United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MARKEM-IMAJE CORPORATION, 

Plaintiff-Appellee, 

v. 

ZIPHER LTD. AND VIDEOJET TECHNOLOGIES, 

INC., 

Defendants-Appellants. 

__________________________ 

2010-1305 

__________________________ 

Appeal from the United States District Court for the 

District of New Hampshire in Case No. 07-CV-0006, 

Judge Paul J. Barbadoro. 

___________________________ 

Decided: September 9, 2011 

___________________________ 

KURT L. GLITZENSTEIN, Fish & Richardson, P.C., of 

Boston, Massachusetts, argued for plaintiff-appellee. 

With him on the brief was MICHAEL CLARK LYNN. 

KARA F. STOLL, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, of Washington, DC, argued for 

defendants-appellants. With her on the brief were J.

MICHAEL JAKES and SUSAN Y. TULL. Of counsel was 

JOYCE CRAIG. 
MARKEM-IMAJE CORP v. ZIPHER LTD 2

__________________________ 

Before NEWMAN, CLEVENGER, AND LINN, Circuit Judges. 

Opinion for the court filed PER CURIAM. Dissenting 

opinion filed by Circuit Judge NEWMAN. 

PER CURIAM. 

Markem-Imaje Corp. sued Zipher Ltd. and Videojet 

Technologies, Inc. (together “Zipher”) in the United States 

District Court for the District of New Hampshire, requesting a declaratory judgment that Zipher’s U.S. Patent No. 

7,150,572 (the ’572 patent) is not infringed by Markem. 

The district court granted summary judgment of noninfringement,1 and Zipher appeals. We conclude that the 

district court erred in construing a critical claim term; 

thus the summary judgment of non-infringement is 

vacated, and the case is remanded for further proceedings 

on the corrected claim construction. 

THE PATENTED INVENTION

The ’572 patent, entitled “Tape Drive and Printing 

Apparatus,” describes and claims a device for transfer 

printing. In transfer printing, ink is carried by a ribbon 

that is moved into contact with the substrate to be 

printed, and a print head impresses upon the ribbon and 

causes the ink to transfer from the ribbon to the substrate. In thermal transfer printing, the print head is 

heated, facilitating transfer and adherence of the ink to 

the substrate. Thermal transfer printers are used for 

 1 Markem-Imaje Corp. v. Zipher Ltd., No. 07-CV0006, 2010 WL 114947 (D.N.H. Jan. 12, 2010) (final 

judgment); 2009 WL 2855011 (D.N.H. Sept. 1, 2009) 

(claim construction reconsideration); 2008 WL 4116666 

(D.N.H. Aug. 28, 2008) (claim construction). 
3 MARKEM-IMAJE CORP v. ZIPHER LTD

such tasks as printing on plastic packaging and other 

surfaces to which ink does not readily adhere. In systems 

where the thermal printing is part of a mechanized and 

automated process, the printing step must keep pace with 

the production line, with minimal down time. The ’572 

patent is directed to a heat transfer printing apparatus 

that provides increased control over the acceleration, 

deceleration, speed, and positional accuracy of the printing operation, while minimizing waste of unused portions 

of the ink ribbon. 

In transfer printers in general, the ink ribbon is 

wound on two spools, one spool for supplying the ribbon 

for positioning on the substrate, and the other spool for 

taking up the ribbon after use. The ’572 patent explains 

that prior art transfer printers 

rely upon a wide range of different approaches to 

the problem of how to drive the ribbon spools. 

Some rely upon stepper motors, others on DC motors to directly or indirectly drive the spools. 

Generally the known arrangements drive only the 

spool onto which ribbon is taken up (the take-up 

spool) and rely upon some form of “slipping 

clutch” arrangement on the spool from which ribbon is drawn (the supply spool) to provide a resistive force so as to ensure that the ribbon is 

maintained in tension during the printing and 

ribbon winding processes and to prevent ribbon 

overrun when the ribbon is brought to rest. 

’572 patent col.1 ll.33-44. The patent states that “It will 

be appreciated that maintaining adequate tension is an 

essential requirement for proper functioning of the 

printer.” Id. col.1 ll.44-46. The ’572 patent is directed to 
MARKEM-IMAJE CORP v. ZIPHER LTD 4

an improvement in controlling the movement and tension 

of the ribbon. 

Figure 1 of the ’572 patent shows the two ribbon 

spools 7 and 11, with ribbon 6 extending between them 

and passing under the print head at 4: 

The patent specification explains the problems with the 

“slipping clutch” that has been used to provide ribbon 

tension in prior art printers. A slipping clutch provides a 

constant resistive torque to the supply spool, and the 

constant torque causes the tension in the ribbon to vary 

as the supply spool outer diameter changes with the draw 

of ribbon. The patent states that such dynamically changing ribbon tension requires tight tolerances in clutch 

force, which is difficult to maintain because wear in the 

clutch tends to change the resistive force of the clutch. 

Too much clutch force can break the ribbon or require 

more power to drive the ribbon, and too little clutch force 
5 MARKEM-IMAJE CORP v. ZIPHER LTD

can cause the supply spool to overrun. The patent states: 

“Given these constraints, typical printer designs have 

compromised performance by way of limiting the rate of 

acceleration, the rate of deceleration, and the maximum 

speed capability of the ribbon transport system. Overall 

printer performance has as a result been compromised.” 

Id. col.1 l.66–col.2 l.4. 

Examples of conventional clutch or drag-type drive 

mechanisms are discussed in the ’572 patent, including 

mechanisms in which, instead of a slipping clutch, a 

motor connected to the supply spool supplies a resistive 

force to provide ribbon tension. In another prior apparatus, a motor coupled to the supply spool “act[s] as a feedback transducer to enable appropriate control of the 

motor driving the take-up spool to take account of changing spool diameters while maintaining a constant ribbon 

speed.” Id. col.2 ll.39-42. The ’572 patent distinguishes 

this prior apparatus from what the ’572 patent calls the 

“push-pull” mechanism of the ’572 apparatus, explaining 

that 

although this [prior art] arrangement does avoid 

the need for example of a capstan drive interposed 

between the two spools so as to achieve reliable 

ribbon delivery speeds, only one of the motors is 

driven to deliver torque to assist ribbon transport. 

 There is no suggestion that the apparatus can 

operate in push-pull mode, that is the motor driving the take-up spool operating to pull the ribbon 

and the motor driving the supply spool operating 

to push the associated spool in a direction which 

assists tape transport. 

Id. col.2 ll.43-51. 
MARKEM-IMAJE CORP v. ZIPHER LTD 6

In accordance with the “push-pull” mode of the ’572 

patent, both the take-up spool and the supply spool are 

driven to particular angular positions by stepper motors 

that receive commands from a microcontroller. The takeup spool rotates and takes up a given length of ribbon per 

rotation, while the supply spool is rotated to feed out the 

same length of ribbon, independent of the constantly 

changing spool diameter. Such an arrangement is not 

provided in the prior devices, and is described as solving 

various problems encountered with prior devices. 

As described in the ’572 patent, stepper motors rotate 

by selectively energizing electromagnets around the 

outside of the motor, referred to as the “stator,” to interact 

with permanent magnets or electromagnets on the shaft 

or “rotor” of the motor. Id. col.20 ll.38-41. Unlike DC 

(direct current) motors, which are analog devices that 

simply rotate when power is supplied, stepper motors 

have discrete angular positions or “steps” and can be 

forced or driven to stay in particular step positions. 

Zipher’s expert witness, Professor Kuc, explained that an 

advantage of a stepper motor is that “when it’s still, it’s 

got a holding torque to keep the ribbon in place.” Hearing 

Tr. 40:21-23 (J.A. 340). 

The holding torque results from the electromagnetic 

attraction between poles of the rotor and poles of the 

stator in an energized stepper motor at rest. When an 

external torque (resulting from tension in the print ribbon) is applied to the spools, these electromagnetic forces 

create an opposing torque to keep the motor in its current 

angular position, thereby maintaining tension in the print 

ribbon. If the motor’s maximum holding torque is exceeded by the external torque, the motor shaft will rotate; 

thus “holding torque” also specifies the minimum amount 

of external torque needed to rotate the shaft of a stepper 
7 MARKEM-IMAJE CORP v. ZIPHER LTD

motor commanded to hold steady in its current position. 

Markem’s expert witness, Peter Landers, agreed with 

Zipher’s expert that when power is applied to a stepper 

motor it is held in position so that even when the spool of 

the printer is not rotating it will “hold the [ribbon] tension 

to the level it was set before.” Hearing Tr. 21:6-23:1 (J.A. 

321-23). 

The ’572 patent describes optically monitoring the radii of the spools and using the data “to calculate the step 

rate and the number of steps required by each motor to 

drive the spools in an appropriate manner so as to feed 

the ribbon a predetermined distance.” Col.20 ll.25-28. 

The patent explains that “[t]ension in the ribbon between 

the two spools must however be closely controlled to avoid 

the tension becoming too high (resulting in over tightening of the ribbon on the spools or even ribbon breakage) or 

the tension becoming too low (resulting in loss of positional control as a result of the ribbon becoming slack).” 

Id. col.19 ll.32-38. The ’572 patent describes its method of 

estimating ribbon tension (t), and explains how tension is 

maintained within predetermined limits: 

If the derived value of t is too high (above a predetermined limit), then a small step adjustment can 

be made to either or both of the motors to add a 

short section of ribbon to the length of ribbon between the spools. If the derived value of t is too 

low (below a different predetermined limit), then 

a short section of ribbon can be removed from the 

length of ribbon between the spools. . . . 

[M]athematical processing results in a “correction” amount of ribbon that needs to be added to 

or removed from the ribbon path between the 

spools during the next ribbon feed. This addition 
MARKEM-IMAJE CORP v. ZIPHER LTD 8

or removal of ribbon maintains ribbon tension 

within acceptable limits. 

Id. col.22 ll.16-42. Claim 1, the broadest claim of the ’572 

patent, is directed to a tape drive that corrects tension 

divergences from the predetermined limit in this manner: 

1. A tape drive comprising: 

two motors, at least one of which is a stepper 

motor; 

two tape spool supports on which spools of 

tape are mounted, each spool being driveable by a respective one of said motors; 

a controller adapted to control energization of 

said two motors such that tape is transported in at least one direction between 

spools of tape mounted on the spool supports; 

wherein the controller energizes both said 

motors to drive the spools in a tape transport direction, and 

said controller calculates a length of tape to 

be added to or subtracted from tape extending between said spools in order to 

maintain tension in said tape between 

predetermined limit values and controls 

said motors to drive the spools to add or 

subtract the calculated length of tape to or 

from the tape extending between said 

spools. 

Following a claim construction hearing, the district court 

construed “driveable” and “drive” to mean “rotateable” 

and “rotate,” as proposed by Markem, rejecting Zipher’s 

broader construction. Markem, 2008 WL 4116666, at *11. 

 The district court explained in its reconsideration opinion 

that the use of the plural word “spools” in the claim clause 
9 MARKEM-IMAJE CORP v. ZIPHER LTD

“to drive the spools to add or subtract the calculated 

length of tape” means that both spools must rotate. 

Markem, 2009 WL 2855011, at *1. The court further 

explained that both spools must rotate to add or subtract 

a single calculated length of tape. Markem-Imaje, 2010 

WL 114947, at *1. 

The operation of Markem’s accused devices was not 

disputed, as the district court explained: 

Although Markem’s tape drives rotate both spools 

during the tape tension adjustment process, only 

a single spool is rotated to achieve each adjustment. If tape tension is too low, the take-up spool 

is rotated to decrease the length of tape between 

the spools and if tape tension is too high, the supply spool is rotated to increase the length of tape 

between the spools. 

Id. Based on the district court’s ruling that the term 

“drive” in the ’572 claims requires that both spools are 

rotated together to adjust the tape, the court granted 

summary judgment of non-infringement. Zipher appeals, 

stating that the judgment was based on an erroneous 

claim construction. 

DISCUSSION

Claim construction receives plenary review on appeal. 

Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 

(Fed. Cir. 1998) (en banc). The grant of summary judgment also receives plenary review. 
MARKEM-IMAJE CORP v. ZIPHER LTD 10

I 

Zipher argues that the district court erred in limiting 

the claim phrase “drive the spools” to mean “rotate the 

spools.” Zipher argues that “drive” in this phrase has the 

inclusive meaning of not only rotate but also “hold steady 

in a commanded position.” The district court acknowledged that the ordinary meaning of “drive” can be broad 

enough to encompass not only the rotation of the spools 

but also application of a holding torque that prevents the 

spool from rotating. Markem, 2008 WL 4116666, at *3 & 

n.4. The district court observed that “[m]ost of the references to driving the spools in the specification could 

accommodate either proposed construction;” that is, 

“drive” could mean applying only rotational torque, or it 

could also include application of a holding torque. Id. at 

*6. However, the court found that other usages in the 

specification support limiting “drive” to mean only the 

narrower “rotate” and concluded that “when the specification uses ‘drive’ to refer to the spools, it supports 

Markem’s narrower construction of rotating the spools 

rather than merely controlling them.” Id. at *7. 

The district court reasoned that giving “drive” a 

meaning broader than “rotation” in the final clause of the 

claim (the tension control clause) would be contradictory 

to the meaning of “drive” in the tape transport clause, 

which states that “the controller energizes both said 

motors to drive the spools in a tape transport direction.” 

Markem states that Zipher conceded that “drive the 

spools in a tape transport direction” means that both 

spools are rotated in the tape transport direction. 

Markem stresses that “claim terms are normally used 

consistently throughout the patent,” Phillips v. AWH 

Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc), and 

that “a claim term should be construed consistently with 
11 MARKEM-IMAJE CORP v. ZIPHER LTD

its appearance in other places in the same claim or in 

other claims of the same patent.” Id. (quoting Rexnord 

Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 

2001)). Thus, according to Markem, “drive” requires that 

the spool “rotate,” for example in the claim clause “controls said motors to drive the spools to add or subtract the 

calculated length of tape.” Zipher argues that this construction would exclude the holding torque function that 

is necessary to accomplish the tension correction described in the specification, see ’572 patent col.22 ll.17-19 

(stating that if tension is too high “a small step adjustment can be made to either or both of the motors to add a 

short section of ribbon”). 

The district court determined that because the claim 

clause “controls said motors to drive the spools” already 

used the word “control,” the patentee could not have 

intended “control” and “drive” to mean the same thing. 

The court declined to view the claim clause “each spool 

being driveable by a respective one of said motors” to 

include driving to control tape movement or torque. The 

district court pointed to a passage in the specification 

which states that prior art devices “drive only the spool 

onto which ribbon is taken up,” ’572 patent col.1 ll.37-38, 

suggesting that a supply spool controlled by a slipping 

clutch is not driven. The district court concluded that 

“drive” cannot mean “apply torque” or else the specification would not have stated that “only” the supply spool is 

driven. See Markem, 2008 WL 4116666, at *6. Thus the 

court concluded that the patentee intended a narrow 

interpretation of “drive” in the claim, excluding the role of 

applying torque to a spool to hold it in place. 

Zipher argues that the term “drive” has a meaning 

similar to that of “control,” and is not limited to rotation 

motion. We agree that “drive” need not be narrowly 
MARKEM-IMAJE CORP v. ZIPHER LTD 12

construed merely because a broader construction would 

make it similar to the word “control” that is also used in 

the claim. Nothing in the specification or the overall 

invention as presented in the claim and as argued to the 

patent examiner requires the narrow construction. 

The district court also cited a passage where “the 

specification describes a circumstance in which the takeup motor is energized to rotate and the supply motor is 

de-energized.” Id. The ’572 patent states that 

if motor 92 is pulling, the drive circuit 108 for that 

motor is enabled and therefore the rotation angle 

for the spool being driven (94) is known. The 

drive circuit for the motor being pulled (93) is disabled (line 104 low). Thus motor 93 acts as a generator and a back-emf is generated across each of 

the motor windings 97 to 100. 

’572 patent col.23 ll.35-40. The court concluded that “the 

fact that only the take-up spool is described as being 

‘driven’ suggests that driving a spool means actively 

rotating it, not passively or indirectly controlling its 

motion.” Markem, 2008 WL 416666 at *6. However, the 

cited passage in the specification does not limit “driving” 

to rotation, or negate the substance of the invention, 

which requires that separate motors control the movement of the spools as appropriate to provide torque and 

tension. All that the cited passage suggests is that a deenergized motor that does not provide drag is not driving 

a spool. The specification does not suggest that an energized motor actively applying torque to either rotate a 

spool or hold it steady does not “drive” the spool. 

Zipher points out that the motor functions in the 

specification “include[] rotating, holding steady, stopping, 
13 MARKEM-IMAJE CORP v. ZIPHER LTD

accelerating, decelerating, and all the other drive functions the motors perform,” Zipher Br. 44. The term 

“drive” is used throughout the specification in connection 

with the motor control of the spools. It is not inconsistent 

for “drive the spools in a tape transport direction” to mean 

“apply torque to cause rotation,” and for “drive the spools” 

to mean “apply torque to the spools.” The district court 

acknowledged that “drive” can include the application of 

torque, and the specification uses “drive” to encompass 

both rotation and torque applied to the spools. The specification does not support the district court’s conclusion 

that to “drive” the spools means only to provide rotational 

torque. 

Both parties argue that the prosecution history favors 

their position. The district court concluded that the 

prosecution history “does not cut strongly in either direction.” Markem, 2008 WL 4116666, at *11. The district 

court discussed that the claim that became claim 1 of the 

patent (claim 68 of the application) was initially dependent on claims 64 and 65 of the application, which recited 

that the controller energized the motors “so as to pushpull drive the spools in a tape transport direction.” Id. at 

*8 & n.8. Claims 64 and 65 were rejected during prosecution as anticipated by U.S. Patent No. 5,366,303 (“Barrus”). In traversing this rejection, the applicant stated: 

In contrast to claim 64, Barrus et al energize one 

motor and de-energize the other motor for a pulldrag drive operation. . . . The push-pull limitation 

requires the controller to energize both motors to 

drive the spools. It is clear that in the configuration of Barrus et al the controller does not energize both motors to push-pull drive the spools of 

tape. 
MARKEM-IMAJE CORP v. ZIPHER LTD 14

Appl. No. 10/380,182, Amendment dated July 6, 2006, at 

11 (J.A. 995). The examiner had found that claim 68 

contained allowable subject matter because the prior art 

did not teach a tape drive that maintains tape tension 

“between upper and lower limit values and then controls 

the motors to add or subtract the calculated length of tape 

to the tape extending between the spools.” 

The applicant then rewrote claim 68 in independent 

form with some modifications including deletion of the 

“push-pull” term, and the examiner added an amendment 

in which “controls said motors to add or subtract the 

calculated length of tape” was changed to “controls said 

motors to drive the spools to add or subtract the calculated length of tape.” The examiner’s Summary states 

that the added language “more clearly defines the scope of 

claim 68.” Appl. No. 10/380,182, Examiner’s Interview 

Summary (Sept. 7, 2006) (J.A. 1019). We discern no 

indication that the added phrase “to drive the spools” in 

the examiner’s amendment was intended or understood to 

limit “drive” to “rotate,” for that was not an issue of 

examination. Rather, Zipher had distinguished Barrus as 

regulating tension by varying drag applied by a motor 

acting as a generator, and the examiner’s amendment 

reflects that distinction. 

The examiner’s amendment accords with the ’572 patent’s requirement that the motors apply torque to the 

spools, whether the torque causes rotation or resists it. 

This active energization of the ’572 patent’s motors is 

distinct from Barrus, where passive resistive torque is 

created by lowering the resistance in the output circuit of 

a motor acting as a generator. See Barrus col.4 ll.5-15. 

The prosecution history distinguishes the resistance drag 

of the second spool as in Barrus, and requires that “to 

drive the spools” includes both rotation torque and hold-
15 MARKEM-IMAJE CORP v. ZIPHER LTD

ing torque. The district court’s construction that “drive” 

requires that the supply spool must always rotate to 

control the tension is incorrect. 

II 

Zipher also appeals the district court’s construction 

that the claims require “some method of deriving a tension measurement,” Markem, 2008 WL 4116666, at *12. 

Markem had asked the district court to hold that “using a 

contactless means of tension measurement that occurs 

during the rotation of both motors is a necessary and 

inherent aspect of such measurement because the specification does not describe any other method of such measurement.” Id. The district court declined this request, 

but stated that “some method of deriving a tension measurement, whether directly or indirectly, is a necessary 

predicate to maintaining tension ‘between predetermined 

limit values.’” Id. The court reasoned that “[w]ithout 

having a reasonable estimate of the current tape tension, 

it is not possible to identify whether the tension is approaching or exceeding the limit values.” Id.

Zipher argues that the claim does not explicitly recite 

measuring tension, and that construing the claims to 

require tension measurement would import a limitation 

into the claims from the specification and violate the 

mandate of Rambus Inc. v. Infineon Tech. AG that “the 

claims need not recite every component necessary to 

enable operation of a working device.” 318 F.3d 1081, 

1093 (Fed. Cir. 2003). We agree with Zipher. That a 

device will only operate if certain elements are included is 

not grounds to incorporate those elements into the construction of the claims. A claim to an engine providing 

motive power to a car should not be construed to incorporate a limitation for an exhaust pipe, though an engine 
MARKEM-IMAJE CORP v. ZIPHER LTD 16

may not function without one. Thus, though “some 

method of deriving a tension measurement” may be 

required to make a claimed device operational, it is not 

proper to incorporate that method into the claim construction. We therefore reverse the district court’s determination that the claims require “some method of deriving a 

tension measurement.” 

On our holding that “drive” is properly construed to 

mean the application of torque to the spools, whether the 

torque causes rotation or resists it, we vacate the judgment of non-infringement, and remand for determination 

of infringement on the corrected claim constructions. 

VACATED and REMANDED 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MARKEM-IMAJE CORPORATION, 

Plaintiff-Appellee, 

v. 

ZIPHER LTD. AND VIDEOJET TECHNOLOGIES, 

INC., 

Defendants-Appellants. 

__________________________ 

2010-1305 

__________________________ 

Appeal from the United States District Court for the 

District of New Hampshire in Case No. 07-CV-0006, 

Judge Paul J. Barbadoro. 

__________________________ 

NEWMAN, Circuit Judge, dissenting. 

I concur in Part I of the court’s decision. I would, 

however, affirm the district court’s finding that “some 

method of deriving a tension measurement, whether 

directly or indirectly, is a necessary predicate to maintaining tension ‘between predetermined values.’” As the 

district court reasoned, “[w]ithout having a reasonable 

estimate of the current tape tension, it is not possible to 

identify whether the tension is approaching or exceeding 

the limit values.” Markem-Imaje Corp. v. Zipher Ltd., 

2008 WL 4116666, *12 (D.N.H. Aug. 28, 2008). The panel 

majority’s contrary result ignores the paramount importance of the specification in claim construction. See
MARKEM-IMAJE CORP v. ZIPHER LTD 2

Retractable Techs., Inc. v. Becton, Dickinson & Co., 2011 

WL 2652448, at *8 (Fed. Cir., July 8, 2011) (“In reviewing 

the intrinsic record to construe the claims, we strive to 

capture the scope of the actual invention, rather than . . . 

allow the claim language to become divorced from what 

the specification conveys is the invention.”). Accordingly, 

I respectfully dissent from Part II of the court’s decision. 

Claims do not stand alone, but rather, are part of a 

“fully integrated written instrument,” consisting of a 

specification that concludes with claims. Phillips v. AWH 

Corp., 415 F.3d 1303, 1315 (Fed Cir. 2005) (en banc) 

(quoting Markman v. Westview Instruments, Inc., 52 F.3d 

967, 978 (Fed. Cir. 1995) (en banc)). As recognized by the 

Supreme Court, it “is fundamental that claims are to be 

construed in light of the specifications and both are to be 

read with a view to ascertaining the invention,” United 

States v. Adams, 383 U.S. 39, 49 (1966), and as stated by 

Judge Rich for this court, “the descriptive part of the 

specification aids in ascertaining the scope and meaning 

of the claims inasmuch as the words of the claims must be 

based on the description. The specification is, thus, the 

primary basis for construing the claims.” Standard Oil 

Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 

1985). 

The specification “is the single best guide to the meaning of a disputed term,” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, 90 F.3d 1567, 1582 

(Fed. Cir. 1996)), for the specification shows what the 

inventor actually invented. See Bass Pro Trademarks v. 

Cabela’s Inc., 485 F.3d 1364, 1369 (Fed. Cir. 2007) 

(“Claims are construed to implement the invention described in the specification.”). Where the specification 

clearly and consistently sets the scope of a disputed claim, 

that scope governs the construction of the claim. See On 

Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 
3 MARKEM-IMAJE CORP v. ZIPHER LTD

1331, 1339-40 (Fed. Cir. 2006) (“In general, the scope and 

outer boundary of claims is set by the patentee’s description of his invention.” (citing Phillips, 415 F.3d at 1313-

14)). This court has no authority to enlarge the scope of 

the patent beyond what the patentee described as its 

invention, notwithstanding my colleagues’ curious analogy to a car and its tailpipe. Maj. Op. at 15-16. Where a 

limitation is placed in a claim by the specification, the 

claim must be construed to include the limitation. 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). The claims 

cannot transcend the invention that entitles the inventor 

to a patent. See Topliff v. Topliff, 145 U.S. 156, 171 

(1892) (“The object of the patent law is to secure to inventors a monopoly of what they have actually invented or 

discovered . . . .”). 

My colleagues’ reliance on the “mandate” of Rambus 

Inc. v. Infineon Tech. AG, 318 F.3d 1081 (Fed. Cir. 2003), 

is misguided, as “[a]ll rules of construction must be understood in terms of the factual settings that produced 

them, and applied in fidelity to their origins.” Modine 

Mfg. Co. v. Int’l Trade Comm’n, 75 F.3d 1545, 1551 (Fed. 

Cir. 1996). In Rambus, the district court interpreted 

claim language requiring a response to a “read request” to 

mean that the “read request” must include address and 

control information. This court reversed, holding that the 

district court’s construction conflicted with the specification, which indicated that the address and control infor-
MARKEM-IMAJE CORP v. ZIPHER LTD 4

mation were part of the request packet, not the read 

request. 318 F.3d at 1091-93. 

By contrast, in this case the specification fully supports the district court’s construction. Although the claim 

does not explicitly include terms for measuring tension, 

the specification describes as the invention the maintaining of the ribbon tension (t) within a predetermined 

amount, and “mathematical processing” whereby the 

“addition or removal of ribbon maintains ribbon tension 

within acceptable limits.” U.S. Patent No. 7,150,572, 

col.22 ll.38-42. As the district court found, “some method 

of deriving a tension measurement, whether directly or 

indirectly” is required. Markem, 2008 WL 4116666 at 

*12. Simply put, the printer must be able to measure 

tension so that the controller can “calculate a length of 

tape to be added to or subtracted from tape extending 

between said spools in order to maintain tension in said 

tape between predetermined limit values.” ’572 patent, 

claim 1. The specification states that “a measure of tape 

tension may be calculated by reference to a measure of 

motor step rate, the calibration data related to the step 

rate, and the power consumed by the motor,” and further, 

that a “measure of tension t may be calculated from the 

measures of power supplied to the two motors, measures 

of the spool radii, calibration factors for the two motors 

related to the step rate of the motors.” Id. at col.5 ll.19-

22, 30-34. Thus while the invention is flexible as to how 

tension is measured, and permits measurement through 

indirect methods, some method of measurement is contemplated and required, as found by the trial court. 

From my colleagues’ flawed view of the law of claim 

construction, and their reversal of the trial court’s correct 

and well reasoned construction, I respectfully dissent.