Augustine Medical

• Citation: 181 F.3d 1291,50 USPQ2d 1900
• Decision Date: 08 June 1999
• Docket Number: 98-1266,98-1244,98-1002,Nos. 98-1001,98-1054,s. 98-1001
• Parties: (Fed. Cir. 1999) AUGUSTINE MEDICAL, INC., Plaintiff-Cross Appellant, v. GAYMAR INDUSTRIES, INC. and MEDISEARCH P R, INC., Defendants-Appellants, and MALLINCKRODT GROUP, INC. and MALLINCKRODT MEDICAL, INC., Defendants-Appellants
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1291

181 F.3d 1291 (Fed. Cir. 1999)

AUGUSTINE MEDICAL, INC., Plaintiff-Cross Appellant, v. GAYMAR INDUSTRIES, INC. and MEDISEARCH P R, INC., Defendants-Appellants, and MALLINCKRODT GROUP, INC. and MALLINCKRODT MEDICAL, INC., Defendants-Appellants.

Nos. 98-1001, 98-1002, 98-1054, 98-1244, 98-1266

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

June 8, 1999.

Rehearing Denied; Suggestion for Rehearing En Banc Declined August 6, 1999.

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

J. Randall Benham, Augustine Medical, Inc., of Eden Prairie, Minnesota, argued for plaintiff-cross appellant. With him on the brief were Jacob M. Holdreith, Craig J. Lervick, and Robert M. Rauker, Oppenheimer Wolff & Donnelly LLP, of Minneapolis, Minnesota.

Robert J. Lane, Jr., Hodgson, Russ, Andrews, Woods & Goodyear, LLP, of Buffalo, New York, argued for defendants-appellants Gaymar Industries, Inc., et al.

Raymond A. Kurz, Rothwell, Figg, Ernst and Kurz, of Washington, D.C., argued for defendants-appellants Mallinckrodt Group, Inc., et al. With him on the brief was G. Franklin Rothwell.

Before MAYER, Chief Judge, RADER, and GAJARSA, Circuit Judges.

RADER, Circuit Judge.

Augustine Medical, Inc. filed two separate lawsuits, one against Mallinckrodt Group, Inc. and Mallinckrodt Medical, Inc. (collectively, Mallinckrodt), and another against Gaymar Industries, Inc. and Medisearch P R, Inc. (collectively, Gaymar). Each lawsuit alleged infringement of Augustine Medical's U.S. Patent Nos. 5,300,102 (the '102 patent), 5,324,320 (the '320 patent), 5,405,371 (the '371 patent), 4,572,188 (the '188 patent), and 5,350,417 (the '417 patent) (collectively, the Augustine patents). The Augustine patents claim features of convective (or forced-air) thermal blankets. The United States District Court for the District of Minnesota consolidated these separate suits for trial. Before trial, the district court granted summary judgment of invalidity of several asserted claims and non-infringement of others. At trial, a jury found infringement of the remaining claims under the doctrine of equivalents. Accordingly, the district court issued a permanent injunction prohibiting Mallinckrodt and Gaymar from making certain convective thermal blankets.

Because prosecution history estoppel limits application of the doctrine of equivalents to the asserted claims, this court reverses the district court's failure to grant judgment as a matter of law (JMOL) of non-infringement and vacates the entry of the permanent injunction. In addition, because the July 10, 1990 parent application does not provide sufficient support for claims 1, 3, 4, and 8 of the '371 patent, this court affirms the district court's decision that those claims are invalid under 35 U.S.C. 102(b) (1994). This court also affirms the district court's summary judgment of non-infringement on the '188 patent. Finally, this court affirms the dismissal of Gaymar's invalidity claim on the '417 patent.

I.

Convective thermal blankets inflate to direct warm (or cool) air onto a person. Surgeons often use these blankets during and after an operation to prevent or treat hypothermia caused by surgical conditions. Hypothermia results when a patient's body temperature drops below a certain threshold. Surgery often presents the threat of hypothermia. A patient's body temperature may drop significantly during surgery because anesthesia prevents the patient's body from regulating its own temperature. Additionally, operating rooms - kept cool to accommodate the surgeon's working conditions and to reduce the spread of germs - can chill patients. Moreover, surgery often calls for administration of cool intravenous fluids at a time when the patient's body cavity is open.

A convective thermal blanket over the patient is thus necessary to prevent or treat hypothermia during and after surgery. Heated air from a warming unit inflates the blanket. Once inflated, the blanket directs heated air onto the patient through small holes (or "exit ports") in the undersurface of the blanket. With careful use, a convective blanket regulates patient temperature and prevents hypothermia.

The Augustine patents all stem from related applications and claim features in a particular convective thermal blanket design. Dr. Scott D. Augustine developed these features. The Augustine blanket design contains a series of hollow tubes with rounded upper surfaces and flattened lower surfaces joined in a parallel array. The geometric design of this structure allows it to "self-erect" when inflated and helps the blanket perform its function of warming the patient. According to the earliest of the Augustine patents, the '188 patent, the Augustine blanket has a "self-supporting structure having a generally rounded or elliptical cross-sectional shape which contacts the patient only at the tubes which are immediately adjacent the keystone tube." Col. 4, ll. 12-16. When in use, air pressure from the exit ports raises these tubes slightly above the patient so that none of the tubes are in contact with the patient. This slight gap between the patient and the blanket facilitates "circulation . . . through those exit ports." Col. 4, ll. 16-20. According to the specifications of the other three Augustine patents, the inflated blanket "erects itself into a Quonset hut-like structure." The '102 patent, col. 3, ll. 31-35, 49-50; the '320 patent, col. 3, ll. 11-12, 20-22; the '371 patent, col. 4, ll. 10, 17-19. Figures in each of the Augustine patents illustrate this self-supporting, Quonset hut-like structure. Figure 2 of the '188 patent is representative.

[Tabular or Graphical Material Omitted]

Mallinckrodt and Gaymar manufacture and sell convective warming blankets to prevent or treat hypothermia. Mallinckrodt's and Gaymar's blankets (the accused blankets) are similar to each other in construction. The accused blankets feature an inflatable quilt-like structure. The accused blankets attach two sheets of the same amount of flexible, lightweight material around their periphery and at various spots along their surfaces. In operation, heated air flows onto a patient's body from holes in the undersurface of the accused blankets, but the blankets do not form a self-supporting or Quonset hut-like structure. Instead, the accused blankets lie flat when inflated on a flat surface and rest substantially on a patient when in use. Mallinckrodt began selling its first model of convective warming blanket in June 1992. Gaymar began selling forced-air blankets in March 1992.

In October 1994, after issuance of the '102 and '320 patents in April and June 1994, Augustine Medical filed separate lawsuits against Mallinckrodt and Gaymar, initially alleging infringement of these two patents only. Augustine Medical later amended its original complaint to assert infringement of the '371, '188, and '417 patents as well.

After consolidation of these lawsuits in the district court, Mallinckrodt and Gaymar moved for partial summary judgment, seeking a declaration of invalidity as to claims 1, 3, 4, and 8 of the '371 patent. The district court referred the case to a magistrate judge for recommendations. The magistrate judge concluded that the display of a prototype blanket triggered a 102(b) on-sale bar. In reaching that conclusion, the magistrate judge found that the parent application Serial No. 07/550,757 (the '757 application), which was filed within one year after the display, did not sufficiently describe the invention of these claims of the '371 patent. Thus, the magistrate judge accorded these claims the January 8, 1991 filing date of their continuation-in-part (CIP) application, not the June 10, 1990 filing date of the '757 application. With that finding in place, the magistrate judge recommended granting the summary judgment motion because Augustine Medical had "displayed, sold and distributed a written description of the device" embodying these claims more than one year before the effective filing date of the claims. The district court adopted the magistrate judge's Report and Recommendation and invalidated these claims.

In the fall of 1996, Augustine Medical signed a stipulation of dismissal with prejudice of all infringement claims arising out of the '417 patent. Augustine Medical further stipulated that none of Gaymar's products infringe any claim of the '417 patent. Based on these stipulations, the magistrate judge discerned no actual controversy amongst the parties concerning the '417 patent, thereby mooting Gaymar's claim that the '417 patent was invalid. The district court adopted this conclusion.

Before trial, both Gaymar and Mallinckrodt moved for partial summary judgment of non-infringement of the remaining claims of the '188, '102, '320, and '371 patents. In part, Gaymar and Mallinckrodt based these motions on prosecution history estoppel. With respect to the '188 patent, the district court granted summary judgment of non-infringement in favor of both Mallinckrodt and Gaymar. In this judgment, the district court followed the magistrate judge's recommendation. The magistrate judge had first construed the claims and found, based on that interpretation, that the accused blankets did not literally infringe the '188 patent as a matter of law. Then, based on the "all elements rule," see Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 U.S.P.Q.2D (BNA) 1737, 1739-40 (Fed. Cir. 1987) (en banc); Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, , 117 S. Ct. 1040, 1054, 137 L. Ed. 2d 146, 41 U.S.P.Q.2D (BNA) 1865, 1871 (1997), the magistrate judge stated that application of the doctrine of equivalents to the claims of the '188 patent would render some of the claim elements meaningless. Specifically, because interpreting the claims as advocated by Augustine Medical would eliminate the claim limitations of "flattened," "substantially smooth," and "parallel array of hollow tubes," the district court found that...