The opinion of the court was delivered by: THOMAS A. HIGGINS
Pursuant to Rules 50(b) and 59(a), Fed. R. Civ. F., the Court has before it the motion of defendant Pelikan, Inc., for judgment notwithstanding the verdict or, in the alternative, a new trial (filed April 8, 1991; Docket Entry No. 246), and an accompanying memorandum in support thereof (filed April 8, 1991; Docket Entry No. 247). On May 1, 1991, Smith Corona Corporation filed a memorandum in opposition to Pelikan's motion (Docket Entry No. 260). Thereafter, Pelikan submitted a reply memorandum (filed May 15, 1991; Docket Entry No. 270).
In addition, the Court has before it Smith Corona's motion for increased damages and prejudgment interest (filed March 25, 1991; Docket Entry No. 242); Smith Corona's motion for interim damages (filed March 25, 1991; Docket Entry No. 240); Smith Corona's motion for post-trial discovery regarding damages (filed March 25, 1991; Docket Entry No. 239); Smith Corona's motion for post-trial discovery regarding Pelikan's changed products and packaging (filed April 24, 1991; Docket Entry No. 254); Pelikan's motion to clarify injunction (filed March 29, 1991; Docket Entry No. 245); and Pelikan's motion to continue stay of injunction (filed May 29, 1991; Docket Entry No. 274).
For the reasons stated below, the Court denies Pelikan's motion for JNOV/new trial, and assesses damages.
This is a civil action in which Smith Corona sued Pelikan for injunctive relief and damages for infringement of one utility patent (No. 4,900,171) and two design patents (Nos. Des. 308,070 and Des. 310,384) in violation of the patent laws of the United States, 35 U.S.C. §§ 1, et seq., and for unfair competition and false or deceptive advertising under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and the Tennessee Consumer Protection Act, Tenn. Code Ann. §§ 47-18-101, et seq.
Proof at trial revealed the following facts.
Smith Corona is a manufacturer of typewriters and typewriter ribbons for use in the equipment it markets. Smith Corona also makes and markets correction tapes, in spools and cassettes, used to correct the mistakes made by the typewriter during its use. Pelikan manufactures typewriter ribbons and correction tapes for use in equipment manufactured by others, including Smith Corona. Generally, these ribbons and correction tapes are sold as replacements for the supplies sold by the original equipment manufacturers. In the replacement market for typewriter ribbon and correction tapes, Smith Corona and Pelikan are direct competitors as to supplies for Smith Corona typewriters.
Typewriter ribbons come in two varieties: multi-strike ribbon and single strike film.
As a consequence, correction tapes also come in two varieties: cover-up type and lift-off type. Lift-off correction tape is compatible with single strike film, but is ineffective with multi-strike ribbon. Cover-up correction tape is needed when multi-strike ribbon is used.
In the summer and fall of 1988, Pelikan began manufacturing and marketing ink ribbon and correction cassettes for use in Smith Corona typewriters equipped with the "Right Ribbon System" feature. Pelikan's ink ribbon cassettes contained the same structural attributes as Smith Corona's ink ribbon cassettes, i.e., a tab on the left side for multi-strike ribbon and a tab on the right side for single strike film. At this time, the '171 utility patent had not been issued by the Patent and Trademark Office. However, after the issuance of the '171 utility patent, Pelikan continued to manufacture its ink ribbon cassettes with the same structural attributes as Smith Corona's cassettes.
Also, prior to the issuance of the three patents-in-issue Pelikan manufactured its correction tape cassettes with the same structural attributes as Smith Corona's correction tape cassettes, i.e., a notch on the left side for cover-up correction cassettes and a notch on the right side for lift-off correction cassettes. In September of 1989, however, Pelikan learned that Smith Corona had applied for a European patent disclosing the same invention as claimed in its application for the '171 utility patent. Upon learning of this application, Pelikan altered the design of its correction cassettes, placing two openings in the roof-like structure of its correction cassettes. This alteration, allowed the user to mismatch a Pelikan correction cassette with the incorrect ink ribbon cassette.
As one of its claims, Smith Corona alleged at trial that Pelikan willfully infringed the '171 utility patent by making, using and selling ink ribbon cassettes embodying the patented invention of the '171 utility patent, and by actively inducing others to infringe. Specifically, Smith Corona alleged that Pelikan's ink ribbon cassettes infringed claims 11-15 of the '171 utility patent.
Claim 11 of the '171 utility patent reads as follows:
11. A ribbon cassette for a system including a device utilizing a ribbon cassette and a correction tape cassette having a correction tape which are inserted into the device for the operation thereof, the device operating on a flow of electricity and including a switch for controlling the flow of electricity thereto, said ribbon cassette comprising:
a housing having a bottom;
an ink ribbon substantially disposed within said housing; and
means on said ribbon cassette engaging an opening in the correction tape cassette to assure that said ribbon and the correction tape are functionally compatible, said assuring means conditioning the switch to control the flow of electricity to the device.
See exhibit A to Pelikan's motion for summary judgment (filed November 26, 1990; Docket Entry No. 36).
Claims 12 and 13 are dependent on claim 11. Claim 14 is dependent on claim 13.
Claim 15 reads as follows:
15. A ribbon cassette for a system including a device utilizing a ribbon cassette and a correction tape cassette having a correction tape, said ribbon cassette being inserted into the device for the operation thereof, said ribbon cassette comprising:
a housing having a top surface and a bottom surface;
an ink ribbon substantially disposed within said housing; and
Smith Corona also alleged that the Pelikan correction cassettes infringed the '070 and '384 design patents.
The trial was bifurcated on the issues of liability and damages. At the close of the evidence of the liability portion of the trial, the Court instructed the jury as follows:
Claims 11-15 of the '171 utility patent are drawn to the ribbon cassette alone, and not to the combination of the ribbon cassette, correction cassette and typewriter switch. References in claims 11-15 to the correction cassette and typewriter switch merely describe how the claimed invention functions in its intended environment and, thus, only constitute limitations to the claims for the purposes of distinguishing prior art.
Jury instructions (filed March 13, 1991; Docket Entry No. 213), p. 30. This instruction was given to the jury based on the Court's reading of In re Stencel, 828 F.2d 751 (Fed. Cir. 1987).
After a period of deliberation, the jury found that 1) the three patents-in-issue were not invalid; 2) that Pelikan had infringed the three patents; 3) that Pelikan had induced others to infringe these patents; 4) that this infringement had been willful; 5) that Pelikan's advertising was false, misleading and deceptive in violation of Section 43 of the Lanham Act and in violation of the Tennessee Consumer Protection Act; and 6) that Pelikan's false, misleading and deceptive advertising was willful. See verdict of the jury (filed March 1, 1991; Docket Entry No. 202). After further proof on the issue of damages, the jury returned its assessment of compensation. See compensatory damages verdict of the jury (filed March 13, 1991; Docket Entry No. 215).
After accepting the verdict of the jury, the Court ordered the Clerk to reserve judgment entry for additional cost assessments regarding prejudgment interest and willfulness. See Clerk's resume of Court proceedings (filed March 13, 1991; Docket Entry No. 214). On March 19, 1991, the Court entered an order (Docket Entry No. 237) which permanently enjoined Pelikan from 1) making, using or selling the products which the jury found had infringed the three patents-in-issue; and 2) using certain phrases in connection with its advertising, packaging and promotion of its products which the jury found had violated the Lanham Act and the Tennessee Consumer Protection Act.
II. Motion for JNOV.
The accepted standard for determining whether a jury verdict should be set aside and judgment entered in favor of the moving party is essentially the same as a motion for a directed verdict, i.e.,
to look at all the evidence, to take as true the evidence for the plaintiff, to discard all countervailing evidence, to take the strongest legitimate view of the evidence for the plaintiff, to allow all reasonable inferences from it in his favor; and if then there is any dispute as to any material determinative evidence, or any doubt as to the conclusion to be drawn from the whole evidence, the motion . . . must be denied.
Chumbler v. McClure, 505 F.2d 489, 491 (6th Cir. 1974) (citation omitted).
There are various formulations of this test as reflected in Morelock v. NCR Corp., 586 F.2d 1096, 1104 (6th Cir.), cert. denied, 441 U.S. 906, 99 S. Ct. 1995, 60 L. Ed. 2d 375 (1979). But, in sum, the issue to be determined is "whether there is sufficient evidence to raise a question of fact for the jury. [Citation.] The trial court may neither weigh the evidence, pass on the credibility of witnesses nor substitute its judgment for that of the jury." Id. The motion should not be granted unless the evidence is uncontradicted and a reasonable mind could only draw one conclusion from the evidence. See Green v. Francis, 705 F.2d 846, 849 (6th Cir. 1983).
As the crux of its JNOV motion, Pelikan argues that "this Court applied a strained
and improper interpretation of Stencel. . . concluding and improperly instructing the jury that Claims 11-15 [of the '171 utility patent] are drawn to an ink ribbon cassette alone." Pelikan's brief in support of JNOV motion, p. 14. Pelikan first made this argument in its brief in support of its motion for summary judgment (filed November 26, 1990; Docket Entry No. 36), in which Pelikan argued that claims 11-15 are drawn to a combination of the ink ribbon cassette, correction cassette and typewriter switch. See Pelikan's brief in support of summary judgment motion, pp. 36-45. As a consequence of finding that claims 11-15 are drawn to this combination, Pelikan argues that it did not infringe the '171 patent because it manufactured only one component of the combination. See Pelikan's brief in support of JNOV motion, p. 12 ("Pelikan's print ribbon cassette cannot meet these limitations without the presence of a correcting cassette or a device having an on-off switch"); see also Pelikan's brief in support of summary judgment motion, pp. 37-38 ("because these claims are for a combination, Pelikan's manufacture and sell [sic] of an unpatented ribbon cassette of cooperative components cannot, as a matter of law, constitute infringement of the '171 patent.").
In support of this argument, Pelikan primarily relies, as it did in its motion for summary judgment, on Wells Manufacturing Corp. v. Littelfuse, Inc., 547 F.2d 346 (7th Cir. 1976) and Shure Brothers, Inc. v. Korvettes, Inc., 198 U.S.P.Q. (BNA) 283 (N.D. Ill. 1978), two cases which predate the creation of the Federal Circuit. After reviewing Wells Manufacturing, Shure Brothers, Stencel, and the other cases cited by the parties, the Court remains convinced that, based on its interpretation of Stencel, "patentability can be predicated upon how a claimed item mates with another item without claiming the combination of the two items." Smith Corona's memorandum in opposition to summary judgment motion (filed December 19, 1990; Docket Entry No. 47), p. 23 (emphasis in original).
In Shure Brothers, the District Court for the Northern District of Illinois considered, in part of its opinion, two patents, owned by Shure Brothers, which covered phonograph needles. Korvettes argued that the claims in these two patents were really claims for a combination of a needle (an "armature-stylus subassembly") and a magnetic pick-up cartridge into which the needle fits. Korvettes argued that "since these claims refer to a combination, and Korvettes sells only one unpatented part, then as a matter of law, no infringement could be proved." Shure Brothers, 198 U.S.P.Q. at 285. The district court agreed.
Each of the relevant claims in the two patents owned by Shure Brothers began with the following preamble:
An armature-stylus subassembly for a magnetic pickup cartridge comprised of two electromagnetic systems each terminating in a pair of spaced-apart pole pieces arranged to describe a common magnetic gap and to form a socket having a recess substantially co-extensive with said gap; said subassembly comprising . . . .
Id. at 286-87. Each claim then describes the subassembly.
The district court first found that, because the descriptions of the subassembly all referred to the above-quoted preamble, "these descriptions [were] not understandable without reference to the preambles." Id. at 287. The district court further found that the preambles as quoted above had been inserted into the patent applications in order to distinguish the prior art. See id. "This additional language was apparently necessary in order to overcome a rejection on the basis of prior art by the Patent Office Examiner." Id. After considering arguments made by Shure Brothers during the prosecution of the patents, the district court concluded that it was "evident that in its presentation to the Patent Office, the plaintiff stressed the cooperative relationship of the total combination of the cartridge with the armature-stylus subassembly." Id.
The district court then quoted the decision of the Seventh Circuit Court of Appeals in Wells Manufacturing:
if the preamble merely states a purpose or intended use and the remainder of the claim completely defines the invention independent of the preamble, it is not a limitation on the claims. On the other hand, if the claim cannot be read independently of the preamble and the preamble must be read to give meaning to the claim or is essential to point out the invention, it constitutes a limitation upon the claim.
Shure Brothers, 198 U.S.P.Q. at 288 (quoting Wells Manufacturing, 547 F.2d at 353).
Wells Manufacturing also stands for the following rule of claim construction: that if (1) the claim elements can be understood "only with reference to the interrelationship of the elements" to the parts of the environment in which the elements are used, see Wells Manufacturing, 547 F.2d at 353, and (2) the "inventive quality" of the claim lies in that interrelationship, see id., then (3) the claim must be for a combination of the elements with the parts of the environment. See id. at 354.
At trial, Smith Corona argued that the rule of Wells Manufacturing and the result of Shure Brothers has been rejected by the Federal Circuit Court of Appeals in In re Stencel, supra, and that patentability can be predicated upon how a claimed item mates with another without claiming a combination. The Court agreed.
In Stencel, the plaintiff appealed the decision of the PTO Board of Patent Appeals, which had affirmed the rejection of his patent application for obviousness based on a combination of prior art patents. Stencel's patent application was for a triangular "driver," which when inserted into a lobed "collar," could turn the collar so as to lock the collar and a hexagonal bolt together. Similar to the preambles in Shure Brothers, the preamble of the relevant claim in Stencel read as follows:
1. A driver for setting a joint of a threaded collar, a threaded pin, and at least one sheet, the collar having plastically deformable lobes on its longitudinal exterior that upon the existence of a predetermined clamp-up load between the collar and the sheets plastically deform in radial compression and displace material of the collar into void volumes between the collar and the pin to lock the two together and terminate the action of the driver on the collar, the driver comprising . . . .
Stencel, 828 F.2d at 752-53. Like claim 11 of the '171 utility patent in this case, one of the four elements of Stencel's claim was a means element which referred to the collar as described in the preamble.
At the PTO Board of Patent Appeals, Stencel argued that the prior art did not teach how to construct a driver usable with Stencel's collar. While the PTO Board of Patent Appeals agreed that "'there is a fundamental difference between the failure mechanism effected by the driver disclosed in the [prior art] from that disclosed in the present application,'" Stencel, 828 F.2d at 754 (quoting the opinion of the PTO Board of Appeals), the Board affirmed the rejection because "'the claims here are directed to the driver per se and not to the action of the fastener during the tightening procedure.'" Id. (quoting the opinion of the PTO Board of Appeals) (emphasis added).
On appeal before the Federal Circuit, the Commissioner of the PTO restated its position and argued that the limitations in the preamble were "not distinguishing features of the driver, but of the collar." Id. at 754. Stencel, however, argued that the structure of the driver as claimed is limited by the environment in which it was intended to function. See Id. ("appellant points out that the driver as claimed is indeed limited as to structure, the limiting structure being defined by the structure of the collar.").
as a matter of claim draftsmanship, appellant is not barred from describing the driver in terms of the structure imposed upon it by the collar having plastically deformable lobes. The framework -- the teachings of the prior art -- against which patentability is measured is not all drivers broadly, but drivers suitable for use in combination with this collar, for the claims themselves are so limited.
While the Federal Circuit did use the phrase "for use in combination with this collar," it is clear from the opinion that the Court did not find Stencel had claimed the combination of the driver and collar in his patent application. As stated above, the Federal Circuit began its opinion by noting that "the claimed invention relates to a driver. . . . Id. at 752 (emphasis added). Further in its opinion, the Federal Circuit stated that "Stencel is not inhibited from claiming his driver, limited by the statement of its purpose, and further defined by the remaining clauses of the claims at issue, when there is no suggestion in the prior art of a driver having the claimed structure and purpose." Id. at 755 (emphasis added). Thus, under Stencel, an applicant may define and limit an invention in terms of that invention's intended environment without claiming the environment as part of a combination with the invention.
As the Court stated on the record,
the Court believes that Stencel has overruled the method of analysis utilized in Wells Manufacturing, despite the fact that the Federal circuit did not cite that case. Had the Federal Circuit applied the Wells Manufacturing analysis to the Stencel claim, it would have concluded either (a) that the Stencel claim was directed to the combination of the driver and the collar, or (b) that the Stencel claim could not rely on the interaction of the driver with the collar to support patentability of a claim to the driver alone. The Federal Circuit did neither.
Following its reading of Stencel, this Court held at trial that claims 11 and 15 of the '171 utility patent do exactly what the Stencel claim did, i.e., describe a device in terms of the structure imposed upon it by its intended environment and desired function. The Court does not retreat from this ruling. Like Stencel's claimed invention, claims 11-15 of the '171 utility patent do not claim all typewriter ink ribbon cassettes broadly, but ink ribbon cassettes designed to function in the described environment of compatible correction cassettes and typewriter switches. Thus, claims 11-15 are directed only to the ribbon cassette per se, as limited by the description of the "system" in the preambles of claims 11 and 15.
When originally filed, Smith Corona's patent application contained ten claims. See appendix to Smith Corona's memorandum in opposition to summary judgment motion, pp. 891-893. Each of these claims were drawn to the entire system, i.e., the combination of the ribbon cassette, the correction cassette, and the switch on the typewriter. See id. These claims were rejected by the patent examiner. See id. at 898-908.
In response to this initial rejection, Smith Corona filed an amendment to its application in which it added claims 11-24. See id. at 990, 999-1002. Of these additional claims, claims 11-16 recited "a ribbon cassette," while claims 17-21 recited "a correction tape cassette." See id. at 999-1001. In the amendment, the patent attorney who prosecuted the application twice represented to the patent examiner that "as hereinafter noted, claims 11-16 relate to a first or ribbon cassette used in the system of the invention." Id. at 1003 (emphasis added); see also id. at 1004 ("applicants submit herewith additional claims 11-24 which are intended to more completely define the present invention. Claims 11-16 relate to a first or ribbon cassette. . . .") (emphasis added). In explaining the proper construction of claims 11-16, the patent attorney stated
claims 11-16 are directed to a ribbon cassette having an ink ribbon, which is used in a system including a device utilizing a ribbon cassette and a correction tape cassette, the ink ribbon cassette having means engaging an opening in the correction tape cassette to assure that the ribbon and the correction tape are functionally compatible. It is respectfully submitted that neither the primary reference . . . nor the secondary references [in the relevant prior art] disclose or suggest a ribbon cassette having means engaging an opening in a correction tape cassette for assuring that the ink ribbon in the first cassette and the correction tape in a second cassette are functionally compatible. The cited references, alone or combined together do not suggest or contemplate any means for assuring functional compatibility . . . .
Id. at 1014 (emphasis added).
Despite these amendments, the patent examiner again rejected Smith Corona's application. See id. at 1019-1025. While this was a final rejection from the patent examiner, the examiner "suggested that upon suitable amendment to avoid the rejections thereof, and if claim 15 is rewritten as a formal independent claim which includes all of the limitations of its parent claim 11, claims 1-10, inclusive, 15, and 22-24, inclusive, will be reconsidered with a view towards allowance." Id. at 1025.
In response to this final rejection, Smith Corona filed a notice of appeal to the Board of Appeals. See id. at 1031. In furtherance of this appeal, Smith Corona again amended its application. See id. at 1032-1048. While it did not cancel claims 11-14 and claim 16 from its application, Smith Corona cancelled claim 15, and amended claim 11 to incorporate the subject matter of claim 15. See id. at 1034. Smith Corona acknowledged that, by incorporating claim 15 into claim 11, it was following the suggestion of the patent examiner. See id. at 1038. Claim 16, renumbered as claim 15, was also amended. See id. at 1034.
The Court notes that, in its discussion of these amendments, Smith Corona again asserted that its new claim 15 recited a ribbon cassette. See id. at 1039 ("claim 16 [renumbered as claim 15], claiming a ribbon cassette, and claim 21, claiming a correction cassette, have . . . been amended to specify that the tab portion in claim 16 and the opening of claim 21 are placed on specified sides of the cassette housing to assure the functional compatibility of the cassettes.") (emphasis added). Further, Smith Corona addressed the patent examiner's rejection of claims 11-14 and 16-21 for obviousness in view of the prior art. Disagreeing with the patent examiner's rejection, Smith Corona argued that
Id. at 1041 (emphasis in original). Smith Corona continued by emphasizing the differences between its claimed invention and the prior art, stating that while the prior art references may describe inventions "designed to secure the cassettes relative to each other for operation as a unit," id. at 1044, "neither [of the prior art references] disclose or suggest the desirability of maintaining functional compatibility between the ink ribbon and correction tape cassettes." Id. at 1047.
Smith Corona's claims, as amended, were allowed and the '171 patent issued.
Based on the file wrapper of this patent, the Court finds that, at all times during the prosecution of its application, Smith Corona represented to the patent examiner and to the Board of Appeals that claims 11-15 of the '171 patent were drawn to a ribbon cassette having a "structure which assures functional compatibility of the ink ribbon cassette with the correction tape in the tape cassette." Id. at 1041 (emphasis deleted). Further, nothing in file wrapper indicates that the patent examiner or the Board of Appeals construed these claims as reciting a combination between the ribbon cassette, the correction cassette, and the typewriter switch. Accordingly, the Court finds that the proper construction of claims 11-15 in the '171 patent is to the ribbon cassette alone, and that its instruction to the jury on this issue was a correct statement of law.
Pelikan relies on Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683 (Fed. Cir. 1990). The Court finds this case inapposite.
In Gerber, the patent holder filed an original patent application for an automatic fabric cutting device which utilized a cutting apparatus and a means to hold the fabric in place during the cutting operation. Gerber, 916 F.2d at 684. This holding means employed the use of a vacuum to hold a multi-layered stack of fabric during the cutting of the fabric. Id.
During the prosecution of the original patent application, the patent examiner imposed a restriction requirement between "'Claims 1-11 and 16-28 drawn to the cutting apparatus' and 'Claims 12-15 drawn to the work holding means.'" Id. (quoting the patent examiner). Gerber elected to prosecute the claims drawn to the cutting apparatus and the patent issued as No. 3,495,492. After the issuance of the '492 patent, Gerber prosecuted a continuation application for the work holding means. After four years of prosecution, the patent issued as No. 3,790,154.
The issue before the Federal Circuit was whether claims 15 and 16 of the later '154 patent were invalid for obviousness-type double patenting in view of claim 23 of the prior '492 patent.
The preamble of Claim 15 of the '154 patent stated:
in a machine having a tool in the form of a cutting blade adapted to normally pass through and beyond an object in a cutting operation, an apparatus for holding the object in a rigid condition while it is worked on by the cutting blade, said apparatus comprising . . . .
Id. at 685. Claim 16 was dependent upon claim 15.
As one argument before the Federal Circuit, Gerber asserted that claims 15 and 16 of the '154 patent were not invalid for obviousness-type double patenting because claim 15 "is directed to the subcombination of a work holding means [i.e., the vacuum holding device,] in the 'environment' of a machine having a cutting tool." Id. at 688. The Federal Circuit disagreed.
The cutting blade appears not only in the preamble, but is referenced repeatedly in the body of the claim. It is integral to the claim itself. . . . Hence, the cutting blade is not merely an aspect of the claim environment, but an affirmative limitation of claim 15.
In arriving at this conclusion, however, the Federal Circuit cited to the prosecution history of the '154 patent and noted that, in an amendment to its application, Gerber had "referred to the cutting blade as a limitation of claim 15 and relied on the cutting blade penetration of the support means to distinguish the prior art." Id. Further, "in its brief, Gerber agreed that the cutting blade may be a limitation without which there can be no infringement." Id. No such concessions are made by Smith Corona now, nor were any made during the prosecution of its application. Therefore, Gerber is distinguishable on its facts.
Pelikan also cites the testimony of Mr. Charles L. Gholz, Smith Corona's expert witness, as support for its position. As stated above, claim 11 of the '171 patent reads in part "means on said ribbon cassette engaging an opening in the correction tape cassette . . . said assuring means conditioning a switch . . . . " Mr. Gholz testified as to this portion of claim 11 as follows:
MR. GHOLZ: [Claim 11 is not] an A-plus claim and it's above an F claim. It's a good deal above an F. This is a B -- B-minus claim. It's pretty good except for that one thing.
THE COURT What one thing?
MR. GHOLZ: Leaving out the word for."
THE COURT: Where leaving out the word for?
MR. GHOLZ: In the last paragraph, "means on said ribbon cassette for engaging an opening in the correction tape cassette to assure that said ribbon and the correction tape are functionally compatible."
If it said that, we wouldn't have this dispute.
Trial transcript of February 15, 1991 (filed March 15, 1991; Docket Entry No. 221), pp. 780-81. Mr. Gholz testified further that "this is a little embarrassing but when I read it, I read right through it and read the word 'for'. I assumed it was there and you had to point out to me that it actually wasn't there. I expected it to be there." Id. at 782.
the admission by Smith Corona's expert that the claim required the insertion of the word "for" before the word "engaging" in Claim 11 is significant in light of that witness' further opinion that a claim should be interpreted based upon the "plain meaning" of the language of the claim. . . . The language of claim 11 is plain and unambiguous. Thus, the insertion of the word "for" is not required for clarity and is ...