Beckson Marine, Inc. v. Nfm, Inc.

• Decision Date: 30 May 2002
• Docket Number: No. 01-1301.,No. 01-1316.,01-1301.,01-1316.
• Citation: 292 F.3d 718
• Parties: BECKSON MARINE, INC., Carole A. Beckerer, Eloise Brady, and Joan A. Jones, Plaintiffs-Appellants, v. NFM, INC., Defendant-Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

292 F.3d 718

BECKSON MARINE, INC., Carole A. Beckerer, Eloise Brady, and Joan A. Jones, Plaintiffs-Appellants, v. NFM, INC., Defendant-Cross Appellant.

No. 01-1301.

No. 01-1316.

United States Court of Appeals, Federal Circuit.

DECIDED: May 30, 2002.

Appeal from the United States District Court for the Western District of Washington, Franklin D. Burgess, J Allen D. Brufsky, Allen D. Brufsky, P.A., of Bokeelia, Florida, argued for plaintiffs-appellants. Of counsel was Rex B. Stratton, Stratton Ballew, of Seattle, Washington.

David L. Garrison, Garrison & Associates PS, of Seattle, Washington, argued for defendant-cross appellant.

Before NEWMAN, RADER, and SCHALL, Circuit Judges.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the Western District of Washington determined that NFM, Inc. does not infringe Beckson Marine, Inc.'s United States Patent No. 4,363,350 ('350 patent). Beckson Marine, Inc. v. NFM, Inc., No. C98-5531 FDB (W.D.Wash. Nov. 19, 1999). The district court also determined that the '350 patent was not invalid and that Beckson had not, therefore, violated the Lanham Act, Sherman Act, or the Washington State Consumer Protection Act by asserting an invalid patent. Beckson Marine, Inc. v. NFM, Inc., No. C98-5531 FDB (W.D.Wash. March 6, 2001). Because the record does not support the trial court's claim interpretation, this court vacates and remands.

I.

Frank Beckerer, Sr. invented the device claimed in the '350 patent. Mr. Beckerer filed the application for the '350 patent on November 3, 1980. The patent expired on November 3, 2000. Beckson exclusively licensed the '350 patent from a family trust established by Mr. Beckerer. The '350 patent claims a portlight described by the specification as an improvement over United States Patent No. 4,095,640 ('640 patent). The inventor of the '640 patent is Frank Beckerer, Jr. — Mr. Beckerer's son and Beckson's president. Figs. 1 and 4 of the '350 patent are a back-view (e.g., from the interior of a boat) and a side-view, respectively, of a preferred embodiment:

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

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

Portlights provide a window in the wall of a boat. The portlight disclosed by the '350 patent closes from the inside. The Fig. 4 side-view depicts the window as number 20 and the boat wall as number 14. A mounting flange 12 extends around the periphery of the portlight and connects to the boat wall. A spigot 18 with outer walls 86, 88 runs perpendicular to the mounting flange. The spigot extends through the boat wall, with the upper side of its lower portion providing a sill 90 for the portlight. The sill includes drains 98, and 102 (not shown) to prevent an accumulation of water that may enter the boat when the portlight is opened. This summary judgment motion focuses on the draining feature of the sill. Claim 1 of the '350 patent defines the subject matter of Figs. 1 and 4:

1. In a self-draining, leak-resistant boat window, in combination:

(a) a frame body comprising a continuous mounting flange for engagement with an inner surface surrounding an opening in the wall of a boat,

(b) said body including a spigot connected with said flange and defining the window opening and having a lower portion characterized by an upwardly-facing drain surface constituting a sill, said spigot being adapted to extend through said wall opening of the boat,

(c) a window pane for closing off the window opening formed by the spigot, and

(d) means hingedly connecting said window pane to said mounting flange,

(e) said sill of the spigot having a portion which is downwardly offset with respect to remaining areas of the sill, said downwardly offset portion being provided with a sloping drain groove extending from a high location closely adjacent said mounting flange to a low location disposed remote from the mounting flange [sic]

(f) said drain groove being open at the top for a substantial portion of its length, thereby defining an open channel which resists the tendency for residue to form therein and cause possible clogging.

col. 7, ll. 1-27 (emphases added).

NFM is a Washington corporation that manufactures and sells metal portlights for boats and yachts. NFM's original product was an oval-shaped cast metal portlight with a covered drain beneath the sill. NFM began producing this portlight in August 1979. In 1995, NFM began producing a rectangular portlight with open drains. This rectangular portlight is the product accused of infringement. The accused spigot drains water from its sill with sloped depressions. When Beckson asserted its '350 patent against its rectangular portlight, NFM modified its accused portlight by placing small rectangular metal bridges partially over the sloped drains.

Beckson asserted the '350 patent against NFM in the United States District Court for the District of Florida. The Florida district court transferred the suit to the United States District Court for the Western District of Washington. Then NFM counterclaimed that the '350 patent was either obvious or anticipated, and that Beckson violated the Lanham Act, Sherman Act, or Washington State Consumer Protection Act by asserting a patent that it knew or should have known to be invalid. After the district court construed the claims, NFM moved for summary judgment of non-infringement, which the district court granted.

NFM also sought summary judgment on its counterclaims that Beckson sought to have dismissed. The district court denied NFM's motion and granted Beckson's motion. Because it found the '350 patent not invalid, the district court dismissed NFM's counterclaims as moot. Beckson appeals the grant of summary judgment of non-infringement while NMF appeals the validity of the '350 patent and the dismissal of its anticompetition counterclaims. This court has jurisdiction under 28 U.S.C. § 1295(a)(1) (1994).

II.

This court reviews without deference a district court's grant of summary judgment and draws all reasonable factual inferences in favor of the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Cortland Line Co. v. Orvis Co., 203 F.3d 1351, 1355-56, 53 USPQ2d 1734, 1736 (Fed.Cir.2000). This court decides for itself whether "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). This court also reviews without deference questions of claim construction. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454, 46 USPQ2d 1169, 1174 (Fed.Cir.1998) (en banc). Infringement, however, is a question of fact, Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353, 48 USPQ2d 1674, 1676 (Fed.Cir.1998), that a court is not to resolve on summary judgment unless no genuine factual issue remains, Bell Atl. Network Servs., Inc. v. Covad Communs. Group, Inc., 262 F.3d 1258, 1265, 59 USPQ2d 1865, 1869 (Fed.Cir.2001). Obviousness is a question of law, Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), premised on underlying factual determinations, Dennison Mfg. v. Panduit Corp., 475 U.S. 809, 810-11, 106 S.Ct. 1578, 89 L.Ed.2d 817 (1986). Anticipation is a question of fact. Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed.Cir.1999). Therefore, a district court properly may grant summary judgment on obviousness or anticipation only when the underlying factual inquiries present no lingering genuine issues.

Claim language defines claim scope. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227 USPQ 577, 586 (Fed.Cir.1985) (en banc). As a general rule, claim language carries the ordinary meaning of the words in their normal usage in the field of invention. Toro Co. v. White Consol. Indus., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed.Cir.1999). Nevertheless, the inventor may act as his own lexicographer and use the specification to supply implicitly or explicitly new meanings for terms. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-80, 34 USPQ2d 1321, 1330 (Fed.Cir.1995) (en banc). Thus, to help determine the proper construction of a patent claim, a court consults the written description, and, if in evidence, the prosecution history. Id.

In this case, the district court based its holding of non-infringement entirely on its construction of the term "sloping drain groove," the only claim term that it construed.¹ The district court construed "sloping drain groove" to require "a highly specific U-shaped drain channel of constant diameter/width, as shown in the figures accompanying the '350 patent." In addition to the patent figures, the district court also relied heavily upon claims 5 and 6 that depend from claim 1. Those claims provide, respectively, that "the bottom wall of the drain groove is curvilinear lengthwise, and is concave," and "the downwardly offset portion of the spigot is generally of U-shaped cross section, taken vertically."

A full review of the patent shows that the district court improperly narrowed the scope of claim 1 by importing limitations from the specification and from dependent claims 5 and 6. Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347, 49 USPQ2d 1199, 1203 (Fed.Cir.1998) ("a court may not import limitations from the written description into the claims"); Intermatic Inc. v. Lamson & Sessions Co., 273 F.3d 1355, 1364, 61 USPQ2d 1075, 1081-82 (Fed.Cir.2001) ("each claim in a patent is presumptively different in scope"). As this court herein explains, the term "sloping drain groove" requires only a sloping artificial channel to carry water. Of course, other claim terms may impart other limitations.

NFM defends the district court's summary judgment based on the ordinary meaning of the claim terms and the specification's disclosure of a...