The U.S. Court of Appeals for the Federal Circuit has rejected a claim construction that was arguably correct on a term-by-term basis, but failed "to implement the invention described in the specification." On Demand Machine Corp. v. Ingram Industries, Inc., Case Nos. 05-1074, -1075, -1100 (Fed. Cir. Mar. 31, 2006) (Newman, J.).
On Demand Machine Corporation (ODMC) owns the Ross patent, for a "System and Method of Manufacturing a Single Book Copy," which envisions that a consumer will browse an electronic database that includes promotional material regarding various books, select a book for purchase and then have one copy of the book printed and bound for him or her, preferably at the same site.
One of the defendants, Lightning Source, Inc. is a book-printing company with a factory in Tennessee. Ingram Industries, is the corporate parent of Lightning Source. Lightning Source prints and sells books as ordered by publishers, wholesalers and retailers such as defendant Amazon.com. Purchasers may order books from Lightning Source through its website, identifying the book by its title and author or International Standard Book Number (ISBN). Lightning Source usually prints books in batches, often as large as several hundred books, but may also print single copies if ordered.
In a decision reached before the Federal Circuit’s Phillips case, the district court arrived at a claim construction influenced heavily by "plain meaning" and dictionary definitions. For example, it held that the "sales" information to be included in the accused computer system could be something as basic as "data stored in a computer which is involved in the promoting and selling of a book" and that the term was not limited to promotional information, but included any sort of descriptive information, such as price.
The Federal Circuit held that this, and other terms, had been construed in such a way as to make the scope of the patent considerably broader than the invention described in the specification. In so doing, it warned, "[c]are must be taken lest word-by-word definition, removed from the context of the invention, leads to an overall result that departs significantly from the patented invention."
Because none of the defendants provided a system of computer access, nor sites for immediate printing and binding, the Federal Circuit reversed the district court’s finding of infringement and remanded for entry of a judgment of non-infringement based on the undisputed facts.
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