Error: Bad annotation destination
     United States Court of Appeals for the Federal Circuit

                                            05-1018


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

                                                      Appellants,

                                               v.


                           INTERNATIONAL TRADE COMMISSION,

                                                      Appellee,
                                              and

                   PT INTERNATIONAL CHEMICAL INDUSTRIAL CO. LTD.,

                                                      Intervenor,
                                              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.,
                      ZHEJIANG 3-TURN BATTERY CO., LTD.,
                  and ZHONGYIN (NINGBO) BATTERY CO., LTD.,

                                                      Intervenors.



       Randall G. Litton, Price, Heneveld, Cooper, DeWitt & Litton, LLP, of Grand Rapids,
Michigan, argued for appellants. With him on the brief were Eugene J. Rath III and Matthew J.
Gipson; Of counsel on the brief were V. James Adduci II and Maureen F. Browne, Adduci,
Mastriani & Schaumberg, L.L.P., of Washington, DC. Of counsel were Michael L. Doane,
David F. Nickel, Sarah E. Hamblin and S. Alex Lasher.

       Wayne W. Herrington, Attorney, 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. Of counsel was Neal J. Reynolds, Attorney.
                                            -2-


       Kent R. Stevens, of Washington, DC, argued for intervenor PT International Chemical
Industrial Co., Ltd.

       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 Christopher T. Handman,
Susan M. Cook and Jessica L. Ellsworth; Of counsel on the brief were William E. Thomson,
Jr., Wei-Ning Yang, Yoncha L. Kundupoglu and Olga Berson, of Los Angeles, California. Of
counsel was Robert B. Wolinsky.

Appealed from: United States International Trade Commission
United States Court of Appeals for the Federal Circuit

                                        05-1018


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

                       INTERNATIONAL TRADE COMMISSION,
                                                   Appellee,
                                     and

              PT INTERNATIONAL CHEMICAL INDUSTRIAL CO. LTD.,
                                                 Intervenor,
                                  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.,
                   ZHEJIANG 3-TURN BATTERY CO., LTD.,
               and ZHONGYIN (NINGBO) BATTERY CO., LTD.,
                                                 Intervenors.

                           __________________________

                           DECIDED: January 25, 2006
                           __________________________


Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and SCHALL, Circuit
Judge.

NEWMAN, Circuit Judge.


      Energizer Holdings, Inc. and Eveready Battery Company, Inc. (collectively "EBC")

appeal the ruling of the International Trade Commission in an action under section 337 of

the Tariff Act of 1930 as amended (19 U.S.C. §1337), holding all of the claims of EBC's
United States Patent No. 5,464,709 ("the '709 Patent") invalid for failure to comply with 35

U.S.C. §112 ¶2.1 We reverse the holding of invalidity and remand for further proceedings.


The Invention

       The '709 patent is for an electrolytic alkaline battery cell that is substantially free of

mercury.     Alkaline battery cells typically contain an electrolyte such as potassium

hydroxide, a metal oxide cathode such as manganese dioxide, and a zinc anode. A

detrimental characteristic of alkaline cells has been corrosion of the zinc after partial

discharge, producing hydrogen gas which exerts internal pressure, causing the cell to leak.

A widely used corrosion inhibitor in such cells is mercury, which amalgamates with the zinc

and inhibits hydrogen formation. Mercury, however, is an environmental pollutant, and

extensive effort has been devoted to reducing or eliminating the mercury content in alkaline

batteries.

       The '709 patent describes the discovery that a cause of gas-producing corrosion is

the presence of trace impurities in the zinc used in the anode, and that upon identification

and elimination of these impurities, the addition of mercury can be eliminated or

substantially reduced. The electrolytic cells at issue are described as "zero-mercury-

added" batteries. EBC charged the respondents/Intervenors with violation of 19 U.S.C.

§1337 based on their importation into the United States, sale for importation, and sale

within the United States, of batteries asserted to infringe the '709 patent.


      1      In re Certain Zero-Mercury-Added Alkaline Batteries, Parts Thereof, and
Products Containing Same, Inv. No. 337-TA-493 (Int'l Trade Comm'n, June 2, 2004 (Initial
Determination); October 1, 2004 (Final Determination)).




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       In the Commission proceedings, the Administrative Law Judge construed the patent

claims and held them valid and infringed. The Commission rejected the ALJ's claim

construction and held all of the claims invalid for indefiniteness under 35 U.S.C. §112 ¶2,

on the ground that the claim term "said zinc anode" lacks antecedent basis in the claim,

and that the claims are unclear or ambiguous. EBC challenges this ruling, arguing that the

meaning of "said zinc anode" and other usages in the claims, viewed in light of the

specification, would be readily understood by persons of ordinary skill in the field of the

invention, and that the absence of antecedent basis is not an invalidating flaw.


Standard of Review

       We review the Commission's decision on the criteria established by 19 U.S.C.

§1337(c) and the Administrative Procedure Act. In accordance with the APA, agency

factual findings are sustained unless they are arbitrary, capricious, or unsupported by

substantial evidence, and agency rulings of law are reviewed for correctness. 5 U.S.C.

§706(2)(E). See Jazz Photo Corp. v. Int'l Trade Comm'n, 264 F.3d 1094, 1099 (Fed. Cir.

2001) (applying the APA to review of decisions of the International Trade Commission).

       An analysis of claim indefiniteness under §112 ¶2 is "inextricably intertwined with

claim construction." Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1379

(Fed. Cir. 1999). See Datamize v. Plumtree Software, Inc., 417 F.3d 1342, 1347-48 (Fed.

Cir. 2005) ("'By finding claims indefinite only if reasonable efforts at claim construction

prove futile, we accord respect to the statutory presumption of validity and we protect the

inventive contribution of patentees, even when the drafting of their patents has been less

than ideal.'") (quoting Exxon Research & Eng'g Co. v United States, 265 F.3d at 1371,



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1375 (Fed Cir 2001)); Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1340-41 (Fed. Cir.

2003) (determination of claim definiteness "requires a construction of the claims according

to the familiar canons of claim construction"). Accordingly, we give de novo review to the

Commission's ruling of patent invalidity for claim indefiniteness.

       35 U.S.C. §112 ¶2 requires that the patent specification shall "conclude with one or

more claims particularly pointing out and distinctly claiming the subject matter which the

applicant regards as his invention." This provision both facilitates examination during the

patent application stage, and upon grant serves to notify the public of what is patented.

The reviewing tribunal must determine whether a person experienced in the field of the

invention would understand the scope of the claim when read in light of the specification.

See Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401 F.3d 1367, 1371 (Fed.

Cir. 2005) (claim not indefinite due to ambiguity when meaning readily ascertained from the

description in the specification); Personalized Media Communications, LLC v. Int'l Trade

Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998). See generally Phillips v. AWH Corp., 415

F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (claims are construed in the context of the

specification and prosecution history, as they would be understood by persons in the same

field of endeavor).


The Commission's Decision

       The Commission held invalid independent claim 1 and dependent claims 2-7, for the

claims all contain the usage to which the Commission objected. Claim 1 is as follows, with

emphasis added to the term that was the focus of the Commission's decision:

       1.    An electrochemical cell comprising an alkaline electrolyte, a cathode
       comprising manganese dioxide as an active cathode component, and an


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       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 held the claim invalid because "said zinc anode" does not have an

antecedent basis, the Commission explaining that "the term 'zinc anode' does not appear in

the claim prior to the term 'said zinc anode.'" Final Det. at 22. The Commission also held

that even if "said zinc anode" is construed to have as antecedent the "anode gel comprised

of zinc as the active anode component" recited earlier in the claim, the claim would still be

indefinite because, as written, it requires that the anode of every cell has been "discharged

for 161 minutes to 15% depth of discharge at 2.88A." The Commission reasoned that since

it appears that these discharge parameters are intended to apply only to a test cell, and not

that every cell must be discharged, this unclear and ambiguous claim drafting renders the

claim "indefinite as a matter of law." The Commission also held that EBC's proffer of

alternative constructions of "said zinc anode" was an admission of indefiniteness.

                                       DISCUSSION

       The Commission held the claim invalid because the term "said zinc anode" lacked

an antecedent basis, and because of the claim's imprecise statement of the role of the test

parameters. EBC argues that these flaws do not render the claim "insolubly ambiguous," in

the words of Marley Mouldings, Ltd. v Mikron Industries, 417 F.3d 1356, 1361 (Fed. Cir.

2005), which held that when a claim "is not insolubly ambiguous, it is not invalid for

indefiniteness." See also Bancorp Servs., L.L.C. v Hartford Life Ins. Co., 359 F.3d 1367,

1371 (Fed. Cir. 2004) ("We have held that a claim is not indefinite merely because it poses




05-1018                                      5
a difficult issue of claim construction; if the claim is subject to construction, i.e., it is not

insolubly ambiguous, it is not invalid for indefiniteness.").

       EBC argues that a person of ordinary skill in this field would readily understand the

claim despite imperfect drafting, for the specification makes clear that the test parameters

included in the claim do not mean that every cell must be discharged for 161 minutes. EBC

points out that the '709 patent is directed to a standard electrolytic alkaline cell, and that the

specification clearly states that the purpose of the test is to identify zinc anode material

used in the invention.

       Claim definiteness is analyzed "not in a vacuum, but always in light of the teachings

of the prior art and of the particular application disclosure as it would be interpreted by one

possessing the ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235

(CCPA 1971). The definiteness inquiry "focuses on whether those skilled in the art would

understand the scope of the claim when the claim is read in light of the rest of the

specification." Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed.

Cir. 2001). Although neither the Commission nor the courts can rewrite claims to correct

material errors, the issue here is not correction of error, but understanding of what the claim

covers. When the meaning of the claim would reasonably be understood by persons of

ordinary skill when read in light of the specification, the claim is not subject to invalidity

upon departure from the protocol of "antecedent basis."

       The requirement of antecedent basis is a rule of patent drafting, administered during

patent examination. The Manual of Patent Examining Procedure states that "[o]bviously,

however, the failure to provide explicit antecedent basis for terms does not always render a

claim indefinite."    MPEP §2173.05(e) (8th ed. Rev. 2, May, 2004).                  In Slimfold


05-1018                                         6
Manufacturing Co. v. Kinkead Industries, Inc., 810 F.2d 1113, 1117 (Fed. Cir. 1987) the

court held that "the missing antecedent clause, the absence of which was not observed by

the examiner of the original patent or by Kinkead in its reissue protest documents, did not

fail to inform the public during the life of the ['274] patent of the limits of the monopoly

asserted." The Slimfold court held that addition of the missing antecedent basis during

reissue was not a substantive change.

       Whether this claim, despite lack of explicit antecedent basis for "said zinc anode,"

nonetheless has a reasonably ascertainable meaning must be decided in context. In

prosecuting the '709 patent, the examiner made several objections to the claims, but the

claims were not rejected or objected to on the ground of lack of antecedent basis. In Bose

Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001) the court held that despite the

absence of explicit antecedent basis, "If the scope of a claim would be reasonably

ascertainable by those skilled in the art, then the claim is not indefinite." Moreover, we

noted in Slimfold that an antecedent basis can be present by implication. Slimfold, 810

F.2d at 1116. See Cross Medical Products v. Medtronic Sofamor Danek, 424 F.3d 1293,

1319 (Fed. Cir. 2005).

       Neither the Commission nor the Intervenors argued that they did not understand the

intended scope because of the absence of an antecedent. The Commission erred in

holding that the need to construe a claim, or the proffer of alternative constructions, renders

the claim indefinite. A claim that is amenable to construction is not invalid on the ground of

indefiniteness. In Exxon Research & Engineering, 265 F.3d at 1375, the court stated that

"if the meaning of the claim is discernible, even though the task may be formidable and the

conclusion may be one over which reasonable persons will disagree, we have held the


05-1018                                       7
claim sufficiently clear to avoid invalidity on indefiniteness grounds." See also Novo Indus.,

L.P. v. Micro Molds Corp., 350 F.3d 1348, 1353 (Fed. Cir. 2003) (determining whether

claim is "amenable to construction"); Honeywell Int’l, Inc. v. Int'l Trade Comm'n, 341 F.3d

1332, 1338 (Fed. Cir. 2003) (a claim is not indefinite because it is hard to construe). 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.

       No other issues of validity and infringement are before us on appeal. The case is

remanded for further proceedings.




                              REVERSED and REMANDED




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