NPC v. International Precast Supply
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Opinion
NPC v . International Precast Supply CV-03-029-JM 09/28/04 P UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
NPC, Inc.
v. Civil N o . 03-029-JM Opinion N o . 2004 DNH 142 International Precast Supply, Inc.
O R D E R
NPC, Inc. (“Plaintiff”) owns United States Patent N o .
5,431,459 (the “‘459 patent”) for a wedge expander for increasing
the circumference of a circular clamping band. It sued
International Precast Supply, Inc. (“Defendant”) alleging that
Defendant’s device infringes the ‘459 Patent under the doctrine
of equivalents. Defendant moves for summary judgment on the
grounds that Plaintiff is estopped from asserting a doctrine of
equivalents infringement against Defendant because of prosecution
history estoppel. Plaintiff filed an objection. For the reasons
set forth below, Defendant’s motion is granted.
Standard of Review
Summary Judgment is appropriate only “if the pleadings,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P.
56(c). A genuine issue is one “that properly can be resolved
only by a finder of fact because [it] . . . may reasonably be
resolved in favor of either party.” Anderson v . Liberty Lobby,
Inc., 477 U.S. 2 4 2 , 250 (1986). A material fact is one that
affects the outcome of the suit. See id. at 248.
“Summary judgment is a procedure that involves shifting
burdens between the moving and the nonmoving parties.” LeBlanc
v . Great Am. Ins. Co., 6 F.3d 836, 841 (1st Cir. 1993). The
moving party bears the initial burden of establishing that there
is no genuine issue of material fact. See Celotex Corp. v .
Catrett, 477 U.S. 3 1 7 , 323 (1986). If that burden is met, the
opposing party can avoid summary judgment only by providing
properly supported evidence of disputed material facts that would
require trial. Id. at 324. Evidence that is “merely colorable,
or is not sufficiently probative” will not preclude summary
judgment. Anderson, 477 U.S. at 249-50 (citation omitted); see
also, LeBlanc, 6 F.3d at 842 (“the nonmoving party must establish
a trial-worthy issue by presenting enough competent evidence to
enable a finding favorable to the nonmoving party.”).
In considering a motion for summary judgment, the court
2 construes the record in the light most favorable to the non-
moving party, resolving all inferences in its favor, and then
determines whether the moving party is entitled to judgment as a
matter of law. Carroll v . Xerox Corp., 294 F.3d 2 3 1 , 237 (1st
Cir. 2002). The court does not likewise credit the nonmoving
party’s “conclusory allegations, improbable inferences, and
unsupported speculation.” Medina-Munoz v . R.J. Reynolds Tobacco
Co., 896 F.2d 5 , 8 (1st Cir. 1990). Applying the standard for a
motion for summary judgment, the facts are recited below.1
Background
I. Claimed Invention
The ‘459 patent covers an improved clamping device for
effecting a seal between a sewer pipe and a manhole riser. The
claimed wedge expansion mechanism includes two wedge followers
and two driving wedges. Generally speaking, these wedges have a
trapezoidal shape. The wedge followers each have a shank portion
that is inserted into an end section of a circular clamping band.
1 Defendant relies upon the Declaration of Michael R. Reinemann dated December 9, 2003 (“Reinemann Decl.”), and attached undisputed exhibits, in support of its motion. The exhibits include excerpts from the prosecution history of the ‘459 patent before the Patent and Trademark Office (“PTO”) and decisions from this District Court. To support its objection, Plaintiff submitted the Affidavit of Michael S . Owen dated January 2 7 , 2004 (“Owen Aff.”) and attached undisputed exhibits.
3 The driving wedges have angled edge sections that are formed as
U-shaped channels (i.e., grooves) that engage and capture the
angled, planar edges (i.e., tongues) of the wedge followers.
A bolt extends through saddles on the driving wedges and
engages a nut. When the bolt is tightened the driving wedges are
drawn closer together. Because the edges of the followers and
driving wedges are at an angle, when the driving wedges are drawn
together, the followers are forced further apart, thereby
expanding the circumference of the clamping band.
II. Prosecution History
The history of the ‘459 patent includes three related patent
applications. The first application (the “Parent Application”)
was filed on February 8 , 1991. Plaintiff filed a continuation
application on July 2 3 , 1992 (the “Continuation Application”) and
abandoned the Parent Application. On March 1 9 , 1993, Plaintiff
filed a third application (the Continuation-in-Part or “CIP
Application”) and abandoned the Continuation Application. The
CIP Application matured into the ‘459 patent, which issued on
July 1 1 , 1995 with 39 claims.2
2 “The function of claims is (a) to point out what the invention is in such a way as to distinguish it from what was previously known, i.e., from the prior art; and (b) to define the scope of protection afforded by the patent. In re Vamco Mach. &
4 A. Parent Application
Originally, claim 1 of the Parent Application contained the
following text:
A . first and second planar follower means for insertion in the first and second end sections, respectively, along the center line, each of said follower means having edges that diverge with respect to the center line, B . first and second wedge means lying along an axis that is transverse to the center line for controlling the separation of said follower means, each of said first and second wedge means being spaced from the center line and having edge means that diverge with respect to the transverse axis and spaced saddle means located along the transverse axis, . . .
Reinemann Decl., Ex. C . at 15 (emphasis added). As recited,
Plaintiff did not limit the edge of the follower means or of the
wedge means to any particular shape or configuration. Thus,
original claim 1 was broad enough to cover a wedge expander in
which either the tongues were on the followers and the grooves
were on the wedge, or alternatively in which the tongues were on
the wedges and the grooves were on the followers.
The patent examiner rejected all of the then-pending claims.
Reinemann Decl., Ex. E . Claim 1 , in particular, was rejected
under 35 U.S.C. § 102(b) as being clearly anticipated by a prior
Tool, Inc., 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985) (emphasis in original).
5 art wedge expander.3 Id. at 2 . There is no evidence that
Plaintiff either argued that original claim 1 was distinguishable
over the prior art, or that Plaintiff appealed the examiner’s
decision to the Board of Patent Appeals and Interferences.
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NPC v . International Precast Supply CV-03-029-JM 09/28/04 P UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
NPC, Inc.
v. Civil N o . 03-029-JM Opinion N o . 2004 DNH 142 International Precast Supply, Inc.
O R D E R
NPC, Inc. (“Plaintiff”) owns United States Patent N o .
5,431,459 (the “‘459 patent”) for a wedge expander for increasing
the circumference of a circular clamping band. It sued
International Precast Supply, Inc. (“Defendant”) alleging that
Defendant’s device infringes the ‘459 Patent under the doctrine
of equivalents. Defendant moves for summary judgment on the
grounds that Plaintiff is estopped from asserting a doctrine of
equivalents infringement against Defendant because of prosecution
history estoppel. Plaintiff filed an objection. For the reasons
set forth below, Defendant’s motion is granted.
Standard of Review
Summary Judgment is appropriate only “if the pleadings,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P.
56(c). A genuine issue is one “that properly can be resolved
only by a finder of fact because [it] . . . may reasonably be
resolved in favor of either party.” Anderson v . Liberty Lobby,
Inc., 477 U.S. 2 4 2 , 250 (1986). A material fact is one that
affects the outcome of the suit. See id. at 248.
“Summary judgment is a procedure that involves shifting
burdens between the moving and the nonmoving parties.” LeBlanc
v . Great Am. Ins. Co., 6 F.3d 836, 841 (1st Cir. 1993). The
moving party bears the initial burden of establishing that there
is no genuine issue of material fact. See Celotex Corp. v .
Catrett, 477 U.S. 3 1 7 , 323 (1986). If that burden is met, the
opposing party can avoid summary judgment only by providing
properly supported evidence of disputed material facts that would
require trial. Id. at 324. Evidence that is “merely colorable,
or is not sufficiently probative” will not preclude summary
judgment. Anderson, 477 U.S. at 249-50 (citation omitted); see
also, LeBlanc, 6 F.3d at 842 (“the nonmoving party must establish
a trial-worthy issue by presenting enough competent evidence to
enable a finding favorable to the nonmoving party.”).
In considering a motion for summary judgment, the court
2 construes the record in the light most favorable to the non-
moving party, resolving all inferences in its favor, and then
determines whether the moving party is entitled to judgment as a
matter of law. Carroll v . Xerox Corp., 294 F.3d 2 3 1 , 237 (1st
Cir. 2002). The court does not likewise credit the nonmoving
party’s “conclusory allegations, improbable inferences, and
unsupported speculation.” Medina-Munoz v . R.J. Reynolds Tobacco
Co., 896 F.2d 5 , 8 (1st Cir. 1990). Applying the standard for a
motion for summary judgment, the facts are recited below.1
Background
I. Claimed Invention
The ‘459 patent covers an improved clamping device for
effecting a seal between a sewer pipe and a manhole riser. The
claimed wedge expansion mechanism includes two wedge followers
and two driving wedges. Generally speaking, these wedges have a
trapezoidal shape. The wedge followers each have a shank portion
that is inserted into an end section of a circular clamping band.
1 Defendant relies upon the Declaration of Michael R. Reinemann dated December 9, 2003 (“Reinemann Decl.”), and attached undisputed exhibits, in support of its motion. The exhibits include excerpts from the prosecution history of the ‘459 patent before the Patent and Trademark Office (“PTO”) and decisions from this District Court. To support its objection, Plaintiff submitted the Affidavit of Michael S . Owen dated January 2 7 , 2004 (“Owen Aff.”) and attached undisputed exhibits.
3 The driving wedges have angled edge sections that are formed as
U-shaped channels (i.e., grooves) that engage and capture the
angled, planar edges (i.e., tongues) of the wedge followers.
A bolt extends through saddles on the driving wedges and
engages a nut. When the bolt is tightened the driving wedges are
drawn closer together. Because the edges of the followers and
driving wedges are at an angle, when the driving wedges are drawn
together, the followers are forced further apart, thereby
expanding the circumference of the clamping band.
II. Prosecution History
The history of the ‘459 patent includes three related patent
applications. The first application (the “Parent Application”)
was filed on February 8 , 1991. Plaintiff filed a continuation
application on July 2 3 , 1992 (the “Continuation Application”) and
abandoned the Parent Application. On March 1 9 , 1993, Plaintiff
filed a third application (the Continuation-in-Part or “CIP
Application”) and abandoned the Continuation Application. The
CIP Application matured into the ‘459 patent, which issued on
July 1 1 , 1995 with 39 claims.2
2 “The function of claims is (a) to point out what the invention is in such a way as to distinguish it from what was previously known, i.e., from the prior art; and (b) to define the scope of protection afforded by the patent. In re Vamco Mach. &
4 A. Parent Application
Originally, claim 1 of the Parent Application contained the
following text:
A . first and second planar follower means for insertion in the first and second end sections, respectively, along the center line, each of said follower means having edges that diverge with respect to the center line, B . first and second wedge means lying along an axis that is transverse to the center line for controlling the separation of said follower means, each of said first and second wedge means being spaced from the center line and having edge means that diverge with respect to the transverse axis and spaced saddle means located along the transverse axis, . . .
Reinemann Decl., Ex. C . at 15 (emphasis added). As recited,
Plaintiff did not limit the edge of the follower means or of the
wedge means to any particular shape or configuration. Thus,
original claim 1 was broad enough to cover a wedge expander in
which either the tongues were on the followers and the grooves
were on the wedge, or alternatively in which the tongues were on
the wedges and the grooves were on the followers.
The patent examiner rejected all of the then-pending claims.
Reinemann Decl., Ex. E . Claim 1 , in particular, was rejected
under 35 U.S.C. § 102(b) as being clearly anticipated by a prior
Tool, Inc., 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985) (emphasis in original).
5 art wedge expander.3 Id. at 2 . There is no evidence that
Plaintiff either argued that original claim 1 was distinguishable
over the prior art, or that Plaintiff appealed the examiner’s
decision to the Board of Patent Appeals and Interferences.
In response to the examiner’s action, Plaintiff withdrew
claim 1 and presented new claims 18 and 19 to the examiner during
an interview. The new claims provided in relevant part:
A . first and second integral, thin planar follower means each having a shank portion for being inserted along the center line into an end section of the clamping band and a trapezoidal head portion with a base that overlies the end section and with the divergent planar edge portions constituting the sides of the trapezoid, each said follower means being deformable to conform to a radius of curvature along the center line corresponding to the nominal radius of curvature whereby said follower means can conform to the profile of the clamping member,
B . first and second integral wedge means lying along an axis that is transverse to the center line for controlling the separation of said follower means, each of said first and second wedge means being spaced from the center line, having U-shaped edge means that diverge with respect to the transverse axis and that parallel said follower means edge portions for engaging said edge portions and having spaced saddle means located along the transverse axis and each said wedge means being deformable to conform to a radius of curvature about the transverse axis corresponding to
3 The prior art wedge expander was one of Plaintiff’s devices that pre-dated the Parent Application, thus making the earlier wedge expander prior art against the patent. See Reinemann Decl., Ex. D at 2 5 .
6 the nominal radius of curvature whereby said wedge means can conform to the profile of the clamping member, . . .
Reinemann Decl., Ex. F. (emphasis added). Thus, new claims 18
and 19 of the Parent Application (hereinafter referred to only as
“claims 18 and 19") rewrote original claim 1 to include, among
other things, “planar edge portions,” i.e., the tongues, to be
located on the followers, and for the “U-shaped edge means,”
i.e., the grooves, to be located on the wedges. The examiner
agreed that the new claims overcame the prior art of record. Id.
On April 9, 1992, Plaintiff submitted an Amendment Under 37
C.F.R. 1.111 formally presenting claims 18 and 1 9 . Reinemann
Decl., Ex. G. Plaintiff stated in the Remarks section that the
followers described in those claims have: “‘divergent planar edge
portions’ and is ‘deformable to conform’ to the radius of the
clamping band,” and that “[t]he prior art of Fig. 3 shows a
channel-like edge portions for the followers that interferes with
the ability to the deform (sic) the follower to conform to the
profile of the clamping band.” Id. at 11 (emphasis added).
Plaintiff further stated that, “Claims 18 and 19 also require
that the wedge means have U-shaped edge means that diverge for
engaging the edge portions.” Id. at 12 (emphasis added). This
7 was indicated to be in contrast with “the prior art Fig. 3
[which] discloses the U-shaped channels on the followers and a
planar edge on the wedge structure.” Id.
B. Continuation Application
On July 2 3 , 1992, Plaintiff filed the Continuation
Application and abandoned the Parent Application. Reinemann
Decl., Ex. H . Plaintiff did not present the claims that the
patent examiner found allowable in the Parent Application.
Rather, claim 1 of the Continuation Application stated in
relevant part:
A . first and second integral, thin planar follower means each having a shank portion for being inserted along the center line into an end section of the clamping band and a trapezoidal head portion with a base that overlies the end section and with the divergent planar edge portions constituting the sides of the trapezoid, each said follower means being deformable to conform to a radius of curvature along the center line corresponding to the nominal radius of curvature whereby said follower means can conform to the profile of the clamping member,
B . first and second integral wedge means lying along an axis that is transverse to the center line for controlling the separation of said follower means, each of said first and second wedge means being spaced from the center line and having edge means that diverge with respect to the transverse axis and that parallel said follower means edge portions for engaging said edge portions and having saddle means located along the transverse axis and each said wedge means being deformable to conform to a radius of curvature about
8 the transverse axis corresponding to the nominal radius of curvature whereby said wedge means can conform to the profile of the clamping member, . . .
Reinemann Decl., Ex. H at 16-17 (emphasis added). Although claim
1 of the Continuation Application states that the followers have
“planar edge portions,” it only refers to the wedges as “having
edge means.” Upon review, the examiner rejected claim 1 under 35
U.S.C. § 102(b) “as being clearly anticipated by applicant’s
prior art fig. 3.” Reinemann Decl., Ex. I at 2 . There is no
evidence that Plaintiff responded to the examiner’s rejection of
the Continuation Application.
C. CIP Application
Plaintiff subsequently filed its CIP Application and
abandoned the Continuation Application. Reinemann Decl., Ex. J.
The CIP Application includes material presented in the Parent and
Continuation Applications, but also includes new material not
included in the earlier applications.
Claim 1 of the CIP Application states in relevant part:
A . first and second integral follower means each having a shank portion for being inserted along the center line into a corresponding end section of the clamping member and a trapezoidal head portion with a base for overlying the end section and with the divergent planar edge portions constituting the sides of the trapezoid, each said follower means having an outer surface that corresponds to the nominal radius of
9 curvature,
B . first and second integral wedge means adapted for lying in a spaced relationship along an axis that is transverse to the center line to control the separation of said follower means, each of said first and second wedge means having a generally trapezoidal shape with edge means that diverge with respect to the transverse axis, that parallel said follower means edge portions and that terminate with outwardly facing open channel means for receiving said follower means planar edge portions, and having an outer surface for disposition about the transverse axis corresponding to the nominal radius of curvature, . . .
Reinemann Decl., Ex. J at 27-28 (emphasis added). Claim 25 was
first presented in the CIP Application. In addition to reciting
that the expansion means had tongues located on the followers and
the grooves on the wedges, claim 25 included as an element that
the wedges are made out of plastic. As filed in the CIP
Application, claim 25 provided in relevant part:
A . first and second integral follower means each having a shank portion for being inserted along the center line into a corresponding end section of the clamping member and a trapezoidal head portion with a base that overlies the end section and with the divergent planar edge portions constituting the sides of the trapezoid, each of said edge portions including a tongue extending therefrom and each of said follower means having an outer surface that corresponds to the nominal radius of curvature,
B . first and second integral plastic wedge means adapted for lying, in a spaced relationship along an axis that is transverse to the center line to control the separation of said follower means, each of said
10 first and second wedge means having a generally trapezoidal shape with edge means that diverge with respect to the transverse axis, that parallel said follower means edge portions and that terminate with outwardly facing grooves for receiving said tongues on said follower means and having an outer surface for disposition about the transverse axis that corresponds to the nominal radius of curvature, . . .
Reinemann Decl., Ex. J. at 38-39 (emphasis added).
In an Office Action mailed on January 7 , 1994, the patent
examiner rejected claim 1 of the CIP Application. Reinemann
Decl. Ex. K at 3 . Unlike the earlier rejection of original claim
1 of the Parent Application, which was based on anticipation by
the prior art wedge expander, this time the examiner found that
claim 1 of the CIP Application was obvious in light of the prior
art under 35 U.S.C. § 103. The examiner wrote:
The fig. 3 clamping system illustrates all the features of the present invention except the channels are on the follower means and not the wedge means. It would have been obvious to one of ordinary skill in the art at the time the invention was made to switch the channels from the follower means to edge means as such is considered to be a mere reversal of parts which does not patentably define over the prior art of record since no new or unexpected results occur from moving the channels from the follower means to the wedge means.
Reienmann Decl. Ex. K at 3 . In that same Office Action, the
patent examiner rejected claim 16 as being clearly anticipated by
the prior art. Id. at 2 . The examiner also rejected claims 1 ,
11 1 6 , and 25 under 35 U.S.C. § 112 finding that they were
indefinite for failing to particularly point out and distinctly
claim the subject matter regarded as the invention. Id.
Specifically, the examiner found that it was unclear “what the
wedge means are ‘integral’ with.” Id. Before concluding, the
examiner stated that claim 25 “would be allowable if rewritten or
amended under 35 U.S.C. § 112.” Id. at 4 .
Plaintiff next submitted an Amendment Under 37 C.F.R. 1.111,
which amended some of the language used in the CIP Application,
and which challenged the patent examiner’s findings on certain
claims. Reinemann Decl., Ex. L . Plaintiff amended claims 1 and
16 by replacing the original language of “first and second
integral follower means” with “first integral follower means and
second integral follower means,” and by replacing the original
language of “first and second integral wedge means” with “first
integral wedge means and second integral wedge means.” Id. at 1-
9. Similarly, Plaintiff amended claim 25 by replacing the
original language of “first and second integral follower means”
with “first integral follower means and second integral follower
means” and by replacing the language of “first and second
integral plastic wedge means” with “first integral plastic wedge
12 means and second integral plastic wedge means.” Id. at 6. In
the Remarks section, Plaintiff explained that “Claims 1 , 16 and
25 have been amended to clarify that each of the wedge means is
integral with itself and, likewise, that each of the follower
means is integral with itself.” Id. at 9-10.
Plaintiff then made the following argument for why claim 1
should not be considered obvious based upon the prior art:
Applicant respectfully submits that FIG. 3 fails to disclose or suggest that the followers means should be inserted into the clamping member as recited in claim 1 and that the wedge means should be formed with an open channel means for receiving the planar edge portions of the follower. These features, while seemingly simple, are the crux of the invention defined by this claim. That i s , the substantially increased utility of the present invention over the device of FIG. 3 depends upon these features.
Id. at 1 3 . In response to the examiner’s rejection of claim 1 6 ,
Plaintiff argued that claim 16 patentably distinguishes over the
teachings of FIG. 3 for the following three reasons: (1) the
follower means are insertable into the clamping band rather than
welded on the ends as taught by FIG. 3 ; (2) the integral wedge
means are deformable to conform its surface to the nominal radius
of the clamping band, whereas the driving wedges of FIG. 3 , once
formed, were not deformable; and (3) the fastening arrangement of
FIG. 3 does not disclose compression means having first and
13 second components loosely captured by the saddle means in the
first and second wedge means. Id. at 1 1 .
In a final Office Action, the patent examiner withdrew the
rejection of claim 1 based on obviousness, and the rejection of
claim 16 based on anticipation. Reinemann Decl., Ex. M .
However, the examiner maintained the rejection of claims 1 , 16
and 25 as being unclear because the Plaintiff’s use of the term
“integral” implied that the “means” are connected to or are a
part of something else. Reinemann Decl., Ex. M at 2 . The
examiner suggested that the term “integral” be deleted in all
instances to avoid confusion. Id.
The Plaintiff submitted a Response to Final Office Action
Under 37 C.F.R. 116 Expedited Procedure in which it deleted the
term “integral” from the elements of claims 1 , 16 and 2 5 .
Reinemann Decl., Ex. N at 9. The examiner then issued a Notice
of Allowance and Issue Fee Due. Reinemann Decl., Ex. O . The
‘459 patent issued thereafter.
II. The Accused Device
Plaintiff contends that certain devices manufactured by
Defendant infringe claim 2 5 , and certain dependent claims, under
the doctrine of equivalents. Defendant’s wedge style connector,
14 the accused device, includes an expansion means having a first
and second follower, each follower having a shank portion for
being inserted along the center line of a clamping band into a
corresponding end section of the band and having an outer surface
that corresponds to the nominal radius of curvature. The accused
device has a first and second plastic wedge, each wedge having an
outer surface that corresponds to the nominal radius of curvature
and a compression means. The bands of the accused device are
used and sold with a rubber connector boot with first and second
circular ends. Additionally, the plastic wedges and the head
portion of the followers are generally trapezoidal in shape.
Plaintiff admits that the accused device does not literally
infringe any claim of the ‘459 patent because the accused device
does not have tongues on its followers or grooves on its wedges.
Rather, Plaintiff alleges that the accused device has plastic
wedges with divergent planar edge portions and first and second
followers that have grooves that perform substantially the same
function, in substantially the same way, and achieve
substantially the same result as the wedge and follower structure
recited by claim 25 of the ‘459 patent.
15 III. Relevant Patent Claims
Plaintiff informed the Defendant through counsel that it
only intends to assert infringement of claims 2 5 , 2 6 , 2 7 , 29 and
30-37 in this litigation.4 Owen Aff., Ex. 1 . While Plaintiff’s
counsel noted in a letter that Plaintiff’s position was “without
prejudice or admission,” in response to the instant motion
Plaintiff states definitively that claim 1 , and its dependent
claims, are not at issue in this lawsuit. See Pl.’s Mem. of Law
In Support of Its Objection at 2 , and 3 n.2.
Defendant urges the Court to consider the prosecution
history of claim 1 , even though that claim is no longer at issue.
Defendant argues that prosecution history estoppel applies to
claim 25 because Plaintiff used the same narrowing language in
claim 25 that it added to claim 1 in order to overcome a patent
4 Of the claims that Plaintiff initially asserted, only claims 1 and 25 are independent claims. “An independent claim does not refer to any other claim of the patent and is read separately to determine its scope.” Jeneric/Pentron, Inc. v . Dillon Co., Inc., N o . 3:98-CV-818 (EBB), 1999 WL 66537 at *9 (D. Conn. Feb. 3 , 1999). In contrast, a dependent claim “refers to at least one other claim in the patent, includes all of the limitations of the claim to which it refers, and specifies a further limitation on that claim.” Id. A dependent claim is necessarily narrower than the independent claim upon which it relies. Id. If an accused device does not infringe an independent claim then it does not infringe a claim that is dependent on that claim. See Wolverine World Wide, Inc. v . Nike Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994).
16 examiner’s rejection based upon the prior art. In its response,
Plaintiff argues that the limiting elements in claim 1 cited by
Defendant did not relate to the patentability of either claim 1
or claim 2 5 . Therefore, Plaintiff argues that prosecution
history estoppel does not apply. In arguing its position,
Plaintiff at times refers to the prosecution history of claim 16
which, like claim 1 , is also not at issue.5
Discussion
I. Infringement Under the Doctrine of Equivalents
For an accused device to infringe a patent claim, it must
include each and every element that is recited in the asserted
claim either literally or equivalently. Beckson Marine, Inc. v .
NFM, Inc., 292 F.3d 7 1 8 , 724 (Fed. Cir. 2002). To literally
infringe a patent, the accused device must include each and every
element of at least one claim. Desper Prods., Inc. v . QSound
Labs., Inc., 157 F.3d 1325, 1337 (Fed. Cir. 1998). In this case,
the Plaintiff concedes that the Defendant’s device does not
literally infringe the ‘459 patent.
An accused device that does not literally infringe may still
be found to infringe under the doctrine of equivalents if each
5 The complete text of claims 1 , 1 6 , and 25 is cited in an appendix to this Order.
17 element of the claim is met either literally or equivalently.
Warner-Jenkinson C o . v . Hilton Davis Chem. Co., 520 U.S. 1 7 , 40
(1997). In some instances, however, a patent holder’s ability to
assert a doctrine of equivalents infringement may be precluded by
the rule of prosecution history estoppel. Prosecution history
estoppel limits the doctrine of equivalents “by denying
equivalents to a claim limitation whose scope was narrowed during
prosecution for reasons related to patentability.” Pioneer
Magnetics, Inc. v . Micro Linear Corp., 330 F.3d 1352, 1356 (Fed.
Cir. 2003). Prosecution history estoppel was established “to
hold the inventor to the representations made during the
application process and to inferences that may reasonably be
drawn from the amendment.” Festo Corp. v . Shoketsu Kinzoku Kogyo
Kabushiki Co., 535 U.S. 7 2 2 , 737-738 (2002) (“Festo VIII”). “By
amending the application, the inventor is deemed to concede that
the patent does not extend as far as the original claim.” Id. at
738. Moreover, “[a] patentee who narrows a claim as a condition
for obtaining a patent disavows his claim to the broader subject
matter, whether the amendment was made to avoid the prior art or
to comply with § 112.” Id. Whether prosecution history applies
is a question of law. Festo Corp. v . Shoketsu Kinzoku Kogyo
18 Kabushiki Co., 344 F.3d 1359, 1367-68 (Fed. Cir. 2003) (“Festo
I X ” ) ; Pioneer Magnetics, 330 F.3d at 1356.
This Court must first decide, then, whether Plaintiff is
estopped from asserting that the accused device infringes claim
25 of the ‘459 patent under the doctrine of equivalents.
“[W]here the claims do not ‘read on’ the accused structure ‘to
establish literal infringement’ and a prosecution history
estoppel makes clear that no actual infringement under the
doctrine of equivalents can be found’” summary judgment should be
granted for the alleged infringer. Townsend Eng’g C o . v . Hitec
Co., 829 F.2d 1086, 1089 (Fed. Cir. 1987) (quoting Brenner v .
U.S., 773 F.2d 306, 307 (Fed. Cir. 1985)).
Prosecution history estoppel imposes a rebuttable
presumption that the doctrine of equivalents is unavailable for a
particular limitation. Festo VIII, 535 U.S. at 737. A
plaintiff’s assertion of infringement of a claim under the
doctrine of equivalents will be foreclosed if the prosecution
history establishes three elements: (1) an amendment narrowed the
literal scope of the claim; (2) the amendment was for a
substantial reason related to patentability; and (3) the
plaintiff surrendered all subject matter between the original
19 claim limitation and the amended claim limitation. Festo I X , 344
F.3d at 1366.
If the claim at issue has been narrowed by amendment, the
patent holder has the burden to establish that the reason for the
amendment was not one related to patentability. Pioneer
Magnetics, 330 F.3d at 1356. If the prosecution history does not
establish the reasons for an amendment, it is rebuttably presumed
under the Supreme Court’s holding in Warner-Jenkinson to relate
to patentability. Id.; see also Festo I X , 344 F.3d at 1366. The
patentee again has the burden of overcoming the presumption with
a showing that the reason for the amendment was not one relating
to patentability. Festo I X , 344 F.3d at 1367. The patentee must
make this showing with evidence contained in the prosecution
history record. Id. If the patentee demonstrates that the
amendment was not made for a reason relating to patentability,
then prosecution history estoppel does not apply. Id.
If the court finds that the patentee made a narrowing
amendment for a substantial reason relating to patentability, the
court must then address the scope of the subject matter
surrendered by the narrowing amendment. Festo I X , 344 F.3d at
1367. Here again, a rebuttable presumption applies. “Festo VIII
20 imposes the presumption that the patentee has surrendered all
territory between the original claim limitation and the amended
claim limitation.” Id. The Supreme Court identified three ways
that this rebuttable presumption may be overcome. Thus, the
presumption may be overcome if the patentee demonstrates: (1)
that the alleged equivalent was unforeseeable at the time of the
narrowing amendment, or (2) bore no more than a tangential
relation to the equivalent, or (3) that there was some other
reason the patentee could not have been expected to describe the
alleged equivalent. Festo VIII, 535 U.S. at 740-41. If the
patentee succeeds in rebutting the presumption, the case will
continue; if the patentee is unsuccessful, then prosecution
history estoppel will prevent any claim of infringement under the
doctrine of equivalents. Festo I X , 344 F.3d at 1367.
II. Whether Plaintiff’s Infringement Claim Is Estopped
A. Narrowing Amendments in the Parent Application
Central to resolving the instant motion is the determination
of the relevant narrowing amendment. Defendant argues that, in
response to an examiner’s action rejecting all of the then
pending claims based on the prior art, Plaintiff narrowed the
scope of original claim 1 in the Parent Application to
21 specifically require that planar edge portions be located on the
followers, and that the grooves be located on the wedges.
Plaintiff argues, however, that the pertinent narrowing amendment
in the Parent Application dealt with deformable planar followers
that had planar edges to make them “deformable.”
Original claim 1 of the Parent Application provided that the
expansions means had:
A . first and second planar follower means for insertion in the first and second end sections, respectiveely, along the center line, each of said follower means having edges that diverge with respect to the center line, B . first and second wedge means lying along an axis that is transverse to the center line for controlling the separation of said follower means, each of said first and second wedge means being spaced from the center line and having edge means that diverge with respect to the transverse axis and spaced saddle means located along the transverse axis, . . .
Reinemann Decl., Ex. C . at 15 (emphasis added). After that claim
was rejected by the patent examiner, Plaintiff rewrote claim 1 in
claims 18 and 1 9 :
A . first and second integral, thin planar follower means each having a shank portion for being inserted along the center line into an end section of the clamping band and a trapezoidal head portion with a base that overlies the end section and with the divergent planar edge portions constituting the sides of the trapezoid, each said follower means being deformable to conform to a radius of curvature along
22 the center line corresponding to the nominal radius of curvature whereby said follower means can conform to the profile of the clamping member,
B . first and second integral wedge means lying along an axis that is transverse to the center line for controlling the separation of said follower means, each of said first and second wedge means being spaced from the center line, having U-shaped edge means that diverge with respect to the transverse axis and that parallel said follower means edge portions for engaging said edge portions and having spaced saddle means located along the transverse axis and each said wedge means being deformable to conform to a radius of curvature about the transverse axis corresponding to the nominal radius of curvature whereby said wedge means can conform to the profile of the clamping member, . . .
Reinemann Decl., Ex. F. (emphasis added). Thus, claims 18 and 19
included limiting elements specifying “planar edge portions,”
located on the followers, and “U-shaped edge means,” located on
the wedges. Id. Additionally, the claims 18 and 19 also
included limiting elements specifying that the follower means are
“deformable to conform to a radius of curvature along the center
line.” Id. Upon review of claims 18 and 1 9 , the examiner agreed
that they overcame the prior art of record, but he did not
specify the rationale supporting that conclusion. Id.
In the Court’s view, the record supports a finding that the
language cited by both parties narrowed the literal scope of
claims 18 and 1 9 . Plaintiff has not cited any persuasive
23 evidence from the prosecution history record to rebut the
presumption that the inclusion of the limiting elements
specifying the inclusion of planar edge portions on the followers
and U-shaped edge means on the wedges was an amendment to claims
18 and 19 narrowing their scope to overcome the patent examiner’s
rejection of original claim 1 . Plaintiff’s contention that the
limiting element that is the pertinent narrowing amendment here,
namely that the followers are “deformable to conform its outer
surface to a radius corresponding to the nominal radius of
curvature,” is inapposite. That limitation appears only in claim
16 of the ‘459 patent, which is not at issue.
The Court further finds that the relevant narrowing
amendment to claims 18 and 19 is included in claim 25 of the ‘459
patent. Claim 25 provides that the followers have “divergent
planar edge portions constituting the sides of the trapezoid,
each of said edge portions including a tongue extending
therefrom.” ‘459 patent, Col. 1 4 , lines 63-68, Col. 1 5 , lines 1-
5. Claim 25 further provides that the plastic wedges have
“outwardly facing grooves for receiving said tongues.” ‘459
patent, Col. 1 5 , lines 6-19. Plaintiff used the exact same
“planar edge portions” language as an element of the follower
24 means in the narrowing amendment to claims 18 and 1 9 , and in
claims 1 and 25 of the ‘459 Patent. Plaintiff has not made any
persuasive argument that the differing language used to describe
the channel element of the wedge means -- “U-shaped edge means”
in claims 18 and 1 9 , “outwardly facing open channel” in claim 1
of the ‘459 patent, and “outwardly facing grooves” in claim 25 of
the ‘459 patent, are distinguishable. In any event, Plaintiff
does not dispute that prosecution history estoppel is not
concerned with the particular language chosen by the patentee for
different claims but with comparing the original claim scope with
the scope of the amended or newly added claims. Festo I X , 344
F.3d at 1366. Accordingly, the Court finds that the narrowing
amendment at issue used in claims 18 and 19 was also used in
claim 25 of the ‘459 patent.
B. Whether Claim 25 Was Amended for a
Substantial Reason Relating to Patentability
Defendant argues that prosecution history estoppel applies
to claim 25 of the ‘459 patent because Plaintiff used the same
language in claim 25 that it used in claims 18 and 1 9 , and in
claim 1 of the ‘459 patent, in order to overcome a rejection
based upon the prior art. The prosecution history record, and
the relevant authorities, supports Defendant’s argument.
25 The Court has already found that the narrowing limitation at
issue was added to claims 18 and 19 to overcome the examiner’s
rejection based upon the prior art. Despite Plaintiff’s argument
to the contrary, the Court further finds that the narrowing
amendment at issue was clearly material to the patentability of
claim 1 of the ‘459 patent. The patent examiner rejected claim 1
of the CIP Application, which included the narrowing amendment at
issue, based on obviousness in light of the prior art. In so
doing, the examiner explained that:
The fig. 3 clamping system illustrates all the features of the present invention except the channels are on the follower means and not the wedge means. It would have been obvious to one of ordinary skill in the art at the time the invention was made to switch the channels from the follower means to edge means as such is considered to be a mere reversal of parts which does not patentably define over the prior art of record since no new or unexpected results occur from moving the channels from the follower means to the wedge means.
Reienmann Decl. Ex. K at 3 (emphasis added). In its response to
the examiner arguing for the patentability of claim 1 of the CIP
Application, Plaintiff asserted that the prior art failed to
disclose or suggest: (1) “that the followers means should be
inserted into the clamping member” and (2) “that the wedge means
should be formed with an open channel means for receiving the
planar edge portions of the followers.” Plaintiff then stated
26 that “[t]hese features, while seemingly simple, are the crux of
the invention defined by this claim.” Reinemann Decl., Ex. L at
13 (emphasis added). The examiner subsequently withdrew his
objection to claim 1 of the CIP on the basis of obviousness.
Despite having stated categorically that the limitation that
the wedge means should be formed with an open channel means was
“the crux of the invention,” Plaintiff now contends that it is
not possible to discern why the examiner withdrew the obviousness
objection because the examiner did not state his reasoning in the
record. Plaintiff asserts that it also gave the examiner
additional reasons why claim 1 of the CIP Application was
patentable. Thus, Plaintiff argues, the Court may not find that
the limitation specifying that the wedge means have an open
channel means was added for a substantial reason relating to the
patentability of claim 1 of the ‘459 patent.
The Court rejects Plaintiff’s argument. If prosecution
history estoppel means anything, a party simply cannot argue to a
patent examiner in order to overcome a rejection that a
particular configuration on a device “the crux”6 of the invention
6 See e.g., Webster’s New World College Dictionary 334 (3d ed. 1996) (defining the term “crux” as “the essential or deciding point.”). 27 defined by the claim, and then later assert in litigation that
the same configuration is not material to that claim’s
patentability. The only reasonable inference that may be drawn
from the record is that the examiner withdrew his objection that
“switch[ing] the channels from the follower means to edge means”
is “a mere reversal of parts which does not patentably define
over the prior art,” because of Plaintiff’s argument to the
contrary. Accordingly, the Court finds that the addition of the
narrowing amendment to claims 18 and 19 to claim 1 of the CIP
Application was material to the patentability of claim 1 .
The relevant authorities further support a finding that
prosecution history estoppel arises with regard to claim 25
where, as here, the Plaintiff used the same narrowing language in
claim 25 that was added to an earlier claim to avoid prior art.
In Builders Concrete, Inc. v . Bremerton Concrete Prods. Co., 757
F.2d 255 (Fed. Cir. 1985), the court held that prosecution
history estoppel applied to an independent claim that was not
amended during prosecution because it contained the same clause
as another claim that was subject to a narrowing amendment in
response to a patent examiner’s rejection. Notably, the Federal
Circuit stated in Builders Concrete:
28 Although claim 10 is the only claim in suit, the prosecution history of all claims is not insulated from review in connection with determining the fair scope of claim 1 0 . To hold otherwise would be to exalt form over substance and distort the logic of this jurisprudence, which serves as an effective and useful guide to the understanding of patent claims. The fact that the “passage” clause of patent claim 10 was not itself amended during prosecution does not mean that it can be extended by the doctrine of equivalents to cover the precise subject matter that was relinquished in order to obtain allowance of claim 1 .
Id. at 260 (emphasis added). The Federal Circuit has similarly
held in other cases. In Deering Precision Instruments, L.L.C. v .
Vector Distrib. Sys.,, 347 F.3d 1314 (Fed. Cir. 2003), for
instance, the court held that prosecution history estoppel
applied to independent claim 4 of the patent in suit even though
claim 4 was never amended during prosecution, because it
contained the same limitation that was added to claim 1 to obtain
allowance of claim 1 . Id. at 1326; see also Bai v . L & L Wings,
Inc. 160 F.3d 1350, 1356 (Fed. Cir. 1998) (finding that a patent
applicant may not amend a claim in response to an examiner’s
prior art rejection, and then later challenge its necessity in a
subsequent infringement action on the allowed claim).
This District Court has also decided the issue presented in
this case adversely to the Plaintiff’s position. In Leoutsakos
v . Coll’s Hosp. Pharm., Inc., N o . Civ. 00-356-M, 2002 WL 126608
29 (D.N.H. Jan. 1 7 , 2002), the patentee sued the defendants alleging
infringement of a patent for a support apparatus that assists
persons with impaired mobility to get in and out of bed. Id. at
*1. Claim 1 of the original patent application recited as one of
its elements a “means to attach [a] tubular member.” In response
to a rejection by the patent examiner, the patentee rewrote this
element of claim 1 to recite a “detachable means to attach [a]
tubular member.” Since the accused device included a welded
tubular member, the patentee conceded that it did not literally
infringe his patent. Still, the patentee asserted an
infringement claim based on the doctrine of equivalents. The
court granted the defendant’s motion for summary judgment finding
that:
the prosecution history demonstrates that claim one was narrowed, to exclude any means of attachment other than detachable amendment, for reasons related to patentability. Accordingly, the doctrine of prosecution history estoppel bars [the plaintiff] from claiming non-detachable attachment, such as welding, as an equivalent of the detachable attachment disclosed in the [patent in suit].
Id. at * 9 .
In another case decided in this District Court, Heidelberg
Harris, Inc. v . MAN Roland, Inc., N o . C-95-309-B, slip. o p . at 1
(D.N.H. Mar. 2 5 , 1998), the plaintiff sued the defendant seeking
30 a declaration that its off-set printing press did not infringe
the defendant’s patent. One of the claim elements of the patent
in suit described a print cylinder component as being “a
cylindrical rotating body.” When the patentee first filed the
patent application, however, the claim simply described the print
cylinder as a “rotating body.” It was only after the patent
application was twice rejected based on the prior art that the
inventor amended this element by adding the term “cylindrical.”
The Court found that the prosecution history record demonstrated
that the patentee’s claim was limited to having a “cylindrical”
print cylinder so as to patentably distinguish it over the prior
art, which showed print cylinders having clamping channels. Id.
at 23-24. While the plaintiff’s print cylinder included a
clamping channel like the prior art, the patentee argued that the
plaintiff’s device infringed under the doctrine of equivalents.
The court disagreed. The Court held that the patentee was
precluded as a matter of law through prosecution history estoppel
from relying on the doctrine of equivalents to recapture what it
had given up during prosecution of the patent. Id. at 24-26.
The Court finds that the holdings of Builders Concrete, Deering,
Leoutsakos, and Heidelberg Harris support a finding that because
31 Plaintiff included the limiting elements at issue in claim 25 of
the CIP Application, Plaintiff thereby narrowed the scope of
The case of Al-Site Corp. v . VSI Intern., Inc., 174 F.3d
1308 (Fed. Cir. 1999), cited by the Plaintiff, is inapposite
because, unlike in Al-Site, here the Court finds that claim 25 of
the ‘459 patent includes a narrowing limitation that was added to
claims 18 and 19 of the Parent Application in order to overcome
the examiner’s rejection. See Cummins-Allison Corp. v . Glory
Ltd., N o . 02 C 7008, 2003 WL 355470 at *18-19 (N.D. Ill. Fed. 1 2 ,
2003) (distinguishing Al-Site where the patent claim at issue
included the same, although not identical, narrowing limitation).
That claim 25 does not also include another narrowing amendment
to claims 18 and 19 of the Parent Application, namely the
specification of the deformability of the followers, does not
change the result.
Plaintiff further argues that while claim 25 was amended
once, that amendment was not for a substantial reason relating to
patentability, and that the narrowing amendment to claims 18 and
1 9 , included in claim 2 5 , was not material to the patentability
of claim 2 5 . These additional arguments are unpersuasive.
32 For purposes of the instant motion, Defendant does not
challenge Plaintiff’s contention that the amendment to claim 25
deleting the word “integral” was not made for a substantial
reason relating to patentability. Therefore, the Court need not
further consider the significance of that amendment.
Returning to the materiality to claim 25 of the narrowing
amendment made to claims 18 and 1 9 , Plaintiff points out that
both claims 1 and 25 of the CIP Application included the
narrowing amendment, but claim 1 was rejected based on
obviousness while claim 25 was not. Therefore, Plaintiff argues,
the narrowing amendment at issue was not material to the
patentability of claim 2 5 . This argument is without merit.
The examiner found that the prior art illustrates all of the
features of claim 1 except for the reversal of the locations of
the tongues and the grooves. The patent examiner did not make
the same finding with regard to claim 2 5 . Therefore, that the
patent examiner did not reject claim 25 of the CIP Application
based on obviousness. However, this distinction between claim 1
and claim 25 has no bearing on whether the narrowing amendment at
issue was material to the patentability of claim 2 5 .
Plaintiff further argues that the prosecution history of
33 claim 1 6 , an independent claim that issued without the narrowing
amendment at issue, shows that the narrowing amendment was not
material to the patentability of claim 2 5 . Plaintiff asserts
correctly that claim 16 does not specify the inclusion on the
wedge means of U-shaped edge means (as stated in claims 18 and
1 9 ) , outwardly facing open channels (as stated in claim 1 of the
‘459 patent), or outwardly facing grooves (as stated in claim 25
of the ‘459). However, Plaintiff’s argument that the issuance of
claim 16 supports a finding that claim 25 had features that would
have made it allowable over the prior art even without the
narrowing amendment does not follow.
The prosecution history record shows that the examiner must
have found that claim 16 had patentable features without the
narrowing amendment at issue. After the examiner rejected claim
16 of the CIP Application based on anticipation by the prior art,
Plaintiff argued in response that claim 16 patentably
distinguishes over the teachings of the prior art for the
following three reasons: (1) the follower means are insertable
into the clamping band rather than welded on the ends as taught
by the prior art; (2) the integral wedge means are deformable to
conform its surface to the nominal radius of the clamping band,
34 whereas the driving wedges of the prior art, once formed, were
not deformable; and (3) the fastening arrangement of the prior
art does not disclose compression means having first and second
components loosely captured by the saddle means in the first and
second wedge means. Reinemann Decl., Ex. L at 11. 7
After considering Plaintiff’s argument, the examiner
withdrew the rejection of claim 1 6 . There is no similar support
for the patentability of claim 2 5 . Rather, the record supports
the inference that had the Plaintiff not included the narrowing
amendment claim 25 would have been rejected.
Each time Plaintiff presented a claim to the patent examiner
that did not include the narrowing amendment at issue the
examiner rejected i t . In the Parent Application and the
Continuation Application Plaintiff recited claims providing that
the wedges had “edge means.” Those claims were rejected. When
Plaintiff subsequently presented claim 16 of the CIP Application,
also without specifying that the wedges had channels or grooves,
7 The limiting elements that the wedgee are “deformable to conform to its outer surface to a radius corresponding to the nominal radius of curvature” and that wedges have “saddle means located along the transverse axis” was included in the narrowing amendment that Plaintiff first presented in claims 18 and 19 to overcome the patent examiner’s rejection of original claim 1 of the Parent Application based on anticipation.
35 that claim too was rejected. It was not until after Plaintiff
argued to the examiner for the patentability of claim 1 6 ,
highlighting features that were included in claims 18 and 1 9 ,
which had been found allowable, that the objection to claim 16
was withdrawn. Given this history, the Court finds that the
allowance of claim 16 without the narrowing amendment at issue
does not support a finding that the narrowing amendment at issue
was not material to the patentability of claim 2 5 .
C. Surrender of all Subject Matter Between the Original Claim Limitation and the Amended Claim Limitation
To overcome the presumption that Plaintiff has surrendered
the entire range of equivalents by adding the narrowing amendment
at issue to claim 2 5 , Plaintiff bears the burden of proving that,
at the time the amendment was made, one skilled in the art could
not reasonably be expected to have drafted a claim that would
have literally encompassed the alleged equivalent. Festo VIII,
535 U.S. at 741. Plaintiff may meet this burden by showing: (1)
the alleged equivalent was unforeseeable at the time of the
amendment to one of ordinary skill in the art; (2) the rationale
for the amendment bears only a tangential relation to the alleged
equivalent; or (3) there was some “other reason” such that the
patentee could not reasonably have been expected to have
36 described the alleged equivalent. Id. at 740-41.
Plaintiff fails to rebut the presumption that it surrendered
all subject matter between the original limitation in claim 1 of
the Parent Application and the amended claim limitation in claims
18 and 19 because none of the three exceptions to the presumption
of surrender applies here. First, the prior art wedge expander
used the same configuration employed in the accused device.
“[I]f the alleged equivalent were known in the prior art in the
field of the invention, it certainly should have been foreseeable
at the time of the amendment.” Festo I X , 344 F.3d at 1369.
Second, Plaintiff has not established that the narrowing
amendment at issue bore only a tangential relationship to the
alleged equivalent. The Court has found that the narrowing
amendment at issue was made to avoid prior art that contains the
equivalent in question. Therefore, it cannot be considered
tangential. Id. And third, Plaintiff has not demonstrated that
there was any “other reason,” it could not reasonably have been
expected to have described the alleged equivalent. Therefore,
the Court finds that prosecution history estoppel bars
Plaintiff’s infringement claim against the Defendant of claim 25
of the ‘459 patent, and its dependent claims, under the doctrine
37 of equivalents. Accordingly, the Court finds that the Defendant
is entitled to summary judgment of noninfringement.
Conclusion
For the reasons set forth above, Defendant’s motion for
summary judgment (document n o . 37) is granted. The Clerk of
Court is directed to enter judgment in favor of the Defendant and
close the case.
SO ORDERED.
James R. Muirhead United States Magistrate Judge Date: September 2 8 , 2004
cc: Michael R. Reinemann, Esq. Robert W . Upton I I , Esq. Arnold Rosenblatt, Esq. Daniel Bourque, Esq.
38 APPENDIX
The following is the text of the claims in United States
Patent N o . 5,431,459 cited in the Court’s Order.
1. Claim 1
The text of claim 1 , as recited in the ‘459 patent, provides
that what is claimed as new and desired i s :
1 . In a system for clamping a flexible pipe connector to a pipe wall including a clamping member with a nominal radius of curvature and an outer surface for engaging the pipe connector and spaced first and second end sections that align along a circumferential center line, the improvement of expansion means for altering the separation between the first and second end sections thereby to alter the radius of curvature of the clamping member, said expansion means comprising:
A . first follower means and second follower means each having a shank portion for being inserted along the center line into a corresponding end section of the clamping member and a trapezoidal head portion with a base for overlying the end section and with divergent planar edge portions constituting the sides of the trapezoid, each said follower means having an outer surface that corresponds to the nominal radius of curvature,
B . first wedge means and second wedge means adapted for lying in a spaced relationship along an axis that is transverse to the center line to control the separation of said follower means, each of said first and second wedge means having a generally trapezoidal shape with edge means that diverge with respect to the transverse axis, that parallel said follower means edge portions and that terminate with outwardly facing open channel means for receiving said follower means planar edge portions, and having an
1 outer surface for disposition about the transverse axis corresponding to the nominal radius of curvature, and
C . compression means for displacing said first and second wedge means with respect to the center line, one of said wedge means having means for receiving said compression means and the other of said wedge means including means for engaging said compression means whereby operation of said compression means changes the separation between the first and second end sections.
‘459 patent, Col. 1 1 , lines 3-41.
2. Claim 16
The text of claim 1 6 , as recited in the ‘459 patent,
provides that what is claimed as new and desired i s :
1 6 . In a system for clamping a pipe to a manhole riser at an opening through a wall thereof including a flexible connector boot with a first circular end portion for insertion in the opening to be coextensive with portions of the manhole riser wall and a second circular end portion for receiving the pipe and a clamping band having a profile with a nominal radius of curvature and an outer surface for engaging the first circular end portion along a circumferentially extending center line and having spaced first and second end sections, the improvement of expansion means for altering the separation between the first and second sections thereby to produce a sealing force that effects a seal between said first circular end portion and the wall of the manhole riser, said expansion means including:
A . first planar metal follower means and second planar metal follower means each having a shank portion for being inserted along the center line into an end section of the clamping band and a trapezoidal head portion with a base for overlying the end section and with divergent planar edge portions constituting the
2 sides of the trapezoid, each said follower means being deformable to conform its outer surface to a radius of curvature whereby said follower means can conform to the profile of the clamping band,
B . first metal wedge means and second metal wedge means adapted for lying in a spaced relationship along an axis that is transverse to the center line to control the separation of said follower means, each of said first and second wedge means having a generally trapezoidal shape and having;
i . edge means that diverge with respect to the transverse axis and that parallel said follower means edge portions for engaging said edge portions, and i i . saddle means located along the transverse axis, each of said wedge means being deformable to conform its outer surface to a radius corresponding to the nominal radius of curvature whereby said wedge means can conform to the profile of the clamping band, and
C . compression means having first and second separable components loosely captured by said saddle means in said first and second wedge means respectively for displacing said wedge means with respect to the center line whereby said adjacent divergent edge means on said wedge means engage proximate ones of said planar edge portions on said follower means for increasing the separation between the first and second end sections as said compression means displaces said wedge means toward the center line thereby to cause said clamping band to seal said first circular end portion of said connector boot against the manhole riser.
3. Claim 25
The text of claim 2 5 , as recited in the ‘459 patent,
3 provides that what is claimed as new and desired i s :
2 5 . In a system for clamping a pipe to a manhole riser at an opening through a wall thereof including a flexible connector boot with a first circular end portion for insertion in the opening to be coextensive with portions of the manhole riser wall and a second circular end portion for receiving the pipe and a clamping member having a profile and with a nominal radius of curvature and an outer surface for engaging the first end portion along a circumferentially extending center line and having spaced first and second end sections, the improvement of expansion means for altering the separation between the first and second end section thereby to alter the radius of curvature of the clamping member, said expansion means comprising:
A . first follower means and second follower means each having a shank portion for being inserted along the center line into a corresponding end section of the clamping member and a trapezoidal head portion with a base that overlies the end section and with divergent planar edge portions constituting the sides of the trapezoid, each of said edge portions including a tongue extending therefrom and each of said follower means having an outer surface that corresponds to the nominal radius of curvature.
B . first plastic wedge means and second plastic wedge means adapted for lying, in a spaced relationship along an axis that is transverse to the center line to control the separation of said follower means, each of said first and second wedge means having a generally trapezoidal shape with edge means that diverge with respect to the transverse axis, that parallel said follower means edge portions and that terminate with outwardly facing grooves for receiving said tongues on said follower means and having an outer surface for disposition about the transverse axis that corresponds to the nominal radius of curvature, and
C . compression means for alignment along the
4 transverse axis and for displacing said first and second wedge means with respect to the center line, each of said wedge means including means for engaging said compression means whereby operation of said compression means changes the separation between the first and second end sections of the clamping member.
‘459 patent, Col. 1 4 , lines 49-68, Col. 1 5 , lines 1-27.
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