Page 1
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`é LexisNexisi
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`l of 2 DOCUMENTS
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`9 A
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`nalysis
`As of: May 27, 2014
`
`NOVATEK, INC., Plaintiff-Appellee, v. THE SOLLAMI COMPANY, Defend-
`ant-Appellant.
`
`2013-1389
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`2014 (LS. App. LEXIS 5512
`
`March 26, 2014, Decided
`
`THIS DECISION WAS ISSUED AS
`NOTICE:
`UNPUBLISHED OR NONPRECEDENTIAL AND
`MAY NOT BE CITED AS PRECEDENT. PLEASE
`REFER TO FEDERAL RULES OF APPELLATE PRO-
`CEDURE RULE 32.1 GOVERNING THE CITATION
`TO UNPUBLISHED OPINIONS.
`
`[*1]
`PRIOR HISTORY:
`Appeal from the United States District Court for the
`District of Utah in Nos.
`ll-CV-0180 and ll-CV-1112,
`Judge David Nuffer.
`Novatek, Inc. v. Sollami C0., 2013 US. Dist. LEI/US
`62488 (D. Utah, Apr. 30, 2013)
`
`DISPOSITION:
`
`AFFIRMED.
`
`LexisNexis(R) Headnotes
`
`Patent Law > Infringement Actions > Claim Interpreta-
`tion >Aids
`
`Patent Law > Jurisdiction & Review > Standards of
`Review > De Novo Review
`
`[HNl] An appellate court reviews a district court's patent
`claim construction de novo. To ascertain the scope and
`meaning of the asserted claims, courts look to the words
`of the claims themselves, the specification, the prosecu-
`tion history, and, if necessary, any relevant extrinsic ev-
`idence.
`
`Patent Law > Claims & Specifications > Claim Lan-
`guage > Preambles
`Patent Law > Infringement Actions > Claim Interpreta-
`tion >Aids
`
`[HN2] A patent claim‘s preamble may limit the claim
`when the claim drafter uses the preamble to define the
`subject matter of the claim. A preamble is generally con-
`strued to be limiting if it recites essential structure or
`steps, or if it is necessary to give life, meaning, and vital-
`ity to the claim. For example, limitations in the body of
`the claim that rely upon and derive antecedent basis from
`the preamble may render the preamble a necessary com-
`ponent of the claimed invention and, therefore, a limita-
`tion on the claims. Also, where the specification under-
`scores structure or steps recited in the preamble as im-
`portant, the preamble may operate as a claim limitation.
`Further, clear reliance on the preamble during prosecu-
`tion to distinguish the claimed invention firom prior art
`transforms the preamble into a claim limitation because
`such reliance indicates use of the preamble to define, in
`part, the claimed invention.
`
`Patent Law > Claims & Specifications > Claim Lan-
`guage > Preambles
`Patent Law > Infringement Actions > Claim Interpreta-
`tion > Aids
`
`L&H CONCEPTS 2005
`SKYHAWKE TECHNOLOGIES V. L&H CONCEPTS
`IPR2014-00437
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 2
`
`[HN3] When a patentee defines a structurally complete
`invention in the claim body and uses the preamble only
`to state a purpose or intended use for the invention, the
`preamble is not a claim limitation.
`
`the summary judgment stage, the court credits all of the
`nonmovant‘s evidence and draws all justifiable infer-
`ences in her favor.
`
`Patent Law > Claims & Specifications > Claim Lan-
`guage > Preambles
`Patent Law > Infringement Actions > Claim Interpreta-
`tion >Aids
`
`[HN4] Whether a preamble is treated as a patent claim
`limitation is determined by the facts of each case and
`upon an understanding of what the inventors actually
`invented and intended to encompass by the claims.
`
`Patent Law > Infringement Actions > Claim Interpreta-
`tion >Aids
`
`is of course improper to limit patent
`[HN5] While it
`claims to the particular preferred embodiments described
`in the specification, the patentee‘s choice of preferred
`embodiments can shed light on the intended scope of the
`claims.
`
`Patent Law > Infringement Actions > Claim Interpreta-
`tion > Aids
`
`[HN6] The specification is the single best guide to the
`meaning of a disputed patent term.
`
`Patent Law > Infringement Actions > Summary Judg-
`ment > Claim Evaluation
`
`[HN9] To prove infringement, the patentee must show
`that an accused product embodies all limitations of the
`claim either literally or by the doctrine of equivalents. If
`any claim limitation is absent fiom the accused product,
`there is no literal infringement as a matter of law. Where
`a
`defendant
`seeks
`summary
`judgment
`of
`non-infringement, nothing more is required than the fil-
`ing of a motion stating that the patentee had no evidence
`of infringement and pointing to the specific ways in
`which accused products did not meet the claim limita-
`tions. The burden of production then shifts to the patent-
`ee to identify genuine issues that preclude summary
`judgment.
`
`COUNSEL: PHILIP W. TOWNSEND, III, of Provo,
`Utah, argued for plaintiff-appellee.
`
`JEFFREY T. MORRIS, Morris, Jobe, & Cook, LLC, of
`Pittsburgh, Pennsylvania, argued for defendant-appellant.
`
`JUDGES: Before NEWMAN, MOORE, and WAL-
`LACH, Circuit Judges. Opinion for the court filed by
`Circuit Judge WALLACH. Dissenting opinion filed by
`Circuit Judge MOORE.
`
`Patent Law > Infringement Actions > Claim Interpreta-
`tion > General Overview
`
`[HN7] When a patentee uses a claim term throughout the
`entire patent specification, in a manner consistent with
`only a single meaning, he has defined that term by im-
`plication.
`
`OPINION BY: WALLACH
`
`OPINION
`
`WALLACH, Circuit Judge.
`
`Civil Procedure > Summary Judgment > Appellate Re-
`view > Standards ofReview
`Civil Procedure > Summary Judgment > Standards >
`General Overview
`
`Patent Law > Infringement Actions > Summary Judg-
`ment > Appeals
`Patent Law > Jurisdiction & Review > Standards of
`Review > De Novo Review
`
`[HN8] An appellate court reviews the grant of summary
`judgment in a patent case de novo. Summary judgment is
`appropriate if the movant shows that there is no genuine
`dispute as to any material fact and the movant is entitled
`to judgment as a matter of law. Fed. R. Civ. P. 56(a). At
`
`In this patent case, Sollami Company ("Sollami")
`alleged Novatek, Inc. ("Novatek") infringed US. Patent
`Nos. 7,883,155 ("the ’155 patent") and 6,371,567 ("the
`’567 patent”). Particularly, in February 2011, Novatek
`instituted this declaratory judgment action at the US.
`District Court for the District of Utah on issues of inva-
`
`lidity and non-infringement of the ’155 patent. On July
`13, 2011, Sollami filed suit against Novatek in the
`Southem District of Illinois for infringement of the ’567
`patent. This latter suit was transferred to the District of
`Utah, and the two cases were consolidated in February
`2012. After claim construction, the district court found
`non-infringement in favor of Novatek. This
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 3
`
`[*2] court affirms.
`
`BACKGROUND
`
`issue involves equipment and
`The technology at
`machinery used in road milling, mining, and trenching
`operations. Specifically, the patents are directed to cutter
`bits,
`bit
`holders,
`and
`bit
`blocks
`used
`in
`the
`above-mentioned operations. The patents purport to pro-
`vide a better means for allowing the removal of a bit
`from a bit holder or a bit block, "especially when the bit
`becomes worn and in need of replacement." E.g.,
`’567
`patent col. 1 11. 36-37, 43-44. The figure below is illus-
`trative:
`
`’155 patent at [57]. A bit 16 and a spacer l7, togeth-
`er with a bit holder 18, and a bit block 20 comprise the
`claimed invention. The bit 16 includes a hardened tip 21
`which resides in a pocket in the front face 22 of a frus-
`to-conical forward portion 23 of the bit 16. Id. col. 2 l.
`65-col. 3 l. 1. "At the rear of the frustoconical portion
`(23) is a cylindrical front portion base 24." Id. col. 3 11.
`1-2. "Aft of the cylindrical base 24, the tip narrows to a
`cylindrical shank 25, which, [in certain embodiments],
`includes a C—shaped retainer 26 there around and a cy-
`lindrical shank portion base 27 defining the rear end of
`the bit 16." Id. col. 3 11.7-10.
`
`The ’567 patent was issued
`
` I
`
`‘
`
`“1‘
`
`1'
`t:
`\31‘5153.‘hz.‘2u:2uu>
`
`‘ [Hill
`.
`
`‘k
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 4
`
`[*3] on April 16, 2002, and the ’155 patent was is-
`sued on February 8, 2011. The two patents‘ specifications
`are not identical but are nonetheless substantially similar.
`Claims 1 to 9 of the ’567 patent and claims 1 to 4 of the
`’155 patent are the asserted claims in this case. Claim 1
`of the ’155 patent is representative:
`
`1. In an assembly for use in road mill-
`ing, trenching and mining equipment in-
`cluding a bit, bit holder and a bit block,
`said bit being mounta—ble in a first bore
`through said bit holder and said bit holder
`being mountable in a second bore through
`said bit block, said bit holder and bit
`block, in combination, comprising:
`
`a single piece bit holder structure in-
`cluding,
`
`a bit holder front portion and a gen-
`erally cylindrical bit holder shank portion
`extending axial-1y rearwardly from said
`front portion defining an annular sidewall,
`an elongate slot
`radially through said
`sidewall extending axially from a distal
`end of said shank and terminating be-
`tween said distal end and said front por-
`tion defining a C—shape portion of said
`shank, an outer surface of said C—shape
`portion providing interference with said
`second bore on said bit block sufficient to
`maintain said bit holder on said
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 5
`
`[*4] bit block during use.
`
`’155 patent col. 7 l. l4-col. 8. l. 8. Claim 1 of the ’567
`patent differs slightly, and recites:
`l. A bit holder for use in road milling,
`trenching and mining equipment as part of
`an assembly including a bit, said bit hold-
`er and a bit block, said bit being mounta-
`ble in a first bore through said bit holder
`and said bit holder being mounta—ble in a
`second bore through said bit block, said
`bit holder comprising:
`
`a bit receiving front portion termi-
`nating at an annular flange for engaging a
`face of said bit block, a shank portion ex-
`tending axially rear-wardly from said an-
`
`nular flange, said shank portion including
`a declining taper from adjacent said an-
`nular
`flange to adjacent a distal end
`thereof, said declining taper providing an
`interference fit between said bit holder
`
`and said bit block,
`
`said shank portion including an axial
`bore centrally therethrough, and
`
`means on said shank portion for
`providing increased resilience for an outer
`surface of said declining taper to increase
`the usable interference fit between said
`
`declining taper and said second bore on
`said bit block by at least about four times
`a standard interference fit therebetween as
`
`said shank portion is fully
`
`

`

`2014 U.S. App. LEXIS 5512, *
`
`Page 6
`
`Appellee's Br. 12; J.A. 332.
`
`The district court issued its claim construction order
`
`on December 4, 2012, and Novatek moved for summary
`judgment of non-infringement thereafter on December
`21, 2012. On April 30, 2013, the motion was granted and
`judgment was entered.1 Sollami timely appealed. This
`court has jurisdiction under 28 US. C. § 1295(a)(1)
`(2012).
`
`1 Although the district court's judgment does
`not discuss Novatek's invalidity counterclaims,
`"[the judgment] is clear that the district court in-
`tended to dispose of all the claims before it."
`Lovell v. Chandler, 303 F.3d 1039, 1049 (9th Cir.
`2002); Petty v. Manpower, Inc, 591 F.2d 615,
`617 (10th Cir. 1979) ("What is of importance is
`the district court's intent in issuing its order dis-
`missal of the complaint alone or actual dismissal
`of plaintiff s
`
`[*5] mounted on said second bore.
`
`’567patent col. 8 11. 11-33.
`
`Like Sollami, Novatek manufactures a bit assembly
`used in road milling, mining, and trenching operations
`("accused device"). Its assembly consists of a bit with a
`polycrystalline diamond ("PCD") coated tip that
`is
`brazed to a carbide bolster, which is then brazed to a
`steel body. Novatek provides the following depiction of
`its accused device:
`
`Doh'cncnnm Sumac.
`cm Subuni-
`
`Cab-’62 Balms
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 7
`
`[*6] entire action?").
`
`DISCUSSION
`
`Sollami makes the following arguments on appeal:
`(1) that the district court erred in construing "bit," "bit
`holder," and "shank" as recited in the asserted claims;
`and (2) that the district court erred in finding that the
`accused device does not have a "bit" as the district court
`
`construed the term. The issues presented therefore per-
`tain to the district court's claim construction and its grant
`of No—vatek‘s motion for
`summary judgment of
`non-infringement.
`
`A. The District Court Correctly Construed "Bit," "Bit
`Holder," and "Shank"
`
`[HNl] This court reviews a district court's claim
`construction de novo. Lighting Ballast Control LLC v.
`Philips Elecs. N. Am. Corp., No. 2012-1014, 2014 US.
`App. LEMS 3176, 2014 WL 667499, at *1, *16 (Fed.
`Cir. Feb. 21, 2014) (en banc). To ascertain the scope and
`meaning of the asserted claims, courts look to the words
`of the claims themselves, the specification, the prosecu-
`tion history, and, if necessary, any relevant extrinsic ev-
`idence. Phillips v. AWH Corp., 415 F3d 1303, 1315-17
`(Fed. Cir. 2005) (en banc).
`
`Relevant to this appeal, the district court construed,
`among other terms, "bit," "bit holder," and "shank." No-
`vatek, Inc. v. Sollami Co., No. 2:11-cv-00180, 2013 US.
`Dist. LEMS 62488, 2013 WL 1831995, at *3 (D. Utah
`Apr. 30, 2013).
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 8
`
`Sollami contends that certain terms inter-
`[*7]
`preted by the district court, including the term "bit," ap-
`pear only in the preambles of the asserted claims. Solla-
`mi argues "bit" is not a required structural element of the
`asserted claims because the preambles are not limitations
`on the claims. The district court concluded that the pre-
`ambles serve as limitations.
`
`[HN2] "A claim‘s preamble may limit the claim
`when the claim drafter uses the preamble to define the
`subject matter of the claim." August Tech. Corp. v.
`Camtek, Ltd, 655 F.3d 1278, 1284 (Fed Cir. 2011). On
`
`one hand, a preamble is generally construed to be limit-
`ing if it "‘recites essential structure or steps, or if it is
`necessary to give life, meaning, and vitality to the
`claim."' NTP, Inc. v. Research In Motion, Ltd, 418 F.3d
`1282, 1305 (Fed. Cir. 2005) (quoting Catalina Mktg.
`Int’l, Inc. v. Coolsavings.c0m, Inc., 289 F.3d 801, 808
`(Fed Cir. 2002)). For example, limitations in the body of
`the claim that rely upon and derive antecedent basis from
`the preamble may render the preamble a necessary com-
`ponent of the claimed invention; and therefore, a limita-
`tion on the claims. Id. at 1306.
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 9
`
`[*8] Also, where the specification underscores
`structure or steps recited in the preamble as important,
`the preamble may operate as a claim limitation. Catalina
`Mktg., 289 F.3d at 808. Further, "clear reliance on the
`preamble during prosecution to distinguish the claimed
`invention from prior art transforms the preamble into a
`claim limitation because such reliance indicates use of
`
`the preamble to define, in part, the claimed invention."
`Id. at 808—09.
`
`On the other hand, [HN3] when a patentee "defines a
`structurally complete invention in the claim body and
`uses the preamble only to state a purpose or intended use
`
`for the invention, the preamble is not a claim limitation."
`Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); see
`Pitney Bowes, Inc. v. Hewlett-Packard C0., 182 F.3d
`1298, 1305 (Fed. Cir. 1999) (explaining the preamble is
`not limiting if "the body of the claim fillly and intrinsi-
`cally sets forth the complete invention, including all of
`its limitations, and the preamble offers no distinct defmi—
`tion of any of the claimed invention‘s limitations, but
`rather merely states, for example, the purpose or intend-
`ed use of the invention"). [HN4] Whether a preamble is
`treated as a limitation is determined
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 10
`
`[*9] by the facts of each case and upon an under-
`standing of what the inventors actually invented and in-
`tended to encompass by the claims. Catalina Mktg., 289
`F.3d at 808.
`
`Here, as the district court concluded, the preambles
`of the asserted claims recite essential elements of the
`
`invention pertaining to, among other things, the bit, the
`bit holder, and the bit block in addition to the mounting
`relationship among these elements that make up the
`claimed bit assembly. For example,
`the preamble of
`claim 1 of the ’567 patent recites a "bit holder" that is a
`"part of an assembly including a bit, said bit holder and a
`
`bit bloc ," where the "bit" is "mountable in a first bore
`through said bit holder and said bit holder being moun-
`ta—ble in a second bore through said bit block." The
`preamble of claim 1 of the ’155 patent recites substan-
`tially the same. Particularly, it too refers to "an assem-
`bly" that includes "a bit, bit holder and a bit block." The
`body of claim 1 of the ’567 patent does not recite the
`complete invention, but refers back to the features of the
`bit assembly stated in the preamble, so that these refer-
`ences in the body of the claim derive their antecedent
`bases from the preamble. ’567 patent
`
`10
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 1 l
`
`[*10] col. 8 11. 11-33 ("bit holder, "bit block," and
`"second bore" finding antecedent bases in the preamble).
`
`The patents‘ specifications support this reading of
`the preambles. In particular, the specifications identify
`the recited structural elements in the patents‘ preambles
`as "the invention." The ’567 patent for instance provides:
`
`Referring to FIGS. 1-2, a bit mounting
`assembly, generally indicated at 20, con-
`structed in accordance with the present
`invention, includes a bit, generally indi-
`cated at 21, which is mounted on a bit
`holder, generally indicated at 22, which,
`
`in turn, is secured on a bit block, general-
`ly indicated at 23.
`
`’567 patent col. 2 11. 49-54; see also ’155 patent col. 2 11.
`59-64 ("[A] bit, bit holder and bit block assembly, gen-
`erally indicated at 15, constructed in accordance with the
`present invention, includes a bit, generally indicated at
`16 and a spacer, generally indicated at 17, together with
`a bit holder, generally indicated at 18 and a bit block,
`generally indicated at 20."). In addition, the purported
`improvement over prior art is stated as a "more efficient
`means for allowing the removal of a bit from a bit holder
`or a bit block." ’567 patent col. 1 11. 43-44.
`
`11
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 12
`
`[*11] These statements in the specification underscore
`structural elements recited in the preamble, e.g., "bit," as
`pertinent to the invention claimed. Proveris Scientific
`Corp. v. Innovasystems, Inc., 739 F.3d 1367, I3 73 (Fed
`Cir. 2014) ("[T]he preamble [provides for] the only ref-
`erence in any independent claim to the inventive concept
`.
`.
`. [and] [t]his fact alone is likely sufficient to support a
`conclusion that the preamble is limiting"); Deere & Co.
`v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012)
`(holding that the preamble phrase "rotary cutter dec "
`was a limitation where the specification referred to "the
`present invention" as "a rotary cutter deck"); Poly-Am,
`
`LP v. GSE Lining Tech, Inc., 383 F.3d 1303, 1310 (Fed.
`Cir. 2004) (construing preamble as limiting where it dis-
`closed a "f1mdamental characteristic of the claimed in-
`
`vention") (intemal quotation marks and citation omitted).
`
`The inventor's statements made during prosecution
`of the ’155 patent also highlight the relevance of the
`structural elements recited in the preambles. For in-
`stance,
`the inventor stated in a declaration that: "The
`present application is a bit holder that
`is stiffer and
`therefore holds the bit in
`
`12
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 13
`
`[*12] the proper position for heavy operating con-
`ditions .
`.
`.
`. A combination of the [cited prior art refer-
`ences] would cause the holder to rotate. In the industry,
`bits rotate, not holders." J.A. 253. In distinguishing prior
`art, the inventor stated that:
`
`The [prior art] reference has a wider
`notch at the rearward potion and a nar-
`rower width at the front face [than the bit
`holder of the claimed invention]. The
`present application is the reverse. This
`difference is material because the narrow-
`
`er rearward portion prevents the clogging
`of the notch and aids in removal of the bit.
`
`J.A. 254. Thus, the inventor during prosecution of the
`’155 patent relied on structural elements recited in the
`preamble to distinguish the claimed invention from the
`prior art.
`
`Accordingly, the preambles of the asserted claims
`are not merely limited to stating the purpose or intended
`use of the invention of the ’567 and ’155 patents, but
`rather contain essential structural elements that are high-
`lighted in the specification and which were relied upon
`during prosecution. Although Sollami argues that the
`essence of its invention is directed to a "bit holder" as
`
`opposed to a "bit," the intrinsic evidence does not sup-
`port
`
`13
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 14
`
`[*13] Sollami's contention. Indeed, in addition to
`the structural elements of the claimed bit assembly, the
`invention focuses on the mounting relationship among
`the bit, bit holder, and bit block. E.g, ’155 patent col. 4
`11. 7-9 ("Referring to FIG. 2, the mounting relation be-
`tween the bit block 20, bit holder 18, spacer 17 and bit
`16 is shown in cross section."). It is apparent that the
`"claim drafter [chose] to use both the preamble and the
`body to define the subject matter of the claimed inven-
`tion." Eaton Corp. v. Rockwell Int’l Corp, 323 F.3d
`1332, 1339 (Fed. Cir. 2003) (intemal quotation marks
`and citation omitted). Therefore, the district court did not
`
`err in concluding that the recited structural elements in
`the preambles serve as limitations that give "life, mean-
`ing, and vitality to the claims" as a whole. Novatek, 2013
`US. Dist. LE/US 62488, 2013 WL [831995, at *3.
`
`Even if "bit" is construed as a structural limitation,
`Sollami avers that the district court erred by requiring a
`bit with a shank and by requiring removability of the bit
`from the bit holder. The district court construed "bit" as
`
`"an object comprising a hardened tip and a shank
`mount-able in and removable from a bore through the
`front portion
`
`14
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 15
`
`[*14] of a bit holder," and "bit holder" as "[a]n ob-
`ject in which a removable bit is mounted in a bore in the
`front portion thereof." Novatek, 2013 US. Dist. LE/US
`62488, 2013 WL 1831995, at *3. The court's construc-
`tions were correct.
`
`Claim 1 of the ’56 7 patent provides that the "bit [is]
`mountable in a first bore through said bit holder and said
`bit holder [is] mountable in a second bore through said
`bit block." ’567 patent col. 8 11. 13-15. Inherent in this
`claim language is that a portion of the bit is "in" a first
`bore, and similarly, a portion of the bit holder is "in" a
`second bore. That portion of the bit holder that is "in" the
`
`second bore is recited expressly as the "shank portion."
`Id. col. 8 11. 18-32. Although the claim language does not
`denote a label for the portion of the bit that is "in" the
`first bore, like the district court, this court holds that por-
`tion of the bit and the bit holder's shank portion "cannot
`be .
`.
`. entirely differen " and construes both the bit and
`the bit holder to include a shank. Novatek, 2013 US.
`Dist. LEMS 62488, 2013 WL 1831995, at *5. The pa-
`tentee adheres to this definition when describing his in-
`vention throughout the patent. See Boss Control, Inc. v.
`Bombardier Inc, 410 F.3d 13 72, I3 77 (Fed. Cir. 2005)
`
`15
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 16
`
`[*15] (quoting Astrazeneca AB v. Mut. Pharm. Ca,
`384 F.3d 1333, 1340 (Fed. Cir. 2004)) ([HN5] "[W]hile
`it is of course improper to limit the claims to the particu-
`lar preferred embodiments described in the specification,
`the patentee‘s choice of preferred embodiments can shed
`light on the intended scope of the claims.").
`
`In the "Background of the Invention" section, the
`patentee without qualification sets out that "bits include a
`tip and a shank." ’567patent col. 1 ll. 2l-22; ’155 patent
`col.
`1
`11. 28-30 ("The bits utilized include a tip and a
`shank"). Elaborating on the "tip" and "shank," the pa-
`tentee recites:
`
`The shank is received and may axially
`rotate in a bit holder which is secured on-
`
`to a bit block that, in turn, is mounted on
`the drum. Each of the bits has a hardened
`
`tip, preferably made of tlmgsten carbide
`or such other hardened material that acts
`
`to remove a portion of the surface it con-
`tacts.
`
`’567 patent col. 1 11. 22-26.
`
`Additionally, every figure in the patents depicting a
`bit includes a shank.
`’567 patent Figs. 1, 2, 7, 8;
`’155
`patent Figs. 1, 13. Specifically, the ’567 patent provides:
`"Referring to FIG. 2, the bit, generally indicated at 21,
`includes a forward end 24, and a shank
`
`16
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 17
`
`[*16] 25 or rear end thereof." ’567 patent col. 2 11.
`57-59; ’155 patent col. 3 11. 9-10 ("[A] cylindrical shank
`portion base 27 defining the rear end of the bit."). Further
`consistent with the claim language that allows for the bit
`and bit holder to include a shank, the embodiments pro-
`vide that "shank 25 [of the bit] fits within bore 40" of the
`bit holder the length of which "is determined partly by
`the length of the shank 25 on bit 21," ’567 patent col. 3
`11. 31-34, and that "[b]ore 49 [that runs through the bit
`block] is sized to receive the cylindrical shank 35 of the
`bit holder 22," id. col. 3 11. 45-46.
`
`The intrinsic evidence therefore supports what is in-
`herent in the claim language--the portion of the bit that is
`"in" the first bore, as recited in the asserted claims, is the
`"shank." In particular, the patents disclose a symbiotic
`relationship between the shank and bore, an interde-
`pendence where the existence of a bore necessitates the
`need for a shank to practice the invention as claimed. See
`Response to Office Action, US. Patent App. No.
`11/509,349, at 9 (Oct. 21, 2009) ("[B]its used in road
`milling equipment have shanks that may slightly vary but
`would approximate 3/4 to 7/8 inch
`
`17
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 18
`
`[*17] in diameter. Applicant is presently designing
`bit holders for trenching equipment wherein the bit
`shanks approximate 1-1/2 inches in diameter. Mining
`equipment would utilize bits having larger
`shanks.
`Therefore, the exact numbers given for the bit holder
`bores and outer bit holder dimensions would vary de-
`pending upon the application .
`.
`.
`.").2 Accordingly, the
`patentee‘s consistent usage and treatment of a limitation
`(here, "shank") demonstrates the bit includes a shank.
`See, e.g, Honeywell Int’l Inc. v. Universal Avionics Sys.
`Corp, 488 F.3d 982, 990 (Fed. Cir. 2007) (construing
`the claim term "look ahead distance" to include a time
`limitation because "time is inherent in the calculation of
`
`'look ahead distance,"' as shown by the specification);
`Network Commerce, Inc. v. Microsoft Corp., 422 F.3d
`1353, 1360 (Fed. Cir. 2005) (limiting the term "down-
`load componen " to a component capable of performing
`certain fimctions, based on the consistent usage in the
`specification).
`
`The ’155 patent's prosecution history, e.g.,
`2
`office action responses, referenced in this opinion
`are publicly available at Patent Application In-
`formation
`Retrieval,
`USPTO,
`http://portal.uspto.gov/pair/PublicPair
`
`18
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 19
`
`[*18] (last visited Mar. 21, 2014).
`
`That the "bit" was construed as being "removable"
`from the "bit holder" was also not error. The district
`
`court reasoned that "if [the bit is] going to be mountable,
`it has to be removable." J.A. 308. Sollami argues that
`"removable" is not recited in the claim language, and
`thus, cannot be a limitation.
`
`The "removable" requirement is fully supported by
`[HN6] the specification, which is "'the single best guide
`to the meaning of a disputed term."' Phillips, 415 F.3d at
`1315 (quoting Vitrom'cs Corp. v. Conceptronic, Inc, 90
`F.3d 1576, 1582 (Fed. Cir. 1996)). Every relevant em-
`
`bodiment disclosed in the ’567 and ’155 patents refers to
`the removability of the bit from the bit holder. Indeed,
`the purpose of the invention is to provide a means for
`"quick removal" of the bit from the bit holder and/or the
`bit holder from the bit block during road milling, mining,
`and trenching. See, e.g.,
`’567 patent col.
`1
`11. 54-57
`("[A]n object of the present invention, generally stated, is
`to provide an improved means for quickly mounting
`and/or removing a bit holder firom its associated bit
`block.").
`
`In the "Background of the Invention" section, the
`’567 patent explains that "a need
`
`19
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 20
`
`[*19] has developed for providing ease of remova-
`bility of bits in their bit holders, especially when the bit
`becomes worn and in need of replacement," and that "[i]t
`would be desirable to provide a more efficient means for
`allowing the removal of a bit from a bit holder or a bit
`block." Id. col. 1 11. 36-44. Throughout the specifications
`of both patents, the bit is described in no other way than
`allowing for removability:
`
`If the bit 21 should break at reduced
`
`diameter portion 29 adjacent the bottom
`flanged portion 28, a rod, punch, etc. (not
`shown) may be inserted into the bottom of
`the bore to push the shank [of the bit] out
`of the holder.
`
`Id. col. 3 11. 34-38;
`The notches 32a—32d, constructed in
`accordance with the present invention, al-
`low for the quick removal of the bit 21
`from the bit holder 22 by applying a force
`having a substantial axial component
`thereto to the bottom side of the bit flange
`28. In the preferred embodiments there
`may be two, three or four notches or in-
`dents 32a—d (FIG. 2, 32-d not shown) on
`the bit holder 22 positioned at 120 degree
`or 90 degree
`intervals,
`respectively,
`around the circumference thereof. Each
`
`notch may be straight vertically or slightly
`wider at surface
`
`20
`
`

`

`2014 U.S. App. LEXIS 5512, *
`
`Page 21
`
`[*20] 31 and narrows as the notch de-
`scends toward flange 33. While the use of
`the punch 55 on one notch is usually suf-
`ficient to remove the bit, the punch may
`be
`utilized
`sequentially
`in
`differing
`notches to balance the axial force, if nec-
`essary, to move the bit 21 out of the bit
`holder 22.
`
`Id. col. 3 l. 63-col. 4 l. 10;
`Referring to FIGS. 7 and 8, the bit 21
`and the second embodiments of the bit
`holder 60 and bit block 61 are shown in
`
`assembled condition with the exception of
`the modification in the bit block 61 to
`
`provide a slot 85 positioned in the outer
`portion of bit block 61 to more easily al-
`low the insertion of tools in the rear of the
`
`bit block 61 to drive the bit 21 from the
`bit holder 60.
`
`Id. col. 5 11. 35-41;
`As with the first embodiment of the
`
`the notch 65 in the
`invention,
`present
`front tapered portion of the bit holder 60
`allows a chisel (not shown) or other such
`device to apply force on the back side of
`the bottom flanged portion 28 of bit 21 to
`drive the bit out of the bit holder.
`
`Id. col. 5 11. 49-53;
`A plurality of notches 37-37 (one
`shown) adjacent the front face 35 of the
`bit holder, provide an access area to the
`cylindrical base 24 of the tip 16 into
`which a prying tool may
`
`21
`
`

`

`2014 US. App. LEXIS 5512, *
`
`Page 22
`
`[*21] be positioned to force out the base
`24 of the bit 16 when the bit shank 25 and
`spacer 17 are mounted in the bore 36 of
`the bit holder 18.
`
`’155 patent col. 3 11. 25-30.
`As shown most clearly in FIG. 2, the
`semi-cylindrical
`indent 33 in the spacer
`17 provides for the insertion of a tool
`through the backside of bore 36 which
`will accommodate punching out the spac-
`er 17 and the bit 16 from the back of the
`
`assembly.
`
`Id. col. 4 11. 32-46.
`With this embodiment, the bit 16 (not
`shown) would be driven out of the bit
`holder 60 for replacement by inserting a
`rod to tool (not shown) in the bottom of
`
`bore 63 of the bit holder (shown most
`clearly in FIG. 3) .
`.
`.
`.
`
`Id. col. 5 11. 15-19;
`The bulbous fi'ustoconical portion 73
`extends rearwardly beyond the cylindrical
`nose and includes a pair of notches 74, 75
`therein that provide tool access to the
`back of a bit for easing removal of the bit
`from the bit holder.
`
`Id. col. 5 11. 44-48. It is apparent that removability of the
`bit from the bit holder is a feature of the invention as a
`
`whole, and not merely a preferred embodiment of the
`invention. See Regents of Univ. of Minn. v. AGA Med.
`Corp, 717 F.3d 929, 936 (Fed. Cir. 2013) (quoting Ver-
`izon Servs. Corp. v. Vonage Holdings Corp, 503 F.3d
`1295, 1308(Fed. Cir. 2007))
`
`22
`
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`

`2014 US. App. LEXIS 5512, *
`
`Page 23
`
`[*22] ("When a patent thus describes the features of the
`'present invention‘ as a whole, this description limits the
`scope of the invention"); Decisioning.com, Inc. v. Fed-
`erated Dept. Stores, Inc, 527 F.3d 1300, 1309 (Fed. Cir.
`2008) ("The remote interface is a component of the in-
`vention itself, and the inventor‘s use of 'kiosk‘ in that
`manner does not merely describe a preferred embodi-
`ment of the invention. Rather, it describes the invention
`itself").
`
`In addition, the prosecution history of the ’155 pa-
`tent supports the district court‘s construction requiring
`removability of bits from bit holders. In explaining the
`
`purpose behind the wall thickness