Al-Site Corp. v. Bonneau Co., AL-SITE

Citation33 USPQ2d 1136,22 F.3d 1107
Decision Date31 March 1994
Docket NumberNo. 93-1167,AL-SITE,93-1167
PartiesNOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. CORP., Plaintiff-Appellant, v. The BONNEAU COMPANY, Defendant-Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Before RICH, RADER and SCHALL, Circuit Judges.

DECISION

SCHALL, Circuit Judge.

Al-Site Corporation (Al-Site), assignee of U.S. Patent 4,976,532 (the '532 patent), appeals from the November 23, 1992 final judgment of the United States District Court for the Central District of California, Case No. CV 91-2167, granting partial summary judgment of non-infringement of the '532 patent in favor of The Bonneau Company (Bonneau). Because Al-Site has failed to identify evidence of record that establishes the existence of a genuine issue of material fact, we affirm.

DISCUSSION
I

The '532 patent claims a hanger for displaying eyeglasses. In the district court, Al-Site alleged that two separate products manufactured by Bonneau infringed independent claim 8 of the '532 patent. Bonneau discontinued manufacture of one of the accused products shortly after Al-Site had filed suit in the district court. Bonneau continued to manufacture, however, the second of its accused products--namely, the "Bonneau Slide Hook"--which is the subject of the present appeal. Bonneau moved for partial summary judgment that its Slide Hook did not infringe the '532 patent, either literally or under the doctrine of equivalents. In pertinent part, claim 8 recites "a body having aperture means adapted to receive a horizontally extending cantilevered support." Bonneau conceded for the purposes of summary judgment that its accused Slide Hook incorporated all of the limitations of claim 8 except for the "aperture means."

Relying on the specification and drawings of the '532 patent, the district court concluded that a proper construction of claim 8 limited the aperture means to an enclosed hole for performing the recited function of "receiv[ing] a horizontally extending cantilevered support." It was undisputed that Bonneau's Slide Hook does not have an enclosed hole, but rather utilizes a "T-shaped" configuration to perform the claimed function. In view of this fact, the district court concluded that Bonneau had established the absence of a genuine issue of material fact regarding literal infringement of claim 8. Concerning infringement under the doctrine of equivalents, it was conceded by Al-Site that, while the claimed invention was usable with either a single support arm or a pair of support arms, Bonneau's Slide Hook was not usable with a single support arm. Rather, the Bonneau Slide Hook necessarily required a pair of support arms due to its T-shaped configuration. In view of this fact, the district court accepted Bonneau's position that no genuine issue of material fact existed with respect to the conclusion that the claimed and accused devices do not operate in substantially the same way. The questions presented on appeal are (i) whether the district court correctly interpreted claim 8 as a matter of law, and (ii) whether the district court correctly determined the absence of a genuine issue of material fact in granting Bonneau's motion for partial summary judgment of non-infringement.

II
A.

In deciding whether to grant a motion for summary judgment, a court must first determine whether a genuine issue exists as to any material fact. Fed.R.Civ.P. 56(c). A genuine dispute is shown to exist if sufficient evidence is presented such that a reasonable fact finder could decide the issue in favor of the non-movant. Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562 (Fed.Cir.1987). In other words, a motion for summary judgment is properly granted only, "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." A.B. Chance Co. v. RTE Corp., 854 F.2d 1307, 1310 (Fed.Cir.1988). If the moving party satisfies its burden, summary judgment must be granted unless the non-movant presents evidence sufficient to establish the existence of a genuine issue of material fact. See SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1116 (Fed.Cir.1985). To establish the existence of a genuine issue of material fact, the non-movant "must point to an evidentiary conflict in the record; mere denials or conclusory statements are insufficient." Id. (citing Barmag Barmer Maschinenfabrik AG v. Murata Mach., 731 F.2d 831, 836 (Fed.Cir.1984)). Whether the above standards for summary judgment have been met and whether the procedural and substantive law were correctly applied by the district court are reviewed de novo by this court. Mingus Constructors, Inc. v. United States, 812 F.2d 1387, 1390 (Fed.Cir.1987).

B.

Determining whether a patent is infringed involves a two-step inquiry: (1) interpreting the claims; and (2) comparing the properly interpreted claims to the accused device. Read Corp. v. Portec, Inc., 970 F.2d 816, 821 (Fed.Cir.1992). Claim interpretation is a question of law amenable to summary judgment, Johnston v. IVAC Corp., 885 F.2d 1574, 1579-80 (Fed.Cir.1989), and disagreement over the meaning of a term within the claim does not necessarily create a genuine issue of material fact. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 797 (Fed.Cir.1990). Claims are construed as a matter of law by the district court, and the construction given the claims is reviewed de novo by this court on appeal. Read Corp., 970 F.2d at 822-23. The comparison of the properly construed claims to the alleged infringing structure, the ultimate question of infringement, is a question of fact. SRI Int'l, 775 F.2d at 1125; Lemelson v. United States, 752 F.2d 1538, 1547 (Fed.Cir.1985). Al-Site, as assignee of the '532 patent, bears the burden of proving infringement by a preponderance of evidence. Mannesmann DeMag Corp. v. Engineered Metal Prods., Co., 793 F.2d 1279, 1282 (Fed.Cir.1986).

Under 35 U.S.C. Sec. 112, p 6, a patentee may express one or more elements of a combination

[a]s a means ... for performing a specified function without the recital of structure ... in support thereof, and such claim shall be construed to cover the corresponding structure ... described in the specification and equivalents thereof.

To determine whether a claim element written in means-plus-function form is met literally, "[t]he court must compare the accused structure with the disclosed structure, and must find equivalent structure as well as identity of claimed function for that structure." Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934 (Fed.Cir.1987) (in banc ); accord Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042 (Fed.Cir.1993) ("[f]or a means-plus-function limitation to read on an accused device, the accused device must employ means identical to or the equivalent of the structures ... described in the patent specification[, and] must also perform the identical function as specified in the claims."). The breadth of equivalents accorded to a means-plus-function element under 35 U.S.C. Sec. 112, p 6, is determined by reference to the patent specification, the prosecution history, other claims in the patent, expert testimony when applicable, and the language of the asserted claim. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 862 (Fed.Cir.1985), cert. denied, 475 U.S. 1016 (1986). The issue of equivalence under 35 U.S.C. Sec. 112, p 6 is a question of fact. Palumbo v. Don-Joy Co., 762 F.2d 969, 975 (Fed.Cir.1985).

C.

If an accused product does not fall within the literal language of a properly construed claim, infringement may be shown nevertheless "if an accused device performs substantially the same function in substantially the same way to achieve substantially the same result." London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed.Cir.1991). The plaintiff bears the burden of showing "the presence of every element or its substantial equivalent in the accused device." Id. A determination of equivalence under the doctrine of equivalents is a question of fact. Lemelson v. United States, 752 F.2d 1538, 1550 (Fed.Cir.1985).

III.

As noted above, the district court concluded that the aperture means of claim 8 was limited to an enclosed hole for performing the recited function of receiving a horizontally extending cantilevered support. Al-Site contends that the district court erred as a matter of law because, in construing the aperture means language, it "looked first to the structure of the aperture means in the '532 patent and tried to determine what function that structure performed." Instead, Al-Site continues, the district court should have first looked to the function set forth in the means-plus-function clause of claim 8 of the '532 patent, and only then should the court have identified the particular structure disclosed in the '532 patent that performed the recited function. This alleged error of law, Al-Site argues, warrants reversal of the district court's grant of partial summary judgment. We disagree.

Initially, it is well settled that "this court reviews judgments not opinions." Atlantic Thermoplastics Co. v. Faytex Corp., 5 F.3d 1477, 1480 (Fed.Cir.1993) (citing King Instrument, 767 F.2d at 862). Accordingly, we will not disturb the district court's grant of partial summary judgment unless it was predicated on harmful error. It this regard, we conclude that as a matter of law the district court arrived at the correct result in construing the aperture means of...

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