Springs Window Fashions v. Novo Industries

• Decision Date: 13 February 2003
• Docket Number: No. 02-1309.,No. 02-1347.,02-1309.,02-1347.
• Citation: 323 F.3d 989
• Parties: SPRINGS WINDOW FASHIONS LP, Shade-O-Matic Ltd., and Manor Tec, Inc., Plaintiffs-Appellants, v. NOVO INDUSTRIES, L.P., Defendant-Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

323 F.3d 989

SPRINGS WINDOW FASHIONS LP, Shade-O-Matic Ltd., and Manor Tec, Inc., Plaintiffs-Appellants, v. NOVO INDUSTRIES, L.P., Defendant-Cross-Appellant.

No. 02-1309.

No. 02-1347.

United States Court of Appeals, Federal Circuit.

February 13, 2003.

COPYRIGHT MATERIAL OMITTED

Roy H. Wepner, Lerner, David, Littenberg, Krumholz & Mentlik, LLP, of Westfield, New Jersey, argued for plaintiffs-appellants. With him on the brief was John R. Nelson. Of counsel was Scott E. Charney.

James H. Riley II, Shook, Hardy & Bacon L.L.P., of Houston, Texas, argued for defendant-cross appellant. With him on the brief was William P. Jensen.

Before MAYER, Chief Judge, BRYSON, and GAJARSA, Circuit Judges.

BRYSON, Circuit Judge.

Springs Window Fashions L.P., Shade-O-Matic Ltd., and Manor Tec, Inc., (collectively, "Springs") appeal from an order of the United States District Court for the Western District of Wisconsin granting the motion of Novo Industries, L.P., for summary judgment of noninfringement of United States Patent No. 6,178,857 ("the `857 patent"). Novo cross-appeals the grant of summary judgment dismissing its counterclaims of tortious interference and disparagement based on bad faith enforcement of the `857 patent. We affirm the summary judgment as to both the claim of infringement and the counterclaims of tortious interference and disparagement.

I

The `857 patent, which was assigned to Shade-O-Matic and then licensed to Springs Window Fashions, relates to a method of trimming window blinds. Because windows vary in size, there is a benefit to being able to customize the window blinds. While a retail store could order custom-sized blinds from a factory, another approach is for the retail store to order stock sizes of blinds and cut them to the appropriate size at the time of purchase. Manufacturers such as Springs provide retail stores with both the stock sizes of blinds and "cut-down" machines that can trim the head rail, slats, and bottom rail of window blinds. The `857 patent recites a method used in connection with such a cut-down machine.

Independent claim 1 of the `857 patent is the only independent claim. It provides:

1. A method of trimming the width of venetian blinds of the type having a head rail, a plurality of slats and a bottom rail, each of said head rail, said slats and said bottom rail having first and second opposed ends, said method comprising the steps of:

placing a first end of said head rail of said venetian blind through a corresponding head rail opening in a support body and placing a first end of said bottom rail and a first end of said slats through respective openings in said support body, whereby respective first ends of said head rails said bottom rail and said slats extend through said openings;

moving said first ends of said head rails said bottom rail and said blind slats through said openings in said support body and into respective aligned further openings in a cutting means, said cutting means including a first cutter for cutting said head rail and a separate second cutter for cutting at least said slats; and,

moving said first and second cutters to cut at least said head rail, and said slats.

`857 patent, col. 12, l. 66, to col. 13, l. 18 (emphasis added). One of the embodiments illustrated in the specification uses a die plate that slides diagonally to cut the head rail and a blade mounting frame that moves horizontally to cut the slats. See `857 patent, figures 1-7.

On July 16, 2001, Springs filed suit charging Novo with infringing claims 1, 2, 8, and 10 of the `857 patent through the manufacture and sale of cut-down machines that employ the claimed methods. In Novo's accused device, a single plate with multiple blades cuts the head rail, bottom rail, and slats. The plate has a series of openings for the rails and slats, and it has blades that correspond to the openings. When the plate is moved, the blades cut the rails and slats. Novo moved for summary judgment, arguing that its device did not employ "separate" cutters within the meaning of the asserted claims.

The district court granted Novo's motion. The court construed the term "separate" to mean capable of independent movement. The court rejected Springs's contention that "separate" means simply different cutting surfaces. Springs's construction, according to the district court, would render the term "separate" superfluous in the phrase "separate second cutter" in light of the presence of the word "second." Instead, the court looked to dictionary definitions of the term "separate," including "detached, disconnected or disjoined," to conclude that the cutters must "have the potential for independent movement." The court further held that the specification and prosecution history of the `857 patent confirmed that the inventor intended to limit the claimed invention to detached and independently moveable cutters.

In light of that claim construction, the district court held that there was no genuine issue of material fact as to whether Novo's machines infringed, because Novo's device did not have two cutters that were moveable independently of one another. Instead, the blades in the Novo machine were all attached to the same plate, and when that plate moved so did all the blades.

II

Springs argues that the district court erred in its claim construction and therefore erred in granting summary judgment to Novo. According to Springs, the term "separate" does not require the cutters to be independently movable, but only requires that the machine have distinct cutting edges. Thus, in Springs's view, the term "separate" distinguishes the claimed cutting means from a single, unbroken cutting edge that cuts the head rail and then the slats.

While the claim language and specification may only allow, rather than dictate, the court's construction of the term "separate," the prosecution history of the `857 patent confirms that the district court's interpretation is correct. In the first official action, the examiner rejected all of the original claims on several grounds, including that they were either anticipated by or obvious in light of U.S. Patent No. 5,816,-126 to Pluber. The Pluber patent claims a device in which three blades are mounted on one sliding support plate, which is moved by a lever. The head rail, slats, and the bottom rail are cut by these three blades simultaneously as part of a single motion. The examiner explained that

Pluber discloses the same invention [as applicant], a method of trimming the width of Venetian blinds, as claimed including the steps of: placing a selected end of the head rail, bottom rail and the blind slats through corresponding ... slat openings in a support body ...; placing the selected ends of the head rail, bottom rail and the blind slats through aligned corresponding openings in a cutting means ...; moving the cutting means to cut the head rail, bottom rail, and blind slats.

The applicant submitted an amendment modifying the claims, distinguishing Pluber from the claimed invention, and arguing that Pluber was not prior art because it postdated the grandparent application. The applicant's accompanying remarks noted that extra effort is required to cut the head rail because of its steel construction. The applicant stated: "It is for this reason that the Applicant provides two entirely separate movement means, one for cutting the head rail and the other for cutting the bottom rail and the blind slats." In amending claim 1, the applicant replaced the language "a cutting means" with "a cutting means, said cutting means including a first cutter for cutting said head rail and a separate second cutter for cutting at least said slats." The applicant also modified the specification to include the language "with the cutting stroke of the bottom rail and the blind slats be[ing] performed independently of the cutting stroke of the headrail cutting means."

In distinguishing the `857 claims from the Pluber patent, the applicant stated:

Pluber discloses a somewhat simplistic form of guillotine cutter. All of the blades are mounted on a single plate ... operated by a single arm 55. The single plate 22 carries three blades, one for cutting the head rail, one for cutting the blind slats and one for cutting the bottom rail.... Pluber does not provide two separate cutters for cutting (1) the blind slats and bottom rail, and (2) the head rail. Operation of Pluber would require a very considerable manual effort. He shows only one movement arm. This has to move all three cutting blades.... The present invention has been devised to avoid this problem by providing one cutter for the head rail and a separate cutter for the bottom rail and slats.

In the second official action, the examiner continued to reject claim 1 and the other claims as anticipated by the Pluber patent or obvious in light of it. The examiner rejected the applicant's contention that Pluber lacked two separate cutters, noting that "[e]ach of the cutters ... are separably mounted to the plate 22 and separately cut a portion of the blinds. Therefore, the phrase `a first cutter ... and a separate second cutter' does not distinguish the instant application from the Pluber reference even though the cutters... are all mounted to the single plate 22."

In response to that office action, the applicant argued that Pluber was not a prior art reference. In addition, the applicant adhered to his argument distinguishing his invention from Pluber:

Applicant maintains the arguments set forth in the prior Amendment concerning distinguishing of Pluber from the claims previously presented, on the merits. However, in light of the Examiner's concession that Claim 1 finds full support in the application filed September 11, 1995, it is not believed necessary to go any further than to point out that fact and request a Notice of Allowance.

The examiner issued a notice of allowance without further comment.

It is well established that "the prosecut...