Research Plastics, Inc. v. Federal Packaging Corp.

United States Court of Appeals for the Federal Circuit

04-1605

RESEARCH PLASTICS, INC.,

Plaintiff-Appellant,

v.

FEDERAL PACKAGING CORP.,

Defendant-Appellee.

Theodore W. Olds, Carlson, Gaskey & Olds, P.C., of Birmingham, Michigan,
argued for plaintiff-appellant. With him on the brief was Anthony P. Cho.

Richard W. Hoffmann, Warn, Burgess & Hoffmann, P.C., of Auburn Hills,
Michigan, argued for defendant-appellee.

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

Senior Judge Avern Cohn
 United States Court of Appeals for the Federal Circuit

04-1605

RESEARCH PLASTICS, INC.,

Plaintiff-Appellant,
v.

FEDERAL PACKAGING CORP.,

Defendant-Appellee.

________________________

DECIDED: August 18, 2005
________________________

Before NEWMAN, BRYSON, and GAJARSA, Circuit Judges.

GAJARSA, Circuit Judge.

Research Plastics, Inc. ("Research") appeals from the final judgment of the

United States District Court for the Eastern District of Michigan granting summary

judgment of non-infringement of United States Patent No. 5,628,433 (the "'433 patent")

to defendant Federal Packaging Corp. ("Federal").1 Research Plastics, Inc. v. Fed.

Packaging Corp., No. 98-CV-73544, Memorandum and Order on Infringement (May 13,

2003) ("Infringement Order"). Because we find that the district court erred in its

1
The district court also denied summary judgment with respect to United
States Patent No. 5,749,499 (the "'499 patent"). The parties stipulated to the dismissal
of all claims regarding the '499 patent, and thus those claims are not before this court.
construction of the claim term "rear end," we vacate and remand for further

consideration consistent with this opinion.

BACKGROUND

A. The Patents and Prosecution History

Frederick Binder is the inventor of the '433 patent, which he assigned to

Research, and which relates to caulking tubes.2 The '433 patent describes the

placement of ribs on the interior surface of a tube. The addition of these ribs permits air

to escape when a plunger is inserted into the bottom of a tube filled with fluent material

(such as caulk or another adhesive). When a tube lacking ribs is filled with fluent

material, residual air becomes trapped inside the tube. This is problematic because the

air prevents a tight seal from forming between the plunger and the material.

Consequently, when the trapped air is eventually expelled through the nozzle along with

the material extruded from the tube, the air causes the material to flow unevenly. The

trapped air may also cause the plunger to leak fluent material. The prior art solved this

problem by introducing what is known as an air tap or a bleed wire. A removable bleed

wire was placed between a plunger and a tube to create a temporary vent that allowed

the air to escape when the plunger was inserted. This solution proved sub-optimal

because it was "unduly complicated."

The '433 patent is comprised of two independent claims: claims 1 and 10.

Research asserted claim 10 of the '433 patent against Federal. Claim 10 reads:

A tube for receiving fluent material comprising:

2
For the sake of simplicity, the inventor and all assignees of the '433 patent
shall hereinafter be referred to as "Research."

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 a hollow tube body being generally cylindrical and extending from a rear
end to a nozzle end, a plurality of ribs extending radially inwardly from an
inner peripheral wall of said tube, said ribs extending radially inwardly for a
depth that is less than 0.5% of a diameter of said tube; and

a plunger having an outer peripheral surface closely matched to said inner
peripheral surface of said tube, such that when said plunger is received
within said tub [sic], air spaces are formed between said plunger and said
tube by said ribs, said ribs each occupying an area that is less than 0.5%
of the area of said tube, and said ribs extending to said rear end of said
hollow tube body.

'433 patent, col. 4, ll. 40-53 (emphases added). It is the construction of the underlined

claim term, "rear end," that is at issue in this appeal. Claim 1 also includes references

to the "rear end" of the tube. Claim 1 reads:

A tube for receiving a fluent material comprising:

a tube body being elongated and extending from a rear end to a forward
nozzle end;

a plunger member received within said tube body adjacent said rear end;
and

said plunger body having an outer peripheral surface closely matched to
an inner peripheral surface of said hollow tube body, air spaces being
formed between said outer peripheral surface of said plunger and said
inner peripheral surface of said tube body, said air spaces defined
adjacent said rear end of said tube body by air space defining members
extending to said rear end, said tube body having a diameter, said air
space defining members having a radial distance that is less than 1.0% of
said diameter of said tube, and each of said air space defining members
occupying an area that is less than 0.5% of the area of the interior of said
tube.

'433 patent, col. 4, ll. 40-53 (emphases added).

The specification uses the disputed claim term "rear end" in the following

manner:

In the prior art, fluent materials, such as caulking, adhesives, or other
materials, are typically stored in tubes that are generally cylindrical and

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 extend from a rear end to a front nozzle. A plunger is received within the
rear end and advanced by a gun to dispense the material from the nozzle.

'433 patent, col. 1, ll. 9-12 (emphases added). The description of the preferred

embodiment states that "a plunger (32) is received within the rear end (33) of the tube."

'433 patent, col. 2, ll. 46-47 (emphasis added). The patent indicates that Figure 2 in the

specification depicts this preferred embodiment. In Figure 2, the rear end, indicated by

the number 33, is marked as the rear edge of the tube.

The '433 patent was initially rejected as obvious over United States Patent

No. 4,852,772 ("Ennis patent"). The Ennis patent claims the use of ridges similar to the

ribs in the Research patent, except that the Ennis ridges are positioned near the nozzle

end of the tube. The Ennis patent teaches filling the tube through its nozzle, thus using

the ridges to burp the tube during filling.3 Filling commences with the plunger fully

depressed. The fluent material introduced through the nozzle pushes the plunger

rearward toward the open end of the tube. Because burping is accomplished at the

beginning of the filling process, negating the need for air passages after the initial

burping, the ridges in the Ennis tube extend back only part of the length of the tube.

In response to the rejection over Ennis, Research amended the claims by adding

the following language to claim 10: "said ribs each occupying an area that is less than

0.5% of the area of said tube, and said ribs extending to said rear end of said hollow

tube body." Claim 1 was similarly amended. In the written explanation of these

amendments, Research stated:

As agreed, the ENNIS patent only defines ribs formed near the nozzle end
of the tube. Applicant's invention includes members that define spaces,

3
The process of permitting trapped air to escape is sometimes referred to
as "burping the tube."

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 and in particular ribs, that extend to the rear end of the tube. In this way,
the air spaces are provided adjacent to the rear end of the tube such that
the air spaces are provided when the tube is full.

The examiner concluded that the new limitations distinguished the Research

invention from the teachings of the Ennis patent. The '433 patent issued on May 13,

1997.

B. The Accused Products

Federal manufactures and sells various plastic caulking tubes. Originally,

Federal made its tubes without ribs, relying instead upon the bleed wire technique for

burping the tube. Sometime prior to January 8, 1997, Federal produced samples of

caulking tubes with ribs. Federal subsequently produced and sold these tubes, which

are referred to in this appeal as the "old style" tubes.

The old style tubes consist of a cylindrical tube body with a nozzle attached to

the front. The rear edge of the tube's interior wall tapers toward the outer wall forming a

beveled edge. The exterior wall is longer than the interior wall, and so the diameter of

the tube widens towards the back edge. This tapered portion of the tube is referred to

as the chamfer angle, and helps to guide the plunger into the tube. In the old style tube,

ribs project from the inner wall of the tube body starting at the rearmost edge of the

tube's interior wall—the inner edge of the chamfer angle—and extending approximately

one fifth of the length of the tube.4 Federal ultimately manufactured over 10 million old

style tubes.

Federal subsequently modified the design of its tubes by shortening the ribs and

placing them further inside the tube. In contrast to the old style tube, the rearmost

4
The exact length of the ribs in the old style tube is not described and is
immaterial to the disposition of this case.

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points of the ribs on the modified tube are located some distance from the rear edge of

the tube's interior wall and the chamfer angle, but still in the rear half of the tube, well

away from the nozzle. Federal is currently producing and selling these tubes, referred

to in this appeal as the "new style" tubes.

C. The District Court Proceedings

On August 14, 1998, Research brought suit against Federal, alleging

infringement of its '433 and '499 patents. The district court held a Markman hearing and

issued a Memorandum and Order on Claim Construction ("Claim Construction Order"),

Research Plastics, Inc. v. Fed. Packaging Corp., No. 98-CV-73544 (Dec. 19, 2001), in

which it adopted Federal's proposed claim construction, stating: "'[E]nd' as used in the

patents, is constructed to mean a fixed point, or an edge on the tube. Thus, "rear end"

means the outermost edge of the tube and "nozzle end" means the point on the forward

edge of the tube body." Claim Construction Order, slip op. 12. The district court noted

that the language in claim 1 of the '433 patent implied a specific reference point instead

of an area or length and that the specification also implies a point on the tube, not an

area. The district court further noted that the diagrams depicting the element described

as the "rear end" point to the edge of the tube. The district court concluded that the end

referred to the edge of the tube as opposed to merely the rear portion of the tube.

Following the district court's claim construction, the parties filed cross motions for

summary judgment on theories of literal infringement and infringement by the doctrine of

equivalents. The district court held a hearing on these motions and examined the

claims in view of both the old style and the new style tubes. Based on its claim

construction, the district court granted Federal summary judgment of non-infringement

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of the '433 patent. In so doing, the district court held that no reasonable jury could find

that the ribs of either accused product extend to the rear edge of the tube. The district

court further determined that Research was barred from establishing infringement under

the doctrine of equivalents by prosecution history estoppel. Research appeals these

judgments to this court.

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

A. Standard of Review

This court reviews grants of summary judgment de novo. Syntex (U.S.A.) LLC v.

Apotex, Inc., 407 F.3d 1371, 1377 (Fed. Cir. 2005). Summary judgment should be

granted when no genuine issues of material fact exist, and the moving party is entitled

to judgment as a matter of law. Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 247-48 (1986). Determining patent infringement is a two-step process:

(1) the court must interpret the claim, and then (2) it must compare the allegedly

infringing device against the properly construed claim. See Cybor Corp. v. FAS Techs.,

Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). The first step, claim construction,

is a matter of law and is thus reviewed de novo. Id. at 1456. The second step usually

presents a factual question that we review for clear error. Bai v. L & L Wings, Inc., 160

F.3d 1350, 1353 (Fed. Cir. 1998). However, where the factual inferences are material

to the grant of a summary judgment, we review them to ascertain whether there is a

genuine issue of material fact. Lemelson v. TRW, Inc., 760 F.2d 1254, 1260 (Fed. Cir.

1985). Whether prosecution history estoppel acts as a limit on the doctrine of

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equivalents is a question of law, which we review de novo. Rhodia Chimie v. PPG

Indus., 402 F.3d 1371, 1376 (Fed. Cir. 2005).

B. Claim Construction

Claim construction begins with the language of the claims. Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The words of a claim are

generally to be accorded their "ordinary and customary meaning," id. at 1582, which is

"the meaning that term would have to a person of ordinary skill in the art in question at

the time of invention," Phillips v. AWH Corp., Nos. 03-1269, -1286, 2005 U.S. App.

LEXIS 13954, at *22 (Fed. Cir. July 12, 2005) (en banc). It is presumed that the person

of ordinary skill in the art read the claim in the context of the entire patent, including the

specification, not confining his understanding to the claim at issue. Id. at *24; see also

V-Formation, Inc. v. Bennetton Group SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005)

(noting that the intrinsic record "usually provides the technological and temporal context

to enable the court to ascertain the meaning of the claim to one of ordinary skill in the

art at the time of the invention"). Further, claim terms are presumed to be used

consistently throughout the patent, such that the usage of a term in one claim can often

illuminate the meaning of the same term in other claims. Phillips, 2005 U.S. App. LEXIS

13954, at *28; see also Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir.

2001).

As the court summarized in Renishaw,

[u]ltimately, the interpretation to be given a term can only be determined
and confirmed with a full understanding of what the inventors actually
invented and intended to envelop with the claim. The construction that
stays true to the claim language and most naturally aligns with the patent's
description of the invention will be, in the end, the correct construction.

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Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)

(citations omitted). In furtherance of this full understanding, an invention must be

construed "with reference to the file wrapper of prosecution history in the Patent Office."

Graham v. John Deere Co., 338 U.S. 1, 33 (1996); Phillips, 2005 U.S. App. LEXIS

13954, at *35. "The purpose of consulting the prosecution history in construing a claim

is to 'exclude any interpretation that was disclaimed during prosecution.'" Rhodia

Chimie, 402 F.3d at 1384 (quoting ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d

1576, 1580 (Fed. Cir. 1988)). Thus, the prosecution history can reveal instances where

the inventor limited the invention in the course of prosecution and thus narrowed the

scope of the claim. Phillips, 2005 U.S. App. LEXIS 13954, at *36.

The district court defined the claim term "rear end" as referring to the "outermost

edge of the tube." Claim Construction Order, slip op. 12. Although the district court

properly construed the term "rear end" to mean the point forming the edge of the tube

body rather than merely the rearward portion of the tube, it erred to the extent that it

treated the chamfer angle as being inside the rear end of the tube. Properly construed,

the claim term "rear end" refers to the entire rear edge of the tube, including the point at

the rear end on the inside of the tube, the point on the rear end at the outside of the

tube, and the area in between. Specifically, the "rear end" does not just refer to the

point on the outside of the rear edge. The district court erred by selecting the outer

edge as the end point of the tube, thereby impermissibly limiting the scope of the claim.

Both the inside and the outside edges are part of the rear end of the tube.

The language of the claims supports this construction. Claim 10 of the '433

patent uses the term twice. It claims "[a] hollow tube body being generally cylindrical

04-1605 9
and extending from a rear end to a nozzle end," '433 patent, col. 4, ll. 41-42 (emphasis

added), and "ribs extending to said rear end of said hollow tube body," id., col. 4, ll. 52-

53 (emphasis added). In the context of the claim, "rear end" clearly refers to a point

defined by the rear edge, such that the tube body extends between two points: the rear

end and the nozzle end. Research argues that the claim term "rear end" should be

construed as the rear portion of the tube. However, it would be illogical to describe a

tube that extends to two regions in the manner that Research suggests, since this would

leave the extension of the tube ill-defined. Claim 10 also describes the ribs as

"extending to said rear end," which clearly indicates that the rear end is conceived of as

a point capable of being attained, and not as a region.

Claim 1 of the '433 patent uses the term "rear end" in the same manner as claim

10. It claims "[a] tube body being elongated and extending from a rear end to a forward

nozzle end." '433 patent, col. 3, ll. 66-67 (emphasis added). Claim 1 describes the

positioning of air spaces "adjacent said rear end of said tube body by air space defining

members extending to said rear end." '433 patent, col. 4, ll. 7-9 (emphases added).

The written description further supports construing "rear end" as referring to the

rear edge of the tube. The written description uses the term "rear end" in a manner

consistent with its usage in the claim terms. It discusses prior art tubes as being

"generally cylindrical and extend[ing] from a rear end to a front nozzle." '433 patent, col.

1, ll.11-12. Research contends that the written description's statement that the "plunger

is received within the rear end" precludes defining the rear end as a point. '433 patent,

col.1, l.12. However, this argument is not persuasive. It is not incongruous to treat the

use of "rear end" in this portion of the written description as meaning a point on the

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tube, particularly in light of the designation of the "rear end" as the end point of the tube

in the preferred embodiment. Figure 2, shown below, depicts the preferred

embodiment. The written description specifies that the rear edge, labeled 33, is the

"rear end" of the tube.

The prosecution history also provides substantial support for construing the claim

term "rear end" as the point defined by the rear edge of the tube. During prosecution,

the '433 patent was rejected as anticipated by the Ennis patent. The Ennis patent

claimed a tube with channels or ribs located at the nozzle end of the tube. In

overcoming the examiner's rejection, Research distinguished Ennis by claiming ribs that

"extend to the rear end of the tube." In thus amending its claim, Research affirmatively

disclaimed, at a minimum, tubes with channels immediately adjacent to the nozzle.

However, Research further stated to the patent examiner that the amendments made to

overcome the rejection over Ennis limited the claims to cover tubes in which "the air

spaces are provided adjacent the rear end of the tube such that the air spaces are

provided when the tube is full." If the term "rear end" was construed as an undefined

area, and the ribs were positioned adjacent to this area, further inside the tube, air

spaces would not be provided when the tube was full. Rather, spaces would only be

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provided when the tube was partially full. Such a construction would not avoid the prior

art that Research distinguished. Positioning ribs of unlimited length adjacent to a rear

region could feasibly entail placing the ribs in the forward portion of the tube, near the

nozzle. Such a construction would negate the clear disclaimer of claim scope made

during the prosecution of the '433 patent. See Phillips, 2005 U.S. App. LEXIS 13954, at

*36; Rhodia Chimie, 402 F.3d at 1384. Consequently, Research's amendment must be

seen as an affirmative disclaimer of ribs not extending to the rear edge of the tube.

For the foregoing reasons, we construe the claim term "rear end" to mean "a

reference point defined by the rear edge of the tube."

C. Literal Infringement

Literal infringement requires that the accused device embody each limitation of

the asserted claim. Southwall Tech., Inc. v. Cardinal I.G. Co., 54 F.3d 1570, 1575 (Fed.

Cir. 1995). The absence of any limitation of the asserted claim defeats literal

infringement. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).

Although claim 10 of the '433 patent contains a number of limitations, the sole limitation

at issue is the location of the ribs. Namely, the parties dispute whether the ribs in the

accused products extend to the rear end of the tube bodies.

Since the district court erred in construing the claim term "rear end," the district

court's determination of infringement must be reconsidered. Playtex Prods. v. P&G, 400

F.3d 901, 910 (Fed. Cir. 2005). As a matter of claim construction, the district court held

that the "rear end" meant the edge of the tube beyond the chamfer area, in this case the

outer edge of the tube, and that "the chamfer angle is necessarily included in the tube

body because it is inside of the rear end." Infringement Order, slip. op. 13. Because

04-1605 12
the ribs in the old style tube did not extend across the chamfer angle region, the district

court found that a necessary limitation was absent from the old style tube and,

consequently, that there was no infringement. Since we construe the claim term "rear

end" to mean the point defined by the rear edge of the tube, not just a point on the

outside rear edge or the inside rear edge of the chamfer angle, the district court's

analysis no longer holds. The district court on remand will need to apply the revised

claim construction outlined in this opinion to both the old style and new style tubes to

determine infringement.

D. Infringement Under the Doctrine of Equivalents

While the district court's claim construction error presumptively affects the

disposition of Research's doctrine of equivalents infringement analysis, we note that the

district court correctly concluded that Research is precluded from expanding the scope

of the '433 patent to cover equivalents of the location of the ribs under the Festo

doctrine.

According to the Supreme Court, "a narrowing amendment made to satisfy any

requirement of the Patent Act may give rise to an estoppel." Festo Corp. v. Shoketsu

Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002). A narrowing amendment

made to avoid prior art creates a presumption that the patentee surrendered the territory

between the original claims and the amended claims. Id. at 741. The patentee may

rebut that presumption by showing that the alleged equivalent (1) could not reasonably

have been described at the time the amendment was made, (2) was tangential to the

purpose of the amendment, or (3) was not foreseeable (and thus not claimable) at the

time of the amendment. Id. at 740-41. This court has acknowledged and applied these

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criteria to rebut the presumption. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki

Co., 344 F.3d 1359 (Fed. Cir. 2003) (en banc), on remand from 535 U.S. 722 (2002).

Research amended the claims of the '433 patent in response to the patent

examiner's rejection based on the placement of the ribs within the tube. Research was

forced to disclaim ribs which were positioned adjacent to the nozzle end of the tube. In

so doing, Research chose to position the ribs of its tube "extending to said rear end,"

thereby narrowing the scope of its claim.

None of the rebutting criteria apply in this case. First, Research could have

claimed ribs placed in the region between the nozzle end and the rear end of the tube,

so long as it disclaimed the location adjacent to the nozzle. There would have been no

difficulty in describing ribs placed rearward from the nozzle end, yet not extending

completely to the rear edge. Id. at 1370 (holding that the category of exceptions to the

Festo presumption based on an inability to describe the equivalent at the time of

amendment is a narrow one). Second, contrary to Research's argument, the alleged

equivalent--ribs extending to a point short of the rear edge of the tube--is not tangential

to the purpose of the amendment, because the purpose of the amendment was to avoid

rejection based on rib placement. Id. at 1369 (holding that tangentialness depends on

the patentee's objectively apparent reason for the amendment). Finally, it was

foreseeable at the time of issuance of the patent that rib placement was a point of

differentiation, as evidenced by Research's distinguishing the invention of the '433

patent from Ennis on those grounds. Id. (holding that equivalents known in the prior art

at the time of amendment are certainly foreseeable). Because Research has not

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rebutted the presumption, it is precluded from asserting infringement of the rib

placement limitation of the '433 patent under the doctrine of equivalents.

CONCLUSION

Because the district court erred in construing "rear end" to mean the outermost

point of the rear edge of the tube, we vacate and remand the summary judgment of

non-infringement of the old style and new style tubes for further adjudication consistent

with this opinion. Accordingly, the judgment of the district court is

VACATED and REMANDED.

COSTS

Each party shall bear its own costs.

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