Joy MM Delaware, Inc. v. Cincinnati Mine MacHinery, Co. , 497 F. App'x 970 ( 2012 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
JOY MM DELAWARE, INC. AND
JOY TECHNOLOGIES, INC. (DOING BUSINESS AS
JOY MINING MACHINERY),
Plaintiffs-Appellants,
v.
CINCINNATI MINE MACHINERY, CO.,
Defendant-Appellee.
__________________________
2012-1153
__________________________
Appeal from the United States District Court for the
Western District of Pennsylvania in case no. 09-CV-1415,
Chief Judge Gary L. Lancaster.
__________________________
Decided: November 8, 2012
__________________________
KATHERINE W. SCHILL, Michael Best & Friedrich,
LLP, of Milwaukee, Wisconsin, argued for plaintiffs-
appellants. With him on the brief was JONATHAN H.
MARGOLIES.
JOY MM DELAWARE v. CINCINNATI MINE 2
BRETT A. SCHATZ, Wood, Herron & Evans, L.L.P., of
Cincinnati, Ohio, argued for defendant-appellee. With
him on the brief was GREGORY F. AHRENS.
__________________________
Before BRYSON, PROST, and REYNA, Circuit Judges.
PROST, Circuit Judge.
Joy MM Delaware, Inc. and Joy Technologies, Inc.
(collectively “Joy”) appeal the district court’s grant of
summary judgment to Cincinnati Mine Machinery, Co.,
(“CMM”) of noninfringement of claim 2 of U.S. Patent No.
6,662,932 (“’932 patent”) and of invalidity of that claim for
failing to satisfy the best mode requirement of 35 U.S.C.
§ 112. As part of its appeal, Joy also challenges the
district court’s construction of the term “indentations” in
that claim. Because the district court properly construed
the term “indentations,” we affirm the grant of summary
judgment of noninfringement. However, because there is
no evidence in the record upon which a reasonable jury
could rely to find that the inventor of the ’932 patent
concealed the best mode for practicing his invention, we
reverse the grant of summary judgment to CMM with
respect to best mode and remand for entry of summary
judgment in favor of Joy on that issue.
BACKGROUND
Joy filed suit against CMM in October 2009 alleging
that CMM’s mining machine, the DA-350 flight conveyor
(“DA-350”), infringed claim 2 of the ’932 patent. Claim 2
is directed at an apparatus for use in mining and reads:
A chain and flight assembly adapted to travel over
a pan, said conveyor chain and flight assembly in-
cluding
3 JOY MM DELAWARE v. CINCINNATI MINE
a first link assembly and a second link assembly,
each of which includes
two spaced apart drive pins, each of which has
a first end and a second end,
two spaced apart side plates, each of which
has two spaced apart openings, each open-
ing receiving a different one of said drive
pins, and
drive pin retaining means for retaining said
drive pins in said side plates,
a swivel assembly connecting said two link
assemblies, said swivel assembly includ-
ing a swivel pin,
a male connecting lug having a base having a
horizontal bore that receives one of said
drive pins of said first link assembly, and
a tongue connected to said base, and
a female connecting lug having a base having
a horizontal bore that receives one of said
drive pins of said second link assembly,
and
a spaced apart upper lip and lower lip con-
nected to said base, said male connecting
lug tongue extending between said spaced
apart lips, each of said lips and said
tongue having openings therein that form
a bore through the male and female lugs
and receives said swivel pin and
JOY MM DELAWARE v. CINCINNATI MINE 4
swivel pin retaining means for retaining said
swivel pin in said lugs, and
a first flight connected to one of said first and
said second link assemblies, said flight
having a flight head having two spaced
apart indentations, each of which receives
a different one of said first ends of said
drive pins, and
first flight securing means retaining said
drive pin first end in said first flight head
so that said first flight head is paced from
its respective side plate, and
a second flight connected to said one of said
first and said second link assemblies, said
flight having a flight head having two
spaced apart indentations, each of which
receives a different one of said second
ends of said drive pins, and
second flight securing means retaining said
drive pin second end of said second flight
head so that said second flight head is
spaced from its respective side plate.
’932 patent col. 4 l. 48–col. 6 l. 11.
CMM denied infringement and asserted defenses and
counterclaims of invalidity, including that claim 2 failed
the best mode requirement of 35 U.S.C. § 112. In October
2010, the district court issued a Markman opinion in
which it construed the word “indentations” used in claim
2 to mean: “recessed or concaved areas . . . into which
something can be inserted, but through which it cannot
pass.” J.A. 85. That construction was not the definition
5 JOY MM DELAWARE v. CINCINNATI MINE
preferred by Joy, “indentations or openings,” or CMM,
“notches.” J.A. 153.
After subsequent briefing, the district court granted
summary judgment of noninfringement to CMM because
it reasoned that the DA-350 could not meet the “two
spaced apart indentations” limitation of claim 2 under the
doctrine of equivalents.1 Joy argued that limitation was
met by the holes in the DA-350’s flight head through
which pins passed. In the court’s view, however, its
construction of “indentations” dictated that “indentations”
were binary opposites of such holes. The court reasoned
that Joy’s infringement claim had to fail under the all-
elements rule because finding the holes in the DA-350
flight head to be equivalent to “indentations” would read
the “two spaced apart indentations” limitation out of
claim 2.
The district court also granted summary judgment in
favor of CMM on invalidity of claim 2 for failing the best
mode requirement. During discovery, the inventor of the
’932 patent (“’932 Inventor”) admitted that press-fitting
was the preferred way to retain the drive pins in the side
plates in the invention of claim 2 but that only welding
was discussed in the patent as a means to do so. Despite
evidence from both parties that press-fitting was a substi-
tute for welding well-known to those of ordinary skill in
the art, the district court held that the failure to disclose
press-fitting as the best mode for the retaining means
invalidated claim 2 under 35 U.S.C. § 112.
Joy timely appealed both grants of summary judg-
ment and the construction of the term “indentations.”
1 Joy conceded that the DA-350 does not literally
infringe claim 2, assuming, of course, that the district
court’s construction of “indentations” was without error.
JOY MM DELAWARE v. CINCINNATI MINE 6
DISCUSSION
We review de novo the district court’s claim construc-
tion, grants of summary judgment, and application of the
all-elements rule. See Cordis Corp. v. Boston Scientific
Corp., 561 F.3d 1319, 1330 (Fed. Cir. 2009); Consol.
Edison Co. of N.Y., Inc. v. Richardson, 232 F.3d 1380,
1383 (Fed. Cir. 2000); Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1451 (Fed. Cir. 1998) (en banc).
A. Claim Construction
The only relevant question of claim construction
raised by Joy on appeal is whether the term “indenta-
tions” as used in claim 2 expressly excludes “holes.” We
hold that it does and that the district court’s construction
properly limited the term to structures “into which some-
thing can be inserted, but through which it cannot pass.”
The ordinary meaning of the term “indentions” as
used in claim 2 is unambiguous. See Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“In
some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in
such cases involves little more than the application of the
widely accepted meaning of commonly understood
words.”). The term has a commonly accepted meaning
that does not include a hole. See Webster’s Third Interna-
tional Dictionary (1993) (defining “indentation” as “an
angular cut” or “a notch” or “a small surface depression”);
Oxford English Dictionary (2d ed. 1989) (defining “inden-
tation” as a “cut, notch, or angular incision”); see also
Phillips, 415 F.3d at 1314 (“In [cases in which the ordi-
nary meaning of claim language may be readily apparent
even to lay judges], general purpose dictionaries may be
7 JOY MM DELAWARE v. CINCINNATI MINE
helpful.”). There is nothing in the language of claim 2, or
the written description, to indicate that the ’932 Inventor
intended for the definition of the term “indentations” to
extend beyond its ordinary meaning to include holes. As
used in claim 2, “indentations” describe the parts of the
flight head structure that receive the end of the drive
pins—which do not pass through the indentations. See
’932 patent col. 5 l. 9–col. 6 l. 11. And while the written
description uses the phrase “indentations or holes” to
describe the flight head structure that receives the drive
pin ends, see ’932 patent Abstract; col. 3 ll. 52-56, the ’932
Inventor’s use of the disjunctive “or” in that phrase indi-
cates that he appreciated the commonly understood
meaning of “indentations” as exclusive of holes. Given
that indication, because the ’932 Inventor chose to only
claim “indentations,” not “indentations or holes,” see ’932
patent col. 5 l. 9–col. 6 l. 11, we decline to extend the
meaning of “indentations” beyond its ordinary one to
include holes. Indeed, when the ’932 Inventor chose to
indicate that a claim limitation encompassed a hole, he
used the words “bore” or “opening.” See ’932 patent col. 1
ll. 53-56; col. 3 ll. 5-10; col. 4 ll. 55-56; col. 5 ll. 1-6; Fig. 2.
The use of different claim terms to describe structures
that include holes further solidifies our conclusion that
the ordinary meaning of the term “indentations” in claim
2 does not. See CAE Screenplates Inc. v. Heinrich Fielder
GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In
the absence of any evidence to the contrary, we must
presume that the use of these different terms in the
claims connotes different meanings.”). The district court’s
construction of the term “indentations” was correct.
B. Noninfringement
In light of its construction of “indentations,” the dis-
trict court held that CMM’s accused mining machine did
JOY MM DELAWARE v. CINCINNATI MINE 8
not infringe claim 2 under the doctrine of equivalents
because of the all-elements rule. We agree. Given that
the construction of “indentations” expressly excludes a
hole, the holes in the accused flight head of the DA-350
cannot be equivalent to the indentations in the flight head
of the invention of claim 2. If holes could be equivalent to
“indentations” as construed, the limitation requiring “two
spaced apart indentations” would be read out of claim 2.
As the specification makes clear, the ’932 Inventor chose
to claim “indentations,” not holes, in claim 2. Compare
’932 patent Abstract; col. 3 ll. 52-56 (stating that “inden-
tations or holes” could be used in the flight head) with
’932 patent col. 5 l. 9–col. 6 l. 11 (claiming only “indenta-
tions”). In light of that deliberate choice by the inventor,
which informed our understanding that “indentations” is
limited to its commonly accepted meaning, we hold that
holes do not satisfy the “indentations” limitation of claim
2 under the doctrine of equivalents. See Asyst Techs., Inc.
v Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005).
Accordingly, because it cannot be reasonably disputed
that a pin in CMM’s accused mining machine passes
through the holes in its flight head, we affirm the grant of
summary judgment of noninfringement to CMM.
C. Best Mode
To establish that claim 2 fails the best mode require-
ment, CMM must by prove by clear and convincing evi-
dence that the ’932 Inventor concealed a best mode of
practicing his claimed invention from the public. See
Ajinomoto Co. v. Int’l Trade Comm’n, 597 F.3d 1267, 1273
(Fed. Cir. 2010); Young Dental Mfg. Co. v. Q3 Special
Prods., Inc., 112 F.3d 1137, 1144 (Fed. Cir. 1997).
Whether an inventor “concealed” the best mode of his
invention from the public turns on whether “the inven-
tor’s disclosure is adequate to enable one of ordinary skill
9 JOY MM DELAWARE v. CINCINNATI MINE
in the art to practice the best mode of the invention.” Id.(citation omitted). Press-fitting, which CMM asserts was
concealed as the best mode for the drive pin retaining
means, was a well-known substitute for welding to those
of ordinary skill in the art at the time of the invention.
There is no genuine dispute of the parties’ experts on that
point. Thus, there is no genuine dispute that one of
ordinary skill in the art had the requisite knowledge
necessary to use press-fitting as the drive pin retaining
means of claim 2. Accordingly, CMM cannot point to any
clear and convincing evidence upon which a reasonable
jury could rely to find that the omission of press-fitting
from the written description of the ’932 patent “concealed”
its use as a drive pin retaining means from the public.
We therefore reverse the district court’s grant of summary
judgment to CMM that claim 2 is invalid for failing the
best mode requirement and remand to the district court to
enter summary judgment in favor of Joy on that issue.2
2 Whether or not the relevant claim element (here,
“means for retaining”) is written in means-plus-function
form is immaterial to our conclusion. At its heart, the
best mode requirement is concerned with preventing
inventors from concealing the best mode of their inven-
tions while being rewarded with the right to exclude
others from making or using it. See, e.g., Teleflex, Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1330 (Fed. Cir. 2002).
An inventor does not conceal the best mode of an inven-
tion by disclosing only one of many modes for enabling a
claim element when all of the other non-disclosed modes
are already well-known substitutes in the art. One of
ordinary skill in the art would not need to be reminded of
those substitutes to practice the best mode of the inven-
tion.
JOY MM DELAWARE v. CINCINNATI MINE 10
CONCLUSION
Because the district court properly construed the term
“indentations” and the holes in the flight head of the DA-
350 cannot satisfy the “two spaced apart indentations”
limitation of claim 2 under the doctrine of equivalents, we
affirm the grant of summary judgment of noninfringe-
ment to CMM. Because there is no evidence in the record
upon which a reasonable jury could rely to find that the
’932 Inventor concealed the best mode for practicing the
invention of claim 2, we reverse the district court’s grant
of summary judgment to CMM on best mode and remand
to the district court for entry of summary judgment in
favor of Joy on that issue.
COSTS
Each party shall bear its own costs.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED