Sage Products, Inc. v. Devon Industries, Inc., s. 96-1503

• Citation: 126 F.3d 1420,44 USPQ2d 1103
• Decision Date: 18 September 1997
• Docket Number: 96-1510,Nos. 96-1503,s. 96-1503
• Parties: SAGE PRODUCTS, INC., Plaintiff-Appellant, v. DEVON INDUSTRIES, INC., Defendant/Cross-Appellant. Federal Circuit
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1420

126 F.3d 1420

44 U.S.P.Q.2d 1103

SAGE PRODUCTS, INC., Plaintiff-Appellant, v. DEVON INDUSTRIES, INC., Defendant/Cross-Appellant.

Nos. 96-1503, 96-1510.

United States Court of Appeals,Federal Circuit.

Sept. 18, 1997.

Mark T. Banner, Banner & Witcoff, LTD., Chicago, IL, argued, for plaintiff-appellant. With him on the brief was Laura J. DeMoor. Of counsel was A. Blair Hughes.

Robert C. Weiss, Lyon & Lyon LLP, Los Angeles, CA, argued, for defendant/cross-appellant. With him on the brief was Kenneth H. Ohriner.

Before MAYER, RADER, and SCHALL, Circuit Judges.

RADER, Circuit Judge.

In this patent infringement action, Sage Products, Inc. (Sage) and Devon Industries, Inc. (Devon) cross-appeal the judgment of the United States District Court for the Central District of California. On the parties' cross-motions for summary judgment, the district court held that Devon did not infringe Sage's U.S. Patents Nos. 4,779,728 ('728 patent) and 4,375,849 ('849 patent), and that Sage did not infringe Devon's U.S. Patent No. 4,315,592 ('592 patent). Because the district court properly interpreted the claims of each patent to preclude literal infringement and properly determined that there could be no infringement under the doctrine of equivalents, this court affirms.

I.

This lawsuit began on April 10, 1992, when Sage sued Devon for infringement of several patents relating generally to containers for disposing of hazardous medical waste, including hypodermic needles. The '728 patent covers a disposal container with a slot at its top to allow entry of waste materials into the container and with constrictive barriers above and below that slot to restrict access to the interior of the container. The '849 patent covers a disposal container with a notched slot for unwinding needles from their accompanying syringe.

Devon counter-sued on its own patent, the '592 patent. That patent covers a disposal container with two slotted baffles that allow a person to deposit waste products into the container without contacting the materials already therein.

Acting on cross-motions for summary judgment, the district court held that neither party infringed the other party's patents either literally or by equivalents. Therefore, the district court entered judgment for Sage and Devon on the corresponding claims of the other. Both parties now appeal.

II.

Sage's '728 patent discloses a disposal container that allows a user to deposit hazardous medical waste without touching waste already in the container. Figure 3 of the patent, reproduced below, illustrates the claimed features. The disposal container 10 includes a container body 12 with an elongated slot 16 at its top. A barrier, having a first constriction 18 and a second constriction 20, restricts access to the interior of the container body. Closure 28 closes the container.

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

The only independent claim of the '728 patent (with emphasis to highlight disputed elements) reads:

1. A disposal container comprising:

a. a hollow upstanding container body,

b. an elongated slot at the top of the container body for permitting access to the interior of the container body,

c. barrier means disposed adjacent said slot for restricting access to the interior of said container body, at least a portion of said barrier means comprising

i. a first constriction extending over said slot, and

ii. a complementary second constriction extending beneath said slot, and

d. a closure disposed adjacent said slot.

The district court properly interpreted "top of the container body" to mean the "highest point, level, or part of." The court also properly interpreted "extending over said slot" to require that the first constriction be "above" the elongated slot. The patentee nowhere indicated any intention to deviate from these ordinary meanings of the claim terms. Thus, they control. See York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572, 40 USPQ2d 1619, 1622 (Fed.Cir.1996) ("Without an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning.").

Before the district court, Sage presented an infringement argument summarized in the following marked-up patent drawing. The drawing is taken from Devon's U.S. Patent No. 5,080,251, which the parties agree accurately depicts Devon's accused products.

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

According to its argument, Sage identified an interior part 40 as the first constriction, a second interior part 52 as the second constriction, and the space between them as the elongated slot. Based on this argument, the district court properly found no literal infringement. Even assuming that Sage has identified an elongated slot with a first constriction above it and a second constriction below it, that slot is not "at the top of the container body." Instead, as the undisputed drawing shows, Sage's proposed "elongated slot" on the Devon device lies within the container body. Because this deficiency prevents literal infringement, the district court properly granted summary judgment of no literal infringement.

A device that does not literally infringe a claim may nonetheless infringe under the doctrine of equivalents if every element in the claim is literally or equivalently present in the accused device. See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934-35, 4 USPQ2d 1737, 1739-40 (Fed.Cir.1987) (in banc). A claim element is equivalently present in an accused device if only "insubstantial differences" distinguish the missing claim element from the corresponding aspects of the accused device. Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1517-18, 35 USPQ2d 1641, 1645 (Fed.Cir.1995) (in banc), rev'd on other grounds, --- U.S. ----, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Although equivalence is a factual matter normally reserved for a fact finder, the trial court should grant summary judgment in any case where no reasonable fact finder could find equivalence. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., --- U.S. ----, ---- n. 8, 117 S.Ct. 1040, 1053 n. 8, 137 L.Ed.2d 146 (1997) ("Where the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment."). The district court properly discerned that this case falls in that category.

Before the trial court, Sage reasserted its literal infringement argument as a basis for finding infringement as an equivalent. Sage also offered three other views of the accused products that a jury might adopt to find infringement by equivalents. Of Sage's four equivalence arguments, three of them identify element 40 as the accused "first constriction" and element 52 as the accused "second constriction" and place the "elongated slot" somewhere inside the container body.

The district court properly rejected all four of Sage's theories of infringement by equivalents. As the district court recognized, each theory suffers from one of two alternative problems--either the elongated slot is not substantially "at the top of the container body" or there is no first constriction that extends substantially "over said slot." The record does not show that Sage presented any perspective on Devon's accused devices that simultaneously satisfied an insubstantial variation of both of these limitations. Specifically, Sage's first three theories place the location of the "elongated slot" in this accused device far enough within the container body that, as a matter of law, no reasonable juror could find that it is located at substantially the "top of the container." Furthermore, the district court properly found that Sage's fourth theory of equivalence, identifying element 26 from the Devon patent drawing as the "first constriction," fails because element 26 is a hinged member that does not substantially "constrict access" to the slot, if at all.

Unable to conform its claim of infringement by equivalents to the strictures of the claim limitations, Sage essentially argues that having two constrictions below the top of the container is the same, for purposes of infringement, as having one constriction above and one constriction below. According to Sage, the claimed and accused arrangements accomplish substantially the same function, in substantially the same way, to achieve substantially the same result. However, the doctrine of equivalents does not grant Sage license to remove entirely the "top of the container" and "over said slot" limitations from the claim. See Warner-Jenkinson, at ----, 117 S.Ct. at 1049 ("It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety."); Pennwalt, 833 F.2d at 936, 4 USPQ2d at 1741 ("[If] even a single function required by a claim or an equivalent function is not performed [by the accused device], the [district] court's finding of no infringement must be upheld."); Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 400, 29 USPQ2d 1767, 1771 (Fed.Cir.1994) ("[T]he concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims.").

The doctrine of equivalents prevents an accused infringer from avoiding infringement by changing only minor or insubstantial details of a claimed invention while retaining their essential functionality. See Hilton Davis, 62 F.3d at 1517, 35 USPQ2d at 1645 ("The Supreme Court in Graver Tank thus made insubstantial differences the necessary predicate for infringement under the doctrine of equivalents." (citing Graver Tank & Mfg. v. Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950))); Charles Greiner & Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1036, 22 USPQ2d 1526, 1529 (Fed.Cir.1992) (discussing role of doctrine...