Welker Bearing Co. v. Phd, Inc.

• Decision Date: 15 December 2008
• Docket Number: No. 2008-1169.,2008-1169.
• Citation: 550 F.3d 1090
• Parties: WELKER BEARING COMPANY, Plaintiff-Appellant, v. PHD, INCORPORATED, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

550 F.3d 1090

WELKER BEARING COMPANY, Plaintiff-Appellant, v. PHD, INCORPORATED, Defendant-Appellee.

No. 2008-1169.

United States Court of Appeals, Federal Circuit.

December 15, 2008.

Jeffrey A. Sadowski, Howard & Howard Attorneys, P.C., of Bloomfield Hills, Michigan, argued for plaintiff-appellant. With him on the brief were Brad A. Rayle and Melanie T. Frazier.

D. Randall Brown, Barnes & Thornburg LLP, of Fort Wayne, Indiana, argued for defendant-appellee. With him on the brief were Dawn R. Rosemond and Gregory S. Cooper.

Before RADER, SCHALL, and PROST, Circuit Judges.

RADER, Circuit Judge.

The United States District Court for the Eastern District of Virginia granted summary judgment of noninfringement of Welker Bearing Co.'s U.S. Patent Nos. 6,786,478 ("'478 patent") and 6,913,254 ("'254 patent") in favor of PHD, Inc. Welker Bearing Co. v. PHD, Inc., 528 F.Supp.2d 683 (E.D.Mich.2007) ("SJ Opinion"). Because the district court correctly construed the critical claim element of the '254 patent as a means-plus-function limitation subject to 35 U.S.C. § 112 ¶ 6, and correctly found that PHD had not infringed the '478 patent after the issuance of that patent, this court affirms the district court's grant of summary judgment.

I

Welker Bearing's '478 and '254 patents, which share identical specifications, claim pin clamps that hold a work piece securely in place during welding and other manufacturing processes. The disclosed pin clamps feature a bullet-shaped locating pin (32 in Fig. 1A below) that is inserted into a hole in a work piece. Fig. 1B below shows the disclosed pin clamp holding a work piece in place. An actuator (52 in Fig. 1A) propels the locating pin through the hole in the work piece. As the locating pin slides through the work piece's hole, clamping fingers (60 in Fig. 1 B) emerge out of the pin clamp. These fingers hold the work piece firmly in place against an annular ring that sits below the locating pin. The actuator provides a clamping force between the fingers and the work piece.

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

On July 9, 2003 Welker Bearing filed the application that later issued as the '478 patent on September 7, 2004. Claim 1 of the '478 patent reads:

A locating and clamping assembly comprising:

a body defining an internal cavity and an opening from said cavity to the exterior of said body;

a locating pin disposed in said cavity and extending along an axis A out of said opening to a distal end;

an actuator for moving said locating pin rectilinearly along said axis A into and out of said opening;

at least one finger supported by said locating pin adjacent said distal end for movement radially into and out of said locating pin transversely to said axis A of said locating pin;

said assembly characterized by a mechanism for rotating in response to said rectilinear movement of said locating pin for moving said finger radially.

'478 patent col.7 l.60-col.8 l.7 (emphasis added). This claim explicitly requires a rotational movement mechanism for extending and retracting the fingers. However, the PTO allowed the claims of the '478 patent without any focus on rotational movement as a required limitation for allowance over the prior art. Welker Bearing took the PTO's lack of comment on the rotational characteristic as an invitation to file a continuation application with broader claims. These later claims recite a finger mechanism that does not explicitly include rotational movement. This '254 patent issued on July 5, 2005. Claim 1 of the '254 patent reads:

A locating and clamping assembly comprising:

a body defining an internal cavity and an opening from said cavity to the exterior of said body;

a locating pin disposed in said cavity and extending along an axis A out of said opening to a distal end an actuator for moving said locating pin rectilinearly along said axis A into and out of said opening;

at least one finger supported by said locating pin adjacent said distal end;

said assembly characterized by a mechanism for moving said finger along a straight line into and out of said locating pin perpendicular to said axis A in response to said rectilinear movement of said locating pin.

'254 patent col.8 ll.12-25 (emphasis added).

II

Before the district court, Welker Bearing accused two PHD products, the "Clamp I" and "Clamp II" devices, of infringement. The chronology of PHD's development of its Clamp I and II devices is relevant to this appeal. In early 2004, PHD engaged in discussions with General Motors ("GM") regarding the design of a new pin clamp for its assembly lines. At one meeting, PHD officials met with GM officials in a GM room where one of Welker Bearing's pin clamps was on display. The parties dispute whether PHD saw the internal workings of Welker Bearing's clamp at that time. Later, PHD developed prototypes of its Clamp I device, which uses a rotational mechanism to move clamping fingers into and out of the pin clamp.

In October 2004, shortly after the September 7, 2004 issuance of the '478 patent, Welker Bearing learned from GM that PHD had developed the Clamp I device. Soon thereafter, Welker Bearing notified PHD in writing that it believed Clamp I infringed the '478 patent. Officials from the two companies met to discuss the dispute in November 2004. PHD asked for a license to sell Clamp I. Welker Bearing refused. After this meeting, PHD developed a modified design, Clamp II, which lacks a rotating central post for moving clamping fingers in and out of the locating pin.

The '254 patent, without explicit language about rotational finger movement, issued on July 5, 2005. Welker Bearing filed suit against PHD on July 25, 2006, asserting infringement of both the '478 and '254 patents. Before the district court, Welker Bearing conceded that Clamp II does not infringe the '478 patent because it lacks a rotational mechanism for clamping fingers. Thus, the trial court limited its inquiry to Clamp I's possible infringement of the '478 patent and Clamp II's possible infringement of the '254 patent.

With regard to the '478 patent, the district court determined that the record did not show that PHD made, used, sold, or offered for sale the Clamp I device at any time after issuance of the patent. SJ Opinion at 706-07. Thus, it awarded summary judgment of noninfringement to PHD on the '478 patent. Id. at 709. With regard to the '254 patent, the district court construed claim 1's "mechanism for moving said finger" as a means-plus-function limitation. As a means-plus-function claim element, this limitation thus required a corresponding structure in the specification for its broad functional language. The only structure for this mechanism was the rotating central post identified in Column 6 of the written description. Id. at 699. Because PHD's Clamp II device lacks such a rotating central post, the district court granted summary judgment of noninfringement of the '254 patent. Id. at 705-06. Welker Bearing now appeals those rulings. This court has jurisdiction under 28 U.S.C. § 1295.

III

This court reviews a district court's grant of summary judgment without deference. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575 (Fed.Cir.1994). Summary judgment is appropriate only "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R.Civ.P. 56(c). In reviewing a summary judgment ruling, this court draws all reasonable inferences in favor of the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

"[The patentee] may of course obtain damages only for acts of infringement after the issuance of the [] patent. ..." Hoover Group, Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 304 (Fed.Cir. 1995). "Mere possession of a product which becomes covered by a subsequently issued patent does not constitute an infringement of that patent until the product is used, sold, or offered for sale in the United States during the term of the patent." Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1366 (Fed.Cir.1998).

The record does not contain any evidence that PHD engaged in any activity that infringed the '478 patent after September 7, 2004 (the day the '478 patent issued). Instead the record shows that PHD only created around ten prototype units of the Clamp I device. Although PHD provided GM one of these sample units for assessment some time in late 2003 or early 2004, that prototype never entered production or commercial use. The record is also devoid of any evidence that PHD ever sold any units to GM at any time.

Welker Bearing's only theory for infringement of the '478 patent was that "[PHD] had an affirmative duty at the point in time the patent issued to take the product off the market and they didn't do that." Summ. J. Tr. 59:3-5, Nov. 29, 2007. The record, however, presents no admissible evidence to show that PHD continued to offer its product for sale (to the extent it ever was for sale) beyond September 7, 2004. Moreover, PHD did not have any burden to prove it retracted any putative offer for sale. Rather the burden remains with the patentee to prove infringement, not on the defendant to disprove it. In any event, this court observes that the district court properly concluded, "Defendant's flat denial, backed by evidence, of any commercial activity after September 7, 2004 stands uncontradicted by anything in the record." SJ Opinion at 708. For that reason, this court holds that the district court did not err in granting summary judgment of noninfringement of the '478 patent.

IV

The district court construed the "mechanism for moving said finger" limitation in claim 1 of the '254 patent as a means-plus-function limitation subject to 35 U.S.C. § 112 ¶ 6. The district court's claim construction is a question of law reviewed without...