Giese v. Pierce Chemical Co.

Decision Date05 March 1999
Docket NumberNo. Civ.A. 97-12562-WGY.,No. Civ.A. 97-12561-WGY.,Civ.A. 97-12561-WGY.,Civ.A. 97-12562-WGY.
PartiesRoger W. GIESE, Plaintiff, v. PIERCE CHEMICAL COMPANY and Vector Laboratories, Inc., Defendants.
CourtU.S. District Court — District of Massachusetts

Ian Crawford, J. Owen Todd, Todd & Weld, Boston, MA, for Roger W. Giese, plaintiff.

Peter G. Carroll, Medlen & Carroll, LLP, Cambridge, MA, Duane C. Blake, Medlen & Carroll, LLP, Cambridge, MA, for Vector Laboratories, Inc., defendant.

Peter G. Carroll, Medlen & Carroll, LLP, Cambridge, MA, Thomas Currier, Rockford, IL, for Pierce Chemical Company, defendant.

MEMORANDUM AND ORDER

YOUNG, Chief Judge.

I. Introduction

The plaintiff in this action, Roger W. Giese ("Giese"), commenced suit against the defendants, Vector Laboratories, Inc. and Pierce Chemical Co. (collectively, "Vector"), alleging contributory infringement and inducement of infringement of Giese's patents, United States Letters Patent Nos. Re. 31,712 ("the '712 Patent") and B1, 4,478,914 ("the '914 Patent").

The patents cover a method by which multiple layers of chemicals are attached to one another to form a stable system. The resulting system typically is used to improve detection of certain types of cells, such as cancer cells. Under an assignment of rights to United States Letters Patent No. 4,684,609 ("the '609 Patent"), Vector manufactures a kit of chemical reagents marketed under the trade name "Vectastain ABC Kit" ("Vectastain Kit"), a product designed to assist in the marking and detection of various types of cells. Pierce Chemical Company purchases the Vectastain Kits for subsequent resale. Giese maintains in his Amended Complaint that the Vectastain Kits "incorporate the technology discovered by Plaintiff." Amend. Compl. ¶ 9. Giese further alleges that the defendants use "a component of Dr. Giese's patented technology in its ABC Staining Kits which component constitutes a material part of Dr. Giese's invention." Id. at ¶ 15. On the strength of these allegations, Giese contends that Vector has contributed to or has actively induced the direct infringement of the patents. Giese includes no count for direct infringement.

Vector comes now before this Court with six separate motions for partial summary judgment. The first seeks summary judgment that independent and dependent claims within the '914 Patent are invalid because such claims were impermissibly broadened during reexamination. The second seeks summary judgment that Vector's "preformed complex" is not a "layered structure" or "monomolecular" as those terms are set forth in Giese's patent claims. The third seeks summary judgment to eliminate lost profits and future royalties as bases for determining damages. The fourth seeks summary judgment denying recovery for infringement of the '914 Patent claims under the doctrine of intervening rights. The fifth seeks summary judgment on the ground that Giese made material omissions of prior art during the prosecution of the '914 and '712 Patents. Finally, the sixth motion seeks summary judgment as to the validity of '609 Patent.

II. Summary Judgment Standard

Summary judgment is appropriate when no genuine issue of material fact exists and the moving party is entitled to judgment as matter of law. See London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1537-38 (Fed.Cir.1991). A "genuine" issue of fact is one that a reasonable jury, on the record before the court, could resolve in favor of the non-moving party. See Anderson v Liberty Lobby, Inc., 477 U.S. 242, 248-49, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). When deciding a summary judgment motion, a court must view the evidence presented in the light most favorable to the non-moving party and resolve all doubts in its favor. See Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir.1998).

III. Motion for Partial Summary Judgment Based on Purported Enlargement During Reexamination

In its first motion for partial summary judgment, Vector argues that Claims 25-27 and 43-73 of Giese's '914 Patent are invalid because they are the result of impermissible "enlargement" during reexamination by the Patent and Trademark Office (the "Patent Office"). The gravamen of Vector's argument is that, as reexamined, Claim 25 of the '914 Patent omits a "washing" step that was featured in Claim 25 of the original '914 Patent. Since Claims 26-27 and 43-73 are dependent upon Claim 25, Vector seeks simultaneously to invalidate these thirty-three claims. Giese, on the other hand, argues that the "washing" step actually was optional in the original '914 Patent. Furthermore, Giese asserts that, while omitted from Claim 25, the "washing" step was actually maintained during reexamination and now appears in Claim 54 of the Reexamination Certificate.

A. Relevant Facts

On October 23, 1984 the Patent Office issued the '914 Patent (the "Original '914 Patent") to Giese. See Giese Dec., Ex. 3. In the Original '914 Patent, Claim 25 provides:

A process of modifying the surface properties of a material, which process comprises: (a) applying alternate successive layers of a first or second material to the surface to be modified ... (b) washing the surface between each applying step to remove unreacted first or second material; and (c) recovering a multiple layer material whose surface is modified.

Id. (emphasis added). In the "Summary of the Invention," however, the Original '914 Patent states:

[L]ayers ... are built up on a surface, but the process may be relaxed by omitting washing steps, thereby possibly mixing in coverage with multimolecular or multiparticulate species.

Id. (emphasis added).

On May 11, 1995, Giese submitted the Original '914 Patent to the Patent Office for reexamination in light of additional "prior art" that had recently been brought to his attention. See id. at ¶ 8. On June 17, 1997, after several rejections by the Examiner, the Patent Office issued Reexamination Certificate B1, 4,478,914 (the "Reexamined '914 Patent"). See id. at Ex. 4. Claim 25 of the Reexamined '914 Patent omits the phrase "washing the surface between each applying step to remove unreacted first or second material." See id. Claim 54, an "addition" made to the patent, provides:

The process of claim 25 which includes washing the surface between applying successive layers of the first and second materials.

Id. (emphasis added). Claims 26-27 are dependent upon Claim 25 and were included in the Original '914 Patent. See id. at Ex. Claims 43-73 are also dependent upon Claim 25 but were included as "additions" during the Reexamination. See id. at Ex. 4.

B. Doctrine of Impermissible Enlargement

Under 35 U.S.C. § 305, "[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter." A claim is impermissibly enlarged during reexamination "if it includes within its scope any subject matter that would not have infringed the original patent." Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1580 (Fed.Cir.1995). A finding of impermissible enlargement renders the claim entirely invalid — the original scope of the claims does not remain available to the patentee. See id. at 1584.

The determination whether claims have been impermissibly enlarged is a matter of claim construction and is treated as a question of law. See In re Freeman, 30 F.3d 1459, 1464 (Fed.Cir. 1994). When construing the meaning of disputed terms in a claim, courts should look first to the intrinsic evidence of the record. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996). Words in a claim generally are given their ordinary and customary meaning, unless the patentee has specified otherwise in the patent specification or prosecution history. See id. If in evidence, courts may consider the prosecution history of the patent. See id. Courts should only consider extrinsic evidence, such as dictionaries, scientific publications, and expert testimony, when the intrinsic evidence is ambiguous. See id. at 1583.

C. Construing Claim 25

Claim 25 of Giese's Original '914 patent could not be more straightforward —"washing the surface between each applying step to remove unreacted first or second material" is unquestionably an element of the claim. Giese Dec., Ex. 3. Furthermore, Giese cannot transform this required "washing" step into an "optional" one by relying on language in the "Summary of the Invention." As an initial matter, the "Summary of the Invention" is often considered part of the specification. See, e.g., Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 617 (Fed.Cir.1995). Limitations that appear only in the specification may not be read into patent claims. See Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994).

Even if this Court were to consider the "Summary of the Invention" separate from the patent "specification," Giese's argument is nonetheless unpersuasive in light of a recent Federal Circuit opinion that rejected a strikingly similar attempt to use words in the "Summary of the Invention" to contradict the unambiguous language of a disputed claim. In Armament Systems and Procedures, Inc. v. Monadnock Lifetime Products, Inc., 1998 WL 537746 (Fed.Cir. Aug. 7, 1998) (unpublished),1 the defendant argued that a claim should be construed to include a four-step process described in the Summary of the Invention even though the claim itself described only two steps. See id. at *2. Holding that "the language of the claim frames and ultimately resolves all issues of claim interpretation," the Federal Circuit refused to "`interpret' the claim in the manner suggested...." Id. In the present case, the inclusive three-step process described in Claim 25 of the Original '914 Patent, rather than Giese's "optional" interpretation derived from the Summary of the Invention, "frames and...

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