NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

JOY MM DELAWARE, INC. AND 

JOY TECHNOLOGIES, INC. (DOING BUSINESS AS 

JOY MINING MACHINERY), 

Plaintiffs-Appellants, 

v. 

CINCINNATI MINE MACHINERY, CO., 

Defendant-Appellee. 

__________________________ 

2012-1153 

__________________________ 

Appeal from the United States District Court for the 

Western District of Pennsylvania in case no. 09-CV-1415, 

Chief Judge Gary L. Lancaster. 

__________________________ 

Decided: November 8, 2012 

__________________________ 

KATHERINE W. SCHILL, Michael Best & Friedrich, 

LLP, of Milwaukee, Wisconsin, argued for plaintiffsappellants. With him on the brief was JONATHAN H.

MARGOLIES. 
JOY MM DELAWARE v. CINCINNATI MINE 2

BRETT A. SCHATZ, Wood, Herron & Evans, L.L.P., of 

Cincinnati, Ohio, argued for defendant-appellee. With 

him on the brief was GREGORY F. AHRENS. 

__________________________ 

Before BRYSON, PROST, and REYNA, Circuit Judges. 

PROST, Circuit Judge. 

Joy MM Delaware, Inc. and Joy Technologies, Inc. 

(collectively “Joy”) appeal the district court’s grant of 

summary judgment to Cincinnati Mine Machinery, Co., 

(“CMM”) of noninfringement of claim 2 of U.S. Patent No. 

6,662,932 (“’932 patent”) and of invalidity of that claim for 

failing to satisfy the best mode requirement of 35 U.S.C. 

§ 112. As part of its appeal, Joy also challenges the 

district court’s construction of the term “indentations” in 

that claim. Because the district court properly construed 

the term “indentations,” we affirm the grant of summary 

judgment of noninfringement. However, because there is 

no evidence in the record upon which a reasonable jury 

could rely to find that the inventor of the ’932 patent 

concealed the best mode for practicing his invention, we 

reverse the grant of summary judgment to CMM with 

respect to best mode and remand for entry of summary 

judgment in favor of Joy on that issue. 

BACKGROUND

Joy filed suit against CMM in October 2009 alleging 

that CMM’s mining machine, the DA-350 flight conveyor 

(“DA-350”), infringed claim 2 of the ’932 patent. Claim 2 

is directed at an apparatus for use in mining and reads: 

A chain and flight assembly adapted to travel over 

a pan, said conveyor chain and flight assembly including 
3 JOY MM DELAWARE v. CINCINNATI MINE

a first link assembly and a second link assembly, 

each of which includes 

two spaced apart drive pins, each of which has 

a first end and a second end, 

two spaced apart side plates, each of which 

has two spaced apart openings, each opening receiving a different one of said drive 

pins, and 

drive pin retaining means for retaining said 

drive pins in said side plates, 

a swivel assembly connecting said two link 

assemblies, said swivel assembly including a swivel pin, 

a male connecting lug having a base having a 

horizontal bore that receives one of said 

drive pins of said first link assembly, and 

a tongue connected to said base, and 

a female connecting lug having a base having 

a horizontal bore that receives one of said 

drive pins of said second link assembly, 

and 

a spaced apart upper lip and lower lip connected to said base, said male connecting 

lug tongue extending between said spaced 

apart lips, each of said lips and said 

tongue having openings therein that form 

a bore through the male and female lugs 

and receives said swivel pin and 
JOY MM DELAWARE v. CINCINNATI MINE 4

swivel pin retaining means for retaining said 

swivel pin in said lugs, and 

a first flight connected to one of said first and 

said second link assemblies, said flight 

having a flight head having two spaced 

apart indentations, each of which receives 

a different one of said first ends of said 

drive pins, and 

first flight securing means retaining said 

drive pin first end in said first flight head 

so that said first flight head is paced from 

its respective side plate, and 

a second flight connected to said one of said 

first and said second link assemblies, said 

flight having a flight head having two 

spaced apart indentations, each of which 

receives a different one of said second 

ends of said drive pins, and 

second flight securing means retaining said 

drive pin second end of said second flight 

head so that said second flight head is 

spaced from its respective side plate. 

’932 patent col. 4 l. 48–col. 6 l. 11. 

CMM denied infringement and asserted defenses and 

counterclaims of invalidity, including that claim 2 failed 

the best mode requirement of 35 U.S.C. § 112. In October 

2010, the district court issued a Markman opinion in 

which it construed the word “indentations” used in claim 

2 to mean: “recessed or concaved areas . . . into which 

something can be inserted, but through which it cannot 

pass.” J.A. 85. That construction was not the definition 
5 JOY MM DELAWARE v. CINCINNATI MINE

preferred by Joy, “indentations or openings,” or CMM, 

“notches.” J.A. 153. 

After subsequent briefing, the district court granted 

summary judgment of noninfringement to CMM because 

it reasoned that the DA-350 could not meet the “two 

spaced apart indentations” limitation of claim 2 under the 

doctrine of equivalents.1 Joy argued that limitation was 

met by the holes in the DA-350’s flight head through 

which pins passed. In the court’s view, however, its 

construction of “indentations” dictated that “indentations” 

were binary opposites of such holes. The court reasoned 

that Joy’s infringement claim had to fail under the allelements rule because finding the holes in the DA-350 

flight head to be equivalent to “indentations” would read 

the “two spaced apart indentations” limitation out of 

claim 2. 

The district court also granted summary judgment in 

favor of CMM on invalidity of claim 2 for failing the best 

mode requirement. During discovery, the inventor of the 

’932 patent (“’932 Inventor”) admitted that press-fitting 

was the preferred way to retain the drive pins in the side 

plates in the invention of claim 2 but that only welding 

was discussed in the patent as a means to do so. Despite 

evidence from both parties that press-fitting was a substitute for welding well-known to those of ordinary skill in 

the art, the district court held that the failure to disclose 

press-fitting as the best mode for the retaining means 

invalidated claim 2 under 35 U.S.C. § 112. 

Joy timely appealed both grants of summary judgment and the construction of the term “indentations.” 

 1 Joy conceded that the DA-350 does not literally 

infringe claim 2, assuming, of course, that the district 

court’s construction of “indentations” was without error. 
JOY MM DELAWARE v. CINCINNATI MINE 6

DISCUSSION

We review de novo the district court’s claim construction, grants of summary judgment, and application of the 

all-elements rule. See Cordis Corp. v. Boston Scientific 

Corp., 561 F.3d 1319, 1330 (Fed. Cir. 2009); Consol. 

Edison Co. of N.Y., Inc. v. Richardson, 232 F.3d 1380, 

1383 (Fed. Cir. 2000); Cybor Corp. v. FAS Techs., Inc., 138 

F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). 

A. Claim Construction 

The only relevant question of claim construction 

raised by Joy on appeal is whether the term “indentations” as used in claim 2 expressly excludes “holes.” We 

hold that it does and that the district court’s construction 

properly limited the term to structures “into which something can be inserted, but through which it cannot pass.” 

The ordinary meaning of the term “indentions” as 

used in claim 2 is unambiguous. See Phillips v. AWH 

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

some cases, the ordinary meaning of claim language as 

understood by a person of skill in the art may be readily 

apparent even to lay judges, and claim construction in 

such cases involves little more than the application of the 

widely accepted meaning of commonly understood 

words.”). The term has a commonly accepted meaning 

that does not include a hole. See Webster’s Third International Dictionary (1993) (defining “indentation” as “an 

angular cut” or “a notch” or “a small surface depression”); 

Oxford English Dictionary (2d ed. 1989) (defining “indentation” as a “cut, notch, or angular incision”); see also

Phillips, 415 F.3d at 1314 (“In [cases in which the ordinary meaning of claim language may be readily apparent 

even to lay judges], general purpose dictionaries may be 
7 JOY MM DELAWARE v. CINCINNATI MINE

helpful.”). There is nothing in the language of claim 2, or 

the written description, to indicate that the ’932 Inventor 

intended for the definition of the term “indentations” to 

extend beyond its ordinary meaning to include holes. As 

used in claim 2, “indentations” describe the parts of the 

flight head structure that receive the end of the drive 

pins—which do not pass through the indentations. See

’932 patent col. 5 l. 9–col. 6 l. 11. And while the written 

description uses the phrase “indentations or holes” to 

describe the flight head structure that receives the drive 

pin ends, see ’932 patent Abstract; col. 3 ll. 52-56, the ’932 

Inventor’s use of the disjunctive “or” in that phrase indicates that he appreciated the commonly understood 

meaning of “indentations” as exclusive of holes. Given 

that indication, because the ’932 Inventor chose to only 

claim “indentations,” not “indentations or holes,” see ’932 

patent col. 5 l. 9–col. 6 l. 11, we decline to extend the 

meaning of “indentations” beyond its ordinary one to 

include holes. Indeed, when the ’932 Inventor chose to 

indicate that a claim limitation encompassed a hole, he 

used the words “bore” or “opening.” See ’932 patent col. 1 

ll. 53-56; col. 3 ll. 5-10; col. 4 ll. 55-56; col. 5 ll. 1-6; Fig. 2. 

The use of different claim terms to describe structures 

that include holes further solidifies our conclusion that 

the ordinary meaning of the term “indentations” in claim 

2 does not. See CAE Screenplates Inc. v. Heinrich Fielder 

GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In 

the absence of any evidence to the contrary, we must 

presume that the use of these different terms in the 

claims connotes different meanings.”). The district court’s 

construction of the term “indentations” was correct. 

B. Noninfringement 

In light of its construction of “indentations,” the district court held that CMM’s accused mining machine did 
JOY MM DELAWARE v. CINCINNATI MINE 8

not infringe claim 2 under the doctrine of equivalents 

because of the all-elements rule. We agree. Given that 

the construction of “indentations” expressly excludes a 

hole, the holes in the accused flight head of the DA-350 

cannot be equivalent to the indentations in the flight head 

of the invention of claim 2. If holes could be equivalent to 

“indentations” as construed, the limitation requiring “two 

spaced apart indentations” would be read out of claim 2. 

As the specification makes clear, the ’932 Inventor chose 

to claim “indentations,” not holes, in claim 2. Compare

’932 patent Abstract; col. 3 ll. 52-56 (stating that “indentations or holes” could be used in the flight head) with

’932 patent col. 5 l. 9–col. 6 l. 11 (claiming only “indentations”). In light of that deliberate choice by the inventor, 

which informed our understanding that “indentations” is 

limited to its commonly accepted meaning, we hold that 

holes do not satisfy the “indentations” limitation of claim 

2 under the doctrine of equivalents. See Asyst Techs., Inc. 

v Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005). 

Accordingly, because it cannot be reasonably disputed 

that a pin in CMM’s accused mining machine passes 

through the holes in its flight head, we affirm the grant of 

summary judgment of noninfringement to CMM. 

C. Best Mode 

To establish that claim 2 fails the best mode requirement, CMM must by prove by clear and convincing evidence that the ’932 Inventor concealed a best mode of 

practicing his claimed invention from the public. See

Ajinomoto Co. v. Int’l Trade Comm’n, 597 F.3d 1267, 1273 

(Fed. Cir. 2010); Young Dental Mfg. Co. v. Q3 Special 

Prods., Inc., 112 F.3d 1137, 1144 (Fed. Cir. 1997). 

Whether an inventor “concealed” the best mode of his 

invention from the public turns on whether “the inventor’s disclosure is adequate to enable one of ordinary skill 
9 JOY MM DELAWARE v. CINCINNATI MINE

in the art to practice the best mode of the invention.” Id.

(citation omitted). Press-fitting, which CMM asserts was 

concealed as the best mode for the drive pin retaining 

means, was a well-known substitute for welding to those 

of ordinary skill in the art at the time of the invention. 

There is no genuine dispute of the parties’ experts on that 

point. Thus, there is no genuine dispute that one of 

ordinary skill in the art had the requisite knowledge 

necessary to use press-fitting as the drive pin retaining 

means of claim 2. Accordingly, CMM cannot point to any 

clear and convincing evidence upon which a reasonable 

jury could rely to find that the omission of press-fitting 

from the written description of the ’932 patent “concealed” 

its use as a drive pin retaining means from the public. 

We therefore reverse the district court’s grant of summary 

judgment to CMM that claim 2 is invalid for failing the 

best mode requirement and remand to the district court to 

enter summary judgment in favor of Joy on that issue.2 

 2 Whether or not the relevant claim element (here, 

“means for retaining”) is written in means-plus-function 

form is immaterial to our conclusion. At its heart, the 

best mode requirement is concerned with preventing 

inventors from concealing the best mode of their inventions while being rewarded with the right to exclude 

others from making or using it. See, e.g., Teleflex, Inc. v. 

Ficosa N. Am. Corp., 299 F.3d 1313, 1330 (Fed. Cir. 2002). 

An inventor does not conceal the best mode of an invention by disclosing only one of many modes for enabling a 

claim element when all of the other non-disclosed modes 

are already well-known substitutes in the art. One of 

ordinary skill in the art would not need to be reminded of 

those substitutes to practice the best mode of the invention. 
JOY MM DELAWARE v. CINCINNATI MINE 10

CONCLUSION

Because the district court properly construed the term 

“indentations” and the holes in the flight head of the DA350 cannot satisfy the “two spaced apart indentations” 

limitation of claim 2 under the doctrine of equivalents, we 

affirm the grant of summary judgment of noninfringement to CMM. Because there is no evidence in the record 

upon which a reasonable jury could rely to find that the 

’932 Inventor concealed the best mode for practicing the 

invention of claim 2, we reverse the district court’s grant 

of summary judgment to CMM on best mode and remand 

to the district court for entry of summary judgment in 

favor of Joy on that issue. 

COSTS

Each party shall bear its own costs. 

AFFIRMED-IN-PART, REVERSED-IN-PART, AND 

REMANDED