Wasinger v. Levi Strauss & Co.

106 F. App'x 34
CourtCourt of Appeals for the Federal Circuit
DecidedJuly 8, 2004
DocketNo. 03-1522
StatusPublished

This text of 106 F. App'x 34 (Wasinger v. Levi Strauss & Co.) 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
Wasinger v. Levi Strauss & Co., 106 F. App'x 34 (Fed. Cir. 2004).

Opinions

DECISION

SCHALL, Circuit Judge.

Plaintiff-appellant Eric Wasinger (‘Was-inger”) appeals from the decision of the United States District Court for the Western District of Texas granting summary judgment of non-infringement in favor of defendant-appellee Levi Strauss & Co. (“Strauss”) in Wasinger’s suit against Strauss for infringement of U.S. Patent No. 5,633,510 (“the ’510 patent”). Because we conclude that the district court erred in its claim construction, we vacate the judgment of non-infringement and remand for consideration of the issue of infringement under the correct claim construction.

DISCUSSION

I.

Wasinger is the owner of the ’510 patent. He also is a co-inventor named on the patent. The ’510 patent is directed to a process for simultaneously desizing and [35]*35decolorizing a dyed fabric. Desizing and decolorizing are two critical steps in the manufacture of color-faded denim products, such as blue jeans. “Sizing” is a chemical composition that protects yarn as it is woven. Sizing can include different kinds of starch, polyvinyl alcohol, other synthetic compositions, or combinations thereof. Because sizing can be a barrier to wet finishing processes, such as dying and bleaching, it is typically removed as a first step in wet processing. This process is called “desizing.” The “decolorizing” process, traditionally accomplished by oxidation or bleaching, results in color fading or partial removal of color from the dyed denim cloth.

Independent claim 1 of the ’510 patent is the only claim at issue on appeal:

1. A method for simultaneously de-sizing and decolorizing a dyed fabric or dyed garment having a sizing and a reducible dye which comprises treating said fabric or garment with an effective amount of reducing agent in an aqueous bath whereby the fabric or garment is both desized and decolor-ized prior to any subsequent oxidation or bleaching.

II.

Wasinger originally alleged that certain finishing processes used by Strauss literally infringe independent claim 1 and several dependent claims of the ’510 patent. Strauss uses the accused processes to de-colorize, desize, and abrade denim garments to give them, as fashion dictates, a desired look and feel. The processes range from a “basic rinse finish,” costing about $1.25 per pair of jeans to a complex finishing process, costing $65 per pair.

The district court conducted a Mark-man hearing to construe only the single disputed claim term, “desizing.” In its summary judgment ruling, however, the court further modified its claim construction, adding an additional limitation to the ’510 patent as a whole. In the court’s view, “[pjlaintiff disclaimed coverage of multi-step processes while prosecuting the ’510 patent.” As a consequence of this disclaimer, the district court concluded, “the ’510 patent is limited to single-step processes and cannot include multi-step processes.” Based upon that construction, the court granted summary judgment of non-infringement in favor of Strauss because “in the accused processes desizing and decolonization are carried out in a seriatim, multi-step process.”

Wasinger now appeals to us. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

III.

We review a district court’s decision to grant summary judgment de novo. See Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 773 (Fed.Cir.1995). Summary judgment is appropriate where the record indicates “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). The determination of infringement is a two-step process. First, the court construes the claims at issue to correctly determine their scope. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir. 1998) (en banc). Claim construction is an issue of law which this court reviews de novo. Id. The second step in an infringement analysis is applying the correctly construed claims to the accused method; this is a factual determination. Embrex, Inc. v. Serv. Eng’g Corp., 216 F.3d 1343, 1348-49 (Fed.Cir.2000).

On appeal, Wasinger challenges the district court’s conclusion that multi-step processes were disclaimed during prosecution [36]*36of the ’510 patent. Wasinger asserts that the district court’s construction adds an entirely new limitation that is unsupported by the actual claim language. Additionally, Wasinger argues that the district court misinterpreted the prosecution history and that, when viewed in context, there was no disavowal of multi-step processes. For its part, Strauss contends that the district court properly relied on intrinsic evidence to conclude that Wasinger disclaimed mul-ti-step processes. According to Strauss, Wasinger’s statements in the file history unambiguously limit the claims to a single operation process.

Claim 1 recites “a method for simultaneously desizing and decolorizing a dyed fabric ... which comprises treating said fabric or garment with an effective amount of reducing agent in an aqueous bath .... ” ’510 patent, col. 6,11.1-5. The claim concludes with a “whereby clause,” which requires the fabric to be “both desized and decolorized prior to any subsequent oxidation or bleaching.” Id. col. 6,11. 5-7. Use of the open-ended transition “which comprises” indicates that there may be additional unclaimed steps in the method. Scanner Techs. Corp. v. ICOS Vision Sys. Corp., N.V., 365 F.3d 1299, 1305 (Fed.Cir. 2004) (“The use of the transitional phrase ‘comprising’ ... indicates that the elements or steps following the transition may be supplemented by additional elements or steps and still fall within the scope of the claim.”). The whereby clause signifies that there may be subsequent oxidation or bleaching steps that are not part of the claimed method. Therefore, on its face, claim 1 clearly contemplates the claimed method being performed as part of a multi-step finishing process.

The specification confirms that Wasinger contemplated multi-step processes. For example, after describing a preferred operation of the claimed method, the specification states “[t]he garments or fabrics can then be further processed if desired.” ’510 patent, col. 3, 11. 63-64. Similarly, the examples at the end of the written description also indicate that the inventor contemplated multi-step processes. The first example, after describing a particular washing sequence, teaches that “[i]f an even lighter color is desired the process can be repeated for 10 minutes prior to rinsing since concurrent desizing is not necessary. The garments can be further decolorized by subjecting them to a standard bleaching operation or by treatment with ozone.” Id. col. 4, 1. 67— col. 5, 1. 5.

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