 United States Court of Appeals for the Federal Circuit


                                        2007-1262


                         BALDWIN GRAPHIC SYSTEMS, INC.,

                                                         Plaintiff-Appellant,

                                             v.


                                      SIEBERT, INC.,

                                                         Defendant-Appellee.



       Thomas B. Kenworthy, Morgan, Lewis & Bockius LLP, of Philadelphia,
Pennsylvania, argued for plaintiff-appellant. With him on the brief was Kenneth J.
Davis.

      Keith D. Parr, Lord, Bissell & Brook LLP, of Chicago, Illinois, argued for
defendant-appellee. With him on the brief were Hugh S. Balsam and James T. Peterka.
Of counsel on the brief was Robert P. Conlon, Walker Wilcox Matousek LLP, of
Chicago, Illinois.

Appealed from: United States District Court for the Northern District of Illinois

Senior Judge James B. Moran
 United States Court of Appeals for the Federal Circuit
                                        2007-1262


                         BALDWIN GRAPHIC SYSTEMS, INC.,

                                                                       Plaintiff-Appellant,


                                             v.


                                      SIEBERT, INC.,

                                                                       Defendant-Appellee.


Appeal from the United States District Court for the Northern District of Illinois in case
no. 03-CV-7713, Senior Judge James B. Moran.

                            ___________________________

                            DECIDED: January 15, 2008
                            ___________________________

Before MICHEL, Chief Judge, RADER, and MOORE, Circuit Judges.


RADER, Circuit Judge.

       Baldwin Graphic Systems, Inc. (Baldwin) sued Siebert, Inc. (Siebert) for

infringement of U.S. Patent No. Re. 35,976 (the Reissue patent) and U.S. Patent No.

5,974,976 (the ’976 patent). After conducting a Markman hearing, the United States

District Court for the Northern District of Illinois ultimately granted Siebert’s motions for

summary judgment of non-infringement of both patents.           Because the district court

erred in its construction of some of the disputed claim terms, this court affirms-in-part,

reverses-in-part, and remands.
                                                    I

       Baldwin’s patents claim systems for cleaning a cylinder of a printing press using

strips of cleaning fabric and methods for making those systems. Baldwin sued Siebert,

asserting that Siebert’s packaged fabric rolls infringed claim 32 of the Reissue patent

and claims 1, 7, 9, 12, 14, 23, and 25 of the ’976 patent. *

       The district court construed two phrases in claim 32 of the Reissue patent, “a

pre-soaked fabric roll” and “sealed sleeve.”       Claim 32 of the Reissue patent states:

       32. A pre-packaged, pre-soaked cleaning system for use to clean the
       cylinder of printing machines comprising in combination:

       (1) a pre-soaked fabric roll saturated to equilibrium with cleaning solvent
       disposed around a core, said fabric roll having a sealed sleeve which can
       be opened or removed from said fabric roll for use of said fabric roll,
       disposed therearound, and said system including

       (2) means for locating said fabric roll adjacent to and operatively
       associated with a cylinder to be cleaned.

Reissue patent, col.11 l.9 – col.12 l.8 (emphases added).

       The district court construed “a pre-soaked fabric roll” to mean “a single pre-

soaked fabric roll.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 1:03-CV-07713, slip op.

at 9 (N.D. Ill. July 28, 2005) (Initial Order). In concluding that “a” means “one” in this

context, the district court largely relied on the subsequent use of “said fabric roll” as

suggesting a singular fabric roll. Initial Order, slip op. at 7. Also, according to the

district court, the statement in the Reissue patent’s specification that the sleeve is

“disposed around and in intimate contact with the fabric roll,” Reissue Patent, col.2 ll.22-



       *
              Baldwin initially asserted that Siebert infringed another of its patents, U.S.
Patent No. 6,035,483, but chose not to pursue this claim. With respect to the ’976
patent, Baldwin asserted that Siebert directly infringed claims 1, 7, 9, 14, and 25,
induced the infringement of claim 23, and contributorily infringed claim 12.


2007-1262                                      2
23, col.3 ll.17-18, evinced an intent to limit “a pre-soaked fabric roll” to “one pre-soaked

fabric roll” because this condition “would not be fully possible with more than one roll in

the sleeve.” Initial Order, slip op. at 8.

       As for “sealed sleeve,” the district court construed this term to mean “heat-sealed

sleeve.” Initial Order, slip op. at 13. Not readily apparent from the language of claim 32

itself, the district court arrived at this conclusion through an examination of the

specification and the prosecution history of the Reissue patent. The Reissue patent

originally issued as U.S. Patent No. 5,368,157 (the ’157 patent), and as the district court

noted, “[a]ll references in the reissue patent specification to a sealed sleeve are to a

‘heat-sealed’ or a ‘heat shrunken and heat-sealed’ sleeve, as are all references in the

28 claims that appeared in the original ’157 patent.” Initial Order, slip op. at 9. During

prosecution of the Reissue patent, the applicants attempted to remove “heat” as a

modifier of “sealed” and “sealable” from the specification, but the PTO examiner

rejected the proposed changes as impermissibly introducing new matter:

       It is inconceivable that the applicants can find such a teaching in . . . the
       original specification, which by its own terms refers to the sleeve as a heat
       sealable plastic sleeve. Why would one of ordinary skill in the art upon
       being informed that a sleeve was a heat sealable plastic sleeve, infer that
       what was really intended was that the sleeve need not be plastic and/or
       need not be heat sealable?

Initial Order, slip op. at 11 (quoting Reissue Patent Prosecution, PTO Official Action

May 15, 1996 at 5) (ellipsis added).

       Due to these objections, the applicants withdrew their broadening amendments

to the specification.   Because of the withdrawal, the applicants maintained that the

examiner’s new matter rejection was moot. Thus, the district court limited the term

“sealed sleeve” in Reissue claim 32 to a “heat-sealed sleeve” because “[a] broader



2007-1262                                    3
reading would be wholly incongruous with the patent prosecution, the patent examiner’s

blunt rejection of the contention that the patent specification supports the broader term,

and the patentees’ own acknowledgment that their revised amendments no longer

sought to broaden this terminology.” Initial Order, slip op. at 11-12.

       Based on its construction of “a pre-soaked fabric roll” and “sealed sleeve,” the

district court granted Siebert’s motion for summary judgment of non-infringement of

claim 32 of the Reissue patent. The district court based its summary judgment on the

undisputed facts that Siebert sold its accused fabric rolls in sets of three or between six

and nine, but not individually. Initial Order, slip op. at 9. Likewise, Siebert did not sell

its fabric rolls in heat-sealed sleeves. Id.

       With respect to the asserted claims of the ’976 patent, claims 1 and 14 are

independent claims, and the other asserted claims depend from either claim 1 or claim

14. Claims 1 and 14 contain the disputed limitations, “reduced air content cleaning

fabric” (claim 1) and “reducing air content of a strip of cleaning fabric” (claim 14). The

district court construed the phrase “reduced air content cleaning fabric” to address these

similar claim terms together. Initial Order, slip op. at 14. Claims 1 and 14 of the ’976

patent recite:

       1.        A device for cleaning a cylinder of a printing press comprising:

       a reduced air content cleaning fabric having an air content by volume of 1
       to 50 percent; and

       a solvent comprising a low volatility cleaning compound which does not
       readily evaporate at ambient temperature, and means for introducing said
       solvent being into said reduced air content cleaning fabric in an amount
       sufficient for cleaning said cylinder of a printing press.




2007-1262                                      4
       14.    A    method     for   making       a   cleaning     system   comprising:

       reducing air content of a strip of cleaning fabric by 1 to 50 percent to form
       a strip of reduced air cleaning fabric; and

       contacting said strip of reduced air content cleaning fabric with a low
       volatility, organic compound solvent which does not evaporate readily at
       ambient temperature and pressure and pre-soaking and saturating said
       reduced air content cleaning fabric with said solvent.

’976 patent, col.11 ll.58-67, col.12 ll.49-57.

       In its initial consideration of these terms, the district court concluded that

“reduced air content cleaning fabric” was not limited to a particular method for producing

reduced air content cleaning fabric. The district court reached this conclusion because

the ’976 specification notes that “[t]he preferred, but not exclusive, method of reducing

the air content in the fabric is calendaring.” Initial Order, slip op. at 15 (quoting ’976

patent, col.7 ll.27-28). Under the district court’s initial construction, the claims covered

reducing air content in the fabric by methods other than calendaring, including winding

or rewinding the fabric on a roll. Because this claim construction created issues of fact

about Siebert’s method of winding its accused products on a roll to reduce air content,

the trial court denied Siebert’s motion for summary judgment of non-infringement of the

’976 patent. Initial Order, slip op. at 16-17.

       Some months later, on Siebert’s motion, the district court reconsidered its

construction of “reduced air content cleaning fabric.”          Baldwin Graphic Sys., Inc. v.

Siebert, Inc., 1:03-CV-07713 (N.D. Ill. Mar. 21, 2006) (Reconsideration Order). Siebert

then argued for the first time, and the district court agreed, that while the claims may not

be limited to calendaring as the method for reducing air content, the claims were in fact

limited to a particular timing of that air content reduction step relative to winding. With




2007-1262                                        5
this understanding, the district court interpreted “reduced air content cleaning fabric” to

mean “a fabric whose air content has been reduced by some method prior to being

wound on a roll.” Reconsideration Order, slip op. at 15.

         The district court arrived at this new construction with an eye to the terms

“fabric,” “cleaning fabric,” “strip of cleaning fabric,” and “strip of cloth” in the various

claims of the ’976 patent. With respect to claim 14, the district court explained that the

term “strip of cleaning fabric” “refers to a cleaning fabric whose air content has not yet

been reduced . . . because that term, a noun, is being modified by the verb ‘reducing.’

Thereafter in the claim the term used is ‘reduced air content cleaning fabric,’ because

the reducing of the air content has already occurred.” Reconsideration Order, slip op. 7.

According to the district court, “independent . . . claims 1 and 14, standing alone, do not

aid much in our claim construction analysis . . . [because] both claims are very broad

and vague, neither teaching the winding of the fabric on a core.”         Reconsideration

Order, slip op. at 5. Thus, the district court turned to the usage of various fabric and

cloth-related terms in the dependent claims as a guide for construing “reduced air

content cleaning fabric” in the independent claims. Also, the district court relied on the

prosecution history, where Baldwin represented that the claimed invention improved

fabric moisture content and solvent distribution “[b]y reducing the air content of the

cleaning fabric prior to saturation.”   Reconsideration Order, slip op. at 8 (emphasis

added). Because Siebert's product does not reduce air content before winding of the

fabric on the roll, the district court granted Siebert’s motion for summary judgment of

non-infringement on the claims of the ’976 patent. Reconsideration Order, slip op. at

15-16.




2007-1262                                    6
                                             II

       This court reviews claim construction without deference to the district court's

interpretation. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998)

(en banc). Likewise, a district court’s grant of a motion for summary judgment receives

review without deference. Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1353

(Fed. Cir. 1998).

       First, as to the Reissue patent, “[t]his court has repeatedly emphasized that an

indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in

open-ended claims containing the transitional phrase ‘comprising.’”          KJC Corp. v.

Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). That “a” or “an” can mean

“one or more” is best described as a rule, rather than merely as a presumption or even

a convention.       The exceptions to this rule are extremely limited: a patentee must

“evince[ ] a clear intent” to limit “a” or “an” to “one.” Id. The subsequent use of definite

articles “the” or “said” in a claim to refer back to the same claim term does not change

the general plural rule, but simply reinvokes that non-singular meaning. An exception to

the general rule that “a” or “an” means more than one only arises where the language of

the claims themselves, the specification, or the prosecution history necessitate a

departure from the rule. See, e.g., Abtox Inc. v. Exitron Corp., 122 F.3d 1019 (Fed. Cir.

1997); Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098 (Fed. Cir. 1996).

       This record does not contain a clear indication that the applicant departed from

the general rule for the article “a.” Nothing in the claim language, specification, or

prosecution history compels an exceptional reading of “a” in this case. The district court

erred by misapplying the term “said fabric roll” later in the claim and the phrase “in




2007-1262                                    7
intimate contact with the fabric roll” in the specification. Initial Order, slip op. at 8. As

noted above, the use of a definite article (“said” or “the”) to refer back to an initial

indefinite article does not implicate, let alone mandate the singular. Because the initial

indefinite article (“a”) carries either a singular or plural meaning, any later reference to

that same claim element merely reflects the same potential plurality. In grammatical

terms, the instances of “said fabric roll” in the claim are anaphoric phrases, referring to

the initial antecedent phrase.       Because the initial phrase carries no definitive

numerosity, the anaphoric phrases do not alter that meaning in the slightest.

       Contrary to the district court’s analysis, § 2173.05(e) of the Manual of Patent

Examining Procedure (MPEP) does not suggest otherwise.                  Section 2173.05(e)

describes the need, in most cases, for claim terms to have proper antecedent bases:

       The lack of clarity could arise where a claim refers to “said lever” or “the
       lever,” where the claim contains no earlier recitation or limitation of a lever
       and where it would be unclear as to what element the limitation was
       making reference. Similarly, if two different levers are recited earlier in the
       claim, the recitation of “said lever” in the same or subsequent claim would
       be unclear where it is uncertain which of the two levers was intended.

MPEP § 2173.05(e). According to the district court, § 2173.05(e) “only strengthens” the

exclusively singular nature of “a pre-soaked fabric roll,” because “the use of ‘said fabric

roll’ implies that the prior reference to ‘a fabric roll’ should be read as a single roll, not

one or more rolls, in order to avoid confusion.” Initial Order, slip op. 7. To the contrary,

MPEP § 2173.05(e) is inapposite because the limitations in claim 32 all relate to proper

antecedent bases.      Thus, the confusion or indefiniteness problem addressed by

§ 2173.05(e) does not arise in this claim.

       The district court’s reliance on language in the specification to limit “a pre-soaked

fabric roll” to a single roll is similarly unavailing. The phrase “disposed around and in



2007-1262                                     8
intimate contact with the fabric roll” appears twice in the specification of the Reissue

patent, and describes the relationship between the plastic sleeve and the fabric roll.

Reissue patent, col.2 ll.22-23, col.3 ll.17-18. This description does not require a single

pre-soaked fabric roll. Under the terms of this description, the plastic sleeve could be in

intimate contact with multiple fabric rolls, like the plastic wrapping on a package of

several hot dogs is in intimate contact with each of the hot dogs, despite the fact that

the hot dogs themselves contact each other as well as the packaging. Appellant’s Br. at

13. This description contains no requirement, implicit or explicit, that the plastic sleeve

must be in intimate contact with the entire fabric roll. For these reasons, “a pre-soaked

fabric roll” as used in claim 32 of the Reissue patent is not limited to a single roll.

       This court agrees, however, with the district court’s careful and accurate analysis

in its construction of “sealed sleeve” as limited to “heat-sealed sleeve” in the Reissue

patent. This court has consistently recognized that the Patent Act prevents an applicant

from adding new subject matter during the patent prosecution process. See Pandrol

USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005) (citing In re

Ruschig, 379 F.2d 990 (CCPA 1967)). In this case, during prosecution of the Reissue

application, the examiner rightly refused to allow the applicants to amend the

specification to remove references to “heat” as the way of sealing the sleeve. This

change would have broadened the patent and introduced impermissible new matter not

included in the initial disclosure. Thus the claims would have been invalid for lack of

support in the initial disclosure for the new subject matter encompassed by the change

because the claims could not show any support if construed to encompass more than

heat-sealed sleeves.




2007-1262                                      9
       In sum, with respect to the Reissue patent, this court finds that the district court

erred in its construction of “a pre-soaked fabric roll.” Nonetheless, the trial court

correctly construed “sealed sleeve,” rendering Siebert’s fabric rolls non-infringing. Thus

this court affirms the district court’s summary judgment of non-infringement with respect

to the Reissue patent.

       Turning to the asserted claims of the ’976 patent, this court finds that the district

court erred in limiting “reduced air content cleaning fabric” to “a fabric whose air content

has been reduced by some method prior to being wound on a roll.” Upon review of the

claims, specification, and prosecution history, this court discerns no way to uphold the

trial court's construction of “reduced air content cleaning fabric.”

       As a preliminary matter, the parties agreed that the terms “reduced air content

cleaning fabric” in claim 1 and “reducing air content of a strip of cleaning fabric” in claim

14 were substantially similar.     Seizing on this point, the district court agreed, and

construed only “reduced air content cleaning fabric” in an attempt to construe similar

terms in both independent claims at once.         Unfortunately this approach blurred an

important difference between the two independent claims, namely that claim 1 is an

apparatus claim and claim 14 is a method claim. Despite their similarities, these claims

are directed toward different classes of patentable subject material under 35 U.S.C.

§ 101. Courts must generally take care to avoid reading process limitations into an

apparatus claim, see AFG Industries, Inc. v. Cardinal IG Co., 375 F.3d 1367, 1372-1373

(Fed. Cir. 2004), because the process by which a product is made is irrelevant to the

question of whether that product infringes a pure apparatus claim, see Vanguard

Products Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2001) (“A novel




2007-1262                                    10
product that meets the criteria of patentability is not limited to the process by which is

was made.”).

       Claim 1 and its dependent claims (asserted claims 7, 9, and 12) are pure

apparatus claims.    They have no process limitations.        Claims 1, 7, 9, and 12 are

therefore not limited to any particular process or method of making the claimed pre-

packaged, pre-soaked cleaning system, or to any particular sequence of air content

reduction relative to winding.

       Unlike claim 1 and its dependent claims, claim 14 and its dependent claims

(asserted claims 23 and 25) are method claims and each recites a series of steps.

Therefore, and again unlike claim 1, the scope of claim 14 specifies the limits on the

performance of those steps. As with any other type of claim, courts must carefully avoid

importing limitations from the specification into method claims. See CollegeNet, Inc. v.

ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (“In examining the

specification for proper context, however, this court will not at any time import limitations

from the specification into the claims.”).     Nonetheless the specification informs the

meaning of the claims. In Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)

(en banc), this court acknowledged the difficult distinction between “using the

specification to interpret the meaning of a claim and importing limitations from the

specification into the claim.”   This court explained, however, that the distinction is

manageable “if the . . . focus remains on understanding how a person of ordinary skill in

the art would understand the claim terms.”          Id.   Also, although a method claim

necessarily recites the steps of the method in a particular order, as a general rule the

claim is not limited to performance of the steps in the order recited, unless the claim




2007-1262                                    11
explicitly or implicitly requires a specific order.   See Interactive Gift Express, Inc. v.

Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001).             The specification or

prosecution history may also require a narrower, order-specific construction of a method

claim in some cases. Id.

       In this case, the claims themselves contain no basis to require air content

reduction before winding. Though the claims, specification, and prosecution history

require that the air content of the cleaning fabric be reduced prior to saturation, this

does not mean that the air content must be reduced prior to winding on the roll. Also, in

relying on the dependent claims to inform the meaning of “reduced air content cleaning

fabric” in claims 1 and 14, the district court effectively imported limitations it saw in

dependent claims into the independent claims, contrary to basic claim construction

principles.   The effect of this process was to bootstrap a temporal restraint on the

occurrence of a winding step relative to air content reduction, even though winding is

not even explicitly recited in either claim 1 or claim 14. As independent claims, claims 1

and 14 are naturally broader than their dependent counterparts, making the district

court’s use of the dependent claims to constrict claims 1 and 14 all the more suspect.

For example, claim 18 recites:

       18.    The method as defined in claim 14 including providing an elongated
       core wherein said strip of cleaning fabric is wrapped about said elongated
       core prior to contacting said strip of cleaning fabric with said solvent.

’976 patent, col.13 ll.3-6. The district court held that the second instance “said strip of

cleaning fabric” had to refer to reduced air cleaning fabric because air content must be

reduced prior to contacting with solvent, and that the term should be interpreted

consistently within the same claim. When read consistently, the strip of cleaning fabric




2007-1262                                    12
that is “wrapped about an elongated core” already has its air content reduced. But even

if the district court correctly determined that the method of claim 18 requires air content

reduction prior to winding, this is an additional limitation of that particular dependent

claim, and not a requirement of independent claim 14.       In short, the dependent claims

simply do not support the district court’s determination that the fabric in all instances

must have its air content reduced prior to being wound on a roll.

       Furthermore, the ’976 patent’s specification, in simple terms, does not warrant

such a narrow reading. With an eye to the understanding of an ordinarily skilled artisan,

this court cannot find support for widely varying interpretations of the term “fabric” and

related terms throughout the claims.      An ordinarily skilled artisan would simply not

construe similar terminology so differently from one usage to another.       The passages

from the specification cited by the district court in support of its temporally restricted

construction are not dispositive.     For example, the district court quoted from the

summary of the invention, which states that “[a] cleaning fabric with a reduced air

content is wrapped around the core to form a fabric roll.”     Reconsideration Order, slip

op. at 12 (quoting ’976 patent, col.3 ll.65-66). For the district court, this use of “with”

suggested that air content reduction must occur prior to winding. But this language, like

the other passages cited by the district court, does not unequivocally preclude a

different order of steps, and this court sees no justification in the specification for

imposing a temporal constraint on claim 14 that is not required by or implicit in the

language of the claim itself.

       Finally, the district court’s reliance on the prosecution history, namely the singular

comment by the applicants during prosecution that the air content reduction occurs prior




2007-1262                                    13
to saturation, provides no support whatsoever for the district court’s construction

requiring air content reduction before winding.       By no means does this statement

constitute something akin to a disavowal of claim scope. See Purdue Pharma L.P. v.

Endo Pharm., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) (disavowal of claim scope

must be “clear and unmistakable”).        Moreover, even if this statement constituted a

disavowal of scope with respect to the method claims, it would not justify the district

court’s construction, because the statement would, at best, require reduction before

saturation, not necessarily before winding.         After all, winding could occur before

saturation.   For these reasons, the district court’s final construction of “reduced air

content cleaning fabric” was erroneous. But the district court’s initial construction of this

term as not limited to a particular method (calendaring) for producing reduced air

content cleaning fabric was correct.       As the district court astutely observed, the

specification merely prefers, not requires, calendaring. This court therefore remands for

further proceedings consistent with this opinion.

                                             III

       In this case, the claim construction issues entirely drive the summary judgment

analysis. With respect to claim 32 of the Reissue patent, even though the district court

erred in limiting “a pre-soaked fabric roll” to a single roll, there is no dispute that

Siebert’s accused products are not heat-sealed, so this court affirms the district court’s

summary judgment of non-infringement as to this patent. But the district court’s error in

construing “reduced air content cleaning fabric” requires this court to reverse and

remand for further proceedings because under the district court’s initial construction of




2007-1262                                    14
this claim term, with which this court agrees, the district court declined to grant Siebert’s

motion for summary judgment of non-infringement of the ’976 patent.



            AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED



                                          COSTS

       Each party shall bear its own costs.




2007-1262                                     15
