NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
04-1594, 05-1032
KYLE BATEMAN and ACTION TARGET, INC.,
Plaintiffs-Appellants,
v.
POR-TA TARGET, INC. (also known as Porta Target),
Defendant-Cross Appellant.
__________________________
DECIDED: September 1, 2005
__________________________
Before MICHEL, Chief Judge, RADER and LINN, Circuit Judges.
LINN, Circuit Judge.
Kyle Bateman and Action Target, Inc. (collectively, “Action”) appeal from the
decision of the United States District Court for the Northern District of California (“district
court”) granting the motion of Por-Ta Target, Inc. (“Porta”) for summary judgment of
non-infringement of U.S. Patent No. 5,822,936 (“the ’936 patent”). See Bateman v. Por-
Ta Target, Inc., No. 3:01-CV-05599-JL (N.D. Cal. July 28, 2004) (“Non-infringement
Order”). Porta cross-appeals from the decision of the district court granting Action’s
motion for summary judgment on Porta’s counterclaims for, inter alia, false advertising
under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and trade disparagement. See
Bateman v. Por-Ta Target, Inc., No. 3:01-CV-05599-JL (N.D. Cal. July 28, 2004)
(“Counterclaim Order”). Because the district court properly granted Porta’s motion for
summary judgment of non-infringement and properly granted Action’s motion for
summary judgment for Porta’s counterclaims of false advertising and trade
disparagement, we affirm.
I. BACKGROUND
The ’936 patent is generally directed to a system for modularly fabricating bullet
stops for live-fire shoot houses. The bullet stops are constructed from bullet proof
plates placed adjacent to each with a gap therebetween. A facing strip covers the gap
from one side, and a backing strip or a series of backing washers cover, or partially
cover, the gap from the opposite side. A bolt extends through the facing strip and
backing pieces and through a nut such that when the assembly is tightened it clamps
the plates together. See ’936 patent, Abstract, Fig. 5. The ’936 patent is aimed at
addressing the drawbacks associated with prior art systems, which exhibited problems
attributed to “welding, cutting, special manufacture of component parts and direct
fastening through holes in the respective plates.” ’936 patent, col. 3, ll. 11-13.
The ’936 patent contains a total of 13 claims, with 5 independent claims.
Independent claim 1, which is representative of the asserted claims, recites, with the
terms at issue underlined:
1. An interconnect system for fabricating modular bullet
deflecting devices, the system, when assembled,
comprising:
a plurality of metallic plates, each plate having at least one
lateral edge juxtaposed with a lateral edge of another
metallic plate;
at least one facing strip disposed along the juxtaposed
04-1594, 05-1032 2
lateral edges of the plates so as to cover the juxtaposed
lateral edges of the metallic plates;
clamp means releasably attached to the at least one facing
strip for holding the facing strip in secure engagement with
the metallic plates adjacent the lateral edges to apply a
clamping force and thereby hold the metallic plates in rigid
connection with one another and forming a continuously
bullet resistant joint; and
damping means for damping the transfer of vibrational
energy between the plates.
’936 patent, col. 8, ll. 30-45.
Porta manufactures and sells bullet stops fabricated from steel plates that have
holes in them. Prior to the issuance of the ’936 patent, Porta cut holes in the plates with
a torch. From 1999, Porta began custom ordering plates pre-cut with holes. Porta
connects the steel plates by placing bolts through the holes, which it contends is a
“fastening mechanism.”
In May 1997, Porta built a shoot house containing bullet shields for the Dallas
Sheriff’s Department. Action then hired an independent third party to evaluate the
house. The third party tested the structure, videotaped the tests, and gave a favorable
evaluation, stating that “none of the rounds penetrated the seam” and that “there was
[sic] no signs of damage.” The video showed a light dust-like residue emerging from the
seams during shots, which the third party characterized as “very fine, like a dust” and
stated that “no metal-like fragments could be seen.”
Ten days after receiving the evaluation, Action sent a letter to the Dallas Sheriff’s
Department based upon the third party’s evaluation, stating
[W]e strongly believe that the joint system of the Porta[] shoot house
creates a VERY SERIOUS risk of injury to firing range visitors. The
Porta[] joint appears to be VERY UNSAFE and may result in death or
04-1594, 05-1032 3
injury to users. The Porta[] joint system does NOT contain or stop bullet
fragments from exiting the shoot house joints (Please See The Video
Footage regarding This Very Hazardous Problem).
Between 1997 and 1999, Action sent letters to other potential customers of Porta,
making similar allegations.
On December 28, 2001, Action filed suit against Porta alleging patent
infringement. Porta denied infringement and filed counterclaims alleging, inter alia,
false advertising under the Lanham Act § 43(a) and trade disparagement under
California law based on Action’s numerous statements about Porta’s products. The
district court held a Markman hearing and initially construed various claim terms.
Thereafter, the parties filed cross motions for summary judgment on infringement and
on Porta’s counterclaims.
On July 28, 2001, the district court revised its initial claim construction and
granted Porta’s motion for summary judgment of non-infringement based on the revised
construction. The district court construed “clamp means” as a means-plus-function
limitation. As to its function, the district court held that the “the function of the ‘clamp
means’ is that of exerting frictional force such that metal plates are held in rigid
connection to one another.” Non-infringement Order at 12. The district court further
identified the nuts and bolts together with the facing and backing strips as the structure
corresponding to the “clamp means.” Id. at 17. The district court held that Porta did not
infringe the asserted claims of the ’936 patent, either literally or under the doctrine of
equivalents, because the accused device did not utilize a frictional force as required by
the “clamp means,” id. at 22, did not have a channel between adjacent plates as
04-1594, 05-1032 4
required by the term “juxtaposed,” id. at 29, and had plates with holes, which were
disclaimed in the ’936 patent, id. at 23.
In a separate order, the district court granted Action’s motion for summary
judgment on Porta’s counterclaims for false advertising and trade disparagement. See
Counterclaims Order. Focusing on the harm element of the Lanham Act false
advertising claim, the district court found that Porta failed to show any specific harm
caused by Action. Id. at 2-6. The district court further held that the Action’s remarks did
not constitute “libel per se” because they did not impugn the reputation of Mr. Scholem,
the business owner. Id. at 9.
On September 13, 2004, the district court entered final judgment. Bateman v.
Por-Ta Target, Inc., No. 3:01-CV-05599-JL (N.D. Cal. Sept. 13, 2004). Action timely
appeals and Porta cross-appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
II. ANALYSIS
A. Standard of Review
“We review a district court’s grant of summary judgment de novo.” See Ethicon
Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir.
1998). Summary judgment is appropriate only when there are no genuine issues of
material fact and the moving party is entitled to judgment as a matter of law. See Fed.
R. Civ. P. 56(c). “In determining whether there is a genuine issue of material fact, the
evidence must be viewed in the light most favorable to the party opposing the motion,
with doubts resolved in favor of the opponent.” Chiuminatta Concrete Concepts, Inc. v.
Cardinal Indus., Inc., 145 F.3d 1303, 1307 (Fed. Cir. 1998). If there are no material
facts in dispute precluding summary judgment, “our task is to determine whether the
04-1594, 05-1032 5
judgment granted is correct as a matter of law.” Marathon Oil Co. v. United States, 177
F.3d 1331, 1337 (Fed. Cir. 1999).
Claim construction is an issue of law, see Markman v. Westview Instruments,
Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996), that we
review de novo, see Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir.
1998) (en banc); Phillips v. AWH Corp., 415 F.3d 1303, 1328 (Fed. Cir. 2005) (en
banc). A district court’s “determination of the claimed function and corresponding
structure of a mean-plus-function claim limitation is a question of law, reviewed de
novo.” ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1087 (Fed. Cir. 2003).
Infringement, whether literal or under the doctrine of equivalents, is a question of fact.
See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
We review false advertising claims under section 43(a) of the Lanham Act in
accordance with the law of the regional circuit within which the case arose, which is in
this case, the Ninth Circuit. See KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc.,
997 F.2d 1444, 1447 (Fed. Cir. 1993). Whether a particular set of facts constitutes libel
per se, as defined by the California Civil Code section 45, is a question of California law,
reviewable de novo. See Rodriguez v. Panayiotou, 314 F.3d 979, 983 (9th Cir. 2002).
B. Discussion
1. Non-infringement
Action argues that the district court erred in granting summary judgment by
concluding that Porta did not meet the “juxtaposed” and “clamp means” limitations, and
that the ’936 patent disclaimed plates with holes. Action further argues that the district
court improperly granted summary judgment for claim 10, which does not contain a
04-1594, 05-1032 6
“clamp means” limitation, and improperly relied on expert testimony to construe claims.
Porta responds that the district court correctly construed these limitations without relying
on expert testimony, correctly concluded that the patent disclaims holes in metal plates,
and claim 10 is not properly the subject of appeal. Because we conclude that the
district court correctly identified the structure corresponding to the “clamp means”
limitation, and because summary judgment of non-infringement was proper on that
basis, we do not consider Action’s other arguments.
As an initial matter, the parties agree, and the district court properly determined,
that “clamp means” is styled in mean-plus-function format pursuant to 35 U.S.C. § 112,
paragraph 6. The “clamp means” limitation appears in independent claims 1, 4, 8, and
13. Claim 10, the sole remaining independent claim, does not contain the phrase
“clamp means.” However, as Porta correctly points out, Action abandoned this claim
during litigation stating in its “Memorandum in support of motion for partial judgment on
the issue of infringement and motion for entry of an injunction” that “[c]laim 10 was
withdrawn by Plaintiffs due to questions raised in the reissue proceedings.” Claim 11
and 12 depend from withdrawn claim 10, and claim 11 explicitly recites a “clamping
means.” Thus, we conclude that all the asserted claims at issue, namely, claims 1-9
and 11-13, include the “clamp means” limitation.
Under paragraph 6 of section 112, “the claimed function of the [“clamp means”]
must be identified and then the specification must be examined to identify the structure
that performs that function.” Generation II Orthotics, Inc. v. Med. Tech., Inc., 263 F.3d
1356, 1363 (Fed. Cir. 2001). In this case, the district court identified the claimed
function as “exerting frictional force such that metal plates are held in rigid connection to
04-1594, 05-1032 7
one another.” Non-infringement Order at 12. The function recited in claim 1 is “holding
the facing strip in secure engagement with the metallic plates adjacent the lateral edges
to apply a clamping force and thereby hold the metallic plates in rigid connection with
one another.” ’936 patent, col. 8, ll. 40-44. Claims 4, 8, and 13 recite similar functions.
See id., col. 8, ll. 60-65, col. 9, ll. 24-28, col. 10, ll. 31-34. Because “[§ 112, ¶ 6] does
not permit limitation of a mean-plus-function claim by adopting a function different from
that explicitly recited in the claim,” Micro Chem. Inc. v. Great Plains Chem. Co., Inc.,
194 F.3d 1250, 1257 (Fed. Cir. 1999), the district court erred in identifying the claimed
function. However, that error is harmless in view of the district court’s proper
identification of the structure corresponding to the claimed function.
“A means-plus-function claim encompasses all structure in the specification
corresponding to that element and equivalent structures.” Id. at 1258. Referring to the
embodiment of Figures 1 and 2 of the ’936 patent, the specification discloses that “[a]
nut 34 is then attached to the plow bolt 22 and tightened until the backing washer 30
and the facing strip 14 are held firmly against the plates. When the nut 34 has been
tightened sufficiently, the facing strip 14 and the backing washer 30 hold the plates 10 in
rigid attachment.” ’936 patent, col. 5, ll. 34-39. The specification also states that the
bolt extends through the channel between the plates. See id., col. 5, ll. 29-31 and
Figure 2. In reference to the embodiment of Figure 3, the specification discloses that
“[t]he plates are held together by the facing strip (not shown) and the backing washer
30, due to force applied by the plow bolt 22 and the nut 34.” Id., col. 5, ll. 46-48. Figure
3 clearly shows the bolt passing through a gap between the plates. In the embodiments
of Figures 4 through 8, the clamping of the plates together is accomplished by the
04-1594, 05-1032 8
combination of the facing strip, backing washer, and a bolt passing through a gap
between the plates and terminating in a nut on the opposite side. These are the
structures disclosed that correspond to and perform the claimed function of “holding the
facing strip in secure engagement with the metallic plates adjacent the lateral edges to
apply a clamping force and thereby hold the metallic plates in rigid connection with one
another.” Thus, in accordance with § 112, paragraph 6, the “clamp means” limitation is
properly construed as covering these structures and their equivalents. See Micro
Chem., 194 F.3d at 1258 (“When multiple embodiments in the specification correspond
to the claimed function, proper application of § 112, ¶ 6 generally reads the claimed
element to embrace each of those embodiments.”).
“[A]n accused device literally infringes a claim element under § 112 ¶ 6 only if it is
insubstantially different from the corresponding structure in the patent specification.”
Ishida Co. v. Taylor, 221 F.3d 1310, 1317 (Fed. Cir 2000). The “insubstantial
difference” analysis “requires that a determination of whether the way the accused
structure performs the claimed function, and the result of that performance, are
substantially different from the way the claimed function is performed by the
corresponding structure … described in the specification, or its result.” Id. (internal
quotations omitted).
The accused device utilizes “specially manufactured metal plates with holes
drilled or punched in them.” Non-infringement Order at 10. In the accused device the
way the plates are held together is by passing “bolts [through] holes drilled at the top,
middle, and bottom of a facing strip, backing strip, and the plate.” Id. at 25. Further, as
a result of this way of fastening the plates, the district court found that “the plates can
04-1594, 05-1032 9
never fall away from one another because the bolts pass through the facing strip,
backing strip, and metal plate, thereby providing a structural impediment to their
separation.” Id. at 25.
In contrast to the accused device, each of the embodiments disclosed in the ’936
patent requires a bolt passing through a gap between the metal plates and through a
facing strip, backing washer, and a nut to clamp the plates together. As the district
court correctly observed, “[i]f there was no channel, the washer, as backing means,
would only butt up against one of the larger panels and therefore not exert the required
clamping pressure on the two panels.” Id. at 24. Furthermore, the district court found
that, as a result, unlike the accused device, “[i]f one were to loosen the nuts of the ’936
patent device, the plates would fall apart.” Id. at 25.
For the foregoing reasons, the accused device achieves the recited function of
the “clamping means” in a substantially different manner than do the structures in the
’936 patent. Accordingly, the district court properly concluded that Porta does not
literally infringe the asserted claims of the ’936 patent.
Action also challenges the district court’s grant of summary judgment of non-
infringement under the doctrine of equivalents. For means-plus-function limitations, the
doctrine of equivalents reduces to whether or not there is an “insubstantial difference”
between the limitation’s corresponding structure and any after-invented technology
found in the accused device. Ishida, 221 F.3d at 1317. Where, as here, the
equivalence issue does not involve later-developed technologies, “a finding of non-
equivalence … preclude[s] a contrary finding under the doctrine of equivalents.”
04-1594, 05-1032 10
Chiuminatta, 145 F.3d at 1311. Thus, we affirm the district court’s grant of summary
judgment of non-infringement under the doctrine of equivalents as a matter of law.
2. Cross appeal
Porta argues that the district court erred in granting summary judgment against
its false advertising and trade disparagement counterclaims by concluding that Porta
had failed to present sufficient evidence of damages to create a genuine issue of
material fact as to each count. Specifically, Porta contends that it was forced to expend
significant personnel hours addressing inquiries from potential customers resulting from
Action’s statements, was forced to prepare and distribute safety manuals, and had to
obtain ISO 9001-2002 certification for its products. Porta further argues that the district
court improperly granted summary judgment on its trade disparagement claim because
Action’s statements amounted to libel per se, and therefore does not require proof of
special damages.
Action responds that the district court properly granted summary judgment
because Porta failed to show harm or causation. Action further contends a claim for
libel per se is precluded because its statements were directed at the quality of Porta’s
products and did not impugn the character of Scholem, the business owner.
At the summary judgment proceeding, Porta presented a declaration from
Scholem to support its contention that Porta had to expend significant personnel
resources. The district court, observing that the deposition testimony of Scholem
contradicted the statements in his declaration, found that the only efforts described by
Scholem were a phone call or a letter, and Porta failed to provide any “information about
the resources it claims to have expended addressing inquiries.” Counterclaim Order at
04-1594, 05-1032 11
3. The district court further found that Porta failed to identify any projects on which it
was not invited to bid. Id. at 4. The district court also noted that Porta failed to
contradict evidence that Action’s statements had no effect on their purchasing
decisions. Finally, the district court observed that obtaining ISO certification would be a
matter of common practice in the field of live-fire shoot houses. See id. at 6. We agree
with the district court that the cumulative evidence submitted by Porta is insufficient to
permit an inference of harm, even when viewed in a light most favorable to Porta. Thus,
the district court did not err in granting summary judgment against Porta’s claim for false
advertising.
Porta cites Rosenberg v. J.C. Penney Co., 86 P.2d 696 (Cal. 3d Dist. Ct. App.
1939), to support its contention that Action’s statements constitute libel per se. Porta’s
reliance on Rosenberg, however, is misplaced. In Rosenberg, the court concluded that
J.C. Penney Company’s disparaging remarks amounted to libel per se because “it [was]
clearly apparent that [the competitors] were accused of fraud and deception and unfair
dealing with their customers.” Id. at 702; see also Barnes-Hind, Inc. v. Allergan Pharm.,
Inc., 181 Cal. App. 3d 377, 386 (Cal. Ct. App. 6th 1986) (holding that statements that
did not impute to the business owner, in connection with the sale of goods, fraud,
dishonesty, or questionable business methods were not libel per se). In this case,
however, the district court correctly concluded that Action’s statements do not impugn
Porta’s reputation but rather address the quality of Porta’s products. For this reason,
plaintiff’s claim of libel per se must fail. Accordingly, we affirm the district court’s grant
of summary judgment against Porta’s claim of libel per se.
04-1594, 05-1032 12
III. CONCLUSION
For the foregoing reasons, the district court’s grant of summary judgment of non-
infringement is affirmed. We also affirm the district court’s grant of Action’s motion of
summary judgment against Porta’s claim for false advertising under the Lanham Act
and trade disparagement under California law.
04-1594, 05-1032 13