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Improper to Impose Numerical Constraint on Claim Term “Substantially”

March 07, 2005

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Last Month at the Federal Circuit - April 2005

Judges: Gajarsa (author), Lourie, and Linn

In Playtex Products, Inc. v. Procter & Gamble Co., No. 04-1200 (Fed. Cir. Mar. 7, 2005), the Federal Circuit reversed-in-part and affirmed-inpart a district court’s granting of Defendant Procter & Gamble Company’s (“P&G”) motion for SJ dismissing Plaintiff Playtex Products, Inc.’s (“Playtex”) claims of infringement of U.S. Patent No. 4,536,178 (“the ’178 patent”).

The ‘178 patent is directed to a tampon applicator designed to enhance the user’s control over tampon insertion and placement. Claim 1 is directed to a tampon applicator comprising a tubular barrel adapted to house a tampon. Playtex argued that the district court wrongly construed the claim’s requirement that a rearward portion of the barrel comprise two diametrically opposed, substantially flattened surfaces.

Playtex argued that the district court had improperly relied on the testimony of P&G’sexpert contradicting the intrinsic evidence and had interpreted the term “substantially,” a matter of degree, as having a strict numerical limitation.

The Federal Circuit held that the district court improperly found ambiguity in the substantially flattened-surfaces limitation and improperly relied on extrinsic testimony of P&G’s expert. The Court noted the distinction between a “flat” surface and a surface that is “flattened” relative to another surface. In this case, the reference surface is the barrel and transition section of the applicator body. The Federal Circuit ruled that imposing a strict numerical limitation on the term “substantially” was improper. Further, by limiting the term “substantially” to an industrial standard tolerance for flatness, the district court had effectively read the modifier “substantially” out of the claim.

In the prosecution history, the patentee had distinguished between the substantially flattened surfaces as claimed and the generally cylindrical finger grips of the prior art. Thus, the Federal Circuit remanded the case to the district court for further proceedings to determine whether, literally or under the DOE, the finger grips of the accused device met the properly construed substantially flattened limitation of the ‘178 patent or comprised the generally cylindrical grips of the prior art.

Playtex also appealed the district court’s construction of claim 9, which depends from claim 1 and includes the additional limitation of a “means for limiting the movement of said plunger through said rearward portion of said barrel.” The parties disagreed as to the corresponding structure of the limiting means. Playtex argued that the limiting means were found in the embodiment depicted in a figure of the ‘178 patent showing a curved lip at each end of the plunger operative to prevent the plunger from separating from the barrel. The abstract, however, stated that one manner of limiting movement of the plunger is to provide at least one curled lip integral with the inner end of the plunger, while preferably a second curled lip integral with the outer end of the plunger is also provided.

The Federal Circuit agreed with the district court’s interpretation, which was based on the disclosures from both the abstract and drawings of the ‘178 patent.