Markem-Imaje Corporation v. Zipher LTD. and Videojet Technologies, Inc.

Patent claims need not recite every component necessary to enable operation of a working device, though a device will only operate if certain elements are included, that is not grounds to incorporate those elements into the construction.

For full opinion:
2011 U.S.App.LEXIS 18670
2011 WL 3966149

Opinion (Per Curiam): Markem-Imaje Corporation (“Markem”) appealed the decision of the U.S. District Court for the District of New Hampshire, which granted summary judgment of non-infringement to Zipher LTD. and Videojet Technologies, Inc. (“Zipher”). The patent at issue described and claimed a device for transfer printing and was directed to an improvement in controlling the movement and tension of the ribbon in a transfer printing device. Tension in the ribbon spools must be closely controlled to avoid the tension becoming too high or too low. At issue was the term “drive” which can be construed broadly to encompass not only the rotation of the spools but also application of a holding torque that prevents the spool from rotating, or construed narrowly as only rotating the spools themselves. The court found that nothing in the specification or the overall invention as presented in the claim construction required a narrower claim construction. In this case, though some method of deriving a tension measurement may be required to make a claimed device operational, it is not proper to incorporate that method into the claim construction. The Appellate Court thus held that the term “drive” was properly construed to mean the application of torque to the spools, whether the torque caused rotation or resisted it. The Court VACATED the judgment of non-infringement and REMANDED for determination of infringement on the corrected claim constructions.