address converting the horizontal force applied from the paving stones into a vertical force down into the ground." (Reissue Patent, Col. 2, lns. 43-45). Finally, the '550 Reissue Patent identifies a need for "a lightweight edge material which uses the ground around it to provide increased strength for preventing horizontal shifting of paving stones" ('550 Reissue Patent, Col. 3, lns. 30-33) and suggests that this invention satisfies that need.
A. Standard of Law - Claim Construction
A patent is a government grant of rights and its claims provide the metes and bounds of those rights which allow the patentee to exclude others from making, using, or selling the invention as claimed. 35 U.S.C. § 154; see also Corning Glass Works v. Sumitomo Elec. USA, Inc., 868 F.2d 1251 (Fed. Cir. 1989). There are two types of claims in a patent: Independent claims and dependent claims. An independent claim stands on its own and does not refer to any other claim in the patent; thus, it must be read separately from the other claims when determining its scope. A dependent claim includes a reference to at least one other claim in the patent and must be interpreted to encompass each element of as well as any additional elements. However, the additional limitations of a dependent claim must not be read or implied into an independent claim if said independent claim does not contain the same limitation. See D.M.I., Inc. v. Deere & Co., 755 F.2d 1570 (Fed. Cir. 1985). In other words, "the dependent claim tail cannot wag the independent claim dog." North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993).
To establish infringement, a plaintiff must prove that every limitation in a given patent claim is found in the accused product exactly or by its substantial equivalent. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). Thus, an infringement analysis entails two steps. First, the meaning and scope of the claims in issue must be determined by a study of all relevant patent documents and evidence. Second, these claims must be read on (or compared) to the device accused of infringing. Markman, 52 F.3d at 976; Autogiro Co. of Am. v. U.S., 181 Ct. Cl. 55, 384 F.2d 391, 401 (Ct. Cl. 1967). In light of the recent Supreme Court affirmance of Markman, the first step is unquestionably an issue of law for the court to decide, while the second step is a question of fact. Markman, 116 S. Ct. at 1393. In this Report and Recommendation, this court confines itself solely to the issue of law regarding construction of certain claims at issue, and will not address issues of patent validity or infringement.
In construing a claim, the court essentially defines the federal legal rights created by the patent document, and must neither narrow nor broaden the scope of a claim to give the patentee something different than what he has set forth. E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.), cert. denied, 488 U.S. 986, 102 L. Ed. 2d 572, 109 S. Ct. 542 (1988). Claim interpretation requires consideration of the claims, the specification, and the prosecution history as well as testimony from experts or those skilled in the art as to their interpretations. Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed. Cir. 1991).
A patent's specification (the written description, the drawings, and other claims in the patent) must describe the invention in such a way as to enable one of ordinary skill in the art to make and use the invention. Markman, 52 F.3d at 979. The specification must conclude with "one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112. Claims are, therefore, part of the specification and must be read and interpreted as such. Ultimately, however, the claim measures the invention and the fundamental difference between a specification and a claim is that "claims are infringed, not specifications." SRI Intern. v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985). Consequently, not everything in a specification must be read into a claim, and the court cannot read into a claim a limitation that appears in the specification, but not in the claim. Minnesota Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1566 (Fed. Cir. 1992); SRI Intern. 775 F.2d at 1121. In other words, simply because "claims are interpreted in light of the specification does not mean that everything expressed in the specification must be read into all the claims." Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983). In addition, references to a preferred embodiment, such as those in the specifications or drawings,
are not claim limitations. Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1988), cert. denied, 490 U.S. 1068, 104 L. Ed. 2d 634, 109 S. Ct. 2069 (1989).
Most importantly for claim interpretation purposes, the description in the specification can act as a dictionary explaining the invention and defining terms critical to the claims. Markman, 52 F.3d at 979. For this reason, the specification has generally been considered "the primary basis for construing the claims" of a patent. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985). While the words of a claim generally mean what one skilled in the art would ordinarily expect them to mean; sometimes a claim's words may not have the ordinary meaning since a "patentee is free to be his own lexicographer." Markman, 52 F.3d at 930, citing Autogiro, 384 F.2d at 397. However, any special definitions must be set forth in the specification, and words of the claim should be given their ordinary and accustomed meaning, unless it appears that the inventor used them differently. ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1579 (Fed. Cir. 1988).
Another source relevant to claim construction is the prosecution history as detailed in the file wrapper. The prosecution history contains the entire record of proceedings in the Patent and Trademark Office ("PTO") including express representations made by or on behalf of the applicant to induce the granting of the patent. Often among those representations are amendments and arguments made to convince the patent officer that the claimed invention complies with the statutory requirements of novelty, utility and nonobviousness. The prosecution history, therefore, can provide a record of the applicant's disclaimed or disavowed interpretations which can be excluded by the court in any subsequent claim interpretation. See Standard Oil Co., 774 F.2d at 452. However, just as with the specification, the prosecution history should be used to understand the meaning of the claim language, but cannot alter the limitations contained in the claims. Markman, 52 F.3d at 980.
Extrinsic evidence provides a final source of information helpful for claim interpretation. Extrinsic evidence encompasses all material external to the patent and prosecution history, including expert testimony. Such evidence cannot vary or contradict the terms of the claims but can help to explain scientific principles, the meanings of technical terms and terms of art which may appear in the patent or prosecution history. In other words, while expert testimony can provide evidence as to the meaning of claim language from which the Court can then determine claim construction, experts cannot provide testimony as to the actual construction of the claim itself. See Markman, 52 F.3d at 980, 981.
B. Claims at Issue
In this case, the '550 Reissue Patent claims in issue include independent Claim 115 with dependent Claims 116, 117, 128, 130, 139 and independent Claim 144 with dependent Claims 145, 146, 147, 150, 157, 158, 159, 164, 165 and 167.
Claim 115 is an independent claim in '550 Reissue Patent which provides:
Support apparatus for restraining a hard surface means in a given position comprising: