Anticipate This!™ | Patent and Trademark Law Blog

CIAS, Inc. v. Alliance Gaming Corporation, et al.

Posted in Opinion Commentary by Jake Ward on October 16, 2007

The phrase “comprised of” does not of itself exclude the possible presence of additional elements or steps. 

(Fed. Cir. 2007, 06-1342)

counterfeit

CIAS  filed suit against Alliance, alleging infringement of U.S. Patent No. 5,283,422 (the ‘422 Patent).  The 422 Patent relates to counterfeit detection systems.  Alliance produces detection systems for tickets used in casino slot machines. At District Court, Alliance was granted a summary judgment of non-infringement on the basis of the court’s construction of the term “comprised of”. On appeal, although affirming the judgement of the District Court, the CAFC found that the District Court erred in it’s construction of the term “comprised of”.

Claim 1 of the ‘422 patent recites:

          1.  A counterfeit detection system for identifying a counterfeit object from a set of similar authentic objects, each object in said set having unique authorized information associated therewith comprised of machine-readable code elements coded according to a detectable series, the system comprising:
          means at a first facility for storing said authorized information;
          means at a plurality of facilities other than said first facility for machine-reading code elements from a similar object and providing information related to the machine-read code elements;
          means coupled to receive said information related to code elements machine-read from said object for at least temporarily storing that information; and
          means at said first facility for detecting counterfeits coupled to said storing means and to said means for temporarily storing, said detecting means including a computer programmed to detect a counterfeit from information in said storing means at said first facility and from information received by said means for temporarily storing when information related to code elements machine read from a similar object is different from said authorized information; and
          means for detecting when information relating to said code elements read from a similar object is the same as information previously read from a similar object, whereby a counterfeit may be detected.

(Emphasis added).

The district court found that the meaning of “comprised of” had not been clearly resolved in patent-specific precedent.  Therefore, the court held that the “ordinary and customary meaning” should be used, and ruled that the term “comprised of” does not have the same open-ended meaning as the term “comprising”.  Thus, the court construed “comprised of” as a closed-end term, similar to the term “consisting of”, that excludes the presence of all elements beyond those presented in the “comprised of” clause. 

The CAFC disagreed with the District Court’s construction.  Although “comprised of” is not used as regularly as “comprising,” and “comprised of” is sometimes used other than as a “transition phrase,” it nonetheless is recognized as a long-standing open-ended term.  The usual and generally consistent meaning of “comprised of,” when it is used as a transition phrase, is that the ensuing elements or steps are not limiting.  The conventional usage of “comprising” generally also applies to “comprised of.”  Court precedent reflects the general understanding and usage of “comprised of” in patent convention has the same meaning as “comprising.” Correctly construed, “comprised of” does not of itself exclude the possible presence of additional elements or steps.

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