885 F.2d 1574 (Fed. Cir. 1989), 88-1639, Johnston v. IVAC Corp.

Docket Nº:88-1639.
Citation:885 F.2d 1574
Party Name:12 U.S.P.Q.2d 1382 Charles C. JOHNSTON and Gordon P. Ramsey, as Trustees of the AMEC Liquidating Trust, Plaintiffs-Appellants, v. IVAC CORPORATION, Defendant-Appellee.
Case Date:September 27, 1989
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1574

885 F.2d 1574 (Fed. Cir. 1989)

12 U.S.P.Q.2d 1382

Charles C. JOHNSTON and Gordon P. Ramsey, as Trustees of the

AMEC Liquidating Trust, Plaintiffs-Appellants,


IVAC CORPORATION, Defendant-Appellee.

No. 88-1639.

United States Court of Appeals, Federal Circuit

September 27, 1989

Page 1575

[Copyrighted Material Omitted]

Page 1576

Daniel R. Shulman, of Gray, Plant, Mooty, Mooty & Bennett, Minneapolis, Minn., argued for plaintiffs-appellants. With him on the brief were Nancy A. Quattlebaum, of Gray, Plant, Mooty, Mooty & Bennett, Joseph M. Alioto, of Alioto & Alioto, San Francisco, Cal.; Jerry Cohen, of Cohen & Burg, Boston, Massachusetts, and Joseph S. Iandiorio, of Waltham, Mass.

Richard A. Bardin, of Fulwider Patton Lee & Utecht, Los Angeles, Cal., argued for defendant-appellee. Of counsel was Craig B. Bailey, of Fulwider Patton Lee & Utecht.

Before NIES and BISSELL Circuit Judges, and BALDWIN, Senior Circuit Judge.

NIES, Circuit Judge.

Charles C. Johnston and Gordon P. Ramsey, trustees of the AMEC Liquidating Trust (AMEC), appeal the final decision of the United States District Court for the Southern District of California, No. 87-0703-GT(M) (Thompson, J.) entered on July 5, 1988, granting IVAC Corporation's (IVAC) motion for summary judgment on the ground that IVAC's electronic medical thermometers employing a disposable probe cover do not infringe AMEC's United States Patent No. 4,112,762 ('762). We affirm.


The subject matter of this suit relates particularly to electronic medical thermometers having disposable covers for the thermometer probe. Robert Turner developed and obtained a patent, now owned by AMEC, directed to the mechanism for attaching a removable probe cover to the probe. It is important that, in use, the cover be securely fastened to the probe. Turner developed a design in which a section of the metal probe was deformed and flared out to grip the probe cover from the inside. The full text of the claims 1 and 2 in issue are set forth below. 1

In June 1986, AMEC brought suit against IVAC, claiming that the IVAC Model 880 (oral) and Model 882 (rectal) electronic medical thermometers infringed claims 1 and 2 of the '762 patent when used in combination with the IVAC model P850 probe cover. Nearly two years later and with discovery complete, IVAC moved for summary judgment on the grounds that (1) the patent was invalid under 35 U.S.C. Sec. 102(b) due to an "on sale" bar; and (2) the IVAC models 880/882 did not infringe, i.e., did not fall within the scope of the asserted claims. The district court granted summary judgment on the ground of non-infringement. The propriety of granting IVAC's motion is the sole issue in this appeal.



As in other cases, the grant of summary judgment under Fed.R.Civ.P. 56, 2 is appropriate

Page 1577

in a patent case where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. See Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 221 USPQ 561 (Fed.Cir.1984) (summary judgment on issue of validity); Townsend Eng'g Co. v. HiTec Co., 829 F.2d 1086, 1089, 4 USPQ2d 1136, 1138 (Fed.Cir.1987) (summary judgment on issue of infringement). Summary judgment may be granted in favor of a defendant on an ultimate issue of fact where the defendant carries its burden of "pointing out to the district court that there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986). As further stated in Celotex, 477 U.S. at 322-23, 106 S.Ct. at 2552:

[T]he plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. In such a situation, there can be "no genuine issue as to any material fact," since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial.

Thus, the motion of an accused infringer for judgment on the ground of non-infringement of a patent may be granted where the patentee's proof is deficient in meeting an essential part of the legal standard for infringement. Townsend Eng'g, 829 F.2d at 1089, 4 USPQ2d at 1138; Chemical Eng'g v. Essef Indus., Inc., 795 F.2d 1565, 1571, 230 USPQ 385, 389 (Fed.Cir.1986); Brenner v. United States, 773 F.2d 306, 307, 227 USPQ 159, 160 (Fed.Cir.1985); Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 257, 225 USPQ 240, 241 (Fed.Cir.1985); Prodyne Enterprises, Inc. v. Julie Pomerantz, Inc., 743 F.2d 1581, 1583, 223 USPQ 477, 478 (Fed.Cir.1984).

That the case is thereby taken from the jury is in no sense a denial of AMEC's right to a trial, Avia Group Int'l v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1560, 7 USPQ2d 1548, 1550 (Fed.Cir.1988). Indeed, summary judgment can only lie where no dispute with respect to a material fact is "genuine." As the Supreme Court stated in Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986), "[A dispute is genuine] if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Avia Group Int'l, 853 F.2d at 1560, 7 USPQ2d at 1550.

We find AMEC's arguments that summary judgment improperly deprived it of its right to a jury trial wholly unpersuasive on the record of this case. IVAC persuaded the district court to grant judgment in its favor by "pointing out" the absence of evidence showing that its devices met the test for infringement, either literally or under the doctrine of equivalents. As explained herein, we as well conclude that the evidence submitted by AMEC raised no genuine issue of material fact on the issue of infringement and that IVAC was entitled to judgment as a matter of law.


To establish infringement of a patent, every limitation set forth in a claim must be found in an accused product or process exactly or by a substantial equivalent. 3 Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1259, 9 USPQ2d 1962, 1967 (Fed.Cir.1989); Julien v. Zeringue, 864 F.2d 1569, 1571, 9 USPQ2d, 1552, 1553 (Fed.Cir.1989); ZMI v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1582, 6 USPQ2d 1557, 1562 (Fed.Cir.1988); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 USPQ2d 1737, 1740 (Fed.Cir.1987), cert. denied, --- U.S. ----, 108 S.Ct. 1226, 99 L.Ed.2d 426

Page 1578

(1988) (in banc); Lemelson v. United States, 752 F.2d 1538, 1551, 224 USPQ 526, 533 (Fed.Cir.1985). Thus, the accused infringer, IVAC, is entitled to summary judgment, on the ground of non-infringement, by pointing out that the patentee failed to put forth evidence to support a finding that a limitation of the asserted claim was met by the structure in the accused devices.

The dispute here centers on the following claim limitations:

(a) said probe element being deformed to define at least one integral, substantially rigid salient section flaring outwardly from a longitudinal axis of said probe element and towards said handle portion, said section terminating in a sharp edge


(b) said means for inserting forcing said probe cover to deform over said salient section and causing said sharp edge to inscribe itself fixedly into said probe cover. (emphasis added)

The district court held that there was no genuine issue of fact that the emphasized limitations were not met exactly or by equivalents. AMEC asserts that the district court resolved a disputed issue of fact in making that decision.

  1. Literal Infringement

    The part of the accused IVAC devices which AMEC asserts meets the limitations of a "deformed ... integral ... salient section ... terminating in a sharp edge" which is forced "to inscribe itself fixedly into said probe cover" is a separately formed metal retaining ring affixed to the probe. IVAC provided affidavit and documentary evidence that this separately formed ring was intentionally machined free of any sharp edge so as to facilitate removal of the cover and that the ring was designed and constructed to perform a friction or interference fit. To raise an evidentiary issue that these limitations were met, AMEC submitted affidavits of the inventor Turner and an attorney, Joseph S. Iandiorio, who averred that the IVAC probe assemblies were infringements.

    The Iandiorio affidavit was discounted by the district court because it referenced a model of an IVAC device which was not in suit. On appeal, AMEC attempts to rectify the apparent irrelevance of the affidavit. We need not resolve the appropriateness of AMEC's efforts. The Iandiorio affidavit contains only the following statement on infringement:

    More particularly, I have reviewed the probe cover grip mechanism of the IVAC thermometer with respect to the patent, and I find that it infringes at least claims 1, 2, 3, 4, 5 and 6 of the patent.

    This conclusory statement is wholly insufficient to raise a genuine evidentiary dispute for a jury. In affirming summary judgment of non-infringement, this court held in Chemical Engineering, 795 F.2d at 1571, 230 USPQ at 390:

    General assertions of fact issues,...

To continue reading