Comprising is Not a Weasel Word that Abrogates Claim Limitations

Dippin' Dots, Inc. v. Mosey, [05-1330, -1582](February 9, 2007) [GAJARSA, Mayer, Rader] The Federal Circtui affirmed judgments of non-infringement, invalidity for obviousness, and unenforceability, of U.S. Patent No. 5,126,156, but reversed judgement of violation of the antitrust laws.
BRIEF: Dippin' Dots first challenged the construction of the term "beads" as requiring a smooth, spherical appearance, and excluded the accused process which produced a mixture of smooth and irregular particles. The Federal Circuit found no error in claim construction, noting that the specification specifically describes beads as having a "smooth, spherical appearance". Dippin' Dots argued that the claim transition "comprising" left the the claim open. The Federal Circuit rejected this argument, noting "comprising is not a weasel words with which to abrogate claim limitations". While comprising opens the claim to additional steps, each of the recited steps must be performed. The word comprising does not reach into each of the recited steps and render every word or phrase therein open ended. Regarding obviousness, the Federal Circuit found substantial evidence to support the conclusion of non-obviousness. The patentee's sale of a precursor product was primarily for market testing, and thus did not qualify as an experimental use. Furthermore the Federal Circuit held that evidence of commercial success had to be attributable to the features of the invention not avaialable in the prior art: "The assertion of commercial success of the product must bed due to the merits of the claimed invention beyond what was readily available."