Court Broadens Claim Scope and Remands
May 30, 2002
Last Month at the Federal Circuit - June 2002
Judges: Rader (author), Newman, and Schall
In Beckson Marine, Inc. v. NFM, Inc., No. 01-1301 (Fed. Cir. May 31, 2002), the Federal Circuit vacated and remanded the district court’s grant of SJ of noninfringement because the record did not support the district court’s claim construction. Accordingly, the Court also vacated a SJ of no invalidity based on the incorrect claim construction.
Beckson Marine, Inc. and others (collectively “Beckson”) sued NFM, Inc. (“NFM”), alleging infringement of U.S. Patent No. 4,363,350 (“the ‘350 patent”), which claims a portlight for use as a window in the wall of a boat. The specification and figures describe a spigot with outer walls running perpendicular to a mounting flange. The spigot extends through the boat wall, with the upper side of its lower portion providing a sill for the portlight. The sill includes drains to prevent an accumulation of water that may enter the boat when the portlight is opened. The claims of the ‘350 patent describe the sill as being provided with “a sloping drain groove,” the “drain groove being open at the top for a substantial portion of its length.” The SJ motion focused on the draining feature of the sill.
NFM began producing a rectangular portlight with sloped, opening drains in 1995. Beckson sued NFM for infringement of the ‘350 patent, and NFM counterclaimed, asserting, inter alia, that the ‘350 patent was invalid.
The district court had based its holding of noninfringement and no invalidity on its construction of the term “sloping drain groove.” In particular, the district court had construed “sloping drain groove” to require “a highly specific U-shaped drain channel of constant diameter/width,” as shown in the figures accompanying the ‘350 patent.
On appeal, NFM defended the district court’s claim construction based on the ordinary meaning of the claim term. In addition, NFM pointed to the figures of the ‘350 patent that showed long, narrow drains. To support its ordinary meaning construction, NFM cited a dictionary’s definition of the term “groove,” namely, “[a] long narrow furrow or channel.” However, the Federal Circuit remarked that NFM’s definition was not dispositive and pointed to another dictionary definition of the term “groove”–namely, “[a] channel or hollow, cut by artificial means, in metal, wood, etc.”
The ‘350 specification referred to the grooves with the broad term “draining structure,” suggesting that the applicant did not intend to limit the claim term “groove” to a specific width or length. Accordingly, the Federal Circuit found no basis for the district court’s narrow claim construction. The Court construed the claim term “sloping drain groove” to mean “a sloping artificial channel for flowing water.” The Court then remanded the case to the district court for additional claim construction on other limitations of the claim and for a determination of infringement based on the new claim constructions.
With respect to the issue of invalidity, the Federal Circuit vacated the district court’s determination that the ‘350 patent is not invalid and remanded the case for further proceedings. NFM had produced evidence that its oval portlight predated the ‘350 patent’s critical date. The district court, however, had held that because the oval portlight did not infringe the ‘350 patent, it also could not serve as the basis for a judgment of invalidity. The Federal Circuit disagreed, stating that any analogous or pertinent prior art can play a role in determining invalidity and a reference need not anticipate the invention to serve as prior art.
The Federal Circuit stated that Beckson’s assertion of literal infringement, standing alone, was not an admission that the ‘350 patent was invalid. The Court added, however, that if Beckson’s assertion had been based on a construction identical to the correct judicial claim construction, then its assertion could serve as additional evidence of invalidity, even anticipation, because that which literally infringes if later, anticipates if earlier.