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Federal Circuit Review Issue No. 65-01
Federal Circuit Finds Asserted Claims Not Limited to a Specific Embodiment
Inline Plastics Corp. v. EasyPak, LLC, No. 2014-1305, 2015 U.S. App. LEXIS 15117 (Fed. Cir. Aug. 27, 2015) (Before Newman, Clevenger, and Dyk, J.) (Opinion for the court, Newman, J.). Click Here for a copy of the opinion.
Inline Plastics Corporation (“Inline”) sued EasyPak for infringement of patents directed to tamper-resistant plastic food containers. During claim construction, the district court limited the claims to a preferred embodiment and construed the term “frangible section” to mean “a removable tear strip, delimited by at least two severable score lines” and the term “tamper evidence bridge” as a structure containing “a removable tear strip, delimited by at least two severable score lines.” Because EasyPak’s accused product only had a single severable score line, Inline moved for a final judgment of non-infringement, which the court granted. Inline then appealed the district court’s claim construction.
On appeal, the Federal Circuit held that the district court’s claim construction was not supported by the specification or the prosecution history. The specification described the invention’s features as “intended to prevent and deter opening container 10 without first removing frangible strip from hinge.” During prosecution, arguments made to overcome prior art were related to the “differences in the structure and opening mechanism as a whole” rather than the number of score lines. Therefore, there was nothing in the specification or the prosecution history to suggest that the number of score lines affected patentability of the claimed invention. In addition, the specification provided an alternative of “a single score line or perforation line, rather than a pair of score lines,” which the district court failed to consider. Since the preferred embodiment did not have patentable characteristics that are distinct from other disclosed embodiments, the Court held that “the patentee [was] entitled to claim scope commensurate with the invention that [was] described in the specification.”
The Court also held that the doctrine of claim differentiation was applicable here, since the “two severable score lines” limitation only appeared in a dependent claim but not in any independent claims. In other words, the presence of the “two severable score lines” limitation in a dependent claim gave rise to a presumption that such a limitation was not present in the independent claim. Therefore the district court erred when it required the asserted independent claims to have “at least two score lines or perforation lines.” Accordingly, the Court vacated the judgment of non-infringement and remanded.