Claim Construction Limited to Conventional Printing Techniques at Time of Patent Filing
September 10, 2001
Last Month at the Federal Circuit - October 2001
Judges: Dyk (author), Rader, and Schall
In Kopykake Enterprises, Inc. v. Lucks Co., No. 01- 1015 (Fed. Cir. Sept. 10, 2001), the Federal Circuit affirmed the district court’s DJ that the Kopykake Enterprises, Inc.’s (“Kopykake”) method of ink-jet printing is outside the scope of U.S. Patent No. 5,017,394 (“the ‘394 patent”) assigned to The Lucks Company (“Lucks”) and, therefore, does not infringe.
The ‘394 patent relates to a method for decorating foodstuffs with pictorial images. The method of claim 1, the claim at issue, comprises making a thin edible base shape, similar to a sheet of paper, and decorating the edible base shape with an image by screen printing. The base shape containing the image is contacted to the desired food item, such as cakes, cookies, and ice cream, whereby the base shape adheres, delivering the image to the food.
On appeal, Lucks challenged the district court’s claim construction of the term “screen printing” as contained in claim 1. The district court had determined that language within the ‘394 patent specification provided a definition of screen printing that included any other conventional printing processes for applying pictorial images to edible base shapes at the time the ‘394 patent application was filed. The district court had further found that this broader definition also fell short of capturing ink-jet printing, since ink-jet printing was only an emerging technology at the time the ‘394 patent application was filed and certainly was not commonplace in the food industry.
The Federal Circuit affirmed the district court’s holdings, noting that the literal scope of a claim is limited to what it was understood to mean at the time of filing even where that meaning is narrower than the current definition.
Lucks argued that the Examiner’s citation during the prosecution of the ‘394 patent to U.S. Patent No. 4,548,825 (“the ‘825 patent”), which describes the use of ink-jet printing for printing onto pharmaceutical tablets, demonstrated that the Examiner understood “conventional printing processes” to include ink-jet printing. The Federal Circuit rejected this argument, however, concluding that Lucks had introduced no example of an ink-jet printer for use in printing images onto food at the time of filing the ‘394 patent, and the ‘825 patent was cited by the Examiner only as “art of interest.” Accordingly, the Federal Circuit held that a conventional method of screen printing images onto food at the time the ‘394 application was filed could not be construed to include ink-jet printing and affirmed the DJ of noninfringement.