Aquatex Industries, Inc. v. Techniche Solutions

• Decision Date: 27 February 2007
• Docket Number: No. 2006-1407.,2006-1407.
• Citation: 479 F.3d 1320
• Parties: AQUATEX INDUSTRIES, INC., Plaintiff-Appellant, v. TECHNICHE SOLUTIONS, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

479 F.3d 1320

AQUATEX INDUSTRIES, INC., Plaintiff-Appellant, v. TECHNICHE SOLUTIONS, Defendant-Appellee.

No. 2006-1407.

United States Court of Appeals, Federal Circuit.

February 27, 2007.

Jack A. Wheat, Stites & Harbison, of Louisville, KY, argued for plaintiff-appellant. With him on the brief were William C. Ferrell, Jr., James R. Michels, and Richard S. Myers, of Nashville, TN.

James A. DeLanis, Baker Donelson Bearman Caldwell & Berkowitz, P.C., of Nashville, TN, argued for defendant-appellee. With him on the brief was W. Edward Ramage.

Before RADER and DYK, Circuit Judges, and WHYTE, District Judge^*.

DYK, Circuit Judge.

This case was previously before us in AquaTex Industries, Inc. v. Techniche Solutions, 419 F.3d 1374 (Fed.Cir.2005). We held that claims 1 and 9 of U.S. Patent No. 6,371,977 ("the '977 patent") were not literally infringed, but we did not foreclose a finding of infringement under the doctrine of equivalents. We remanded for "the trial court [to] consider whether or not each limitation of the claims in dispute, or its equivalent, is present in the accused Techniche products." Id. at 1383. On remand the district court granted summary judgment of non-infringement, and the plaintiff patent holder AquaTex Industries, Inc. ("AquaTex") now appeals. We hold that the district court erred in finding the doctrine of equivalents barred by prosecution history estoppel and in relying on unclaimed features to find a lack of equivalents. However, we affirm the grant of summary judgment because AquaTex did not satisfy its burden to present particularized evidence of equivalents in opposition to the motion for summary judgment.

BACKGROUND

Having already described the background of this case in AquaTex, 419 F.3d at 1376-79, we provide only a brief summary here.

AquaTex is the assignee of the '977 patent. The '977 patent claims a method for cooling a person through evaporation by use of a multi-layered, liquid-retaining composite material in evaporative cooling garments. Defendant Techniche Solutions ("Techniche") also manufactures multi-layered, liquid-retaining composite materials for use in evaporative cooling garments.

AquaTex sued Techniche alleging that its product infringed claims 1 and 9 of the '977 patent. These claims claim a method of cooling a person using a certain device (i.e., "a multi-layered, liquid-retaining composite material"). Claim 1 claims a method performed using a device "comprising a fiberfill batting material, and hydrophilic polymeric fibers that absorb at least about 2.5 times the fiber's weight in water."¹ '977 patent col. 13 l. 67 to col. 14 l. 2. Claim 9 similarly claims a method performed using a device with "a filler layer comprising: a fiberfill batting material and hydrophilic polymeric particles."² '977 patent col. 14 ll. 39-41. The differences between claims 1 and 9 are of no relevance to this appeal. AquaTex did not assert that Techniche performed the actual method but instead asserted that Techniche made a product its consumers used to perform the method. Therefore the suit was for contributory infringement.

In 2004, Techniche moved for summary judgment of non-infringement. It conceded that most of the claim limitations were satisfied. But Techniche asserted that it uses a commercially available product called Vizorb® as its filler layer and that Vizorb® is an airlaid non-woven fabric predominately made of cellulose fluffed pulp, incorporating both natural and synthetic fibers. The question was whether Vizorb® satisfied the "fiberfill batting material" limitation. Techniche claimed that it did not because only a batting material containing exclusively synthetic fibers constituted "fiberfill."

The district court construed the claim language to require only synthetic batting material and found no literal infringement because Vizorb® includes natural fibers. The district court also found that the claim of infringement under the doctrine of equivalents was barred by prosecution history estoppel. During prosecution, AquaTex amended its claims to distinguish the Zafiroglu prior art patent, U.S. Patent No. 4,897,297, by claiming that its method cooled by evaporation whereas Zafiroglu cooled through use of a compress and involved only slight evaporation over time. Specifically, AquaTex amended the limitation in claims 1 and 9 from "[a] method of cooling a person" to "[a] method of cooling a person by evaporation"; it also added the phrase "and evaporatively cooling said person" at the end of the limitation requiring "employing said multi-layered, liquid-retaining composite as a garmet or a flat sheet." Before the examiner, AquaTex also argued that Zafiroglu was distinguishable on various grounds. As a result of these arguments, the district court held that estoppel barred a claim that Techniche's accused product was equivalent.

On appeal we affirmed the district court's finding of no literal infringement. We concluded that, though the prosecution history was ambiguous, the examples of fiberfill in the specifications, the three patents incorporated by reference, and the extrinsic evidence (dictionaries and other industry sources) all suggested that fiberfill was synthetic material. AquaTex, 419 F.3d at 1381. However, we held that prosecution history estoppel did not bar consideration of infringement by equivalents because "[t]he argument [made during prosecution] ... does not address or even relate to the composition of the fiberfill batting" and "[t]he subject matter surrendered by the narrowing amendment bears no relation to the composition of the fiberfill batting material." AquaTex, 419 F.3d at 1383. We remanded to the district court to "consider whether or not each limitation of the claims in dispute, or its equivalent, is present in the accused Techniche products." Id.

On remand the district court considered the issue on the existing record but requested supplemental briefing from the parties on the doctrine of equivalents. In its supplemental brief Techniche argued that: (1) AquaTex was barred by amendment estoppel from asserting the doctrine of equivalents; (2) its product did not include the equivalent of fiberfill batting; and (3) AquaTex provided "only conclusory statements regarding equivalence, without any particularized testimony and linking argument as to the `insubstantiality of the differences' between the claimed invention and the accused device, or with respect to the `function, way, result test'" as required by Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567-68 (Fed.Cir.1996). See Defendant Techniche Solutions' Memorandum as to the Doctrine of Equivalence at 16 (quoting PC Connector Solutions, LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed.Cir.2005)). The district court granted summary judgment of non-infringement. It held that AquaTex's narrowing amendments made during prosecution of the '977 patent "surrender[ed] subject matter within which [Techniche's] product falls" and therefore AquaTex was barred by prosecution history estoppel from asserting infringement by equivalents. AquaTex Indus., Inc. v. Techniche Solutions, No. 3:02-0914, 2006 WL 1006631, at *8 (M.D.Tenn. Apr.13, 2006). Alternatively, the district court held that AquaTex had failed to prove that Techniche's "filler layer performs substantially the same function in substantially the same way as" AquaTex's patented method because it had not shown that Techniche's "filler layer includes a hydrophobic material, like the fiberfill used in [AquaTex's] product, to create air pockets to promote evaporation." Id. at *6, 7-8.

AquaTex timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2000).

DISCUSSION

I

Techniche has admitted that most of the limitations of claims 1 and 9 of the '977 patent are satisfied by use of the Vizorb® filler layer. Thus, Techniche admitted that use of its product involved: (1) "a method for cooling a person by evaporation," see Appellee's Br. 7 n. 2, AquaTex, 419 F.3d at 1374; (2) "providing a multi-layered, liquid-retaining composite material," see Defendant's Memorandum as to the Doctrine of Equivalence at 7, AquaTex, 2006 WL 1006631; (3) "hydrophilic polymeric fibers [or particles]," Appellee's Br. 7 n. 2, AquaTex, 419 F.3d at 1374; (4) "absorb at least about 2.5 times the fiber's weight in water," Defendant's Memorandum as to the Doctrine of Equivalence at 10, AquaTex, 2006 WL 1006631; (5) "soaking said multi-layered composite in a liquid," id. at 11; (6) "employing said multi-layered, liquid-retaining composite material as a garment or a flat sheet," id. at 12; and (7) "evaporatively cooling said person," Appellee's Br. 7 n. 2, AquaTex, 419 F.3d at 1374.³ Thus, the only limitation at issue in this case was the "fiberfill batting material," a limitation present in both claims 1 and 9. We previously remanded this case to determine whether the part-natural Vizorb® was equivalent to the synthetic fiberfill for purposes of this limitation.

A

Reliance on the doctrine of equivalents may be foreclosed by prosecution history estoppel. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 30, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Under this doctrine, the surrender of subject matter during patent prosecution creates a presumption that the patentee is precluded from recapturing that subject matter through the doctrine of equivalents; this presumption can be rebutted by the patentee through a showing that an amendment was unrelated to patentability. See id. at 30-33, 117 S.Ct. 1040; see also Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-34, 740, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002). Here, the district court found that prosecution history estoppel barred AquaTex from asserting the doctrine of equivalents as to the "fiberfill batting material" claim limitation "because ... narrowing amendments [adding the phrases `by evaporation' and `and evaporatively cooling said person' to...