Error: Bad annotation destination
United States Court of Appeals for the Federal Circuit
04-1392
SENTRY PROTECTION PRODUCTS, INC.
and HERO PRODUCTS, INC.,
Plaintiffs-Appellants,
v.
EAGLE MANUFACTURING COMPANY,
Defendant-Appellee.
Lesley A. Weigand, Wegman, Hessler & Vanderburg, of Cleveland, Ohio, argued
for plaintiffs-appellants. With her on the brief were Bruce E. Peacock and Karl R.
Wetzel.
R. Eric Gaum, Hahn Loeser & Parks LLP, of Akron, Ohio, argued for defendant-
appellee. Of counsel was Edward F. Welsh, Armstrong, Kratz, Quintos, Hanson &
Brooks, LLP, of Pittsburgh, Pennsylvania.
Appealed from: United States District Court for the Northern District of Ohio
Judge Solomon Oliver, Jr.
United States Court of Appeals for the Federal Circuit
04-1392
SENTRY PROTECTION PRODUCTS, INC.
and HERO PRODUCTS, INC.,
Plaintiffs-Appellants,
v.
EAGLE MANUFACTURING COMPANY,
Defendant-Appellee.
__________________________
DECIDED: March 11, 2005
__________________________
Before LOURIE, SCHALL, and PROST, Circuit Judges.
PROST, Circuit Judge.
Sentry Protection Products, Inc. and Hero Products, Inc. (collectively, “Sentry”)
appeal from a decision of the United States District Court for the Northern District of
Ohio, Case No. 1:01-CV-2240 (Apr. 1, 2004), granting summary judgment of
noninfringement and invalidity of U.S. Patent No. 6,244,781 (“’781 patent”) to defendant
Eagle Manufacturing Co. (“Eagle”) and granting summary judgment to Eagle on
infringement of U.S. Patent No. 6,102,611 (“’611 patent”). Based on its determination
that no damages were available, the court held that Sentry’s claim for infringement of
the ’611 patent was moot and granted summary judgment of noninfringement of that
patent. With respect to claims 10 and 23 of the ’781 patent, Sentry’s appeal challenges
the district court’s claim construction, application of prosecution history estoppel, and
summary judgment ruling of invalidity. Sentry also contends that the district court erred
when it granted summary judgment of noninfringement of claim 10. Additionally, Sentry
appeals the district court’s summary judgment ruling on the ’611 patent.
We affirm the district court’s claim construction and summary judgment ruling
that claims 10 and 23 of the ’781 patent are invalid for anticipation. Because we
conclude that claim 10 is invalid, we decline to reach issues of infringement of that
claim, including prosecution history estoppel. We vacate the court’s grant of summary
judgment of noninfringement that was based upon the determination that no damages
are available for infringement of the ’611 patent and remand for further proceedings
related to that patent.
We do not consider the possibility of relying on the alternative ground of invalidity
to affirm the district court’s judgment on the ’611 patent. The district court did not
invalidate any claims of the ’611 patent, so a determination of invalidity on appeal would
lessen Sentry’s rights under the judgment. Eagle has not filed a cross-appeal that
would permit such a result. Moreover, we do not normally decide significant issues for
the first time on appeal. Sentry’s motion to strike the ’611 patent invalidity arguments is
therefore granted. Sentry’s request for us to take judicial notice of the patent
examiner’s comments in a related patent application is moot, because we do not rely on
the reference discussed in those comments.
I. BACKGROUND
The ’781 patent and the ’611 patent disclose barriers used for “protecting
structural columns and supports from damage resulting from impact from a moving
vehicle while preventing or reducing damage to that vehicle and its driver . . . such as in
04-1392 2
a warehouse[.]” ’781 patent, col. 1, ll. 10-14. The ’781 patent issued from a
continuation of the application that became the ’611 patent.
Sentry asserted claims 1-5, 8, 10-13, and 23-25 of the ’781 patent before the
district court, but its appeal only relates to claims 10 and 23. Claims 10 and 23 require
a plurality of “impact protection components,” each of which is a “single unitary part.”
Claims 10 and 23 read as follows:
10. An apparatus for protecting an elongated structural support from
impact, said apparatus comprising:
a plurality of elongated impact protection components configured to fit
together beside each other in installed positions in which said components
define transversely adjacent segments of an elongated impact protection
body that surrounds the structural support;
each of said components being a single unitary part having a peripheral
side wall with a rear portion configured to mate with the structural support
upon movement of the component transversely into its installed position;
each of said side walls surrounding a respective air chamber and further
having a front portion configured to deflect inwardly toward said rear
portion so as to reduce the volume of said respective air chamber upon
the impact of a vehicle or the like, and thereby to protect the structural
support from said impact.
...
23. An apparatus for protecting a structural support from impact, said
apparatus comprising:
an impact protection component in the form of a single unitary part having
a top, a base, and a peripheral side wall, said side wall having a rear
portion configured to mate with the structural support so as to seat said
component in an installed position adjoining the structural support;
said side wall surrounding an air chamber and further having a front
portion configured to deflect inwardly toward said rear portion so as to
reduce the volume of said air chamber upon the impact of a vehicle or the
like, and thereby to protect the structural support from said impact;
said rear portion of said side wall having flat faces that are located
opposite each other so as to mate with corresponding opposite flat faces
of the structural support, and being flexible so as to conform to the shape
04-1392 3
of the structural support at the opposite flat faces of the structural support
so as to fit said component closely in said installed position adjoining the
structural support;
said component being one of a plurality of elongated impact protection
components which are unitary parts configured to fit together beside each
other in installed positions in which said components define transversely
adjacent segments of an elongated impact protection body that surrounds
the structural support.1
’781 patent, col. 6, line 8 – col. 8 line 19. The patentees added the “single unitary part”
limitation during prosecution to overcome a rejection based on the Pease reference,
U.S. Patent No. 3,831,941 (“Pease”), which discloses a column protection device made
of an inner tube surrounded by a protective outer shell, useful (for example) as padding
for the lower part of a set of football goalposts. Based on the patentees’ amendment,
the court construed “single unitary part” to mean “that the impact protection component
is a single part, which is complete by itself without additional pieces.” The court held
that Eagle was entitled to summary judgment of noninfringement on all asserted claims
of the ’781 patent.2
Regarding invalidity, the court concluded that claims 10 and 23 were anticipated
by the Chase reference, U.S. Patent No. 5,497,723 (“Chase”). Chase discloses a “boat
bumper” that protects posts on a dock from impact by boats. The court interpreted
Chase as disclosing a cushion that consisted of a single unitary part, and that the other
components disclosed in Chase (a post, a crosspiece, and mounting brackets) were not
part of the impact protection component.
1
Although claim 23 employs slightly different terminology to describe the
plurality of impact protection components, neither party contends that “unitary parts” in
claim 23 should be interpreted differently from “single unitary part” in claim 10.
2
Sentry did not oppose Eagle’s Motion for Entry of Judgment of Non-
Infringement of Claims 23-25.
04-1392 4
Sentry also accused Eagle of infringing claims 3-12 of the ’611 patent. The
district court held, on summary judgment, that Sentry could not obtain any damages for
infringement of the ’611 patent, so the issue of infringement was moot. The court
determined that Sentry had not given legally sufficient notice of the ’611 patent to Eagle,
and so Eagle never received either actual or constructive notice of the ’611 patent while
it was allegedly infringing. In its opinion, the district court focused on Sentry’s letters of
August 4, 2000 and August 25, 2000. The August 4 letter notified Eagle that the ’611
patent was about to issue. Sentry does not appeal the court’s holding that the August 4
letter was insufficient to provide notice because the patent had not yet issued. The
patent did issue on August 15, 2000, prompting Sentry’s August 25 letter. On the same
day Eagle received this letter, it modified its product so that it would not infringe. The
district court held that Sentry’s affidavit stating that it marked its products with the
number of the ’611 patent in the period from August 15 to August 25 did not create a
genuine issue of material fact regarding notice.
II. DISCUSSION
Sentry filed a timely appeal to this court. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
A. Standard of review
Claim construction is reviewed de novo. Cybor Corp. v. FAS Tech., Inc., 138
F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). Anticipation is a question of fact. Gen.
Elec. Co. v. Nintendo Co., 179 F.3d 1350, 1353 (Fed. Cir. 1999). However, a grant of
summary judgment is reviewed de novo. Id. Summary judgment is appropriate when
no genuine issue of material fact exists and the moving party is entitled to judgment as
04-1392 5
a matter of law. 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., 145 F.3d 1303, 1307 (Fed. Cir. 1998).
B. Arguments
Sentry argues that the proper construction of the term “single unitary part” is “a
single or sole unitary or whole part.” According to Sentry, a part that is “unitary” can
include multiple pieces joined together to provide or act as one whole piece. Sentry
contends that its definition is consistent with the patentees’ response to the Pease
reference. In Sentry’s view, the amendment distinguished the claimed invention from
Pease’s assembly as a whole, which includes multiple components: an outer shell and
an inner tube. In contrast, Sentry maintains, the district court erroneously characterized
the Pease device as inseparable and mistakenly understood the “single unitary part”
amendment to refer to the “cushion” alone and not the entire assembly of Pease.
Sentry contends that the Chase prior art reference also discloses a multi-part
impact protection component, and so it is outside the scope of claims 10 and 23 of the
’781 patent. In addition to a cushion, Sentry points out, Chase has molding brackets
and a crosspiece, so it is a multi-part impact protection component, not a single-unitary-
part component as claimed in the ’781 patent. Additionally, says Sentry, Chase only
discloses a single component that wraps incompletely around the post, not a plurality of
components that together completely surround the post, as required by claims 10 and
23. Sentry therefore concludes that Chase does not anticipate claims 10 and 23.
04-1392 6
Sentry also argues that its marking of its patented products should have
prompted the district court to deny Eagle’s motion regarding the ’611 patent. Sentry
presented an affidavit alleging that it marked its products starting on August 15, 2000.
Sentry contends that the district court erred by failing to recognize that this evidence of
marking established the existence of a genuine issue of material fact.
In response, Eagle argues that the phrase “single unitary part” was added to
claim 10 to avoid the prior art, which discloses an impact protection component that is a
single unit made up of two parts. Therefore, Eagle says, the claim must be construed to
mean “that the impact protection component is a single part, which is complete by itself
without additional pieces.” According to Eagle, Sentry’s construction is illogical because
it would permit a “single unitary part” to be made up of several parts.
Eagle claims that summary judgment of invalidity was appropriate because the
components disclosed in the Chase reference are each a “single unitary part.” Eagle
does not contest Sentry’s marking argument on the merits, but contends that Sentry
waived that argument, either by not pleading constructive notice or by not coming
forward with its marking evidence in opposition to Eagle’s summary judgment motion or
in support of its own summary judgment motion.
C. Analysis
1. Claim Construction
Courts look to the prosecution history as intrinsic evidence of the meaning of
claim terms. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
The prosecution history modifies the scope of a claim term if “the patentee distinguished
that term from prior art on the basis of a particular embodiment, expressly disclaimed
04-1392 7
subject matter, or described a particular embodiment as important to the invention.”
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366-67 (Fed. Cir. 2002). The
district court in this case determined that Sentry “expressly disclaimed the use of
multiple components to overcome a rejection.”
The district court’s analysis of the prosecution history disclaimer is sound. Pease
has an impact protection component made of multiple parts: a soft inner tube and a
protective outer shell, as shown below in Figures 2 and 3. Both of these parts are
involved in impact protection; together, they form the impact protection component. By
amending their claims to include the limitation “single unitary part” and arguing that this
amendment “distinguishes the present invention from the multi-component impact
protection assembly disclosed by Pease[,]” the patentees gave up coverage of multipart
impact protection components. For this reason, we affirm the district court’s
interpretation of this term as meaning “that the impact protection component is a single
part, which is complete by itself without additional pieces.”
04-1392 8
This construction is correct even if, as Sentry asserts, the disclaimed Pease
impact protection component can be separable. Pease discloses both separable and
inseparable embodiments. For example, in the preferred embodiment, the shell and
tube are “glued together.” In another embodiment, they are connected by “snap
fasteners” and thus are separable. By distinguishing their invention from Pease, the
patentees disclaimed coverage of both separable and inseparable impact protection
components, so long as the components include multiple parts. The district court’s
construction accounts for this disclaimer.
Sentry’s quarrel seems to be with the way the court applied its construction. The
court held that Eagle’s device did not infringe because, “[l]ike Pease, it is comprised of
multiple components that are ‘secured together [and] not separable.’” As mentioned
supra, we have elected to dispose of this appeal without considering infringement
04-1392 9
issues. But, to the extent that this statement by the district court represents a corollary
to the court’s claim construction, the statement nonetheless reiterates the key point: that
impact protection components consisting of “multiple” parts are not covered. Properly,
the court’s overriding concern was that “the term single unitary part must be construed
to reflect the fact that the impact protection component is comprised of [only] one
piece.”
2. Invalidity
Applying this claim construction, the district court correctly granted summary
judgment of invalidity. Chase discloses a plurality of impact protection components that
surround a column, as well as all of the other limitations of claims 10 and 23 of the ’781
3
patent. The disclosure of Chase leaves no genuine issue of material fact that
contradicts the district court’s judgment of anticipation.
We agree with the district court’s interpretation of Chase as disclosing a “pair” of
impact protection components, not just one. The “connecting strip,” shown below as
reference numeral 64 in Figure 5, “act[s] as a hinge” that links the two impact protection
components together. The “front portion 60 and back portion 62” are not a single
component merely because this strip holds them together. They are two distinct, hollow
cushions. Thus, Chase has a “plurality” of impact protection components.
3
Chase was not before the examiner during the prosecution of the ’781
patent.
04-1392 10
Likewise, the district court correctly observed that the pair of impact protection
components in Chase “surround a post.” The small gap opposite the connecting strip in
Figure 5 does not preclude the assembly from surrounding the post, because
“surrounding” only implies that substantially all, not necessarily 100%, of the
circumference of something is enclosed. The gap, moreover, is closed by a narrow
“C-shaped closure member” when the assembly is in use (reference numeral 86 in
Figure 4, above). Accordingly, Chase discloses an “elongated impact protection body
that surrounds the structural support” as recited in claims 10 and 23 of the ’781 patent.
Finally, the two impact protection components in Chase are each a “single
unitary part,” as that term is used in the ’781 patent. Each of Chase’s impact protection
components consists of nothing more than a hollow cushion, made of a flexible material
such as polyethylene or polyurethane. There is no combination of shell and tube (as in
Pease) or of any other two or more pieces to form an impact protection component.
Rather, each such component in Chase is complete without additional parts and is
therefore a “single unitary part.” The “frame” and “mounting brackets” in Chase are not
04-1392 11
part of any impact protection component. These pieces do not provide impact
protection; they merely hold the impact protection components in place.
That Chase discloses the remaining limitations of claims 10 and 23 is not
disputed on appeal. Accordingly, we affirm the judgment that these two claims are
invalid.
3. Availability of Damages for the ’611 Patent
Before considering the ’611 patent marking issue on the merits, we first dispose
of Eagle’s claim that Sentry waived its arguments. First, Eagle contends that Sentry
waived its arguments by failing to present marking evidence in response to Eagle’s
summary judgment motion. (Eagle notes that Sentry did not present this evidence with
its own summary judgment motion, either.) Eagle, however, cites no binding authority
that would lead us to find waiver in this case, given that the district court considered the
marking evidence when Sentry submitted it with its motion to alter or amend the
judgment. Eagle’s primary case, Hinsdale v. City of Liberal, Kansas, is an unpublished
Tenth Circuit decision. 19 Fed. Appx. 749 (10th Cir. 2001). Its other authority, United
States v. Haynie, is a Seventh Circuit criminal case that is inapposite for the additional
reason that the waiving party did not raise his argument at all during trial, even in a
post-judgment motion. 179 F.3d 1048, 1050-51 (7th Cir. 1999).
Second, Eagle argues that Sentry’s failure to plead compliance with the marking
statute also constituted a waiver. Eagle cites Maxwell v. Baker for the proposition that a
patent plaintiff is required to plead constructive notice. See 86 F.3d 1098, 1111 (Fed.
Cir. 1996). That case, however, only makes the bare statement that the plaintiff “had
the burden of pleading and proving at trial that she complied with the statutory
04-1392 12
requirements.” Id. The Maxwell court ultimately found that the plaintiff not only pleaded
but proved such compliance. More relevant to the present case is the Supreme Court’s
statement, in reference to both actual notice and marking, that “the duty of alleging and
the burden of proving either of these facts is upon the plaintiff.” Dunlap v. Schofield,
152 U.S. 244, 248 (1894). Under the rule announced in Dunlap, Sentry’s pleading that
the “infringements have been willful and with full knowledge of the ’611, and ’781
patents” was sufficient. See id. at 249 (requiring a pleading equivalent to “with a
knowledge of the patent and of his infringement[]” and “holding the patentee to
allege . . . notice to the public or to the defendant, from which such knowledge must
necessarily be inferred” (internal quotation marks omitted)). Accordingly, Sentry did not
waive its marking argument by failing to plead notice.
Turning to the merits of the issue, the district court misapplied the constructive
notice rule with respect to the ’611 patent. In cases where a patent owner sells a
product embodying the invention, a patent owner may seek damages for infringement
occurring during a period in which the accused infringer had actual or constructive
notice of the asserted patent. See 35 U.S.C. § 287(a); Am. Med. Sys. v. Med. Eng’g
Corp., 6 F.3d 1523, 1536 (Fed. Cir. 1993). It is undisputed in this appeal that Eagle did
not infringe the ’611 patent once it had actual notice of that patent. However,
constructive notice is disputed. Constructive notice is provided “when the patentee
consistently mark[s] substantially all of its patented products[.]” Am. Med., 6 F.3d at
1538. Sentry produced evidence of such marking during the period of Eagle’s alleged
infringement. Specifically, Sentry came forth with an affidavit stating that its products
were marked, together with documents showing sales in that period. Our review of this
04-1392 13
evidence indicates that it is not so “conclusory” or “lacking in factual support” as to allow
us to affirm the grant of summary judgment. See Moore U.S.A., Inc. v. Standard
Register Co., 229 F.3d 1091, 1112 (Fed. Cir. 2000). Accordingly, the district court erred
by holding that Sentry’s marking evidence did not preclude summary judgment. Sentry
is entitled to an opportunity to prove constructive notice and corresponding entitlement
to damages for infringement of the ’611 patent. Our holding, naturally, renders the
issue of infringement of this patent not moot.
III. CONCLUSION
For the reasons stated above, we: affirm the district court’s claim construction
and grant of summary judgment of invalidity of claims 10 and 23 of the ’781 patent,
vacate the court’s grant of summary judgment of noninfringement of the ’611 patent,
and remand for further proceedings on that patent.
AFFIRM-IN-PART, VACATE-IN-PART AND REMAND-IN-PART
04-1392 14