Deere & Co. v. Bush Hog, LLC

• Decision Date: 04 December 2012
• Docket Number: 2011–1630,2011–1631.,Nos. 2011–1629,s. 2011–1629
• Citation: 703 F.3d 1349
• Court: U.S. Court of Appeals — Federal Circuit
• Parties: DEERE & COMPANY, Plaintiff–Appellant, v. BUSH HOG, LLC, Defendant–Cross Appellant, Great Plains Manufacturing Incorporated, Defendant–Cross Appellant.

703 F.3d 1349

DEERE & COMPANY, Plaintiff–Appellant,

v. BUSH HOG, LLC, Defendant–Cross Appellant,Great Plains Manufacturing Incorporated, Defendant–Cross Appellant.

Nos. 2011–1629, 2011–1630, 2011–1631.

United States Court of Appeals, Federal Circuit.

Dec. 4, 2012.

Roderick R. McKelvie, Covington & Burling LLP, of Washington, DC, argued for plaintiff-appellant. With him on the brief was R. Jason Fowler.

Craig C. Martin, Jenner & Block LLP, of Chicago, IL, argued for defendant-cross appellant Bush Hog, LLC. With him on the brief were Steven R. Trybus, of Chicago, IL, Matthew S. Hellman, of Washington, DC, and Elizabeth A. Edmondson, of New York, New York. Of counsel were Jeffrey D. Harty and Edmund J. Sease, McKee, Voorhees & Sease, P.L.C., of Des Moines, IA.

Scott R. Brown, Hovey Williams LLP, of Overland Park, KS, argued for defendant-cross appellant Great Plains Manufacturing Incorporated. With him on the brief was Matthew B. Walters.

Before RADER, Chief Judge, NEWMAN and PLAGER, Circuit Judges.

RADER, Chief Judge.

The United States District Court for the Southern District of Iowa construed the terms of Deere & Co.'s (“Deere”) U.S. Patent No. 6,052,980 (the “'980 Patent”) and granted Bush Hog, LLC's (“Bush Hog”) and Great Plains Manufacturing, Inc.'s (“Great Plains”) motions for summary judgment of noninfringement. This court affirms the construction of “rotary cutter deck” and the determination that the terms “substantially planar” and “easily washed off” do not render the asserted claims invalid under 35 U.S.C. § 112. Because the district erroneously construed the term “into engagement with” to require direct contact, this court vacates that construction, reverses the grant of summary judgment, and remands for further proceedings.

I.

The '980 Patent discloses an “easy clean dual wall deck” for a rotary cutter. Bush Hog and Great Plains (collectively, “Defendants”), manufacture rotary cutters that are pulled behind a tractor and used to mow wide swaths of ground. The accused rotary cutters can “rough cut” fields after a harvest or clear weeds and brush along roadsides. The '980 Patent addresses a problem encountered by rotary cutters: “[d]uring cutting/shredding of material, such as cotton[,] corn, milo and wheat stubble, grass, etc. with a rotary cutter, debris accumulates on the top of the cutter deck. If not regularly cleaned off, the debris retains moisture which eventually results in the deck rusting out.” '980 Patent, col. 1, ll. 21–25.

The specification explains that prior art rotary cutters had structural components such as gearboxes and deck bracings mounted either on top of or underneath the cutter deck. Id. col. 1, ll. 25–35. When placed on top of the deck, these components create traps for debris and water, making it difficult to clean the deck. Id. When placed underneath the deck, the structural components interfere with the flow of cut material, reducing cutting efficiency. Id.

The '980 Patent discloses a dual-wall deck that encloses the structural components in a torsionally-strong box. This leaves smooth surfaces on the top and bottom of the deck. Figure 3 of the '980 Patent shows a side view of the claimed dual-wall deck. In the embodiment shown, the front and rear of the upper deck wall 56 slope down to contact the lower deck wall 28.Id. col. 2, l. 59—col. 3, l. 4.

IMAGE

'980 Patent, fig. 3 (highlighting added).

Claim 1 of the '980 Patent recites:

1. A rotary cutter deck comprising:

a lower, substantially planar, horizontal deck wall;

an upper deck wall including a central portion elevated above said lower deck wall, and

front and rear portions respectively sloped downwardly and forwardly, and downwardly and rearwardly from said central portion into engagement with, and being secured to, said lower deck wall;

and right- and left-hand end wall structures respectively being joined to right- and left-hand ends of said lower and upper deck walls to thereby define a box section having torsional stiffness.

Id. col. 4, ll. 44–53 (emphasis added).

The district court construed the term “into engagement with” to mean “brought into contact with,” and construed “being secured to” as “fastened or attached.” Deere & Co. v. Bush Hog LLC (“ Claim Construction Order ”), No. 3:09–cv–95 (S.D.Iowa Jan. 25, 2011). The district court granted summary judgment of noninfringement, holding Deere did not raise a genuine issue of material fact as to literal infringement because “the upper deck walls do not come into contact with the lower deck walls in any of the accused products.” Deere & Co. v. Bush Hog LLC (“ Summary Judgment Opinion ”), No. 3:09–cv–95, slip. op. at 13 (S.D.Iowa Aug. 1, 2011).

In each of the accused products, an intermediate structure connects the upper deck wall to the lower deck wall at both the front and rear portions of the deck. Id. at 3. Like the district court, this court refers to those intermediate structures as “connectors.” The size and shape of the connectors is different in the various accused products, but the district court did not distinguish between different types of connectors in granting summary judgment. The differences are therefore irrelevant to this appeal.

In addition to granting summary judgment of no literal infringement, the district court held Deere could not assert infringement under the doctrine of equivalents because doing so would vitiate the “into engagement with” limitation. Id. at 15–16. Further, the district court barred Deere from asserting equivalence because the “into engagement with” limitation “specifically excludes structures where the deck walls are not engaged with each other.” Id. at 16.

The district court entered final judgment in favor of Defendants, dismissing without prejudice Defendants' counterclaims of invalidity. This court has jurisdiction under 28 U.S.C. § 1295(a)(1).

II.

This court reviews claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455–56 (Fed.Cir.1998) (en banc). This court also reviews a district court's grant of summary judgment without deference. ICU Med., Inc. v. Alaris Med. Sys. Inc., 558 F.3d 1368, 1374 (Fed.Cir.2009).

The district court erroneously construed the term “into engagement with” to require direct contact between the upper and lower deck walls. At the outset, the claim language itself counsels against this narrow interpretation of the term. “[T]he words of a claim ‘are generally given their ordinary and customary meaning’ ... that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed.Cir.2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)). “[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which [it] appears, but in the context of the entire patent, including the specification.” Id. at 1313. While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims. Id. at 1323.

Claim 1 of the '980 Patent requires the front and rear of the upper deck wall to slope downwardly “into engagement with, and being secured to,” the lower deck wall. '908 Patent, col. 4, l. 49. To give effect to all terms of the claim, “secured to” and “into engagement with” must have distinct meanings. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.Cir.2006). The parties agree that two objects may be “secured to” one another without being in direct contact. For example, a rigid bracket can “secure” two objects together yet maintain space between them. Defendants argue that if “engagement” also includes connection through indirect contact, then it is redundant with “secured to.”

This court gives effect to the claim terms “secured to” and “engagement” as conveying distinct meanings. The term “engagement” connotes a connection between two objects in which the motion of one object is constrained by the other. This connection can be indirect, such as where a motor is engaged with a gear through a second, intermediate gear. The gear and motor are engaged even though they are not “secured” together, such as with nuts and bolts or by welding. Objects that are secured to one another are not just connected, but are fastened or attached in some way. Thus, construing “engagement” to include indirect contact, consistent with its plain meaning, does not render the term superfluous.

The specification illustrates that “engagement” includes indirect contact between the upper and lower deck walls. As shown in Figure 1, the “[o]uter rear portions of the right- and left-hand upper deck wall sections 56 and 58 [yellow] are connected to the right- and left-hand lower deck wall portions [red] by respective downwardly and rearwardly inclined filler plates 86 and 88 [blue].” '980 Patent, col. 3, ll. 4–7 (highlighting added) (upper deck wall section 58 not labeled; filler plate 86 not shown). Thus, the filler plates provide an indirect connection by which the upper deck wall slopes “downwardly and rearwardly ... into engagement with” the lower deck wall.

IMAGE

'980 Patent, Fig. 1 (highlighting added).

Defendants respond that the filler plates cannot be considered to bring the upper deck “into engagement with” the lower deck as contemplated by Claim 1, because they are located at a point where the upper deck is substantially horizontal. Claim 1 requires engagement at a point where the upper deck “slope [s] downwardly” to meet the lower deck. Id. col. 4, ll. 45–50. However, the specification describes the portion of the upper deck wall where the filler plate is attached (labeled 64 in Figure 1) as “convexly bowed from front to rear.” Id. col. 2, ll. 44–53. In other words, the upper deck wall is “sloped downwardly” at the point where it engages the lower deck wall via the filler plate.

Claim 1 indicates that the “e...