3M Innovative Properties Company v. Avery Dennison Corporation, No. 03-1203 (Fed. Cir. Dec. 2, 2003), the Federal Circuit rejected the district court’s claim construction and vacated a SJ of noninfringement.
The 3M Innovative Properties Company and Minnesota Mining and Manufacturing Company (collectively “3M”) compete with the Avery Dennison Corporation (“Avery”) in the market for adhesive-based products for the commercial-graphics industry. Both produce sheets of adhesive-backed film on which images can be preprinted. 3M’s patent, U.S. Patent No. 5,897,930 (“the ‘930 patent”), discloses and claims a release liner that avoids positioning and air-entrapment difficulties associated with affixing the films on a surface. Specifically, the ‘930 patent focuses on embossed webs that are manufactured with a particular type of threedimensional configuration that are useful since they form an obverse topography in the exposed adhesive. Claim 1 of the ‘930 patent is the only claim at issue in the appeal and describes a carrier web that includes a multiple embossed pattern having both a first embossed pattern and a second embossed pattern.
3M claims that Avery’s EZ Film infringes claim 1 of the ‘930 patent since it has a multiple embossed pattern, having a liner that contains indentations as well as a hexagonal pattern. The district court granted SJ for Avery and, in doing so, construed the term “multiple embossed pattern” to require sequential embossments. Further, the district court defined the term “embossed” by imposing a limitation related to the process by which the embossed surface was made.
The Federal Circuit disagreed, concluding that the district court’s claim construction was incorrect. The Federal Circuit held that the district court had erred when it defined the term “multiple embossed patterns” to include a limitation that the patterns be created sequentially, finding that 3M’s use of the terms “first pattern” and “second pattern” is a common patent law convention that distinguishes between repeated instances of an element or limitation and does not, in and of itself, impose a serial or temporal limitation onto the claim. In the specification of the patent, 3M acted as its own lexicographer by simply requiring the superimposition of two or more embossed patterns. Although the specification repeatedly recites serial application of the two patterns, the Court reiterated that limitations from the specification cannot be imported into the claims, especially when a clear, nonsequential definition for the term “multiple embossed” is found in the specification.
Avery argued that 3M expressly disclaimed any patent scope beyond a sequential embossment of patterns when 3M utilized arguments that contained temporal inferences to overcome prior art rejections. However, the Federal Circuit found that 3M in fact made broadening claim amendments during the prosecution history and actually dropped the sequential limitation.
The Court also held that the district court had erred when it defined the term “embossed” by imposing a limitation related to the process by which the embossed surface was made because 3M provided a definition of the term in the specification that was entirely structural. The Court also vacated the SJ and remanded the case back to the district court for further proceedings consistent with the Court’s opinion on claim construction.
Judge Michel dissented, noting that the majority’s claim construction contradicts the definition of claim terms chosen by 3M, as well as the analyses of the district court and the Examiner, both of whom inerpreted claim 1 as a product-by-process claim.