Poly-America, L.P. v. Api Industries, Inc. , 839 F.3d 1131 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
POLY-AMERICA, L.P.,
Plaintiff-Appellant
v.
API INDUSTRIES, INC.,
Defendant-Appellee
______________________
2016-1200
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:14-cv-00599-SLR-SRF,
Judge Sue L. Robinson.
______________________
Decided: October 14, 2016
______________________
AARON P. MAURER, Williams & Connolly LLP, Wash-
ington, DC, argued for plaintiff-appellant. Also represent-
ed by SANJIV PRAKASH LAUD, CRAIG D. SINGER.
JACK B. BLUMENFELD, Morris, Nichols, Arsht & Tun-
nell LLP, Wilmington, DE, argued for defendant-appellee.
Also represented by MICHAEL J. FLYNN; MARK I. KOFFSKY,
EFREM SCHWALB, Koffsky Schwalb LLC, New York, NY.
______________________
Before PROST, Chief Judge, REYNA, and HUGHES, Cir-
cuit Judges.
2 POLY-AMERICA, L.P. v. API INDUSTRIES, INC.
REYNA, Circuit Judge.
This case is about disavowal of claim scope. The spec-
ification and prosecution history of Poly-America, L.P.’s
(“Poly-America”) U.S. Patent No. 8,702,308 (“’308 patent”)
contain clear and unequivocal statements that the inven-
tor intended to limit the claimed invention to a trash bag
with “short seals” at its upper corners that extend inward-
ly to narrow the bag’s upper opening. In light of the
inventor’s disavowal, the district court correctly construed
the term “short seal” to require that such seals extend
inwardly. We therefore affirm.
I. BACKGROUND
A. Patented Technology
The ’308 patent is “directed toward an improved con-
struction of an elastic drawstring trash bag.” ’308 patent
col. 3 ll. 46−47.
Id. fig. 1.
POLY-AMERICA, L.P. v. API INDUSTRIES, INC. 3
The claimed apparatus is made from two “panels” of
polymeric material joined at the sides and the bottom to
form an enclosed bag. At the bottom, the panels are
joined by a “bottom fold.” At the top, a piece of each panel
is folded over and sealed to form a “hem.” Inside each
hem is a drawstring. See id. col. 3 ll. 46−54.
The patent identifies two different seals located along
the sides of the bag. The long seals along the length of
the panels are referred to as “side seals.” Id. col. 4
ll. 66−67. The small seals in the upper corners of the bag
are referred to as “short seals.” Id. col. 5 ll. 25−30. The
short seals bind together each panel’s hem and the ends of
the drawstrings located therein. Id.
A principal feature of the claimed invention is Poly-
America’s use of inwardly extended short seals to reduce
the width of the trash bag’s upper opening. When coupled
with elastic drawstrings, the narrowed opening allows
those drawstrings to wrap around the rim of a trash
receptacle more securely than prior art trash bags that do
not have a narrowed upper opening. See id. col. 6
l. 32−col. 7 l. 19.
Throughout its written description, the ’308 patent
indicates the significance of the extended short seal
feature and the reduced upper opening width the extend-
ed short seals provide. To start, the title of the invention
is “Reduced Opening Elastic Drawstring Bag.” The
Abstract explains that:
[w]hen the bag of the present invention is in a re-
laxed state, the reduced upper opening width of
the elastic drawstring bag is therefore less than
bag proper width, allowing a consumer to pull the
elastic drawstring bag over the lip of a trash re-
ceptacle and allowing the elastic drawstrings to
snugly fit around the trashcan.
4 POLY-AMERICA, L.P. v. API INDUSTRIES, INC.
The Background of the Invention section explains that
prior art trash bags do not have extended short seals and
can be difficult to secure over the lip of a trash receptacle.
Id. col. 2 ll. 15−54. The Summary of the Invention states
that: “Embodiments of the elastic drawstring bag contem-
plated by the present invention have an upper opening
with a width that is less than 97% of the width of the rest
of the bag (by virtue of the extended short seals).” Id. col.
4 ll. 4−7. Of the five figures in the ’308 patent, the only
figure that does not reveal a reduced upper opening by
virtue of extended short seals is the figure that depicts
prior art drawstring bags. Id. figs. 1−5.
The written description reiterates that the use of ex-
tended short seals to reduce the width of the bag’s upper
opening is an improvement upon prior art trash bags. Id.
col. 5 ll. 46−57. It also identifies the use of extended short
seals to create a reduced width upper opening as “one of
the characteristics of the present invention”:
In looking at both FIG. 1 and FIG 2, it is im-
portant to note that one of the characteristics of
the present invention is a reduction in the upper
width (when the bag is in a relaxed state) of the
bag resulting from the extended short seals.
Id. col. 6 ll. 11−15.
B. Independent and Dependent Claims
The ’308 patent has three independent claims: 1, 10,
and 16. Claim 10 differs from claims 1 and 16 in that it
does not explicitly provide for a narrowed opening. Claim
1 includes a limitation of “the relaxed upper opening
width being less than the bag proper width.” Id. col. 7
ll. 27−52. Claim 16 describes “the distance between an
interior edge of the first short seal and an interior edge of
the second seal being less than a bag proper width.” Id.
col. 8 l. 65−col. 9 l. 18. In contrast, claim 10 does not
expressly state any limitation as to the size of the short
POLY-AMERICA, L.P. v. API INDUSTRIES, INC. 5
seals or the relationship between the size of the upper
opening and the bag proper:
10. An elastic drawstring trash bag comprising:
a polymeric bag comprised of a first panel
and a second panel, the first panel and the
second panel joined at a first side, a sec-
ond side, and a bottom,
a first hem formed in the first panel, the
first hem having a first elastic drawstring
disposed therein,
a second hem formed in the second panel,
the second hem having a second elastic
drawstring disposed therein,
the first panel, the first elastic drawstring,
the second panel, and the second elastic
drawstring inseparably joined together at
a first short seal and at a second short
seal, and
a first access cutout along the upper edge
of the first panel and a second access cut-
out along the upper edge of the second
panel, the first and second elastic draw-
strings being accessible through the re-
spective first and second access cutouts.
Id. col. 8 ll. 23−38.
Claims 12−14, which are dependent on claim 10, pro-
vide specific limitations as to how much the upper open-
ing must be narrowed. Claim 12 provides for “the ratio of
a distance between the first seal and the second seal to a
width of the bag proper being less than 97%.” Id. col. 8
ll. 45−48. Claim 13 provides for “the ratio of a distance
between the first seal and the second seal to a width of
the bag proper being greater than 94% but less than
100%.” Id. col. 8 ll. 49−53. Claim 14 provides for “the
6 POLY-AMERICA, L.P. v. API INDUSTRIES, INC.
ratio of a distance between the first seal and the second
seal to a width of the bag proper being between 94% and
97%, inclusive thereof.” Id. col. 8 ll. 54−58.
C. Prosecution History
During prosecution, the examiner twice rejected all of
Poly-America’s claims as being obvious over the combina-
tion of two prior art patents—Schneider (U.S. Patent No.
7,137,737 B2) and Bonke (U.S. Patent No. 5,133,607 A)—
which teach a pull-strip bag with short seals at the upper
hem and a plastic liner bag with elastic top, respectively.
J.A. 199−202, 240−46. In Poly-America’s response to the
second rejection, it distinguished Schneider from all of the
’308 patent’s independent claims on the basis that
Schneider’s short seals were not extended to reduce the
bag’s “relaxed upper opening width” in relation to the
“bag proper width”:
In Schneider, the short seals are merely an exten-
sion of the linear side seals with the side seals and
short seals on each side of the bag parallel to the
side seals and short seals on the other side of the
bag. Therefore, because the short seals are a line-
ar extension of the side seals, the distance be-
tween the interior edges of the short seals is
identical to the distance between the interior edg-
es of the side seals. . . . Thus, applying Appli-
cant’s claimed definitions of the terms, the
“relaxed upper opening width” of Schneider is the
exact same as the “bag proper width,” not less
than the “bag proper width” as required by Appli-
cant’s independent claims.
J.A. 272−73 (emphasis added). The examiner subsequent-
ly withdrew his objection and allowed all sixteen claims.
J.A. 346. The examiner explained that “the prior art fails
to teach elastic drawstrings welded into the bag hem at
short seals that form an upper opening that is smaller
than the width of the bag.” J.A. 282.
POLY-AMERICA, L.P. v. API INDUSTRIES, INC. 7
D. District Court Proceedings
Poly-America sued API Industries, Inc. (“API”) for in-
fringement of claim 10 of the ’308 patent. Among other
terms, the district court construed the term “short seal” of
claim 10. Poly-America proposed that “short seal” be
construed as “a seal that inseparably welds or joins the
first and second elastic drawstrings and the first and
second panels of the bag.” J.A. 32. The district court
instead adopted API’s proposed construction: “A seal for
securing the elastic drawstring, which seal is located
adjacent to a side seal, and that is not substantially
aligned with the side seal, but extends inwardly from the
interior edge of the side seal.” Id. The district court
explained that this construction was consistent with the
specification and the prosecution history. J.A. 2−4.
Under the district court’s construction of short seal,
the accused device would not infringe claim 10, because
API’s accused bags are conventional drawstring trash
bags with short seals that are substantially aligned with
the side seal—i.e., the short seals do not extend inwardly,
so the width of the relaxed upper opening is equal to the
bag proper width. Following claim construction, Poly-
America stipulated to non-infringement, and the district
court entered final judgment in API’s favor. J.A. 7. Poly-
America appeals the district court’s entry of judgment in
favor of API. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
II. STANDARD OF REVIEW
Where the district court’s claim construction relies on-
ly on intrinsic evidence, the construction is a legal deter-
mination reviewed de novo. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 840−42 (2015). A district
court’s subsidiary fact findings about extrinsic evidence
are reviewed for clear error. Id. Here, the district court’s
claim construction did not rely on extrinsic evidence, so
our review is de novo.
8 POLY-AMERICA, L.P. v. API INDUSTRIES, INC.
III. DISCUSSION
Poly-America argues that in construing the term
“short seal” to require inward extension, the district court
erred by importing limitations from embodiments de-
scribed in the specification, misreading the prosecution
history, and ignoring principles of claim differentiation.
We disagree.
Claim terms are generally given their ordinary and
customary meaning, which is the meaning they would
have to a person of ordinary skill in the art at the time of
the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc). We depart from the
plain and ordinary meaning in only two instances. Hill-
Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371
(Fed. Cir. 2014). The first is when a patentee acts as his
own lexicographer. Id. The second is when the patentee
disavows the full scope of the claim term in the specifica-
tion or during prosecution. Id. There is no indication or
assertion of lexicography in this case. The only question
is whether the inventor disavowed trash bags with short
seals that do not extend inwardly to narrow the upper
opening width in relation to the bag proper width.
Disavowal can be effectuated by language in the speci-
fication or the prosecution history. See Phillips, 415 F.3d
at 1316−17. In either case, the standard for disavowal is
exacting, requiring clear and unequivocal evidence that
the claimed invention includes or does not include a
particular feature. See Openwave Sys., Inc. v. Apple Inc.,
808 F.3d 509, 513−14 (Fed. Cir. 2015); Omega Eng’g., Inc.
v. Raytek Corp., 334 F.3d 1314, 1323−26 (Fed. Cir. 2003).
Ambiguous language cannot support disavowal. Omega,
334 F.3d at 1324; see also Schindler Elevator Corp. v. Otis
Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010).
While disavowal must be clear and unequivocal, it
need not be explicit. Trs. of Columbia Univ. v. Symantec
Corp., 811 F.3d 1359, 1363−64 (Fed. Cir. 2016). For
POLY-AMERICA, L.P. v. API INDUSTRIES, INC. 9
example, an inventor may disavow claims lacking a
particular feature when the specification describes “the
present invention” as having that feature. See e.g., Lu-
minara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d
1343, 1353 (Fed. Cir. 2016). Here, the specification states
that: “In looking at both FIG. 1 and FIG 2, it is important
to note that one of the characteristics of the present inven-
tion is a reduction in upper width . . . resulting from the
extended short seals.” ’308 patent col. 6 ll. 11−15 (empha-
sis added). Directing the reader to figures one and two,
which demonstrate the extended short seal feature, does
not limit the import of this clear statement that describes
a characteristic feature of the invention.
Similarly, an inventor may disavow claims lacking a
particular feature when the specification distinguishes or
disparages prior art based on the absence of that feature.
See Openwave, 808 F.3d at 513−14; SightSound Techs.,
LLC v. Apple Inc., 809 F.3d 1307, 1317 (Fed. Cir. 2015).
That is exactly what the specification to the ’308 patent
does by stating that prior art bags are difficult to secure
over trash receptacle lips and explaining that the use of
extended short seals reduces the claimed bag’s upper
opening, making it easy to fit around a trashcan. See ’308
patent col. 2 ll. 49−51, col. 5 ll. 36−48, col. 6 l. 32−col. 7
l. 19.
Poly-America’s reply to the examiner’s second rejec-
tion of all claims also contains a clear and unmistakable
disavowal of short seals that do not extend inwardly: “The
‘relaxed upper opening width’ of Schneider is the exact
same as the ‘bag proper width,’ not less than the ‘bag
proper width’ as required by Applicant’s independent
claims.” J.A. 273 (emphasis added). Despite Poly-
America’s contentions, it is irrelevant that the terms “bag
proper width” and “relaxed upper opening width” are not
present in claim 10, because when considered in light of
the specification, it is clear that all of the claimed trash
bags have a “relaxed upper opening width” and a “bag
10 POLY-AMERICA, L.P. v. API INDUSTRIES, INC.
proper width.” See ’308 patent col. 6 ll. 11−27. Ultimate-
ly, the only meaning that matters in claim construction is
the meaning in the context of the patent. See Trs. of
Columbia Univ., 811 F.3d at 1365.
The district court’s analysis does not involve import-
ing limitations from embodiments described in the speci-
fication. Every embodiment described in the specification
has inwardly extended short seals and every section of the
specification indicates the importance of inwardly extend-
ed short seals. These two facts provide together a proper
reason to limit the claims in this way. Moreover, even if
these indications were not themselves sufficient, they,
when taken together with the statements from the ’308
patent’s specification and prosecution history identified
above, provide clear and unequivocal evidence that the
inventor intended to disavow any claim scope encompass-
ing short seals that are not inwardly extended.
Poly-America argues that requiring the short seals in
claim 10 to be inwardly extended would render redundant
dependent claim 13’s provision for “a distance between
the first seal and the second seal to a width of the bag
proper being greater than 94% but less than 100%.” ’308
patent col. 8 ll. 49−53. Construing short seals to require
inward extension would inherently provide for a distance
between short seals that is less than 100 percent of the
bag proper width, but that does not render the more
specific range provided by dependent claim 13 redundant.
Poly-America also argues that because other inde-
pendent and dependent claims explicitly provide for
reduced upper opening width, claim differentiation prin-
ciples preclude importing that limitation into claim 10,
which does not contain such an explicit limitation. But
claim differentiation does not serve to broaden claims
beyond their meaning in light of the patent as a whole,
and it cannot override clear statements of claim scope
found in the specification and prosecution history. See
POLY-AMERICA, L.P. v. API INDUSTRIES, INC. 11
Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1302
(Fed. Cir. 1999).
IV. CONCLUSION
The ’308 patent clearly and unequivocally disavows
claims comprising short seals that do not extend inward-
ly. Therefore, the district court correctly construed the
terms “short seal” to require inward extension and cor-
rectly entered judgment in favor of API. We affirm.
AFFIRMED
COSTS
No costs.