Gemtron Corp. v. Saint-Gobain Corp.

• Decision Date: 20 July 2009
• Docket Number: No. 2009-1001.,2009-1001.
• Citation: 572 F.3d 1371
• Parties: GEMTRON CORPORATION, Plaintiff-Appellee, v. SAINT-GOBAIN CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

572 F.3d 1371

GEMTRON CORPORATION, Plaintiff-Appellee, v. SAINT-GOBAIN CORPORATION, Defendant-Appellant.

No. 2009-1001.

United States Court of Appeals, Federal Circuit.

July 20, 2009.;

David L. De Bruin, Michael Best & Friedrich LLP, of Chicago, IL, argued for plaintiff-appellee. With him on the brief were Marshall J. Schmitt and Gilberto E. Espinoza.

Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Alexandria, VA, argued for defendant-appellant. With him on the brief were Jean-Paul Lavalleye, Barry J. Herman and Michael E. McCabe, Jr. Of counsel on the brief was Andrew S. Doctoroff, Honigman Miller Schwartz and Cohn LLP, of Detroit, MI.

Before MICHEL, Chief Judge, SCHALL and LINN, Circuit Judges.

LINN, Circuit Judge.

Refrigerator parts manufacturer Saint-Gobain Corporation ("Saint-Gobain") appeals from the grant of a permanent injunction following a determination that certain of its refrigerator shelves infringe claim 23 of U.S. Patent No. 6,679,573 (the "`573 patent"), owned by Gemtron Corporation ("Gemtron"). Gemtron Corp. v. Saint-Gobain Corp., No. 1:04-CV-00387, 2008 WL 4455632 (W.D.Mich. Sept. 22, 2008); see also Gemtron Corp. v. Saint-Gobain Corp., No. 1:04-0387, 2008 WL 1808803 (W.D.Mich. Apr. 21, 2008); ("New Trial Op."); Gemtron Corp. v. Saint-Gobain Corp., No. 1:04-0387, 2008 WL 2538959 (W.D.Mich. Apr. 22, 2008) ("JMOL Op.") Saint-Gobain Corp. v. Gemtron Corp., No. 1:04-387, 2006 WL 1008396 (W.D.Mich. Apr. 17, 2006) ("S.J. Op."). Because the district court correctly construed the claim term "relatively resilient end edge portion" to require only that the frame of the shelf be flexible at the time of manufacture, because there was undisputed evidence that the frames of Saint-Gobain's accused shelves were flexible at the time of manufacture, and because the district court did not err in denying Saint-Gobain's motions concerning obviousness, we affirm.

I. BACKGROUND

Gemtron is the assignee of both the '573 patent and U.S. Patent No. 6,422,673 (the "'673 patent"). The '573 patent issued from a divisional of the application that issued as the '673 patent, and the two patents share a common specification. See '573 patent, at [62]. The '573 patent is directed to a refrigerator shelf. Id. col.1 l.1. The shelf disclosed in the '573 patent is made up of two pieces—"a one-piece open frame" made of plastic, and a glass panel. Id. col.2 ll.29-33. Top and bottom views of the shelf are depicted below:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Id. figs. 6-7.

Unlike prior art shelves that were constructed by bonding the edge of the glass panel to the frame using adhesive, the claimed shelf secures the glass panel in the frame using "relatively resilient" fingers so that the glass panel is "snap-secured" into place. Id. col.2 ll.42-47. According to the specification, avoiding adhesive is desirable because using adhesive increases manufacturing costs:

The cost of adhesive adds to the overall cost of such shelves and, of course, additional steps are required during the assembly process to apply the adhesive to the frame and/or to the edges of the glass panel prior to assembling the same. Moreover, if an overabundance of adhesive is utilized, there is a tendency for the edges of the glass panel to squeeze excess adhesive out of the continuous peripherally inwardly opening glass edge-receiving channel, and this in turn creates additional adhesive cleanup problems and the cost associated therewith.

Id. col.1 ll.46-55. By contrast, by using a frame with "relatively resilient" fingers that "snap-secure[]" the glass panel, the shelf of the '573 patent "is manufactured at a relatively low cost from only two pieces of material (a frame and a glass panel) in the absence of the added costly manufacturing step of applying adhesive and removing excess adhesive." Id. col.2 ll.43, 45-46, 59-62.

The fingers of the shelf's frame are illustrated in Figure 3 of the '573 patent:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Id. fig.3. "In the assembled condition of the frame, [the edges of] the glass panel 35 are each snap-secured to the respective [portions] of the frame." Id. col.4 ll.38-43. The specification includes a description of the way in which the glass panel is inserted into the frame when the shelf is assembled:

Due to [the] relative dimensioning [of the frame and glass panel] and the relatively flexible nature of the fingers 90 and the finger terminal edge portions 91 thereof, the latter are free to temporarily flex and deform as the glass panel 35 is inserted upwardly, .... which causes the fingers to temporarily deform, resulting in the edges of the glass panel 35 to essentially pass or snap into the associated channels of each finger whereupon the finger terminal free edge portions 91 rebound to their original position and interlock beneath each glass edge.... In this manner, each shelf is constructed of only two pieces of material, namely, the one-piece injection molded frame and the tempered glass panel retained in snap-secured relationship to each other....

Id. col.5 l.57-col.6 l.4 (citations to reference characters omitted). Put another way, the fingers on the frame bend up as the glass is being inserted, then snap back into their original position to secure the glass.

Saint-Gobain brought suit against Gemtron in 2004, seeking a declaratory judgment of noninfringement and invalidity of the '573 and '673 patents. Gemtron counterclaimed for infringement, and the district court realigned the parties to make Gemtron the plaintiff.

Claim 23 of the '573 patent is the only claim at issue in this appeal. It recites:

23. A refrigerator shelf comprising a one-piece open frame made of substantially homogeneous polymeric/copolymeric molded synthetic material and a piece of glass closing an opening defined by said frame; said open frame having opposite substantially parallel side frame portions and opposite substantially parallel front and rear frame portions; said glass piece having opposite substantially parallel side edges and opposite substantially parallel front and rear edges; said side, front and rear frame portions being substantially contiguous to said respective side, front and rear edges; each of said side frame portions being defined by an upper wall, a side wall depending from each upper wall and a lower wall projecting from its side wall toward an opposite side wall with the opposing lower walls being spaced from each other and each defining with an associated upper wall a glass piece side edge-receiving channel, each upper wall and lower wall having a terminal free edge, said glass piece side edges being spaced a predetermined distance from each other, said upper wall terminal free edges being spaced a predetermined distance from each other, said lower wall terminal free edges being spaced a predetermined distance from each other, the predetermined distance of the glass piece side edges being appreciably greater than the predetermined distance of said upper wall edges and only slightly greater than the predetermined distance between said lower wall terminal free edges whereby said glass piece side edges are captively retained in said glass piece side edge-receiving channels, and at least one lower wall of at least one of said front and rear frame portions including a relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure one of said glass piece front and rear edges in the glass piece edge-receiving channel of said at least one front and rear frame portion.

'573 patent col.8 ll.32-65 (emphasis added).

Saint-Gobain does not dispute that its accused refrigerator shelves meet all of the limitations of claim 23 except the limitation requiring that the frame have the claimed "relatively resilient end edge portion." S.J. Op. at 6. The district court construed the claim term "relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure" to mean that "the end edge portion is sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame." Id. at 2-3.

In 2005, the parties filed cross-motions for partial summary judgment concerning infringement by Saint-Gobain model SG1, SG2, and SG3 shelves—which were the only three models of accused shelves at that time. Each party submitted the affidavit of an expert. Gemtron's expert testified that, when the frames of the accused shelves were heated, it was possible to insert the glass panel of the accused shelves into the frame by snap-securing the panel into the receiving channel of the frame. Id. at 7-8. Saint-Gobain's expert testified that he had attempted to insert the glass panel into the frame at room temperature, but that the frame was not sufficiently flexible to allow insertion of the glass. The district court concluded that the conflicting test results did not create a factual dispute, because the testing was performed under different conditions. Id. at 7. Reasoning that "the relevant characteristic [`relatively resilient'] is defined by the patent in terms of the time of insertion, and not the time of actual use in a refrigerator or freezer compartment," the district court concluded that infringement was established by the undisputed evidence that the glass panel could be snap-secured into the frames of the accused shelves during manufacture, when the shelves were still warm from the molding process. Id. at 8-10. The district court therefore granted partial summary judgment of infringement of claims 23-30 of the '573 patent by the SG1, SG2, and SG3 shelves. Id. at 13.

Following the resolution of a discovery dispute, Gemtron identified additional Saint-Gobain shelves as accused infringing products. Pursuant to an amended scheduling order, the SG16 shelf was selected to be representative of all remaining accused shelves, and...