Court’s Claim Construction Gives Patentee New Life
July 20, 2001
Last Month at the Federal Circuit - August 2001
Judges: Dyk (author), Linn, and Mayer
In Dayco Products, Inc. v. Total Containment, Inc., No. 00-1503 (Fed. Cir. July 20, 2001), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement regarding Dayco Products, Inc.’s (“Dayco”) U.S. Patent No. 5,129,686 (“the ‘686 patent”). The Federal Circuit vacated, however, the grant of SJ of noninfringement of Dayco’s U.S. Patent Nos. 5,199,752 (“the ‘752 patent”); 5,297,822 (“the ‘822 patent”); 5,380,050 (“the ‘050 patent”); and 5,486,023 (“the ‘023 patent”), and remanded based on a proper claim construction.
The five patents in dispute relate to a hose construction for use in underground gas containment systems. Specifically, the patents disclose a cylindrical hose having an inner hose with an inner surface consisting of inward projections and recesses, and an insert means having an exterior surface consisting of outward projections and recesses. In order to form a tight seal to prevent the escape of gas, the cylindrical hose is joined to the insert means by a hollow, cylindrical coupling. The insert means is placed within the hollow core of the inner hose so that the projections of the insert means receive the recesses of the inner hose and vice versa. The outer surface of the insert means presses against the inner hose to form the tight seal.
Both Dayco and Total Containment, Inc. (“TCI”) moved for SJ on the issues of claim construction and infringement. Claim 1 of one patent defines an “insert means having an outer peripheral surface means defined by a plurality of outwardly directed projections with recesses therebetween, said projections of said insert means being respectively received in said recesses of said inner hose.” Claim 1 described the “projections of said insert means [as] . . . having a transverse cross-sectional configuration of a certain length different from the transverse cross-sectional length of said recesses of said inner hose.” The parties disputed the meaning of the following limitations in the claim: (1) “completely received”; (2) “different than”; (3) “outwardly directed projections”; and (4) “plurality.”
With respect to the first limitation, the district court had construed the phrase “said projections of said insert means being respectively received in said recesses of said inner hose” to mean that three or more projections that extend outwardly from the peripheral surface must be completely received within the recesses of the inner hose. The Federal Circuit rejected this construction because the claim language did not explicitly or implicitly require complete reception.
Similarly, the Federal Circuit rejected the district court’s interpretation of the “different than” limitation. With regard to Dayco’s ‘050 and ‘023 patents, the district court had construed the “different than” limitation to mean that the length of the insert-means projections must be different than the length of the inner-hose recesses. The Federal Circuit, however, found that the “different than” limitation meant that the insert-means recesses must be “greater than” the length of the inner-hose projections. The Federal Circuit held that the district court had improperly construed the “different than” limitation for the ‘752 and ‘822 patents because the structure and wording of these patents is similar to the ‘050 and ‘023 patents. Thus, the Federal Circuit saw no reason to construe the claims of the former two patents more narrowly than in the latter two patents.
The Federal Circuit also found that the district court had improperly construed the “outwardly directed projections” limitation. Dayco’s ‘686 patent requires “outwardly convex projections,” while the ‘050, ‘023, ‘752, and ‘822 patents merely require “outwardly directed projections.” Thus, the district court had concluded that TCI did not infringe because its products had a space between the recesses that consisted of a line segment.
The Federal Circuit, reviewing the district court’s findings, affirmed the lower court’s holding of noninfringement of the ‘686 patent because the TCI product clearly did not have “outwardly convex projections.” The Federal Circuit reversed, however, the holding relating to noninfringement of the ‘050, ‘023, ‘752, and ‘822 patents, because the lower court had read a limitation into the claim language. The Court ruled that the phrase “outwardly directed” does not have any special meaning or require that the projections have a particular shape. Instead, the phrase “outwardly directed” was merely used to modify the term “projections” to clarify that the insert-means projections point to the outside of the hose construction.
Finally, the Federal Circuit determined that the district court had improperly construed the meaning of the term “plurality.” The lower court had held that the term “plurality” meant that three or more projections of the insert means must be received in the recesses of the inner hose. It had reasoned that because the claim required “recesses” between the projections, there must be at least three projections to have at least two recesses. The Federal Circuit stated that “plurality,” when used in a claim, refers to two or more items unless the patentee gives some indication to the contrary.