In Baldwin Graphics v. Siebert, 85 USPQ2d 1503 (Fed. Cir. 2008), the Federal Circuit affirmed-in-part, reversed-in-part, and remanded a District Court decision of granting summary judgment of non-infringement of U.S. Patent No. Re. 35,976 (the Reissue patent) and U.S. Patent No. 5,974,976 (the ’976 patent) based on the District Court’s misinterpretation of claim language.
The claimed invention of the Reissue patent and the ’976 patent is for cleaning a cylinder of a printing press using strips of cleaning fabric and methods for making those systems. Baldwin sued Siebert, asserting that Siebert’s packaged fabric rolls infringed claim 32 of the Reissue patent and claims 1, 7, 9, 12, 14, 23, and 25 of the ’976 patent. The District Court construed “a pre-soaked fabric roll” to mean “a single pre-soaked fabric roll.” In concluding that “a” means “one” in this context, the District Court largely relied on the subsequent use of “said fabric roll” as suggesting a singular fabric roll. Also, according to the District Court, the statement in the Reissue patent’s specification that the sleeve is “disposed around and in intimate contact with the fabric roll,” evinced an intent to limit “a pre-soaked fabric roll” to “one pre-soaked fabric roll” because this condition “would not be fully possible with more than one roll in the sleeve.”
Moreover, claims 1 and 14 of the ’976 patent contain further disputed limitations: “reduced air content cleaning fabric” (claim 1) and “reducing air content of a strip of cleaning fabric” (claim 14). For both claims, the District Court interpreted “reduced air content cleaning fabric” to mean “a fabric whose air content has been reduced by some method prior to being wound on a roll.” Reconsideration Order, slip op. at 15.
Indefinite Articles Presumed Not Limited to Single Item
On appeal, the Federal Circuit rejected the District Court’s interpretation of the articles “a” and “an” as being limited to a single item. The Federal Circuit stated that “[t]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). Only in circumstances where a patentee has explicitly limited the meaning of “a” or “an” to mean “one” would the term’s meaning be thus limited. The Federal Circuit did not find that the specification or prosecution history required a more narrow interpretation of the indefinite articles “a” or “an,” and the court noted that the subsequent use of the term “said” also does not require such a narrow interpretation. Accordingly, the Federal Circuit reversed the District Court’s claim construction for the Reissue patent.
Method of Manufacture Does Not Limit Apparatus Claim Limitation
The Federal Circuit further held that the District Court erred in limiting “reduced air content cleaning fabric” to “a fabric whose air content has been reduced by some method prior to being wound on a roll.” Claims 1 and 14 are independent claims and further claims of different classifications: claim 1 is an apparatus claim and claim 14 is a method claim. The Federal Circuit cautioned that courts must generally take care to avoid reading process limitations into an apparatus claim, see AFG Industries, Inc. v. Cardinal IG Co., 375 F.3d 1367, 1372-1373 (Fed. Cir. 2004). This requirement is because the process by which a product is made is irrelevant to the question of whether that product infringes a pure apparatus claim. See Vanguard Products Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2001) (“A novel product that meets the criteria of patentability is not limited to the process by which [it] is was made.”). Thus, the process by which the fabric is made, for purposes of claim 1, is not relevant except to the extent that the process structurally alters the resulting fabric.
Recited Order of Operations Does Not Limit Method to the Same Order Of Operations For Purposes of Infringement
Additionally, in rejecting the District Court’s claim construction of method claim 14, the Federal Circuit noted that the general rule is that the recited order of the method steps is not a limitation for purposes of infringement “unless the claim explicitly or implicitly requires a specific order.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001). As such, infringement can occur even where a different order of operations is performed. In reviewing the specification and prosecution history, the Federal Circuit noted that there was no requirement that, prior to winding, the reducing air content is performed. Moreover, the Federal Circuit rejected the District Court’s use of depending claims to imply an order of the operations as merely an attempt to “bootstrap a temporal restraint on the occurrence of a winding step relative to air content reduction, even though winding is not even explicitly recited in either claim 1 or claim 14.” Instead, such depending claims should have broadened the independent claims instead of narrowing them as was done by the District Court. As such, the Federal Circuit rejected the District Court’s imposition of an order of operations requirement on method claim 14.