United States Court of Appeals for the Federal Circuit
02-1013, -1197
DEERING
PRECISION INSTRUMENTS, L.L.C.,
Plaintiff-Appellant,
v.
VECTOR
DISTRIBUTION SYSTEMS, INC.
and GRAM
PRECISION SCALES, INC.,
Defendants-Cross-Appellants,
and
MOHAN THADANI,
Defendant,
and
BONSO
ELECTRONICS INTERNATIONAL, INC.,
Defendant.
______________________
DECIDED:
October 17, 2003
______________________
Before
BRYSON, GAJARSA, and PROST, Circuit Judges.
GAJARSA,
Circuit Judge.
Deering
Precision Instruments, L.L.C. ("Deering") appeals from the judgment
issued by the United States District Court for the Northern District of
Illinois granting summary judgment to Vector Distribution Systems, Inc., Gram
Precision Scales, Inc., Bonso Electronics International, Inc., and Mohan
Thadani (collectively "Vector") of noninfringement of United States
Patent No. 4,744,428 (the "'428 patent"). Deering Precision Instruments, L.L.C. v.
Vector Distrib. Sys., Inc., No. 01-C-1118 (N.D. Ill. Aug. 31, 2001). Vector
cross-appeals the district court's denial of its motion for attorney fees. We
affirm the district court's grant of summary judgment of no literal
infringement. We vacate the district
court's grant of summary judgment of no infringement under the doctrine of
equivalents and remand for further proceedings consistent with this
opinion. We affirm the district court's denial of Vector's
motion for attorney fees.
I. BACKGROUND
A. Prosecution History of the '428 Patent
The
'428 patent, issued to David Knotter, Donald Levin, and Jody Numbers, and
assigned to Deering, is directed to a compact, light-weight, pocket-type scale
capable of accurately weighing substances up to ten grams. The '428 patent issued on May 17, 1988 and
has five claims, claims 1, 3, and 4 being in independent form. Claims 1, 2, 4, and 5 are at issue in the
present action. Representative claim 1
recites as follows:
1. A
lightweight portable scale comprising a base, a beam having a substance holder
at one end thereof and a scale extending toward the opposite end thereof, a sliding
weight movably carried by said beam for movement along said scale, a pair of
metallic fulcrum posts projecting upwardly from said base, and a pair of
metallic bearing inserts in said beam for cooperation with said fulcrum posts,
one pair of the pair of posts or the pair of inserts having pointed projections
thereon receivable in tapered recesses in the other pair for positioning and
pivotally supporting said beam, said sliding weight being movable from a zero
position to a position near the said opposite end of the beam and said
sliding weight when in its zero position having a portion thereof disposed
substantially in an imaginary plane containing the fulcrum of the beam,
whereby to minimize the weight of the substance holder required to balance the
beam when the sliding weight is in its zero position.
'428
patent, col. 6, ll. 12-30 (emphasis added).
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Generally,
the scale of the '428 patent functions as any normal balance-type scale. As shown in Figure 2 of the '428 patent
below, the scale has a bottom portion 14 that serves as a base for a weighing
mechanism 17. Id. at col. 2, ll.
64-65. The weighing mechanism comprises
a balance beam 18 mounted for pivotal movement on a pair of fulcrum posts
21. Id. at col. 3, ll. 3-8. The fulcrum posts are adapted to cooperate
with bearing inserts 24 in the balance beam.
The balance beam has a material holder 32, or tray, on one side of the
fulcrum and adjustable sliding weights 34 and 35 on the opposite side of the
fulcrum. Id. at col. 3, ll.
46-57. In operation, the weights are
moved to balance the beam.
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An
important aspect of the invention is the minimization of the overall size and
weight of the scale while maintaining the ability to weigh materials up to 10
grams. To accomplish this, the inventors
designed sliding weight 35 to minimize the overall weight of the scale by
moving the center of mass of the sliding weight closer to the plane created by
the fulcrums of the scale. Figure 5 of
the '428 patent above shows the sliding weight 35 in its zero position, i.e.,
the position where the beam balances without any material in the holder.
The
written description provides that the sliding weight 35 be constructed in such
a manner that:
the heavy metallic insert 44 therein is offset from the
pointer 37 of the weight in the direction of the fulcrum 19 for the balance
beam 18. Indeed, the metallic insert 44
is offset to an extent that when the coarse sliding weight 35 is in its zero
position, adjacent the cross-bar portion 27 of balance beam 18, the metallic
insert is disposed substantially in the plane of the fulcrum 19, i.e.
the imaginary vertical plane containing the center lines of the fulcrum posts
21 and 22. With the center of insert 44
aligned precisely in the plane of fulcrum 19 the insert becomes
essentially neutral so far as balance of the balance beam 18 and the holder 28
are concerned when the weight 35 is in its zero position and the holder 28 is
empty. This greatly minimizes the amount
of mass that must be incorporated into the holder 28 portion of the weighing
mechanism 17.
Id. at col. 5, ll. 12-29 (emphases
added).
The application filed with the
United States Patent and Trademark Office ("PTO") that matured as the
'428 patent initially contained ten claims, claims 1 and 9 being in independent
form. Original independent claim 1
defined a light-weight portable scale having a base, a beam with a substance
holder at one end and a scale extending in an opposite direction, a sliding
weight movably carried by the beam for movement along the scale, a pair of
metallic fulcrum posts projecting upwardly from the base, and a pair of
metallic bearing inserts in the beam for cooperation with the fulcrum posts.
Original
independent claim 9 was similar to original independent claim 1, with the
additional limitation that when the sliding weight is in the zero position, a
portion of the sliding weight was "disposed substantially in an imaginary
plane containing the fulcrum of the beam."
The parties refer to this limitation as the "Zero Position
Limitation."
Original
claim 3, dependent on claim 1, similarly included the Zero Position Limitation:
3. The portable
scale of Claim 1 further characterized in that said sliding weight is movable
from a zero position to a position near the said opposite end of the beam and said
sliding weight when in its zero position has a portion thereof disposed
substantially in an imaginary plane containing the fulcrum of the beam,
whereby to minimize the weight of the substance holder required to balance the
beam when the sliding weight is in its zero position.
(emphasis
added.)
The Zero Position Limitation was thus the only additional limitation
in dependent claim 3.
After
review of the application, the PTO rejected claims 1, 2, and 5-7 under 35
U.S.C. § 103(a) as being obvious over U.S. Patent No. 4,050,531 in view of
U.S. Patent No. 3,082,833. The PTO
objected to claims 3, 4, and 8-10, but indicated that they would be allowable
if rewritten in independent form.
The
applicants filed a response to the rejection deleting original claims 1 and
3. They submitted new claim 11, which
was original claim 3 rewritten in independent form. With respect to original claim 9, which had
not been rejected, the applicants stated:
It is believed that the Examiner must have overlooked the
fact that Claim 9 is an independent base claim and that Claim 10 is dependent
only from Claim 9. Claim 9 calls for a
"sliding weight when in its zero position having a portion thereof
disposed substantially in an imaginary plane containing the fulcrum of the beam." This feature is not disclosed in the
references. It is therefore believed
that Claims 9 and 10 are allowable as written.
(emphasis added.)
The
PTO subsequently issued the patent on May 17, 1998. Claim 11 issued as independent claim 1 and
original claim 9 issued as claim 4.
B. Alleged Infringing Product
Vector
manufactures and sells the accused device, its own version of a pocket-size
scale, the VX-10. The VX-10 is shown in
Figures 1 and 2 below.
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The
VX-10 has two slidable weights 10 and 20, each of which is movable along the
balance beam 30 of the scale. The
metallic insert of the sliding weight 20 is positioned directly beneath the
pointer. The sliding weights of the
VX-10, when in their respective "zero positions" have no portion
extending into the imaginary plane containing the fulcrum 40. At its "zero position," the sliding
weights 10 and 20 of the VX-10 are no closer than 0.10 inches from the
imaginary plane 60 containing the fulcrum 40.
The VX-10 has an additional stationary counterweight 70 affixed to the
substance holder support member 55. This
additional counterweight balances the scale in the zero position as opposed to
the '428 patent, which places the majority of the center of mass of the weight
substantially in the plane of the fulcrum.
The additional counterweight 70 coupled with the placement of the
sliding weights 10 and 20 outside the plane containing the fulcrum are the
decisive design differences between the VX-10 and the '428 patent for the
purposes of this action.
C. Procedure Before the United States
District Court
In
2001, Deering discovered Vector was selling a pocket-size scale and sued Vector
for infringement. In its action, Deering
sought an injunction and damages for the sale of the VX-10, alleging that the
VX-10 infringed claims 1, 2, 4, and 5 of the '428 patent. Vector filed its Answer and Counterclaim on
April 24, 2001 and a motion for summary judgment of noninfringement on May 25,
2001.
In
connection with the summary judgment motion, Vector conceded that the VX-10 met
each and every limitation of the asserted claims except for the Zero Position
Limitation. The district court did not
conduct a separate Markman hearing, but construed that particular
limitation "to mean that the weight must enter and penetrate the imaginary
plane containing the fulcrum of the beam."
In arriving at this construction, the district court relied on the
intrinsic evidence of the '428 patent, including the claims and the written
description, as well as the ordinary meaning of the term
"substantially." The district
court specifically stated:
In common usage, "substantially" means
significantly or considerably. In the
claims at issue, the word "substantially" describes how the weight is
"disposed" in the "imaginary plane." The specification sheds further light on the
proper construction when, in reference to the relationship between the weight
and the imaginary plane, it states that the metallic insert "rests
essentially in the plane of the fulcrum for the balance beam." . . . Thus, the court construes the element
requiring the sliding weight to be "disposed substantially in an imaginary
plane containing the fulcrum" to mean that the weight must enter and
penetrate the imaginary plane containing the fulcrum of the beam.
In light of this claim construction,
the district court determined that the VX-10 did not literally infringe any of
the asserted claims of the '428 patent.
Specifically, the district court held, "[a]s Deering does not argue
that any portion of the weight in Vector's scale enters the plane of the
fulcrum, there cannot be literal infringement."
The district court also held that
because the applicants amended the Zero Position Limitation during prosecution
by deleting original claim 1, this court's decision in Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (en
banc) ("Festo I"), vacated by 522 U.S. 722 (2002)
("Festo II"), bars any equivalents for the Zero Position
Limitation for every asserted claim. The
district court recognized that independent claim 4 and dependent claim 5 were
not amended during prosecution, but nevertheless determined Deering was barred
from asserting the doctrine of equivalents for claims 4 and 5 because of this
court's decision in Builders Concrete, Inc. v. Bremerton Concrete Products
Co., 757 F.2d 255 (Fed. Cir. 1985).
The district court held that prosecution history estoppel applies to any
limitation narrowed during prosecution in all claims in the patent regardless
of whether the limitation is present in a claim that itself was never amended.
After Vector obtained summary
judgment, it moved for an award of attorney fees pursuant to 35 U.S.C.
§ 285. Vector argued that Deering
failed to consult with a patent attorney to properly evaluate the prosecution
history and that the purpose of the litigation was to harass, intimidate, or
financially undermine Vector. The
district court determined that failure to obtain advice of intellectual
property counsel with respect to infringement under the doctrine of equivalents
was not per se gross negligence and also determined that Deering's conduct was
"far from harassing, intimidating, or overbearing behavior." Accordingly, the district court denied
Vector's motion.
Both parties timely appealed to this
court and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
We
review the grant of summary judgment de novo, drawing all factual inferences in
favor of the nonmoving party. Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); Moore U.S.A., Inc. v.
Standard Register Co., 229 F.3d 1091, 1105 (Fed. Cir. 2000). Claim construction is a question of law
subject to de novo review on appeal. Cybor
Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).
The determination of whether a case is exceptional and thus eligible for an award of attorney fees under 35 U.S.C. § 285 is a factual determination reviewed for clear error. Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358, 1376 (Fed. Cir. 2001). The subsequent determination of whether attorney fees are appropriate is reviewed for an abuse of discretion. Id.
An
infringement analysis, whether literal or under the doctrine of equivalents,
requires two steps: (1) construction of the claims to determine the scope and
meaning of the asserted claims; and (2) comparison of the properly construed
claims with the allegedly infringing device.
Cybor, 138 F.3d at 1454.
A. Claim Construction
In
construing the claims of a patent, we review the intrinsic evidence, which consists
of the specification and the prosecution history. Interactive Gift Express, Inc. v.
Compuserve, Inc., 256 F.3d 1323, 1329 (Fed. Cir. 2001). Claim construction analysis begins with the
ordinary meaning of the disputed claim term.
Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1206
(Fed. Cir. 2002); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). Generally
speaking, we indulge a "strong presumption" that a claim term carries
its ordinary and customary meaning. Tate
Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357,
1369 (Fed. Cir. 2002).
The
next step is to review the written description and the prosecution history, to
determine if the patentee has chosen to be his or her own lexicographer, or
when the claim language itself lacks sufficient clarity to ascertain the scope
of the claims. Prima Tek II, L.L.C.
v. Polypap S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003); Ecolab, Inc. v. Envirochem, Inc., 264
F.3d 1358, 1366 (Fed. Cir. 2001); Gart v. Logitech, 254 F.3d 1334,
1339-40 (Fed. Cir. 2001).
In
the present appeal, Deering contests the district court's construction of the
Zero Position Limitation: "said sliding weight when in its zero position
having a portion thereof disposed substantially in an imaginary plane
containing the fulcrum of the beam."
The Zero Position Limitation is present in every claim at issue in this
action. In particular, Deering objects
to the construction of the terms "substantially in an imaginary
plane." It specifically contends
that the term "substantially" means "at or near."
This
court is asked, once again, to construe the meaning of the term
"substantially" in a patent claim.
See, e.g., Epcon Gas Sys., Inc. v. Bauer Compressors, Inc.,
279 F.3d 1022 (Fed. Cir. 2002) (construing the terms "substantially
constant" and "substantially below"); Zodiac Pool Care, Inc.
v. Hoffinger Indus., Inc., 206 F.3d 1408 (Fed. Cir. 2000) (construing the
term "substantially inward"); York Prods., Inc. v. Cent. Tractor
Farm & Family Ctr., 99 F.3d 1568 (Fed. Cir. 1996) (construing the term
"substantially the entire height thereof"); Tex. Instruments Inc.
v. Cypress Semiconductor Corp., 90 F.3d 1558 (Fed. Cir. 1996) (construing
the term "substantially in the common plane"). In conducting this analysis, we begin with
the ordinary meaning of the claim terms to one of ordinary skill in the
art. Prima Tek, 318 F.3d at
1148. Reference to dictionaries and our
cases indicates that the term "substantially" has numerous ordinary
meanings. As the district court stated,
"substantially" can mean "significantly" or
"considerably." The term
"substantially" can also mean "largely" or
"essentially." Webster's
New 20th Century Dictionary 1817 (1983).
Indeed, our cases recognize the dual ordinary meaning of this term as
connoting a term of approximation or a term of magnitude. See Epcon, 279 F.3d at 1031
("The phrase 'substantially constant' denotes language of approximation,
while the phrase 'substantially below' signifies language of magnitude, i.e.,
not insubstantial.").
Since
the term "substantially" is capable of multiple interpretations, we
turn to the intrinsic evidence to determine which interpretation should be
adopted. Ecolab, 264 F.3d at
1366; Gart, 254 F.3d at 1339-40.
As
is often the case, the written description does not explicitly identify the
meaning of the term "substantially."
The specification does, however, provide the public with a significant
explanation of the criticality of the location of the sliding weight in conjunction
with the plane created by the fulcrum so as to support a finding that the term
"substantially" is a term of magnitude as opposed to
approximation. First, the stated object
of the '428 patent is to provide a lightweight, portable scale. The written description plainly states:
To hold down on the mass of the substance holder portion of
the mechanism required to achieve equilibrium of the mechanism the sliding
weight is constructed in such a manner that the metallic insert therein rests essentially
in the plane of the fulcrum for the balance beam when the sliding weight is
in its zero position.
'428
patent, col. 1, ll. 48-54 (emphasis added).
Figure 5, supra, shows an example of the position of the sliding
weight that meets the limitation. In
Figure 5, the metal insert of the sliding weight is precisely in the plane, as
the written description states:
With the center of insert 44 aligned precisely in the
plane of fulcrum 19 the insert becomes essentially neutral so far as
balance of the balance beam 18 and the holder 28 are concerned when the weight
35 is in its zero position and the holder 28 is empty. This greatly minimizes the amount of mass
that must be incorporated into the holder 28 portion of the weighing mechanism
17.
Id. at col. 5, ll. 12-29 (emphasis
added). The placement of a portion of
the weight in the plane of the fulcrum is the stated structural orientation
that provides the benefits of minimization of weight and portability. The preferred embodiment places the center of
the insert—clearly the major contributor to the total mass of the
weight—precisely in the plane. We,
however, do not generally limit claims to the preferred embodiment. Comark Communications, Inc. v. Harris
Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998). This is particularly significant because the
claim language does not contain the explicit requirement that the metal insert
of the weight be "essentially in the plane" containing the
fulcrum.
It
is proper, however, to construe the term "substantially in the plane"
in light of the specification. Apex
Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003)
("[C]laims are interpreted in light of the specification and with the
knowledge of one of ordinary skill in the art."); Vitronics, 90
F.3d at 1582. The written description, as a whole,
clearly requires that a portion of the metal insert of the weight penetrate the
imaginary plane containing the fulcrum of the beam to minimize the weight of
the scale and facilitate portability.
There is no disclosure suggesting that a portion of the weight need only
be located at or near the plane as Deering suggests. For this reason, we agree in part with
the district court's construction of the Zero Position Limitation as requiring
at least a portion of the weight to intersect the plane containing the
fulcrum. We agree with the district
court's claim construction only in part because the district court's
construction effectively reads the term "substantially" out of the
claims by construing the claim to read on any slight penetration of the
plane. This error, however, is harmless
because, as discussed above, the term "substantially" is a term of
magnitude requiring a "not insubstantial" portion of the weight to
intersect the plane containing the fulcrum.
Epcon, 279 F.3d at 1031.
Because this construction is actually narrower than the district court's
construction, it does not affect the district court's ultimate finding of
noninfringement with respect to the VX-10.
Accordingly, in light of the ordinary meaning of the term
"substantially" and in view of the written description, we construe
the Zero Position Limitation as requiring a not insubstantial portion of the
weight to intersect the plane containing the fulcrum.
On
appeal, Deering argues that the term "substantially in" means
"at or near the imaginary plane."
Deering argues that any other interpretation reads the term
"substantially," one of approximation, out of the claim. As discussed above, the term
"substantially" in this context is used as a term of magnitude,
describing the extent of the portion of the weight in the plane defined by the
fulcrum, not as a term of approximation.
B. Infringement
The
second step of the infringement analysis requires comparison of the accused
device to the properly construed claims.
Cybor, 138 F.3d at 1454.
To prove infringement, the patentee must show that the accused device
meets each claim limitation, either literally or under the doctrine of
equivalents. Seal-Flex, Inc. v.
Athletic Track & Court Constr., 172 F.3d 836, 842 (Fed. Cir. 1999).
With
respect to literal infringement, it is clear that the VX-10 does not literally
meet each limitation of any of the asserted claims 1, 2, 4, and 5 of the '428
patent. In particular, the accused
device does not penetrate the imaginary plane at any point, and
therefore does not literally infringe the asserted claims of the '428
patent. Deering admits this by arguing
that the placement of the weight 0.10 inches away from the plane amounts to
literal infringement. In short, because
no portion of the weight of the VX-10 is "substantially in" the plane
under either the district court's or our narrower construction, the VX-10
cannot literally infringe the claims of the '428 patent.
With
respect to the doctrine of equivalents, the district court relied on this
court's holding in Festo I to determine that Deering was estopped from
asserting infringement under the doctrine of equivalents. Festo I was vacated by the Supreme
Court in Festo II.
Accordingly, we vacate the district court's finding of no infringement
under the doctrine of equivalents based on Festo I and address whether
prosecution history estoppel, as discussed in the Supreme Court's decision in Festo
II, and this court's opinion on remand, Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., __ F.3d __ (Fed. Cir. Sept. 26, 2003) (en banc)
("Festo III"), is applicable to the claims at issue.
The
parties dispute whether prosecution history estoppel applies to Deering's
allegations of infringement under the doctrine of equivalents. There are two distinct theories that fall
under the penumbra of prosecution history estoppel—amendment-based estoppel and
argument-based estoppel. Elkay Mfg.
Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999) (holding that the
scope of coverage of the claims may change if a patentee has "relinquished
[a] potential claim construction in an amendment to the claim or in an argument
to overcome or distinguish a reference").
In general, prosecution history estoppel, under either theory, requires
that patent claims be interpreted in light of the proceedings before the
PTO. Festo II, 535 U.S. at 733.
1. Amendment-based Estoppel
With
respect to amendment-based estoppel, "a narrowing amendment made to
satisfy any requirement of the Patent Act may give rise to an
estoppel." Id. at 736. "A patentee's decision to narrow his
claims . . . may be presumed to be a general disclaimer of the territory
between the original claim and the amended claim." Id. at 740. When the patentee originally claimed the subject
matter alleged to infringe but then narrowed the claim in response to a
rejection, "courts may presume the amended text was composed with
awareness of this rule and that the territory surrendered is not an equivalent
of the territory claimed. In those
instances, however, the patentee must show that at the time of the amendment
one skilled in the art could not reasonably be expected to have drafted a claim
that would have literally encompassed the alleged equivalent." Id. at 741. This can be shown by one of the following
three criteria: (1) the equivalent may have been unforeseeable at the time of
the amendment; (2) the rationale underlying the amendment may bear no more than
a tangential relation to the equivalent in question; or (3) there may be some
other reason suggesting that the patentee could not reasonably be expected to
have described the insubstantial substitute in question. Festo III, __ F.3d at __.
As
an initial note, the only asserted independent claim that is arguably subject
to a narrowing amendment during prosecution is issued claim 1. This claim, filed as claim 11, essentially
incorporated original claim 1 and original dependent claim 3. Original claim 9 was not amended during
prosecution and issued as independent claim 4 in unamended form. In response to the first Office Action
rejecting claim 1 under 35 U.S.C. § 103(a) and objecting to claim 3
because it depended from rejected claim 1, the applicants deleted claims 1 and
3 and added new independent claim 11.
Deering's addition of independent
claim 11, coupled with the clear surrender of the broader subject matter of the
deleted original independent claim presumptively bars Deering from arguing
infringement under the doctrine of equivalents.
As the Supreme Court noted, the correct focus is on whether amendment
surrendered subject matter that was originally claimed for reasons related to
patentability. Festo II, 535 U.S.
at 736. Here, the patentees clearly
disclaimed the territory between the original claim 1 and new claim 1 as issued. Id. at 740. Original claim 1 claimed "a sliding
weight movably carried by said beam for movement along said scale." In response to the examiner's rejection under
35 U.S.C. § 103(a), the applicants deleted original claims 1 and 3 and
settled for claims containing the narrower requirement that a portion of the
sliding weight be disposed substantially in a plane defined by the fulcrums
originally present in claim 3. The
territory between the sliding weight limitation of original claim 1 and the
Zero Position Limitation was thus surrendered by the patentees. See Pioneer Magnetics, Inc. v.
Micro Linear Corp., 330 F.3d 1352, 1357 (Fed. Cir. 2003).
In
Festo II, the Supreme Court stated "[e]stoppel arises when an
amendment is made to secure the patent and the amendment narrows the patent's
scope." Id. at 736. Accordingly, we hold that because Deering
narrowed the Zero Position Limitation for reasons related to patentability, the
presumption of prosecution history estoppel set forth by the Supreme Court in Festo
II applies to independent claim 1 and dependent claim 2.
While
Deering argues that it merely rewrote an allowable original claim 3 in
independent form, there is no question that the claim was narrowed by the
deletion of a broad original claim in favor of a claim that contained the Zero
Position Limitation. Because the
amendment in this case is not "truly cosmetic," estoppel
presumptively applies. Id. at
736-37.
Additionally,
this presumption applies to all claims containing the Zero Position Limitation,
regardless of whether the claim was, or was not, amended during
prosecution. Builders Concrete,
757 F.2d at 260 (holding that prosecution history estoppel applies to a claim
containing a limitation that was allowed as originally filed based on the
addition of the same limitation in a separate claim). Here, as in Builders Concrete,
independent claim 4 contained the disputed limitation and was never amended
during prosecution. Nevertheless, it is
clear from the prosecution history that the allowance of claim 1, the broadest
claim, depended on the amendment narrowing the Zero Position Limitation to that
of a dependent claim. Since independent
claim 4 and dependent claim 5 contain the Zero Position Limitation, prosecution
history estoppel presumptively applies equally to those claims. Id.
"To hold otherwise would be to exalt form over substance and
distort the logic of this jurisprudence, which serves as an effective and
useful guide to the understanding of patent claims." Id.
The
remaining question is whether Deering can rebut the Festo II
presumption. This question is better
addressed in the first instance by the district court. Schwing GMBH v. Putzmeister
Aktiengesellschaft, 305 F.3d 1318, 1329 (Fed. Cir. 2002) (remanding the
rebuttal of a Festo II presumption to the district court for a
determination in the first instance).
Accordingly, we remand the rebuttal issue to the district court for
further proceedings consistent with this opinion and with this court's en banc
decision in Festo III.
2. Argument-based Estoppel
With respect to argument-based
estoppel, Vector contends that arguments made during prosecution estop Deering
from asserting infringement under the doctrine of equivalents. "To invoke argument-based estoppel, the
prosecution history must evince a 'clear and unmistakable surrender of subject
matter.'" Eagle Comtronics, Inc.
v. Arrow Communication Labs., Inc., 305 F.3d 1303, 1316 (Fed. Cir. 2002)
(quoting Pharmacia & Upjohn Co. v. Mylan Pharms., Inc., 170 F.3d
1373, 1376-77 (Fed. Cir. 1999)).
As
described above, the Examiner objected to original claim 9 and indicated
its allowability if rewritten in independent form although original claim 9 was
already in independent form. In
response, the applicants noted the Examiner's mistake and restated the Zero
Position Limitation as not being disclosed in the references of record. This statement is merely a clarification of
the Examiner's mistake, not the "clear and unmistakable surrender of
subject matter" required by this court in Eagle Comtronics. Accordingly, we hold that argument-based
estoppel was not a proper basis for applying prosecution history estoppel. Upon remand, should Deering adequately rebut
the presumption discussed above, Deering shall not be estopped from arguing
that the VX-10 infringes claim 4 of the '428 patent based on arguments
made in prosecution.
C. Cross-appeal
Finally,
on cross-appeal Vector argues that the district court committed clear error
when it declined to consider the case exceptional for the purpose of awarding
attorney fees under 35 U.S.C. § 285.
It argues that Deering was grossly negligent in failing to consult the
prosecution history prior to bringing this action. Moreover, Vector also argues that Deering
brought this lawsuit for purposes of harassment. The district court addressed each of these
arguments in its decision, and we review the district court's exceptionality
determination for clear error. Superior
Fireplace, 270 F.3d at 1376. Because
it was not clearly erroneous for the district court to find the case
unexceptional, Vector's argument must fail.
Without the initial finding of an exceptional case, there can be no
abuse of discretion by the district court in denying attorney fees. Id.
We therefore affirm the district court's finding that this was not an
exceptional case.
III. CONCLUSION
For the foregoing reasons, we hold that Vector was properly granted summary judgment of no literal infringement of the '428 patent. We vacate the district court's grant of summary judgment of no infringement under the doctrine of equivalents and remand for further proceedings in light of the Supreme Court's decision in Festo II and this court's decision in Festo III. Lastly, we affirm the district court's denial of attorney fees.
AFFIRMED-IN-PART,
VACATED-IN-PART, AND REMANDED.
IV. COSTS
Each party to bear its own costs.