       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                   NOVATEK, INC.,
                   Plaintiff-Appellee,

                           v.

             THE SOLLAMI COMPANY,
                Defendant-Appellant.
               ______________________

                      2013-1389
                ______________________

    Appeal from the United States District Court for the
District of Utah in Nos. 11-CV-0180 and 11-CV-1112,
Judge David Nuffer.
                ______________________

               Decided: March 26, 2014
               ______________________

    PHILIP W. TOWNSEND, III, of Provo, Utah, argued for
plaintiff-appellee.

    JEFFREY T. MORRIS, Morris, Jobe, & Cook, LLC, of
Pittsburgh, Pennsylvania, argued for defendant-
appellant.
               ______________________

 Before NEWMAN, MOORE, and WALLACH, Circuit Judges.
2                      NOVATEK, INC.   v. THE SOLLAMI COMPANY



    Opinion for the court filed by Circuit Judge WALLACH.
      Dissenting opinion filed by Circuit Judge MOORE.
WALLACH, Circuit Judge.
     In this patent case, Sollami Company (“Sollami”) al-
leged Novatek, Inc. (“Novatek”) infringed U.S. Patent
Nos. 7,883,155 (“the ’155 patent”) and 6,371,567 (“the ’567
patent”). Particularly, in February 2011, Novatek insti-
tuted this declaratory judgment action at the U.S. District
Court for the District of Utah on issues of invalidity and
non-infringement of the ’155 patent. On July 13, 2011,
Sollami filed suit against Novatek in the Southern Dis-
trict of Illinois for infringement of the ’567 patent. This
latter suit was transferred to the District of Utah, and the
two cases were consolidated in February 2012. After
claim construction, the district court found non-
infringement in favor of Novatek. This court affirms.
                       BACKGROUND
     The technology at issue involves equipment and
machinery used in road milling, mining, and trenching
operations. Specifically, the patents are directed to cutter
bits, bit holders, and bit blocks used in the above-
mentioned operations. The patents purport to provide a
better means for allowing the removal of a bit from a bit
holder or a bit block, “especially when the bit becomes
worn and in need of replacement.” E.g., ’567 patent col. 1
ll. 36–37, 43–44. The figure below is illustrative:
NOVATEK, INC.   v. THE SOLLAMI COMPANY                      3




’155 patent at [57]. A bit 16 and a spacer 17, together
with a bit holder 18, and a bit block 20 comprise the
claimed invention. The bit 16 includes a hardened tip 21
which resides in a pocket in the front face 22 of a frusto-
conical forward portion 23 of the bit 16. Id. col. 2 l. 65–
col. 3 l. 1. “At the rear of the frustoconical portion (23) is
a cylindrical front portion base 24.” Id. col. 3 ll. 1–2. “Aft
of the cylindrical base 24, the tip narrows to a cylindrical
shank 25, which, [in certain embodiments], includes a C-
shaped retainer 26 there around and a cylindrical shank
portion base 27 defining the rear end of the bit 16.” Id.
col. 3 ll. 7–10.
    The ’567 patent was issued on April 16, 2002, and the
’155 patent was issued on February 8, 2011. The two
patents’ specifications are not identical but are nonethe-
less substantially similar. Claims 1 to 9 of the ’567 patent
and claims 1 to 4 of the ’155 patent are the asserted
claims in this case. Claim 1 of the ’155 patent is repre-
sentative:
        1. In an assembly for use in road milling,
    trenching and mining equipment including a bit,
    bit holder and a bit block, said bit being mounta-
    ble in a first bore through said bit holder and said
    bit holder being mountable in a second bore
4                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



    through said bit block, said bit holder and bit
    block, in combination, comprising:
       a single piece bit holder structure including,
        a bit holder front portion and a generally cy-
    lindrical bit holder shank portion extending axial-
    ly rearwardly from said front portion defining an
    annular sidewall, an elongate slot radially
    through said sidewall extending axially from a
    distal end of said shank and terminating between
    said distal end and said front portion defining a C-
    shape portion of said shank, an outer surface of
    said C-shape portion providing interference with
    said second bore on said bit block sufficient to
    maintain said bit holder on said bit block during
    use.
’155 patent col. 7 l. 14–col. 8. l. 8. Claim 1 of the ’567
patent differs slightly, and recites:
        1. A bit holder for use in road milling, trench-
    ing and mining equipment as part of an assembly
    including a bit, said bit holder and a bit block,
    said bit being mountable in a first bore through
    said bit holder and said bit holder being mounta-
    ble in a second bore through said bit block, said
    bit holder comprising:
        a bit receiving front portion terminating at an
    annular flange for engaging a face of said bit
    block, a shank portion extending axially rear-
    wardly from said annular flange, said shank por-
    tion including a declining taper from adjacent said
    annular flange to adjacent a distal end thereof,
    said declining taper providing an interference fit
    between said bit holder and said bit block,
        said shank portion including an axial bore
    centrally therethrough, and
NOVATEK, INC.   v. THE SOLLAMI COMPANY                    5



         means on said shank portion for providing in-
    creased resilience for an outer surface of said de-
    clining taper to increase the usable interference
    fit between said declining taper and said second
    bore on said bit block by at least about four times
    a standard interference fit therebetween as said
    shank portion is fully mounted on said second
    bore.
’567 patent col. 8 ll. 11–33.
    Like Sollami, Novatek manufactures a bit assembly
used in road milling, mining, and trenching operations
(“accused device”). Its assembly consists of a bit with a
polycrystalline diamond (“PCD”) coated tip that is brazed
to a carbide bolster, which is then brazed to a steel body.
Novatek provides the following depiction of its accused
device:




Appellee’s Br. 12; J.A. 332.
    The district court issued its claim construction order
on December 4, 2012, and Novatek moved for summary
judgment of non-infringement thereafter on December 21,
2012. On April 30, 2013, the motion was granted and
6                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



judgment was entered. 1 Sollami timely appealed. This
court has jurisdiction under 28 U.S.C. § 1295(a)(1) (2012).
                        DISCUSSION
     Sollami makes the following arguments on appeal: (1)
that the district court erred in construing “bit,” “bit hold-
er,” and “shank” as recited in the asserted claims; and (2)
that the district court erred in finding that the accused
device does not have a “bit” as the district court construed
the term. The issues presented therefore pertain to the
district court’s claim construction and its grant of No-
vatek’s motion for summary judgment of non-
infringement.
    A. The District Court Correctly Construed “Bit,” “Bit
                   Holder,” and “Shank”
    This court reviews a district court’s claim construction
de novo. Lighting Ballast Control LLC v. Philips Elecs. N.
Am. Corp., No. 2012–1014, 2014 WL 667499, at *1, *16
(Fed. Cir. Feb. 21, 2014) (en banc). To ascertain the scope
and meaning of the asserted claims, courts look to the
words of the claims themselves, the specification, the
prosecution history, and, if necessary, any relevant ex-
trinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303,
1315–17 (Fed. Cir. 2005) (en banc).




     1  Although the district court’s judgment does not
discuss Novatek’s invalidity counterclaims, “[the judg-
ment] is clear that the district court intended to dispose of
all the claims before it.” Locell v. Chandler, 303 F.3d
1039, 1049 (9th Cir. 2002); Petty v. Manpower, Inc., 591
F.2d 615, 617 (10th Cir. 1979) (“What is of importance is
the district court’s intent in issuing its order dismissal of
the complaint alone or actual dismissal of plaintiff’s entire
action?”).
NOVATEK, INC.   v. THE SOLLAMI COMPANY                     7



    Relevant to this appeal, the district court construed,
among other terms, “bit,” “bit holder,” and “shank.”
Novatek, Inc. v. Sollami Co., No. 2:11–cv–00180, 2013 WL
1831995, at *3 (D. Utah Apr. 30, 2013). Sollami contends
that certain terms interpreted by the district court, in-
cluding the term “bit,” appear only in the preambles of the
asserted claims. Sollami argues “bit” is not a required
structural element of the asserted claims because the
preambles are not limitations on the claims. The district
court concluded that the preambles serve as limitations.
    “A claim’s preamble may limit the claim when the
claim drafter uses the preamble to define the subject
matter of the claim.” August Tech. Corp. v. Camtek, Ltd.,
655 F.3d 1278, 1284 (Fed. Cir. 2011). On one hand, a
preamble is generally construed to be limiting if it “‘re-
cites essential structure or steps, or if it is necessary to
give life, meaning, and vitality to the claim.’” NTP, Inc. v.
Research In Motion, Ltd., 418 F.3d 1282, 1305 (Fed. Cir.
2005) (quoting Catalina Mktg. Int’l, Inc. v. Coolsav-
ings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). For
example, limitations in the body of the claim that rely
upon and derive antecedent basis from the preamble may
render the preamble a necessary component of the
claimed invention; and therefore, a limitation on the
claims. Id. at 1306. Also, where the specification under-
scores structure or steps recited in the preamble as im-
portant, the preamble may operate as a claim limitation.
Catalina Mktg., 289 F.3d at 808. Further, “clear reliance
on the preamble during prosecution to distinguish the
claimed invention from prior art transforms the preamble
into a claim limitation because such reliance indicates use
of the preamble to define, in part, the claimed invention.”
Id. at 808–09.
    On the other hand, when a patentee “defines a struc-
turally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the
invention, the preamble is not a claim limitation.” Rowe
8                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); see Pitney
Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999) (explaining the preamble is not limiting if
“the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the
claimed invention’s limitations, but rather merely states,
for example, the purpose or intended use of the inven-
tion”). Whether a preamble is treated as a limitation is
determined by the facts of each case and upon an under-
standing of what the inventors actually invented and
intended to encompass by the claims. Catalina Mktg.,
289 F.3d at 808.
    Here, as the district court concluded, the preambles of
the asserted claims recite essential elements of the inven-
tion pertaining to, among other things, the bit, the bit
holder, and the bit block in addition to the mounting
relationship among these elements that make up the
claimed bit assembly. For example, the preamble of claim
1 of the ’567 patent recites a “bit holder” that is a “part of
an assembly including a bit, said bit holder and a bit
block,” where the “bit” is “mountable in a first bore
through said bit holder and said bit holder being mounta-
ble in a second bore through said bit block.” The pream-
ble of claim 1 of the ’155 patent recites substantially the
same. Particularly, it too refers to “an assembly” that
includes “a bit, bit holder and a bit block.” The body of
claim 1 of the ’567 patent does not recite the complete
invention, but refers back to the features of the bit as-
sembly stated in the preamble, so that these references in
the body of the claim derive their antecedent bases from
the preamble. ’567 patent col. 8 ll. 11–33 (“bit holder, “bit
block,” and “second bore” finding antecedent bases in the
preamble).
    The patents’ specifications support this reading of the
preambles. In particular, the specifications identify the
NOVATEK, INC.   v. THE SOLLAMI COMPANY                      9



recited structural elements in the patents’ preambles as
“the invention.” The ’567 patent for instance provides:
    Referring to FIGS. 1–2, a bit mounting assembly,
    generally indicated at 20, constructed in accord-
    ance with the present invention, includes a bit,
    generally indicated at 21, which is mounted on a
    bit holder, generally indicated at 22, which, in
    turn, is secured on a bit block, generally indicated
    at 23.
’567 patent col. 2 ll. 49–54; see also ’155 patent col. 2 ll.
59–64 (“[A] bit, bit holder and bit block assembly, general-
ly indicated at 15, constructed in accordance with the
present invention, includes a bit, generally indicated at 16
and a spacer, generally indicated at 17, together with a
bit holder, generally indicated at 18 and a bit block,
generally indicated at 20.”). In addition, the purported
improvement over prior art is stated as a “more efficient
means for allowing the removal of a bit from a bit holder
or a bit block.” ’567 patent col. 1 ll. 43–44. These state-
ments in the specification underscore structural elements
recited in the preamble, e.g., “bit,” as pertinent to the
invention claimed. Proveris Scientific Corp. v. Innovasys-
tems, Inc., 739 F. 3d 1367, 1373 (Fed. Cir. 2014) (“[T]he
preamble [provides for] the only reference in any inde-
pendent claim to the inventive concept . . . [and] [t]his fact
alone is likely sufficient to support a conclusion that the
preamble is limiting.”); Deere & Co. v. Bush Hog, LLC,
703 F.3d 1349, 1358 (Fed. Cir. 2012) (holding that the
preamble phrase “rotary cutter deck” was a limitation
where the specification referred to “the present invention”
as “a rotary cutter deck”); Poly–Am., LP v. GSE Lining
Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004) (constru-
ing preamble as limiting where it disclosed a “fundamen-
tal characteristic of the claimed invention”) (internal
quotation marks and citation omitted).
10                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



     The inventor’s statements made during prosecution of
the ’155 patent also highlight the relevance of the struc-
tural elements recited in the preambles. For instance, the
inventor stated in a declaration that: “The present appli-
cation is a bit holder that is stiffer and therefore holds the
bit in the proper position for heavy operating conditions . .
. . A combination of the [cited prior art references] would
cause the holder to rotate. In the industry, bits rotate,
not holders.” J.A. 253. In distinguishing prior art, the
inventor stated that:
     The [prior art] reference has a wider notch at the
     rearward potion and a narrower width at the front
     face [than the bit holder of the claimed invention].
     The present application is the reverse. This dif-
     ference is material because the narrower rear-
     ward portion prevents the clogging of the notch
     and aids in removal of the bit.
J.A. 254. Thus, the inventor during prosecution of the
’155 patent relied on structural elements recited in the
preamble to distinguish the claimed invention from the
prior art.
     Accordingly, the preambles of the asserted claims are
not merely limited to stating the purpose or intended use
of the invention of the ’567 and ’155 patents, but rather
contain essential structural elements that are highlighted
in the specification and which were relied upon during
prosecution. Although Sollami argues that the essence of
its invention is directed to a “bit holder” as opposed to a
“bit,” the intrinsic evidence does not support Sollami’s
contention. Indeed, in addition to the structural elements
of the claimed bit assembly, the invention focuses on the
mounting relationship among the bit, bit holder, and bit
block. E.g., ’155 patent col. 4 ll. 7–9 (“Referring to FIG. 2,
the mounting relation between the bit block 20, bit holder
18, spacer 17 and bit 16 is shown in cross section.”). It is
apparent that the “claim drafter [chose] to use both the
NOVATEK, INC.   v. THE SOLLAMI COMPANY                    11



preamble and the body to define the subject matter of the
claimed invention.” Eaton Corp. v. Rockwell Int’l Corp.,
323 F.3d 1332, 1339 (Fed. Cir. 2003) (internal quotation
marks and citation omitted). Therefore, the district court
did not err in concluding that the recited structural
elements in the preambles serve as limitations that give
“life, meaning, and vitality to the claims” as a whole.
Novatek, 2013 WL 1831995, at *3.
    Even if “bit” is construed as a structural limitation,
Sollami avers that the district court erred by requiring a
bit with a shank and by requiring removability of the bit
from the bit holder. The district court construed “bit” as
“an object comprising a hardened tip and a shank mount-
able in and removable from a bore through the front
portion of a bit holder,” and “bit holder” as “[a]n object in
which a removable bit is mounted in a bore in the front
portion thereof.” Novatek, 2013 WL 1831995, at *3. The
court’s constructions were correct.
     Claim 1 of the ’567 patent provides that the “bit [is]
mountable in a first bore through said bit holder and said
bit holder [is] mountable in a second bore through said bit
block.” ’567 patent col. 8 ll. 13–15. Inherent in this claim
language is that a portion of the bit is “in” a first bore,
and similarly, a portion of the bit holder is “in” a second
bore. That portion of the bit holder that is “in” the second
bore is recited expressly as the “shank portion.” Id. col. 8
ll. 18–32. Although the claim language does not denote a
label for the portion of the bit that is “in” the first bore,
like the district court, this court holds that portion of the
bit and the bit holder’s shank portion “cannot be . . .
entirely different” and construes both the bit and the bit
holder to include a shank. Novatek, 2013 WL 1831995, at
*5. The patentee adheres to this definition when describ-
ing his invention throughout the patent. See Boss Con-
trol, Inc. v. Bombardier Inc., 410 F.3d 1372, 1377 (Fed.
Cir. 2005) (quoting Astrazeneca AB v. Mut. Pharm. Co.,
384 F.3d 1333, 1340 (Fed. Cir. 2004)) (“[W]hile it is of
12                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



course improper to limit the claims to the particular
preferred embodiments described in the specification, the
patentee’s choice of preferred embodiments can shed light
on the intended scope of the claims.”).
    In the “Background of the Invention” section, the pa-
tentee without qualification sets out that “bits include a
tip and a shank.” ’567 patent col. 1 ll. 21–22; ’155 patent
col. 1 ll. 28–30 (“The bits utilized include a tip and a
shank.”). Elaborating on the “tip” and “shank,” the pa-
tentee recites:
     The shank is received and may axially rotate in a
     bit holder which is secured onto a bit block that,
     in turn, is mounted on the drum. Each of the bits
     has a hardened tip, preferably made of tungsten
     carbide or such other hardened material that acts
     to remove a portion of the surface it contacts.
’567 patent col. 1 ll. 22–26.
    Additionally, every figure in the patents depicting a
bit includes a shank. ’567 patent Figs. 1, 2, 7, 8; ’155
patent Figs. 1, 13. Specifically, the ’567 patent provides:
“Referring to FIG. 2, the bit, generally indicated at 21,
includes a forward end 24, and a shank 25 or rear end
thereof.” ’567 patent col. 2 ll. 57–59; ’155 patent col. 3 ll.
9–10 (“[A] cylindrical shank portion base 27 defining the
rear end of the bit.”). Further consistent with the claim
language that allows for the bit and bit holder to include a
shank, the embodiments provide that “shank 25 [of the
bit] fits within bore 40” of the bit holder the length of
which “is determined partly by the length of the shank 25
on bit 21,” ’567 patent col. 3 ll. 31–34, and that “[b]ore 49
[that runs through the bit block] is sized to receive the
cylindrical shank 35 of the bit holder 22,” id. col. 3 ll. 45–
46.
   The intrinsic evidence therefore supports what is in-
herent in the claim language—the portion of the bit that
NOVATEK, INC.   v. THE SOLLAMI COMPANY                    13



is “in” the first bore, as recited in the asserted claims, is
the “shank.” In particular, the patents disclose a symbi-
otic relationship between the shank and bore, an interde-
pendence where the existence of a bore necessitates the
need for a shank to practice the invention as claimed. See
Response to Office Action, U.S. Patent App. No.
11/509,349, at 9 (Oct. 21, 2009) (“[B]its used in road
milling equipment have shanks that may slightly vary
but would approximate 3/4 to 7/8 inch in diameter. Appli-
cant is presently designing bit holders for trenching
equipment wherein the bit shanks approximate 1-1/2
inches in diameter. Mining equipment would utilize bits
having larger shanks. Therefore, the exact numbers
given for the bit holder bores and outer bit holder dimen-
sions would vary depending upon the application . . . .”). 2
Accordingly, the patentee’s consistent usage and treat-
ment of a limitation (here, “shank”) demonstrates the bit
includes a shank. See, e.g., Honeywell Int’l Inc. v. Univer-
sal Avionics Sys. Corp., 488 F.3d 982, 990 (Fed. Cir. 2007)
(construing the claim term “look ahead distance” to in-
clude a time limitation because “time is inherent in the
calculation of ‘look ahead distance,’” as shown by the
specification); Network Commerce, Inc. v. Microsoft Corp.,
422 F.3d 1353, 1360 (Fed. Cir. 2005) (limiting the term
“download component” to a component capable of perform-
ing certain functions, based on the consistent usage in the
specification).
    That the “bit” was construed as being “removable”
from the “bit holder” was also not error. The district court
reasoned that “if [the bit is] going to be mountable, it has



    2   The ’155 patent’s prosecution history, e.g., office
action responses, referenced in this opinion are publicly
available at Patent Application Information Retrieval,
USPTO,      http://portal.uspto.gov/pair/PublicPair   (last
visited Mar. 21, 2014).
14                      NOVATEK, INC.   v. THE SOLLAMI COMPANY



to be removable.” J.A. 308. Sollami argues that “remova-
ble” is not recited in the claim language, and thus, cannot
be a limitation.
    The “removable” requirement is fully supported by the
specification, which is “‘the single best guide to the mean-
ing of a disputed term.’” Phillips, 415 F.3d at 1315 (quot-
ing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). Every relevant embodiment
disclosed in the ’567 and ’155 patents refers to the remov-
ability of the bit from the bit holder. Indeed, the purpose
of the invention is to provide a means for “quick removal”
of the bit from the bit holder and/or the bit holder from
the bit block during road milling, mining, and trenching.
See, e.g., ’567 patent col. 1 ll. 54–57 (“[A]n object of the
present invention, generally stated, is to provide an
improved means for quickly mounting and/or removing a
bit holder from its associated bit block.”).
    In the “Background of the Invention” section, the ’567
patent explains that “a need has developed for providing
ease of removability of bits in their bit holders, especially
when the bit becomes worn and in need of replacement,”
and that “[i]t would be desirable to provide a more effi-
cient means for allowing the removal of a bit from a bit
holder or a bit block.” Id. col. 1 ll. 36–44. Throughout the
specifications of both patents, the bit is described in no
other way than allowing for removability:
     If the bit 21 should break at reduced diameter
     portion 29 adjacent the bottom flanged portion 28,
     a rod, punch, etc. (not shown) may be inserted into
     the bottom of the bore to push the shank [of the
     bit] out of the holder.
Id. col. 3 ll. 34–38;
     The notches 32a-32d, constructed in accordance
     with the present invention, allow for the quick
     removal of the bit 21 from the bit holder 22 by ap-
NOVATEK, INC.   v. THE SOLLAMI COMPANY                       15



    plying a force having a substantial axial compo-
    nent thereto to the bottom side of the bit flange
    28. In the preferred embodiments there may be
    two, three or four notches or indents 32a-d (FIG.
    2, 32-d not shown) on the bit holder 22 positioned
    at 120 degree or 90 degree intervals, respectively,
    around the circumference thereof. Each notch
    may be straight vertically or slightly wider at sur-
    face 31 and narrows as the notch descends toward
    flange 33. While the use of the punch 55 on one
    notch is usually sufficient to remove the bit, the
    punch may be utilized sequentially in differing
    notches to balance the axial force, if necessary, to
    move the bit 21 out of the bit holder 22.
Id. col. 3 l. 63–col. 4 l. 10;
    Referring to FIGS. 7 and 8, the bit 21 and the sec-
    ond embodiments of the bit holder 60 and bit
    block 61 are shown in assembled condition with
    the exception of the modification in the bit block
    61 to provide a slot 85 positioned in the outer por-
    tion of bit block 61 to more easily allow the inser-
    tion of tools in the rear of the bit block 61 to drive
    the bit 21 from the bit holder 60.
Id. col. 5 ll. 35–41;
    As with the first embodiment of the present in-
    vention, the notch 65 in the front tapered portion
    of the bit holder 60 allows a chisel (not shown) or
    other such device to apply force on the back side of
    the bottom flanged portion 28 of bit 21 to drive the
    bit out of the bit holder.
Id. col. 5 ll. 49–53;
    A plurality of notches 37-37 (one shown) adjacent
    the front face 35 of the bit holder, provide an ac-
    cess area to the cylindrical base 24 of the tip 16
    into which a prying tool may be positioned to force
16                      NOVATEK, INC.   v. THE SOLLAMI COMPANY



     out the base 24 of the bit 16 when the bit shank
     25 and spacer 17 are mounted in the bore 36 of
     the bit holder 18.
’155 patent col. 3 ll. 25–30.
     As shown most clearly in FIG. 2, the semi-
     cylindrical indent 33 in the spacer 17 provides for
     the insertion of a tool through the backside of bore
     36 which will accommodate punching out the
     spacer 17 and the bit 16 from the back of the as-
     sembly.
Id. col. 4 ll. 32–46.
     With this embodiment, the bit 16 (not shown)
     would be driven out of the bit holder 60 for re-
     placement by inserting a rod to tool (not shown) in
     the bottom of bore 63 of the bit holder (shown
     most clearly in FIG. 3) . . . .
Id. col. 5 ll. 15–19;
     The bulbous frustoconical portion 73 extends
     rearwardly beyond the cylindrical nose and in-
     cludes a pair of notches 74, 75 therein that pro-
     vide tool access to the back of a bit for easing
     removal of the bit from the bit holder.
Id. col. 5 ll. 44–48. It is apparent that removability of the
bit from the bit holder is a feature of the invention as a
whole, and not merely a preferred embodiment of the
invention. See Regents of Univ. of Minn. v. AGA Med.
Corp., 717 F.3d 929, 936 (Fed. Cir. 2013) (quoting Verizon
Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295,
1308 (Fed. Cir. 2007)) (“When a patent thus describes the
features of the ‘present invention’ as a whole, this descrip-
tion limits the scope of the invention.”); Decisioning.com,
Inc. v. Federated Dept. Stores, Inc., 527 F.3d 1300, 1309
(Fed. Cir. 2008) (“The remote interface is a component of
the invention itself, and the inventor’s use of ‘kiosk’ in
NOVATEK, INC.   v. THE SOLLAMI COMPANY                    17



that manner does not merely describe a preferred embod-
iment of the invention. Rather, it describes the invention
itself.”).
     In addition, the prosecution history of the ’155 patent
supports the district court’s construction requiring re-
movability of bits from bit holders. In explaining the
purpose behind the wall thickness of a prior art bit as-
sembly, the patentee declared that it was “to quickly
remove the bit” and further specified that “[a]s many as
320 bits may be removed and replaced in a day.” J.A. 253.
The patentee also explained as “material” the bit assem-
bly design of the ’155 patent that “aids in removal of the
bit.” J.A. 254. These statements show the patentee
remained cognizant of a key feature throughout the
prosecution of the ’155 patent—removability of the bit.
    Thus, the patentee’s references to “bit” consistently
require that it is removable from the bit holder. Bell Atl.
Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262
F.3d 1258, 1271 (Fed. Cir. 2001) (quoting Vitronics Corp.,
90 F.3d at 1582) (“[W]hen a patentee uses a claim term
throughout the entire patent specification, in a manner
consistent with only a single meaning, he has defined that
term ‘by implication.’”). Accordingly, the district court did
not err in construing the bit to be removable from the bit
holder.
    Finally, Sollami argues that the district court erred in
requiring the “shank” to be an “elongate cylindrical ob-
ject” because the claim language does not provide for a
particular shape of “shank.” As discussed above, claim 1
of the ’567 patent requires the bit’s and bit holder’s shank
portions to be “in” bores that run through the bit holder
and bit block. The ordinary meaning of “bore” is defined
as “a hole made or enlarged by boring” and/or “the inside
diameter of a hole, tube, or hollow cylindrical object or
device, such as a bushing or bearing, engine cylinder, or
barrel of a gun.” Random House Unabridged Dictionary
18                    NOVATEK, INC.   v. THE SOLLAMI COMPANY



242 (2d ed. 2001); see also Merriam-Webster Dictionary,
http://www.merriam-webster.com/dictionary/bore         (last
visited Mar. 21, 2014) (“Bore” defined as “a usually cylin-
drical hole made by or as if by boring” or “the long usually
cylindrical hollow part of something (as a tube or gun
barrel).”). A shank portion that fits in a “hole” that runs
through the bit holder (and bit block) must be elongated
and cylindrical. The claim language also provides that a
shank extends axially from an annular (shape of a ring)
flange. ’567 patent col. 8 ll. 19–21 (describing the bit
holder’s shank). Although Sollami contends that the
“shank” can be of any shape, a structure that extends
away from an annular flange must impart a shape that is
generally cylindrical and no other.
    The specification supports this plain meaning. To
begin, every figure and description of “shank” and “shank
portion” illustrates a cylindrical structure. As an exam-
ple, a portion of the ’567 patent’s specification reads:
     Flange 66 is annular in that a bore 71 runs axially
     through the bit holder in a more straight forward
     hollow cylindrical manner than the bore 40 which
     extends through the bit holder 22 of the first em-
     bodiment. The leading edge of bore 71 includes a
     countersink 72 adjacent to the flat annular lead-
     ing surface 62 of the bit holder to receive a simi-
     larly shaped shank portion 25 on the bit 21 shown
     in FIG. 2.
Id. col. 4 ll. 45–51. Consequently, a “hollow cylindrical”
bore receives “a similarly shaped shank portion” of the
bit.
    Likewise, “[t]he shank is received and may axially ro-
tate in a bit holder which is secured into a bit block that,
in turn, is mounted on the drum.” Id. col. 1 ll. 21–23. In
order for a shank to axially rotate and to extend away
from an annular flange, the “shank” must take on a
cylindrical shape. While this latter example is in refer-
NOVATEK, INC.   v. THE SOLLAMI COMPANY                       19



ence to the shank portion of the bit holder, it is neverthe-
less depictive of the disclosed shape of the bit’s shank
portions. Indeed, these and other examples disclosed in
the patents show that the claimed bore and shank por-
tions are of similar cylindrical shape. E.g., id. col. 7 ll. 1–
34 (disclosing cylindrical “drive pins” that fit into the
bores of the bit holder and bit block). The prosecution
history similarly highlights the structurally complemen-
tary relationship between the shank and bore. See Re-
sponse to Office Action, U.S. Patent App. No. 11/509,349,
at 8 (Oct. 21, 2009) (The Patent Office states a “standard
interference-press fit” is indefinite. While it is true there
are no present standards for hollow slotted shanks fitting
in complementary bores . . . there are standards for inter-
ference fits for solid cylinders fitting into bores.”); see also
Response to Office Action, U.S. Patent App. No.
11/509,349, at 20 (Aug. 6, 2007) (“[M]echanical engineer-
ing handbooks . . . include charts disclosing what dimen-
sions heretofore known interference fits are for various
diameters of solid cylinders. These are the [interference]
fits that applicant refers to.”). Accordingly, the district
court’s construction of “shank” as an “elongate cylindrical
object” was correct. 3
B. The District Court Did Not Err in Granting Novatek’s
  Motion for Summary Judgment of Non-infringement
    Summary judgment decisions are reviewed under re-
gional circuit law. SkinMedica, Inc. v. Histogen Inc., 727
F.3d 1187, 1194 (Fed. Cir. 2013). The Tenth Circuit
reviews the grant of summary judgment de novo. Robert


    3   Novatek raises alternative claim construction and
non-infringement contentions. Appellee’s Br. 20 (“The
‘Bit’ must be rotatable.”). Because we affirm the district
court’s claim constructions and affirm the district court’s
finding of non-infringement, this court need not consider
Novatek’s alternative bases for affirmance.
20                    NOVATEK, INC.   v. THE SOLLAMI COMPANY



v. Bd. of Cnty. Comm’rs, 691 F.3d 1211, 1216 (10th Cir.
2012). Summary judgment is appropriate “if the movant
shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a). At the summary judgment
stage, we credit all of the nonmovant’s evidence and draw
all justifiable inferences in her favor. Brilliant Instru-
ments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344 (Fed.
Cir. 2013) (internal quotation marks and citations omit-
ted).
    Based on its construction of “bit,” the district court
found that Novatek was entitled to judgment as a matter
of law because there were no genuine disputes as to any
material fact that Novatek’s accused device did not have a
bit including a shank. The district court additionally
found that the accused device did not include a bit
mountable in a bore. Lastly, the district court found that
the accused device did not have a bit that is removable
from the bit holder.
    “To prove infringement, the patentee must show that
an accused product embodies all limitations of the claim
either literally or by the doctrine of equivalents.” Cepha-
lon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340
(Fed. Cir. 2013). “If any claim limitation is absent from
the accused product, there is no literal infringement as a
matter of law.” Id. Where a defendant seeks summary
judgment of non-infringement, “nothing more is required
than the filing of a . . . motion stating that the patentee
had no evidence of infringement and pointing to the
specific ways in which accused [products] did not meet the
claim limitations.” Exigent Tech. v. Atrana Solutions, Inc.,
442 F.3d 1301, 1309 (Fed. Cir. 2006). The burden of
production then shifts to the patentee to “identify genuine
issues that preclude summary judgment.” Optivus Tech.,
Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 990
(Fed. Cir. 2006).
NOVATEK, INC.   v. THE SOLLAMI COMPANY                    21



     Novatek’s accused devices do not meet all the struc-
tural limitations of the asserted claims. First, the district
court found that “the carbide bolster of the Novatek
devices is not an elongate cylindrical object and is there-
fore not a ‘shank.’” Novatek, 2013 WL 1831995, at *5. An
illustration of the PCD tip and carbide bolster is depicted
below:




Appellee’s Br. 13; Appellant’s Reply Br. 19; J.A. 334; see
also J.A. 416. Sollami argues that the device “exhibits a
cylindrical protrusion at its distal end which serves to
anchor or secure the subassembly into the bore in the
front end of the tool holder/steel body.” Appellant’s Reply
Br. 18. According to Sollami, a trier of fact could reason-
ably conclude that the cylindrical protrusion at the distal
end is an elongated cylindrical shank. We find Sollami’s
contention persuasive. Whether the protrusion at the
bottom portion of the carbide bolster is sufficiently “elon-
gate” and “cylindrical” are disputed. To the extent the
district court’s decision was based on Novatek’s lack of a
“shank” or an “elongate cylindrical object,” it was error.
    The district court nonetheless found no genuine dis-
pute as to whether Novatek’s accused device met the bit
“mountable in a bore” limitation of the asserted claims.
In particular, the district court determined that “even if
the carbide bolster comprises a shank, the carbide bolster
nevertheless is not mountable in a bore.” Novatek, 2013
22                    NOVATEK, INC.   v. THE SOLLAMI COMPANY



WL 1831995, at *5. Although Sollami disputes the dis-
trict court’s determination that Novatek’s device does not
include a “bit mountable in a bore,” its arguments turn on
issues of claim construction—whether the shank portion
of the bit and the corresponding bore are cylindrical and
whether the shank portion fits in a bore. Because the
district court correctly interpreted “shank” to be cylindri-
cal (and in turn, the bore to be cylindrical), many of
Sollami’s arguments as to whether Novatek’s device has a
“bit mountable in a bore” cannot stand.
    With respect to any remaining argument on this
point, the following illustrations of Novatek’s accused
device are instructive:




Appellee’s Br. 15; J.A. 337; see also J.A. 416. As shown in
these illustrations, the accused devices do not feature a
bit “in” a bore that runs through the bit holder. Sollami’s
contention that the “concave opening in the front portion
of the steel body/bit holder” constitutes a “complex geome-
try through hole” is unconvincing. Appellant’s Reply Br.
19–20 (quotation marks and citation omitted). The claim
language requires a bore that runs through the bit holder,
and the shank is required to be “in” this bore. As the
district court found, however, it is undisputed that the
carbide bolster is brazed directly to the top of the steel
NOVATEK, INC.   v. THE SOLLAMI COMPANY                  23



body and no corresponding shank portion is in a bore.
Novatek, 2013 WL 1831995, at *5. Accordingly, there is
no genuine dispute as to whether Novatek’s carbide
bolster mounts in the bore of the steel body; Novatek’s
carbide bolster lacks a bore in which a shank is mounted
as the asserted claims require.
    The district court was also correct in finding that the
accused device’s PCD tip with its carbide bolster is not
“removable” from the steel body, and therefore, fails to
meet the “removable” construction of the “bit” limitation.
Novatek, 2013 WL 1831995, at *6. The district court
considered “the brazed attachment to be analogous to a
rivet or laminate, which are ‘meant to remain permanent
[and] unremovable unless one is bent on breaking the
permanent structure apart,’ as opposed to a screw, for
example, which is ‘meant to be unscrewed [or] removed.’”
Id. (quoting K2 Corp. v. Salomon S.A., 191 F.3d 1356,
1365 (Fed. Cir. 1999)). The accused device’s brazed
attachment of the carbide bolster to the steel body is
shown below:




Appellee’s Br. 18; J.A. 339; see also J.A. 415.
    It is undisputed that Novatek’s carbide bolster is
brazed to a steel body. Sollami argues that the carbide
bolster is nevertheless “removable” from the steel body,
requiring merely the application of heat to dissolve the
brazed joint; a process Sollami characterizes as non-
24                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



destructive and having no adverse effects to the compo-
nents. Therefore, despite the need to melt the braze joint,
Sollami contends that it does not render the PCD
tip/carbide bolster subassembly not “removable.” These
contentions are unpersuasive.
    Sollami’s own expert declaration in the record shows
the difficulty of removing the accused product’s carbide
bolster from the steel body. In particular, Sollami’s
expert depicts a process that includes using induction
heat to melt the braze, removing and replacing the car-
bide bolster, and using induction heat to braze the new
carbide bolster onto the steel body. J.A. 417–18. Alt-
hough the accused device’s carbide bolster is removable, it
cannot be said to be “removable” as the term is intended
in the patents at issue.
    Distinguishing from prior art, the ’567 patent states:
“It would be desirable to provide a more efficient means
for allowing the removal of a bit from a bit holder or a bit
block.” ’567 patent col. 1 ll. 42–44 (emphasis added). Also,
referring to an embodiment as depicted in Figure 1, the
specification recites: “The notches 32a-32d, constructed in
accordance with the present invention, allow for the quick
removal of the bit 21 from the bit holder 22 by applying a
force having a substantial axial component thereto the
bottom side of the bit flange 28.” Id. col. 4 ll. 64–67 (em-
phasis added). Further, “providing ease of removability of
bits in their bit holders” is described as a “need” that the
patent addresses. Id. col. 1 ll. 36–37 (emphasis added).
“Quick removal” providing “ease of removability” is de-
picted by embodiments disclosing, e.g., “drive pins” that
push bits out of bit holders and bit holders out of bit
blocks, id. col. 7 ll. 1–34, and the use of “interference fit,”
as opposed to utilizing retaining nuts or clips for the
purpose of keeping the bit assembly together and the
components in place, id. col. 1 ll. 62–64, col. 5 ll. 53–55.
The process of heating and melting the brazed joint of
NOVATEK, INC.   v. THE SOLLAMI COMPANY                   25



Novatek’s device to render it removable is not the type of
removability the patents contemplate.
    K2 Corp. v. Salomon S.A. is instructive. There, this
court recognized that while claim terms such as “perma-
nently” can be interpreted to require infinite duration in
the metaphysical sense, “claim construction is firmly
anchored in reality by the understanding of those of
ordinary skill in the art.” K2 Corp., 191 F.3d at 1365. We
accordingly held that a rivet or a laminate was sufficient-
ly permanent because it “is meant to remain permanent,
unremovable unless one is bent on breaking the perma-
nent structure apart.” Id; see High Tech Med. Instrumen-
tation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1555
(Fed. Cir. 1995) (finding the “rotatably coupled” limitation
in the asserted claim was not met by the accused product
where the accused product had to be altered—by loosen-
ing the set screws—in order for it to rotate).
    Here, adopting Sollami’s position would detract from
“removable” as a skilled artisan would interpret “bit”
based on the patents’ disclosures. Anything with ade-
quate force can be “removable,” but such unbounded
interpretation of the term flounders on the shoals of
reality. No reasonable jury would find “removable” as
construed by the district court to read on Novatek’s ac-
cused device. Accordingly, the district court was correct
to find that there are no genuine disputes whether No-
vatek’s accused device includes a bit that is removable.
                        CONCLUSION
    Based on the foregoing, the district court’s claim con-
struction of “bit,” “bit holder,” and “shank” and its sum-
mary judgment of non-infringement are affirmed.
Novatek’s accused device does not meet the “bit” limita-
tion of the asserted claims.
                        AFFIRMED
        NOTE: This disposition is nonprecedential


  United States Court of Appeals
      for the Federal Circuit
                  ______________________

                    NOVATEK, INC.,
                    Plaintiff-Appellee,

                             v.

              THE SOLLAMI COMPANY,
                 Defendant-Appellant.
                ______________________

                        2013-1389
                  ______________________

    Appeal from the United States District Court for the
District of Utah in No. 11-CV-1112, Judge David Nuffer.
                  ______________________
MOORE, Circuit Judge, dissenting.
     I respectfully dissent from the majority’s decision to
affirm the district court’s judgment of noninfringement.
Because the district court erred in its claim construction, I
would reverse and remand.
  I. IS “BIT,” USED ONLY IN THE PREAMBLE, A STRUCTURAL
                        LIMITATION?

     I disagree with the majority that “bit” limits the
claims of U.S. Patent No. 6,371,567 (’567 patent). It is
correct that the terms “bit holder” and “bit block,” which
first appear in the preamble of the ’567 patent, are claim
limitations. The body of the claim itself expressly recites
these structures. However, the fact that one structure
2                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



recited in the preamble is a limitation by virtue of provid-
ing antecedent basis for a later reference does not convert
the entire preamble into a limitation. The bit is a struc-
ture distinct from the bit holder or bit block. The bit itself
appears only in the preamble in a statement of intended
use. It does not appear in the body of any claim in the
patent. And the invention claimed in the ’567 patent is
structurally complete without the bit. Claim 1 is to a bit
holder, and the elements in the body of the claim define
the structure of the bit holder and the manner in which
the bit holder interacts with the bit block. But claim 1
does not require the presence of a bit. It never mentions
the bit itself or even delineates how the bit fits into the
claimed bit holder. There is no doubt that the bit is part
of the assembly disclosed in the ’567 patent for use in road
milling, trenching, and mining. Neither the assembly nor
the bit, however, is claimed in the ’567 patent. The pa-
tentee directed the ’567 patent claims solely to the bit
holder and its interaction with the bit block.
    I find nothing in the specification to indicate that the
bit is necessary to give life, meaning, and vitality to the
claimed bit holder and block. See Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002). The title of the ’567 patent is “Bit Holders and Bit
Blocks,” not “bits.” ’567 patent, at [54]. The abstract
discusses “[a]n improved bit holder with its mating bit
block,” but again does not mention a “bit” as a separate
structural entity. Id. at [57]. Finally, the face of the ’567
patent displays Figures 3 and 9, which do not depict a bit.
The specification describes Figures 3–8 as “a second
embodiment of the bit holder and bit block constructed in
accordance with the present invention,” id. col. 4 ll. 11–13,
and Figures 9–10 as “a third embodiment of the bit holder
of the present invention,” id. col. 5 ll. 56–57. Although
Figures 1 and 2, which presumably refer to the first
embodiment, depict bits, the bits are not described as a
part of the “present invention.” I thus conclude the word
NOVATEK, INC.   v. THE SOLLAMI COMPANY                       3



“bit,” used only in the preamble, is not a limitation of the
’567 patent claims. Because the district court’s decision
that the ’567 patent is not infringed was based on its
erroneous conclusion that “bit” is a claim limitation, I
would reverse its grant of summary judgment of nonin-
fringement as to the ’567 patent.
    With regard to U.S. Patent No. 7,883,155 (’155 pa-
tent), I agree with the majority that the preamble term
“bit” limits the scope of the claims, but not for the reasons
that the majority provides. The ’155 patent, in contrast to
the ’567 patent, is directed not to bit holders and blocks
that are a “part of an assembly,” but rather to the “as-
semblies” or “bit assemblies” themselves. See ’155 patent,
at [54], [57]; claims 1–4; cf. ’567 patent claim 1 (emphasis
added). I read the “assembly” in the preamble of claim 1
of the ’155 patent as a claim limitation that delineates the
structural elements of the claim. Each dependent claim of
the ’155 patent expressly recites “[t]he assembly as de-
fined in claim 1 . . . .” ’155 patent claims 2–4. Were the
word “assembly” not a limitation of claim 1, the claims
that depend from it would lack a proper antecedent basis
for the “[t]he assembly as defined in claim 1.” See, e.g.,
Rapoport v. Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001).
Moreover, the dependent claims of the ’155 patent ex-
pressly add a further limitation to “the assembly,” not to
the bit holder (as the ’567 patent does).
      The specification confirms this conclusion. It indi-
cates that the assembly is the present invention. See ’155
patent col. 4 ll. 64–65 (“the assembly 15 of the present
invention”); col. 5 l. 3 (“the bit assembly of the invention”);
col. 2 ll. 59–61 (“Referring to FIG. 1, a bit, bit holder and
bit block assembly, generally indicated at 15, constructed
in accordance with the present invention, includes a bit
. . .”). I would thus conclude that the “assembly” recited
in the preamble is a limitation of the ’155 patent claims.
And claim 1 expressly defines the assembly as “including
a bit, bit holder, and bit block.” For these reasons, I
4                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



conclude that bit is a structural limitation of the claims of
the ’155 patent.
     II. WHAT IS THE PROPER CONSTRUCTION OF “BIT”?
    Although I agree that the term “bit” in the preamble
of claim 1 of the ’155 patent is a limitation, I would still
reverse the grant of summary judgment of noninfringe-
ment with respect to this patent. The district court’s
construction of “bit” is in error. The district court, and
now the majority, improperly read three limitations into
the bit—that the bit is removable, that the bit includes a
shank that is cylindrical, and that the bit is mounted in a
cylindrical bore.
                    A. “Removable” bit
     The plain and ordinary meaning of “bit” does not re-
quire removability. A “bit” is simply an object comprising
a tip and a shank. That is the plain meaning and the
definition expressly given by the patentee. See ’155
patent col. 1 l. 27 (“The bits utilized include a tip and a
shank.”). A bit can be brazed onto its holder. See Maj.
Op. at 22–23. This lack of removability makes it no less a
bit.
    We only deviate from the plain and ordinary meaning
in instances of lexicography or disavowal. Thorner v.
Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012). The majority points to the same defini-
tion discussed above: “[t]he bits utilized include a tip and
a shank.” See Maj. Op. at 12. There is not, nor does the
majority point to, any other lexicography on this term.
The majority concludes that the claimed bits ought to be
limited to removable bits because “[t]he removability
requirement is fully supported by the specification.” Id.
at 14. With all due respect, that is not the standard we
apply. If it were, every limitation in the preferred embod-
iments would be read into the claims.
NOVATEK, INC.   v. THE SOLLAMI COMPANY                       5



      There have been cases from this court that conclude
that a claim is limited by a statement in the specification
when the patentee has indicated clearly and unmistaka-
bly that he intended to so limit his claims—i.e., disclaimer
cases. For example, we found disclaimer when the speci-
fication indicated that for “successful manufacture” a
particular step was “require[d].” Andersen Corp. v. Fiber
Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir. 2007)
(“Those statements are not descriptions of particular
embodiments, but are characterizations directed to the
invention as a whole.”). We found disclaimer when the
specification indicated that the invention operated by
“pushing (as opposed to pulling) forces,” and then charac-
terized the “pushing forces” as “an important feature of
the present invention.” SafeTCare Mfg., Inc. v. Tele-
Made, Inc., 497 F.3d 1262, 1269–70 (Fed. Cir. 2007). We
found disclaimer when the patent repeatedly disparaged
an embodiment as “antiquated,” having “inherent inade-
quacies,” and then went on to detail the “deficiencies
[that] make it difficult” to use. Chicago Bd. Options
Exch., Inc. v. Int’l Sec Exch., LLC, 677 F.3d 1361, 1372
(Fed. Cir. 2012) (“[T]he specification goes well beyond
expressing the patentee’s preference . . . and its repeated
derogatory statements about [a particular embodiment]
reasonably may be viewed as a disavowal.”). We have
also held that disclaimer applies when the patentee
makes statements such as “the present invention includes
. . .” or “the present invention is . . . ” or “all embodiments
of the present invention are . . . .” See Regents of Univ. of
Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir.
2013); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d
1312, 1316–19 (Fed. Cir. 2006); SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–
44 (Fed. Cir. 2001). There is no such disclaimer here.
    Nowhere does the ’155 patent describe removability of
the bit as a feature of the “present invention” or a feature
“essential” to the invention. In fact, the ’155 patent is
6                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



almost completely devoid of any statement about remova-
bility of the bit. The Background of the Invention section
discusses four objects of the present invention: (1) im-
proved means for removing a bit holder from its bit block;
(2) a more efficient assembly that requires less power; (3)
providing multiple means for retaining a bit holder in a
bit block; and (4) providing a tool that allows easy remov-
al of the bit holder from the bit block. See ’155 patent col.
2 ll. 1–20. To the extent that removability is discussed at
all, it is the removability of the bit holder from the bit
block, not the removability of the bit from its bit holder.
There are only two mentions of removability of the bit
from the bit holder in the entire patent. The first is
where the patent discusses, not the present invention, but
rather a single piece of prior art: “U.S. Patent 5,374,111
discloses [a tool] . . . to help remove a bit from the bit
block. It would be desirable to provide a more efficient
means and multiple means for allowing the removal of a
bit holder from the bit block.” Id. col. 1 ll. 56–61. Clearly,
this statement does not limit the claimed invention to
removable bits. It explains that the present invention
focuses on removal of bit holders from bit blocks. The
only other mention of removability of a bit is in the third
discussed embodiment: “Referring to Figures 7, 8, and 9,
a third embodiment of a bit holder is shown . . . . [The bit
holder] includes a pair of notches 74, 75 therein that
provide tool access to the back of a bit for easing removal
of the bit from the bit holder.” Id. col. 5 ll. 40–48. The
fact that the design of the bit holder in this one embodi-
ment facilitates removal does not morph removability into
a requirement. Additionally, there are five embodiments
in the patent, and none of the others require, show, or
even mention removability of the bit. The majority’s
claim that every relevant embodiment disclosed refers to
the removability of the bit from the bit holder is inaccu-
rate.
NOVATEK, INC.   v. THE SOLLAMI COMPANY                     7



    To be sure, removability of the bit holder from the bit
block is an important aspect of the present invention and
is mentioned more than a dozen times in the patent. But
this is entirely different from removability of the bit from
the bit holder, which is mentioned only once in conjunc-
tion with one of five embodiments. The fact that my
watch must be removable from my arm doesn’t mean the
hands on the watch need to be removable from the watch.
There is nothing in this patent which suggests that re-
movability of the bit is important, much less a critical or
essential part of the claimed invention.
    Finally, to the extent that the majority finds disclaim-
er in the prosecution history, I do not agree. None of the
multiple office actions or responses ever discusses remov-
able bits. There was, however, a declaration filed by the
inventor during the prosecution of the ’155 patent that
mentions removable bits. The PTO rejected claims as
obvious over Beebe in combination with O’Neill or Topka.
The declaration states that in Beebe (the prior art refer-
ence), the sleeve has a “wall material thickness of be-
tween 0.040 and 0.045. The reason [for] this wall
thickness is to be able to quickly remove the bit. As many
as 320 bits may be removed and replaced a day.” J.A.
253. The patentee criticizes this design because the thin
walls would “shear under even a moderate load.” Id. The
patentee further explains that “the present application is
a bit holder that is stiffer [due to thickness] and therefore
holds the bit in the proper position for heavy operating.”
Id. None of this supports the idea that the present inven-
tion is limited to a holder with removable bits. The
declaration does, however, go on to distinguish the War-
ren reference because Warren’s bit holder “has a wider
notch at the rearward portion and a narrower width at
the front face. The present application is the reverse.
This difference is material because the narrower rearward
portion prevents the clogging of the notch and aids in
removal of the bit.” J.A. 254. This is not a clear and
8                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



unmistakable disclaimer of any bit that is not removable.
The fact that the present design of the bit holder might
permit or aid in removability of bits does not require that
the bits be removable. This is a statement that would
support the notion that the inventor contemplated remov-
able bits, but it is a far cry from requiring removable bits.
    It is not an object of the invention of the ’155 patent to
provide removable bits. Removability of the bits is only
mentioned in one of the five disclosed embodiments. It is
not described as important, essential, required, or “the
present invention.” None of the descriptions of the other
embodiments and none of the figures of the other embod-
iments even hint at removable bits. Respectfully, this
patent is directed to bit holders that are removable from
bit blocks. The bit, however, does not have to be remova-
ble from the bit holder. I would find for the patentee, and
not read the removability limitation into the claim.
                 B. “Mountable in a Bore”
    I agree with the majority that the bit must be
“mountable in a bore,” but not because this is somehow
inherent in the word “bit.” The claims contain a limita-
tion that the bit is “mountable in a first bore through said
bit holder.” ’155 patent claim 1. This limitation requires
that the bit be mountable in a bore.
    The majority notes, but does not appear to adopt, the
district court’s reasoning that if a bit is “mountable” it has
to be “removable.” See J.A. 308 (“[T]he only reason really
on this one that I adopted the removability is because I
think if it’s going to be mountable, it has to be remova-
ble.”) Mounting is about attachment, not removal. When
one mounts a bit to a bore, one attaches it or fixes it to the
bore. A bit that is brazed onto its bore is still mounted in
the bore. Likewise, a diamond is mounted in its setting.
Removability is not a condition that necessarily follows
from mounting.
NOVATEK, INC.   v. THE SOLLAMI COMPANY                    9




                C. “Cylindrical” shank and bore
    The majority also errs in its construction of the
“shank” portion of the bit as an “elongate cylindrical
object.” There is nothing inherent in the word “shank”
that requires a cylindrical shape as opposed to, for exam-
ple, the frustoconical shape of the accused structures’
carbide bolster (which, the patentee argues, is its shank).
The plain and ordinary meaning of shank is “[t]hat part of
an instrument, tool, or other thing, which connects the
acting part with a handle or other part.” J.A. 437. It is
true that one disclosed embodiment—the discussion of
Figure 1 of the ’155 patent—has a bit with a cylindrical
shank. The only time the shank of the bit is ever de-
scribed at all is in the following sentence of the patent:
“Aft of the cylindrical base 24, the tip narrows to a cylin-
drical shank 25, which, in this embodiment, includes a C-
shaped retainer 26 there around and a cylindrical shank
portion base 27 defining the rear end of the bit.” ’155
patent col. 3 ll. 7–10 (emphasis added). That is the only
time in the entire patent that the shape of the shank of
the bit is ever mentioned. Given that shanks in general
can have any shape, this one sentence does not clearly
limit the claimed bit to a bit with a cylindrical shank.
There is nothing in this discussion that even suggests
that the cylindrical shape is important, essential, useful,
advantageous, or necessary to the invention.
    To be clear, there are other portions of the patent that
discuss the cylindrical shank of the bit holder. In fact,
claim 1 itself covers a “generally cylindrical bit holder
shank.” Id. claim 1. This is not the shank of the bit, nor
does the bit shank mate with the bit holder shank such
that one would expect them to be similarly shaped. They
are completely separate parts.
    The majority’s requirement that the shank be cylin-
drical is intertwined with its conclusion that the bore be
10                     NOVATEK, INC.   v. THE SOLLAMI COMPANY



cylindrical. Maj. Op. at 18; see Novatek, Inc. v. Sollami
Co., No. 2:11-cv-00180, 2013 WL 1831995, at *5 (D. Utah
Apr. 30, 2013) (“Because the shank . . . [is] ‘in the bore,’
and because the shank is cylindrical, the bore must also
be cylindrical.”). Again there is no language anywhere
that suggests that the cylindrical shape given to the
disclosed embodiment is important, “the present inven-
tion,” or an essential feature. If the plain and ordinary
meaning of bore required a cylindrical shape, then there
would be no need for the patent to refer to a “cylindrical
bore,” as it does at one place in the patent. ’155 patent
col. 3 l. 64. The very dictionaries relied upon by the
majority indicate only that bores are “usually cylindrical.”
In short, bores are not required to be cylindrical.
                         * * * * *
    To the extent “bit” is a claim limitation, it is to be giv-
en its plain and ordinary meaning, which does not require
removability or a cylindrical shank and bore. There is
nothing in the record to indicate that the patentee intend-
ed to deviate from the plain and ordinary meaning by
defining the word “bit,” disavowing its scope, or even
suggesting that these three features are critical to the
claimed invention. The majority improperly deprives the
patentee of the breadth of the claims by reading limita-
tions from particular embodiments in the specification
into its construction of “bit.” I would reverse the sum-
mary judgment of noninfringement and remand for a jury
trial on the disputed issues of fact.
