04-1097
INNOVA/PURE WATER, INC.,
Plaintiff-Appellant,
v.
SAFARI WATER FILTRATION SYSTEMS, INC.
(doing business as Safari Outdoor Products),
Defendant-Appellee.
Robert
A. Vanderhye, Nixon & Vanderhye P.C., of
Catherine
E. Stetson, Hogan & Hartson, LLP, of
Appealed
from:
Judge
Steven D. Merryday
04-1097
INNOVA/PURE
WATER, INC.,
Plaintiff-Appellant,
v.
SAFARI
WATER FILTRATION SYSTEMS, INC.
(doing
business as Safari Outdoor Products),
Defendant-Appellee.
___________________________
DECIDED: August 11, 2004
___________________________
Before CLEVENGER,
RADER, and LINN, Circuit Judges.
CLEVENGER, Circuit
Judge.
Plaintiff-Appellant Innova/Pure Water, Inc.
("Innova") appeals the decision of the United States District Court
for the Middle District of Florida granting summary judgment of noninfringement
in favor of Defendant-Appellee Safari Water Filtration Systems, Inc.
("Safari") and denying Innova's attempt to amend its complaint to add
a later issued patent. Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., No. 8:99-CV-1781 (M.D.
Fla. Oct. 28, 2003). Because the
district court erred in its interpretation of the term "operatively
connected," we vacate the district court's summary judgment of
noninfringement and remand for further proceedings. Because the district court did not abuse its
discretion in refusing to allow Innova to amend its complaint to add a later
issued patent, we affirm that decision.
I
Innova sued Safari
for infringement of U.S. Patent No. 5,609,759 ("the '759
patent"). The '759 patent,
entitled, "Bottle Filter Cap," is directed to a water filter assembly
and a container incorporating the assembly.
In general terms, the filter assembly described includes a tube of
filtering material (alternatively, "filter tube"), a bottle cap, and
a valve for dispensing water. In some of
the depicted embodiments, the assembly is positioned at the mouth of a
container which is a bottle, sealing the bottle and suspending the tube of
filtering material in the bottle. More
broadly, the filter assembly operates to place the tube of filtering material
between the water in the bottle and the valve so that water is filtered before
it exits the bottle. Various embodiments
are depicted in Figures 1-12 of the '759 patent.
Safari's accused
product is a water bottle with a tube of filtering material, a bottle cap, and
a valve. In operation, the tube of
filtering material is suspended in the mouth of the bottle by means of an
annular flange that rests on the mouth of the bottle. The tube of filtering material is
mechanically sealed in position when the bottle cap is screwed over the mouth
of the bottle, thereby contacting the annular flange and fixing the tube of
filtering material in position to filter water before it exits the bottle.
At the district
court, Innova moved for summary judgment of infringement, asserting literal infringement,
or, barring that, infringement under the doctrine of equivalents, of
independent claims 1 and 15, and dependent claims 5, 11, and 17-20. Safari moved for summary judgment of
noninfringement.
In part, the
independent claims at issue in the '759 patent state:
1.
A filter assembly for use with a bottle having a circular cross-section neck or
open end to simultaneously cap the neck or open end and filter liquid poured
out of the bottle through the neck or open end, comprising:
a tube of filtering material . . . a cap . . . said cap having first and second
substantially opposite surfaces . . . a manual valve operatively associated
with said cap, in fluid communication with said tube of filtering material and
manually movable between a position defining means for allowing liquid flow
through said tube and a position defining means not allowing liquid flow
through said tube; and
said tube operatively connected to said cap second surface at said tube
second open end . . . .
'759 patent, col. 6,
ll. 46-64 (emphasis added).
15.
A container for dispensing filtered water, comprising:
a plastic bottle . . . a plastic cap . .
. said cap having first and second substantially opposite surfaces . . . a . .
. tube of or containing filtering material . . . a manual valve operatively
associated with said cap, in fluid communication with said tube of filtering
material and manually movable between a position defining means for allowing
liquid flow through said tube and a position defining means not allowing liquid
flow through said tube; and
said tube operatively connected to said cap second surface, and said
tube having an outside diameter less than said inside diameter of said neck,
and positioned with respect to said-cap within said bottle so that said tube
axis is substantially transverse to said second surface and so that flow of
liquid through said tube is primarily radial with respect to said tube axis
during filtering, and through said side wall.
Id., col. 7, l. 55 to col. 8, l. 17 (emphasis added).
The district court
construed the claim term "operatively connected" to require that the
tube of filtering material be affixed to the cap, i.e., "not merely
adjoining or abutting, but affixing the tube to the cap by some tenacious means
of physical engagement that results in a unitary structure." Concluding that the annular flange
arrangement of Safari's accused product
is such that the filter tube is "never affixed to the cap by some
tenacious means of physical engagement as required by claims 1 and 15,"
the district court denied Innova's motion for summary judgment and granted
Safari's motion for summary judgment of noninfringement.
On appeal, Innova
argues that the district court erred when it interpreted the claims to require
that the tube of filtering material be affixed to the cap "by some
tenacious means of physical engagement that results in a unitary
structure." Innova thus asserts
that the district court's conclusions regarding literal infringement and
infringement under the doctrine of equivalents cannot stand in light of the
proper claim construction and proposes that we reverse, order summary judgment
of infringement, and remand for trial on damages and intentional
infringement. Safari insists that the
district court properly understood the meaning of "operatively
connected" and, particularly in light of the written description and
prosecution history, asserts that the claims can only be interpreted as
requiring the tenacious physical engagement of the tube of filtering material
and the cap. Therefore, argues Safari,
the district court did not err in granting summary judgment.
Innova's appeal also
challenges the district court's refusal to allow Innova to amend its complaint
to add claims of infringement of U.S. Patent No. 6,165,362 ("the '362
patent"). The '362 patent issued on
December 26, 2000, from an application that claimed priority to the application
that issued as the asserted '759 patent.
Innova's motion to amend was filed June 13, 2001, approximately six
months after issuance, ten months after the close of discovery (August 1,
2000), and nine months after the filing of summary judgment motions (September
2000). According to the district court,
allowing "[a]mendment at [that] stage of the litigation, following
Innova's delay, would unduly prejudice Safari." Innova now argues that the district court
abused its discretion by denying the motion to amend because there was no delay
on Innova's part, and no unfair prejudice to Safari would result from allowing
the motion.
II
This is an appeal
from a final decision of a district court and we have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1). We review
summary judgment de novo. Conroy
v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575 (Fed. Cir. 1994). It is well established that determining
infringement is a two-step process. Markman
v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en
banc), aff'd, 517 U.S. 370 (1996).
First, the meaning and scope of the relevant claims must be
ascertained. Id. Second, the properly construed claims must be
compared to the accused device. Id. Claim construction, or interpretation, is a
question of law. Markman v. Westview
Instruments, Inc., 517 U.S. 370 (1996); Cybor Corp. v. Fas Techs., Inc.,
138 F.3d 1448, 1454-56 (Fed. Cir. 1998) (en banc). When exercising the power to review claim
construction, this court determines the meaning and scope of the relevant claim
language and decides whether the district court's determination of the meaning
and scope of the relevant claim language is coterminous with that
construction. Where it is not, the
district court has erred in its construction of the claims.
Summary judgment is
proper "if the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to
a judgment as a matter of law."
Fed. R. Civ. P. 56(c); see Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 247-48 (1985). Summary
judgment is improper where "the evidence is such that a reasonable jury
could return a verdict for the non-moving party." 477 U.S. at 248. Thus, after determining the proper meaning
and scope of the relevant claim language, we decide without deference if the district
court was correct in its judgment that no reasonable jury could find, either
literally or by application of the doctrine of equivalents, each and every
limitation recited in the properly construed claims in the accused device. Middleton, Inc. v. 3M, 311 F.3d 1384,
1387 (Fed. Cir. 2002); Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed.
Cir. 2001); Bai v. L&L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir.
1998).
III
It is a bedrock
principle of patent law that the claims of a patent define the invention to
which the patentee is entitled the right to exclude. Aro Mfg., Co. v. Convertible Top
Replacement Co., 365 U.S. 336, 339 (1961) ("[T]he claims made in the
patent are the sole measure of the grant."); Altoona Publix Theaters,
Inc. v. Am. Tri-Ergon Corp., 294 U.S. 477, 487 (1935) ("Under the
statute it is the claims of the patent which define the invention."); Smith
v. Snow, 294 U.S. 1, 11 (1935) ("[T]he claims of the patent, not its
specifications, measure the invention."); Cont'l Paper Bag Co. v. E. Paper
Bag Co., 210 U.S. 405, 419 (1908) ("In making his claim the inventor
is at liberty to choose his own form of expression, and while the courts may
construe the same in view of the specifications and the state of the art, they
may not add to or detract from the claim." (citation omitted)); White
v. Dunbar, 119 U.S. 47, 52 (1886) ("The claim is a statutory
requirement, prescribed for the very purpose of making the patentee define
precisely what his invention is; and it is unjust to the public . . . to construe
it in a manner different from the plain import of its terms."); Merrill
v. Yeomans, 94 U.S. 568, 570 (1876) ("[The statutorily required]
distinct and formal claim is, therefore, of primary importance, in the effort
to ascertain precisely what it is that is patented to the appellant in this
case."); SRI Int'l v. Matsushita Corp. of Am., 775 F.2d 1107, 1121
(Fed. Cir. 1985) (en banc) ("It is the claims that measure
the invention."). Attending this
principle, a claim construction analysis must begin and remain centered on the
claim language itself, for that is the language the patentee has chosen to
"particularly point[ ] out and distinctly claim[ ] the subject matter
which the patentee regards as his invention." Interactive Gift Express, Inc. v. Compuserve,
Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (quoting 35 U.S.C. § 112 ¶ 2); see
also Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985,
989-90 (Fed. Cir. 1999).
A court construing a
patent claim seeks to accord a claim the meaning it would have to a person of
ordinary skill in the art at the time of the invention. See, e.g., SmithKline Beecham Corp.
v. Apotex Corp., 365 F.3d 1306, 1313 (Fed. Cir. 2004); Resqnet.com, Inc.
v. Lansa, Inc., 346 F.3d 1374, 1378 (Fed. Cir. 2003); Rexnord
Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); Johnson
Worldwide, 175 F.3d at 989; Renishaw PLC v. Marposs Societa' Per
Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); Carroll Touch, Inc.
v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1577 (Fed. Cir. 1993). The inquiry into the meaning that claim terms
would have to a person of skill in the art at the time of the invention is an
objective one. This being the case, a
court looks to those sources available to the public that show what a person of
skill in the art would have understood disputed claim language to mean. Those sources include the words of the claims
themselves, the remainder of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific principles, the meaning of
technical terms, and the state of the art.
See Markman, 52 F.3d at 979-80; accord Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305-15 (Fed. Cir.
1999); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83
(Fed. Cir. 1996).
The written
description provides a context for the claims, and is appropriately resorted to
"for the purpose of better understanding the meaning of a claim," White,
119 U.S. at 51, and for "showing the connection in which a device is
used," McCarty v. Leigh Valley R.R. Co., 160 U.S. 110, 116
(1895). The claims of a patent may
incorporate parts of the written description by reference, thus
"limit[ing] the patent to the form described." Smith, 294 U.S. at 11. A patent applicant thus has the flexibility to
imbue new or old terms with a different meaning than they would otherwise have
to a person of ordinary skill in the art.
See Autogiro Co. of Am. v. United States, 384 F.2d 391,
397 (Ct. Cl. 1967) ("[P]atent law allows the inventor to be his own
lexicographer."). All that is
required is that the patent applicant set out the different meaning in the
specification in a manner sufficient to give one of ordinary skill in the art notice of
the change from ordinary meaning. In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); Intellicall, Inc. v.
Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992). Because the inquiry into the
meaning of claim terms is an objective one, a patentee who notifies the public
that claim terms are to be limited beyond their ordinary meaning to one of
skill in the art will be bound by that notification, even where it may have
been unintended. See, e.g., Liebel-Flarsheim
Co. v. Medrad, Inc., 358 F.3d 898, 905-09 (Fed. Cir. 2004); Scimed Life
Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed.
Cir. 2001) (stating, in the written description, "[the] structure . . . is
the basic . . . structure for all embodiments"); Watts v. XL Sys., Inc.,
232 F.3d 877, 883 (Fed. Cir. 2000) (stating, in the written description,
"[t]he present invention utilizes [the] feature").
The longstanding
difficulty is the contrasting nature of the axioms that (a) a claim must be
read in view of the specification and (b) a court may not read a limitation
into a claim from the specification. See
Liebel-Flarsheim, 358 F.3d at 904-05 (acknowledging the "fine
line" and "inherent tension" attending the question presented by
these axioms). For, as Justice Bradley
famously stated:
Some
persons seem to suppose that a claim in a patent is like a nose of wax which
may be turned and twisted in any direction, by merely referring to the
specification, so as to make it include something more than, or something
different from, what its words express.
The context may, undoubtedly, be resorted to, and often is resorted to,
for the purpose of better understanding the meaning of the claim; but not for
the purpose of changing it, and making it different from what it is. The claim is a statutory requirement,
prescribed for the very purpose of making the patentee define precisely what
his invention is; and it is unjust to the public, as well as an evasion of the
law, to construe it in a manner different from the plain import of its
terms. This has been so often expressed
in the opinions of this court that it is unnecessary to pursue the subject
further.
White, 119 U.S. at 51-52; see also Cont'l Paper Bag,
210 U.S. at 419; McCarty, 160 U.S. at 116 ("[W]e know of no principle of law which would authorize us to read into a
claim an element which is not present . . . ."). Accordingly, particular embodiments appearing
in the written description will not be used to limit claim language that has
broader effect. See Electro
Sci. Indus., Inc. v. Dynamic Details, Inc., 307 F.3d 1343, 1349 (Fed. Cir.
2002); Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347-48 (Fed. Cir.
1998). And, even where a patent
describes only a single embodiment, claims will not be "read restrictively
unless the patentee has demonstrated a clear intention to limit the claim scope
using 'words or expressions of manifest exclusion or restriction.'" Liebel-Flarsheim, 358 F.3d at 906
(quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327
(Fed. Cir. 2002)).
IV
Innova's appeal with
respect to the asserted claims of the '759 patent turns on the correct
interpretation of the disputed claim term, "operatively
connected." According to the
district court, the ordinary meaning of "said tube operatively connected
to said cap" requires that the two components be "affix[ed] . . . by
some tenacious means of physical engagement that results in a unitary
structure." Innova challenges this
construction as improperly importing a tenacious physical engagement limitation
into claim language that does not require any such thing. Safari concurs with the district court. The district court erred. The asserted claims do not require that the
filter tube and cap be affixed to one another in a manner that results in the
two components forming a unitary structure.
Neither party asserts that the term "operatively connected" is
a technical term having a special meaning in the art of water filtration. Rather, it is a general descriptive term
frequently used in patent drafting to reflect a functional relationship between
claimed components. Generally speaking,
and as used in the '759 patent, it means the claimed components must be
connected in a way to perform a designated function. In the absence of modifiers, general
descriptive terms are typically construed as having their full meaning. See Johnson Worldwide, 175 F.3d
at 992 (refusing to import a modifier for the term "coupled"); Va.
Panel Corp. v. MAC Panel Co., 133 F.3d 860, 865-66 (Fed. Cir. 1997)
(refusing to import a modifier for the term "reciprocating"). Thus, the district court was correct to look
to the ordinary meaning of the terms "operatively" and
"connected" and we discern no error in the district court's initial
understanding that "the ordinary and customary meaning of 'operatively
connected' requires the . . . linking together of the tube and the cap to
produce the intended or proper effect."
But the district court erred when it proceeded beyond this plain meaning
based on the "[e]xamples of means for connecting the tube to the cap disclosed
in the '759 patent," all of which reflect a "physical engagement
[between the tube and the cap] that results in a unitary structure." See Teleflex, 299 F.3d at
1328.
The district court
also erred in interpreting the "intended or proper effect," i.e.,
the designated function, to be the operation of "creat[ing] a filter
assembly" with a unitary structure.
Instead, as Innova contends, the proper designated function is the
operation of the assembly, i.e., filtering. Thus, "said tube [is] operatively
connected to said cap" when the tube and cap are arranged in a manner that
affects filtering. Safari contends that
the district court was correct because for a connection to be operative for
filtering, the structure performing the filtering must also be associated with
a bottle, a limitation not found in claim 1 of the '759 patent. We disagree because the claims, and also the
written description, reflect that an intended purpose for the claimed invention
is for use with a bottle to filter water.
Focusing first on the
claims, we observe that the preamble of claim 1 recites: "A filter assembly for use with a bottle
. . . to simultaneously cap the neck or open end and filter liquid
poured out of the bottle . . . ."
'759 patent, col. 6, ll. 45-49 (emphasis added). Language in a preamble limits a claim where
it breathes life and meaning into the claim, see In re Paulson, 30 F.3d
at 1479, but not where it merely recites a "purpose or intended use of the
invention." Id. In this case, we need not decide whether the
preamble adds a limitation to the claim because we hold that it recites a
purpose or intended use of the claimed "filter assembly" as, inter
alia, "filter[ing] liquid poured out of the bottle." Other parts of claim 1 also show that the
intended function of the claimed structure is filtering. Beyond stating that the "tube is
operatively connected to said cap," the claim also states that a
"valve" is "operatively associated with said cap, in fluid
communication with said tube of filtering material." '759 patent, col. 6, ll. 58-59. The claim further explains that the
"valve" controls the flow of liquid through the "tube of
filtering material" as the valve is "manually movable between a
position defining means for allowing liquid flow through said tube and a
position defining means not allowing liquid flow through said tube." Id., ll. 59-63. In sum, we think the operation defined by
controlling the flow of liquid through the "tube of filtering
material" is the operation of filtering.
As Safari acknowledges, Innova's argument that
"operatively" refers to the function of filtering, has even
"more traction" when applied to claim 15. Claim 15 is directed to "[a] container
for dispensing filtered water."
'759 patent, col. 7, l. 55. It
expressly claims a bottle as an element of the disclosed structure. Id., ll. 56-58. It contains the "in fluid
communication" limitation present in claim 1. Id., col. 8, ll. 4-9. And, it contains additional language
explaining the position of the tube of filtering material relative to the cap,
the bottle, and the liquid flow:
said
tube operatively connected to said cap second surface, and said tube having an
outside diameter less than said inside diameter of said neck, and positioned
with respect to said-cap within said bottle so that said tube axis is
substantially transverse to said second surface and so that flow of liquid
through said tube is primarily radial with respect to said tube axis during
filtering, and through said side wall.
Id., ll. 10-17.
Not only do both
claims evidence that an intended function or operation of the claimed structure
is filtering, such a function is also evident from the written description, e.g.,
"[t]here is a significant demand for filtered drinking water . . . ,"
'759 patent, col. 1, l. 6; "a filter assembly is provided . . . capable of
effectively treating drinking water to remove chlorine and organic taste
contaminants therefrom and reduces a variety of chemical
contaminants." Id., ll.
25-29. Unless otherwise compelled, when
different claims of a patent use the same language, we give that language the
same effect in each claim. See Omega
Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003). Here, we are not otherwise compelled. "Operatively connected" carries the
same meaning in both claims.
Furthermore, we observe
that Safari's interpretation largely reads the term "operatively" out
of the phrase "operatively connected." While not an absolute rule, all claim terms
are presumed to have meaning in a claim.
Cf. Pickholz v. Rainbow Techs., Inc., 284 F.3d 1365, 1373
(Fed. Cir. 2002). If, as Safari
proposes, the claim refers in the abstract to the creation of a filter assembly
structure, without any grounding to an intended use, the term
"operatively" is unnecessary and superfluous as the patentee could
have as easily used the term "connected" alone.
Safari also proposes
that the district court's construction can be supported by the patentee's use,
in claim 15, of "operatively connected" and "operatively
associated." The argument is that
the patentee's use of the term "connected" to claim the tube-cap
relationship stands in such stark contrast to the patentee's choice of
"associated" to define the valve-cap relationship, that the patentee
could only have intended that "connected" and "associated"
were of different scope. Despite
Innova's assertion to the contrary, when an applicant uses different terms in a
claim it is permissible to infer that he intended his choice of different terms
to reflect a differentiation in the meaning of those terms. See Bancorp Servs., L.L.C. v.
Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004); Ethicon
Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir.
1996). For this argument to be
dispositive of a particular claim construction, however, one must accept that
"connected" and "associated" can be discerned along the
lines Safari urges. In particular, one
must accept the argument that although both terms can, by their plain meaning,
include nonphysical attachment, "associated" was meant to define both
nonphysical and physical attachment while "connected" was used in a
narrower sense, incorporating only a physical attachment definition. Safari urges that we can make the distinction
based on the disclosed embodiments. We
disagree. While an inference that
"connected" and "associated" have different meanings in
this case may be particularly appropriate because the words here define the
relationship between two objects, the terms "connected" and
"associated" are very similar in meaning. The context does not make clear to us that
Innova's use of both terms means that "connected" should be limited
to tenacious physical engagement.
Moreover, we observe that in at least one circumstance, Innova described
the filter as "associated" with the cap. '759 patent, col. 1, ll. 41-43 ("a cap
with which the filter is associated being adaptable to fit any type of closure
mechanism on a conventional plastic bottle"). Finally, as we discuss in further detail, infra,
we decline to limit the claims based only on the embodiments in the written
description. Thus, the context does not
show that "connected" and "associated" should be
differentiated into the definitions proposed by Safari, and we must conclude
that this is simply a case where the patentee used different words to express
similar concepts, even though it may be confusing drafting practice. Bancorp Servs., 359 F.3d at 1373.
In sum, subject to
any clear and unmistakable disavowal of claim scope, the term "operatively
connected" takes the full breadth of its ordinary meaning, i.e.,
"said tube [is] operatively connected to said cap" when the tube and
cap are arranged in a manner capable of performing the function of
filtering.
A
Safari contends that
in the written description and prosecution history the patentee clearly and
unmistakably disavowed the full breadth of meaning of "operatively
connected" and put the public on clear notice that the claims should be
limited to cover only embodiments where the filter tube and cap are tenaciously
physically engaged. Concerning the
written description, Safari relies most heavily on the argument that at
"every point" in the written description where "operatively
connected" is discussed, it is discussed as having the "common
denominator" of tenacious physical engagement. However, at argument, Safari's counsel had
difficulty pointing to a statement in the written description that clearly and
unmistakably shows the applicant's intent to limit the scope of the claims to
tenacious physical engagement.
Undaunted, Safari contends that even if we disagree that the written
description contains specific language clearly showing disavowal, the
applicant's clear and unmistakable disavowal of all embodiments in which the
tube is not tenaciously engaged to the cap is evident from reading the written
description as a whole. According to
Safari, when one reads the written description from beginning to end, there is
no disclosure of a tube and cap arrangement where the tube and cap are not, in
the words of the district court, "affix[ed] . . . by some tenacious
means of physical engagement that results in a unitary structure." Safari also relies heavily on the observation
that not a single drawing in the written description depicts an arrangement of
tube and cap in other than tenacious engagement.[1] Thus, contends Safari, because courts do not
construe claims beyond what is disclosed in the written description, the
written description demands a finding by this court that "operatively
connected" is limited to tenacious physical engagement. Making the same argument, although in
different terms, Safari argues that, acting as his own lexicographer, the
patentee in this case defined "operatively connected" as requiring
tenacious physical engagement. Again, we
disagree.
1
The abstract of the
written description contains the statement:
"The tube is operatively connected to the cap second surface at the
tube second open end by sonic welding, a mechanical connection, or
adhesively." '759 patent,
Abstract. While a statement in the
Abstract may operate as a clear expression of manifest exclusion, for several
reasons, this statement does not. Nor
does this statement weigh heavily when considering whether the applicant has
acted as his own lexicographer. To
begin, this statement is in the Abstract of the patent. This section of a patent speaks generally to
the invention and, much like the syllabus of an opinion, sets forth general
information about the document's content, which is described in more detail in
the remainder of the document. Second,
in our view, this statement reflects the applicant's attempt to disclose the
broad array of means by which the tube can be connected to the cap. This observation begs a third point. Safari, and it seems the district court,
appear to believe the term "mechanical connection" requires tenacious
physical engagement, and accordingly, cannot include within its scope Safari's
product, which suspends the tube of filtering material in the bottle mouth by
means of an annular flange sealed in place by a cap screwed over the mouth of
the bottle. We simply do not agree. By a twist of the wrist, the bottle cap is
screwed tight, thus mechanically locking the filter to the lip of the bottle.
The connection of the
filter and cap is addressed in other portions of the written description. The paragraph beginning: "According to the present invention . .
. ," '759 patent, col. 1, l. 23, describes the "filter assemblies and
containers according to the present invention," id., ll. 38-39, as
having "the actual filter element being connected to the other components
either adhesively, mechanically, or by welding (e.g. sonic welding), a cap with
which the filter is associated being adaptable to fit any type of closure
mechanism on a conventional plastic bottle . . . ." Id., ll. 38-44. Although at first glance one might think that
the use of the word "associated" creates a requirement that the
filter and cap be affixed in tenacious physical engagement, it does not. Without doubt, a structural element
"associated" with a separate structural element can be tenaciously
physically engaged. However, there is no
requirement that this be so because the word "associated" merely
reflects that the recited elements be joined in some kind of relationship. Thus, in contrast to, for example, Scimed,
this language is less direct, clear, and defining than the phrase "[the]
structure . . . is the basic . . . structure for all embodiments." 242 F.3d at 1344.
The kernel of
Safari's position is that the embodiment, or embodiments, depicted in the figures
and written description show "not merely adjoining or abutting, but
affixing the tube to the cap by some tenacious means of physical engagement
that results in a unitary structure."
Perhaps the most straightforward answer to Safari's argument is that the
law does not require the court, where an applicant describes only a single
embodiment, to construe the claims as limited to that one embodiment. See, e.g., Liebel-Flarsheim,
358 F.3d 906-09. Indeed, such a
construction is not encouraged or presumed.
Id. From another level of
abstraction, of course, the patentee's disclosures in this case could be viewed
as the disclosure of many embodiments.
So viewed, the patentee presented several examples of the types of
connections between the filter tube and cap useful for the invention and in all
examples depicted the connection as a tenacious physical engagement. Here, this is a difference without
substance. As noted earlier, the
specification as a whole reflects the patentee's efforts to describe and claim
all operative connections. Also, the
written description discloses that the operative connection can be
"mechanical," a feature we conclude is present in the arrangement of
the filter tube and cap in Safari's product as presented to this court. Finally, and most importantly, Safari's
argument flies into the sun that is the plain import of the claim language
"operatively connected." We
thus decline to apply Safari's reasoning.
2
According to Safari,
the prosecution history is "consistent with" their proposed
definition of "operatively connected," and, based on
"representations made to secure the '759 patent," "Innova is
estopped" from arguing that any other construction is possible. We conclude that the prosecution history does
not preclude the construction advanced by Innova and adopted in this
opinion.
Safari first refers
to a section 103 rejection made by the examiner to pending claims 1-18. In that rejection, the examiner stated:
Regarding
the various means of attaching the tube to the cap, such as welding, adhesion,
etc., these features are considered to be conventional and would have been
obvious in the device of [the prior art] to provide alternative conventional
attachment means.
We note here, that
claim 13 ultimately issued as claim 1.
At the time of the rejection however, claim 13 was merely a claim
depending from then claim 1 and recited a type of filtering material. Claim 1, from this point in the prosecution
history later issued as claim 22.[2] Even so, this claim contained the relevant
"said tube operatively connected to said cap" language, and the cited
portion of the examiner's rejection is properly read as referring to this
connection.
Responding, the
patentee made a number of arguments concerning pending claim 1, of which the
district court and appellee make no issue.
Then, addressing dependent claims 2-18, the applicant made the
statement:
In
fact, it is believed that the dependent claims even more clearly and
unequivocally distinguish from the art.
For example, no place in either [prior art reference] are the mutually
exclusive adhesive connection of claim 2, welding, (e.g., ultrasonic welding)
of claim 3, or mechanical connection of claim 5 pointed out in the previous
action or seen in the references, let alone the particular O ring connection
recited in claim 6, or the particular mechanical connection flanges of claim
17.
Although asserting
that the "significance placed on this feature by Innova estops Innova from
disclaiming that the filter tube is affixed to the cap," Safari fails to
explain how this
statement demands
such a conclusion. After careful
consideration of the content of the statement, we conclude that it does not
clearly and unambiguously disavow mechanical connections where the filter tube
is not tenaciously physically engaged to the cap. See Omega Eng'g, 334 F.3d at
1323-24. In particular, we note that
dependent claims are typically narrower and, by so being, are more likely to
clearly distinguish the prior art.
Generally speaking, this is, in part, their function. In addition, it is of little moment that the
dependent claims mentioned in the response refer to connections that result in
a unitary structure. This is so for at
least two reasons. First, the language
of the response refers to claims that specifically claim embodiments in which
the filter tube and cap are tenaciously physically engaged. By the patentee's selection of language,
which the examiner allowed, claims 1 and 15 are not facially limited to such
embodiments. Second, to accommodate
Safari's argument now, we would have to conclude that it would be appropriate
to limit an independent claim by the additional limitations of claims depending
from that claim. Although, in some cases
this might be possible, the doctrine of claim differentiation
"normally means that limitations stated in dependent claims are not to be
read into the independent claim from which they depend." Karlin Tech., Inc. v. Surgical Dynamics,
Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999) (stating that this interpretative
tool stems from "the common sense notion that
different words or phrases used in separate claims are presumed to indicate
that the claims have different meanings and scope"). In sum, the argument that dependent claims,
which require tenacious engagement, "more clearly . . . distinguish from
the art" does not mean that claims from which those claims depend are
equally limited.
Next, Safari points
to a dialog between the examiner and patentee where the examiner rejected
then-pending claim 17 because "[i]t would have been obvious to utilize the
flange/projections of [the prior art] . . . to provide an alternative but
equivalent connection means." The
claim addressed by this rejection literally claims a connection between the
tube and cap that uses a flange extending from the filter tube to engage the
cap. The applicant responded to the
rejection thus:
For
example, [the prior art] shows an axial filter that is sealed at the top and
employs a mixture of anion and cation resins, using the flange to suspend the
filter of ion exchange resins which operate in axial flow mode . . .
. This is contrary to [other prior art]
and the claimed invention.
Safari contends that
this statement disavows the use of a flange to suspend the filter tube. Innova contends that this statement was
directed to the distinction of radial as opposed to axial filtering. Careful inspection of the prosecution history
indicates that Innova has the better argument.
Beginning with the statement itself, we cannot distinguish whether it is
referring to the filter or the flange.
Examining the following Office Action, we observe that the examiner
understood Innova's statement to be referring to the filter: "The applicants also argue that [the
prior art] discloses an axial filter; however [the prior art] was cited solely
for the feature of a conventional flange on the rim of the tubular
filter." Following this discourse,
a telephone interview occurred, after which the examiner allowed the claim,
unamended, and still directed to the use of a flange to make the tube-cap
connection.[3] This series of communications does not
reflect the clear and unambiguous disavowal of caps and filters connected by
mechanical means short of tenacious physical engagement. Rather, it reflects first, the
examiner and
applicant talking past one another. It
reflects second, that the applicant was able to convince the examiner, by off
the record communications, to retreat from her position. However unfortunate it is that the public and
this court are prevented from knowing what arguments caused the examiner to
abandon her position, the record finally reflects the examiner's acquiescence
to the claim language chosen by the applicant.
This is not clear evidence of the patentee's disavowal of claim
scope.
Safari also points to
a rejection entered by the examiner, where the examiner describes a piece of
asserted prior art as "considered to disclose a tubular filter attached to
a cap as instantly claimed." It is
well settled, however, that it is the applicant, not the examiner, who must
give up or disclaim subject matter that would otherwise fall within the scope
of the claims.
V
Innova argues the district court erred by
denying the motion to amend the complaint to add the '362 patent because there
was no delay on Innova's part, and no unfair prejudice to Safari would result
from granting the motion. At the outset,
this is a nonpatent matter where we apply the law of the circuit in which the
district court sits. See Cultor
Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328, 1332-33 (Fed. Cir.
2000). This appeal is from the middle
district of Florida, within the eleventh circuit, which reviews the refusal of
leave to amend for abuse of discretion. Lowe's
Home Ctrs., Inc. v. Olin Corp., 313 F.3d 1307, 1314-15 (11th Cir.
2002). On this deferential standard of
review, we detect no abuse of discretion.
In the eleventh
circuit, the court freely grants leave to amend when justice so requires. Carruthers v. BSA Adver., Inc., 357
F.3d 1213, 1217-18 (11th Cir. 2004). However,
a motion to amend may be denied on "numerous grounds, such as undue delay,
undue prejudice to the defendants, and futility of the amendment." Maynard v. Bd. of Regents of Div. of
Univs. of Fla. Dep't. of Educ., 342 F.3d 1281, 1287 (11th Cir. 2003)
(citation and internal quotation marks omitted). In addition, "it is not an abuse of discretion for a
district court to deny a motion for leave to amend following the close of discovery, past the
deadline for amendments, and past the deadline for filing dispositive
motions." Lowe's, 313 F.3d
at 1315.
A number of these
considerations are present in this case.
In particular, Innova sought to amend the complaint approximately six
months after the '362 patent issued, ten months after discovery closed, and
nine months after the filing of summary judgment motions. Accordingly, the district court did not abuse
its discretion when it denied Innova's motion to amend.
VI
In conclusion, the
correct claim construction does not limit claims 1 and 15 to only embodiments
where "said tube [is] operatively connected to said cap" by
mechanical means that result in tenacious physical engagement. Accordingly, the district court erred when it
granted Safari's motion for summary judgment of no literal infringement based
on the fact that in Safari's accused product the filter tube is "never
affixed to the cap by some tenacious means of physical engagement as required
by claims 1 and 15." For the same
reasons, the district court erred in granting summary judgment of no infringement
under the doctrine of equivalents based on its factual conclusion that
"merely adjoining or abutting . . . is not the equivalent of affixing the
tube to the cap." And, finally, as
discussed, we disagree with the district court that the applicant, in the
course of prosecution, surrendered the method employed in the Safari product of
using a flange to position the filter element.
On the record before
us, however, we cannot be certain that reversing and entering summary judgment
in favor of Innova is the proper course of action. We leave that decision, in the first
instance, to the district court. Thus,
we vacate the district court's grant of summary judgment of noninfringement in
favor of Safari and remand for further proceedings in light of the correct
claim interpretation. Because we detect
no abuse of discretion, we affirm the district court's denial of Innova's
motion to amend the complaint to add the '362 patent.
COSTS
No costs.
VACATED-IN-PART,
AFFIRMED-IN-PART, REMANDED
[1] Innova unsuccessfully disputes this aspect of the disclosure.
[2] At this stage in the prosecution, the claim that would
issue as claim 15 in the '759 patent was claim 19. Although it contained, "said tube
operatively connected to said cap," the examiner did not include it in
this rejection.
[3] It issued as claim 14 of the '759 patent.