Issue 143 | December 15, 2003
3M v. Avery Dennison Corp.
 In 3M v. Avery Dennison Corp., No. 03-1203 (Fed. Cir. Dec. 2, 2003), the Federal Circuit vacated a district court award of summary judgment of noninfringement to Avery Dennison, both literally and under the doctrine of equivalents, based on an erroneous claim construction. The case was remanded for further proceedings.

3M charged Avery Dennison with infringement of its '930 patent relating to embossed webs useful as liners for pressure sensitive adhesives. At issue was the meaning of the claimed recitation to a carrier web having “a multiple embossed pattern having a first embossed pattern and a second embossed pattern.” In an early order, the district court construed the term "multiple embossed pattern," as requiring sequential embossments, even though that language was not present in the claim. To arrive at this conclusion, the district court relied on its view of the plain meaning of "first" and "second" in the specification and characterized the definition of "multiple embossed" in the specification as evidence of the claim's product-by-process nature.

Second, the court relied on the specification's express definition of the term "embossed," as well as a source that the district court treated as a technical dictionary, to construe the term to mean "a topography created on material by impressing a corresponding inverse topography on its surface."

Under these interpretations, Avery Dennison was held not to infringe the claims. The Federal Circuit disagreed, citing error in the district court’s requirement that the term "multiple embossed patterns" include a limitation that the patterns be created sequentially. Nothing in the specification required a sequential or temporal limitation in the multiple embossment steps, and the district court’s reliance on the terms “first” and “second” to support its interpretation was misplaced because these terms are “common patent-law convention[s used] to distinguish between repeated instances of an element or limitation.”

Responding to arguments by Avery Dennison, the Federal Circuit disagreed that a broadening claim amendment made during the prosecution history of the '930 patent supported required a sequential-embossment limitation.

Nor did prosecution history estoppel serve to require a sequential embossment limitation in the claims:
An applicant's silence in response to an examiner's characterization of a claim does not reflect the applicant's clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner's unrebutted characterization.
The Court did not address the question of infringement having vacated the claim construction underpinning the grant of summary judgment.

Dissenting, Judge Michel agreed that the claims did not require a sequential limitation, but viewed the claims as requiring a process step. Because the accused product’s pattern results from only a single embossing tool, it is not “multiple embossed,” and, according to Judge Michel, the summary judgment of noninfringement was proper.

To discuss this topic further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC., USA.

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