Burke v. Bruno Ind. Living Aids

• Decision Date: 02 July 1999
• Parties: (Fed. Cir. 1999) BURKE, INC., Plaintiff-Appellant, v. BRUNO INDEPENDENT LIVING AIDS, INC., Defendant-Appellee. 97-1273 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1334

183 F.3d 1334 (Fed. Cir. 1999)

BURKE, INC., Plaintiff-Appellant, v. BRUNO INDEPENDENT LIVING AIDS, INC., Defendant-Appellee.

97-1273

United States Court of Appeals for the Federal Circuit

DECIDED: July 2, 1999

Appealed from: United States District Court for the Eastern District of Wisconsin

James H. Wallace, Jr., Wiley, Rein & Fielding, of Washington, DC, argued for plaintiff-appellant. With him on the brief were Andrew S. Krulwich and Michael L. Sturm.

C. Thomas Sylke, Foley & Lardner, of Milwaukee, Wisconsin, argued for defendant-appellee. With him on the brief was Lawrence M. Sung, Foley & Lardner, of Washington, DC.

ARCHER, Senior Circuit Judge.

Before LOURIE, Circuit Judge, ARCHER,^* Senior Circuit Judge, and RADER, Circuit Judge.

DECISION

Judge Rudolph T. Randa

Burke, Inc. (Burke) appeals from the March 6, 1997 summary judgment of the United States District Court for the Eastern District of Wisconsin¹ holding that the defendant, Bruno Independent Living Aids, Inc. (Bruno) did not infringe United States Patent No. 4,570,739 ('739 patent). We vacate the judgment and remand for further proceedings.

BACKGROUND

Burke is the assignee of the '739 patent which is directed to a personal mobility vehicle, commonly referred to as a scooter. The scooter is a small, electrically powered three-wheel device that gives mobility to an elderly or physically challenged person. The case now on appeal is one of a number of suits for infringement of the '739 patent filed by Burke in different district courts. This court first considered the '739 patent in connection with Burke's infringement suits against Everest & Jennings, Inc. (E & J) and Invacare Corporation, Inc. (Invacare). There, a California district court had granted the defendants' motion for directed verdict on the grounds of invalidity (for indefiniteness under 35 U.S.C. 112, 2) and noninfringement. In re Burke, Inc., 786 F. Supp. 1537, 22 USPQ2d 1368 (C.D. Cal. 1992). On March 31, 1993 we vacated the district court's judgment and remanded the case. Burke, Inc. v. Everest & Jennings, Inc., 991 F.2d 812 (Fed. Cir. 1993) (table), 1993 WL 92579 (nonprecedential opinion reported at 29 USPQ2d 1393) (Burke I).

Concurrently with the proceedings in the district court, the Patent and Trademark Office (PTO) granted a request for reexamination of the '739 patent. On April 19, 1994, the PTO issued Burke a reexamination certificate for the '739 patent, confirming the patentability of claims 1 through 14 and adding new claims 18 through 29.

In the California district court proceedings following the remand in Burke I, the court entered summary judgment in favor of E&J and Invacare. See In re Burke, Inc., MDL Docket No. 809-JSL (C.D. Cal. March 31, 1995). The court determined that claim 1 had been narrowed in the reexamination proceeding. In particular, it held that the disputed term "floor pan" in claim 1 "required accessibility to the feet of the rider." It also held that the frame connection means of claim 1 for connecting the front and rear modular units was not infringed by an identical or equivalent connection in the accused devices.

We reversed both of these holdings of the California district court in a non-precedential opinion. See Burke, Inc. v. Everest & Jennings, Inc., 82 F.3d 435 (Fed. Cir. 1996) (table), 1996 WL 137527 (Burke II). We concluded that claim 1 of the '739 patent was not narrowed in the reexamination proceedings. We construed the term "floor pan" to mean that the floor pan is not limited to an unobstructed place where the rider's feet rest. Rather, it is essentially the horizontal frame, including the place where the battery is placed. We also held that the district court erred when it determined on summary judgment that the frame connection means disclosed in the '739 patent was not infringed.

The case against Bruno, the subject of this appeal, was brought in the United States District Court for the District of Wisconsin on March 15, 1994, following this court's decision in Burke I and shortly after the reexamination proceeding confirmed the validity of all claims of the '739 patent. The Wisconsin district court issued a Decision and Order (later vacated) that expressly adopted the California district court's interpretation of the claims. The Wisconsin court held that claim 1 had been narrowed in reexamination and that "accessibility to the feet" was a required limitation to the term "floor pan."²

Burke sought reconsideration and the Wisconsin district court granted the motion to the extent of vacating its Decision and Order pending the issuance of this court's decision in Burke II. After reviewing Burke II, the district court granted Bruno's renewed motion for summary judgment. In holding that Bruno did not infringe claim 1, the court interpreted the term "floor pan" in claim 1 of the '739 patent to require (i) that it be composed of sheet metal, (ii) that the sheet metal be "contiguous," meaning "either one single piece of sheet metal or several pieces of sheet metal welded directly to each other" and (iii) that the sheet metal be in a "single plane." Burke has appealed the district court's summary judgment on the grounds that its claim interpretation was erroneous.

DISCUSSION

I. Reliance on a nonprecedential opinion

Burke cites and relies upon this court's nonprecedential opinion in Burke II, asserting that the district court erred when it failed to adopt this court's claim construction in that case. Bruno contends that Burke's use of a nonprecedential opinion violates this court's proscription under Fed. Cir. R. 47.6(b) against employment or citation of a nonprecedential opinion as precedent. Rule 47.6(b) states:

Opinions and orders which are designated as not citable as precedent . . . shall not be employed or cited as precedent. This rule does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the court rendered in a nonprecedential opinion or order.

Burke argues that reliance on our nonprecedential claim construction is appropriate because it is permitted under Rule 47.6(b) for "issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like." Burke contends that the claim construction in Burke II should fall in the catchall provision, "or the like," because we construed the same claim limitations at issue here and because the court below repeatedly noted our opinion.

Rule 47.6(b) does not unconditionally prohibit citation of nonprecedential opinions but instead permits citation of such opinions for limited purposes. In this case, the interest of consistency in the construction of patent claims would be ill served by interpreting Rule 47.6(b) to preclude consideration of a prior claim construction rendered as a matter of law by this court. See Markman v. Westview Instruments, Inc., 116 S. Ct. 1384, 1396, 38 USPQ2d 1461, 1470-71, aff'g 52 F.3d 967, 1011, 34 USPQ2d 1321, 1356 (Fed. Cir. 1995) (en banc) (noting "importance of uniformity of treatment of a given patent"). Because the present case concerns the identical issue of law decided by the court in Burke II, i.e., the meaning of the term "floor pan" in claim 1 of the '739 patent, we believe the exception to the non-citation rule should be applied.

Bruno contends that this court considered a similar situation in the case of CVI/Beta Ventures Inc. v. Tura LP, 112 F.3d 1146, 42 USPQ2d 1577 (Fed. Cir. 1997) in which this court reached a different claim construction with respect to the same patent that had been considered in a prior nonprecedential decision of the court. In the first case the claims were considered in the context of preliminary injunction proceedings, whereas in the second case the claim construction was based upon the final and complete record. CVI/Beta Ventures,112 F.3d at 1160 n.7. Thus, the differing claim constructions resulted from the different procedural status of the two cases and not on the mere fact that the earlier case was nonprecedential. Id. That case, contrary to Bruno's assertions, does not provide a blanket proscription against asserting a claim construction rendered in an earlier nonprecedential opinion in subsequent litigation against different defendants on the same patent.

Because the same claim of the same patent is at issue in this case, it was not improper under Rule 47.6 to cite Burke II and discuss and rely on this court's claim construction in that case.

II. District Court's grant of summary judgment

A. This court reviews the grant of summary judgment de novo applying the same standard as the district court. See Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed. Cir. 1994). In determining the propriety of a summary judgment of noninfringement, we review de novo the district court's claim interpretation. See Markman v. Westview Instruments, Inc., 52 F.3d at 979, 34 USPQ2d at 1329 (Fed. Cir. 1995) (en banc), aff'd, 116 S. Ct. 1384 (1996). Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77, 12 USPQ2d 1382, 1383 (Fed. Cir. 1989). Even when material facts are in dispute, summary adjudication may be appropriate if, with all factual inferences drawn in favor of the nonmovant, the movant would nonetheless be entitled to judgment as a matter of law. See Stark v. Advanced Magnetics, 29 F.3d 1570, 1572-73, 31 USPQ2d 1290, 1292 (Fed. Cir. 1994). Summary judgment should ordinarily be vacated or reversed, however, if it is based on a claim construction that this court determines to be erroneous. See International Visual Corp. v. Crown Metal Mfg. Co., 991 F.2d 768, 772, 267 USPQ2d 1588, 1591 (Fed. Cir. 1993).

B. Claim 1 of the '739 patent, which is the only claim at issue, reads as follows:

1. A personal mobility...