Heidelberg Harris v. MAN Roland CV-95-309-B 03/25/98
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
Heidelberg Harris, Inc., et a l .
v. C-95-309-B
MAN Roland, Inc., et a l .
MEMORANDUM AND ORDER
Heidelberg Harris, Inc. manufactures and sells the Sunday
Press, a high-speed offset printing press. A competitor, MAN
Roland, Inc., contends that the Sunday Press infringes U.S.
Reissue Patent No. 34,970 (the "'970 patent") both literally and
under the doctrine of eguivalents. Heidelberg challenges both
claims in a motion for summary judgment. It argues that the
Sunday Press does not literally infringe the '970 patent because
the Sunday Press employs a print cylinder with a clamping channel
to secure the printing plate to the print cylinder whereas the
'970 patent covers only presses with clampless print cylinders.
Heidelberg also claims that MAN Roland cannot succeed with its
infringement by eguivalents claim because the patent's inventor surrendered the right to claim that the patent covered print
cylinders with clamping channels when he obtained the patent.
As I explain below, Heidelberg is correct on both counts.
Accordingly, I grant its motion for summary judgment.
I. BACKGROUND
A. Offset Printing
Offset printing is a process in which ink is applied to a
printing plate (also called the printing form or print form), the
inked image is printed onto a rubber-covered cylinder, and the
image is transferred from the cylinder to paper or another
material. Offset presses typically employ three rotating
cylinders to accomplish the printing process: a print cylinder to
which the printing plate is affixed; a transfer cylinder covered
by a rubber transfer form onto which the inked image is printed;
and an impression cylinder that brings the paper into contact
with the transfer cylinder. The typical arrangement of these
three cylinders is depicted in Figure 1.
2 Figure 1
Printing plates traditionally have been mounted on print
cylinders through the use of a clamp extending the length of the
cylinder. This mounting method has limitations, however, because
when a print cylinder includes a clamp, it loses its balanced
configuration, which in turn causes vibratory stresses when the
press is operated at high speeds. In addition, the point at
3 which the ends of the printing plate are clamped to the print
cylinder produces a gap that prevents "endless printing."
B. The Sunday Press
The Sunday Press's print cylinder represents a refinement in
the traditional means of mounting printing forms. Although a
clamp extends the length of the print cylinder, the clamp is much
less cumbersome than in other offset presses, interrupting the
surface only to a negligible extent. The less cumbersome clamp
also results in less weight differential in the print cylinder,
allowing the press to operate at a much higher speed than earlier
offset presses.
C. The '970 Patent
MAN Roland acguired the '97 0 patent from the inventor, Udo
Tittgemeyer. The patent, issued in June 1995, purports to
describe: "[a] printing method and apparatus which uses a sleeve
shaped printing form attached to a rotating body. The sleeve
shaped form conveniently permits the printing operation to be
performed continuously and on both sides of the print carrier
simultaneously." All of the patent's pertinent claims describe
the print cylinder as a "cylindrical rotating body." The '970
patent is a reissue of U.S. Patent No. 4,913,048 (the "'048
patent") which also describes the print cylinder as a "cylin
drical rotating body."
4 1. The Patent Claims
Although the '970 patent contains several independent claims
(each claiming a separate, patented invention), claim 24 is the
only independent claim added as a result of the patent's re
issuance and the only one MAN Roland asserts that the Sunday
Press infringes. The other claims MAN Roland contends are
infringed -- i.e., claims 25 through 27 -- depend on and,
therefore, include all of the elements recited in claim 24.
Claim 24 reads in pertinent part:
An offset printing apparatus comprising:
a frame;
a cylindrical rotating body supported in said frame;
a replaceable print form comprising at least a first water absorbing layer and a second ink retaining layer defining an ink transferring pattern deposited on an outer surface; said replaceable print form is mounted and radially supported on said cylindrical rotating body;
an ink transfer cylinder rotatingly mounted in said frame adjacent to said replaceable print form; [and]
a transfer sleeve [(i.e., a transfer form)] mounted and radially supported on said ink transfer cylinder
(Def.'s A p p . Supp. Summ. J. at 10-11) (emphases added).
Claim 25 reads: "An apparatus according to claim 24 wherein
said replaceable printing form is a sleeve-shaped print form."
(Def.'s App. Supp. Summ. J. at 11.) Claim 2 6 reads: "An appara-
5 tus according to claim 24 wherein said transfer sleeve exhibits
an outer rubber layer." (Def.'s App. Supp. Summ. J. at 11.)
Claim 27 reads: "An apparatus according to claim 24 further
comprising an air cushion between said transfer cylinder and said
transfer sleeve actuable for lifting said transfer sleeve for
mounting." (Def.'s App. Supp. Summ. J. at 11.)
Although not asserted as infringed, the '970 patent's other
independent claims also describe the print cylinder contemplated
by the inventor as a "cylindrical rotating body." Claim 1 reads:
"A method for offset printing comprising: releasably mounting a
sleeve-shaped print form to a cylindrical routing [sic] body,
said sleeve-shaped print form comprising a first material layer
for absorbing water and a second material layer for absorbing ink
. . . ." (Def.'s App. Supp. Summ. J. at 9) (emphasis added) .
Claim 7 reads: "An offset printing apparatus comprising: a
cylindrical rotating body bearing supported in a frame; ... a
sleeve-shaped print form comprising a first water absorbing layer
and a second ink retaining layer defining an ink transferring
pattern . . . ." (Def.'s App. Supp. Summ. J. at 10) (emphasis
added). Claim 21 reads: "An offset printing apparatus compri
sing: a frame; ... [a bearing releasably] connected to said
frame and releasably connected to said cylindrical rotating body;
a sleeve-shaped print form comprising at least a first water
6 absorbing layer and a second ink retaining layer defining an ink
transferring pattern . . . (Def.'s App. Supp. Summ. J. at 10)
(emphasis added).
2. The Patent Specification
The '970 patent's specification compares the form and
function of offset printing presses described by the prior art
with the form and function of the various inventions claimed
within the patent. Specifically, it describes how in the prior
art, the clamping mechanism used to secure a flat print form to a
print cylinder prevented seamless printing and caused vibrational
stresses that limited printing velocity. To cure both deficien
cies, the specification announces that the inventions claimed by
the patent will substitute cylinder clamping mechanisms with
fully cylindrical, clampless cylinders on which tubular, sleeve
shaped forms can be mounted.
With respect to seamless printing, the specification notes
that in lithographic presses described by the prior art, "print
ing forms clamped onto the surface of a cylinder were used, . . .
so that the clamping strips . . . mark[ed] the onset and the end
of the print form. No endless images could therefore be printed
by this process." Formerly, only direct, non-offset printing
methods, such as gravure printing, could be used to achieve
seamless results. Compared to offset printing, however, direct
7 printing was expensive and produced a low-quality product. The
specification states that the patented inventions will combine
the inexpensive quality of offset printing with the endless
printing capabilities of direct printing by eliminating "heavy
printing cylinders with clamping channels" and replacing them
with lightweight cylinders onto which "sleeve shaped printing
forms [are] mounted."
With respect to high speed printing, the specification notes
that in lithographic presses described by the prior art, the use
of a clamping mechanism to hold a flat print form to the print
cylinder produced an asymmetrical cylinder profile. Such
asymmetry created weight imbalances in the cylinder that, in
turn, generated "high vibratory stresses." Thus, in the prior
art, presses required "heavy printing cylinders" operating at
"low rotating velocities" to dampen the effects of the asymmetry.
The specification posits that the patented inventions will allow
higher rotating velocities by eliminating "heavy printing
cylinders with clamping channels" and replacing them with light
weight cylinders onto which "sleeve shaped printing forms [are]
mounted." "These light rotating bodies or cylindrical jackets
can be accelerated rapidly to high rotating velocities, without
danger of introducing unacceptable vibratory stresses . . . due
to balance deviations." The specification also states that
8 transfer forms and cylinders can be configured in a similar
manner.
3. The Prosecution History
The '970 patent was the culmination of three applications --
the original, continuing, and reissue applications -- reguiring
ten separate submissions to the U.S. Patent and Trade Office. I
summarize the relevant references in each application's prose
cution history.
(a) The Original Application
Tittgemeyer submitted the original application in December
1986. As originally filed, each independent claim described the
print cylinder as a "rotating body" onto which a "sleeve-shaped
print form" could be mounted. The Patent Office twice rejected
Tittgemeyer's claims on the ground that they were obvious in view
of the prior art. In an effort to distinguish his claims, as
part of Tittgemeyer's third submission, he recharacterized the
print cylinder as a "cylindrical rotating body." In doing so, he
explained, "Claim 21 as amended recites 'a cylindrical rotating
body bearingly supported in a frame.' The plate cylinder 12 in
Norton [a patent cited by the examiner in rejecting Tittgemeyer's
second submission] is not cylindrical in the true sense as
provisions must be made for the clamping elements 19 and 20."
(emphasis in original). Rather than addressing this submission
9 on its merits, the Patent Office rejected it on the ground that
the appropriate response to its rejection of the second
submission was an appeal rather than the filing of a third
submission.
(b) The Continuing Application
Tittgemeyer refiled the third submission as a continuing
application in February 1989. The Patent Office rejected the
application once before issuing the '048 patent in December 1989.
The '048 patent continued to use the term "cylindrical rotating
body" to describe the print cylinder covered by the patent.
(c) The Reissue Application
Tittgemeyer filed the reissue application in April 1992.1
The Patent Office eventually issued the '970 patent after a total
of five submissions. In a supplemental communication filed
with the Patent Office while the second submission was under
consideration, Tittgemeyer explained that he was seeking a
reissue patent because he wanted the patent to cover devices
using either print cylinder sleeves or transfer cylinder sleeves
1 "Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, . . . by reason of the patentee claiming more or less than he had right to claim in the patent, the [Patent Office] shall, on the surrender of such patent, . . . reissue the patent for the invention described in the original patent." 35 U.S.C.A. § 251 (West 1984). "No new matter shall be introduced into the application for reissue." Id.
10 independently of each other and this goal had not been accom
plished by the '048 patent.
In his first four submissions, Tittgemeyer substituted the
generic term "print form cylinder" for the term "cylindrical
rotating body" when describing the print cylinder covered by the
reissue application's new claims. He also used the term
"replaceable print form" rather than a "sleeve-shaped print form"
in describing the types of print forms covered by claim 24, one
of the new independent claims. The Patent Office rejected all
four submissions on the ground that they were obvious in view of
the prior art. In his fifth and final submission, Tittgemeyer
returned to his use of "cylindrical rotating body" to describe
the print cylinder covered by the new claims. The Patent Office
approved the fifth submission and issued the '970 patent in
February 1995.
II. DISCUSSION
A device accused of infringing a patent claim can do so
either literally or under the "doctrine of eguivalents."
Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575
(Fed. Cir. 1995). Literal infringement occurs where the accused
device exactly reproduces every limitation set forth in the claim
at issue. Id. An accused device infringes a claim under the
11 doctrine of equivalents when every limitation in the claim either
is literally present or when only "insubstantial differences"
distinguish the missing limitation and the corresponding aspects
of the accused device. Sage Prods., Inc. v. Devon Indus., Inc.,
126 F.3d 1420, 1423 (Fed. Cir. 1997). If an accused devise lacks
one or more of the claim's limitations, either literally or
equivalently, an infringement action based on the claim cannot
succeed. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119
F.3d 1559, 1572 (Fed. Cir. 1997). Further, in cases such as
this, where the accused device is alleged to infringe both an
independent claim and several dependent claims, all of the
infringement claims fail if the independent claim is not
infringed. Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d
1192, 1199 (Fed. Cir. 1994).
Infringement analysis entails a two-step inquiry. Markman
v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995),
aff'd , 517 U.S. 370 (1996). First, the court must determine the
scope and meaning of the purportedly infringed claim as a matter
of law. Southwall Techs., Inc., 54 F.3d at 1575. Second, the
finder of fact must compare the accused device to the properly
construed claim to determine whether an infringement has
occurred. Id. At the second step, the patent-holder bears the
burden of proving by a preponderance of the evidence that each of
12 the claim's limitations are found either literally or equiva
lently in the accused product. Wolverine World Wide, Inc., 38
F .3d at 1196.
Though the resolution of an infringement claim requires an
inquiry into the supporting facts, a court may summarily dispose
of the claim if no genuine factual dispute exists as to whether
the accused device infringes the claim as construed.
Phonometrics, Inc. v. Northern Telecom, Inc., 133 F.3d 1459,
1463-64 (Fed. Cir. 1998); Sage Prods., Inc., 126 F.3d at 1423. A
claim of infringement by equivalents may also be disposed of on a
motion for summary judgment if the patent's prosecution history
establishes that the patent-holder surrendered the right to argue
that one or more of the claim's limitations are substantially
equivalent to corresponding elements of the accused device. See
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 117 S. C t . 1040,
1053 n.8 (1997).
The sole independent claim at issue in this case is limited
to presses on which a print form is mounted on a "cylindrical
rotating body." Heidelberg argues that its press cannot
literally infringe either this claim or the claims dependent
upon it because Heidelberg's press has a print cylinder with a
clamping channel that prevents it from being considered
"cylindrical." Heidelberg also contends that MAN Roland is
13 estopped from arguing that the Sunday Press infringes the patent
under the doctrine of eguivalents because MAN Roland surrendered
the right to make this claim when it prosecuted the patent. As
the only fact material to the resolution of these arguments --
namely, that the print cylinder in the Sunday Press has a
clamping channel -- is not in dispute, I resolve both claims as a
matter of law.
A. Literal Infringement
1. The Claim Construction Process
The process of patent claim construction, like the process
of statutory interpretation, is far from an exact science.
Nevertheless, in an effort to guide the district courts and
provide a measure of predictability to the process, the Federal
Circuit has developed a set of claim construction rules. The
most important of these rules is that a court must first look to
any intrinsic sources of meaning before resorting to extrinsic
sources such as expert testimony or dictionary definitions.
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.
Cir. 1996). If the meaning of a claim can be ascertained through
reference to intrinsic evidence, it is improper to rely on
extrinsic evidence to reach a contrary conclusion. Id. The
policy reason underlying this rule is that third parties whose
rights may be restricted by a patent should be entitled to rely
14 on the public record in determining the scope of a claimed
invention. Id.
Three sources of intrinsic evidence may prove relevant to
the process of claim construction. The first is the language of
the claim itself. Claim language should be given its ordinary
meaning unless the rest of the intrinsic evidence suggests that a
different meaning was intended. Id. at 1582. Ordinarily, patent
terms should be given a consistent meaning throughout all claims
in the patent. Southwall Techs., Inc., 54 F.3d at 1579.
A second source of intrinsic evidence is the patent's
specification, a technical description of how an invention
functions and what it produces. Although the specification
cannot be used to change a claim's meaning, see Markman, 52 F.3d
at 980, the Federal Circuit has stated that "the specification is
always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term." Vitronics Corp., 90 F.3d at 1582.
Finally, a court also must consider a patent's prosecution
history. Id. As the "undisputed public record of proceedings"
in the Patent Office, it is of "primary significance in
understanding the claims." Markman, 52 F.3d at 980 (internal
guotations omitted). "The prosecution history limits the inter
pretation of claim terms so as to exclude any interpretation that
15 was disclaimed during the prosecution. Claims may not be
construed one way during the prosecution in order to obtain their
allowance and in a different way against accused infringers."
Southwall Techs., Inc., 54 F.3d at 1576 (internal citations
omitted). When construing claim terms in a reissue patent, the
court must examine the prosecution history of both the original
application and the reissue application. See Markman 52 F.3d at
982 .
2. The Patent Claims
The '970 patent's four independent claims all describe the
print cylinder on which the print form is mounted as a "cylin
drical rotating body." Heidelberg contends that the term does
not include print cylinders with clamping channels. MAN Roland
argues that the term encompasses any type of print cylinder that
is roughly cylindrical, whether or not it has a clamping channel.
As the claim language does not definitively rule out either
proposed construction, I turn to the patent's specification and
prosecution history to resolve the dispute.
3. The Patent Specification
Although the specification does not expressly define
"cylindrical rotating body," it shows only a channelless print
cylinder without clamping elements. The specification also
explains how the print cylinder described in the patent differs
16 from the "deficient" prior art cylinders which contained clamping
channels. In particular, the specification describes how the use
in the prior art of clamps to secure a flat print form to the
print cylinder prevented seamless printing and caused vibrational
stresses that limited printing speed. To cure both deficiencies,
the specification announces that the inventions claimed by the
patent will substitute prior art cylinder clamping mechanisms
with fully cylindrical, clampless cylinders onto which tubular,
sleeve-shaped print forms can be mounted. The specification
offers no indication that the inventions claimed by the patent
extend to presses having a print cylinder with a clamping
channel. Thus, the specification provides unambiguous support
for Heidelberg's position that the term "cylindrical rotating
body" covers only print cylinders without a clamping mechanism.
See Vitronics Corp., 90 F.3d at 1582; Minnesota Mining & Mfg. Co.
v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1566
(Fed. Cir. 19 92) .2
4. The Prosecution History
The prosecution history of the '970 patent and its prede-
2 To the extent that MAN Roland argues that the specification cannot be considered because it does not contain a special definition of "cylindrical rotating body," its argument is inconsistent with Federal Circuit precedent. See Vitronics, 90 F.3d at 1582 (specification acts as a dictionary when it defines terms either expressly or by implication); Minnesota Mining & Mfg. Co., 976 F.2d at 1566.
17 cessor, the '048 patent, removes any remaining doubt as to the
meaning of the term "cylindrical rotating body." As originally
filed, each independent claim in Tittgemeyer's first patent
application described the print cylinder merely as a "rotating
body" onto which a "sleeve-shaped" print form could be mounted.
Tittgemeyer first added the gualifying term "cylindrical" to this
description in his third submission of the original application.
He refiled the third submission as a continuing application in
February 1989 and again described the print cylinder as
"cylindrical." In his remarks explaining these submissions,
Tittgemeyer defined the term by reference to the prior art he was
attempting to distinguish. He first noted that his amended claim
encompassed "a cylindrical rotating body bearingly supported in a
frame" (emphasis in original). He then stated that "the plate
cylinder in Norton [ (a prior patent)] is not cylindrical in the
true sense as provisions must be made for the clamping elements
19 and 20." Thus, he defined the term "cylindrical" by distin
guishing Norton and stating that a print cylinder with a clamping
channel is not "cylindrical in the true sense."
Though Tittgemeyer initially attempted to describe the print
cylinder covered by the reissue application's new claims generi-
cally as a "print form cylinder," he resorted to the prior term
"cylindrical rotating body" in his final application. Moreover,
18 Tittgemeyer made no attempt when prosecuting the reissue appli
cation to give the term a different meaning with respect to the
new claims. Accordingly, MAN Roland concedes that the term has
the same meaning in both the '048 and '970 patents. Given
the limiting definition that Tittgemeyer gave to the term
"cylindrical" during the prosecution of the '048 patent, MAN
Roland, as Tittgemeyer's successor in interest, seemingly is in
no position today to argue for a more expansive interpretation.
See Southwall Techs., Inc., 54 F.3d at 1576.
5. MAN Roland's Arguments
MAN Roland nevertheless contends that Tittgemeyer's purpose
in seeking the reissue patent was to correct an error in the '048
patent by claiming the use of a sleeve-shaped transfer element in
combination with any means of mounting a print form on a print
cylinder. Accordingly, MAN Roland argues that Heidelberg's
proposed interpretation of "cylindrical rotating body" should be
rejected because it would defeat the very purpose of the reissue
application. Regardless of whether Tittgemeyer subjectively
intended his invention to encompass embodiments involving print
cylinders both with and without clamps, however, the Patent
Office repeatedly rejected his submissions when he broadly
attempted to obtain patent protection for embodiments employing
the generic term "print form cylinder." It was only after he
19 returned to the narrower and previously defined term "cylindrical
rotating body" that he succeeded in obtaining the reissue patent.
Because the inventor chose a previously defined term in limiting
the scope of the new claims in the reissue application, the scope
of the patent protection afforded his successor in an infringe
ment action is likewise limited.
MAN Roland next relies on the doctrine of claim differen
tiation, arguing that independent claim 24 should be read to
cover print cylinders with a clamping mechanism because to do
otherwise would render dependent claim 25 superfluous. See e.g..
Beachcombers v. WildeWood Creative Prods., Inc., 31 F.3d 1154,
1162 (Fed. Cir. 1994). Claim 24 is limited to devices having a
"replaceable print form" that is "mounted and radially supported
on said cylindrical rotating body." Claim 25 specifies an
"apparatus according to claim 24 wherein said replaceable
printing form is a sleeve-shaped printing form." The premise
underlying MAN Roland's argument is that the only type of print
form that can be mounted on a clampless print cylinder is a
sleeve-shaped print form. Therefore, if claim 24 is limited to
clampless print cylinders, MAN Roland reasons, it will merely
duplicate claim 25. I reject MAN Roland's argument because its
underlying premise is flawed. As MAN Roland apparently conceded
at oral argument, a print form need not be sleeve-shaped in order
20 to be mounted on a clampless plate cylinder. See e.g., U.S.
Patent No. 4,676,161 (1987) (entitled "Magnetic Cylinders with
Image Plate or Blanket for Offset Printing"); U.S. Patent No.
4,005,653 (1977) (entitled "Vacuum Cylinder for Printing
Presses"). Thus, even under Heidelberg's definition of
"cylindrical rotating body," claim 24 provides Tittgemeyer with
broader patent protection than claim 25 because claim 25 is
limited to sleeve-shaped print forms, whereas claim 24 covers
both flat-but-clampless and sleeve-shaped print forms.3
As a fallback measure, MAN Roland argues that the '970
patent should be construed to exclude only print cylinders with a
pronounced clamping mechanism that results in a large gap when
the print form is mounted on the print cylinder. The Sunday
Press would not be excluded by this construction, MAN Roland
argues, because it has a sophisticated clamping mechanism that
produces only a very small gap in the print form. MAN Roland
3 I would not reach a different conclusion even if Heidel berg's interpretation of claim 24 would give it a meaning no broader than claim 25. As the Federal Circuit has acknowledged, "[a]lthough the doctrine of claim differentiation may at times be controlling, construction of claims is not based solely on the language of other claims; the doctrine cannot alter a definition that is otherwise clear from the claim language, description, and prosecution history." O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1582 (Fed. Cir. 1997). In this case, the specification and prosecution history of the '970 patent leave no doubt as to the meaning of the term "cylindrical rotating body." Accordingly, MAN Roland cannot rely on the doctrine of claim differentiation to support a contrary interpretation.
21 bases its contention on its interpretation of the prior art which
Tittgemeyer was attempting to distinguish when he limited his
patent to presses with "cylindrical" print cylinders. I am
unpersuaded by this argument as it would reguire the adoption of
a tortured interpretation of the term "cylindrical rotating body"
which is inconsistent with both the patent's specification and
its prosecution history. In distinguishing the prior art that
employed a print cylinder with a clamping mechanism, Tittgemeyer
carefully defined the term "cylindrical" by stating that a print
cylinder is not "cylindrical" unless it is truly cylindrical and
is constructed without a clamping channel. Nothing in the record
supports a different interpretation.
In summary, both the specification and the prosecution
history of the '048 and '970 patents establish that when these
patents refer to the term "cylindrical rotating body," they cover
only truly cylindrical print cylinders without a clamping
channel. The only independent claim on which MAN Roland bases
its infringement claim contains this limitation. Because it is
undisputed that the Sunday Press employs a print cylinder with a
clamping channel, Heidelberg is entitled to summary judgment with
respect to MAN Roland's literal infringement claim.
B. Equivalent Infringement -- Prosecution History Estoppel
Heidelberg challenges MAN Roland's infringement by
22 equivalents claim by contending that the claim is barred by the
doctrine of prosecution history estoppel. This defense prevents
a "patentee from enforcing its claims against otherwise legally
equivalent structures if those structures were excluded by claim
limitations added [during prosecution of the claims] in order to
avoid prior art." Wang Labs., Inc. v. Toshiba Corp., 993 F.2d
858, 866 (Fed. Cir. 1993). In Warner-Jenkinson Co., the Supreme
Court rejected an effort to expand the defense to cover any
subject matter surrendered during the prosecution of a patent,
regardless of the reason for the surrender. 117 S. C t . at 1049-
50. Nevertheless, the Court placed the burden on the patent-
holder to establish that a claim limitation was effected for a
reason unrelated to patentability. Id. at 1051. If the patent-
holder cannot meet this burden, the Court held, he or she will be
estopped from claiming infringement by equivalents. Id. Of
course, whether prosecution history estoppel applies in a given
case presents a question of law for the court to resolve. Gentry
Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1476 (Fed. Cir.
1998) .
As I have already explained in some detail, Tittgemeyer
changed the description of the print cylinder in his original
patent application from a "rotating body" to a "cylindrical
rotating body" in an effort to distinguish his invention from the
23 prior art which taught the mounting of a print form on a print
cylinder via a clamping channel.4 He also defined the term
"cylindrical" narrowly during the patent's prosecution history so
as to avoid the prior art. Accordingly, this case appears to
present the "classic case" for the application of prosecution
history estoppel. See, e.g., 5 Donald S. Chisum, Chisum on
Patents § 18.05(2)(a), at 18-158 (1997) ("The classic occasion
for the application of [prosecution history] estoppel is where
the patent examiner rejects a broad claim as unpatentable over
the prior art and in response the applicant cancels or amends
claims in order to narrow the scope of the claimed subject matter
and thereby to secure issuance of the patent.").
MAN Roland nevertheless argues that prosecution history
estoppel does not apply in this case because Heidelberg cannot
prove that the Patent Office relied on Tittgemeyer's limiting
language when it issued the patent. To support its position, MAN
Roland points to the fact that the Patent Office reguired
additional amendments after Tittgemeyer limited his claim to
"cylindrical" print cylinders. I reject this argument because
MAN Roland's evidence at best is eguivalent and, therefore, fails
4 The fact that Tittgemeyer initially offered this amendment with respect to a different claim is inconseguential. Southwall Techs., Inc., 54 F.3d at 1583 ("[0]nce an argument is made regarding a claim term so as to create an estoppel, the estoppel will apply to that term in other claims.").
24 to satisfy MAN Roland's burden to demonstrate that Tittgemeyer
added the limitation for reasons unrelated to patentability. See
Warner-Jenkinson Co., 117 S. C t . at 1051. While it is true that
the Patent Office required additional amendments before it issued
the '048 patent, that fact does not establish that the limitation
at issue was inconsequential. Rather, the most likely explana
tion for the Patent Office's actions is that it found
Tittgemeyer's application objectionable for multiple reasons
and, therefore, required multiple amendments before the patent
could issue. As the Federal Circuit has recently observed, the
fact that a patent-holder ultimately succeeded in obtaining the
patent by distinguishing the prior art through multiple amend
ments is not determinative of a prosecution history estoppel
claim based on a single amendment. Gentry Gallery, Inc., 134
F.3d at 1477; see also Southwall Techs., Inc., 54 F.3d at 1582.
Here, the prosecution history reveals that Tittgemeyer added the
term "cylindrical" to avoid the prior art. The fact that he also
made other amendments to distinguish other patents is inconse
quential .
MAN Roland's final argument is that any prosecution history
estoppel should be limited strictly to the prior art that
Tittgemeyer attempted to distinguish. The Federal Circuit has
considered and rejected this argument on multiple occasions.
25 See, e.g., Southwall Techs., Inc., 54 F.3d at 1581, 1583; Havnes
Int'l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1579 (Fed. Cir.
1993); Wang Labs., Inc., 993 F.2d at 867-68. Rather than
employing a categorical approach, the Federal Circuit reguires a
court to look both to what was changed in the patent application
and the reasons for the change. Southwall Techs., Inc., 54 F.3d
at 1580. Here, it is apparent that Tittgemeyer limited his claim
to "cylindrical" print cylinders in an effort to distinguish the
prior art which taught the mounting of a print form on a print
cylinder via a clamping channel. Moreover, Tittgemeyer expressly
defined the term "cylindrical" so as to limit the scope of his
patent to cylinders without clamping channels. As Tittgemeyer
expressly adopted this broad limitation in order to obtain the
patent, MAN Roland, as his successor in interest, cannot now
claim that what was surrendered was limited to the precise
features of the prior art.
III. CONCLUSION
For the foregoing reasons, I grant Heidelberg's motion for
summary judgment and instruct the clerk to enter judgment for
Heidelberg with respect to both its claims for a declaratory
judgment of non-infringement and MAN Roland's counterclaims for
infringement. As I conclude that Heidelberg is entitled to
26 summary judgment, I also deny MAN Roland's cross-motion for
summary judgment.
SO ORDERED.
Paul Barbadoro Chief Judge
March 25, 1998
cc: Thomas Donovan, Esg. Richard Mayer, Esg. Emily Rice, Esg. Mark Mutterperl, Esg. Peter Kearns, Esg.