Print PDF

Federal Circuit Puts a “Damper” on Summary Judgment of Noninfringement

May 07, 2001

Decision icon Decision

Last Month at the Federal Circuit - June 2001

Judges: Dyk (author), Lourie, and Rader

In Bernard Dalsin Manufacturing Co. v. RMR Products, Inc., No. 00-1308 (Fed. Cir. May 7, 2001) (nonprecedential decision), the Federal Circuit reversed a district court’s grant of SJ of noninfringement on the only claim at issue.

Bernard Dalsin Manufacturing Company (“Dalsin”) is the assignee of U.S. Patent No. 4,554,863 (“the ‘863 patent”), which is directed to a chimney damper attached to the top of a chimney flue. RMR Products, Inc. (“RMR”) also manufactures chimney dampers and, in its original suit, Dalsin accused RMR of infringing claim 1 of the ‘863 patent by making, using, and selling their “Icebreaker” and “Universal” chimney dampers.

The limitation at issue recites a “mounting means for mounting the flue cover means to the chimney flue.” The Federal Circuit found that there was a sufficient issue of material fact relating to the equivalency of the structure disclosed in the patentand that used in the accused products. The lower court had correctly determined that the mounting means described in the specification included a stem guide, stem, screws, and mounting brackets. Dalsin argued that the stem and stem guide should not be included in the mounting means, but the Federal Circuit found this argument to be unpersuasive. Dalsin also argued unsuccessfully that the mounting means is directed toward mounting the frame to the flue instead of the cover, but claim 1 clearly recites mounting means for mounting the flue-cover means to the flue and not the frame.

RMR argued that its devices utilize glue to attach the damper plate to the flue that is not equivalent to the disclosed plurality of mounting screws for purposes of 35 U.S.C. § 112, ¶ 6. The Federal Circuit determined that there was a genuine issue of material fact whether the use of glue was equivalent to screws and, therefore, that determination should be made by a jury.

Accordingly, the Court reversed the lower court’s finding of SJ and remanded the case to the district court for further proceedings