Palumbo v. Don-Joy Co.
| Decision Date | 20 May 1985 |
| Docket Number | No. 84-1691,DON-JOY,84-1691 |
| Citation | 762 F.2d 969,226 USPQ 5 |
| Parties | P.M. PALUMBO, et al., Appellants, v.CO., et al., Appellees. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Stanley C. Spooner, Stevens, Davis, Miller & Mosher, of Alexandria, Va., argued, for appellants; Donald E. Stout, Antonelli, Terry & Wands, of Washington, D.C., of counsel.
Welton B. Whann, of San Diego, Cal., argued, for appellees; Stephen P. Oggel, Christison, Martin & Oggel, of San Diego, Cal., of counsel.
Before DAVIS, KASHIWA and MILLER, Circuit Judges.
P.M. Palumbo, et al. (Palumbo), the patentee and his company, seek review of a grant of summary judgment of noninfringement by the United States District Court for the Southern District of California. We reverse and remand.
Palumbo sued Don-Joy, et al. (Don-Joy) for infringement of U.S. Patent No. 4,296,744 ('744 patent). That patent discloses a patellar brace useful for the diagnosis and treatment of patellar subluxation. Patellar subluxation is the undesirable movement or dislocation of the patella (kneecap). The invention purports to provide a dynamic patellar brace capable of bracing the kneecap throughout the full range of knee movement. Claims 1, 8, 9, 10 and 11 are the independent claims of the patent.
Claim 1 recites:
A dynamic patellar brace for preventing subluxation of a patella throughout the complete physiologic range of flexion and movement of the knee comprising:
means for bracing the patella;
means for maintaining said patellar bracing means positioned laterally of the patella throughout the complete physiologic range of flexion and movement of the knee when the brace is in use; and
means for causing said patellar bracing means positioned laterally of the patella to apply a resultant force in the medial direction to the patella throughout the complete range of flexion and movement of the knee when the brace is in use. (Emphasis added.)
Claim 8, which is representative of the remaining independent claims, states:
A dynamic patellar brace for preventing subluxation of a patella throughout the complete physiologic range of flexion and movement of the knee comprising;
pad means for placement laterally adjacent of the patella for laterally stablizing the patella throughout the physiologic range of flexion and movement of the knee;
force developing means connected to said pad means for applying a force thereto, said pad means coupled with said force developing means applying a resultant force in the medial direction to the patella throughout the complete physiologic range of flexion and movement of the knee when the brace is in use, said force developing means including first and second elastic bands wrapped in a first circumferential direction about the leg, one of said elastic bands wrapped above the knee and the other wrapped below the knee; and
position maintaining means connected to said pad means for maintaining the position of said pad relative to the patella throughout the physiologic range of flexion and movement of the knee and including a third elastic band wrapped about the leg in a second circumferential direction, said third elastic band intermediate said first and second elastic bands. (Emphasis added.)
The specific and only embodiment, described in the specification and drawings (see infra) and claimed in claims 2 through 7, discloses an elastic sleeve 20 consisting of an aperture 21 to align the kneecap; a patellar bracing pad 15 positioned adjacent to the aperture 21 between the upper portion 12 and lower portion 13 of the user's leg; two elastic medial (sideways) force-applying arms ("arms") 17, 18 attached to the bracing pad 15; and an elastic position maintaining arm 19 ("counterarm") also attached to the bracing pad 15.
The two force-applying arms 17, 18 wrap around the knee and apply pressure to the bracing pad 15 in order to continually apply a resultant force to the patella in a medial direction. The bracing pad 15, and thus the patella, is maintained in the proper position throughout the complete range of knee movement by the counterarm 19 which is circumferentially wrapped in the opposite direction from the two arms 17, 18. (The arms and counterarm are secured by Velcro strips, 22, 23, 25, 26 and 27.)
Before the United States Patent and Trademark Office (PTO), all claims of the '744 patent were initially rejected as anticipated by, inter alia, the Detty patent (U.S. Patent No. 4,084,584). Detty discloses a single elastic sleeve consisting of an aperture for the patella and a pad adjacent to the aperture for restricting movement of the patella. Palumbo argued before the PTO that Detty and other prior art devices function merely as static restraining pads, ineffective in the dynamic mode (i.e., throughout the complete range of movement).
Following a further rejection made on a continuation application, Palumbo amended claim 1 by changing, inter alia, "patellar bracing pad" to "means for bracing the patella," "means adapted to maintain" to "means for maintaining," and "means adapted to cause" to "means for causing." In addition, "normal" was replaced by "complete physiologic" in describing the "range of flexion and movement of the knee over which the brace is effective." With these changes and after the examiner was convinced that the Palumbo brace would "track" (i.e., brace) the patella much more closely than the Detty device, the claims were allowed.
Don-Joy's accused devices are referred to as the patellar stablizing unit (PSU) 1 and
the multi-directional patellar stabilizer (MDPS). The Don-Joy device in question, the MDPS, comprises an inner sleeve with a patellar hole similar to the sleeves of both the Detty brace and the specific embodiment of the Palumbo invention. The MDPS also has a separate sleeve placed over the top of the inner sleeve and centered about the knee. 2
Before the district court, Don-Joy asserted two grounds for summary judgment. As the first ground, Don-Joy argued that the '744 patent was invalid as anticipated by the Detty patent. From the bench, the district court orally ruled that anticipation of the '744 patent created an issue of fact inappropriate for summary judgment. As its second ground, Don-Joy asserted noninfringement of the former (PSU) Don-Joy device, and noninfringement of the present (MDPS) Don-Joy device. As to the former device (the PSU), the court found a material issue of fact, and therefore denied summary judgment.
With respect to the present Don-Joy device (the MDPS), the court, by order, granted summary judgment to Don-Joy and concluded as a matter of law that MDPS "does not infringe claims 2 through 12 of the patent in suit because those claims are limited so as to include two arms and a counterarm and the present Don-Joy device does not embody arms and a counterarm." The court further specified (under Rule 56(d) of the Federal Rules of Civil Procedure) that at trial certain matters shall be deemed established:
(a) The field to which the invention of the patent in suit applies is crowded.
(b) The advance of the patented invention over the prior art is small.
(c) The patent in suit is entitled to only a narrow range of equivalents.
(d) The language of claim 1 of the patent in suit, "means for bracing the patella", is construed to mean the patellar bracing pad.
(e) The language of claims 8 and 9 "force developing means ... and other wrapped below the knee" is construed to mean two arms and "position maintaining means ... and second bands" is construed to mean a counterarm.
On the same day, the district court entered final judgment (under Rule 54 of the Federal Rules of Civil Procedure) that all the claims of the '744 patent were not infringed by the MDPS device. The court stated that the basis for the judgment was set forth in its prior oral findings and conclusions of law. * It is from this final judgment that Palumbo appeals.
The major issue before us is whether the district court properly granted summary judgment of noninfringement. In this instance, our inquiry centers on whether the court erred in holding that no genuine issue of material fact existed and/or whether the court erred in interpreting the claims of the '744 patent.
A. Infringement--in general
Literal infringement may be found if the accused device falls within the scope of the asserted claims as properly interpreted. Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 221 USPQ...
To continue reading
Request your trial
-
Intel Corp. v. U.S. Intern. Trade Com'n, Nos. 89-1459
...Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed.Cir.1991); King Instrument, 767 F.2d at 862, 226 USPQ at 408; Palumbo v. Don-Joy Co., 762 F.2d 969, 975, 226 USPQ 5, 8 (Fed.Cir.1985); cf. McGill Inc. v. John Zink Co., 736 F.2d 666, 221 USPQ 944 In Texas Instruments this court suggested, in dicta, t......
-
Zumbro, Inc. v. Merck and Co., Inc., No. 90 C 2507.
...beyond bare arguments and resolve any doubts over issues of fact in favor of the party opposing summary judgment. Palumbo v. Don-Joy Co., 762 F.2d 969, 973 (Fed. Cir.1985). When the movant has supported his motion as provided by FED.R.CIV.P. 56(c), however, the opposing party must come forw......
-
Procter & Gamble Co. v. Nabisco Brands, Inc., Civ. A. No. 84-333 LON.
...775 F.2d at 1121; see also Mannesmann Demag Corp. v. Engineered Metal Prod., 793 F.2d 1279, 1282 (Fed.Cir.1986); Palumbo v. Don-Joy Co., 762 F.2d 969, 974 (Fed. Cir.1985). Nevertheless, the fact "that claims are interpreted in light of the specification does not mean that everything express......
-
Ziggity Systems, Inc. v. Val Watering Systems
...terms, and phrases of the claim itself "define the metes and bounds of the protection afforded by the claims." Palumbo v. Don-Joy Co., 762 F.2d 969, 974 (Fed.Cir. 1985). When necessary, these words, terms, and phrases are construed in light of the specification. However, to read the specifi......
-
The Rosetta Stone for the doctrine of means-plus-function patent claims.
...that the application of the standard varies depending upon its respective contextual employment). See generally Palumbo v. Don-Joy Co., 762 F.2d 969, 975 n.4 (Fed. Cit. 1985) (recognizing the distinction between a doctrine of equivalents analysis and a literal infringement under section 112......
-
Expanding the Use of Hypothetical Analysis When Evaluating Patent Infringement Under the Doctrine of Equivalents
...479 U.S. 1030 (1987); Charles Greiner and Co., Inc. v. Mari-Med Mfg., 962 F.2d 1031, 1034 (Fed. Cir. 1992)). 96. Palumbo v. Don-Joy Co., 762 F.2d 969, 976 (Fed. Cir. 97. This relationship often creates decisive interpretations of what is or is not within the province of the jury. See, e.g.,......
-
Markman Twenty Years Later: Twenty Years of Unintended Consequences
...United Steel Deck, Inc., 820 F.2d 384 (Fed. Cir. 1987); Moeller v. Ionetics, Inc., 794 F.2d 653 (Fed. Cir. 1986); Palumbo v. Don-Joy Co., 762 F.2d 969, 974 (Fed. Cir. 1985); Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707 (Fed. Cir. 1984); Bio-Rad Labs., Inc. v. Nicolet Instru......
-
Markman v. Westview Instruments, Inc.: the Supreme Court Narrows the Jury's Role in Patent Litigation - Elizabeth J. Norman
...Federal Circuit cases such as Bio-Rad Lab., Inc. v. Nicolet Instrument Corp., 739 F.2d 604 (Fed. Cir. 1984); Palumbo v. Don-Joy Co., 762 F.2d 969 (Fed. Cir. 1985); Moeller v. Ionetics, Inc., 794 F.2d 653 (Fed. Cir. 1986); Perini Am., Inc. v. Paper Converting Mach. Co., 832 F.2d 581 (Fed. Ci......