Canton Bio-Medical v. Integrated Liner, BIO-MEDICA

• Decision Date: 30 June 2000
• Docket Number: INC,BIO-MEDICA
• Citation: 216 F.3d 1367,2000 WL 867593
• Parties: (Fed. Cir. 2000) CANTON, Plaintiff-Appellant, v. INTEGRATED LINER TECHNOLOGIES, INC., Defendant-Appellee. 98-1568 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1367

216 F.3d 1367 (Fed. Cir. 2000)

CANTON BIO-MEDICAL, INC., Plaintiff-Appellant, v. INTEGRATED LINER TECHNOLOGIES, INC., Defendant-Appellee.

98-1568

United States Court of Appeals for the Federal Circuit

DECIDED: June 30, 2000

Appealed from: United States District Court for the Northern District of New York

Edward V. Filardi, White & Chase, of New York, New York, argued for plaintiff-appellant. Of counsel was John Scheibeler.

James R. Muldoon, Hancock & Estabrook, LLP, of Syracuse, New York, argued for defendant-appellee.

Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

Canton Bio-Medical, Inc. ("Canton") appeals the decision of the United States District Court for the Northern District of New York,¹ granting the motion of Integrated Liner Technologies, Inc. ("ILT") for summary judgment of non-infringement of Canton's United States Patent No. 4,499,148 under the doctrine of equivalents. The judgment is affirmed.

The Patented Invention

Both ILT and Canton manufacture septa, which are small disks used as closures for liquid-containing vessels. These septa have perforation and self-sealing properties whereby a needle may be inserted and withdrawn from the vessels without significant contamination or fluid loss. The septa made by ILT and Canton are formed from plastic laminations of a layer of an elastomer, such as a silicone rubber, and one or more layers of a polyolefin. The '148 patent is directed to the process by which these materials, which are generally inert and difficult to bond, are laminated to form septa having the desired properties.

The '148 patent describes and claims a four-step process wherein the polyolefin surface is treated with a corona discharge, primed with a specified primer solution, bonded to an uncured elastomer, and cured by application of heat while applying pressure to the laminate. By this process a firm bond or "chemical bridge" is formed between the polyolefin and the elastomer. Claim 1 is the only claim in suit:

1. A method of chemically bonding elastomeric materials to chemically inert polyolefins, the method comprising:

[a] exposing a chemically inert polyolefin surface to a corona discharge treatment,

[b] applying to the corona discharge treated surface of the polyolefin a primer solution of ethyl silicate, ethyl orthosilicate and tetra butyl titanate in an organic solvent,

[c] placing the treated and primed surface of polyolefin in contact with the surface of an uncured elastomeric compound of molecular weight above 61,000 with a minimum elongation modulus of fifty percent; and,

[d] applying heat to the composite material to cure the elastomeric compound while pressing the polyolefin elastomeric compound article firmly together, whereby upon curing of the elastomeric material the polyolefin will be firmly and securely bonded thereto.

In the accused ILT process the polyolefin surface is also treated with a corona discharge, primed, and laminated to an elastomer by treating with heat and application of pressure. ILT states that the patented and the accused processes differ in two ways. First, ILT contends that it uses a different chemical primer solution from that of step [b]. Second, ILT argues that the bonded elastomeric compound in ILT's process is not "uncured" as stated in step [c] before the treatment with heat and pressure in accordance with step [d].

Because of the different chemicals used in the step [b] primer solution, Canton agreed that ILT's process does not literally infringe claim 1. The district court held by summary judgment that there was no infringement under the doctrine of equivalents, based primarily on prosecution history estoppel. We affirm.

The Doctrine of Equivalents

The determination of equivalency vel non is a question of fact. See Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1218, 36 USPQ2d 1225, 1229-30 (Fed. Cir. 1995). Thus summary judgment may be granted when no material fact is in dispute, or when no reasonable trier of fact could find facts whereby the nonmoving party could prevail, even when all justifiable factual inferences are drawn in favor of the nonmovant. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 255 (1986). The district court's grant of summary judgment receives plenary review on appeal, see EMI Group N. Am., Inc. v. Intel Corp., 157 F.3d 887, 891, 48 USPQ2d 1181, 1184 (Fed. Cir. 1998), as does the court's ruling on the issue of prosecution history estoppel.

Processes are equivalent, in terms of the law of patent infringement, when there is no substantial difference between the patented process and the accused process. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39-40, 41 USPQ2d 1865, 1875 (1997) (also discussing the "function, way, result" criteria for determining equivalency, but recognizing that this formula may provide a "poor framework" for analyzing chemical processes). Infringement of process inventions is subject to the "all-elements rule" whereby each of the claimed steps of a patented process must be performed in an infringing process, literally or by an equivalent of that step, with due attention to the role of each step in the context of the patented invention. See id. at 29, 40, 41 USPQ2d at 1871, 1875. However, even when technological equivalency is present, the patentee is estopped from enforcing the patent against an equivalent process if the inventor surrendered, during prosecution of the patent application, claim scope which included the now-asserted element or its equivalent. See id. at 30-33, 41 USPQ2d at 1871-72.

A

Canton's claimed step [b] requires the application, to a corona discharge treated polyolefin surface, of a primer solution containing ethyl silicate, ethyl orthosilicate, and tetrabutyl titanate. The accused ILT process also applies a primer to a corona discharge treated polyolefin surface. However, the ILT primer solution differs from Canton's in that it is a solution of the compound N-(2-aminoethyl)-3-aminopropyltrimethoxysilane, of the formula (CH3O)3Si(CH2)3NHCH2CH2NH2. Canton states that ILT's primer solution containing this single molecule is the chemical equivalent of Canton's primer solution containing three molecules, based on insubstantial differences in the primers' chemical and physical properties and functions, including the identity or equivalency of their chemical functional groups, their recognized...