Welker Bearing Co. v. PhD, Inc.

United States Court of Appeals for the Federal Circuit

2008-1169

WELKER BEARING COMPANY,

Plaintiff-Appellant,

v.

PHD, INCORPORATED,

Defendant-Appellee.

Jeffrey A. Sadowski, Howard & Howard Attorneys, P.C., of Bloomfield Hills,
Michigan, argued for plaintiff-appellant. With him on the brief were Brad A. Rayle and
Melanie T. Frazier.

D. Randall Brown, Barnes & Thornburg LLP, of Fort Wayne, Indiana, argued for
defendant-appellee. With him on the brief were Dawn R. Rosemond and Gregory S.
Cooper.

Appealed from: United States District Court for the Eastern District of Michigan

Judge Gerald E. Rosen
United States Court of Appeals for the Federal Circuit

2008-1169

WELKER BEARING COMPANY,

Plaintiff-Appellant,
v.

PHD, INCORPORATED,

Defendant-Appellee.

On appeal from the United States District Court for the Eastern District of Michigan in
Case No. 06-CV-13345, Judge Gerald E. Rosen
___________________________

DECIDED: December 15, 2008
___________________________

Before RADER, SCHALL, and PROST, Circuit Judges.

RADER, Circuit Judge.

The United States District Court for the Eastern District of Virginia granted

summary judgment of noninfringement of Welker Bearing Co.’s U.S. Patent Nos.

6,786,478 (“’478 patent”) and 6,913,254 (“’254 patent”) in favor of PHD, Inc. Welker

Bearing Co. v. PHD, Inc., 528 F. Supp. 2d 683 (E.D. Mich. 2007) (“SJ Opinion”).

Because the district court correctly construed the critical claim element of the ’254

patent as a means-plus-function limitation subject to 35 U.S.C. § 112 ¶ 6, and correctly

found that PHD had not infringed the ’478 patent after the issuance of that patent, this

court affirms the district court’s grant of summary judgment.

I

Welker Bearing’s ’478 and ’254 patents, which share identical specifications,

claim pin clamps that hold a work piece securely in place during welding and other
manufacturing processes. The disclosed pin clamps feature a bullet-shaped locating

pin (32 in Fig. 1A below) that is inserted into a hole in a work piece. Fig. 1B below

shows the disclosed pin clamp holding a work piece in place. An actuator (52 in Fig.

1A) propels the locating pin through the hole in the work piece. As the locating pin

slides through the work piece’s hole, clamping fingers (60 in Fig. 1B) emerge out of the

pin clamp. These fingers hold the work piece firmly in place against an annular ring that

sits below the locating pin. The actuator provides a clamping force between the fingers

and the work piece.

On July 9, 2003 Welker Bearing filed the application that later issued as the ’478

patent on September 7, 2004. Claim 1 of the ’478 patent reads:

A locating and clamping assembly comprising:

a body defining an internal cavity and an opening from said cavity to the
exterior of said body;

a locating pin disposed in said cavity and extending along an axis A out of
said opening to a distal end;

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 an actuator for moving said locating pin rectilinearly along said axis A into
and out of said opening;

at least one finger supported by said locating pin adjacent said distal end
for movement radially into and out of said locating pin transversely to
said axis A of said locating pin;

said assembly characterized by a mechanism for rotating in response to
said rectilinear movement of said locating pin for moving said finger
radially.

’478 patent col.7 l.60-col.8 l.7 (emphasis added). This claim explicitly requires a

rotational movement mechanism for extending and retracting the fingers. However, the

PTO allowed the claims of the ’478 patent without any focus on rotational movement as

a required limitation for allowance over the prior art. Welker Bearing took the PTO’s

lack of comment on the rotational characteristic as an invitation to file a continuation

application with broader claims. These later claims recite a finger mechanism that does

not explicitly include rotational movement. This ’254 patent issued on July 5, 2005.

Claim 1 of the ’254 patent reads:

A locating and clamping assembly comprising:

a body defining an internal cavity and an opening from said cavity to the
exterior of said body;

a locating pin disposed in said cavity and extending along an axis A out of
said opening to a distal end;

an actuator for moving said locating pin rectilinearly along said axis A into
and out of said opening;

at least one finger supported by said locating pin adjacent said distal end;

said assembly characterized by a mechanism for moving said finger along
a straight line into and out of said locating pin perpendicular to said
axis A in response to said rectilinear movement of said locating pin.

’254 patent col.8 ll.12-25 (emphasis added).

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 II

Before the district court, Welker Bearing accused two PHD products, the “Clamp

I” and “Clamp II” devices, of infringement. The chronology of PHD’s development of its

Clamp I and II devices is relevant to this appeal. In early 2004, PHD engaged in

discussions with General Motors (“GM”) regarding the design of a new pin clamp for its

assembly lines. At one meeting, PHD officials met with GM officials in a GM room

where one of Welker Bearing’s pin clamps was on display. The parties dispute whether

PHD saw the internal workings of Welker Bearing’s clamp at that time. Later, PHD

developed prototypes of its Clamp I device, which uses a rotational mechanism to move

clamping fingers into and out of the pin clamp.

In October 2004, shortly after the September 7, 2004 issuance of the ’478 patent,

Welker Bearing learned from GM that PHD had developed the Clamp I device. Soon

thereafter, Welker Bearing notified PHD in writing that it believed Clamp I infringed the

’478 patent. Officials from the two companies met to discuss the dispute in November

2004. PHD asked for a license to sell Clamp I. Welker Bearing refused. After this

meeting, PHD developed a modified design, Clamp II, which lacks a rotating central

post for moving clamping fingers in and out of the locating pin.

The ’254 patent, without explicit language about rotational finger movement,

issued on July 5, 2005. Welker Bearing filed suit against PHD on July 25, 2006,

asserting infringement of both the ’478 and ’254 patents. Before the district court,

Welker Bearing conceded that Clamp II does not infringe the ’478 patent because it

lacks a rotational mechanism for clamping fingers. Thus, the trial court limited its inquiry

2008-1169 4
to Clamp I’s possible infringement of the ’478 patent and Clamp II's possible

infringement of the ’254 patent.

With regard to the ’478 patent, the district court determined that the record did

not show that PHD made, used, sold, or offered for sale the Clamp I device at any time

after issuance of the patent. SJ Opinion at 706-07. Thus, it awarded summary

judgment of noninfringement to PHD on the ’478 patent. Id. at 709. With regard to the

’254 patent, the district court construed claim 1’s “mechanism for moving said finger” as

a means-plus-function limitation. As a means-plus-function claim element, this limitation

thus required a corresponding structure in the specification for its broad functional

language. The only structure for this mechanism was the rotating central post identified

in Column 6 of the written description. Id. at 699. Because PHD’s Clamp II device

lacks such a rotating central post, the district court granted summary judgment of

noninfringement of the ’254 patent. Id. at 705-06. Welker Bearing now appeals those

rulings. This court has jurisdiction under 28 U.S.C. § 1295.

III

This court reviews a district court’s grant of summary judgment without

deference. Conroy v. Reebok Int’l, Ltd, 14 F.3d 1570, 1575 (Fed. Cir. 1994). Summary

judgment is appropriate only “if the pleadings, the discovery and disclosure materials on

file, and any affidavits show that there is no genuine issue as to any material fact and

that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). In

reviewing a summary judgment ruling, this court draws all reasonable inferences in

favor of the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).

2008-1169 5
 “[The patentee] may of course obtain damages only for acts of infringement after

the issuance of the [] patent . . . .” Hoover Group, Inc. v. Custom Metalcraft, Inc., 66

F.3d 299, 304 (Fed. Cir. 1995). “Mere possession of a product which becomes

covered by a subsequently issued patent does not constitute an infringement of that

patent until the product is used, sold, or offered for sale in the United States during the

term of the patent.” Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1366 (Fed.

Cir. 1998).

The record does not contain any evidence that PHD engaged in any activity that

infringed the ’478 patent after September 7, 2004 (the day the ’478 patent issued).

Instead the record shows that PHD only created around ten prototype units of the

Clamp I device. Although PHD provided GM one of these sample units for assessment

some time in late 2003 or early 2004, that prototype never entered production or

commercial use. The record is also devoid of any evidence that PHD ever sold any

units to GM at any time.

Welker Bearing’s only theory for infringement of the ’478 patent was that “[PHD]

had an affirmative duty at the point in time the patent issued to take the product off the

market and they didn’t do that.” Summ. J. Tr. 59:3-5, Nov. 29, 2007. The record,

however, presents no admissible evidence to show that PHD continued to offer its

product for sale (to the extent it ever was for sale) beyond September 7, 2004.

Moreover, PHD did not have any burden to prove it retracted any putative offer for sale.

Rather the burden remains with the patentee to prove infringement, not on the

defendant to disprove it. In any event, this court observes that the district court properly

concluded, “Defendant’s flat denial, backed by evidence, of any commercial activity

2008-1169 6
after September 7, 2004 stands uncontradicted by anything in the record.” SJ Opinion

at 708. For that reason, this court holds that the district court did not err in granting

summary judgment of noninfringement of the ’478 patent.

IV

The district court construed the “mechanism for moving said finger” limitation in

claim 1 of the ’254 patent as a means-plus-function limitation subject to 35 U.S.C. § 112

¶ 6. The district court’s claim construction is a question of law reviewed without

deference. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998)

(en banc); see also Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354,

1358 (Fed. Cir. 2004) (“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 . . . .”).

A

This court has consistently held that “[m]eans-plus-function claiming applies only

to purely functional limitations that do not provide the structure that performs the recited

function.” Phillips v. AWH Corp., 415 F.3d at 1311 (Fed. Cir. 2005). Further, a

patentee’s use of the word “means” in a claim limitation creates a presumption that 35

U.S.C. § 112 paragraph 6 applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259

(Fed. Cir. 2008).

In this instance, the ’254 patent’s claim language does not include the word

“means,” but instead the similar word “mechanism.” This court has had several prior

occasions to consider the applicability of means-plus-function treatment in the context of

the claim term “mechanism.” In Massachusetts Institute Of Technology v. Abacus

2008-1169 7
Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (“MIT”), this court considered the

applicability of means-plus-function treatment to the term “colorant selection

mechanism.” This court noted that “[t]he generic terms ‘mechanism,’ ‘means,’ ‘element,’

and ‘device,’ typically do not connote sufficiently definite structure [to avoid means-plus-

function treatment] . . . The term ‘mechanism’ standing alone connotes no more

structure than the term ‘means.’” Id. (emphasis added). Although “[c]laim language that

further defines a generic term like ‘mechanism’ can sometimes add sufficient structure

to avoid 112 ¶ 6,” the adjectival modifier “colorant selection” was not defined in the

specification and did not carry any generally understood structural meaning in the art.

Id. Thus, this court read “colorant selection mechanism” as invoking treatment as a

functional claim because it did not contain sufficient structure. Id.

By contrast, in Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir.

1996), this court held that paragraph 6 did not apply to the term “detent mechanism,”

because “the noun '[d]etent' denotes a type of device with a generally understood

meaning in the mechanical arts, even though the definitions are expressed in functional

terms.” Id. at 1583. This court examined several definitions of “detent,” such as “[a]

catch or checking device, the removal of which allows machinery to work such as the

detent which regulates the striking of a clock.” Id. Because these definitions connoted

adequate structure that was reasonably well understood in the art, this court concluded

that “detent mechanism” was not a mere functional placeholder. Id.

This court must assess the meaning of “mechanism for moving said finger” in

light of this case law. In that context, the “mechanism for moving said finger” language

includes even less structural context than the “colorant selection mechanism” in MIT.

2008-1169 8
No adjective endows the claimed “mechanism” with a physical or structural component.

Further, claim 1 provides no structural context for determining the characteristics of the

“mechanism” other than to describe its function. Thus, the unadorned term

“mechanism” 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.’” Lighting World,

382 F.3d at 1360. Unlike the “detent mechanism” in Greenberg which had a known

structural meaning, one of skill in the art would have no recourse but to turn to the ’254

patent’s specification to derive a structural connotation for the generically claimed

“mechanism for moving said finger . . . .”

The applicant for the ’254 patent could have supplied structural context to claim 1

in any number of ways. If claim 1 of the ’254 patent had recited, e.g., a “finger

displacement mechanism,” a “lateral projection/retraction mechanism,” or even a

“clamping finger actuator,” this court could have inquired beyond the vague term

“mechanism” to discern the understanding of one of skill in the art. If that artisan would

have understood such language to include a structural component, this court’s analysis

may well have turned out differently. Instead the applicant chose to express this claim

element as “a means or step for performing a specified function without the recital of

structure, material, or acts in support thereof.” 35 U.S.C. § 112 ¶ 6. Therefore, this

court must agree with the district court, which properly applied means-plus-function

treatment to this term.

B

Because “mechanism for moving said finger” is a means-plus-function limitation,

this court must next examine the trial court's identification of “the corresponding

2008-1169 9
structure, material, or acts described in the specification and equivalents thereof.” 35

U.S.C. § 112 ¶ 6. In doing so, “a court may not import functional limitations that are not

recited in the claim, or structural limitations from the written description that are

unnecessary to perform the claimed function.” Wenger Mfg., Inc. v. Coating Mach.

Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001).

The district court adopted PHD’s proffered construction of “mechanism for

moving”:

a central post having two helical cam slots each receiving a cam follower fixed to
the clamp’s body; the central post moves linearly in concert with the locating pin
causing the cam followers to travel along the helical cam slots thereby rotating
the central post; two dowels extend axially from the top end of the rotating central
post, and offset from axis A; the finger setting [sic] on the end of the central post
and including a slot that receives one of the dowels; the rotating central post
moves the dowels along an arcuate path and along the finger’s slot causing the
finger to move radially at a right angle to the axis A in and out of the locating pin.

SJ Opinion at 698 (emphasis added). On appeal, Welker Bearing argues that this

construction is erroneous because the specification teaches that a “rotating central post”

is not necessary to accomplish the claimed function of “moving said finger along a

straight line into and out of said locating pin perpendicular to said axis A in response to

said rectilinear movement of said locating pin.”

The ’254 patent’s specification fully supports the district court’s analysis. The

specification repeatedly identifies a rotating central post as the disclosed structure for

performing the claimed function of “moving said finger . . . .” Referring to Figure 7

(displayed below), the specification states: “[a] mechanism 68, to be described in detail

below, rotates in response to the rectilinear movement of the locating pin 12 to move

the fingers radially.” ’254 patent col.5 l.66-col.6 l.2.

2008-1169 10
Figure 7 describes the rotation of the central post 70. The dowels 86 on that post

interlock into the finger slot 64. Thus, the post and dowels rotate to move the fingers

inward and outward. At all times, the specification unambiguously teaches that the

mechanism for moving the fingers requires a central post 70 rotating in response to an

actuator’s rectilinear movement. See id. at col.6 ll.10-11 (“The central post 70 rotates

in response to the rectilinear movement.”); id. at col.6 ll.11-13 (“The surface 76 of the

coupler plate 56 in contact with the central post 70 functions as a thrust bearing to

facilitate the rotational movement of the central post 70.”); id. at col.6 ll.13-16 (“The

central post 70 extends through and is independent from the piston 54 for separating

the rotational movement of the central post 70 from the rectilinear movement of the

locating pin 12.” ); id. at col.6 ll.26-27 (“A motion converter 84 converts the rotational

movement of the central post 70 into radial movement of the fingers 60.”); id. at col.6

ll.31-33 (“The dowels 86 are offset from the axis A for radially moving the fingers 60 in

response to rotational movement of the central post 70.”); id. at col.6 ll.37-38 (“The

rotational movement of the central post 70 moves the dowels 86 along an arcuate

2008-1169 11
 path.”); id. at col.6 ll.47-50 (“Referring to FIG. 2B, a pair of cams 90 and corresponding

cam followers 92 interconnect the central post 70 and the body 16 for rotating the

central post 70 in response to the rectilinear movement of the locating pin 12.”); id. at

col.6 ll.52-55 (“The pair of cams 90 and corresponding cam followers 92 stabilize the

central post 70 to allow the central post 70 to rotate smoothly within the cavity 18.”).

Nothing in the specification suggests any other structure for moving the claimed

fingers.

Other claim construction doctrines like claim differentiation, ordinary meaning,

and clear disavowal of claim scope do not compel a different construction. With regard

to claim differentiation, this court is aware that claim 1 of the ’478 patent recites a

rotating element, while claim 1 of the ’254 patent does not. This difference between

claims in different patents does not change the meaning of these means-plus-function

limitations. By statute, this court must follow the directive to construe these limitations

according to § 112 ¶ 6. Because both terms share the same specification with the

same structure corresponding to the claimed function, this court cannot give these

terms any different scope. This court finds no error in the district court’s identification

of corresponding structure, which includes a rotating central post.

C

As determined above, the district court properly held that PHD did not make, use,

sell, or offer for sale its Clamp I product after the issuance date of the ’478 patent. This

necessarily means that Clamp I cannot infringe the ’254 patent because that patent

issued almost ten months after the ’478 patent. Thus, the question of PHD’s

infringement of the ’254 patent is confined to infringement by the Clamp II device.

2008-1169 12
 Literal infringement of a claim limitation in means-plus-function format “requires

that the relevant structure in the accused device perform the identical function recited in

the claim and be identical or equivalent to the corresponding structure in the

specification.” Applied Med. Research Corp. v. United States Surgical Corp., 448 F.3d

1324, 1333 (Fed. Cir. 2006). In this case, construing “means for moving said finger” in

claim 1 of the ’254 patent as a means-plus-function element compels summary

judgment of noninfringement in favor of PHD. Welker Bearing effectively concedes this

point in its brief by arguing that “once claim 1 of the ’254 patent is construed as not

requiring any rotating mechanism, PHD’s Clamp II reads on claim 1 of the ’254 patent . .

. .” Reply Br. 21. Welker Bearing’s Rule 30(b)(6) designate made a similar admission

during discovery:

Q. Do you agree with me that if the mechanism for moving the finger that is
referenced in Claim 1 of the 254 patent is determined by the Court to include or
mean the rotating mechanism that you have described in the patent, that PHD’s
PLC Series II Clamp would not infringe the 254 patent?

A. Yes, if they read that, the body of 254.

Pavlik Dep. 119:20-120:4, Apr. 18, 2007.

The record shows that PHD’s Clamp II propels clamping fingers in and out of the

locating pin without any rotational movement. Instead Clamp II’s linear-moving

mechanism for finger movement and the claimed “mechanism for moving said finger”

with a rotating central post are “substantially different.” SJ Opinion at 704.

Welker Bearing’s argument that Clamp II might infringe under the doctrine of

equivalents is equally unavailing. Indeed this case does not present a case for

equivalents under the doctrine of equivalents at all. This case presents only the

question of structural equivalents under §112 ¶ 6. Structural equivalents and the

2008-1169 13
doctrine of equivalents are “closely related.” See, e.g., Chiuminatta Concrete Concepts,

Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998). They are related in

the sense that both § 112 ¶ 6 and the doctrine of equivalents apply “similar analyses of

insubstantiality of the differences” between a disclosed structure and an accused

infringing structure. Id. at 1310. However, an important difference between the two

inquiries “involves the timing of the separate analyses for an ‘insubstantial change.’” Al-

Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999). Namely, an

equivalent structure under § 112 ¶ 6 “must have been available at the time of the

issuance of the claim,” whereas the doctrine of equivalents can capture after-arising

“technology developed after the issuance of the patent.” Id.

The record demonstrates that PHD’s linear-moving mechanism for finger

movement was well known in the prior art and cannot be classified as after-arising

technology. SJ Opinion at 706. Thus, where, as here, a proposed equivalent has

arisen before patent issuance, “a § 112 ¶ 6 structural equivalents analysis applies and

any analysis for equivalent structure under the doctrine of equivalents collapses into the

§ 112 ¶ 6 analysis.” Al-Site, 174 F.3d at 1321 n.2. Under any analysis, Welker Bearing

cannot show equivalence between its disclosed mechanism and the Clamp II

mechanism. Indeed, Welker Bearing’s inventor and Rule 30(b)(6) designate testified

that he expressly contemplated linear moving alternatives such as those in Clamp II, but

rejected them in favor of a rotating central post because a rotational design provided

both economic and performance benefits. SJ Opinion at 705-06. The ’254 patent itself

states that a rotational mechanism for moving the fingers allows the device to work

“faster, more efficiently, more precisely, and more uniformly.” ’254 patent col.2 ll. 25-30.

2008-1169 14
As the district court aptly stated, “[t]his evidence of the distinct advantages purportedly

offered by a rotating central post undermines any claim of ‘insubstantial’ differences

between this structure and its linear-motion counterpart in Defendant’s Clamp II.” SJ

Opinion at 706. As part of the §112 ¶ 6 analysis, the district court’s structural

equivalents analysis is part of the literal meaning of the functional claim term. In any

event, this court affirms the district court’s grant of summary judgment of

noninfringement of the ’254 patent.

V

The district court properly interpreted the disputed claim limitation of the ’254

patent under the sixth paragraph of 35 U.S.C. § 112. The district court also properly

found no material issues of fact regarding whether PHD had committed infringing acts

after the issuance date of the ’478 patent. Accordingly, this court affirms the district

court’s grant of summary judgment.

AFFIRMED

COSTS

Each party shall bear its own costs.

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