Summary: No error in district court’s construction of preamble term as limiting

Case: Novatek, Inc. v. Sollami Co., No. 2013-1389 (Fed. Cir. Mar. 26, 2014) (nonprecedential). On appeal from D. Utah. Before Newmann, Moore, and Wallach.

Procedural Posture: Following claim construction, the district court granted accused infringer Novatek’s motion for summary judgment of non-infringement. The Federal Circuit affirmed the district court’s claim construction as well as its decision to grant summary judgment.

  • Claim Construction: The Federal Circuit found that the asserted claims’ use of the term bit in the preamble was limiting because the body of the claims referred back to elements recited in the preambles and the inventor relied on structural elements recited by the preambles during prosecution. The Federal Circuit also affirmed the district court’s construction of the term shank when the patentee used the term consistently throughout the patents. The Federal Circuit further found no error in the district court’s construction of bit as being removable from the claimed bit holder, even when the claims did not use the word removable, because references to “bit” throughout the patent consistently required that the item be removable. The Federal Circuit further agreed with the district court’s construction of shank as requiring a cylindrical object when the word’s plain meaning and the patent’s specification supported this interpretation. Based on these constructions, the Federal Circuit affirmed the district court’s decision to grant summary judgment of non-infringement.

Moore, dissenting:

  • Judge Moore disagreed with the majority’s construction of “bit,” stating that nothing in the specification suggested that “bit” is necessary to give life, meaning, and vitality to the bit structures recited in the body of the claims. Judge Moore also disagreed with the majority’s reading additional limitations (removable, mountable in a bore, and with a cylindrical shank) into the term bit, finding that the term’s plain and ordinary meaning did not require these limitations.