                     NOTE: This disposition is nonprecedential.


United States Court of Appeals for the Federal Circuit
                                      2007-1197


                           ENERGIZER HOLDINGS, INC.
                     and EVEREADY BATTERY COMPANY, INC.,

                                                          Appellants,

                                           v.


                       INTERNATIONAL TRADE COMMISSION,

                                                          Appellee.

                                        and

  GOLDEN POWER INDUSTRIES, LTD., GUANGDONG CHAOAN ZHENGLONG
ENTERPRISE CO., LTD., GUANGZHOU TIGER HEAD BATTERY GROUP CO., LTD.,
 FUJIAN NANPING NANFU BATTERY CO., LTD., HI-WATT BATTERY INDUSTRY
  CO., LTD., NINGBO BAOWANG BATTERY CO., LTD., SICHUAN CHANGHONG
     ELECTRIC CO., LTD., and ZHONGYIN (NINGBO) BATTERY CO., LTD.,

                                                          Intervenors.

       Randall G. Litton, Price, Heneveld, Cooper, DeWitt & Litton, LLP, of Grand
Rapids, Michigan, argued for appellant. With him on the brief were Eugene J. Rath III
and Matthew J. Gipson. Of counsel on the brief was V. James Adduci, II, Adduci,
Mastriani & Schaumberg, L.L.P., of Washington, DC. Of counsel was Michael L.
Doane.

       Wayne W. Herrington, Assistant General Counsel, Office of the General Counsel,
United States International Trade Commission, of Washington, DC, argued for appellee.
With him on the brief was James M. Lyons, General Counsel.

       Steven P. Hollman, Hogan & Hartson, L.L.P., of Washington, DC, argued for
intervenors, Golden Power Industries, Ltd., et al. With him on the brief were Susan
Cook, Jessica L. Ellsworth, and Dana Carver Boehm. Of counsel on the brief were
William E. Thomson, Jr., Wei-Ning Yang, and Yoncha L. Kundupoglu, of Los Angeles,
California. Of counsel was Robert B. Wolinsky, of Washington, D.C.

Appealed from: United States International Trade Commission
                     NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit

                                     2007-1197

                          ENERGIZER HOLDINGS, INC.
                    and EVEREADY BATTERY COMPANY, INC.,

                                                           Appellants,


                                          v.


                      INTERNATIONAL TRADE COMMISSION,

                                                           Appellee,

                                         and

  GOLDEN POWER INDUSTRIES, LTD., GUANGDONG CHAOAN ZHENGLONG
ENTERPRISE CO., LTD., GUANGZHOU TIGER HEAD BATTERY GROUP CO., LTD.,
  FUJIAN NANPING NAFU BATTERY CO., LTD., HI-WATT BATTERY INDUSTRY
  CO., LTD., NINGBO BAOWANG BATTERY CO., LTD., SICHUAN CHANGHONG
     ELECTRIC CO., LTD., and ZHONGYIN (NINGBO) BATTERY CO., LTD.,

                                                           Intervenors.

On appeal from the United States International Trade Commission in Investigation No.
337-TA-493.



                           DECIDED: April 21, 2008



Before NEWMAN, SCHALL, and LINN, Circuit Judges.

SCHALL, Circuit Judge. *

      *
        The judgment of the International Trade Commission is affirmed in separate
opinions by Judge Schall and Judge Linn. Judge Newman files a dissenting opinion.
       Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (2000),

prohibits “[t]he importation into the United States, the sale for importation, or the sale

within the United States after importation of articles . . . that infringe a valid and

enforceable United States patent,” id. § 1337(a)(1)(B). On April 28, 2003, Energizer

Holdings, Inc. and Eveready Battery Company, Inc. (collectively “Energizer”) filed a

complaint with the International Trade Commission (“Commission”) alleging violations of

section 337 as a result of the importation into the United States, the sale for importation,

and the sale within the United States after importation, of certain zero-mercury-added

alkaline batteries by fourteen Chinese battery manufacturers. 1 According to Energizer,

the actions of the battery manufacturers constituted infringement of claims 1–12 of U.S.

Patent No. 5,464,709 (the “’709 patent”). 2         In response to the complaint, the

Commission instituted a section 337 investigation. 68 Fed. Reg. 32771 (June 2, 2003).

During the course of the investigation, Energizer disclaimed claims 8–12, leaving only

claims 1–7 of the ’709 patent at issue.

       On October 1, 2004, the Commission issued a notice stating that it was

terminating its investigation with a finding of no violation of section 337, the reason

being that the Commission had determined that the asserted claims of the ’709 patent

were invalid for failure to meet the definiteness requirement of 35 U.S.C. § 112, ¶ 2

(“The specification shall conclude with one or more claims particularly pointing out and

distinctly claiming the subject matter which the applicant regards as his invention.”).

The Commission issued a decision explaining its determination on October 18, 2004. In



       1
       Several of those manufacturers (“Intervenors”) have intervened in this case.
       2
       The ‘709 patent is owned by Eveready Battery Company, Inc., a subsidiary of
Energizer Holdings, Inc.


2007-1197                                    2
re Certain Zero-Mercury-Added Alkaline Batteries, Parts Thereof, and Products

Containing Same, Inv. No. 337-TA-493 (Int’l Trade Comm’n Oct. 18, 2004)

(“Energizer I”). Energizer appealed the Commission’s ruling in Energizer I to this court.

Subsequently, in Energizer Holdings, Inc. v. International Trade Commission, 435 F.3d

1366 (Fed. Cir. 2006) (“Energizer II”), this court reversed the decision of the

Commission that claims 1–7 of the ’709 patent were indefinite and remanded the case

to the Commission for further proceedings, id. at 1371. On remand, the Commission

determined (i) that claims 1–7 of the ’709 patent are invalid for failure to meet the written

description requirement of 35 U.S.C. § 112, ¶ 1 (“The specification shall contain a

written description of the invention, and the manner and process of making it . . . .”) and

(ii) that, if valid, the claims are not infringed by the accused imported products. In re

Certain Zero-Mercury-Added Alkaline Batteries, Parts Thereof, and Products Containing

Same, No. 337-TA-493 (Int’l Trade Comm’n Feb. 23, 2007) (“Energizer III”). Energizer

now appeals. Because I agree with the Commission that the asserted claims of the

’709 patent are invalid for failure to meet the written description requirement of § 112,

¶ 1, I would affirm the Commission’s decision in Energizer III. Deciding the case on this

ground, I do not reach the issue of infringement.

                                     BACKGROUND

                                             I.

       Commercial batteries consist of three primary components: a cathode, an anode,

and an electrical conductor connecting the cathode to the anode. A battery cathode

contains a reducing agent, an element or compound that releases electrons in a

chemical reaction.     A battery anode contains an oxidizing agent, an element or




2007-1197                                    3
compound that receives electrons released by the cathode in a chemical reaction.

When an electrical conductor connects the cathode to the anode, electrons flow through

the conductor, creating an electrical current that can power electronic devices.

       Commercial alkaline batteries traditionally have contained manganese dioxide as

an active cathode component and zinc as an active anode component. The usage of

zinc as an anode component tends to result in the corrosion of the zinc and the

production of hydrogen gas, leading to battery leakage. Energizer II, 435 F.3d at 1368.

To remedy this problem, battery manufacturers adopted the practice of amalgamating

mercury with the zinc in the anode of the battery, which tends to inhibit corrosion and

thereby limit hydrogen gas formation. Id. The disposal of mercury-containing batteries,

however, presents an environmental hazard.         As a result, research scientists have

sought to limit the amount of mercury contained in commercial alkaline batteries. Id.

       The ’709 patent issued following the discovery of a test for screening zinc metal

in order to find zinc substantially free of the impurities that cause corrosion. Id. Using

such zinc in commercial batteries lessens the need for mercury as an additive. Claim 1,

which the parties agree claims a commercial battery, states:

       An electrochemical cell comprising an alkaline electrolyte, a cathode
       comprising manganese dioxide as an active cathode component, and an
       anode gel comprised of zinc as the active anode component, wherein the
       cell contains less than 50 parts of mercury per million parts by weight of
       the cell and said zinc anode has a gel expansion of less than 25% after
       being discharged for 161 minutes to 15% depth of discharge at 2.88A.

                                             II.

       As noted, in response to a complaint by Energizer, the Commission initiated an

investigation of various battery manufacturers who imported batteries that allegedly

infringed the ’709 patent, in violation of section 337 of the Tariff Act of 1930. Energizer I



2007-1197                                    4
at 1. On June 2, 2004, the Administrative Law Judge (“ALJ”) assigned to the case

issued a final determination that the battery manufacturers had imported batteries in

violation of section 337. Id. at 3. The manufacturers appealed this final determination.

Id. at 4.

        On appeal, the Commission reversed the decision of the ALJ, issuing a final

determination that the manufacturers did not violate section 337, inasmuch as claims 1–

7 of the ’709 patent were invalid by reason of indefiniteness. Id. at 22. In making this

determination, the Commission focused upon claim 1, quoted above. Id. at 22–27. The

Commission ruled that claim 1 was indefinite because the term “said zinc anode” did not

have a definitive antecedent basis. Id. at 25–26. The Commission reasoned that, if

“anode gel” is construed to be the antecedent basis of “said zinc anode,” the claim

becomes nonsensical because only the test cell wherein zinc is screened for use in a

battery, not the anode gel of an actual completed battery, is subjected to the discharge

process described in claim 1. Id. at 25. Alternatively, if “said zinc anode” is interpreted

to refer to the zinc that is tested for integration into a battery, then the word “anode” in

“said zinc anode” becomes superfluous. Id. at 25–26. Since, in the Commission’s view,

neither potential antecedent basis of “said zinc anode” resulted in a comprehensible

claim, the Commission ruled claim 1, and claims 2–7 which depend from it, indefinite.

Id. at 26. Consequently, the Commission terminated its investigation with a finding of

no violation of section 337.      Id. at 22.       Energizer appealed the decision of the

Commission in Energizer I to this court.




2007-1197                                      5
                                             III.

       As noted, the definiteness requirement is set forth in 35 U.S.C. § 112, ¶ 2. To

comply with § 112, ¶ 2, a claim must “particularly point[] out and distinctly claim[] the

subject matter which the applicant regards as his invention.” This court has stated that

“[c]laims are considered indefinite when they are ‘not amenable to construction or are

insolubly ambiguous . . . . Thus, the definiteness of claim terms depends on whether

those terms can be given any reasonable meaning.’” Young v. Lumenis, Inc., 492 F.3d

1336, 1346 (Fed. Cir. 2007) (quoting Datamize, LLC v. Plumtree Software, Inc., 417

F.3d 1342, 1347 (Fed. Cir. 2005)). In other words, an indefiniteness inquiry “requires a

determination whether those skilled in the art would understand what is claimed.” Id.

       In Energizer II, this court held that claim 1 of the ’709 patent was not invalid by

reason of indefiniteness. 435 F.3d at 1371. After noting that “[a] claim that is amenable

to construction is not invalid on the ground of indefinitness,” the court stated:

       Here, it is apparent that the claim can be construed. In that regard, we
       conclude that “anode gel” is by implication the antecedent basis for “said
       zinc anode.” The Commission’s holding of invalidity on the ground of
       indefiniteness is reversed.

Id. Having reversed the Commission’s decision, the court remanded the case to the

Commission for further proceedings. Id.

                                             IV.

       Applying what it viewed as “the claim construction mandated by the Federal

Circuit,” the Commission concluded that “claim 1 is invalid because the specification

does not ‘contain a written description of the invention . . .’ as required by 35 U.S.C.

§ 112 ¶ 1.” Energizer III at 13. The Commission came to this conclusion via a two-step

process. First, it considered claim 1 itself. Starting from the premise that the “anode



2007-1197                                     6
gel” of the claim was “the anode of the completed electrochemical cell destined for

consumers,” the Commission stated that “[t]he claim language ‘after being discharged

. . .’ specifically calls for the discharge of that anode (and only that anode) in the

specified manner. No other anode is recited in the claims.” Id.        The Commission

emphasized that “[n]either the test cell [of the specification] nor its anode are [sic]

recited in the claims” and that there is no language in the claims that “establishes any

relationship between the anode of the electrochemical cell and the (different) anode of

the test cell, the only cell which the specification describes as being discharged in

accordance with the claim language.” Id. at 14 (footnote omitted). The Commission

recognized that “calling for the anode of the electrochemical cell to be discharged in

accordance with the parameters set out in the claims may be illogical.” 3 Id. It stated,

however: “[T]his is what is called for by the claims and we are not permitted to redraft

those claims to supply different or missing language or to provide language to supply

any missing connection between the claimed anode gel of the electrochemical cell and

the unclaimed anode gel of the test cell.” Id.

       Turning next to the specification of the ’709 patent, the Commission pointed out

that “[i]n contrast to the claims, the specification does not describe the anode of the

electrochemical cell as being discharged in accordance with the claim language.

Rather, it only describes the anode gel (anode) of the test cell as being so discharged.”

Id. In that regard, the Commission noted that “the specification associates the language

       3
          Subjecting an anode of a completed battery to such a discharge would be
illogical because “according to Faraday’s Law, an anode (anode gel) with zinc as the
active anode component which is ‘discharged’ for ‘161 minutes to 15% depth of
discharge at 2.88 A’, as stated in claim 1, would have to contain 63 grams of zinc.”
Energizer III at 15 n.10. No commercially available battery contains anywhere near that
quantity of zinc.


2007-1197                                    7
‘discharged for 161 minutes to 15% depth of discharge at 2.88A’ only with the

measurement or test cell, which is not referred to in the claim. The specification does

not associate the discharge language with the ‘electrochemical cell’ of the claims or with

the anode gel (anode) of that cell.”      Id. (internal citation omitted).   Based upon its

examination of the specification, the Commission concluded that “[t]here is thus no

description in the specification of an ‘electrochemical cell’ destined for consumers that is

to be discharged for 161 minutes to 15% depth of discharge at 2.88A and no indication

in the specification that the patentee was ever in possession of such a cell.” Id. at 14–

15.

       Based upon its analysis of claim 1 and the specification of the ’709 patent, the

Commission determined that the asserted claims of the patent were invalid for failure to

meet the written description requirement. Id. at 16. The Commission also determined

that, assuming claims 1–7 were not invalid, this court’s claim construction precluded a

finding of infringement because no commercially available battery possesses all of the

limitations recited in claim 1 of the ’709 patent. Id. at 17. Energizer now appeals the

Commission’s decision in Energizer III.

                                      DISCUSSION

       This court has jurisdiction over a final decision of the Commission pursuant to 19

U.S.C. § 1337(c) and 28 U.S.C. § 1295(a)(6). On appeal, Energizer challenges the

decision of the Commission in Energizer III with respect to both validity and

infringement. Since I would resolve the appeal on the basis of validity, I do not reach

the issue of infringement.




2007-1197                                    8
                                              I.

       Recognizing that in Energizer III the Commission applied what it viewed as “the

claim construction mandated by the Federal Circuit,” id. at 13, Energizer takes the

position that, in Energizer II, this court did not construe the term “said zinc anode.”

Starting from this premise, it argues that, “since the prior panel did not directly consider

the construction of ‘said zinc anode,’ only that the lack of an explicit antecedent basis

did not render the claim indefinite, the construction of ‘said zinc anode’ is not covered by

the law-of-the-case doctrine.” Energizer Reply Br. 16–17.

       From there, Energizer argues that the Commission erred in ruling that the

asserted claims of the ’709 patent are invalid for failure to meet the written description

requirement of 35 U.S.C. § 112, ¶ 1. In making this argument, it contends that the

Commission’s written description analysis is flawed because it is based upon an

incorrect claim construction.    According to Energizer, “[w]hen the entirety of the claim

language, the specification, and other evidence of record is considered, it is the ‘zinc’—

i.e., the ‘active anode component’—which must possess the characteristics necessary

to comply with the post-partial discharge requirements of claim 1.” Energizer Br. 24. In

other words, Energizer argues that, when properly construed, claim 1 “requires that the

zinc powder utilized to make the anode gel, not the anode gel itself, possess the

expansion properties required by the claims.” Id. at 37. When construed this way,

Energizer states, claim 1 and its dependent claims are not invalid for failure to meet the

written description requirement. That is because “[t]here is no doubt that the written

description of the specification makes it clear that it is the anode mix of the test cell, not

the anode gel of the claimed electrochemical cell, that is to be discharged in accordance




2007-1197                                     9
with the limitation of claim 1—i.e., ‘for 161 minutes to a 15% depth of discharge at

2.88A.’” Id. at 28.

       The prior panel in Energizer II did construe the term “said zinc anode.” The

pertinent part of the opinion is quoted above.      For present purposes what is most

important are the first two sentences of the quoted material: “Here, it is apparent that

the claim can be construed.       In that regard, we conclude that ‘anode gel’ is by

implication the antecedent basis for ‘said zinc anode.’” Energizer II, 435 F.3d at 1371.

This language constitutes a clear statement of claim construction.

       As noted above, the issue of whether a claim meets the definiteness requirement

of section 112, ¶ 2 turns on a determination as to whether the claim can be construed.

Thus, the Energizer II panel appropriately went beyond merely holding that “said zinc

anode” was not indefinite for lack of an antecedent basis. Rather, the panel stated that

“said zinc anode” possessed an antecedent basis, which antecedent basis was “anode

gel.” Id.; see Aero Prods. Int’l, Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1016

(Fed. Cir. 2006) (determining that a claim can be construed and subsequently dictating

the proper construction); Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401

F.3d 1367, 1371 (Fed. Cir. 2005) (same).

       Whenever a panel of an appellate court definitively decides an issue, the issue

cannot be reconsidered by a lower court on rehearing the case or by a second panel of

the appellate court. See Gould, Inc. v. United States, 67 F.3d 925, 930 (Fed. Cir. 1995)

(stating that the rule established by a prior panel must apply in decisions of lower courts

and later panels absent the emergence of new evidence, intervening change of law, or

clear error in the previous opinion working manifest injustice); Gindes v. United States,




2007-1197                                   10
740 F.2d 947, 949 (Fed. Cir. 1984) (noting that the rule adopted in an appeal must be

applied by any lower court and a later panel of the appeals court, whether correct or not,

absent exceptional circumstances).     Thus, as far as claim 1 of the ‘709 patent is

concerned, as a matter of claim construction, “said zinc anode” denotes “anode gel.”

      Once it is established that, in claim 1, the term “said zinc anode” denotes “anode

gel,” it becomes clear that Energizer’s claim construction argument must be rejected.

The reason is that, when boiled down to its essentials, the argument represents a

backdoor attempt to overturn the construction that the court set forth in Energizer II.

Energizer argues that, in claim 1, “said zinc anode” denotes the zinc used to

manufacture the “anode gel” in the battery cell. The problem with that argument is that

it squarely contradicts what the court said in Energizer II: “Here it is apparent that the

claim can be construed. In that regard, we conclude that ‘anode gel’ is by implication

the antecedent basis for ‘said zinc anode.’” 435 F.3d at 1371. Once it is determined

that “said zinc anode” denotes “anode gel,” it means that, as the Commission held, it is

the “anode gel” of the battery cell sold to consumers—not the zinc of the test cell—that

is tested in accordance with the parameters of the claim.

      As I will discuss in more detail below, a fundamental disconnect exists between

the claims and specification of the ‘709 patent. The specification speaks consistently of

a test cell, describing its properties and usage, whereas the claims speak exclusively of

the anode of a completed battery. I recognize that claims are to be read in light of the

specification, of which they are a part. Phillips v. AWH Corp., 415 F.3d 1303, 1315

(Fed. Cir. 2005) (en banc). At the same time, however, “[i]t is a ‘bedrock principle’ of

patent law that ‘the claims of a patent define the invention to which the patentee is




2007-1197                                  11
entitled the right to exclude.’” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari

Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).             “The written

description part of the specification itself does not delimit the right to exclude. That is

the function and purpose of the claims.” Markman v. Westview Instruments, Inc., 52

F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996). A court cannot

remedy for Energizer the gulf that it has created between the claims and the

specification by speaking solely of a test cell in the specification while claiming a

completed battery in the claims.

       Energizer’s argument that construing “said zinc anode” of claim 1 to denote

“anode gel” leads to an illogical result is unavailing. This court addressed a similar

contention in Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004).

In that case, the claim at issue related to a dough-producing process. By its terms, one

of the claim limitations called for “‘heating the . . . dough to a temperature in the range of

about 400º F. to 850º F. for a period of time ranging from about 10 seconds to 5 minutes

. . . .’” Id. at 1374. The problem with this limitation was that it was undisputed that, if

the dough was heated to the specified temperature range, “it would be burned to a

crisp.” Id. at 1373. Nevertheless, noting that “the claim unambiguously requires that the

dough be heated to a temperature range of 400º F. to 850º F.,” the court rejected the

patentees’ argument that it should construe the word “to” in the claim to mean “at”

because otherwise the patented process could not perform the function the patentees

intended. Id. at 1374–75. Referring to cases cited earlier in the opinion, the court

stated: “As we have noted . . ., we have repeatedly declined to rewrite unambiguous

claim language for that reason.” Id. at 1375.




2007-1197                                    12
       Claim 1 of the ’709 patent unambiguously requires that the anode gel of a battery

sold to consumers undergo the discharge test set forth in the specification. The claim

requires that “said zinc anode [i.e. the anode gel of the battery sold to consumers]

ha[ve] a gel expansion of less than 25% after being discharged for 161 minutes to 15%

depth of discharge at 2.88A.” However, as noted above, no commercial battery could

be subjected to such a test.      Thus, as did the claim in Chef America, claim 1

unambiguously requires an illogical result. The inventor easily could have avoided this

problem by drafting claim 1 so that it read “said zinc anode is comprised of zinc that has

a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth

of discharge at 2.88A.” The inventor did not use such language, however. Instead, he

wrote a claim that unambiguously calls for subjecting the anode gel of a completed

battery to the discharge test, and this court cannot rewrite the claim. I turn now to the

issue of validity.

                                            II.

       Patents are presumed valid, and the party challenging a patent as invalid must

present clear and convincing evidence of invalidity. 35 U.S.C. § 282 (2000); Metabolite

Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir. 2004). Thus,

before the Commission, Intervenors were required to show by clear and convincing

evidence that the ’709 patent did not comply with the written description requirement of

35 U.S.C. § 112, ¶ 1.

       A validly issued patent must comply with the written description requirement. As

noted above, 35 U.S.C. § 112, ¶ 1 provides that “[t]he specification shall contain a

written description of the invention.” In University of Rochester v. G.D. Searle & Co.,




2007-1197                                  13
358 F.3d 916 (Fed. Cir. 2004), this court stated that the written description requirement

involves “determining whether the subject matter defined in the claims is described in

the specification,” id. at 921; see also TurboCare Div. of Demag Delaval

Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1119 (Fed. Cir. 2001) (holding

that “[n]o reasonable juror could find that [the appellant’s] original disclosure was

sufficiently detailed to enable one of skill in the art to recognize that [the appellant]

invented what is claimed”). In other words, the specification must describe the subject

matter of the invention that is later claimed to be protected in the claims. Univ. of

Rochester, 358 F.3d at 927.

      The determination of whether a patent meets the written description requirement

is a question of fact. Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir.

2006). In an appeal of a final decision of the Commission under 19 U.S.C. § 1337, this

court reviews the Commission’s findings of fact to determine whether they are

supported by “substantial evidence.” See Jazz Photo Corp. v. Int’l Trade Comm’n, 264

F.3d 1094, 1099 (Fed. Cir. 2001); Tandon Corp. v. Int’l Trade Comm’n, 831 F.2d 1017,

1019 (Fed. Cir. 1987). Substantial evidence is “such relevant evidence as a reasonable

mind might accept as adequate to support a conclusion.” Oak Tech., Inc. v. Int’l Trade

Comm’n, 248 F.3d 1316, 1325 (Fed. Cir. 2001) (quoting Consol. Edison Co. v. Nat’l

Labor Relations Bd., 305 U.S. 197, 217 (1938)).

      Claim 1 of the ’709 patent claims “[a]n electrochemical cell comprising . . . an

anode gel comprised of zinc as the active anode component, wherein . . . said zinc

anode has a gel expansion of less than 25% after being discharged for 161 minutes to

15% depth of discharge at 2.88A.”        ’709 patent col.10 ll.57–64.     As seen, the




2007-1197                                  14
Commission found a major disconnect between the language of the claims and the

specification.

       The claimed “electrochemical cell” is a battery cell to be sold to consumers. As

discussed above, what this means is that, by its plain terms, claim 1 of the ’709 patent

claims a battery cell to be sold to consumers in which the anode gel (or the anode) of

the cell “has a gel expansion of less than 25% after being discharged for 161 minutes to

15% depth of discharge at 2.88A.” Id. col.10 ll.62–64. That, however, is not what is

disclosed in the specification. Indeed, Energizer recognizes this, for on appeal it states

that “[t]here is no doubt in this case that the written description of the specification

makes clear that it is the anode mix of the test cell, not the anode gel of the claimed

electrochemical cell, that is to be discharged in accordance with the limitation of claim

1.” Energizer Br. 28.

       The specification sets forth a detailed test procedure. See ‘709 patent col.4 l.38–

col.5 l.44. The specification states that the procedure is run by preparing a 100-gram

“anode mix” using 63 grams of zinc powder. Id. col.4 ll.38–52. Referring to FIG. 1 of

the patent, the specification recites that “an anode collector 10 in the form of a disk with

a tap 12 is made from 33 ga cartridge brass sheet placed inside a flat bottomed 500 ml

polypropylene beaker that is cut off at about the 250 ml level, thus providing a cell cup

1.” Id. col.4 ll.45–49. The anode mix is then placed in the “cell cup”: “One hundred

grams of the anode mix 15 is added into the cup 1 on top of the anode current collector

10.” Id. col.4 ll.50–52. Still referring to FIG. 1, the specification continues by stating that

“[a] strip of separator paper 19 is placed on the wall of the cup 1 to shield the anode

collector tab 12 from the cathode collector 20.” Id. col.4 ll.54–56. The specification




2007-1197                                     15
explains that “[t]he cathode collector 20 is a piece of 0.011 inch thick Type ‘K’ zinc

sheet, and is cut in a 3 inch disk 22 with a 0.5 inch by 1.5 inch tab 23. The disk 22

contains openings 25 that permit escape of hydrogen gas during discharge.” Id. col.4

ll.56–60. Next, referring to FIG. 2 of the patent, the specification describes in detail the

procedure for “identifying zinc for cells” of the invention claimed in the patent. Id. col.5

ll.1–48. The specification continues with a description of the kinds of additives that are

appropriate for the cells of the invention, id. col.5 l.52–col.6 l.51, and with a discussion

of the anode current collector 10, id. col.6 l.52–col.7 l.31. This discussion specifies that

“[a] burnished brass anode collector is preferably employed in the cells of this

invention.” Id. col.6 ll.52–53. Before the claims of the patent, the specification gives two

examples of cells that can be used in the described procedure. Id. col.8 l.62–col.10

l.55. The first sentence of Example 1 states that “[s]everal C-size cells are constructed,

discharged and stored at different temperatures for different periods.” Id. col.8 ll.62–63.

For its part, the first sentence of Example 2 states that “[c]ells are prepared in the same

manner with the same components as in Example 1, except that no indium hydroxide is

added.” Id. col.10 ll.16–18.

       I have described the specification of the ‘709 patent at some length to

demonstrate why it is clear to me that what is claimed in claim 1 of the ’709 patent is not

what is described in the patent specification. Claim 1 claims a commercial battery cell

in which the anode gel (anode) is “discharged for 161 minutes to 15% depth of

discharge at 2.88A,” whereas, as Energizer recognizes, the specification describes only

a test cell—which is not referenced in the claims—being discharged to that parameter.

The specification consistently uses the term “anode gel” to refer to the anode of a test




2007-1197                                   16
cell, not to the anode of a completed battery. See id. col.4 l.39 (describing the process

of subjecting an anode gel of a test cell to the discharge test), col.8 l.60–col.10 l.15

(providing examples of test cells). Finally, the specification contains no language linking

the anode gel of a completed battery, as described in the claims, with the test cell

described in the specification.

       In a word, at the root of the written description issue in this case lies the fact that

the invention of the ’709 patent is a test to pre-screen zincs for use in zero-mercury

added alkaline batteries to be sold to consumers. 4 As just seen, that is the invention

that is described in the patent specification. However, the claims of the ’709 patent

were drafted to claim commercial alkaline batteries.         “Specifications teach.     Claims

claim.” SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 n.14 (Fed. Cir.

1985). The problem in this case is that the specification of the ‘709 patent does not

teach what is claimed, whereas the claims of the patent do not claim what is taught. For

that reason, the decision of the Commission that the asserted claims of the ’709 patent

are invalid for failure to meet the written description requirement of 35 U.S.C. § 112, ¶ 1

is neither unsupported by substantial evidence nor tainted by legal error. 5 See Univ. of

Rochester, 358 F.3d at 921 (stating that deciding whether the written description

requirement is met involves “determining whether the subject matter defined in the

claims is described in the specification”).




       4
          Dr. Scarr, an inventor of the subject matter of the ’709 patent, testified that “[his]
invention was a way of qualifying zinc powder [f]or use in batteries that were to be used
in the zero-mercury applications.” Scarr Dep. 18.
        5
          Since I conclude that claims 1–7 of the ‘709 patent are invalid for failure to meet
the written description requirement, I do not reach the issue of infringement.


2007-1197                                     17
                                     CONCLUSION

      For the foregoing reasons, I would affirm the decision of the Commission in

Energizer III to terminate its investigation into Intervenors’ importation into the United

States of zero-mercury-added alkaline batteries.

                                       AFFIRMED




2007-1197                                  18
                       NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit

                                        2007-1197

                           ENERGIZER HOLDINGS, INC.
                     and EVEREADY BATTERY COMPANY, INC.,

                                                        Appellants,
                                             v.

                       INTERNATIONAL TRADE COMMISSION,

                                                        Appellee,
                                            and

  GOLDEN POWER INDUSTRIES, LTD., GUANGDONG CHAOAN ZHENGLONG
ENTERPRISE CO., LTD., GUANGZHOU TIGER HEAD BATTERY GROUP CO., LTD.,
  FUJIAN NANPING NAFU BATTERY CO., LTD., HI-WATT BATTERY INDUSTRY
  CO., LTD., NINGBO BAOWANG BATTERY CO., LTD., SICHUAN CHANGHONG
     ELECTRIC CO., LTD., and ZHONGYIN (NINGBO) BATTERY CO., LTD.,

                                                        Intervenors.

On appeal from the United States International Trade Commission in Investigation No.
337-TA-493.

LINN, Circuit Judge, concurring in the result set forth in the opinion filed by Judge
Schall. 1

       While I concur with my colleague, Judge Schall, that claim 1 of the ’709 patent is

invalid, I reach that conclusion for a different reason. Judge Schall agrees with the

       1
             In Eastern Enterprises v. Apfel, 524 U.S. 498 (1998), five justices of the
Supreme Court agreed to invalidate portions of the Coal Act, but disagreed as to the
basis for the judgment. Justice O’Connor filed an opinion, joined by three of her
colleagues, reasoning that the Coal Act violated the Takings Clause of the Fifth
Amendment. E. Enter., 524 U.S. at 538. Justice Kennedy filed an opinion concurring in
the judgment but noting that he would invalidate the Coal Act “without regard to the
Takings Clause.” Id. at 539. Thus, while a majority supported the result set forth in the
Judgment, there was no “opinion of the Court.” See id. at 503. The same is true in the
present case.
International Trade Commission’s (“Commission’s”) holding of invalidity based on lack

of written description under 35 U.S.C. § 112, ¶ 1.          He does so by applying our

precedent, which finds in paragraph one of section 112 a separate written description

requirement. I have long been critical of that precedent and believe that § 112, ¶ 1

requires no more than an enabling disclosure of the claimed invention. See Univ. of

Rochester v. G.D. Searle & Co., Inc., 375 F.3d 1303, 1325–27 (Fed. Cir. 2004) (Linn, J.,

dissenting from denial of rehearing en banc); Enzo Biochem, Inc. v. Gen-Probe Inc.,

323 F.3d 956, 987–89 (Fed. Cir. 2002) (Linn, J., dissenting from denial of rehearing en

banc). But I see no need here to revisit that debate because, as I see it, the present

case can be—and properly should be—decided on the basis of the patentee’s failure to

comply with § 112, ¶ 2.

       Paragraph two of section 112 states that “[t]he specification shall conclude with

one or more claims particularly pointing out and distinctly claiming the subject matter

which the applicant regards as his invention.” I agree with the determination made on

the last appeal that the claim is not indefinite for failure to provide antecedent basis for

the phrase “said zinc anode.” 2      Following that determination, the Commission on

remand was required to decide, inter alia, the scope of the claim and the “subject

matter” which the applicant “particularly point[ed] out and distinctly claim[ed] . . . as his

       2
              In the last appeal, the court was presented with the narrow question of
whether the claim term “said zinc anode” lacked antecedent basis. I do not read our
determination that “anode gel” is the antecedent basis for “said zinc anode” as
foreclosing any further consideration of § 112, ¶ 2 issues. And even to the extent that
opinion could be read more broadly, the law of the case doctrine “merely expresses the
practice of courts generally to refuse to reopen what has been decided, not a limit to
their power.” Messinger v. Anderson, 225 U.S. 436, 444 (1912); see also Cent. Soya
Co. v. Geo. A. Hormel & Co., 723 F.2d 1573, 1580 (Fed. Cir. 1983) (noting that the law
of the case doctrine “is not an inexorable command”).



2007-1197                                    2
invention.” § 112, ¶ 2. And therein lies the problem. A proper construction of the

disputed claim is unattainable.

      The claim cannot be interpreted to mean a battery cell with an anode gel having

63 grams of zinc, not only because such a construction is inconsistent with present

commercial requirements, but more significantly because that would require an anode

gel which expands in accordance with the specifications of the test cell configuration

and yet acts in concert with a cathode of the type specified in the commercial battery

examples.    Such an interpretation can hardly be said to reflect what the applicant

regarded as his invention. On the other hand, to construe the claim to cover what the

applicant seems to have intended—namely, a battery cell with an anode containing zinc

of a purity determined by use of the disclosed test cell procedure—would require that

we rewrite the claim. That we are not permitted to do. See Allen Eng’g Corp. v. Bartell

Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002) (“It is not our function to rewrite

claims to preserve their validity.”); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir.

1999) (noting that we have “admonished against judicial rewriting of claims to preserve

validity”). We are simply tasked with determining whether the claims “particularly point[

] out and distinctly claim[ ]” what the inventor regards as his invention. 35 U.S.C. § 112,

¶ 2; see also In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (holding that claims failing

this test during prosecution must be rejected under § 112, ¶ 2). If the applicant desired

coverage of a battery with zinc having specified properties, it should have written claim

1 of the ’709 patent the way it wrote claim 1 of its related U.S. Patent No. 5,395,714

(reciting, “[a]n electrochemical cell comprising . . . an anode gel comprised of low

expansion zinc which has a gel expansion of less than 25% after being discharged for




2007-1197                                   3
161 minutes to 15% depth of discharge at 2.88A”). See Hoganas AB v. Dresser Indus.,

Inc., 9 F.3d 948, 951 (Fed. Cir. 1993) (“If [the patentee], who was responsible for

drafting and prosecuting the patent, intended something different, it could have

prevented this result through clearer drafting.”).

       Because I believe the claim is insolubly ambiguous and, thus, indefinite, I concur

that claim 1 of the ’709 patent is invalid. See Exxon Research & Eng’g Co. v. United

States, 265 F.3d 1371, 1375 (Fed. Cir. 2001) (“If a claim is insolubly ambiguous, and no

narrowing construction can properly be adopted, we have held the claim indefinite.”). In

my opinion, claim 1 fails to comply with the second paragraph—not the first

paragraph—of § 112.




2007-1197                                     4
                        NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit

                                          2007-1197



                            ENERGIZER HOLDINGS, INC.
                      and EVEREADY BATTERY COMPANY, INC.,

                                                           Appellants,


                                               v.

                        INTERNATIONAL TRADE COMMISSION,

                                                           Appellee.

                                             and

  GOLDEN POWER INDUSTRIES, LTD., GUANGDONG CHAOAN ZHENGLONG
ENTERPRISE CO., LTD., GUANGZHOU TIGER HEAD BATTERY GROUP CO., LTD.,
  FUJIAN NANPING NAFU BATTERY CO., LTD., HI-WATT BATTERY INDUSTRY
  CO., LTD., NINGBO BAOWANG BATTERY CO., LTD., SICHUAN CHANGHONG
     ELECTRIC CO., LTD., and ZHONGYIN (NINGBO) BATTERY CO., LTD.,

                                                           Intervenors.



Appeal from the United States International Trade Commission in Investigation No. 337-
TA-493.


NEWMAN, Circuit Judge, dissenting from the judgment.


       My colleagues on this panel hold the Energizer patent invalid, although they do not

agree on the grounds, and there is no majority opinion. I write separately to state my

concerns with their respective theories. Although it is apparent that the ‘709 patent’s claims

are not perfect, it is equally apparent that the invention that is claimed is the invention that
is unambiguously and clearly described in the specification. When there is absolute clarity

in the specification, the court fails its responsibility as ministrator of justice, by wiping out a

valuable patent on imperfections that confuse no one. The complexities of patent claim

writing are notorious. There are few, if any, legal documents more difficult to craft, more

fraught with pitfalls than patent applications; and patent claims are so universally

challenging to the non-specialist, that this court has converted the judicial need to

understand them into an unruly cottage industry called "claim construction." Yet the

Energizer patent claims are readily and unambiguously understood when the rest of the

specification is read.

       Thus I do not agree that the ‘709 patent does not meet the written description or

definiteness requirements. My colleagues reach these conclusions after construing the

claims to exclude the invention described in the specification, and on this basis they hold

the description in the specification or the wording of the claims defective. Undoubtedly the

claims could have been more perfectly drawn, but when read in the context of the

specification there is no doubt as to what is described and claimed. See, e.g., Biogen, Inc.

v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003) (“Any ambiguity, as may be

raised when dispute arises, requires the decisionmaker to focus objectively on the patent

specification and claims, for the specification is the basic presentation by the applicant, and

the claims represent the final product of a sometimes imperfect process.”); Multiform

Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998) (“It is the person of

ordinary skill in the field of the invention through whose eyes the claims are construed.”).

All parties, including the Intervenors, agree that a person of ordinary skill in the field of the

invention would understand what was invented, described, and claimed, despite less than

perfect clarity if the claims are removed from their foundation in the specification.
2007-1197                                    2
       The entire specification is directed to the testing of the zinc anode material for gel

expansion under standardized conditions, using 63 grams of zinc in 100 grams of test

anode material and measuring the gel expansion when the test anode is discharged for 161

minutes to 15% depth of discharge at 2.88A — these are the parameters included in the

claims to characterize the “low expansion” zinc in the claimed electrochemical cells.

Included in the patent are drawings of the apparatus in which the sample gel is discharged.

The specification unambiguously describes the low expansion zinc anode gels and

measurement of their degree of expansion:

       The term “low expansion” is a relative term, and is determined by comparing
       the amount of expansion of different types of zinc anode gel mixes.
       Generally, the zinc used to prepare the anode gel that expands the least will
       provide a lower gassing cell, and, thus, in this invention, “low expansion zinc”
       means zinc that expands to a lower degree relative to other zincs. The
       degree of expansion of zinc anode gels can be measured by preparing an
       anode gel, assembling a cell and discharging the cell. An amount of the gel
       is then removed from the cell, place in a container and stored. After storing,
       the amount of expansion is measured and compared to the amount of
       expansion of undischarged gel that is stored under the same conditions.

‘709 patent, col. 4, lines 25-37. Nonetheless, my colleagues on this panel ignore the

specification’s lengthy exposition of the measurement of the degree of expansion of

"different types of zinc anode gel mixes," supra, when discharged under standardized

conditions.

       The specification teaches that zinc anode gels with low expansion are preferable for

use in commercially useful alkaline batteries; it is such battery cells that comprise the

claimed subject matter. The “Background of the Invention” explains that the problem of gas

formation due to corrosion of the zinc, resulting in gel expansion and leakage, had

previously been controlled by including mercury in the anode, but that adverse

environmental effects require elimination of the mercury component. Id. col. 1, lines 23-59.

2007-1197                                     3
The “Summary of the Invention” states: “The cell comprises an alkaline electrolyte, a

cathode and an anode arranged in a sealed container in a manner effective to provide

electrochemical energy, wherein the anode is comprised of low expansion zinc as the

active anode material,” id. col. 2, lines 24-28, and that “[t]he cells do not leak under

conditions of normal use and storage, and provide an effective amount of electrochemical

energy to be useful as batteries,” id. col. 2, lines 36-40.

       The “Detailed Description of This Invention” states that zinc is the active anode

material, and that “[p]referably, the zinc is low expansion zinc, and is in powder form,” and

that when combined with a binder, an electrolyte solution, and other optional components to

form an anode gel, the gel typically “expands when it is discharged and then stored.” Id.

col. 4, lines 12-17. The specification then provides a detailed description of a standardized

method of determining the expansion of a given anode gel, and the characteristics, using

that method, of the desired low expansion zinc, stating the procedure that is used to test

batches of zinc powder for use in "the cells of this invention." Id., col. 4, lines 38-39. The

specification contains a full “written description” of this measurement procedure, including

specific examples of an “anode mix . . . made of 63 weight percent zinc powder, 0.5 weight

percent binder (Carbopol™940 is a suitable example), and 36.5 weight percent of aqueous

potassium hydroxide electrolyte (37% aqueous solution) that contains 42.5 gm of zinc oxide

per liter.” Id. col. 4, lines 40-44. In conducting the measurement, 100 grams of this mixture

is placed a test cell, shown in patent drawing Figure 1, and discharged, shown in patent

drawing Figure 2, “to 15% depth of discharge at 2.88A for 161 minutes.” Id. col. 4, line 45

through col. 5, line 3. The test applies external amperage for discharge, and after 161

minutes of discharge the gel expansion is determined:

      After the discharge is completed, a portion of the anode mix is measured to
2007-1197                                  4
       the six millimeter level into four polypropylene graduated cylinders that have
       a capacity of ten millimeters. The cylinders should contain about 17 grams of
       anode mix. The same amount of fresh undischarged anode mix should be
       measured into four other ten millimeter graduated cylinders. About 1
       millimeter of low density, high vapor pressure oil, such as pump oil, that is
       insoluble in and inert to the electrolyte is added on top of the mix in each
       cylinder. . . . [After storage for 24 hours at 71°C] the specific expansion rate
       of the mix (SER) is calculated . . . .

‘709 Patent, col. 5, lines 12-40. The testing procedure requires not only the discharge of a

test anode gel in a test cell, but also storage and comparative measurement of the

discharged anode mix.

       The specification also describes alkaline batteries prepared using the zinc that

meets the test criteria, explaining that some “void volume” is left in an alkaline cell to

accommodate whatever amounts of gas may be formed, and that “the cells of this invention

have a void volume of 6% to 13% of the cell’s internal volume.” Id. col. 7, lines 32-36. The

specification states, “The cells of this invention, regardless of size, exhibit a degree of bulge

less than the amount that will typically cause leakage of the cell components,” id. col. 8,

lines 33-35, and presents specific test results for C-size cells using zinc that was

determined to have a “6.2% SRVER [i.e. relative volume] expansion rate” using the

designated measurement procedures, id. col. 8, line 54 through col. 10, line 55. It is clear

throughout the specification that the gel expansion rate is determined in advance, in

accordance with the specified test cell measurement procedure.

       Claim 1 of the ‘709 patent is as follows:

       1. An electrochemical cell comprising an alkaline electrolyte, a cathode
       comprising manganese dioxide as an active cathode component, and an
       anode gel comprised of zinc as the active anode component, wherein the cell
       contains less than 50 parts of mercury per million parts by weight of the cell
       and said zinc anode has a gel expansion of less than 25% after being
       discharged for 161 minutes to 15% depth of discharge at 2.88A.

The Commission ruled (by majority vote) that claim 1 requires that every electrochemical
2007-1197                                 5
cell covered by the claim has been discharged for 161 minutes to 15% depth of discharge

at 2.88A. The Commission held that the cell discharge parameters set forth in the claim

are not applied to a test cell, but require that every cell covered by the claim has been

discharged for 161 minutes to 15% depth of discharge at 2.88A. The Commission

observed that this “invention” is not described in the specification, which describes the

discharge of a test cell, and thus the Commission held the claim invalid for lack of written

description of what is claimed. My colleague Judge Schall agrees with the Commission,

whereas my colleague Judge Linn views the claims as fatally indefinite because they do not

claim what is described. Indeed, the claim does not explicitly refer to the test cell.

However, it is not difficult to read the claims in accordance with the specification. It is the

judicial obligation to preserve property rights when this can reasonably be accomplished,

when there is no doubt as to what is patented. All of the parties, including the Intervenors,

conceded that they readily understood what had been invented and what is intended to be

covered by the claims.

       The Commission attributed its holding to this court’s ruling on a previous appeal,

Energizer Holdings, Inc. v. United States International Trade Commission, 435 F.3d 1366

(Fed. Cir. 2006), where this court reversed the Commission’s holding that the claims were

invalid for indefiniteness due to the lack of “antecedent basis” for the claim term “said zinc

anode.” This court held that the claim was not indefinite, explaining that the earlier mention

of “anode gel” was an adequate antecedent basis. The court pointed out that the claim-

drafting protocol of “antecedent basis” is a technical procedure, that the patent examiner

had not objected on this ground, and that no party had argued that the claim was unclear

because of the lack of an antecedent basis. Id. at 1370-71.

      On remand, the Commission held that this court's “antecedent basis” designation
2007-1197                              6
requires that every claimed cell is discharged for 161 minutes to 15% depth of discharge at

2.88A. The Commission explained that since the specification discusses these parameters

only for a test cell, while the claim requires that the anode of every complete

electrochemical cell is discharged, the specification’s written description is deficient and

therefore the claim is invalid on written description grounds. The two Commissioners in

dissent stated that they “understand the disputed language of claim 1 to indicate that the

anode gel exhibits a certain property (‘has a gel expansion of less than 25%’) when

subjected to specific parameters (‘discharged for 161 minutes to 15% depth of discharge at

2.88A’),” and that looking at the specification, a person of ordinary skill would understand

that the claim describes a “gel expansion” property, which is evaluated by means of the test

cell “according to the parameters more fully described in the specification.” Comm’n diss.

op. at 2-3. The dissenters concluded that this court’s designation of an antecedent for “said

zinc anode” did not “mandate” the majority’s reading of the claim as requiring that every cell

is discharged.

       My colleagues agree with the Commission majority that the claim language requires

discharge of the anode of every claimed cell, rather than a test cell, one colleague then

holding that the claims are invalid because the specification does not accord with the

claims, and the other colleague holding that the claims are invalid because the claims do

not accord with the specification. I repeat, no one is confused as to the invention in the

specification, and the parties and intervenors so confirmed. Yet this court simply declines

to read the claims in light of the specification.

       One can criticize the claims for permitting the absurd reading that was accepted by

the Commission and now by my colleagues. However, when the specification is consulted,

there is no ambiguity as to what is covered by the claim. “The claims of a patent are
2007-1197                                 7
always to be read or interpreted in light of its specifications . . . .” Schriber-Schroth Co. v.

Cleveland Trust Co., 311 U.S. 211, 217 (1940); Carnegie Steel Co. v. Cambria Iron Co.,

185 U.S. 403, 432 (1902) (“The claim of a patent must always be explained by and read in

connection with the specification . . . .”); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.

Cir. 2005) (en banc) (“claims must be read in view of the specification, of which they are a

part”).

          When there is an apparent ambiguity in claim language, the court must seek a

reasonable interpretation based on the specification, not one that defies the fundamental

tenets of the invention. See Rexnord Corp. v. Laitrop Corp., 274 F.3d 1336, 1343 (Fed.

Cir. 2001) (“[I]f the term or terms chosen by the patentee so deprive the claim of clarity that

there is no means by which the scope of the claim may be ascertained by one of ordinary

skill in the art from the language used, a court must look to the specification and file history

to define the ambiguous term in the first instance.”); K-2 Corp. v. Salomon S.A., 191 F.3d

1356, 1363 (Fed. Cir. 1999) (same). “[I]t is necessary to consider the specification as a

whole, and to read all portions of the written description, if possible, in a manner that

renders the claim internally consistent,” Budde v. Harley-Davidson, Inc., 250 F.3d 1369,

1379-80 (Fed. Cir. 2001), as well as to reflect the purpose of the invention, Apple

Computer, Inc. v. Articulate Systems, Inc., 234 F.3d 14, 25 (Fed. Cir. 2000). As the court

recognized in Autogiro Co. v. United States, 384 F.2d 391 (Ct. Cl. 1967), the determination

of whether a claim is ambiguous or clear cannot be ascertained without reference to the

specification and prosecution documents:

      Claims cannot be clear and unambiguous on their face. A comparison must
      exist. The lucidity of a claim is determined in light of what ideas it is trying to
      convey. Only by knowing the idea, can one decide how much shadow
      encumbers the reality. . . .
                                             ****
2007-1197                                     8
              . . . Thus we find that a claim cannot be interpreted without going
       beyond the claim itself. No matter how clear a claim appears to be, lurking in
       the background are documents that may completely disrupt initial views on its
       meaning.
                                            ****
              In deriving the meaning of a claim, we inspect all useful documents
       and reach what Justice Holmes called the “felt meaning” of the claim.

Id. at 396-97 (footnotes omitted).      Precedent is extensive, and powerful, that any

uncertainty flowing from the drafting of the claim seeks resolution by recourse to the

specification, as understood by persons of ordinary skill in the field of the invention. See

Carnegie Steel, 185 U.S. at 437 (“The specification of the patent is not addressed to

lawyers, or even to the public generally, but to the manufacturers of steel . . . .”).

       Where, as here, it was agreed that a person of ordinary skill in the field of the

invention would understand that the specification describes and the claims state the

parameters of the test for gel expansion, and do not require every battery cell to be

discharged before it is sold, the proper claim construction must reflect that undisputed

understanding. There is no warrant for the Commission and my colleagues to adopt an

unsupportable view of the claims, and then invalidate the claims because that view is not

supported.

       The specification shows that the discharge time and conditions and gel expansion

parameters are for the test cell. No lack of clarity in the specification has been suggested.

The specification’s description of 63 grams of zinc in a 100-gram test anode gel, the 161

minute discharge to 15% depth, the application of an external current of 2.88A, and the

incubation of the discharged mix along with control samples in graduated cylinders for 24

hours at 71°C, cannot be understood as required for every claimed electrochemical cell that

is manufactured for sale in commerce. The patent examiner did not require clarification,

and all parties agreed that the parameters in the claim apply to the test cell. The
2007-1197                                9
Commission so stated:

       The specification consistently refers to the anode gel in its entirety as being
       the anode of the cell. The so-called “low expansion” zinc used in the anode
       gel is selected from available zinc powders by using a test to measure what
       the specification refers to as the “specific expansion rate” (“SER”) and/or
       “relative volume expansion rate” (“SRVER”) of a test anode gel mix made
       from 63 grams of the zinc powder being screened. The test employs a
       special electrochemical test cell and apparatus described in the specification.
       Zinc powders used in test anode gel mixes that pass the test, referred to as
       “low expansion” zincs, may then be used with other components to make the
       anode gels of the alkaline cells.

Comm’n op. at 2-3 (footnote omitted). Nonetheless, the Commission held claim 1 fatally

defective because it did not explicitly reference the test cell, ruling that “this test cell is not

the ‘electrochemical cell’ of the claims nor is it referred to elsewhere in the claims.” Id. at

16. The Commission stated that “[t]he specification does not associate the discharge

language with the ‘electrochemical cell’ of the claims or with the anode gel (anode) of that

cell,” id. at 14, ruling that since the specification did not describe the Commissioner's

incorrect claim construction the specification was totally defective on written description

grounds.

       The question is whether Energizer’s claims in the ‘709 patent should be construed in

accordance with their undisputed intended meaning, as clearly described in the

specification and accepted by the patent examiner, or whether this patentee must be

punished for a “disconnect” or "ambiguity" that has no relation to what was invented. This

court rejected a similar finding of invalidity in C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d

1340, 1360 (Fed Cir. 1993), stating:

       Bard states that it is incorrect to construe the claims contrary to the
       specification, and then to hold the claims invalid because they are contrary to
       the specification. Bard is of course correct; the claims are construed in
       accordance with the rest of the specification of which they are a part, and not
       contrary to it.

2007-1197                                       10
This principle invokes the standard rules of claim construction, as in Hoechst Celanese

Corp. v. B.P. Chemicals, Inc., 78 F.3d 1575, 1581 (Fed. Cir. 1996) (“it is unlikely that an

inventor would define the invention in a way that excluded the preferred embodiment, or

that persons of skill in the field would read the specification in such a way”). The

appropriate analytic procedure is as set forth in Phillips, where the court reiterated that the

primary source for understanding and thus construing a claim is the specification, and that

“[t]he construction that . . . most naturally aligns with the patent’s description of the

invention will be, in the end, the correct construction.” 415 F.3d at 1315-16.

       Contrary to Judge Schall’s assertions, see Concurring in the Judgment op. (Schall,

J.) at 2, nothing in this court’s earlier ruling on “antecedent basis” forecloses an

interpretation of the full claim language that comports with the invention described in the

specification. The designation of “anode gel” as the implicit antecedent for “said zinc

anode” does not affect the meaning of “has a gel expansion of less than 25% after being

discharged for 161 minutes to 15% depth of discharge at 2.88A.” This court has reiterated

that “the patentee’s mere use of a term with an antecedent does not require that both terms

have the same meaning,” Microprocessor Enhancement Corp. v. Texas Instruments Inc.,

___ F.3d ___, 2008 WL 850332, at *7 (Fed. Cir. Apr. 1, 2008), especially when such

construction would result in a “nonsensical reading” of the claim. Id. at *8 (“Indeed, the

claims’ apparent nonsensical reading under a uniform construction of “condition code” is

indicative of the ease of determining the appropriate meaning of each use of the term from

its context.”).

       Judge Linn does recognize that this court’s earlier “antecedent basis” decision did

not decide all remaining issues, see Concurring in the Judgment op. (Linn, J.) at 2 n.2, yet

he concludes that the "nonsensical" construction adopted by Judge Schall and the
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Commission majority is the only one that the claim language will bear without forbidden

“rewriting.” However, no rewriting of the claim is necessary to construe the claim's gel

expansion criterion as determined by a test procedure, for the claimed parameters “for 161

minutes to 15% depth of discharge at 2.88A” are the test cell parameters described in the

specification. Our role is not to criticize the claim language that was accepted by the

examiner, as do my colleagues; our role is judicially to construe the claims as a person of

skill in the field of the invention would understand them. Such construction is available in

this case.

       The Intervenors make much of what they call Energizer’s “admitted claim drafting

errors.” However, it was conceded that the claims would be understood, by a person of

ordinary skill, as stating test parameters, not as requiring that every battery is discharged.

That is what the specification unambiguously describes. From my colleagues’ holding of

invalidity, on the ground of either written description or indefiniteness, I respectfully dissent.




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