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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 Reverses Claim Construction That Excludes Preferred Embodiment

Accent Packaging, Inc. v. Leggett & Platt, Inc. (Fed. Cir. Feb. 4, 2013)

In this case, the Federal Circuit found the district court erred in construing the claim terms "each" and "a respective one" and reversed the district court's grant of summary judgment of non-infringement, finding instead that summary judgment of infringement was appropriate.  The patents-in-suit related to wire tier devices that are used to bale recyclables or sold waste for easier handling.

The claims at issue included the claim language "said operator assembly including a pivotal shaft assembly and elongated operator bodies, with each of the operator bodies being operably coupled with a respective one of said gripper, knotter, cutting element and cover so as to supply driving power from the single drive assembly thereto."  The district court concluded that "[t]he word each, in this patent, refers to one of four arms" and that "[a]n ordinary reading of the language, therefore, assigns the machine's four arms a single function."  As the accused device had only two arms, the district court granted summary judgment of non-infringement.

On appeal, the plaintiff argued that the claims were not limited to devices with four arms and the claims also did not require that each arm be coupled to one and one only operator element, pointing to the preferred embodiment disclosed in the specification which had only two arms that were coupled to multiple operator elements.  The defendant argued that because the claims recited four separate and distinct operator elements, the claims required at least four arms so that "each" of the arms is coupled to "a respective one" of the four claimed operator elements.

The Federal Circuit agreed with the plaintiff that the district court erred in its claim construction, relying heavily on the preferred embodiment in the specification and the fact that "[w]e have held that 'a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.'", quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).  While the defendant's construction hinged on requiring each arm to correspond to one and only one operator element, the preferred embodiment disclosed arms that were coupled to one or more operator elements.  The Court further found that nothing in the claim language itself required that each arm be coupled to one and only one operator element.

Therefore, the Federal Circuit reversed the district court's grant of summary judgment of non-infringement.  Further, as the defendant did not contest the plaintiff's assertion that, without the limitation that required each arm to be coupled to one and only one operator element, the accused device infringed the asserted claims, the Federal Circuit remanded to the district court with instructions to enter summary judgment of infringement in favor of the plaintiff on those claims.