## United States Court of Appeals for the Federal Circuit

04-1411, -1421

PRIMA TEK II, L.L.C. and SOUTHPAC TRUST INTERNATIONAL, INC., as Trustee for the Family Trust U/T/A dated 12/8/95, Plaintiffs-Cross Appellants,

v.

POLYPAP, S.A.R.L., PHILIPPE CHARRIN, and ANDRE CHARRIN, Defendants-Appellants.

Joseph P. Titterington , Dunlap, Codding & Rogers, P.C., of Oklahoma City, Oklahoma, argued for plai ntiffs-cross appellants. David I. Roche , Baker & McKenzie, of Chicago, Illinois, argued for defendantsappellants. Appealed from: United States District C ourt for the Southern District of Illinois Judge Michael J. Reagan

## United States Court of Appeals for the Federal Circuit

04-1411, -1421 PRIMA TEK II, L.L.C. and SOUTHPAC TRUST INTERNATIONAL, INC., as Trustee for the Family Trust U/T/A dated 12/8/95, Plaintiffs-Cross Appellants,

v.

POLYPAP, S.A.R.L., PHILIPPE CHARRIN, and ANDRE CHARRIN, Defendants-Appellants.

___________________________ DECIDED: June 22, 2005

___________________________ Before GAJARSA, Circuit Judge , PLAGER, Senior Circuit Judge , and DYK, Circuit Judge

. DYK, Circuit Judge

. Polypap, S.A.R.L., Philippe Charrin, and Andre Charrin (collectively “Polypap”) appeal from the judgment of the district court holding cl aim 15 of United States Patent No. 5,410,856 (the “’856 patent”) and claim 9 of United Stat es Patent No. 5,615,532 (the “’532 patent”) not invalid and infringed by Polypap, and enjoi ning Polypap from further infringement by making, using, or selling the accu sed device, or instructing others in its use. Prima Tek II, L.L.C. v. Polypap SARL , 316 F. Supp. 2d 693 (S.D. Ill. 2004). Prima Tek II, L.L.C. and Southpac Trust International, Inc., as Trustee for theFamily Trust U/T/A dated 12/8/ 95 (collectively “Prima Tek”) cross-appeal the judgment of the district court holding Polypap not liable for induced or contributory infringement of the asserted claims of the patents. We re verse because we find the asserted claims of the ’856 and ’532 patents invalid as anticipated, and dismiss the cross-appeal as moot. BACKGROUND
I Prima Tek and Polypap are competitors in t he floral products market. Polypap is a French business that sells a product in t he United States called the Bouquett’O (“the accused product”). The accused product is a semicircular piece of plastic that can be formed into a disposable device for holding fl oral arrangements. On March 29, 1999, Prima Tek filed suit against Polypap for infringement of, inter alia , claim 15 of the ’856 patent and claim 9 of the ’532 patent. The district court granted summary judgment of non-infringement in favor of Polypap, wh ich decision was appealed to this court. Prima Tek II, L.L.C. v. Polypap, S.A.R.L. , 318 F.3d 1143, 1145 (Fed. Cir. 2003). We held that the district court had used an incorrect clai m construction, vacated the decision, and remanded for further proceedings. Id. at 1154. We specifica lly held that the phrase “floral holding material having an upper end, a lower end and an outer peripheral surface, the floral holding material being constr ucted of a material capable of receiving a portion of the floral grouping and supporting t he floral grouping witho ut any pot means” must be given its ordinary meaning, and is not limited to floral foam or soil. Id. at 1149,
1152. After a bench trial, the district court hel d the asserted claims of the patents not invalid and infringed by Polypap, and accordi ngly enjoined Polypap from making, using,

04-1411, -1421 2or selling the accused product or instructing other s in its use. The di strict court rejected Prima Tek’s claims that Polypap was liable for induced and contributory infringement. The district court also rejected Polypap’s claim that Prima Tek engaged in inequitable conduct in the prosecution of the pat ents. Polypap appeals and Prima Tek crossappeals from the district court’s judgment of no induced or contributory infringement.
II The asserted claims describe an assemb ly and method for displaying a floral grouping. They generally describe a floral gr ouping in which flower stems are inserted into floral foam, the foam wr apped in a sheet of material and ti ed near the top. Claim 15 of the ’856 patent incl udes limitations for, inter alia , a “floral holding material,” the absence of any “pot means,” and a “crimped portion in the sheet of material” having “at least one overlapping fold.” 1 Claim 9 of the ’532 patent includes limitations for, inter

1 Claim 15 of the ’856 patent reads in its entirety: 15. A decorative assembly comprising: a floral grouping having a bloom end and a stem end; a floral holding material having an upper end, a lower end and an outer peripheral surface, the floral holdi ng material being constructed of a material capable of receiving a portion of the floral grouping and supporting the floral grouping without any pot means, t he stem end of the floral grouping being disposed in the floral holding material and the floral holding material supporting t he floral grouping with a portion of the floral grouping near the bloom end thereof extending a distance upwardly beyond the upper end of the floral holding material; a sheet of material having an upper su rface, a lower surface and an outer periphery, the upper surface of the s heet of material being disposed adjacent a portion of the outer peripheral surface of the floral holding material and the sheet of materi al extending about a portion of the outer peripheral surface of the flor al holding material, the sheet of material extending about the outer per ipheral surface of the floral holding material and leaving uncovered a portion of the floral holding material near the upper end thereof uncovered whereby the floral

04-1411, -1421 3alia , “providing a floral holding material,” the absence of any “pot means,” and “disposing banding means about the sheet of ma terial . . . causi ng the banding means to press a portion of the sheet of material agai nst the outer surface of the floral holding material.” 2

grouping extends upwardly beyond the upper end of the floral holding material and above the sheet of material; and means for forming a crimped portion in the sheet of material with the crimped portion cooperating to hold the s heet of material in the position extended about the floral holding mate rial to provide a decorative covering, the crimped portion being fo rmed in the sheet of material near the upper end of the fl oral holding material wherein the means for forming a crimped portion is used to form at least one overlapping fold in the sheet of material, which over lapping fold is substantially bonded via the means for forming the cr imped portion and the crimped portion engaging a portion of the floral holding material for cooperating to hold the sheet of material in the posit ion extended about the floral holding material to provide a decorative covering. 2 Claim 9 of the ’532 patent reads in its entirety: 9. A method for providing a decorative covering comprising: providing a floral grouping hav ing a bloom end and a stem end; providing a floral holding material having an upper end, a lower end and an outer peripheral surface, t he floral holding material being constructed of a material capable of receiving a portion of the floral grouping and supporting the floral grouping without any pot means; providing a sheet of material having an upper surface, a lower surface and an outer periphery; disposing the stem end of the floral gr ouping in the floral holding material; disposing the upper surfac e of the sheet of material near the outer peripheral surface of the floral holding material and extending the sheet of material about at least a por tion of the outer peripheral surface of the floral holding material while leaving at least a portion of the upper end of the floral holding materi al uncovered, the upper surface of the sheet of material being dis posed adjacent the outer peripheral surface of the floral holding material; and disposing banding means about the sheet of material in a position circumferentially about the floral holding material causing the banding means to press a portion of the sheet of material against the outer surface of the floral holding materi al for cooperating to hold the sheet of material in the position extended about the floral holding material to provide the decorative covering.
04-1411, -1421 4This case presents the ques tion of whether the asserted claims are invalid as anticipated. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). DISCUSSION In considering questions of anticipation, we are mindful that if an invalid patent is issued, competitors may be det erred from challenging it by the substantial cost of litigation. Even if a successful chall enge is brought, competition may be suppressed during the pendency of the lit igation. The risk of antitrust liability or litigation sanctions may deter some from seeking to secure or enforce invalid pat ents, but our patent system depends primarily on t he Patent and Trademark Office’s (“PTO’s”) care in screening out invalid patent s during prosecution. Anticipation is ultimately a question of fact, but also depends on proper claim construction—a legal issue. We review t he district court’s claim construction without deference, and its factual determi nations for clear error. Golden Blount, Inc. v. Robert H. Peterson Co. , 365 F.3d 1054, 1058 (Fed. Cir . 2004). Here, extensive prior art exists regarding products and methods for displaying floral groupings, and the district court considered prior art stretching back over a century. It appears likel y that the asserted claims are anticipated by the 1899 Bertels refe rence, but for simplicity we address only the more recent Charrin reference, which the district court found to be “substantially identical” to the much earlier Bertels refer ence. 316 F. Supp. 2d at 707. Under the appropriate standard, the Charrin prior art re ference, which was before the examiner during prosecution of the ’ 532 patent, clearly anticipates the asserted claims of the patents in suit. The Charrin reference is a published French pat ent application naming

04-1411, -1421 5Andre Charrin as the applicant and inventor . In one embodiment, flowers are inserted into a mass of wetted moss about which a co ver made of waterproof material is wrapped. 3 The cover is tied at t he top by way of a cord passing through holes in the cover, which is then tightened. Prima Tek agrees that the Charrin refer ence anticipates but fo r three limitations: the “without any pot m eans” limitation, the alleged require ment that the floral holding material hold its shape, and t he crimping limitation (found only in claim 15 of the ’856 patent). We first consider the meaning of t he claim term “pot means” in order to determine whether the “without any pot means” limitation was satisfied by the Charrin reference. We did not construe this clai m language in our prior opinion. The district court defined the “[m]aterial c apable of receiving a portion of the floral grouping and supporting the floral grouping wit hout any pot means” limitation as “any material that can function as floral holding material wh ich supports the floral grouping without a closed bottom receptacle such as a flower pot, vase, etc.” 316 F. Supp. 2d at 698. Thus, the district court appears to have c onstrued “pot means” as “a closed bottom receptacle such as a flower pot, vase, etc.” The parties did not contest this construction in their briefs, but at oral argument each proposed a different construction. Polypap urged a broader construction of “a shell-lik e structure that s upports a grouping of

3 The parties dispute the proper transla tion of the French word “mousse” as found in the Charrin reference. Prima Tek contends, and district co urt held, that the word should be translated as “moss.” Poly pap contends that the word should be translated as “foam.” In light of our dis position, this controve rsy need not be addressed for we conclude that the asserted claims of the ’532 and ’856 patent s are invalid even assuming that “mousse” is properly trans lated as “moss” as Prima Tek contends.

04-1411, -1421 6flowers.” Prima Tek urged an even broader cons truction of “a container, or anything that serves like a container , to hold the floral holding material in place.” The specifications do not define pot means other than to give t he example of a flower pot. ’856 patent, col. 3, ll. 48-49; ’532, col. 3, ll. 50-51. When construing claims, we look first “to the words of the claims themselves . . . to define the scope of t he patented invention.” Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996). “[ W]ords in a claim are generally given their ordinary and customary meaning” unless some “special def inition of the term is clearly stated in the patent specification or file history.” Id. We may consult with dictionaries “in determining the ordinary and customar y meanings of claim terms.” Tex. Digital Sys., Inc. v. Telegenix, Inc. , 308 F.3d 1193, 1202 (Fed. Cir. 2002). “Pot” is defined as a “rounded metal or earthen container of varying size used chiefly for domestic purposes.” Webster’s Third New International Dictionary 1774 (2002). The Charrin reference clearly satisfies the “without a pot means” limit ation. It does not use a metal or earthenware container. Prim a Tek’s argument that the wire or string tied around the moss of the Charrin reference is a pot means is without merit. The district court appears to have constr ued the term “floral holding material” to require that the material hold its predete rmined shape. As require d by our previous opinion, 318 F.3d at 1152, the di strict court construed “flo ral holding material” in the context of its infringement determination to mean “[h]as an upper end, a lower end and an outer peripheral surface and is constructed of a material capable of receiving a portion of the floral groupi ng and supporting the floral gr ouping without any pot means,” 316 F. Supp. 2d at 697-98. However, in it s anticipation analysis, the district court

04-1411, -1421 7appeared to change its claim construction to dist inguish the Charrin reference from the patents by concluding that a necessary element of the term “floral holding material” is “that the material is [ ]capable of holding its predetermined shape.” 316 F. Supp. 2d at
706. 4 When this court previously construed “f loral holding material,” we held that the term should be given its ordinary meaning and is not limited to fl oral foam or soil. We did not include in that construction a requirem ent that the material be capable of holding its predetermined shape. 318 F.3d at 1149-52. The district court erred in adding such a limitation. Prima Tek attempts to defend the district court’s construction by pointing to claim language requiring that the floral holding ma terial have an upper end, a lower end, and an outer peripheral surface. This language, of course, includes virtually anything that is capable of holding flowers, and does not require that the ma terial hold its predetermined shape. Contrary to Prima Tek’s argum ent, the specification does not suggest otherwise. The specification reads: The floral holding means 18 may be the type of material commonly referred to in the art as floral foam or Oasis TM or may be soil or artificial soil or other earth composition so long as the material is capable of holding its predetermined shape and capabl e of receiving and supporting the floral grouping 26 without any additional pot means

. ’856 patent, col. 3, ll. 50-56; ’532 patent, co l. 3, ll. 52-57 (emphasis added). This language, which appears as part of the Descr iption of the Pref erred Embodiments, merely describes the preferred embodiment, and does not define floral holding material to include an undefined limitation not found in the ordinary meaning of the claim

4 The district court wrote: “In the drawing, the [m oss] is shown tied with a string or wire—an indication that the material is incapable of holding its predetermined shape, which is a necessary element of the term ‘floral holding material.’” Id.
04-1411, -1421 8language. We have repeatedly m ade clear that limitations cannot be imported from the specification into the claims. E.g. , Comark Communications, Inc. v. Harris Corp. , 156 F.3d 1182, 1186 (Fed. Cir. 1998). “[T]he cl aims of the patent will not be read restrictively unless the patent ee has demonstrated a clear int ention to limit the claim scope using words or expressions of m anifest exclusion or restriction.” Liebel-Flarsheim Co. v. Medrad, Inc. , 358 F.3d 898, 906 (Fed. Cir. 2004) (i nternal quotations and citation omitted). The language of the specifications here evinces no such clear intention. Finally, the district court held that t he Charrin reference does not include the crimping and overlapping fold lim itations of claim 15 of t he ’856 patent. The Charrin reference discloses the tying of a sheet of material with a string laced through holes in the sheet. The district court found that Polypap offered “no evi dence that a crimped portion is formed in the sheet of material” and therefore held the cr imping limitation not present in Charrin. 316 F. Supp. 2d at 707. The appellant concedes that the Charrin reference does not include a cr imping limitation, but argues that the limitation is inherent. We have previously held that “a prior art reference may anticipate when the claim limitation or limitati ons not expressly found in t hat reference are nonetheless inherent in it.” MEHL/Biophile Int’l Corp. v. Milgraum , 192 F.3d 1362, 1365 (Fed. Cir. 1999). Inherent anticipation does not require an appreciation of the inherent limitation by those of skill in the art before the cr itical date of the patents in issue. Schering Corp. v. Geneva Pharms., Inc. , 339 F.3d 1373, 1377 (Fed. Cir. 2003). Here the undisputed evidence shows t hat crimping and overlapping folds are inherent to the Charrin reference. The dr awings of the Charrin reference disclose a sheet of material containing a number of holes through which a string is laced. One

04-1411, -1421 9figure shows the sheet of mate rial tied up around a flower pot by the string such that the material has overlapping folds and is crimped. 5 Another figure shows the material lying flat with the string loose and a block of mo ss sitting on the sheet of material. The Charrin reference itself s hows that crimping is inherent. Moreover, Philippe Charrin provided testimony that when tightened, the string would create overlapping folds in the sheet of material. 6 Prima Tek presented no rebuttal evidence. The undisputed record shows that the crimping means was inherent in Charrin. 7
Under these circumstances we concl ude that claim 15 of the ’856 patent and claim 9 of the ’532 patent were anticipated by Charrin, and that claim 15 of the ’856 patent and claim 9 of the ’532 patent are invalid.

5 That figure appears in the Charrin reference:

6 Philippe Charrin testified as follows: Q . . . Do you see a string shown in figure 5? A Yes.

. . . . Q When the string is tightened to pu ll the sheet against the floral holding material, are there overlapping folds that are formed in the sheet? A Yes, overlaps. (J.A. at 1153.) 7 Expert testimony was not requir ed, the technology being easily understood without exper t testimony. Centricut, LLC v. Esab Group, Inc. , 390 F.3d 1361, 1369 (Fed. Cir. 2004).

04-1411, -1421 10CONCLUSION Claim 15 of the ’856 patent and claim 9 of the ’532 patent are invalid as anticipated by the Charrin refer ence. For this reason, the j udgment of the district court is reversed. The cross-appeal is dismissed as moot since there can be no contributory or induced infringement of invalid patent claims. REVERSED COSTS Costs to Polypap.

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