Multiform Desiccants, Inc. v. Medzam, Ltd.

• Decision Date: 15 January 1998
• Docket Number: 96-1274,Nos. 96-1255,s. 96-1255
• Citation: 133 F.3d 1473,45 USPQ2d 1429
• Parties: MULTIFORM DESICCANTS, INC., Plaintiff-Cross Appellant, v. MEDZAM, LTD., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1473

133 F.3d 1473

45 U.S.P.Q.2d 1429

MULTIFORM DESICCANTS, INC., Plaintiff-Cross Appellant, v. MEDZAM, LTD., Defendant-Appellant.

Nos. 96-1255, 96-1274.

United States Court of Appeals, Federal Circuit.

Jan. 15, 1998.

Michael R. McGee, McGee & Gelman, Buffalo, NY, argued for plaintiff-cross appellant.

Jeremiah J. McCarthy, Phillips, Lytle, Hitchcock, Blaine & Huber, Buffalo, NY, argued for defendant-appellant.

Before NEWMAN, CLEVENGER, and SCHALL, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

In this patent suit, the United States District Court for the Western District of New York ¹ held that United States Patent No. 4,853,266, entitled "Liquid Absorbing and Immobilizing Packet Containing a Material for Treating the Absorbed Liquid" (the '266 patent), owned by Multiform Desiccants, Inc., was not infringed by the similar product sold by Medzam, Ltd. The district court entered judgment in favor of Medzam, did not decide the issue of patent validity, and denied Medzam's request for attorney fees. Multiform appeals the judgment of non-infringement, and Medzam appeals the denial of attorney fees and the decision not to reach the issue of validity.

THE TECHNOLOGY

The invention described and claimed in the '266 patent is a packet for use in controlling spilled liquids. In typical use the packet is placed in an outer shipping container that encloses an inner container holding a hazardous liquid such as medical waste or body fluids. Should the inner container break or leak, the released liquid encounters the packet in the outer container. The packet envelope, which is made of a soluble material, disintegrates and releases materials that absorb, immobilize, and treat the spilled liquid. The absorbing and immobilizing material is preferably sodium polyacrylate, a known absorbent that expands and gels on contact with liquid. The treating material may be a known disinfectant, scent, deodorizer, etc., depending on the intended use of the packet.

Medzam's accused packet, called the Red-Z Zafety Pac, is designed and sold for the same uses as the Multiform packet. The Medzam envelope is made of porous material such as is used for tea bags, and contains the

known absorbing and immobilizing material potassium polyacrylate and a disinfectant. When spilled liquid penetrates the porous envelope, the polyacrylate inside the envelope starts to absorb and expand. The expanding absorbent splits open the envelope, releasing its contents for further absorption.

LITERAL INFRINGEMENT

Patent infringement occurs when a device (or composition or method), that is literally covered by the claims or is equivalent to the claimed subject matter, is made, used, or sold, without the authorization of the patent holder, during the term of the patent. See 35 U.S.C. § 271. The claims are concise statements of the subject matter for which the statutory right to exclude is secured by the grant of the patent. Since a full and complete understanding of the scope of the claims is requisite to determining whether the patent is infringed, technical terms or words of art or special usages in the claims, if in dispute, are construed or clarified by the court before the construed claims are applied to the accused device. On appellate review the Federal Circuit again construes the claims, determining de novo the correct construction. See Markman v. Westview Instruments, 52 F.3d 967, 979-81, 34 USPQ2d 1321, 1329-31 (Fed.Cir.1995) (en banc ), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996).

On occasion the issue of literal infringement may be resolved with the step of claim construction, for upon correct claim construction it may be apparent whether the accused device is within the claims. See, e.g., Strattec Security Corp. v. Gen. Automotive Specialty, 126 F.3d 1411, 1419, 44 USPQ2d 1030, 1036 (Fed.Cir.1997); Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc., 98 F.3d 1563, 1572, 40 USPQ2d 1481, 1488 (Fed.Cir.1996). The district court so viewed this case. Although the cause was fully tried to a jury, after trial the judge dismissed the jury without requesting a verdict, citing the Federal Circuit's decision in Markman and stating that "This question is one of claim construction, a question of law."

Claims 1 and 6

In the '266 patent the packet is claimed as a combination of the degradable envelope, the absorbing material, and the treating material. A second group of claims describes the envelope in terms of its function, in the form authorized by 35 U.S.C. § 112 p 6; these claims are discussed post. Claims 1 and 6 are representative of the first group of claims:

1. A packet for absorbing and immobilizing a liquid comprising an envelope which is degradable in said liquid, a first material in said envelope for absorbing and immobilizing said liquid, and a second material confined in said envelope for additionally treating said liquid which is absorbed and immobilized to nullify a specific undesirable quality thereof.

6. In an outer container having an inner container with liquid from which said liquid can leak, an absorbent packet located between said inner and outer containers for absorbing and immobilizing said liquid within said outer container in the event of leakage of said liquid from said inner container comprising an envelope which is degradable in said liquid, a first material in said envelope for absorbing and immobilizing said liquid, and a second material confined in said envelope for additionally treating said liquid which is absorbed and immobilized to nullify a specific undesirable quality thereof.

(Emphases added.) Medzam conceded that its packet contains all of the elements of claims 1 and 6 except the "degradable" envelope. Medzam argued that its envelope is not degradable, when that term is correctly construed, and thus that the claims are not infringed.

The disputed issue is the meaning of the term "degradable" in characterizing the claimed envelope. The district court defined this term with an eye to the accused envelope. The court held that the terms "degrade" and "degradable," as used in the '266 patent, mean that the envelope at least partially dissolves and thereby disintegrates in the liquid. The court held that this meaning of "degradable" does not include the mode of operation of the Medzam packet, wherein the envelope bursts open by expansion of the contents but the envelope itself does not dissolve and disintegrate by direct action of the liquid.

Multiform states that this claim construction is incorrect, and that upon correct construction a finding of infringement is inevitable. Multiform argues that "degradable" must first be construed based on the '266 patent documents, without reference to the accused device, see Jurgens v. McKasy, 927 F.2d 1552, 1560, 18 USPQ2d 1031, 1037 (Fed.Cir.1991) ("claim is construed without regard to the accused product"); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580, 18 USPQ2d 1001, 1013 (Fed.Cir.1991) (the words of the claims are independently construed, focussing on the disputed elements), and that as used in the '266 patent "degradable" is not limited to dissolution and disintegration, but means any loss in the containment function of the envelope. Multiform cites dictionaries showing this broader meaning, and states that a person of ordinary skill would construe "degradable," as applied to these envelopes, as meaning a loss in their containment function.

It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed. Such person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field. The inventor's words that are used to describe the invention--the inventor's lexicography--must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Thus the court starts the decisionmaking process by reviewing the same resources as would that person, viz., the patent specification and the prosecution history. These documents have legal as well as technological content, for they show not only the framework of the invention as viewed by the inventor, but also the issues of patentability as viewed by the patent examiner.

During patent prosecution Multiform submitted dictionary definitions of "degradable" from Webster's New Collegiate Dictionary (1976), explaining the submission as follows:

The word "degrade" includes the definitions of "to deprive of standing or true function" and "to impair in respect of some physical property." Thus when the envelope is dry and not degraded, its true function is to contain its contents. However, once it is exposed to liquid, it is deprived of its standing or true function and it has its physical property of containing its contents impaired.

Multiform states that this definition is comprehensive of the degradation of the Medzam envelope that bursts apart and thus loses its true function, and is not limited to an envelope that degrades by dissolving. Multiform states that it is not necessary for the packet to disintegrate in order to degrade. Medzam responds that Multiform offered these definitions only after Multiform became aware of the Medzam packet, and that the definitions are at odds with the plain reading of the specification.

Multiform argues that, in keeping with the rule that an inventor may be his own lexicographer, its definition of "degradable" must prevail. When the meaning of a term is sufficiently clear in the patent specification, that meaning shall apply. See Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388, 21 USPQ2d 1383, 1387 (Fed.Cir.1992); Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889, 221 USPQ 1025, 1031 (Fed.Cir.1984). This rule of construction recognizes that the inventor may have imparted a...