by Dennis Crouch
Accent Packaging v. Leggett & Platt (Fed. Cir. 2013)
In yet another case, the Federal Circuit has altered a district court claim construction in a way that entirely flips the outcome.
In a 2010 action, Accent asserted that L&P infringed its US Patent Nos. 7,373,877 (claims 1–5) and 7,412,992 (claims 1, 3, 4, 7, and 10–14). The patents are directed to a device for baling recyclables or solid waste for easier handling.
The asserted claim required a set of “elongated operator bodies, with each of the operator bodies being operably coupled with a respective one of said gripper, knotter, cutting element and cover so as to supply driving power from the single drive assembly thereto.” Leggett's accused device links together the gripping/knotting/cutting/covering tasks and only requires two operator bodies to accomplish all four tasks. In construing the claims, the district court held that the “each . . . respective one of” language required that each operator body perform only one of the listed tasks. As such, Leggett could not infringe.
On appeal, the Federal Circuit reversed – finding that its interpretation of the claim does not require that “each elongated operator body be coupled to one and only one of these operator elements.” Rather the court found that the language only required coupling with at least one operator element. In its decision, the court relied heavily on the fact that the identified preferred embodiment of the invention showed an operator body operably coupled to both a knotter and a cover.
[I]n the preferred embodiment of the invention, two elongated operator bodies are operably coupled to both the knotter and the cover. Put differently, the preferred embodiment features an elongated operator body that is operably coupled to one or more operator elements. We have held that “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).
One question that I have regarding this particular preferred embodiment canon of construction has to do with amendments made during prosecution. In my view, a narrowing claim language made during the course of prosecution should not carry the same presumption of covering the preferred embodiment. In this case, the claims were completely rewritten during prosecution in order to place the application in condition for allowance. And, the limitations in question were added during prosecution.
The result in this case is major — instead of winning on summary judgment, the Federal Circuit here holds that Leggett & Platt loses on summary judgment and is liable for infringement.