Opinion
Civil Action No. 02-1990
December 30, 2002
ORDER AND REASONS
Before the Court is defendant Royal Blunt, Inc.'s Motion for Partial Summary Judgment, seeking dismissal of the plaintiffs claims for patent infringement. The thrust of Royal Blunt, Inc.'s motion is that its EZ Roll Tube tobacco product does not infringe the plaintiffs `448 patent, either literally or under the doctrine of equivalents, and thus it is entitled to summary judgment dismissing plaintiffs patent infringement claims. The plaintiff Blunt Wrap U.S.A., Inc. filed formal opposition. For the following reasons, the defendant's motion for summary judgment is DENIED.
The plaintiff also filed an unopposed Motion for Extension of Time to Amend the Pleadings and noticed it for hearing. However, the motion for extension of time is now moot.
I. BACKGROUND
Blunt Wrap U.S.A., Inc. ("Blunt Wrap") filed the captioned matter against defendant Royal Blunts, Inc. ("Royal") asserting claims for patent infringement under 35 U.S.C. § 271(a) and (b). Via supplemental and amended complaint, Blunt Wrap added claims for false advertising under Section 43(a) of the Lanham Act, 17 U.S.C. § 1125(a)(1), and further claimed that any patent infringement that occurred was willful.
Blunt Wrap manufactures and sells a roll-your-own cigar product known as a "blunt" or "Blunt Wrap Blunt Tube," which is an unfilled cigar tube comprised of homogenized tobacco paper and manufactured with a "slit," a long, narrow, longitudinal opening that permits the end-user to pull apart the "edges" of the product and add their own tobacco product. Blunt Wrap has a considerable investment in the design, manufacture of, and the `448 patent on its product, i.e., "the Blunt Wrap Blunt Tube" or "blunt."
Royal, a California corporation, manufactures another tobacco product called the "EZ Roll Tube," which is a homogenized tobacco product rolled around a plastic tube. Essentially, it is an unfilled cigar tube made of homogenized tobacco paper that, rather than presented to the customer as a sealed tube or finished cigar, also contains a long, narrow, longitudinal opening that permits the end user to fill the bore with tobacco material of his/her own choosing.
Regarding the allegations of patent infringement, Blunt Wrap alleges that Royal's EZ Roll Tube tobacco product (sometimes referred to as "the accused product") infringes one or more claims of the United States Patent No. 6,357,448 ("the `488 patent"). Royal is accused of infringing the `448 patent by making, using, selling and/or offering for sale its EZ Roll Tube tobacco product and inducing another to infringe the `448 patent. Royal seeks summary judgment dismissing the plaintiffs patent infringement claim.
See Copy of the `448 patent [Defendant's Exhibit "A"].
The `448 patent claim recites, in pertinent part:
Many changes and modifications can be made in the present invention without departing from the spirit thereof. I, therefore, pray that my rights to the present invention will be limited only by the scope of the appended claims. What is claimed is:
1. A product including a cigar tube for holding an end user's tobacco fill material, comprising:
a) a cigar tube which comprises a sheet of material of tobacco leaves or homogenized tobacco paper, the sheet material being rolled into a shaped tube that has a longitudinal bore, a slit for adding tobacco material to the bore, and edges that can be moved apart so that tobacco fill material can be added to the bore via the slit and
b) a wrapper, wherein the cigar tube is packaged in the wrapper, and the cigar tube remains rolled in said tube shape inside the wrapper, and the cigar tube is not filled with tobacco to form a complete cigar.
Id. at p. 4, 11. 3-16 (emphasis added).
Close inspection of Royal's accused product reveals a sheet of homogenized tobacco paper, the sheet being rolled into a shaped tube that has a longitudinal bore. On Royal's EZ Roll have-it-your-way cigar product, the ends or edges of the homogenized tobacco paper wrapped around the straw form are not sealed, such that (1) arguably there is a slit, and (2) the ends or edges of the homogenized rolled tobacco paper may be moved apart, so that tobacco fill material can be added to the bore via the disputed slit or slot.
It is uncontroverted that each claim of Blunt Wrap's `448 patent includes the limitations that the homogenized tobacco paper rolled in the shape of a tube have, inter alia, (1) "a slit for adding tobacco material to the bore," and (2) "edges that can be moved apart so that tobacco fill material can be added to the bore via the slit." However, there is a material issue of fact as to whether Royal's E-Z Roll Tube tobacco product has a slit and "edges that can be moved apart to add tobacco to the bore via the slit." See `448 Patent, at Claims 1, 9, and 16 (one of which is incorporated by reference in each and every one other 20 claims set forth in the `448 Patent)[Royal "5" Exhibit "A"] (emphasis added).
Id.
II. CONTENTIONS OF THE PARTIES
Regarding patent infringement, Blunt Wrap contends that the accused product infringes one or more claims of United States Patent No. 6,357,448 ("the `448 patent"). Royal submits that all of the claims of the plaintiffs `448 patent contain two limitations or "elements" that are not present, either literally or under the doctrine of equivalents, in the accused product. Specifically, Royal contends that its EZ Roll Tube tobacco product does not have, either literally or equivalently, "a slit for adding tobacco material to the bore" and further does not have "edges that can be moved apart so that fill material can be added to the bore via the slit." According to Royal, both of these claim limitations or elements are recited either directly or by reference, by each and every claim of the `448 patent. As such, both of these claim limitations or elements are, therefore, required to be found in the accused product before the accused product can be found to infringe any of the claims of the `448 patent. Essentially, it is Royal's position that because these two elements are not contained in the accused product, Royal cannot be held liable for patent infringement. Royal's motion relies exclusively on intrinsic evidence, and does not relate to damages, nor to plaintiffs Lanham Act claim for false advertising.
Blunt Wrap counters that the motion should be denied because at least claims 1, 9, and/or 16 of the `448 patent cover Royal's accused product either literally or under the doctrine of equivalents. Plaintiff argues that the prosecution history of the `448 product evidences a clear intent to cover Royal's product. According to Blunt Wrap, the "EZ Roll Tube" is a copied product violating the claims of Blunt Wrap's valid `448 patent-in-suit, and Royal fails to demonstrate otherwise. Plaintiff points to the long, narrow, longitudinal opening embodied in the accused product. Blunt Wrap further argues that Royal fails to explain away the slit or slot resulting from the fact that ends of the rolled homogenized paper are not sealed closes and why the ends or edges of the unsealed rolled homogenized tobacco paper cannot be moved apart, so that tobacco fill material can be added to the bore via the slit, instead of only from either open end of the cigar tube. According to Blunt Wrap a visual inspection of the accused product reveals that it has both traits, and that the accused product (Royal Blunt's EZ Roll Tube) functions in exactly the same way as Blunt Wrap's Blunt Tube.
Noting that the devil is the details, plaintiff points out that the prosecution history demonstrates that the terms "slit" and "slot" are synonymous and the history includes Mr. Sinclair's declaration that one company, Royal Blunts, has actually copied his invention and began marketing the copies in late July, 2001 as Royal Blunt's E Roll Tube, i.e., Sinclair's specific and express intention that the `448 claim language cover the accused product. See Blunt Wrap's Opposition, at pp. 3-5.
In response, Royal highlights four critical points:
• relevant claim limitations derived from the patent specification and the patent file history, together with simple inspection of the accused product, reveals no literal infringement of the patent claims by the accused product;
• there is no non-literal infringement, and plaintiff cannot overcome the presumption that the claims at issue narrowed for reasons related to patentability because (1) the claims at issue were narrowed in view of a prior art rejection of a broader Claim 1 in the parent application, and (2) the broader Claim 1 did not recite either of the two limitations at issue;
• a package containing a sheet of homogenized tobacco rolled around a plastic straw ( i.e., Royal's EZ Roll Tube) contains no equivalent to either limitation — "a slit for adding tobacco to the bore" or "edges that can be moved apart so that tobacco material can be added to the bore via the slit" — and thus even assuming without deciding that the plaintiff is entitled to some scope of equivalents, there is no infringement under the doctrine of equivalents; and
• prosecution history estoppel precludes the plaintiff from claiming that Royal's EZ Roll Tube tobacco product contains an equivalent to either of the limitations at issue because (1) patentee described a slit-free product in the specification but claimed only a product that included the slit limitation at issue, and (2) the Patent Examiner explicitly provided a claim description that included a slit cut in a tobacco product to which patentee did not object, and thus he cannot now claim a broader interpretation.
In its sur-reply, plaintiff hits each of Royal's highlights, noting at the outset that its argument directly conflicts with settled patent law in two respects: (1) alleged limits contained within a product specification cannot be read into the patent claims unless the claims themselves expressly incorporate such a reading; and (2) it is improper to import functional limitations into an apparatus claim, citing Mantech Environment Corp. v. Hudson Environmental Services, Inc., 152 F.3d 1368 (Fed. Cir. 1998) for the general rule that claims are not limited to the preferred embodiments disclosed in the specification unless so indicated by their own language. Blunt Wrap contends that Royal improperly attempts to import limitations from a preferred embodiment into claims on the `448 patent. Blunt Wrap also cites Virginia Panel Corp. v. MAC Panel Corp., 133 F.3d 860 (Fed. Cir. 1997) and Transmatic, Inc. v. Gulton Industries, Inc., 53 F.3d 1270 (Fed. Cir. 1997) for the proposition that it is improper to import functional limitations into an apparatus claim as described in preferred embodiments.
The `448 patent provides in the pertinent part, as follows: "In one of the embodiments, a longitudinal slit is formed through the wall of the shell to allow prying open of the shell body and removal of the form casing." See `448 Patent, at Section 2, Summary of Invention (emphasis added).
Plaintiff submits that a slit is claimed no matter how it is made and regardless of whether the slit looks like the slit depicted in drawings of the preferred embodiment or not. Since no claim of the `448 patent makes any reference to the manner of making, or the particular look, of a slit nor does any statement in the claim incorporate limitations or refer to the preferred embodiment, plaintiff argues that it would constitute reversible error to adopt Royal's artificially grafted limits onto the claims of the `448 patent.
Finally, Blunt Wrap contends that the Federal Circuit's decision in Mark I Marketing Corporation v. R.R. Donnelley Sons Co., 66 F.3d 285 (Fed. Cir. 1995), regarding prosecution history estoppel, is inapposite. Blunt Wrap argues that unlike Mark I narrowing amendments were not made in this case, and no office action was pending at the time it presented a different set of claims in the continuation application.
III. APPLICABLE LAXY A. Standard of Review
"Summary judgment is proper if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact." Kee v. City of Rowlett, Texas, 247 F.3d 206, 210 (5th Cir.) (internal quotation marks omitted), cert. denied, 122 S.Ct. 210 (2001). "The moving party bears the burden of showing . . . that there is an absence of evidence to support the nonmoving party's case." Id. at 210. If the moving party meets this burden, "the nonmovant must go beyond the pleadings and designate specific facts showing that there is a genuine issue for trial." Id. A dispute over a material fact is a genuine issue for trial, if the evidence is such that a jury reasonably could return a verdict for the nonmoving party. Id.
The mere argued existence of a factual dispute does not defeat an otherwise properly supported motion. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Therefore, "[i]f the evidence is merely colorable or is not significantly probative," then summary judgment is appropriate. Id. at 249-50 (citations omitted). Summary judgment is proper if the party opposing the motion fails to establish an essential element of his case. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). In evaluating the summary judgment motion, the court must read the facts in the light most favorable to the nonmoving party. Anderson, 477 U.S. at 255. Substantive law determines which facts are material. Kee, 247 F.3d at 211.
B. Patent Law 1. Literal Infringement
Federal Circuit precedents provide a road map for assessing whether an accused device infringes a patent claim. An assessment of whether an accused device infringes claims of a patent necessarily involves both an identification and interpretation of the asserted claims, and a comparison of the properly interpreted claim limitations to the elements of the accused device.
See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) ( en banc), affd, 517 U.S. 370 (1996).
In this two-step process used in the analysis of literal patent infringement, first, the scope of the claims is determined as a matter of law; and second, the properly construed claims are compared to the allegedly infringing device, to determine, as a matter of fact, whether all of the limitations of at least one claim are present, either literally or by a substantial equivalent in the accused device. As previously mentioned, the first of the two steps is performed by the district court. The second step in the infringement analysis is a factual question for the jury, inasmuch as it requires a factual comparison of the claimed invention to the accused device.
Literal infringement of a claim exists when each of the claim limitations "reads on," or in other words is found in the accused device." Allen Engineering Corporation v. Bartell Industries, Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002).
Even if one or more of the claim limitations are not literally present in the accused device, thus precluding a finding of literal infringement, the claim may still be held infringed if equivalents of those limitations are present." Id. at 1345.
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed. Cir. 2002) ( citing Markman, supra, and Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998)); see also Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1344 (Fed. Cir. 2002) ("A determination of whether properly construed claims literally read on an accused product is a question of fact, as is the question of whether an element of an accused device is the equivalent of a claim limitation.").
See Teleflex, 299 F.3d at 1323 (citing Winans v. Denmead, 56 U.S. (15 How.) 330, 338 (1853) and noting that the jury's factual findings are reviewed for lack of substantial evidence).
Claim construction begins and ends with the actual words of the claim; "the language of the claim frames and ultimately resolves all issues of claim interpretation." The words of the claims themselves define the scope of the invention, and are given their ordinary and customary meaning, unless the patentee has chosen to use terms in some other manner. The claim language defines the metes and bounds of the claims' scope.
Id.
See id. at 1325 ("In the absence of an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning. We indulge a `heavy presumption' that a claim term carries its ordinary and customary meaning.") (citations omitted).
Id. at 1324; Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1366 (Fed. Cir. 2001).
The ordinary meaning of a claim term may be determined by review or reference to a variety of sources in addition to the claim language, including the written description, prosecution history, dictionaries, and treatises. However, the specification is "the single best guide to the meaning of a disputed term," and thus "highly relevant to the claim construction analysis."
Markman, 52 F.3d at 980; Vitronics Corporation v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Vitronics, 90 F.3d at 1582.
See Teleflex, 299 F.3d at 1325 (noting that usually the specification is dispositive).
In Teleflex, the Federal Circuit observed that:
The intrinsic evidence may provide context and clarification about the meaning of claim terms. "Such intrinsic evidence is the most significant source of legally operative meaning of disputed claim language."
* * *
[A]n inventor may choose to be his own lexicographer if he defines the specific terms used to describe the invention "with reasonable clarity, deliberateness and precision." Such a definition may appear in the written description, or in the prosecution history . . . .
The specification may limit the scope of the claims via other routes. The specification may assist in resolving ambiguity where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone. The patentee may demonstrate an intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.
Likewise, the prosecution history may demonstrate that the patentee intended to deviate from a term's ordinary and accustomed meaning, i.e., if it shows the applicant characterized the invention using words or expressions of manifest exclusion or restriction during the administrative proceedings before the Patent and Trademark Office. "Arguments and amendments made during the prosecution history, as well as the specification and other claims, must be examined to determine the meaning of the terms in the claims." In particular, "the prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance."Teleflex, 299 F.3d at 1325-26 (citations omitted). Nevertheless, "the ordinary meaning must be determined from the standpoint of a person of ordinary skill in the relevant art."
Teleflex, 299 F.3d at 1325.
Although claims must be read in light of the specification, that does not mean everything expressed in the specification must be read into all claims. Indeed, importing limitations from the written description into the claims is a "cardinal sin" of claims construction. In SRI v. International v. Matsushita Electric Corp., the Federal Circuit explained:
See id. at 1324 ( citing SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001)).
If everything in the specification were required to be read into the claims, or if structural claims were to be limited to devices operated precisely as a specification-described embodiment is operated, there would be no need for claims. Nor could an applicant, regardless of the prior art, claim more broadly than that embodiment. Nor would a basis remain for statutory necessity that an applicant conclude his specification with "claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."775 F.2d 1107, 1121 (Fed. Cir. 1985) (citing 35 U.S.C. § 112 and noting that "the claims measure the invention") (emphasis in original). Where only one embodiment is disclosed in the specification, Federal Circuit precedent establishes no rule that the claim terms are limited in meaning to the one preferred embodiment disclosed, described and/or depicted. Rather, the law dictates that (1) "the number of embodiments disclosed in the specification is not determinative of disputed claim terms," and (2) "clear statements of scope" together with specification and prosecution history determine the correct claim construction.
Id. at 1326.
Id. at 1327.
A claim limitation may be expressed in "means-plus-function" format in accordance with 35 U.S.C. § 112 ¶ 6, which provides that: "An 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." Id. However, where, as here, "even if the claim element specifies a function, if it also recites sufficient structure or material for performing that function, the statutory "equivalents" described in § 112 ¶ 6 do not apply."
See Allen Engineering, 299 F.3d at 1342 (detailed recitation of structure clearly removes means-plus-function limitations from the ambit of § 112 ¶ 6); Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999) (holding that the trial court mistakenly read limitations from the specification into the claims and that interpretation under § 112 ¶ 6 (i.e., statutory "equivalents") is not warranted because the claims cite sufficient structure to perform the entire claimed function).
Although construction of a claim is generally a question of law, in some cases extrinsic evidence results in a genuine dispute over the meaning of a term or an event during prosecution. When that occurs and disputed extrinsic evidence is necessary to explain the claim terms, then an underlying factual question arises, and "it falls to the jury to settle the dispute." However, extrinsic evidence, which includes inventor and expert testimony, may be used to help the court come to the proper understanding of the claim; however, it may not be used to vary or contradict the claim language.
Extrinsic evidence is that evidence which is external to the patent and file history, such as expert testimony, inventor testimony, dictionaries, and technical treatises and articles. Vitronics, 90 F.3d at 1584.
See, e.g., Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 138 F.3d 1108, 1119 (Fed. Cir. 2002) (finding a material issue of fact, further fact-finding necessary, and noting as to claim construction regarding the Commissioner.com product that there is no "user participation" or "control" limitation in the claims of the `603 patent, and that the claims only require that the software utilized to play fantasy football provide the ability to award "bonus points").
Markman, 52 F.3d at 991 ( citing See Palumbo v. Don-Joy Co., 762 F.2d 969, 974 (Fed. Cir. 1985)).
CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1152-53 (Fed. Cir. 1997) ("We have described such intrinsic evidence as `the most significant source of the legally operative meaning of claim language." Extrinsic evidence ( e.g., expert testimony) also may be used in claim construction. However, "when an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term,' it is improper to rely on extrinsic evidence."); Vitronics, 90 F.3d at 1584.
2. The Doctrine of Equivalents
In Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), theSupreme Court observed:
What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence in patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for the most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when it is combined with other ingredients, and the function it was intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.Id. at 24-25 (1997) ( citing Graver Tank Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950)).
"Even if one or more of the claim limitations are not literally present in the accused device, thus precluding a finding of literal infringement, the claim may still be held infringed if equivalents of those limitations are present." The statute clearly envisions that the patentee is entitled to a claim covering equivalents as well as the specified structure. The Court here notes that there is a distinction between literal infringement analysis involving "equivalents" under § 112 and the doctrine-of-equivalents analysis. Doctrine-of-equivalents analysis is generally invoked where literal infringement is absent but there is evidence of pirating, whereas the "equivalents" under § 112 is, in fact, literal infringement.
Allen Engineering, 299 F.3d at 1345.
See Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 27 (1997) (finding petitioner's argument unpersuasive that the doctrine of equivalents was implicitly rejected as a general matter by Congress' specific and limited inclusion of it in § 112 of the Patent Act); see also 35 U.S.C. § 112 ¶ 6 (expressly allowing a "means" claims describing an element of an invention by the result accomplished or the function served, i.e., an attempt to limit the application of the broad literal language of "means" claims to those means that are "equivalent" to the actual means shown in the patent specification).
See Warner-Jenkinson, 520 U.S. at 27-28 (contrasting literal infringement under § 112 ¶ 6 "equivalents" from non-literal infringement under the equitable doctrine of equivalence ( i.e., "equivalence" between the elements of the accused product or process and the claimed elements of the patented invention)).
See Palumbo v. Don-Joy Co., 762 F.2d 969, 974 note 4 (Fed. Cir. 1985).
Under the equitable doctrine, equivalents are assessed on a limitation-by-limitation basis. Focusing on individual limitations or elements of the claim, rather than on the accused device as a whole, enhances the primacy of the Patent and Trademark Office ("PTO") in setting the scope of a patent, and promotes vigilance against allowing the concept of equivalence to either obscure or eliminate any claim element/limitation completely. The roadmap thus leads full circle back to maxim that "there is no legally recognizable protected essential element, gist or heart of the invention. . . . Rather, the invention is defined by its claims."
Allen Engineering, 299 F.3d at 1345 (citations and inner quotation marks omitted).
Equivalence is a jury question, and may be established by a preponderance of the evidence that an element of an accused device does substantially the same thing in substantially the same way to get substantially the same result as the claim limitation. A claim element is equivalently present in an accused device if only insubstantial differences distinguish the missing claim element from the corresponding aspects of the accused device. Indeed, the touchstone is whether substantial differences exist between the accused device or process and the patented device or process.
See Warner-Jenkinson, 520 U.S. at 39 note 8 (discussing the role of the judge and jury, noting that the district court should determine whether prosecution history estoppel would apply or if a theory of equivalence would entirely vitiate a particular claim so as to eliminate any material issue of fact, and that in cases where the question equivalence reaches the jury, a special verdict on each claim element could facilitate and promote certainty, consistency and reviewability, but nevertheless deferring to the Federal Circuit regarding how best to implement procedural improvements).
Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367, 1370 (Fed. Cir. 2001).
Leggett Platt, Inc. v. Hickory Springs Mfg. Co., 285 F.3d 1353, 1359 (Fed. Cir. 2002).
See Warner-Jenkinson, 520 U.S. at 40 ("In our view, the particular linguistic framework used is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?"); Allen Engineering, 299 F.3d at 1345.
In Warner-Jenkinson Co., supra, the Supreme Court adhered to the doctrine of equivalents, explaining that the determination of equivalence should be applied as an objective inquiry on an element-by-element basis, and acknowledged that the doctrine of prosecution history estoppel remains a viable defense. The doctrine known variously as "prosecution history estoppel" and as "file wrapper estoppel" is a well-established legal limit on nonliteral infringement. The essence of the doctrine of "prosecution history estoppel" is that an applicant has modified or limited a claim or surrendered subject matter during patent prosecution in order to avoid its rejection by the PTO, and thus may not thereafter expand the claim to include subject matter surrendered or excluded. The reasoning behind the Patent Officer's insistence upon a change in the claims process figures prominently in the analysis. The doctrine allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. The reasons for modifying claim language are legion, vary, and include that the claim as otherwise written may have failed to describe a patentable invention at all. It is permissible for a court to explore the reason (right or wrong) for the objection and the manner in which the amendment addressed or avoided the objection. Where amendments are made for a reason related to patentability, "the question is not whether estoppel applies but what territory the amendments surrendered." In Festo Corporation, supra, the Supreme Court reinforced the notion that it previously struck the balance in determining that the estoppel theory poses a flexible bar, observing that:
Warner-Jenkinson, 520 U.S. at 40-41 ("Prosecution history estoppel continues to be available as a defense to infringement, but if the patent holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded. Where the patent holder is unable to establish such a purpose, a court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply."); see also Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushki Co., 122 S.Ct. 1831, 1838-39 (2002) (noting that (1) an estoppel may arise as a result of amendments that narrow the scope of a claim to satisfy any requirement of the Patent Act, (2) a rejection indicates that the patent examiner does not believe the original claim could be patented, and (3) that such narrowing amendments create a rebuttable presumption of estoppel).
See Festo Corporation, 122 S.Ct. at 1838 ("Estoppel is a `rule of patent construction' that ensures that claims are interpreted by reference to those `that have been rejected.'"); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 33 (1966) (noting that "claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent").
See Warner-Jenkinson., 520 U.S. at 31-32, n. 6 (noting that there are a wide variety of reasons why the PTO may request a change claim, and that prior cases have consistently applied prosecution history estoppel only where claims have been amended for a limited set of reasons. The Court found no cause for requiring the more rigid rule of invoking an estoppel regardless of the reasons for a change, particularly in a case where the PTO may have relied upon a flexible rule of estoppel when deciding whether to ask for a change in the first place.).
See Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136 (1942) (distinguishing between the inclusion of a limiting phrase in an original patent claim from the "very different" situation in which "the applicant, in order to meet objections to the Patent Office, based on references to prior art, adopted a phrase as a substitute for the broader one" previously used) (emphasis added); Keystone Driller Co. v. Northwest Engineering Corp., 294 U.S. 42, 48 n. 6 (1935) (holding estoppel applicable where the initial claims were rejected on the prior art and where the allegedly infringing equivalent element was outside of the revised claims and within the prior art that formed the basis for the rejection of the earlier claims); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 788 (1931) (applying estoppel to an amended claim where the original claim was rejected on the prior patent to another); Computing Scale Co. of America v. Automatic Scale Co., 204 U.S. 609, 618-20 (1907) (initial claims rejected based on lack of invention over prior patents); Hubbell v. United States, 179 U.S. 77, 83 (1900) (patentee estopped from excluding a claim element where the element was added to overcome objections based on lack of novelty over prior patents); Sutter v. Robinson, 119 U.S. 530, 541 (1986) (finding estoppel where, during patent prosecution, the applicant "was required to state that [the device's] structural plan was old and not his own invention").
Warner-Jenkinson, 520 U.S. at 33 n. 7.
Festo Corporation, 122 S.Ct. at 1842.
While estoppel does not effect a complete bar, the question remains whether petitioner can demonstrate that the narrowing amendments did not surrender the particular equivalents at issue. On these questions, respondents may well prevail, for the sealing rings and the composition of the sleeve both were noted expressly in the prosecution history. These matters, however, should be determined in the first instance by further proceedings in the Court of Appeals or the District Court.
Id.
Finally, copying is not relevant to the determination of either literal infringement or infringement under the doctrine of equivalents. Copying may be relevant to the issue of the obviousness of the invention, but it has no bearing on the question of whether the claims of an issued patent are infringed. The Supreme Court specifically rejected the proposition that copying is relevant to infringement as asserted under the doctrine of equivalents, because infringement is determined by comparing the accused devices not with products made by the patentee but with the claims of the properly construed patent. The Federal Circuit instructs that "[c]ounsel who undertake patent infringement litigation should know the difference between validity and infringement, and are expected to accurately explain the difference to the court."
Warner-Jenkinson at 35-36 (finding that the doctrine of equivalents akin to determining literal infringement and that neither requires proof of intent, and further holding that the better view, and the one consistent with Graver Tank's predecessors and the objective approach to infringement is that intent plays no role in the application of the doctrine of equivalents).
Allen Engineering, 299 F.3d at 1351.
IV. DISCUSSION CONSTRUCTION OF THE `448 PATENT
In this case, all claims of the plaintiffs `448 Patent incorporate the elements of a "slit" and "edges," utilizing the following terminology, to wit:What is claimed is:
1. A product including a cigar tube for holding an end user's tobacco fill material, comprising:
a) a cigar tube which comprises a sheet of material of tobacco leaves or homogenized tobacco paper, the sheet material being rolled into a shaped tube that has a longitudinal bore, a slit for adding tobacco material to the bore, and edges that can be moved apart so that tobacco fill material can be added to the bore via the slit; and
b) a wrapper, wherein the cigar tube is packaged in the wrapper, and the cigar tube remains rolled in said tube shape inside the wrapper, and the cigar tube is not filled with tobacco to form a complete cigar.
See United States Patent 6,357, 448 for a tobacco product consisting a form casing comprised of rolled tobacco leaves, thereby eliminating some steps in the making of a roll-your-own tobacco product [Exhibit "A" to Plaintiff's Opposition].
As discussed at length above, resolution of the competing claims about the `448 Patent involves an examination of what the patent claim embodies. In the instant case, the issue of literal infringement remains a fundamental bone of contention. Specifically, Royal contends that its EZ Roll Tube cannot literally infringe the `448 Patent by virtue of its design — i.e., it is readily distinguished from the patented claims by (1) the absence of a "slit" made through the wall of the homogenized rolled tobacco paper, and without such a slit there are concomitantly (2) no edges that can be moved apart to place tobacco in the bore via the slit. Blunt Wrap submits the prosecution history, the Declaration of Dimitri Rozenman, and the definition of the terms "slit" and "edges" to demonstrate how each element of the only independent claims ( i.e., Claims 1, 6 and 19) are found in Royal's product, the EZ Roll Tube.
In any event, plaintiff argues that Royal's factual conclusion that there is "no slit" is selfserving and plainly wrong, because an unwrapped and unrolled EZ Roll Tube reveals a slit, the edges of such slit being equally evident. Additionally, highlighting claim language, Blunt Wrap notes that there is nothing in the claim language that limits precisely where and how a slit must appear and be made. The plaintiff correctly notes that the one depicted preferred embodiment ( i.e., three views) is not incorporated into the claim limitations.
Indeed, the claim language merely states that the rolled cigar tube has a slit, affording access to the bore, and edges that can be moved apart. It is not a requirement that the slit be made through all of the layers of the rolled homogenized tobacco paper. Moreover, the plaintiffs expert asserts that the accused product, Royal's EZ Roll Tube, has all of the aforesaid elements. Royal stresses that the plaintiffs arguments are erroneous as a matter of law because they ignore (1) the specification, (2) the prosecution history, and (3) constitute an attempt to redraft and recapture the language surrendered in the original claim. This Court has examined the plaintiffs position in light of this charge and is not persuaded by the defendant's argument.
The Court has reviewed the competing interpretations of the claim in light of the intrinsic (claim and file history) and the extrinsic evidence (expert opinion and dictionary definitions). Neither side is indisputably correct, and there is enough conflicting evidence such that summary judgment would be an invasion of the province of the jury. The preferred embodiment describes a longitudinal slit formed by cutting though a wall of the shell with sharp knife or razor. See `448 Patent, Detailed Description of the Preferred Embodiment.
However, a patent specification must contain "a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same . . . ." 35 U.S.C, § 112, ¶ 2. A patent that fails to meet this requirement is invalid for indefiniteness. See Exxon Research and Engineering Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). In other words, the Patent Act requires that the specification set forth the best application of the inventor's idea, and not necessarily the most practical or marketable version. See 35 U.S.C. § 112 (providing that the specification shall "set forth the best mode contemplated by the inventor of carrying out his invention"). In Laitram Corporation v. Hewlett-Packard Company, Inc., 806 F. Supp. 1286 (E.D. La. 1992), Judge Feldman observed:
However, once issued, a patent is presumed valid and to overcome the presumption of validity, a party must present clear and convincing evidence of invalidity. See North American Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1579 (Fed. Cir. 1993), cert. denied, 510 U.S. 1100 (1994).
An inventor's vision of the possible should not be limited by the realities of the practical. An inventor may be taken by the power of his idea and not by how it can be harnessed to the disciplines of the market, but whatever motivates his conception of the best mode for his invention, this Court is not required to confine the inventor to those embodiments that he envisions in the specification nor should it be.Laitram Corporation, 806 F. Supp. at 1292 ( citing SRI International v. Matsuchita Electric Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) for the proposition that the law does not require an applicant to describe every conceivable and possible future embodiment of his invention). Importing a further limitation on the claim, that the slit be cut with a knife through the wall of the rolled homogenized tobacco paper as described in the preferred embodiment and drawings, would constitute the "cardinal sin" of claims construction.
See Teleflex, 299 F.3d at 1324 ( citing SciMed Lfe Sys., Inc. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001), noting that everything expressed in the specification need not be read into all claims and that grafting limitations set forth in the written description into the claims is a "cardinal sin" of claims construction.).
The plaintiffs expert interprets the claim term "slit," as not being limited to a slit that is cut through the shell with a sharp knife or razor. Ordinarily, such summary judgment evidence would carry little weight. However, in patent claims construction, "the ordinary meaning must be determined from the standpoint of a person of ordinary skill in the relevant art." Moreover, there is no rule of construction that requires that the claim terms be limited in meaning to the one preferred embodiment disclosed. Rather, "clear statements of scope" together with specification and prosecution history determine the correct claim construction. The `448 Patent claims only require a "slit" that provides the ability to add tobacco to the bore via the slit, no matter how the slit is made. It is irrelevant whether the longitudinal opening in the accused product mimics the slit depicted in the drawings of the preferred embodiment of the `448 Patent.
Teleflex, 299 F.3d at 1325.
Id. at 1326; see also Dayco Products, Inc. v. Total Containment, Inc., 258 F.3d 1317, 1328 (Fed. Cir. 2001) (emphasizing that augmenting limitations of claims when the added limitations are are not required by the claim terms themselves or unambiguously required by the specification or prosecution history is impermissible and noting that a court may not import limitations from the written description or a preferred embodiment into the claims); York Products, Inc. v. Cent. Tractor Farm Family Center, 99 F.3d 1568, 1574 (Fed. Cir. 1996) (In construction of patent claims, "the express structural limits of the claim language limits its scope.").
Teleflex, 299 F.3d at 1327.
Finally, file wrapper estoppel is inapplicable under the precise facts of the instant case. No narrowing continuation application was filed in this case. Dependent Claim 2 of the original application for the `755 Patent ( i.e., the parent application) similarly claimed a "longitudinal slit" to permit placing tobacco in the central opening. See `755 Patent Claim 2 [Royal's Exhibit "B"]. Explaining the rebuttable presumption of prosecution history estoppel, the Festo Court noted:
Since the Court has determined that there is a material issue of fact as to literal infringement, the inquiry could end without any discussion of the doctrine of equivalence and the defense of prosecution history estoppel. The Court observes that the requirements of literal and nonliteral infringement are different, but that the two theories are not fatally inconsistent. Indeed, the Federal Circuit has tacitly approved the common practice of submitting patent cases under both theories. See, e.g., Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 1282 (Fed. Cir. 2000); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1575 (Fed. Cir. 1996); Laitram Corp. v. NEC Corp., 62 F.2d 1388, 1395 (Fed. Cir. 1995).
There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or there may be some of other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.Festo, 122 S.Ct. at 1842 (emphasis added). The case before this Court falls into the category of one of those cases referred to by the Festo Court. File wrapper estoppel should not apply for a number of reasons, including that (1) there was no narrowing amendment pertaining the limitation in question; and (2) the amendment bears no more than a tangential relation to the element in question.
Substituting the term "slit" for "slot" is the change upon which Royal's estoppel argument hinges. As previously mentioned, Claim 2 of the original `755 Patent included a "longitudinal slit," so that the claims set forth in `448 Patent were not narrower than the claims set forth in the parent application with respect to the subject element/limitation. Moreover, substitution of the word "slit" for "slot" in the context of the `448 apparatus claim by the Patent Claims Examiner was obviously purely cosmetic. This construction is evident and bolstered by Claims Examiner's explanation, which utilized the terms "slit" and "slot" interchangeably throughout. Likewise, plaintiffs expert Mr. Rozenman declares the terms "slot" and "slit" are synonymous, both meaning a long, narrow longitudinal opening. See Declaration of Dimitri Rozenman [Plaintiff's Exhibit "G"]. Finally, the Court cannot ignore the prosecution history evidencing that consideration was given to the accused product by the Claims Examiner at the behest of the Inventor, whose intention it was (1) that the `448 patent cover Royal's alleged imposter (i.e., the EZ Roll Tube), inter alia; and (2) to speed up the patent-in-suit progress so that he could proceed to protect his alleged rights in his invention, "the blunt."
For all of the above and foregoing reasons,
IT IS ORDERED that defendant's Motion for Partial Summary Judgment dismissing the plaintiffs patent infringement claims is DENIED.
IT IS FURTHER ORDERED that the defendant's Unopposed Motion for an Extension of Time to Amend the Pleadings is DISMISSED AS MOOT.