Karsten Manufacturing Corp. v. Cleveland Golf Co.

• Decision Date: 22 March 2001
• Docket Number: DEFENDANT-APPELLEE,PLAINTIFF-APPELLANT,No. 99-1234,99-1234
• Citation: 242 F.3d 1376,58 USPQ2d 1286
• Parties: (Fed. Cir. 2001) KARSTEN MANUFACTURING CORPORATION,, v. CLEVELAND GOLF COMPANY,
• Court: U.S. Court of Appeals — Federal Circuit

Page 1376

242 F.3d 1376 (Fed. Cir. 2001)

KARSTEN MANUFACTURING CORPORATION, PLAINTIFF-APPELLANT, v. CLEVELAND GOLF COMPANY, DEFENDANT-APPELLEE.

No. 99-1234

United States Court of Appeals for the Federal Circuit

March 22, 2001

Appealed from: United States District Court for the District of Arizona Judge Bruce M. Van Sickle

[Copyrighted Material Omitted] Thomas G. Watkins III, Cahill, Sutton & Thomas, Plc, of Phoenix, Arizona, argued for plaintiff-appellant.

Roger W. Parkhurst, Parkhurst & Wendel, of Alexandria, Virginia, argued for defendant-appellee. With him on the brief was Charles A. Wendel. Of counsel on the brief were Patricia A. Hubbard, Spencer & Hubbard Plc, of Phoenix, Arizona; and C. Randall Bain, Brown & Bain, of Phoenix, Arizona.

Before Newman and Michel, Circuit Judges, and Plager, Senior Circuit Judge.^*

Newman, Circuit Judge.

Karsten Manufacturing Corporation ("Karsten") appeals the grant of summary judgment by the United States District Court for the District of Arizona,¹ construing the claims and, based on the claim construction, ruling that United States Patents Nos. 4,621,813 and 5,193,805 are not infringed and Patent No. 5,297,803 is invalid as to claims 1-8. The judgments of noninfringement of the '813 and '805 patents are affirmed. For the '803 patent, the judgment of invalidity of claims 1-6 is affirmed, and the judgment of invalidity of claims 7-8 is reversed.

We give plenary review to the construction of patent claims, as a matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 38 USPQ2d 1461 (1996). The grant of a motion for summary judgment of noninfringement or invalidity is reviewed on the same standard as is applied by the district court, viz. whether upon application of the correct law a reasonable jury could find for the non-movant when all disputed material facts and factual inferences are resolved in favor of the non-movant. When no reasonable jury could find for the non-movant, the movant is entitled to judgment as a matter of law. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (the purpose of the summary judgment procedure is not to deprive a litigant of a trial, but to avoid an unnecessary trial when there is only one reasonably possible outcome). We thus determine afresh whether the criteria for grant of summary judgment were met, and whether the judgment was correct. See, e.g., EMI Group North America, Inc. v. Intel Corp., 157 F.3d 887, 891, 48 USPQ2d 1181, 1184 (Fed. Cir. 1998).

THE '813 PATENT

Karsten describes the invention of the '813 patent as relating to the distribution of mass on fairway irons in order to increase the golf club's moment of inertia. Karsten charged Cleveland Golf with infringement of claims 1-9, literally or under the doctrine of equivalents. Claim 1 is the broadest claim, with emphasis added to the terms relevant to the district court's summary disposition of the infringement issues by its construction of these terms:

1. An improved correlated set of iron-type golf-clubs, each club having a head which includes a face for impacting a golf ball, a back surface, a heel portion, a toe portion and a sole, said sole having a trailing edge extending between said heel and toe portions,

the improvement comprising at least a central portion of said trailing edge being indented toward said face at least 1/16 of an inch and having at least the lower portion of said back surface adjacent said indented trailing edge configured to conform to said indented trailing edge by sloping upwardly and inwardly from said indented trailing edge toward said face.

The Correlated Set

The district court ruled that a "correlated set" is a claim limitation, and "comprises two or more clubs which contain the same design characteristics [and] are sold together as a set." The court recognized the commercial usage "short set," and held that when two or more iron-type clubs are sold as a set, each iron must embody the claimed characteristics. Cleveland Golf sells its accused clubs in sets of 1-9 irons and P, D, S, and L wedges. The district court held that this is a "correlated set," and required that all of the clubs in the Cleveland set must embody all of the claim limitations in order to infringe the claim.

Karsten states that the district court erroneously interpreted the term "correlated set" to preclude infringement if the set of iron-type clubs is not completely correlated, that is, if any club does not have the claimed structure. Karsten argues that it suffices if at least two of the irons in a set of clubs have the claimed structure, however large the "set." Karsten states that the term "correlated set" was used in the specification and claims to distinguish fairway irons from putters and woods, and that the '813 invention does not require that every iron- type club that is included in a set must have the claimed structure. Karsten points out that the district court's construction would enable an infringer to avoid the claim simply by including one non-conforming club in the set.

Karsten also argues that this limitation appears only in the preamble and is irrelevant to the patentability of the claims. Karsten states that a preamble term that states an intended use does not limit the claimed device to that specific use, see Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997), particularly when as here the use was not argued as relevant to patentability. The district court, however, deemed the "correlated set" a limitation of claim scope, in view of Karsten's description of the invention in the specification as relating to a correlated set of irons, and Karsten's inclusion of this term in all of the claims.

We agree with the district court that this term, appearing in every claim, does not simply refer to the prior art or to a possible use, but describes and limits the invention being claimed. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1306, 51 USPQ2d 1161, 1166 (Fed. Cir. 1999). The district court correctly defined the term "correlated set" in the context of the specification and the evidence of customary usage. We confirm the court's ruling that the claims require that each iron-type club in a set of at least two clubs that are sold together must embody the claimed elements.

The Adjacent Back Surface

Karsten states that the district court erroneously identified the "back surface" as used in claim 1, and that this error led the court to misconstrue the meaning of "sloping upwardly and inwardly," resulting in an erroneous construction of these terms that excluded the Cleveland clubs. Karsten argues that "the lower portion of said back surface adjacent said indented trailing edge" is the encircled area 60, indicated by dashed line 59 in Figure 4 of the '813 patent:

The district court construed the "back surface adjacent said indented trailing edge" as excluding the surfaces of the cavity. This construction is in accordance with the description in the specification that the "back surface" that is adjacent to the indented trailing edge circumscribes but does not include the cavity surfaces. The court was correct in rejecting Karsten's proposed construction, which departs from this description.

The district court also required that "the surface adjacent said indented trailing edge [must] slope upward and inward" relative to the trailing edge and the face of the club. Karsten states that it was incorrect to interpret "sloping inwardly" as relative to the trailing edge and the club face, instead of relative to the ground when the sole of the club is placed horizontally on the ground. However, the specification describes the lower back surface area as sloping inwardly and upwardly from the trailing edge as shown in Figures 5, 7, and 9, which illustrate these parameters relative to the trailing edge and the hitting face, not the ground. The district court's claim construction correctly reflected the description in the specification, and is confirmed.

Infringement

Applying the construed claims to the accused Cleveland 792 set of iron-type clubs, the district court determined that all of the clubs in the Cleveland set do not meet the limitation whereby a back surface, adjacent to the indented trailing edge, slopes upwardly and inwardly toward the face of the clubs. In the absence of dispute as to the structure of the Cleveland clubs, summary judgment that there was not literal infringement was properly granted, for all of the claimed limitations are not embodied on the Cleveland clubs.

Karsten also asserts infringement by application of the doctrine of equivalents. During prosecution Karsten, by amendment of the claims following a rejection on prior art, narrowed the description of the back surface by adding the limitation that the lower portion adjacent the indented trailing edge slopes upwardly and inwardly. Thus Karsten is precluded from asserting that the Cleveland 792 iron-type golf clubs contain an equivalent of this limitation. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 586, 56 USPQ2d 1865, 1872 (Fed. Cir. 2000) (en banc) (a claim element that has been narrowed by amendment for reasons related to patentability is not entitled to any scope of equivalency).

The district court, deciding the question of equivalency before this Festo decision, ruled that Karsten had disclaimed, during prosecution, the scope that would be needed to reach the Cleveland clubs, citing Warner-Jenkinson, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 31, 41 USPQ2d 1869, 1871-72 (1997). We agree that the prosecution history produced an estoppel against the asserted scope of equivalency, whether applying the law of estoppel as of the time of the district court's decision, or the law as set forth in Festo.

The judgment of noninfringement of the '813 patent is affirmed.

THE '805 PATENT

The '805 patent is directed to an iron-type club head with enlarged masses at its upper corners, called...