CAFC discusses interplay between means-plus-function and claim differentiation
| November 19, 2012
Icon Health & Fitness, Inc. v. Octane Fitness, LLC.
October 14, 2012
PROCEDURAL SUMMARY
ICON Health & Fitness, Inc. (“ICON”) owner of USP 6,019,710 (the “’710 patent”) sued Octane Fitness (“Octane”) for infringement in the United States District Court for the District of Minnesota. The District Court granted summary judgment of non-infringement of claims 1–5, 7, and 9–10 of the ’710 patent by concluding that the “stroke rail” and “means for connecting” limitations were absent in Octane’s Q45 and Q47 machines. On appeal, the CAFC agreed with the District Court’s claim construction and affirmed the District Court’s holding of non-infringement.
POINTS OF LAW
A means-plus-function limitation is not made open-ended by the presence of another claim specifically claiming the disclosed structure which underlies the means clause or an equivalent of that structure. If [plaintiff’s] argument were adopted, it would provide a convenient way of avoiding the express mandate of section 112(6). Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991).
Claim differentiation cannot override the effect of section 112(6). As noted in Laitram Corp., the scope of the limitation literally covers structures described in the specification and equivalents thereof not withstanding the existence of dependent claims.
As for the doctrine of equivalents, a patentee cannot assert equivalents that would encompass—or “ensnare”—the prior art.
THE FACTS
The ’710 patent is directed to an elliptical machine that allows for adjustable stride length. The patent claims at issue focus on the “linkage system” connecting the foot rail to the frame via the “stroke rail.” As described in the specification and shown in Figure 5 below, the stroke rail (66) is attached to the frame in three places: to the forward end of a foot rail (72, 50); to a rotatable crank arm connected to an axle (90); and to the frame via a pin mounted within a C-shaped channel, encircling the pin (76, 84).
Claim 1 is representative of the contested claims:
1. An exercise apparatus comprising:
(a) a frame configured for resting on a ground surface;
(b) a pair of spaced apart foot rails each having a first end and an opposing second end, each foot rail being configured to receive a corresponding foot of a user;
(c) a pair of stroke rails each having a first end and an opposing second end, the second end of each stroke rail being hingedly attached to the first end of a corresponding foot rail;
(d) means for connecting each stroke rail to the frame such that linear reciprocating displacement of the first end of each stroke rail results in displacement of the second end of each stroke rail in a substantially elliptical path; and
(e) means for selectively varying the size of the substantially elliptical path that the second end of each stroke rail travels.
(Emphasis added).
AT THE DISTRICT COURT
The District Court found that the differences between the Q45 and Q47 models and the ’710 patent are that Octane’s machines do not use a C-shaped channel (84) and pin (76) to attach to the frame (12), but instead use a “rocker link”; and Octane’s alleged “stroke rail” has multiple parts, including a motor, and is not a single rail.
Means for connecting
The limitation “means for connecting” was construed as a means-plus-function limitation, with the corresponding structure disclosed in the specification being the C-shaped channel (84) and pin (76) as well as the crank arm structure (90).
Regarding the “means for connecting” limitation, the District Court found that there was no evidence that the Q45 and Q47 machines underwent linear displacement. The District Court also found that there was no infringement by equivalence because linear displacement was required by the claims and was critical to the invention as stated both by the examiner in the reasons for allowance and by ICON’s expert, and also because the arc-like movement of the rocker link was present in ICON’s prior art patent. The District Court also held the rocker link was not an equivalent structure to the C-shaped channel.
Stroke rail
The District Court construed “stroke rail” to be “a linear or curved rail, which may be made to vary in length, extending from a foot rail to a frame on an elliptical machine,” and which can be both a “unitary stroke rail and an adjustable stroke rail” with multiple parts “used to vary the length of the stroke rail.”
The District Court held that the Octane’s Q45 and Q47 models did not have a stroke rail that “extends from a foot rail to the frame,” but instead has an intervening rocker link. With regard to infringement under doctrine of equivalents, the District Court held that the accused devices could not infringe because the linkage system used was present in the ICON’s prior art patent, which was licensed to Octane. A patentee cannot assert equivalents that would encompass—or “ensnare”—the prior art.
AT THE FEDERAL CIRCUIT
Means for connecting
On appeal, ICON argued that the District Court should have construe that the corresponding structure for the “means for connecting” was the crank arm (98) attached to the middle of the stroke rail 66.
Alternatively, ICON argued that if District Court is correct in that the corresponding structure includes the C-shaped channel (84) and pin (76), then the accused devices still have an equivalent structure, since Octane’s rocker link moves in a substantially straight path.
ICON argued that the specification describes that the C-shaped channel (84) and pin (76), in col. 4, lines 5-13, as being part of the “attaching means,” and therefore cannot be part of the “connecting means.” The CAFC noted that the “attaching means” is not recited in any of the claims to describe the C-shaped channel (84) and pin (76). The CAFC found that even though the C-shaped channel is also described as the “attaching means” it does not change that fact for the purposes of section 112(6).
The CAFC also noted that ICON’s expert deposition and the Examiner’s reasons for allowance indicated that linear displacement was critical to the invention; and that ICON could have deleted the word “linear” from claim 1 during prosecution to broaden its scope.
ICON also argued that because dependent claims 8 and 22 state that the first end of a stroke rail is “slidably attached” to the frame, the “means for connecting” in claim 1 cannot also include the same slidably attached structure under the theory of claim differentiation. However, the CAFC relied upon Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991), and held that claim differentiation cannot override the effect of section 112(6).
The CAFC agreed with the District Court that the corresponding structure for the “means for connecting” must both connect the stroke rail to the frame and allow the first end to undergo linear displacement. The CAFC noted that are two structures recited in the specification that connect the stroke rail to the frame.
First, the specification clearly identifies the crank arm attached to the middle of the stroke rail as part of that structure. ’710 patent col. 4 ll. 26–51. Second, the specification also describes another attachment at the first end of the stroke rail to the frame via the C-shaped channel and pin structure. Id. at col. 4 ll. 3–17. While that second connection is not specifically identified as a “means for connecting” in the specification, it is required to enable the claimed function, including the linear displacement of the first end. Indeed, the C-shaped channel and pin structure attached to the first end is necessary “to simultaneously enable annular rotation and linear displacement of the first end 70,” as previously shown in Figure 5 above (76, 84). Id. at col. 4 ll. 3–6. These two connections work in tandem both to connect the stroke rail to the frame and to allow the linear displacement of the first end of the stroke rail to result in a substantially elliptical path of the second end.
The CAFC held that since the supposed equivalents in the accused products do not perform the same function by moving in a linear fashion and do not contain a structure equivalent to the C-shaped channel and pin, the accused products cannot literally infringe the claims; ant that the lack of equivalent structure for the “means for connecting” limitation for literal infringement also precludes finding equivalence under the doctrine of equivalents.
Stroke rail
On appeal, ICON argued that “stroke rail” does not require extension “from a foot rail to a frame” and can include additional parts, such as a motor or a rocker link on the accused products. However, the CAFC simply look to the language of the claims, which requires that the stroke rails “each hav[e] a first end and an opposing second end, the second end of each stroke rail being hingedly attached to the first end of a corresponding foot rail.” Specifically, the CAFC found that claim language requires a direct attachment of one end of the stroke rail to the foot rail.
The CAFC also agreed with the District Court in that Octane’s Q45 and Q47 models to the extent they have a stroke rail, connect one end of that stroke rail to the frame using a number of parts including a motor, an integrated screw, a swing arm, a bracket holding the motor, and other pieces, with the other end connect to the frame using the rocker link. In other words, Octane’s Q45 and Q47 models do not have a direct attachment and therefore no literal infringement.
Regarding infringement under the doctrine of equivalents, the CAFC found the ICON did not show that its proposed equivalent does not encompass the prior art.
Tags: claim differentiation > means > means-plus-function > Tho
