57 Fed. Cl. 22 | Fed. Cl. | 2003
OPINION
The Boeing Company (Boeing) seeks compensation from the government, under 28 U.S.C. § 1498(a), for unlawful use by the National Aeronautics and Space Administration (NASA) of an aluminum-lithium alloy in the fuel tank of the Space Shuttle. It contends that the alloy and the processing of aging it are covered by claims in its U.S. Patent No. 4,840,682 (the “ ’682 patent”). At issue in this Markman proceeding is the construction of several elements of those claims.
I. BACKGROUND
Boeing is the owner of the ’682 patent, which is entitled “Low Temperature Under-aging Process for Lithium Bearing Alloys.” According to its summary, that patent is directed to providing “a method for aging aluminum-lithium alloys of various compositions at relatively low temperatures to develop a high and improved fracture toughness without reducing the strength of the alloy.”
The patent consists of seven claims, the latter six of which are dependent, in some fashion, upon the first. That first claim recites as follows:
A process for improving the fracture toughness of an aluminum-hthium alloy without detracting from the strength of said alloy, said alloy consisting essentially of:
Element Amount (wt.%)
Li 1.0 to 3.2
Mg 0 to 5.5
Cu 0 to 4.5
Zr 0.08 to 0.15
Mn 0 to 1.2
Fe .03 max
Si .05 max
Zn 0.24 max
Ti 0.15 max
Other trace elements
Each 0.05 max
Total 0.25 max
A1 Balance,
said alloy first being formed into an article, solution heat treated and quenched, said process comprising the step of aging said alloy article to a predetermined underaged strength level at from about 200 F to less than 300 F.
The parties disagree as to the construction of two critical aspects of this claim — those highlighted above. These phrases are also employed in claims 5 and 6 of the patent.
A Markman hearing was held in this matter on May 13, 2003. At the hearing, the court heard from counsel and received testimony from two experts: Dr. Warren Hunt for plaintiff, and Dr. Edgar A. Starke, Jr. for defendant.
Although they agree on the meaning of many terms in the patent,
We begin by examining the variegated tapestry of claim construction canons woven by the Federal Circuit in recent years, a tapestry which rivals that of Bayeux.
Within this broader fabric, the starting point for determining the meaning of a claim is, of course, its language. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.Cir.1999). Generally, a claim is given its ordinary and customary meaning; that is, the meaning the claims “speak to those skilled in the art.” Electro Medical Sys. S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994); see also Bell Atl. Network Servs., Inc. v. Covad Comms. Group, 262 F.3d 1258, 1267 (Fed.Cir.2001). “Dictionaries, encyclopedias and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art.” Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202-03 (Fed.Cir.2002). Nonetheless, “the general meanings gleaned from reference sources, such as dictionaries, must always be compared against the use of the terms in context, and the intrinsic record must always be consulted ____” Brookhill-Wilk 1, LLC v. Intuitive Surgical Inc., 326 F.3d 1215, 1220 (Fed.Cir.2003); see also Texas Digital, 308 F.3d at 1202; Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed.Cir.2003). So too, “it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning.” Northern Telecom. Ltd. v. Samsung Electronics Co., 215 F.3d 1281, 1293 (Fed.Cir.2000). Further, “[t]he prosecution history is often helpful in understanding the intended meaning as well as the scope of technical terms, and to establish whether any aspect thereof was restricted for purposes of patentability.” Vivid Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d 795, 804 (Fed.Cir.1999); see also Bell & Howell, 132 F.3d at 705-06.
The court initially focuses on the phrase “trace elements” — plaintiff contends it refers
Turning first, as we must, to the claim language, the court is faced not with a battle of experts, but rather one of opposing dictionaries and treatises. These lexicographic sources stitch no less than three definitional lines. Consistent with defendant’s construction, several of them define the phrase “trace element” essentially as a “chemical that occurs in minute quantities in a substance.”
So which of these competing definitions applies (as the old saying goes, “a man with one watch knows what time it is; one with two is not sure”)? Obviously, more is required here than a counting room convention. And while the Federal Circuit has cautioned against the use of general dictionaries for defining technical words, see AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1247-48 (Fed.Cir.2001); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed.Cir.1999), that rule is unavailing here as both parties have presented technical definitions in support of their constructions. Fortunately, a number of recent Federal Circuit decisions hold that where there are multiple dictionary- or treatise- derived meanings for a term, the court should “consult the intrinsic record ‘to identify which of the different possible dictionary meanings of the claim terms in issue is the most consistent with the use of the words by the inventor.’ ” Tehrani v. Hamilton Medical Inc., 331 F.3d 1355, 1360-61 (Fed.Cir.2003) (quoting Texas Digital, 308 F.3d at 1203); see also, e.g., Rexnord Corp. v. Laitram Corp. 274 F.3d 1336, 1343 (Fed.Cir.2001); Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372-73
First, plaintiffs view of the claim language is consistent with other language in the patent’s specification. On this count, the Federal Circuit has explained that “where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meaning.” Renishaw, 158 F.3d at 1250; see also Inverness Medical Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1370 (Fed.Cir.2002); Texas Digital, 308 F.3d at 1203.
Here, the specification points away from defendant’s construction and toward plaintiffs, consistently distinguishing between “alloying agents” or “alloying elements,” on the one hand, and, on the other, “trace elements.” For example, the “Detailed Description of the Invention” begins by explaining the types of aluminum-lithium alloys that are suitable to the low-temperature underaging process, identifying the “alloying agents” that are beneficial or essential to an alloy to be treated by the process. Using the terms “impurities” and “trace elements” somewhat inter-changeably, it then warns:
The impurity elements iron and silicon can be present in amounts up to 0.3 and 0.5 percent, respectively. It is preferred, however, that these elements be present only in trace amounts of less than 0.10 percent. Certain trace elements such as zinc and titanium may be present in amounts up to but not to exceed 0.25 percent and 0.15 percent respectively. Certain other trace elements such as cadmium and chromium must each be held to levels of 0.05 percent or less. If these máximums are exceeded, the desired properties of the aluminum-lithium alloy will tend to deteriorate. The trace elements sodium and hydrogen are also thought to be harmful the properties of aluminum-lithium alloys and should be held to the lowest levels practically attainable ....
This paragraph is followed by a table which, according to the specification, represents the proportions in which the “alloying and trace elements may be present.” These references in the specification thus distinguish between alloying and trace elements, and do so in a fashion that suggests that the latter elements are undesirable constituents in the alloy — in a word, “impurities.” See Renishaw, 158 F.3d at 1250 (“The construction that stays true to the claim language and most naturally aligns with the patents description of the invention will be, in the end, the correct construction.”).
This conclusion takes on sturdier proportions when viewed in light of the prosecution history. Before turning to this point in detail, a few more exegetic panels of the canonical tapestry must be examined. Thus, the Supreme Court, in Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), indicated that “an invention is construed not only in light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office.”
Criner discloses aluminum alloys containing cadmium as an essential alloying element; ... The cadmium may be replaced in whole or in part by one or more of the elements mercury, tin, indium, and thallium, at least one of which must be employed in the Criner alloy____In contrast, the alloy of the present invention consisting essentially of the constituents set forth in new Claim 21 does not contain cadmium, mercury, tin, indium, or thallium as an alloying element.
As the examination process continued, the inventors reiterated this explanation, again and again, each time attempting to traverse objections raised by the examiner based on Criner.
As a final matter, adopting defendant’s definition would require this court to jettison the conventional meaning of “consisting essentially of.” That phrase is one of several commonly-encountered transitional clauses used to delimit the scope of a claim. These phrases can be arrayed over a spectrum, depending upon the degree to which they allow the possibility of additional elements not specified. See AFG Indus., 239 F.3d at 1244-45; see also Stephen A. Becker, 1 Patent Applications Handbook § 2.4 (2002). If one side of that spectrum is reserved for “open-ended” transitional phrases that do not exclude the possibility of additional structures or steps in a claim, then that position is undoubtedly occupied by phrases like “comprising” or “including.” At the polar opposite is the “close-ended” phrase “consisting of,” which, in the patent world, signifies restriction and exclusion. See Vehicular Techs. Corp. v. Titan Wheel Int’l., Inc., 212 F.3d 1377, 1383 (Fed.Cir.2000) (“In simple terms, a drafter uses the phrase ‘consisting of to mean T claim what follows and nothing else.’”). Toward the middle of this spectrum, we encounter the phrase employed here, “consisting essentially of,” which is often used in claims involving chemical compositions. That phrase is “open to ‘unlisted ingredients that do not materially affect the basic and novel properties of the invention.’ ” AFG, 239 F.3d at 1245 (quoting PPG Indus, v. Guardian Industries Corp., 156 F.3d 1351, 1354 (Fed.Cir.1998)); see also Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660,
Relying on its definition of “trace element,” defendant contends that the list of chemical ingredients in claim 1 is essentially closed, with unlisted ingredients being limited to the maximum amounts listed for “[o]ther trace elements” in the patent, that is, 0.05% max each and 0.25% total. But, the cited percentage limitations actually cut the opposite way. For one thing, they suggest that defendant’s interpretation of “trace” would render that word either superfluous or redundant.
III. CONCLUSION
This court will not paint the lily. The meaning of the elements in question is derivable from the intrinsic record, standing alone.
IT IS SO ORDERED.
. The parties agree that "fracture toughness" is a measure of the resistance a material has to the extension of a crack. They also agree that “yield strength” refers to the strength of a material where permanent and non-recoverable, or plastic, deformation occurs, while "tensile strength” or "ultimate strength” refers to the force necessary to break a specimen when subjected to stretching.
. This agreement is reflected in the "Joint Claim Construction and Prehearing Statement” filed by the parties on November 12, 2002.
. A well-known commentator on patent law has observed that "[¡judicial opinions in cases on patent infringement are replete with aphorisms, maxims and canons for the interpretation and application of claims.” 5A Donald S. Chisum, Chisum on Patents § 18.03[2][a] (2003). As will be seen, this opinion is no exception.
. The American Heritage Dictionary 1283 (2d College ed.1982); 18 The Oxford English Dictionary 333 (2d ed.1989); see also McGraw Hill Dictionary of Scientific and Technical Terms 1647 (1978) (trace: "[a]n extremely small, but detectable quantity of a substance”).
. See The American Society for Metals, Metals Handbook 15 (1948) (an ”[e]xtremely small quantity of an element, usually too small to determine quantitatively”); see also Webster's New Collegiate American Dictionary 1227 (1981) (trace: "an amount of chemical constituent not quantitatively determined because of minuteness”).
. See The Aluminum Association, Aluminum Standards and Data 7 (9th ed.1988) (drawing a distinction between “alloying elements” and “impurities”); American Society for Metals, 2 Metals Handbook 711 (1st ed.1979) (describing characterizations of metal purity and indicating that “[t]hese impurity elements, referred to as trace elements now can be detected by a variety of analytical methods”); see also McGraw-Hill Dictionary of Scientific and Technical Terms 1547 (1978) (defining a trace element as “[a] nonessential element found in small quantities (usually less than 1.0%) in a mineral”). Interestingly, The Condensed Chemical Dictionary 466 (8th ed.1971) defines an “impurity” as "[t]he presence of one substance in another in such low concentration that it cannot be measured quantitatively by ordinary analytical methods.” This definition tracks the way that several sources cited above define a "trace element,” further suggesting an equivalency between these two terms.
While most of the definitions cited herein were presented by the parties in preparation for the Markman hearing, several were subsequently discovered by the court. The Federal Circuit has held that a court may conduct such independent research. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1346 (Fed.Cir.2003).
. This rule of construction has oft been reiterated by the Federal Circuit. See Ballard Medical Products v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed.Cir.2001); KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.Cir.2000); Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 863 (Fed.Cir.1991) ("a particular interpretation of a claim term may have been disclaimed by the inventor during prosecution”); McGill Inc. v. John Zink Co., 736 F.2d 666, 673 (Fed.Cir.1984) ("Prosecution history may be used not only in an estoppel context but also as a claim construction tool.”).
. On November 21, 1985, a continuation-in-part application was filed with the USPTO. As that application progressed, the examiner continued to raise Criner and the inventors continued to distinguish that patent on the basis that cadmium, though potentially a "trace element,” was not an alloying element. For example, in a May 5, 1986, transmittal to the USPTO, the inventors again argued that "Criner discloses aluminum alloys containing cadmium an essential alloying element,” whereas, "[i]n contrast, the subject alloy defined by Claim 1 limits cadmium content to 0.05% or less as a trace element.” The examiner was apparently not convinced and, on March 27, 1987, she rejected various claims "as being unpatentable over Criner for the reasons set forth in the previous” rejection. On September 28, 1987, the inventors again responded by making the same distinction between "alloying” and "trace” elements. That some of the referenced arguments were made in the parent application is of no moment. See Wang Labs., Inc. v. America Online, Inc., 197 F.3d 1377, 1384 (Fed.Cir.1999); Jonsson v. Stanley Works, 903 F.2d 812, 818 (Fed.Cir.1990).
. See Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1578 (Fed.Cir.1996) (court should avoid construction that renders claim language mere surplusage); Texas Instruments, Inc. v. U.S. Int’l Trade Comm'n, 988 F.2d 1165, 1171 (Fed.Cir.1993) (same).
. Contrary to defendant’s further argument, the court does not believe that plaintiff’s construction of the phrase “trace elements” is belied by the reference in claim 1 to "other” trace elements. As verified by the specification, some of the elements listed in the table above this reference are trace elements (e.g., Fe). Thus, the “other” reference does not suggest that all of the elements listed above that reference are potentially trace element, but only recognizes that some of those elements are of the trace variety. The same is true of like references made in claims 5 and 6 of the patent.
. Defendant argues that, wholly apart from the definition of “trace element," the phrase "consisting essentially of” should be construed in such a way that there are no unlisted elements in the alloy. For this proposition, it relies heavily on Talbert Fuel Sys. Patents Co. v. Unocal Corp., 275 F.3d 1371, 1375 (Fed.Cir.2002). To be sure, in Talbert, the Federal Circuit held that the phrase "consisting essentially of” could not negate the limiting effect of other claim language that indicated that the subject reformulated gasoline had a claimed boiling point range of 121-345F. 275 F.3d at 1375. However, in the claim considered by the court, the signal "consisting essentially of” did not modify the boiling point range, but rather an accompanying hydrocarbon composition. And, during the prosecution of that patent, the inventor had repeatedly stressed that 345F was the upper boiling point for the gasoline. Id. Both facts were relied upon by the Federal Circuit in construing the phrase "consisting essentially of." Neither finds a corollary in this case. Accordingly, Talbert is inapposite.
. Because the meaning of the phrases " ‘trace element' ” and "consisting essentially of” are established by the intrinsic evidence, this court need not and does not consider the expert testimony presented by the parties, which, on these issues, was largely at odds. See Brookhill-Wilk, 326 F.3d at 1225.