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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Panel Disagrees Over Application of Rambus v. Infineon

Markem-Imaje Corp. v. Zipher Ltd. (Fed. Cir. Sept. 9, 2011)

In this case, the patent at issue related to devices for transfer printing, a process where ink is carried by a ribbon that is moved into contact with the substrate to be printed, and a print head impresses upon the ribbon and causes the ink to transfer from the ribbon to the substrate.  The majority per curiam opinion reversed the district court’s claim construction and found that the claims did not generally require “some method of deriving a tension measurement.”  The defendant argued that the claim itself did not explicitly recite measuring tension, and the requirement set forth in the district court’s claim construction would “violate the mandate of Rambus Inc. v. Infineon Tech. AG that ‘the claims need not recite every component necessary to enable operation of a working device.’”  The majority agreed and explained that, while deriving a tension measurement may be required to make the claimed device operational, it was not proper for the district court to incorporate such a method into the claim construction, using an example of “[a] claim to an engine providing motive power to a car should not be construed to incorporate a limitation for an exhaust pipe, though an engine may not function without one.”

In dissent, Judge Newman disagreed with the majority’s interpretation of Rambus and explained that “[t]his court has no authority to enlarge the scope of the patent beyond what the patentee described as its invention, notwithstanding my colleagues’ curious analogy to a car and its tailpipe.”  She went on to find, relying on statements made in the specification regarding measuring tension, that “while the invention is flexible as to how tension is measured, and permits measurement through indirect methods, some method of measurement is contemplated and required, as found by the trial court.”