Anticipate This!™ | Patent and Trademark Law Blog

Baldwin Graphic Systems v. Siebert.

Posted in Opinion Commentary by Jake Ward on January 22, 2008

If an initial phrase carries no definitive numerosity, an anaphoric phrase does not alter the meaning in the slightest.

(Fed. Cir. 2008, 07-1262)

cylindercleaning

Baldwin sued Siebert for infringement of Baldwin’s U.S. Pat. No. RE35,976 and U.S. Pat. No. 5,974,976, relating to  a device and method for cleaning a cylinder of a printing press.  On appeal from the district court (N.D. Ill.), the CAFC determined that the district court erred by construing the term “a pre-soaked fabric roll” to mean “a singlepre-soaked fabric roll”, and by construing the phrase “reduced air content cleaning fabric” to mean “a fabric whose air content has been reduced by some method prior to being wound on a roll.”  The CAFC agreed, however, with the construction of the term “sealed sleeve” to mean “heat-sealed sleeve.”

In relation to the construction of the claim term “a pre-soaked fabric roll”, the CAFC first reiterated that the “court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”  The exceptions to this rule are extremely limited:  a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one.” 

There was no clear indication in the record of the patents that the applicant departed from the general rule for the article “a.”  The claim language, specification, and prosecution history of the patents at issue did not compel an exceptional reading of “a”.  Additionally, since the initial indefinite article (“a”) carried either a singular or plural meaning, any later reference to that same claim element in a singular form merely reflected the same potential plurality.  Or, as the opinion so eloquently states:

In grammatical terms, the instances of “said fabric roll” in the claim are anaphoric [definition] phrases, referring to the initial antecedent phrase.  Because the initial phrase carries no definitive numerosity, the anaphoric phrases do not alter that meaning in the slightest.

In relation to the construction of the phrase “sealed sleeve”, the court noted that it has “consistently recognized that the Patent Act prevents an applicant from adding new subject matter during the patent prosecution process.”  The record indicated that during prosecution the Examiner had refused to allow the applicants to amend the specification to remove references to “heat” as the way of sealing the sleeve because such amendment would have broadened the patent and introduced impermissible new matter not included in the initial disclosure.  Thus, the court was correct in refusing to broaden the term “sealed sleeve” to mean more than a “heat-sealed sleeve”.

Finally, the CAFC disagreed with the construction of the term “reduced air content cleaning fabric”.  The district court had apparently seized on the parties’ agreement that the term “reduced air content cleaning fabric” in the independent apparatus claim and the step “reducing air content of a strip of cleaning fabric” in the independent method claim were substantially similar, to erroneously construe the limitations.  “Courts must generally take care to avoid reading process limitations into an apparatus claim.”  “Courts must [also] carefully avoid importing limitations from the specification into method claims.”  The claims themselves contained no basis to require air content reduction before winding.  Citing Phillips v. AWH, the CAFC noted that the “district court effectively imported limitations it saw in dependent claims into the independent claims, contrary to basic claim construction principles.”  Thus, the district court erred in limiting “reduced air content cleaning fabric” to “a fabric whose air content has been reduced by some method prior to being wound on a roll.” 

AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED.

2 Responses

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  1. AMIT said, on February 1, 2008 at 2:19 am

    Dear Jake,

    Intresting reading.

    I was going through an article on the same case on Patently O – A patent law blog, i came across a belowmentioned para;

    “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.”

    It will be appreciated, if you can clear the difference between system and apparatus claim, as the aforementioned para says.

    Thanks.

  2. Jake Ward said, on February 1, 2008 at 10:39 am

    Baldwin originally asserted that Siebert’s packaged fabric rolls infringed Claim 32 (system) of the Reissue patent and Claims 1, 7, 9, 12, 14, 23, and 25 (device and method) of the ’976 patent.

    We would respectfully disagree with the broad statement in the aforementioned paragraph that “the CAFC reversed the district court’s claim construction and remanded” with respect to the “finding that Baldwin’s patented printing press cleaning system and method did not extend to cover Siebert’s products”. A more accurate statement to the reasons why the district court granted Siebert’s motion for summary judgement for noninfringement may be seen below (quoted from the CAFC opinion).

    “Based on its construction of “a pre-soaked fabric roll” and “sealed sleeve,” the district court granted Siebert’s motion for summary judgment of non-infringement of claim 32 [system] of the Reissue patent. The district court based its summary judgment on the undisputed facts that Siebert sold its accused fabric rolls in sets of three or between six and nine, but not individually. Initial Order, slip op. at 9. Likewise, Siebert did not sell its fabric rolls in heat-sealed sleeves.” AND

    “[T]he district court turned to the usage of various fabric and cloth-related terms in the dependent claims as a guide for construing “reduced air content cleaning fabric” in the independent claims. Also, the district court relied on the prosecution history, where Baldwin represented that the claimed invention improved fabric moisture content and solvent distribution “[b]y reducing the air content of the cleaning fabric prior to saturation.” Reconsideration Order, slip op. at 8 (emphasis added). Because Siebert’s product does not reduce air content before winding of the fabric on the roll, the district court granted Siebert’s motion for summary judgment of non-infringement on the claims of the ’976 patent.”

    Our reading is that the CAFC did not reverse and remand on all issues in the opinion. Instead, The CAFC affirmed the district court’s summary judgment of non-infringement as to the Reissue patent (system) and reversed and remanded with respect to the ‘976 patent (device and method) due to its disagreement with the district court’s claim construction of the device and method claims.


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