District Court Errs in Overlooking Claim Definition in Specification
August 30, 2002
Last Month at the Federal Circuit - September 2002
Judges: Clevenger (author), Rader, and Bryson
In Jack Guttman, Inc. v. Kopykake Enterprises, Inc., No. 02-1251 (Fed. Cir. Aug. 30, 2002), the Federal Circuit reversed the district court’s denial of a preliminary injunction based on an erroneous claim construction.
Kopykake Enterprises, Inc. (“Kopykake”) sold machines for reproducing color photographs onto an edible substrate sheet for placement on a cake. The accused device is a commercial ink-jet printer modified to use edible ink and attached directly to a commercial scanner.
The district court had construed the phrases “elongated non-tortuous copy path,” “tortuous bends,” and “photocopy machine” in a manner such that Jack Guttman, Inc. (“Guttman”) was unlikely to prove infringement, thereby denying the preliminary injunction motion.
In construing the term “non-tortuous,” the Federal Circuit stated that the specification indicates that a nontortuous path is one that enhances survivability of the edible sheet. The specification continues that while one way to enhance the survivability of the edible sheet is to provide a substantially straight copy path, this claim was not limited to a substantially straight copy path because of the prosecution history. Remarks in the prosecution history concerning an amendment explained that the term “non-tortuous” is intended to cover a copy path that may be curved but is free from any bends that would tend to sacrifice the survivability of the substrate.
Consequently, the Federal Circuit rejected the district court’s definition, instead finding that the correct definition of “non-tortuous copy path” is a path that, while not necessarily straight, has no curves sharp enough to sacrifice the integrity of the edible substrate. A tortuous bend was defined as a bend sufficiently sharp to sacrifice the integrity of the edible substrate.
The district court had assigned the term “photocopy machine” its ordinary meaning, i.e., a standard office photocopy machine. The Federal Circuit concluded, however, that the district court’s construction of photocopy machine was erroneous, stating that while the preferred embodiments described in the specification were all conventional plain-paper photocopy machines, the specification did explain ways in which the invention was broader than the specific embodiments. For example, the specification explains that the scanning and image-reproducing aspects need not be in the same housing but may cooperate to produce the effect of a plain-paper photocopy machine. Thus, the Federal Circuit defined photocopy machine to include not only conventional plain-paper photocopy machines, but also systems with separate scanner and printing capabilities so long as the two parts function cooperatively to produce the effect of a plain-paper photocopy machine. In reaching this construction, the Federal Circuit found that despite the ordinary meaning of photocopy machine, based on the definition of photocopy machine found in the specification, the patentee here had chosen to be his own lexicographer. The Court found that definition to be dispositive and concluded that it was error for the district court to overlook it.
In light of the erroneous construction, the case was remanded to the district court with directions to analyze this matter under the four factors necessary for Plaintiff to show entitlement to a preliminary injunction.