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"Comprised of" means the same as "comprising," judgment of noninfringement affirmed
September 27, 2007
Today, the Federal Circuit addressed how to interpret the phrase "comprised of" in a patent claim. In holding that the phrase should be construed in the same open-ended way the term "comprising" is traditionally construed, the court disagreed with the district court's finding that the phrase was closed-ended and excluded the presence of all elements beyond those presented. However, the district court's finding of noninfringement was affirmed based on its correct construction of another limitation that precluded infringement.More detail of CIAS, Inc. v. Alliance Gaming Corp. after the jump.CIAS brought a patent infringement suit against Alliance Gaming Corp. (Alliance) based on a patented system for detecting counterfeit objects used on machines such as a casino slot machines. The patent claim language covered a system handling "unique authorized information" and which was "comprised of machine readable code elements coded according to a detectable series." Alliance argued that its accused product involved a "secret algorithm" which did not constitute a "detectable series," and that CIAS had excluded the "secret algorithm" from the meaning of the term during prosecution of the patent. The district court construed the phrase "comprised of" as "a limiting description of composition," which excluded the presence of all elements beyond those presented. The district court also found that "unique authorized information" excluded anything but a combination of serial or randomly-selected information, which did not include the non-detectable series in Alliance's product. Thus, it granted summary judgment of non-infringement to Alliance under both literal infringement and the doctrine of equivalents. CIAS timely appealed. The Federal Circuit first addressed the proper way to construe the term "comprised of" in a patent claim. Finding that the term has the same meaning of "comprising," the court held that the term "does not of itself exclude the possible presence of additional elements or steps." Although Alliance argued that a few Federal Circuit cases had construed comprising in a closed-term manner, the court distinguished these cases because they were not construing the term in the context of a patent claim. The fact that the transitional phrase "comprising," unlike the term "consisting of," traditionally signifies an open-ended term meant that the term-at-issue should be construed in an open-ended manner as well.In light of this finding, however, the Federal Circuit still affirmed the district court's finding of noninfringement. The court found that the district court correctly construed "unique authorized information" to exclude non-detectable series of information. CIAS argued that the claim term should also include associated pairs of pseudo-random computer-generated numbers like those found in Alliance's product. However, the court construed the term as it did because CIAS had argued during reexamination that its claims did not encompass such associated pairs. The court also found that CIAS overcame a rejection by stating that the patent used in the rejection taught use of an algorithm. Thus the court upheld the finding that CIAS's use of the term "authorized information" did not cover information generated by an algorithm. Because Alliance's product used a secret algorithm, it did not literally infringe CIAS's patent. The Federal Circuit also upheld the summary judgment of no infringement under the doctrine of equivalents. This was likewise based on the statements made during prosecution described above. The court stated that it was reasonable for the district court to conclude in its summary judgment finding of noninfringement that CIAS could not meet the burden of proof required under Festo to find infringement under the doctrine of equivalents when the accused subject matter is within the range of surrendered subject matter. To read the full decision in CIAS, Inc. v. Alliance Gaming Corp., click here.
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