Nikken USA, Inc. v. Robinsons-May, Inc.

51 F. App'x 874
CourtCourt of Appeals for the Federal Circuit
DecidedNovember 20, 2002
DocketNos. 01-1420, 02-1006 and 02-1106
StatusPublished
Cited by2 cases

This text of 51 F. App'x 874 (Nikken USA, Inc. v. Robinsons-May, Inc.) 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
Nikken USA, Inc. v. Robinsons-May, Inc., 51 F. App'x 874 (Fed. Cir. 2002).

Opinion

LOURIE, Circuit Judge.

DECISION

Nikken, Inc. appeals from the decision of the United States District Court for the Central District of California granting HoMedics, Inc. and forty-one retail defendants (collectively, “HoMedics”) summary judgment that HoMedics’ magnetic therapy wrap products do not infringe U.S. Patent 5,304,111. Nikken USA, Inc. v. Homedics-USA, Inc., Nos. CV-99-9606, CV-99-10549, slip op. at 24-25 (C.D.Cal. Feb. 26, 2001) (“Reconsideration Order”). Nikken also appeals from the court’s decision granting HoMedics judgment as a matter of law (“JMOL”) that HoMedics’ magnetic therapy curved insole products do not infringe the ’111 patent, Nikken USA, Inc. v. Robinsons-May, Inc., Nos. CV-99-9606, CV-99-10549, slip op. at 7 (CD.Cal. Sept. 17, 2001) (“JMOL Order”), and that HoMedics’ infringement of U.S. Patent 4,489,711 by the straight insole products was not willful, id. at 14. HoMedics cross-appeals from the court’s decision denying its motion for JMOL with respect to infringement of the ’711 patent. Id. at 9. We ajfirm-in-part, reverse-in-part, and remand-in-part.

[877]*877BACKGROUND

Nikken owns U.S. Patents 5,304,111 and 4,489,711, both of which are directed to therapeutic magnets and methods of using therapeutic magnets to apply magnetic fields to the body. The Til patent claims a flexible magnetic sheet that has a curved magnetization pattern and that has therapeutic use when applied to a body surface location. Claim 4 recites a “magnetizable flexible sheet” with a “repeating pattern of non-concentric curved first and second areas of alternating magnetic polarity permanently magnetized integrally into the sheet.” Til patent, col. 5, 11. 40-45. Claims 5 and 8-10 depend from claim 4. The ’711 patent claims both a flexible magnetic sheet that has a straight magnetization pattern and a method for achieving magnetic therapy. Claim 1 recites a “flexible, permanently magnetized plastic sheet” that is “self adhesive to the skin or attachable to the skin by a self adhesive plaster compatible with the skin.” ’711 patent, col. 6,11. 36, 42-44. Claim 12 recites a method for achieving magnetic therapy that requires the step of “applying it to the skin area of the patient.” Id. at col. 7, 11. 15-16. Claims 14 and 15 depend from claim 12.

HoMedics sells two types of accused products. The first are wrap products that include discrete hard magnets sewn into flexible fabric material such as neoprene. The second are magnetized shoe insoles that have either straight or curved magnetization patterns.

Nikken brought suit against HoMedics and forty-one retailers for direct and contributory infringement, respectively, of the ’111 and ’711 patents.1 Nikken alleged that the fabric wrap products and the insoles having a curved magnetization pattern infringe claims 4, 5, and 8-10 of the ’111 patent. Nikken also alleged that the insoles having a straight magnetization pattern infringe claims 1, 12, 14, and 15 of the ’711 patent. Nikken further alleged that HoMedics’ infringement was willful.

The district court granted in part and denied in part HoMedics’ motion for summary judgment of noninfringement. First, the court addressed the fabric wrap products’ alleged infringement of claim 4 of the ’111 patent. Construing the phrase “magnetizable flexible sheet” to require that “the flexible sheet itself must be capable of being made a magnet,” Nikken USA, Inc. v. Homedics-USA, Inc., Nos. CV-99-9606, CV-99-10549, slip op. at 13 (C.D.Cal. Sept. 15, 2000) (“Summary Judgment Order”) (emphasis added), the court found that the fabric wrap products do not literally infringe claim 4 because they consist of magnets affixed to non-magnetizable materials such as neoprene and polyurethane, id. at 14. The court therefore granted HoMedics’ motion for summary judgment that the fabric wrap products do not literally infringe the ’111 patent. Id. at 21-22. However, the court found that the doctrine of equivalents raised a genuine issue of material fact and therefore denied HoMedics’ motion for summary judgment on that ground. Id. at 21.

Secondly, the court addressed the curved insole products’ alleged infringement of claim 4 of the ’111 patent. The court interpreted the phrase “having a planar skin compatible surface” to mean that the magnetizable sheet could have a single-, double-, or multiple-layer construction. Id. at 20-21. Finding that Nikken [878]*878had raised a genuine issue of material fact with regard to whether the curved insoles literally infringe the ’111 patent, the court denied HoMedics’ motion for summary judgment on that ground. Id. at 21.

Third, the court turned to the straight insole products’ alleged infringement of the ’711 patent. The court construed claim 1 to require “either that the product be self adhesive or that the product be ‘attachable to the skin by a self adhesive plaster compatible with the skin.’ ” Id. at 22 (citation omitted). Having thus construed claim 1 not to require the use of a self-adhesive plaster, the court found that claim 12’s “application” of the claimed invention to the body did not require the use of a self-adhesive plaster either. Id. at 23. Based on that claim construction, the court found the existence of genuine issues of material fact and denied HoMedics’ motion for summary judgment of noninfringement of the ’711 patent. Id. at 26.

The court then granted HoMedics’ motion for reconsideration of the summary judgment order in light of our November 2000 decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 56 USPQ2d 1865 (Fed.Cir.2000) (en banc), vacated in relevant part, 535 U.S. 722, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002). Finding that the “magnetizable flexible sheet” limitation was narrowed during prosecution by an amendment related to patentability, the court ruled that prosecution history estoppel completely barred a finding that the fabric wrap products infringe claim 4 of the 111 patent under the doctrine of equivalents. Reconsideration Order at 23. Accordingly, the court entered summary judgment that the fabric wrap products do not infringe the ’111 patent by equivalence. Id. at 25.

Having disposed of all the summary judgment motions, the court issued an order construing the remaining claims. Nikken USA Inc. v. Homedics-USA Inc., Nos. CV-99-9606, CV-99-10549 (C.D.Cal. Feb. 26, 2001) (“Claim Construction Order ”). The court considered three limitations found in claim 4 of the ’111 patent. The court stated that it had earlier construed, albeit in the context of distinguishing a prior art reference, the phrase “regular, translationally repeating pattern of non-concentric curved first and second areas of alternating magnetic polarity” to require that “magnets of one polarity are placed atop magnets of the other polarity.” Id. at 8 (quoting Summary Judgment Order at 18-19) (emphasis omitted). The court next interpreted the phrase “magnetized integrally into the sheet” to mean that “the ‘portion’ or ‘pattern’ referenced in the limitation is magnetized wholly, entirely, and completely into the sheet so that it is in a unified, harmonious whole with the sheet.” Id. at 11.

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Bluebook (online)
51 F. App'x 874, Counsel Stack Legal Research, https://law.counselstack.com/opinion/nikken-usa-inc-v-robinsons-may-inc-cafc-2002.