Claim Construction: CAFC Cautions Co-Interpretation of System and Method Elements.

PatentLawPic133Baldwin Graphics v. Siebert (Fed. Cir. 2008). [UPDATED 1/15/08 7:30pm]

Judge Moran of the Northern District of Illinois granted Siebert’s motion for summary judgment of non-infringement — finding that Baldwin’s patented printing press cleaning system and method did not extend to cover Siebert’s products. On appeal, the CAFC reversed the district court’s claim construction and remanded.

“A” Means One or More: In a well tred battle, the CAFC found that the lower court had mistakenly limited the claim element of “a pre-soaked fabric roll” to only allow for a single fabric roll.  This follows the general rule that “a” or “an” are interpreted as “one or more.”  Exceptions do apply, but only when the patentee has shown “clear intent” to limit the meaning of those articles. As a corollary, later use of “the” or “said” when referring to the element either in the patent or in PTO correspondence does nothing to alter the rule.

System versus Method Elements: The parties agreed that the system element “reduced air content cleaning fabric” was substantially similar to the method of “reducing air content of a cleaning fabric.”  Judge Moran interpreted these together and required that the system element also have reduced air content “prior to being wound.” On appeal, the CAFC cautioned district courts about joint interpretation of system and method claims and found that the lower court had improperly imported a limitation into the system.

19 thoughts on “Claim Construction: CAFC Cautions Co-Interpretation of System and Method Elements.

  1. Areyou…

    It’s not really fuzzy math at all, it’s straightforward logic. Unfortunately, the courts are pretty poor at expressing it. It’s not that “a” or “an” MEANS “one or more.” It’s also not simply an arbitrary “rule” of construction. Rather, in the context of an open-ended claim, such as one that says “An apparatus for cutting cheese, COMPRISING…”, listing an element as “a widget” or “an electric widget” doesn’t exclude the possibility that there are two, or hundreds, of widgets. Personally, I think that logic is unassailable. Now, if I said “An apparatus for cutting cheese, consisting of a widget and a power supply,” then the word “a” should mean “one and only one.”

    I sometimes use “a” when I know full well that there will be more than one of an element, and sometimes “one or more.” The difference is usually how I’m relating other elements to that particular elements. Sometimes, for example, I want to be sure that a one-to-one correspondence is clear. Sometimes I want to be sure that a one-to-one correspondence is not implied.

  2. Yeah, right, Cave. It’s a different word every place I’ve lived.

    In Ohio it was that “daytah,” in Virginia it was “dayter” (rhymes with “tater,” as in mashed), and in Boston it was “dhater”, (like your son’s sister). In New Zealand it was the British “dhata” as in “toe-ma-tah,” slightly snarled.

    All of that with just 4 letters, maybe because it’s 50% vowels.

  3. Even if the claim had said “a single fabric roll” and the infringing product had three fabric rolls, the infringing product still would have a single fabric roll plus two additional fabric rolls. You first gotta have one fabric roll to have three fabric rolls. Simple logic that probably cost $1,000,000 in litigation costs.

  4. Dick
    When I was a graduate student, using “data” properly had great snob-value. You could always tell the know-nothings from inferior departments (usually psychology) by the way they said: “The data supports our hypothesis.”

    Your point is a good one. Among the disasters the geeks have contributed to the 21st century are counting from 0 instead of 1 and screwing up a perfectly good way of distinguishing the grammatical elite from the unwashed ruffians.

  5. from m-w.com: The word data “leads a life of its own quite independent of datum, of which it was originally the plural. It occurs in two constructions: as a plural noun …; and as an abstract mass noun (like information), taking a singular verb …. Both constructions are standard. The plural construction is more common in print, evidently because the house style of several publishers mandates it.”

  6. For all of you claim-construction-is-not-law malcontents, this case is an excellent example of why the CAFC has to review the construction de novo. This trial court judge didn’t have a clue what he was doing. This was disgraceful. He didn’t even know the bed-rock basics like that “a” includes the plural. Or that method steps are not construed seriatim. This is precisely why claim construction is a legal issue. (There ought to be a level of judicial incompetence at which the judge is personally liable for the appeal costs.)

    Besides, any appeal opinion that uses the word “anaphoric” is alright by me.

    Finally, as to Mark’s example: “A computer readable storage media having computer executable instructions for implementing the method of claim 1″. First, ‘media” is plural. So is “data.” Second, these Beauregard claims are necessary for a couple of reasons. First, if the infringers are carrying out different steps all over the globe, there’s little chance of beating them on the methods claims. Second, the computer methods likely won’t fly in EPO etc, and so you need the structure claims if you’re going outside the US. Regardless of the examiners’ personal predilections, if the Beauregard claims are valid (and they are), I’ll use them.

  7. First,

    I agree with the decision in this case.

    However, aren’t system claims just a tool to create hybrids of method and product/apparatus claims? They are not a distinct, simply defined category.

    Not to say I don’t use them; they are useful and there are certainly other ways to combine method type elements and apparatus/product type elements that are also useful.

  8. “That isn’t language from the claim. That’s the language as interpreted.”

    [shakes fist at Dennis]

  9. I didn’t check the case above, I figured the system element came after the method element in a dep. claim tree for the judge to have done what he did, but apparently he just went hog wild on ridiculousness.

  10. I’m referring specifically to claims where claim 1 includes “a method for doing x” then claim 2 says “an apparatus for performing the method of claim 1″ and finally, claim 3 says “a device made on the apparatus of claim 2 by the method of claim 1″.

    BTW, here’s a real stumper for you, if claim 1 is a method claim, and claim 3 is clearly defined in the MPEP as a product-by-process (i.e. a product) then what is claim 2? Does claim 2 have any effect on claim 3 being a product-by-process?

    And the final question, why in the hell would anyone want to write crap like that in the first place except in a pathetic attempt to avoid what is completely obvious by making the examiner have to pull 7 references since other, more normal, people break complex systems up?

    Finally, just how legal is doing something like this? The statute clearly calls for a process, device, composition, OR method (iirc off the top of my head). Not AND/OR, just OR. I can see maybe keeping the product-by-processes intact as processes, but ones that combine any of the others is completely not needed.

    You can draw what you will about my position about apps including ind. 1 method and ind. 5 product (bad enough) and ind. 10 apparatus and ind. 15 a composition making up the product, made by the method, on the apparatus.

    Oh, and “I would think the Office would actually prefer a true cross-category claim like Mark identifies to completely distinct method and system claims.”

    Yeah we prefer completely distinct claims, so we can restrict it to two applications like you should have submitted in the first place. lol. This differs from art to art though. I assure you, being responsible for searching two distinct avenues of the inventors train of thought for the price (and corresponding time) is not fun. I rarely do it myself.

    Protip: if you want your process, product, composition, and method claims to stay together, write them in such a way as to be inextricably intertwined or simply put all the limitations from each in each.

    Funniest thing is, attorney’s seem surprised when I say “Oh, hmm, looks like you have x and y claims in here after the first action, they must be pretty similar”.

  11. If this is going back for retrial, the defense may want to search for prior art [if they have not already] in some early Haloid Xerox or Xerox Corporation products and patents using roll fed cleaning webs for cleaning their printing drums, and later on for lubricating and cleaning the print fuser rolls, looking a lot like this picture Dennis posted.

  12. Method: “fabric whose air content had been reduced … prior to being wound”

    That isn’t language from the claim. That’s the language as interpreted.

  13. Mark – I think you’re right. But in any event, Mr. 6k’s conclusion (it’s not needed and just makes a mess) doesn’t follow from either the case or his apparently mistaken assumption.

    I would think the Office would actually prefer a true cross-category claim like Mark identifies to completely distinct method and system claims. This case illustrates that the limitations in a method and a “corresponding” apparatus might not be identical. With a cross-category claim, they presumably must be. I would think the latter would be easier to examine (i.e., less of a “mess”), since you wouldn’t have to read the cross-category claim particularly closely to spot subtle differences in the limitations.

    6K?

  14. System: “reduced air content cleaning fabric”

    Method: “fabric whose air content had been reduced … prior to being wound”

    Note the language in the method claim. It’s another one of those weird “method-by-process” claims. Or is reducing the air from the fabric a step in the method? Must that step be carried out by the infringer? Very weird.

  15. I think he’s referring to the setup where you have an independent method claim and then a dependent claim “A computer readable storage media having computer executable instructions for implementing the method of claim 1″.

    But that’s not what they did here. There were two independent claims, a system and a method. The district court then just lifted limitations from the method claim and rewrote the system claim with the lifted limitations to narrow the system claim scope from what was actually written on the paper.

  16. “People need to stop with the cross-catagory including claims anyway, which is what it sounds like this was.”

    This is somewhat more coherent than many of the office actions I’ve seen lately, but I still don’t know what it means.

  17. Sounds about right. People need to stop with the cross-catagory including claims anyway, which is what it sounds like this was. Yeah it’s allowable by law, but it’s not needed and just makes a mess.

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