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Repeatedly Emphasizing a Feature of the Invention in the Specification May Result in a Disclaimer

August 03, 2007
Burgy, Adriana L.

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Last Month at the Federal Circuit - September 2007

Judges:  Michel, Gajarsa (author), Robinson (District Judge sitting by designation)

[Appealed from: S.D. Tex., Judge Gilmore]

In SafeTCare Manufacturing, Inc. v. Tele-Made, Inc., No. 06-1535 (Fed. Cir. Aug. 3, 2007), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement, holding that the patentee had disavowed certain features in the specification precluding a finding of literal or DOE infringement.

SafeTCare Manufacturing, Inc. (“SafeTCare”) sued seven defendants alleging infringement of SafeTCare’s U.S. Patent No. 6,357,065 (“the ’065 patent”). The ’065 patent is directed to a variable width bariatric modular bed that is particularly suitable for use by obese patients. Specifically, the bariatric bed disclosed in the ’065 patent is able to lift three times the weight of a typical hospital bed and is also wider, enabling better support for large patients. SafeTCare asserted infringement only of claim 12 of the ’065 patent. That claim recites, inter alia, “a plurality of electric motors carried by said frame and coupled to . . . deck sections for exerting a pushing force on said . . . deck sections . . . .” Slip op. at 3 (emphasis added).

The parties agreed that the term “pushing force” in claim 12 meant “a physical force applied in a direction away from the body exerting it.” Id. at 4. The district court subsequently issued an order construing the term in the same manner. Two of the defendants then moved separately for SJ of noninfringement. The district court granted both motions, docketed a “Final Judgment,” and dismissed the action. SafeTCare appealed.

On appeal, the Federal Circuit initially addressed the issue of whether it had jurisdiction. The Court noted that the parties had failed to determine the finality of the appealed judgment. It observed that the district court had not dismissed all the claims and counterclaims of all the defendants. The Court explained that “a statement by the district court that the judgment is final is by itself insufficient to establish [its] appellate jurisdiction . . . .” Id. at 6. Instead, the Court explained that it has appellate jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) only “from a final decision of a district court” and that for a judgment to be appealable to the Federal Circuit, “the district court must issue a judgment that decides or dismisses all claims and counterclaims for each party or that makes an express . . . determination under [Fed. R. Civ. P. 54(b)] that there is no just reason for delay.” Id. at 6-7.

The Court explained that because litigation on the merits remained pending in the district court, the parties’ reliance on the district court’s order labeled “Final Judgment” was misplaced. It noted that the judgment standing alone as issued by the district court was insufficient to establish dismissal of the entire action and, therefore, it could not be the basis for providing it with subject matter jurisdiction. Accordingly, the Court notified the parties before oral argument that they had failed to comply with Federal Rule of Appellate Procedure 28, which requires that an appellant establish the basis for the Court’s jurisdiction on appeal, and that there was no final decision providing for appellate jurisdiction pursuant to § 1295(a)(1). As a result, the district court entered a final judgment nunc pro tunc pursuant to Rule 54(b). The Federal Circuit explained that as a result of the district court’s Rule 54(b) judgment, it was vested with jurisdiction over the appeal.

The Court next turned to the merits of the appeal. It observed that the source of disagreement between the parties was not a factual issue.

Rather, it was a question of claim construction. Specifically, noted the Court, the question was whether the limitation in claim 12 of a motor “exerting a pushing force on said . . . deck sections” included within its scope a motor that indirectly exerts a force on the deck section and away from the motor. Specifically, the defendant argued that claim 12 did not include a motor that exerted a pulling force.

The Court resolved this issue by looking to the specification of the ’065 patent. The Court noted that “the specification ‘is always highly relevant to the claim construction analysis’” and that “it is dispositive; it is the single best guide to the meaning of a disputed term.” Id. at 10 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)). The Court explained that “the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor” and that in such a case, “the inventor’s intention, as expressed in the specification, is regarded as dispositive.” Id. at 11 (quoting Phillips, 415 F.3d at 1316). Applying these principles to the present case, the Court concluded that the patentee had disavowed motors that exert pulling forces because the patentee had repeatedly emphasized its invention as applying pushing forces as opposed to pulling forces, as evidenced by statements made in the “Background of the Invention” section, statements distinguishing its invention from the prior art, and statements in the “Detailed Description” section of the ’065 patent.

In finding disavowal, the Federal Circuit recognized the distinction between using the specification to interpret the meaning of a claim and importing a limitation from the specification. In this case, however, noted the Court, there was no danger of importing a limitation from the specification to the claims and that rather, it had relied on the specification merely to understand what the patentee had claimed and disclaimed. The Court observed that the written description repeatedly emphasized that the motor of the patented invention applies a pushing force, not a pulling force, and that the inventor made clear that this attribute of the invention was important in distinguishing the invention over the prior art. Accordingly, the Court concluded that the patentee had disclaimed motors that use pulling forces. Because the motor at issue in the accused device exerted a pulling force, the Federal Circuit affirmed the district court’s grant of SJ of no literal and DOE infringement.