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Multiplicity Does Not Imply Separateness

October 07, 2002

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Last Month at the Federal Circuit - November 2002

Judges: Rader (author), Michel, and Friedman

In Electro Scientific Industries, Inc. v. Dynamic Details, Inc., No. 02-1010 (Fed. Cir. Oct. 7, 2002), the Federal Circuit vacated a district court’s grant of SJ of noninfringement based on an erroneous claim construction and remanded for reconsideration of the infringement issue.

Electro Scientific Industries, Inc. (“ESI”) is the assignee of United States Patent No. 5,847,960 (“the ‘960 patent”). The ‘960 patent teaches a method for accurate highspeed laser drilling of small holes (for vias) in circuit boards. GSI Lumonics, Inc. (“GSI”) manufactured and sold a high-speed laserdrilling system to Dynamic Details, Inc. (“Dynamic”) that used GSI’s laser-drilling system to make circuit boards. ESI asserted the ‘960 patent against Dynamic for direct infringement and against GSI for indirect infringement.

The ‘960 patent claims recite processing a plurality of workpieces defined as circuit boards. The ‘960 patent shows that the circuit boards are separated from each other during processing. In contrast, Dynamic used GSI’s laser-drilling system to process one workpiece from which a number of circuit boards were separated after processing. The district court concluded that the circuit boards must be separated during the claimed drilling process and, therefore, granted SJ of noninfringement.

On appeal, GSI and Dynamic argued that the preamble of the claims define circuit boards as workpieces, the preferred embodiment of the patent shows physically separate workpieces, and, therefore, the circuit boards must be separated during the claimed drilling process. The Federal Circuit was not persuaded, concluding that neither the ordinary meaning of workpiece nor the inventor’s preferred embodiment limited the claim scope.

The Court was similarly unmoved by arguments based on the prosecution history to read the separation limitation into the claims. Specifically, to overcome a prior art rejection, ESI had explained that all of its claims required multiple elements, including circuit boards, lasers, and laser wavelengths. The Court, however, found that these references to multiple circuit boards did not require separate workpieces or separated circuit boards at the time of processing. Rather, the Court noted that a single workpiece can include multiple circuit boards.

Moreover, the Federal Circuit observed that the ordinary meaning of “multiple” and the specification’s treatment of that term show that multiplicity and separateness are not synonymous. Specifically, the Court noted that “multiple” generally means “consisting of or characterized by many parts, elements, or individual components,” while the meaning of “separate” is narrower, meaning “parted, divided, or withdrawn from others; disjoined, disconnected, detached, set or kept apart.”

Consequently, the Court vacated the district court’s SJ of noninfringement and remanded for reconsideration with direction that the circuit boards need not be separated during the claimed drilling process.