Federal Circuit Uses Background of the Invention to Disclaim Claim Scope

In SafeTCare Manufacturing Inc. v. Tele-Made Inc., 83 U.S.P.Q.2d 1618 (Fed. Cir. 2007), SafeTCare owns U.S. Patent No. 6,357,065 (the ‘065 patent), which is drawn to a variable width bariatric modular bed for use with obese hospital patients.  In order to move bed sections, a force is applied to a lift dog, which the court recognized as a term of art relating to a bracket attached to a movable deck assembly or lift assembly.  In the Background section of the specification, the ‘065 patent discusses how the prior art uses “electric motors [that] are known to apply a pulling force on structural members attached to the bed frame.”  By way of contrast, the ‘065 patent in the Summary of the Invention describes motors which “apply pushing forces against the lift dogs” and that the electric motors use “pushing (as opposed to pulling) forces applied by the electric motors to raise the frame and the mattress support deck.”  The specification also includes statements in the Detailed Description noting that “an important feature of the present invention” utilizes motors which “apply pushing forces against their respective lift dogs.”  Consistent with this description, claim 12 of the ‘065 recites “a plurality of electric motors … for exerting a pushing force on said plurality of deck sections.”

Tele-Made sells a bariatric hospital bed named the Tri-flex II, which is manufactured by Burke, Inc.  The Tri-flex II includes moveable bed panels that rotate upward relative to the bed frame similarly to the claimed bariatric bed and uses multiple electric motors.  However, only one of the motors exerts a pushing force to achieve this upward motion.  The other motor exerts a pulling force, which through various other members of the bed results in the upward motion of the foot section. 

SafeTCare filed suit in the Southern District of Texas against Tele-Made asserting that the Tri-flex II infringed claim 12.  During the Markman hearing, the District Court found that the recited “pushing force” of claim 12 was a “physical force applied in a direction away from the body exerting it.”  Based upon this construction, Tele-made filed a motion for summary judgment for non-infringement since the Tri-flex II lacked multiple motors applying a pushing force.  The District Court granted the summary judgment.

On appeal, SafeTCare argued that the other motor, which resulted in the upward motion, also exerted a pushing force as defined by the claimed invention.  In affirming the District Court’s decision, the Federal Circuit quoted Phillips v. AWH Corp., 415 F.3d 1303, 1315-16 (Fed. Cir. 2005)(en banc) for the proposition that the specification “is the single best guide for the meaning of a disputed term” and “may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor.”  In reviewing the specification, the Federal Circuit found that the specification disavowed claim scope to cover motors which exert a pulling force, even where the pulling force otherwise resulted in a same upward motion for the bed panel which the claimed invention obtains through pushing.  Specifically, the Federal Circuit found that the multiple disclosures and comparison of pushing versus pulling on the lift dogs made “clear that this attribute of the invention is important in distinguishing the invention over the prior art.”  As such, the inventors’ disavowal of pulling motors in the specification limited the literal scope of the claims such that the Tri-flex II bed was not infringing.

For similar reasons, the Federal Circuit relied on its prior decision in Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 13612 (Fed Cir. 2006) that this disavowal also prevented infringement under the doctrine of equivalents.  As such, the Federal Circuit affirmed the District Court’s decision of no infringement under the doctrine of equivalents.

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