Poly-America, L.P. v. Api Industries, Inc.
839 F.3d 1131
| Fed. Cir. | 2016Background
- Poly‑America owns U.S. Patent No. 8,702,308 for an "elastic drawstring trash bag" whose specification emphasizes "extended short seals" that reduce the bag's relaxed upper opening width relative to the bag proper width.
- The patent describes short seals at the bag's upper corners that bind the hems/drawstrings and—in all embodiments—extend inwardly to narrow the upper opening, enabling the elastic drawstrings to fit over a trashcan rim.
- Claim 10 (the asserted claim) recites short seals joining panels and drawstrings but does not expressly recite a narrowed upper opening; dependent claims (12–14) specify numerical ratios limiting the opening width.
- During prosecution, Poly‑America distinguished prior art (Schneider) by arguing Schneider’s short seals do not reduce the relaxed upper opening width (i.e., they are not inwardly extended), and the examiner allowed the claims based on that distinction.
- At claim construction the district court adopted API’s construction defining "short seal" to require an inward extension (not aligned with side seals), held the accused bags lacked that feature, and entered judgment of non‑infringement after Poly‑America conceded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether "short seal" in claim 10 must be limited to seals that extend inwardly to narrow the upper opening | Poly‑America: claim 10’s plain language does not require narrowing; importing that limitation improperly reads embodiments into claims and conflicts with claim differentiation | API: specification and prosecution history show clear disavowal of short seals that do not extend inwardly; construction should require inward extension | Court: Affirmed—"short seal" requires inward extension; specification and prosecution history clearly and unequivocally disavow seals that do not narrow the opening |
| Whether the specification’s embodiments may be used to limit claim scope | Poly‑America: relying on embodiments impermissibly imports limitations into claim 10 | API: every embodiment and the specification consistently teach inwardly extended short seals as a characteristic of the invention | Court: Use of embodiments plus prosecution statements here supports disavowal; limiting claim scope was proper |
| Whether claim differentiation prevents reading the narrowing limitation into claim 10 | Poly‑America: dependent claims explicitly recite narrowed width, so independent claim 10 should not be read to require it | API: claim differentiation cannot expand claim scope beyond what the patent as a whole makes clear; clear disavowal controls | Court: Claim differentiation does not override clear specification/prosecution disclaimers; limitation stands |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard of review for claim construction and subsidiary factual findings)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (ordinary and customary meaning of claim terms)
- Hill‑Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) (patentee‑lexicography and disavowal exceptions)
- Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509 (Fed. Cir. 2015) (disavowal can arise in specification or prosecution; requirement of clear and unequivocal statement)
- Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) (ambiguous language cannot support disavowal)
- Trustees of Columbia Univ. v. Symantec Corp., 811 F.3d 1359 (Fed. Cir. 2016) (disavowal need not be explicit; meaning of claim terms is determined in context of the patent)