Moore U.S.A., Inc.,plaintiff-Appellant v. Standard Register Company,defendant-Cross
Docket: 1387
Court: Court of Appeals for the Federal Circuit; September 22, 2000; Federal Appellate Court
Moore U.S.A. Inc. filed a patent infringement lawsuit against Standard Register Company in the U.S. District Court for the Eastern District of Virginia, claiming infringement of U.S. Patent Nos. 5,201,464 ('464 patent), 5,253,798 ('798 patent), and 5,314,110 ('110 patent). Standard Register counterclaimed for non-infringement and invalidity of the patents. The district court granted summary judgment in favor of Standard Register, ruling there was no infringement for all three patents and dismissed the case with prejudice. Moore appealed the summary judgment on the '464 patent's equivalents and the non-infringement rulings on the '798 and '110 patents. The Federal Circuit affirmed the district court's decision, stating Moore did not establish a genuine issue of material fact regarding infringement. The '464 patent describes a "Pressure Seal C-Fold Two-Way Mailer," which includes a mailer with an integral return envelope formed during the folding process, allowing the recipient to easily detach and return a stub. Standard Register's cross-appeal regarding the dismissal of its counterclaims was also dismissed as moot.
The '464 patent contains five independent claims, with independent claim 1 detailing the structure of a mailer type business form. This form includes a sheet of paper with distinct first and second faces that serve as the interior and exterior of the mailer, respectively. The sheet has opposite, parallel longitudinal edges and ends. It features two longitudinal lines of weakness near these edges, creating longitudinal marginal portions.
First and second longitudinal strips of adhesive are placed in these marginal portions on the first face, running parallel to the edges. Additionally, third and fourth longitudinal strips of adhesive are located on the same face, adjacent to the lines of weakness but closer to one end of the sheet, extending a shorter distance than the first and second strips.
On the second face, fifth and sixth longitudinal strips of adhesive are similarly placed, adjacent to the same end of the sheet as the third and fourth strips, and their length does not exceed that of the third and fourth strips.
The claim also describes a transverse adhesive strip on the first face, perpendicular to the third and fourth strips and spaced apart from them, along with a line of weakness adjacent to this transverse strip to facilitate easy separation of the paper.
Independent claim 9 specifies a mailer business form with an integral return envelope, characterized by a C-fold paper sheet with defined sections and various adhesive strips. The sheet includes first, second, and third sections, with the second and third sections larger than the first. It features lines of weakness and longitudinal marginal portions with adhesive strips that connect the sections and form the envelope. Additionally, there are transverse adhesive strips and lines of weakness for easy separation, along with visible outgoing address indicia and suggestions for return address information on the mailer. Claims 16, 17, and 19 include similar limitations, specifically regarding outgoing address indicia. Claim 12 requires a die-cut window in the third section for viewing the outgoing address. The accused SRC mailer, Form 8140C04, matches the described features, containing adhesive strips and sections aligned with the specified claims, effectively sealing the return envelope.
The accused SRC mailer, while similar to the patented mailer, does not meet the literal requirements of claims 1, 9, 16, 17, and 19 of the '464 patent. Specifically, Moore concedes that the SRC mailer fails to satisfy the claim 1 requirement that the adhesive strips extend the majority of the lengths of the longitudinal marginal portions. Additionally, it does not fulfill three critical limitations in claims 9, 16, 17, and 19, including the connection of longitudinal strips, the presence of a transverse adhesive strip, and a transverse line of weakness.
On April 3, 1998, the district court partially granted and denied SRC's summary judgment motion regarding non-infringement. It ruled that the SRC form could not literally infringe the '464 patent due to the absence of the claimed limitations but recognized a genuine issue of material fact regarding whether the SRC product functions equivalently to the patented mailer, leading to a denial of summary judgment under the doctrine of equivalents.
Subsequently, following SRC's motion for reconsideration, the court ruled against Moore, asserting that the accused form could not infringe under the doctrine of equivalents because the adhesive strips on the SRC form do not extend sufficiently. The court emphasized that applying the doctrine would eliminate the 'majority of lengths' requirement. Furthermore, the court maintained that the absence of structural limitations in the accused form prevented it from infringing claims 9, 16, 17, and 19 under the doctrine. It rejected Moore's argument that a Supreme Court case permitted rearranging claim limitations, citing the Federal Circuit's firm stance against such practices.
The '798 Patent pertains to mailer forms designed for use with IBM 3800 printers, which are supplied in a continuous web format with perforation lines for separation. Conventional forms had adhesive positioned 1/16 inch from the edges, leading to issues when the printer paused, as the rollers could stick to the adhesive located within the impression area created by the rollers. The '798 patent introduces a solution by repositioning the pressure-sensitive adhesive further from the leading and trailing edges, thereby preventing interference with the printer rollers during pauses.
Claim 1 of the patent describes a mailer form consisting of a folded paper sheet with specific dimensions and features, including longitudinal and transverse adhesive patterns designed to secure the form's sections while avoiding roller interference. The claim specifies that the transverse adhesive pattern is sufficiently distanced from its edge to prevent issues during printer pauses. Claims 2, 4, and 10 depend on claim 1 but do not define a specific distance for the adhesive, whereas other claims, including claim 13, require a distance of 5/16 inch from the edge.
During the patent's prosecution, the examiner rejected the "distance sufficient" limitation as indefinite due to its vagueness. The applicant argued that this functional description was adequate, leading to the eventual allowance of the claims.
The accused SRC form is a Z-fold mailer consisting of three panels with adhesive strips along the edges for sealing after printing. SRC claims the adhesive is positioned about 1/16 inch from the leading and trailing edges, designed not to interfere with printer rollers. On March 20, 1998, the district court granted SRC partial summary judgment for non-infringement of the '798 patent. The court rejected Moore's claim that the "distance sufficient" limitation in claim 1 was printer-dependent, affirming that it specifically referenced the IBM 3800 printer. This conclusion was based on the prosecution history, where the applicant defended the limitation as a functional description to clarify spacing. Consequently, the court determined that "distance sufficient" meant "more than 1/4 inch," given that the IBM 3800 leaves a 1/4 inch impression during printing pauses. The court found no genuine issue of material fact regarding infringement by the SRC form, dismissing Moore's counsel's declarations about adhesive spacing as unsubstantiated.
The '110 Patent, titled "Double Fold Mailer," describes a mailer-type business form that is double-folded to create four equally sized panels, facilitating extensive printing space. The independent claim 1 specifies the construction of an intermediate sheet of paper with distinct characteristics, including:
- A first face for the interior and a second face for the exterior of the mailer.
- Parallel longitudinal edges and end edges.
- Longitudinal lines of weakness adjacent to the edges, delineating longitudinal margin portions.
- Patterns of adhesive in the margin portions of both faces, covering the entire length between the ends of the sheet.
- Fold lines that create four equal-sized panels.
- A stipulation that the sheet lacks adhesive along the end edges between the longitudinal lines of weakness.
Independent claim 11 mirrors this requirement regarding the absence of adhesive along the end edges. Initially, claims 1 and 11 included a broader absence of adhesive that was rejected by the examiner due to similarities with U.S. Patent No. 4,575,121, known as the Conti patent. The Conti patent features a double-fold form with a continuous adhesive perimeter and non-permanent adhesive strips, allowing for the securing and opening of the mailer. The examiner noted it would be obvious for someone skilled in the field to exclude adhesive from the end edges in the Conti design when not needed.
The applicant amended claims 1 and 11 by removing the phrase "and parallel to said end edges of said sheet" and argued that the absence of adhesive on the end edges reduces costs, processing time, and waste, while facilitating easier access to the mailer. The examiner initially rejected these claims as indefinite under 35 U.S.C. § 112, ¶ 2, stating that the adhesive patterns cover the sheet's end edges, making them not devoid of adhesive. Additionally, the claims were deemed unpatentable when compared to the existing Conti and File patents.
In response, the applicant modified the claims to specify the absence of adhesive "between said longitudinal lines of weakness," asserting that neither Conti nor File taught this feature. The applicant argued that removing adhesive from Conti's end edges would compromise its intended function, as it is designed to securely contain items like bank statements and checks.
Subsequently, the examiner accepted the amended claims. The accused SRC form features a row of widely spaced adhesive patches along its end edge, covering no more than 25% of the distance between longitudinal lines of weakness. The mailer opens by tearing along perforated lines, separating adhesive patches without any perforation adjacent to them.
On March 20, 1998, the district court granted SRC's summary judgment of non-infringement, concluding that the presence of adhesive patches in the accused form means it does not literally infringe the '110 patent, based on the definition of "devoid" as completely lacking.
The court determined that SRC's form did not infringe by equivalents due to prosecution history estoppel, emphasizing that the applicant had amended claims to specify that the sheet was "devoid of adhesive extending along said edges." This amendment was crucial in distinguishing the Conti patent. The district court concluded that SRC's form could not meet the "devoid of adhesive" requirement under the doctrine of equivalents. Additionally, the court dismissed Moore's argument about the premature nature of summary judgment, noting Moore did not provide specific expected disclosures that would impact the court's findings.
Summary judgment is appropriate when there are no genuine material facts in dispute, and the moving party is entitled to judgment as a matter of law. The court must view evidence in favor of the nonmovant. Infringement analysis consists of two steps: defining the scope of the patent claims and comparing these to the accused device. Claim construction is a legal question, while infringement is a factual question.
Moore appeals solely the summary judgment of no infringement under the doctrine of equivalents for the '464 patent, not the no literal infringement ruling. Regarding infringement of Claim 1, Moore claims that the accused SRC form's longitudinal strips, which cover a minority of the longitudinal margins, are equivalent to the claimed strips that extend a majority of those margins. Moore argues the district court incorrectly interpreted a prior decision (Sage) as preventing the application of equivalents to the "majority of the lengths" limitation, asserting that this limitation is a matter of degree rather than structure, and likening it to acceptable equivalents in previous cases.
Moore asserts that the "majority of the lengths" limitation in the '464 patent should be interpreted to allow equivalents covering a minority of lengths, based on two main arguments. First, Moore claims that SRC was aware of and copied the '464 patent, which should expand the scope of equivalents under Graver Tank, Mfg. Co. v. Linde Air Prods. Co. Moore also references Wilson Sporting Goods Co. v. David Geoffrey, Assocs. to support a hypothetical claim that modifies the limitation to include longitudinal strips extending a minority length, arguing such modifications would not encompass prior art while still covering SRC's accused form.
Second, Moore argues that the distinction between strips extending "about 48%" versus "50.001%" of the longitudinal margins presents a genuine issue of material fact regarding their equivalence, based on criteria of function, way, and result. The written description of the '464 patent suggests that adhesive strips may only need to extend about half the length, reinforcing Moore's position.
However, the court disagrees with Moore's theories. It asserts that not all claim limitations receive equal scope under the doctrine of equivalents. The court emphasizes that allowing a minority (e.g., 47.8%) to be equivalent to a majority would undermine the necessity of the claim language. It concludes that it is illogical to equate a minority with a majority, which no reasonable juror could support. Therefore, the court holds that the "majority of the lengths" limitation cannot include a minority length.
Moore's hypothetical claim analysis under Wilson Sporting Goods is limited and cannot freely redefine claim language but must adhere to existing claim limitations. The doctrine of equivalents should apply to individual claim elements rather than the invention as a whole, and cannot bypass prosecution history estoppel or the All Limitations Rule, which restricts the scope of equivalents. Moore's hypothetical claim analysis fails due to these constraints.
Moore's assertion that Graver Tank supports a broader scope of equivalents based on an alleged infringer's knowledge or copying is incorrect. The Supreme Court's ruling in Warner-Jenkinson clarifies that intent is irrelevant when applying the doctrine of equivalents, which is akin to determining literal infringement. Known interchangeability of substitutes is the only context in which the Court considers an infringer's knowledge.
Furthermore, regarding the written description's teachings about the lengths of claimed strips, Moore's argument that it implies coverage of unclaimed embodiments is flawed. Legal precedent establishes that unclaimed subject matter is public domain, and since Moore disclosed distinct embodiments, he cannot enforce the unclaimed embodiment as an equivalent to the claimed one.
Consequently, the district court correctly granted summary judgment of no infringement by equivalents for claim 1 of the '464 patent. Regarding claims 9, 12, 16, and 17, Moore argues that the accused SRC form infringes under the doctrine of equivalents despite not meeting three specific claim elements. Moore claims the SRC form is a functional equivalent, asserting it produces an integral, detachable envelope, but this claim does not overcome the established legal limitations.
Moore contends that the district court incorrectly dismissed the Supreme Court's 1929 ruling in *Sanitary Refrigerator Co. v. Winters* in favor of the decision in *Sage*, which limited the application of the doctrine of equivalents regarding SRC's rearrangement of claim limitations. Moore highlights that *Sanitary Refrigerator* supports the doctrine's application to rearrangements, emphasizing phrases like "form and position" and "reciprocal changes." He argues that, in the event of a conflict, *Sanitary Refrigerator* should take precedence.
To illustrate his point, Moore presents a hypothetical claim modeled after *Wilson Sporting Goods*, suggesting that if two limitations were rephrased, they would align with the SRC form and be patentable over prior art. However, the court rejects Moore's attempts to apply the doctrine through both functional and hypothetical claim analyses, noting that these approaches would undermine the specific claim requirements that the "means defining a transverse line of weakness" must be positioned opposite from the second section. The SRC form, which has the line of weakness adjacent to the strip on the same side as the third section, does not meet this condition.
Furthermore, while *Sanitary Refrigerator* discusses "reciprocal changes," it does not endorse rearranging claim limitations. The case involved an automatic latching device where the Supreme Court noted that changes in form did not alter the essence of the invention. The court concluded that a close copy, despite some changes in form, constitutes infringement if it uses the same devices and performs the same functions without a change in principle.
The court determined that two reciprocal changes in the Winters and Crampton structure must occur together for the changes to be effective, leading to a conclusion that these changes were insufficient to avoid infringement. The case of Sanitary Refrigerator exemplifies a typical doctrine of equivalents scenario, where the alleged infringer made insubstantial substitutions for claim limitations. The court clarified that Sanitary Refrigerator should not be interpreted as permitting rearrangement of claim limitations and emphasized that the public has a right to rely on clear structural limitations in issued patents, as established in Sage. Furthermore, it was noted that Sanitary Refrigerator did not address the All Limitations Rule, which the Supreme Court has reaffirmed, indicating that allowing reciprocal changes to create infringement would undermine specific claim limitations.
The district court's summary judgment of no infringement by equivalents for claims 9, 12, 16, and 17 of the '464 patent was upheld. Regarding the '798 patent, Moore argued that the district court incorrectly interpreted the "distance sufficient" limitation as tied to the specifications of the IBM 3800 printer, claiming that the language of the patent should not impose such a specific constraint. Moore contended this misinterpretation violated precedent established in previous cases. He further asserted that the prosecution history supported a broader interpretation and did not necessitate importing the IBM 3800 printer's specifications into the claim.
The invention is designed to encompass all printers, despite their differing spacings, and its broad claim does not render it vague or incomplete. In response to a rejection that claim 1 was indefinite due to unclear distance specifications, the applicant argued that the "distance sufficient" limitation is a functional description that provides a definite and accurate definition for spacing. This functional approach is supported by the precedent set in *In re Halleck*, where the exact numerical amount was deemed non-essential, instead emphasizing the functional term "an effective amount for growth stimulation." The applicant cannot predict future printer designs and their required distances, but this does not justify denying the invention's protection. Determining infringement can be done by comparing products against the functional terms of claim 1, which are sufficiently definite. The applicant asserts that claim 1 is broad enough to protect the invention without being indefinite. The examiner's allowance of the claims indicates an understanding that "distance sufficient" is not restricted to the IBM 3800 printer specifications. SRC does not dispute this limitation for claim construction and acknowledges the possibility of future printers functioning similarly to the IBM 3800. Furthermore, the claim's language refers to "a printer" in general, without specific mention of the IBM 3800, indicating that the written description's reference to the IBM 3800 is merely a preferred embodiment rather than a limitation.
The excerpt addresses the interpretation of patent claims, specifically focusing on the "distance sufficient" limitation related to an IBM 3800 printer. It emphasizes that references to a preferred embodiment, including the IBM 3800 printer, do not impose limitations on the claims, as established in previous case law (Laitram and Pitney Bowes). The examiner's rejection regarding the indefiniteness of the "distance sufficient" limitation indicates that it is not confined to any specific printer, a view the applicant shared in their responses. The examiner's acceptance of the claims suggests that the limitation is functionally defined and meets the requirements of 35 U.S.C. § 112.
The text further clarifies that defining device dimensions based on usage environment is permissible, referencing Orthokinetics. It critiques the district court's interpretation, which suggested that the limitation was printer-specific, asserting that this was a misinterpretation that could be deemed harmless. Moore argues that the district court's error necessitates vacating the summary judgment of non-infringement, highlighting that SRC's own statements indicate their product does not interfere with printer rollers, implying potential literal infringement. Moore also claims that the accused SRC forms infringe under the doctrine of equivalents by achieving the same function and result as the patented invention.
Moore requests the court to vacate the district court's summary judgment ruling of non-infringement, asserting that genuine material facts exist that warrant reconsideration. Despite bearing the burden of proof for infringement, Moore has not provided sufficient evidence indicating that SRC used any printer other than the IBM 3800. For claim 1, the "distance sufficient" limitation requires that the adhesive be at least 5/16 inch away from the printer’s transverse edges to avoid roller interference; however, the adhesive's distance in SRC products does not meet this requirement. Moore concedes that the adhesive engages the IBM 3800's rollers, confirming interference. Consequently, SRC cannot infringe claims 1, 2, 4, and 10 legally, as Moore's evidence fails to sufficiently demonstrate this infringement.
Moore's declarations are deemed insufficient to contest the summary judgment, as they mainly consist of conclusory statements. Specifically, claims that SRC forms avoid roller interference due to adequate spacing lack factual support. A declaration from Moore’s counsel, Robert Vanderhye, asserts that several SRC forms have spacings exceeding 1/16 inch, but no substantial evidence is provided. Since the IBM 3800 printer impacts forms at a distance of 1/4 inch, adhesive located at 1/16 or 1/8 inch cannot literally infringe the patent. Additional declarations from Moore’s employees also lack quantitative evidence to support claims of spacing modifications that would avoid infringement.
Further, SRC cannot infringe claims 3, 5-9, and 11-16, as these require the adhesive to be 5/16 inch from the transverse edge, a fact Moore does not effectively contest. Moore’s assertion regarding the doctrine of equivalents is rejected, as it does not sufficiently articulate how SRC's device meets the criteria established in the Graver Tank case.
Moore failed to present sufficient evidence to establish a genuine issue of material fact regarding whether the accused SRC device infringes the patent by equivalents. Specifically, Moore did not counter SRC's assertion that its adhesive operates effectively due to its composition, rather than its spacing from the printer's transverse edge. In contesting the district court's summary judgment of non-infringement of the '110 patent, Moore claimed that the court did not adequately interpret the "devoid of adhesive" limitation in light of prior art and prosecution history, as required by relevant case law. Moore referenced the Conti patent, which shows adhesive strips extending between longitudinal lines of weakness, arguing that "devoid of adhesive" should include forms with minimal adhesive or adhesive only at one end edge.
The court rejected all of Moore's claim construction arguments. It noted that the Conti patent demonstrates an intermittent adhesive strip, contradicting Moore's claim that the absence of a "substantially complete" adhesive strip would satisfy the limitation. Additionally, the prosecution history indicated that the applicant meant to exclude all adhesive from the end edges of the Conti form for it to perform the same function. The court further clarified that the claims explicitly refer to both end edges and both faces of the sheet, meaning the "devoid of adhesive" limitation applies to all edges, not just some. The written description of the patent supports this, showing forms without adhesive on all four end edges.
Moore contends that the term "along" implies that a strip must directly abut an end edge rather than merely be adjacent to it. However, the definition of "along" as per Webster's dictionary indicates that it can mean "near" rather than strictly abutting. Moore argues that summary judgment for non-infringement was inappropriate because the adhesive patches on the accused SRC form are positioned near but not "along" the end edge, do not extend "substantially completely" between longitudinal lines of weakness, and are absent from three of the four end edges. The court, having rejected Moore's arguments regarding these terms, determined that the accused SRC form does not literally meet the "devoid of adhesive" limitation present in claims 1 and 11 of the patent, as the accused form contains adhesive that extends along an end edge.
Regarding the doctrine of equivalents, Moore asserts that the accused SRC form is insubstantially different from the claimed form because both allow for opening the mailer without a tear strip, with the accused form’s adhesive patches minimizing waste and cost. Moore argues that despite the SRC form opening with slightly more difficulty, it functions similarly to the patented mailer. He references hypothetical claim analysis to suggest that a claim requiring a tear strip would encompass the accused SRC form while avoiding the Conti patent. Moore also claims that the district court incorrectly applied prosecution history estoppel, arguing that the amendments made to the "devoid of adhesive" limitation were solely for clarity under 35 U.S.C. § 112 and did not restrict the interpretation of the claims to exclude the accused SRC form.
The accused SRC form does not infringe the '110 patent under the doctrine of equivalents due to prosecution history estoppel, which excludes subject matter surrendered during patent prosecution. Moore's argument that the absence of adhesive was crucial to the patent's allowance supports this conclusion, as it limits the scope of equivalents to exclude forms with adhesive. Moore's hypothetical claim under Wilson Sporting Goods also fails because prosecution history estoppel applies.
Moore contends that the district court's summary judgment was premature, arguing that its Rule 56(f) declarations should have been sufficient to oppose summary judgment. These declarations indicated a need for certain allegedly infringing forms from SRC, which the district court allegedly ignored, along with claims of insufficient discovery time and lack of responses to interrogatories. Moore cites a precedent where summary judgment was vacated due to inadequate discovery time.
Additionally, Moore seeks to supplement the appeal record with new evidence regarding another SRC form that supposedly infringes the '464 patent, claiming this evidence was recently uncovered and that it had relied on SRC's misrepresentations. However, the court emphasizes that appellate interventions in trial management are rarely justified and concludes that Moore's declarations did not warrant further discovery efforts to find potential infringing products.
Moore's Rule 56(f) declarations failed to demonstrate how additional discovery could establish a genuine issue of material fact regarding SRC's alleged non-infringement of three patents. Moore acknowledged that its counsel had access to inspect all accused SRC forms and that these forms were publicly available. Consequently, the district court's decision to deny further discovery was upheld, and Moore's comparison to the Burnside-Ott case was rejected. In Burnside-Ott, the trial judge had effectively managed discovery, which was later remanded for additional discovery due to legal errors on equitable estoppel claims. Although the district court here made a harmless error in its claim construction of the '798 patent, its application of patent law was largely correct, negating the need to vacate summary judgment orders for further discovery.
Regarding Moore's request to introduce new evidence of infringement that was not presented to the district court, the appeal record is typically confined to what was submitted at that level. Moore's failure to produce this evidence earlier, despite having access to it during the original litigation, led to a denial of this request. The court noted that SRC's alleged misleading claims about commercialization did not affect the validity of Moore's infringement claim under the '464 patent, which allows for infringement findings based on manufacture or use. Lastly, SRC's conditional cross-appeal of invalidity became moot following the affirmation of non-infringement for all asserted claims, resulting in a final affirmation of the district court's orders. Moore had previously dropped a fourth patent claim due to lack of standing and did not appeal that dismissal.
The accused SRC forms have third and fourth adhesive strips that are 99% the length of the first and second strips, which is noted but not relied upon for a non-infringement ruling on claim 1. However, their absence could further support the district court's summary judgment. Moore does not contest that the accused SRC form lacks several required indicia for claims 9, 16, 17, and 19, including outgoing address indicia and a die cut window, which also would support non-infringement claims. Even if prosecution history estoppel did not apply, the presence of adhesive in the accused device cannot be equivalent to its absence in the claimed invention. Moore's prosecution statements regarding the benefits of no adhesive and the acknowledgment that the SRC mailer is more difficult to open undermine its position.
Judge Newman concurs with the non-infringement ruling for the '798 and '110 patents and claim 1 of the '464 patent but disagrees with the court's reasoning. He seeks to reverse the summary judgment regarding claims 9 and related claims of the '464 patent and remand for a proper infringement determination. The '798 patent addresses an issue with adhesive on Z-fold business forms sticking to the IBM 3800 printer. The patentee repositioned the adhesive to avoid this sticking, preventing forms from malfunctioning during printing. Claim 1 of the patent is highlighted as representative of the relevant elements for infringement analysis against the accused SRC forms.
A mailer-type business form consists of a folded paper sheet with defined sections, longitudinal edges, and transverse fold lines. It features longitudinal lines of weakness creating marginal portions and adhesive patterns intended to secure the sections together without interfering with printer rollers during operation. The district court determined that the claims were restricted to the IBM 3800 printer and specific adhesive distances mentioned in the patent, which is titled "Pressure Seal Adhesive Pattern for IBM 3800 Printers." The court construed "distance sufficient" to mean "more than 1/4 inch," the only distance specified in the patent. Moore contended that the claims should not be limited to the IBM printer or specific adhesive placement, asserting that any mailer form with non-sticking adhesive to rollers is covered. A panel majority agreed with Moore, finding the district court's claim construction erroneous. However, the dissenting opinion noted the majority's interpretation still effectively limited the claims to the IBM 3800 printer for infringement purposes, despite claiming a broader construction. This raised concerns about inconsistent claim interpretation, as established precedent requires uniformity across all contexts. The '464 patent, central to the dispute, pertains to a C-fold mailer with an integral return envelope, focusing on the length and placement of adhesive strips in relation to the accused SRC mailer, particularly in claims 1 and 9.
The legal document describes a mailer-type business form that includes an integral return envelope, characterized by a C-fold paper sheet with two faces and defined sections. Key features include:
1. **Sheet Structure**: The sheet has first and second opposite longitudinal edges and is divided into three sections by first and second transverse fold lines, with the second and third sections larger than the first.
2. **Lines of Weakness**: First and second longitudinal lines of weakness are formed parallel to the longitudinal edges, defining longitudinal marginal portions.
3. **Adhesive Strips**:
- First and second longitudinal strips of adhesive are placed in the marginal portions on the first face, connecting the first and second sections and the third and first sections.
- Third and fourth longitudinal strips of adhesive are located adjacent to the lines of weakness on the first face, connecting the first section to part of the second section to form the return envelope sides.
- Fifth and sixth longitudinal strips of adhesive are located on the second face, adjacent to the same end as the third and fourth strips.
4. **Transverse Adhesive and Weakness Line**: A transverse adhesive strip is defined on the first face, perpendicular to the third and fourth strips, with a transverse line of weakness adjacent to it in the third section for easy separation.
5. **Address Indicia**: The outgoing and return addresses are visible from the second face of the third section.
The design facilitates the construction of a self-contained mailer and return envelope, with multiple adhesive strips and lines of weakness allowing for easy assembly and separation.
The legal document addresses several claims in a patent infringement case involving Moore. Key points include:
1. **Return Envelope Indicia**: The document specifies requirements for indicia on a return envelope, including both the address and suggestions for inserting return address information.
2. **Summary Judgment on Non-Infringement**: Moore appeals a summary judgment ruling that found no infringement under the doctrine of equivalents, arguing that material factual disputes exist that prevent such a decision.
3. **Claim 1, Clause [d]**: The panel majority concluded that a strip length of 47.8% cannot be considered equivalent to a claimed "majority" length of 50%. This determination was criticized as a legal error, as factual questions regarding the equivalence of these lengths should be resolved through fact-finding rather than summary judgment.
4. **Dedication to the Public**: The panel's assertion that Moore dedicated to the public all embodiments less than a majority length lacks support. There was no evidence of prosecution history estoppel or prior art limiting equivalency to over 50%.
5. **Claim 9**: This claim does not impose a "majority" length requirement, meaning summary judgment based on length equivalency should not apply.
6. **Claim 1, Clause [e]**: The district court's agreement that no reasonable jury could find equivalency between lengths of 98% and substantially less than 47.8% for the third and fourth adhesive strips is supported.
7. **Claim 9 Rearranged Elements**: The district court ruled that rearranging elements in claim 9 negated the possibility of equivalency. Moore contends that the rearrangement does not affect the function or results of the elements. The panel majority's automatic bar against considering rearranged elements as equivalent contradicts existing legal precedent, which allows for factual determination of equivalency despite rearrangement.
8. **Remand for Fact-Finding**: The document concludes that the case regarding claim 9 should be remanded for factual findings concerning equivalency, as summary judgment was inappropriate due to unresolved factual issues.
The document cites relevant precedents, including Warner-Jenkinson Co. v. Hilton Davis Chemical Co. and Sanitary Refrigerator Co. v. Winters, emphasizing the necessity for a nuanced analysis of element roles in patent claims.
