|
United States
Court of Appeals for the Federal Circuit
03-1269,-1286
EDWARD H. PHILLIPS,
Plaintiff-Appellant,
v.
AWH CORPORATION,
HOPEMAN BROTHERS, INC., and LOFTON CORPORATION,
Defendants-Cross Appellants.
Carl F. Manthei, Attorney at Law, of Boulder, Colorado, argued
for plaintiff-appellant.
Mark W. Fischer, Faegre & Benson LLP, of Boulder, Colorado,
argued for defendants-cross appellants. With him on the brief was
Scott Holwick.
Appealed from: United States District Court for the District
of Colorado
Judge Marcia S. Krieger
United States Court of Appeals for the Federal Circuit
03-1269, -1286
EDWARD H. PHILLIPS,
Plaintiff-Appellant,
v.
AWH CORPORATION,
HOPEMAN BROTHERS, INC., and LOFTON CORPORATION,
Defendants-Cross Appellants.
________________________
DECIDED: April 8, 2004
________________________
Before NEWMAN, LOURIE, and DYK, Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE. Opinion
dissenting in part filed by Circuit Judge DYK.
Edward Phillips appeals from the decision of the district court
granting the defendants' motion for summary judgment of noninfringement
of U.S. Patent 4,677,798. Phillips v. AWH Corp., No. 97-MK-212
(D. Colo. Jan. 22, 2003) ("Noninfringement Decision").
Phillips also appeals from the dismissal of his claim of trade
secret misappropriation. Phillips v. AWH Corp., No. 97-N-212 (D.
Colo. Mar. 22, 1999) ("Trade Secret Misappropriation Decision").
For the reasons set forth below, we affirm.
BACKGROUND
Phillips is the inventor and owner of the '798 patent, which
is directed to vandalism-resistant building modules consisting of
modular wall panels. The invention is useful in the field of prison
construction because the panels exhibit desirable sound and fire
resistance, impact resistance (i.e., against bullets, bombs), and
axial and lateral load bearing qualities. A key issue in this case
relates to the meaning of the term "baffle." The use
of the term "baffle" is typified in Claim 1, which reads
as follows:
Building modules adapted to fit together for construction of
fire, sound and impact resistant security barriers and rooms for
use in securing records and persons, comprising in combination,
an outer shell . . . , sealant means . . . , and further means disposed
inside the shell for increasing its load bearing capacity comprising
internal steel baffles extending inwardly from the steel shell walls.
'798 patent, col. 6, ll. 22-34 (emphasis added).
In 1989, Phillips entered into an agreement with AWH Corporation,
Hopeman Brothers, Inc., and Lofton Corporation (collectively "AWH")
for AWH to market and sell Phillips' invention. That agreement
ended in 1990, and in early 1991, Phillips obtained an AWH sales
brochure which convinced him that AWH was continuing to use Phillips'
technology without his consent. From January 1991 to June 1992,
the parties exchanged letters regarding Phillips' allegations of
patent infringement and trade secret misappropriation, but no resolution
was ever reached.
On February 3, 1997, Phillips sued AWH in the United States
District Court for the District of Colorado, asserting that AWH
had misappropriated his trade secrets and had infringed claims 1,
21, 22, 24, 25, and 26 of the '798 patent. In March 1999, the court
granted AWH's motion for partial summary judgment that Phillips'
claim for trade secret misappropriation was barred by Colorado's
three-year statute of limitations, and it dismissed that claim.
The court reasoned that Phillips knew or should have known of his
alleged injury and failed to exercise due diligence in pursuing
his claim of misappropriation. Trade Secret Misappropriation Decision,
slip op. at 7. The court also decided that Phillips had not presented
evidence that AWH engaged in wrongful conduct preventing him from
discovering that claim. Id. at 7-8.
In November 2002, the district court issued its construction
of the '798 patent's claims. Phillips v. AWH Corp., No. 97-MK-212
(D. Colo. Nov. 22, 2002) ("Claim Construction Order").
The term "baffle" was of primary importance, and although
it was not expressly defined in the written description, the parties
stipulated that the term meant a "means for obstructing, impeding,
or checking the flow of something." Id., slip op. at 23.
In spite of that stipulation, the court concluded that the term
was ambiguous because "it does not identify the substance or
force the flow of which it is intended to check, impede, or obstruct."
Id. Although the court acknowledged that "[t]he subject language
includes a means and a structure," it decided that the claim
language "does not adequately describe the function of the
structure." Id. at 23-24 (emphasis added). The district court
therefore concluded that the claim contains means-plus-function
language subject to construction under 35 U.S.C. § 112, 6 and is
limited by the specification. Id. at 24.
The court found that the specification referred to properties
of sound and heat resistance, as well as fire resistance and projectile
deflection. Particularly, the court noted that "every textual
reference in the Specification and its diagrams show baffle deployment
at an angle other than 90° to the wall faces," and that the
figures in the specification all displayed baffles placed in interlocking
positions. Id. The court therefore concluded that a "baffle,"
within the context of the '798 patent, has two required properties:
first, baffles extend inward from the shell walls at oblique or
acute angles; and second, baffles form an intermediate, interlocking
barrier in the interior of the wall module. Id. at 25.
Phillips conceded that he could not prove infringement under
the court's claim construction, and the court granted AWH's motion
for summary judgment of noninfringement. Noninfringement Decision,
slip op. at 1. Phillips timely appeals from both the summary judgment
of noninfringement and the dismissal of his trade secret misappropriations
claim. AWH cross-appeals, challenging the district court's treatment
of certain claim terms in its claim construction. We have jurisdiction
over the appeals pursuant to 28 U.S.C. § 1295(a)(1), because a claim
of patent infringement was well-pleaded in the complaint. See Holmes
Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826
(2002). We have pendent jurisdiction over the claim of trade secret
misappropriation. See Roton Barrier, Inc. v. Stanley Works, 79
F.3d 1112, 1116 (Fed. Cir. 1996).
DISCUSSION
We review a district court's grant of summary judgment de novo,
reapplying the same standard used by the district court. Ethicon
Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed.
Cir. 1998). Summary judgment is appropriate "if the pleadings,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is entitled
to a judgment as a matter of law." Fed. R. Civ. P. 56(c).
I. Patent Infringement
Determination of patent infringement requires a two-step analysis.
"First, the court determines the scope and meaning of the
patent claims asserted . . . , then the properly construed claims
are compared to the allegedly infringing device." Cybor Corp.
v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)
(citations omitted). Step one, claim construction, is an issue
of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71
(Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996), that we
review de novo, Cybor, 138 F.3d at 1456. Step two, comparison of
the claim to the accused device or method, requires a determination
that every claim limitation or its equivalent is found in the accused
device. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.
17, 29 (1997). Those determinations are questions of fact. Bai
v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
On appeal, Phillips argues that the term "baffle"
is not in means-plus-function language and should not be limited
to structures described in the specification. Instead, he urges
that the "heavy presumption" that "baffle" should
be accorded its ordinary and customary meaning was not clearly and
unequivocally rebutted. Phillips asserts that the district court
improperly read limitations from the specification into the claims-that
baffles must be positioned at an acute or obtuse angle to wall faces,
and that baffles must form an intermediate, interlocking barrier.
Next, for support, Phillips points to descriptions in the '798
patent of baffles that he states are at an angle of 90° to the wall
face and of baffles that do not form an interlocking pattern. Finally,
Phillips asserts that the district court improperly defined the
term "impact resistance" to refer only to deflection of
bullets, bombs, or other projectiles. He argues that the term "impact"
is used in both the conjunctive and the disjunctive with the term
"projectile deflection," which he believes indicates that
the term "impact" takes on a broader meaning and that
the court's construction was unduly narrow.
AWH responds that the district court correctly construed the
term "baffle." The court, AWH argues, properly looked
to the specification to determine the scope of the claimed invention.
To support the court's construction, AWH emphasizes statements
in the '798 patent that purport to distinguish the invention from
the prior art, e.g., "impact resistance to great forces such
as explosions and projectiles." AWH asserts that the key innovative
feature of the invention is the baffle configuration, including
both the angled orientation and the interlocking pattern limitations,
and that the court was correct to interpret the scope of the claims
accordingly. Additionally, AWH argues that the term "impact
resistance" is used throughout the specification with particular
reference to bullets, bombs, and other projectiles.
We agree with AWH that the district court ultimately construed
the meaning of the term "baffle" properly. Section 112,
6 provides that:
an element in a claim for a combination may be expressed as a
means or step for performing a specified function without the recital
of structure, material, or acts in support thereof, and such claim
shall be construed to cover the corresponding structure, material,
or acts described in the specification and equivalents thereof.
35 U.S.C. § 112, 6 (2000). Whether a claim limitation is in
means-plus-function format according to 35 U.S.C. § 112, 6 is a
matter of claim construction and thus a question of law that we
review de novo. Personalized Media Communications, LLC v. Int'l
Trade Comm'n, 161 F.3d 696, 702 (Fed. Cir. 1998). We have held
that use of the word "means" creates a presumption that
§ 112, 6 applies. See York Prods., Inc. v. Cent. Tractor, 99 F.3d
1568, 1574 (Fed. Cir. 1996). Conversely, we have also held that
the failure to use the word "means" creates a presumption
that § 112, 6 does not apply. See Mas-Hamilton Group v. LaGard,
Inc., 156 F.3d 1206, 1213 (Fed. Cir. 1998). "In deciding whether
either presumption has been rebutted, the focus remains on whether
the claim as properly construed recites sufficiently definite structure
to avoid the ambit of § 112, 6." Personalized Media Communications,
161 F.3d at 704.
At the outset, we determine that "baffle" is not in
means-plus-function language. The claim term in question does not
expressly use the word "means," thereby invoking the
presumption that § 112, 6 does not apply. Moreover, the word "baffle"
is a sufficient recitation of structure, which carries its ordinary
meaning of "something for deflecting, checking, or otherwise
regulating flow." Webster's Third New International Dictionary
162 (1993). Its particular structure is not relevant here. Simply
because the claims do not identify the matter upon which the baffle
acts does not, by itself, rebut that presumption or render the term
subject to means-plus-function treatment. Our case law has focused
on the structure of claim terms when determining whether § 112,
6 applies. See, e.g., Personalized Media Communications, 161 F.3d
at 705 (stating that "an adjectival qualification . . . placed
upon otherwise sufficiently definite structure
. . . does not make the sufficiency of that structure any less
sufficient for purposes of
§ 112, 6," but rather "further narrows the scope of
those structures covered by the claim and makes the term more definite").
Furthermore, the intrinsic and extrinsic evidence fully and repeatedly
support the meaning that baffles check, impede, and obstruct heat,
sound, and projectiles such as bullets and bombs. Accordingly,
we decide that "baffle" is not means-plus-function language.
However, our analysis does not end there-while the district
court erroneously considered the term "baffle" to be in
means-plus-function format, we must still read the claims in view
of the specification and determine whether the patentee has otherwise
limited the scope of the claims with respect to the term "baffle."
The ordinary meaning of a term must be considered in view of the
intrinsic evidence: the claims, the specification, and the prosecution
history. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342-43
(Fed. Cir. 2001). "[A] claim term will not carry its ordinary
meaning if the intrinsic evidence shows that the patentee distinguished
that term from prior art on the basis of a particular embodiment,
expressly disclaimed subject matter, or described a particular embodiment
as important to the invention." CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366-67 (Fed. Cir. 2002). Thus, we look to
the specification "to ascertain the meaning of a claim term
as it is used by the inventor in the context of the entirety of
his invention." Comark Communications v. Harris Corp., 156
F.3d 1182, 1187 (Fed. Cir. 1998).
The '798 patent specification is rife with references to impact
resistance, especially against projectiles such as bullets and bombs.
The abstract describes the invention as "[v]andalism resistant
building modules . . . [that] provide . . . significant resistance
to noise, fire and impact" and specifically states that "[t]he
modules contain strengthening and bullet deflecting internally directed
steel baffles." It further explains that steel panels "form
the internal baffles at angles for deflecting bullets." In
the section marked "Disclosure of the Invention," the
patentee states that the baffles are "disposed at such angles
that bullets which might penetrate the outer steel panels are deflected."
'798 patent, col. 2, ll. 13-15.
Additionally, the specification addresses and distinguishes
the prior art, asserting that "[i]n secured facilities, and
protective barriers, it is feasible that projectiles may be encountered,
such as bullets from high powered guns or bomb fragments."
Id. at col. 3, ll. 26-28. It continues by stating that "[t]here
have not been effective ways of dealing with these powerful impact
weapons with inexpensive housing in the prior art." Id. at
col. 3, ll. 28-31.
The specification further contains a Figure 6, explaining that
if bullets "were to penetrate the outer steel shell wall, the
baffles are disposed at angles which tend to deflect the bullets."
Id. at col. 5, ll. 17-19. Figure 12 is also shows that "[t]ypical
wall characteristics include bullet and explosion resistance."
Id. at col. 5, ll. 67-68. Finally, the patentee concludes that
the "invention has advanced the art by providing modular buildings
and modules of high strength [and] bullet resistance," adding
that "[u]niquely the advantages of steel shell modules are
combined with thermal and acoustical isolation of two spaced walls
and protection against bullet penetration of the walls." Id.
at col. 6, ll. 10-17 (emphasis added).
We are not persuaded by Phillips' arguments that the specification
also contains descriptions of baffles that are 90º to the wall face.
To support his assertion, Phillips points to segments of baffles
in Figure 7 as oriented perpendicular to the walls. However, those
segments merely support the predominant angled portions that impart
the bullet deflection properties that Phillips identifies as essential
to his invention and are not identified as baffles.
From the specification's explicit descriptions of the invention,
we conclude that the patentee regarded his invention as panels providing
impact or projectile resistance and that the baffles must be oriented
at angles other than 90º. Baffles directed at 90º cannot deflect
projectiles as described in the '798 patent, and, in any event,
are disclosed in the prior art. See, e.g., U.S. Patents 2,717,664
and 4,505,101. The term "baffle" is used in a consistent
manner throughout all the asserted claims, so our foregoing analysis
applies equally to all those claims. Because we so construe the
'798 patent, and because AWH does not use acute or obtuse angles
in its panels, we affirm the district court's judgment of noninfringement.
The dissent-in-part argues that we have interpreted the claims
erroneously by focusing only on the "preferred embodiment."
We disagree. Inspection of the patent shows that baffles angled
at other than 90° is the only embodiment disclosed in the patent;
it is the invention. It is impossible to derive anything else from
the specification.
The specification indicates at column 1, line 65 to column 2,
line 15 under DISCLOSURE OF THE INVENTION that
This invention provides modular equipment for formulating detention
structures comprising of [sic] a multiplicity of interchangeable
modules of similar size having steel plate inner and outer wall
sections defining end closures and internally directed load supporting
baffles. The modules comprise three steel plate wall panel sections
of partially triangular cross section shape positioned to provide
the internally directed baffles . . . .
The baffles provided by the triangular shaped panels to extend
inwardly from an intermediate interlocking barrier with the baffles
disposed at such angles that bullets which might penetrate the outer
steel panels are deflected.
The only actual references to baffles in the specification are
to numbers 16, 26, 27, 30, 31, all of which are angled in the figures
of the patent. It further states at column 5, lines 5-19: "The
additional feature of this module is that it gives additional protection
against projectile penetration. Thus it may been seen from FIG.
6 that if a bullet were to penetrate the outer steel shell wall,
the bullets are disposed at angles which tend to deflect the bullets."
(Emphasis added.) None of the figures shows any baffle that is
not angled at an angle other than 90º.
It is true that claims with the non-restrictive term "baffles"
were allowed. However, the patent specification is intended to
support and inform the claims, and here it makes it unmistakably
clear that the invention involves baffles angled at other than 90°.
It is in the interests of a sound patent system and inventors,
as well as the public, to hold inventors to their disclosures.
The trial judge correctly perceived this need, albeit mistakenly
relying on the means-plus-function ground, and interpreted the claims
in accordance with the specification.
II. Misappropriation of Trade Secrets
The district court dismissed the plaintiff's claim of misappropriation
of trade secrets on a statute of limitations ground. We agree with
the court's decision on that basis. Federal courts apply the trade
secret law of the state in which they sit. See Water Techs. Corp.
v. Calco, Ltd., 850 F.2d 660, 670 (Fed. Cir. 1988); Sun Studs, Inc.
v. Applied Theory Assocs., Inc., 772 F.2d 1557, 1561 (Fed. Cir.
1985). The Colorado Uniform Trade Secrets Act ("CUTSA"),
Colo. Rev. Stat. §§ 7-74-101 to -110 (1998), applies to claims of
trade secret misappropriation brought under Colorado law, including
those in federal courts. Gates Rubber Co. v. Bando Chem. Indus.,
Ltd., 9 F.3d 823, 847 (10th Cir. 1993). Here, there is no dispute
between the parties that Colorado trade secret law controls. The
district court's interpretation of Colorado trade secret law is
a matter of law that we review de novo. See Salve Regina Coll.
v. Russell, 499 U.S. 225, 231 (1991).
Colorado state law provides a three-year statute of limitations
period for claims of trade secret misappropriation.
An action for misappropriation of a trade secret shall be brought
within three years after the misappropriation is discovered or by
the exercise of reasonable diligence should have been discovered.
For purposes of this section, a continuing misappropriation constitutes
a single claim.
Colo. Rev. Stat. § 7-74-107 (1998). The Colorado Supreme Court
has stated, with respect to actions in tort, that "[t]he statute
of limitations begins to run when the claimant has knowledge of
facts which would put a reasonable person on notice of the nature
and extent of an injury and that the injury was caused by the wrongful
conduct of another." Mastro v. Brodie, 682 P.2d 1162, 1168
(Colo. 1984). "[T]he cause of action does not accrue until
the plaintiff knows, or has reason to know, in the exercise of reasonable
diligence, all material facts essential to show elements of that
cause of action." City of Aurora v. Bechtel Corp., 599 F.2d
382, 389 (10th Cir. 1979).
Phillips argues that he did not "discover" AWH's alleged
misappropriation until August 1996 so that the three-year statute
of limitations did not expire before he filed the lawsuit. He asserts
that the 1991 and 1992 correspondence lacked particular details
of AWH's alleged use of Phillips' technology and that Phillips was
unable to discern the true nature of his injury. Phillips advances
the argument that accrual of the tort of trade secret misappropriation
under Colorado law occurs only when both the injury and its cause
are known. Because he did not know of AWH sales of the accused
technology until August 1996, Phillips alleges that he could not
determine recoverable damages and that his claim was incomplete.
Moreover, Phillips raises equitable tolling arguments based on
mental disability and AWH's assurances that it was not using Phillips'
technology.
In response, AWH highlights the strong, specific language Phillips
used in his 1991 and 1992 letters, all of which indicate that his
awareness of possible trade secret misappropriation had risen well
above mere suspicion. AWH argues that in his letters, Phillips
indicated with particularity the technology that he believed AWH
was misappropriating, citing the AWH sales brochure that Phillips
had in his possession. The appellees further assert that under
Colorado state law, mental disability must exist at the time such
right accrues for equitable tolling to operate. AWH states that
its assurances to Phillips amounted to mere denial of liability
and not wrongful conduct implicating the doctrine of equitable tolling.
We agree with the district court that Phillips' claim of trade
secret misappropriation is time-barred by Colorado state law. Phillips
possessed an AWH sales brochure that detailed the companies' alleged
use of his technology and prompted correspondence between the parties.
In his letters to AWH, Phillips referred to the brochure's contents,
identified specific technology that he believed was being used without
his permission, and detailed an explicit timeline of events leading
to AWH's alleged misappropriation. Phillips even used terms such
as "steal" and "misappropriated," indicating
that he was very much aware of AWH's actions, how they related to
his technology, and how they affected his own interests, financial
or otherwise. Phillips' possession of the AWH brochure and his
letters convincingly indicate that Phillips knew or should have
known facts sufficient to support his claim of misappropriation.
That Phillips was not aware of the particular use of his technology,
of AWH's specific sales, or of the exact monetary damage inflicted
is not of consequence. One does not need to know the specific damage
inflicted in order to bring a claim. See Colo. Rev. Stat. § 7-74-107
(1998); Gates Rubber Co., 9 F.3d at 847. As a result, we conclude
that Phillips' claim for trade secret misappropriation accrued prior
to the critical date, February 3, 1994-three years before the commencement
of suit in the district court, and hence out of time.
As for Phillips' equitable tolling arguments, we are not convinced
that his alleged mental disability warrants exercise of the doctrine
of equitable tolling because it did not exist when Phillips discovered
the alleged misappropriation. See Colo. Rev. Stat. § 13-81-103
(2002). Furthermore, courts interpreting Colorado law have held
that "[t]he mere denial of liability, which is what an assertion
of independent development amounts to in the face of a trade secret
misappropriation claim, is not 'wrongful conduct' which implicates
the doctrine of equitable tolling." Chasteen v. UNISIA JECS
Corp., 216 F.3d 1212, 1221 (10th Cir. 2000) (citing Dean Witter
Reynolds, Inc. v. Hartman, 911 P.2d 1094, 1096 (Colo. 1996)). We
therefore conclude that equitable tolling does not apply and that
Phillips' claim of trade secret misappropriation is barred by Colorado's
statute of limitations.
III. Cross-Appeal
AWH disputes several additional claim terms in its cross-appeal.
We dismiss the cross-appeal as improper because the district court
entered a judgment of noninfringement in favor of AWH. A party
has no right of cross-appeal from a decision in its favor. Lindheimer
v. Ill. Bell Tel. Co., 292 U.S. 151, 176 (1934). Similarly, a party
who prevails on noninfringement has no right to file a "conditional"
cross-appeal to introduce new arguments or challenge a claim construction,
but may simply assert alternative grounds in the record for affirming
the judgment. Bailey v. Dart Container Corp. of Mich., 292 F.3d
1360 (Fed. Cir. 2002); Datascope Corp. v. SMEC, Inc., 879 F.2d 820,
822 n.1 (Fed. Cir. 1989).
CONCLUSION
We have considered Phillips' remaining arguments and find them
unpersuasive. We therefore conclude that the district court properly
granted summary judgment in favor of AWH on Phillips' patent infringement
and trade secret misappropriation claims, and we accordingly affirm.
We dismiss AWH's cross appeal as improper and, in any event, moot.
AFFIRMED.
United States Court of Appeals for the Federal Circuit
03-1269, -1286
EDWARD H. PHILLIPS,
Plaintiff-Appellant,
v.
AWH CORPORATION,
HOPEMAN BROTHERS, INC., and LOFTON CORPORATION,
Defendants-Cross Appellants.
DYK, Circuit Judge, dissenting-in-part.
I respectfully dissent from the majority's affirmance of the
district court's judgment of non-infringement. The majority decision
effectively limits the claims to the preferred embodiment, contrary
to our recent decision in Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898 (Fed. Cir. 2004), and numerous other decisions of this
court. In doing so, the majority decision attempts to work a major
and unfortunate change in our recent claim construction jurisprudence.
The issue here is the meaning of the claim term "baffles,"
which appears in each of the asserted claims of the '798 patent.
I agree that "baffles" is not a means-plus-function term
because, as the majority notes, "the word 'baffle' is a sufficient
recitation of structure." Ante at 7. There is no dispute
as to the plain meaning of the term "baffles." The parties
have stipulated that "baffles" are a "means for obstructing,
impeding, or checking the flow of something." Phillips v.
AWH Corp., No. 97-MK-212, slip op. at 23 (D. Colo. Nov. 22, 2002);
see also Webster's Third New International Dictionary 162 (2002)
("Webster's") (defining baffles as "something for
deflecting, checking, or otherwise regulating flow"). Indeed,
the majority agrees that this is the "ordinary meaning."
Ante at 7.
My dispute is with the majority's imposition of an additional
structural limitation based upon the patentee's preferred embodiments
that limits baffles to structures "oriented at angles other
than 90º." Ante at 10. This is contrary to the plain meaning,
and there is no suggestion that the patentee, acting as his own
lexicographer, gave a special meaning to the term baffles. The
majority marshals three arguments in support of limiting the claims
to baffles oriented at angles other than 90º. None is convincing.
First, the majority concludes that baffles must be limited to
structures oriented at angles other than 90º because "the patentee
regarded his invention" as such, ante at 9, describing only
such baffles in the specification. It states that "baffles
angled at other than 90º is the only embodiment disclosed in the
patent; it is the invention." Ante at 10. We however have
"expressly rejected the contention that if a patent describes
only a single embodiment, the claims of the patent must be construed
as being limited to that embodiment." Liebel, 358 F.3d at
906.
Our precedent also makes clear that "this court interpret[s]
the pertinent claim language narrowly, not merely because the specification
d[oes] not describe a broader embodiment, but because the specification,
claim, or prosecution history ma[kes] clear that the invention is
limited to a particular structure." Liebel, 358 F.3d at 907-08.
As in Liebel, the specification here does "not suggest that
[baffles oriented at angles other than 90º] are an essential component
of the invention, nor is there any language . . . in the specification,
that disclaims the use of the invention in the absence of [baffles
oriented at angles other than 90º]." Id. at 908; see also
SunRace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1305 (Fed.
Cir. 2003). Nor is this a case like SciMed Life Systems, Inc.
v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337 (Fed. Cir.
2001), where the specification specifically disclaimed non-disclosed
embodiments by stating that the "structure defined above is
the basic . . . structure for all embodiments of the present invention
contemplated and disclosed herein." Id. at 1343 (quoting the
patents at issue). The specification of the '798 patent contains
no such language clearly limiting the claims to a specific structure.
Second, the majority contends that the baffles must be limited
to structures oriented at angles other than 90º in order to realize
the invention's purpose of providing panels that are impact or projectile
resistant. The theory for this departure from the broader plain
meaning is that "[b]affles directed at 90º cannot deflect projectiles
as described in the '798 patent," ante at 10, and projectile
deflection is critical because the "specification is rife with
references to impact resistance, especially against projectiles
such as bullets and bombs," ante at 8. The specification however
merely identifies impact resistance as one of several objectives
of the invention. The patent also identifies other objectives including
"high load bearing strength" using "thinner guage
[sic] steel panels," '798 patent, col. 3, ll.16-25, and "thermal
and acoustical isolation of two spaced walls," id. at col.
6, l.16. As we made clear in Liebel, "[t]he fact that a patent
asserts that an invention achieves several objectives does not require
that each of the claims be construed as limited to structures that
are capable of achieving all of the objectives." 358 F.3d
at 908; see also E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1370 (Fed. Cir. 2003). So too, "[a]bsent a clear disclaimer
of particular subject matter, the fact that the inventor may have
anticipated that the invention would be used in a particular way
does not mean that the scope of the invention is limited to that
context." Liebel, 358 F.3d at 909 (quoting Northrop Grumman
Corp. v. Intel Corp., 325 F.3d 1346, 1355 (Fed. Cir. 2003)) (alteration
in orginal). Here baffles that are oriented at 90º, and thus
excluded under the majority's construction, would still achieve
the load bearing and thermal-acoustical isolation objectives taught
in the specification. The identification of an objective that is
not met when the claim is given its ordinary meaning is not in itself
a disclaimer sufficient to narrow that ordinary meaning. This is
particularly so here where impact or projectile resistance is separately
identified as a claim limitation in claims 1-21, 23 and 24, thereby
suggesting that the baffles and impact resistance limitations are
separate.
Finally, the majority relies on the fact that "[b]affles
directed at 90º . . . in any event, are disclosed in the prior art,"
ante at 10, perhaps suggesting that the claim would be invalid if
given a broader meaning. But the fact that a feature of the invention
may have been described in the prior art hardly raises serious questions
of invalidity. See, e.g., Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1377 (Fed. Cir. 2003) ("[A]nticipation [occurs]
if a single prior art reference discloses each and every limitation
of the claimed invention." (emphasis added)). Even if there
were such questions, this also is no excuse to depart from the plain
meaning of the claims. The "axiom" that claims should
be construed to preserve validity is not an invitation to narrowly
construe unambiguous claim language contrary to its plain meaning.
See, e.g., Liebel, 385 F.3d at 911; Elekta Instrument S.A. v. O.U.R.
Scientific Int'l, Inc., 214 F.3d 1302, 1309 (Fed. Cir. 2000). Nor,
was there here an effort to distinguish the prior art on the basis
that prior art baffles were oriented at 90º angles. See SciMed,
242 F.3d at 1343.
Simply put, there is no reason to supplement the plain meaning
of the claim language with a limitation from the preferred embodiment.
By limiting "baffles" to structures "oriented at
angles other than 90º," ante at 10, the majority has misconstrued
not only the claims, but our precedent as well. Limiting the claims
to the preferred embodiment as the majority has done is quite inconsistent
with our cases which consistently reject the notion that the claims
are limited to the preferred embodiment. Liebel, 358 F.3d at 906,
see also, e.g., ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1091
(Fed. Cir. 2003); E-Pass, 343 F.3d at 1369; Apex Inc. v. Raritan
Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003); Teleflex,
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002).
II
Discarding the majority's approach of limiting the claims to
the preferred embodiment, the question remains as to the correct
construction of the claims. Since there is no argument here that
one of skill in the art would ascribe a specialized meaning to the
term baffles, and there has been no disclaimer in the specification
or prosecution history, the general purpose dictionary definition,
"something for deflecting, checking, or otherwise regulating
flow," Webster's at 162, applies. See Texas Digital Sys.,
Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203-04 (Fed. Cir. 2002);
see also, e.g., Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1367
(Fed. Cir. 2003); E-Pass Techs., 343 F.3d at 1367-68.
The district court's grant of summary judgment should be vacated
because it was based solely on the erroneous construction of baffles
and the patentee's concession that the accused product did not contain
baffles as so defined. I do not reach the district court's construction
of other claim terms or the question of whether summary judgment
of non-infringement could or should be granted on other grounds.
I agree with the majority opinion on the trade secret claim.
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