Over a vigorous dissent, the U.S. Court of Appeals for the Federal Circuit held that the district court erred in construing the scope of the claim at issue. The Gillette Company v. Energizer Holdings, Inc., Case No. 04-1220 (Fed. Cir. Apr. 29, 2005) (Rader, J.; Archer, J. dissenting).

The Gillette Company brought suit against Energizer alleging that Energizer’s QUATTRO®, a four-bladed wet-shave safety razor, infringed certain of its patent claims. The district court denied Gillette’s motion for a preliminary injunction because it concluded that the terms "first," "second" and "third" in the only independent claim of the Gillette patent, limited the scope of that claim to a razor having three blades. Gillette appealed.

The Federal Circuit reversed, concluding that the "open" claim language "comprising . . . a group of first, second and third blades" may encompass four-bladed safety razors. The Court focused on the intrinsic evidence of record, i.e., the claims, specification and prosecution history, discerning that "claim one uses the ‘open’ claim terms ‘comprising’ and ‘group of,’ in addition to other language, to encompass subject matter beyond a razor with only three blades." The Court found that the language of certain claims dependent from claim one supports reading "comprising" and "group of" as open terms.

The Court found that the specification supported a conclusion that the invention covered razors with more than three blades, noting that the invention went to progressively varying "the exposure and spacing parameters of the blades to overcome the undesired drag forces produced by razors with multiple blades, not simply limiting the number of blades to three." The Court further noted that "the specification specifically acknowledges that it is not the three blades themselves which solve the prior art problem of detrimental drag forces but instead the arrangement of three blades in a particular spatial configuration" and that "[t]hese principles . . . could apply equally to four or five blades." The Court concluded that neither the specification nor the prosecution history provided the "manifest exclusion" or "explicit" disclaimers needed to disavow razors with more than three blades.

In dissent, Judge Archer opined that "a three-bladed razor is not merely a preferred embodiment of the invention; rather, it is the invention." Judge Archer found that "the transition term ‘comprising’ refers only to the total number of elements in the complete razor, allowing for a razor with additional elements besides the guard, the cap and the three-blade unit. . . . However, it does not permit the expansion of the number of blades in the blade unit itself." Contrary to the majority, Judge Archer found that the specification did limit the invention to a blade unit having only three blades: "In sum, the patent specification (1) repeatedly and consistently teaches that the safety razor of the invention is one having three blades; (2) teaches preferred embodiments that vary the configuration of the blades but in no way change the number of blades of the invention; and (3) discourages the use of more than two blades in a blade unit except for the three-bladed unit having the claimed geometry."

Practice Note: Patent prosecutors and litigators alike anxiously await the Federal Circuit’s en banc decision in Phillips v. AWH Corporation with the hope that the Court will clarify inconsistent panel decisions and provide guidance on the proper approach to construing patent claims. As reflected by the Gillette panel, the Court appears to continue to be divided on the proper approach to claim construction.

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