Sociedad Espanola v. Blue Ridge X-Ray Company , 621 F. App'x 644 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SOCIEDAD ESPANOLA DE ELECTROMEDICINA Y
CALIDAD, S.A.,
Plaintiff-Appellant
v.
BLUE RIDGE X-RAY COMPANY, INC., DRGEM
USA, INC., DRGEM CORPORATION,
Defendants-Appellees
______________________
2015-1102
______________________
Appeal from the United States District Court for the
Western District of North Carolina in No. 1:10-cv-00159-
MR, Judge Martin Reidinger.
______________________
Decided: July 31, 2015
______________________
BRADLEY F. RADEMAKER, Neal, Gerber & Eisenberg,
LLP, Chicago, IL, argued for plaintiff-appellant. Also
represented by MICHAEL RYAN TURNER.
BRADY J. FULTON, Northup, McConnell & Sizemore,
Asheville, NC, argued for defendants-appellees.
______________________
2 SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY
Before LOURIE, SCHALL, and LINN, Circuit Judges.
LINN, Circuit Judge.
Sociedad Espanola de Electromedicina y Calidad, S.A.
(“SEDECAL”) appeals the district court’s construction of
certain claim terms of U.S. Patent No. 6,642,829 (the
“’829 patent”) and its grant of Blue Ridge X-Ray Co.,
DRGEM USA, Inc. and DRGEM Corp.’s (“Blue Ridge’s”)
motion to amend their invalidity contentions pursuant to
which the district court granted summary judgment that
the asserted claims of the ’829 patent are invalid and not
infringed. See Sociedad Espanola de Electromedicina y
Calidad, S.A. v. Blue Ridge X-Ray Co., Inc., 47 F. Supp.
3d 381 (W.D.N.C. 2014) (“Merits Op.”); 2013 WL 4211846(W.D.N.C. May 15, 2013) (“Construction Op.”). We revise
the district court’s construction of the challenged claim
terms and, accordingly, reverse its grant of summary
judgment.
I. BACKGROUND 1
A. The ’829 Patent
The ’829 patent issued from U.S. Patent Application
No. 09/889,534 (the “’534 application”). The patent re-
lates to a high voltage transformer consisting of positive
and negative voltage elements arranged into two separate
groups that are separated by a single insulating barri-
er. ’829 patent abstract; col.2 ll.18–24. The purpose of
the invention is to create a more cost and size-efficient
high voltage transformer. Id. at col.1 ll.5–7.
Claim 1 is the only independent claim and recites,
with emphases added:
1 As we write for the parties, we assume familiarity
with the underlying facts.
SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY 3
1. A high voltage transformer having a plurality of
elements for voltage transformers, said elements
comprising:
...
a magnetic core (7, 7′),
...
wherein each rectifier, filter, resistive di-
vider, high voltage switch, magnetic core,
has a first end and a second end,
each first end being connected to zero
voltage level;
each second end being opposite to each
first end; said rectifiers, filters, resistive
dividers, high voltage switches, magnetic
cores, are arranged in two differentiated
groups,
a first group comprising positive voltage
elements and
a second group comprising negative volt-
age elements; the positive voltage ele-
ments are separated from the negative
voltage elements by solid insulating
means in two insulated chambers . . . .
B. The Procedural History
The parties disputed the proper construction of the
phrase “two insulated chambers.” Construction Op. at *7.
According to SEDECAL, it meant two “electrically insu-
lated” chambers, whereas according to Blue Ridge it
meant two “chambers [that are] enclosed and isolated
from each other, that is, physically separated.” Id. at *7–
8. The district court ultimately construed “two insulated
chambers” as “two different chambers that are insulated
from each other.” Id. at *10.
4 SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY
The district court ultimately granted summary judg-
ment that the asserted claims are inoperative and there-
fore invalid under §§ 101 and 112. Merits Op., 47 F.
Supp. 3d at 384–87. According to the district court, the
phrase “said . . . magnetic cores, are arranged in two
differentiated groups,” indicates that the transformer
contains two separate and unconnected cores. Id. at 385.
“Based on that construction,” the district court concluded,
“it is undisputed that the ’829 Patent claims describe a
device that does not function.” Id. at 386.
The district court further found that Blue Ridge’s
products did not meet the “two insulated chambers”
limitation because Blue Ridge’s transformers had two
chambers that “open[ed] directly into one another,”
“lack[ed] any physical barrier between portions of the two
regions,” and because “oil is able to flow freely throughout
the entire housing.” See id. at 387. It also found that
Blue Ridge’s transformers did not meet the “magnetic
cores” limitation, because they contained only a single
core ring. See id. at 387–88.
SEDECAL appeals. This court has jurisdiction pur-
suant to 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
A. Standards of Review
The “ultimate interpretation” of a claim term, as well
as interpretations of “evidence intrinsic to the patent (the
patent claims and specifications, along with the patent’s
prosecution history),” are legal conclusions, which this
court reviews de novo. Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S. Ct. 831, 841 (2015). However, where a district
court “make[s] subsidiary factual findings about . . .
extrinsic evidence[,] th[e] subsidiary factfinding must be
reviewed for clear error on appeal.” Id. Where “there is
no indication that the district court made any factual
findings that underlie its [claim] constructions,” we re-
SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY 5
view the district court’s constructions entirely de novo.
Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359,
1368 (Fed. Cir. 2015).
“This court reviews the district court’s grant or denial
of summary judgment under the law of the regional
circuit,” Lexion Med., LLC v. Northgate Techs., Inc., 641
F.3d 1352, 1358 (Fed. Cir. 2011), here the Fourth Circuit.
The Fourth Circuit “review[s] a district court’s decision to
grant summary judgment de novo, applying the same
legal standards as the district court, and viewing all facts
and reasonable inferences therefrom in the light most
favorable to the nonmoving party.” Harris v. Norfolk S.
Ry. Co., 784 F.3d 954, 962 (4th Cir. 2015) (citations omit-
ted).
B. Claim Construction
Claim terms are generally given “the meaning that
the term would have to a person of ordinary skill in the
art in question at the time of the invention.” Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc) (citations omitted). “[T]he person of ordinary skill
in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term
appears, but in the context of the entire patent, including
the specification.” Id. at 1313.
The parties dispute the proper construction of two
claim terms: “two insulated chambers” and “magnetic
core.” Because the district court relied only on intrinsic
evidence in its claim construction, we review its claim
construction entirely de novo.
1. “Two insulated chambers”
In its original claim construction order, the district
court construed “two insulated chambers” as “two differ-
ent chambers that are insulated from each other.” Con-
struction Op. at *10. The district court elaborated on this
construction in its summary judgment order, explaining
6 SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY
that this meant the two chambers could not “open directly
into one another,” could not have “oil [that] is able to flow
freely throughout the entire housing,” and required a
“physical barrier between portions of the two regions.”
Merits Op., 47 F. Supp. 3d at 387.
SEDECAL argues that that the district court erred in
construing the claims to require more than electrical
insulation. According to SEDECAL, both intrinsic and
extrinsic evidence shows that the word “insulated” means
electrically insulated. Blue Ridge, for its part, argues
that both the word “insulated” and the word “chambers”
imply physical isolation. According to Blue Ridge, this
construction is supported by the specification and the
prosecution history.
The claims of the ’829 patent are no model of clarity.
The very fact that both parties suggest defining the term
“two insulated chambers” by adding words—SEDECAL
suggesting that it should be construed to be “two electri-
cally insulated chambers” and Blue Ridge suggesting “two
isolated and insulated chambers”—reflects the fact that
clearer drafting would have been helpful. Construction
Op. at *7. As a result, the district court struggled with
how to properly construe the claims. While we do not
fault the district court’s efforts to make sense of the
patent language, we conclude on the basis of all the
evidence that the district court erred in its constructions.
On the record before us, the claim term “two insulated
chambers” simply refers to electrically insulated cham-
bers. The Background of the Invention explains that the
difficulty with prior art transformers was in “achieving
the electrical insulation between the various ele-
ments.” ’829 patent col.1 ll.16–17; see id. at col.1 ll.29–42.
The Description of the Invention explains that one benefit
of the invention is reducing “the number of . . . electrical
insulation parts.” Id. at col.3 l.14–16. The patent’s focus
on electrical insulation reflects the fact that the invention
SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY 7
involves placing elements of similar electrical voltage in
close proximity to reduce “the insulator filling.” Id. at
col.4 ll.47–49. This plain and ordinary meaning of “insu-
lated” is confirmed by the dictionary of the Institute of
Electrical and Electronics Engineers (“IEEE”), which
defines “insulated” as “. . . offering a high resistance to the
passage of current . . . .” IEEE 100: The Authoritative
Dictionary of IEEE Standard Terms 564 (7th ed. 2000).
The district court recognized that construing “insulat-
ed chambers” as electrically insulated “has a common
sense appeal.” Construction Op. at *7. Nevertheless, it
concluded that the patentees disavowed this definition
during prosecution. Id. at *8–10. The district court
placed great weight on the patentees’ statement during
prosecution describing their invention as requiring “dif-
ferent and isolated chambers,” quoting this language
three different times. Id. at *9, *10 (quoting ’534 applica-
tion at applicants remarks (May 27, 2003) (emphases in
original)). The district court’s quote of the prosecution
history was inaccurate. The prosecution history refers to
the chambers as being “different and insulated,” but
never refers to them as being isolated. What was re-
ferred to as being “isolated” were the “different and
isolated columns.” ’534 application, applicants remarks
(May 27, 2003). The prosecution history thus fails to
support the district court’s characterization of the two
chambers as being so isolated that nothing can pass from
one to the other. The prosecution history certainly does
not rise to the level of a clear and unmistakable disavow-
al.
Blue Ridge argues that the plain and ordinary mean-
ing of “chambers” requires some sort of an enclosure.
True enough. But Blue Ridge has failed to show that such
an enclosure must be so closed or isolated as to prevent oil
or other elements from passing from one enclosure to
another.
8 SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY
Blue Ridge also argues that because the two chambers
themselves have no electrical charge, the adjective “insu-
lated” cannot refer to electrical insulation. Blue Ridge
ignores the fact that the claim recites “positive voltage
elements [that] are separated from the negative voltage
elements by solid insulating means in two insulated
chambers.” The purpose of the insulation is to electrically
insulate the charged voltage elements found in the two
chambers from one another, not just the chambers them-
selves.
Finally, Blue Ridge argues that Figure 3 shows two
chambers that are “enclosed or physically separate cham-
bers.” Appellee’s Br. at 55. At best that suggests that two
isolated chambers are within the scope of the claim. It
does not suggest that the claim is so limited. See GE
Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304,
1309 (Fed. Cir. 2014) (“while the specifications only
disclose a single embodiment of an IDC connector in
Figure 6, they do not disavow or disclaim the plain mean-
ing of IDC connector or otherwise limit it to that embodi-
ment”).
Thus, the proper construction of “two insulated cham-
bers” is “two electrically insulated chambers.”
2. “Magnetic cores”
At the district court, SEDECAL argued that “magnet-
ic cores” refers to two core legs, which are connected by
yokes. Merits Op., 47 F. Supp. 3d at 385. The district
court rejected this argument based on its construction of
“two insulated chambers” and because nothing in the ’829
patent suggested that the “claimed device [had] core ‘legs’
or ‘yokes’ or indicates that the device contains anything
less than two magnetic cores.” Id. The district court
noted that it is undisputed that a transformer with two
separate magnetic cores that are isolated and sealed off
from each other would be inoperable. See id. at 386–87.
SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY 9
SEDECAL continues to argue that the “magnetic
cores” refers to core legs. It contends that the phrase
“magnetic cores” is a synecdoche: it sometimes means a
full core ring but, in other contexts, it means just the legs
of a full core ring. The second meaning should be applied
here, SEDECAL believes, because it is the only interpre-
tation that makes the claims operable. Blue Ridge, on the
other hand, argues that the plain and ordinary meaning
of “magnetic cores” only refers to full core rings and not to
core legs.
Both parties argue that the figures of the ’829 patent
support their positions. Figure 1 of the ’829 patent shows
a yoke connecting the 7 and 7’ core legs that are found in
the two chambers, while Figure 3 shows no connection
between the two chambers. SEDECAL argues that there
is more to the transformer in Figure 3 than meets the eye
and it actually allows for a yoke between the two legs.
That yoke was omitted because it was “not relevant to
what is being shown.” Appellant’s Br. at 34. Blue Ridge
claims that “there is a contradiction between” Figures 1
and 3. Appellee’s Br. at 38.
In this context, the term “magnetic cores” refers to the
legs of a full core ring. The district court’s construction to
the contrary was error. First, Figure 1 of the ’829 patent
shows a yoke connecting the 7 and 7’ core legs. While
that yoke is absent in Figure 3, it is more reasonable to
conclude that Figure 3 omitted certain elements of the
transformer for the sake of brevity than to find Figures 1
and 3 contradictory, as Blue Ridge claims.
Second, the plain and ordinary meaning of the phrase
“magnetic core” can refer to core legs. For example, Blue
Ridge concedes that in U.S. Patent No. 6,278,355 (the
“’355 patent”), the patentees—including Philip J. Hopkin-
son, Blue Ridge’s expert in this case—“clearly and ex-
pressly equated the terms ‘leg,’ ‘core,’ ‘magnetic core,’ and
‘transformer core,’ and consistently used those terms to
10 SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY
mean the same thing.” Appellee’s Br. at 36; see id. (the
patent “repeatedly us[ed] these different terms inter-
changeably to refer to the same item”). While it is true
that the ’829 patent actually uses the phrase “core leg[s]”
to describe the prior art, see ’829 patent col.2 ll.8–14, that
is not persuasive evidence that the term “magnetic core”
does not mean “core legs.” “[T]he general assump-
tion . . . that different terms have different meanings”
applies to “terms in the body of a claim,” but not neces-
sarily elsewhere in the specification where the context
indicates otherwise. Symantec Corp. v. Computer Assocs.,
Int’l, Inc., 522 F.3d 1279, 1289 (Fed. Cir. 2008).
Blue Ridge argues that a synecdoche is inherently
ambiguous and should, therefore, be construed against
SEDECAL. That is not the law. Where a claim term
“ha[s] more than one plain and ordinary meaning,” we
look to the specification to ascertain which definition is
intended. See Kaneka Corp. v. Xiamen Kingdomway Grp.
Co., --- F.3d ----, 2015 WL 3613644, at *4 (Fed. Cir. June
10, 2015).
From the foregoing, we conclude that the phrase
“magnetic core” as used in the specification of the ’829
patent refers to core legs connected by yokes. The district
court’s contrary conclusion is unsupported by the specifi-
cation and is erroneous.
C. Invalidity and Infringement
The district court’s summary judgments of invalidity
and non-infringement were premised on its erroneous
claim constructions. Those decisions are therefore vacat-
ed and remanded.
D. Motion to Amend Invalidity Contentions
SEDECAL argues that the district court abused its
discretion by allowing Blue Ridge to amend their invalidi-
ty contentions to raise an inoperability defense. Because
SOCIEDAD ESPANOLA v. BLUE RIDGE X-RAY COMPANY 11
the claims, as properly construed, are not inoperable, this
argument is now moot.
III. CONCLUSION
For the forgoing reasons, the district court’s claim
constructions are revised as stated herein and its grant of
summary judgment of invalidity and non-infringement is
reversed. The case is remanded for further proceedings
consistent with this opinion.
REVERSED AND REMANDED