Watts v. XL Systems Inc.

• Citation: 232 F.3d 877,56 USPQ2d 1836
• Decision Date: 14 November 2000
• Docket Number: PLAINTIFF-APPELLAN,DEFENDANT-APPELLEE,No. 99-1526,V,99-1526
• Parties: (Fed. Cir. 2000) JOHN D. WATTS,XL SYSTEMS, INC.,
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 877

232 F.3d 877 (Fed. Cir. 2000)

JOHN D. WATTS, PLAINTIFF-APPELLANT,

V.

XL SYSTEMS, INC., DEFENDANT-APPELLEE.

No. 99-1526

U.S. Court of Appeals, Federal Circuit

November 14, 2000

Appealed from: United States District Court for the Eastern District of Texas

James H. Riley, II, Shook, Hardy & Bacon L.L.P., of Houston, Texas, argued for plaintiff-appellant.

Charles B. Walker, Jr., Fulbright & Jaworski L.L.P., of Houston, Texas, argued for defendant-appellee. With him on the brief was Winstol D. Carter, Jr.

Before Bryson, Gajarsa, and Linn, Circuit Judges.

The opinion of the court was delivered by: Linn, Circuit Judge.

John D. Watts seeks review of a final decision of the District Court for the Eastern District of Texas. See Watts v. XL Systems, Inc., No. 97-CV-261 (E.D. Tex. July 15, 1999). The district court held on summary judgment that claims 2 and 18 of U.S. Patent No. 4,813,717 ("'717 patent") and claim 1 of U.S. Patent No. 5,143,411 ("'411 patent") were written in means-plus-function format and were not infringed by the products of XL Systems, Inc. ("XL"). See Watts, slip op. at 3-5. In light of this holding, the district court declined to address XL's alternative argument of invalidity, finding it moot. See id. at 5. We disagree with the district court's holding that the sealing limitation of the claims is in means-plus-function format, but nonetheless agree with the district court's judgment holding the claims in issue not infringed. Accordingly, we need not address XL's alternative argument of invalidity. ¹

BACKGROUND

Both the `717 patent and the `411 patent, as well as the accused products, are directed toward connecting sections of pipe together. Their primary application is in the oil well industry in which miles of pipe may need to be dropped into a hole. Such a pipe consists of a large number of sections, called joints, which are typically forty feet long and twenty inches wide and are connected together. The joints are commonly connected together in one of two ways. The first uses an integral connection in which the joints themselves have mating threads allowing the joints to be connected directly to each other. The second uses a coupling connection in which the joints still have threads, but are connected to a coupling which is disposed between two successive joints. The coupling has a much smaller length than the joint. The `717 and `411 patents disclose joints and couplings with increased sealing and strength characteristics to accommodate the large and varied forces to which oil well pipes are exposed.

Watts is the inventor of both the `717 patent and the `411 patent, which is a continuation-in-part of the `717 patent. This appeal concerns only claims 2 and 18 of the `717 patent and claim 1 of the `411 patent. Each of the three claims includes substantially the same two functional statements and these statements are the only limitations that the parties contest. The parties agree that claim 18 of the `717 patent is representative. Claim 18 reads as follows:

18. A high efficiency connection for joints of oilwell tubing or the like, comprising: at least two pipes joined together and forming joints of pipe, each joints of pipe having a first end with no increase in wall thickness relative to the average pipe wall thickness and formed with tapered internal threads; the joints each having a second end formed with tapered external threads dimensioned such that one such joint may be sealingly connected directly with another such joint; the threads being of sufficient length and taper such that the pipe wall strength of the first end in the area of the smallest diameter of thread engagement is at least three-fourths of the average pipe wall strength of the joints of pipe.

`717 patent, col. 8, ll. 6-18 (emphasis added). The first functional statement, as identified by the district court and the parties, is indicated above by underlining. The second functional statement is the text that follows the underlined portion.

The parties agreed to three stipulations regarding the allegedly infringing products. The parties stipulated that XL: (1) does not infringe any of the three claims when both of the functional statements are construed as means-plus-function limitations; (2) does not use differing taper angles between connecting pipe ends; and (3) does not use any structure that is insubstantially different from the use of differing taper angles.

The district court construed both of the functional statements to be means-plus-function limitations and held that they were limited to the disclosed embodiments. The district court held that in the alternative, if 35 U.S.C. §§ 112, paragraph 6 did not apply, both of the functional statements were limited by the specification and prosecution history to the disclosed embodiments. Based on its claim construction and the stipulations, the district court held that XL did not infringe any of the claims at issue. Watts appeals the district court's judgment. We have exclusive jurisdiction pursuant to 28 U.S.C. §§ 1295(a)(1) (1994).

DISCUSSION

A. Standard of Review

We review a district court's grant of summary judgment de novo, reapplying the standard applicable at the district court. See Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1301, 50 USPQ2d 1429, 1434 (Fed. Cir. 1999) (citing Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed. Cir. 1994)). Summary judgment is only appropriate when "there is no genuine issue as to any material fact and . . . the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). We draw all reasonable inferences in favor of the non-movant. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). The determination of infringement is a two-step process. First, this court construes the claims and, second, we compare the properly construed claims to the accused device. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454, 46 USPQ2d 1169, 1172 (Fed. Cir. 1998) (en banc).

B. Applicability of 35 U.S.C. §§ 112, paragraph 6

Section 112, paragraph 6 provides that "[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof." 35 U.S.C. §§ 112, para. 6 (1994). In Personalized Media Communications, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 48 USPQ2d 1880 (Fed. Cir. 1998), building upon a line of cases interpreting 35 U.S.C. §§ 112, paragraph 6, ² we stated that the failure to use the word "means" in a claim element created a rebuttable presumption that 35 U.S.C. §§ 112, paragraph 6 did not apply. See Personalized Media, 161 F.3d at 703-04, 48 USPQ2d at 1886-87. We also reiterated that in determining whether a presumption is rebutted, "the focus remains on whether the claim . . . recites sufficiently definite structure." Id. at 704, 48 USPQ2d at 1887. We noted, however, that the claim limitation need not "connote a precise physical structure." Id. at 705, 48 USPQ2d at 1888. The following year, we further clarified that the presumption that §§ 112, paragraph 6 did not apply could be rebutted by showing that the claim element recited a function without reciting sufficient structure for performing that function. See Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302, 50 USPQ2d 1429, 1434 (Fed. Cir. 1999) (explaining the converse rules for rebutting a presumption that §§ 112, paragraph 6 does apply). As an aid in determining whether sufficient structure is in fact recited by a term used in a claim limitation, this court has inquired into whether the "term, as the name for structure, has a reasonably well understood meaning in the art." Greenberg, 91 F.3d at 1583, 39 USPQ2d at 1786 (applying this test to the term "detent mechanism"). If §§ 112, paragraph 6 applies, then we follow the guidelines to claim construction specified in the statute: "such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. §§ 112, para. 6. If §§ 112, paragraph 6 does not apply, then our precedent for the construction of limitations that are not means-plus-function limitations is applied in the customary way.

In this case, in determining that the sealingly connected limitation ³ should be construed as a means-plus-function limitation, the district court stated that the limitation was "drafted as a function to be performed . . . rather than as a definite structure." Watts, slip op. at 4. Watts argues that the district court was wrong, contending first that because the sealingly connected limitation does not use the word "means," it is presumptively not a means-plus-function limitation. Next, Watts argues that the sealingly connected limitation is not purely functional because the claim describes a precise structure by reciting tapered internal and external threads. XL responds that the sealingly connected limitation is a means-plus-function limitation because it does not include structure capable of entirely performing the recited function. XL maintains that the tapered internal and external threads do not seal, but merely provide the location of the seal, and that the seal is created by misaligned taper angles. Finally, XL argues that public policy mandates that functional claims be restricted to the disclosed embodiments.

We hold that the sealingly connected limitation is not a means-plus-function limitation. First, the presumption applies that because the limitation does not recite the word "means" it is not a means-plus-function limitation. Second, the presumption is not rebutted because the claim limitation recites or refers to terms that are reasonably well understood in the art as names for structure and which perform the recited function of sealing. Specifically, the claim limitation recites "a second end formed with tapered external threads" and refers to "a first...