Alternative Embodiment Supports Broader Claim Construction
December 14, 2004
Last Month at the Federal Circuit - January 2005
Judges: Dyk (author), Rader, and Newman (dissenting)
In Versa Corp. v. Ag-Bag International, Ltd., No. 03-1445 (Fed. Cir. Dec. 14, 2004), the Federal Circuit reversed a judgment of noninfringement after finding error with the district court’s claim construction.
Versa Corporation (“Versa”) sued Ag-Bag International, Ltd. (“Ag-Bag”) for infringement of three patents, which pertain to compost-bagging machines. The patented machines fill large bags with compost material in such a way that air required for decomposition may enter the bag. The claim limitation in question defines a “means associated with the bagging machine for creating air channels in the compost material in said bag to enhance the decomposition of the compost material.” The three patents-in-suit share a similar specification, which discloses two structures for introducing air to the compost: (1) one or more perforated pipes that extend through the compost material, and (2) a multiplicity of V-shaped flutes on the walls of the tunnel against which the compost is compacted.
The district court ruled that the means for creating air channels requires the presence of both perforated pipe and flutes. Versa agreed that it could not prove infringement under such a claim construction, apparently because the accused Ag-Bag machine does not contain flutes; therefore, Versa requested that judgment be entered so that it could appeal.
In the specification and drawings, the invention includes both flutes and perforated pipe. However, the specification also points out that both structures are not required, stating that sufficient air will be present to achieve decomposition with either the channels or the perforated pipe, although the preference is that both the flutes and the pipe be utilized. The Federal Circuit concluded that in light of this disclosure, flutes are not essential to the claimed invention and, therefore, the district court had erred in its claim construction requiring flutes. The Federal Circuit rejected Ag-Bag’s argument that the specification’s multiple references to the preferred embodiment somehow overpower the single reference to an embodiment not requiring the flutes.
Judge Newman dissented, contending that the description of the invention, the prosecution history, and the prior art require the use of flutes to create air channels along with the use of perforated pipe. In her mind, the abstract, the summary of the invention, and every embodiment described in the specification required the use of flutes. Judge Newman dismissed a statement in the specification stating that “it is believed that sufficient air will be present to achieve decomposition with either the channels 48 or the perforated pipe 50 although it is preferred that both the flutes 46 and the pipe 50 be utilized” as merely “a belief” that is not the patented invention. She concluded that whatever the accuracy of the applicant’s “belief,” it was not the invention that he submitted for patenting.