Sorensen v. International Trade Commission

United States Court of Appeals for the Federal Circuit

05-1020

J. OLE SORENSEN and JENS E. SORENSEN
(as Trustee of the Sorensen Research and Development Trust),

Appellants,

v.

INTERNATIONAL TRADE COMMISSION,

Appellee,
and

MERCEDES-BENZ USA, LLC,

Intervenor.

Boris Zelkind, Zelkind & Shackelford LLP, of San Diego, California, argued for
appellants. With him on the brief was Patricia A. Shackelford.

Michael K. Haldenstein, Attorney, Office of General Counsel, United States
International Trade Commission, of Washington, DC, argued for appellee. With him on
the brief were James M. Lyons, General Counsel, Andrea C. Casson, Acting Assistant
General Counsel, and Irene H. Chen, Attorney.

David M. Schnorrenberg, Crowell & Moring LLP, of Washington, DC, argued for
intervenor. With him on the brief were Donald D. Evenson and Amy B. Newman.

Appealed from: United States International Trade Commission
 United States Court of Appeals for the Federal Circuit
05-1020

J. OLE SORENSEN and JENS E. SORENSEN
(as Trustee of the Sorensen Research and Development Trust),

Appellants,

v.

INTERNATIONAL TRADE COMMISSION,

Appellee,

and

MERCEDES-BENZ USA, LLC,

Intervenor.

___________________________

DECIDED: October 31, 2005
___________________________

Before MICHEL, Chief Judge, RADER, and LINN, Circuit Judges.

RADER, Circuit Judge.

Following an investigation under 19 U.S.C. § 1337, the United States

International Trade Commission found no infringement of United States Patent

No. 4,935,184 (filed July 27, 1989) (’184 patent), which covers injection molded

products. In the Matter of Certain Auto. Tail Light Lenses and Prods., Inv. No.

337-TA-502, Notice of Final Initial Determination (July 9, 2004) (Initial

Determination); Notice of Final Determination (Aug. 20, 2004) (Final

Determination). Ole Sorensen had alleged that certain models of imported

Mercedes-Benz automobiles contained injection-molded laminated tail lights that
were made by a process that infringed the ’184 patent. The Commission found

no infringement because under its interpretation of one limitation present in all

the claims of that patent, the molded materials must differ in some characteristic

other than color. The accused infringer, however, used materials that differed

only in color. Therefore, and without analysis of whether other limitations of

relevant claims of the ’184 patent were met by the accused products, the

Commission found no domestic injury. Because the Commission erred in its

interpretation of the relevant limitation, this court reverses the determination of

that limitation, vacates the judgment of non-infringement, and remands for further

proceedings on infringement and injury.

I.

The ’184 patent, “Stabilized Injection Molding When Using a Common

Mold Part with Separate Complimentary [sic] Mold Parts,” claims a method of

spacing mold sections during sequential steps of plastic injection molding. These

figures from the patent illustrate a two-step sequential molding process.

In Fig. 1B, plastic material 14 is first injected through a nozzle and aperture 24

05-1020 2
and 22, and solidifies between the common mold part 10 and a first mold cavity

12. Then, in Fig. 2B, the solidified plastic 20, together with the common mold

part 10, is placed into a second mold cavity 26. In a second molding step, as

shown in Fig. 2B, material 32 is injected through 36 and 34. In this step,

surfaces 30 of the first molded plastic bear against complementary surfaces of

the new mold cavity. The unique geometry of the inventive method aligns the

first casting with the second mold and stabilizes both. When the second injection

solidifies, the finished part is a solid lamination of the second and first plastic

materials, 20 and 32 in Fig. 2B.

Sorensen asserted that Mercedes infringed claims 1, 6, 8, and 10 of the

’184 patent. Claim 1--an independent claim upon which claims 6, 8, and 10

depend--recites in pertinent part:

1. A method of cyclic injection molding in thin-walled hollow,
plastic product having a closed end and an open end with
laminated walls terminating in a rim at the open end, utilizing a first
mold cavity and a second mold cavity, the first mold cavity being
defined by a first common mold part and a first complementary
mold part, and the second mold cavity being defined by the first
common mold part and a second complementary mold part, the
method comprising the steps of

....

(e) injecting a second plastic material having different
characteristics than the first plastic material into the second mold
cavity while the first plastic material component is contained
therein . . . .

(’184 patent, col. 9, ll. 30-68; col. 10, ll. 1-13) (underlined text shows disputed

claim language). When originally filed, the language of step (e) provided:

“injecting a second plastic material into the second mold cavity while the first

05-1020 3
plastic material component is contained therein.” The applicant added the

disputed claim language involving “different characteristics” to step (e) during

prosecution. Mercedes and Sorensen differ on the interpretation of this phrase.

The Commission’s administrative judge found that the term “different

characteristics” refers to plastics that have different molecular properties, but

could not refer to different colors of the same material. Mercedes’ accused

product is an automobile tail light lens that is a lamination of two plastics that are

different only in color. Hence, under this claim construction, the administrative

judge found that this accused product did not satisfy the “different characteristics”

limitation.

II.

This court reviews legal determinations in section 337 investigations, such

as claim construction, without deference. Checkpoint Sys., Inc. v. U.S. Int’l

Trade Comm’n, 54 F.3d 756, 760 (Fed. Cir. 1995). This court reviews the

factual determination of infringement by the International Trade Commission for

substantial evidence. 19 U.S.C. § 1337(c) (2000); 5 U.S.C. § 706(2)(E) (2000);

Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d 1017, 1019 (Fed. Cir. 1987).

Substantial evidence is “such relevant evidence as a reasonable mind might

accept as adequate to support a conclusion.” Enercon GmbH v. Int’l Trade

Comm’n, 151 F.3d 1376, 1381 (Fed. Cir. 1998).

Claim Interpretation

In construing the claims of a patent, “[t]he inquiry into how a person of

ordinary skill in the art understands a claim term provides an objective baseline

05-1020 4
from which to begin claim interpretation.” Phillips v. AWH Corp., 415 F.3d 1303,

1313 (Fed. Cir. 2005) (en banc). “[T]he person of ordinary skill in the art is

deemed to read the claim term not only in the context of the particular claim in

which the disputed term appears, but in the context of the entire patent, including

the specification.” Id.

During prosecution, a patent applicant may consistently and clearly use a

term in a manner either more or less expansive than it is used in the relevant art,

thereby expanding or limiting the scope of the term in the context of the patent

claims. However, in order to disavow claim scope, a patent applicant must

clearly and unambiguously express surrender of subject matter during

prosecution. Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1388

(Fed. Cir. 2002).

In construing patent claims, a court should consult the patent’s

prosecution history so that the court can exclude any interpretation that was

disclaimed during prosecution. Phillips, 415 F.3d at 1317. Disclaimers based on

disavowing actions or statements during prosecution, however, must be both

clear and unmistakable. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,

1326 (Fed. Cir. 2003). Moreover, “it is the applicant, not the examiner, who must

give up or disclaim subject matter that would otherwise fall within the scope of

the claims.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381

F.3d 1111, 1124 (Fed. Cir. 2004); see also Bell Atl. Network Servs., Inc. v. Covad

Comm’c’ns Group, Inc., 262 F.3d 1258, 1273 (Fed. Cir. 2001) (Holding that,

05-1020 5
unlike the statement of an applicant, the statements of an examiner will not

necessarily limit a claim.)

In this case, the language in claim 1(e) requires that the first and second

materials have “different characteristics.” The claim does not limit these

differences to any particular sub-set of the broad term “characteristics.” In other

words, according to the claim language any difference in characteristics between

the two injected materials would satisfy the claim language. Thus, a difference in

color alone would satisfy the “different characteristics” limitation. The color would

be the characteristic that differs.

In the context of the invention, the primary point of a sequential molding

method would seem to call for some differences in the separately molded

materials. Obviously a product made of a single uniform material could be

produced in a single molding step. As long as the sequential materials differ in

some respect, however, the patent does not specify any particular characteristic

that must differ to satisfy the “different characteristics” limitation. The breadth of

the claim language suggests that any difference in characteristics justifies the

sequential molding process. As long as the characteristics differ, the patent does

not specify further the nature of the difference.

To reinforce this interpretation of the claim language, the specification of

the ’184 patent states: “The first and second plastic materials may be either the

same material or different materials.” ’184 patent, col. 9, ll. 17-18. This passage

emphasizes that the material injected into the molds may be “the same.” This

reference suggests again that the first and second injection could use plastic with

05-1020 6
the same molecular structure. In that case, the “different characteristics”

limitation would require some difference other than molecular structure, such as

color.

In the specification the inventor also offers examples of a number of

characteristic differences in materials that would justify separate molding steps.

One of these is transparency. See ’184 patent, col. 3, ll. 11-43. Differences in

transparency, like differences in color, are differences that may or may not be

associated with molecular structure. Thus, the inventor made clear in the

examples as well that a difference characterizable in terms other than molecular

structure would satisfy the “different characteristics” limitation. However, the

inventor does not limit the invention to these examples. In other words, the

inventor does not disclaim, in the specification or claims, any particular difference

in characteristics of the materials used in the sequential molding steps. In sum,

the claim language and the specification show that color differences would

suffice to satisfy the broad “different characteristics” limitation.

The prosecution history of the ’184 patent similarly shows no disavowal of

claim scope in relation to material characteristics. The inventor amended claim 1

a number of times in response to rejections for obviousness over prior art. In the

original application, claim 1(b) specified “injecting a first plastic material into the

first mold cavity,” and claim 1(e) specified “injecting a second plastic material into

the second mold cavity while the first plastic material component is contained

therein.” The examiner rejected claim 1 under 35 U.S.C. § 103 as obvious, citing

U.S. Patent Nos. 4,422,995 (filed Dec. 7, 1981); 3,543,338 (filed Nov. 6, 1969);

05-1020 7
3,832,110 (filed June 16, 1972); and 4,459,256 (filed March 22, 1982). To the

examiner, these references would have made it obvious at the time of invention

to use “the concept of a stabilizing region” in a multi-step molding process. In the

rejection, the examiner noted that “the particular materials selected to be molded

are a mere matter of choice depending on the product desired and are of no

patentable consequence to the claimed process.” This comment showed that the

examiner based the obviousness rejection upon stabilization in a multi-step

process, not on the characteristics of the materials used in the injections.

On January 11, 1989, the inventor attempted to overcome the

obviousness rejection by amending claim 1 to specify that the final product would

require laminated walls. The inventor also modified steps 1(b) and 1(c) to specify

that the first or second plastic material would be injected until it reaches the

parting line between the common mold part and the complementary mold part.

On April 27, 1989, the examiner again rejected the amended claims for

obviousness over the same prior art.

On July 11, 1989, the examiner had a telephone interview with the

inventor concerning the amended (and rejected) claim 1. The examiner’s record

of this interview, in its entirety, is:

Discussed meaning of parting line and fact that two different
materials with different properties are used. An amendment
changing these limitations may not be entered.

Two weeks later the inventor filed a continuing application, amending

claim 1 to include a requirement, in the preamble, that the molded product

contain “a closed end and an open end terminating in a rim at the open end,”

05-1020 8
and adding the phrase “having different characteristics than the first plastic

material” to claim 1(e). 1 The inventor also amended the abstract with the

addition: “A second plastic material having different characteristics than the first

plastic material is injected until it reaches the portion of the second mold cavity

that defines the rim of the product to form a laminated wall.” The inventor

explained these changes as:

better distinguish[ing] the present invention over the art of record by
defining a rim of the molded product, pointing out that both the
injection of the first plastic material and the injection of the second
plastic material reach the respective portions of the first and second
mold cavities that define the rim of the product, and further pointing
out that the first and second plastic materials have different
characteristics.

The examiner then allowed the claims.

This final exchange between the inventor and the examiner during

prosecution appears to have misled the administrative judge. Nevertheless, the

exchange in no way shows a clear and unambiguous disavowal of the broad

scope of the claim language. In other words, the prosecution history does not

disavow the broad scope of the claim language and specification that permit any

difference in characteristics, including color. See Omega Eng’g, Inc., 334 F.3d at

1324. On this record, this court perceives no disavowal of scope. The claim thus

excludes no specific differences in characteristics, and in particular differences in

color, in the molded materials.

1
The inventor also changed claims 1(h) and 1(i) to point out that the first
and second plastic materials reached the portion of the relevant mold cavity that
defines the rim of the product.

05-1020 9
 B. Summary Judgment of Infringement

Mercedes conceded, for purposes of the motion for summary

determination, that the plastic materials in the accused sequential molding steps

for the accused products differ only in color. With this concession, under the

correct interpretation of claim 1 of the ’184 patent, the molding method used by

Mercedes infringe that claim. However, a more complete consideration of the

infringement issue is now necessary, so that the district court’s summary

determination of non-infringement must be vacated.

CONCLUSION

Because the Commission erred in its interpretation of one limitation of

claim 1 of the ’184 patent, this court reverses the Commission’s interpretation of

the relevant claim element, vacates its summary determination of

noninfringement, and remands for further proceedings consistent with this action.

COSTS

Each party shall bear its own costs.

REVERSED-IN-PART, VACATED, and REMANDED

05-1020 10