Csp Technologies, Inc. v. Sud-Chemie Ag , 643 F. App'x 953 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CSP TECHNOLOGIES, INC.,
Plaintiff-Appellant
v.
SUD-CHEMIE AG, SUD-CHEMIE, INC., AIRSEC
S.A.S., CLARIANT PRODUKTE DEUTSCHLAND
GMBH, CLARIANT CORPORATION, CLARIANT
PRODUCTION (FRANCE) S.A.S.,
Defendants-Appellees
______________________
2015-1124
______________________
Appeal from the United States District Court for the
Southern District of Indiana in No. 4:11-cv-00029-RLY-
WGH, Judge Richard L. Young.
______________________
Decided: March 22, 2016
______________________
JAMES RICHARD NUTTAL, Steptoe & Johnson, LLP,
Chicago, IL, argued for plaintiff-appellant. Also repre-
sented by JOHN LLOYD ABRAMIC, THOMAS ARTHUR
RAMMER, II.
SEAN MICHAEL SULLIVAN, Lee Sullivan Shea & Smith
LLP, Chicago, IL, argued for defendants-appellees. Also
2 CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG
represented by JOHN DAN SMITH, III; PAUL H. BERGHOFF,
PAULA FRITSCH, McDonnell, Boehnen, Hulbert &
Berghoff, LLP, Chicago, IL.
______________________
Before REYNA, MAYER, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
This appeal arises from a patent-infringement action
CSP Technologies, Inc. (CSP) filed against Süd-Chemie
AG, Süd-Chemie, Inc., Airsec S.A.S., Clariant Produkte
Deutschland GMBH, Clariant Corporation, and Clariant
Production (France) S.A.S. (Süd Chemie). The district
court construed the claim term “an upper housing portion
of the container” in Süd Chemie’s favor, and Süd Chemie
sought summary judgment of non-infringement both
literally and by equivalents based on this construction.
The district court granted summary judgment. CSP
appeals the district court’s claim construction (and conse-
quently its summary judgment of non-infringement).
Additionally, even if we affirm the district court’s claim
construction, CSP appeals the grant of summary judg-
ment of non-infringement by equivalents. We affirm the
district court on both grounds.
BACKGROUND
CSP and Süd Chemie are competitors in the business
of watertight containers for packaging consumer goods.
CSP sued Süd Chemie for infringement of its U.S. Patent
No. 7,537,137 (the ’137 patent), which claims a particular
watertight container with an attached lid. Claim 1,
representative for our purposes, reads in relevant part:
A substantially moisture tight container and lid
assembly for storing and packaging moisture-
sensitive items comprising:
an assembly with a container and a lid,
CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG 3
a) the lid is attached by a hinge to
an upper housing portion of the
container, the lid has an outer pe-
riphery that extends over at least
a portion of the container, the lid
is provided with a skirt that ex-
tends downwardly therefrom,
b) the container has a container
base, and a sidewall extending
upwardly from the container base,
...
The ’137 patent’s specification describes two different
types of containers. First, it describes a one-piece contain-
er. This container is formed as a single piece, with a lid
attached by a hinge. It depicts this type of container in
Figure 10:
Second, the patent describes a two-piece container.
This container similarly has a lid attached by a hinge, but
the top portion of the container to which the lid attaches
is separable from the bottom portion of the container.
The specification explains that this two-piece container
design facilitates pre-loading the container’s contents: the
contents are first loaded into the container’s bottom piece,
and then the top piece is snap-fit onto the bottom piece
with the contents already inside. The patent’s Figure 6
shows this two-piece type of container:
4 CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG
The parties agree that Süd Chemie’s accused product
is a one-piece container, not a two-piece one. The only
question before us in this appeal is therefore whether a
one-piece container infringes the asserted claims, either
literally or under the doctrine of equivalents.
The only claim term relevant to the parties’ argu-
ments on appeal is the container’s “upper housing por-
tion.” Below, CSP proposed an ordinary-meaning
construction and Süd Chemie proposed the construction:
“an upper housing portion of the container that is sepa-
rate and distinct from the container base.”
CSP Techs., Inc. v. Süd-Chemie AG, 2013 U.S. Dist.
LEXIS 77441, *17 (S.D. Ind. June 3, 2013) (Claim-
Construction Order). The parties agree that their claim-
construction dispute on this term boils down to a single
issue: whether the term excludes one-piece containers
from the asserted claims’ scope. Under CSP’s ordinary-
meaning construction, the term refers generically to the
top portion of the container, whether or not it is separa-
ble, and the claims would literally encompass both one-
piece and two-piece containers. Under Süd Chemie’s
construction the term refers to a separable top piece of the
container, excluding one-piece containers from the claims’
literal reach.
CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG 5
The district court began its analysis of this term by
determining that the specification did not explicitly define
it. The court then turned to an extrinsic dictionary defini-
tion of the word “housing,” which defined it as “something
that covers or protects” something else. Claim-
Construction Order at *19 (quoting Merriam-Webster’s
Collegiate Dictionary, 603 (11th ed. 2006)). It found this
definition to support a construction where the “upper
housing portion” is a separate piece that “covers or pro-
tects” the container’s bottom piece. It then turned to the
claims themselves, noting that the relevant claim lan-
guage is divided into two subparts, labeled “a)” and “b).”
It found subpart a) to refer to the upper housing portion
and subpart b) to refer to the remainder of the container.
It therefore found this separation into subparts to imply a
physical separation between the upper housing portion
and the remainder of the container. Finally, it considered
the specification, which uses the term “upper housing
portion” consistently and exclusively in the context of the
disclosed two-piece embodiment. It inferred from this
consistent usage that the patentee intended the term to
reference the two-piece embodiment. The district court
therefore adopted Süd Chemie’s construction limiting the
term to a detachable part found only in the two-piece
embodiment. Id. at *20.
Concurrent with its claim-construction briefing Süd
Chemie had filed briefing requesting summary judgment
of non-infringement should the district court grant any of
its proposed constructions. The parties fully briefed this
summary-judgment motion before the claim-construction
order issued, and each party submitted a supplemental
brief after the order. CSP Techs., Inc. v. Süd-Chemie AG,
2014 U.S. Dist. LEXIS 14687, *8–*9 (S.D. Ind. Feb. 6,
2014). The district court considered this briefing and
granted Süd Chemie summary judgment of non-
infringement both literally and by equivalents. Id. at *18.
CSP appeals on two grounds. First, it takes issue with
6 CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG
the district court’s construction of “upper housing por-
tion,” maintaining that the term’s ordinary meaning
encompasses one-piece and two-piece containers. If we
agree with CSP on this first issue, we must also reverse
the district court’s summary-judgment order predicated
on this construction. Second, even if we affirm the district
court’s construction, CSP challenges its grant of summary
judgment of no infringement under the doctrine of equiva-
lents, arguing that the court improperly found its equiva-
lents arguments barred by the disclosure-dedication and
claim-vitiation doctrines.
DISCUSSION
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
We affirm the district court’s claim construction. We
also find that the district court appropriately applied the
disclosure-dedication doctrine to conclude that a two-piece
container cannot infringe under the doctrine of equiva-
lents. We therefore need not reach the district court’s
conclusion that claim vitiation additionally forecloses
infringement under the doctrine of equivalents.
I. Claim Construction
“[T]he ultimate issue of the proper construction of a
claim should be treated as a question of law.” Teva
Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839
(2015). “[W]hen the district court reviews only evidence
intrinsic to the patent (the patent claims and specifica-
tions, along with the patent’s prosecution history), the
judge’s determination will amount solely to a determina-
tion of law, and the Court of Appeals will review that
construction de novo.” Id. at 841. When the district court
must go beyond the intrinsic evidence and consider “ex-
trinsic evidence in order to understand, for example, the
background science or the meaning of a term in the rele-
vant art during the relevant time period,” our review of
these factual findings is for clear error. Id. We conclude
CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG 7
from our de novo review of the intrinsic record that the
patentee unambiguously defined the term at issue.
We begin our analysis with the intrinsic record. See
Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir.
2005) (en banc).
The district court correctly took the patentee’s deci-
sion to divide the relevant portions of its independent
claims into subparts labeled “a)” and “b)” to suggest an
intention to distinguish the structures claimed in the two
subparts. We have taken this approach in prior cases.
See Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d
1359, 1366 (Fed. Cir. 2015); Default Proof Credit Card
Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
1299–300 (Fed. Cir. 2005). We disagree, however, with
the district court on which structural elements these
subparts describe. Subpart a) (“the lid is attached by a
hinge to an upper housing portion of the container, the lid
has an outer periphery that extends over at least a por-
tion of the container, the lid is provided with a skirt that
extends downwardly therefrom”) consists of three inde-
pendent clauses spliced together with commas. The
subject of each clause is “the lid.” We therefore find this
subpart to refer to the lid. Subpart b) (“the container has
a container base, and a sidewall extending upwardly from
the container base”) describes the container. We find that
subpart b) addresses the container. This language im-
plies that the patent’s drafter viewed the lid (subpart a))
and container (subpart b)) as distinct. That implication,
however, does not inform our determination whether the
upper housing portion of the container is separable from
the rest of the container.
We next turn to the specification to determine wheth-
er the patentee explicitly or implicitly defined the claim
term at issue. We agree with the district court that the
specification consistently and exclusively uses the term
“upper housing” in the context of the two-piece embodi-
8 CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG
ment. See ’137 Patent at 2:23–31, 3:7–9, 4:7–22, Fig. 14.
The patentee’s repeated and consistent use of the term
“upper housing portion” to describe a separable part of a
two-piece container implicitly defines the term to limit it
to the two-piece embodiment. See, e.g., Virnetx, Inc. v.
Cisco Sys., Inc., 767 F.3d 1308, 1318 (Fed. Cir. 2014); ICU
Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1374–
75 (Fed. Cir. 2009). Likewise, the absence of this term in
any description of the one-piece embodiment reinforces
this implicit definition.
Beyond the claim language and the specification, the
intrinsic record also encompasses the patent’s prosecution
history. Süd Chemie notes that the ’137 patent issued
from a continuation-in-part application, and that this
continuation-in-part application added the term “upper
housing portion” in both the claims and the specification.
It also explains that during the prosecution of the applica-
tion that led to the ’137 patent, the patentee deleted the
term “upper housing portion” from the claims and later
added the term back in. It claims that these additions
and deletions support its proposed construction of the
term but points us to no context supporting this assertion.
We see nothing in the prosecution history to suggest that
these additions and deletions impart any meaning to the
term at issue.
We find that, because the specification consistently
and exclusively uses the term “upper housing portion” to
refer to two-piece containers, the intrinsic record unam-
biguously restricts the term to literally encompass only
two-piece embodiments. CSP argues that the district
court improperly found an extrinsic dictionary definition
to trump the intrinsic evidence in arriving at its claim
construction. We disagree with that characterization.
And even if the district court were to have erred by elevat-
ing the extrinsic record above the intrinsic, this error
would be harmless because the intrinsic record is con-
CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG 9
sistent with the conclusion the district court drew from
the challenged extrinsic evidence.
We therefore affirm the district court’s construction of
the term, which we view to appropriately limit it to liter-
ally encompass only the two-piece embodiment.
II. Infringement by Equivalents
CSP additionally challenges the district court’s sum-
mary judgment of non-infringement under the doctrine of
equivalents. The district court found CSP’s assertion of
infringement by equivalents to be barred by both the
disclosure-dedication and the claim-vitiation doctrines.
CSP asserts that each of these findings was erroneous.
When reviewing a grant of summary judgment, we
apply the regional circuit’s standard of review. JVC
Kenwood Corp. v. Nero, Inc., 797 F.3d 1039, 1041 (Fed.
Cir. 2015) (citing Lexion Med., LLC v. Northgate Techs.,
Inc., 641 F.3d 1352, 1358 (Fed. Cir. 2011)). The Seventh
Circuit “review[s a] grant of summary judgment de novo,
applying the same standards as the district court and
viewing the record and all reasonable inferences to be
drawn from it in the light most favorable to the non-
moving party.” 520 S. Mich. Ave. Assocs. v. Unite Here
Local 1, 760 F.3d 708, 718 (7th Cir. 2014) (citing Griffin v.
City of Milwaukee, 74 F.3d 824, 826–27 (7th Cir. 1996)).
“Summary judgment is appropriate only if there is no
genuine issue of material fact and the moving party is
entitled to judgment as a matter of law.” Id. (citing
Griffin, 74 F.3d at 827; Fed. R. Civ. P. 56). “Whether the
disclosure-dedication rule prevents a patentee from
pursuing a doctrine of equivalents infringement theory is
a question of law we review de novo.” SanDisk Corp. v.
Kingston Tech. Co., 695 F.3d 1348, 1364 (Fed. Cir. 2012).
We begin with the disclosure-dedication doctrine.
This doctrine is based on the general notion that “when a
patent drafter discloses but declines to claim subject
10 CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG
matter, . . . this action dedicates that unclaimed subject
matter to the public.” Johnson & Johnston Assocs. v. R.E.
Serv., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en banc). The
disclosure-dedication doctrine bars a patentee from using
the doctrine of equivalents to recapture claim scope that it
disclosed in the specification but did not literally include
in the patent’s claims. Id. This doctrine applies even if
the patentee later claimed this disclosed subject matter in
a continuation application. Id. at 1055.
We agree with the district court that the disclosure-
dedication doctrine bars CSP’s claim of infringement by
equivalents. The patent’s specification discloses two
embodiments of CSP’s invention: the two-piece container
including a separable upper housing portion and the one-
piece container without a separable upper housing por-
tion. But all asserted claims are directed to the embodi-
ment with the separable upper housing portion. The
disclosure-dedication doctrine therefore bars CSP from
pursuing a theory of infringement by equivalents that
would extend its claim scope to encompass this unclaimed
embodiment. A later-filed continuation application based
on the application that led to the patent in suit reinforces
our view that the district court appropriately applied the
disclosure-dedication doctrine. This continuation applica-
tion resulted in a patent, and neither the continuation
application as published nor the patent that ultimately
issued from it contains the “upper housing portion” claim
limitation. See U.S. Patent App. Pub. No. 2013/0098934
A1; U.S. Patent No. 8,528,778. The patentee’s decision to
claim the upper housing portion in the patent in suit and
not to claim it in this continuation patent implies an
intent for the two patents to cover different claim scope.
The disclosure-dedication doctrine appropriately applies
to bar CSP from using the doctrine of equivalents to erase
this distinction between its two patents. See Johnson &
Johnston Assocs., 285 F.3d at 1055.
CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG 11
CSP argues that the disclosure-dedication doctrine
does not apply here because the specification does not
explicitly state that the one-piece embodiment is an
“alternative” to the two-piece embodiment. As CSP notes,
we have held that “the public notice function of patents
suggests that before unclaimed subject matter is deemed
to have been dedicated to the public, that unclaimed
subject matter must have been identified by the patentee
as an alternative to a claim limitation.” Pfizer, Inc. v.
Teva Pharms. USA, Inc., 429 F.3d 1364, 1379 (Fed. Cir.
2005); accord SanDisk, 695 F.3d at 1366–67. But the
requirement Pfizer and SanDisk set out is not as far-
reaching as CSP makes it out to be. In Pfizer, the plain-
tiff sought to expand the reach of its claim through the
doctrine of equivalents to encompass a product lacking a
claimed active compound and instead containing a substi-
tute compound that had similar relevant properties.
Pfizer, 429 F.3d at 1378. The specification referenced this
substitute compound and the class of compounds to which
it belonged, but not as an active ingredient in a formula-
tion. Id. We found the disclosure-dedication doctrine not
to apply there because, although the patentee disclosed
the substitute compound it now sought to include in its
claims’ scope, it never did so as something that could
function as an alternative to the claimed compounds. Id.SanDisk addressed an unclaimed embodiment disclosed
only in a patent that the patent in suit incorporated by
reference. There, because the specification of the patent
in suit referred to this other patent only in “general
terms” rather than pointing to it as containing any alter-
native to any claimed embodiment, we found the patent in
suit’s disclosure not to have dedicated this unclaimed
embodiment. SanDisk, 695 F.3d at 1366–67. The re-
quirement that the patent must identify the dedicated
embodiment as an alternative to a claimed embodiment is
therefore not, as CSP suggests, one of form requiring us to
identify some language specifically stating that an embod-
iment is an “alternative.” If that were the case, an artful
12 CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG
drafter could avoid describing embodiments as alterna-
tives and make the patent immune to the disclosure-
dedication doctrine. Instead, the requirement is one of
substance where we determine from the specification’s
disclosure whether “one of ordinary skill would have come
to the conclusion that the inventor[] ha[s] identified [the
unclaimed embodiment] as an alternative to [the claimed
embodiment].” Pfizer, 429 F.3d at 1379. Here, one of skill
in the art would understand from the specification that
the inventor contemplated that the one-piece and two-
piece designs were alternative ways to construct a con-
tainer. E.g., ’137 patent at 4:4–9 (“In one embodiment,
the containers can be formed as a single closed unit, with
the hinge joining the lid portion to the container portion.
In yet another embodiment, the container assembly
comprising the base and upper housing portion can be
molded separately.”). The existence of a continuation-in-
part application claiming the one-piece embodiment
further supports our conclusion that the patentee viewed
these two embodiments as alternatives.
Because the district court properly concluded that the
disclosure-dedication doctrine barred CSP from asserting
that the disclosed one-piece embodiment falls within the
scope of the asserted claims, CSP cannot succeed in its
claim of infringement by equivalents. We therefore do not
need to reach the district court’s finding that claim vitia-
tion additionally barred a showing of infringement by
equivalents.
CONCLUSION
We affirm the district court’s construction of “upper
housing portion” as limiting the claims’ scope to two-piece
containers whose upper housing portion is separable from
the base. We therefore also affirm the district court’s
grant of summary judgment of no literal infringement.
Because we agree with the district court that the disclo-
sure-dedication doctrine bars CSP’s assertion that even
CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG 13
under the district court’s construction the doctrine of
equivalents expands its claims to capture the one-piece
embodiment it disclosed in its specification, we likewise
affirm the district court’s grant of summary judgment of
non-infringement under the doctrine of equivalents.
AFFIRMED
COSTS
No costs.