Amhil Enterprises Ltd. v. Wawa, Inc.

• Decision Date: 18 April 1996
• Docket Number: No. 95-1258,95-1258
• Citation: 38 USPQ2d 1471,81 F.3d 1554
• Parties: AMHIL ENTERPRISES LTD., Plaintiff-Appellant, v. WAWA, INC., dba Wawa Food Market, Defendant, and M & N Plastics, Inc. and Ivonis Mazzarolo, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1554

81 F.3d 1554

38 U.S.P.Q.2d 1471

AMHIL ENTERPRISES LTD., Plaintiff-Appellant, v. WAWA, INC., dba Wawa Food Market, Defendant and M & N Plastics, Inc. and Ivonis Mazzarolo, Defendants-Appellees.

No. 95-1258.

United States Court of Appeals Federal Circuit.

April 18, 1996.

Appealed from: U.S. District Court for the District of Maryland (Baltimore); Senior Judge Hargrove.

Maurice U. Cahn, Beveridge, DeGrandi, Weilacher & Young, Washington, DC, argued for plaintiff-appellant. Of counsel were Richard G. Young and William F. Rauchholz.

Thomas N. Young, Young, MacFarlane & Wood, P.C., Troy, Michigan, argued for defendants-appellees. With him on the brief was Donna L. Berry. Of counsel was Andrew M. Grove.

Before RICH, NEWMAN, and BRYSON, Circuit Judges.

RICH, Circuit Judge.

Amhil Enterprises Ltd. (Amhil) appeals from two judgments of the U.S. District Court for the District of Maryland in Civil Action No. HAR-93-1349. Amhil Enters. Ltd. v. Wawa Inc., 34 USPQ2d 1640, 1994 WL 750535 (D.Md.1994) [hereinafter Amhil I ]; Amhil Enters. Ltd. v. Wawa Inc., 34 USPQ2d 1645, 1995 WL 131296 (D.Md.1995) [hereinafter Amhil II ]. In Amhil I, the district court granted defendant Ivonis Mazzarolo's (Mazzarolo's) motion to dismiss the complaint as to him for lack of personal jurisdiction. In Amhil II, the court granted defendant M & N Plastics, Inc.'s (M & N's) motion for summary judgment of noninfringement of Amhil's U.S. Patent No. 4,421,244 ('244 patent), both literally and under the doctrine of equivalents. Amhil had previously dismissed its infringement claim against the other defendant, Wawa, Inc., d/b/a Wawa Food Market, (Wawa) by stipulation and order dated 4 March 1994. In that same stipulation, M & N conceded that it was properly before the district court. We affirm Amhil II and do not reach Amhil I, which is mooted by our affirmance of Amhil II.

I. Background

Amhil, a Canadian corporation, is the assignee of the '244 patent, which is entitled "Plastic Lids for Containers" and which lists Hubert Van Melle as the inventor. Figs. 1, 3, and 4 of the '244 patent are reproduced below as figures 1, 2, and 3, respectively.

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

The patent describes a thin, flexible, plastic container lid used, for example, in convenience stores and fast-food establishments to cover beverage containers. The patent professes that the lids are an improvement over prior lids because, in manufacture, they facilitate fabrication by improving the strip ability from the mold, in shipping and storage, they require a smaller volume than prior lids required, and, in use, they have enhanced rim-gripping ability for a secure hold.

Amhil filed suit against three defendants alleging infringement of its '244 patent: Wawa, M & N, and Mazzarolo. Wawa, a New Jersey corporation, is primarily a middle Atlantic regional convenience store chain with several stores located in Maryland. Wawa was providing one type of allegedly infringing cup lids to its customers to cover beverages purchased in Wawa stores. M & N, a Florida corporation, manufactures the allegedly infringing cup lids used by Wawa. Two partial cross-sectional drawings of M & N accused lids are depicted below in figure 4. Mazzarolo is a Canadian citizen who resides in Vaudreuil, Quebec, Canada. He is a majority shareholder (75%), the only officer, and the sole director of M & N; the "M" in M & N stands for Mazzarolo.

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

Amhil has appealed the judgment dismissing Mazzarolo (Amhil I ), and the no-literal-infringement portion of the summary judgment of noninfringement by the only remaining defendant after the dismissal, M & N (Amhil II ).

II Amhil II: Summary Judgment of Noninfringement

A. Standard of Review

We first determine whether the district court properly granted M & N's motion for summary judgment of noninfringement.

Summary judgment is appropriate when "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." Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). We undertake plenary review of a grant of summary judgment. KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1449, 27 USPQ2d 1297, 1301 (Fed.Cir.1993).

Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1196, 31 USPQ2d 1321, 1326 (Fed.Cir.1994), cert. denied, --- U.S. ----, 115 S.Ct. 1356, 131 L.Ed.2d 214 (1995). A district court should approach a motion for summary judgment on the fact issue of infringement with great care. Palumbo v. Don-Joy Co., 762 F.2d 969, 974, 226 USPQ 5, 7 (Fed.Cir.1985), overruled on other grounds by Markman v. Westview Instruments, Inc., 52 F.3d 967, 976-79, 34 USPQ2d 1321, 1327-29 (Fed.Cir.) (in banc), cert. granted, --- U.S. ----, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995). Summary judgment may, however, properly be decided as a matter of law when no genuine issue of material fact exists and no expert testimony is required to explain the nature of the patented invention or the accused product or to assist in their comparison. See, e.g., Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 36, 50 S.Ct. 9, 10-11, 74 L.Ed. 147, 3 USPQ 40, 42 (1929); Singer Mfg. Co. v. Cramer, 192 U.S. 265, 275, 24 S.Ct. 291, 295, 48 L.Ed. 437 (1904).

B. District Court's Decision

The district court granted, without a hearing, M & N's motion for summary judgment of noninfringement. In its motion, M & N asserted that the '244 patent did not cover its lids because the accused lids do not have a "cavity" that opens "downwardly and inwardly" or "outwardly extending projections," each having a "substantially vertical face" with "substantially vertical side edges" and "substantially vertical side walls."

The district court properly applied a two-step infringement analysis: it first construed independent claim 1 and then decided whether claim 1, when properly construed, covered the accused M & N lids. See Markman, 52 F.3d at 976, 34 USPQ2d at 1326 (citations omitted). According to Amhil, the district court misconstrued the claim, misapplied the misinterpreted claim, disregarded evidence before it, and improperly drew inferences in favor of M & N, the moving party.

As to the district court's claim construction, Amhil first asserts that the district court improperly restricted the scope of the claims in suit, making an erroneous "inside fit" distinction. Amhil next asserts that the patented lids are used for both hot and cold cups, and there is no hot/cold distinction in the patent or in the claims at issue as found by the district court. Thus, according to Amhil, the district court improperly limited the claims to "cold" cups. Third, Amhil argues that the district court improperly found that the patented lids lack flexibility, which is contrary to the specification and claims. Fourth, Amhil contends that the district court erroneously interpreted the "substantially vertical" limitation to mean vertical per se. Finally, Amhil asserts that the district court improperly limited the claims to a particular shape.

In support of the district court, M & N argues that the "outwardly extending projections" of the accused lids do not have a "substantially vertical face with substantially vertical side edges and substantially vertical side walls." M & N further argues that the accused lids do not have a cavity that opens "downwardly and inwardly" as required by claim 1. Finally, M & N contends that the district correctly concluded that M & N does not infringe, either literally or under the doctrine of equivalents.

C. Claim Construction

"Because claim construction is a matter of law, the construction given the claims is reviewed de novo on appeal." Markman, 52 F.3d at 979, 34 USPQ2d at 1329. Claim 1, the only independent claim in the '244 patent and the only claim at issue here, Amhil II, 34 USPQ2d at 1647, reads as follows (material in parentheses and brackets added) (emphasis added to contested language):

1. A lid (10) for containers (12), made of thin, flexible plastic, for mounting on and receiving the bead (14) of a container (12), comprising:

a central panel (16);

a cavity (20) extending around the periphery of the lid (10) and opening downwardly and inwardly to receive the bead (14) of a container (12) to which said lid (10) is fitted;

means (22,24) connecting said cavity (20) to said central panel (16);

a skirt portion (26) extending downwardly from said cavity (20);

said skirt portion (26) having a plurality of outwardly extending projections (28), each having a substantially vertical face (100 ¹) with substantially vertical side edges (102), and substantially vertical side walls (30) extending inwardly from said face (100);

the portions (32) of said skirt (26) that are between said outwardly extending projections (28) extending inwardly to a waist portion (34) having [sic, having] a plurality of interruptions (104), one at each projection (28), and forming an undercut defining said cavity (20) in said waist portion (34) [sic, said lid (10) ];

said outwardly extending projections (28) and said waist portion (34) [sic, said portions (32)--see col. 4, ll. 33-36 and figures 1-3 above] all terminating in their lower extremities at a downwardly and outwardly sloped lower band portion (36);

and said outwardly extending projections (28) terminating in their upper extremities at a respective upper, band portion (42) extending inwardly and upwardly from the upper edge [edge between each portion (42) and projection (28) ] of each said respective vertical face (100) and terminating at said cavity (20) in an upper undercut (44) which is higher and less inwardly extending than the undercut of said waist portion (34), and which defines the...