Bai v. L & L Wings, Inc.
| Decision Date | 03 November 1998 |
| Docket Number | No. 98-1008,98-1008 |
| Citation | 160 F.3d 1350,48 USPQ2d 1674 |
| Parties | Carl B. BAI, Plaintiff-Appellant, v. L & L WINGS, INC., d/b/a Wings, Defendant-Appellee, and Great World Co. of New York Ltd., and Elufa Fashions, Inc., Defendants. |
| Court | U.S. Court of Appeals — Federal Circuit |
John E. Daniel, Rogers & Wells, of New York, New York, argued for plaintiff-appellant.
Allen I. Rubenstein, Gottlieb, Rackman & Reisman, P.C., of New York, New York, argued for defendants-appellees.
Before RICH, LOURIE, and RADER, Circuit Judges.
Carl B. Bai appeals from the summary judgment of the United States District Court for the Southern District of New York that L & L Wings, Inc.'s MAGIC CATCH game does not infringe claim 1 of Bai's U.S. Patent 4,017,076. See Bai v. L & L Wings, Inc., No. 95 Civ. 10824 (LMM), 1997 WL 527870 (S.D.N.Y. Aug. 22, 1997). Because we conclude that the district court properly granted summary judgment of noninfringement, we affirm.
the MAGIC CATCH's glove is saucer- or Frisbee TM-shaped. In other words, the plastic backside of the MAGIC CATCH glove is largely flat in the middle, but curved on the ends. At issue in this case is whether the limitation "hemispherical" excludes Wings's largely flat product.
The patent application as originally filed had the following three claims that are relevant here:
1. A target game including: a glove; a sheet of fabric material mounted on the glove and extending across the front face thereof to constitute a target for a missile thrown thereagainst.
2. The target game defined in claim 1, in which the glove is formed of a rigid plastic material and has a dish shape.
3. The target game defined in claim 2, in which the sheet of fabric material is mounted on the glove in spaced relationship therewith so as to present a resilient surface which is deflectable inwardly when struck by the missile.
The examiner rejected all the claims, particularly dependent claim 3, on obviousness grounds over a combination of four patents: Muchnick, U.S. Patent 3,953,030; Craig, U.S. Patent 1,633,926; Lemelson et al., U.S. Patent 3,857,566; and Hartel, U.S. Patent 3,378,260. Specifically, the examiner stated that it would have been obvious to combine the dish-shaped structure disclosed in the Hartel patent with the "target" disclosed in the Lemelson patent, and that because the Lemelson target is hand-held, it is a kind of glove that can be substituted for the gloves disclosed in the Muchnick and Craig patents. In response, Bai canceled claims 2 and 3 and amended claim 1 to incorporate the claim 2 and 3 limitations and to add the limitation that the glove was "hemispherical." 1 Bai remarked that he was amending claim 1 to "specifically and expressly recite the structural details" of his invention, noting its "particular configuration." He distinguished the gloves disclosed in Muchnick and Craig as having different structures and functions from the amended claim, and distinguished the Lemelson target as not having a glove. Bai did not address the Hartel patent, but summarily stated that he believed the other references cited by the examiner were irrelevant. The examiner then allowed amended claim 1, which reads as follows:
1. A target game including: a glove formed of a hemispherical dish-shaped rigid plastic member, a strap mounted (emphasis added).
on the rear side of the plastic member to enable the glove to be held on the palm of the hand of a player; a sheet of fabric material mounted on the glove and extending across the front face of the dish-shaped rigid plastic member to constitute a target for a missile thrown thereagainst, said sheet of fabric material being mounted on the plastic member in spaced relationship with the inner surface thereof so as to present a resilient surface which is deflectable inwardly when struck by the missile.
Bai filed suit against Wings for patent infringement. The parties filed cross-motions for summary judgment on the question of infringement, focusing in their briefs on the term "hemispherical" and also addressing the prosecution history estoppel presumption established by the Supreme Court in Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146, 41 USPQ2d 1865 (1997). In its opinion, the district court construed the term "hemispherical" to include structures that are "less than a sphere, but ... nevertheless, a part of a sphere," apparently because the glove pictured in Figure 2 is close to a hemispherical shape, although it is not exactly hemispherical. See Bai, 1997 WL 527870 at * 2. The district court concluded that the MAGIC CATCH's "perceptibly flattened surface" did not meet the claim limitation "hemispherical" and thus did not literally infringe claim 1. Bai, 1997 WL 527870 at * 2. The court also concluded that Bai added the term "hemispherical" in response to the § 103 rejection and that Bai did not establish that this amendment was unrelated to patentability. See id., 1997 WL 527870 at * 4-* 5. The court thus concluded that prosecution history estoppel limited Bai to products that are hemispherical in shape, and accordingly held that MAGIC CATCH did not infringe claim 1 under the doctrine of equivalents. See id., 1997 WL 527870 at * 5. This appeal followed. We have jurisdiction under 28 U.S.C. § 1295(a)(1) (1994).
We review a district court's grant of summary judgment de novo. See Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994). Summary judgment is proper "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." Fed.R.Civ.P. 56(c). Summary judgment is improper "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). When ruling on a motion for summary judgment, all of the nonmovant's evidence is to be believed, and all justifiable inferences are to be drawn in its favor. See id. at 255, 106 S.Ct. 2505.
Determining whether a patent claim has been infringed involves two steps: (1) claim construction to determine the scope of the claims, followed by (2) determination whether the properly construed claim encompasses the accused structure. See, e.g., Cole v. Kimberly-Clark Corp., 102 F.3d 524, 528, 41 USPQ2d 1001, 1004 (Fed.Cir.1996). The first step, claim construction, is a matter of law which this court reviews de novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455, 46 USPQ2d 1169, 1173 (Fed.Cir.1998) (en banc). The second step, determination of infringement, whether literal or under the doctrine of equivalents, is a question of fact. See, e.g., North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1574, 28 USPQ2d 1333, 1335 (Fed.Cir.1993). Thus, a literal infringement issue is properly decided upon summary judgment when no genuine issue of material fact exists, in particular, when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device. See generally Cole, 102 F.3d at 532, 41 USPQ2d at 1007 ().
A claim of infringement under the doctrine of equivalents may be decided on summary judgment. As the Supreme Court recently stated:
where the evidence is such that no reasonable jury could determine two elements to Warner-Jenkinson, 520 U.S. at ---- n. 8, 117 S.Ct. at 1053 n. 8, 41 USPQ2d at 1875 n. 8 (1997). Furthermore, whether prosecution history estoppel applies to limit the doctrine of equivalents is a question of law that we review de novo. See, e.g., Southwall Techs, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579, 34 USPQ2d 1673, 1679 (Fed.Cir.1995). Thus, when deciding whether summary judgment of infringement under the doctrine of equivalents is proper, we may first determine whether prosecution history estoppel applies, i.e., whether an aspect of the originally claimed subject matter was surrendered by the amendment and is thus outside the range of equivalents to which the patentee is entitled. See, e.g., Wang Labs., Inc. v. Mitsubishi Elecs., 103 F.3d 1571, 1578, 41 USPQ2d 1263, 1269 (Fed.Cir.1997). If we conclude that prosecution history estoppel does not apply, we may then determine whether a reasonable jury could find that the accused device contains elements that are equivalent to each of the properly construed claim limitations. See Warner-Jenkinson, 520 U.S. at ----, 117 S.Ct. at 1049, 41 USPQ2d at 1871.
be equivalent, [the] district court [is] obliged to grant partial or complete summary judgment.... Of course, the various legal limitations on the application of the doctrine of equivalents are to be determined by the court.... [I]f prosecution history estoppel would apply or if a theory of equivalence would entirely vitiate a particular claim element, partial or complete summary judgment should be rendered by the court, as there would be no further material issue for the jury to resolve.
Appellant Bai does not essentially challenge the court's claim construction. The only issues the parties dispute are whether the district court improperly concluded that claim 1 does not encompass the MAGIC CATCH either literally or under the doctrine of equivalents.
Bai argues that the district court erred in granting summary judgment of no literal infringement. Bai...
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