Accused Device Infringes Where It Temporarily Meets the Claim Limitations
July 20, 2009
Last Month at the Federal Circuit - August 2009
Judges: Michel, Schall, Linn (author)
[Appealed from: W.D. Mich., Senior]
In Gemtron Corp. v. Saint-Gobain Corp., No. 09-1001 (Fed. Cir. July 20, 2009), the Federal Circuit affirmed the district court’s claim construction, grant of partial SJ of infringement by three accused products, denial of the defendant’s motion for JMOL on infringement by another accused product, denial of the defendant’s motion for JMOL on obviousness, denial of the defendant’s motion for a new trial, and grant of a permanent injunction.
Gemtron Corporation (“Gemtron”) owns U.S. Patent No. 6,679,573 (“the ’573 patent”), which is directed to a refrigerator shelf made up of two pieces, a one-piece open frame made of plastic and a glass panel. The claimed shelf secures the glass panel in the frame using “relatively resilient” fingers so that the glass panel is “snap-secured” into place. Gemtron accused Saint-Gobain Corporation (“Saint-Gobain”) of infringing claim 23 of the ’573 patent. Under claim 23, the frame must include “a relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure one of [the] glass piece front and rear edges.”
Saint-Gobain did not dispute that its accused refrigerator shelves met all of the limitations of claim 23 except for the “relatively resilient edge portion.” Slip op. at 5. The district court construed that limitation to mean “the end edge portion is sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame.” Id.
Weighing the expert evidence submitted by both parties, the district court granted SJ that three of Saint-Gobain’s products infringed claims 23-30. Further accused products were added to the suit, after which the case proceeded to trial on one refrigerator shelf selected as representative of the added products. The jury entered a verdict that the accused shelf infringed claim 23 and that claim 23 was not invalid. Denying Saint-Gobain’s motions for a new trial and JMOL, the district court entered judgment in Gemtron’s favor and granted and then stayed a permanent injunction.
On appeal, the Federal Circuit affirmed on all counts. In the Court’s view, the district court properly construed “relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure.” Each party agreed that the term required the frame to be “relatively resilient” at some time, disputing only precisely when the frame must be flexible to satisfy the “relatively resilient” limitation. Looking to the claim language and specification, the Court noted that each consistently focuses on the characteristics of the frame during assembly. Moreover, the specification lacks any discussion of the value of the “relatively resilient” frame for anything other than assembly. Accordingly, the Court affirmed that the “relatively resilient” limitation means that “the end edge portion must be sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame.” Id. at 10. Further, the Court specifically held that this construction did not transform the claim limitation into a “product-by-process” limitation. “Defining a structural component by its functional as well as its physical characteristics,” the Court held, “is different from defining a structure solely by the process by which it is made.” Id. at 11.
The Federal Circuit also upheld SJ of infringement and denial of Saint-Gobain’s post-trial motions regarding infringement. In the proceedings below, Saint-Gobain never disputed that the end portions of its accused frames can deflect to accommodate insertion of the glass during manufacture. Saint-Gobain’s only purported evidence to the contrary came in the form of unsworn attorney argument on appeal, which the Court disregarded. Moreover, the Court rejected Saint-Gobain’s argument that no infringing activities occurred in the United States simply because its refrigerator shelves, once imported, have cooled and are no longer flexible. Claim 23 requires only that “the frame of the claimed shelf has the structural characteristic of having been temporarily deflected and subsequently rebounded to snap-secure the glass at the time of manufacture.” Id. at 14. Because the shelves, when manufactured in Mexico, are heated, temporarily deflected, and subsequently rebounded when glass was being inserted into the frame, they satisfy the limitation. Saint-Gobain admitted to importation; therefore, even though it manufactured the shelves in Mexico, it infringed the ‘573 patent in the United States. Thus, the Court affirmed SJ of noninfringement of the three products originally in suit, finding no genuine issue as to any material fact. In addition, substantial, uncontroverted evidence supported the jury’s verdict that the representative Saint-Gobain shelf also infringed; therefore, the Court affirmed denial of Saint-Gobain’s post-trial motions regarding infringement.
The Court further upheld denial of Saint-Gobain’s post-trial motions for JMOL and for a new trial regarding invalidity. Saint-Gobain’s sole argument—that Gemtron’s expert testimony should have been excluded as directly contrary to the ‘573 patent—failed for two reasons. First, Saint-Gobain neglected to seek exclusion of the expert testimony at trial, thus waiving the argument. Second, Gemtron’s expert testimony was not directly contrary to the ‘573 patent, as Saint-Gobain alleged.
Finally, the Court upheld without comment the district court’s grant of a permanent injunction.
Summary authored by Tyler M. Akagi, Esq.