"Does 4 Include 3?" Feature Article, January 2006

does 4 include 3?

The disconnect between word and object becomes a puzzle for the courts.

by Kirk Teska

did you ever take part in an exercise where you have to write instructions for performing some fairly simple task and then someone else has to follow your written instructions? The result is often comical.

The obvious lesson of such an exercise is the imprecision of language. It's similar with patent claims, which define an invention to be protected and delimit in words where competitors may not trespass. Since words can be imprecise, patent claims often can be difficult to construe. This is true even in cases involving fairly simple technology, where ambiguous words (or, in the following case, numbers) breed controversy.

The elusiveness of language leaves an open question in a patent lawsuit: Does a four-blade razor infringe on the patent that claims three?

Witness the case of the Gillette Co., which has a patent on the Mach 3 razor, versus Energizer Holdings Inc., which later developed and sold the competing Schick Quattro razor. The Quattro razor has four blades in contrast to the three blades of the Mach 3 razor, so the Quattro razor is obviously different. But doesn't four blades include three blades? Well, yes, but four is not three.

The trial court held that particular distinction was relevant because of the peculiar language used in Gillette's patent claim. Rather than just reciting "a plurality or number of blades" or "at least three blades," Gillette's patent claim more specifically enumerates a group of first, second, and third blades, each progressively positioned farther outward from the blade below it to overcome undesirable drag forces on the skin. The Gillette patent claim further speaks of a second blade.

The Quattro razor, in contrast, has a group of four blades or, depending on how you look at it, two "second" blades. One problem for Energizer is the patent law maxim that additions to a patented device typically still constitute patent infringement. In other words, to not infringe, you generally have to take something away from what is claimed in a patent and replace it with something else.

Thus, for example, in a case in 2004, Toro charged John Deere regarding the design of a soil aerating machine. Toro's patent claimed a mechanical cam-based system, which functioned to deliver high-pressure water to fracture the soil, and John Deere instead used an electrically operated solenoid for performing the same function. The court found no infringement of Toro's patent. The case was described in "Control Means What?" an article in this magazine's Engineering Management supplement in July 2004.

But, unlike John Deere, Energizer didn't simply replace one component of Gillette's patented razor system with something else. Instead, Energizer added something—namely, a fourth blade.

So, the Gillette case was more about whether a second blade between a first and a third blade, as stated in Gillette's patent, encompasses two "second" blades rather than about whether four includes three. Furthermore, Gillette's patent specification, which was used to interpret the claim, included approximately 30 references to three blades and no reference to a four-bladed razor. That fact initially sealed Gillette's fate when the Federal District Court in Boston refused to issue an injunction against Energizer in January 2004.

The case then went to Washington, where the U.S. Court of Appeals, in a 2-1 decision, said the district court erred in construing Gillette's patent as precluding the addition of a fourth blade, or, more accurately, two "second" blades. Two justices found favor with Gillette's patent specification where it once refersto a "plurality" of blades, meaning there could be more than three.

Furthermore, in a different case involving the European counterpart to Gillette's patent, Energizer had taken the unfortunate position that Gillette's patent covered more than just three blades.

The United States Supreme Court does not often hear patent cases, but when it talks about patents and the nature of language, it can be revealing.

Things are not made for the sake of words, but words for things: A patent may cover a plurality of blades, or perhaps only three.

This is from one Supreme Court opinion: "Unfortunately, the nature of language makes it impossible to capture the essence of a thing in a patent application .... A verbal portrayal [of an invention] is usually an afterthought written to satisfy the requirements of patent law. This conversion of machine to words allows for unintended idea gaps which cannot be satisfactorily filled. Often an invention is novel and words do not exist to describe it. The dictionary does not always keep abreast of the inventor. It cannot.

"Things are not made for the sake of words but words for things .... The language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty."

That was in a 2002 ruling. In 1892, the Supreme Court stated that "the specification and claims of a patent ... constitute one of the most difficult legal instruments to draw with accuracy." To both of these quotes, patent attorneys like me say, "Amen."

Perhaps the real question in the Gillette case, then, is whether Gillette's patent claim fairly portrays the possibility that there could be a fourth blade. Stated another way, given the imprecision of language, if the Gillette patent does not explicitly preclude the addition of a fourth blade, then maybe the two justices siding with Gillette got it right. On the other hand, how is Energizer, as a competitor, supposed to know what does and what does not infringe Gillette's patent? This is a real tension in patent law.

In other patent cases, for example, courts have struggled with the imprecision of language and had to decide if "or" in a patent claim meant A and/or B or, instead, meant A or B but not both. Another case revolved around the word "member." Does that mean only a single part in a patent claim or could "member" also be a multicomponent structure? Does the word "portion" invoke the idea being separate, or could the "portion" be integrated with other component parts? Does "groove" mean only a long narrow channel or could it also mean a slight depression? A lot of time and money are expended in trying to make sense of language.

In the Gillette case, all hope is not lost for Energizer. At the trial court, Energizer raised other defenses to Gillette's patent. Since, for example, the law of the case is now that Gillette's patent encompasses a razor with two "second" blades, if Energizer can show a prior razor with that configuration, Gillette's patent might be found invalid.

The trial court now has to decide if Schick's other defenses, such as the assertion that Gillette's patent is invalid, have merit and whether Gillette is entitled to an injunction and, ultimately, damages. Probably the only certainty, absent a settlement, is at least another appeal.

Kirk Teska is a patent attorney with the law firm of Iandorio & Teska in Waltham, Mass., as well as an adjunct professor at Suffolk University Law School in Boston.