NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

NOVATEK, INC.,

Plaintiff-Appellee,

v.

THE SOLLAMI COMPANY,

Defendant-Appellant.

______________________ 

2013-1389

______________________ 

Appeal from the United States District Court for the 

District of Utah in Nos. 11-CV-0180 and 11-CV-1112, 

Judge David Nuffer.

______________________ 

Decided: March 26, 2014

______________________ 

PHILIP W. TOWNSEND, III, of Provo, Utah, argued for 

plaintiff-appellee. 

JEFFREY T. MORRIS, Morris, Jobe, & Cook, LLC, of 

Pittsburgh, Pennsylvania, argued for defendantappellant.

______________________ 

Before NEWMAN, MOORE, and WALLACH, Circuit Judges.
2 NOVATEK, INC. v. THE SOLLAMI COMPANY

Opinion for the court filed by Circuit Judge WALLACH.

Dissenting opinion filed by Circuit Judge MOORE. 

WALLACH, Circuit Judge. 

In this patent case, Sollami Company (“Sollami”) alleged Novatek, Inc. (“Novatek”) infringed U.S. Patent 

Nos. 7,883,155 (“the ’155 patent”) and 6,371,567 (“the ’567 

patent”). Particularly, in February 2011, Novatek instituted this declaratory judgment action at the U.S. District 

Court for the District of Utah on issues of invalidity and 

non-infringement of the ’155 patent. On July 13, 2011, 

Sollami filed suit against Novatek in the Southern District of Illinois for infringement of the ’567 patent. This 

latter suit was transferred to the District of Utah, and the 

two cases were consolidated in February 2012. After 

claim construction, the district court found noninfringement in favor of Novatek. This court affirms. 

BACKGROUND

The technology at issue involves equipment and 

machinery used in road milling, mining, and trenching 

operations. Specifically, the patents are directed to cutter 

bits, bit holders, and bit blocks used in the abovementioned operations. The patents purport to provide a 

better means for allowing the removal of a bit from a bit 

holder or a bit block, “especially when the bit becomes 

worn and in need of replacement.” E.g., ’567 patent col. 1 

ll. 36–37, 43–44. The figure below is illustrative:
NOVATEK, INC. v. THE SOLLAMI COMPANY 3

’155 patent at [57]. A bit 16 and a spacer 17, together 

with a bit holder 18, and a bit block 20 comprise the 

claimed invention. The bit 16 includes a hardened tip 21

which resides in a pocket in the front face 22 of a frustoconical forward portion 23 of the bit 16. Id. col. 2 l. 65–

col. 3 l. 1. “At the rear of the frustoconical portion (23) is 

a cylindrical front portion base 24.” Id. col. 3 ll. 1–2. “Aft 

of the cylindrical base 24, the tip narrows to a cylindrical 

shank 25, which, [in certain embodiments], includes a Cshaped retainer 26 there around and a cylindrical shank 

portion base 27 defining the rear end of the bit 16.” Id.

col. 3 ll. 7–10. 

The ’567 patent was issued on April 16, 2002, and the 

’155 patent was issued on February 8, 2011. The two 

patents’ specifications are not identical but are nonetheless substantially similar. Claims 1 to 9 of the ’567 patent 

and claims 1 to 4 of the ’155 patent are the asserted 

claims in this case. Claim 1 of the ’155 patent is representative: 

1. In an assembly for use in road milling, 

trenching and mining equipment including a bit, 

bit holder and a bit block, said bit being mountable in a first bore through said bit holder and said 

bit holder being mountable in a second bore 
4 NOVATEK, INC. v. THE SOLLAMI COMPANY

through said bit block, said bit holder and bit 

block, in combination, comprising: 

a single piece bit holder structure including, 

a bit holder front portion and a generally cylindrical bit holder shank portion extending axially rearwardly from said front portion defining an 

annular sidewall, an elongate slot radially 

through said sidewall extending axially from a 

distal end of said shank and terminating between 

said distal end and said front portion defining a Cshape portion of said shank, an outer surface of 

said C-shape portion providing interference with 

said second bore on said bit block sufficient to 

maintain said bit holder on said bit block during

use.

’155 patent col. 7 l. 14–col. 8. l. 8. Claim 1 of the ’567 

patent differs slightly, and recites:

1. A bit holder for use in road milling, trenching and mining equipment as part of an assembly 

including a bit, said bit holder and a bit block, 

said bit being mountable in a first bore through 

said bit holder and said bit holder being mountable in a second bore through said bit block, said 

bit holder comprising: 

a bit receiving front portion terminating at an 

annular flange for engaging a face of said bit 

block, a shank portion extending axially rearwardly from said annular flange, said shank portion including a declining taper from adjacent said 

annular flange to adjacent a distal end thereof, 

said declining taper providing an interference fit 

between said bit holder and said bit block, 

said shank portion including an axial bore 

centrally therethrough, and 
NOVATEK, INC. v. THE SOLLAMI COMPANY 5

means on said shank portion for providing increased resilience for an outer surface of said declining taper to increase the usable interference 

fit between said declining taper and said second 

bore on said bit block by at least about four times 

a standard interference fit therebetween as said 

shank portion is fully mounted on said second 

bore. 

’567 patent col. 8 ll. 11–33. 

Like Sollami, Novatek manufactures a bit assembly 

used in road milling, mining, and trenching operations

(“accused device”). Its assembly consists of a bit with a 

polycrystalline diamond (“PCD”) coated tip that is brazed 

to a carbide bolster, which is then brazed to a steel body. 

Novatek provides the following depiction of its accused 

device:

Appellee’s Br. 12; J.A. 332. 

The district court issued its claim construction order 

on December 4, 2012, and Novatek moved for summary 

judgment of non-infringement thereafter on December 21, 

2012. On April 30, 2013, the motion was granted and 
6 NOVATEK, INC. v. THE SOLLAMI COMPANY

judgment was entered.1 Sollami timely appealed. This 

court has jurisdiction under 28 U.S.C. § 1295(a)(1) (2012). 

DISCUSSION

Sollami makes the following arguments on appeal: (1) 

that the district court erred in construing “bit,” “bit holder,” and “shank” as recited in the asserted claims; and (2) 

that the district court erred in finding that the accused 

device does not have a “bit” as the district court construed 

the term. The issues presented therefore pertain to the 

district court’s claim construction and its grant of Novatek’s motion for summary judgment of noninfringement. 

A. The District Court Correctly Construed “Bit,” “Bit 

Holder,” and “Shank” 

This court reviews a district court’s claim construction 

de novo. Lighting Ballast Control LLC v. Philips Elecs. N. 

Am. Corp., No. 2012–1014, 2014 WL 667499, at *1, *16 

(Fed. Cir. Feb. 21, 2014) (en banc). To ascertain the scope 

and meaning of the asserted claims, courts look to the 

words of the claims themselves, the specification, the 

prosecution history, and, if necessary, any relevant extrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 

1315–17 (Fed. Cir. 2005) (en banc).

1 Although the district court’s judgment does not 

discuss Novatek’s invalidity counterclaims, “[the judgment] is clear that the district court intended to dispose of 

all the claims before it.” Locell v. Chandler, 303 F.3d 

1039, 1049 (9th Cir. 2002); Petty v. Manpower, Inc., 591 

F.2d 615, 617 (10th Cir. 1979) (“What is of importance is 

the district court’s intent in issuing its order dismissal of 

the complaint alone or actual dismissal of plaintiff’s entire 

action?”).

 
NOVATEK, INC. v. THE SOLLAMI COMPANY 7

Relevant to this appeal, the district court construed, 

among other terms, “bit,” “bit holder,” and “shank.” 

Novatek, Inc. v. Sollami Co., No. 2:11–cv–00180, 2013 WL 

1831995, at *3 (D. Utah Apr. 30, 2013). Sollami contends 

that certain terms interpreted by the district court, including the term “bit,” appear only in the preambles of the 

asserted claims. Sollami argues “bit” is not a required 

structural element of the asserted claims because the 

preambles are not limitations on the claims. The district 

court concluded that the preambles serve as limitations. 

“A claim’s preamble may limit the claim when the 

claim drafter uses the preamble to define the subject 

matter of the claim.” August Tech. Corp. v. Camtek, Ltd., 

655 F.3d 1278, 1284 (Fed. Cir. 2011). On one hand, a

preamble is generally construed to be limiting if it “‘recites essential structure or steps, or if it is necessary to 

give life, meaning, and vitality to the claim.’” NTP, Inc. v. 

Research In Motion, Ltd., 418 F.3d 1282, 1305 (Fed. Cir.

2005) (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). For 

example, limitations in the body of the claim that rely 

upon and derive antecedent basis from the preamble may 

render the preamble a necessary component of the 

claimed invention; and therefore, a limitation on the 

claims. Id. at 1306. Also, where the specification underscores structure or steps recited in the preamble as important, the preamble may operate as a claim limitation. 

Catalina Mktg., 289 F.3d at 808. Further, “clear reliance 

on the preamble during prosecution to distinguish the 

claimed invention from prior art transforms the preamble 

into a claim limitation because such reliance indicates use 

of the preamble to define, in part, the claimed invention.” 

Id. at 808–09. 

On the other hand, when a patentee “defines a structurally complete invention in the claim body and uses the 

preamble only to state a purpose or intended use for the 

invention, the preamble is not a claim limitation.” Rowe 
8 NOVATEK, INC. v. THE SOLLAMI COMPANY

v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); see Pitney 

Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1305 

(Fed. Cir. 1999) (explaining the preamble is not limiting if 

“the body of the claim fully and intrinsically sets forth the 

complete invention, including all of its limitations, and 

the preamble offers no distinct definition of any of the 

claimed invention’s limitations, but rather merely states, 

for example, the purpose or intended use of the invention”). Whether a preamble is treated as a limitation is 

determined by the facts of each case and upon an understanding of what the inventors actually invented and 

intended to encompass by the claims. Catalina Mktg., 

289 F.3d at 808.

Here, as the district court concluded, the preambles of 

the asserted claims recite essential elements of the invention pertaining to, among other things, the bit, the bit 

holder, and the bit block in addition to the mounting 

relationship among these elements that make up the 

claimed bit assembly. For example, the preamble of claim 

1 of the ’567 patent recites a “bit holder” that is a “part of 

an assembly including a bit, said bit holder and a bit 

block,” where the “bit” is “mountable in a first bore 

through said bit holder and said bit holder being mountable in a second bore through said bit block.” The preamble of claim 1 of the ’155 patent recites substantially the

same. Particularly, it too refers to “an assembly” that 

includes “a bit, bit holder and a bit block.” The body of 

claim 1 of the ’567 patent does not recite the complete 

invention, but refers back to the features of the bit assembly stated in the preamble, so that these references in 

the body of the claim derive their antecedent bases from 

the preamble. ’567 patent col. 8 ll. 11–33 (“bit holder, “bit

block,” and “second bore” finding antecedent bases in the 

preamble). 

The patents’ specifications support this reading of the 

preambles. In particular, the specifications identify the 
NOVATEK, INC. v. THE SOLLAMI COMPANY 9

recited structural elements in the patents’ preambles as 

“the invention.” The ’567 patent for instance provides: 

Referring to FIGS. 1–2, a bit mounting assembly, 

generally indicated at 20, constructed in accordance with the present invention, includes a bit, 

generally indicated at 21, which is mounted on a 

bit holder, generally indicated at 22, which, in 

turn, is secured on a bit block, generally indicated 

at 23. 

’567 patent col. 2 ll. 49–54; see also ’155 patent col. 2 ll. 

59–64 (“[A] bit, bit holder and bit block assembly, generally indicated at 15, constructed in accordance with the 

present invention, includes a bit, generally indicated at 16 

and a spacer, generally indicated at 17, together with a 

bit holder, generally indicated at 18 and a bit block, 

generally indicated at 20.”). In addition, the purported 

improvement over prior art is stated as a “more efficient 

means for allowing the removal of a bit from a bit holder 

or a bit block.” ’567 patent col. 1 ll. 43–44. These statements in the specification underscore structural elements 

recited in the preamble, e.g., “bit,” as pertinent to the 

invention claimed. Proveris Scientific Corp. v. Innovasystems, Inc., 739 F. 3d 1367, 1373 (Fed. Cir. 2014) (“[T]he 

preamble [provides for] the only reference in any independent claim to the inventive concept . . . [and] [t]his fact 

alone is likely sufficient to support a conclusion that the 

preamble is limiting.”); Deere & Co. v. Bush Hog, LLC, 

703 F.3d 1349, 1358 (Fed. Cir. 2012) (holding that the 

preamble phrase “rotary cutter deck” was a limitation 

where the specification referred to “the present invention” 

as “a rotary cutter deck”); Poly–Am., LP v. GSE Lining 

Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004) (construing preamble as limiting where it disclosed a “fundamental characteristic of the claimed invention”) (internal

quotation marks and citation omitted).
10 NOVATEK, INC. v. THE SOLLAMI COMPANY

The inventor’s statements made during prosecution of 

the ’155 patent also highlight the relevance of the structural elements recited in the preambles. For instance, the 

inventor stated in a declaration that: “The present application is a bit holder that is stiffer and therefore holds the 

bit in the proper position for heavy operating conditions . . 

. . A combination of the [cited prior art references] would 

cause the holder to rotate. In the industry, bits rotate, 

not holders.” J.A. 253. In distinguishing prior art, the 

inventor stated that: 

The [prior art] reference has a wider notch at the 

rearward potion and a narrower width at the front 

face [than the bit holder of the claimed invention]. 

The present application is the reverse. This difference is material because the narrower rearward portion prevents the clogging of the notch 

and aids in removal of the bit. 

J.A. 254. Thus, the inventor during prosecution of the 

’155 patent relied on structural elements recited in the 

preamble to distinguish the claimed invention from the 

prior art. 

Accordingly, the preambles of the asserted claims are 

not merely limited to stating the purpose or intended use 

of the invention of the ’567 and ’155 patents, but rather 

contain essential structural elements that are highlighted 

in the specification and which were relied upon during 

prosecution. Although Sollami argues that the essence of 

its invention is directed to a “bit holder” as opposed to a 

“bit,” the intrinsic evidence does not support Sollami’s

contention. Indeed, in addition to the structural elements 

of the claimed bit assembly, the invention focuses on the 

mounting relationship among the bit, bit holder, and bit 

block. E.g., ’155 patent col. 4 ll. 7–9 (“Referring to FIG. 2, 

the mounting relation between the bit block 20, bit holder 

18, spacer 17 and bit 16 is shown in cross section.”). It is 

apparent that the “claim drafter [chose] to use both the 
NOVATEK, INC. v. THE SOLLAMI COMPANY 11

preamble and the body to define the subject matter of the 

claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 

323 F.3d 1332, 1339 (Fed. Cir. 2003) (internal quotation 

marks and citation omitted). Therefore, the district court 

did not err in concluding that the recited structural 

elements in the preambles serve as limitations that give 

“life, meaning, and vitality to the claims” as a whole. 

Novatek, 2013 WL 1831995, at *3. 

Even if “bit” is construed as a structural limitation, 

Sollami avers that the district court erred by requiring a 

bit with a shank and by requiring removability of the bit 

from the bit holder. The district court construed “bit” as

“an object comprising a hardened tip and a shank mountable in and removable from a bore through the front 

portion of a bit holder,” and “bit holder” as “[a]n object in 

which a removable bit is mounted in a bore in the front 

portion thereof.” Novatek, 2013 WL 1831995, at *3. The 

court’s constructions were correct.

Claim 1 of the ’567 patent provides that the “bit [is]

mountable in a first bore through said bit holder and said 

bit holder [is] mountable in a second bore through said bit 

block.” ’567 patent col. 8 ll. 13–15. Inherent in this claim 

language is that a portion of the bit is “in” a first bore, 

and similarly, a portion of the bit holder is “in” a second 

bore. That portion of the bit holder that is “in” the second 

bore is recited expressly as the “shank portion.” Id. col. 8 

ll. 18–32. Although the claim language does not denote a 

label for the portion of the bit that is “in” the first bore, 

like the district court, this court holds that portion of the 

bit and the bit holder’s shank portion “cannot be . . . 

entirely different” and construes both the bit and the bit 

holder to include a shank. Novatek, 2013 WL 1831995, at

*5. The patentee adheres to this definition when describing his invention throughout the patent. See Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372, 1377 (Fed. 

Cir. 2005) (quoting Astrazeneca AB v. Mut. Pharm. Co., 

384 F.3d 1333, 1340 (Fed. Cir. 2004)) (“[W]hile it is of 
12 NOVATEK, INC. v. THE SOLLAMI COMPANY

course improper to limit the claims to the particular 

preferred embodiments described in the specification, the 

patentee’s choice of preferred embodiments can shed light 

on the intended scope of the claims.”).

In the “Background of the Invention” section, the patentee without qualification sets out that “bits include a 

tip and a shank.” ’567 patent col. 1 ll. 21–22; ’155 patent 

col. 1 ll. 28–30 (“The bits utilized include a tip and a 

shank.”). Elaborating on the “tip” and “shank,” the patentee recites: 

The shank is received and may axially rotate in a 

bit holder which is secured onto a bit block that, 

in turn, is mounted on the drum. Each of the bits 

has a hardened tip, preferably made of tungsten 

carbide or such other hardened material that acts 

to remove a portion of the surface it contacts. 

’567 patent col. 1 ll. 22–26. 

Additionally, every figure in the patents depicting a 

bit includes a shank. ’567 patent Figs. 1, 2, 7, 8; ’155 

patent Figs. 1, 13. Specifically, the ’567 patent provides: 

“Referring to FIG. 2, the bit, generally indicated at 21, 

includes a forward end 24, and a shank 25 or rear end 

thereof.” ’567 patent col. 2 ll. 57–59; ’155 patent col. 3 ll. 

9–10 (“[A] cylindrical shank portion base 27 defining the 

rear end of the bit.”). Further consistent with the claim 

language that allows for the bit and bit holder to include a 

shank, the embodiments provide that “shank 25 [of the 

bit] fits within bore 40” of the bit holder the length of 

which “is determined partly by the length of the shank 25 

on bit 21,” ’567 patent col. 3 ll. 31–34, and that “[b]ore 49

[that runs through the bit block] is sized to receive the 

cylindrical shank 35 of the bit holder 22,” id. col. 3 ll. 45–

46. 

The intrinsic evidence therefore supports what is inherent in the claim language—the portion of the bit that 
NOVATEK, INC. v. THE SOLLAMI COMPANY 13

is “in” the first bore, as recited in the asserted claims, is 

the “shank.” In particular, the patents disclose a symbiotic relationship between the shank and bore, an interdependence where the existence of a bore necessitates the 

need for a shank to practice the invention as claimed. See

Response to Office Action, U.S. Patent App. No. 

11/509,349, at 9 (Oct. 21, 2009) (“[B]its used in road 

milling equipment have shanks that may slightly vary 

but would approximate 3/4 to 7/8 inch in diameter. Applicant is presently designing bit holders for trenching 

equipment wherein the bit shanks approximate 1-1/2 

inches in diameter. Mining equipment would utilize bits 

having larger shanks. Therefore, the exact numbers 

given for the bit holder bores and outer bit holder dimensions would vary depending upon the application . . . .”).2 

Accordingly, the patentee’s consistent usage and treatment of a limitation (here, “shank”) demonstrates the bit 

includes a shank. See, e.g., Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 990 (Fed. Cir. 2007) 

(construing the claim term “look ahead distance” to include a time limitation because “time is inherent in the 

calculation of ‘look ahead distance,’” as shown by the 

specification); Network Commerce, Inc. v. Microsoft Corp., 

422 F.3d 1353, 1360 (Fed. Cir. 2005) (limiting the term 

“download component” to a component capable of performing certain functions, based on the consistent usage in the 

specification). 

That the “bit” was construed as being “removable” 

from the “bit holder” was also not error. The district court 

reasoned that “if [the bit is] going to be mountable, it has 

2 The ’155 patent’s prosecution history, e.g., office 

action responses, referenced in this opinion are publicly 

available at Patent Application Information Retrieval, 

USPTO, http://portal.uspto.gov/pair/PublicPair (last 

visited Mar. 21, 2014).

 
14 NOVATEK, INC. v. THE SOLLAMI COMPANY

to be removable.” J.A. 308. Sollami argues that “removable” is not recited in the claim language, and thus, cannot 

be a limitation. 

The “removable” requirement is fully supported by the 

specification, which is “‘the single best guide to the meaning of a disputed term.’” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 

1582 (Fed. Cir. 1996)). Every relevant embodiment 

disclosed in the ’567 and ’155 patents refers to the removability of the bit from the bit holder. Indeed, the purpose 

of the invention is to provide a means for “quick removal” 

of the bit from the bit holder and/or the bit holder from 

the bit block during road milling, mining, and trenching. 

See, e.g., ’567 patent col. 1 ll. 54–57 (“[A]n object of the 

present invention, generally stated, is to provide an 

improved means for quickly mounting and/or removing a 

bit holder from its associated bit block.”). 

In the “Background of the Invention” section, the ’567 

patent explains that “a need has developed for providing 

ease of removability of bits in their bit holders, especially 

when the bit becomes worn and in need of replacement,”

and that “[i]t would be desirable to provide a more efficient means for allowing the removal of a bit from a bit 

holder or a bit block.” Id. col. 1 ll. 36–44. Throughout the 

specifications of both patents, the bit is described in no 

other way than allowing for removability: 

If the bit 21 should break at reduced diameter 

portion 29 adjacent the bottom flanged portion 28, 

a rod, punch, etc. (not shown) may be inserted into 

the bottom of the bore to push the shank [of the 

bit] out of the holder. 

Id. col. 3 ll. 34–38;

The notches 32a-32d, constructed in accordance 

with the present invention, allow for the quick 

removal of the bit 21 from the bit holder 22 by ap-
NOVATEK, INC. v. THE SOLLAMI COMPANY 15

plying a force having a substantial axial component thereto to the bottom side of the bit flange 

28. In the preferred embodiments there may be 

two, three or four notches or indents 32a-d (FIG. 

2, 32-d not shown) on the bit holder 22 positioned 

at 120 degree or 90 degree intervals, respectively, 

around the circumference thereof. Each notch 

may be straight vertically or slightly wider at surface 31 and narrows as the notch descends toward 

flange 33. While the use of the punch 55 on one 

notch is usually sufficient to remove the bit, the 

punch may be utilized sequentially in differing 

notches to balance the axial force, if necessary, to 

move the bit 21 out of the bit holder 22.

Id. col. 3 l. 63–col. 4 l. 10; 

Referring to FIGS. 7 and 8, the bit 21 and the second embodiments of the bit holder 60 and bit 

block 61 are shown in assembled condition with 

the exception of the modification in the bit block 

61 to provide a slot 85 positioned in the outer portion of bit block 61 to more easily allow the insertion of tools in the rear of the bit block 61 to drive 

the bit 21 from the bit holder 60. 

Id. col. 5 ll. 35–41;

As with the first embodiment of the present invention, the notch 65 in the front tapered portion 

of the bit holder 60 allows a chisel (not shown) or 

other such device to apply force on the back side of 

the bottom flanged portion 28 of bit 21 to drive the 

bit out of the bit holder.

Id. col. 5 ll. 49–53; 

A plurality of notches 37-37 (one shown) adjacent 

the front face 35 of the bit holder, provide an access area to the cylindrical base 24 of the tip 16

into which a prying tool may be positioned to force 
16 NOVATEK, INC. v. THE SOLLAMI COMPANY

out the base 24 of the bit 16 when the bit shank 

25 and spacer 17 are mounted in the bore 36 of 

the bit holder 18.

’155 patent col. 3 ll. 25–30. 

As shown most clearly in FIG. 2, the semicylindrical indent 33 in the spacer 17 provides for 

the insertion of a tool through the backside of bore 

36 which will accommodate punching out the 

spacer 17 and the bit 16 from the back of the assembly.

Id. col. 4 ll. 32–46. 

With this embodiment, the bit 16 (not shown) 

would be driven out of the bit holder 60 for replacement by inserting a rod to tool (not shown) in 

the bottom of bore 63 of the bit holder (shown 

most clearly in FIG. 3) . . . . 

Id. col. 5 ll. 15–19; 

The bulbous frustoconical portion 73 extends 

rearwardly beyond the cylindrical nose and includes a pair of notches 74, 75 therein that provide tool access to the back of a bit for easing 

removal of the bit from the bit holder.

Id. col. 5 ll. 44–48. It is apparent that removability of the 

bit from the bit holder is a feature of the invention as a 

whole, and not merely a preferred embodiment of the 

invention. See Regents of Univ. of Minn. v. AGA Med. 

Corp., 717 F.3d 929, 936 (Fed. Cir. 2013) (quoting Verizon 

Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 

1308 (Fed. Cir. 2007)) (“When a patent thus describes the 

features of the ‘present invention’ as a whole, this description limits the scope of the invention.”); Decisioning.com, 

Inc. v. Federated Dept. Stores, Inc., 527 F.3d 1300, 1309 

(Fed. Cir. 2008) (“The remote interface is a component of 

the invention itself, and the inventor’s use of ‘kiosk’ in 
NOVATEK, INC. v. THE SOLLAMI COMPANY 17

that manner does not merely describe a preferred embodiment of the invention. Rather, it describes the invention 

itself.”).

In addition, the prosecution history of the ’155 patent

supports the district court’s construction requiring removability of bits from bit holders. In explaining the 

purpose behind the wall thickness of a prior art bit assembly, the patentee declared that it was “to quickly 

remove the bit” and further specified that “[a]s many as 

320 bits may be removed and replaced in a day.” J.A. 253. 

The patentee also explained as “material” the bit assembly design of the ’155 patent that “aids in removal of the 

bit.” J.A. 254. These statements show the patentee 

remained cognizant of a key feature throughout the 

prosecution of the ’155 patent—removability of the bit.

Thus, the patentee’s references to “bit” consistently 

require that it is removable from the bit holder. Bell Atl. 

Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 

F.3d 1258, 1271 (Fed. Cir. 2001) (quoting Vitronics Corp., 

90 F.3d at 1582) (“[W]hen a patentee uses a claim term 

throughout the entire patent specification, in a manner 

consistent with only a single meaning, he has defined that 

term ‘by implication.’”). Accordingly, the district court did 

not err in construing the bit to be removable from the bit 

holder. 

Finally, Sollami argues that the district court erred in 

requiring the “shank” to be an “elongate cylindrical object” because the claim language does not provide for a 

particular shape of “shank.” As discussed above, claim 1 

of the ’567 patent requires the bit’s and bit holder’s shank 

portions to be “in” bores that run through the bit holder 

and bit block. The ordinary meaning of “bore” is defined 

as “a hole made or enlarged by boring” and/or “the inside 

diameter of a hole, tube, or hollow cylindrical object or 

device, such as a bushing or bearing, engine cylinder, or 

barrel of a gun.” Random House Unabridged Dictionary
18 NOVATEK, INC. v. THE SOLLAMI COMPANY

242 (2d ed. 2001); see also Merriam-Webster Dictionary, 

http://www.merriam-webster.com/dictionary/bore (last 

visited Mar. 21, 2014) (“Bore” defined as “a usually cylindrical hole made by or as if by boring” or “the long usually 

cylindrical hollow part of something (as a tube or gun 

barrel).”). A shank portion that fits in a “hole” that runs 

through the bit holder (and bit block) must be elongated 

and cylindrical. The claim language also provides that a

shank extends axially from an annular (shape of a ring) 

flange. ’567 patent col. 8 ll. 19–21 (describing the bit 

holder’s shank). Although Sollami contends that the 

“shank” can be of any shape, a structure that extends 

away from an annular flange must impart a shape that is 

generally cylindrical and no other. 

The specification supports this plain meaning. To 

begin, every figure and description of “shank” and “shank 

portion” illustrates a cylindrical structure. As an example, a portion of the ’567 patent’s specification reads: 

Flange 66 is annular in that a bore 71 runs axially 

through the bit holder in a more straight forward 

hollow cylindrical manner than the bore 40 which 

extends through the bit holder 22 of the first embodiment. The leading edge of bore 71 includes a 

countersink 72 adjacent to the flat annular leading surface 62 of the bit holder to receive a similarly shaped shank portion 25 on the bit 21 shown 

in FIG. 2.

Id. col. 4 ll. 45–51. Consequently, a “hollow cylindrical” 

bore receives “a similarly shaped shank portion” of the 

bit. 

Likewise, “[t]he shank is received and may axially rotate in a bit holder which is secured into a bit block that, 

in turn, is mounted on the drum.” Id. col. 1 ll. 21–23. In

order for a shank to axially rotate and to extend away 

from an annular flange, the “shank” must take on a 

cylindrical shape. While this latter example is in refer-
NOVATEK, INC. v. THE SOLLAMI COMPANY 19

ence to the shank portion of the bit holder, it is nevertheless depictive of the disclosed shape of the bit’s shank 

portions. Indeed, these and other examples disclosed in

the patents show that the claimed bore and shank portions are of similar cylindrical shape. E.g., id. col. 7 ll. 1–

34 (disclosing cylindrical “drive pins” that fit into the 

bores of the bit holder and bit block). The prosecution 

history similarly highlights the structurally complementary relationship between the shank and bore. See Response to Office Action, U.S. Patent App. No. 11/509,349,

at 8 (Oct. 21, 2009) (The Patent Office states a “standard 

interference-press fit” is indefinite. While it is true there 

are no present standards for hollow slotted shanks fitting 

in complementary bores . . . there are standards for interference fits for solid cylinders fitting into bores.”); see also

Response to Office Action, U.S. Patent App. No. 

11/509,349, at 20 (Aug. 6, 2007) (“[M]echanical engineering handbooks . . . include charts disclosing what dimensions heretofore known interference fits are for various 

diameters of solid cylinders. These are the [interference] 

fits that applicant refers to.”). Accordingly, the district 

court’s construction of “shank” as an “elongate cylindrical 

object” was correct.3 

B. The District Court Did Not Err in Granting Novatek’s 

Motion for Summary Judgment of Non-infringement 

Summary judgment decisions are reviewed under regional circuit law. SkinMedica, Inc. v. Histogen Inc., 727 

F.3d 1187, 1194 (Fed. Cir. 2013). The Tenth Circuit 

reviews the grant of summary judgment de novo. Robert 

3 Novatek raises alternative claim construction and 

non-infringement contentions. Appellee’s Br. 20 (“The 

‘Bit’ must be rotatable.”). Because we affirm the district 

court’s claim constructions and affirm the district court’s 

finding of non-infringement, this court need not consider 

Novatek’s alternative bases for affirmance. 

 
20 NOVATEK, INC. v. THE SOLLAMI COMPANY

v. Bd. of Cnty. Comm’rs, 691 F.3d 1211, 1216 (10th Cir.

2012). Summary judgment is appropriate “if the movant 

shows that there is no genuine dispute as to any material 

fact and the movant is entitled to judgment as a matter of 

law.” Fed. R. Civ. P. 56(a). At the summary judgment 

stage, we credit all of the nonmovant’s evidence and draw 

all justifiable inferences in her favor. Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344 (Fed. 

Cir. 2013) (internal quotation marks and citations omitted).

Based on its construction of “bit,” the district court 

found that Novatek was entitled to judgment as a matter 

of law because there were no genuine disputes as to any 

material fact that Novatek’s accused device did not have a 

bit including a shank. The district court additionally

found that the accused device did not include a bit 

mountable in a bore. Lastly, the district court found that 

the accused device did not have a bit that is removable 

from the bit holder. 

“To prove infringement, the patentee must show that 

an accused product embodies all limitations of the claim 

either literally or by the doctrine of equivalents.” Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340 

(Fed. Cir. 2013). “If any claim limitation is absent from 

the accused product, there is no literal infringement as a 

matter of law.” Id. Where a defendant seeks summary 

judgment of non-infringement, “nothing more is required 

than the filing of a . . . motion stating that the patentee 

had no evidence of infringement and pointing to the 

specific ways in which accused [products] did not meet the 

claim limitations.” Exigent Tech. v. Atrana Solutions, Inc., 

442 F.3d 1301, 1309 (Fed. Cir. 2006). The burden of 

production then shifts to the patentee to “identify genuine 

issues that preclude summary judgment.” Optivus Tech., 

Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 990 

(Fed. Cir. 2006).
NOVATEK, INC. v. THE SOLLAMI COMPANY 21

Novatek’s accused devices do not meet all the structural limitations of the asserted claims. First, the district 

court found that “the carbide bolster of the Novatek 

devices is not an elongate cylindrical object and is therefore not a ‘shank.’” Novatek, 2013 WL 1831995, at *5. An 

illustration of the PCD tip and carbide bolster is depicted 

below: 

Appellee’s Br. 13; Appellant’s Reply Br. 19; J.A. 334; see 

also J.A. 416. Sollami argues that the device “exhibits a 

cylindrical protrusion at its distal end which serves to 

anchor or secure the subassembly into the bore in the 

front end of the tool holder/steel body.” Appellant’s Reply 

Br. 18. According to Sollami, a trier of fact could reasonably conclude that the cylindrical protrusion at the distal 

end is an elongated cylindrical shank. We find Sollami’s 

contention persuasive. Whether the protrusion at the 

bottom portion of the carbide bolster is sufficiently “elongate” and “cylindrical” are disputed. To the extent the 

district court’s decision was based on Novatek’s lack of a 

“shank” or an “elongate cylindrical object,” it was error. 

The district court nonetheless found no genuine dispute as to whether Novatek’s accused device met the bit 

“mountable in a bore” limitation of the asserted claims. 

In particular, the district court determined that “even if 

the carbide bolster comprises a shank, the carbide bolster 

nevertheless is not mountable in a bore.” Novatek, 2013 
22 NOVATEK, INC. v. THE SOLLAMI COMPANY

WL 1831995, at *5. Although Sollami disputes the district court’s determination that Novatek’s device does not 

include a “bit mountable in a bore,” its arguments turn on 

issues of claim construction—whether the shank portion 

of the bit and the corresponding bore are cylindrical and 

whether the shank portion fits in a bore. Because the 

district court correctly interpreted “shank” to be cylindrical (and in turn, the bore to be cylindrical), many of 

Sollami’s arguments as to whether Novatek’s device has a 

“bit mountable in a bore” cannot stand. 

With respect to any remaining argument on this 

point, the following illustrations of Novatek’s accused 

device are instructive:

Appellee’s Br. 15; J.A. 337; see also J.A. 416. As shown in 

these illustrations, the accused devices do not feature a 

bit “in” a bore that runs through the bit holder. Sollami’s 

contention that the “concave opening in the front portion 

of the steel body/bit holder” constitutes a “complex geometry through hole” is unconvincing. Appellant’s Reply Br. 

19–20 (quotation marks and citation omitted). The claim 

language requires a bore that runs through the bit holder, 

and the shank is required to be “in” this bore. As the 

district court found, however, it is undisputed that the 

carbide bolster is brazed directly to the top of the steel 
NOVATEK, INC. v. THE SOLLAMI COMPANY 23

body and no corresponding shank portion is in a bore. 

Novatek, 2013 WL 1831995, at *5. Accordingly, there is 

no genuine dispute as to whether Novatek’s carbide 

bolster mounts in the bore of the steel body; Novatek’s 

carbide bolster lacks a bore in which a shank is mounted 

as the asserted claims require. 

The district court was also correct in finding that the 

accused device’s PCD tip with its carbide bolster is not

“removable” from the steel body, and therefore, fails to 

meet the “removable” construction of the “bit” limitation. 

Novatek, 2013 WL 1831995, at *6. The district court 

considered “the brazed attachment to be analogous to a 

rivet or laminate, which are ‘meant to remain permanent 

[and] unremovable unless one is bent on breaking the 

permanent structure apart,’ as opposed to a screw, for 

example, which is ‘meant to be unscrewed [or] removed.’” 

Id. (quoting K2 Corp. v. Salomon S.A., 191 F.3d 1356, 

1365 (Fed. Cir. 1999)). The accused device’s brazed 

attachment of the carbide bolster to the steel body is 

shown below:

Appellee’s Br. 18; J.A. 339; see also J.A. 415. 

It is undisputed that Novatek’s carbide bolster is 

brazed to a steel body. Sollami argues that the carbide 

bolster is nevertheless “removable” from the steel body, 

requiring merely the application of heat to dissolve the 

brazed joint; a process Sollami characterizes as non-
24 NOVATEK, INC. v. THE SOLLAMI COMPANY

destructive and having no adverse effects to the components. Therefore, despite the need to melt the braze joint, 

Sollami contends that it does not render the PCD 

tip/carbide bolster subassembly not “removable.” These 

contentions are unpersuasive. 

Sollami’s own expert declaration in the record shows 

the difficulty of removing the accused product’s carbide 

bolster from the steel body. In particular, Sollami’s 

expert depicts a process that includes using induction 

heat to melt the braze, removing and replacing the carbide bolster, and using induction heat to braze the new 

carbide bolster onto the steel body. J.A. 417–18. Although the accused device’s carbide bolster is removable, it 

cannot be said to be “removable” as the term is intended 

in the patents at issue.

Distinguishing from prior art, the ’567 patent states: 

“It would be desirable to provide a more efficient means 

for allowing the removal of a bit from a bit holder or a bit 

block.” ’567 patent col. 1 ll. 42–44 (emphasis added). Also, 

referring to an embodiment as depicted in Figure 1, the 

specification recites: “The notches 32a-32d, constructed in 

accordance with the present invention, allow for the quick 

removal of the bit 21 from the bit holder 22 by applying a 

force having a substantial axial component thereto the 

bottom side of the bit flange 28.” Id. col. 4 ll. 64–67 (emphasis added). Further, “providing ease of removability of 

bits in their bit holders” is described as a “need” that the 

patent addresses. Id. col. 1 ll. 36–37 (emphasis added). 

“Quick removal” providing “ease of removability” is depicted by embodiments disclosing, e.g., “drive pins” that 

push bits out of bit holders and bit holders out of bit 

blocks, id. col. 7 ll. 1–34, and the use of “interference fit,” 

as opposed to utilizing retaining nuts or clips for the 

purpose of keeping the bit assembly together and the 

components in place, id. col. 1 ll. 62–64, col. 5 ll. 53–55. 

The process of heating and melting the brazed joint of 
NOVATEK, INC. v. THE SOLLAMI COMPANY 25

Novatek’s device to render it removable is not the type of 

removability the patents contemplate. 

K2 Corp. v. Salomon S.A. is instructive. There, this 

court recognized that while claim terms such as “permanently” can be interpreted to require infinite duration in 

the metaphysical sense, “claim construction is firmly 

anchored in reality by the understanding of those of 

ordinary skill in the art.” K2 Corp., 191 F.3d at 1365. We 

accordingly held that a rivet or a laminate was sufficiently permanent because it “is meant to remain permanent, 

unremovable unless one is bent on breaking the permanent structure apart.” Id; see High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1555

(Fed. Cir. 1995) (finding the “rotatably coupled” limitation 

in the asserted claim was not met by the accused product 

where the accused product had to be altered—by loosening the set screws—in order for it to rotate).

Here, adopting Sollami’s position would detract from 

“removable” as a skilled artisan would interpret “bit” 

based on the patents’ disclosures. Anything with adequate force can be “removable,” but such unbounded 

interpretation of the term flounders on the shoals of 

reality. No reasonable jury would find “removable” as 

construed by the district court to read on Novatek’s accused device. Accordingly, the district court was correct 

to find that there are no genuine disputes whether Novatek’s accused device includes a bit that is removable.

CONCLUSION

Based on the foregoing, the district court’s claim construction of “bit,” “bit holder,” and “shank” and its summary judgment of non-infringement are affirmed. 

Novatek’s accused device does not meet the “bit” limitation of the asserted claims. 

AFFIRMED
NOTE: This disposition is nonprecedential

United States Court of Appeals 

for the Federal Circuit ______________________ 

NOVATEK, INC.,

Plaintiff-Appellee,

v.

THE SOLLAMI COMPANY,

Defendant-Appellant.

______________________ 

2013-1389

______________________ 

Appeal from the United States District Court for the 

District of Utah in No. 11-CV-1112, Judge David Nuffer.

______________________ 

MOORE, Circuit Judge, dissenting.

I respectfully dissent from the majority’s decision to 

affirm the district court’s judgment of noninfringement. 

Because the district court erred in its claim construction, I 

would reverse and remand. 

I. IS “BIT,” USED ONLY IN THE PREAMBLE, A STRUCTURAL 

LIMITATION? 

I disagree with the majority that “bit” limits the 

claims of U.S. Patent No. 6,371,567 (’567 patent). It is 

correct that the terms “bit holder” and “bit block,” which 

first appear in the preamble of the ’567 patent, are claim 

limitations. The body of the claim itself expressly recites

these structures. However, the fact that one structure 
2 NOVATEK, INC. v. THE SOLLAMI COMPANY

recited in the preamble is a limitation by virtue of providing antecedent basis for a later reference does not convert 

the entire preamble into a limitation. The bit is a structure distinct from the bit holder or bit block. The bit itself 

appears only in the preamble in a statement of intended 

use. It does not appear in the body of any claim in the 

patent. And the invention claimed in the ’567 patent is 

structurally complete without the bit. Claim 1 is to a bit 

holder, and the elements in the body of the claim define 

the structure of the bit holder and the manner in which 

the bit holder interacts with the bit block. But claim 1

does not require the presence of a bit. It never mentions 

the bit itself or even delineates how the bit fits into the 

claimed bit holder. There is no doubt that the bit is part 

of the assembly disclosed in the ’567 patent for use in road 

milling, trenching, and mining. Neither the assembly nor 

the bit, however, is claimed in the ’567 patent. The patentee directed the ’567 patent claims solely to the bit 

holder and its interaction with the bit block. 

I find nothing in the specification to indicate that the 

bit is necessary to give life, meaning, and vitality to the 

claimed bit holder and block. See Catalina Mktg. Int’l, 

Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 

2002). The title of the ’567 patent is “Bit Holders and Bit 

Blocks,” not “bits.” ’567 patent, at [54]. The abstract 

discusses “[a]n improved bit holder with its mating bit 

block,” but again does not mention a “bit” as a separate 

structural entity. Id. at [57]. Finally, the face of the ’567 

patent displays Figures 3 and 9, which do not depict a bit. 

The specification describes Figures 3–8 as “a second 

embodiment of the bit holder and bit block constructed in 

accordance with the present invention,” id. col. 4 ll. 11–13, 

and Figures 9–10 as “a third embodiment of the bit holder 

of the present invention,” id. col. 5 ll. 56–57. Although 

Figures 1 and 2, which presumably refer to the first 

embodiment, depict bits, the bits are not described as a 

part of the “present invention.” I thus conclude the word 
NOVATEK, INC. v. THE SOLLAMI COMPANY 3

“bit,” used only in the preamble, is not a limitation of the 

’567 patent claims. Because the district court’s decision

that the ’567 patent is not infringed was based on its 

erroneous conclusion that “bit” is a claim limitation, I 

would reverse its grant of summary judgment of noninfringement as to the ’567 patent. 

With regard to U.S. Patent No. 7,883,155 (’155 patent), I agree with the majority that the preamble term 

“bit” limits the scope of the claims, but not for the reasons 

that the majority provides. The ’155 patent, in contrast to 

the ’567 patent, is directed not to bit holders and blocks 

that are a “part of an assembly,” but rather to the “assemblies” or “bit assemblies” themselves. See ’155 patent, 

at [54], [57]; claims 1–4; cf. ’567 patent claim 1 (emphasis 

added). I read the “assembly” in the preamble of claim 1 

of the ’155 patent as a claim limitation that delineates the 

structural elements of the claim. Each dependent claim of 

the ’155 patent expressly recites “[t]he assembly as defined in claim 1 . . . .” ’155 patent claims 2–4. Were the 

word “assembly” not a limitation of claim 1, the claims 

that depend from it would lack a proper antecedent basis 

for the “[t]he assembly as defined in claim 1.” See, e.g., 

Rapoport v. Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001). 

Moreover, the dependent claims of the ’155 patent expressly add a further limitation to “the assembly,” not to 

the bit holder (as the ’567 patent does). 

The specification confirms this conclusion. It indicates that the assembly is the present invention. See ’155 

patent col. 4 ll. 64–65 (“the assembly 15 of the present 

invention”); col. 5 l. 3 (“the bit assembly of the invention”); 

col. 2 ll. 59–61 (“Referring to FIG. 1, a bit, bit holder and 

bit block assembly, generally indicated at 15, constructed 

in accordance with the present invention, includes a bit 

. . .”). I would thus conclude that the “assembly” recited

in the preamble is a limitation of the ’155 patent claims. 

And claim 1 expressly defines the assembly as “including 

a bit, bit holder, and bit block.” For these reasons, I 
4 NOVATEK, INC. v. THE SOLLAMI COMPANY

conclude that bit is a structural limitation of the claims of 

the ’155 patent. 

II. WHAT IS THE PROPER CONSTRUCTION OF “BIT”? 

Although I agree that the term “bit” in the preamble 

of claim 1 of the ’155 patent is a limitation, I would still 

reverse the grant of summary judgment of noninfringement with respect to this patent. The district court’s 

construction of “bit” is in error. The district court, and 

now the majority, improperly read three limitations into 

the bit—that the bit is removable, that the bit includes a 

shank that is cylindrical, and that the bit is mounted in a

cylindrical bore. 

A. “Removable” bit

The plain and ordinary meaning of “bit” does not require removability. A “bit” is simply an object comprising 

a tip and a shank. That is the plain meaning and the 

definition expressly given by the patentee. See ’155

patent col. 1 l. 27 (“The bits utilized include a tip and a 

shank.”). A bit can be brazed onto its holder. See Maj. 

Op. at 22–23. This lack of removability makes it no less a 

bit. 

We only deviate from the plain and ordinary meaning 

in instances of lexicography or disavowal. Thorner v. 

Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 

(Fed. Cir. 2012). The majority points to the same definition discussed above: “[t]he bits utilized include a tip and 

a shank.” See Maj. Op. at 12. There is not, nor does the 

majority point to, any other lexicography on this term. 

The majority concludes that the claimed bits ought to be 

limited to removable bits because “[t]he removability 

requirement is fully supported by the specification.” Id.

at 14. With all due respect, that is not the standard we 

apply. If it were, every limitation in the preferred embodiments would be read into the claims. 
NOVATEK, INC. v. THE SOLLAMI COMPANY 5

There have been cases from this court that conclude 

that a claim is limited by a statement in the specification 

when the patentee has indicated clearly and unmistakably that he intended to so limit his claims—i.e., disclaimer

cases. For example, we found disclaimer when the specification indicated that for “successful manufacture” a 

particular step was “require[d].” Andersen Corp. v. Fiber 

Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir. 2007)

(“Those statements are not descriptions of particular 

embodiments, but are characterizations directed to the 

invention as a whole.”). We found disclaimer when the 

specification indicated that the invention operated by 

“pushing (as opposed to pulling) forces,” and then characterized the “pushing forces” as “an important feature of 

the present invention.” SafeTCare Mfg., Inc. v. TeleMade, Inc., 497 F.3d 1262, 1269–70 (Fed. Cir. 2007). We 

found disclaimer when the patent repeatedly disparaged 

an embodiment as “antiquated,” having “inherent inadequacies,” and then went on to detail the “deficiencies 

[that] make it difficult” to use. Chicago Bd. Options 

Exch., Inc. v. Int’l Sec Exch., LLC, 677 F.3d 1361, 1372 

(Fed. Cir. 2012) (“[T]he specification goes well beyond 

expressing the patentee’s preference . . . and its repeated 

derogatory statements about [a particular embodiment]

reasonably may be viewed as a disavowal.”). We have 

also held that disclaimer applies when the patentee 

makes statements such as “the present invention includes 

. . .” or “the present invention is . . . ” or “all embodiments 

of the present invention are . . . .” See Regents of Univ. of 

Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 

2013); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 

1312, 1316–19 (Fed. Cir. 2006); SciMed Life Sys., Inc. v. 

Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–

44 (Fed. Cir. 2001). There is no such disclaimer here. 

Nowhere does the ’155 patent describe removability of 

the bit as a feature of the “present invention” or a feature 

“essential” to the invention. In fact, the ’155 patent is 
6 NOVATEK, INC. v. THE SOLLAMI COMPANY

almost completely devoid of any statement about removability of the bit. The Background of the Invention section 

discusses four objects of the present invention: (1) improved means for removing a bit holder from its bit block; 

(2) a more efficient assembly that requires less power; (3) 

providing multiple means for retaining a bit holder in a 

bit block; and (4) providing a tool that allows easy removal of the bit holder from the bit block. See ’155 patent col. 

2 ll. 1–20. To the extent that removability is discussed at 

all, it is the removability of the bit holder from the bit 

block, not the removability of the bit from its bit holder. 

There are only two mentions of removability of the bit 

from the bit holder in the entire patent. The first is 

where the patent discusses, not the present invention, but 

rather a single piece of prior art: “U.S. Patent 5,374,111 

discloses [a tool] . . . to help remove a bit from the bit 

block. It would be desirable to provide a more efficient 

means and multiple means for allowing the removal of a 

bit holder from the bit block.” Id. col. 1 ll. 56–61. Clearly, 

this statement does not limit the claimed invention to 

removable bits. It explains that the present invention 

focuses on removal of bit holders from bit blocks. The 

only other mention of removability of a bit is in the third 

discussed embodiment: “Referring to Figures 7, 8, and 9, 

a third embodiment of a bit holder is shown . . . . [The bit 

holder] includes a pair of notches 74, 75 therein that 

provide tool access to the back of a bit for easing removal 

of the bit from the bit holder.” Id. col. 5 ll. 40–48. The 

fact that the design of the bit holder in this one embodiment facilitates removal does not morph removability into 

a requirement. Additionally, there are five embodiments 

in the patent, and none of the others require, show, or 

even mention removability of the bit. The majority’s 

claim that every relevant embodiment disclosed refers to 

the removability of the bit from the bit holder is inaccurate. 
NOVATEK, INC. v. THE SOLLAMI COMPANY 7

To be sure, removability of the bit holder from the bit 

block is an important aspect of the present invention and 

is mentioned more than a dozen times in the patent. But 

this is entirely different from removability of the bit from 

the bit holder, which is mentioned only once in conjunction with one of five embodiments. The fact that my 

watch must be removable from my arm doesn’t mean the 

hands on the watch need to be removable from the watch. 

There is nothing in this patent which suggests that removability of the bit is important, much less a critical or 

essential part of the claimed invention. 

Finally, to the extent that the majority finds disclaimer in the prosecution history, I do not agree. None of the 

multiple office actions or responses ever discusses removable bits. There was, however, a declaration filed by the 

inventor during the prosecution of the ’155 patent that 

mentions removable bits. The PTO rejected claims as 

obvious over Beebe in combination with O’Neill or Topka. 

The declaration states that in Beebe (the prior art reference), the sleeve has a “wall material thickness of between 0.040 and 0.045. The reason [for] this wall 

thickness is to be able to quickly remove the bit. As many 

as 320 bits may be removed and replaced a day.” J.A. 

253. The patentee criticizes this design because the thin 

walls would “shear under even a moderate load.” Id. The 

patentee further explains that “the present application is 

a bit holder that is stiffer [due to thickness] and therefore 

holds the bit in the proper position for heavy operating.” 

Id. None of this supports the idea that the present invention is limited to a holder with removable bits. The 

declaration does, however, go on to distinguish the Warren reference because Warren’s bit holder “has a wider 

notch at the rearward portion and a narrower width at 

the front face. The present application is the reverse. 

This difference is material because the narrower rearward 

portion prevents the clogging of the notch and aids in 

removal of the bit.” J.A. 254. This is not a clear and 
8 NOVATEK, INC. v. THE SOLLAMI COMPANY

unmistakable disclaimer of any bit that is not removable. 

The fact that the present design of the bit holder might 

permit or aid in removability of bits does not require that 

the bits be removable. This is a statement that would 

support the notion that the inventor contemplated removable bits, but it is a far cry from requiring removable bits. 

It is not an object of the invention of the ’155 patent to 

provide removable bits. Removability of the bits is only 

mentioned in one of the five disclosed embodiments. It is 

not described as important, essential, required, or “the 

present invention.” None of the descriptions of the other 

embodiments and none of the figures of the other embodiments even hint at removable bits. Respectfully, this 

patent is directed to bit holders that are removable from 

bit blocks. The bit, however, does not have to be removable from the bit holder. I would find for the patentee, and 

not read the removability limitation into the claim. 

B. “Mountable in a Bore”

I agree with the majority that the bit must be 

“mountable in a bore,” but not because this is somehow 

inherent in the word “bit.” The claims contain a limitation that the bit is “mountable in a first bore through said 

bit holder.” ’155 patent claim 1. This limitation requires 

that the bit be mountable in a bore.

The majority notes, but does not appear to adopt, the 

district court’s reasoning that if a bit is “mountable” it has 

to be “removable.” See J.A. 308 (“[T]he only reason really 

on this one that I adopted the removability is because I 

think if it’s going to be mountable, it has to be removable.”) Mounting is about attachment, not removal. When 

one mounts a bit to a bore, one attaches it or fixes it to the 

bore. A bit that is brazed onto its bore is still mounted in 

the bore. Likewise, a diamond is mounted in its setting. 

Removability is not a condition that necessarily follows 

from mounting. 
NOVATEK, INC. v. THE SOLLAMI COMPANY 9

C. “Cylindrical” shank and bore

The majority also errs in its construction of the 

“shank” portion of the bit as an “elongate cylindrical 

object.” There is nothing inherent in the word “shank” 

that requires a cylindrical shape as opposed to, for example, the frustoconical shape of the accused structures’ 

carbide bolster (which, the patentee argues, is its shank). 

The plain and ordinary meaning of shank is “[t]hat part of 

an instrument, tool, or other thing, which connects the 

acting part with a handle or other part.” J.A. 437. It is 

true that one disclosed embodiment—the discussion of 

Figure 1 of the ’155 patent—has a bit with a cylindrical 

shank. The only time the shank of the bit is ever described at all is in the following sentence of the patent: 

“Aft of the cylindrical base 24, the tip narrows to a cylindrical shank 25, which, in this embodiment, includes a Cshaped retainer 26 there around and a cylindrical shank 

portion base 27 defining the rear end of the bit.” ’155 

patent col. 3 ll. 7–10 (emphasis added). That is the only 

time in the entire patent that the shape of the shank of 

the bit is ever mentioned. Given that shanks in general 

can have any shape, this one sentence does not clearly 

limit the claimed bit to a bit with a cylindrical shank. 

There is nothing in this discussion that even suggests 

that the cylindrical shape is important, essential, useful,

advantageous, or necessary to the invention. 

To be clear, there are other portions of the patent that 

discuss the cylindrical shank of the bit holder. In fact, 

claim 1 itself covers a “generally cylindrical bit holder 

shank.” Id. claim 1. This is not the shank of the bit, nor 

does the bit shank mate with the bit holder shank such 

that one would expect them to be similarly shaped. They 

are completely separate parts. 

The majority’s requirement that the shank be cylindrical is intertwined with its conclusion that the bore be 
10 NOVATEK, INC. v. THE SOLLAMI COMPANY

cylindrical. Maj. Op. at 18; see Novatek, Inc. v. Sollami 

Co., No. 2:11-cv-00180, 2013 WL 1831995, at *5 (D. Utah 

Apr. 30, 2013) (“Because the shank . . . [is] ‘in the bore,’ 

and because the shank is cylindrical, the bore must also 

be cylindrical.”). Again there is no language anywhere 

that suggests that the cylindrical shape given to the 

disclosed embodiment is important, “the present invention,” or an essential feature. If the plain and ordinary 

meaning of bore required a cylindrical shape, then there 

would be no need for the patent to refer to a “cylindrical 

bore,” as it does at one place in the patent. ’155 patent 

col. 3 l. 64. The very dictionaries relied upon by the 

majority indicate only that bores are “usually cylindrical.” 

In short, bores are not required to be cylindrical. 

* * * * *

To the extent “bit” is a claim limitation, it is to be given its plain and ordinary meaning, which does not require 

removability or a cylindrical shank and bore. There is 

nothing in the record to indicate that the patentee intended to deviate from the plain and ordinary meaning by 

defining the word “bit,” disavowing its scope, or even 

suggesting that these three features are critical to the 

claimed invention. The majority improperly deprives the 

patentee of the breadth of the claims by reading limitations from particular embodiments in the specification 

into its construction of “bit.” I would reverse the summary judgment of noninfringement and remand for a jury 

trial on the disputed issues of fact.