Middleton, Inc. v. Minnesota Mining & Mfg. Co.

• Decision Date: 27 November 2002
• Docket Number: No. 02-1151.,02-1151.
• Citation: 311 F.3d 1384
• Parties: MIDDLETON, INC., Plaintiff-Appellant, v. MINNESOTA MINING AND MANUFACTURING COMPANY (now known as 3M Company), Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

311 F.3d 1384

MIDDLETON, INC., Plaintiff-Appellant, v.MINNESOTA MINING AND MANUFACTURING COMPANY (now known as 3M Company), Defendant-Appellee.

No. 02-1151.

United States Court of Appeals, Federal Circuit.

Decided November 27, 2002.

Rehearing and Rehearing En Banc Denied January 9, 2003.^*

George C. Summerfield, Jr., Stadheim & Grear, of Chicago, IL, for plaintiff-appellant.Of counsel was Gregory M. Jordan.

William A. Streff, Jr., Kirkland & Ellis, of Chicago, IL, for defendant-appellee.Of counsel were David K. Callahan, Mary E. Zaug, and Christopher R. Liro.

Before CLEVENGER, RADER, and LINN, Circuit Judges.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the Northern District of Illinois ruled that Minnesota Mining and Manufacturing Co.(3M) did not infringe Middleton, Inc.'s U.S. PatentNo. 4,944,514('514 patent), either literally or under the doctrine of equivalents.Because the district court failed to correctly construe the claims and determine whether prosecution history barred Middleton from relying on the doctrine of equivalents, this court reverses and remands.

I.

Middleton owns the '514 patent entitled "Floor Finishing Material and Method."The patent claims an improved material for finishing the top surface of a floor.The improved floor finishing material, according to the patent, provides quick and easy application of "a replaceable finish of uniform thickness" to athletic, commercial, and residential floor surfaces. '514 patent, abstract and col. 1, ll.67-68.Claim 4 recites:

4.On a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising:

at least one elongated sheet including a uniform flexible film of clear plastic material having a thickness between about one mil and about twenty-five mils and a continuous layer of adhesive material disposed between the top surface of the floor and the flexible film, the adhesive layer releasably adhering the flexible film onto the top surface of the floor.

Id., col. 6, l. 66 to col. 7, l. 11(emphases added).

The '514 patent is a continuation-in-part of two parent applications, U.S. PatentNo. 4,795,152('152 patent) and U.S. PatentNo. 4,867,816, that both derive from a common abandoned parent, ApplicationNo. 06/871,318.During prosecution of the application that led to the '152 patent, the examiner finally rejected the claims in light of U.S. PatentNo. 4,221,620 to Milne.To avoid this prior art, the applicant amended claim 1 from "a dry flexible film" to "a uniform flexible film."With that amendment, the examiner allowed the claims.

3M makes and sells a floor graphics product called Floorminders.Floorminders applies images, such as advertising or decoration, to a smooth floor.It consists of a graphic image embedded between a base layer of film and an "overlaminate" layer of film.The base and overlaminate layers are flexible plastic materials backed with an adhesive layer.3M buys the over-laminate film from two suppliers, Bando Chemical Industries, Ltd. and Achilles USA.Both the Bando and Achilles overlaminate films have textured surfaces produced during manufacturing by a textured embossing roll.

In 1996, Middleton sued 3M alleging infringement of the '514 patent.Middleton alleged that the Floorminders product infringed claim 4, among others, of the '514 patent.On February 9, 1998, the district court construed the "material for finishing,""elongated sheet," and "uniform flexible film" limitations of claim 4.The district court limited uniform flexible film to a flexible film having "a uniform thickness, and exclud[ing] material in which there are any variations in thickness."Because the district court found that 3M's Floorminders product did not satisfy the "material for finishing" limitation, it granted 3M's motion for summary judgment of non-infringement without reaching the "uniform" limitation.Middleton, Inc. v. Minnesota Mining & Mfg. Co.,1998 WL 852841, at *4, 1998 U.S. Dist. LEXIS 19428, No. 96-C6781, at 13(N.D.Ill.Nov. 24, 1998).Middleton appealed.

On appeal, this court determined that the district court erred in its claim construction of the phrase "material for finishing" and reversed the summary judgment of non-infringement.Noting that the trial court's infringement analysis did not turn on the "uniform flexible film" limitation, this court stated:

We understand the district court's interpretation[of the term "uniform flexible film"] to mean that the film must have the same thickness throughout, except that normal manufacturing tolerances are allowed.Thus, while the film cannot have a thickness of 1 mil at one location and 25 mils at another, it may have variations in thickness due solely to the practical realities of the film manufacturing process.We note that at oral argument, the parties did not appear to dispute this reading of the district court's claim construction.

Middleton, Inc. v. Minnesota Mining & Mfg. Co.,No. 99-1202, at 11-12, 1999 WL 1072246(Fed.Cir.Nov. 16, 1999).

On remand, the district court recognized that this court"did not adjudicate the meaning of `uniform flexible film'" during the prior appeal.Nevertheless the trial court adopted as its claim constructionthis court's statements regarding the "uniform" limitation.The district court then granted summary judgment in 3M's favor, because the textured overlaminate film of 3M's Floorminders product did not meet the "uniform" limitation.Specifically, the district court found that the textured Bando and Achilles films did not have the same thickness throughout because the films were "intentionally manufactured in a manner that results in an uneven thickness throughout the film."The district court, relying on this court's decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,234 F.3d 558(Fed.Cir.2000), further barred Middleton from relying on the doctrine of equivalents to show infringement.Middleton appeals.

II.

This court reviews without deference a district court's grant of summary judgment.Cortland Line Co. v. Orvis Co.,203 F.3d 1351, 1355(Fed.Cir.2000).Whether the accused device contains each claim limitation, as properly construed, or its equivalent, is a question of fact.Southwall Techs., Inc. v. Cardinal IG Co.,54 F.3d 1570, 1575, 34 USPQ2d 1673, 1676(Fed.Cir.1995).In reviewing the district court's summary judgment in favor of 3M, this court draws all reasonable inferences from the evidence in favor of the non-movant, Middleton.SeeAnderson v. Liberty Lobby, Inc.,477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202(1986).

A patent infringement analysis involves two steps: claim construction and application of the construed claim to the accused process or product.SeeMarkman v. Westview Instruments, Inc.,52 F.3d 967, 976, 34 USPQ2d 1321, 1326(Fed. Cir.1995)(en banc), aff'd,517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577(1996).This court reviews the first step, claim construction, without deference.SeeCybor Corp. v. FAS Techs., Inc.,138 F.3d 1448, 1454, 46 USPQ2d 1169, 1172(Fed.Cir.1998)(en banc).The second step, application of the claim to the accused product to determine infringement, is a question of fact.SeeMannesmann Demag Corp. v. Engineered Metal Prods. Co.,793 F.2d 1279, 1282, 230 USPQ 45, 46(Fed.Cir.1986).When a district court grants summary judgment of non-infringement, this court reviews the district court's determination without deference.SeePitney Bowes, Inc. v. Hewlett-Packard Co.,182 F.3d 1298, 1309, 51 USPQ2d 1161, 1169(Fed.Cir.1999);Vitronics Corp. v. Conceptronic, Inc.,90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576-77(Fed.Cir.1996).

A.

This appeal presents the question of the proper meaning of "uniform flexible film."As the district court correctly determined, this court did not need to and did not actually construe that limitation when reversing the grant of summary judgment in the previous appeal.Rather, this court stated its understanding of the district court's own prior construction.On remand, the district court erred by treating this court's statement as a definitive claim construction.The trial court thus construed "uniform" to mean the "same thickness throughout, except that normal manufacturing tolerances are allowed."

The term "uniform flexible film" does not appear to convey any special technical meanings.Texas Digital Sys., Inc. v. Telegenix Inc.,308 F.3d 1193, 1202(Fed.Cir.2002)(stating that there is a "heavy presumption" that claim terms mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art (internal citations omitted)).The accustomed meaning of "uniform" is having always the same form.Webster's Ninth New Collegiate Dictionary 1290 (1985).The specification defines "flexible" as "bendability of the sheet but [ ] not ... stretchability." '514 patent, col. 2, l. 67 to col. 3, l. 1.Furthermore, "film" clearly refers to the clear plastic material referenced often in the patent disclosure.

As usual, the most important indicator of the meaning of "uniform" is its usage and context within the claim itself.Thermalloy, Inc. v. Aavid Eng'g, Inc.,121 F.3d 691, 693(Fed.Cir.1997)(stating that "throughout the interpretation process, the focus remains on the meaning of the claim language.").The claim recites a "uniform flexible film."This term, in context, describes floor coverings.Specifically, the preamble of claim 4 recites "an improved material for finishing the top surface of the floor". '514 patent, col. 6, ll.66-68.As noted, uniformity means that a floor covering has always the same form.Floor coverings may have the same smooth form, as in a bowling or basketball surface.Floor coverings may also have the same woven form, as in a carpeted surface.Floor coverings may also have the same textured form to prevent slippage in a setting like Grand Central...