Federal Circuit Broadens Claim Term “Different Characteristics” To Include Different Colors of the Same Material

In Sorensen v. International Trade Commission (ITC), Sorensen alleged that Mercedes-Benz imports violated its patented injection molded tail lights and requested that the ITC institute an investigation.  However, after the investigation, the ITC found no infringement based on its interpretation of the claims and issued summary judgment for defendants that no infringement occurred.  The Federal Circuit vacated the summary judgment.

The patent being asserted is directed to a multi-layer injection molding with at least two materials having “different characteristics.”  The Commission’s administrative judge found that the term “different characteristics” refers to plastics that have different molecular properties, but could not refer to different colors of the same material.  Mercedes’ accused product is an automobile tail light lens that is a lamination of two plastics that are different only in color.  Hence, under this claim construction, the administrative judge found that this accused product did not satisfy the “different characteristics” limitation.

On appeal, the Federal Circuit reversed because the claim did not exclude color as a basis for differing characteristics.  Moreover, the specification did not so limit the term, and there was no disavowal of scope in the prosecution history.  In fact, according to the Federal Circuit, since the specification suggests that the materials may be “the same,” the “different characteristics” limitation would require some difference other than molecular structure, such as color.  Similarly, the specification also allows for the materials to be different in transparency, which is not necessarily related to molecular structure and lends credence to the idea that color differences are “different characteristics.”   As such, the Federal Circuit held that narrow interpretation adopted by the administrative judge was improper and vacated the summary judgment.

A copy of this case can be found at Sorensen, et al. v. International Trade Commission, et al., 427 F.3d 1375 (Fed. Cir. 2005).

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