Kumar v. Ovonic Battery Co., Inc., 02-1551.

• Decision Date: 11 December 2003
• Docket Number: No. 02-1551.,No. 03-1091.,No. 02-1574.,02-1551.,02-1574.,03-1091.
• Citation: 351 F.3d 1364
• Parties: Kaplesh KUMAR, Plaintiff-Appellant, v. OVONIC BATTERY CO., INC. and Energy Conversion Devices, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

351 F.3d 1364

Kaplesh KUMAR, Plaintiff-Appellant, v. OVONIC BATTERY CO., INC. and Energy Conversion Devices, Inc., Defendants-Appellees.

No. 02-1551.

No. 02-1574.

No. 03-1091.

United States Court of Appeals, Federal Circuit.

Decided December 11, 2003.

Kaplesh Kumar, of Wellesley, Massachusetts, argued pro se.

Patrick J. Coyne, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for defendants-appellees. With him on the brief was Troy E. Grabow.

Before BRYSON, DYK, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge DYK. Opinion concurring in result filed by Circuit Judge BRYSON.

DYK, Circuit Judge.

Kaplesh Kumar, owner of U.S. Patent No. 4,565,686 (the "'686 patent"), appeals the decision of the United States District Court for the District of Massachusetts, granting summary judgment of non-infringement to Ovonic Battery Company, Inc. and Energy Conversion Devices, Inc. (collectively "Ovonic"). We vacate the district court's grant of summary judgment and remand the case for further proceedings.

BACKGROUND

In the early 1980s, Kumar discovered that the use of certain rare earth-transition metal alloys to store hydrogen in rechargeable nickel metal hydride batteries would overcome the inevitable fracturing associated with repeated recharging. Prior art alloys had a crystalline molecular structure, meaning that their molecules were arranged in a regular repeating pattern. These prior art crystalline alloys degraded severely with the repeated cycles of hydrogen storage and release that accompanied recharging. Kumar found that certain alloys with a less ordered molecular structure were immune to material fracture and had improved hydrogen storage capacity. Kumar applied for a patent on this invention in 1981, and the '686 patent issued on January 21, 1986. In the patent that finally issued, he chose to describe these alloys as "amorphous." Independent claims 1 and 6 of the '686 patent read as follows:

1. A system for retrievably storing hydrogen comprising:

an amorphous rare earth-transition metal alloy material;

a container for said material, and

means for supplying hydrogen to said material and exhausting hydrogen from said material for respective absorption and desorption thereby.

'686 patent, col. 5, ll. 17-24 (emphasis added).

6. A process for reversibly storing hydrogen in an amorphous rare earth-transition metal alloy material comprising the steps of:

supplying hydrogen to amorphous rare earth-transition metal alloy material in a closed system, cycling said hydrogen over said alloy material to cause hydrogen to be stored in said alloy material; and withdrawing hydrogen from said system to retrieve the stored hydrogen.

Id., col. 6, ll. 12-20 (emphasis added).

Ovonic, the alleged infringer here, sought patents in the same field. Ovonic is the owner of U.S. Patent No. 4,623,597 (the "'597 patent"), issued on November 18, 1986, on a rechargeable hydrogen battery comprising:

at least one anode for reversibly electrochemically charging and discharging hydrogen, said anode comprising a disordered multicomponent material, said disordered multicomponent material having at least one structure from the group consisting of: amorphous, microcrystalline, polycrystalline lacking long-range order compositional order with three or more phases of said polycrystalline structure and any combination of said amorphous, microcrystalline and polycrystalline structures ....

'597 patent, col. 13, l. 60 — col. 14, l. 2 (emphasis added). In 1994, Ovonic filed another rechargeable battery application that matured into U.S. Patent No. 5,840,440 (the "'440 patent") in 1998. This patent claimed, in relevant part, "[a]n improved high capacity hydrogen storage material" consisting of alloys with a "crystallite size ... less than 200 Angstroms [20nm]." '440 patent, col. 13, l. 56 — col. 14, l. 29. Kumar sued Ovonic in the District Court of Massachusetts for direct, contributory and induced infringement of the '686 patent, asserting in part that Ovonic's grants of licenses under the '597 and '440 patents constituted infringement of the '686 patent.

Ovonic filed a motion for summary judgment of non-infringement. Ovonic urged that the term "amorphous" alloys in the '686 patent should be construed to mean "completely" amorphous (i.e., where there is no ordering of molecules) and that Ovonic did not infringe the '686 patent because the batteries produced under its licenses did not use completely amorphous alloys. Kumar v. Ovonic Battery Co., Inc., No. 01-CV-11247-MEL, slip op. at 4 (D.Mass. July 8, 2002). Kumar urged that the term "amorphous" was not limited to completely amorphous alloys, but instead should be construed to cover all partially crystalline alloys with long range order less than 100 nm, which would have included alloys described in the '597 and '440 patents and used in Ovonic's batteries. Id. at 6. Ovonic also argued that it was not liable for infringement because it had merely patented and licensed the batteries that were accused of infringement. Id. at 4 n. 2 (citing 35 U.S.C. § 271(a), which defines infringement as "mak[ing], us[ing], offer[ing] to sell, or sell[ing] any patented invention"). The district court construed the '686 patent claims as urged by Ovonic. The court found that the '686 patent's specification and prosecution history supported Ovonic's definition of amorphous, whereas Kumar's definition had been "developed after his patent was filed, and therefore [could not] be taken to describe accurately what he sought to patent." Id. at 7 (emphasis in original). The court granted summary judgment of non-infringement based on its claim construction and did not decide whether Ovonic's licensing actions would have made it liable for infringement under Kumar's proposed claim construction, explaining that the latter question raised "disputes of material fact." Id. at 4 n. 2.

DISCUSSION

I.

We review the district court's grant of summary judgment without deference. Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1377 (Fed.Cir. 2002) ("Inverness II").

The central question here is one of claim construction, specifically the meaning of the term "amorphous" in claims 1 and 6 of the '686 patent. Claim construction is a question of law that this court reviews without deference. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Under our precedent in Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1201-02 (Fed.Cir. 2002), and Inverness II, 309 F.3d at 1378, we look first to the dictionary definition of a contested term. Ovonic urges that the correct definition appears in Webster's Third New International Dictionary, defining amorphous as "without real or apparent crystalline form: uncrystallized." Webster's Third New International Dictionary 72 (1981). Ovonic argues that this definition means that amorphous alloys must be completely lacking in crystalline structure. Kumar, on the other hand, points out that the '686 patent referenced the Polk patent, U.S. Patent No. 4,116,682 (issued Sept. 26, 1978) (the "Polk patent"), as prior art; that the Polk patent was extensively discussed and distinguished during prosecution; and that the Polk patent specifically defined a "solid amorphous metal" as one "in which the constituent atoms are arranged in a spatial pattern that exhibits no long range order, that is, it is non-crystalline.... In distinguishing an amorphous substance from a crystalline substance, X-ray diffraction measurements are generally employed." Polk patent, col. 1, ll. 13-27 (emphasis added).

Our cases have recognized that although the dictionary can be an important tool in claim construction by providing a starting point for determining the ordinary meaning of a term to a person of skill in the art, "the intrinsic record" can resolve ambiguity in claim language or, where clear, trump an inconsistent dictionary definition. Tex. Digital, 308 F.3d at 1204; see Inverness Med. Switz. GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1371-72 (Fed.Cir.2002) ("Inverness I").

Our cases also establish that prior art cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence. Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1371-72 n. 4 (Fed.Cir.2002); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996); Markman, 52 F.3d at 979-80. For example, in Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d 1042 (Fed.Cir.2000), we rejected the district court's claim construction, which "declined to consider the teachings of [prior art referenced in the patent] to ascertain the meaning" of the claim term "time-space-time (TST) switch." Id. at 1044. Instead, we interpreted the term based on its usage in the prior art that was cited in the patent, explaining that "[w]hen prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning." Id. at 1045.

In the present case, the Polk patent is not simply cited in the '686 patent as pertinent prior art; nor is there any showing that the Polk patent adopted a special definition at variance with that prevailing in the art. Rather the Polk patent was considered by both the applicant and the examiner to be highly pertinent prior art, and there is no indication that the Polk patent's express definition (even if inconsistent with the general dictionary definition) was in any way at variance with the definition that would have been used by those skilled in the art at the time. Indeed, as noted below, Ovonic's own '440 patent, though issued some few years after the issuance of...