Inherent Anticipation of Patent Claims Found By Federal Circuit in Overturning Infringement Judgment

Case: Prima Tek II v. Polypap, No. 04-1411, 04-1421 (Fed. Cir. 6/22/05).

The One Sentence Summary: The panel found anticipation of a flower holding device patent as a matter of law and reversed the district court's judgment of patent validity and infringement.

Federal Circuit Holdings:

• Invalid patents impose costs on competitors, and the patent system depends upon the PTO to screen invalid patents.
• "When construing claims, we look first 'to the words of the claims themselves . . . to define the scope of the patented invention.' Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). '[W]ords in a claim are generally given their ordinary and customary meaning' unless some 'special definition of the term is clearly stated in the patent specification or file history.' Id. We may consult with dictionaries 'in determining the ordinary and customary meanings of claim terms.' Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002)." Slip Opinion at 7.
• The district court erred in limiting the claim to require a predetermined shape for the flower holder by importing limitations from the specification's preferred embodiment. "[L]imitations cannot be imported from the specification into the claims. E.g., Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). '[T]he claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.' Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotations and citation omitted)." Slip Opinion at 8-9.
• The prior art reference inherently anticipated the claimed invention. "'[A] prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it." MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). Inherent anticipation does not require an appreciation of the inherent limitation by those of skill in the art before the critical date of the patents in issue. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)." The crimping limitation of the claimed invention was disclosed by a figure in the prior art showing that crimping occurred.