Elkay Mfg. Co. v. Ebco Mfg. Co.

• Decision Date: 05 November 1999
• Docket Number: 99-1276.,No. 98-1596,98-1596
• Citation: 192 F.3d 973
• Parties: ELKAY MANUFACTURING COMPANY, Plaintiff-Appellee, v. EBCO MANUFACTURING COMPANY and Ebtech Corporation, Defendants-appellants.
• Court: U.S. Court of Appeals — Federal Circuit

192 F.3d 973

ELKAY MANUFACTURING COMPANY, Plaintiff-Appellee, v. EBCO MANUFACTURING COMPANY and Ebtech Corporation, Defendants-appellants.

Nos. 98-1596, 99-1276.

United States Court of Appeals, Federal Circuit.

September 15, 1999.

Rehearing and Suggestion for Rehearing Denied November 5, 1999.

Berton Scott Sheppard, Leydig, Voit & Mayer, Ltd., of Chicago, Illinois, argued for plaintiff-appellee. With him on the brief were Charles H. Mottier, Pamela J. Ruschau, and Christopher T. Griffith. Of counsel was Ali R. Sharifahmadian.

Darrel C. Karl, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for defendants-appellants. With him on the brief was Donald R. Dunner.

Before RICH,^* PLAGER, and GAJARSA, Circuit Judges.

Rehearing and Suggestion for Rehearing En Banc Denied November 5, 1999.

GAJARSA, Circuit Judge.

Ebco Manufacturing Co. and Ebtech Corp. (collectively, Ebco) appeal the July 10, 1998 decision of the United States District Court for the Northern District of Illinois holding, after a bench trial, that Elkay Manufacturing Co.'s (Elkay's) U.S. Patent Nos. 5,222,531 (the '531 patent) and 5,289,855 (the '855 patent) were valid and infringed by Ebco and awarding damages to Elkay. See Elkay Mfg. Co. v. Ebco Mfg. Co., 1998 WL 397844 (N.D.Ill.1998). Ebco also appeals the court's February 5, 1999 supplemental judgment awarding Elkay additional infringement damages. Because we conclude that Ebco's accused devices do not infringe the asserted claims of these patents pursuant to a proper claim construction, we reverse the district court's infringement decision and consequently vacate the associated damages awards.

BACKGROUND

The technology in this case concerns "no-spill" adapters for bottled water coolers that permit jugs of water to be inserted into coolers with the cap still on the bottle, thereby eliminating the potential problems of spilling or contaminating water when, for example, a bottle is inserted into a cooler. The accused devices, Ebco's WaterGuard I, II, and III no-spill adapters, comprise two concentric tubes designed and constructed so that water flows down the inner tube from the bottle into the cooler and air flows up into the bottle through the annular region formed by the two tubes.

Elkay sued Ebco, claiming that Ebco's WaterGuard devices infringed independent claims 1 and 7 of the '531 patent and claim 1 of the '855 patent, as well as dependent claims 2-4 and 8-10 of the '531 patent and claims 2-3 of the '855 patent. The '531 and '855 patents stem from the same genus. The '531 patent issued on June 29, 1993 from application Ser. No. 898,570 (the '570 application), which was filed as a continuation of application Ser. No. 684,642 (the '642 application). The '855 patent issued on March 1, 1994 from application Ser. No. 58,639 (the '639 application), which was filed as a separate continuation of the '642 application after the '531 patent was allowed.

Claim 1 of the '531 patent reads in part as follows:

1. A liquid container support and hygienic delivery system for dispensing drinking water or other potable liquid to a predetermined maximum liquid level in a dischargeable reservoir open at its upper end and housed within a cabinet from an inverted unpressurized container having an internal liquid confining surface defined by a substantially rigid, generally cylindrical body with a radially inwardly directed downwardly sloping shoulder portion merging into a generally cylindrical depending neck defining an opening closed by a coaxial cap circumferentially surrounding at least an outer axial portion of said neck and having an internal recess therein including a hollow tubular sleeve portion and a sealing plug portion defining a closed end with a central cavity having internal gripping means therein connected thereto, comprising, in combination,

....

an upstanding feed tube dimensioned to penetrate into said hollow tubular sleeve portion of said coaxial cap and said container neck to provide a hygienic flow path for delivering liquid from said inverted unpressurized container into said reservoir to said predetermined maximum liquid level and for admitting air from said reservoir above said liquid level into said container to displace the liquid delivered therefrom, said feed tube having upper and lower end portions, means carried by said removable mounting means for rigidly supporting said upstanding feed tube with said upper end projecting upwardly from said bottom end of said entry portion and said lower end depending downwardly from said bottom end of said entry portion of said removable mounting means into said reservoir to define said predetermined maximum liquid level,....

(emphasis of disputed limitation added). Similarly, claim 7 of the '531 patent includes the limitation "an elongated feed tube ... for admitting air into and dispensing drinking water ... from within said .... container," and claim 1 of the '855 patent includes the limitation "an upstanding feed probe ... to provide a hygienic flow path for delivering liquid from ... and for admitting air ... into said container."

In interpreting these limitations, the district court stated that

the pertinent claim language uses the article "an" to delineate one feed tube or probe. "An" does not qualify or limit the path through which the air and water pass.... The asserted claim language does not preclude a separation of the air and water flow or otherwise require the intermingling of air and water within the feed tube.

Elkay, 1998 WL 397844 at *12. Based on this construction, the court found that Ebco's WaterGuard no-spill adapters embodied these limitations through their use of concentric feed tubes and that the accused devices infringed the asserted claims of both patents, literally and under the doctrine of equivalents.

DISCUSSION

"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976, 34 USPQ2d 1321, 1326 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claim construction is a question of law that we review de novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed.Cir. 1998) (en banc). The determination as to whether the claims, as properly construed, read on the accused device presents an issue of fact that, following a bench trial, we review for clear error. See Charles Greiner & Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1034, 22 USPQ2d 1526, 1528 (Fed.Cir.1992). A district court's infringement decision that is based on an improper claim construction is entitled to no deference when the correct construction of the claim is dispositive of the issue of infringement. See Strattec Sec. Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1419, 44 USPQ2d 1030, 1036 (Fed.Cir. 1997).

In this case, the claim construction issue centers on "an upstanding feed tube ... to provide a hygienic flow path for delivering liquid from ... and for admitting air ... into said container" limitation in claims 1 and 7 of the '531 patent and claim 1 of the '855 patent. We first discuss the proper construction of this limitation and then compare the properly construed claims to the accused WaterGuard devices. We conclude that the accused devices do not infringe the properly construed asserted claims either literally or under the doctrine of equivalents.

A. Claim Construction

When construing a claim, a court should first look to the intrinsic evidence, i.e., the patent itself, its claims, written description, and, if in evidence, the prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed.Cir.1996). The court may receive extrinsic evidence to educate itself about the invention and the relevant technology, but the court may not use extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction mandated by the intrinsic evidence. See Key Pharms. v. Hercon Lab. Corp., 161 F.3d 709, 716, 48 USPQ2d 1911, 1917 (Fed.Cir.1998). We begin with the '531 patent.

1. The '531 Patent

Claim construction begins with the words of the claim. See Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 619-20, 34 USPQ2d 1816, 1819 (Fed.Cir.1995). We focus on the limitation "an upstanding feed tube ... to provide a hygienic flow path for delivering liquid from ... and for admitting air ... into said container" in claim 1 for convenience because our analysis does not vary concerning the corresponding limitation in claim 7.¹

Ebco asserts that the normal, accepted meaning of the use of the articles "a" and "an" requires that the above-quoted limitation be construed as describing a single feed tube with a single path for both "a" and water. This contention goes too far. While the article "a" or "an" may suggest "one," our cases emphasize that "a" or "an" can mean "one" or "more than one," depending on the context in which the article is used. See Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023, 43 USPQ2d 1545, 1548 (Fed.Cir.1997) ("The article `a' suggests a single chamber. However, patent claim parlance also recognizes that an article can carry the meaning of `one or more,' for example in a claim using the transitional phrase `comprising.'") (citing North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1575-76, 28 USPQ2d 1333, 1336 (Fed.Cir. 1993)).

The use of the articles "an" and "a" when referring to "feed tube" and "flow path," respectively, suggest a single feed tube with a single flow path for liquid and air. Other language in the claim similarly suggests a single flow path for both fluids. See '531 patent, col. 8, 11. 39-51 ("Said feed tube having a length ... to permit the...