Claim construction of a non-functional term in an apparatus claim; proof of vitiation against infringement under the doctrine of equivalents
| March 29, 2021
Edgewell Personal Care Brands, LLC v. Munchkin, Inc. (Fed. Cir. 2021) (Case No. 2020-1203)
March 9, 2021
Newman, Moore, and Hughes. Court opinion by Moore
Summary
On appeals from the district court for summary judgment of noninfringement of two patents, both directed to a cassette to be installed when a diaper pail system is in use, the Federal Circuit unanimously vacated the summary judgment of noninfringement of one patent because of erroneous claim construction, with caution that it is usually improper to construe non-functional claim terms in apparatus claims in a way that makes infringement or validity turn on the way an apparatus is later put to use. Furthermore, the Federal Circuit unanimously reversed the summary judgment of noninfringement of the other patent under the doctrine of equivalents because of erroneous application of the vitiation theory in the context of summary judgment, with caution that courts should be cautious not to shortcut the inquiry for infringement under the doctrine of equivalents by identifying a ‘binary’ choice in which an element is either present or ‘not present.’”
Details
I. Background
(i) The Patents in Dispute
U.S. Patent Nos. 8,899,420 (“the ’420 patent”) and 6,974,029 (“the ’029 patent”) are directed to a cassette to be installed when a diaper pail system is in use.
The ’420 patent is directed to a cassette with a “clearance” located in a bottom portion of the cassette. Claim 1 is the representative of the ’420 patent, which recites:
1. A cassette for packing at least one disposable object, comprising: an annular receptacle including an annular wall delimiting a central opening of the annular receptacle, and a volume configured to receive an elongated tube of flexible material radially outward of the annular wall; a length of the elongated tube of flexible material disposed in an accumulated condition in the volume of the annular receptacle; and an annular opening at an upper end of the cassette for dispensing the elongated tube such that the elongated tube extends through the central opening of the annular receptacle to receive disposable objects in an end of the elongated tube,
wherein the annular receptacle includes a clearance in a bottom portion of the central opening, … (emphasis added).
Fig. 2A of the ’420 patent, reproduced below, illustrates a bottom perspective view of a cassette 30 to be used with an apparatus 10 (not shown in the figure) for packaging disposable objects (34: a central opening; 38: a bottom annular receptacle; a chamfer clearance 41).
The ’029 patent is directed to a cassette with a cover extending over pleated tubing housed therein. Claim 1 is the representative of the ’029 patent, which recites:
1. A cassette for use in dispensing a pleated tubing comprising:
an annular body having a generally U shaped cross-section defined by an inner wall, an outer wall and a bottom wall joining a lower part of said inner and outer walls, said walls defining a housing in which the pleated tubing is packed in layered form;
an annular cover extending over said housing; said cover having an inner portion extending downwardly and engaging an upper part of said inner wall of said body and a top portion extending over said housing; said top portion including a tear-off outwardly projecting section having an outer edge engaging an upper part of said outer wall of said annular body; said tear-off section, when torn-off, leaving a peripheral gap to allow access and passage of said tubing therebetween; said downwardly projecting inner portion having an inclined annular area defining a funnel to assist in sliding said tubing when pulled through a central core defined by said inner wall of said body; and … (emphasis added).
(ii) The District Court
Edgewell Personal Care Brands, LLC, and International Refills Company, Ltd. (“Edgewell”) sued Munchkin, Inc. (“Munchkin”) in the United States District Court for the Central District of California (“the district court”) for infringement of claims of the ’420 patent and ’029 patent.
Edgewell manufactures and sells the Diaper Genie, which is a diaper pail system that has two main components: (i) a pail for collection of soiled diapers; and (ii) a replaceable cassette that is placed inside the pail and forms a wrapper around the soiled diapers.
Edgewell accused Second and Third Generation refill cassettes, which Munchkin marketed as being compatible with Edgewell’s Diaper Genie-branded diaper pails.
After the district court issued a claim construction order, construing terms of both the ’420 patent and the ’029 patent, Edgewell continued to assert literal infringement for the ’420 patent, and infringement under the doctrine of equivalents (“the DoE”) for the ’029 patent. Munchkin moved for, and the district court granted, summary judgment of noninfringement of both patents. Edgewell appealed.
II. The Federal Circuit
The Federal Circuit (“the Court”) unanimously vacated the summary judgment of noninfringement (literal infringement) of the ’420 patent, reversed the summary judgment of noninfringement (infringement under the DoE) of the ’029 patent, and remanded the case to the district court for further proceedings.
(i) The ’420 Patent
There was no dispute that the cassette itself contained a clearance when it is not installed in the pail. Rather, the dispute focused on whether the claims required a clearance space between the annular wall defining the chamfer clearance and the pail itself when the cassette was installed (emphasis added). The district court determined that “clearance” required space after cassette installation and construed the clearance as “the space around [interfering] members that remains (if there is any), not the space where the interfering member or cassette is itself located upon insertion” (emphasis added).
The Court held that the district court erred in construing the term “clearance” in a manner dependent on the way the claimed cassette is put to use in an unclaimed structure, and vacated the district court’s grant of summary judgment of noninfringement of the ’420 patent.
On the merits, the Court stated that it is usually improper to construe non-functional claim terms in apparatus claims in a way that makes infringement or validity turn on the way an apparatus is later put to use because an apparatus claim is generally to be construed according to what the apparatus is, not what the apparatus does.
The Court moved on to argue that, absent an express limitation to the contrary, the term “clearance” should be construed as covering all uses of the claimed cassette as the parties do not dispute that the ’420 patent claims are directed only to a cassette. The Court looked into the specification to find that, in nearly all of the disclosed embodiments, the specification suggests that the cassette clearance mates with a complimentary structure in the pail such that there is “engagement” (emphasis added). Thus, the Court concluded that the claim does not require a clearance after insertion. In other words, the specification, taken as a whole, does not support the district court’s construction which would preclude such engagement when the cassette is inserted into the pail (emphasis added).
In conclusion, the Court vacated the district court’s grant of summary judgment of noninfringement of the ’420 patent and remanded the case because the Court held that the district court erred in its construction of the term “clearance.”
(ii) The ’029 Patent
The district court construed “annular cover” in the ’029 patent as “a single, ring-shaped cover, including at least a top portion and an inner portion that are parts of the same structure” (emphasis added). Edgewell did not dispute the construction. Instead, Edgewell sought infringement under the DoE for the ’029 patent because Munchkin’s accused Second and Third Generation cassettes each include a two-part annular cover (emphasis added). The district court granted summary judgment of noninfringement of the ’029 patent under the DoE. because the district court determined that no reasonable jury could find that Munchkin’s Second and Third Generation Cassettes satisfy the ’029 patent’s “annular cover” and “tear-off section” limitations under the DoE given that favorable application of the DoE would effectively vitiate the ‘tear-off section’ limitation (emphasis added).
The Court affirmed the district court’s claim construction in view of the plain language of the claims and the written description of the ’029 patent.
In contrast, the Court disagreed to the district court’s vitiation theory under the DoE. While the Court reconfirmed the vitiation theory by stating that vitiation has its clearest application “where the accused device contain[s] the antithesis of the claimed structure”(citing Planet Bingo, LLC v. GameTech Int’l, Inc., 472 F.3d 1338, 1345 (Fed. Cir. 2006)), the Court cautioned that “[c]ourts should be cautious not to shortcut this inquiry by identifying a ‘binary’ choice in which an element is either present or ‘not present’” (citing Deere & Co. v. Bush Hog, LLC, 703 F.3d 1356–57 (Fed. Cir. 2012)).
Applying these concepts to the facts of this case, the Court conclude that the district court erred in evaluating this element as a binary choice between a single-component structure and a multi-component structure, rather than evaluating the evidence to determine whether a reasonable juror could find that the accused products perform substantially the same function, in substantially the same way, achieving substantially the same result as the claims.
Citing Edgewell’s expert testimony, the Court concluded that the detailed application of the function-way-result test, supported by deposition testimony from Munchkin employees, is sufficient to create a genuine issue of material fact for the jury to resolve and, therefore, is sufficient to preclude summary judgment of noninfringement under the DoE.
In conclusion, the Court reversed the district court’s grant of summary judgment of noninfringement of the ’029 patent under the DoE and remanded the case.
Takeaway
· Claim construction: A term in a claim should be construed as covering all uses of the claimed subject matter.
· Infringement under the DoE: Proof of vitiation requires more than identifying a binary choice in which an element is either “present” or “not present.” Instead, the proof still requires failure of passing the function-way-result test.
Tags: claim construction > doctrine of equivalents > summary judgment > vitiation
Prosecution history estoppel applies to narrowing amendment for a purpose, but not for all purposes
| September 25, 2020
Bio-Rad Laboratories, Inc., Et Al. v. 10X Genomics Inc.
August 3, 2020
Newman, O’Malley (Opinion author), and Taranto
Summary
The Federal Circuit held that 10X infringes Bio-Rad’s ‘083 patent under the doctrine of equivalents because a tangential exception to the prosecution history estoppel applies in this case.
Details
Bio-Rad Laboratories, Inc. and the University of Chicago (collectively, “Bio-Rad”) accused 10X Genomics Inc. (“10X”) of infringing three patents: U.S. Patent Nos. 8,888,083 (“083 patent”); 8,304,193 (“193 patent”); and 8,329,407 (“407 patent”). The United States District Court for the District of Delaware held that 10X willfully infringed all three patents and awarded damages in an amount of $23,930,716.
The patents-in-suit are directed to systems and methods for forming microscopic droplets (also called “plugs”) of fluids to perform biochemical reactions. Claim 1 of the ‘083 patent, as below, is representative:
A microfluidic system comprising:
a non-fluorinated microchannel;
a carrier fluid comprising a fluorinated oil and a fluorinated surfactant comprising a hydrophilic head group in the microchannel;
at least one plug comprising an aqueous plug-fluid in the microchannel and substantially encased by the carrier-fluid, wherein the fluorinated surfactant is present at a concentration such that surface tension at the plug-fluid/microchannel wall interface is higher than surface tension at the plug-fluid/carrier fluid interface.
During prosecution, the inventors amended the claims, as underlined above, to distinguish from a prior art, U.S. Patent No. 7,294,503 (“Quake”). Quake disclosed microchannels formed or coated with Teflon (a fluorinated polymer) or other fluorinated oils. Furthermore, the inventors argued that their invention attempts to prevent droplets from sticking to the walls of microchannels and requires that the “surfactant should be chemically similar to the carrier fluid and chemically different from the channel walls.” That is, the non-fluorinated microchannels and the fluorinated surfactant are required not to react with each other. This is the purpose of the amendment. In contrast, Quake did not teach that microchannels and carriers fluids were chemically distinct, and the fluorinated microchannels and surfactants could, therefore, react with each other.
After the litigation was filed, 10X modified its products to add 0.02% Kynar-a non-reactive amount of a fluorine-containing resin-to its microchannels. 10X concedes that the addition of this amount of Kynar is irrelevant to the functioning of its products. In the District Court, the jury found that 10X’s accused products, as modified, do not literally satisfy the “non-fluorinated microchannels” limitation, but meet the limitation under the doctrine of equivalents. On appeal, among other issues, 10X argued that prosecution history estoppel and claim vitiation barred Bio-Rad’s theory of equivalence. The District Court held that prosecution history estoppel does not apply in this case because the amendment at issue was only tangentially related to the accused equivalent.
On appeal, 10X continued to argue that prosecution history estoppel applies because the inventors’ amendment narrowed the claims to recite a “non-fluorinated microchannel” to overcome Quake, which taught “fluorinated” microchannels. As such, the inventors surrendered the right to expand their monopoly to cover microchannels containing fluorine, “for whatever purpose.” In response, Bio-Rad counter argued that the reason for narrowing the claims was peripheral, or not directly relevant to the alleged equivalent. Bio-Rad contends that the patentees amended the claims to make clear that the carrier fluid and the microchannel wall should be chemically distinct, which bears no more than a tangential relation to the alleged equivalent-microchannel walls containing a nominal amount of fluorine that is not chemically distinct from the carrier fluid. The Federal Circuit agreed with Bio-Rad, and reasoned that inventors surrendered microchannels coated with fluorine that reacted with carrier fluids, not those containing de minimis amounts of fluorine that have no effect on how the microchannel functions in the system. The narrowing amendment can only be said to have a tangential relation to the equivalent at issue-negligibly fluorinated microchannels, or microchannels with non-fluorinated properties. That is, the inventors surrendered microchannels coated with fluorine for a purpose, but not for all purposes.
Take away
- During prosecution, inventors should also explain in detail the purpose of the amendment of claims in order to narrow the scope surrendered by the amendment.
Tags: doctrine of equivalents > prosecution history estoppel > tangential exception
Guidance on the standard for “reasonable certainty” in an indefiniteness evaluation
| February 4, 2016
Akzo Nobel Coatings, Inc. v. Dow Chemical Co.
January 29, 2016
Before Lourie, Reyna and Chen. Opinion by Lourie.
Summary
The CAFC affirmed the District Court’s holding that the claims of the ‘956 patent are valid and not indefinite and affirmed the holding that the process of Dow does not infringe, either literally or DOE, the ‘956 patent. This case provides additional guidance on the reasonable certainty standard of Nautilus.
Tags: claim construction > doctrine of equivalents > indefiniteness > literal infringement
Be Mindful that the Potential Reach of Claimed Components under the Doctrine of Equivalents Can Be Affected by Amendments to Claimed Sub-Components.
| October 9, 2014
EMD Millipore Corporation v. Allpure Technologies, Inc. (Precedential Opinion).
September 29, 2014
Panel: Prost, O’Malley and Hughes. Opinion by Prost.
Summary
EMD Millipore Corporation (Millipore) appeals the District of Massachusetts decision that the accused infringer, Allpure Technologies, Inc. (Allpure) does not infringe its U.S. Patent No. 6,032,543 entitled a Device for Introduction and/or Withdrawal of a Medium into/from a Container, either literally or under the doctrine of equivalents. The Federal Circuit affirmed that there was no literal infringement because the claims required a removable transfer member having a two part seal connected after removal, while the Allpure device had two parts of a seal separated after disassembly. In addition, the Federal Circuit held that Allpure did not infringe under the doctrine of equivalents due to prosecution history estoppel based on narrowing amendments limiting the transfer member to such a two part seal, along with a lack of any argument that the reasons for such amendments was not a substantial one related to patentability.
Tags: doctrine of equivalents > infringement > literal infringement > prosecution history estoppel
Don’t Keep Limitations Not Needed To Distinguish the Prior Art
| November 6, 2013
Integrated Technology Corporation v. Rudolph Technologies, Inc.
November 4, 2013
Moore (author), Rader, and Clevenger
Summary:
The CAFC reversed the denial of Rudolph’s motion for JMOL that its accused no-touch products do not infringe under the doctrine of equivalents. The CAFC found that prosecution history estoppel (preventing ITC from recapturing through the doctrine of equivalents the subject matter that ITC surrendered during prosecution) presumptively applies, and that ITC failed to rebut the presumption because it failed to establish one of three exceptions by a preponderance of the evidence.
Tags: claim amendments > doctrine of equivalents > JMOL > prosecution history estoppel > tangential relation > unforseeability
Vitiation exclusion: a judicial determination ensuring that doctrine of equivalents does not overtake statutory function of claims in defining scope of exclusive rights
| January 2, 2013
Deere & Co. v. Bush Hog
December 4, 2012
Panel: Rader, Newman and Plager. Opinion by Rader.
Summary
The United States District Court for the Southern District of Iowa, among other things, construed the claimed term “into engagement with” of ‘980 Patent to require direct contact and construed “being secured to” of ‘980 Patent as “fastened or attached.” Based on this construction, the district court granted Bush Hog & Co. LLC’s and Great Plains Inc.’s motions for summary judgment of noninfringement by holding that Deere did not raise a genuine issue of material fact as to literal infringement because the upper deck walls do not come into contact with the lower deck walls in any of the accused products. In addition, the district court held that Deere could not assert infringement under the doctrine of equivalents because doing so would vitiate the “into engagement with” limitation. Because in the context of the ‘980 Patent “into engagement with” encompasses indirect contact, the Federal Circuit vacated the district court’s construction of this term, reversed the grant of summary judgment, and remanded for further proceedings. Also, the Federal Circuit found that the district court invoked vitiation exclusion in error by refusing to apply the doctrine of equivalents because “a reasonable jury could find that a small spacer connecting the upper and lower deck walls represents an insubstantial difference from direct contact.” Therefore, the Federal Circuit also vacated the grant of summary judgment of no infringement under the doctrine of equivalents.
Tags: all elements rule > doctrine of equivalents > infringement > literal infringement > vitiation
