Thus, switching costs could prevent a defecting customer from
returning, even if the deal were otherwise favorable.
I. False Patent Marking
The EX 3000 OCD, through its instruction booklet, is marked
with U.S. Patent Number 5,755,224,*fn729 but the EX 3000 does
not use the technology of the `224 Patent*fn730 because it lacks
an integral regulator.*fn731 Patent numbers are marked on a
device to apprise people that it contains proprietary
technology*fn732 and to indicate that the patent discloses and
claims the device that is marked with that patent.*fn733
CONCLUSIONS OF LAW
II. JURISDICTION AND VENUE
This Court has jurisdiction over this matter pursuant to
28 U.S.C. § 1331, 1332(a), and 1338(a). Venue is proper in this
Court pursuant to 28 U.S.C. § 1391(c). The United States Court of
Appeals for the Federal Circuit has jurisdiction over any appeals
arising from this case, and thus Federal Circuit decisional law
is binding on this court as to substantive matters. Hybritech
Inc. v. Abbott Labs., 849 F.2d 1446, 1451 n. 12, 7 U.S.P.Q.2d
1191 (Fed. Cir. 1988); Smith Int'l, Inc. v. Hughes Tool Co.,
718 F.2d 1573, 1579, 219 U.S.P.Q. 686 (Fed.Cir. 1983).
III. STANDARDS FOR ISSUING A PRELIMINARY INJUNCTION
The patent statute, specifically at 35 U.S.C. § 283, states
that "[t]he several courts having jurisdiction of cases under
this title may grant injunctions in accordance with the
principles of equity to prevent the violation of any right
secured by patent, on such terms as the court deems reasonable."
A "preliminary injunction is not to be routinely granted." High
Tech Medical Instrumentation, Inc. v. New Image Indus., Inc.,
49 F.3d 1551, 1554, 33 U.S.P.Q.2d 2005 (Fed.Cir. 1995). Accordingly,
such relief must be thoroughly justified. Polymer Techs., Inc.
v. Bridwell, 103 F.3d 970, 977, 41 U.S.P.Q.2d 1185 (Fed.Cir.
1996).*fn734 The party moving for a preliminary injunction must
demonstrate "four factors: (1) a reasonable likelihood of success
on the merits; (2) irreparable harm if the injunction were not
granted; (3) the balance of the hardships; and (4) the impact of
the injunction on the public interest." Bridwell, 103 F.3d at
973; Hybritech, 849 F.2d at 1451; see also T.J. Smith &
Nephew, Ltd. v. Consol. Med. Equip., Inc., 821 F.2d 646, 647, 3
U.S.P.Q.2d 1316 (Fed. Cir. 1987); Roper Corp. v. Litton Sys.,
Inc., 757 F.2d 1266, 1269, 225 U.S.P.Q. 345 (Fed.Cir. 1985).
No one of the four factors predominates. Rather, the court
should weigh all the various factors in relation to each other.
Hybritech, 849 F.2d at 1451; Smith Int'l, 718 F.2d at 1579.
Although no one factor is dispositive, the absence of a
sufficient showing as to any one may, depending on the
circumstances, preclude preliminary injunctive relief. See
Bridwell, 103 F.3d at 973-74.*fn735 No injunction, however, can
issue without a threshold showing on the first
two factors, likelihood of success on the merits and irreparable
harm. See Vehicular Tech. Corp. v. Titan Wheel Int'l, Inc.,
141 F.3d 1084, 1088, 46 U.S.P.Q.2d 1257 (Fed.Cir. 1998).
In a patent infringement case, likelihood of success on the
merits requires a showing that, in light of the presumptions and
burdens that will inhere at trial on the merits, it will likely
prove three components: title to the patent, infringement and
validity. First, the patentee must show that it has title to the
patent-in-suit. Film-Tec Corp. v. Allied-Signal, Inc.,
939 F.2d 1568, 1572-73, 19 U.S.P.Q.2d 1508 (Fed. Cir. 1991). Second, the
patentee must show that the patent is infringed. See Vehicular
Tech., 141 F.3d at 1088; Reebok Int'l Ltd. v. J. Baker, Inc.,
32 F.3d 1552, 1555-56, 31 U.S.P.Q.2d 1781 (Fed.Cir. 1994)
(citing Hybritech, 849 F.2d at 1451); Conair Group, Inc. v.
Automatik Apparate-Maschinenbau GMBH, 944 F.2d 862, 865, 20
U.S.P.Q.2d 1067 (Fed.Cir. 1991) ("Demonstrating a probability of
success on the merits includes the requirement that the patentee
make a showing of a likelihood of proving infringement."); Atlas
Powder Co. v. Ireco Chemicals, 773 F.2d 1230, 1233, 227 U.S.P.Q.
289 (Fed.Cir. 1985). Third, a patent holder must also show that
the patent is valid. See Vehicular Tech., 141 F.3d at 1088;
Reebok, 32 F.3d at 1555-56; Hybritech, 849 F.2d at 1451.
A showing of likelihood of success on the issue of infringement
requires a comparison of the allegedly infringing device with the
properly construed patent claims. Lund Indus., Inc. v. GO
Indus., Inc., 938 F.2d 1273, 1275, 19 U.S.P.Q.2d 1383 (Fed. Cir.
1991); Hybritech, 849 F.2d at 1455 ("Analysis of literal
infringement is a two-step process. First, the district court
must determine the scope of the patent claims. . . . Second, the
district court must determine whether properly interpreted claims
encompass the accused structure."). If any element of the
asserted claim(s) is missing from the accused device, there is no
likelihood of success sufficient to support a preliminary
injunction. See, e.g., High Tech, 49 F.3d at 1555-56 (reversing
grant of preliminary injunction where element of claim was
missing from accused device).
The patent owner fails to make a sufficient showing if the
accused infringer raises a "substantial question" regarding
ownership, infringement, validity, and enforceability. The
movant's burden after rebuttal of these elements is to show that
defendant's arguments "lack substantial merit." See Genentech,
Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364, 42 U.S.P.Q.2d
1001 (Fed.Cir. 1997); New England Braiding Co. v. A.W.
Chesterton Co., 970 F.2d 878, 883, 23 U.S.P.Q.2d 1622 (Fed.Cir.
1992). If the accused infringer asserts a defense, and the patent
owner cannot show that that defense lacks substantial merit, a
preliminary injunction should not issue. See Genentech, 108
F.3d at 1364.
If a patent holder makes a "clear showing" of ownership,
validity, enforceability, and infringement, the Court may presume
irreparable harm. Roper, 757 F.2d at 1271-72; Smith Int'l,
718 F.2d at 1581. If the patentee does not make such a clear
showing but can establish only a "reasonable" likelihood of
success on the merits, then he also must make a separate showing
of irreparable injury. See Roper, 757 F.2d at 1272 & n. 5.
Where the presumption of irreparable harm applies, it may not be
rebutted by the mere fact that the plaintiff's injuries are fully
compensable in money damages. Bridwell, 103 F.3d at 975-76.
This is so because a patent's value lies in the right it confers
upon a patent holder to exclude others from infringing the
invention. Smith Int'l, 718 F.2d at 1581.*fn736
IV. LIKELIHOOD OF SUCCESS ON THE MERITS
Patents have the attributes of personal property and can be
assigned by an instrument in writing. 35 U.S.C. § 261. A patentee
shall have a remedy by civil action for infringement.
35 U.S.C. § 281. Standing is proper if a party comes "forward with the
requisite evidence necessary to establish that an assignment, in
writing, of the Intellectual Property took place before the
lawsuit was filed." GAIA Techs., Inc. v. Reconversion Techs.,
Inc., 93 F.3d 774, 780, 39 U.S.P.Q.2d 1826, 41 U.S.P.Q.2d 1134
(Fed.Cir. 1996), mandate withdrawn, amended on reh'g on other
grounds, 104 F.3d 1298 (Fed.Cir.), on reh'g, 132 F.3d 52, 1997
WL 748148 (Fed.Cir. 1997) (TABLE, text in WESTLAW at 1997 WL
748148, LEXIS/NEXIS at 1997 U.S. App. LEXIS 34893).
Assignments of patent rights are governed by 35 U.S.C. § 261,
which states, in pertinent part, that "[a]pplications for patent,
patents or any interest therein, shall be assignable in law by an
instrument in writing." Section 261 further provides that "[a]n
assignment, grant or conveyance shall be void as against any
subsequent purchaser or mortgagee for a valuable consideration,
without notice, unless it is recorded in the Patent and Trademark
Office within three months from its date or prior to the date of
such subsequent purchase or mortgage." "The recording of a
document . . . is not a determination by the Office of the
validity of the document or the effect that document has on the
title to an application, a patent, or a registration."
37 C.F.R. § 3.54. Thus, the mere fact that Sunrise recorded what purports
to be an assignment document does not mean, without more, that
the assignment was valid or transferred title to the patent.
AirSep argues that there was a break in the chain of title at
CryO2 Corporation because no entity assigned the rights, title or
interest in and to the `303 Patent to CryO2 Corporation, even
though CryO2 purported to transfer the `303 Patent to DOC
Technologies. According to AirSep, the issue of whether Sunrise
has title to the `303 Patent turns on whether the two 1991 nunc
pro tunc assignments, one from Kircaldie, Randall & McNab to DOC
Technologies, Inc. and the other from Dr. Gerald Durkan to DOC
Technologies, Inc. are valid. AirSep contends that such nunc pro
tunc agreements are invalid and do not work to transfer any
right, title or interest to patents; hence, it claims, Sunrise
does not own any right, title or interest to the `303 Patent. If
the nunc pro tunc agreement is invalid, AirSep asserts, DOC
Technologies never owned, and Sunrise cannot now own, the `303
Patent. Accordingly, Sunrise would have no standing to bring the
instant action for infringement of that patent.
Nunc pro tunc agreements entered into after the commencement
of litigation are invalid and do not work to confer standing
retroactively. Gaia, 93 F.3d at 779 ("The only possible saving
grace for Gaia is the nunc pro tunc assignment of patent and
trademark rights that was executed on October 24, 1994, but was
made effective as of August 4, 1991, prior to Gaia's filing of
the instant suit. . . . This agreement is not sufficient to
confer standing on Gaia retroactively.").*fn737 On the other
hand, a nunc pro tunc assignment filed before the filing date
of the action with an effective assignment date before the action
does effect a valid transfer of rights sufficient to confer
standing. Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206,
1211, 48 U.S.P.Q.2d 1010 (Fed.Cir. 1998); Gaia, 93 F.3d at
779-80 (Fed.Cir. 1996) (quoting Procter & Gamble, 917 F. Supp.
Here, it is clear from the record that the nunc pro tunc
assignments were executed in 1991, dkt. no. 84, at 32, long
before this suit was filed in 1999. There is therefore nothing
invalid about the assignments and no gap in the chain of title of
the `303 patent. Accordingly, Sunrise, as the assignee of the
`303 and `224 patents, has standing to pursue a civil remedy for
patent infringement against AirSep.
1. Claim Construction Principles
a. General Precepts
Claim interpretation is an issue of law to be resolved by the
court. Markman v. Westview Instruments Inc., 517 U.S. 370, 372,
390-91, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 U.S.P.Q.2d 1461
(1996). In interpreting a particular claim, the court first
examines the intrinsic evidence of record. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582, 39 U.S.P.Q.2d 1573
(Fed.Cir. 1996). In so doing, a court should review the
specification and claims of the patent itself, as well as the
prosecution history. Id. A court is to consider these intrinsic
items as the most significant sources in interpreting claim
language. Id. Therefore, the language of the claim itself is
reviewed first. Next, the claims are analyzed in view of the
patent specification. Claims are to be interpreted in view of the
specification of the patent. Id.
In construing patent claims, its terms are generally given
their ordinary and accustomed meaning, unless a particular term
of a patent claim has been given a special meaning by the
patentee, in which case that meaning shall be ascribed to the
particular term. Id. The specification of the patent is highly
relevant, and usually dispositive, in a claim construction
analysis of the meaning of a disputed term. Id. The court also
must ascribe to any technical term used in a claim "the meaning
that it would be given by persons experienced in the field of the
invention, unless it is apparent from the patent and the
prosecution history that the inventor used the term with a
different meaning." Hoechst Celanese Corp. v. BP Chemicals,
Ltd., 78 F.3d 1575, 1578, 38 U.S.P.Q.2d 1126 (Fed. Cir. 1996).
Moreover, in analyzing claim language, the court must employ
"normal rules of syntax," Eastman Kodak Co. v. Goodyear Tire &
Rubber Co., 114 F.3d 1547, 1553, 42 U.S.P.Q.2d 1737 (Fed.Cir.
1997), overruled on other grounds, Cybor Corp. v. FAS Tech.,
Inc., 138 F.3d 1448, 46 U.S.P.Q.2d 1169 (Fed.Cir. 1998) (en
because "[a] claim must be read in accordance with the precepts
of English grammar," In re Hyatt, 708 F.2d 712, 714, 218
U.S.P.Q. 195 (Fed.Cir. 1983). Finally, "[w]here there is an equal
choice between a broader and a narrower meaning of a claim, and
there is an enabling disclosure that indicates that the applicant
is at least entitled to a claim having the narrower meaning, . .
. the notice function of the claim [is] best served by adopting
the narrower meaning." Athletic Alternatives, Inc. v. Prince
Mfg., Inc., 73 F.3d 1573, 1581, 37 U.S.P.Q.2d 1365 (Fed.Cir.
The Federal Circuit has explained that the specification acts
as a dictionary when it expressly defines terms used in the
claims or when it defines terms by implication. As the court has
"repeatedly stated, claims must be read in view of the
specification, of which they are a part." Vitronics, 90 F.3d at
1582 (citation and internal quotation marks omitted). The
specification contains a written description of the invention
which must be clear and complete enough to enable those of
ordinary skill in the art to make and use it. Thus, the
specification is always relevant to the claim construction
analysis. "Usually, it is dispositive; it is the single best
guide to the meaning of the disputed term." Id. Further, "a
claim interpretation that would exclude the inventor's device is
rarely a correct interpretation; such an interpretation requires
highly persuasive evidentiary support. . . ." Modine Mfg. Co. v.
United States Int'l Trade Comm'n, 75 F.3d 1545, 1550, 37
U.S.P.Q.2d 1609 (Fed.Cir. 1996).
The prosecution history of a patent contains the complete
record of all the proceedings before the PTO, "including any
express representations made by the applicant regarding the scope
of the claims." Vitronics, 90 F.3d at 1582. The prosecution
history, therefore, "is often of critical significance in
determining the meaning of th[ose] claims." Id.
Only in circumstances where there is some genuine ambiguity in
the meaning of a term in the claims after examination of all
available intrinsic evidence is examination of extrinsic evidence
permissible. Vitronics, 90 F.3d at 1584.*fn738 In most cases,
review of the intrinsic evidence will suffice and extrinsic
evidence need not be examined. Id. at 1583. In using extrinsic
evidence, the Federal Circuit has indicated that sources
available to the public prior to litigation are preferred to
testimony or evidence created for or in anticipation of the
litigation. Even when permissible, extrinsic evidence can be used
only to assist the court in understanding the claims and may not
be used to vary or contradict the claim language. Id. at 1584.
In Vitronics, the Federal Circuit distinguished between
expert testimony on technology versus testimony on claim
[T]estimony on the technology is far different from
other expert testimony, whether it be of an attorney,
a technical expert, or the inventor, on the proper
construction of a disputed claim term, relied on by
the district court in this case. The latter kind of
testimony may only be relied upon if the patent
documents, taken as a whole, are insufficient to
enable the court to construe disputed claim terms.
Such instances will rarely, if ever, occur.
Id. at 1585. In Bell & Howell Document Mgt. Prods. Co. v.
Altek Sys., 132 F.3d 701, 45 U.S.P.Q.2d 1033 (Fed.Cir. 1997),
the Federal Circuit condemned the district court's reliance on
experts' testimony. "Once a dispute over claim construction
arises, `experts' should also not be heard to inject a new
meaning into terms that is inconsistent with what the inventor
forth in his or her patent and communicated, first to the patent
examiner and ultimately to the public." Id. at 706. Because the
patent claims at issue there did not "suffer from the malady of
ambiguous intrinsic evidence[,]" the court concluded that resort
to the expert testimony was improper. Id. at 706-07.
b. Means-Plus-Function Claims
Claim 1 of the `224 patent and Claim 3 of the `303 patent
contain elements drafted in the form of a means for performing a
recited function as permitted by 35 U.S.C. § 112 ¶ 6.*fn739
Under that statutory provision, "[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, and such claim shall be construed to
cover the corresponding structure, material, or acts described in
the specification and equivalents thereof." Literal infringement
of a § 112 ¶ 6 claim limitation requires that "the accused device
employs structure identical or equivalent to the structure
disclosed in the patent and that the accused device performs the
identical function specified in the claim." WMS Gaming, Inc. v.
International Game Tech., 184 F.3d 1339, 1350, 51 U.S.P.Q.2d
1385 (Fed.Cir. 1999).
A means-plus-function element requires that the recited
function be performed "exactly" in the accused device to find
literal infringement under 35 U.S.C. § 112 ¶ 6. Pennwalt Corp.
v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 U.S.P.Q.2d 1737
(Fed. Cir. 1987) (en banc), overruled on other grounds,
Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83, 113 S.Ct.
1967, 124 L.Ed.2d 1, 26 U.S.P.Q.2d 1721 (1993). To determine
literal infringement of a § 112 ¶ 6 element requires a
determination of whether the "way" the accused structure performs
the claimed function, and the "result" of that performance, is
substantially similar to the way the claimed function is
performed by the corresponding structure described in the
specification, and its result. Odetics, Inc. v. Storage Tech.
Corp., 185 F.3d 1259, 1267, 51 U.S.P.Q.2d 1225 (Fed.Cir. 1999).
After it has been determined that the function is performed in
the accused device, the analysis under § 112 ¶ 6 shifts to
determining the "corresponding structure" for completing that
function as described in the patent. B. Braun Med., Inc. v.
Abbott Labs., 124 F.3d 1419, 1424, 43 U.S.P.Q.2d 1896 (Fed.Cir.
1997). In Abbott Laboratories, the Federal Circuit held that,
pursuant to this provision, structure disclosed in
the specification is "corresponding" structure only
if the specification or the prosecution history
clearly links or associates that structure to the
function recited in the claim. This duty to link or
associate structure to function is the quid pro quo
for the convenience of employing § 112 ¶ 6.
Id. Thus, "[u]nlike the ordinary situation in which claims may
not be limited by functions or elements disclosed in the
specification, but not included in the claims themselves, in
writing a claim in means-plus-function form, a party is limited
to the corresponding structure disclosed in the specification and
its equivalents." Kahn v. General Motors Corp., 135 F.3d 1472,
1476, 45 U.S.P.Q.2d 1608 (Fed.Cir. 1998); accord Greenberg v.
Inc., 91 F.3d 1580, 1582, 39 U.S.P.Q.2d 1783 (Fed.Cir. 1996).
Not every structure capable of performing the recited function
of a means element will be either disclosed in the patent
specification or an equivalent of the disclosed, corresponding
structure. Accordingly, § 112 ¶ 6 operates as a restriction on
claim coverage rather than an expansion of it. See Valmont
Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25
U.S.P.Q.2d 1451 (Fed.Cir. 1993) ("[T]he section operates more
like the reverse doctrine of equivalents than the doctrine of
equivalents because it restricts the coverage of literal claim
Claim 3 of the `303 patent is a process claim, that is, a claim
involving a "series of steps." Ex Parte Murray, 9 U.S.P.Q.2d
1819, 1820, 1988 WL 252338, 1988 Pat. App. LEXIS 23 (Bd. Pat.
App. & Interf. 1988). Where the plain meaning of the claim
language indicates a sequential nature to the claim steps and the
specification does not suggest otherwise, the steps must be
performed in the order written in the claim. Mantech Envtl.
Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1375-76, 47
U.S.P.Q.2d 1732 (Fed.Cir. 1998).
Prosecution history should be used in the first instance as a
claim construction tool, ZMI Corp. v. Cardiac Resuscitator
Corp., 844 F.2d 1576, 1580-81, 6 U.S.P.Q.2d 1557 (Fed.Cir.
1988); Tandon Corp. v. United States Int'l Trade Comm'n,
831 F.2d 1017, 1021-24, 4 U.S.P.Q.2d 1283 (Fed.Cir. 1987),
independent of any estoppel context. Johnston v. IVAC Corp.,
885 F.2d 1574, 1579, 12 U.S.P.Q.2d 1382 (Fed.Cir. 1989).
Arguments made during the patent's prosecution history, including
those made in connection with a patent application, are relevant
in determining the meaning of claim language. Jonsson v. Stanley
Works, 903 F.2d 812, 818, 14 U.S.P.Q.2d 1863 (Fed.Cir. 1990).
The file history also limits the interpretation of claims to
exclude any interpretation which may have been disclaimed or
disavowed during prosecution in order to obtain allowance of the
claims. See Senmed, Inc. v. Richard-Allan Med. Indus., Inc.,
888 F.2d 815, 820, 12 U.S.P.Q.2d 1508 (Fed.Cir. 1989), overruled
on other grounds, Cardinal Chem. Co. v. Morton Int'l, Inc.,
508 U.S. 83, 113 S.Ct. 1967, 124 L.Ed.2d 1, 26 U.S.P.Q.2d 1721
(1993); Advance Transformer Co. v. Levinson, 837 F.2d 1081,
1083, 5 U.S.P.Q.2d 1600 (Fed.Cir. 1988), overruled on other
grounds, Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83,
113 S.Ct. 1967, 124 L.Ed.2d 1, 26 U.S.P.Q.2d 1721 (1993); ZMI,
844 F.2d at 1580. On the other hand, claims must also be
construed to include limitations added through definitions made
during prosecution arguments, even though such definitions do not
appear in the specification or the claims. See Key Mfg. Group,
Inc. v. Microdot, Inc., 925 F.2d 1444, 1448, 17 U.S.P.Q.2d 1806
(Fed.Cir. 1991); E.I. du Pont de Nemours & Co. v. Phillips Pet.
Co., 849 F.2d 1430, 1438, 7 U.S.P.Q.2d 1129 (Fed.Cir. 1988);
Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867, 228
U.S.P.Q. 90 (Fed. Cir. 1985), overruled on other grounds,
Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059,
1068, 46 U.S.P.Q.2d 1097 (Fed.Cir. 1998).
2. Infringement Principles
Sunrise contends that AirSep, in manufacturing, selling and
offering to sell the ImPulse Select device, infringes both the
`303 Patent and the `224 Patent under 35 U.S.C. § 271, and
thereby is directly infringing, contributorily infringing and/or
inducing the infringement of the `303 Patent and the `224 Patent.
Section 271(a) provides, in relevant part, that
[e]xcept as otherwise provided in this title, whoever
without authority makes, uses, offers to sell, or
sells any patented invention, within the United
States . . . during the term of the patent therefor,
infringes the patent.
Section 271(b) further recites that "[w]hoever actively induces
infringement of a patent shall be liable as an infringer[,]"
while 35 U.S.C. § 271(c) prescribes, in pertinent part, that
[w]hoever offers to sell or sells within the United
States . . . a component of a patented machine,
manufacture, combination or composition, or a
material or apparatus for use in practicing a
patented process, constituting a material part of the
invention, knowing the same to be especially made or
especially adapted for use in an infringement of such
patent, and not a staple article or commodity of
commerce suitable for substantial noninfringing use,
shall be liable as a contributory infringer.
Infringement need only be established by a preponderance of the
evidence. SmithKline Diagnostics, Inc. v. Helena Labs. Corp.,
859 F.2d 878, 889, 8 U.S.P.Q.2d 1468 (Fed.Cir. 1988); Hughes
Aircraft Co. v. United States, 717 F.2d 1351, 1361, 219 U.S.P.Q.
473 (Fed.Cir. 1983).
a. Literal Infringement
Under the "All Elements" or "All Limitations" rule, literal
infringement requires that each and every element of a claim or
its substantial equivalent be found in the accused device.
Omission of even a single claimed element precludes a finding of
either literal infringement or infringement under the doctrine of
equivalents. Johnston, 885 F.2d at 1577 & n. 3; Pennwalt, 833
F.2d at 935; Mannesmann Demag Corp. v. Engineered Metal Prods.
Co., 793 F.2d 1279, 1282, 230 U.S.P.Q. 45 (Fed.Cir. 1986); see
Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1484, 221
U.S.P.Q. 649 (Fed.Cir. 1984). Literal infringement analysis
involves two distinct steps: (1) proper interpretation of the
asserted claims; and (2) comparison of the properly interpreted
claims and the accused product to determine whether infringement
exists. Vitronics, 90 F.3d at 1580-81; ZMI, 844 F.2d at 1578;
see Markman, 517 U.S. at 384, 116 S.Ct. 1384; Becton Dickinson
& Co. v. C.R. Bard, Inc., 922 F.2d 792, 796 (Fed.Cir. 1990). The
first step, claim interpretation, is an issue of law, to be
resolved by the court, and the second step, determination of
infringement, is an issue of fact. Markman, 517 U.S. at 372,
390-91, 116 S.Ct. 1384; WMS, 184 F.3d at 1346.
In addition, the Federal Circuit has determined that to
literally infringe under § 112 ¶ 6, "an accused device must (1)
perform the identical function claimed for the means element, and
(2) perform that function using the structure disclosed in the
specification or an equivalent structure." Intel Corp. v. United
States Int'l Trade Comm'n, 946 F.2d 821, 841, 20 U.S.P.Q.2d 1161
(Fed.Cir. 1991); Micro Chem., Inc. v. Great Plains Chem. Co.,
103 F.3d 1538, 1547, 41 U.S.P.Q.2d 1238 (Fed. Cir. 1997) (citing
Valmont, 983 F.2d at 1042); Pennwalt, 833 F.2d at 934. The
test for statutory equivalence under § 112 ¶ 6 is whether the
accused structure is insubstantially different from the structure
disclosed in the specification. Chiuminatta Concrete Concepts,
Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309, 46
U.S.P.Q.2d 1752 (Fed.Cir. 1998); see Alpex Computer Corp. v.
Nintendo Co., 102 F.3d 1214, 1222, 40 U.S.P.Q.2d 1667 (Fed.Cir.
1996) (noting that statutory equivalence under § 112 ¶ 6 and
equivalence under the doctrine of equivalents both require
insubstantial changes); Valmont, 983 F.2d at 1043 ("In the
context of section 112 . . . an equivalent results from an
insubstantial change which adds nothing to significance to the
structure, material, or acts disclosed in the patent
b. Doctrine of Equivalents
If a device does not literally infringe a § 112 ¶ 6 claim
element, infringement may nevertheless exist under the judicially
created doctrine of equivalents. WMS, 184 F.3d at 1352-53.
Specifically, an accused device that does not literally infringe
under § 112 ¶ 6, because no identity
of function exists, can infringe under the doctrine of
equivalents, where substantially the same function is performed.
Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1320-21, 50
U.S.P.Q.2d 1161 (Fed.Cir. 1999).
Equivalence will be found when one of ordinary skill in the art
would consider that an element of the defendant's product
performed substantially the same function in substantially the
same way to produce substantially the same result as compared to
the corresponding element of the plaintiff's claimed product.
Exact identity of function, way and result is not required;
substantial identity, that is, objective proof that any
differences between the claimed invention and accused device are
merely "insubstantial," is sufficient. Hilton Davis Chem. Co. v.
Warner-Jenkinson Co., 62 F.3d 1512, 1517-18, 35 U.S.P.Q.2d 1641
(Fed.Cir. 1995) (en banc), rev'd on other grounds,
520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146, 41 U.S.P.Q.2d 1865 (1997).
Indeed, "function-way-result" and "insubstantial differences" are
two linguistic formulations of the same test: whether the
"accused product or process contain[s] elements identical or
equivalent to each claimed element of the patented invention[.]"
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,
37, 117 S.Ct. 1040, 1053, 137 L.Ed.2d 146, 41 U.S.P.Q.2d 1865
Recognizing "that the doctrine of equivalents, when applied
broadly, conflicts with the definitional and public-notice
functions of the statutory claiming requirement[,]" the Supreme
Court in Warner-Jenkinson emphasized that the determination of
equivalence must be made on an element-by-element basis and not
by looking at the invention as a whole, so as to properly limit
the scope of the doctrine. 520 U.S. at 29, 117 S. Ct. at 1049.
Even so, in the § 112 ¶ 6 context, "[t]he individual components,
if any, of an overall structure that corresponds to the claimed
function are not claim limitations[,]" and component-by-component
dissection is improper. Odetics, 185 F.3d at 1268.
c. Prosecution History Estoppel
Prosecution history estoppel can preclude reliance on the
doctrine of equivalents based on statements made by the patentee
to the United States Patent and Trademark Office ("PTO") during
the prosecution of a patent application. Prosecution history
estoppel applies when an applicant either makes amendments or
adds limitations to a claim in order to overcome the examiner's
rejection of it based on the prior art. In essence, that doctrine
prohibits an applicant from recapturing, as infringing equivalent
subject matter, what he surrendered during prosecution to secure
allowance of the claim. American Permahedge, Inc. v. Barcana,
Inc., 105 F.3d 1441, 1445-46, 41 U.S.P.Q.2d 1614 (Fed.Cir.
1997); Texas Instruments, Inc. v. United States Int'l Trade
Comm'n, 988 F.2d 1165, 1173, 26 U.S.P.Q.2d 1018 (Fed.Cir. 1993).
Positions taken before the PTO may also bar an inconsistent
position on claim construction under § 112 ¶ 6." Alpex, 102
F.3d at 1221.
Whether an amendment during patent prosecution creates an
estoppel depends on the reason for the amendment.
Warner-Jenkinson, 520 U.S. at 30-32, 117 S.Ct. at 1049-50.
There, the Supreme Court distinguished amendments made to avoid
prior art or address patentability concerns from those made for
reasons not related to patentability. Id. at 32-34, 117 S.Ct.
at 1050-51. The trial court must therefore determine "what
subject matter the patentee actually surrendered" during the
prosecution of the patent. Hughes Aircraft Co. v.
United States, 140 F.3d 1470, 1476, 46 U.S.P.Q.2d 1285
(Fed.Cir. 1998). The Hughes Aircraft court further reasoned
that "if the accused device wholly fails to meet a limitation to
which the patentee has expressly limited the claims, a finding of
equivalence is precluded under prosecution history estoppel."
Id. at 1477.
In situations where the prosecution history does not indicate
the reason for an amendment, the Supreme Court in
Warner-Jenkinson held that a rebuttable presumption applies
that the amendment was made substantially for reasons of
Where no explanation [for an amendment] is
established, however, the court should presume that
the patent applicant had a substantial reason related
to patentability for including the limiting element
added by amendment. In those circumstances,
prosecution history estoppel would bar the
application of the doctrine of equivalents as to that
520 U.S. at 33, 117 S.Ct. at 1051.
"[A] method or process claim is directly infringed only when
the process is performed." Joy Techs., Inc. v. Flakt, Inc.,
6 F.3d 770, 773, 28 U.S.P.Q.2d 1378 (Fed. Cir. 1993). The
manufacture or sale of equipment to perform a patented process,
therefore, is not a direct infringement of the process patent
claims. Id. at 773-74. A party's act in connection with selling
equipment may constitute active inducement or contributory
infringement of a method claim under 35 U.S.C. § 271(b) and (c),
respectively. As in the case of active inducement of infringement
under § 271(b), proof of contributory infringement is dependent
on a showing of a direct infringement. Met-Coil Sys. Corp. v.
Korners Unlimited, Inc., 803 F.2d 684, 687, 231 U.S.P.Q. 474
3. Comparison of the `303 Patent Claims to the Accused Method
a. Does AirSep Directly Infringe Claim 3 of the `303 Patent
Under 35 U.S.C. § 271 (a)?
AirSep contends that Sunrise has adduced no proof that AirSep
uses the method claimed in claim 3. Dkt. no. 84, at 33. I agree.
Instead, the proof adduced was only that AirSep manufactures and
sells the ImPulse Select device to home health care equipment
providers, who in turn make the ImPulse available to patients
having a prescription for oxygen. Id.