Printing-Press Patents Remain Valid but Are Not Infringed
September 17, 2002
Last Month at the Federal Circuit - October 2002
Clevenger, Rader, Bryson
In Creo Products, Inc. v. Presstek, Inc., No. 01- 1634 (Fed. Cir. Sept. 17, 2002), the Federal Circuit affirmed the district court’s judgment of no invalidity and noninfringement of U.S. Patent Nos. 5,163,368 (“the ‘368 patent”) and 5,174,205 (“the ‘205 patent”).
The ‘368 and ‘205 patents concern a printing press capable of electronically correcting for mechanical imperfections and an apparatus and method for controlling a discharge source, such as a spark discharge electrode or laser, in the production of printing plates. Prior to this litigation, Creo Products, Inc. (“Creo”) petitioned the PTO for reexamination of both the ‘368 and ‘205 patents, during which the claims were amended.
In 1997, Creo began developing an on-press imaging system to correct errors during printing, which it sold to printing-press manufacturers. Creo filed a DJ action claiming that the ‘368 and ‘205 patents were invalid, unenforceable, and not infringed by Creo’s on-press imaging system. Presstek, Inc. (“Presstek”) filed a counterclaim alleging that Creo had induced others to infringe both patents. The district court construed the asserted claims and, after a bench trial, found the patents not invalid and held Creo not liable for contributory infringement.
Creo first argued that the asserted claims of the ‘368 patent were invalid because they were broadpage ened during reexamination. In particular, Creo argued that claims written in means-plus-function language required a computer to perform four types of error correction, whereas the amended claim only required two. The Court rejected this argument, stating that the embodiment of the invention described in the specification did not require performing all four disclosed functions.
Creo also asserted that certain claims of the ‘368 and ‘205 patents were indefinite because the specification failed to recite sufficient structure corresponding to certain means-plus-function limitations in the claims. In particular, Creo argued that claim 1 of the ‘368 patent was invalid for failing to adequately describe structure corresponding to the “means for rotating each cylinder” limitation. The Court affirmed the district court’s decision, holding the claims valid, and observed that a claim containing means-plus-function limitations does not require the disclosure of sufficient structure for all embodiments described as long as sufficient structure is present in the specification for a single embodiment.
Creo also argued that claim 1 of the ‘368 patent was indefinite because the structure recited for the “means for rotating each cylinder” limitation was not itself enough to afford a functioning printing system. The Court also rejected this argument, stating that under 35 U.S.C. § 112, ¶ 6, the knowledge of one skilled in the art can be used to flesh out structural details for the purposes of satisfying the statutory requirement of definiteness. The Court found that the manner of rotating plate cylinders in a printing press was well known in the art and need not have been explained in detail in the specification. Accordingly, the Court affirmed the decision of the district court, holding that claim 1 of the ‘368 patent was not invalid.
Further, Creo challenged the validity of claim 11 of the ‘205 patent, arguing that it was indefinite for failing to recite sufficient structure corresponding to a “mounting means” for the printing plates. Here again, the Court found that the manner of mounting plates to a press, using a hold-down mechanism in the void pictured in the drawings, was within the knowledge of one skilled in the art and need not be described by the patentee in order to make a means-pus-function claim definite.
Presstek appealed the decision of the district court, which had found that Creo’s system of error correction did not infringe claims 11 and 23 of the ‘205 patent. In particular, the district court had interpreted both claims to require a device that is able to correct or control discharges from a spark source or laser on a “point-by-point” basis to create a printing plate. In construing the claims, the district court had relied on the written description and reexamination proceedings, in which Presstek made arguments indicating that the claimed apparatus and method required correction on a point-bypoint basis. The district court had found that Creo’s system did not have the ability to perform corrections on a point-by-point basis and so did not infringe the claims of the ‘205 patent. The Federal Circuit affirmed the district court’s claim construction, its determination that Creo’s system did not permit such correction, and its holding of noninfringement.
Presstek also argued that Creo’s system infringed the claims of the ‘368 patent under the DOE. After considering expert testimony from both Presstek and Creo, the district court had concluded that Creo’s system was not equivalent to the claimed system because it did not perform substantially the same function in substantially the same way to reach substantially the same result. The Federal Circuit affirmed the district court’s findings, stating that Presstek had not demonstrated that the findings were clearly erroneous. Accordingly, the Court affirmed the district court’s finding that Creo’s system did not infringe the claims of the ‘368 patent.
Judge Clevenger filed a dissenting opinion, concluding that the claims of the ‘205 patent were invalid for indefiniteness for failing to recite sufficient structure for the “mounting means” limitation.