115 F.3d 1576 (Fed. Cir. 1997), 96-1427, O.I. Corp. v. Tekmar Co., Inc.

Docket Nº:96-1427.
Citation:115 F.3d 1576
Party Name:42 U.S.P.Q.2d 1777 O.I. CORPORATION, Plaintiff-Appellant, v. TEKMAR COMPANY INCORPORATED, Defendant-Appellee.
Case Date:May 22, 1997
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1576

115 F.3d 1576 (Fed. Cir. 1997)

42 U.S.P.Q.2d 1777

O.I. CORPORATION, Plaintiff-Appellant,

v.

TEKMAR COMPANY INCORPORATED, Defendant-Appellee.

No. 96-1427.

United States Court of Appeals, Federal Circuit

May 22, 1997

As Amended on Limited Grant of Rehearing and Denial of

Rehearing In Banc July 17, 1997.

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Michael O. Sutton, Fish & Richardson P.C., Houston, TX, argued, for plaintiff-appellant. With him on the brief was Albert B. Deaver, Jr. Also with him on the brief were Robert E. Hillman, of Boston, MA, and Richard J. Anderson, of Minneapolis, MN.

Jesse J. Jenner, Fish & Neave, of New York City, argued, for defendant-appellee. With him on the brief were W. Edward Bailey, William J. McCabe, and Pablo D. Hendler.

Before RICH, MAYER, and LOURIE, Circuit Judges.

LOURIE, Circuit Judge.

O.I. Corporation appeals from the summary judgment of the United States District Court for the Southern District of Texas that Tekmar Company Inc. did not infringe U.S. Patents 5,358,557 and 5,470,380. O.I. Corp. v. Tekmar Co., No. 95-CV-113 (S.D. Tex. June 17, 1996). Because the district court did not err in concluding that there were no genuine issues of material fact and that Tekmar was entitled to judgment as a matter of law that it did not infringe the patents, we affirm.

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BACKGROUND

OI owns the '557 and '380 patents, the '380 patent being a division of the '557 patent. The '380 and '557 patents relate to an apparatus and a method, respectively, for removing water vapor from a sample to be analyzed in a gas chromatograph. In the apparatus, as shown below in Figure 7 of the patents, an inert gas stream is first bubbled through a sample contained within a sparge vessel (13). The gas stream purges both contaminant and water vapor as it passes through the sample. The stream of gas, contaminant, and water, referred to as an analyte slug or stream, exits the sparge vessel and flows through a temperature-controlled passage in a water management device (10) to a trap (11). The trap (11) is heated and a gas stream flows through it in the opposite direction, desorbing the concentrated contaminants. The stream then flows back through the temperature-controlled passage at a second, lower temperature to the gas chromatograph (12) for measurement of the contaminants.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE


Figure 3 of the patents, below, is a side view of the water management device (10) showing an embodiment of the passage (31). The passage (31) is contained within a body (20) having a first section (34) at a right angle to a second section (35). In this embodiment, the passage is internally threaded, which causes a swirling of the analyte slug for assisting in the removal of water vapor.

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NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE


The district court treated claim 17 of the '380 patent and claim 9 of the '557 patent as representative 1 of the asserted claims of the patents; these claims read as follows:

17. An apparatus for removing water vapor from an analyte slug passing between a sparge vessel, trap and analytical instrument, comprising:

(a) first means for passing the analyte slug through a passage heated to a first temperature higher than ambient, as the analyte slug passes from the sparge vessel to the trap; and

(b) second means for passing the analyte slug through the passage that is air cooled to a second temperature below said first temperature but not below ambient, as the analyte slug passes from the trap to the analytical instrument.

9. A method for removing water vapor from an analyte slug passing between a sparge vessel, trap and gas chromatograph, comprising the steps of:

(a) passing the analyte slug through a passage heated to a first temperature higher than ambient, as the analyte slug passes from the sparge vessel to the trap; and

(b) passing the analyte slug through the passage that is air cooled to a second temperature below said first temperature but not below ambient, as the analyte slug passes from the trap to the gas chromatograph.

Tekmar sells similar devices, and OI sued Tekmar, alleging that the Tekmar 3000 2 "purge and trap" devices infringed the apparatus and method claims of the patents. Tekmar moved for summary judgment of

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noninfringement, and the district court granted its motion. The court construed both the method and apparatus claims under section 112, p 6, particularly focusing on the meaning of the word "passage." It concluded that the claims were limited to passages of the type disclosed in the written description portion of the specification, and equivalents thereof, which did not include the passages in the Tekmar devices, which contain smooth-walled coiled tubing. The court stated that "the patented 'passage' specifically excludes non-smooth and noncylindrical [sic, smooth and cylindrical] devices from the host of structures it references, whereas the corresponding component of the accused device is structurally smooth and cylindrical," and concluded that the claims did not cover the accused devices. Accordingly, the court entered final judgment of noninfringement. OI now appeals to this court.

DISCUSSION

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. Fed.R.Civ.P. 56(c); Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77, 12 USPQ2d 1382, 1383 (Fed.Cir.1989). Thus, summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2509, 91 L.Ed.2d 202 (1986). In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the nonmovant. Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274, 35 USPQ2d 1035, 1038 (Fed.Cir.1995). We review de novo a district court's grant of summary judgment. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994).

  1. Apparatus Claim 17

    OI argues that the district court erred in applying section 112, p 6, to the word "passage." In particular, it asserts that the passage recited in paragraph (a) of claim 17 is not part of the means recited in the means-plus-function clause of that claim and therefore that it should not be interpreted under and limited by section 112, p 6. Tekmar responds that the passage recited in the claim is part of the recited means, as it is required for passing the analyte slug, that it is therefore part of a means-plus-function clause, and that the word "passage" as so construed does not include smooth-walled tubing. It refers to the written description, which discloses non-smooth tubing for swirling the analyte slug and which distinguishes over the prior art by stating that prior art tubing is generally smooth-walled.

    Determining whether a patent claim has been infringed requires a two-step analysis: "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839 (Fed.Cir.1993). Section 112, p 6, provides that:

    An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

    35 U.S.C. § 112, p 6 (1994) (emphasis added).

    We conclude that the district court erred in applying section 112, p 6, to the word passage in apparatus claim 17, but that this error was harmless. There is no question that this section of the statute does apply to claim 17. It is an apparatus claim with means-plus-function clauses and no structure is recited in support of any means. The first and second means clauses of the claim recite "means for passing" an analyte slug through a passage without reciting definite structure in support of any means, and such clauses are therefore subject to the requirements of 35 U.S.C. § 112, p 6. See Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531, 41 USPQ2d 1001, 1006 (Fed.Cir.1996) (stating that to invoke section 112, p 6, a means-plus-function limitation must not recite definite structure for performing the described

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    function); see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584, 39 USPQ2d 1783, 1787 (Fed.Cir.1996) (stating that use of the phrase "means for" generally invokes section 112, p 6). "Literal infringement of a claim containing a means clause requires that the accused device perform the identical function as that identified in the means clause and do so with structure which is the same as or equivalent to that disclosed in the specification." Micro Chem., Inc. v. Great Plains Chem. Co., 103 F.3d 1538, 1547, 41 USPQ2d 1238, 1245-46 (Fed.Cir.1997).

    However, the court erroneously concluded that the word "passage" recited in the claim is part of a means-plus-function clause and hence subject to the limitations of section 112, p 6. The recited function in...

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