                      NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                       2009-1305

                               SOUTHERN MILLS, INC.,

                                                      Plaintiff-Appellant,

                                           v.

                                   POLARTEC, LLC,

                                                      Defendant-Appellee.


        D. Clay Holloway, Kilpatrick Stockton LLP, of Atlanta, Georgia, argued for
plaintiff-appellant. With him on the brief were Susan A. Cahoon, Kris J. Doyle, D. Clay
Holloway and Louise T. Rains.

       Michael H. Bunis, Choate, Hall & Stewart LLP, of Boston, Massachusetts, argued
for defendant-appellee. With him on the brief was Samuel E. Sherry, Fish & Richardson
P.C., of Boston, Massachusetts.

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

Judge Beverly B. Martin
                        NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                         2009-1305

                                 SOUTHERN MILLS, INC.,

                                                   Plaintiff-Appellant,

                                              v.

                                     POLARTEC, LLC,

                                                   Defendant-Appellee.

         Appeal from the United States District Court for the Northern District of
             Georgia in case no. 1:07-CV-0893, Judge Beverly B. Martin.


                             ___________________________

                                 DECIDED: May 14, 2010
                             ___________________________


Before MICHEL, Chief Judge, BRYSON, and DYK, Circuit Judges.

BRYSON, Circuit Judge.

       This appeal comes to us from a consent judgment of noninfringement following a

district court’s claim construction order. We affirm in part, reverse in part, and remand.

                                               I

       Appellant Southern Mills, Inc., is the assignee of U.S. Patent No. 5,727,401 (“the

’401 patent”), which is directed to a fire-resistant fabric suitable for use in a firefighter’s

turnout garment. Southern Mills filed suit against Polartec, Inc., in the United States

District Court for the Northern District of Georgia, accusing Polartec of infringing most of
the claims of the ’401 patent. The claims that are the focus of this appeal are claims 1,

6, and 17.

       Claim 1 recites a fabric suitable for use as a “thermal barrier” in a firefighter’s

turnout garment having a “face side” facing the firefighter and a “back side” facing the

garment, and comprising

       a 3-end knit formed of stitch yarns, tie yarns, and nap yarns, said stitch
       yarns and said tie yarns following substantially identical parallel paths
       along said knit, wherein said stitch yarns form the face side of the fabric
       and said nap yarns are tied into the knit at periodic locations along the
       back side of the fabric by the tie yarns;

       wherein portions of the nap yarns are pulled away from the 3-end knit to
       form a fleece on the back side of the fabric; and

       wherein said stitch yarns, tie yarns, and nap yarns are made of a fibrous
       flame resistant material.

       Claim 6 recites a process of making a fabric suitable for use as a thermal barrier

in a firefighter’s turnout gear, comprising

       forming a 3-end knit of stitch yarns, tie yarns, and nap yarns, wherein the
       stitch yarns and the tie yarns follow substantially identical parallel paths
       along the knit and wherein the nap yarns are loosely tied into the knit at
       periodic intervals; and

       subjecting the knit to a napping operation so that the nap yarns are pulled
       away from the knit to form a fleece;

       wherein the stitch yarns, tie yarns, and nap yarns are made of a flame
       resistant material.

       Claim 17 recites a “fleece knit thermal barrier fabric” suitable for use in a

firefighter’s garment, comprising

       a knitted face layer including a plurality of flame resistant tie yarns; and

       a napped back layer integrally formed with said knitted face layer, said
       napped back layer including a plurality of flame resistant nap yarns that
       are tied into said knitted face layer by said tie yarns and which have



2009-1305                                     2
       portions thereof pulled away to form a nap surface for facing the
       intermediate moisture barrier layer of the garment.

       The principal dispute at the Markman hearing concerned the proper construction

of the term “3-end knit,” which appears in claims 1 and 6 and their dependent claims.

Southern Mills proposed that the term be construed to mean a “fabric containing yarns

capable of serving one of three different functions in the fabric.”         That definition,

Southern Mills contended, would include the use of either one, two, or three different

yarns, as long as the yarns used in the fabric were collectively capable of performing

the stitch, tie, and nap functions. Polartec argued for a narrower definition that would

require the use of three different yarns, with each yarn performing only one of the

specified functions.

       The district court found the claim language to be inconclusive and accordingly

looked to the specification. After conducting a detailed review of the specification, the

court adopted Polartec’s requested definition and construed “3-end knit” to mean “a knit

formed of three different yarns, each serving one of three different functions: stitch, tie,

and nap.” The court explained that “[t]he very first sentence of the Detailed Description

section reads: ‘The 3-end knit structure comprises the interaction of three yarns each

serving their own function.’” Moreover, the patent described the stitch yarn as being

“the only yarn of the three that is visible from the face side of the cloth.” The court noted

that for each of the three functions, the patent provides a separate list of suggested

materials and types of yarn, indicating that the patent contemplates the use of three

different yarns in the knit structure.

       The district court next construed the three different yarn functions. The court

ruled that “stitch yarns” form the face side of the knit and are the only ones visible from



2009-1305                                    3
the face side; that “tie yarns” attach the nap yarns to the back side of the knit and are

not visible from the face side; and that “nap yarns” lie on the back side of the knit, are

tied into the knit at periodic intervals by the tie yarns, and are not visible from the face

side of the knit. The court based its construction on language in the claims as well as

the specification. In particular, the court observed that claim 1 states that the “stitch

yarns form the face side of the fabric,” and that the “nap yarns are tied into the knit at

periodic locations along the back side of the fabric by the tie yarns.” See ’401 patent,

col. 5, ll. 59-62. The court also relied on language from the specification stating that

“[t]he stitch or face yarn . . . is the only yarn of the three that is visible from the face side

of the cloth,” and that “[t]he nap yarn . . . is attached to the knit by the tie or tie-in yarn

which is not visible from the face side of the fabric.” Id., col. 3, ll. 49-51, 65-67. The

court added that its earlier construction of “3-end knit” foreclosed the argument that a

single yarn could be used to perform both the stitch and the tie functions such that the

tie yarn would also be visible from the face side.

       After the court issued its claim construction order, the parties agreed that

Southern Mills could not prove infringement under the claims as construed. The parties

therefore consented to entry of a judgment of noninfringement so as to enable Southern

Mills to obtain review of the court’s claim constructions.

                                               II

       Southern Mills argues that the district court erred in limiting the invention to a knit

formed of three different yarns. It contends that the portions of the specification that

require the use of three different yarns represent only a preferred embodiment, and that




2009-1305                                      4
a person skilled in the art would understand the patent to claim fabrics using fewer than

three yarns.

                                                A

       The main thrust of Southern Mills’ appeal is a challenge to the district court’s

claim constructions as applied to claims 1 and 6. Those claims and their dependent

claims all recite that the claimed fabric is a “3-end knit.” The specification defines a

“3-end” fabric as a two-sided fabric that includes “a knit formed of a stitch yarn and a tie

yarn, wherein the stitch yarn lies on the fabric face side. A nap yarn lies on the back

side of the fabric and is tied into the knit at periodic intervals.” ’401 patent, col. 2, ll. 41-

44. The specification adds that to manufacture the 3-end fabric, “a knit is formed of the

stitch yarn, the tie yarn, and the nap yarn.” Id., col. 2, ll. 56-58.

       Southern Mills contends that the “3-end knit” does not require the use of three

different yarns, as long as it consists of “yarns capable of serving one of three different

functions.” In so arguing, Southern Mills relies on the statement in the specification that

“[t]he term ‘3-end’ means that yarns serve one of 3 different functions in the fabric.”

’401 patent, col. 2, ll. 35-36. While it is true that the yarns must perform those three

functions, it is also evident from the specification that those three functions are

performed by three different yarns.        That much is plain from the language of the

specification that describes the 3-end knit structure as comprising a stitch yarn, a tie

yarn, and a nap yarn, and from the repeated references in the specification to the stitch,

tie, and nap “yarns” rather than “functions.”

       Perhaps the clearest statement to that effect is at the beginning of the Detailed

Description section of the patent, where the specification states:            “The 3-end knit




2009-1305                                       5
structure comprises the interaction of three yarns each serving their own function.” ’401

patent, col. 3, ll. 22-23. Other statements in the specification make the same point. For

example, the portion of the specification that describes the 3-end knit structure states

that the “stitch or face yarn” is “the only yarn of the three that is visible from the face

side of the cloth.” Id., col. 3, ll. 65-67. That statement implies that the 3-end knit

structure comprises three yarns, not one or two yarns that perform the three functions.

As another example, the specification describes in detail the different preferred

composition and weight of each of the yarns, id., col. 4, ll. 25-36, providing another

indication that the 3-end knit structure contemplates the use of three separate yarns.

       Southern Mills attempts to downplay the significance of those statements from

the specification by characterizing them as merely descriptions of a preferred

embodiment, which therefore do not limit the meaning of “3-end knit.”                   The

characterizations of “3-end knit” in the specification, however, are distinctly definitional;

they do not purport to describe one or more variants of a 3-end knit, but rather set forth

what the patentee regarded as the meaning of the term “3-end knit” as used in the

claims.

       In support of its proposed construction of “3-end knit,” Southern Mills relies

principally on a sentence in the specification that refers to a “2-end fleece” pattern. In

the course of describing a preferred embodiment of the 3-end knit structure, illustrated

by Figure 1 of the patent, the specification states that “[t]he knit pattern shown in Fig. 1

is called a 3-end fleece pattern. Other patterns can be used, such as a 2-end fleece or

a terry-cloth, for example.” ’401 patent, col. 4, ll. 48-51. According to Southern Mills,

that language reflects a distinction between “pattern” and “structure.” The term “3-end




2009-1305                                    6
fleece pattern,” Southern Mills argues, refers to a fabric in which three yarns perform the

three designated functions of the stitch yarns, tie yarns, and nap yarns, while “2-end

fleece pattern” refers to a fabric in which two yarns perform those three functions. By

contrast, the term “3-end knit structure” contemplates the use of yarn to perform the

three designated functions, but does not require the use of three different yarns to do

so.   As interpreted by Southern Mills, the reference to “2-end fleece pattern” thus

indicates that neither the patent as a whole, nor those claims that require a “3-end knit,”

require the use of three different yarns.

       We agree with the district court that Southern Mills’ argument regarding that

passage of the specification is unpersuasive. The terms “2-end fleece” and “terry-cloth”

are used only once in the patent and are not defined. Southern Mills makes no attempt

to explain the meaning of the reference to terry-cloth; as to the term “2-end fleece,”

Southern Mills relies on the testimony of Dr. Adanur, its expert. Dr. Adanur’s testimony,

however, does not provide persuasive support for Southern Mills’ position.         As the

district court explained, Dr. Adanur expressly acknowledged that the term “2-end” has

no recognized meaning in the field of technical textiles. He simply asserted that, within

the context of the ’401 patent, the term has the meaning advocated by Southern Mills.

Moreover, when he was directed to language in the specification that was contrary to

his interpretation of the term “3-end,” his response on each occasion was that the

language in question referred to a preferred embodiment.          As such, Dr. Adanur’s

testimony was unhelpful because it constituted only a recitation of how he would

construe that term, not an explanation of its “‘accepted meaning in the field’ to one

skilled in the art.” Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279,




2009-1305                                   7
1290-91 (Fed. Cir. 2008); see also Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed.

Cir. 2005) (en banc) (“[C]onclusory, unsupported assertions by experts as to the

definition of a claim term are not useful to a court.”).       Because the specification

repeatedly makes clear that the 3-end knit structure requires three yarns to perform the

three designated functions, it would be speculative to conclude that the unelaborated

reference to a “2-end fleece” pattern teaches an embodiment of the 3-end knit structure

that uses fewer than three yarns.

      Southern Mills also relies on a statement in the Summary of the Invention that

the yarns employed in the manufacture of the claimed fabric “may all be the same, but

the 3-end structure allows the selection of the best yarn for each of the three functions:

stitch, tie, and nap.” ’401 patent, col. 2, ll. 36-39. As the district court concluded, the

most reasonable interpretation of the phrase “may all be the same,” particularly in light

of the remainder of the sentence in which the phrase appears, is that it refers to the type

of material to be selected for each yarn, not to whether more than one of the yarn

functions may be performed by a single yarn.

      Accordingly, we conclude that the district court was correct in its construction of

the term “3-end knit.” We therefore affirm the district court’s judgment as to asserted

claims 1 and 6, and their asserted dependent claims.

                                            B

      Southern Mills briefly addresses the district court’s construction of certain claim

limitations pertaining to independent claim 17. Unlike claims 1 and 6, claim 17 does not

recite a “3-end knit,” but instead recites “a fleece knit thermal barrier fabric” that

comprises “a knitted face layer” and “a napped back layer.” Claim 17 contains express




2009-1305                                   8
references to “tie yarns” and “nap yarns,” but not to “stitch yarns.” In referring to the

“knitted face layer,” claim 17 recites only that the face layer “includ[es] a plurality of

flame resistant tie yarns”; in referring to the “napped back layer,” it recites that the back

layer includes “a plurality of nap yarns that are tied into said knitted face layer by said tie

yarns.”

       Southern Mills argues that the district court’s claim construction, as applied to

claim 17, was erroneous in two related respects. First, the court included in its definition

of “tie yarns” that they are “not visible from the face side of the knit.” Second, the court

defined “face side” as “the smooth side of knitted fleece fabric that faces the wearer and

is formed by stitch yarns.”     The combined effect of those two claim constructions,

Southern Mills argues, was to limit claim 17 to fabrics having three different yarns (tie

yarns, nap yarns, and stitch yarns or “face yarns” 1 ), even though the claim expressly

recites only two yarns (tie yarns and nap yarns).

       Although the district court concluded that the specification supports its

construction of “tie yarns,” we disagree. The portion of the specification that refers to tie

yarns as “not visible from the face side of the fabric,” ’401 patent, col. 3, ll. 50-51, is

found in the description of the “3-end knit.” The specification does not indicate that the

3-end knit is implicitly recited in claim 17, or that the characteristic of the tie yarns

described in that portion of the specification, i.e., not being visible from the face side of

the fabric, is necessarily found in structures other than the 3-end knit. Thus, according

to its terms, claim 17 would read on a fabric that uses only two yarns—a nap yarn



       1
           Although the district court stated that it was treating the terms “stitch yarns”
and “face yarns” differently for purposes of its claim construction order, it construed
those two terms to have the same meaning.


2009-1305                                     9
forming the back layer of the knit, and a tie yarn performing the functions of tying the

back layer of the knit to the face layer and making up the face layer itself.

       Moreover, claim 18, which depends from claim 17, adds the limitation that “said

knitted face layer further includes a plurality of flame resistant face yarns which follow

substantially identical parallel paths along said knitted face layer as said flame resistant

tie yarns, said face yarns forming a face surface on said knitted face layer which is

adapted to face the garment wearer.” The addition in claim 18 of the limitation requiring

a face surface formed of face yarns (that is, stitch yarns) suggests that claim 17 does

not require that the face layer include face yarns, much less that it consist exclusively of

face yarns. See Phillips, 415 F.3d at 1314-15 (“[T]he presence of a dependent claim

that adds a particular limitation gives rise to a presumption that the limitation in question

is not present in the independent claim.”). Although it is possible to distinguish claim 18

from claim 17 by reference to the additional limitation in claim 18 that the face yarns

“follow substantially identical parallel paths along said knitted face layer” as the tie

yarns, the most conspicuous difference between claims 17 and 18 is the addition of the

“face yarn” limitation.   Therefore, absent a clearer indication that the “face yarn”

limitation was included in claim 17 by implication, we conclude that the difference

between claims 17 and 18 supports Southern Mills’ argument that claim 17 does not

require the presence of a separate “face yarn” or stitch yarn.

       Based on the language of claim 17 and its context, we therefore conclude that

the district court’s ruling that tie yarns are “not visible from the face side of the knit” is

erroneous as applied to claim 17. While the patent makes clear that tie yarns are not

visible from the face side of the fabric in the “3-end knit” that is recited in most of the




2009-1305                                    10
claims, that is not true of claim 17, which does not require the use of the “3-end knit,”

either expressly or by clear implication. Because we disagree with the district court’s

construction of the term “tie yarns” as applied to claim 17, and because the parties

agreed to a consent judgment based on the court’s claim construction order, we reverse

the judgment with respect to claim 17 and its asserted dependent claims. The judgment

is otherwise affirmed.




2009-1305                                  11
