             NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
             is not citable as precedent. It is a public record.

United States Court of Appeals for the Federal Circuit

                                    05-1091


                             JOSEPH V. KAPUSTA,

                                               Plaintiff-Appellant,

                                        v.

                            GALE CORPORATION,

                                               Defendant-Appellee.

                         __________________________

                         DECIDED: November 15, 2005
                         __________________________


Before LOURIE, LINN, and PROST, Circuit Judges.

LOURIE, Circuit Judge.

      Joseph V. Kapusta (“Kapusta”) appeals from the decision of the United

States District Court for the Eastern District of California granting summary

judgment of noninfringement of U.S. Patent 6,043,663 in favor of Gale

Corporation (“Gale”). Kapusta v. Gale Corp., No. 03-CV-1232 (E.D. Cal. Nov. 2,

2004) (“Judgment”). Because the district court erred in its claim construction, we

vacate and remand.

                                BACKGROUND

      The ’663 patent is entitled “Coaxial Cable Test Instruments,” and was

issued to Joseph V. Kapusta. The invention relates to a continuity testing
instrument for coaxial cables that provides a signal to indicate the malfunction of

any installed coaxial cable component of a television network.          The tester

instrument consists of circuitry that is contained in a hand-grip size case. The

circuit within the hand-grip size case is connected to a coaxial cable through a

connector so that an operator can quickly and reliably check a cable component

malfunction.

       Claim 1, one of two independent claims of the ’663 patent, reads as

follows:

       A portable test instrument for coaxial cable which comprises:
       a test circuit comprising, in series, a battery, a device capable of
        generating a signal in response to completion of said circuit, a first probe
        and a second probe, wherein said first probe and said second probe
        comprise a central conductor and surrounding sheild [sic], respectively,
        of a test circuit connector which is releasably connectable to a coaxial
        cable connector mounted on a first end of the coaxial cable to be tested,
        such that a short circuit in the coaxial cable to be tested will complete
        said test circuit and cause said signal device to generate a signal; and
       a hand-grip size case in which said test circuit is mounted, wherein said
        test circuit connector is mounted on the outside of said case.

’663 patent, col. 8, II. 13-29 (emphasis added). Claim 2 depends from claim 1,

and it includes the limitation of having the battery mounted in the case. Claim 3,

the other independent claim of the ’633 patent, includes a second test circuit,

which contains a second connector mounted on the second end of the coaxial

cable to be tested.

       On June 14, 2002, Kapusta filed suit against Gale for infringement of

claims 1-3 of the ’633 patent. Kapusta filed a motion for summary judgment

asserting that Gale’s Pocket Toner Products, PT-1, PT-2, and PT-6 (collectively

“Gale’s Products”) infringed the ’663 patent.     The district court held a claim




05-1091                                -2-
construction hearing on June 29, 2004 and, at the close of the hearing, the court

requested that Gale prepare a proposed claim construction order.                Gale

submitted a proposed order, which the court then adopted. Kapusta v. Gale, No.

03-CV-1232 (E.D. Cal. Aug. 5, 2004) (“Claim Construction Order”).

       The district court construed the only disputed claim term, “hand-grip size

case,” to require lower size limits that are “no smaller than the width of an adult

palm, so that it can be grasped firmly in one’s hand; no smaller than 1 inch in

width; and of a rectangular shape.” Claim Construction Order, at 6. In construing

“hand-grip size case,” the court found the term to be ambiguous because of its

uncertain size and shape. The court observed that the specification and the

prosecution history do not define the term. Id., at 5. The only place in the patent

that articulates the meaning of the term “hand-grip size case,” according to the

court, is “the one preferred embodiment described in the specifications and

shown in the drawings, namely a one inch by two inch by three inch rectangular

‘project box.’” Id.

       After finding the claim term to be ambiguous, the district court determined

that, in light of the prior art presented during litigation, the term “hand-grip size

case” must be construed narrowly to sustain the patent’s validity. Id. From the

extrinsic evidence presented at the Markman hearing, the court found that “the

term ‘hand-grip’ cannot be construed so broadly as to encompass test devices

contained in pocket-size cases.” Id.

       Based on the court’s claim construction, both parties stipulated that Gale’s

Products did not infringe claims 1-3 of the ’663 patent because the court’s




05-1091                                 -3-
interpretation of “hand-grip size case” included limitations that were not

possessed by Gale’s Products. Judgment, at 2. The court then entered judgment

of noninfringement. Id.

       Kapusta timely appealed, and we have jurisdiction pursuant to 28 U.S.C.

§ 1295(a)(1).

                                     DISCUSSION

       Claim construction is an issue of law, Markman v. Westview Instruments,

Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), that we review de novo,

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

In interpreting claims, a court’s primary focus should be on the intrinsic evidence

of record, i.e., the patent itself, including the claims, the specification and, if in

evidence, the prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303,

1312-17 (Fed. Cir. 2005) (en banc).

       Kapusta asserts that the district court erred in construing the claim term

“hand-grip size case” to require the limitations that the case be “no smaller than

the width of an adult palm, so that it can be grasped firmly in one’s hand, no

smaller than 1 inch in width, and of a rectangular shape.” Kapusta contends that

the court should have given the term its ordinary and customary meaning of “a

case that is suited to a grip by the hand,” and the court should not have added

limitations for which there is no support in the intrinsic record.       With respect to

the “of a rectangular shape” limitation, Kapusta argues that the district court

imported a limitation from the preferred embodiment of the specification into the

claims. Furthermore, Kapusta argues that the district court erred by finding the




05-1091                                   -4-
term at issue to be ambiguous and then importing unnecessary limitations in

order to preserve the patent’s validity.

       Gale counters that the added definitions of the term “hand-grip size case”

are in the specification. Specifically, the figures portray the case to be of hand-

grip size and of a rectangular shape. Furthermore, the specification notes that

the case has a “top wall,” which suggests a rectangular-shaped case. Gale also

argues that the extrinsic evidence, including two prior art references introduced

during litigation and expert testimony, disclose that a hand-grip size case does

not encompass all portable devices smaller than Kapusta’s device. According to

Gale, the term at issue is ambiguous because it has an expansive meaning

subject to different interpretations and thus, in light of the prior art introduced

during litigation, it must be construed narrowly to preserve its validity.

       We agree with Kapusta that the district court erred in its claim construction

by including extraneous limitations. The court should have given the term “hand-

grip size case” its ordinary and customary meaning. See Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (explaining that unless

the intrinsic evidence compels a contrary result, a claim term should be given its

ordinary and customary meaning).           The ordinary and customary meaning of

“hand-grip size case” is a case of a size that can be gripped in a normal hand.

We see no reason to depart from that ordinary and customary meaning or to add

dimensions to the term, as there is no support for the district court’s limitations in

the intrinsic record.




05-1091                                    -5-
       Starting with the claim language itself, we see no evidence from this

source to support the court’s size limitations. The claim states that the test circuit

is mounted in “a hand-grip size case,” implying that the case is capable of being

gripped in the hand of a normal person, and not of a size with specific

dimensions. The straightforward mechanical technology of the invention and the

understandable claim language give that meaning to this term. See Phillips, 415

F.3d at 1314 (“In some cases, the ordinary meaning of claim language as

understood by a person of skill in the art may be readily apparent even to lay

judges, and claim construction in such cases involves little more than the

application of the widely accepted meaning of commonly understood words.”).

“Hand-grip” means what it says, i.e., capable of being gripped by the normal

hand. The claim language does not imply a departure from that meaning.

       The specification also does not suggest any reason to deviate from the

ordinary and customary meaning by imparting dimensions to the term.              The

specification consistently refers to the instrument as serving “in the hands of an

operator.” ’663 patent, col. 1, II. 63-65, col. 2, II. 34-36. However, nowhere does

the specification explicitly or implicitly ascribe numerical limitations to the case

embodying the instrument. In fact, when mentioning the hand-grip size case, the

specification states only that the case is “of preferred hand-grip size,” suggesting

that the dimensions of the case being of hand-grip size, while preferred, are not

inflexible. The specification further mentions that the operator will “grasp the

primary instrument,” yet that description does not suggest any specific numerical

dimensions of the case. ’663 patent, col. 6, II. 22-25. In the few instances where




05-1091                                 -6-
the specification alludes to either the “hand-grip size case” or to grasping the

instrument, it does not reference any dimensions. Because numerical dimensions

are absent in the specification, it was improper for the district court to construe

the claim term with the lower limit dimensions.

       The district court stated that it established the size dimensions of the

“hand-grip size case” from “a preferred embodiment described in the

specifications and shown in the drawings . . . .” Claim Construction Order, at 5. It

further appears to have determined the meaning of the “of a rectangular” shape

limitation solely from figures 4-7 because that is the only place in the patent that

suggests such a shape. However, we cannot accept the district court’s analysis

because case law is well established that, while a specification should be used to

interpret the meaning of a claim, it should not be used to import unnecessary

limitations into the claims. See Phillips, 415 F.3d at 1323. In particular, we have

acknowledged that claims must not necessarily be restricted to those

embodiments disclosed in the specification, even if a patent describes only a

single embodiment. As we stated in Phillips, “although the specification often

describes very specific embodiments of the invention, we have repeatedly

warned against confining the claims to those embodiments . . . In particular, we

have expressly rejected the contention that if a patent describes only a single

embodiment, the claims of the patent must be construed as being limited to that

embodiment.” Id.

       Here, the district court expressly ascertained the size limitations from a

preferred embodiment and improperly construed the term to incorporate those




05-1091                                -7-
limitations. The specification states that the figures are shown “for illustrative

purposes” and thus the figures do not restrict the scope of the claims to that

which is shown in the drawings.        See ’663 patent, col. 3, II. 66-67. The

specification also states that figures 4, 5, and 6 depict “one of the featured

companion test instruments,” further suggesting that the scope of the claims

should not be restricted exclusively to those figures.       Id. at col. 5, II. 3-5.

Because the specification does not indicate that the embodiment depicted in the

figures is meant to be the only embodiment, and in fact implies otherwise, the

claim term should not be limited to specific dimensions established from the

figures.

       The prosecution history also does not provide support for the addition of

dimensions to the “hand-grip size case.”      On appeal from a rejection by the

examiner, the Board of Patent Appeals and Interferences (“BPAI”) rejected

applicant’s broad argument that the invention is distinguished over the prior art

because it is “portable,” but added that “there is no teaching or suggestion in [the

references cited upon which the rejection was made] of a hand grip size case

and therefore we will not sustain this rejection . . . .”      Applicant thereafter

amended claims from being only portable to incorporate the language specifying

“a hand-grip size case in which said test circuit is mounted” to put the claims in

condition for allowance. The BPAI implied that the invention was distinguishable

over the cited prior art by the inclusion of a “hand-grip size case,” but the BPAI

did not ascribe any lower size dimensions to the case.




05-1091                                -8-
       Moreover, with regard to the “of a rectangular” shape limitation, although

figures 4-7 show the instrument as housed in a rectangular-shaped case, the

specification never suggests that this shape is critical to the operation of the

invention.   An important object of the invention is to have the portable test

instrument serve “in the hands of an operator.” ’663 patent, col. 1, II. 61-64.

There is no reason why this objective could not be accomplished equally as well

with a non-rectangular shaped case. As long as the instrument can serve “in the

hands of an operator,” it fulfills the objective of the patent, irrespective of the

specific shape of the case. The specification does not assign any significance to

the shape of the case, and there is otherwise no indication in the intrinsic

evidence that the invention must be limited to the rectangular shape depicted in

some of the figures.

       Gale further contends that in addition to the figures, the reference in the

specification to securing a connector to the “top wall” of the case implies that the

case is rectangular. See ’663 patent, col. 5, II. 32-34. We find this argument

unpersuasive. Securing the connector on the “top wall” does not compel the use

of only a rectangular shape because other shapes could include a top wall.

       Finally, the court’s finding that the term is ambiguous and should be

construed to sustain its validity is without basis. The term “hand-grip size case”

is not ambiguous. Although the term may be of a nonspecific size and shape,

that does not render the claim term ambiguous.          Because the term is not

ambiguous, the district court should not have applied the doctrine of construing

claims to preserve their validity. Construing claims to sustain their validity has




05-1091                                -9-
been limited to those cases in which “the court concludes, after applying all the

available tools of claim construction, that the claim is still ambiguous.” Phillips,

415 F.3d at 1327 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,

911 (Fed. Cir. 2004)).     We have not applied the doctrine broadly and have

“certainly not endorsed a regime in which validity analysis is a regular component

of claim construction.” Phillips, 415 F.3d at 1327. This is not one of those limited

cases where the term cannot be construed using other available tools. Had the

district court limited its construction to the ordinary and customary meaning, it

would not have had to resort to construing the claim term more narrowly to

preserve its validity.

       In sum, we do not accept the limitations that the district court added to the

term “hand-grip size case.”       We see no basis for incorporating specific

dimensions and a specific shape into the claim construction. Because we

disagree with the court’s claim construction, we vacate the district court’s finding

of noninfringement of the ’663 patent to the extent that it was based on an

erroneous claim construction of the term “hand-grip size case.” That term, as

indicated above, simply means a case of a size that can be gripped in a normal

hand. While we might, on the basis of that meaning, make our own judgment on

the question of infringement, based on the record, the better practice is to have

the district court make that factual determination on remand. We therefore

remand for the court to redetermine whether Gale’s Products meet the limitation

as we have construed it.




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