United States Court of Appeals
for the Federal Circuit
__________________________
ADVANCED FIBER TECHNOLOGIES (AFT)
TRUST,
Plaintiff-Appellant,
v.
J&L FIBER SERVICES, INC.,
Defendant-Appellee.
__________________________
2011-1243
__________________________
Appeal from the United States District Court for the
Northern District of New York in Case No. 07-CV-1191,
Senior Judge Lawrence E. Kahn.
__________________________
Decided: April 3, 2012
__________________________
NICHOLAS MESITI, Heslin, Rothenberg, Farley & Me-
siti, P.C., of Albany, New York, argued for plaintiff-
appellant. With him on the brief was BRETT HUTTON.
DAVID R. CROSS, Quarles & Brady LLP, of Milwaukee,
Wisconsin, argued for defendant-appellee. With him on
the brief was JOHANNA M. WILBERT.
__________________________
Before LOURIE, DYK, and PROST, Circuit Judges.
ADVANCED FIBER TECH v. J&L FIBER 2
Opinion for the court filed by Circuit Judge LOURIE.
Opinion dissenting in part filed by Circuit Judge DYK.
LOURIE, Circuit Judge.
Advanced Fiber Technologies (AFT) Trust (“AFT”) ap-
peals from the district court’s construction of certain
claim terms and its grant of summary judgment of nonin-
fringement and lack of willfulness in favor of J&L Fiber
Services, Inc. (“J&L”). We affirm the grant of summary
judgment on willfulness. Because the district court erred
in its interpretation of a term in its claim construction,
however, we reverse the grant of summary judgment of
noninfringement and remand. We do not address AFT’s
arguments concerning the district court’s denial of sum-
mary judgment with respect to invalidity, which is not
properly before us.
BACKGROUND
The patented technology in this appeal involves
screening devices used in the pulp and paper industry. To
make paper, one must screen “stock,” a mixture of paper
pulp and water, to remove unwanted components such as
sticks and other oversized contaminants. The screening
may be accomplished using a flat or cylindrical screen
containing openings. According to the specification of
asserted U.S. Patent RE39,940 (the “’940 patent”), a
persistent problem in the screening process is clogging of
the openings in the screen resulting in reduced screening
efficiency. The ’940 patent purports to address this
problem with specially designed screening devices that
offer substantially increased efficiency and flow capacity,
among other beneficial characteristics.
Figure 2 of the ’940 patent illustrates one embodiment
of the claimed invention:
3 ADVANCED FIBER TECH v. J&L FIBER
’940 patent fig. 2. The figure depicts a cross-sectional
view of a screen cylinder 10 comprising a screening me-
dium 12 and a structural backing plate 14. 1 Stock is
introduced into the interior of the cylinder and is screened
as it flows through the screening medium and backing
plate to the outside of the cylinder. The screening me-
dium contains openings through which pulp fibers can
pass, and the backing plate structurally supports the
1 As the district court concluded and the parties do
not dispute, the ’940 patent uses the terms “screening
medium” and “screening plate” synonymously. Advanced
Fiber Techs. Trust v. J&L Fiber Servs., Inc., 751 F. Supp.
2d 348, 360 (N.D.N.Y. 2010).
ADVANCED FIBER TECH v. J&L FIBER 4
screening medium. As the patent explains, the disclosed
device “is an optimal structure with regard to both open
area and strength.” Id. col.9 ll.42–43.
At issue on appeal are independent claims 1, 10, and
18, as well as asserted dependent claims that the parties
do not argue separately. Claim 1 claims a screen cylinder
comprising a screening medium and a structural backing
plate, both of which contain openings. 2 Claim 10 claims a
2 Claim 1, representative of the asserted apparatus
claims, reads as follows, with text added during reissue
underlined, text deleted during reissue bracketed, and
italics added for emphasis:
1. A screen cylinder comprising:
a generally cylindrical screening medium hav-
ing a plurality of openings therethrough;
a generally cylindrical structural backing
plate for structurally supporting said screening
medium and having a plurality of openings there-
through; [and]
said screening medium and said structural
backing plate lying concentrically one within the
other and having respective opposed surfaces in
engagement with one another at an interface
therebetween whereby said backing plate struc-
turally supports said screening medium;
one of said screening medium and said back-
ing plate having a plurality of circumferentially
extending recesses formed in its opposing surface
and opening at the opposing surface of the other of
said screening medium and said backing plate at
the interface thereof establishing communication
between the respective openings of said screening
medium and said backing plate; and
a plurality of axially spaced projections spaced
one from the other in the axial direction defining
said recesses and projecting radially from one of
5 ADVANCED FIBER TECH v. J&L FIBER
screen plate for screening pulp comprising a screening
medium containing slots and a structural backing plate
containing openings. Claim 18 claims a method of manu-
facturing a screen for use in screening pulp. 3
AFT’s ’940 patent is a reissue of its earlier U.S. Pat-
ent 5,200,072 (the “’072 patent”). In September 2003,
said screening medium and said backing plate at
said interface;
the openings in said screening medium being
elongated and extending in a generally axial di-
rection substantially normal to the circumferen-
tial extent of said recesses.
3 Claim 18, the text of which was not altered during
reissue, reads as follows, with emphasis added:
18. A method of manufacturing a screen for
use in screening for pulp, said screen being
formed of a screening plate and a backing plate,
said screening plate having first and second oppo-
site faces, comprising the steps of:
(a) forming elongated, substantially parallel,
grooves in said first face, each groove having a
side face and a bottom;
(b) forming openings through the bottom of
the grooves in said first face and into the screen-
ing plate to terminate within the screening plate
short of said second face thereof;
(c) forming elongated grooves in the second
face of said screening plate inclined relative to the
longitudinal extent of the grooves formed in step
(a) and to a depth to expose the openings formed
in step (b) so that the openings extend entirely
through said screening plate, and leave a plurality
of ridges in the second face spaced one from the
other there-along and extending in a direction in-
clined relative to the longitudinal extent of said
grooves.
ADVANCED FIBER TECH v. J&L FIBER 6
AFT submitted the ’072 patent to the U.S. Patent and
Trademark Office (“PTO”) for reissue. In January 2006,
the PTO rejected the pending claims as anticipated under
35 U.S.C. § 102(b) by a prior art patent issued to Gilles-
pie, U.S. Patent 4,276,265 (“Gillespie”). Gillespie dis-
closes “screens for use in process flow stream
applications,” such as a “radial flow catalytic reactor.”
J.A. 1060. The examiner stated that “[a]lthough Gillespie
is not directed to a pulp fiber sorting application, . . .
[s]tructurally, applicant’s claimed screen device is indis-
tinguishable from Gillespie’s screen.” J.A. 349.
AFT responded to the rejection in May 2006, arguing
that, whereas “the Gillespie device is neither intended to
be used or appropriate for use for the pulp treatment art,”
the pending claims require “a screen cylinder used in the
treatment of pulp.” J.A. 322–23. AFT quoted portions of
the ’072 patent’s written description discussing the use of
its invention for pulp screening and also noted that cer-
tain claim terms “are terms of the pulp treatment art.”
J.A. 322. To prove the latter point, AFT provided the
following definitions from the Handbook of Pulp and
Paper Technology (the “Handbook”) 4 as evidence that
“these terms have specific meaning in the art of the
present invention and would be understood by those of
skill in the art to have such meanings as presented in the
specification.” J.A. 323.
SCREEN: Separation device utilizing some type of
perforated barrier for removing unwanted material
from a stock stream.
SCREENING: Process step involving passage of
stock through some form of perforated barrier to re-
4 AFT also referred to this book during prosecution
as the Handbook of Pulp & Paper Terminology, A Guide to
Industrial and Technological Usage. J.A. 328.
7 ADVANCED FIBER TECH v. J&L FIBER
move oversize, troublesome and unwanted particles
from good fiber.
SCREEN PLATE: Perforated metal plate utilized
on many designs of pulp screening equipment that
impedes pulp flow and is instrumental in causing a
separation between suspended particles on the basis
of their size, shape, and/or flexibility.
J.A. 322–23 (emphases added).
As additional evidence that Gillespie would not work
for screening pulp fiber, AFT contrasted Gillespie’s slot
width with that of the claimed invention, arguing that
“the slot sizing of the Gillespie screen further underscores
how inappropriate the Gillespie device is for screening
pulp fibers.” J.A. 324. Specifically, AFT stated that
Gillespie’s slots of 0.762 mm are “over three times the
size” of the slots of the claimed invention:
[P]ulp fibers have diameter less than 50 microns
(0.050 mm) and typically slot widths of 0.2 mm would
be used for aspects of the invention. In contrast, the
Gillespie screen slots are 0.030 inches, that is, 0.762
mm. The slots of Gillespie are over three times the size
of the slot width of the present invention.
Id. (emphasis added). In response to AFT’s arguments,
the examiner withdrew the rejection over Gillespie.
On November 9, 2007, after receiving a notice of al-
lowance in its ongoing reissue prosecution, AFT sued J&L
for patent infringement under the original patent and its
reissue. In December 2007, the patent reissued as the
’940 patent. AFT’s infringement allegations centered on
screening devices made and sold by J&L under the brand
name “V-Max” for use in the pulp and paper industry.
AFT also alleged willful infringement.
ADVANCED FIBER TECH v. J&L FIBER 8
J&L denied infringement. Based on a number of prior
art references, J&L also asserted invalidity as an affirma-
tive defense and counterclaimed for a declaratory judg-
ment of invalidity. On September 13, 2010, the district
court issued its Memorandum-Decision and Order con-
struing the disputed claim terms and addressing the
parties’ cross-motions for summary judgment on invalid-
ity and infringement. Advanced Fiber Techs. Trust v.
J&L Fiber Servs., Inc., 751 F. Supp. 2d 348 (N.D.N.Y.
2010).
The district court construed the claim term “screening
medium” in claims 1 and 10 and its synonym “screening
plate” in claim 18. The court concluded that AFT, in
distinguishing Gillespie during reissue prosecution,
unambiguously limited the scope of its claims to the paper
and pulp industry. Accordingly, the court relied on the
definition of “screening” from the Handbook to construe
“screening medium” as “a perforated barrier through
which stock is passed to remove oversized, troublesome,
and unwanted particles from good fiber.” Id. at 361.
At AFT’s request, the court also construed the term
“perforated,” which is not a claim term but appears in the
court’s construction of “screening medium.” The court
cited general and technical dictionary definitions of “per-
forate” and “perforation” in construing “perforated” as
“pierced or punctured with holes.” Id. at 363. The court
observed that this construction conformed to the patent’s
written description with the exception of “a one-sentence
mention that ‘a wedgewire screening plate may be used.’”
Id. (quoting ’940 patent col.11 ll.64–65). Despite this
discrepancy, the court adhered to its construction, reason-
ing that none of the claims explicitly recites a wedgewire
screen—that is, a screen made by assembling closely
spaced parallel wires, not by piercing or puncturing.
9 ADVANCED FIBER TECH v. J&L FIBER
The district court also construed the claim terms
“openings” and “slots” in claims 1 and 10 and their as-
serted dependent claims. As the court acknowledged, the
’940 patent describes these terms broadly, stating that
“‘openings . . . is intended to encompass apertures of all
shapes and sizes, including holes, slots, orifices and
passageways.’” Id. at 364 (quoting ’940 patent col.5 ll.37–
40). The patent also describes a preferred embodiment
having a relatively large slot width of 0.5 mm. In state-
ments made by AFT during reissue prosecution, however,
the court perceived an unmistakable disavowal of the full
scope of these terms. Because AFT distinguished Gilles-
pie on the basis that its 0.762 mm slots are “over three
times the size of the slot width of the present invention,”
the court reasoned that the claims must be limited to slots
or openings having widths less than one-third of 0.762
mm. Accordingly, the court construed “openings” and
“slots” as “openings or slots with widths less than 0.254
mm.” Id. at 365.
Having construed these disputed terms, the court
turned to the issue of infringement. The court found that
J&L’s accused V-Max screen, which is made of wedgewire,
does not literally infringe claims 1, 10, 18, and the as-
serted dependent claims under the court’s constructions of
“screening medium” and “perforated.” The court nonethe-
less declined to grant J&L’s motion for summary judg-
ment of noninfringement because, even though the V-Max
does not literally infringe, J&L appeared to acknowledge
that its accused device might infringe under the doctrine
of equivalents. On subsequent reconsideration, however,
the court found that, because the ’940 patent disclosed but
did not claim wedgewire, the disclosure-dedication rule
foreclosed infringement under the doctrine of equivalents.
Id. at 387. The court thus granted summary judgment of
noninfringement in favor of J&L on all asserted claims.
ADVANCED FIBER TECH v. J&L FIBER 10
The court also addressed the parties’ validity motions.
Although the district court made several rulings with
respect to references alleged to anticipate or render
obvious the asserted claims, only one is disputed by the
parties on appeal. That ruling relates to the “PIMA”
reference, a trade industry magazine article disclosing
screen plates used for papermaking. J.A. 1371–74; Ed-
ward H. Hall, Conically Drilled Plates Produce More
Effective Screening Area, PIMA Magazine, Mar. 1979, at
30. AFT moved for “summary judgment of validity,”
arguing that PIMA cannot render obvious the asserted
claims. The court disagreed and denied summary judg-
ment on the issue of invalidity over PIMA. Advanced
Fiber, 751 F. Supp. 2d at 379.
Finally, the court considered J&L’s motion for sum-
mary judgment dismissing AFT’s claim of willful in-
fringement. The court found that J&L’s “credible” and
“compelling” arguments regarding noninfringement and
invalidity, in addition to the PTO’s rejections during
reissue prosecution, demonstrated the reasonableness of
J&L’s allegedly infringing actions. Id. at 380–81. The
court also noted that the meaning of certain claim terms
changed significantly upon AFT’s arguments during
reissue prosecution, and that these claims were not reis-
sued until after AFT filed its complaint for patent in-
fringement. For those reasons, the court granted J&L’s
motion for summary judgment on the issue of willful
infringement.
On January 21, 2011, the district court dismissed
J&L’s counterclaims without prejudice and entered final
judgment in favor of J&L. Judgment in a Civil Case,
Advanced Fiber Techs. Trust v. J&L Fiber Servs., Inc., No.
1:07-CV-1191 (N.D.N.Y. Jan. 21, 2011), ECF No. 130; see
also Clarifying Judgment, Advanced Fiber Techs. (AFT)
11 ADVANCED FIBER TECH v. J&L FIBER
Trust v. J&L Fiber Servs., Inc., No. 1:07-CV-1191
(N.D.N.Y. Jan. 6, 2012), ECF No. 146.
AFT timely appealed. We have jurisdiction over final
decisions pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
AFT contends that the district court erroneously
granted summary judgment of noninfringement based on
incorrect constructions of the terms “screening medium”
and “perforated.” AFT also argues that the court incor-
rectly construed the terms “slots” and “holes.” AFT
alleges further error in the court’s denial of summary
judgment regarding invalidity over the PIMA article.
Finally, AFT asserts that the district court erroneously
granted summary judgment dismissing AFT’s claim of
willful infringement. We review each assertion in turn.
Summary judgment is appropriate when there is no
genuine issue of material fact and the moving party is
entitled to judgment as a matter of law. Fed. R. Civ. P.
56(a). Summary judgment may therefore be granted
when no reasonable jury could return a verdict for the
nonmoving party. Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248 (1986). “We review a district court’s deci-
sion on summary judgment de novo, reapplying the same
standard applied by the district court.” Hologic, Inc. v.
SenoRx, Inc., 639 F.3d 1329, 1334 (Fed. Cir. 2011).
I
Claim construction is a legal question that we review
on appeal without formal deference to the district court,
although we give careful consideration to that court’s
decision. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1456 (Fed. Cir. 1998) (en banc). A patent is a fully inte-
grated written instrument; the claims must be read in
view of the specification, of which they are a part. Mark-
ADVANCED FIBER TECH v. J&L FIBER 12
man v. Westview Instruments, Inc., 52 F.3d 967, 978–79
(Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). A
court should also consult the patent’s prosecution history,
which, like the specification, provides evidence of how the
PTO and the inventor understood the claimed invention.
Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir.
2005) (en banc). In reviewing these sources, if the specifi-
cation or prosecution history defines a claim term, that
definition shall apply even if it differs from the term’s
ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366–67 (Fed. Cir. 2002). Moreover, if a
patentee makes a clear and unambiguous disavowal of
claim scope during prosecution, that disclaimer informs
the claim construction analysis by “narrow[ing] the ordi-
nary meaning of the claim congruent with the scope of the
surrender.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
1314, 1324 (Fed. Cir. 2003). Finally, courts may rely on
dictionary definitions when construing claim terms, “so
long as the dictionary definition does not contradict any
definition found in or ascertained by a reading of the
patent documents.” Phillips, 415 F.3d at 1322–23 (inter-
nal quotation marks omitted).
A. Construction of “Screening Medium”
and “Perforated”
We first consider the construction of the claim term
“screening medium” and the related term “perforated.”
AFT and J&L both agree that the court properly con-
strued “screening medium” as a “perforated barrier
through which stock is passed to remove oversized, trou-
blesome, and unwanted particles from good fiber.” They
disagree, however, on the meaning of the term “perfo-
rated” in that construction.
AFT contends that the court erred by defining “perfo-
rated” as “pierced or punctured with holes.” According to
13 ADVANCED FIBER TECH v. J&L FIBER
AFT, the intrinsic evidence does not support the court’s
construction because the ’940 patent nowhere states that
the screening medium must be made by puncturing or
piercing. AFT points out that the specification expressly
describes the screening medium as including “wedgewire,”
which, as the parties agree, is made by assembling wires,
not by puncturing or piercing. AFT also argues that the
court erroneously relied on extrinsic evidence, including
dictionary definitions, that contradict the intrinsic evi-
dence.
J&L argues in response that AFT defined “screening
medium” during prosecution to include “perforated.” J&L
further contends that the court’s construction of “perfo-
rated” conforms with the specification, which discloses a
“backing plate” that comprises a “perforated plate having
a plurality of relatively large openings,” ’940 patent col.2
l.66 – col.3 l.1, which “may be punched or drilled through
the material,” id. col.8 l.52. J&L also asserts that the
district court’s interpretation of “perforated” is consistent
with extrinsic evidence relied on by the district court,
including dictionary definitions of “perforation” and
“perforate” as well as prior art references indicating that
one of ordinary skill would understand “perforated” to
mean “punctured or pierced.”
The disputed term at issue, “perforated,” appears not
in the claims but rather in the district court’s construction
of a disputed claim term. We note, as an initial matter,
that “we do not ordinarily construe words that are not in
claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d
1322, 1334 (Fed. Cir. 2009); see also Aro Mfg. Co. v. Con-
vertible Top Replacement Co., 365 U.S. 336, 339 (1961)
(“[T]he claims made in the patent are the sole measure of
the grant.”). However, in those cases in which the correct
construction of a claim term necessitates a derivative
construction of a non-claim term, a court may perform the
ADVANCED FIBER TECH v. J&L FIBER 14
derivative construction in order to elucidate the claim’s
meaning.
Our opinion in Edwards is illustrative. 582 F.3d
1322. In that case, we reviewed a district court’s claim
construction in patents relating to intraluminal grafts. In
accordance with the teachings of the specification, the
district court construed particular claim terms to require
a graft that includes at least one “malleable wire.” Id. at
1326. On account of the parties’ disagreement over the
meaning of “malleable”—not itself a claim term—the
district court construed this term according to a state-
ment in the specification indicating that “malleable”
means that the wires “do not expand[] by virtue of their
own resilience.” Id. at 1327 (internal quotation marks
omitted). We disagreed with the appellant that the court
erred by rejecting the plain meaning of “malleable.”
Instead, we affirmed the district court’s treatment of the
non-claim term “malleable,” holding that the court cor-
rectly “look[ed] to the specification to clarify its initial
construction.” Id. at 1334.
As our holding in Edwards demonstrates, the claim
construction analysis must follow the guiding principles
set forth in Phillips. See Phillips, 415 F.3d at 1316
(“[T]he specification necessarily informs the proper con-
struction of the claims.”). After all, whether we are con-
struing a claim term or a disputed term within a claim
construction, our ultimate goal is “determining the mean-
ing and scope of the patent claims asserted to be in-
fringed.” Markman, 52 F.3d at 976. Accordingly, in
reviewing the district court’s construction of the non-claim
term “perforated,” we apply our established claim con-
struction principles, summarized above.
After doing so, we conclude that the district court er-
roneously construed “perforated” using extrinsic evidence
15 ADVANCED FIBER TECH v. J&L FIBER
that contradicts the intrinsic evidence of record. As an
initial matter, we note that the court correctly relied on
definitions provided by AFT during prosecution of the ’940
patent to limit “screening medium” to a barrier that is
“perforated.” The court observed that, during prosecution,
AFT expressly defined “screening” as a “process step”
involving the passage of stock through a “perforated
barrier.” Advanced Fiber, 751 F. Supp. 2d at 361. In
concluding that the claimed “screening medium” must
therefore be “the medium employed in this ‘process step,’
which is identified in the definition as a ‘perforated bar-
rier,’” the court correctly relied on a clear definition of a
claim term set forth by AFT in the prosecution history.
See CCS Fitness, 288 F.3d at 1366 (“[I]f the patentee
acted as his own lexicographer and clearly set forth a
definition of the disputed claim term in either the specifi-
cation or prosecution history,” then that definition gov-
erns.); see also Phillips, 415 F.3d at 1317 (“[T]he
prosecution history can often inform the meaning of the
claim language by demonstrating how the inventor un-
derstood the invention and whether the inventor limited
the invention in the course of prosecution.”).
The court’s analysis went awry, however, in its inter-
pretation of the term “perforated.” In construing “perfo-
rated,” the court relied solely on dictionary definitions of
“perforate” and “perforation.” Advanced Fiber, 751 F.
Supp. 2d at 363; J.A. 2378, 2380. The parties’ disagree-
ment on appeal centers on the district court’s choice of
definitions: J&L asserts that the court correctly relied on
the definitions of “perforate” and “perforation” to derive
the requirement of being “pierced or punctured with
holes,” whereas AFT contends that the court ignored the
definition of “perforated” itself—“having a hole or series of
holes,” J.A. 2380—and thus improperly limited the mean-
ing of this term. While we agree with AFT that the
ADVANCED FIBER TECH v. J&L FIBER 16
meaning of “perforated” may be better understood in the
abstract by examining the definition of the adjective itself,
rather than the verb “perforate” or the noun “perforation,”
the court’s fundamental error was not referencing the
wrong part of speech.
Rather, the district court’s error lies in its reliance on
extrinsic evidence that contradicted the patent’s specifica-
tion, including the claims and written description. See
Phillips, 415 F.3d at 1319 (“[E]xtrinsic evidence may be
useful to the court, but it is unlikely to result in a reliable
interpretation of patent claim scope unless considered in
the context of the intrinsic evidence.”); see also OSRAM
GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1356 (Fed.
Cir. 2007) (“The patent specification is the primary re-
source for determining how an invention would be under-
stood by persons experienced in the field.” (citing Phillips,
415 F.3d at 1312–13)). The claims themselves do not
require the screening medium to be made by puncturing
or piercing, they simply limit the screening medium to
“having a plurality of openings therethrough,” ’940 patent
claim 1, or “having a plurality of slots therethrough,” id.
claim 10. Likewise, the written description provides no
basis for the court’s “pierced or punctured” limitation. As
noted above, the court began its analysis by construing
“screening medium” (and its synonym, “screening plate”)
as a “perforated barrier.” The court correctly recognized
that the specification, in a “one-sentence mention,” dis-
closed one such perforated barrier that was made by
assembling wires, not by puncturing or piercing. Ad-
vanced Fiber, 751 F. Supp. 2d at 363. The court erred,
however, by disregarding that embodiment.
The district court did not perceive, nor does J&L al-
lege on appeal, any fault in the ’940 patent’s wedgewire
disclosure aside from its brevity. The fact that an em-
bodiment is disclosed in a single sentence is not a license
17 ADVANCED FIBER TECH v. J&L FIBER
to ignore that disclosure. Indeed, as a general matter,
brevity in a patent disclosure should be applauded, not
impugned. In re Gay, 309 F.2d 769, 733 (CCPA 1962)
(“[S]pecifications have often been criticized as too clut-
tered with details to give an easy understanding of what
the invention really is.”). A disclosed embodiment is a
disclosed embodiment, no matter the volume of ink re-
quired to adequately describe it. See Falkner v. Inglis,
448 F.3d 1357, 1366–67 (Fed. Cir. 2006) (“No length
requirement exists for a disclosure to adequately describe
an invention.”).
Accordingly, we reject the district court’s construction
of “perforated” in view of intrinsic evidence providing for a
screening medium formed by means other than piercing
or puncturing. We are not persuaded by J&L’s arguments
to the contrary. While it is true, as we explained above,
that during prosecution AFT defined “screening” using
the term “perforated,” nowhere did AFT define “perfo-
rated” or discuss piercing or puncturing. Moreover,
although J&L is correct in noting that the specification
discloses a “backing plate” that comprises a “perforated
plate,” ’940 patent col.2 ll.66–67, that disclosure does not
pertain to the claimed “screening medium.” Even if it did,
the specification states only that the openings in the
backing plate “may be punched or drilled,” id. col.8 l.52
(emphasis added), a far cry from strictly limiting the
invention to devices formed solely by piercing or punctur-
ing.
We therefore disagree with the district court’s inter-
pretation of “perforated” in its construction of the claim
term “screening medium.” We hold that “perforated” in
this context simply means having holes or openings.
Construed in this manner, “perforated” is fully consistent
with the language of claim 1, “a screening medium having
a plurality of openings therethrough,” and claim 10, “a
ADVANCED FIBER TECH v. J&L FIBER 18
screening medium having a plurality of slots there-
through.” This construction is also consistent with the
specification’s explicit disclosure of wedgewire as one type
of screening medium. As “perforated” was not defined
during prosecution, this construction is also consistent
with the file history of the ’940 patent. Finally, we note
this interpretation also accords with the ordinary defini-
tion of “perforated” as illustrated by extrinsic evidence of
record—“having a hole or series of holes.” J.A. 2380.
Because the district court granted summary judgment
of noninfringement based on an incorrect construction of
the asserted claims, we reverse that judgment.
B. Construction of “Slots” and “Openings”
AFT also disputes the district court’s construction of
the terms “slots” and “openings” as being limited to “open-
ings or slots with widths less than 0.254 mm.” Advanced
Fiber, 751 F. Supp. 2d at 364. The parties agree that,
should we vacate the judgment of noninfringement, the
construction of these terms is relevant on remand to the
extent of J&L’s potential infringement and thus the
amount of potential damages owed by J&L. The parties
also agree with the district court that these two terms
should be construed together.
AFT asserts that the court’s construction is wrong be-
cause the claims themselves do not contain any size
limitation. AFT points out that the specification encom-
passes apertures of all shapes and sizes and expressly
discloses a screening medium with a slot size of 0.5 mm.
Finally, AFT contends that the prosecution history does
not contradict the claims or specification.
J&L asserts that the district court correctly limited
these claim terms on account of AFT’s prosecution history
disclaimer. According to J&L, AFT structurally differen-
19 ADVANCED FIBER TECH v. J&L FIBER
tiated its claims from Gillespie on the basis of slot size. In
the face of such disclaimer, J&L argues, the district court
was correct to construe these terms more narrowly than
the specification would otherwise suggest.
We agree with J&L. As the district court correctly
concluded, AFT distinguished Gillespie from the pending
claims based on slot size: “the Gillespie screen slots are
0.030 inches, that is, 0.762 mm. The slots of Gillespie are
over three times the size of the slot width of the present
invention.” J.A. 324. This statement, urged in support of
patentability, is “so clear as to show reasonable clarity
and deliberateness” and “so unmistakable as to be unam-
biguous evidence of disclaimer.” Omega, 334 F.3d at
1325. The district court properly took AFT at its word
and construed the claimed slots and openings as having
widths less than one-third of 0.762 mm, that is, “less than
0.254 mm.” Accordingly, we perceive no error in the
district court’s construction of “slots” and “openings.”
II
We turn next to AFT’s assertion that the district court
erred by denying summary judgment that certain claims
of the ’940 patent are not invalid for obviousness over the
PIMA reference. A district court’s denial of summary
judgment is ordinarily not appealable. M. Eagles Tool
Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d 1335,
1344 (Fed. Cir. 2006). Although it may be proper under
the doctrine of pendent appellate jurisdiction for us to
review rulings that are not themselves independently
appealable in conjunction with a ruling over which we do
have jurisdiction, we need not do so here. See Swint v.
Chambers Cnty. Comm’n, 514 U.S. 35, 50–51 (1995);
Entegris, Inc. v. Pall Corp., 490 F.3d 1340, 1348 (Fed. Cir.
2007). AFT has not asserted that the district court’s
denial of summary judgment that certain claims are not
ADVANCED FIBER TECH v. J&L FIBER 20
invalid is “inextricably intertwined” with the court’s grant
of summary judgment of noninfringement, or that review
of the former decision is “necessary to ensure meaningful
review” of the latter. Swint, 514 U.S. at 51. Nor has AFT
challenged the denial of summary judgment as an alter-
native basis for affirmance. Given that we reverse the
district court’s claim construction of one term and remand
the case for further proceedings on infringement, validity
may be dealt with on remand to that court as well. Ac-
cordingly, we do not address AFT’s assertions regarding
the court’s denial of summary judgment with respect to
invalidity.
III
Lastly, we consider AFT’s assertion that the court
erred by granting summary judgment dismissing AFT’s
claim for willful infringement. Proof of willful infringe-
ment requires at least a showing of objective recklessness.
To establish willful infringement, “a patentee must show
by clear and convincing evidence that the infringer acted
despite an objectively high likelihood that its actions
constituted infringement of a valid patent.” In re Seagate
Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en
banc). This objective prong “tends not to be met where an
accused infringer relies on a reasonable defense to a
charge of infringement.” Spine Solutions, Inc. v. Med-
tronic Samofor Danek USA, Inc., 620 F.3d 1305, 1319
(Fed. Cir. 2010). If the evidence satisfies the objective
standard, “the patentee must also demonstrate that this
objectively-defined risk . . . was either known or so obvi-
ous that it should have been known to the accused in-
fringer.” Seagate, 497 F.3d at 1371.
AFT asserts that the district court improperly granted
summary judgment by relying on incorrect legal stan-
dards relating to infringement and claim construction in
21 ADVANCED FIBER TECH v. J&L FIBER
finding that J&L’s actions were objectively reasonable.
We disagree with AFT and hold that the district court
correctly granted summary judgment on the issue of
willful infringement.
The court’s decision rested on numerous factors indi-
cating that J&L’s acts were not objectively reckless.
Those factors included: (1) the language of the ’072 pat-
ent, which “leaves significant doubt as to the patent’s
validity”; (2) J&L’s “compelling non-infringement and
invalidity arguments”; (3) the PTO’s “rejection of the
reissue application based on it being ‘structurally indis-
tinguishable’ from the Gillespie [prior art patent]”; and
(4) the fact that the meaning of certain key claim terms in
the ’072 patent only became clear through AFT’s argu-
ments during reissue prosecution. 5 Advanced Fiber, 751
F. Supp. 2d at 380–81. Taken together, these facts show
that J&L’s assertions of invalidity and noninfringement
were, at minimum, objectively reasonable defenses to
AFT’s charge of infringement. The fact that we have on
appeal altered one of the district court’s claim construc-
tions and consequently vacated summary judgment of
noninfringement does not compel a different outcome. See
Spine Solutions, 620 F.3d at 1319 (upholding the jury’s
verdict of nonobviousness, while finding that the accused
infringer raised a “substantial question” of obviousness
sufficient to defeat the charge of willfulness). Accord-
ingly, we affirm the court’s grant of summary judgment
5 The parties do not dispute that the district court
correctly focused on the reasonableness of J&L’s acts vis-
à-vis the ’072 patent—the patent at issue when AFT filed
its complaint for infringement. See Seagate, 497 F.3d at
1374 (“[A] willfulness claim asserted in the original
complaint must necessarily be grounded exclusively in the
accused infringer’s pre-filing conduct”).
ADVANCED FIBER TECH v. J&L FIBER 22
that AFT failed to raise a genuine factual issue that any
infringement by J&L was willful.
CONCLUSION
For the foregoing reasons, we reverse the district
court’s grant of summary judgment of noninfringement
based on an incorrect claim construction, and we affirm
the court’s grant of summary judgment on willfulness.
We remand for further proceedings consistent with this
opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
COSTS
No costs.
United States Court of Appeals
for the Federal Circuit
__________________________
ADVANCED FIBER TECHNOLOGIES (AFT)
TRUST,
Plaintiff-Appellant,
v.
J&L FIBER SERVICES, INC.,
Defendant-Appellee.
__________________________
2011-1243
__________________________
Appeal from the United States District Court for the
Northern District of New York in Case No. 07-CV-1191,
Senior Judge Lawrence E. Kahn.
__________________________
Before LOURIE, DYK, and PROST, Circuit Judges.
DYK, Circuit Judge, dissenting in part.
Although I agree with the majority on the issue of
willfulness, I disagree as to its construction of “screening
medium” and “screening plate” in claims 1, 10, and 18 of
U.S. Patent No. RE39,940 (“the ’940 patent”) 1 and with
its decision to set aside the judgment of non-infringement.
1 Claim 1, representative of the asserted apparatus
claims, recites:
A screen cylinder comprising:
a generally cylindrical screening medium hav-
ing a plurality of openings therethrough;
ADVANCED FIBER TECH v. J&L FIBER 2
a generally cylindrical structural backing
plate for structurally supporting said screening
medium and having a plurality of openings there-
through;
said screening medium and said structural
backing plate lying concentrically one within the
other and having respective opposed surfaces in
engagement with one another at an interface
therebetween whereby said backing plate struc-
turally supports said screening medium;
one of said screening medium and said back-
ing plate having a plurality of circumferentially
extending recesses formed in its opposing surface
and opening at the opposing surface of the other of
said screening medium and said backing plate at
the interface thereof establishing communication
between the respective openings of said screening
medium and said backing plate; and
a plurality of axially spaced projections spaced
one from the other in the axial direction defining
said recesses and projecting radially from one of
said screening medium and said backing plate at
said interface;
the openings in said screening medium being
elongated and extending in a generally axial di-
rection substantially normal to the circumferen-
tial extent of said recesses.
’940 Patent col.13 ll.24-52 (emphasis added).
Claim 18, the only independent method claim as-
serted by AFT, recites:
A method of manufacturing a screen for use in
screening for pulp, said screen being formed of a
screening plate and a backing plate, said screen-
ing plate having first and second opposite faces,
comprising the steps of:
(a) forming elongated, substantially parallel,
grooves in said first face, each groove having a
side face and a bottom;
(b) forming openings through the bottom of
the grooves in said first face and into the screen-
3 ADVANCED FIBER TECH v. J&L FIBER
The district court found, and the majority does not
dispute, that the terms “screening medium” and “screen-
ing plate” are synonymous, and that the “screening me-
dium” or “screening plate” must be “perforated.” In my
view, the intrinsic record demonstrates that “perforated”
in this context requires that holes or openings be made
through an otherwise solid object, such as a plate. Be-
cause the accused product’s wedgewire construction does
not meet this limitation, I think the district court’s grant
of summary judgment of noninfringement should be
affirmed.
During prosecution, the examiner rejected AFT’s
claims as anticipated by U.S. Patent No. 4,276,265 to
Gillespie (“Gillespie” or “the ’265 patent”), which is di-
rected to a screening device. The examiner found that
Gillespie, which disclosed a wedgewire construction
comprised of generally parallel “spaced apart profiled wire
members,” ’265 Patent col.3 l.64, was “[s]tructurally . . .
indistinguishable” from AFT’s claimed screen device. J.A.
349-50. Although AFT did not explicitly disclaim cover-
age of wedgewire devices in seeking to overcome the
rejection, AFT excluded wedgewire screens from the scope
of the claims by overcoming the rejection based on the
ing plate to terminate within the screening plate
short of said second face thereof;
(c) forming elongated grooves in the second
face of said screening plate inclined relative to the
longitudinal extent of the grooves formed in step
(a) and to a depth to expose the openings formed
in step (b) so that the openings extend entirely
through said screening plate, and leave a plurality
of ridges in the second face spaced one from the
other there-along and extending in a direction in-
clined relative to the longitudinal extent of said
grooves.
’940 Patent col.15 ll.13-32 (emphasis added).
ADVANCED FIBER TECH v. J&L FIBER 4
argument that the screen of the reference “is clearly not
disclosed as a screen plate as used in the treatment of
pulp” and was not “intended to be used for or appropriate
for use for the pulp treatment art.” J.A. 323-24. AFT
argued that “the terms ‘screen,’ ‘screening,’ and ‘screen
plate’ are terms of the pulp treatment art, having specific
meanings to those of ordinary skill in the pulp treatment
art.” 2 J.A. 322. AFT emphasized to the examiner that
the “meaning of the term ‘screen plate’ in claim 1 is
consistent with this meaning in the art.’” 3 J.A. 323.
To demonstrate the meaning of the relevant claim
term to those of ordinary skill in the art, AFT provided
specific definitions from a “well-recognized reference on
pulp and paper technology,” the Handbook of Pulp &
Paper Terminology. J.A. 322-23. AFT defined “screen
plate” as a “[p]erforated metal plate utilized on many
designs of pulp screening equipment that impedes pulp
flow and is instrumental in causing a separation between
suspended particles on the basis of their size, shape,
and/or flexibility.” J.A. 323 (emphasis added). Signifi-
cantly too the Handbook defined a “perforated plate” as a
“[s]creen plate with straight-through holes, usually made
by a punch.” G.A. Smook, Handbook of Pulp & Paper
Terminology 151 (1990). Thus, the definition of perfo-
rated plate required that holes be made by punching,
drilling, or some other similar method of creating a hole
through an otherwise solid object. This would exclude
2 The majority emphasizes the distinction made by
AFT based on the size of the slot in the Gillespie screen,
but that was only one distinction offered to demonstrate
that Gillespie would not be appropriate in the art of pulp
treatment.
3 Claim 1 does not actually use the term “screen
plate.” However, this reference to “‘screen plate’ in claim
1,” J.A. 323, in the prosecution history is best understood
as a reference to the term “screening medium” in claim 1.
5 ADVANCED FIBER TECH v. J&L FIBER
wedgewire construction. By explicitly adopting a defini-
tion of the term “screening medium” or “screening plate,”
AFT excluded wedgewire construction from the scope of
the claims. See Computer Docking Station Corp. v. Dell,
Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (holding that a
patentee can limit the meaning of a claim term “by clearly
characterizing the invention in a way to try to overcome
rejections based on prior art”); MBO Labs., Inc. v. Becton,
Dickinson & Co., 474 F.3d 1323, 1330 (Fed. Cir. 2007)
(“Prosecution arguments like this one which draw distinc-
tions between the patented invention and the prior art
are useful for determining whether the patentee intended
to surrender territory, since they indicate in the inven-
tor’s own words what the invention is not.”). 4
In addition to the prosecution history, the claims
themselves confirm that “perforated” requires that holes
or openings be made through a solid object, and does not
encompass wedgewire screens. Claim 18 claims a method
of manufacturing a “screening plate” (a term agreed to be
synonymous with “screening medium”) which requires
“forming openings [that] . . . extend entirely through said
4 Quite apart from AFT’s reliance on particular
definitions during prosecution, it is appropriate to look at
industry standards and definitions to interpret disputed
claim terms. See Chimie v. PPG Indus., Inc., 402 F.3d
1371, 1378-79 (Fed. Cir. 2005) (using an industry stan-
dard to interpret claim term); see also LG Elecs., Inc. v.
Bizcom Elecs., Inc., 453 F.3d 1364, 1375 (Fed. Cir. 2006)
(“Although we have concluded that the patentee did not
expressly adopt the definition of ‘requesting agent’ in the
incorporated industry standard, that standard remains
relevant in determining the meaning of the claim term to
one of ordinary skill in the art at the time the patent
application was filed, and it is treated as intrinsic evi-
dence for claim construction purposes.” (citing V-
Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307,
1311 (Fed. Cir. 2005))).
ADVANCED FIBER TECH v. J&L FIBER 6
screening plate.” ’940 Patent col.15 ll.20-28 (emphasis
added); see also id. col.6 ll.15-21. The claims and specifi-
cation make clear that the disclosed method also requires
a “screening plate” with two faces and the ability to
“form[] elongated . . . grooves” in the screening plate. Id.
col.15 ll.17; see also id. col.6 ll.17-18. The majority’s
construction of “screening medium” as encompassing
wedgewire screens does not comport with this claimed
method of manufacture. Moreover, in a different context,
the specification refers to a “perforated” backing plate,
’940 Patent col.2 ll.66-67, whose holes are “punched or
drilled,” id. col.8 l.51, which is again inconsistent with
“perforated” encompassing wedgewire construction. See
also id. col.11 ll.17-19 (“[T]he openings may be cylindrical
or other shapes, as desired, and may be punched or drilled
through the material.”).
As the majority points out, the specification briefly
mentions wedgewire as an embodiment of the invention. 5
Not every embodiment disclosed in the specification
necessarily falls within the scope of the claims. AllVoice
Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236,
1248 (Fed. Cir. 2007) (“[E]very claim need not contain
every feature taught in the specification.”); Nazomi
Commc’ns, Inc. v. ARM Holdings, PLC, 403 F.3d 1364,
1369 (Fed. Cir. 2005) (holding that a claim may “em-
brac[e] different subject matter than is illustrated in the
specific embodiments in the specification”); Golight, Inc. v.
Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir.
2004) (“[P]atentees [are] not required to include within
each of their claims all of [the] advantages or features
described as significant or important in the written de-
scription.”). As discussed above, to the extent this em-
5 The specification contains this single sentence in
reference to wedgewire: “Also, a wedgewire screening
plate may be used.” Id. col.11 ll.64-65.
7 ADVANCED FIBER TECH v. J&L FIBER
bodiment was within the claims, AFT specifically defined
the term “screening medium” during prosecution to ex-
clude this embodiment.
Other prior art references also make the same distinc-
tion between perforated screens and wedgewire screens.
See, e.g., J.A. 935 (differentiating a vee-wire (or wedge-
wire) screen from a perforated plate); J.A. 1373-74 (de-
scribing various methods of manufacturing a “screen
plate,” each of which begins with a solid plate); J.A. 1390-
92 (describing “screen plates” as being punched, drilled, or
slotted by milling). These references can help to demon-
strate how a disputed term was used by those of skill in
the art at the time of the invention. See Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
Even the definitions of “perforated” offered by AFT
support the conclusion that the claims require a solid
plate with holes through the face. AFT argued that
“perforated” means “having holes or perforations.” Appel-
lant’s Br. 20. AFT further argued that “hole” was defined
in the same dictionary as “an opening through some-
thing.” Id. (emphasis added). AFT failed to note in its
brief, however, that the entire definition of “hole” reads
“an opening through something : perforation.” J.A. 2381
(emphasis added). That very dictionary defines “perfora-
tion” as “a hole or pattern made by or as if by piercing or
boring.” J.A. 2380 (emphasis added). Thus, although a
hole need not be made by piercing or puncturing, it must
be of the type made by piercing or boring—that is, it must
be through an object. This definition, in the dictionary
offered by AFT, would naturally exclude wedgewire
construction because the openings in the wedgewire are
merely gaps between individual wires, not perforations.
It is not disputed that the allegedly infringing prod-
ucts use wedgewire construction. Because an interpreta-
ADVANCED FIBER TECH v. J&L FIBER 8
tion of “perforated” that excluded wedgewire devices was
adopted during prosecution and before the district court,
the district court’s final judgment of noninfringement
should be affirmed. I respectfully dissent.