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“Clear Guidance” in Specification Mandates Claim Construction

June 13, 2001

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Last Month at the Federal Circuit - July 2001

Judges: Newman (author), Lourie, and Bryson

In Unique Coupons, Inc. v. Northfield Corp. & Menasha Corp., No. 00-1300 (Fed. Cir. June 13, 2001) (nonprecedential decision), the Federal Circuit supplanted a district court’s claim construction in light of the embodiment in the patentee’s disclosure and reversed a finding of infringement under the DOE.

Unique Coupons, Inc. (“Unique”) had sued Northfield Corporation and Menasha Corporation (collectively “Northfield”) for infringement of U.S. Patent Nos. 5,079,901 and 5,588,280 (respectively “the ‘901 and ‘280 patents”). The Court first addressed the jurisdictional question of whether Unique had standing
to bring the infringement action without joining the patentee. Unique was the exclusive licensee of the ‘901 and ‘280 patents. The inventor, however, retained veto rights over any sublicenses or assignments. The Court dismissed the sublicensing provision as a minor derogation, but noted that a limitation on assignment could preclude a licensee from suing on its own. Nevertheless, because the license granted Unique the right to sue on its own, the Court concluded that Unique held all substantial rights in the patents, such that it was unnecessary to join the inventor.

The ‘901 and ‘280 patents relate to devices for separating and inserting coupons from a continuous web into cereal cartons or other packages. Reviewing the claim construction, the Court set aside the district court’s construction and focused on the relative position of three claim elements: the coupon sensor, the positioning rolls, and the feeding rolls. Although the relative position of these elements is not explicitly defined in the claims, the abstract, summary of the invention, and detailed description of both patents disclose but a single embodiment, which require that the coupon sensor be positioned between the feed and positioning rolls. Because it appeared that this arrangement was necessary for the proper operation of the invention, the Court sought to interpret the claims so as to maintain their validity and found that the claims require a coupon sensor between the positioning and feeding rolls. Noting that there is a fine line between interpreting claim language in light of the specification and reading a limitation from the specification into the claim, the Court stated that the present construction was permissible in light of the clear guidance in the specification.

In contrast to Unique’s claims, so construed, Northfield’s allegedly infringing device had a sensing device positioned downstream of the feed and positioning rolls and, thus, did not literally infringe. Moreover, the Court noted that Northfield’s device would not work properly if the coupon sensor was positioned between the feed and positioning rolls. Because different sensing positions would yield substantially different results, the Court ruled that Northfield also did not infringe under the DOE.