Edward H. Phillips v. Awh Corporation, Hopeman Brothers, Inc., and Lofton Corporation, Defendants-Cross

415 F.3d 1303
CourtCourt of Appeals for the Federal Circuit
DecidedFebruary 21, 2006
Docket03-1269, 03-1286
StatusPublished
Cited by3,223 cases

This text of 415 F.3d 1303 (Edward H. Phillips v. Awh Corporation, Hopeman Brothers, Inc., and Lofton Corporation, Defendants-Cross) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Edward H. Phillips v. Awh Corporation, Hopeman Brothers, Inc., and Lofton Corporation, Defendants-Cross, 415 F.3d 1303 (Fed. Cir. 2006).

Opinions

Opinion for the court filed by Circuit Judge BRYSON, in which Chief Judge MICHEL and Circuit Judges CLEVENGER, RADER, SCHALL, GAJARSA, LINN, DYK, and PROST join; and in which Circuit Judge LOURIE joins with respect to parts I, II, III, V, and VI; [1309]*1309and in which Circuit Judge PAULINE NEWMAN joins with respect to parts I, II, III, and V. Opinion concurring in part and dissenting in part filed by Circuit Judge LOURIE, in which Circuit Judge PAULINE NEWMAN joins. Dissenting opinion filed by Circuit Judge MAYER, in which Circuit Judge PAULINE NEWMAN joins.

BRYSON, Circuit Judge.

Edward H. Phillips invented modular, steel-shell panels that can be welded together to form vandalism-resistant walls. The panels are especially useful in building prisons because they are load-bearing and impact-resistant, while also insulating against fire and noise. Mr. Phillips obtained a patent on the invention, U.S. Patent No. 4,677,798 (“the ’798 patent”), and he subsequently entered into an arrangement with AWH Corporation, Hopeman Brothers, Inc., and Lofton Corporation (collectively “AWH”) to market and sell the panels. That arrangement ended in 1990. In 1991, however, Mr. Phillips received a sales brochure from AWH that suggested to him that AWH was continuing to use his trade secrets and patented technology without his consent. In a series of letters in 1991 and 1992, Mr. Phillips accused AWH of patent infringement and trade secret misappropriation. Correspondence between the parties regarding the matter ceased after that time.

In February 1997, Mr. Phillips brought suit in the United States District Court for the District of Colorado charging AWH with misappropriation of trade secrets and infringement of claims 1, 21, 22, 24, 25, and 26 of the ’798 patent. Phillips v. AWH Corp., No. 97-N-212 (D.Colo.). The district court dismissed the trade secret misappropriation claim as barred by Colorado’s three-year statute of limitations.

With regard to the patent infringement issue, the district court focused on the language of claim 1, which recites “further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls.” The court interpreted that language as “a means ... for performing a specified function,” subject to 35 U.S.C. § 112, paragraph 6, which provides that such a claim “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Looking to the specification of the ’798 patent, the court noted that “every textual reference in the Specification and its diagrams show baffle deployment at an angle other than 90 to the wall faces” and that “placement of the baffles at such angles creates an intermediate interlocking, but not solid, internal barrier.” The district court therefore ruled that, for purposes of the ’798 patent, a baffle must “extend inward from the steel shell walls at an oblique or acute angle to the wall face” and must form part of an interlocking barrier in the interior of the wall module. Because Mr. Phillips could not prove infringement under that claim construction, the district court granted summary judgment of noninfringement.

Mr. Phillips appealed with respect to both the trade secret and patent infringement claims. A panel of this court affirmed on both issues. Phillips v. AWH Corp., 363 F.3d 1207 (Fed.Cir.2004). As to the trade secret claim, the panel unanimously upheld the district court’s ruling that the claim was barred by the applicable statute of limitations. Id. at 1215. As to the patent infringement claims, the panel was divided. The majority sustained the district court’s summary judgment of noninfringement, although on different grounds. The dissenting judge would have reversed the summary judgment of noninfringement.

[1310]*1310The panel first determined that because the asserted claims of the ’798 patent contain a sufficient recitation of structure, the district court erred by construing the term “baffles” to invoke the “means-plus-function” claim format authorized by section 112, paragraph 6. Id. at 1212. Nonetheless, the panel concluded that the patent uses the term “baffles” in a restrictive manner. Based on the patent’s written description, the panel held that the claim term “baffles” excludes structures that extend at a 90 degree angle from the walls. The panel noted that the specification repeatedly refers to the ability of the claimed baffles to deflect projectiles and that it describes the baffles as being “disposed at such angles that bullets which might penetrate the outer steel panels are deflected.” ’798 patent, col. 2,11. 13-15; see also id. at col. 5, 11. 17-19 (baffles are “disposed at angles which tend to deflect the bullets”). In addition, the panel observed that nowhere in the patent is there any disclosure of a baffle projecting from the wall at a right angle and that baffles oriented at 90 degrees to the wall were found in the prior art. Based on “the specification’s explicit descriptions,” the panel concluded “that the patentee regarded his invention as panels providing impact or projectile resistance and that the baffles must be oriented at angles other than 90 .” Phillips, 363 F.3d at 1213. The panel added that the patent specification “is intended to support and inform the claims, and here it makes it unmistakably clear that the invention involves baffles angled at other than 90 .” Id. at 1214. The panel therefore upheld the district court’s summary judgment of noninfringement.

The dissenting judge argued that the panel had improperly limited the claims to the particular embodiment of the invention disclosed in the specification, rather than adopting the “plain meaning” of the term “baffles.” The dissenting judge noted that the parties had stipulated that “baffles” are a “means for obstructing, impeding, or checking the flow of something,” and that the panel majority had agreed that the ordinary meaning of baffles is “something for deflecting, checking, or otherwise regulating flow.” Phillips, 363 F.3d at 1216-17. In the dissent’s view, nothing in the specification redefined the term “baffles” or constituted a disclaimer specifically limiting the term to less than the full scope of its ordinary meaning. Instead, the dissenting judge contended, the specification “merely identifies impact resistance as one of several objectives of the invention.” Id. at 1217. In sum, the dissent concluded that “there is no reason to supplement the plain meaning of the claim language with a limitation from the preferred embodiment.” Id. at 1218. Consequently, the dissenting judge argued that the court should have adopted the general purpose dictionary definition of the term baffle, i.e., “something for deflecting, checking, or otherwise regulating flow,” id., and therefore should have reversed the summary judgment of noninfringement.

This court agreed to rehear the appeal en banc and vacated the judgment of the panel. Phillips v. AWH Corp., 376 F.3d 1382 (Fed.Cir.2004). We now affirm the portion of the district court’s judgment addressed to the trade secret misappropriation claims. However, we reverse the portion of the court’s judgment addressed to the issue of infringement.

I

Claim 1 of the ’798 patent is representative of the asserted claims with respect to the use of the term “baffles.” It recites:

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Bluebook (online)
415 F.3d 1303, Counsel Stack Legal Research, https://law.counselstack.com/opinion/edward-h-phillips-v-awh-corporation-hopeman-brothers-inc-and-lofton-cafc-2006.