Abtox, Inc. v. Exitron Corp.

• Decision Date: 01 August 1997
• Docket Number: Nos. 96-1159,96-1164,s. 96-1159
• Citation: 122 F.3d 1019,43 USPQ2d 1545
• Parties: ABTOX, INC., Plaintiff/Cross-Appellant, v. EXITRON CORPORATION, Adir Jacob, and Mdt Corporation, Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1019

122 F.3d 1019

43 U.S.P.Q.2d 1545

ABTOX, INC., Plaintiff/Cross-Appellant, v. EXITRON CORPORATION, Adir Jacob, and Mdt Corporation Defendants-Appellants.

Nos. 96-1159, 96-1164.

United States Court of Appeals Federal Circuit.

Aug. 1, 1997.

William L. Anthony, Jr., Brobek, Phleger & Harrison LLP, of Palo Alto, CA, argued for plaintiff/cross-appellant. With him on the brief were Robert DeBerardine and Karen Y. Spencer.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for defendants-appellants. With him on the brief were Allen M. Sokal and Howard A. Kwon. Of counsel on the brief were David V. Trask and James R. Duzan, of Trask, Britt & Ross, of Salt Lake City, UT, and John A. Lahive, Jr., Lahive & Cockfield, of Boston, MA.

Before MAYER, MICHEL and RADER, Circuit Judges.

RADER, Circuit Judge.

This case is on appeal from two decisions of the United States District Court for the District of Massachusetts. On cross-motions for summary judgment, the district court first held that AbTox, Inc. (AbTox) does not infringe MDT Corporation's (MDT's) patents. In a separate opinion, the district court held that MDT's use of the invention in pursuit of regulatory approval did not constitute infringement of AbTox's patent. Although the district court misapprehended the prosecution history in construing the claims of MDT's patents, upon review of the claim language, this court affirms.

I.

In 1993, MDT filed suit for patent infringement against AbTox in the United States District Court for the Central District of California. MDT alleged infringement of two patents issued to Adir Jacob--U.S. Patent Nos. 4,931,261 (the '261 patent), titled an "Apparatus for Dry Sterilization of Medical Devices and Materials," and 4,917,586 (the '586 patent), titled a "Process for Dry Sterilization of Medical Devices and Materials." After dismissal of the California suit without prejudice, and a subsequent filing in the United States District Court for the Northern District of Illinois, the United States District Court for the District of Massachusetts took jurisdiction and consolidated various actions filed elsewhere by the parties. Specifically, MDT refiled its infringement action, and AbTox sought a declaratory judgment of non-infringement of the Jacob patents and further claimed that MDT infringed its U.S. Patent No. 4,321,232 (the '232 patent), a "Package and Sterilizing Process for Same."

These patents disclose devices which sterilize medical instruments in a partially ionized High-energy charged particles, however, can damage delicate medical instruments. Therefore, to avoid these harmful side effects, a sterilizing apparatus must block the charged particles and sterilize only with neutral active components. This objective calls for a Faraday shield, a metal barrier that blocks charged particles. By placing the medical instruments within or behind a Faraday shield within the plasma environment, the neutral active particles alone pass through to accomplish the sterilization. The Jacob patents disclose methods and apparatus to accomplish these objectives.

gas, known as plasma. To make plasma, the devices excite a gas with high radio or microwave frequencies. The plasma then emits light, charged particles (ions and electrons), and neutral active components (atoms, excited molecules, and free radicals). These particles and components bombard medical instruments brought into the plasma environment, thereby sterilizing the instruments.

The Jacob patents spring from a common parent application, application Serial No. 07/19,134 (the '134 application). The application matured into U.S. Patent No. 4,801,427 (the '427 patent). The '261 patent issued on a division of the '134 application and the '586 patent is a continuation of a continuation-in-part of the '134 application. All three patents have nearly identical disclosures.

The written description common to the patents discloses two basic embodiments, one using radio frequencies (RF) and another using microwave frequencies. Figure 3 of the patents (the '427 patent, the '261 patent, and the '586 patent have identical figures) illustrates the plasma sterlizer with the RF source:

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In this embodiment, the RF source 22 projects an electrical field into chamber 21 which contains the gas. This action creates plasma in chamber 21. Within chamber 21 is an inner Faraday shield container 23. This Faraday shield container has a basket 25 to hold the medical instrument for sterilization. Thus, the RF source creates plasma within chamber 21, but only the neutral active particles reach past the Faraday shield 23 to sterilize the instruments in the basket.

Figure 2 of the patents shows the microwave embodiment:

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In this embodiment, the microwave source 18 is located at one end of chamber 11. Component 17 is the metallic Faraday shield through which the neutral active particles travel to sterilize the instrument 14.

MDT alleges that AbTox infringes claims 3, 6, and 8 ¹ of the '261 patent and claims 1 and 6 of the '586 patent. Claim 3 of the '261 patent defines an

[a]pparatus for sterilization of medical devices and materials in a gas plasma comprising,

(a) a metallic gas-confining chamber having a non-metallic portion;

(b) a microwave energy source including a microwave cavity positioned to couple microwave energy into said chamber through said non-metallic portion, and

(c) means for holding ... medical devices and materials to be sterilized within said chamber volume and away from said microwave cavity, and including a perforated electrical shielding member positioned within said chamber and in close proximity to said microwave energy source to provide a portion of the internal volume of said chamber shielded from and away from said microwave energy providing a field-free zone containing said devices and materials.

The '586 patent describes the method of MDT's plasma sterilizer. Claim 6 requires:

A method in accordance with claim 1 [of the '586 Patent, which requires a "gas-tight confining chamber",] where in said chamber there is positioned a perforated metallic shield, said shield being substantially equal to the internal cross section of said chamber and located in close proximity to said microwave energy source, thereby providing a substantially field-free zone immediately beyond it and away from said microwave energy source, said field-free zone containing said devices and materials.

The district court determined that the central summary judgment question for infringement was the relationship between the plasma generation zone and the sterilization zone behind the Faraday shield. MDT made two arguments. First, on the claim interpretation question, MDT contended that the Jacob patent claims cover a device featuring a plasma chamber separate from the sterilization zone. In the event the district court interpreted the claims adverse to its "separate chambers" position, MDT also contended that the AbTox device features a single gas-confining chamber.

AbTox, on the other hand, argued that the Jacob patent claims encompass no more than a device featuring a single chamber which both confines the plasma and holds the Faraday shield container. AbTox also presented evidence that its accused device features a plasma chamber separate from the Faraday shield container. In granting AbTox summary judgment, the district court found that the Jacob patents do not encompass devices or methods "in which the plasma is generated

                in an enclosure that is in any way separate from the enclosure in which the sterilization takes place."   Based on its finding that the AbTox device employs two chambers, the district court granted AbTox's summary judgment motion.  MDT appealed
                

II.

This court reviews the grant of summary judgment as a question of law. See KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1449, 27 USPQ2d 1297, 1301 (Fed.Cir.1993). A trial court may award summary judgment only when the parties present no genuine issue of material fact and the moving party deserves judgment as a matter of law. Fed.R.Civ.P. 56(c); see A.B. Chance Co. v. RTE Corp., 854 F.2d 1307, 1310-11, 7 USPQ2d 1881, 1883-84 (Fed.Cir.1988). In assessing the motion, the court must resolve all inferences in favor of the non-movant. See Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 850, 23 USPQ2d 1471, 1472 (Fed.Cir.1992) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986)).

The test for patent infringement requires both proper interpretation of the claim scope and proper comparison of the claims with the accused device. See Becton Dickinson & Co. v. C.R. Bard Inc., 922 F.2d 792, 796, 17 USPQ2d 1097, 1099 (Fed.Cir.1990). Because MDT and AbTox dispute the meaning of terms in the claims of the patent, this court reviews the district court's claim interpretation under the requirements of Markman v. Westview Instruments, Inc., 517 U.S. 370, ----, 116 S.Ct. 1384, 1395, 134 L.Ed.2d 577, 38 USPQ2d 1461, 1470 (1996).

Claim interpretation is the process of giving proper meaning to the claim language. Claim language, after all, defines claim scope. See York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572, 40 USPQ2d 1619, 1622 (Fed.Cir.1996); Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 619-20, 34 USPQ2d 1816, 1819 (Fed.Cir.1995) ("[T]he language of the claim defines the scope of the protected invention."). Therefore, the language of the claim frames and ultimately resolves all issues of claim interpretation. In determining the meaning of disputed claim terms, however, a construing court considers the descriptions in the rest of the patent specification, the prosecution history, and relevant...