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Limitations Cannot Be Read from the Specification into the Claims, Even When the Limitation Is Disclosed as an Important Aspect of the Invention

October 02, 2006

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Last Month at the Federal Circuit - November 2006

Judges: Rader, Bryson, Linn (author)

[Appealed from: N.D. Ill., Judge Gettleman]

In SRAM Corp. v. AD-II Engineering, Inc., No. 05-1365 (Fed. Cir. Oct. 2, 2006), the Federal Circuit vacated the district court’s (1) denial of partial SJ of invalidity, (2) grant of partial SJ of no invalidity, (3) judgment of liability in favor of SRAM Corporation (“SRAM”), and (4) grant of an injunction against AD-II Engineering, Inc. (“AD-II”).

U.S. Patent No. 4,900,291 (“the ’291 patent”) relates to “precision indexed downshifting” for a bicycle. More specifically, the ’291 patent describes “shift actuators” that assure precise downshifting. The claimed invention eliminates the need to manually compensate during shifting with extra movement of shifting mechanisms in order to account for collective slack in the gear shifting system, a movement referred to as “overshifting.” Claim 16, the only claim at issue, recites a particular method of shifting bicycle gears.

AD-II manufactures and sells bicycle gear shifts, and SRAM sued many of AD-II’s customers selling bicycles with AD-II’s gear shifts. Therefore, AD-II sought DJ that the ’291 patent was not infringed, and was invalid and unenforceable. AD-II also asserted claims of unfair competition and patent misuse. SRAM subsequently filed suit against AD-II for infringement of claim 16 of the ’291 patent. The two cases were consolidated.

While this case was pending in the district court, claim 16 of the ’291 patent was construed by the Federal Circuit in a companion case, SunRace Roots Enters. Co. v. SRAM Corp., 336 F.3d 1298 (Fed. Cir. 2003). In SunRace, the Federal Circuit held that the term “shift actuator” in claim 16 of the ’291 patent means “a mechanism that controls the changing of the gears.” Id. at 1302. In addition, the Court determined that “shift actuator” is not limited to a device containing cams. Id. at 1307-08.

Guided by the claim construction in SunRace, the district court granted partial SJ in favor of SRAM, holding that AD-II infringed claim 16. The district court denied AD-II’s motion for partial SJ of invalidity based on prior art. In the interest of advancing the case, the parties agreed to a joint stipulation, whereby the district court would rule on certain claim construction issues raised by AD-II and treat SRAM’s response to AD-II’s motion for partial SJ of invalidity as a crossmotion for partial SJ of no invalidity. After construing the claim, the district court denied AD-II’s motion for partial SJ. In light of its ruling, the district court granted partial SJ of no invalidity and liability in favor of SRAM and granted SRAM’s request for a permanent injunction.

On appeal, the Federal Circuit affirmed the district court's construction of the claim term “fixed handgrip” but held that the district court erred in construing claim 16 as requiring a “precision index downshifting” feature. Specifically, the Court agreed with the district court’s determination that the term “fixed hand grip on the end of the handlebar” means “a separate, fixed (non-rotating) hand grip situated over a handlebar, and not the handlebar itself.” Slip op. at 7. The Federal Circuit pointed out that claim 16 describes the handgrip as situated “on” the handlebar, as opposed to reciting that the handgrip is part “of” the handlebar. Additionally, applicant’s statements in the reexamination prosecution history of the ’291 patent supported that construction.

Significantly, however, the Federal Circuit held that the district court erred in holding that claim 16 of the ’291 patent includes the limitation of “precision indexed downshifting.” The Court explained that while SunRace recognized that the written description of the ’291 patent describes a system enabling precision index downshifting, nothing in SunRace supported the inclusion of a “precision indexed downshifting” element in claim 16. Additionally, the district court erred in importing the additional limitation into the claim from the specification. Pointing to the plain language of claim 16, the Federal Circuit noted that the claim does not recite “precision indexed downshifting,” let alone recite “indexing” of any kind. Therefore, according to the Court, “[a]ll claim 16 requires is a method that takes up lost motion in a bicycle shifting mechanism and then moves the derailleur of that mechanism from one sprocket to another.” Id. at 12. Because claim 16 fails to recite indexing of any kind, the Court noted that claim 16 encompasses both indexed and nonindexed shifters alike despite the repeated references in the specification touting the
advantages and innovation of the indexing feature.

Finally, the Federal Circuit held that it was not bound by the PTO’s construction of claim 16 as requiring “precision indexed downshifting” to distinguish the invention from the prior art gear-shifting devices that require a user to manually overshift. The Court explained that the PTO erred in construing claim 16 for the same reasons the district court erred in construing the claim. Accordingly, the Court vacated the district court’s claim construction.

The Federal Circuit declined to address the issue of anticipation in view of the unclear record, the parties’ stipulations, and the factual nature of the issue. Therefore, the Court remanded the case for a determination of anticipation.