## United States Court of Appeals for the Federal Circuit

04-1220

THE GILLETTE COMPANY, Plaintiff-Appellant,

v.

ENERGIZER HOLDINGS, INC.,

Defendant-Appellee.

John E. Nathan , Paul, Weiss, Rifkind, Wharton & Garrison LLP, of New York, New York, argued for plaintiff-appellan t. With him on the brief were Lewis R. Clayton , Daniel J. Leffell , Steven C. Herzog , and Kerry L. Quinn . Of counsel on the brief were William L. Patton , Jane E. Willis , Dalila A. Wendlandt , and Levina Wong , Ropes & Gray LLP, of Boston, Massachusetts. Randall G. Litton , Price, Heneveld, Cooper, De witt & Litton, of Grand Rapids, Michigan, argued for defendant-appellee. With him on the brief was Matthew J. Gipson . Of counsel on the brief were Richard D. Rochford, Jr. and Jason C. Kravitz , Nixon Peabody LLP, of Bo ston, Massachusetts, and Michael F. Orman , of Rochester, New York. Appealed from: United States District C ourt for the District of Massachusetts Judge Patti B. Saris

## United States Court of Appeals for the Federal Circuit

04-1220 THE GILLETTE COMPANY, Plaintiff-Appellant,

v. ENERGIZER HOLDINGS, INC., Defendant-Appellee.

__________________ _________ DECIDED: April 29, 2005

__________________ _________ Before MICHEL, Chief Judge , ∗ ARCHER, Senior Circuit Judge , and RADER, Circuit Judge

. Opinion for the court filed by Circuit Judge RADER. Dissenting opinion filed by Senior Circuit Judge ARCHER. RADER, Circuit Judge

. The Gillette Company (Gillette) owns U. S. Patent No. 6,212, 777 (issued April 10, 2001) (the ’777 patent) for wet-shave safety ra zors with multiple blades. Gillette sued Energizer Holdings, Inc. (Energizer) in the Un ited States District Court for the District of Massachusetts alleging Energizer’s QUATTR O®, a four-bladed wet-shave safety razor, infringes certain claims of the ’777 patent. Th e district court denied Gillette’s motion for a preliminary injunction because it found that the claims of the ’777 patent covered only a three-bladed razor, and, consequently, Gillette did not show a reasonable likelihood of success on its claim of liter al infringement by Energize r’s four-bladed razor. The Gillette

∗ Paul R. Michel assumed the posit ion of Chief Judge on December 25, 2004.Co. v. Ener gizer Holdings, Inc. , No. 03-11514-PBS (D. Mass. Jan. 15, 2004)

. Because the district court erred in construing the cl aims of the ’777 patent to cover only threebladed safety razors, this court vacates and remands.
I. The ’777 patent claims a di sposable safety razor with a group of blades, each blade plac ed in a particular geometric position re lativ e to the other blades of the group. Prior art razors with multiple blades shav ed closer to the skin than two-bladed razors but had “a serious det rimental influence on ot her blade unit charac teristics, most notably the drag f o rces experienced when the blade unit is moved ov er the skin, with the consequence that the overall performance of the blade unit [was] markedly inferior [compared to two-bladed razors] despite a cl oser shave being obtained.” ’777 patent, col. 1, ll. 24-29. The invent ive contributions of t he ’777 patent are varying pr ogressively the exposure and spacing parameters of the blades to overcome the undesired drag force s produced by razors with multiple blades, not simply limiting the number of blades t o three. “The blade exposure is defined to be the perpendicular distance or height of the blade edge measured with respec t to a plane tangential to the skin contacting surfaces of the blade unit elements next in front of and next behind the edge.” Id. at col. 1, ll. 50- 59. Specifically, the blade c l osest to the guard (leading blade) is positioned with a negative expos ure to (i.e. recessed below) its tangential plane. Id

. The blade closest to the cap (trailing blade) is positi oned with a pos itive exposure t o ( i.e. , exte nding abov e ) its tangential plane. Id. A blade in between the leading and trailing blades is positioned with an exposure wit h respect to its tangentia l plane in between the expos u res of the

04-1220 2leading and trailing blades with r e spect to their respec tive tangential planes. Id. at col. 2, ll. 28-40. The result is a gener ally “progr essive exposure” of th e blades with each of the identified blades shaving cl oser to the skin than the preceding blade. This b l ade configuration reduces the drag f o rces produced by the bla des and equaliz es the work performed by each s u ccessive blade. Id. at col. 1, ll. 63-66. Additionally , the span marks the distance between s u ccessive blades . A progressive span would involve gradually increasing the s pacing between the guard and the leading blade, each successive blade, and the tr ailing blade and the cap. See, e.g. , id. at col. 2 , ll. 16-20. The progression of the blade sp an lik ewis e reduces frictional drag, leading to a close and comfortable shave. Claim 1 of the ’777 patent s hows this progres sive e x pos ure innovat i on in s having technology:
1. A safety razor blade unit comp rising a guard, a cap, and a group of first, second, and third blades wit h parallel sharpe ned edges located between the guard and cap, the firs t blade defining a blade edge nearest the guard having a negative exposure not less than -0.2 mm, and the third blade defining a blade edge near est the c ap having a positive exposure of not greater than +0.2 mm, said sec ond blade defining a blade edge having an exposure not less t han the exposure of t he first blade and not greater than the exposure of the third blade. ’777 patent , col. 4, ll. 5-14. The Energizer QUATTRO® razor is th e accused infringing device. The QUATTRO ® employs a cartridg e with a guard, a cap, and f our blades. The leading blade h a s a negative exp o sure o f not less than -0.2 mm; the trailing blad e has a positiv e exposure of not greater than +0.2 mm. T he QUATTRO® further has two middle blade s with essent ially the same exposure, which is greater than that of the leading blade and less than that of the trailin g blade. In anticip ation of En e r gizer’s la unch of t h e

04-1220 3QUATTRO ® , Gillette filed a pa tent infring e ment suit asserting that the QUATT R O® infringed t he cla i ms of the ’7 77 patent. Shortly thereafter, Gillette moved for a preliminary injunction to enjoin Energizer from making and selling the QUATTRO®. Follo wing a two-day hearing, the district court denie d Gillette’s motion, fi nding that Gillette had not shown a reasonab le like liho od of succe ss on its claim of literal infringement. Gillette , slip op. at 1. The trial c ourt primarily bas e d its decision on the conclus i on that the terms “fir st,” “second,” and “third” of cl aim 1 limited the scope of that claim to a razor having solely three blades. Id. , slip op. at 11. Gillette now appeals, an d this court has jurisdiction under 28 U.S.C. § 1292(c)(1).
II The grant of a prelim inary injunction under 35 U.S.C. § 283 is within the discretion of the district cour t. This court reviews a pre lim inary injunction decision for an abuse of discretion. Novo Nordisk of N. Am., Inc. v. Genentech, Inc. , 77 F.3d 1364, 1367 (Fed. Cir. 1996)

. “An abuse of discretion may be established by showing that the court made a clear error of ju dgment in weighing relevant factors or exercised it s discretion based upon an error of law or clearly erroneous factual findings.” Id. As the moving party, Gillette is e n titled to a preliminary injunction if it shows: (1) a reasonable likelihood of success on the merits of its cl aims; (2) irreparable harm if an injunction is not granted; (3) a balanc e of har dships tipping in its favor; and (4) th e injunction’s favorable impac t on the public interest. Reebok Int’l Ltd. v. J. Baker, Inc. , 32 F.3d 1552, 1555 (Fed. Cir. 1994)

. In order to demonstrate a lik elihood of success on the merits, Gillette has to show that, in li ght of the presumptions and burde n s that will inhere at trial on the merits, (1) Energizer likely infringes the ’777 patent , and (2) the

04-1220 4claims of the ’777 patent will likely with stand Energizer’s c hal lenges to validity. Amazon.com, Inc. v. Barnesandnoble.com, Inc. , 239 F.3d 1343, 1350 (Fed. Cir. 2001)

. While E n e r gizer raised issues of valid ity in opp o s ition to Gillette’s motion for a preliminary injunction , the district cour t held that Gillette did not de monstrate a reasonable likelihood of success on the thres hold issue of literal infringement. Therefore, the trial court did no t address the validity is sues. Accordingly, th e validity of the ’777 patent is not before this court on appeal. To review Gillette’s likelih ood of success on its literal infringe ment claim, this court, as the trial court before it, mu st first determine the meaning and the sc ope of the claims on this preliminary record. See Oakley, Inc. v. Sunglass Hut Int’l , 316 F.3d 1331, 1339 (Fed. Cir. 2003) (“An assessment of the likelihood of infringement, like a determination of patent infringe ment at a later st age in litigation, requires a two-step analys is. First, the court determines the scope an d meaning of the patent claims asserted. Second[], the properly construed claims are compared to the allegedly infringing device.”) (internal quotations, alterations, and citations omitted). “In construing claims, the analytical focus must begin and r e main cent ered on the language of the claims themselves, for it is that language that the pat entee chos e to use to particularly point out and distinc t ly claim th e subject matter which the patentee regards as his invention.” Interactive Gift Ex press, Inc. v. Compuserve, Inc. , 256 F

. 3d 1323, 1331 (Fed. Cir. 2001) (quoting 35 U.S.C. § 112, ¶ 2); see als o SRI Int’l v. Matsushita Elec. Corp. , 775 F.2d 1107, 1121 n.14 (Fed. Cir. 1985) ( en banc ) (“Specifications teach. Cla ims claim.”).

04-1220 5Claim cons truction requires this court to place the claim language in its proper technologic al and temporal c ontext. The best tools for th is enterprise are the variou s forms of intrinsic evidence and, w hen appr opriate, extrinsic evidence. See Vitronics, Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir . 1996). The intrins i c evidenc e, “ i.e. , the patent itself, incl uding the claims, the s pecification and, if in evidenc e, the prosec ution history . . . is t he most signific ant s ource of the leg a lly operative meaning of dis puted c l aim language.” Id. (internal citation omitted); see also United Stat es v. Adams , 383 U.S. 39, 49 (1966) (“[I]t is fundamental that claims are to be construed in the light of the specifications and bot h are to be read wit h a v i ew to ascertaining the invention.”); As trazeneca v. Mutual Pharm. Co., Inc. , 384 F.3d 1333, 1336-37 (F ed. Cir. 2004) (“[E]videnc e intrinsic to the patent – particularly the patent’s specification, includ ing the inventors’ st atutorily-required writt en description of the invention – is the primary source for det ermining c l aim meaning.” (citing Be ll Atl. Network Servs., Inc. v. Co vad Communications Group, Inc. , 262 F.3d 1258, 1268 (Fed. Cir. 2001); Vitronics , 90 F.3d at 1582)). Apply i ng this case law, this court must determine, on this prelimin ary record, whether the language “c omprising . . . a group of first, se cond, and third blades” in the ’777 patent can enc ompass four-bladed s a fety razors (such as the QUATT R O®) or is limited to solely three- bladed safety razors. As explained below, this court discerns that claim 1 us es the “open” claim terms “compris ing” and “group of,” in addition to other language, to encompass subject matter bey ond a razor with only three blades

. Moreover, the spec ific ation’s focus on blade exposures and expres s reference to “blade

04-1220 6units with a plurality of blades,” ’777 pat ent, col. 1, ll. 3-6, shows as well that this invention covers razors with more than three blades. The objective of the invention of the ’777 pat ent is to reduce drag forces in safety razors with more than two blades. See id. at col. 1, ll. 24- 37. The ’777 patent accomplishes this objective by progressiv e ly increas ing the blade e x posure and the blade span. Id. at col. 1, ll. 37-59. Indeed, the s pecification specifically acknowledge s that it is not the three blades themselves wh ich so lve the prior art problem of detrimental drag forces, but instead the arrangement of three blades in a particular spatial configuration, stating “the nov el aspects of the present invention residing in the provision of three blades set in the blade unit set in particular dispositions with respect to each other and the guard and the cap. ” Id. at col. 3, ll. 16-19 (emphasis added). The written des cription lik e wise disc usses thes e parameters with r e spect to the relativ e positioning of each of the three blades at length at column 1, line 60 through column 2, line 40. These principles of progressive blade expos ure and progressive blade span could apply equally to four or five blades. Such a geom etri c arrangement of three, four, or even more blades will ac hie v e a close r shave and, at the same time, minimize excess drag. It may be that a four-bladed safe ty razor is a less preferred embodiment. A four-bladed razor costs more to build, r equires more parts, and adds more frictional drag compared to the three-bladed version. Nev e rtheless, a patentee typically c l aims broadly enough to c o ver less preferred em bodiments as well as more preferred embodiments, precisely to bloc k competitors from marketing le ss than optimal versions of the claimed invention.

04-1220 7Indeed, the language of cl aim 1 of the ’777 patent enc ompasses more than only three-bladed razors. At the outs e t, the ope n language of claim 1 embraces technology that may add features to devices ot herwise within the cl aim definition. Moleculo n Research Corp. v. CBS, Inc. , 793 F.2d 1261, 1271 (Fed. Cir. 1986). The claim uses two terms to show this open-ended meaning. The word “comprising” transitioning from the preamble to the body signa ls that the entire claim is presumptively open-ended. Crystal Semiconductor Corp. v. TriT ech Micr oelectronic s Int’l, Inc. , 246 F.3d 1336, 1347 (Fed. Cir. 2001); Innovad Inc. v. Microsoft Corp. , 260 F.3d 1326, 1333 (Fed. Cir. 2001). Because the patentee invoked this open-ended treatment in cl aim 1 of the ’777 patent, the scope of claim 1 encompass e s all safety ra zors satisfying the elements set forth in claim 1. T he addition of elements not reci ted in the c l aim cannot defeat infringement. See Crystal Semiconductor , 246 F.3d at 1348 (“[T]he transit ion ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim do e s not exclude additional, unrecited elements. KCJ Corp. v. Kinetic Conc epts, Inc. , 223 F.3d 1351, 1356 (Fed. Cir. 2002).”). The claim element identif ying the blades likewise us es another presumptively “open” claim term – “group of.” ’777 patent, co l. 4, l

. 6. At the outset, the language “group of” does not place any limits or clos ed implications on the el ements following this broad des ignation. Claim drafters often use the ter m “group of” to signal a Markush
group. A Markush group lists s pecified alt e rnat ives in a patent claim, typically in the form: a member selected from the gr oup c onsisting of A, B, and C. See Manual of Patent Examining Procedure § 803.2 (2004). A Markush gr oup by its nature is clos ed. If an applic ant tries to claim a Markush group without the word “cons isting,” the PTO will

04-1220 8insist upon the addition of this word to ens ure a closed meaning. Thus, in order to “close” a Markush group, the PTO insists on t he transition phrase “group consisting of.” See Abbot t Labs. v. B a xter Phar m. Prods., Inc. , 334 F.3d 1274, 1280 (Fed. Cir. 2003). Without the word “consisting” the simple phrase “group of” is presumptively open. If intending t o limit the claimed inv ention to a three-bladed razor, the patent dr after would not have used the words “group of.” Rather, the drafter would have used the word s “group consisting of,” or the si mple formulat ion “and first, second, and third blades .” Because the drafter chose to use the open te rm “group of,” additional members in the element “group of . . . blades” will not defeat infringement. In other words, a razor with two “second blades,” as in the QUATT R O®, will st ill fall within the lit eral la ng uage of th e claim. The element at issue requires:

a group of first, second, and third blades with parallel sharpened ed ges located bet ween the guard and c ap, the first blade defining a b l ade edge nearest the guard having a negative ex pos ure not less t h an -0.2 m m , and the third blade defining a blade edge near est the cap having a positive exposure of not greater than +0.2 mm, said second blade defining a blade edge hav ing an expos ure not les s than the exposure of the first blade and not greater than the exposur e of the third blade. ’777 patent , col. 4, ll. 5-14 (e mphases added). This element clearly defines a “group of blades” as a subset of the total number of blades in the razor, and specifically identifies which blades of the razor are the “first, second, and third” blades of the subset. The first blade in the group is the blade “nearest the guard,” or leading blade. The third blad e in the group is the blade “nearest the cap,” or tr ailing bla de. The second bla d e is define d by its exposure, and must “hav[e] an exposure not less than the exposure of the first blade and not greater t han the expos ure of the third blade.” Given that the first and third

04-1220 9blades mu st be the lead ing a nd trailin g bl ades, r e spectively , and in light of the specification’s discuss ion of a pr ogressive blade exposure, the second blade must als o be located between the first and third blades. See id. col. 1, l. 60 – col. 2, l. 40 (discussing a progressive blade expos ure fr om a first blade to a second and third blades). T hus, any blade in bet ween the first and thir d blades and with an exposur e greater than that of the first blade and les s than that of the thir d blade is a “second” blade in the claimed subset of blades. T h e accused QUATTRO ® dev ice, in fact, has two “second blades” because both of the mi ddle blades in the ac cused dev ice meet the definition of the “second blade” set forth in the claim. Any subset of three blades in a blade unit meeting these defin itions is a “group of blades ” as defined by the clear language of the claim. This claim is not ambiguous. In fact, the patentee underscored this open- ended c l aim meaning by usin g both the open-ended transition phrase “comprising” for all elements of claim 1 as discussed above, and the open-ended claim term “grou p of” for ea ch par t of this element

. The language of the claims depending from claim 1 also sup p ort reading “comprising” and “group of” as open terms. Cla im 2, which depends from claim 1, add s the limitation that “ the span between the first blade edge and the guard is substantially smaller tha n a span between the edges of t he first and second blades and the span between the edges of the second and third blades.” Id. at col. 4, ll. 17-20 (emphases added). T he patent drafter’s use of “a s pan” between the first and sec ond blades recognizes that more than one such span may exist. On the other hand, the drafter’s

04-1220 10use of “the span” to identif y the span between the guard and first blade recognizes that only one such span is possible. 1 The terms “first, second, and third” are te rms to distinguish different elem ents of the claim, not terms supply i ng a numerical limit. Thus, t he “first,” “second,” and “third” blades need not necessarily appear in that order or necessarily limit the blade unit to only three blades. Instead, these ordinal terms designate different blades within the “unit” according to their locati on and elev ation. The claim itse lf makes this distinction. The claim defines bot h the “first” and “third” blades in terms of their lo cation relative to the guard and cap, respectively , and further spec ifies their respective elevations. The second blade is defined solely by its elev at ion and location bet ween the leading and trailing bla des. None of the b l ad es in the “g roup” are d e fined by t heir cons e c utive orde r relative to the other blades. To make it abundantly clear that the refe rence to “first,” “second,” and “third” blades was not a serial or num erical limitation, the claim does not follow a c onsecutive order ( i.e. , it does not discuss the second blade after the first). The claim is t hus clearly not using the ordinals — first, second, third — to show a consecutive numerical limit but only to distinguish or identify the various me mbers of the group. The case law of this court supports this reading of the cl aim language “first, second, and third.” See 3M Innovative Props. Co. v. Avery Dennison Corp. , 350 F.3d 1365, 1371 (Fed. Cir. 2003) (“use of the terms ‘first’ and ‘second’ is common patent-law convent ion to distinguis h

1 Dependent claims 9 and 10 use “the span” and “the expos ure,” respectively, to refer to the span and expos ure of the second blade. ’777 patent, col. 4, ll. 41-45. This definitive recitation of a single span and expos ure likely limits these dependent claims to a single second blade, i.e. , a three-bladed em bodiment of the invention.

04-1220 11between repeated inst ances of an element” and s hould not neces sarily be interpreted to impose a serial limitation on a claim). The spec ification prov ides further support for interpreting claim 1 to encom pass razors with more than three blades. The firs t sentence of the written description of the invention teaches that “ the invention . . . r e lates in particular to safety raz o rs having blade units with a pl urality of blades .” ’777 patent, col. 1, ll. 3-5 (emphasis added). This reference defines the “invention” to encom pass “a plurality of blades,” thus eschewing any numerical limit on the num ber of blades. The written description buttresses this statement of the in vention through its use of the same open-ended “group of” language used in c l aim 1. Id. at col. 1, ll. 37-40 (“Thus, in acc o rdance with the present inventio n there is provided a saf e ty razor blade unit comprising a guard, cap and a group of three blades . . . .”) (emphasis added). The specif ication makes numerous references to a preferred embodiment of the invention with t h ree blades, see, e.g. , id. at co l. 2, ll. 5 0 -53 and col. 4, ll. 2-3, but that narrower embodiment does not impose a limit on the broader claim language as elucidated by the reference to “the in vention” as embracing a “plurality of blades.” See Comark Communications v. Harris Corp. , 156 F.3d 1182, 1186 (Fed. Cir. 1998) (refusing to import limitations from the specification to the claims); Sjolund v. Musland , 847 F.2d 1573, 1581 (F ed. Cir. 1988) (same); Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n , 805 F.2d 1558, 1563 (Fed. Cir. 1986) (“This court ha s cautioned against lim iting the claimed invention to pr efe rred embodiments or specific examples in the specification.”). The prosec ution of patents related to t he ’777 patent also supports reading c l aim 1 as an open claim. The defendant itself end orsed an open interpretation of

04-1220 12“comprising” when it argued t o the Eur opean Pat ent Office (EPO ) that a virtually identical c l aim in Gillette’s European c ount er part to the ’777 patent would not exclude an arrangement with four or more blades. This blatant admission by this same defendant before the EPO clearly supports this court’s ho lding that those sk illed in the art would c onstrue the claims of the ’777 patent to encompass razors with more than three blades. The district court adopted Energize r’s argument that the numerous (approximately thirty) references to “three,” “thi rd” and “tertiary” in the spec ific ation limit the scope of the claims. Gillette , slip op. at 14. However, “wo r ds or expressions of manifest exclusion” or “explicit ” disclaim e rs in the specification are necessary to disavow claim scope. Hous ey Pharms., Inc. v. Astrazeneca UK Ltd. , 366 F.3d 1348, 1352 (Fed. Cir. 2004) ; Liebel-Flarsheim v. Medrad, Inc. , 358 F.3d 898, 90 6 (Fed. Cir. 2004). Despite the numerous cites to thre e-bladed r a zors pluc ked from the written description, no statement in the patent surr enders or excludes a four-bl a ded razor. Neither the district court nor E nergizer refers to the “manifest” or “explic it” exc l usion test. This patent and its prosecutio n record fall far short of any kind of disclaimer or disavowal. Not only did the pat entee clai m the invention with t w o open-ended terms (“comprising” and “group of”), but the spec ific ation expr essly teaches that the invention
encompass e s a “plurality of blades.” This court declines to import limitations to the claims from the specification absent a “ m anifest” or “explic it” exc l usion. Id. T h e patentee did not disclaim razors with more than three blades at all, let alone “manifestly,” or “explicitly.” Rather the patentee opened its teachings of the invention i n the specific ation with an expres s statement that the “inventi on” covers “blade units with

04-1220 13a plurality of blades.” ’777 pat ent, col. 1, ll. 3-6. The app licant did not “manifestly” or “explicitly” disclaim blade units with a plur ality of blades by expressly defining the invention in those exact term s. More important, the language of the claim its e lf, with its open transition phrases and us e of ordinals to distinguish but not limit claim elements, shows that the invention embrac es “a plurality of blades.”
III Based on the preliminary re cord before this court, the district court erred in limiting the claims of the ’777 patent to encompass safety razors with solely three blades. Accordingly, this court vacates t he district court’s deni al of a preliminary injunction on the grounds of G illette’s failure to show a like lih ood of success on the merits of its claim. However, because the cl aim const r uction set forth in this opinion is preliminary and base d upon an incomplet e re cord, the district court will have every opportunity to review and revis i t this claim construction during devel opment of a full record. Indeed, this court recognizes the diffi culty imposed on a trial court to construe claim terms based upon a prelim inary “likelihood” record. See, e.g. , CVI/Beta Ventures , Inc. v. Tura, LP , 112 F.3d 1146, 1160 n.7 (Fed. Cir. 1997) (reversing its own earlier “likelihood” claim construction of terms t hat were appealed after a complete record); Bayer AG v. Biovail Corp. , 279 F.3d 1340, 1349 (Fed. Cir. 2002) (holding that it wa s premature for this court to engage in its own claim construction wher e the district court had not performed a comprehensive c l aim cons truction based on a c o mplete record); Metaullics Sys. Co. v. Cooper , 100 F.3d 938 (Fed. Cir. 1996) (declining t o construe patent claims on appeal from a denial of a preliminary injunction).

04-1220 14In light of the foregoing analys is, the decis ion of the district court is vacated and remanded for further proceedings consistent wit h this opinion, in cluding analysis of Energizer’s inva lid ity d e fenses raised in op p o sition to Gillette’s m o tion for a preliminary injunction. COSTS Each party shall bear its own costs. VACATED and REMANDED

04-1220 15

## United States Court of Appeals for the Federal Circuit

04-1220 THE GILLETTE COMPANY, Plaintiff- Appellant,

v. ENERGIZER HOLDINGS, INC., Defendant-Appellee.

ARCHER, Senior Circuit Judge , dissenting. Because t he majority exalts form over substance in reaching its conclusion, specifically elevating claiming conventions over the clear t eachin g s of the specification of U.S. Patent No. 6,212,777 (“the ‘777 patent”), I dissent.
I In construing a c l aim, we first look to the words of the claims, and these words are generally given their ordi nary and cus t omary meaning. Se e Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996) . Our search for the proper meaning of claim terms does not stop there, however, because a patentee may choose to “use terms in a manner other than their ordinary meaning.” Id. Such a redefinitio n or limitation of a claim t e rm need not be explicit. “In other wo rds, the specification may define claim terms ‘ b y implication’ such that the meaning may be ‘found in or ascertained by a reading of the patent documents.’” Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc. , 262 F.3d 1258, 1268 (Fed. Cir. 2001) (quoting Vitronics , 90 F.3d at 1582); see Astrazeneca v. Mutual Pharm. Co., Inc. , 384 F.3d 1333,

04-12201340 (Fed. Cir. 2004) (explainin g that a patent applic ant need not express l y state “my invention does not inc l ude X” to indicate his exc l usion of X from t he scope of his patent). Thus, “the specification is always highly r e levant to the claim construction analysis. Usually, it is dispos itiv e; it is the single best guide to t h e meaning of a disp uted term .” Vitronics , 90 F.3d at 1582 (emphasis added). The ma jority eschews this teaching in our case law, instead focusing prim arily on t he ordinary and customary meaning of the claim terms

. The construction of claim 1 of t he ‘777 patent hinges on how the terms “comprising” and “group of” are construed. T he majority follows claiming c onvention s and ascribes an open meaning to these terms. In doing this, the majority ignores the overwhelming teaching of the specification that the invention of the ‘777 patent is a razor limited to three blades arranged in the described c l aim configuration. 1 Claim 1 reads “comprising a guard, a cap, and a group of first, second, and third blades”; it does not read “a group of blades co mprising first, second, and third blades

. ” In this claim, the transition term “comprising” refers only to the total number of elements in the com p lete razor, allowing for a razo r with additional elemen ts besides the guard, the cap, and the three blade unit. See Sp ectrum Int’l, Inc. v. Sterilite Corp

. , 164 F.3d 1372, 1379 (Fed. Cir. 1998); Moleculon Research Corp. v. CBS, Inc. , 793 F.2d 1261, 1271 (Fed. Cir. 1986) (holding th at a step which recites engagi ng “ e ight cube pieces as a composit e cube” does not read on a s t ep which engages more than eight cube pieces, despite the use of t he transitional term “comprising ”). For example, claim 1 could inc l ude a s a fety razor wit h an additi onal guard or cap or some other element

1 The blade configuration refers to the desc r ibed progr essive and variable blade spans and blade expos ures and the three blades’ location relative to each other. 04-1220 2altogether. Because t he transition term “’[c]o mprising’ is not a weasel word with whic h to abrogate claim lim itations,” Spectrum Int’l , 164 F.3d at 1379-80, or to i m permissibly expand a claim’s scope, cl aim 1 should not be cons trued as permitting a group wit h more than three blades simply because cl aim 1 contains the open transition term “comprising” in its preamble when the entire specific ation points to the invention a s being only a three-bladed razor with pr ogressive blade exposure and span. The dependent claims themselves dem ons trate that the blade unit of the invention contains only three blades – including a single second blade. Specifica lly, whenev er the second blade is r e ferred to indi vidually, it is referred to singularly (“the edge of the second blade,” claim 6, ll. 2-3, claim 7, line 2; “the exposure of the second blade,” claim 10, line 2). Similarly, the dependent claims’ us e of the term “span” (singular) whenev er the distanc e between t he first and second blades and second an d third blades is mentioned eviden ces that there can only be a single second blade: “ a span between the edges of the first and sec ond blades,” claim 5, line 2 (emphasis added); “ a span between the edge of the third blade and the ed ge of the second blade , ” claim 6, ll. 2-3 (emphasis added); “ a span between the edge of t he second blade and the edge of the first blade,” claim 7, ll. 2- 3 (emphas is added); “ a span between the edges of the first and second blades and between the edges of the second and third blades,” claim 8, ll. 2-3 (emphasis added); and “ the span between edges of the second and third blades,” claim 9, line 2 (emphasis added). A blade unit in cluding more than one second blade would contain “spans” (p lural) between “the s e cond blade” and the first or third blade – one betwe en the first or third blade an d the first second blade and one between that same first or third blade and the second second blade. There simp ly

04-1220 3could not be a single span bet ween a first or third blade and two second blades. The majority states that the use of “a span” fo r describing the distanc e between the edges of the first and second blades and that between t he edges of the second and third blades suggests that there can be more than one span fo r each. In other words, there can be a first span between the edge of the first blade and the edge of the first second blade and a second s pan between the edge of the first blade and the edge of the second secon d blade. Such an interpretation of “a span” is not cons istent with the remainder of the claim language, however. Claims 5 and 8 s t ate that this span is “ s ubstantially equal to 1.5 mm.” In a razor having two s e cond blades as prop osed by the majority, the first and second blades would have to be vi rtually in t he same s pot to satis f y this claim language (a configuration the majority does not even claim the specification supports), as the edge of each second blade woul d have to be substantially 1.5 mm from the edge of the first blade. 2 Thus, there can only be a single span between the edge of the first blade and the edge of the second blade and a single s pan between the edge of the third blade and the edge of the s e cond blade. The majority ’s claim construction effectively replac es “span” with “spans”; this is not what is claimed. The spec ification similarly limits the in vention to a blade unit hav ing only thr ee blades. T he written description begins with an explanation of how two-bladed safety razors have dominated the wet s having indust ry. “Safety razors having blade units wit h two blades have in recent years been sold in very large numbers and ar e generally acknowledged to giv e a better quality shave, espec ially in terms of closeness, than single bladed razors.” ‘777 paten t, col. 1, ll. 34-37. The spec ific ation then explains that

2 The same analys is applies to the distance between the edges of the third and second blades as described in claim 8. 04-1220 4a blade unit with more than two bl ades can provide a c l oser s hav e but notes that such a multi-bladed razor is not desirable for other reasons: Closeness of a shave obtained is onl y one parameter by which razor users judge the performance of a razo r. A dding e x tra blades can have a serious detrimental influence on other blade unit characteristics, most notably the drag forces experienced when the blade unit is moved over the skin, with the consequence that t he ov erall performance of the blade unit can be markedly inferior despite a closer shave being obtainable. Id. at col. 1, ll. 24-29. The specificat ion then dis c loses that the inventors hav e discovered a particular blade geometry for a three-bladed razor so as to overcome the traditional shortcomings of razors having more than two blades. Specifically, the inventors found that adding a third blade positioned between the other two blades in a particular configuration improved clos eness while adding only minimal drag: It has been found that wit h a blade unit comprisi ng three blades, the frictional dr ag forces can be k ept at an acceptable leve l while allowing an improved s having efficiency, by setting the blades relative to each other and to guard and cap surfaces positioned in front of and behind the blade edges, according to a particular geometrical dispos ition. Id. at col. 1, ll. 32-37. As suc h , with the exception of t he three-bladed razor having the claimed geometry, the specific ation actually discourages, or teaches away f r om, razors that have more than two blades. In this regard, the specification express l y c autions tha t “[a]dding extra blades [more than two] can have a serious det rimental influence on . . . blade unit characteristics.” Id. at col. 1, ll. 25-27. T he general summary or description of the invention thus describes a three-bladed razor wit h a certain blade c onfiguratio n and criticiz es other blade units having more than two blades. We have construed claims to be limited to one type of device where the written description has emphasized feat ur es of that device and critic ized other similar devices. See Astrazeneca , 384 F.3d at 1340 (citing SciMed Life Sys., Inc. v

. Advanced

04-1220 5Cardiovascular Sys., Inc. , 242 F. 3d 1337, 1340-45 (Fed. Cir . 2001) (construing claim s to be limited to catheters wit h coaxial lumens where wr itten description emphasize d coaxial lum ens as a feature of the inventi on and criticiz ed catheters using other types of lumens)). Here, the inventors expressly st ate that using more than two blades in a safety razor is problematic. ‘777 patent, col. 1, ll. 24- 31. They t hen exp l ain that these problems are overc o me by a three-bl aded razor having blades arranged wit h progressiv e blade s p ans and blade expos ures. Id. at col. 1, ll. 32-3 7. This discussion , which expr essly emphasizes certain features of the i n vention (a three-blade unit with the blades arranged in the described geometry) and impliedly criticizes other similar devices (blade units having more than two blades not having the same features), suggests the claims should be nar rowly construed. In my view, therefore, the term “compr ising” should not be read as encompass i ng a blade unit having more than three blades. This is made clear by the claims themselves and by the written description as described below. The traditional open claiming term “comprising” thus applies to the limitations of t he razor as a whole, that is, the cap, the guard, and the blad e unit and permits other elements included in the razor. Howev e r, it does not permit t he expansion of the number of blades in the blade unit itself. Turning to the term “group o f,” the written description ma kes clear that this term is not us ed as an ope n cla i ming term as Gillette argue s . The ter m “group o f ” occurs only once in the written description when the patentee is describing the invention as a whole in the background secti on of the patent. The group is specifically described as three blades:

04-1220 6Thus, in ac cordance with t he present inv e ntion there is prov ided a safety razor blade unit comprisi ng a guard, a cap and a group of three blades with parallel sharpened edges located between the guard and cap, the first blade defining the edge nearest the guard having an expo sure not greater than zero, and the third bl ade defining the blade nearest the cap having an exposure not less than zero. ‘777 patent , col. 1, ll. 37 -44 (emphasis added). While not r e ferring again to the “group of ” blades, the patentee consistently and frequently refers to his invention as a three-bladed safety razor. 3 For ex ampl e, w h en the written description speaks of the “blade unit” of the invention, 4 the onl y type of bl ade unit identified is one having three blades: “b lade unit comprising . . . a group of three blades,” ‘777 patent, col. 1, ll. 39 -40; ”three-bladed blade unit,” id. at col. 1, line 54; “three bladed safety razor blade unit,” id. at col. 2, line 50; and “three blades set in the blade unit,” id. at col. 3, ll. 17-18. When explaining the basic stru cture of the invention, the specification disc loses “t he novel aspects of the present inv ention res i d[e] in the provision of three blades set in the blade unit set in particular dispositions with respect to each other and the guard and cap.” ( Id

. at col. 3, ll. 16-19) (emphasis added). By stating that the unit (group) of three blades (disposed in the described manner) confers novelty to the invention disclosed in the ‘ 777 patent, the patentee cl early shows that he

3 It was represented to the district court, and noted in its opinion, that the word “three,” “third,” or “terti ary” is used in thirty different places in the mere threecolumn-long specific ati on of the ‘777 patent. Gillette , No. 03-1151 4-PBS, slip op. at 14. Additionally , nowhere in the sp ec ification is the possibility of a four-bladed r a zor even suggested. This supports a finding that t he claims should be interpreted as limited to razors having only three blades. See Microsoft Corp. v. Multi-Tech Sys., Inc. , 357 F.3d 1340, 1348 (Fed. Cir . 2004) (noting that the s pecific ation referred to transmitting data over a phone line r oughly two dozen tim e s and never suggested transmitting data through the use of a packet switched networ k ). 4 The patentee uses the term “blade uni t” to describe the carrier of the blades of the inv ention. See ‘777 patent, col. 2, ll. 63-64 and representation thereof in Figs. 1 and 2. 04-1220 7regards the invention to be a safety razor with a blade unit having exactly three blades with progressive exposure and span. The majority contends that a three- bladed razor is merely a prefe rred embodiment of the invention of the ‘777 patent, as opposed to the invention. However , the specific ation is replete with in stances where the patentee desc r ibed the in vention as a razor having three blades with the descr ibed blade geometry. To this end, the specification st ates “[w]ith a three-bladed safety razor blade unit having the blades disposed as specified herein we have f ound an enhanc ed overall shaving performance in comparison to a two-bladed razor,” ( id. at col. 2, ll. 50-53) (emphasis added) (located immediately prior to t he patentee’s statement that “some specif ic embodiments of the invention are described below”); “it is ensured that an enhanced shaving efficiency is secured due to there being three sharpened blades ,” ( id. at col. 4, ll. 2-3) (emphasis added) (the final sentence of t he written description whic h explains that “[w]ith the embodiments of the invention” t h is result is reached); “in accord ance with t h e present invention there is provided a saf e ty razo r blade un it comprising a guard, a cap and a group of three blades ,” id. at col. 1, ll. 37-40 (em phasis added) (located in the background section of the patent). These st atements are directed to the inv e ntion as a whole and suggest that three bl ades is a part of the inventio n, not merely a preferred embodiment. We have held that a claim te rm was properly construed in accordanc e with a limitation that was “r epeatedly and consistently” descr ibed in the specificatio n where “[t]hose statements, some of whic h [were] found in the ‘Summary of the Invention’ portion of the spec ification, [were] not limit ed to describing a preferred embodiment, but more broadly describe the ov erall inventions of [the] patent[ ].”

04-1220 8Microsoft Corp. v. Mu lti-Tech Sys., Inc. , 357 F.3d at 1346-48 (s tating “the claims mus t be interpreted in light of t he specification . . . which repeatedly and c onsistently describes the local and remote systems of the claimed inventions as communicating directly over a telephone line” and holding that communications were restricted to being over a telephone line and ex cluded the use of a packet

- swit ched network). Such is the case here. That a three-bladed razor is not merely a preferred embodiment of the invention of the ‘777 patent is further evidenced by the fact that t he specification addresses only changes in the blade exposure and blade s pan, not the number of blades. Specifica lly , the ‘777 patent states: A steadily increasing bl ade expos ure has been f ound most effective. Therefore, the value of the exposure of the secondary blade is ideally approximately half way bet ween the exposure values for the primary and tertiary blades, and very satisfactory test results hav e been obt ained with all three blade edges lying in a common plane. In most embodiments a secondary blade exposure substantia lly equal to zero will be very satisfactory. We recommend that the te rtiary blade exposure be a positiv e value equal in magnitude to the negativ e exposure of the primary blade.

... The span S 1 of the primary blade 11 is fr om 0.5 to 1.5 mm and is preferably substantially equal to 0.70 mm. The span S 2 of the secondary blade 12 and the span S 3 of the tertiary blade 13 have the valu es in the range of 1.0 to 2.0 mm. They are shown [in FIG. 1] e qual with a value substantially equal to 1.50 mm. The ed g e of the tertiary blade is at a distance S 4 substantially equal to 1.80 mm in front of the cap. Id. at col. 2, ll. 30-40, col. 3, ll. 25-32. (emphases added) . Likewise, when describing “the preferred embodiment of the invention,” id. at col. 2, ll. 61-62, the specification describes t he blade expos ures of the primar y and tertiary blades as being t he variant

04-1220 9factor, 5 with the expos ure of the primary blade being -0.04 mm an d the exposure of the tertiary blade being + 0 .06 mm: A more fav ourable blade arrangement is shown in FIG. 2. The spans S1, S2, S3 and S4 are the same as t hose mentioned above for FIG. 1. The primary blade in this embodiment has an exposur e of -0.04 mm, the ex posure of the secondary blade 12 is z e ro, the edges of all three blades lying in a common plane P as in FIG. 1, and the exposure of the tertiary blade 13 is +0.06 m m . Thus, there is a progressiv e increas e in blade exposure from the leading blade 11 to the trailing blade 13. Id. at col. 3, ll. 41- 50 (emphases added). The consistent factor throughout these
passages and the patent’s drawings is t he presence of thre e blades arranged with progressiv e blade exposures an d blade spans. It is the valu e of the blade exposure and span that the inventor s intended could vary, not number of blades in the configuration. Thus, a three-bladed razor is not merely a preferred embodiment of the invention; rather, it is the invention. Indeed, nowhere in the specification is the blade unit of the invention expressly described as having mu lt iple blades in exc e ss of three. The majority discusses at lengt h that the claim terms ”fir st,” “second,” and “third” do not import a sequential or fi nite meaning, thus allowing for two “second” blade s positioned between t he first and third bla des, with the blades arranged having the described blade exposures and bl ade s pans. Such a premis e, however, as sumes that a razor with four blades a rranged with one blade configured as the claimed “ f irst blade,” one blade configured as the claimed “t hi rd” blade , and the remaining two bla d es configured as the claimed “sec ond” blade would achieve the same desirable results as a razor with only three blades (i.e., one “second blade”) arranged in the described

5 In this embodiment the blade spans may also vary – i. e., within the sam e range as t hat describing the embodim ent shown in FIG. 1 (“The spans S 1 , S 2 , S 3 , and S 4 are the same as those m entioned above for FIG. 1”). Id. at col. 3, ll. 43-44. 04-1220 10geometry. Contrary to t he majority’s implic ation, 6 there is absolutely no support in the specification for this assumpti on. Further, the inclusion of more than three blades is in direct conflict with t he specification’s repeated and c ons istent reference to the invention as containing three blades, e.g ., “the three-bladed unit of the invention,” “a three-bladed safety razor blade unit , ” “three bl ades,” and “three sharpened blades.” 7 Finally, the tex t of the claim itself and t he specification s uggest only one sec o nd blade (i.e., “said second blad e ,” id. col. 4, line 11 (emphasis added), “ the secondar y blad e ,” col. 3, line s 28, 46 (emphases added)). By using “ t he” and the singular form of “blade,” the patentee showed his invention possessed onl y one s e cond blade positioned between the blade c l osest to the cap and the blade c l os est to the guard. The patentee did not state “secondary blades,” whic h would be the situation if the invention included two secondary blades. Further, in the introductory section of the patent, when the patentee is defining “blade exposure ,” he explains how to measure it in terms of “ the three-blade d unit of the invention . . .,” id. at col. 1, l. 54 (emphasis added). 8 The s p e c ification ’ s prevalent r e ferences to a three-bladed razor and the claim’s use of the sing ular “blade” show that there can only be one “first” blade, one “second” blade, and one “third” blade. Any other r eading of t he claim terms “first,” “second,” and “third” is counter to the very

6 See majority op. at 7. 7 Indeed, giv en the majority’s claim construction, which would allow for a second second blade, the district court on re mand will now hav e to determine validity issues inc l uding that under 35 U.S.C. § 112 ¶1. 8 See also s upra at 6 (quoting the ‘777 patent at col. 2, ll. 50-53 and col. 4, ll. 2-3). 04-1220 11nature of the invention descri bed and claimed in the ‘777 patent. 9 In sum, the patent s pecification 1) repeat edly and consistently t eaches that the safety razor of the invention is one hav ing thr ee blades; 2) teaches preferred embodiments which vary the configuration of the blades but in no way changes the number of blades of t he invention; and 3) discourages t he use of more than two bla d es in a blade unit except for the three-bladed blade unit having the claimed geometry. I believe these teachings together clearly dem onstrate that the inv entors did not regard a blade unit with four blades ar ranged in the described geom etry as their invention. Therefore, “comprising” and “group of” should not be construed to include a s a fety razor having more than three blades. The only s upport in the spec ific ation for th e majority’s position t hat “comprising” and “group of” should be given t heir conventi onal meaning is the fo llowing sentence: “This invention is conc erned with safety razors , and relates in particular to safety razors having blade units with a pluralit y of blades defining parallel sharpened edges arranged to pass in turn over a skin surface being shaved.” Id. at col. 1, ll. 3- 6 (emphasis added). This single, broad statement, not repeated or endorsed elsewhere in the patent’s written description, cannot be read to expand the invention beyond what is explicitly described throughout the specification. In particular, it cannot rewrite t he statements that the novelty of the invention “resid[es] in the prov ision of three blades se t in the blade unit,“

9 The majority is correct that the use of the terms “f irst,” “second,” and “third” in a claim does not necessarily im part a sequential meaning to the items being claimed. Howev e r, here the balance of the language in cl aim 1 clearly demonstrates that the inventor intended a se quential relationship by saying that the second blade is located bet ween the first and third blades. ‘777 patent, col. 4, ll. 7-11 (“[T]he first blade defining a blade edge nearest the guard . . . and the t h ir d blade defining a blade edg e nearest the cap.”). 04-1220 12id. at col. 3, ll. 16-18, and that the goal of “an enhanc ed shaving efficiency is secured due to ther e being three sharpened blades,” id. at c o l. 4, ll. 2-3. The majority relies on this one instance of the use of the word “plurality” and conveniently ignores the repeated s t atements in the s p ec ification t hat the blade un it is compos ed of three blades. 10 Finally, the majority’ s claim construc tion ignores the notice function of the specification. As the Supreme Court stated almost two hundred years ago, an object of the specific ation is, to put the public in pos session of what the party claim s as his own invention , so as to ascertain if he claim[s] any thing that is in common use, or is already known, and to guar d against prejudice or injury from the use of an invention wh ich the party may otherwise innocently suppos e not to be patented. It is, therefore, for the purpose of warning an innoc ent purc haser or other person using a machine, of his infringement of the pat ent; and at the s a me time of taking from the inventor the m eans of practising upon the cr edulity or the fears of other persons, by pretending that his inv ent ion is more than what it really is , or different from its ostensible obj ects, that the patentee is required to distinguish his invention in his spe c ification. Evans v. Eaton , 20 U. S. 356, 434 (1822) (emphases added). Anyone r eading the ‘777 patent would be left wit h the i ndelible impress i on that the patentee had invented a threebladed, and only thre e-bladed, s a fety razor with blades having the described variable blade span and blade expos ure. Only with a crystal ball could a competitor in the

10 Additionally , the fact that the terms “several bl ades,” “many blades,” and “extra blades” occur in the spec ification is irrelevant to the claim construction at issue here. These phras es are contained in a discus s ion of longstanding problems associated with multiple blades. As noted above, the specification stat es that the use of multiple blades has historical ly been problematic. The solu tion proposed in the ‘77 7 patent is t he three-bladed blade unit of the inv ention with it s three blades set in the blade unit in particular dispos itions with re s pect to each other and the guard and the cap.

04-1220 13safety-razor industry have concluded that t he ‘777 patent could cover a four-bladed

razor. II. Certainly, claiming conventions dem onstrate that claim terms such as “comprising” and “gr oup of” ar e traditionally v i ewed as open claim terms. Howev e r, here, the specification makes abundantly clear t hat the invention of the ‘777 patent was a razor having three blades, no more, arranged in t he described geomet ry. For this reason, I would affirm the dist rict court’s claim cons truction and its denia l of Gillette’s motion for a preliminary injunction.

04-1220 14