United States Court of Appeals
for the Federal Circuit
__________________________
MARKEM-IMAJE CORPORATION,
Plaintiff-Appellee,
v.
ZIPHER LTD. AND VIDEOJET TECHNOLOGIES,
INC.,
Defendants-Appellants.
__________________________
2010-1305
__________________________
Appeal from the United States District Court for the
District of New Hampshire in Case No. 07-CV-0006,
Judge Paul J. Barbadoro.
___________________________
Decided: September 9, 2011
___________________________
KURT L. GLITZENSTEIN, Fish & Richardson, P.C., of
Boston, Massachusetts, argued for plaintiff-appellee.
With him on the brief was MICHAEL CLARK LYNN.
KARA F. STOLL, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
defendants-appellants. With her on the brief were J.
MICHAEL JAKES and SUSAN Y. TULL. Of counsel was
JOYCE CRAIG.
MARKEM-IMAJE CORP v. ZIPHER LTD 2
__________________________
Before NEWMAN, CLEVENGER, AND LINN, Circuit Judges.
Opinion for the court filed PER CURIAM. Dissenting
opinion filed by Circuit Judge NEWMAN.
PER CURIAM.
Markem-Imaje Corp. sued Zipher Ltd. and Videojet
Technologies, Inc. (together “Zipher”) in the United States
District Court for the District of New Hampshire, request-
ing a declaratory judgment that Zipher’s U.S. Patent No.
7,150,572 (the ’572 patent) is not infringed by Markem.
The district court granted summary judgment of non-
infringement, 1 and Zipher appeals. We conclude that the
district court erred in construing a critical claim term;
thus the summary judgment of non-infringement is
vacated, and the case is remanded for further proceedings
on the corrected claim construction.
THE PATENTED INVENTION
The ’572 patent, entitled “Tape Drive and Printing
Apparatus,” describes and claims a device for transfer
printing. In transfer printing, ink is carried by a ribbon
that is moved into contact with the substrate to be
printed, and a print head impresses upon the ribbon and
causes the ink to transfer from the ribbon to the sub-
strate. In thermal transfer printing, the print head is
heated, facilitating transfer and adherence of the ink to
the substrate. Thermal transfer printers are used for
1 Markem-Imaje Corp. v. Zipher Ltd., No. 07-CV-
0006, 2010 WL 114947 (D.N.H. Jan. 12, 2010) (final
judgment); 2009 WL 2855011 (D.N.H. Sept. 1, 2009)
(claim construction reconsideration); 2008 WL 4116666
(D.N.H. Aug. 28, 2008) (claim construction).
3 MARKEM-IMAJE CORP v. ZIPHER LTD
such tasks as printing on plastic packaging and other
surfaces to which ink does not readily adhere. In systems
where the thermal printing is part of a mechanized and
automated process, the printing step must keep pace with
the production line, with minimal down time. The ’572
patent is directed to a heat transfer printing apparatus
that provides increased control over the acceleration,
deceleration, speed, and positional accuracy of the print-
ing operation, while minimizing waste of unused portions
of the ink ribbon.
In transfer printers in general, the ink ribbon is
wound on two spools, one spool for supplying the ribbon
for positioning on the substrate, and the other spool for
taking up the ribbon after use. The ’572 patent explains
that prior art transfer printers
rely upon a wide range of different approaches to
the problem of how to drive the ribbon spools.
Some rely upon stepper motors, others on DC mo-
tors to directly or indirectly drive the spools.
Generally the known arrangements drive only the
spool onto which ribbon is taken up (the take-up
spool) and rely upon some form of “slipping
clutch” arrangement on the spool from which rib-
bon is drawn (the supply spool) to provide a resis-
tive force so as to ensure that the ribbon is
maintained in tension during the printing and
ribbon winding processes and to prevent ribbon
overrun when the ribbon is brought to rest.
’572 patent col.1 ll.33-44. The patent states that “It will
be appreciated that maintaining adequate tension is an
essential requirement for proper functioning of the
printer.” Id. col.1 ll.44-46. The ’572 patent is directed to
MARKEM-IMAJE CORP v. ZIPHER LTD 4
an improvement in controlling the movement and tension
of the ribbon.
Figure 1 of the ’572 patent shows the two ribbon
spools 7 and 11, with ribbon 6 extending between them
and passing under the print head at 4:
The patent specification explains the problems with the
“slipping clutch” that has been used to provide ribbon
tension in prior art printers. A slipping clutch provides a
constant resistive torque to the supply spool, and the
constant torque causes the tension in the ribbon to vary
as the supply spool outer diameter changes with the draw
of ribbon. The patent states that such dynamically chang-
ing ribbon tension requires tight tolerances in clutch
force, which is difficult to maintain because wear in the
clutch tends to change the resistive force of the clutch.
Too much clutch force can break the ribbon or require
more power to drive the ribbon, and too little clutch force
5 MARKEM-IMAJE CORP v. ZIPHER LTD
can cause the supply spool to overrun. The patent states:
“Given these constraints, typical printer designs have
compromised performance by way of limiting the rate of
acceleration, the rate of deceleration, and the maximum
speed capability of the ribbon transport system. Overall
printer performance has as a result been compromised.”
Id. col.1 l.66–col.2 l.4.
Examples of conventional clutch or drag-type drive
mechanisms are discussed in the ’572 patent, including
mechanisms in which, instead of a slipping clutch, a
motor connected to the supply spool supplies a resistive
force to provide ribbon tension. In another prior appara-
tus, a motor coupled to the supply spool “act[s] as a feed-
back transducer to enable appropriate control of the
motor driving the take-up spool to take account of chang-
ing spool diameters while maintaining a constant ribbon
speed.” Id. col.2 ll.39-42. The ’572 patent distinguishes
this prior apparatus from what the ’572 patent calls the
“push-pull” mechanism of the ’572 apparatus, explaining
that
although this [prior art] arrangement does avoid
the need for example of a capstan drive interposed
between the two spools so as to achieve reliable
ribbon delivery speeds, only one of the motors is
driven to deliver torque to assist ribbon transport.
There is no suggestion that the apparatus can
operate in push-pull mode, that is the motor driv-
ing the take-up spool operating to pull the ribbon
and the motor driving the supply spool operating
to push the associated spool in a direction which
assists tape transport.
Id. col.2 ll.43-51.
MARKEM-IMAJE CORP v. ZIPHER LTD 6
In accordance with the “push-pull” mode of the ’572
patent, both the take-up spool and the supply spool are
driven to particular angular positions by stepper motors
that receive commands from a microcontroller. The take-
up spool rotates and takes up a given length of ribbon per
rotation, while the supply spool is rotated to feed out the
same length of ribbon, independent of the constantly
changing spool diameter. Such an arrangement is not
provided in the prior devices, and is described as solving
various problems encountered with prior devices.
As described in the ’572 patent, stepper motors rotate
by selectively energizing electromagnets around the
outside of the motor, referred to as the “stator,” to interact
with permanent magnets or electromagnets on the shaft
or “rotor” of the motor. Id. col.20 ll.38-41. Unlike DC
(direct current) motors, which are analog devices that
simply rotate when power is supplied, stepper motors
have discrete angular positions or “steps” and can be
forced or driven to stay in particular step positions.
Zipher’s expert witness, Professor Kuc, explained that an
advantage of a stepper motor is that “when it’s still, it’s
got a holding torque to keep the ribbon in place.” Hearing
Tr. 40:21-23 (J.A. 340).
The holding torque results from the electromagnetic
attraction between poles of the rotor and poles of the
stator in an energized stepper motor at rest. When an
external torque (resulting from tension in the print rib-
bon) is applied to the spools, these electromagnetic forces
create an opposing torque to keep the motor in its current
angular position, thereby maintaining tension in the print
ribbon. If the motor’s maximum holding torque is ex-
ceeded by the external torque, the motor shaft will rotate;
thus “holding torque” also specifies the minimum amount
of external torque needed to rotate the shaft of a stepper
7 MARKEM-IMAJE CORP v. ZIPHER LTD
motor commanded to hold steady in its current position.
Markem’s expert witness, Peter Landers, agreed with
Zipher’s expert that when power is applied to a stepper
motor it is held in position so that even when the spool of
the printer is not rotating it will “hold the [ribbon] tension
to the level it was set before.” Hearing Tr. 21:6-23:1 (J.A.
321-23).
The ’572 patent describes optically monitoring the ra-
dii of the spools and using the data “to calculate the step
rate and the number of steps required by each motor to
drive the spools in an appropriate manner so as to feed
the ribbon a predetermined distance.” Col.20 ll.25-28.
The patent explains that “[t]ension in the ribbon between
the two spools must however be closely controlled to avoid
the tension becoming too high (resulting in over tighten-
ing of the ribbon on the spools or even ribbon breakage) or
the tension becoming too low (resulting in loss of posi-
tional control as a result of the ribbon becoming slack).”
Id. col.19 ll.32-38. The ’572 patent describes its method of
estimating ribbon tension (t), and explains how tension is
maintained within predetermined limits:
If the derived value of t is too high (above a prede-
termined limit), then a small step adjustment can
be made to either or both of the motors to add a
short section of ribbon to the length of ribbon be-
tween the spools. If the derived value of t is too
low (below a different predetermined limit), then
a short section of ribbon can be removed from the
length of ribbon between the spools. . . .
[M]athematical processing results in a “correc-
tion” amount of ribbon that needs to be added to
or removed from the ribbon path between the
spools during the next ribbon feed. This addition
MARKEM-IMAJE CORP v. ZIPHER LTD 8
or removal of ribbon maintains ribbon tension
within acceptable limits.
Id. col.22 ll.16-42. Claim 1, the broadest claim of the ’572
patent, is directed to a tape drive that corrects tension
divergences from the predetermined limit in this manner:
1. A tape drive comprising:
two motors, at least one of which is a stepper
motor;
two tape spool supports on which spools of
tape are mounted, each spool being drive-
able by a respective one of said motors;
a controller adapted to control energization of
said two motors such that tape is trans-
ported in at least one direction between
spools of tape mounted on the spool sup-
ports;
wherein the controller energizes both said
motors to drive the spools in a tape trans-
port direction, and
said controller calculates a length of tape to
be added to or subtracted from tape ex-
tending between said spools in order to
maintain tension in said tape between
predetermined limit values and controls
said motors to drive the spools to add or
subtract the calculated length of tape to or
from the tape extending between said
spools.
Following a claim construction hearing, the district court
construed “driveable” and “drive” to mean “rotateable”
and “rotate,” as proposed by Markem, rejecting Zipher’s
broader construction. Markem, 2008 WL 4116666, at *11.
The district court explained in its reconsideration opinion
that the use of the plural word “spools” in the claim clause
9 MARKEM-IMAJE CORP v. ZIPHER LTD
“to drive the spools to add or subtract the calculated
length of tape” means that both spools must rotate.
Markem, 2009 WL 2855011, at *1. The court further
explained that both spools must rotate to add or subtract
a single calculated length of tape. Markem-Imaje, 2010
WL 114947, at *1.
The operation of Markem’s accused devices was not
disputed, as the district court explained:
Although Markem’s tape drives rotate both spools
during the tape tension adjustment process, only
a single spool is rotated to achieve each adjust-
ment. If tape tension is too low, the take-up spool
is rotated to decrease the length of tape between
the spools and if tape tension is too high, the sup-
ply spool is rotated to increase the length of tape
between the spools.
Id. Based on the district court’s ruling that the term
“drive” in the ’572 claims requires that both spools are
rotated together to adjust the tape, the court granted
summary judgment of non-infringement. Zipher appeals,
stating that the judgment was based on an erroneous
claim construction.
DISCUSSION
Claim construction receives plenary review on appeal.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456
(Fed. Cir. 1998) (en banc). The grant of summary judg-
ment also receives plenary review.
MARKEM-IMAJE CORP v. ZIPHER LTD 10
I
Zipher argues that the district court erred in limiting
the claim phrase “drive the spools” to mean “rotate the
spools.” Zipher argues that “drive” in this phrase has the
inclusive meaning of not only rotate but also “hold steady
in a commanded position.” The district court acknowl-
edged that the ordinary meaning of “drive” can be broad
enough to encompass not only the rotation of the spools
but also application of a holding torque that prevents the
spool from rotating. Markem, 2008 WL 4116666, at *3 &
n.4. The district court observed that “[m]ost of the refer-
ences to driving the spools in the specification could
accommodate either proposed construction;” that is,
“drive” could mean applying only rotational torque, or it
could also include application of a holding torque. Id. at
*6. However, the court found that other usages in the
specification support limiting “drive” to mean only the
narrower “rotate” and concluded that “when the specifica-
tion uses ‘drive’ to refer to the spools, it supports
Markem’s narrower construction of rotating the spools
rather than merely controlling them.” Id. at *7.
The district court reasoned that giving “drive” a
meaning broader than “rotation” in the final clause of the
claim (the tension control clause) would be contradictory
to the meaning of “drive” in the tape transport clause,
which states that “the controller energizes both said
motors to drive the spools in a tape transport direction.”
Markem states that Zipher conceded that “drive the
spools in a tape transport direction” means that both
spools are rotated in the tape transport direction.
Markem stresses that “claim terms are normally used
consistently throughout the patent,” Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc), and
that “a claim term should be construed consistently with
11 MARKEM-IMAJE CORP v. ZIPHER LTD
its appearance in other places in the same claim or in
other claims of the same patent.” Id. (quoting Rexnord
Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir.
2001)). Thus, according to Markem, “drive” requires that
the spool “rotate,” for example in the claim clause “con-
trols said motors to drive the spools to add or subtract the
calculated length of tape.” Zipher argues that this con-
struction would exclude the holding torque function that
is necessary to accomplish the tension correction de-
scribed in the specification, see ’572 patent col.22 ll.17-19
(stating that if tension is too high “a small step adjust-
ment can be made to either or both of the motors to add a
short section of ribbon”).
The district court determined that because the claim
clause “controls said motors to drive the spools” already
used the word “control,” the patentee could not have
intended “control” and “drive” to mean the same thing.
The court declined to view the claim clause “each spool
being driveable by a respective one of said motors” to
include driving to control tape movement or torque. The
district court pointed to a passage in the specification
which states that prior art devices “drive only the spool
onto which ribbon is taken up,” ’572 patent col.1 ll.37-38,
suggesting that a supply spool controlled by a slipping
clutch is not driven. The district court concluded that
“drive” cannot mean “apply torque” or else the specifica-
tion would not have stated that “only” the supply spool is
driven. See Markem, 2008 WL 4116666, at *6. Thus the
court concluded that the patentee intended a narrow
interpretation of “drive” in the claim, excluding the role of
applying torque to a spool to hold it in place.
Zipher argues that the term “drive” has a meaning
similar to that of “control,” and is not limited to rotation
motion. We agree that “drive” need not be narrowly
MARKEM-IMAJE CORP v. ZIPHER LTD 12
construed merely because a broader construction would
make it similar to the word “control” that is also used in
the claim. Nothing in the specification or the overall
invention as presented in the claim and as argued to the
patent examiner requires the narrow construction.
The district court also cited a passage where “the
specification describes a circumstance in which the take-
up motor is energized to rotate and the supply motor is
de-energized.” Id. The ’572 patent states that
if motor 92 is pulling, the drive circuit 108 for that
motor is enabled and therefore the rotation angle
for the spool being driven (94) is known. The
drive circuit for the motor being pulled (93) is dis-
abled (line 104 low). Thus motor 93 acts as a gen-
erator and a back-emf is generated across each of
the motor windings 97 to 100.
’572 patent col.23 ll.35-40. The court concluded that “the
fact that only the take-up spool is described as being
‘driven’ suggests that driving a spool means actively
rotating it, not passively or indirectly controlling its
motion.” Markem, 2008 WL 416666 at *6. However, the
cited passage in the specification does not limit “driving”
to rotation, or negate the substance of the invention,
which requires that separate motors control the move-
ment of the spools as appropriate to provide torque and
tension. All that the cited passage suggests is that a de-
energized motor that does not provide drag is not driving
a spool. The specification does not suggest that an ener-
gized motor actively applying torque to either rotate a
spool or hold it steady does not “drive” the spool.
Zipher points out that the motor functions in the
specification “include[] rotating, holding steady, stopping,
13 MARKEM-IMAJE CORP v. ZIPHER LTD
accelerating, decelerating, and all the other drive func-
tions the motors perform,” Zipher Br. 44. The term
“drive” is used throughout the specification in connection
with the motor control of the spools. It is not inconsistent
for “drive the spools in a tape transport direction” to mean
“apply torque to cause rotation,” and for “drive the spools”
to mean “apply torque to the spools.” The district court
acknowledged that “drive” can include the application of
torque, and the specification uses “drive” to encompass
both rotation and torque applied to the spools. The speci-
fication does not support the district court’s conclusion
that to “drive” the spools means only to provide rotational
torque.
Both parties argue that the prosecution history favors
their position. The district court concluded that the
prosecution history “does not cut strongly in either direc-
tion.” Markem, 2008 WL 4116666, at *11. The district
court discussed that the claim that became claim 1 of the
patent (claim 68 of the application) was initially depend-
ent on claims 64 and 65 of the application, which recited
that the controller energized the motors “so as to push-
pull drive the spools in a tape transport direction.” Id. at
*8 & n.8. Claims 64 and 65 were rejected during prosecu-
tion as anticipated by U.S. Patent No. 5,366,303 (“Bar-
rus”). In traversing this rejection, the applicant stated:
In contrast to claim 64, Barrus et al energize one
motor and de-energize the other motor for a pull-
drag drive operation. . . . The push-pull limitation
requires the controller to energize both motors to
drive the spools. It is clear that in the configura-
tion of Barrus et al the controller does not ener-
gize both motors to push-pull drive the spools of
tape.
MARKEM-IMAJE CORP v. ZIPHER LTD 14
Appl. No. 10/380,182, Amendment dated July 6, 2006, at
11 (J.A. 995). The examiner had found that claim 68
contained allowable subject matter because the prior art
did not teach a tape drive that maintains tape tension
“between upper and lower limit values and then controls
the motors to add or subtract the calculated length of tape
to the tape extending between the spools.”
The applicant then rewrote claim 68 in independent
form with some modifications including deletion of the
“push-pull” term, and the examiner added an amendment
in which “controls said motors to add or subtract the
calculated length of tape” was changed to “controls said
motors to drive the spools to add or subtract the calcu-
lated length of tape.” The examiner’s Summary states
that the added language “more clearly defines the scope of
claim 68.” Appl. No. 10/380,182, Examiner’s Interview
Summary (Sept. 7, 2006) (J.A. 1019). We discern no
indication that the added phrase “to drive the spools” in
the examiner’s amendment was intended or understood to
limit “drive” to “rotate,” for that was not an issue of
examination. Rather, Zipher had distinguished Barrus as
regulating tension by varying drag applied by a motor
acting as a generator, and the examiner’s amendment
reflects that distinction.
The examiner’s amendment accords with the ’572 pat-
ent’s requirement that the motors apply torque to the
spools, whether the torque causes rotation or resists it.
This active energization of the ’572 patent’s motors is
distinct from Barrus, where passive resistive torque is
created by lowering the resistance in the output circuit of
a motor acting as a generator. See Barrus col.4 ll.5-15.
The prosecution history distinguishes the resistance drag
of the second spool as in Barrus, and requires that “to
drive the spools” includes both rotation torque and hold-
15 MARKEM-IMAJE CORP v. ZIPHER LTD
ing torque. The district court’s construction that “drive”
requires that the supply spool must always rotate to
control the tension is incorrect.
II
Zipher also appeals the district court’s construction
that the claims require “some method of deriving a ten-
sion measurement,” Markem, 2008 WL 4116666, at *12.
Markem had asked the district court to hold that “using a
contactless means of tension measurement that occurs
during the rotation of both motors is a necessary and
inherent aspect of such measurement because the specifi-
cation does not describe any other method of such meas-
urement.” Id. The district court declined this request,
but stated that “some method of deriving a tension meas-
urement, whether directly or indirectly, is a necessary
predicate to maintaining tension ‘between predetermined
limit values.’” Id. The court reasoned that “[w]ithout
having a reasonable estimate of the current tape tension,
it is not possible to identify whether the tension is ap-
proaching or exceeding the limit values.” Id.
Zipher argues that the claim does not explicitly recite
measuring tension, and that construing the claims to
require tension measurement would import a limitation
into the claims from the specification and violate the
mandate of Rambus Inc. v. Infineon Tech. AG that “the
claims need not recite every component necessary to
enable operation of a working device.” 318 F.3d 1081,
1093 (Fed. Cir. 2003). We agree with Zipher. That a
device will only operate if certain elements are included is
not grounds to incorporate those elements into the con-
struction of the claims. A claim to an engine providing
motive power to a car should not be construed to incorpo-
rate a limitation for an exhaust pipe, though an engine
MARKEM-IMAJE CORP v. ZIPHER LTD 16
may not function without one. Thus, though “some
method of deriving a tension measurement” may be
required to make a claimed device operational, it is not
proper to incorporate that method into the claim construc-
tion. We therefore reverse the district court’s determina-
tion that the claims require “some method of deriving a
tension measurement.”
On our holding that “drive” is properly construed to
mean the application of torque to the spools, whether the
torque causes rotation or resists it, we vacate the judg-
ment of non-infringement, and remand for determination
of infringement on the corrected claim constructions.
VACATED and REMANDED
United States Court of Appeals
for the Federal Circuit
__________________________
MARKEM-IMAJE CORPORATION,
Plaintiff-Appellee,
v.
ZIPHER LTD. AND VIDEOJET TECHNOLOGIES,
INC.,
Defendants-Appellants.
__________________________
2010-1305
__________________________
Appeal from the United States District Court for the
District of New Hampshire in Case No. 07-CV-0006,
Judge Paul J. Barbadoro.
__________________________
NEWMAN, Circuit Judge, dissenting.
I concur in Part I of the court’s decision. I would,
however, affirm the district court’s finding that “some
method of deriving a tension measurement, whether
directly or indirectly, is a necessary predicate to main-
taining tension ‘between predetermined values.’” As the
district court reasoned, “[w]ithout having a reasonable
estimate of the current tape tension, it is not possible to
identify whether the tension is approaching or exceeding
the limit values.” Markem-Imaje Corp. v. Zipher Ltd.,
2008 WL 4116666, *12 (D.N.H. Aug. 28, 2008). The panel
majority’s contrary result ignores the paramount impor-
tance of the specification in claim construction. See
MARKEM-IMAJE CORP v. ZIPHER LTD 2
Retractable Techs., Inc. v. Becton, Dickinson & Co., 2011
WL 2652448, at *8 (Fed. Cir., July 8, 2011) (“In reviewing
the intrinsic record to construe the claims, we strive to
capture the scope of the actual invention, rather than . . .
allow the claim language to become divorced from what
the specification conveys is the invention.”). Accordingly,
I respectfully dissent from Part II of the court’s decision.
Claims do not stand alone, but rather, are part of a
“fully integrated written instrument,” consisting of a
specification that concludes with claims. Phillips v. AWH
Corp., 415 F.3d 1303, 1315 (Fed Cir. 2005) (en banc)
(quoting Markman v. Westview Instruments, Inc., 52 F.3d
967, 978 (Fed. Cir. 1995) (en banc)). As recognized by the
Supreme Court, it “is fundamental that claims are to be
construed in light of the specifications and both are to be
read with a view to ascertaining the invention,” United
States v. Adams, 383 U.S. 39, 49 (1966), and as stated by
Judge Rich for this court, “the descriptive part of the
specification aids in ascertaining the scope and meaning
of the claims inasmuch as the words of the claims must be
based on the description. The specification is, thus, the
primary basis for construing the claims.” Standard Oil
Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir.
1985).
The specification “is the single best guide to the mean-
ing of a disputed term,” Phillips, 415 F.3d at 1315 (quot-
ing Vitronics Corp. v. Conceptronic, 90 F.3d 1567, 1582
(Fed. Cir. 1996)), for the specification shows what the
inventor actually invented. See Bass Pro Trademarks v.
Cabela’s Inc., 485 F.3d 1364, 1369 (Fed. Cir. 2007)
(“Claims are construed to implement the invention de-
scribed in the specification.”). Where the specification
clearly and consistently sets the scope of a disputed claim,
that scope governs the construction of the claim. See On
Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d
3 MARKEM-IMAJE CORP v. ZIPHER LTD
1331, 1339-40 (Fed. Cir. 2006) (“In general, the scope and
outer boundary of claims is set by the patentee’s descrip-
tion of his invention.” (citing Phillips, 415 F.3d at 1313-
14)). This court has no authority to enlarge the scope of
the patent beyond what the patentee described as its
invention, notwithstanding my colleagues’ curious anal-
ogy to a car and its tailpipe. Maj. Op. at 15-16. Where a
limitation is placed in a claim by the specification, the
claim must be construed to include the limitation. See,
e.g., Honeywell Int’l Inc. v. Universal Avionics Sys. Corp.,
488 F.3d 982, 990 (Fed. Cir. 2007) (construing the claim
term “look ahead distance” to include a time limitation
because “time is inherent in the calculation of ‘look ahead
distance,’” as shown by the specification); Network Com-
merce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1360 (Fed.
Cir. 2005) (limiting the term “download component” to a
component capable of performing certain functions, based
on the consistent usage in the specification). The claims
cannot transcend the invention that entitles the inventor
to a patent. See Topliff v. Topliff, 145 U.S. 156, 171
(1892) (“The object of the patent law is to secure to inven-
tors a monopoly of what they have actually invented or
discovered . . . .”).
My colleagues’ reliance on the “mandate” of Rambus
Inc. v. Infineon Tech. AG, 318 F.3d 1081 (Fed. Cir. 2003),
is misguided, as “[a]ll rules of construction must be un-
derstood in terms of the factual settings that produced
them, and applied in fidelity to their origins.” Modine
Mfg. Co. v. Int’l Trade Comm’n, 75 F.3d 1545, 1551 (Fed.
Cir. 1996). In Rambus, the district court interpreted
claim language requiring a response to a “read request” to
mean that the “read request” must include address and
control information. This court reversed, holding that the
district court’s construction conflicted with the specifica-
tion, which indicated that the address and control infor-
MARKEM-IMAJE CORP v. ZIPHER LTD 4
mation were part of the request packet, not the read
request. 318 F.3d at 1091-93.
By contrast, in this case the specification fully sup-
ports the district court’s construction. Although the claim
does not explicitly include terms for measuring tension,
the specification describes as the invention the maintain-
ing of the ribbon tension (t) within a predetermined
amount, and “mathematical processing” whereby the
“addition or removal of ribbon maintains ribbon tension
within acceptable limits.” U.S. Patent No. 7,150,572,
col.22 ll.38-42. As the district court found, “some method
of deriving a tension measurement, whether directly or
indirectly” is required. Markem, 2008 WL 4116666 at
*12. Simply put, the printer must be able to measure
tension so that the controller can “calculate a length of
tape to be added to or subtracted from tape extending
between said spools in order to maintain tension in said
tape between predetermined limit values.” ’572 patent,
claim 1. The specification states that “a measure of tape
tension may be calculated by reference to a measure of
motor step rate, the calibration data related to the step
rate, and the power consumed by the motor,” and further,
that a “measure of tension t may be calculated from the
measures of power supplied to the two motors, measures
of the spool radii, calibration factors for the two motors
related to the step rate of the motors.” Id. at col.5 ll.19-
22, 30-34. Thus while the invention is flexible as to how
tension is measured, and permits measurement through
indirect methods, some method of measurement is con-
templated and required, as found by the trial court.
From my colleagues’ flawed view of the law of claim
construction, and their reversal of the trial court’s correct
and well reasoned construction, I respectfully dissent.