Colored Plastic May Be Enough for Mercedes-Benz to Infringe Patent

Case: Sorensen v. International Trade Commission and Mercedes-Benz USA, No. 05-1020 (Fed Cir. 10/31/05)

The One Sentence Summary: The International Trade Commission erred in interpreting a claim for molding of plastics with "different characteristics" to require that the plastics differ in some aspect other than color.


What They Were Fighting About: Sorenson held a patent for injection molding of plastics in two steps. The second step called for injecting a plastic with "different characteristics" than the first plastic. Sorenson had alleged that automobile tail lights imported by Mercedes Benz infringed. After an investigation under 19 U.S.C. § 1337, the International Trade Commission held that Mercedes-Benz did not infringe in that the second plastic used by Mercedes-Benz differed only in color from the first plastic, and that the claim language "different characteristics" required a difference in some characteristic other than color.

Federal Circuit Holdings:

• The Federal Circuit reviews claim interpretation by the ITC without deference. Commission erred in its interpretation of the claim term "different characteristics."
• The claim language itself, "different characteristics," and would allow any difference including color to satisfy it.
• The context of the invention, requiring the molding of two different pieces of plastic, would allow any difference between the plastics, including color.
• The specification supported a broad interpretation of "different characteristics" because it said that the first and second pieces could be of the same material, and it said that differences in transparency (which like color may not require differences in molecular structure) could be different characteristics.
• The prosecution history did not reflect a clear and unambiguous disavowal of claim scope.
• The ITC should reconsider its infringement finding in light of this decision.