Justia Federal District Court Opinions

In this patent infringement action, Sage Products, Inc. (Sage) and Devon Industries, Inc. (Devon) cross-appeal the judgment of the United States District Court for the Central District of California. On the parties' cross-motions for summary judgment, the district court held that Devon did not infringe Sage's U.S. Patents Nos. 4,779,728 ('728 patent) and 4,375,849 ('849 patent), and that Sage did not infringe Devon's U.S. Patent No. 4,315,592 ('592 patent). Because the district court properly interpreted the claims of each patent to preclude literal infringement and properly determined that there could be no infringement under the doctrine of equivalents, this court affirms.I.

This lawsuit began on April 10, 1992, when Sage sued Devon for infringement of several patents relating generally to containers for disposing of hazardous medical waste, including hypodermic needles. The '728 patent covers a disposal container with a slot at its top to allow entry of waste materials into the container and with constrictive barriers above and below that slot to restrict access to the interior of the container. The '849 patent covers a disposal container with a notched slot for unwinding needles from their accompanying syringe.

Devon counter-sued on its own patent, the '592 patent. That patent covers a disposal container with two slotted baffles that allow a person to deposit waste products into the container without contacting the materials already therein.

Acting on cross-motions for summary judgment, the district court held that neither party infringed the other party's patents either literally or by equivalents. Therefore, the district court entered judgment for Sage and Devon on the corresponding claims of the other. Both parties now appeal.

Sage's '728 patent discloses a disposal container that allows a user to deposit hazardous medical waste without touching waste already in the container. Figure 3 of the patent, reproduced below, illustrates the claimed features. The disposal container 10 includes a container body 12 with an elongated slot 16 at its top. A barrier, having a first constriction 18 and a second constriction 20, restricts access to the interior of the container body. Closure 28 closes the container.

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The only independent claim of the '728 patent (with emphasis to highlight disputed elements) reads:

a. a hollow upstanding container body,

b. an elongated slot at the top of the container body for permitting access to the interior of the container body,

c. barrier means disposed adjacent said slot for restricting access to the interior of said container body, at least a portion of said barrier means comprising

i. a first constriction extending over said slot, and

ii. a complementary second constriction extending beneath said slot, and

d. a closure disposed adjacent said slot.

The district court properly interpreted "top of the container body" to mean the "highest point, level, or part of." The court also properly interpreted "extending over said slot" to require that the first constriction be "above" the elongated slot. The patentee nowhere indicated any intention to deviate from these ordinary meanings of the claim terms. Thus, they control. See York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572, 40 USPQ2d 1619, 1622 (Fed.Cir.1996) ("Without an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning.").

Before the district court, Sage presented an infringement argument summarized in the following marked-up patent drawing. The drawing is taken from Devon's U.S. Patent No. 5,080,251, which the parties agree accurately depicts Devon's accused products.

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The claimed device includes a storage container 19 with cap 20. The cap 20 has a slot 22 therein, which is notched so that it grasps the hub 12 of a syringe needle 11 and allows the user to unscrew the needle 11 without touching it. Particularly important to the present dispute, the claimed device also includes a movable closure means that may control access to the slot. In the figures above, the closure means is element 21, a flat disc that rotates about its center point to selectively allow or deny access to slot 22. In another embodiment illustrated in the patent, the closure means is a hinged lid that drops downward into a locked position to prevent access to the slot or alternatively lifts upward to allow access.

The '849 patent contains two independent claims, both of which are at issue in this appeal. Claims 1 and 10 read (with emphasis to highlight disputed limitations):

1. A needle removal and disposal device for detaching single or double-ended sampling needles which are thread engaged to a syringe body and storing detached sampling needles, said device comprising:

storage container means;

cap means associated with said storage container means, said cap means having a plate means with slot means opening therethrough, said slot means including integral wall means depending into said storage container means, entry port means and a plurality of stepped notches each having a different gap dimension for accommodating different sized needle hub portions; and

closure means pivotably associated with said plate means and being movable with respect to said slot means for controlling access thereto;

wherein said device is capable of engaging a sampling needle hub portion at a stepped notch whereby a syringe thread-engaged to a hub portion may be rotated with respect to the hub portion for detachment of a sampling needle, whereby detached needles and hub portions may be deposited through said entry port means into said storage container means, said device providing said storage container means for accumulation of sampling needles subsequent to detachment from syringes, and whereby said pivotable closure means is capable of moving to close access to said slot means and provide safe storage of sampling needles within said storage container means.

10. A needle removal and disposal device for use with single or double-ended sampling needles having hub portions thread-engaging a syringe at the hub portion, said device comprising:

cap means having a plate means with slot means opening therethrough, said slot means including entry port means and a plurality of stepped notches, each notch having a different notch gap dimension permitting engagement with different sized needle hub portions, said slot means further including depending wall means integral with said plate means,

movable closure means pivotably associating with said cap means at pivot means thereof, said movable closure means being selectively movable between an open access and closed access position with respect to said slot means,

storage container means, associating with said cap means, said slot means opening to said storage container means, and said wall means depending into said storage container means,

wherein said device facilitates detaching a sampling needle from a syringe by engagement of a needle hub portion at a stepped notch and rotation of the syringe with respect to said sampling needle hub portion, whereby a detached sampling needle and associated hub portion may be deposited through said entry port means for storage within said storage container means therebelow.

The parties' dispute centers on the undisputed fact that Devon's accused product has a flat hinged lid that can be left open, or alternatively placed in a closed position. However, once closed, Devon's lid locks in place and does not reopen. Thus, the parties argue about whether the claims require the "closure means" or "movable closure means" to move freely from a closed position to an open position. This court upholds the district court's conclusion that the claims require this movable opening and closing feature.

As a starting point, the parties dispute whether the relevant element in each claim invokes means-plus-function treatment. The use of the word "means," which is part of the classic template for functional claim elements, gives rise to "a presumption that the inventor used the term advisedly to invoke the statutory mandates for means-plus-function clauses." York Prods., 99 F.3d at 1574, 40 USPQ2d at 1623; see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584, 39 USPQ2d 1783, 1786-87 (Fed.Cir.1996). However, the presumption is not conclusive. For example, where a claim uses the word "means," but specifies no corresponding function for the "means," it does not implicate section 112. See, e.g., York Prods., 99 F.3d at 1574, 40 USPQ2d at 1624 (construing "means" in claim without reference to section 112, paragraph 6). Likewise, where a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format. See, e.g., Cole v. Kimberly-Clark Corp., 102 F.3d 524, 41 USPQ2d 1001 (Fed.Cir.1996).

In the present case, the "closure means" of claim 1 and the "movable closure means" of claim 10 use the word "means" and, thereby, presumptively implicate section 112, paragraph 6. Both claims recite a function for the "means"--that is, closing the slot means. They also require that the closure means perform the additional functions of "controlling access" to the slot (claim 1) or being "selectively movable between an open access and closed access position" (claim 10). Neither claim explicitly recites the structure, material, or acts needed to perform these functions. Thus, the means-plus-function limitations invoke the interpretation regimens of section 112, paragraph 6.

After identifying the "specified function" of the unrecited means, a court must consult the specification to define the structure, material or acts corresponding to this claimed function. 35 U.S.C. § 112, S >> 6. As the district court observed, the specification makes clear the structure that corresponds to the "closing" function. There are two embodiments. In the first, a rotatable disc with an opening sits above the container cap. The disc rotates so that its opening exposes the slot means in the cap, or alternatively, so that it blocks access to the slot means. In this way, the rotatable disc allows the user selective access to the container. The second embodiment uses a hinged flap that can be pressed down to cover the slot means, or alternatively pulled up to allow access to the slot means. Both embodiments allow the user to move the closure means from the closed position to the open position and back.

Further, the claims contain further functional recitations that require an openable lid. Specifically, claim 1 requires that the closure means perform the additional function of "controlling access" to the slot means. Likewise, claim 10 requires that movable closure means be "selectively movable between an open access and closed access position with respect to said slot means." Thus, as the district court found, the structure disclosed for the claimed "closing" function is a pivotable lid that can be moved to and from the open and closed positions. To be an equivalent of these disclosed means under section 112, paragraph 6, a structure must perform these express functions.

Looking to the rest of the intrinsic evidence of claim meaning, this court discerns further confirmation that the claims require a closure means that reopens. The written description expressly describes the importance of an openable closure means. For example, the patent describes how the closure means in one preferred embodiment works:

Cap means 51 includes slot means 53 having access thereto controlled by a closure means, such as closure lid 54, which includes a hinged pivot means rather than the previously described rotatable access aperture.... This arrangement permits lid 54 to cover cap means 51 and then to pivot upward, as shown in phantom, to allow access to slot means 53. ... Pivoting movement to the closed or open position is made possible by the user grasping handle 60 to pivot lid 54 downward or upward.

'849 patent, column 6, lines 43-61 (emphasis added). Further, in the summary of the invention, the patentee described the usefulness of the claimed invention:

The invention further provides a movable lid for closure of the storage container. The lid permits safe transportation to a refuse disposal, and portability for carrying on the person from patient to patient.

'849 patent, column 1, lines 61-64 (emphasis added). Unless the lid reopened, it would not facilitate carrying the disposal container "from patient to patient." Finally, and most importantly, the written description expressly indicates the importance of choosing a closure means that allows movement to an open position:

Movable closure means need not be limited to the circular disc-like formation for lid 21 and may also comprise different shapes, provided movement to closed and open positions with respect to slot means 22 is attained.

'849 patent, column 5, lines 30-34 (emphasis added).

This court also finds support for the district court's claim interpretation in the prosecution history. During prosecution of the application leading to the '849 patent, the applicant argued:

The British [prior art] patent, similar to the device shown in the German [prior art] patent, offers a relatively deformable top with a narrow opening wherein no hint or suggestion is found for the accommodation of a closure, more particularly a pivotable closure, for granting or denying access to the slot means.

Amendment (September 13, 1982), p. 3 (emphasis added). In light of this record, this court concludes that the district court correctly interpreted the claims to require a closure means that moves from a closed position to an open position and back, to control access to the slot means.

Having properly interpreted the claims, the district court rightly considered whether the accused devices could infringe. As indicated above, the accused devices have lids that lock closed and cannot be moved back into an open position. Under the district court's correct claim interpretation, these lids do not fall within the literal scope of the claims. The trial court correctly foreclosed literal infringement.

Even where an accused device falls outside the literal bounds of a claim, it may still infringe under the doctrine of equivalents if every claim element is literally or equivalently present in the accused device. See Hilton Davis, 62 F.3d at 1518, 35 USPQ2d at 1645. However, "[i]t is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety." Warner-Jenkinson, at ----, 117 S.Ct. at 1049. Thus, in cases where the patentee's theory of equivalents would "entirely vitiate a particular claim element, partial or complete summary judgment should be rendered by the court." See id. at ---- n. 8, 117 S.Ct. at 1053 n. 8; Pennwalt, 833 F.2d at 935, 4 USPQ2d at 1739 ("That [function-way-result] formulation, however, does not mean one can ignore claim limitations.").

In this case, as in every case involving the doctrine of equivalents, Sage seeks to cover by equivalents that which it cannot cover literally. Sage argues that the use of a permanently locking lid is equivalent, for purposes of the claimed invention, to an openable lid. However, such an application of the doctrine of equivalents would effectively remove an express functional requirement of the claims, namely the "control access" function. By its use of means-plus-function limitations, the patentee in this case indicated some flexibility about what means would suffice to perform the "closing" function. Perhaps if there was nothing further to limit the scope of the claims, this court might reach a different conclusion about the permissible scope of equivalents. However, there is more. The patentee claimed additional functional restrictions--the ability to "control access" or to be "selectively movable between an open access and a closed access position"--that are not met by the accused devices. The patentee also instructed, in the written description, that "movement to closed and open positions" was the only critical restriction on the structure, material, or acts that could be used as a "closure means."

These functional limitations on the closure means, expressly recited in the claims and the written description, focus the function-way-result analysis for purposes of the doctrine of equivalents. An accused element cannot perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed element if it does not perform at least a function equivalent to that expressly recited in the claimed element. Put another way, a jury could not find the differences between the claimed and accused devices insubstantial without ignoring these claimed functions in their entirety. A jury has no license to do so. See, e.g., Conopco, 46 F.3d at 1562, 32 USPQ2d at 1228 ("The doctrine of equivalents cannot be used to erase 'meaningful structural and functional limitations of the claim on which the public is entitled to rely in avoiding infringement.' " (internal citations omitted)).

Where a patent claim recites a specific function for an element of the claim and the written description reiterates the importance of that particular function, a patentee may not later argue, during the course of litigation, that an accused device lacking that functionality is equivalent. See, e.g., Pennwalt, 833 F.2d at 938, 4 USPQ2d at 1742-43 ("Having secured claims only by including very specific functional limitations, Pennwalt now seeks to avoid those very limitations under the doctrine of equivalents. This it cannot do."). To hold otherwise would be to frustrate the important "definitional and public-notice functions of the statutory claiming requirement." Warner-Jenkinson, at ----, 117 S.Ct. at 1049. Thus, under the circumstances of this case, the trial court properly granted judgment as a matter of law that Devon did not infringe the claims of the '849 patent.

Like the other patents-in-suit, Devon's '592 patent relates to a receptacle for disposing of expendable items, such as hazardous medical waste, without allowing a user to contact previously accumulated waste. Figure 1 of the '592 patent illustrates the claimed features.

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