Kopykake Enterprises v. The Lucks Co

• Citation: 264 F.3d 1377
• Decision Date: 10 September 2001
• Docket Number: No. 01-1015,01-1015
• Parties: (Fed. Cir. 2001) KOPYKAKE ENTERPRISES, INC., Plaintiff-Appellee, v. THE LUCKS COMPANY, Defendant-Appellant
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1377

264 F.3d 1377 (Fed. Cir. 2001)

KOPYKAKE ENTERPRISES, INC., Plaintiff-Appellee, v. THE LUCKS COMPANY, Defendant-Appellant.

No. 01-1015

United States Court of Appeals for the Federal Circuit

September 10, 2001

Appealed from: United States District Court for the Central District of California Judge Florence-Marie Cooper

[Copyrighted Material Omitted]

William E. Thomson, Jr., McCutchen, Doyle, Brown & Enersen, LLP, of Los Angeles, California, argued for plaintiff-appellee.

E. Joseph Dean, Stoel Rives LLP, of Portland, Oregon, argued for defendant-appellant.

Before RADER, SCHALL, and DYK, Circuit Judges.

Opinion for the court filed by Circuit Judge DYK.

DYK, Circuit Judge.

The Lucks Company ("Lucks") appeals from the declaratory judgment of non-infringement entered by the United States District Court for the Central District of California in favor of Kopykake Enterprises, Inc. ("Kopykake"). Kopykake Enters., Inc. v. Lucks Co., No. CV 99-00354 FMC (CWx) (C.D. Cal. Aug. 31, 2000), amended by Kopykake Enters., Inc. v. Lucks Co., No. CV 99-00354 FMC (CWx) (C.D. Cal. Sept. 19, 2000). Because we conclude that the district court correctly determined that Kopykake's ink jet printing method is outside of the literal scope of the claims of Lucks' patent, we affirm.

I.

Lucks is the assignee of U.S. Patent No. 5,017,394 (the "'394 patent") which is directed to a method for producing edible base shapes upon which pictorial images are printed. The base shapes are used to decorate foodstuffs, such as cakes, cookies, pies, puddings, and ice cream, with high quality images. The claimed method comprises making a thin, flexible, edible base shape and decorating the base shape with a pictorial image. When the base shape is applied to a foodstuff, moisture from the foodstuff softens the base shape, causing it to conform and adhere to the foodstuff, thus transferring the pictorial image on the base shape to the foodstuff.

Independent claim 1 of the '394 patent, the only claim at issue on appeal reads as follows:

1. A method of manufacturing at least one edible base shape having at least one edible pictorial image thereon; wherein said base shape is dimensioned and adapted to be placed on and adhere to a foodstuff to decorate said foodstuff; wherein said base shape has a predetermined, two dimensional configuration and has thickness; wherein said edible base shape is manufactured from at least one edible, fluid material; and wherein said method comprises the steps of:

(a)selecting said edible, fluid material to have a composition such that when said edible, fluid material is dried said edible base shape formed therefrom has the properties when at room temperature of being both flexible and free standing[;]

(b)shaping said edible, fluid material into said predetermined, two dimensional configuration by filling at least one printing opening in a printing screen in a screen printing means with said edible, fluid material, wherein said at least one printing opening has said predetermined, two dimensional configuration, and by screen casting said edible, fluid material through said at least one printing opening while simultaneously depositing said edible, fluid material in said predetermined, two dimensional configuration onto a releasable carrier medium by using said screen printing means to form said base shape; wherein said base shape has a thickness in the range of from about two one-thousandths of an inch to about fifty one-thousandths of an inch; wherein said edible fluid material is selected to have a composition such that it is able to flow relatively easily through said at least one printing opening, and yet be tacky enough to adhere to said releasable carrier medium, but not be so tacky that said edible fluid material adheres unduly to said printing screen after said edible base shape has been formed, to enable said printing screen to be easily removed from said edible base shape without ruining the formed base shape;

(c)drying said edible, fluid material in said predetermined, two dimensional configuration until it is firm enough when it is at room temperature to be removed intact from said releasable carrier medium as said edible base shape; and

(d)screen printing said at least one edible pictorial image onto said edible base shape.

'394 patent, col. 8, l. 37 - col. 8, l. 51 (emphasis added).

The sole issue on appeal is whether "screen printing," as recited in step (d) of claim 1, encompasses Kopykake's ink jet printing methods.

II.

Kopykake commenced the present action by seeking a declaratory judgment that the '394 patent is invalid, unenforceable, and not infringed by Kopykake. In response, Lucks brought counterclaims against Kopykake alleging direct infringement, induced infringement, and contributory infringement of the '394 patent. In due course, Lucks moved for partial summary judgment that Kopykake infringed claim 1 of the '394 patent -- the only independent claim of the patent. In ruling on that motion, the district court construed claim 1 of the '394 patent and, based on its claim construction, determined that Kopykake was entitled to a declaratory judgment of non-infringement as a matter of law. Kopykake Enters., Inc. v. Lucks Co., No. CV 99-00354 FMC (CWx) (C.D. Cal. Apr. 27, 2000) ("Kopykake").

The district court first construed the disputed limitation in step (d) of claim 1, "screen printing said at least one edible pictorial image onto said edible base shape." The court stated that the term "screen printing" has "its own customary meaning, which does not encompass [Kopykake's] method of ink jet printing." Kopykake, slip op. at 10. The court noted, however, that the specification of the '394 patent "ascribes a broader definition to the term." Id. Specifically, column 1, line 65, to column 2, line 5, of the patent states:

[T]he pictorial images will be referred to as being applied to the base shapes by "screen printing", it being understood that the term screen printing as used herein encompasses not only conventional screen printing, but also includes any other conventional printing process and any other conventional means and methods of applying the pictorial images to the base shapes, unless the context should indicate otherwise.

Relying on this statement, the court construed the "screen printing" step at issue as encompassing "conventional processes by which pictorial images are applied to the base shapes." Id. at 11. The court found that this definition of screen printing included stenciling, lithographing, and other graphic arts means. Id. at 14.

The court sought to determine whether ink jet printing was a form of screen printing, as so defined, at the time the '394 patent application was filed. The court noted that the prosecution history of the '394 patent does not identify or describe ink jet printing as a conventional means of printing. Id. at 15. The court considered extrinsic evidence submitted by the parties, and found that the evidence did not establish that ink jet printing was "commonplace in the food industry" when the '394 patent was filed. Id. The court determined that "ink-jet printing was an emerging technology just coming into its own as a practical method of printing on paper. To suggest that ink-jet printing was a conventional means of applying pictorial images onto foodstuffs at the time [Lucks] submitted its patent application strains credulity." Id. at 16. Therefore, the district court held that Kopykake's ink jet printing method for printing pictorial images onto base shapes did not infringe claim 1 of the '394 patent and denied Lucks' motion for partial summary judgment of infringement. Id. Subsequently, the district court entered declaratory judgment of non-infringement in favor of Kopykake. Kopykake Enters., Inc. v. Lucks Co., No. CV 99-00354 FMC (CWx) (C.D. Cal. Aug. 31, 2000), amended by Kopykake Enters., Inc. v. Lucks Co., No. CV 99-00354 FMC (CWx) (C.D. Cal. Sept. 19, 2000). The court found that, by agreement of the parties, all remaining claims in the complaint and counterclaim were resolved or rendered irrelevant. Id. Lucks filed this timely appeal. We have jurisdiction pursuant to 28 U.S.C. 1295(a)(1).

III.

Lucks' appeal of the declaratory judgment of non-infringement is based on a challenge of the district court's claim construction.

Claim construction is a question of law which we review without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc). In construing patent claims, we first look to the intrinsic evidence of record -- the claims, the specification, and, if in evidence, the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed. Cir. 1996). If ambiguity remains after consideration of the intrinsic evidence, "extrinsic evidence may also be considered, if needed to assist in determining the meaning or scope of technical terms in the claims." Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216, 36 USPQ2d 1225, 1228 (Fed. Cir. 1995) (citations omitted).

Lucks admits that the term "screen printing" has a well-known meaning in the art -- printing by silk screening. Lucks correctly points out, however, that the specification of the '394 patent sets forth a different meaning for "screen printing," and that the claim must be construed in accordance with the meaning set forth in the specification. See Vitronics Corp., 90 F.3d at 1582 ("Although words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history."). We conclude that the district court was correct in construing the claim not to be limited to conventional screen printing, but as including other conventional processes for printing on...