Federal Circuit Affirms Claim Construction Of Product Characteristic As Structural Limitation Obtained Through Manufacturing Process.

In Gemtron Corp. v. Saint-Gobain Corp., 572 F3d 1371; 91 USPQ2d 1409 (Fed. Cir. 2009), Gemtron is the assignee of two patents related to refrigerator shelves: U.S. Patent No. 6,679,573 (the 573 patent) and U.S. Patent No. 6,422,673 (the 673 patent). The 573 patent issued from a divisional of the application that issued as the 673 patent, and the two patents share a common specification. The refrigerator shelf disclosed in the 573 patent consists of two pieces—“a one-piece open frame” made of plastic, and a glass panel.  The panel is secured to the frame using “relatively resilient” fingers such that the glass panel is “snap-secured” into place (unlike prior art shelves that utilized adhesives).  The specification of the 573 patent teaches that avoiding adhesives is desirable for efficiency and cost purposes during manufacturing.  The specification also includes a description of the way in which the glass panel is inserted into the frame when the shelf is assembled.  Basically, the fingers on the frame bend up as the glass panel is being inserted into the frame, and then snap back into their original position to secure the glass.

In 2004, Saint-Gobain sued Gemtron, seeking a declaratory judgment of non-infringement and invalidity of the 573 and 673 patents.  Gemtron counterclaimed for infringement.  The only claim at issue in the appeal is claim 23 of the 573 patent, which recites the refrigerator shelf “including a relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure one of said glass piece front and rear edges in the glass piece edge-receiving channel.”  Saint-Gobain admitted that its model SG1, SG2 and SG3 shelves met all of the limitations of claim 23, except the term at issue.  The District Court construed the claim term in contention to mean that “the end edge portion is sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame.”

The parties moved for partial summary judgment concerning the infringement by the Saint-Gobain shelves, each with expert testimony.  Gemtron’s expert testified that when the accused shelves were heated, it was possible to insert the glass panel of each shelf into the frame by snap-securing the panel into the receiving channel of the frame.  Saint-Gobain’s expert testified that at room temperature, the frame was not sufficiently flexibly to allow insert of the glass.  The District Court did not find any factual dispute from this testimony, given the different conditions for each test.  The District Court held that infringement was established by the undisputed evidence that the glass panel could be snap-secured into the frames of the accused shelves during manufacture, when the frames were still warm.  Thus, partial summary judgment of infringement of claims 23-30 of the ’573 patent by the SG1, SG2, and SG3 shelves was granted.

After the resolution of a discovery dispute, Gemtron identified additional Saint-Gobain shelves as potentially infringing claim 23.  Saint-Gobain’s SG16 shelf was selected as representative of all remaining accused shelves for trial purposes.  At trial, Gemtron presented a video showing its expert heating the frame of the SG16 shelf and snap-securing the glass panel into the frame.  Gemtron also introduced evidence of Saint-Gobain’s manufacturing process, including instructions for assembling the Sg16 shelf in Saint-Gobain’sMexicoplant.  The jury returned a verdict that the patent was not invalid and the SG16 shelf infringed claim 23 of the 573 patent.  The District Court denied Saint-Gobain’s post-trial motions for a new trial and JMOL, entered judgment in Gemtron’s favor and granted and stayed a permanent injunction.  Saint-Gobain appealed.

Saint-Gobain argues that the district court’s construction of “relatively resilient” was incorrect, and that the district court erred by granting summary judgment of infringement, by denying Saint-Gobain’s motion for judgment as a matter of law on infringement, by denying Saint-Gobain’s motion for judgment as a matter of law on obviousness, and by denying Saint-Gobain’s motion for a new trial.

Claim Construction of “relatively resilient”

The Federal Circuit reviewed the issue of claim construction de novo, to determine the ordinary and customary meaning of the undefined claim term as understood by a person of ordinary skill in the art at the time of the invention.  Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). The Court determined the ordinary and customary meaning of undefined claim terms as understood by a person of ordinary skill in the art at the time of the invention, using the methodology in Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc). “[T]he court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean. Those sources include the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at 1314.

The only claim term at issue was “relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure.” The district court construed this term to mean that “the end edge portion is sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame. (emphasis added). Saint-Gobain argued that the term should have been construed to mean that “the end edge portion is sufficiently flexible to permit the glass in the finished product to be pushed out of the frame and pushed back into the frame.” (emphasis added). Saint-Gobain asserted that “relatively resilient” should specifically not mean “temporarily resilient immediately after cooking in an oven and before any opportunity to cool.” Gemtron agreed with the district court’s construction.  Although the parties agreed that the limitation required the frame to be flexible at some point in time, they disagreed about precisely when the frame must be flexible to be “relatively resilient.”

The Federal Circuit found that neither party identified any prosecution history or extrinsic evidence bearing on the claim construction issue.  Thus, the Court limited its analysis to the claim language and the specification of the 573 patent.  The Court noted that claim 23 itself had no express temporal or temperature limitation requiring that the end edge portion be relatively resilient “always,” or “at all temperatures,” or “when in use in a refrigerator.” Further, the Federal Circuit observed that the claim did not merely claim a frame with an end edge portion that was “relatively resilient.”  Rather, the claim recited a frame with a “relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure one of [the] glass piece front and rear edges in the glass piece edge-receiving channel.” The Court held that the phrase “temporarily deflects and subsequently rebounds to snap-secure” suggested that the claimed resilience of the frame need only be exhibited during assembly because the “snap-secure” interaction of the frame and glass panel, facilitated by the “relatively resilient end edge portion,” was a characteristic of the shelf that was maintained even after assembly in the claimed shelf.  Citing to In re Garnero, the Federal Circuit asserted that the characteristic was a structural attribute, even though the claim language ties the “relatively resilient” characteristic of the frame’s edge portion to its function in the assembly of the shelf.  In re Garnero, 412 F.2d 276, 279 (CCPA 1969).

The Federal Circuit noted that the specification also focused on the characteristics of the frame that enable snap-secure assembly of the shelf.  Specifically, the specification described the structure of prior art shelves in reference to their assembly.  Further, the specification characterized all of the prior art as disclosing a shelf assembled using adhesive to bond the edge of the glass to the frame.  Further, the specification stressed the advantages in the manufacturing and assembly process of the claimed structure due to its snap-secure assembly.  The Court noted that every time the structure of the “relatively resilient” edge portions was mentioned in the specification, it was in the context of how that structure functions while the shelf is assembled.  The specification failed to discuss any purpose or value of the “relatively resilient” edge portion of the frame other than in assembly of the shelf.  The Court held that the specification indicated that the end edge portions of the frame were “relatively resilient” if they were able to deflect at the time the shelf was assembled, to “snap-secure” the glass panel within the frame.  Thus, the Federal Circuit affirmed the District Court’s construction of “relatively resilient” in claim 23 to mean that the end edge portion must be sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame.

Saint-Gobain argued that this construction requiring only that the frame deflect during assembly transforms the “relatively resilient” limitation of claim 23 into a product-by-process limitation.  The Federal Circuit rejected this argument, asserted that the limitation only required that the glass panel be snap-secured into the frame.  The Court held that snap-secure describes the structural relationship between the glass panel and the shelf frame.  The Federal Circuit then provided a plethora of parentheticals asserting that if a limitation can be connoted by both structure and process, the default is to construe it as structural if it describes the product more by its structure.  3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003); Hazani v. U.S. Int’l Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997); In re Garnero, 412 F.2d at 279; Eric P. Mirabel, Product-By-Process Claims: A Practical Perspective, 68 J. Pat. & Trademark Off. Soc’y 3, 4-7 (1986).  The Court held that defining a structural component by its function as well as its physical characteristics is different from defining a structure solely by the process by which it is made. Thus, the Federal Circuit’s construction did not transform the “relatively resilient” limitation into a product-by-process limitation.

Infringement

The Federal Circuit noted that nowhere at summary judgment or trial did Saint-Gobain dispute that, during the manufacturing process for the accused shelves, when the glass is inserted into its frame, the frame is at a temperature such that it can temporarily deflect and subsequently rebound. At oral argument, Saint-Gobain did claim that its products were assembled using a “heat-shrink process,” and it denied that, during manufacture, the frame is “resiliently flexed to snap over the glass.” However, the Court found that the oral argument was directly contradicted by the video evidence of Saint-Gobain’s manufacturing process admitted at trial, which clearly shows that, during Saint-Gobain’s manufacturing process, while the frame is still warm from the molding process, the frame is pushed and temporarily deflected to accommodate the glass panel, then rebounded to snap-secure the glass in the frame.  The Federal Circuit rejected Saint-Gobain’s unsworn attorney argument to the contrary, and citing Laitram Corp. to assert that it was not evidence and could not rebut the video and other admitted evidence about Saint-Gobain’s manufacturing process. Laitram Corp. v. Cambridge Wire Cloth Co., 919 F.2d 1579, 1583 (Fed. Cir. 1990).

Saint-Gobain next argued that the accused shelves could not be infringing because they were manufactured in Mexico.  When the shelves were imported into the United States, the frames had cooled and were no longer flexible. Saint-Gobain asserted that the accused shelves as imported and sold in the United Stateshad to be modified, by heating them, to meet the “relatively resilient” limitation.  The Federal Circuit rejected this argument.  It noted that claim 23 was directed to an apparatus, not a process.  The Court held that, under 35 U.S.C. § 271(a), an accused infringer infringes an apparatus claim if it “makes, uses, offers to sell, or sells” the claimed apparatus “within the United States,” or “imports [the apparatus] into the United States.” Thus, the Court held that the infringing act only (making, using, offering to sell, selling, or importing) must be within (or into) the United States.  The Court cited In re N. Pigment Co. for the proposition that even if the infringing product was manufactured outside of the U.S., importing the product, or using, offering to sell, or selling the product in the U.S. would constitute infringement.  In re N. Pigment Co., 71 F.2d 447, 456 (CCPA 1934).

The Federal Circuit held that the term “relatively resilient” required merely that the frame of the shelf had the structural characteristic of having been temporarily deflected and subsequently rebounded to snap-secure the glass at the time of manufacture. The Court noted that Saint-Gobain did not dispute that it had imported the accused shelves, and used and sold them, in the U.S.The Court stated that the end portions of the frames of those shelves were “relatively resilient,” as that phrase is used in claim 23, and met all of the limitations of claim 23.  The Court failed to see any genuine issues as to any material fact as to infringement by the SG1, SG2, and SG3 shelves, and held that Gemtron was entitled to a judgment as a matter of law that those shelves infringed claim 23 of the 573 patent.  Further, the Court asserted that substantial, undisputed evidence supported the jury verdict of infringement.  Thus, the Federal Circuit affirmed the district court’s  grant of summary judgment of infringement, its denial of Saint-Gobain’s motion for judgment of non-infringement as a matter of law, and its denial of Saint-Gobain’s motion for a new trial on infringement.

Validity

The Federal Circuit reviewed the denial of judgment as a matter of law de novo, and the denial of Saint-Gobain’s motion for a new trial for abuse of discretion. Voda, 536 F.3d at 1318; Imwalle, 515 F.3d at 543; Morgan, 559 F.3d at 434.  The Court asserted that Saint-Gobain’s appeal of both motions was based on a single argument that the only evidence of non-obviousness (testimony from Gemtron’s expert) should have been excluded as contrary to the 573 specification.  Gemtron’s expert testified that a person of ordinary skill in the art would not have expected that the claimed flexible frame could be used in a shelf that would support food loading.  

The Federal Circuit dismissed this argument for two reasons.  First, the Court held that Saint-Gobain did not seek to exclude or strike the expert’s testimony at trial, thus waiving the issue on appeal.  Curcuru v. Peninsular Elec. Light Co., 258 F. 785, 790 (6th Cir. 1919). Second, the Court asserted that a shelf capable of supporting food loading was not directly contrary to the 573 patent.  The Court agreed with Saint-Gobain that the specification of the ’573 patent expressly described the ribs of the refrigerator compartment providing support to the shelf to prevent the frame from bending and allowing the glass to fall out.  However, the Court held that the context of the specification allowed for the shelf alone to support food loading, with the ribs provided as additional support to prevent inadvertent distortion of the frame.  Thus, the Court found that the specification did not contradict Gemtron’s expert testimony that the shelf of the 573 patent was able to support food loading.  The expert testimony thus provided substantial evidence that a person of ordinary skill in the art would not have expected the results of the combination recited in claim 23. The Federal Circuit held that the district court did not err by denying Saint-Gobain’s motion for judgment as a matter of law, nor did it abuse its discretion by denying Saint-Gobain’s motion for a new trial.

The Federal Circuit affirmed the district court’s construction of the claim term “relatively resilient end edge portion” to mean that the end edge portion is sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame. Applying this construction, the Federal Circuit further affirmed the district court’s grant of summary judgment, its denial of Saint-Gobain’s post-trial motions as to both infringement and validity, and its grant of a permanent injunction.

Significance to Patent Applicants

Gemtron Corp. demonstrates the importance of the specification in defining relative claim terms.  In Gemtron Corp., the relative term “relatively resilient” was defined in the specification relative to both the time (time of manufacture) and amount (the amount of resiliency), which provided the necessary coverage.  Further, merely because the relative claim term relies on processes for in the specification does not convert the relative term to a product by process limitation, but instead the process is used to define the structural element itself.   Thus, when relative claim terms are to be used, it is important to ensure that an accurate description is included in the specification to anchor the claim term to something which can be defined (and preferably using multiple examples) since it is this description which will be used to define the metes and bounds of the relative term.

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