Moeller v. Ionetics, Inc.

• Decision Date: 04 June 1986
• Docket Number: No. 85-2646,85-2646
• Citation: 229 USPQ 992,794 F.2d 653
• Parties: , 229 U.S.P.Q. 992 Willi MOELLER, Appellant, v. IONETICS, INC., Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 653

794 F.2d 653

55 USLW 2024, 229 U.S.P.Q. 992

Willi MOELLER, Appellant, v. IONETICS, INC., Appellee.

Appeal No. 85-2646.

United States Court of Appeals Federal Circuit.

June 4, 1986.

C. Frederick Leydig, Leydig, Voit & Mayer, Ltd., Chicago, Ill., argued for appellant. With him on brief, were John W. Kozak and Charles H. Mottier. John H. Brinsley, Adams, Duque & Hazeltime, Los Angeles, Cal., of counsel.

Ira M. Siegel, Blakely, Sokoloff, Taylor & Zafman, Beverly Hills, Cal., argued for appellee. With him on brief, were Roger W. Blakely and Stephen D. Gross.

Before FRIEDMAN, Circuit Judge, NICHOLS, Senior Circuit Judge, and SMITH, Circuit Judge.

NICHOLS, Senior Circuit Judge.

Willi Moeller (Moeller), having sued Ionetics, Inc. for infringement, appeals from the October 15, 1984, grant of partial summary judgment of noninfringement of claim 4 of Patent No. 3,562,129 (the '129 patent) by the District Court of the Central District of California, No. 83-7551-DAR. We vacate and remand.

Background

A. The Patent

The invention of the '129 patent is directed toward an electrode system for measuring the concentration of cations, positively charged ions. Here the concentration of potassium ion, a type of cation, is selectively measured in the presence of other cations. A barrier is interposed between these other cations and the sensing device so that the electrode system only "sees" potassium.

The barrier of the patent's electrode system is a membrane bearing certain "cation-specific" components, such as nonactin, gramicidin, and valinomycin which will recognize only potassium. Upon recognition, the cation-specific components and potassium form positively charged complexes which the sensing device, on the opposite side of the membrane, detects. The electrode system measures these positively charged complexes and thus indicates potassium ion concentration. Claim 4 is at issue:

An electrode system useful for measuring cation activities, said electrode system comprising a membrane, means including an electrode body for supporting the membrane, and an electrode disposed within said body, said membrane comprising a cation-specific component which forms a complex with a cation, the activity of which is to be determined, said cation-specific component being at least one member selected from the group consisting of nonactin, homologues of nonactin, gramicidins and valinomycin, and an inert carrying material.

B. The Ionetics Device

Ionetics manufactures an electrode system portrayed below:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The Ionetics' electrode system comprises:

a silver wire to conduct electrical occurrences (1);

a plastic tube for insulating the conductor surrounding the conductor leading to the sensing portion of the electrode system (2);

a silver sensing portion (3);

a coating overlying the electrode (4);

a layer of PVC membrane material having valinomycin embedded therein (5);

an adhesive sealant for sealing the gap between the membrane and the insulating tube to prevent seepage of the test solution (6).

As indicated infra, there is some dispute as to this structure.

C. District Court Proceedings

On June 18, 1984, Ionetics filed a motion for partial summary judgment of noninfringement relating solely to claim 4 of the '129 patent. The court granted Ionetics' motion on October 15, 1984. Moeller moved for reconsideration; the court denied the motion. Subsequently, after requesting and receiving certification of the order for appeal, both parties petitioned this court for permission to appeal the October 15 order, pursuant to 28 U.S.C. Sec. 1292(b), which we granted.

The district court determined that: (1) "electrode" describes only the sensitive tip of the electrode, even though "the patent specification variously refers to both the electrode assembly and the sensitive tip as 'the electrode;' " (2) "electrode body" means the outer impermeable casing of the electrode, excluding the membrane, and (3) "disposed in said body" means that the functional tip is within the confines of the electrode body.

A comparison of the claim and the Ionetics' device, both of which the court found to be sufficiently simple to be understood without the aid of experts, demonstrated to the district court that there was no literal infringement. Specifically, the court determined that, unlike the subject invention of the '129 patent, the Ionetics' electrode protruded from the electrode body and is covered by other material and the membrane itself rather than the body.

Finally, the court concluded as a matter of law that the Ionetics' device falls within the range of equivalents specifically relinquished during prosecution, explaining that the file wrapper unambiguously shows a final limitation to an electrode disposed in a body and finding that Ionetics' electrode protrudes from the body.

Opinion

A. Jurisdiction

The parties appeal the October 15, 1984 order pursuant to 28 U.S.C. Sec. 1292(b) which provides in pertinent part:

When a district judge, in making in a civil action an order not otherwise appealable under this section, shall be of the opinion that such order involves a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation, he shall so state in writing such order.

This court, having granted the parties permission to appeal, has jurisdiction to consider the controlling question of law and all other questions material to the trial court's order. See United States v. Connolly, 716 F.2d 882, 884-85 (Fed.Cir.1983), cert. denied, 465 U.S. 1065, 104 S.Ct. 1414, 79 L.Ed.2d 740 (1984) (so holding for both 28 U.S.C. Sec. 1292(d)(2) and analogous provision 28 U.S.C. Sec. 1292(b) ).

B. Summary Judgment

Summary judgment, under Rule 56, Fed.R.Civ.P., is as appropriate in patent cases as in other cases where there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law. See SRI International v. Matshusita Electric Corp., 775 F.2d 1107, 1116, 227 USPQ 577, 581-82 (Fed.Cir.1985) (in banc) (and cases cited therein); Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 653-54, 223 USPQ 706, 707 (Fed.Cir.1984). The district court must view the evidence in a light most favorable to the nonmovant (here, Moeller), and draw all reasonable inferences in its favor and must resolve all doubt over factual issues in favor of the party opposing summary judgment. SRI International, 775 F.2d at 116.

This court stated in D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1573, 225 USPQ 236, 238 (1985):

It is at least conceivable that comparison of a properly interpreted claim with a stipulated or uncontested description of an accused device or process would reflect such an absence of material fact issue as to warrant summary judgment of infringement or noninfringement.

In that regard, this court on occasion has upheld the grant of summary judgment in favor of accused infringers where there were no genuine issues of material fact, the trial court had properly construed the claims, and a finding of infringement would have been impossible. See, e.g., Porter v. Farmers Supply Service, Inc., 790 F.2d 882, 884 (Fed.Cir.1986).

The D.M.I. court warned, however, that because infringement is itself a fact issue, "a motion for summary judgment of infringement or noninfringement should be approached with a care proportioned to the likelihood of its being inappropriate." Id.

Despite the care apparent in the district court's order, we must vacate the court's grant of summary judgment for reasons to be made clear below.

C. Claim Construction and Literal Infringement

The first step in determining infringement is to construe the claims. Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861, 866, 228 USPQ 90, 93 (Fed.Cir.1985). The then-properly construed claims are compared to the alleged infringing device. Id. Improper claim construction can therefore distort the entire infringement analysis. That happened here.

The district court stated that claim interpretation is a question of law for the court to decide unless some ambiguity exists in the claim's language requiring the admission of extrinsic evidence to explain the ambiguity. It concluded that the three terms at issue, "electrode," "electrode body," and "disposed in said body" are unambiguous as a matter of law and, hence, there was no need for expert testimony to construe the claims.

We agree that claim interpretation is a question of law. McGill, Inc. v. John Zink & Co., 736 F.2d 666, 671, 221 USPQ 944, 948 (Fed.Cir.), cert. denied, --- U.S. ----, 105 S.Ct. 514, 83 L.Ed.2d 404 (1984). However, resort to certain extrinsic evidence (i.e., the specification, prosecution history, and other claims) is always necessary to interpret disputed claims. Palumbo v. Don-Joy Co., 762 F.2d 969, 974-75, 226 USPQ 5, 8 (Fed.Cir.1985); McGill, 736 F.2d at 672-76, 221 USPQ at 949; Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569-71, 219 USPQ 1137, 1140-43 (Fed.Cir.1983).

Here, the meanings of key terms in the claim were clearly disputed. For example, Ionetics asserted that "electrode" refers only to the ion selective tip of its product and did not include the entire length of silver wire. In opposing the motion for summary judgment, Moeller offered one of its expert's declarations, explaining that the term "electrode" is commonly used in three distinct senses:

(1) The entire system (as in the patent of Ionetics' president, Kater);

(2) The entire length of electrically conductive wire; and

(3) The tip of wire to be immersed into the solution.

It seems fairly obvious that under the second meaning, Ionetics' electrode device is at least partially within the body. If the membrane is part of the body, it is wholly within. The district court itself acknowledged the dispute. On pages 8 and 10 of her October...