March 2013
Device Merely Capable of Infringement with Alteration Does Not Necessarily Infringe
| Judges: Rader, Prost (author), Reyna |
| [Appealed from S.D. Tex., Judge Hughes] |
In Accent Packaging, Inc. v. Leggett & Platt, Inc., No. 12-1011 (Fed. Cir. Feb. 4, 2013), the Federal Circuit held that the district court erred in its construction of the claim terms “each” and “a respective one,” reversing-in-part the district court’s grant of SJ of noninfringement and remanding for entry of SJ of infringement with respect to certain claims. The Court also affirmed the district court’s denial of Accent Packaging, Inc.’s (“Accent”) motion for additional discovery pursuant to Fed. R. Civ. P. 56(d) and the district court’s dismissal of a Missouri Uniform Trade Secrets Act (“MUTSA”) cause of action for failure to state a claim.
U.S. Patent Nos. 7,373,877 (“the ’877 patent”) and 7,412,992 (“the ’992 patent”) are assigned to Accent, and are directed to a wire tier device that is used to bale recyclables or solid waste for easier handling. Accent sued Leggett & Platt, Inc. (“Leggett”) on April 26, 2010, asserting infringement of claims 1-5 of the ’877 patent, and claims 1, 3, 4, 7, and 10-14 of the ’992 patent, as well as a claim for violation of the MUTSA, based on Leggett’s alleged improper acquisition and copying of a “470 device.”
Claims 1-5 of the ’877 patent recite “elongated operator bodies, with each of the operator bodies being operably coupled with a respective one of said gripper, knotter, cutting element and cover” (emphases added). The district court concluded that this language required four “elongated operator bodies,” since “each” must be coupled to “a respective one” of the four specified items, i.e., the gripper, knotter, cutting element, and cover. Because Leggett’s accused “Pinnacle” device had only two elongated operator bodies, the district court granted SJ of noninfringement.
“‘The fact that it is possible’ to alter the Pinnacle so that the cover can be pivoted through a ninety degree arc ‘is not enough, by itself, to justify a finding that the manufacture and sale’ of the Pinnacle device infringe Accent’s patent rights.” Slip op. at 15 (quoting High Tech Med. Instrumentation v. New Image Indus., Inc., 49 F.3d 1551, 1556 (Fed. Cir. 1995)).
The Federal Circuit reversed, holding that the claims do not require four elongated operator bodies. The Court reasoned that “Leggett can only arrive at its added limitation requiring four elongated operator bodies by construing ‘each’ and ‘a respective one’ to require that each of the elongated operator bodies correspond to one and only one of the gripper, knotter, cutter, and cover.” Slip op. at 11-12. The Court noted that “in the preferred embodiment of the invention, two elongated operator bodies are operably coupled to both the knotter and the cover,” and that “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” Id. at 12 (quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004)). Because Leggett did not contest Accent’s assertion that, without a limitation requiring at least four elongated operator bodies, the Pinnacle device infringes claims 1-4 of the ’877 patent, the Federal Circuit directed the district court to enter SJ in favor of Accent on those claims.
The remaining asserted claims require a “mount” that permits pivoting through an arc “of at least about 90˚.” The district court determined that the Pinnacle’s mount does not pivot 90 degrees, and thus does not infringe. Accent argued that but for Pinnacle’s “SafeLatchTM” stop, which can be easily removed by the user, the Pinnacle’s mount would permit its cover to pivot through the required ninety-degree arc. Affirming the district court, the Federal Circuit rejected this argument, noting that the SafeLatchTM serves a “critical safety and service function,” and explaining that a “device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim.” Id. at 14-15 (quoting High Tech Med. Instrumentation v. New Image Indus., Inc., 49 F.3d 1551, 1555 (Fed. Cir. 1995)).
With regard to the district court’s denial of Accent’s Rule 56(d) motion for additional discovery, the Federal Circuit rejected Accent’s argument that additional discovery would have allowed Accent to discover whether Leggett intended or anticipated that the Pinnacle device would be operated without the SafeLatchTM stop. The Court noted that district courts have “wide discretion in managing discovery matters,” and that “the evidence already produced indicated that customers would have no rational reason to remove the SafeLatchTM stop.” Id. at 17.
Accent also challenged the district court’s dismissal of Accent’s claim under the MUTSA, asserting that the specifications and tolerances of its 470 device are trade secrets, and that Leggett misappropriated those trade secrets by obtaining and copying a 470 device. The Federal Circuit affirmed the dismissal, noting that Accent’s own complaint both acknowledged that the 470 device was sold in the regular stream of commerce and alleged that the 470 device is covered by the ’877 and ’992 patents. The Court explained that “[i]nformation that can be obtained from examining products sold into the publicdomain . . . cannot constitute a trade secret,” and that “any specifications and tolerances disclosed in or ascertainable from the asserted patents became publicly available in October 2005 when the ’877 patent application was published and, as such, could not constitute a trade secret.” Id. at 18-19.
