Case: 3M Innovative Props. Co. v. Tredegar Corp., No. 2012-1241 (Fed. Cir. Aug. 6, 2013) (precedential). On appeal from D. Minn. Before O’Malley, Plager, and Reyna.

Procedural Posture: Plaintiff patentee appealed the district court’s construction of four patent claim terms. CAFC affirmed-in-part as to the construction of two claim terms, reversed-in-part as to the construction of the other two claim terms, and remanded all issues.

  • Claim Construction (prosecution disclaimer): Although the district court correctly construed “continuous contact” as “full surface contact,” it erroneously interpreted the construction to exclude embodiments displaying “cohesive failure.” That “full surface contact” excludes “cohesive failure” is contrary both to the plain and ordinary meaning of the term, and to the patent’s written description. The Federal Circuit found unpersuasive the appellee’s arguments regarding the patent applicant’s narrowing amendments during prosecution, upon which the district court had based its interpretation. Because the narrowing amendments were amenable to “multiple reasonable interpretations,” they did not display a “clear and unmistakable” disavowal, and thus there was no prosecution disclaimer. Additionally, the district court erroneously construed “preferential activation zone” and its derivative terms to mean that the zone must be “predetermined” and “identifiable” before activation. Although “preferential activation zone” does not have a plain and ordinary meaning outside of the patents at issue, the patentee offered an “ascertainable definition in the body of the claim” that was supported by the written description. The Federal Circuit again found no prosecution disclaimer as to this term, in following the principle that the patentee’s statements be given deference over the patent examiner’s conflicting statements.
  • Claim Construction: The district court correctly construed “continuous microtextured skin layer” to require both the microtexturing and the skin layer to be “continuous” across “substantially the entire surface area of the laminate.” Both intrinsic and extrinsic evidence supported this construction.
  • Indefiniteness: The district court erroneously restricted “ribbon” to mean “a strip of film having a width of no more than one inch.” The term “ribbon” has a plain and ordinary meaning ascertainable to one of skill in the art “whether [it] is half an inch wide or 10 inches wide,” and thus it is not indefinite in the absence of a width limitation.

Plager, concurring:

  • Claim Construction: “When claims are larded with terms such as ‘substantially,’ ‘preferentially,’ and ‘relatively,’ . . . there is considerable evidence of a failure by the claim drafters to be clear and precise . . . .” “Cases like this . . . may well deserve application of a principle analogous to the contract doctrine of contra proferentem. . . . When a term is ambiguous . . . the ambiguity should be construed against the draftsman. (Or better yet, the claim should simply be invalidated as indefinite, though our court has not seen fit to go there as yet.)” “The contra proferentem principle would require the applicant to draft clear claims, using simple, direct sentences, proper grammar, and definitions in the written description where appropriate.”

O’Malley, concurring-in-part and dissenting-in-part:

  • Claim Construction: The majority correctly construed three of the four terms at issue. However, with respect to “continuous microtextured skin layer,” the plain and ordinary meaning of the term includes a skin layer in which the microtexturing is not continuous. The patent applicant’s remarks in the prosecution history support the idea that “[d]iscontinuities in the microtexturing are still within the scope of the claim term, so long as they do not reduce the microtexturing below a ‘substantial’ portion of the laminate.”