Toro Co. v. White Consolidated Industries, Inc.

• Decision Date: 13 September 2004
• Docket Number: No. 03-1424.,03-1424.
• Citation: 383 F.3d 1326
• Parties: The TORO COMPANY, Plaintiff-Appellant, v. WHITE CONSOLIDATED INDUSTRIES, INC. and WCI Outdoor Products, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1326

383 F.3d 1326

The TORO COMPANY, Plaintiff-Appellant, v. WHITE CONSOLIDATED INDUSTRIES, INC. and WCI Outdoor Products, Inc., Defendants-Appellees.

No. 03-1424.

United States Court of Appeals, Federal Circuit.

September 13, 2004.

Rehearing En Banc Denied October 22, 2004.

COPYRIGHT MATERIAL OMITTED

Earl D. Reiland, Merchant & Gould P.C., of Minneapolis, MN, argued for plaintiff-appellant. With him on the brief were Anthony R. Zeuli and Thomas J. Leach, III.

William G. McGuinness, Fried, Frank, Harris, Shriver & Jacobson, of New York, NY, argued for defendants-appellees. With him on the brief were Debra M. Torres, Pauline L. Wen and David A. Zilberberg. Of counsel was Laurie Berberich.

Before RADER, LINN, and DYK, Circuit Judges.

LINN, Circuit Judge.

The Toro Company ("Toro") appeals the decision of the United States District Court for the District of Minnesota granting summary judgment of non-infringement of United States Patent No. 4,694,528 ("the '528 patent") in favor of White Consolidated Industries, Inc., and WCI Outdoor Products, Inc. (collectively "White"). Toro Co. v. White Consol. Indus., Inc., No. 4-95-656 (DWF/AJB), 2003 WL 21147769 (D.Minn. May 14, 2003) ("Opinion"). Because this court's previous claim construction is law of the case, and because the district court correctly held that the disclosure of unclaimed subject matter in the '528 patent triggers the disclosure-dedication rule, we affirm the district court's judgment in favor of White.

I. BACKGROUND

Toro owns the '528 patent, which discloses and claims a "convertible vacuum-blower." Vacuum-blowers are handheld machines used primarily to vacuum or blow leaves and small lawn debris. Opinion, 2003 WL 21147769, at *2. As this court's first opinion described in detail, the '528 patent discloses a vacuum-blower design with a removable cover to which is attached a restriction ring. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1297-98 (Fed.Cir.1999) ("Toro I"). When placed over the air inlet, the restriction ring reduces the diameter of the air intake opening and increases the power of the blower. Because the ring can be easily removed from the opening, the machine's design does not impede its vacuuming ability. Claim 16, the only independent claim of the '528 patent at issue, recites with the disputed terms highlighted:

A convertible vacuum-blower comprising:

[1] a housing having an air inlet and an air outlet;

[2] a motor supported in said housing;

[3] an impeller having a plurality of impeller blades supported for rotary motion in said housing, in fluid communication with said air inlet and said air outlet, and rotatably driven by said motor;

[4] a removable air inlet cover for covering said air inlet, said air inlet cover having apertures for passage of air through the cover;

[5] attachment means for removably securing said air inlet cover to said housing; and

[6] said cover including means for increasing the pressure developed by said vacuum-blower during operation as a blower when air is being supplied to said impeller through said apertured cover.

'528 patent, col. 9, l. 15 — col. 10, l. 11 (emphasis and clause numerals added).

In October 1995, Toro filed suit against White, alleging infringement of claim 16 and dependent claim 17 of the '528 patent. White's accused vacuum-blower has a restriction ring that is separate from, and replaceable within, the cover. The district court construed the disputed terms of claims 16 and 17, and granted Toro's motion for summary judgment of literal infringement. White appealed. This court reversed the district court's claim construction of clause 6 of claim 16, interpreting it to mean that the restriction ring, or "means for increasing the pressure," is "permanently affixed to and included as part of the cover." Toro I, 199 F.3d at 1302. We regarded this as not being a § 112, ¶ 6 question. See id. at 1300-01. White's accused vacuum-blower has a restriction ring that is separate or replaceable from the cover. This court thus remanded the case to the district court for a determination of infringement under the doctrine of equivalents, stating: "The court did not reach the question of whether the use of separate components for cover and ring would nonetheless infringe under the doctrine of equivalents. On this factual question of equivalency, material facts were in dispute." Id.

On remand, the district court interpreted our opinion in Toro I as holding that "a critical function of the air inlet cover claimed in the '528 patent is to automatically insert and remove the restriction ring." Toro Co. v. White Consol. Indus., Inc., No. 4-95-656, slip op. at 8 (D.Minn. Aug. 9, 2000). The air inlet cover of White's accused vacuum-blower is not attached to the restriction ring and does not automatically insert or remove the ring. The district court granted summary judgment of non-infringement under the doctrine of equivalents for White's accused vacuum-blowers. The district court determined that this court's statement that material facts regarding equivalency were in dispute was merely dicta and that this court's remand instruction was "merely ... a shorthand signal that the issue of equivalency was not yet ripe for adjudication." Id., slip op. at 12. Toro again appealed.

In the second appeal, this court determined that while the description and figures of the restriction ring in the specification were used "to help enlighten the meaning of `said cover including [a restriction ring],'" Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367, 1371 (Fed.Cir.2001) ("Toro II") (alteration in original), this claim construction "did not and could not import into the claim a function from the specification, particularly when the claim recites only purely structural limitations." Id. (citing E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed.Cir.1988)). Rather, we determined that the claim recited a structural limitation including a unitary cover and ring, and that while a number of functions were recited for this structure, the primary function as recited in the claims was to cover the air inlet of the vacuum-blower and to permit the passage of air. Id. We concluded that the district court's grant of summary judgment was improper because a genuine issue of material fact existed as to whether the separate ring and cover of the White product performed substantially the same overall claimed function as the cover disclosed in the '528 patent. The case was again remanded.

In this last remand, White moved for summary judgment of non-infringement under the doctrine of equivalents, asserting that under Johnson & Johnston Associates, Inc. v. R.E. Service Co., 285 F.3d 1046 (Fed.Cir.2002) (en banc), the two-piece cover/ring embodiment was dedicated to the public because it was disclosed, but not claimed. It relied on the following language from the specification: "Accordingly, building the flow restriction ring 76 as part of the air inlet cover 50, on which it is needed, but leaving a similarly shaped ring off of the vacuum nozzle 98 is also advantageous in that it automatically restricts the size of air inlet 26 depending upon which operation is being conducted without having the operator manually insert or remove a replaceable ring." '528 patent, col. 7, ll. 6-12 (emphasis added). White argued, and the district court agreed, that the dedicated subject matter could not be recaptured through application of the doctrine of equivalents. Over Toro's objections, the district court granted summary judgment that White did not infringe the '528 patent under the doctrine of equivalents.¹ Opinion, slip. op. at 8.

Toro again appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II. DISCUSSION

A. Standard of Review

"We review the grant of summary judgment de novo, drawing all reasonable inferences in favor of the non-moving party." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed.Cir.2002) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). A district court's interpretation of our precedent is a question of law reviewed de novo. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1337 (Fed.Cir.2003).

Neither Johnson & Johnston nor any of our other disclosure-dedication rule cases have explicitly articulated a standard for reviewing the application of the disclosure-dedication rule. See, e.g., PSC Computer Prods., Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353, 1356-57 (Fed.Cir.2004) (discussing applicable standards of review, but not for application of the disclosure-dedication rule); Johnson & Johnston v. R.E. Service Co., 285 F.3d 1046 (Fed.Cir.2002) (en banc); Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1106-08 (Fed.Cir.1996) (discussing the disclosure-dedication rule). The disclosure-dedication rule limits application of the doctrine of equivalents, much in the same way as prosecution history estoppel. Under both doctrines, resort to the doctrine of equivalents is precluded based on actions of the patentee during prosecution evincing a surrender or dedication of subject matter. Accordingly, we conclude that both the dedication-disclosure rule and prosecution history estoppel should be analyzed under the same standard of review. Because "[p]rosecution history estoppel as a limit on the doctrine of equivalents presents a question of law," Glaxo Wellcome, Inc. v. Impax Labs., Inc., 356 F.3d 1348, 1351 (Fed.Cir.2004) (citing Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1578 (Fed.Cir.1997)), we hold that the disclosure-dedication rule likewise presents a question of law, subject to de novo review.

B. Analysis

On appeal from the district court's findings, Toro makes three distinct arguments: (1) the district court erred in applying Johnson & Johnston because Toro did not intentionally decline to claim or deliberately leave unclaimed any disclosure of the structure of White's device; (...