Miles Laboratories, Inc. v. Shandon Inc.

• Decision Date: 14 June 1993
• Docket Number: 92-1387,Nos. 92-1358,s. 92-1358
• Citation: 997 F.2d 870,27 USPQ2d 1123
• Parties: MILES LABORATORIES, INC. and Triangle Biomedical Equipment, Inc., Plaintiffs/Cross-Appellants, v. SHANDON INC. and Shandon Southern Products Limited, Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 870

997 F.2d 870

27 U.S.P.Q.2d 1123

MILES LABORATORIES, INC. and Triangle Biomedical Equipment Inc., Plaintiffs/Cross-Appellants, v. SHANDON INC. and Shandon Southern Products Limited Defendants-Appellants.

Nos. 92-1358, 92-1387.

United States Court of Appeals Federal Circuit.

June 14, 1993.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Sept. 1, 1993.

Arnold Sprung, Sprung Horm Kramer & Woods, Tarrytown, NY, argued for plaintiffs/cross-appellants. With him on the brief was Nathaniel D. Kramer.

Robert D. Yeager, Kirkpatrick & Lockhart, Pittsburgh, PA, argued for defendants-appellants. With him on the brief were Christine R. Ethridge and Melvin C. Snyder, III.

Before PLAGER, Circuit Judge, SMITH, Senior Circuit Judge, and RADER, Circuit Judge.

RADER, Circuit Judge.

Miles Laboratories, Inc. and Triangle Biomedical Equipment, Inc., sued Shandon Inc. and Shandon Southern Products Limited, for infringement of U.S. Patent Reissue No. 29,073, entitled "Light Microscopy Processing Apparatus" ('073), ^* and U.S. Patent No. 4,001,460, entitled "Light Microscopy Processing Method" ('460). The United States District Court for the Western District of Pennsylvania held claims 1, 2, and 4-7 of the '460 patent invalid for obviousness, sustained the validity of the '073 patent, and found infringement of both patents. Miles Lab., Inc. v. Shandon, Inc., No. 86-2404, 1992 WL 503432 (W.D.Pa. Mar. 11, 1992) (Miles I ); Miles Lab., Inc. v. Shandon, Inc., No. 86-2404 (W.D.Pa. Apr. 14, 1992) (Miles II ). Because the record adequately supports the district court's decision, this court affirms.

BACKGROUND

Tissue processing is the treatment of tissue specimens to facilitate viewing them under a microscope. The process exposes the tissue specimens to a series of chemical solutions (reagents) in sequence. The '460 patent claims a method and the '073 patent an apparatus for tissue processing. Except for the claims, the two patents have identical specifications.

Under the method accomplished by the apparatus, a central processing chamber confines the tissue specimens under a sealed cover where they remain fixed during treatment with various fluids and paraffin. Once embedded in paraffin, the specimens can be sliced into very thin sections for microscopic viewing. The treatment takes place when a vacuum draws the fluids and paraffin into the central chamber. After proper exposure, pressure in the central chamber expels the fluids back to their storage containers. Thus, the entire processing occurs without tampering with the tissue specimens.

In 1986, Miles sued Shandon for infringement of both patents. The district court held a bench trial in 1988. The district court determined that the doctrine of laches did not bar this action and that claim 1 of the '460 patent was invalid under 35 U.S.C. § 103. Miles I, slip. op. at 30. The district court also upheld the validity of the '073 patent and found infringement of both patents. Id.

Later, the district court clarified its earlier decision and added the '460 patent's dependent claims 2 and 4-7 to its obviousness ruling. Miles II, slip op. at 1. In addition, the district court enjoined Shandon from further infringement of the '073 patent. Id. Shandon appeals the validity determination on the '073 patent and the infringement rulings. Miles cross-appeals the invalidity determination on the '460 patent.

DISCUSSION

Standard of Review

This court reviews the district court's fact finding under the "clearly erroneous" standard of Rule 52(a):

Findings of fact, whether based on oral or documentary evidence, shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses.

Fed.R.Civ.P. 52(a) (1988); see Heisig v. United States, 719 F.2d 1153, 1158 (Fed.Cir.1983). This court accepts the legal conclusions of the district court unless incorrect as a matter of law. Id.

This court does not review de novo proceedings of the district court. Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 904, 229 USPQ 664, 666 (Fed.Cir.), cert. denied, 479 U.S. 931, 107 S.Ct. 402, 93 L.Ed.2d 355 (1986). To win reversal, a party must show that the district court committed reversible legal error or relied upon factual findings which were clearly erroneous in light of the trial record. Id. 789 F.2d at 904-05. In addition, the "clearly erroneous" standard does not entitle this court to reverse the district court's finding simply because it would have decided the case differently. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375, 231 USPQ 81, 87 (Fed.Cir.1986), cert. denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987). Where the factfinder's account of the evidence is plausible in light of the entire record or where it chooses one of two permissible views of the evidence, it has committed no clear error. Id.

The '073 Patent

On the last day of trial, Shandon moved to introduce an infringement defense that the '073 patent was invalid for indefiniteness under 35 U.S.C. § 112, p 2 (1988). The district court, however, upheld the validity of the '073 patent. On appeal, Shandon alleges the claims of the '073 patent omit the requirement for "vented" solution containers and therefore do not distinctly claim the disclosed invention.

Validity

Shandon challenged the claims of the '073 patent as indefinite under § 112, p 2. Compliance with § 112, p 2 is a question of law. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed.Cir.1986). Section 112, paragraph 2, states:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

35 U.S.C. § 112, p 2. The "distinctly claiming" requirement means that the claims must have a clear and definite meaning when construed The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. Orthokinetics, 806 F.2d at 1576. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more. Hybritech, 802 F.2d at 1385. The degree of precision necessary for adequate claims is a function of the nature of the subject matter. Id.

                in the light of the complete patent document.  Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293, 296 (Fed.Cir.1985).   Section 112 thus ensures definiteness of claim language.   See In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed.Cir.1989)
                

At trial, a Miles expert, Mr. Kocsis, stated:

Q Now, reading these claims [of the '073 patent], which we have just discussed, did you see any mention in any of these claims of vented containers or reagent bottles, or anything like that?

A No, I did not.

....

Q Now, that single machine, as described in the '460 and '073 patents, requires that a vent to atmosphere be present in each solution container in order for the machine to transfer solutions from a solution container to a processing chamber and back, is that correct?

A That's correct.

Relying on these isolated statements, Shandon contends that the claims do not specify vented solution containers. Without vented containers, Shandon contends, the claims do not describe a workable invention. Without vents, Shandon asserts, the invention cannot change pressure to draw fluids into and out of the central treatment chamber.

Shandon's argument is irrelevant to definiteness under § 112, p 2. The invention's operability may say nothing about a skilled artisan's understanding of the bounds of the claim. Shandon's argument is possibly relevant, however, to the enablement requirement of § 112, p 1, or to utility under § 101.

Construed as a challenge to utility or enablement, Shandon's argument nevertheless fails. Mr. Kocsis testified that the claimed tissue processors would operate with or without vents in the solution containers. Without vents, collapsible solution containers could permit the transfer of fluids by pressure changes. The district court correctly concluded that "the record shows that even unvented containers would be operative." Miles II, slip op. at 4. Thus Shandon did not show a lack of utility, even if the claims cover only unvented containers.

The trial court also determined that the claims, read in light of the specification, covered both unvented containers and vented containers. In fact, the preferred embodiment described in the specification discloses "vented" solution containers:

Referring again to FIG 3, the previously referred to solution containers 15 (with operating numbers 1 through 10) have respective caps 55 for refilling the containers. Suitable air vents 56, indicated by dashed lines, are provided in each cap 55, but are preferably kept extremely small so as to limit any admission of moisture.

Col. 6, lines 3-9. Therefore, the claims read in light of the specification reasonably apprise those skilled in the art of the claimed invention. Moreover, the record shows that the patent disclosed adequate information to enable a skilled artisan to make and use the claimed invention. Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941, 15 USPQ2d 1321, 1329 (Fed.Cir.), cert. denied, 498 U.S. 920, 111 S.Ct. 296, 112 L.Ed.2d 250 (1990).

Appellant incorrectly characterized its validity challenge as a claim definiteness issue--a characterization which the district court followed, at least in name. Nonetheless, the district court made proper findings and correctly concluded that appellant did not rebut the presumed validity of the claims.

Infringement

The district court determined that the accused devices, known as the HYPERCENTER and the HYPERCENTER 2, infringed the '073 patent literally, or in the alternative, under the doctrine of equivalents. Miles I This court revi...