Full opinion text
LONGOBARDI, Chief Judge. I. NATURE AND STAGE OF THE PROCEEDINGS Plaintiff California Medical Products, Inc. (“CalMed”), also known as Laerdal California, commenced this action for patent infringement on November 18, 1991. CalMed alleges that defendant Tecnol Medical Products (“Tecnol”) manufactures and sells a cervical collar, the 911 First Response Collar (the “911 collar”), which infringes U.S. Patent Re. 32,219 (the ’219 patent) both literally and under the doctrine of equivalents. Through its answer and counterclaim for declaratory relief, Tecnol denies that it infringes the ’219 patent and alleges as affirmative defenses that the ’219 patent is invalid and unenforceable on various grounds. Tecnol has also counterclaimed alleging that CalMed violated 35 U.S.C. § 292 by falsely marking its own cervical collars as patented using the label “Patent No. RE 32,219” between November 8, 1987 and February 22, 1991 while the patent had lapsed. CalMed denies Tecnol’s false marking allegations. Tecnol also seeks a declaratory judgment that a new version of the 911 collar (the “modified 911 collar”) does not infringe the ’219 patent either literally or under the doctrine of equivalents. CalMed contends that the modified 911 collar infringes the ’219 patent under the doctrine of equivalents. On November 8, 1983, U.S. Patent No. 4,413,619 (the ’619 patent), entitled “Portable Cervical Collar” was issued to Geoffrey C. Garth. The application for the ’619 patent was filed on October 16,1981. On February 10, 1984, Garth filed an application for reissue of the ’619 patent. On August 5, 1986, the ’219 reissue patent, also entitled “Portable Cervical Collar,” was issued to Garth based upon the reissue application. Garth was the sole inventor of and applicant for the ’619 and ’219 patents. The ’219 patent lapsed in November, 1987 following Garth’s failure to pay the required maintenance fee. On or about May 17,1989, Garth executed an assignment of the ’219 patent to CalMed. Following Garth’s petition for reinstatement, the Patent and Trademark Office (“PTO”) reinstated the patent on February 22, 1991. Following oral argument on motions for summary judgment, the Court found that pursuant to 35 U.S.C. § 41(c)(2) CalMed was precluded as a matter of law from recovering any damages for any infringement by Tecnol occurring during the time period that the ’219 patent had lapsed. In addition to these . mandatory statutory intervening rights, Tecnol contends that it is entitled to equitable intervening rights allowing it to continue to make, use, or sell the 911 collar even after the reinstatement of the ’219 patent. CalMed disputes that such equitable relief is appropriate. A nine day non-jury trial yielded a transcript of 2,223 pages. In addition, the parties designated over 1,660 pages of deposition testimony and approximately 300 exhibits were received into evidence. The parties have submitted post-trial briefing and proposed findings of fact and conclusions of law. This Court has jurisdiction over the subject matter of the claims and counterclaims of this action pursuant to 28 U.S.C. § 1331, § 1338(a), § 2201, and § 2202. This Memorandum Opinion represents the Court’s findings of fact and conclusions of law with respect to all issues. II. TECHNOLOGICAL BACKGROUND The technology at issue in this case involves cervical collars which are utilized to restrict the motion of a patient’s head and neck. Cervical collars are utilized both before (“pre-hospitalization” or “extrication” collars) and after (“post-hospitalization” collars) a patient is hospitalized. At an accident scene it is not possible for emergency personnel to fully evaluate the condition of a patient’s neck and spine. It is necessary, therefore, to immobilize the patient’s neck to prevent further injury. Extrication collars are used by paramedics to minimize the motion of a patient’s neck while administering initial treatment, extricating the patient from, for example, automobile wreckage, and transporting the patient to the hospital. The 911 collar, the modified 911 collar, the Stifneck collar (the extrication collar marketed by CalMed), and the collar claimed in the ’219 patent all accomplish significant immobilization of the patient’s neck. Without preempting or prejudicing the Court’s claim construction and infringement analysis, neither side could disagree that there are some obvious similarities between these collars. All obtain the desired immobilization by utilizing a structure which encircles the patients neck and an attached structure which supports the patients chin. These structures are comprised of material which can be described as stiff yet flexible. The Court will refer in this Memorandum Opinion to the portion of a cervical collar which encircles the patient’s neck as the “band,” and the portion of the collar which supports the patients chin as the “chin support brace.” Post-hospitalization collars differ from extrication collars in that they are often constructed out of softer materials, such as foam rubber and thus do not provide the same degree of immobilization as extrication collars. While the distinction between extrication collars and post-hospitalization collars is useful in obtaining an understanding of the cervical collar industry it is not a distinction that is of significance in resolving infringement and validity issues, because the claims of the ’219 patent do not explicitly distinguish between these two categories of cervical collars. The accused collars do not infringe simply because they can be characterized as extrication collars, and relevant prior art does not become irrelevant simply because it can be characterized as a post-hospitalization collar. The 911 collar, [Plaintiffs Trial Exhibit (“PX”) 3] is comprised of three main structural pieces: two band sections, which the Court will refer to as the front band section and the back band section, and a chin support brace. The front band section is comprised of three layers of material. The top layer is a gray, stiff flexible material. The middle layer is a thin layer of plastic which is a lighter shade of grey. The middle layer is the same shape and size as the top layer. The bottom layer is a soft white foam which extends beyond the bottom edge of the first two layers, thus providing additional padding for the comfort of the patient. The front band section has a hole in the middle, referred to as a “trach hole,” which allows medical personnel to perform a surgical procedure to provide an airway through the trachea while the patient is wearing the collar. The back band section and the chin support brace lack the middle plastic layer found in the front band section. The grey material and the white foam are the same shape and size in the chin support brace. The white foam material extends beyond the top and bottom edges of the grey material in the back band section, again to provide additional padding for the comfort of the patient. The chin support brace is permanently attached to the front band section by plastic “rivets” located at each end of the chin support brace. A small tab extends upward from the center of the top edge of the front band section and this tab is permanently attached to the center of the chin support brace with a rivet. The tab is formed from the same three layers of material as the front band section and is in fact part of the front band section. A strip of blue velcro-like fabric is permanently attached to the back band section by two rivets. This strip extends several inches beyond each end of the back band section. The front band section has mutually cooperative velcro strips which are attached to the front band section by some sort of adhesive and by rivets. One side of the front band section has a slot approximately one and three-quarters of an inch long and one-quarter inch wide cut through the velcro strip and the three layers of the front band section. A rivet extends through this slot and permanently attaches the front band section to the back band section. Plastic washers are used at either end of this rivet, apparently to provide additional support for this connection and to make it more difficult for the snap fastener to be accidentally pulled through the slot. This particular snap fastener is referred to by Teenol as the “sizing post.” The construction of the 911 collar is such that after the release of the velcro fasteners the back band section may be rotated around the sizing post, thereby allowing the back band section to be positioned directly behind the front band section, providing for compact storage. The 911 collar is applied to the patient by first rotating the back band section out of its compact storage alignment. After checking to ensure that the sizing post is centered and the velcro is fastened over the sizing post, the chin support brace is positioned underneath the patient’s chin, and the back band section is then slid behind the patient’s neck. The ends of the front band piece and the back band piece are positioned so that they overlap. The circumference of the collar may be adjusted at this side by varying the amount of the overlap. The velcro retention means are then attached thereby closing the collar around the patient’s neck. If desired, the velcro may then be unfastened from the sizing post side of the collar and the collar may be adjusted by sliding the sizing post along the slot. The velcro is then reattached over the sizing post side thereby holding the sizing post in place. The modified 911 collar, [PX 178], differs from the 911 collar mainly with respect to the chin support brace. The modified 911 chin support brace is produced in a thermoforming process and is not die cut as is the 911 chin support brace. The modified 911 does not have a tab extending up from the top edge of the front band section which is permanently attached to the chin support brace. Finally, the location of the snap fasteners which permanently attach the chin support brace to the front band section differ from the 911 collar. III. INFRINGEMENT ANALYSIS A Legal Standards Title 35 U.S.C. § 271(a) provides in part: [Wjhoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent. 35 U.S.C. § 271 (1984 & Supp.1995). According to the Federal Circuit, the “issue of infringement raises at least two questions: (1) what is patented, and (2) has what is patented been made, used or sold by another.” Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569 (Fed.Cir.1983); see also Rawlplug Co. v. Illinois Tool Works, Inc., 11 F.3d 1036, 1041 (Fed.Cir.1993); ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1578 (Fed.Cir.1988); American Standard Inc. v. Pfizer Inc., 722 F.Supp. 86, 92 (D.Del.1989). Thus, the resolution of the issue of infringement is a two-step process. First, a court must determine the scope of the claims of the patent. Mobil Oil Corp. v. Amoco Chemicals Corp., 779 F.Supp. 1429, 1442 (D.Del.1991), aff'd, 980 F.2d 742 (Fed.Cir.1992). Then, once the scope of the claims is ascertained, the court must determine whether the defendant’s allegedly infringing activity falls within the scope of the claims. Id. Claim construction is a question of law. Markman v. Westview Instruments, 52 F.3d 967, 969 (Fed.Cir.1995) (en banc), cert. granted-U.S.-, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995); Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 866 (Fed.Cir.1985); Fromson, 720 F.2d at 1569; Mobil, 779 F.Supp. at 1442. The determination of whether a patented invention has been made, used or sold by another is a question of fact. Fromson, 720 F.2d at 1569. A plaintiff must establish infringement by a preponderance of the evidence. Phillips Petroleum Co. v. United States Steel Corp., 673 F.Supp. 1278, 1344 (D.Del.1987), aff'd, 865 F.2d 1247 (Fed.Cir.1989). 1. Claim Construction To determine the “true meaning” of a disputed claim, a Court must examine: 1) the claim at issue; 2) the specification, and 3) the prosecution history. Markman, 52 F.3d at 979; ZMI Corp., 844 F.2d at 1579; Loctite, 781 F.2d at 867; American Standard, 722 F.Supp. at 92. a. Claim Language A patent claim typically has three parts: 1) the preamble; 2) the transition; and 3) the body. 2 Donald S. Chisum, Patents § 806[l][b] (1994). The preamble is “an introductory phrase that may summarize the invention, its relation to the prior art, or its intended use or properties.” Id. It may also constitute a limitation on a claim. Id. The transition is a phrase containing a term such as “comprising” that serves to connect the preamble to the body of the claim. Id. The third part of a patent claim, the body, is composed of the recitation of the elements and limitations that “define the product or process to be encompassed within the patent monopoly.” Id. The terms of a claim must be given their ordinary meaning, unless it appears that the inventor used them differently. ZMI Corp., 844 F.2d at 1579. In this regard, the Federal Circuit has recently stated that: [T]he focus in construing disputed terms in claim language is not the subjective intent of the parties to the patent contract when they used a particular term. Rather the focus is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean. Markman v. Westview Instruments, Inc., 52 F.3d at 986. b. The Specification It is well established that “[p]atent law allows an inventor to be his own lexicographer.” ZMI Corp., 844 F.2d at 1580. The description of terms in the specification “may act as a sort of dictionary, which explains the invention and may define terms used in the claims.” Markman, 52 F.3d at 967. “[W]ords must be used in the same way in both the claims and the specification.’ ” ZMI Corp., 844 F.2d at 1580 (quoting Autogiro Co. of America v. United States, 181 Ct.Cl. 55, 384 F.2d 391, 397 (1967)). Generally speaking, however, “particular limitations or embodiments appearing in the specification will not be read into the claims,” Loctite, 781 F.2d at 867, because it is the claims, not the specification, that “delimit the right to exclude” under the patent, Markman, 52 F.3d at 980. c. The Prosecution History To interpret disputed claim language, the Court should also look to the prosecution history, which may be used by the Court as a tool to determine the “true meaning of language used in the patent claims.” Markman, 52 F.3d at 980. “ ‘The prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed dining prosecution in order to obtain claim allowance.’ ” ZMI Corp., 844 F.2d at 1580 (quoting Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985)). However, “[a]l-though the prosecution histoiy can and should be used to understand the language used in the claims, it too cannot ‘enlarge, diminish or vary5 the limitations in the claims.” Markman, 52 F.3d at 981 (citations omitted). d. Extrinsic Evidence “Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises____ Extrinsic evidence is to be used for the court’s understanding of the patent, not for the purpose of varying or contradicting the terms of the claims.” Markman, 52 F.3d at 980-81. 2. Comparison of Claims with Accused Products-Literal Infringement Once the scope of the claims is ascertained, the Court must determine whether the defendant’s allegedly infringing activity falls within the scope of the claims. Mobil Oil Corp. v. Amoco Chemicals Corp., 779 F.Supp. 1429, 1442 (D.Del.1991), aff'd 980 F.2d 742 (Fed.Cir.1992). The determination of whether a patented invention has been made, used or sold by another is a question of fact. Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569 (Fed.Cir.1983); see also Rawlplug Co. Inc. v. Illinois Tool Works, Inc., 11 F.3d 1036, 1041 (Fed.Cir.1993); ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1578 (Fed.Cir.1988); American Standard Inc. v. Pfizer Inc., 722 F.Supp. 86, 92 (D.Del.1989). If every limitation of a claim is found in the accused device, it is literally infringed. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1054-55 (Fed.Cir.1988). A plaintiff must establish infringement by a preponderance of the evidence. Phillips Petroleum Co. v. United States Steel Corp., 673 F.Supp. 1278, 1344 (D.Del.1987), aff'd 865 F.2d 1247 (Fed.Cir.1989). B. Discussion — Claim Construction and Literal Infringement CalMed contends that the 911 collar literally infringes the ’219 patent but concedes that the modified 911 collar does not. The Court’s findings regarding literal infringement by the 911 collar apply equally to the modified 911 collar except where the Court specifically recognizes a difference between the two collars which is relevant to the Court’s literal infringement analysis. Claim construction does not occur in a vacuum. It is the rare case where the parties dispute the meaning of every term in the claims. This case is representative of the more common situation in which the parties dispute, as a matter of law, the meanings of certain terms that may well be dispositive when the analysis then turns to the factual comparison of the properly construed claims with the accused products. While literal infringement involves an element-by-element comparison of the patent claims with the accused products, the parties have not taken this approach in their post-trial briefing. Rather, the parties have only focused on these certain disputed elements. For purposes of this Memorandum Opinion, the Court assumes that these briefed issues are dispositive of the question of literal infringement. 1. Independent Claim 1 Claim 1 of the ’219 patent claims: A cervical collar formed entirely of [a stiff, flexible flat plastic sheet band having an asymmetrical configuration comprising]: (a) an elongated neck encircling band formed entirely of [said] stiff, flexible plastic sheet material having front, [and back] side and opposite side portions; (b) a chin support brace, also formed entirely of stiff flexible plastic sheet material having a generally C-shape including fastening means located on each end of said brace; (c) said chin support brace fastening means being engageable with cooperative attachment means located at least on opposite [sides] side portions of said neck encircling band such that when said band is formed into said collar at least one of said fastening means is allowed to align with a respective attachment means thus bowing said brace thereby enabling said brace to obtain an upwardly inclined, conically convex chin rest supported along its entire length by the upper edge of the front portion of said band and projecting forwardly therefrom; and (d) collar retention means carried at each end of said band and mutually cooperative to retain said band in its collar configuration. [PX 520 at 4/19-42], The claim construction issues with respect to Claim 1 are (1) whether claim 1 discloses a cervical collar that is limited to a “flat, two-dimensional chin brace and neck encircling band that are transformable by the user, after manufacture, between two-dimensional and three-dimensional configurations.” [TOB at 5 n. 2 (emphasis added), see also TAB at 10-11]; (2) the meaning of the terms “encircling” and “band” and “entirely” in the phrase “an elongated neck encircling band formed entirely of stiff plastic sheet material having front, side, and opposite side portions”; and (3) the meaning of the limitation requiring that the chin support brace be “supported along its entire length by the upper edge of the front portion” of the neck encircling band. a. Transformability — Limitation or Additional Feature? Tecnol contends that the language of claim 1, the specification, the prosecution history, and the prior art all limit claim 1 to a manufactured device that is capable of transforming from an essentially two-dimensional flat storage configuration to a three-dimensional formed collar. Tecnol used the example of a folding chair to explain its transform-ability argument: “in a claim directed to a folding chair, the capability of the chair to transform from a flat, storage configuration to a three-dimensional chair configuration would be an essential element of the claimed invention.” [TAB at 14]. Tecnol’s folding chair hypothetical assumes that the hypothetical claim would contain language directed to transformability. CalMed does not dispute that the preferred embodiment described in the specification is a cervical collar that is transformable by the user. CalMed also does not dispute that the highly successful Stifheek collar is transformable by the user. CalMed contends, however, that independent claim 1 is not limited solely to cervical collars with this novel ability to transform. CalMed submits that claim 1 describes a cervical collar with a novel structural relationship between collar and chin support, regardless of whether the cervical collar is transformable or not. Under CalMed’s interpretation of independent claim 1, transformability is merely an additional feature of the Stifneck vis-a-vis claim 1, albeit an attractive, useful and novel one. One must keep in mind that “[w]ords in a claim ‘will be given their ordinary and accustomed meaning, unless it appears that the inventor used them differently.’” Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed.Cir.1984) (quoting Universal Oil Prods. Co. v. Globe Oil & Refining Co., 137 F.2d 3, 6 (7th Cir.1943), aff'd 322 U.S. 471, 64 S.Ct. 1110, 88 L.Ed. 1399 (1944)). Tecnol claims that subparagraphs (a) and (b) of claim 1, which claim a neck encircling band and a chin support that are “formed entirely of stiff flexible plastic sheet material” indicate that these components must have the capability to lay flat. The Court finds that this language is merely descriptive of the types of materials claimed, and subparagraphs (a) and (b) disclose nothing about how or when these originally flat components are formed into a three-dimensional configuration. Subparagraph (c), which describes how the components described in subparagraphs (a) and (b) interact to form a collar, contains the language critical to the transformability dispute: (c) said chin support brace fastening means being engageable with cooperative attachment means located at least on opposite [sides] side portions of said neck encircling band such that when said band is formed into said collar at least one of said fastening means is allowed to align with a respective attachment means thus bowing said brace thereby enabling said brace to obtain an upwardly inclined, conically convex chin rest supported along its entire length by the upper edge of the front portion of said band and projecting forwardly therefrom; [PX 520 at 4/19-42 (emphasis added) ]. The portions of subparagraph (c) underlined above do describe an orientation of the band and the chin support brace, but say nothing about when the orientation occurs, or who is to perform it. To find that “when said band is formed” means “when said band is formed by the user at some point after manufacture” would be to impermissibly import a limitation into the claim which is not supported by the language of the claim. In an attempt to circumvent this problem, Tecnol makes a number of arguments directed to the specification and the prosecution history. Tecnol argues that the specification describes a collar which is transformable by the user through use of language such as “the entire collar can be unfolded into a flat position” and drawings which are described as illustrating the collar “in its unassembled or portable configuration as it would be carried by paramedics in a portable pack or a mobile paramedic unit.” [PX 520, 3/48-49, 1/59-61]. The specification also concludes, however, with a rather standard disclaimer: The invention has been described with reference to the illustrated and presently preferred embodiment.' It is not intended that the invention be limited by this description of preferred embodiments. Instead, it is intended that the invention be defined by the means, and the obvious equivalents, set forth in the following claims. [Id. at 4/11-17]. The specification may help to define terms because words must be used in the same way in both the claims and the specification, but particular limitations or embodiments appearing in the specification must not be read into the claims. The only terms potentially relating to transformability which are especially defined in the specification are the “fastening means” located on the chin support and the corresponding “cooperative attachment means” located on the neck encircling band. The engageable fastening means and cooperative attachment means of subparagraph (c) must be interpreted as a means-plus-function element because the claims recite no structure for these means. Means-plus-function elements restrict claim coverage. Valmont Indus., Inc., v. Reinke Mfg. Co., 983 F.2d 1039 (Fed.Cir.1993). Under § 112 ¶ 6, a claim containing such an element covers only (1) the identical function claimed by the patentee and (2) the structure disclosed in the patent specification or its equivalents. Intel Corp. v. United States Int’l Trade Comm’n, 946 F.2d 821, 841-42 (Fed.Cir.1991). The means-plus-function elements of paragraph (e) perform the function of fastening, aligning, and bowing the chin support brace, but once again, paragraph (c) contains no requirement that these functions be performed at a certain time and contains no requirement that these functions be reversible. A comparison of the claim language with the chin support fastening and attachment structures disclosed in the specification supports this conclusion. Paragraph (c) requires at least two fastening means, which attach on opposite sides of the neck encircling band. Paragraph (c) makes no distinction between these two fastening means, i.e., the language does not state any way in which the fastening means and attachment means on one side must be different from the fastening means and attachment means on the other side. The specification, however, discloses both a structure by which the chin support may be permanently fastened, and a structure by which the chin piece may be taken from an unfastened state to a fastened state. The chin support may be permanently attached to the collar with a “rivet or snap fastener.” [PX 520, 2/49-51]. Alternatively, the chin support may be taken from an unfastened state to a fastened state by means of a snap fastener interacting with a cooperative aperture located on the neck encircling band. While in the preferred embodiment a different structure is used on each side of the chin support, this is not a requirement of the claims. So far as the claims are concerned, both sides of the chin support brace could contain either structure. In addition, CalMed contends that interpreting claim 1 as requiring transformation by the user is inconsistent with the doctrine of claim differentiation, because a dependent claim already contains this limitation. The doctrine of claim differentiation is a canon of claim construction which holds that when a patent contains both broad and narrow claims, the additional limitation of the narrow claim should not be read into the broad claim. Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed.Cir.1988); Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1570 (Fed.Cir.1983). “The doctrine embodies the common sense notion that ordinarily language of one claim should not be so interpreted as to make another claim, such as a claim dependent on the first claim, identical in scope.” 4 Donald S. Chisum, Patents § 18.03[6] at 18-70 (1994). Claim 8, which depends from independent claim 1, claims: 8. The cervical collar of claim 7 [which depends from claim 1] wherein one end of said chin support brace is permanently secured to one side of said neck encircling band and includes detachable means for connecting its opposite end to the opposite side of said neck encircling band during assembly of said collar whereby said chin support brace can be unfolded into a flat configuration and folded and secured into said conically convex shape. [PX 520 at 6/6-13 (bracketed text added) ]. CalMed contends that claim 8 contains the transformability limitation and for that reason such a limitation may not be read into claim 1. In response, Tecnol submits the doctrine of claim differentiation is inapplicable because sufficient differences exist between claim 1 and claim 8 even if claim 1 is inteipreted so as to contain a transformability limitation. First, Tecnol asserts that claim 1 does not contain claim 8’s requirement that one of the fastening means be permanently attached. Second, Tecnol contends that Claim 8 requires a fastening means that can fasten and unfasten repeatedly, while claim 1 is broader because it does not contain such a limitation and covers a collar which transforms once and then cannot for all practical purposes be disassembled. In response, CalMed asserts that the doctrine of claim differentiation does not fall by the wayside simply because Tecnol can find one potential difference between its interpretation of independent claim 1 and dependent claim 8. CalMed relies upon SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed.Cir.1985), in which the Federal Circuit found that the district court erred in using the specification to read limitations into a claim, claim 1, that were already present in another claim, claim 3. CalMed states in’ their reply brief that there were “a number of differences” between independent claim 1 and dependent claim 3 and that the Federal Circuit “found it was improper to read anyone of the elements in claim 3 into claim 1.” [CMRB at 6 n. 3]. While there may in fact have been a number of differences between these two claims, the portion of the Federal Circuit decision cited by CalMed was addressed solely to the fact that a single limitation present in claim 3, “the vertical limitation”, had been improperly read into claim 1 via the specification. The Federal Circuit rested its decision on an examination of the specification, the prosecution history, and the claim language, but did not specifically analyze the existence or non-existence of other differences between the claims. The doctrine of claim differentiation is of vital importance, as indicated by the Federal Circuit: [T]he [doctrine of claim differentiation] is far more than “general.” It is fixed. It is long and well established. It enjoys an immutable and universally applicable status comparatively rare among rules of law. Without it, the entire statutory and regulatory structure governing the drafting, submission, examination, allowance, and enforceability of claims would crumble. D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1574 (Fed.Cir.1985). It seems to this Court that the doctrine does not become inapplicable simply because a party can conjure a distinction between two claims, as Tecnol argues. Nor does the doctrine automatically prevent a limitation from existing in an independent claim simply because the limitation appears in a dependent claim, as CalMed contends. Rather, the true test must be that claims are defined and construed as they were drafted by the patent holder in light of the claim language, the specification, and the prosecution history. Where the specification or prosecution history provide a basis for reading a limitation into a claim, the presumption provided by the doctrine of claim differentiation may be overcome. See Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d 1017, 1023-24 (Fed.Cir.1987); Jonsson v. Stanley Works, 903 F.2d 812, 820 (Fed.Cir.1990) (Federal Circuit found it unnecessary to review doctrine of claim differentiation argument because district court’s finding that claim contained a limitation also existing in a separate dependent claim was supported by the prosecution history, the patent, the specifications, and deposition testimony.); Autogiro Co. of America v. United States, 181 Ct.Cl. 55, 384 F.2d 391, 404 (1967) (“Claim differentiation is a guide, not a rigid rule. If a claim will bear only one interpretation, similarity will have to be tolerated.”) In the case subjudice, however, The Court need not resolve the claim differentiation dispute because 1) the Court finds, as discussed above, that the plain language of the claims and the specification do not support reading a transformability limitation into claim 1, and 2) the Court finds, as discussed below, that the prosecution history likewise does not support the inclusion of a transformability limitation in claim 1. Tecnol contends that Garth argued on numerous occasions during the prosecution of his application that his invention was unique because it had the capability of being transformed by the user from a flat storage configuration into a three-dimensional configuration. CalMed does not dispute that such arguments were made, but contends that transformability by the user is merely one of many distinctions that were made by Garth during the patent prosecution, and that such arguments are irrelevant because they were never incorporated as limitations into the language of the claims. CalMed contends that “[t]he prosecution history reveals that the Patent Office understood that Garth was claiming ... a cervical collar that has a unique relationship between the chin support brace and neck encircling band.” [CMOB at 10]. This dispute may only be resolved through a detailed analysis of the prosecution history of the ’619 and ’219 patents. In Garth’s original application claim 1 stated: 1. A cervical collar formed of a stiff, flexible sheet band comprising: (a) an elongated neck encircling band formed of stiff, flexible sheet material having a front side and back portions; (b) a chin support brace, also formed of stiff flexible sheet material having a generally C-shape; (c) chin support brace fastening means distally engageable with opposite ends of said chin support brace and cooperative attachment sites on opposite sides of said neck encircling band when said band is formed with said collar; and (d) collar retention means carried at each end of said band and mutually cooperative to retain said band in its collar configuration. [PX 521 at 14]. In the original application, dependent claim 9 was the forerunner of dependent claim 8 in the ’219 reissue patent: 9. The cervical collar of claim 8 [which depends from claim 1] wherein one end of said chin support brace is secured to one side of said neck encircling band and includes means for connecting its opposite end to the opposite side of said neck encircling band during assembly of said collar. [Id. at 15], The examiner rejected all of the claims on a combination of obviousness and anticipation grounds. [Id. at 19-23]. The examiner made specific rejections based upon the inadequate disclosures concerning the chin piece and the fastening means [Id. at 22-23]. In response, Garth submitted an amendment containing revised claims, including an amended claim 1 and dependent claim 9, now renumbered as claim 8. 1. A cervical collar formed entirely of a stiff, flexible flat plastic sheet band comprising: (a) an elongated neck encircling band formed of said stiff, flexible sheet material having [a] front side and back portions; (b) a chin support brace, also formed of stiff flexible plastic sheet material having a generally C-shape; (c) chin support brace fastening means distally engageable with opposite ends of said chin support brace and cooperative attachment sites on opposite sides of said neck encircling band when said band is formed into [with] said collar to secure said brace into an upwardly inclined, conically convex chin rest supported along its entire length by the upper edge of the front portion of said band and projecting forwardly therefrom; and (d) collar retention means carried at each end of said band and mutually cooperative to retain said band in its collar configuration. 8. The cervical collar of claim [8] 5 wherein one end of said neck encircling band is permanently secured to one side of said neck encircling band and includes detachable means for connecting its opposite end to the opposite side of said neck encircling band during assembly of said collar whereby said chin support brace can be unfolded into a flat configuration and folded and secured into said conically convex shape. [Id. at 25-27 (underlined text and bracketed text indicate language added and deleted in amendment) ]. At this point in time, claim 1 was clearly distinct from claim 8, which described fastening means which allowed repeated transformation by a user. Claim 1 did not contain such a limitation. In his remarks, Garth first stated “Claim 1 has been amended to incorporate the significant features of applicant’s invention and to distinguish the claim over the prior art.” After a brief explanation of the difference between claim 1 and claim 4, the other independent claim, he then proceeded to make a number of general comments regarding his invention. According to Garth, the significant aspects of his invention were that: 1. “the collar can be unfolded into a flat or substantially two-dimensional shape;” 2. “the collar is formed entirely of plastic, radiolucent material;” 3. “the collar controls flexion ... and ... immobilizes the head by preventing rotational and lateral movement;” and 4. “[a]nother feature, emphasized in claim 4 and its dependents, is that the collar is asymmetric and attaches to one side of the patient rather than in back of the patients neck.” [Id. at 28]. Next, Garth described the nature of the chin support structure “when attached at its opposite ends to the collar,” but made no statements regarding when that attachment was to take place. [Id. at 29]. Garth further demonstrated the chin support structure by directing the examiner to a brochure for the Stifneck collar, Garth’s commercial product. The brochure demonstrated how the Stifneck could be transformed by a user, but this was not the purpose for which Garth directed the examiner to the brochure. Garth summarized the examiner’s grounds for rejecting each of the claims as either anticipated by prior art or obvious in light of the prior art or both, and then proceeded to distinguish his invention over these prior art references. In doing so, Garth used a mix of the above listed arguments. Garth did not rely solely upon the foldability distinction in distinguishing any prior art reference, and in fact Garth did not raise the foldability distinction with respect to each prior art reference, although it would have been a valid distinction over each. In distinguishing each prior art reference, Garth did not attempt to distinguish his invention on a claim by claim basis, but rather left it up to the examiner to deduce how these arguments justified each claim. Read in the context of the entire amendment, the Court views Garth’s comments regarding foldability being simply one argument that was advanced. These comments were not made in support of any one particular claim, but rather were just one part of a global response to the examiner’s global rejection of each and every original claim. As such, these initial comments were directed, inter alia, at both claim 8, which expressly contained a limitation requiring transformability by the user, and claims 1 and 4, which contain no such limitation. The Court therefore finds that Garth’s remarks regarding “foldability” are “of little significance” in interpreting claims 1 and 4 and should not be read into those claims. United States v. Telectronics, Inc., 857 F.2d 778, 783 (Fed.Cir.1988), cert. denied 490 U.S. 1046, 109 S.Ct. 1954, 104 L.Ed.2d 423 (1989). Following Garth’s amendment, the examiner held a telephone interview with Strauss and allowed the claims in full subject to an examiner’s amendment, which made identical modifications to both claim 1 and claim 4, noted below in underlined text as they affected claim 1; 1. A cervical collar formed of a stiff, flexible flat plastic sheet band having an asymmetrical configuration comprising: (a) an elongated neck encircling band formed of said stiff, flexible sheet material having front, side and back portions; (b) a chin support brace, also formed entirely of stiff flexible plastic sheet material having a generally c-shape including fastening means located on each end of said brace; (c) said chin support brace fastening means [distally] being engageable with cooperative attachment means located at least on opposite sides of said neck encircling band such that when said band is formed into said collar [to secure said brace into] at least one of said fastening means is allowed to align with a respective attachment means thus bowing said brace thereby enabling said brace to obtain an upwardly inclined, conically convex chin rest supported along its entire length by the upper edge of the front portion of said band and projecting forwardly therefrom; and (d) collar retention means carried at each end of said band and mutually cooperative to retain said band in its collar configuration. {See PX 521 at 40-41]. The examiner’s amendment adds no language specifically requiring that the invention be transformed by a user. The examiner could have specifically inserted such a limitation. He chose not to do so. The notion that arguments made during the prosecution do not necessarily limit a given claim is not a novel one. In United States v. Telectronics, 857 F.2d 778 (Fed.Cir.1988) , the Federal Circuit found that the district court mistakenly relied upon certain arguments made during the prosecution history and as a result improperly read a unjustified limitation into a claim. This aspect of the Telectronics decision is applicable to the case sub judice. The claims as submitted by Garth contained a claim 8 which had a transformability limitation and a claim 1 which did not. Thus, the Court finds that general transformability arguments made by Garth which were not specifically directed to claim 1 are “of little significance” in interpreting claim 1. See also Internet America, Inc. v. Kee-Vet Labs, 887 F.2d 1050 (Fed.Cir.1989) . The Court concludes, therefore, that claims 1 and 4 of the ’619 patent as issued did not contain a limitation requiring that the invention be transformable by the user from a two-dimensional to a three-dimensional configuration. During the subsequent prosecution of the ’219 reissue patent, Garth attempted to remove the phrase “when said band is formed into said collar” from claim 1. He did not attempt to remove this identical language from claim 4. Garth also attempted to amend dependent claim 8 so that it depended upon claim 1 rather than claim 4. [PX 522 at 17 ]. The patent examiner rejected all of the claims as presented by Garth in the reissue application, [PX 522 at 26]. In doing so, the examiner found that claims 1 and 4 were anticipated by a certain prior art reference because the limitation of paragraph (c) did not structurally define the invention over the prior art. [PX 522 at 27]. Following this rejection, Garth once again amended the claims, with one of the changes being the reinsertion of the phrase “when said band is formed into said collar” into claim 1. Tecnol seizes upon this chain of events as proof that paragraph (c) required transformability by the user, but the Court is unpersuaded. The prior art reference that was relied upon by the examiner in initially rejecting claims 1 and 4 had not been cited during the prosecution of the ’619 parent patent, and the examiner cited the reference to strike not only the amended claim 1 but the unamended claim 4, which still contained the phrase “when said band was formed into said collar.” This particular portion of the reissue prosecution history does not change the Court’s previous conclusions. Thus, the Court concludes, for the reasons stated above, that the plain language of the claims, the specification, and the prosecution history all support a finding that claims 1 and 4 are not limited to a cervical collar which is capable of being transformed by the user from a substantially two-dimensional storage configuration to a three-dimensional cervical collar formation. Accordingly, the fact that the 911 collar cannot be transformed from a two-dimensional configuration to a three-dimensional configuration does not support Tecnol’s contention that the 911 collar does not literally infringe the ’219 patent, b. Disputes Relating to the Band Paragraph (a) of claim 1 claims “an elongated neck encircling band formed entirely of stiff, flexible plastic sheet material having front, side and opposite side portions.” Two disputed issues of claim construction exist with respect to the band claimed in Claim 1: 1) whether Claim 1 is limited to a band that completely encircles the patient’s neck or whether it also covers a band that only partially extends around a patient’s neck, and 2) whether Claim 1 is limited to a one-piece band. 1) “Neck Encircling” In claim 1 of the parent ’619 patent, Garth claimed “an elongated neck encircling band ... having front, side and back portions.” In his reissue application, Garth attempted to claim simply “an elongated neck encircling band.” [PX 522 at 13]. Eventually, after several rejections and amendments, Garth and the examiner settled upon “an elongated neck encircling band ... having front, side and opposite side portions.” Garth testified at trial that this change in claim language was motivated by Garth’s belief that the patent should cover a cervical collar which had no back portion such as the NecLoc collar. The NecLoc collar was a two-piece collar which was sometimes promoted as being useable without the back portion. [Tr. 289:19— 292:3]. Garth’s trial testimony on this issue is precisely the sort of extrinsic evidence which the Markman decision found was not to be considered in construing patent claims. The relevant arguments are those made by Garth during the prosecution of the reissue application, not those made at trial. While Garth stated numerous times in the prosecution history that he sought to remove the limitation requiring that the band have a back portion, he never sought to alter or remove the limitation which required the band to encircle the neck. The Court finds that the plain and ordinary meaning of “neck encircling” is that the band must surround the patient’s neck so that it forms a circle around the patient’s neck. The front and back band sections of the 911 collar clearly encircle a patient’s neck. CalMed also contends, however, that the front band section, acting in concert with a velcro strap, would also constitute a neck encircling band. The Court finds that the front band section alone does not “encircle” the neck within the meaning of the ’219 patent, and for that reason a hypothetical Tecnol collar formed solely of the front band section and a Velcro strap would not be “neck encircling” unless the Velcro strap could be considered part of the “band”. This issue is discussed below as part of the Court’s discussion of the “entirely” limitation. 2) Single Piece of Material Claim 1 of the ’219 patent also requires that the “elongated neck encircling band” be “formed entirely of stiff, flexible, plastic sheet material.” Tecnol contends that this language requires that the band be formed out of a single piece of material. Tecnol’s argument proceeds in two stages. First, Tecnol contends that the term “band” taken alone describes a single piece of material. Second, Tecnol contends that even if the term “band” includes several pieces joined together, the additional limitation requiring that the band “be formed entirely of stiff, flexible, plastic sheet material” requires the band to be formed out of a single piece of material. a) “Band” Tecnol contends that the term “band” defines a single continuous strip of material. [TAB at 20]. The Court finds that the ordinary meaning of “band” is not limited to a single unblemished and uninterrupted piece of material, but also encompasses two or more pieces of material which are joined together to encircle an object. Wristwatch bands, for example, are sometimes made from a single piece of metal, leather, or plastic, but they are also made from pieces of metal, leather, or plastic which are fastened together during manufacture. All are referred to as “bands.” Tecnol does not rely solely upon its understanding of the ordinary meaning of “band”, but also argues that the specification of the ’219 patent, specifically the portion entitled “Background of the Invention,” provides a special definition of “band” that excludes two pieces that are joined together: Cervical collars are commonly formed of relatively thick material, usually in two pieces which are assembled about a wearer’s neck. These collars are too bulky and cumbersome for field use by paramedics. Some attempts have been made to provide cervical collars from stiff flexible sheet material which is cut into an elongated band that is encircled about the wearer’s neck. Although rolled edges of leather or plastic foam have been provided on some of these collars as in U.S. Pat. No. 3,075,521 [Grassl], none of these cervical collars adequately provide support and restraint for the wearer’s chin. [PX 520,1/12-23], The Court finds that this portion of the specification does not support restricting “band” to exclude two pieces of material joined together. The specification contrasts collars which consist of two separate pieces which must be secured into position by the user (and are not described as “bands”) with collars that do not have pieces (and are described as “bands”). A band consisting of two pieces that have been permanently attached during manufacture is not inconsistent with the description of a band contained in the specification, notwithstanding the fact that the specific example of a band disclosed in the specification, U.S. Pat. No. 3,075,521 [Grassl, DX 25], was formed from a single piece of material. As discussed previously, the Court’s construction of the term “band” is not dispositive of the single piece dispute because the Court must also construe the more crucial “formed entirely” limitation. b) “Formed Entirely” Tecnol contends that the claim 1 language requiring that the band be “formed entirely of stiff flexible plastic sheet material” excludes any band which is formed of two pieces of stiff flexible plastic sheet material which are permanently attached, at least where the attachment means does not also consist of stiff flexible plastic sheet material. [TAB at 21], Teenol relies upon the ’219 patent prosecution history to support its interpretation of “entirely.” In his initial reissue application, Garth attempted to remove many of the band limitations from Claim 1 by claiming only “an elongated neck encircling band.” [PX 522 at 13]. The patent examiner initially rejected claim 1, inter alia, as anticipated by Grassl: Grassl discloses a cervical collar having a neck encircling band (16), a chin support brace (15) with fastening means (24) and collar retention means (18, 17) located on each end of the brace. The limitation of (c) of the claim does not structurally define over the same as disclosed by Grassl. [PX 522 at 27]. In response, Garth submitted a new amendment putting some of the previously deleted band limitations back into claim 1: (a) a collar formed of an elongated neck encircling band formed entirely of stiff, flexible plastic sheet material; [PX 522 at 31]. This amended language does more, however, than simply restore some of the previous limitations. Garth added strict language requiring that the band be formed entirely of the requisite material. In his remarks, Garth specifically distinguished claim 1 over Grassl: The Grassl collar bears no apparent relationship to applicant’s collar, and the rejection under 35 USC 102 is thus made on the basis that the rejected claims do not exclude the Grassl collar. Claim 1, however, includes the following recitations which are not present in the Grassl collar: (1) “formed entirely of’ (lines 1, 5 and 7); (2) “ “conically convex chin rest” (line 16); and (3) “having a generally C-shape” (lines 8 and 9). Perhaps the most apparently distinguishing of the aforementioned recitations are those which limit the band and the chin support brace of the collar to being formed entirely of stiff, flexible plastic sheet material. This clearly is not present in Grassl, as the tubular elements of formed of soft material which is padded with foam rubber. The foam rubber in Grassl tubular elements 13 and 14 is necessary not simply for comfort of the patient, blit is necessary for structural shape and support of the soft material, in contrast, applicant’s claims cover a collar in which the structural elements are formed entirely of the recited stiff, plastic sheet material, but in which nonstructural padding such as foam strip 21 can be optionally included. [PX 522 at 34-35 (text uncorreeted) ]. Through these remarks, Garth emphasized the importance of the “entirely” limitation. Following this explanation, the examiner rejected claim 1 as indefinite, but found that providing some wording changes were made, which are not important to the present issue, “the claims appear to be allowable over the art of record,” and further stated “Applicant’s arguments regarding the claimed limitations of Claim 1 are persuasive.” [Id. at 41]. In the portion of the prosecution history quoted above, Garth argued that the “claims cover a collar in which the structural elements are formed entirely of the recited stiff, plastic sheet material.” Teenol contends that whatever' means are used to connect the pieces of a multiple-piece band constitute “structural elements,” and therefore the claims require that any such fastening must also be formed entirely of stiff, flexible plastic sheet material. In response, CalMed makes two arguments. First, CalMed contends that a band that is made entirely out of one piece of material does not cease being made “entirely” out of that material if the band is cut into two pieces and the two pieces are then reattached. At trial, CalMed demonstrated its point using the clear piece of stiff flexible sheet material found in the collar of a man’s shirt when it is first removed from its packaging. [PX 565]. All parties agreed that this material, when formed into a band, was made “entirely” from flexible sheet material. All parties agreed that this band was still made “entirely” from flexible sheet material if a sticker was placed upon the band, or if a metal staple was put through the band. The parties disagreed on how to describe the band, however, once counsel for CalMed cut the band in half and then reattached the two pieces with a metal staple. Tecnol’s expert, Preston, opined that the band was then no longer formed entirely out of stiff flexible sheet material because “now you are lending structure” with the metal staple. [Preston Tr. at 1870], The Court finds that Tecnol’s construction of the “entirely” limitation is correct. Taken in its ordinary meaning, “entirely” implies that all pieces of the band are to be formed out of stiff, flexible plastic sheet material. Garth’s comments during the prosecution of the reissue application clarify and do not alter this basic understanding of “entirely.” Garth stated that the band’s “structural elements” must be formed entirely out of the requisite material, as opposed to “nonstructural” elements such as foam padding provided for comfort, which do not. [PX 522 at 35]. The claims require, therefore, that any element of an accused band which is properly described as a “structural element” must be formed entirely out of stiff, flexible plastic sheet material. Turning to the accused products, the Court finds that the sizing post and additional Velcro attachment means found in the 911 collar, are “structural elements.” They perform a vital role in providing the 911 band with form and structure. They are not “nonstructural” or superfluous to the function of providing support, such as foam padding provided for comfort. Accordingly, the Court finds that this element of claim 1 is not found in the accused product, and this finding provides an additional basis for the Court’s determination that the 911 collar does not literally infringe claim 1. CalMed contends that this construction of the term “entirely” renders the claims internally inconsistent, because: Subparagraph (d) of Claim 1 expressly calls for “collar retention means carried at each end of said band ...” which, in the case of the Stifneck and the Teenol collars, describes the Velcro-like fasteners riveted to the stiff flexible plastic neck encircling bands. Thus the claim clearly does not require the absence of rivets as urged by Teenol. [CMOB at 11-12 (footnote omitted) ]. The Court will assume arguendo that subparagraph (d) of Claim 1 claims retention means that are not formed of stiff, flexible plastic sheet material, and will further assume that these retention means are to be attached to the band with rivets which are also not formed of stiff, flexible plastic sheet material. The retention means, however, are not a sub-component of the band. Subparagraph (a) discloses a band, which must be formed entirely of the requisite material. Subparagraph (d) claims separate components, retention means, which interrelate with the band and each other in a manner which allows the band to obtain and maintain a collar configuration. There is no inconsistency between the Court’s determination that elements) forming the band, be they one or several, must be formed entirely of the requisite material and the fact that a different component, which is not an element of the band, is not subject to such a limitation. For the same reasons, the hypothetical Teenol band formed solely out of the front band section and a Velcro strap would not literally infringe claim 1 because the Velcro strap is not “formed entirely of stiff, flexible plastic sheet material.” c. The Chin Support Brace 1) “Having a generally C-shape including fastening means heated on each end of said brace” Teenol contends that the limitation “generally C-shaped” is a two-dimensional term, and for this reason claim 1 excludes collars which are not transformable from a two-dimensional to a three-dimensional configuration by the user. For all the reasons previously stated by the Court during its discussion of transformability, supra, the Court declines to adopt Tecnol’s claim construction. The “generally C-shaped” limitation provides the shape of the chin support brace necessary to obtain the structural relationship between brace and band. Garth testified that the 911 collar’s chin support brace was generally C-shaped. The Court finds this testimony to be credible and adopts it. The modified 911 chin support brace, on the other hand, achieves its shape through a thermoforming process during manufacture. The Court finds that this modified chin support brace simply does not have a “generally C-shape.” For this reason, the modified 911 collar does not literally inflinge claim 1. In addition, the modified 911 collar does not literally infringe claim 1 because the chin support brace fastening means are not located at each end of the brace, but rather are located in the center of the brace. 2) “Supported, along its entire length by the upper edge of the front portion of said band” Tecnol contends that “[t]he plain meaning of ‘along its entire length’ is that the chin brace must be in contact, from one end to the other, with the upper edge of the front portion of the band.” [TAB at