Gentile v. Franklin Sports, Inc.
| Citation | 211 F.Supp.2d 334 |
| Decision Date | 01 July 2002 |
| Docket Number | No. CIV. 01-10332-NG.,CIV. 01-10332-NG. |
| Parties | Robert GENTILE, Plaintiff, v. FRANKLIN SPORTS, INC., Defendant. |
| Court | United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts |
Donald T. MacPhail, III, Law Office of Donald T. MacPhail, Berkley, MA, Thomas P. O'Connell, O'Connell law Office, Burlington, MA, for Robert Gentile.
Michael R. Coppock, Rubin and Rudman, Boston, MA, Joseph B. Bowman, Shook, Hardy & Bacon, LLP, Kansas City, MO, for Franklin Sports, Inc.
MEMORANDUM AND ORDER RE: CROSS-MOTIONS FOR SUMMARY JUDGMENT
Before me is Magistrate Judge Dein's Report and Recommendation on Cross-Motions For Summary Judgment, dated February 15, 2002 ("Report"). I hereby adopt the findings and conclusions of Judge Dein detailed in her Report. Defendant Franklin Sports, Inc.'s ("Franklin") motion for summary judgment [docket entry # 30] is DENIED in its entirety. Plaintiff Robert Gentile's ("Gentile") cross-motion for summary judgment [docket entry # 33] is GRANTED with regard to Count I, patent infringement, and DENIED with regard to Count V, false marking. I write further simply to address an argument advanced by Franklin based on the Supreme Court's recent decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., ___ U.S. ___, 122 S.Ct. 1831, 152 L.Ed.2d 944 (May 28, 2002), which was handed down after Judge Dein issued her Report. The issue raised by the parties is—which party bears the burden of proving that a patent claim has been narrowed by representations made in the prosecution history?
In her Report, Judge Dein correctly noted that when faced with a patent infringement claim, a court must first construe the meaning of the claim as a matter of law, in order to "define the scope of the patentee's rights under the patent." Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). As a part of this claim construction analysis, Franklin argued, based on Festo, that the burden is on the patentee to show that statements made by him during the prosecution of his patent do not limit a more expansive construction of his claim that would otherwise spring from the plain, ordinary meaning of the language of the claim.
In Festo, the Supreme Court addressed the relation between two patent law concepts—the doctrine of equivalents and the rule of prosecution history estoppel. It held that where the patentee is seeking to broaden the scope of the literal terms of his patent through the doctrine of equivalents, he bears the burden of showing that amendments made to his claim during the prosecution history did not relinquish the particular equivalent he argues has been infringed, at least where he made the amendment for a substantial reason relating to patentability. Festo, 122 S.Ct. at 1841-42.
While it is true that under the doctrine of prosecution history estoppel, the burden is on the patentee to prove that he did not surrender the particular equivalent in question with an amendment to his claim, the analysis is different when a court is construing the language of a claim in the first instance. The Federal Circuit has made "a clear distinction between following the statements in the prosecution history in defining a claim term, and the doctrine of prosecution history estoppel." Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed.Cir.1995). It has defined the relevant difference as follows:
Claim interpretation in view of the prosecution is a preliminary step in determining literal infringement, while prosecution history estoppel applies as a limitation on the range of equivalents if, after the claims have been properly interpreted, no literal infringement has been found. The limit on the range of equivalents that may be accorded a claim due to prosecution history estoppel is simply irrelevant to the interpretation of those claims.
Id. (emphasis added) (internal citation omitted).
In her Report, Judge Dein correctly noted that when a court construes claim language, there is a "`heavy presumption' in favor of the ordinary meaning of the claim language as understood by one of ordinary skill in the art." Bell Atlantic Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001). However, this presumption may be overcome if the intrinsic evidence, including the prosecution history, "clearly redefine[s] a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term." Id. In other words, when engaging in claim construction, a court begins with the ordinary meaning of the claim language as understood by one of ordinary skill in the art. If there is then clear evidence in the prosecution history that the patentee redefined the claim term to a narrower construction in order to overcome an objection by the examiner, a court construing the claim must accept this narrower construction. Thus, in claim construction, there is a presumption that favors an interpretation adopting the ordinary meaning of the claim language, which may be overcome by evidence that the patentee effectively narrowed his claim during the patent application process.
The different settings—claim construction, on the one hand, and the doctrine of equivalents, on the other—determine the nature of the burdens. Under Festo, the patentee seeking to expand the scope of his claim beyond literal infringement through the doctrine of equivalents bears the burden of demonstrating that an amendment to his claim during the prosecution history should not estop him from claiming a particular equivalent. However, a defendant seeking to narrow the claim by arguing that the patentee has relinquished a potential claim construction based on the plain, ordinary meaning of the language of the claim bears the burden of overcoming a heavy presumption in the patentee's favor. He must prove that the patentee made clear representations during the prosecution history which limit the scope of his claim.
This allocation of the burden of proof makes sense because it places the burden on the party seeking to change the scope of patent protection from what the ordinary, plain meaning of the claim language would otherwise grant. In the claim construction context, where a party seeks to limit the reach of the otherwise plain meaning of the claim language, the burden is on him to prove that the prosecution history limits the claim language. Similarly, in the doctrine of equivalents context, where a patentee seeks to broaden the scope of the patent's protection beyond that which would be otherwise granted by the plain meaning of the claim language, the burden is on him to prove that an amendment made during the patent's prosecution should not limit the scope of the patent's protection.
In the case at bar, Franklin has failed to demonstrate that during the prosecution of the patent, Gentile limited the plain, ordinary meaning of the phrase "non-toxic liquid antifreeze" by excluding any solution of salt dissolved in water or by confining this phrase to propylene-based antifreeze used in recreational vehicles. As detailed by Judge Dein in her Report, the statements and amendments made by the patentee in his patent prosecution do not show that he relinquished an interpretation of his claim that included non-toxic saltwater solutions or antifreeze solutions beyond those used in recreational vehicles.
For the foregoing reasons, I adopt the findings and conclusions contained in Judge Dein's Report. Franklin's motion for summary judgment [docket entry # 30] is DENIED in its entirety. Gentile's cross-motion for summary judgment [docket entry # 33] is GRANTED with regard to Count I, patent infringement, and DENIED with regard to Count V, false marking.
SO ORDERED.
REPORT AND RECOMMENDATION ON CROSS-MOTIONS FOR SUMMARY JUDGMENT
Plaintiff Robert Gentile ("Gentile"), owner of U.S. Patent No. 5,722,906 ("the '906 Patent") has brought suit against Franklin Sports, Inc. ("Franklin Sports" or "Franklin") alleging that the defendant is manufacturing and selling an all-weather street hockey ball based on an idea developed and eventually patented by the plaintiff. The complaint sounds in six counts: patent infringement (Count I), misappropriation and conversion of proprietary information (Count II), tortious interference with business relations (Count III), violation of Mass. Gen. Laws ch. 93A (Count IV), false marking in violation of 35 U.S.C. § 292(a) (Count V), and conversion (Count VI). Franklin Sports has denied liability and has counterclaimed challenging the validity of the '906 Patent.
Presently before the court are the parties' cross-motions for summary judgment on the claims of patent infringement and false marking. For the reasons detailed herein, this court recommends that Gentile's motion for summary judgment on the claim of patent infringement (Docket # 33) be ALLOWED and that Franklin's motion for summary judgment on the patent infringement claim (Docket # 30) be DENIED. This court further recommends that both motions for summary judgment on the false marking claim be DENIED, as material facts are in dispute. Since the two claims are based on different facts and raise different issues of law, they will be addressed separately herein.
The approval of a U.S. Patent results in one or more claims which contain the essential description of the method or device to which the inventor has exclusive rights. See 35 U.S.C. § 112 (). There are two steps in a patent infringement analysis. First, the court must construe the meaning of the claim as a matter of law, to "define the scope of the patentee's rights under the...
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