Callicrate v. Wadsworth Mfg., Inc., CV 00-185-M-DWM.

• Decision Date: 27 August 2002
• Docket Number: No. CV 00-185-M-DWM.,CV 00-185-M-DWM.
• Citation: 217 F.Supp.2d 1101
• Parties: Michael P. CALLICRATE, an individual, Plaintiff, v. WADSWORTH MANUFACTURING, INC., a Montana corporation, and Custom Cowboy Creations, a sole proprietorship, Defendants.
• Court: U.S. District Court — District of Montana

217 F.Supp.2d 1101

Michael P. CALLICRATE, an individual, Plaintiff, v. WADSWORTH MANUFACTURING, INC., a Montana corporation, and Custom Cowboy Creations, a sole proprietorship, Defendants.

No. CV 00-185-M-DWM.

United States District Court, D. Montana, Missoula Division.

August 27, 2002.

COPYRIGHT MATERIAL OMITTED

Michael J. Milodragovich, Elizabeth A. O'Halloran, Milodragovich Dale Steinbrenner & Binney, Missoula, MT, Joseph E. Kovarik, Benjamin B. Lieb, Sheridan Ross, Attorney at Law, Denver, CO, for plaintiff.

James W. Bain, Brega & Winters, Denver, CO, W. Dennis Starkel, Robert C. Lukes, Garlington, Lohn & Robinson, PLLP, Missoula, MT, Keith S Bergman, Attorney at Law, Spokane, WA, for defendants.

ORDER

MOLLOY, Chief Judge.

A Markman hearing was held in this case on December 22, 2001. After considering the briefs and documentation submitted by the parties and the arguments at the hearing, the Court enters the following Order.

I. Introduction

This case involves the alleged infringement of patents on three castration tools. Plaintiff Michael Callicrate filed suit alleging that Defendants Wadsworth Manufacturing and Custom Cowboy Creations (collectively Wadsworth or Defendant) infringed on two patents held by Callicrate, Numbers 5,681,329 (the '329 Patent) and 5,997,553 (the '553 Patent), when Wadsworth manufactured and marketed second and subsequent generations of its EZE castration tools. Wadsworth's original EZE castration tool was itself the subject of Patent number 4,691,704 (the '704 Patent). Wadsworth denies infringement and counterclaims that the '329 and '553 Patents are invalid because the castration tools that are the subjects of those patents infringe upon the earlier issued '704 Patent.

II. Factual Background

On September 8, 1987, Wadsworth was issued the '704 Patent for its original castration tool. The original tool is a caulking gun-type mechanism that uses a length of surgical tubing to loop around an animal's testicles near where the scrotal pouch meets the body. The tubing is tightened and secured in a loop using a metal ring, or grommet. If done correctly, the tubing cuts off the blood flow to the animal's testicles and the testicles fall off.

Callicrate felt Wadsworth's tool contained flaws that could be improved upon to make it easier to use. Callicrate felt the caulking gun-type mechanism did not always allow for adequate tension of the surgical tubing. Also, the tool did not always allow for adequate crimping pressure on the grommet meaning the ligation material could fall off before castration was complete. Wadsworth claims these are not flaws in the original tool itself, but are the result of improper use.

Callicrate's original tool¹, which is the subject of the '553 Patent, contains two key differences from Wadsworth's tool. First, Callicrate's tool has a spool that allows the ligation material to be wound through the grommet and around the spool providing "infinite tightening of the ligation material." Second, Callicrate's tool uses a lever system to crimp the grommet around the ligation material with less effort, but greater force. Callicrate claims these differences solved the tightening and inadequate crimping problems of Wadsworth's tool. Wadsworth subsequently redesigned its tool adding a lever system similar to Callicrate's.

Callicrate next began marketing a "preformed endless loop of ligation material." To accommodate the preformed loops, Callicrate modified his tool. The modified tool is the subject of the '329 Patent. After Callicrate introduced his endless loop tool, Wadsworth also began marketing its own endless loops and a tool to accommodate them.

III. The Claims

Callicrate claims Wadsworth's redesigns of its EZE castration tool to include a crimping lever infringes on Claims 11, 12, 13, 16, and 18 of the '553 Patent. Callicrate also claims Wadsworth's redesigns of its EZE castration tool to accommodate endless loops infringes on Claims 7, 11, 18, 19, 20, 25, 27 and 30 of the '329 Patent.

Wadsworth denies infringement and counterclaims that the '553 and '329 Patents are invalid because both of Callicrate's tools infringe on Claim 6 of the '704 Patent.

IV. Applicable Law

Patent infringement is determined through a two step process. First, the court must interpret the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995). Next is a factual determination as to whether the accused device infringes on the claim. When interpreting a claim, the court looks first to intrinsic evidence, which is made up of the claims themselves, the specification, and the prosecution history. Pitney Bowes, Inc. v. Hewlett-Packard Company, 182 F.3d 1298, 1309 (Fed.Cir.1999).

Terms in a claim are to be given their ordinary and accustomed meaning, unless the party advocating an alternate meaning can demonstrate the alteration is required through clarity, deliberateness, and persuasion. K-2 Corporation v. Salomon S.A., 191 F.3d 1356, 1362 (Fed.Cir. 1999). If the claim language is clear on its face, intrinsic evidence is considered only to determine whether a deviation from the clear language is required. Id. In construing a claim, the court cannot read additional limitations into the claim from the specifications. If the means-plus-function language of 35 U.S.C. § 112, ¶ 6 is implicated, the claim can be limited to the functions set forth in the specification.

A means-plus-function limitation recites a function to be performed rather than a definite structure. Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303, 1308 (Fed.Cir. 1998). If the means-plus-function language is implicated, the court must identify the function and import limitations from the specification. The limitation is construed to cover corresponding structure, material, or acts described in the specification and equivalents. Elaborations on the structure that are unrelated to the particular function are not considered to correspond to the recited function. Id.

V. Analysis

A. The '704 Patent

The parties agree Claim 6 of the '704 Patent is the only Claim Callicrate has allegedly infringed upon. Claim 6 is set forth as follows, with the allegedly ambiguous portions in bold:

6. A process for the castration of larger animals by means of endless elastic ligation material, comprising, in combination:

the formation of ligation material in a loop forwardly of a crimpable grommet adapted to fasten the ends of the ligation material together upon crimping, said grommet being carried in a tool having means of moving at least one end of the ligation material rearwardly through the grommet on the side opposite the loop and having second means of crimping the grommet when in fastening position;

manually passing the ligation material over the scrotal pouch and contents of an animal to be castrated;

tightening the ligation material about the scrotal pouch of said animal at a position approximately at the point of contact of the scrotal pouch with the body structure;

crimping the grommet upon the ligation material to fasten the ends together;

removing the tool from the fastened ligation material and trimming the ends thereof adjacent the grommet.

The disputed passage will be separated into five phrases for analysis.

1. "A process for the castration of larger animal by means of endless elastic ligation material, comprising, in combination"

Callicrate urges the Court to interpret "endless elastic ligation material" to mean linear length of bulk ligation material. Callicrate argues the language used by Wadsworth, which constitutes the preamble of Claim 6, limits the claim "to methods of castration which use linear lengths of bulk ligation material."

Wadsworth proposes that "endless ligation material" should be interpreted to mean a tensed length of ligation material with its ends fastened together to cause ligation of an animal body part. Wadsworth argues the preamble states the intended use of the tool, but does not serve as a limitation because the language of Claim 6 itself is clear. Wadsworth further argues use of the term "endless" was meant to distinguish its invention from previous tools that required stretching the ligation material before looping it over the scrotal pouch.

The preamble of a claim does not limit the claim's scope when the body of the claim sets forth the complete invention, including all limitations, and the preamble does not offer a distinct definition of any limitations. Pitney Bowes Inc. v. Hewlett-Packard Company, 182 F.3d 1298, 1305 (Fed.Cir.1999). If, however, the preamble when read in context of the entire claim states a limitation or is necessary to sustain the claim, the preamble will be construed as part of the claim. Id.

In Pitney Bowes, disputed claims contained the following preambles:

1. A method of producing on a photoreceptor an image generated of shapes made up of spots, comprising: directing a plurality of beams of light towards a photoreceptor, each beam of light generating a spot on the photoreceptor and controlling a parameter of the light beams to produce spots of different sizes whereby the appearance of smoothed edges are given to the generated shapes.

3. Apparatus for producing on a photoreceptor an image of generated shapes made up of spots, comprising: means for directing a plurality of beams of light toward a photoreceptor to generating [sic] a plurality of spots on the photoreceptor and means for generating spots of different sizes whereby the appearance of smoothed edges are given to the generated shapes.

Id. at 1302. The Federal Circuit found the preamble to be "necessary to give life, meaning and vitality to the claim." Id. at 1305 (internal quotations omitted). The Federal Circuit reasoned that the preamble language was "intimately meshed with the ensuing language in the claim" and was not simply a description of the invention's intended use. Id. at 1306. The Federal Circuit pointed to the terms "generated...