Opinion
ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT
PATRICIA TRUMBULL, Magistrate Judge.
This action involves a lawsuit by Sliptrack Systems, Inc. ("Sliptrack" or "Plaintiff"), the manufacturer of slotted defection track systems and the owner of U.S. Patent No. 5, 127, 760 (the "'760 Patent"), against Steeler M s ("Steeler" or "Defendant"), a company that makes and sells sheet m framing products, and its President, Matt Surowiecki (collectively, "Defendants"). Sliptrack contends that the sheet m framing products sold by Steeler infringe upon the '760 patent.
Now before the court is Defendants' Motion for Summary Judgment. Having considered the parties' arguments and submissions, and for the reasons set forth below, the court hereby enters the following memorandum and order.
BACKGROUND
Sliptrack is the owner of the '760 patent for a Vertically Slotted Header. As described in the "Field of the Invention, " the '760 patent relates to a "building construction assembly and, more particularly, to a header for allowing horizontal, non-load bearing headers to vertically fluctuate in relationship to vertical non-load bearing wall studs to which the headers are attached. By allowing the header freedom of vertical movement, the walls that are fixed to the vertical studs are protected from cracking because the freedom of vertical movement of the header prevents translation of mechanical stresses to the walls caused by downward, environment forces on the header." See Barnard Decl., Exh. A.
Plaintiff Sliptrack contends that Defendants infringe independent claims one and seven of the '760 patent. Claim construction of the term "having at least one hole formed therein" is the textual determinative issue in this case and is identical in both claims one and seven. The hole referred to in this disputed claim language is formed in the non-load bearing wall studs. Defendant Steeler contends that the hole must be formed prior to inserting the stud into the header during assembly of the device. By contrast, Sliptrack asserts that the patent is for a product only, not a process, and that, accordingly, the claim at issue calls only for a hole to be formed in the stud as ultimately assembled in the device irrespective of whether it is formed before or after inserting the stud into the header.
Because the disputed claim language is identical in claims one and seven, the court limits its discussion to claim one.
On July 26, 1990, Todd. A. Brady, the inventor, filed a patent application which eventually issued as the '760 patent. The application as originally filed contained nine claims, including the following claim one:
A building construction assembly that includes a header and a stud wherein the header is capable of vertical movement relative to said stud comprising:
a header having a web and flanges with said flanges connected to said web;
at least one of said flanges having at least one vertical slot therein;
a stud having a width less than the distance between said flanges of said header;
said stud being aligned with said vertical slot; and
an attachment means passing through said slot to unit said header to said stud whereby said slot permits said header to move vertically with respect to said stud while restricting horizontal movement of said header.
See '760 Patent Application, Barnard Decl., Exh. B. In the first office action, the PTO rejected all nine claims under 35 U.S.C. § 112 as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. See Action by PTO, Barnard Decl., Exh. C. Specifically, in his rejection of claim one, the PTO examiner questioned "how is the stud aligned with the vertical slot." See Action by PTO, Barnard Decl. Exh. C.
In response, the applicant amended the claims and, in particular, amended claim one to read as follows, with deletions in brackets and additions underlined:
A building construction assembly that includes a header and a stud wherein the header is capable of vertical movement relative to said [stud] assembly comprising:
a header having a web and flanges with said flanges connected to said web;
at least one of said flanges having at least one vertical slot therein;
a stud having a width less than the distance between said flanges of said header and having a top end;
said stud [being aligned with said vertical slot] having at least one hole formed therein proximal to said top end; [and] said top end fitting between said flanges perpendicular to said header positioned so that said hole is aligned with said vertical slot; and
an attachment means passing through said slot to [unit] slideably unite said header to said stud whereby said slot permits said header to move vertically with respect to said stud while restricting horizontal movement of said header.
See Amendment to '760 Patent Application, Barnard Decl., Exh. D. In this amendment, inter alia, applicant changed the text of claim one such that the stud no longer was aligned with the vertical slot and, instead, the hole was aligned with the slot. Further, in the remarks section of the Amendment, counsel for applicant stated that:
the Examiner's question of how the stud is aligned with the vertical slot has been answered by adding hole 22 proximal to top end [] of the stud as an element of the claims. The hole serves as a reference point on the stud which is used to align the stud and the slot. This amendment should overcome the Examiner's § 112 rejection based upon indefiniteness with respect to claim 1 and the claims dependent therefrom.
See Amendment to Patent Application, Barnard Decl., Exh. D. Ultimately, in 1992, following this amendment, the '760 patent issued with the above-stated language in claim one.
The written description of the '760 patent, which is the same as the description in the patent application prior to amendment, sets forth two methods of assembly for the preferred embodiment - one with a hole formed after the stud is inserted into the header and the other with a pre-drilled hole. First, the "preferred method for assembling the invention" describes placing the end of the stud between the flanges of the header so that the end abuts against the bottom of the web such that the header and the stud are perpendicular to each other and a vertical slot is generally centered on the side of the stud. An appropriate attachment means, such as a self-tapping screw, is positioned in the slot midway between the bottom of the slot and the top of the slot. Once positioned, the self-tapping screw is drilled into the stud. This method of assembly clearly calls for the hole in the stud to be formed after the stud is inserted into the header.
Second, the description discloses "another method of assembling the invention, " which states, in relevant part, that "holes are pre-drilled in the stud. The stud is then inserted between the flanges so that the holes in said stud are aligned with the slots. The attachment means passes through the slots and through the hole in the stud." This method clearly calls for the hole to be formed in the stud before it is placed in the header.
Defendant Steeler manufactured and sold slotted m track. Sliptrack sued Steeler, alleging that Steeler's manufacture and sale of this slotted track contributes to and induces infringement of the '760 patent. Steeler M s now moves for summary judgment of non-infringement, contending that, because it does not sell or manufacture products with pre-drilled holes nor does it instruct its customers to pre-drill holes in the studs before inserting them into the headers, as required under its construction of claim one, it does not infringe the '760 patent and should prevail as a matter of law.
Plaintiff contends that on the issue of claim construction, summary judgement is inappropriate and that the court instead must conduct a detailed, limitation-by-limitation construction of each of the asserted claims pursuant to what commonly is referred to as a Markman hearing. Plaintiff is incorrect. As the Federal Circuit has made clear, " Markman does not require a district court to follow any particular procedure in conducting claim construction. It merely holds that claim construction is the province of the court, not a jury." Ballard Medical Products v. Allegiance Healthcare Corp, 268 F.3d 1352, 1358 (Fed. Cir. 2001). "If the district court considers one issue to be dispositive, the court may cut to the heart of the matter and need not exhaustively discuss all other issues presented by the parties." Id.
Summary judgment is appropriate when there are no genuine issues of material fact and the moving party is entitled to judgement as a matter of law. Fed. R. Civ. Pro. 56; Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). Summary judgment may be granted in favor of defendant on an ultimate issue of fact where the defendant carried his burden of "pointing out to the district court that there is an absence of evidence to support the non-moving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). "In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the opponent." Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303, 1307 (Fed. Cir. 1998).
DISCUSSION - INFRINGEMENT
A determination of infringement requires a two-step analysis. See Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1476 (Fed. Cir. 1998). "First the claim must be properly construed to determine its scope and meaning. Second the claim, as properly construed, must be compared to the accused device or process." Id. (quoting Carroll Touch, Inc. v. Eletro Mechanical Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993). "In order for a court to find infringement, the plaintiff must show the presence of every element or its substantial equivalent in the accused device." Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994).
Claim construction is an issue of law. See Markman v. Westview Instruments, Inc., 52 F.ed 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Determination of infringement, whether literal or under the doctrine of equivalents, is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). However, in a patent litigation action, "[w]here the parties do not dispute any relevant facts regarding the accused product... but disagree over possible claim interpretations, the question of literal infringement collapses into claim construction and is amenable to summary judgment.'" Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1324 (Fed. Cir. 2002) (quoting Gen. Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997)) (citations omitted).
A. Claim Construction
The dispositive issue of claim construction here is whether claims one and seven of the '760 patent are limited to a stud with a hole drilled prior to inserting the stud into the header or whether the claims encompass products without such a pre-drilled hole.
Defendant Steeler asserts that the claim term "having at least one hole formed therein" in claims one and seven unambiguously requires that a hole be pre-drilled into the stud and, thus, excludes any devices where the hole is made by a self-tapping screw after the stud is inserted into the header. Steeler contends that, even though the preferred embodiment discloses a preferred method of assembly where the hole is formed after the stud and header are assembled, the claims should be limited to a device with a pre-drilled hole, because the scope of Sliptrack's right to exclude is governed by the language of the claims, as interpreted by the prosecution history, and not by the written description.
For its argument, in addition to the claim language, Steeler relies heavily on the patent's prosecution history. Specifically, Steeler points to the amendment to the patent application, wherein, to address the examiner's indefiniteness rejection, applicant revised the claim from providing that the stud was aligned with the vertical slot to providing that the hole "is aligned with said vertical slot." See Amendment to '760 Patent Application, Barnard Decl., Exh. D. In addition, Steeler points to the applicant's remarks in the amendment where he stated that "the hole serves as a reference point on the stud which is used to align the stud and the slot." See Amendment to '760 Patent Application, Barnard Decl., Exh. D. The thrust of Steeler's argument is that in order for the "hole formed therein" to serve as a reference point when aligning the stud with the vertical slot, the hole must be formed in the stud prior to inserting it into the header and, thus, it must therefore be pre-drilled.
In response, Sliptrack contends the claim language makes clear that, as ultimately assembled, the stud must have a "hole formed therein, " but does not mandate any particular process for when such a hole shall be formed. Sliptrack does not see any inconsistency with this position and the text requiring that the "hole is aligned with said vertical slot" and argues that in either case, pre or post-drilled, the hole formed in the stud will be aligned with the slots when the device is assembled. Finally, Sliptrack contends that it would be improper to construe the claim to require a pre-drilled hole, because such a construction would read out the preferred method of assembly, which describes a self-tapping screw to form the hole after the stud is inserted into the header. Sliptrack does not address Steeler's argument regarding the remarks made during the prosecution history that the hole will serve as a "reference point" when aligning the stud with the vertical slot.
The court begins claim construction analysis with the words of the claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The claim language defines the bound of claims scope. Bell Communications Research, Inc. v. Vitalink Communications, Corp., 55 F.3d 615, 619-20 (Fed. Cir. 1995). The words used in the claims are interpreted in light of the intrinsic evidence of record, including the written description, the drawings and the prosecution history, if in evidence. Interactive Gifts Express, Inc. v. Compuserve, Inc., 256 F.3d 1323 (Fed. Cir. 2001). The intrinsic evidence may provide context and clarification about the meaning of the claim terms. York Products, Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996). "Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language." Vitronics, 90 F.3d at 1582.
This case presents an interesting question and a somewhat difficult resolution. The court agrees with Plaintiff Sliptrack that the claims and the written description, read alone, do not appear to require a pre-drilled hole. The claims at issue, one and seven, provide that the stud will have at least "one hole formed therein proximal to said top end" and that the header shall be "positioned so that said hole is aligned with said vertical slot." See '760 patent, Barnard Decl., Exh. C. A fair reading of this language supports Sliptrack's argument that, as ultimately assembled, the stud will have a hole aligned with the vertical slot. The court agrees that this text, on its face, does not mandate that the hole be pre-drilled. If the claims and the written description were the only evidence the court was relying upon to interpret the claims, Sliptrack likely would prevail. That is not the case, however. In addition to the claims and the written description, the court must also consider the prosecution history, which, here, is dispositive.
As the Federal Circuit has made clear, "[a]rguments and amendments made during prosecution of a patent application must be examined to determine the meaning of the claims." Rheox, 276 F.3d at 1325 (citing Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 15765 (Fed. Cir. 1995)) (emphasis added). "The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution." Id. ; see also Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002).
When initially submitted, all nine claims in the application for the '760 patent were rejected for indefiniteness and, specifically, the examiner questioned "how is the stud aligned with the vertical slot." See Action by PTO, Barnard Decl. Exh. C. To overcome this rejection, applicant revised his claims to include specific language that there would be a hole formed and positioned so that the hole is aligned with the vertical slot. See Amendment to '760 Patent Application, Barnard Decl., Exh. D (emphasis added). Counsel for applicant then explicitly remarked that this change answered the examiner's question "by adding hole 22 proximal to top end 40 of the stud as an element of the claims. The hole serves as a reference point on the stud which is used to align the stud and the slot." See Amendment to '760 Patent Application, Barnard Decl., Exh. D (emphasis added).
From this amendment and the remarks therewith, the court cannot escape the conclusion that the claim was narrowed to require that a hole be pre-drilled in the stud prior to inserting the stud into the header. As originally drafted, claim one provided that the stud was aligned with the vertical slot, but then was amended to require that the hole be aligned with the vertical slot. In order for the hole to be aligned with the vertical slot and to serve as a "reference point" on the stud when used to align the stud and the slot, the hole, by definition, would have to be formed prior to inserting the stud into the header. Quite simply, the hole cannot serve as a reference point if it does not exist.
While the court is aware that such a construction will read out the preferred method of assembly, which discloses a method where the hole is formed by a self-tapping screw after the stud is inserted into the header, this result, while perhaps unusual, is nevertheless permissible. See Rheox, 276 F.3d at 1327; see also Elekta Instruments S.A. v. O.U.R. Scientific Int'l., Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000). Because it is rare that a construction reading out the preferred embodiment will be the correct construction, the Federal Circuit has noted that such a construction requires "highly persuasive evidentiary support." Id. Sliptrack asserts that prosecution history is not the type of "highly persuasive evidence" sufficient to support such a construction. Sliptrack is incorrect, however, and the Federal Circuit has stated just the opposite. Id. ("[W]here the prosecution history requires a claim construction that excludes some but not all of the preferred embodiments, such a construction is permissible and meets the standard of "highly persuasive evidentiary support'"). Indeed, it is difficult to imagine evidence more "highly persuasive" than Sliptrack's remarks in its Amendment stating that the hole will be used as a reference point to align the stud with the vertical slot. Sliptrack relinquished its right to exclude products without a pre-drilled hole when it amended its claim and provided this explanation to the PTO to overcome the indefiniteness rejection.
Sliptrack vigorously defended its position at the summary judgment hearing by asking the court to distinguish "product" patents and "process" (or method) patents, arguing that the '760 patent is for a product, not a process and, thus, the order or method of assembly is not at issue, and it is not relevant when the hole in the stud is formed. Instead, Sliptrack asserted, in construing the claim, the court must look at the final product, which, by necessity, must include a "hole formed therein" and that such hole always will be aligned with the slots as long as the product is properly assembled.
Sliptrack's argument is persuasive and is supported by the written description, which provides two possible methods of assembly, one using a self-tapping screw after the stud is inserted into the header and one where the hole is pre-drilled. Presumably, the applicant would not have provided two "possible" methods of assembly if the patent itself was for a particular process or method. Despite what may have been intended by the inventor in theory, however, the court must rely on the objective, intrinsic evidence in the record. See Rheox, 276 F.3d at 1327 ("Reading the written description alone, this argument might be effective, but in light of the prosecution history, which was generated after the written description was drafted, it is apparent that Rheox relinquished any coverage of TSP."). Sliptrack simply cannot escape the prosecution history of the '760 patent, where, though perhaps unintentionally, counsel added an element of method or process by amending the claim in the manner he did and by noting that the hole would serve as a "reference point."
The PTO examiner initially rejected patentee's claims for indefiniteness. To address the examiner's concern, overcome the rejection, and get the application approved, counsel amended the claims as set forth above and filed the relevant remarks therewith. While there may have existed an alternative approach to address the examiner's concerns, this was the way prosecution counsel chose to confront the rejection. The court must construe the claims accordingly and cannot undo, by ignoring the prosecution history, what may have been an unintentional result by counsel. In addition to a patent's definitional function, the Supreme Court and the Federal Circuit have consistently recognized the paramount importance of a patent's public notice function, and "the public has a right to rely on such definitive statements made during prosecution." Rheox, 276 F.3d at 1325 (quoting Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)); see also Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, (1997); Vectra Fitness v. TNWK Corp., 162 F.3d 1379, 1384 (Fed. Cir. 1998) ("The public is entitled to rely upon the public record of a patent in determining the scope of the patent's claims"). Given the prosecution history, the court only can construe claims one and seven as requiring a pre-drilled hole.
B. Comparison to the Accused Device
Next, having construed the disputed claim language, the court must compare the relevant claims of the '760 patent to the accused device, which here is the slotted vertical track sold by Defendant Steeler. "In order for a court to find infringement, the plaintiff must show the presence of every element or its substantial equivalent in the accused device." Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994). Therefore, because the court has construed claims one and seven of the '760 patent to require that the "hole formed therein" be one that is pre-drilled, Steeler will only be liable for literal infringement if the products it manufactures and sells include such pre-drilled holes (direct infringement) or if it instructs its customers to assemble the device with a pre-drilled hole (contributory or induced infringement). Steeler contends that it does neither.
To support this contention, Steeler submitted evidence in the form of a declaration from Matt Surowiecki, a defendant in this action and the President of Steeler M s. In his declaration, Mr. Surowiecki stated that "Steeler M s, Inc. sells steel framing products including horizontal framing members, termed tracks', and vertical framing members, termed studs', but does not assemble them." Surowiecki Decl. at ¶ 2. Mr. Surowiecki further asserted that the studs it sells "do not have pre-drilled holes in their upper end portions for use to align the studs with a selected slot in the upper track, or for any other purpose." Surowiecki Decl. at ¶ 3. Finally, with regard to the use of the slotted tracks and studs by Steelers customers, Surowiecki explained that its customers assemble the slotted tracks and studs using the self-tapping screw method after the stud is inserted into the header, and further stated that neither he nor "Steeler M s, Inc. have ever instructed a customer to first drill a hole in the upper end portion of the stud and then use that hole to align the stud with a selected slot in the slotted track." Surowiecki Decl. at ¶¶ 7 and 8.
Sliptrack, in response, argues that Steeler's proffered evidence on the manufacture and sale of its products and use by its customers is insufficient and raises genuine disputes of fact. Specifically, Sliptrack contends that Mr. Surowiecki's declaration is not based on personal knowledge, does not contain the specific assembly instructions that are provided to Steeler's customers, that Steeler has contradicted itself on the sale of slotted track purchased from M Lite, Inc., another company that Sliptrack has accused of infringement, and that Steeler has failed to respond to discovery on the issue.
Sliptrack, however, as it must to defeat summary judgment, has not produced any specific evidence to counter Mr. Surowiecki's statements and create a genuine issue for trial. See Fed. R. Civ. Pro. 56(e) ("When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so respond, summary judgment, if appropriate shall be entered against the adverse party"). Moreover, while Sliptrack contends that Steeler's discovery responses are inconsistent, Steeler stated repeatedly in its responses that the company does not manufacture products or instruct its customers to assemble products in such a way as to infringe the '760 patent, statements which both support the declaration of Matt Surowiekci. See Min Decl., Exhs. 2 and 3. Given that the court has construed claims one and seven of the patent in the manner advocated by Steeler - to include the pre-drilled hole - the evidence produced by Steeler is consistent with a finding of non-infringement. Sliptrack has provided no specific counter evidence, nor has it provided to the court any discovery it believes will support its position and raise a genuine dispute as to whether Steeler sells or instructs its customers to assemble devices in an infringing manner.
Indeed, the court notes that, in his deposition for the lawsuit against M Lite, the inventor of the '760 patent confirmed that he was not aware of anyone using his product with studs that have pre-drilled holes. See Min Decl., Exh. 6, p. 13.
Accordingly, the court only can conclude, based on the evidence before it, that there is no genuine dispute of material fact with regard to the products Steeler sells or as to the assembly instructions it provides to its customers. Because Steeler does not sell studs with pre-drilled holes nor instruct its customers to assemble the studs in such a way, the court therefore finds no literal infringement as a matter of law.
C. Doctrine of Equivalents
Finally, having found no literal infringement, the court must consider the doctrine of equivalents. "The scope of a patent is not limited to its literal terms but instead embraces all equivalents to the claims described." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 533 U.S. 722, 732 (2002). Here, however, given the prosecution history of the '760 patent, Plaintiff is estopped from asserting the doctrine of equivalents.
"Prosecution history estoppel requires that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process. Estoppel is a rule of patent construction that ensures that claims are interpreted by reference to those that have been cancelled or rejected." Id. at 733 (internal citations and quotations omitted). In Festo, the Supreme Court made clear that,
[w]hen... the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent.
Id. at 733-34. "Estoppel arises when an amendment is made to secure the patent and the amendment narrows the patent's scope." Id. at 736. That is, estoppel arises when an amendment is made for a reason related to patentability. While such a narrowing amendment is not a complete bar to asserting the doctrine of equivalents in every case, Festo, 535 U.S. at 737, it will operate as an estoppel unless "the patentee [can] show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent." Id. at 741. Under Festo, therefore, the patentee bears the burden of proving both that the amendment was not related to patentability and that the amendment does not surrender the particular equivalent in question. Id. at 740-41.
Given the prosecution history here and the other evidence in the record, the court cannot conclude that the patentee has rebutted the presumption that estoppel applies and that the equivalent at issue - the hole made in the stud by a self-tapping screw after the stud is placed into the header - has been surrendered. The amendments to the application for the '760 patent and the remarks therewith regarding use of the hole as a reference point were made to address the patent examiner's indefiniteness rejections and, thus, were amendments related to patentability under § 112. Further, Plaintiff cannot contend that the equivalent at issue was unforeseeable or that the amendment did not surrender the particular equivalent at issue. Indeed, as discussed above, the very equivalent in question was disclosed in the specification as a "preferred method of assembly." Plaintiff, therefore, is estopped from asserting the doctrine of equivalents as to a hole formed by a self-tapping screw, or other similar means, after the stud is inserted into the header.
This result is also required by two recent cases out of the Federal Circuit in which the court discusses what it terms the "disclosure-dedication" rule. See Johnson & Johnston Assoc., Inc. v. R.E. Service Co., Inc., 285 F.3d 1046, 1054 (Fed. Cir. 2002); see also PSC Computer Products, Inc., v. Foxconn Int'l, Inc., 69 U.S.P.Q. 2d 1460, 1465 (Fed. Cir. 2004). In both Johnson & Johnston and PSC Computer Products, the court addressed the situation where, as here, the claims were narrower in scope than that set forth in the written description. The court concluded that, in such a scenario, the material disclosed in the description but not included within the scope of the claims was thereby dedicated to the public and could not be claimed under the doctrine of equivalents. See Johnson & Johnston, 285 F.3d at 1054 ("[W]hen a patent drafter discloses but declines to claim subject matter, as in this case, this action dedicates the unclaimed subject matter to the public"); see also, PSC Computer Products, 69 U.S.P.Q. 2d at 1464 ("We thus hold that if one of ordinary skill in the art can understand the unclaimed disclosed teaching upon reading the written description, the alternative matter disclosed has been dedicated to the public"). Reciting the fundamental principle that the claims define the limits of patent protection, the Johnson & Johnston court noted that "[a]pplication of the doctrine of equivalents to recapture subject matter deliberately left unclaimed would conflict with the primacy of the claims in defining the scope of the patentee's exclusive right.'" Johnson & Johnston, 285 F.3d at 1054 (quoting Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1424 (Fed. Cir. 1997)).
The disclosure-dedication rule must apply here where Sliptrack claimed narrowly but then disclosed as a "preferred method of assembly" use of a self-tapping screw to form the hole in the stud after it is inserted into the header. This disclosure is dedicated to the public and cannot be reclaimed under the doctrine of equivalents. In other words, as highlighted by the court in Johnson & Johnston, Sliptrack "cannot narrowly claim an invention to avoid prosecution scrutiny by the PTO, and then, after the patent issuance, use the doctrine of equivalents to establish infringement because the specification discloses the equivalents." Id.
Hence, under either the principle of prosecution history estoppel or the disclosure-dedication rule, Sliptrack may not claim that a product which uses a self-tapping screw (or other similar attachment means) to form a hole in the stud after it is inserted into the header is a substantial equivalent of that claimed in the '760 patent. The court therefore finds no infringement on this basis.
CONCLUSION
For the foregoing reasons, the court hereby GRANTS Defendants' Motion for Summary Judgment of non-infringement of the '760 patent. Given the prosecution history of the patent, the court only can conclude that the proper construction of claims one and seven requires that a hole be pre-drilled into the stud before it is inserted into the header. Under such a construction, there is no literal infringement. Defendants do not manufacture devices with pre-drilled holes, nor do they instruct their customers to assemble the device in such a way - a fact which Plaintiff has raised no material evidence to dispute. Finally, Plaintiff may not claim infringement under the doctrine of equivalents. Accordingly, the court concludes that Defendants are entitled to a judgment of non-infringement as a matter of law.
IT IS SO ORDERED.