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Court Relies on Definition of Claim Term from Prior Art

December 11, 2003

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Last Month at the Federal Circuit - January 2004

Judges:  Dyk (author), Prost, and Bryson (concurring)

In Kumar v. Ovonic Battery Co., No. 02- 1551 (Fed. Cir. Dec. 11, 2003), the Federal Circuit vacated the district court’s grant of SJ of noninfringement and remanded for further proceedings.

The patent-in-suit, U.S. Patent No. 4,565,686 (“the ‘686 patent”), relates to certain rare earth transition alloys that are suitable for use in batteries. Kaplesh Kumar, the owner of the ‘686 patent, sued Ovonic Battery Company, Inc. and Energy Conversion Devices, Inc. (collectively “Ovonic”) for direct, contributory, and induced infringement of the ‘686 patent.

The claims of the ‘686 patent recite an amorphous rare earth-transition metal alloy material. The district court construed the claims, finding that the specification and prosecution history supported Ovonic’s definition of amorphous as being “completely” amorphous (i.e., where there is no ordering of molecules). The district court rejected Kumar’s definition of amorphous (all partially crystalline alloys with long-range order less than 100 nm), stating that Kumar’s definition had been developed after his patent was filed. Based on this claim construction, the district court granted SJ of noninfringement to Ovonic.

The Federal Circuit disagreed with the district court’s construction of the term “amorphous.” Ovonic urged that the correct definition appeared in a dictionary, defining amorphous as “without real or apparent crystalline form: uncrystallized.” Kumar pointed to a definition of amorphous from U.S. Patent No. 4,116,682 (“the Polk patent”), which was listed as prior art in the ‘686 patent. The Polk patent, which was discussed during prosecution, defines a solid amorphous material as one in which the “constituent atoms are arranged in a spatial pattern that exhibits no long range order, that is, it is non-crystalline . . . .” The Federal Circuit noted that although the dictionary can be an important tool in claim construction, the Polk patent is intrinsic evidence because it was cited in the ‘686 patent and can, therefore, resolve ambiguity in the claim language, or even trump an inconsistent dictionary definition. Thus, the Federal Circuit concluded that the Polk patent definition should control unless the specification clearly states an alternative meaning or this meaning was disclaimed during prosecution.

The Federal Circuit then concluded that the specification and prosecution history do not require a different interpretation than the Polk patent’s definition of an amorphous alloy. The Court ruled that the specification did not clearly and deliberately define the term “amorphous” as “completely amorphous,” and, therefore, did not support a construction contrary to the definition from the Polk patent.

During prosecution, Kumar cancelled claims and amended claims to recite “amorphous rare earth-transition metal alloy material” and delete all references to “nonequilibrium atomic structure” or their “metastable crystalline state.” But, the Federal Circuit concluded that Kumar did not surrender everything within the scope of metastable and partially crystalline and nothing in the prosecution history supports a definition of amorphous contrary to the plain meaning as defined by the Polk patent.

The Federal Circuit then noted that questions remain as to the meaning of the phrase “long range order” in the Polk definition. The Federal Circuit noted that contrary to Kumar’s contentions, none of the references cited by Kumar provides a clear definition of the term. The Federal Circuit concluded that “testimony from those skilled in the art is required to establish the meaning of the term ‘long range order.’” Based on the new claim construction, the Federal Circuit vacated the grant of SJ of noninfringement and remanded for further proceedings.