03-1534, -1535
LIGHTING WORLD, INC.,
Plaintiff-Appellant,
v.
BIRCHWOOD LIGHTING, INC.,
Defendant-Cross Appellant.
Ezra
Sutton, of
Mark P.
Wine, McDermott, Will & Emery, of
Appealed
from:
Judge Percy
Anderson
03-1534,-1535
LIGHTING WORLD,
INC.,
Plaintiff-Appellant,
v.
BIRCHWOOD LIGHTING,
INC.,
Defendant-Cross Appellant.
___________________________
DECIDED:
___________________________
Before BRYSON, Circuit
Judge, PLAGER, Senior Circuit Judge, and LINN, Circuit Judge.
BRYSON, Circuit
Judge.
The
district court entered judgment for the defendant in this patent case following
the plaintiff’s case-in-chief at trial. Lighting
World, Inc. v. Birchwood Lighting, Inc., No. CV 01-09329 PA (C.D.
I
Lighting
World owns U.S. Patent No. 5,448,460 (“the ’460 patent”) and U.S. Patent No.
5,221,139 (“the ’139 patent”), both of which are directed to commercial
lighting fixtures. In its complaint,
Lighting World asserted that Birchwood’s Sydney model of fluorescent lamp
fixtures infringed claim 1 of the ’460 patent and claim 3 of the ’139
patent. Claim 1 of the ’460 patent
recites a fluorescent lighting fixture that comprises a plurality of support
members, each having a mounting surface for receiving a fluorescent lamp,
sockets for receiving each fluorescent lamp, and a connector assembly for
connecting each pair of support members, each connector assembly being
“pivotally connected to said pair of adjacent support members.” Claim 3 of the ’139 patent recites a lighting
fixture for mounting fluorescent lamps; the claimed fixture comprises a support
member with an upper surface on which “a plurality of lamp supports” are mounted
“for engaging and supporting said fluorescent lamps adjacent their non-socket
ends.” The spacing of the sockets and
lamp supports is such that each fluorescent lamp overlaps the socket end of an
adjacent lamp so as to provide shadowless and continuous lighting over the
length of the fixture.
The dispute
as to the proper construction of claim 1 of the ’460 patent focuses on the
limitation that recites “a connector assembly for connecting each pair of
adjacent support members, said connector assembly being pivotally connected to
said pair of adjacent support members.”
The district court concluded that the “connector assembly” limitation
“discloses the function to be performed, rather than the structure that
accomplishes it.” The district court
therefore construed the “connector assembly” limitation as a
means-plus-function limitation under 35 U.S.C. § 112 ¶ 6 and held that the
limitation was subject to the statutory provision restricting the scope of the
limitation to the corresponding structure “described in the specification and
equivalents thereof.” The district court
concluded that if section 112 ¶ 6 were not applied, “this claim element would
cover every conceivable structure that could connect two elements and pivot.”
The dispute
as to the proper construction of claim 3 of the ’139 patent focuses on the
limitation that recites “a plurality of lamp supports mounted on the upper
surface of said support member for engaging and supporting said fluorescent
lamps adjacent their non-socket ends.”
The district court construed that limitation to require that the lamps
be supported from below, i.e., against the force of gravity. The court based that construction on its
conclusion that the patent as a whole indicates that “the lamp support
contemplated by claim 3 is intended to support the lamp from below, in order to
prevent the angled lamp from falling on the socket in front of it.”
With
respect to infringement, Birchwood argued that its Sydney model lamp fixtures
differ from the claimed fixtures in two critical respects. First, the support members of the Birchwood
fixtures are not attached by connectors that pivot on hinges like the
connectors disclosed in the written description of the ’460 patent. Instead, the support members of the Birchwood
fixtures are connected by rods that enter an opening in each support member and
have flanges at either end that keep the rods from pulling out of the support
members. Second, the Birchwood support
members, unlike the support members described in the ’139 patent, feature clips
around each bulb so that the bulbs are supported regardless of the orientation
of the lamps.
Based on its claim construction, the court denied Lighting
World’s motions for summary judgment of literal infringement as to both
patents. Instead, the court ruled before
trial that Birchwood’s fixtures did not literally infringe either patent. With respect to the ’460 patent, the court
concluded that Birchwood’s flanged connector rods were not the same as or
equivalent to the hinged connector assemblies described in the specification,
as required by section 112 ¶ 6, and that the “connector assembly” limitation
therefore did not read on the Birchwood device.
With respect to the ’139 patent, the court concluded that Birchwood’s
lamp supports differed from the claimed supports because the lamp clips used on
the Birchwood supports provided support from a multitude of directions and thus
could support the lamps even against the force of gravity.
As an affirmative defense, Birchwood alleged the patents in
suit were invalid on various grounds, including anticipation and
obviousness. Before trial, Birchwood
moved for summary judgment of invalidity as to the ’460 patent based on
anticipation. The district court, however,
denied Birchwood’s motion and left the issue of invalidity to be decided at
trial.
The case
proceeded to trial on the claims of infringement under the doctrine of
equivalents. At the close of Lighting
World’s case-in-chief, the court granted Birchwood’s motion for judgment as a
matter of law (“JMOL”) on the ground that Lighting World had not put forth
evidence that a person of ordinary skill in the art would regard the Birchwood
device as equivalent to the inventions claimed in either of the two
patents. The court had no occasion to
address the invalidity issue at trial because JMOL was granted in favor of
Birchwood before Birchwood had to put on its defense.
II
Lighting
World asks this court to vacate the JMOL of no infringement under the doctrine
of equivalents, to reverse the district court’s pretrial ruling of no literal infringement,
and to direct the entry of summary judgment of infringement with respect to
both patents.
A. Infringement under the Doctrine of
Equivalents
Lighting
World argues that the court applied the wrong legal standard in requiring it to
present evidence as to the level of ordinary skill in the art as part of its
proof of infringement under the doctrine of equivalents. In determining whether equivalence is
established, “the vantage point of one of ordinary skill in the relevant art
provides the perspective for assessing the substantiality of the differences”
between the claimed invention and the accused device. Hilton Davis Chem. Co. v. Warner-Jenkinson
Co., 62 F.3d 1512, 1519 (Fed. Cir. 1995), rev’d on other grounds,
520 U.S. 17 (1997). Contrary to Lighting
World’s contention, the requirement that equivalence be evaluated from the
perspective of one of ordinary skill in the art applies whether equivalence is
measured by the “function-way-result” test or by the “insubstantial
differences” test. See Hilton
Davis, 62 F.3d at 1518-19. The
district court concluded that Lighting World failed to introduce evidence on
that issue, and we see no reason to upset the court’s ruling in that regard.
Lighting
World does not appear to argue that the district court’s claim construction
prejudiced Lighting World’s presentation of its case on equivalence (although
it argues that it should have had the chance to prove literal infringement at
trial). The defect in Lighting World’s
case was its failure to present evidence regarding the perspective of one of
skill in the art, and there is no suggestion that its failure in that respect
was the result of any error in the court’s claim construction. Thus, we sustain the district court’s entry
of JMOL of no infringement under the doctrine of equivalents with respect to
both patents.
B. Literal Infringement
Lighting
World next argues that the district court committed errors in claim
construction and therefore erred in ruling against Lighting World on the issue
of literal infringement with respect to both patents. We agree with Lighting World that the court
committed errors of claim construction as to both patents and that it therefore
erred in granting summary disposition on both of Lighting World’s claims of
literal infringement.
1. The ’460 patent
With respect to the ’460 patent, the district court found
that the “connector assembly” limitation is a means-plus-function limitation
under 35 U.S.C. § 112 ¶ 6. The
court acknowledged that the absence of the word “means” from the “connector
assembly” limitation created a presumption that the limitation was not a
means-plus-function limitation, but it found that the presumption was overcome
because the phrase “connector assembly for connecting each pair of adjacent
support members [and] being pivotally connected to said pair of adjacent
support members” described only a function and not the structure that performed
it.
As the district court recognized, this court’s precedent
provides that “[a] claim limitation that actually uses the word ‘means’ invokes
a rebuttable presumption that § 112 ¶ 6 applies. By contrast, a claim term that does not use
‘means’ will trigger the rebuttable presumption that § 112 ¶ 6 does
not apply.” CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). The use of the term “means” is “central to
the analysis,” Personalized Media Communications, LLC v. Int’l Trade Comm’n,
161 F.3d 696, 703 (Fed. Cir. 1998), because the term “means,” particularly as
used in the phrase “means for,” is “part of the classic template for functional
claim elements,” Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420,
1427 (Fed. Cir. 1997), and has come to be closely associated with
means-plus-function claiming. See
Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir.
2003); York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99
F.3d 1568, 1574 (Fed. Cir. 1996).
The presumption that a limitation lacking the term “means”
is not subject to section 112 ¶ 6 can be overcome if it is demonstrated that
“the claim term fails to ‘recite sufficiently definite structure’ or else
recites ‘function without reciting sufficient structure for performing that
function.’” CCS Fitness, 288 F.3d
at 1369 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
2000)). Our cases make clear, however,
that the presumption flowing from the absence of the term “means” is a strong
one that is not readily overcome. See,
e.g., Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318-19 (Fed.
Cir. 1999); Personalized Media Communications, 161 F.3d at 703-05.
The task of determining whether the limitation in question
should be regarded as a means-plus-function limitation, like all claim
construction issues, is a question of law for the court, even though it is a
question on which evidence from experts may be relevant. Linear Tech. Corp. v. Impala Linear Corp.,
371 F.3d 1364, 1371 (Fed. Cir. 2004); Wenger Mfg., Inc. v. Coating Mach.
Sys., Inc., 239 F.3d 1225, 1231 (Fed. Cir. 2001); Personalized Media
Communications, 161 F.3d at 702; see generally Markman v.
Westview Instruments, Inc., 517 U.S. 370 (1996). As the Supreme Court said in Markman:
It is, of course, true that credibility
judgments have to be made about the experts who testify in patent cases, and in
theory there could be a case in which a simple credibility judgment would
suffice to choose between experts whose testimony was equally consistent with a
patent’s internal logic. But our own
experience with document construction leaves us doubtful that trial courts will
run into many cases like that. In the
main, we expect, any credibility determinations will be subsumed within the
necessarily sophisticated analysis of the whole document, required by the
standard construction rule that a term can be defined only in a way that
comports with the instrument as a whole.
Id. at 389. Thus, even
when expert evidence has been offered with respect to the issue of claim
construction, we must determine whether that evidence comports with the
intrinsic evidence in the case. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir.
1996) (“Moreover, even if the judge permissibly decided to hear all the
possible evidence before construing the claim, the expert testimony, which was
inconsistent with the specification and file history, should have been accorded
no weight.”).
Claim
1 of the ’460 patent recites:
A lighting fixture for
fluorescent lighting comprising:
a)
a
plurality of support members, each having a mounting surface for receiving a
fluorescent lamp;
b)
a socket
for receiving a fluorescent lamp mounted on said mounting surface;
c)
a connector
assembly for connecting each pair of adjacent support members, said
connector assembly being pivotally connected to said pair of adjacent support
members; and
d)
said
plurality of support members being movable relative to each other to form the
lighting fixture into the desired shape.
’460 patent, col. 4, ll. 27-39 (emphasis added). Because the “connector assembly” limitation
does not contain the term “means,” we begin with the presumption that section
112 ¶ 6 does not apply to that limitation.
The district court held that Birchwood successfully rebutted that
presumption, but we disagree.
In
an effort to rebut the presumption that section 112 ¶ 6 does not
apply, Birchwood introduced the declaration of Dr. Andrew Wortman. Dr. Wortman declared that the term
“connector” encompasses “at least a single infinity of possible devices” and
that the term “would not provide [him] or others of ordinary skill in the
lighting fixture art with sufficient structural information to put [him] on
notice as to what device or component would read on the claim element.” Dr. Wortman’s declaration, however, does not
address the central issue in determining whether section 112 ¶ 6
applies. Implicit in Dr. Wortman’s
statement is the premise that in order to be regarded as structural for
purposes of section 112 ¶ 6, a claim limitation must identify a specific
structure and not use a generic term that includes a wide variety of
structures. The district court adopted
that view explicitly when it held that the claim language “connector assembly
being pivotally connected to said pair of adjacent support members” was not
structural because “it would cover every conceivable structure that could connect
two elements and pivot.”
That
approach is unduly restrictive. In
considering whether a claim term recites sufficient structure to avoid
application of section 112 ¶ 6, we have not required the claim term
to denote a specific structure. Instead,
we have held that it is sufficient if the claim term is used in common parlance
or by persons of skill in the pertinent art to designate structure, even if the
term covers a broad class of structures and even if the term identifies the
structures by their function. See
Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
1996); see also Apex, 325 F.3d at 1372; CCS Fitness, 288
F.3d at 1369; Watts, 232 F.3d at 880; Personalized Media
Communications, 161 F.3d at 704.
In
Greenberg, for example, we held that the trial court erred when it
characterized the claim phrase “detent mechanism” as a means-plus-function
limitation. The district court in Greenberg
based its decision that section 112 ¶ 6 applied on the following
observations: (1) detent mechanism “did not describe a particular structure but
described any structure that performed a detent function,” 91 F.3d at 1583; (2)
the proffered definitions for detent mechanism were expressed in functional
terms, id.; and (3) the written description twice used the term “detent
means” when referring to the specific structure disclosed and at other times
used “detent mechanism,” leading the district court to conclude that
“mechanism” was synonymous with “means.”
In rejecting that evidence as insufficient to establish that the claim
was subject to section 112 ¶ 6, we explained that “the fact that a
particular mechanism . . . is defined in functional terms
is not sufficient to convert a claim element containing that term into a ‘means
for performing a specified function’ within the meaning of section
112(6).” Id. We noted that the definitions made “clear
that the noun ‘detent’ denotes a type of device with a generally understood
meaning in the mechanical arts, even though the definitions are expressed in functional
terms.” Moreover, we rejected the claim
that because a term does not bring to mind a particular structure, it invokes
section 112 ¶ 6. Specifically, we
said, “It is true that the term ‘detent’ does not call to mind a single
well-defined structure, but the same could be said of other commonplace
structural terms such as ‘clamp’ or ‘container.’” Id.
We
have made the same point in other recent cases dealing with the question
whether particular broad claim language should be considered functional for
purposes of section 112 ¶ 6 even though it is not in the traditional “means
for” format. In those cases, based on
the same analysis, we have rejected arguments that broad terms such as “digital
detector” (Personalized Media Communications), “eyeglass hanger member”
(Al-Site Corp.), “reciprocating member” (CCS Fitness), and
“sealingly connected” joints (Watts) trigger section 112 ¶ 6.
Thus,
while it is true that the term “connector assembly” does not bring to mind a
particular structure, that point is not dispositive. What is important is whether the term is one
that is understood to describe structure, as opposed to a term that is simply a
nonce word or a verbal construct that is not recognized as the name of structure
and is simply a substitute for the term “means for.” The court in Personalized Media
Communications drew the pertinent distinction in holding that the term
“detector,” although broad, is still structural for purposes of section 112 ¶ 6
because it “is not a generic structural term such as ‘means,’ ‘element,’ or
‘device’; nor is it a coined term lacking a clear meaning such as ‘widget’ or
‘ram-a-fram.’” 161 F.3d at 704.
In
Greenberg and subsequent cases, we have looked to the dictionary to
determine if a disputed term has achieved recognition as a noun denoting
structure, even if the noun is derived from the function performed. See Greenberg, 91 F.3d at 1583
(“Dictionary definitions make clear that the noun ‘detent’ denotes a type of
device with a generally understood meaning in the mechanical arts, even though
the definitions are expressed in functional terms.”); Linear Tech. Corp.,
371 F.3d at 1371 (technical dictionary makes clear that “circuit” is
structural); CCS Fitness, 288 F.3d at 1369 (dictionary definitions
consulted to determine that an artisan of ordinary skill would understand the
term in question to have an ordinary meaning); Personalized Media
Communications, 161 F.3d at 704 (same).
Dictionary definitions in this case disclose that the term “connector”
has a reasonably well-understood meaning as a name for structure, even though
the structure is defined in terms of the function it performs. “Connector” is defined by Webster’s Third
New International Dictionary 481 (1993), as “something that connects.” “Connect” is defined as “to join, fasten, or
link together usu. by means of something intervening.” Id. at 480; see also Random
House Dictionary of the English Language 311 (1966) (“connector” defined as
“one who or that which connects; . . . any of various devices for connecting
one object to another.”) Thus, in the
context of claim 1, the term “connector assembly” means a unit that joins,
fastens, or links each pair of adjacent support members. The fact that more than one structure may be
described by that term, or even that the term may encompass a multitude of
structures, does not make the term “connector assembly” any less a name for
structure.
In
addition to the fact that the word “connector” has a generally understood
meaning as demonstrated by the dictionary definitions of the terms, it is clear
that the parties in this case have used that term to denote structure. The written description of the ’460 patent,
for example, uses the term “connector assembly” as the name for structure. The patent recites:
The plurality of support and mounting sections 12a to 12h is connected
in series to form the fluorescent lighting fixture track 20, wherein each pair
of adjacent support members 12 is joined together by a connector assembly
22.
As shown in detail in FIGS. 1 and 2, each connector assembly 22
has a left and right hinge pin 24a and 24b that are hingedly or pivotally
connected to hole openings 26 formed in the upper and lower surface walls 30
and 32 of the connector assembly 22, respectively. The hinge pins 24a
and 24b of each connector assembly 22 are also pivotally attached to the
adjacent ends of each support member 12 at hole openings 34. However, the first
and last support members 12 of lighting fixture track 20 has [sic] the connector
assembly 22 attached only to one of the ends of support member 12.
’460 patent, col. 2, ll. 38-53 (emphases added). As Lighting World’s expert pointed out, the
same thing is true of Birchwood’s patent application on the invention
corresponding to the Sydney model lamp fixtures. That application uses the term “connector”
more than 40 times, and the context makes it clear that the term is used not in
a purely functional manner designed to invoke section 112 ¶ 6, but as a
description of structure that is generally understood to persons of skill in
the art. While the terms “connector” and
“connector assembly” are certainly broad, and may in the end include any
structure that performs the role of connecting, the same could be said of
numerous other terms, such as “clamp,” or “clip,” or even “support member,”
another term that is used in the ’460 patent.
Those terms are routinely treated as structural by patent practitioners
and courts, and we conclude that there is no reason to treat the term
“connector assembly” any differently for purposes of section 112 ¶ 6. The consequence of defining the term
“connector assembly” free of the constraints of section 112 ¶ 6 may be to
render the claim more vulnerable to attack for invalidity, but that is a risk
that a claim drafter assumes by choosing broad structural terms rather than
choosing to claim in means-plus-function format under section 112 ¶ 6.
In
light of the principles discussed above, it is not surprising that we have
seldom held that a limitation not using the term “means” must be considered to be
in means-plus-function form. In fact, we
have identified only one published opinion since Greenberg in which we
have done so, and that case provides a useful illustration of how unusual the
circumstances must be to overcome the presumption that a limitation lacking the
word “means” is not in means-plus-function form.
The
exceptional case is Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206
(Fed. Cir. 1998). In that case, we held
that the terms “lever moving element” and “movable link member” recited in a
patent to a high security combination lock were in means-plus-function
form. Id. at 1213-15. In addressing “lever moving element,” the
court stated, “While true that ‘[m]any devices take their names from the
functions they perform,’ the ‘substantially non-resilient lever moving element’
of claim 3 is not one of them.” Id.
at 1213 (quoting Greenberg, 91 F.3d at 1583). The only term in “lever moving element” that
could denote structure is “element.”
Although the term “element” may be recognized as structural in some
fields of art, the Mas-Hamilton court noted that the patentee had not
directed the court “to any evidence demonstrating that the district court erred
in determining that the term ‘lever moving element’ lacks a reasonably well
understood meaning” in the relevant art.
Id. at 1214.
The
court in Mas-Hamilton also upheld the district court’s ruling that there
was no evidence that the term “movable link member” had a well-understood
meaning in the art. Accordingly, the
court held that the limitation reciting a “movable link member for holding the
lever out of engagement with the cam surface before entry of a combination and
for releasing the lever after entry of the combination” was in
means-plus-function format. The court
stated:
[W]e note that the subsequent functional
language requires two functions: (1) “for holding the lever out of engagement
with the cam surface before entry of a combination,” and (2) “for releasing the
lever after entry of the combination.”
Such language is precisely what was intended by the statutory phrase in
section 112, ¶ 6 requiring that means-plus-function limitations provide “a
specified function.” Further, we do not
see that the remaining terms in the claim limitation other than those defining
the two functions, i.e., “a movable link member,” provide any structure as
necessary to remove this limitation from the ambit of section 112, ¶ 6.
Id. at 1215 (citation omitted).
Based on the entire record, the court concluded that the term “movable
link member,” like the term “lever moving element,” was not a recognized term
that identified structure, but was simply a way of describing any device that
performed the recited functions. The
prosecution record in Mas-Hamilton showed that the patentee had used the
terms “member,” “element,” and “means” interchangeably, and in the patent
itself the patentee described the “lever moving element” and the “movable link
member” as the “[m]eans . . . for moving the lever,” and the “[m]eans . . . for
releasably maintaining the pivotable lever in a position substantially
disengaged.” U.S. Patent No. 5,307,656,
col. 2, ll. 24-27. Thus, the court found
that the terms “element” and “member,” as used in the disputed claims, were
mere proxies for the term “means for” and held that the presumption flowing
from the absence of the term “means for” was overcome.
Unlike
in Mas-Hamilton, in this case the pertinent patents and dictionaries
indicate that the term “connector assembly” refers to a device that takes its
name from the function it performs. The
term “connector assembly” is therefore more like the “detent mechanism” of Greenberg
than the “lever moving element” or “movable link member” of Mas-Hamilton.
On
this record, Birchwood has not demonstrated that section 112 ¶ 6
should apply to the “connector assembly” limitation. The only evidence supporting Birchwood’s
position is the Wortman declaration, which as we have noted is based on an
unduly restrictive standard that would require all structural terms to describe
a particular device and would presumably treat general structural terms as
functional in nature. Because the
intrinsic record and dictionaries reflect that the terms “connector” and
“connector assembly” are used as the names for structure, we conclude that the
“connector assembly” limitation in claim 1 of the ’460 patent is not in
means-plus-function form. Accordingly,
we vacate the district court’s ruling that Birchwood’s product does not
literally infringe the ’460 patent, and we remand the literal infringement
issue to the district court for reconsideration in view of the proper claim
construction.
2.
The ’139 patent
Claim
3 of the ’139 patent recites:
A lighting fixture for
mounting fluorescent lamps, comprising:
a) a support member having an upper surface;
b) a plurality of lamp
supports mounted on the upper surface of said support member for engaging and
supporting said fluorescent lamps adjacent their non-socket ends;
c) said
plurality of lamp supports being equally spaced apart in a straight
line;
d) a plurality of
sockets corresponding to said plurality of lamp supports for receiving said
fluorescent lamps mounted on the upper surface of said support member and being
equally spaced apart in a straight line each of said plurality of sockets being
adjacent the socket end of one of said fluorescent lamps; and
e)
the spacing between each of said plurality of sockets and each of said
corresponding lamp supports being less than the length of one of said
fluorescent lamps, so that the non-socket end of one fluorescent plurality of
lamps mounted on one of said lamp supports overlaps the socket end of an
adjacent fluorescent lamp so as to provide shadowless and continuous linear
lighting.
’139 patent, col. 2, line 55, through col. 4, line 3
(emphasis added). Birchwood argues that
the prosecution history of the ’139 patent requires that the “lamp supports” of
claim 3 be limited to ramps. The
district court disagreed with Birchwood, and so do we.
The original application that matured into the ’139 patent
included three independent claims: claim 1, which recited ramps as the lamp
supports; claim 3, which recited a plurality of lamp supports mounted adjacent
to the non-socket ends of the lamps; and claim 5, which recited a plurality of
lamp supports mounted adjacent to the socket ends of the lamps. The examiner found that the application
contained claims directed to patentably distinct species of the claimed
invention and contained no generic claim.
Accordingly, pursuant to 35 U.S.C. § 121, the examiner required the
applicant to elect “a single disclosed species for prosecution on the merits to
which the claims shall be restricted if no generic claim is finally held to be
allowable.” In response, the applicant
cancelled claims 5 and 6, which recited lamp supports adjacent to the socket
end of the lamps.
In its initial claim construction order, the district court
construed “lamp supports” to be limited to ramps, because ramps were the only
form of support disclosed in the drawings that related to elected claims 1
through 3. On Lighting World’s motion
for reconsideration, however, the court reversed itself, holding that the
examiner’s allowance of claim 4, which specifically claimed posts as lamp
supports and was dependent on claim 3, necessarily indicated that the examiner
had not required the application to be limited to lamp supports in the form of
ramps.
We agree with the district court that the election did not
require that the “lamp support” limitation be confined to ramps. The election had nothing to do with the type
of lamp support claimed; rather, it had to do with whether the support was
provided to the socket end of the support members or to the non-socket
end. The ramp supports, like the posts
recited in claim 4 and the lamp supports recited in claim 3, all provide
support for the non-socket end of the lamps.
Since the claims that remained upon issuance were all claims in which
support was provided at the non-socket ends, the patent as issued was
consistent with the applicant’s election.
The court therefore properly declined to limit the lamp supports of
claim 3 to ramps.
Although the district court rejected Birchwood’s argument
that claim 3 of the ’139 patent is limited to ramps, the court agreed with
Birchwood that claim 3 is limited in another respect that defeated Lighting
World’s claim of literal infringement.
The court ruled that the claimed lamp supports were limited to those
providing support from below, i.e., those that would work only if the lamps
were oriented toward the ceiling and that would support the lamp against
falling down into the socket end of an adjacent lamp. The court explained its ruling by stating
that “reading the patent as a whole, it is clear that the lamp support
contemplated by claim 3 is intended to support the lamp from below, in order to
prevent the angled lamp from falling on the socket in front of it.”
We disagree with that aspect of the court’s claim
construction. While it is clear that the
claimed lamp supports provide support from below, we do not agree with
Birchwood or the district court that claim 3 is limited to lamp supports that
provide support only from below and that the claim does not include lamp
supports that provide support when the lamp is in an orientation other than
directly above the support.
Birchwood argues that the terms “engaging and supporting,”
as used in claim 3 of the ’139 patent must be interpreted to mean engaging and
supporting only from below. Birchwood
contends that the figures of the ’139 patent, in particular, depict various
lamp supports, all of which consist of structures—such as ramps, posts, or
brackets—on which the lamps rest.
According to Birchwood, “[i]t is the force of gravity and the position
of the lamp relative to the ‘lamp supports’ alone that causes the lamp to engage
with and be supported by the ‘lamp supports.’” Birchwood argues that the lamp supports
depicted in the figures and described in the specification are all below the
lamps and do not provide support for the lamps when the lamps are below the
supports, such as when the supports are attached to the ceiling. By contrast, the Birchwood lamp support
features what the district court referred to as a “clip around the fluorescent
lamp in order to provide support regardless of the orientation of the lighting
fixture.” Birchwood thus distinguishes
its lamp supports from those claimed in the ’139 patent by arguing that its
lamp supports engage the lamp on all sides “and could engage and support the
lamp regardless of the orientation of the lamp,” while the Lighting World lamp
supports engage and support the lamps purely as a result of gravity and the
lamps’ position relative to the lamp supports.
There are several problems with Birchwood’s analysis. First, the reference to “lamp supports” in
claim 3 of the ’139 patent is not by its terms limited to supports that engage
and support the lamps from below, and there is no language in the written
description that limits the term “supporting and engaging” to support and
engagement from below. Second, although
several of the figures of the ’139 patent show lamp supports that provide
support from below the lamps, the scope of the claims is not limited to
particular embodiments depicted in the figures or described in the written
description. The ordinary meaning of the
terms “supporting and engaging” includes more than support or engagement from
below, and the fact that the patentee has not included figures depicting
support and engagement from other orientations is not sufficient to limit the
claim language to the particular orientation depicted in the figures. Third, several of the figures of the ’139
patent include a device that appears to clip around the lamps and thus provides
support and engagement for the lamps that would be effective in other lamp
orientations. Birchwood argues that the
clip is unclaimed and thus is dedicated to the public, but that argument misses
the relevance of the clip. Lighting
World does not point to the clip as a claimed feature, but instead refers to
the clip to show that its use of the terms “supporting and engaging” was not
meant to be limited to support and engagement from below. Finally, Birchwood’s argument that its
support mechanism provides support in many orientations rather than merely from
below does not avoid the patent’s claim to a mechanism for “supporting and
engaging” the lamps, but at most simply reflects an additional feature not
present in the device claimed in the patent.
Making improvements on a patented invention by adding features to a
claimed device beyond those recited in the patent does not avoid
infringement. Hoyt v. Horne, 145
U.S. 302, 309 (1892); A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700,
703 (Fed. Cir. 1983).
Contrary to Birchwood’s argument, the use of the term “upper
surface” in the ’139 patent does not indicate that the claimed lamp supports
include only those that provide support solely from below. Birchwood’s argument is based on the
limitation that requires a plurality of lamp supports to be mounted “on the
upper surface of said support members.”
Nothing in the patent suggests that the “upper surface” of the support
member ceases to be the “upper surface” if the fixture is turned upside down or
placed in some other orientation. Nor is
there any suggestion in the patent that the fixture must always be oriented so
that its “upper surface” faces upward.
In sum, we construe “support member” to refer to a member
that is mounted to the same surface as the lamp and that supports the lamp at
its non-socket end. Because summary
judgment of no literal infringement of the ’139 patent necessarily rested on
the district court’s erroneous claim construction, the district court’s ruling
on that issue must be vacated.
C. Denial of
Summary Judgment of Infringement
Lighting World claims that the evidence is clear that, in
light of the correct claim construction, Birchwood’s devices infringe claim 3
of the ’139 patent. Lighting World
therefore contends that we should not only reverse the judgment for Birchwood
but also direct the district court to grant summary judgment of literal
infringement in Lighting World’s favor.
The denial of a pretrial motion for summary judgment is not
ordinarily appealable, see State Contracting & Eng’g Corp. v.
Condotte Am., Inc., 346 F.3d 1057, 1067 (Fed. Cir. 2003), and although it
is within our authority under 28 U.S.C. § 2106 to direct the entry of judgment
in Lighting World’s favor on remand, we decline the invitation to do so. The task of determining infringement in light
of the proper claim construction is for the district court. We therefore remand to the district court for
further proceedings regarding Lighting World’s claim of literal infringement of
claim 3 of the ’139 patent and any defenses that Birchwood may raise in
response.
III
In its cross-appeal, Birchwood seeks to raise several
issues. First, Birchwood contends that
the district court should have granted its motion for summary judgment of
invalidity as to the ’460 patent. In
fact, however, the district court merely denied Birchwood’s motion for summary
judgment and did not enter a final judgment against Birchwood as to the issue
of invalidity. Because Birchwood raised
invalidity only as an affirmative defense and not as a counterclaim, it became
unnecessary for the court to enter a judgment as to the invalidity issue when
the court entered judgment of noninfringement with respect to the ’460
patent. See Hill-Rom Co. v.
Kinetic Concepts, Inc., 209 F.3d 1337, 1344 (Fed. Cir. 2000). Inasmuch as there was no final judgment
against Birchwood on the invalidity issue, but only an order denying its request
for summary judgment, it is improper for Birchwood to pursue a cross-appeal on
that issue. See Pitney Bowes,
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1313 (Fed. Cir. 1999). We therefore dismiss that portion of
Birchwood’s cross-appeal.
As its second ground for cross-appeal, Birchwood contends
that the district court should have granted its motion for attorney fees under
35 U.S.C. § 285 based on its claims of litigation misconduct and its contention
that the ’460 patent was procured through inequitable conduct. We uphold the district court’s order denying
an award of attorney fees on the ground that the court did not commit clear
error in finding that the case was not exceptional and thus did not abuse its discretion
in ruling that this case was not an appropriate one for an award of fees. See Sulzer Textil A.G. v. Picanol
N.V., 358 F.3d 1356, 1363 (Fed. Cir. 2004).
We decline to second-guess the district court’s judgment
that the defendant is not entitled to attorney fees based on litigation misconduct
by the plaintiff. The district judge is
in a far better position to assess that matter than we are, and nothing
presented to us on appeal indicates that the district court’s assessment is so
clearly flawed as to justify our overturning the district court’s ruling on
that issue.
As for Birchwood’s contention that it is entitled to
attorney fees because the ’460 patent was procured through inequitable conduct,
the district court rejected that claim on the ground that the “high threshold”
of proof of inequitable conduct had not been met. Birchwood has taken the unusual tack of
raising inequitable conduct in its attorney fee request even though it did not
litigate that issue prior to the entry of judgment on the merits. In light of the belated raising of that
issue, the district court was justified in not requiring a full trial on the
issue of inequitable conduct as part of the attorney fee motion or in entering
detailed findings of fact and conclusions of law on the issue, as Birchwood
contends it should have. Nor would
Birchwood be entitled to an award of attorney fees simply upon showing that the
applicant engaged in inequitable conduct, as Birchwood appears to assume. A party’s success on the merits of an
ultimate issue in a patent case does not automatically render a case
“exceptional” for purposes of the attorney fee statute. Based on Birchwood’s belated raising of the
inequitable conduct issue and the exacting standard applicable to attorney fee
requests, we hold that the district court did not err in denying Birchwood’s
fee application on that ground.
Finally, Birchwood appears to include within its
cross-appeal a challenge to the district court’s denial of Birchwood’s motion
in limine to exclude from trial the testimony of Lighting World’s expert. Reversal of the district court’s ruling on
that issue, however, would not alter the judgment in Birchwood’s favor, so that
issue is not properly presented as a cross-appeal. Bailey v. Dart Container Corp., 292
F.3d 1360, 1362 (Fed. Cir. 2002). Accordingly
we dismiss the cross-appeal with respect to that issue as improper.
Each party shall bear its own costs for this appeal.
AFFIRMED IN PART, VACATED IN PART, DISMISSED IN PART, and
REMANDED.