Aquatex Industries, Inc. v. Techniche Solutions , 419 F.3d 1374 ( 2005 )

United States Court of Appeals for the Federal Circuit
05-1088
AQUATEX INDUSTRIES, INC.,
Plaintiff-Appellant,
v.
TECHNICHE SOLUTIONS,
Defendant-Appellee.
Jack A. Wheat, Stites & Harbison, of Louisville, Kentucky, argued for plaintiff-
appellant. With him on the brief was Joel T. Beres. Of counsel on the brief were Richard S.
Myers, Jr., James R. Michels and Alexandra T. MacKay, of Nashville, Tennessee.
James A. DeLanis, Baker Donelson Bearman Caldwell & Berkowitz, P.C., of Nashville,
Tennessee, argued for defendant-appellee. With him on the brief was W. Edward Ramage.
Appealed from: United States District Court for the Middle District of Tennessee
Chief Judge Robert L. Echols
United States Court of Appeals for the Federal Circuit
05-1088
AQUATEX INDUSTRIES, INC.,
Plaintiff-Appellant,
v.
TECHNICHE SOLUTIONS,
Defendant-Appellee.
__________________________
DECIDED: August 19, 2005
__________________________
Before MAYER, GAJARSA, and DYK, Circuit Judges.
MAYER, Circuit Judge.
AquaTex Industries, Inc. (“AquaTex”) appeals the judgment of the United States
District Court for the Middle District of Tennessee, AquaTex Indus. Inc. v. Techniche
Solutions, No. 02-CV-914 (M.D. Tenn. Sept. 27, 2004), granting summary judgment of
noninfringement in favor of Techniche Solutions (“Techniche”). Because there was no
literal infringement, and because the district court improperly determined that
prosecution history estoppel barred infringement under the doctrine of equivalents, we
affirm-in-part, reverse-in-part, and remand.
Background
AquaTex initiated this action against Techniche for contributory infringement of
United States Patent No. 6,371,977 (“the ’977 patent”). AquaTex is the assignee of the
’977 patent entitled “Protective Multi-Layered Liquid Retaining Composite.” Both parties
market multi-layered, liquid-retaining composite material for evaporative cooling
garments. AquaTex contends that Techniche’s evaporative cooling garments and
products infringe the ’977 patent either literally or under the doctrine of equivalents.
The ’977 patent claims a method of cooling a person through evaporation by
providing a multi-layered, liquid-retaining composite material comprising a fiberfill
batting, and either hydrophilic polymeric fibers or hydrophilic polymeric particles. The
technology is suited for use in a wide variety of items such as protective garments,
blankets, and compresses. In general terms, practice of the patented method involves
soaking a composite material in a liquid for a matter of minutes, wringing out the excess
liquid, and then placing the material or garment against a person for cooling by
evaporation.
The ’977 patent specification describes the invention as including:
a basic configuration of a multi-layered, liquid-retaining composite
material comprising of: a conductive layer which is adapted for
placement in close proximity to, or indirect contact with the body of the
wearer; a filler layer impregnated [with] a fiberfill batting material and with
liquid absorbent particles, fibers, or a combination of both; a retainer
layer for retention of the filler layer between the conductive layer and the
retention layer; and, if needed, an outside protective layer attached to, or
placed adjacent to, the outermost surface of the retention layer.
’977 patent, col. 3, ll. 31-44. The patent includes 35 claims. Independent claims 1 and
9 are disputed in this case. Claim 1 reads:
A method of cooling a person by evaporation, comprising:
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providing a multi-layered, liquid-retaining composite material comprising a
fiberfill batting material, and hydrophilic polymeric fibers that absorb at
least about 2.5 times the fiber’s weight in water;
soaking said multi-layered composite in a liquid;
employing said multi-layered, liquid-retaining composite material as a
garment or a flat sheet and evaporatively cooling said person.
’977 patent, col. 13, ll. 64-67 & col. 14, ll. 1-6 (emphasis added). Similarly, claim 9
requires the water-absorbent layer to comprise “a fiberfill batting material and
hydrophilic polymeric particles.”
The specification of the ’977 patent describes a “filler layer impregnated [with] a
fiberfill batting material and with liquid absorbent particles, fibers, or a combination of
both[.]” col. 3, ll. 37-39. Further, the specification states:
With respect to the liquid absorbent fibers, the blend is a combination
of a superabsorbent polymeric fiber and a fiberfill or batting. The particular
fiberfill is not known to be critical. That is, any commercial fiberfill may be
used as long as it does not adversely affect the performance of the end
composite. Accordingly, when the end composite is to be used as or part of
a fire retardant garment, the fiberfill or batting is chosen accordingly. In
such a case, the fiberfill is typically comprised of a flame and heat resistant
material such as woven aramid and/or polybenzamidazole (“PBI”) fibers.
That is, the fiberfill is selected from a group consisting of an aramid polymer
fabric material, as [a] blend of aramid polymer fabric materials, a
polybenzamidazole material, and a blend of aramid polymer fabric and
polybenzamidazole materials. For other non-flame retardant applications,
commercial fiberfill such as DuPont DACRON® available from DuPont, or
polyester fiberfill products from Consolidated Textiles, Inc. of Charlotte, N.C.
Additionally, U.S. Pat. Nos. 5,104,725; 4,304,817; and 4,818,599; all of
which [are] incorporated by reference, disclose fiberfill fibers and blends
suitable for certain applications of the present invention.
’977 patent, col. 3, ll. 45-65. The commercial fiberfill examples described in the
specification are all synthetic or man-made materials. Likewise, the three United States
patents incorporated by reference each discloses and teaches the use of synthetic
polyester fiberfill or synthetic polyester fiberfill blends.
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During prosecution of the ’977 patent the United States Patent and Trademark
Office initially rejected AquaTex’s current claims 1 and 9 as anticipated by United States
Patent No. 4,897,297 (“the ’297 patent”). The rejection focused on the ’297 patent’s
disclosure of a method for cooling a person using a multi-layered, liquid-retaining
composite material comprising a fiberfill batting material. The examiner noted that the
disclosed fiberfill batting material was a “mixture of synthetic polymer pulp or wood pulp,
which is a fiber.” In response to the office action, AquaTex traversed the rejection by
distinguishing the ’297 patent and by adding an additional claim limitation. AquaTex
contended that: “The ’297 Patent discloses a compress that is made from an elastic
fabric and comprises a hydrogel-forming polymeric material. The absorbent polymer
filler material may be particulate, and may be accompanied by a diluent filling material.”
Important to our analysis, AquaTex stated “the ’297 Patent fails to disclose or suggest
the fiberfill batting and polymeric fibers and/or particles of the composite material in the
claimed method. Additionally, the ’297 Patent fails to disclose or suggest the
evaporative cooling method of the present invention.” Addressing an obviousness
rejection by the examiner based upon the ’297 patent, AquaTex similarly pointed out
that “the ’297 Patent does not cool by evaporation, and is elastic.”
AquaTex amended current claims 1 and 9 to specify cooling a person “by
evaporation” to distinguish the ’297 patent. As discussed in the office action response,
the combination of materials within the ’297 patent is designed to retain liquid and
insignificant amounts of evaporation would occur over long periods of time. AquaTex
contrasted the evaporative cooling method of the claimed invention which is designed to
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release rather than retain moisture. The examiner withdrew the rejection and allowed
the ’977 patent to issue.
Techniche’s accused products use Vizorb®, which is manufactured by Buckeye
Technologies. Vizorb® is a commercially available composite material primarily
containing cellulose fluffed pulp, but also incorporating both natural and synthetic fibers.
In particular, it is manufactured from wood cellulose, superabsorbent polymer,
bicomponent fiber, cellulose based carrier sheet, and a chemical binder. Physically,
Vizorb’s® fibers are between three to six millimeters in length and the product is glued
together. The superabsorbent in Vizorb® is generally referred to as a powder. It is
typically used in feminine hygiene products, baby diapers, and adult incontinence
products, not as filler for furniture, pillows, or sleeping bags.
Techniche moved for summary judgment on the ground that its accused product
does not infringe AquaTex’s ’977 patent literally or by application of the doctrine of
equivalents. AquaTex correspondingly moved for partial summary judgment that
Techniche’s products do infringe its ’977 patent.
The trial court construed “fiberfill” from the perspective of one of ordinary skill in the
art to encompass synthetic fibers, and not natural fibers or a combination of synthetic
and natural fibers. The court based its claim construction analysis on the ordinary
meaning of the claim term “fiberfill” as elicited from a number of technical and industry
dictionaries. Further, the court examined the specification of the ’977 patent to reach
the determination that the commercial fiberfill batting contemplated by the patentee
must consist of polyester or other synthetic fibers. It also found that AquaTex
disavowed the claim scope of natural fibers during prosecution of the ’977 patent by
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stating in its office action response that “the ’297 Patent fails to disclose or suggest the
fiberfill batting and polymeric fibers and/or particles of the composite material in the
claimed method.” The court concluded that AquaTex was barred from asserting any
doctrine of equivalents claim because it disavowed the use of wood pulp or a mixture of
synthetic and natural fibers as fiberfill in the water-absorbent layer. It reasoned that
prosecution history estoppel barred AquaTex from asserting that “fiberfill batting
material” could be partially comprised of natural fibers. The court granted Techniche’s
motion for summary judgment of noninfringement, denied its request for attorney fees,*
and denied AquaTex’s motion for sanctions, which is not at issue in this appeal.
AquaTex appeals and our jurisdiction is pursuant to 28 U.S.C. § 1295(a)(1).
Discussion
We review a district court’s grant of summary judgment de novo. Vanmoor v. Wal-
Mart Stores, Inc., 201 F.3d 1363, 1365 (Fed. Cir. 2000). “Summary judgment is
appropriate when there is no genuine issue as to any material fact and the moving party
is entitled to judgment as a matter of law.” Id. (citations omitted). Summary judgment is
improper “if the evidence is such that a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). “In the
context of a grant of summary judgment of no infringement, this court reviews the entire
infringement inquiry without deference.” Salazar v. Procter & Gamble Co., 2005 U.S.
App. LEXIS 1351, at *5 (Fed. Cir. July 8, 2005) (citing Omega Eng’g, Inc. v. Raytek
*
Because Techniche failed to cross appeal on this issue properly, we decline to
consider it. See Radio Steel & Mfg. Co. v. MTD Prods., Inc., 731 F.2d 840, 844 (Fed.
Cir. 1984) (“[A] party will not be permitted to argue before us an issue on which it has
lost and on which it has not appealed, where the result of acceptance of its argument
would be a reversal or modification of the judgment rather than an affirmance.”).
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Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003)). Application of prosecution history
estoppel to limit the doctrine of equivalents presents a question of law that this court
also reviews without deference. Glaxo Wellcome, Inc. v. Impax Labs., Inc., 356 F.3d
1348, 1351 (Fed. Cir. 2004).
Because the ’977 patent claims the use of evaporative cooling garments, rather
than the actual multi-layer fabric itself, AquaTex’s cause of action is one for contributory
infringement under 35 U.S.C. § 271(c). Although not directly infringing, a party may still
be liable for inducement or contributory infringement of a method claim if it sells
infringing devices to customers who use them in a way that directly infringes the method
claim.** R.F. Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1267 (Fed. Cir.
2003). “Liability for either active inducement of infringement or for contributory
infringement is dependent upon the existence of direct infringement.” Joy Techs., Inc.
v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993).
“An infringement analysis entails two steps. First, the meaning and scope of the
asserted patent claims is determined, and then the properly construed claims are
compared to the accused product or process.” Ranbaxy Pharms., Inc. v. Apotex, Inc.,
350 F.3d 1235, 1239-40 (Fed. Cir. 2003) (citing Cybor Corp. v. FAS Techs., Inc., 138
**
The trial court determined that in order for contributory infringement to exist,
Vizorb®, a component of Techniche’s products, must not have any substantial
noninfringing uses. Contributory infringement liability arises when one “sells within the
United States . . . a[n] . . . apparatus for use in practicing a patented process,
constituting a material part of the invention . . . and not a staple article or commodity of
commerce suitable for substantial noninfringing use . . . .” 35 U.S.C. § 271(c) (2000).
From the record before us, the “apparatus for use in practicing” the claimed methods is
Techniche’s multi-layered product. The proper question is not whether Vizorb® is a
staple article of commerce, which is readily apparent, but whether the accused
Techniche products are “suitable for substantial noninfringing use[s].”
05-1088 7
F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)). Claim construction is a question of law
reviewed de novo. Cybor Corp., 138 F.3d at 1456.
To ascertain the meaning of a disputed claim term “the words of a claim are
generally given their ordinary and customary meaning,” as would be understood by “a
person of ordinary skill in the art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, __,
(Fed. Cir. 2005) (en banc). The specification is of central importance in construing
claims because “the 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 *24. Where, as here,
the disputed claim term is technical or a term of art, “[t]he best source for understanding
[it] is the specification from which it arose, informed, as needed, by the prosecution
history.” Id. at *30 (quoting Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473,
1478 (Fed. Cir. 1998)). Along with the intrinsic evidence of record, including the
prosecution history, extrinsic evidence can be useful in claim construction and “technical
dictionaries may provide [help] to a court ‘to better understand the underlying
technology’ and the way in which one of skill in the art might use the claim terms.” Id. at
*38 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996)).
The claim limitation disputed by the parties is “fiberfill batting material,” and the
primary issue is whether it should be construed to encompass only synthetic fibers as
the trial court held. Resolution of the claim construction issue then controls whether
Vizorb® constitutes “fiberfill” as required by the ’977 patent for literal infringement
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because Vizorb® contains a combination of natural and synthetic fibers. Whether
Techniche is liable for contributory infringement depends upon this issue.
Turning to the specification of the ’977 patent, we examine the context of the term
“fiberfill” in the claims themselves. Both claims 1 and 9 call for a method of cooling a
person by evaporation through use of “a multi-layered, liquid-retaining composite
material comprising a fiberfill batting material, and hydrophilic polymeric fibers [particles
in claim 9] . . . .” As used in this context, the fiberfill batting material, in conjunction with
other polymeric fibers or particles, must be capable of liquid retention and evaporation.
The claims, however, offer little guidance as to the underlying composition of “fiberfill
batting material” apart from the functions it must be capable of performing.
The written description, on the other hand, does provide guidance as to the
composition of “fiberfill batting material.” In the detailed description of the invention,
AquaTex dictated that “[t]he particular fiberfill is not known to be critical. That is, any
commercial fiberfill may be used as long as it does not adversely affect the performance
of the end composite.” ’977 patent, col. 3, ll. 47-50. From this statement, the patentee
has informed the public that any commercial fiberfill that is capable of performing the
claimed functions will suffice. The written description continues by describing numerous
examples of commercial grade fiberfill, all of which are comprised entirely of synthetic
materials.
Because AquaTex chose to incorporate by reference the teachings of three United
States Patents to define the scope of the term “fiberfill,” these publications are highly
relevant to one of ordinary skill in the art for ascertaining the breadth of the claim term.
In United States Patent No. 4,304,817, the specification teaches that “[p]olyester fiberfill
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is used commercially in many garments and other articles because of its desirable
thermal insulating and aesthetic properties . . . . Most commercial polyester fiberfill has
been in the form of crimped polyester staple fiber.” col. 1, ll. 11-16. Similarly, the
remaining two patents describe “fiberfill” in terms of a synthetic, normally polyester, fiber
for use as a filling material. None of the patents discusses the possibility of using
natural fibers as commercial fiberfill batting.
“In addition to consulting the specification . . . a court ‘should also consider the
patent’s prosecution history, if it is in evidence.’” Phillips, 415 F.3d at __ (quoting
Markman v. Westview Instr., Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc)). In
interpreting “fiberfill,” the trial court relied heavily upon statements made during
prosecution of the ’977 patent as a clear disavowal of natural fibers for use as “fiberfill
batting material.” The prosecution history, however, is ambiguous and does not directly
address the composition of “fiberfill.” Thus, we disagree with the trial court that
AquaTex’s arguments foreclose potential compositions of fiberfill, and we decline to give
the prosecution history much weight. See Phillips, 415 F.3d at __ (because the
prosecution history represents an ongoing negotiation, “it often lacks the clarity of the
specification and thus is less useful for claim construction purposes”). Particularly, the
examiner represented that the prior art ’297 patent contained a blend of fiberfill batting
comprised of synthetic polymer pulp and wood pulp. Instead of addressing the
composition of the fiberfill batting in the prior art, AquaTex chose to traverse the
rejection by distinguishing how the overall composition of materials was used, and by
pointing out that the prior art composition of materials was designed to retain liquid for
long periods of time. The representations made during prosecution neither support nor
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discredit any particular meaning of the term “fiberfill.” They are not a clear disavowal of
claim scope.
The extrinsic evidence of record, in the form of technical dictionaries, supports
construing “fiberfill” as a purely synthetic fiber because it is consistently defined as such.
The definitions given in all but one of the dictionaries relied upon by the trial court define
“fiberfill” as either a synthetic fiber or as a man-made material used as a filler for various
items. The contradictory source was a chemical dictionary that simply gave two
examples of natural materials that could constitute “fiberfill.” Other extrinsic industry
sources examined by the trial court lend support to construing “fiberfill” as a synthetic or
polyester fill material. The United States Customs Service, in its publication “Fiber
Trade Names and Generic Terms” Nov. 1999, lists “Fiberfill” as a “Fiber Trade Name”
for the generic term “Polyester.” Similarly, the United States International Trade
Commission issued a ruling that polyester staple fiber is known in the industry as “fiber
for fill.” Certain Polyester Staple Fiber from Korea and Taiwan, Investigation Nos. 731-
TA-825-826 (Final) (May 5, 2000).
While we adhere to the adage that limitations from the specification must not be
imported into the claims, see, e.g., Nazomi Communications, Inc. v. ARM Holdings,
PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005), based upon the teachings of the
specification, one of ordinary skill in the textile manufacturing industry would understand
that commercial “fiberfill batting material” is made of synthetic or polyester fibers. The
combined teachings within the specification of the ’977 patent, the patents incorporated
by reference, and the consistent interpretations in the industry publications would lead
one skilled in the art to this conclusion. Therefore, we affirm the district court’s
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determination that the accused Techniche products do not literally infringe claims 1 and
9 of the ’977 patent.
However, “[t]he doctrine of equivalents allows the patentee to claim those
insubstantial alterations that were not captured in drafting the original patent claim but
which could be created through trivial changes.” Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002) (“Festo II”). Infringement under the
doctrine of equivalents requires that the accused product contain each limitation of the
claim or its equivalent. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,
40 (1997). An element in the accused product is equivalent to a claim limitation if the
differences between the two are insubstantial. The analysis focuses on whether the
element in the accused device “performs substantially the same function in substantially
the same way to obtain the same result” as the claim limitation. Graver Tank & Mfg. Co.
v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950) (internal quotation omitted).
Prosecution history estoppel can prevent a patentee from relying on the doctrine of
equivalents when the patentee relinquishes subject matter during the prosecution of the
patent, either by amendment or argument. Pharmacia & Upjohn Co. v. Mylan Pharm.,
Inc., 170 F.3d 1373, 1376-77 (Fed. Cir. 1999). “The doctrine of prosecution history
estoppel limits the doctrine of equivalents when an applicant makes a narrowing
amendment for purposes of patentability, or clearly and unmistakably surrenders
subject matter by arguments made to an examiner.” Salazar, 2005 U.S. App. LEXIS
13517, at *6; see Festo II, 535 U.S. at 736 (narrowing amendment for purposes of
patentability); Eagle Comtronics, Inc. v. Arrow Communication Labs., Inc., 305 F.3d
1303, 1316 (Fed. Cir. 2002) (argument-based estoppel).
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While at least one claim limitation was added here to overcome an anticipation
rejection during the prosecution of the patent, Techniche does not allege amendment-
based estoppel. Instead it asserts argument-based estoppel. To invoke argument-
based estoppel, the prosecution history “must evince a clear and unmistakable
surrender of subject matter.” Pharmacia, 170 F.3d at 1377 (internal quotation omitted).
To determine if subject matter has been relinquished, an objective test is applied,
inquiring “whether a competitor would reasonably believe that the applicant had
surrendered the relevant subject matter.” Cybor Corp., 138 F.3d at 1457.
We do not see the clear and unmistakable surrender of subject matter required to
invoke argument-based prosecution history estoppel. During prosecution of the ’977
patent AquaTex stated that “the ’297 Patent fails to disclose or suggest the fiberfill
batting and polymeric fibers and/or particles of the composite material in the claimed
method.” Techniche and the trial court believe this argument limited claim coverage of
fiberfill to only synthetic fibers. The argument, however, does not address or even
relate to the composition of the fiberfill batting. Rather, it was based on the ’297 patent
not teaching or suggesting the overall composition of materials, or the use of the
disclosed compress to cool a person through evaporation. The compress of the ’297
patent was designed to retain much of its liquid over long periods of time, thus giving
the material a high heat capacity and a high insulative value. ’297 patent, col. 6, ll. 24-
55. The claimed invention of the ’977 patent achieves cooling through evaporation.
The arguments made during prosecution, and the corresponding addition of the
claim limitation “by evaporation,” indicate that AquaTex was distinguishing the overall
method of cooling of its claimed invention from that of the ’297 patent. The subject
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matter surrendered by the narrowing amendment bears no relation to the composition of
the fiberfill batting material. There is no indication in the prosecution history whether or
not AquaTex agreed or disagreed with the examiner’s statement that the fiberfill found
in the prior art comprised natural fibers. Thus, the trial court erred in holding that
prosecution history estoppel barred AquaTex from asserting infringement under the
doctrine of equivalents. Upon remand the trial court must consider whether or not each
limitation of the claims in dispute, or its equivalent, is present in the accused Techniche
products. See Graver Tank, 339 U.S. at 608.
Conclusion
Accordingly, the judgment of the United States District Court for the Middle District
of Tennessee is affirmed-in-part, reversed-in-part, and the case is remanded for further
proceedings consistent with this opinion.
COSTS
No costs.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED
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