"Between" Construed as "Only Between"
Patent No. 6,991,104 reciting
According to Senior Circuit Judge Archer,
a first, flexible, fabric front panel having a top edge and joined between the
front side edges of the first and second end panels; [and]
a second, flexible fabric back panel having a top edge and joined between the backside edges of the first and second end panels;
Travel Caddy is correct that the preposition "between" could be used to describe
something that extends beyond the bounds of the objects of the preposition.... However, the written description and drawings of the ’104 patent do not support such a broad interpretation of the term "between" in the claims.
Considered in isolation, the ’104 patent’s Figure 10 [above] appears to illustrate a bag having a portion that extends beyond the end panel. Travel Caddy argues that that portion is part of the bottom panel. However, the written description demonstrates that the areas seen to be extending beyond the end panels are simply the bindings connecting fabric layers. When referring to Fig. 10, the written description states "all of the described panels are fabric covered, preferably by two layers of fabric which are sewn together and retained along their edges by a binding." ’104 patent col.6 ll.11-13. The written description further notes that "the binding techniques, as well as the assembly techniques associated with the tool bag of FIGS. 10 and 11, is [sic] substantially similar to or the same as previously described with respect to the other embodiments of the invention." Id. at ll.39-43. Finally, the written description states that while "modifications may be made to the construction[,] . . . the use of binding 40 in a closed loop configuration as described enables such variations." Id. at ll.59-62.
The significance of these statements is apparent when examining Figure 4 of the ’104 patent, the only figure depicting the binding of the claimed invention. Id. at col.2 ll.27-28 (describing Figure 4 as "a cross-sectional view of the binding construction of the
carrying case"). The written description specifically refers to Figure 4 when describing Figures 1, 2, and 5, and the binding illustrated in Figure 4 is the only binding that can be considered "previously described."
Figure 4 shows a rigid board or panel member, 24, covered by two fabric layers, 20 and 22. These elements encompass the fabric-covered bottom panel of the claims. Reference number 28 is one of the fabric end panels of the claims. A binding, 40, "folds over the edges of the layers of fabric 28, 22, and 20 and connects them one to the other by means of a single seam." Id. at col. 3 ll.45-47. Important to the present case, Figure 4 illustrates that the bottom fabric covered panel and the fabric end panel are coterminous. As explained above, this is the only representation of the binding of the panels, and the written description states that the binding used for the embodiment of Figure 10 "is substantially similar to or the same as previously described with respect to the other embodiments of the invention." Id. at col.6 ll.39-43.
Thus, contrary to Travel Caddy’s argument, the district court’s construction of between does not exclude an embodiment of the invention contained in the written description.
Because we find no error in the district court’s construction of the term "between," and it is undisputed that the bottom, front, and back panels of the ProTool extend beyond th e edges of the end panels, we agree with the district court that Travel Caddy has not shown a likelihood of success in proving that OTB infringes claim 19 of the ’104 patent.
As noted by dissenting Circuit Judge Dyk:
The problem in my view is the next step in the majority’s construction, which is to treat the "between" limitation as though it read "only between." There is no support for such a reading in the claim language, the specification, or the prosecution history.
Indeed, the claim’s use of the term "comprising" is directly inconsistent with such a construction. It is well established that "comprising" is a "term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim." Genentech, Inc. v. Chiron Corp., 112 F.3d 495 (Fed. Cir. 1997); Manual of Patent Examining Procedure § 2111.03 "Transitional Phrases" (8th ed., Rev. 5, 2006) ("The transitional term ‘comprising' . . . is inclusive or open-ended and does not exclude additional, unrecited elements . . . ."). Here, the additional feature, extensions of the front and back panels beyond the end panels, is fully consistent with the "comprising" formulation and does not render the accused bags non-infringing.
. . . Here, the accused ProTool Bag meets each limitation of claim 19 but includes the
additional feature that the front and back panels extend beyond the end panels.
The majority does not find that the patentee, in either the specification or the
prosecution history, made an explicit disclaimer of claim scope in this respect.
Because I think that claim 19 does not exclude bags that have front and back
panels that extend beyond end panels, I would find that Travel Caddy has shown a
likelihood of success with respect to the Pro Tool Bag. I would reverse that
aspect of the District Court’s judgment.