Addressing when and how claim scope may be limited, the U.S. Court of Appeals for the Federal Circuit found the U.S. International Trade Commission (ITC) erred in interpreting a claim for molding of plastics with "different characteristics" to require that the plastics differ in some aspect other than color. Sorensen v. ITC, Case No. 05-1020 (Fed. Cir. Oct. 31, 2005) (Rader, J.).
Sorenson holds a patent for multilayer injection molding of plastics in two steps. The second step calls for injecting a plastic with "different characteristics" than the first plastic. During prosecution, the examiner had rejected the claims of Mr. Sorensen's application as obvious over the prior art. In response, Mr. Sorensen amended the claims, including the addition of the "different characteristics" limitation.
Mr. Sorensen had alleged that certain models of imported Mercedes-Benz automobiles contained injection-molded laminated tail lights made by a process that infringed his patent. After a § 337 investigation, the ITC found Mercedes did not infringe and noted the second plastic used by Mercedes differed only in color from the first plastic, and the claim language "different characteristics" required a difference in some characteristic other than color. Therefore, the ITC found no infringement and no violation. Sorenson appealed.
The Federal Circuit reversed, finding that nowhere in the claims, specification or prosecution history did Mr. Sorensen exclude or clearly disavow color as a basis for differing characteristics. The Federal Circuit, reviewing the ITC claim interpretation without deference, determined the claim language "different characteristics" would be satisfied by any difference, including color. The Federal Circuit cited the specification gave a "broad" interpretation of "different characteristics." According to the specification, the first and second pieces could be of the same material, and differences in transparency (which like color may not require differences in molecular structure) could be different characteristics. Also important to the Court's analysis was its finding the prosecution history did not reflect a clear and unambiguous disavowal of claim scope.
Michael W. Connelly is an associate in the law firm of McDermott Will & Emery LLP based in the Washington, D.C. office. He is a member of the Intellectual Property, Media & Technology Department. Michael concentrates his practice on patent litigation and prosecution, intellectual property licensing, and counseling private and public clients on the protection of intellectual property assets.
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