Freeman v. Gerber Products Company , 120 F. App'x 322 ( 2005 )

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
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MARK A. FREEMAN and TIMOTHY K. STRINGER,
Plaintiffs-Appellants,
v.
GERBER PRODUCTS COMPANY,
Defendant-Appellee,
and
PLAYTEX PRODUCTS, INC.
Defendant-Appellee.
__________________________
DECIDED: January 6, 2005
__________________________
Before MICHEL, Chief Judge,* ARCHER, Senior Circuit Judge, and SCHALL, Circuit
Judge.
SCHALL, Circuit Judge.
*
Chief Judge Paul R. Michel assumed the position of Chief Judge on
December 25, 2004.
DECISION
Mark A. Freeman and Timothy K. Stringer (collectively, “Freeman”) appeal the
decision of the United States District Court for the District of Kansas that granted
summary judgment of invalidity in favor of Gerber Products Company (“Gerber
Products”) and Playtex Products, Inc., (“Playtex”) in Freeman’s consolidated suits
against Gerber Products and Playtex (collectively, “Gerber”) for infringement of claims
7, 9, 11, 14, 16, 17, 18, and 20 of U.S. Patent No. 5,186,347 (the “’347 patent”).
Freeman v. Gerber Prods. Co., Nos. 02-2249, 02-2250 (D. Kan. Oct. 21, 2003)
(“Summary Judgment Order”). The district court ruled that the asserted claims were
invalid after it concluded that they were indefinite. We reverse and remand.
DISCUSSION
I.
Messrs. Freeman and Stringer are the inventors named on, and the owners of,
the ’347 patent. The ’347 patent is directed to a spill-proof closure for beverage
containers. Figure 2 of the patent, which illustrates an embodiment of the invention, is
reproduced below.
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As shown, the closure (10) is attached to beverage container (11). ’347 patent, col. 2, ll.
58-59. The closure has a spout (12) containing a thin membrane (13) near its upper
end. During normal drinking, liquid flows from the central passageway (15) to the spout
(12), and then out through the membrane (13). When external suction is applied, a slit
in the membrane opens to allow the beverage to flow from the cup. When suction is
released, the edges of the slit close to form a seal that reduces or eliminates leaks and
spills. Id. at col. 2, l. 60 – col. 3. l. 7.
The ’347 patent contains independent claims 1, 7, and 14 as well as seventeen
dependent claims. Claims 7 and 14, which are relevant to this case, are in means-plus-
function format pursuant to 35 U.S.C. § 112, ¶ 6. They recite as follows:
7. A controllable valved closure for use in dispensing a beverage from a
container, said closure comprising:
(a) a substantially planar cover portion conforming in shape to the opened
end of said container;
(b) attachable means for selectively maintaining said closure in covering
relation with said container;
(c) an elongated passageway having an outer end, said passageway
extending upwardly and outwardly from said cover portion;
(d) an opening located near said outer end of said passageway, said
opening providing communication between the interior and exterior of said
passageway, and said opening being completely contained within the
user’s mouth during operation of the closure;
(e) a thin membrane having attachable means for attaching said
membrane to an inner surface of said closure, said thin membrane
covering said opening in said passageway; and
(f) a slit through a planar section of said thin membrane, said slit
functioning to provide an opening through said thin membrane when an
external negative pressure exists and remain closed when internal and
external pressures are equal.
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14. A controllable valved closure for use in dispensing a beverage from a
container, said closure comprising:
(a) a substantially planar cover portion conforming in shape to the opened
end of said container;
(b) attachable means for selectively maintaining said closure in covering
relation with said container;
(c) an elongated passageway having an outer end; said passageway
extending upwardly and outwardly from said cover portion;
(d) an opening in said closure which communicates between the interior
and exterior of said passageway;
(e) a thin membrane having attachable means for attaching said thin
membrane to the inner surface of said closure, said thin membrane
sealing off said opening in said closure; and
(f) a disjoined portion within said thin membrane, said disjoined portion
functioning to provide a flow passage through said thin membrane when
said thin membrane is stressed and said disjoined portion forming a seal
when said thin membrane is unstressed.
’347 patent, col. 4, ll. 3-26 & 45-67.
II.
Freeman sued Gerber Products and Playtex in the District of Kansas for
infringement of claims 7, 9, 11, 14, 16, 17, 18, and 20 of the ’347 patent by numerous
spill-proof cups and lids, spill-proof sport bottles, replacement lids, and replacement
valves. Claims 9 and 11 of the ’347 patent depend directly or indirectly from claim 7,
while claims 16, 17, 18, and 20 depend indirectly from claim 14. Playtex and Gerber
Products counterclaimed for declaratory judgments that the asserted claims of the ’347
patent are invalid.
After consolidating the cases and holding a Markman hearing, but without
construing the claims at issue, the district court determined that the means-plus-function
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limitations at issue in claims 7 and 14 are indefinite in scope and therefore invalid as a
matter of law under 35 U.S.C. § 112, ¶ 2. Freeman v. Gerber Prod. Co., 284 F. Supp.
2d 1290 (D. Kan. 2003) (“Markman Order”). It was undisputed before the district court
that the function recited by claim limitations 7(b) and 14(b) is “selectively maintaining
said closure in covering relation with said container.” Id. at 1294. Similarly, the parties
agreed that the function recited by claim limitations 7(e) and 14(e) is “attaching the thin
membrane to an inner surface of the closure.” Id. at 1297. The district court
determined that the ’347 patent did not adequately disclose structure corresponding to
the functions recited by claim limitations 7(b), 7(e), 14(b), and 14(e).
Before the district court, Freeman argued that Figures 2 and 5 of the ’347 patent
adequately identify a structure corresponding to the above recited functions. The
district court acknowledged that “Figures 2 and 5 both illustrate that the base of the lid
has a rim that fits around the outside of the beverage container” and that Figure 2 was
“[i]lluminating” to an understanding of the structure corresponding to the function of
attaching a thin membrane to the inner surface of the closure. Markman Order at 1294,
1298. Nevertheless, the court found the figures of the ’347 patent insufficient to
disclose corresponding structure, reasoning that the structure must be identified in the
language of the written description or the prosecution history. Id. at 1295, 1298.
The district court granted summary judgment in favor of Gerber, and awarded
Gerber a declaratory judgment that all of the asserted claims of the ’347 patent are
invalid as a matter of law. Summary Judgment Order.
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III.
We review a grant of summary judgment de novo, without deference to the
district court’s determinations. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1320 (Fed. Cir. 2003). Summary judgment is appropriate where there is no genuine
issue of material fact or when, drawing all factual inferences in favor of the nonmoving
party, no reasonable jury could return a verdict for the nonmoving party. Id. (citing
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). A “determination that a
patent claim is invalid for failure to meet the definiteness requirement of 35 U.S.C.
§ 112, ¶ 2 is a conclusion ‘that is drawn from the court’s performance as the construer
of patent claims [and] therefore, like claim construction, is a question of law’ as to which
we exercise plenary review.” Bancorp Servs., L.L.C. v. Hartford Life Ins. Co.., 359 F.3d
1367, 1371 (Fed. Cir. 2004) (quoting Atmel Corp. v. Info. Storage Devices, Inc., 198
F.3d 1374, 1378 (Fed. Cir. 1999)).
The claim limitations at issue in this case are written in means-plus-function
format pursuant to 35 U.S.C. § 112, ¶ 6, which provides:
An element in a claim for a combination may be expressed as a means or
step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.
Pursuant to § 112, ¶ 6, a structure disclosed in the specification is “corresponding”
structure only if the specification or prosecution history clearly links or associates that
structure to the function recited in the claim. B. Braun Med., Inc. v. Abbott Labs., 124
F.3d 1419, 1424 (Fed. Cir. 1997). Whether the specification adequately sets forth
structure corresponding to the claimed functions must be considered from the
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perspective of one skilled in the art. Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357,
1365-66 (Fed. Cir. 2003). If one fails to set forth an adequate disclosure with respect to
the corresponding structure of a means-plus-function limitation, then one has failed to
“particularly point[] out and distinctly claim[] the subject matter which the applicant
regards as his invention,” as required by § 112, ¶ 2. In re Donaldson Co., 16 F.3d 1189,
1195 (Fed. Cir. 1994) (en banc).
As seen, the district court determined that the claim limitations “attachable means
for selectively maintaining said closure in covering relation with said container” and “a
thin membrane having attachable means for attaching said thin membrane to an inner
surface of said closure” are indefinite. On appeal, Freeman argues that the court erred
in holding that Figures 2 and 5 cannot be used to satisfy the structural component of the
means-plus-function limitations and in holding that the language of the specification, not
the drawings, must disclose corresponding structure. Freeman argues that one of
ordinary skill in the art would readily identify the “attachable means” structures
represented in Figures 2 and 5 and would understand those structures to be associated
with and capable of performing the claimed functions.
Gerber, in response, contends that merely depicting a structure in a patent’s
drawings is not enough to clearly link the structure to a particular recited function.
According to Gerber, the language of the specification or the prosecution history must
perform this function. Gerber points to statements in several of our cases which it
argues stand for this proposition: Omega Eng’g, 334 F.3d at 1332 (“Although the
splitting device, lenses, and prisms appear in the ’880 patent, . . . the specification does
not clearly associate those structures with the claimed function.”) (citation omitted);
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Medtronic, Inc. v. Advanced Cardiovascular, 248 F.3d 1303, 1311 (Fed. Cir. 2001) (“We
agree with Medtronic that each of these structures is capable of performing the recited
function. However, that is not the focus of the inquiry. We must determine whether the
straight wire, hooks, or sutures is clearly linked or associated with the function of
connecting adjacent elements together.”) (citation omitted); B. Braun, 124 F.3d at 1425(“Although Fig. 3 of the patent shows a valve seat, neither the specification nor the
prosecution history contains any indication that the valve seat structure corresponds to
the recited function.”).
We do not agree with Gerber that Figures 2 and 5 may not be consulted for
purposes of determining whether the ’347 patent adequately discloses structure
corresponding to the recited functions. None of the cases cited by Gerber stands for
that proposition. In Braun, the disputed claim limitation recited the function of “holding
said disc firmly against said first means in such a manner that said disc is restrained
from sideways movement.” 124 F.3d at 1422. The specification clearly linked a cross-
bar with this function. Id. at 1424. However, the patentee argued that another
structure, a valve seat, also performed the recited function of restraining sideways
movement. Id. Neither the specification nor the prosecution history contained any
indication that the valve seat structure also restrained sideways movement. Id. at 1425.
The court found “[t]his lack of association between the valve seat and the recited
function [to be] especially striking given the explicitly clear association provided between
the traverse cross bar and the recited function.” Id.Similarly, in Medtronic, it was undisputed that the patent disclosed corresponding
structure for the recited function of “connecting adjacent elements together,” in the form
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of helical windings. 248 F.3d at 1311. The question before the court was whether the
“straight wire and hooks of Figures 7 and 8, and the sutures,” were also clearly linked to
the recited function and thus were corresponding structures. Id. Although the court
noted that the structures represented in Figures 7 and 8 were definitely capable of
performing the recited function, the court nonetheless found this disclosure insufficient
for lack of a clear link or association between the structures and the recited function. Id.
at 1312.
Finally, in Omega Eng’g, the patent specification clearly linked the function of
“outlining the periphery of the energy zone” to a combination of a motor, slip rings,
counterweights, screw adjustment, and a pivot point. 334 F.3d at 1331-32. However,
the patentee contended that one of skill in the art would also understand the lenses,
prisms, and a laser beam splitting device disclosed in the patent to be corresponding
structures. Id. at 1332. The court rejected this argument, concluding that the alleged
corresponding structures were not clearly linked to the recited function. Id.In each of the cases relied upon by Gerber, the patent specification disclosed
multiple structures potentially capable of performing the recited function, but the
specification expressly discussed and thus clearly linked only a subset of those
structures to the recited function. Most importantly, none of these cases states that the
patent drawings may not be consulted in determining whether there is adequate
disclosure of structure for performing a function recited in a means-plus-function claim.
On the contrary, our cases make it clear that patent drawings may be consulted. See
Ferguson Beauregard v. Mega Sys., L.L.C, 350 F.3d 1327, 1338 (Fed. Cir. 2003)
(stating that the ordinary and customary meaning of a claim term may be determined by
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reviewing a variety of sources, including “the claims themselves; dictionaries and
treatises; and the written description, the drawings, and the prosecution history.”)
(citations omitted); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir.
2002) (“The words used in the claims are interpreted in light of the intrinsic evidence of
record, including the written description, the drawings, and the prosecution history, if
any.”) (citation omitted); Wright Med. Tech., Inc. v. Osteonics Corp.. 122 F.3d 1440,
1443 (Fed. Cir. 1997) (“The proper construction of the claims is based upon the claim
language, the written description portion of the specification including any relevant
drawings, the prosecution history, and if necessary to aid the court’s understanding of
the patent, extrinsic evidence.”) (citation omitted).
It is clear from the specification that the structures corresponding to the functions
recited in claims 7(b), 7(e), 14(b), and 14(e) of the ’347 patent are those structures
disclosed in Figures 2 and 5. See ’347 patent, col. 1, l. 67 – col. 3, l. 7. For example,
as far as the function “selectively maintaining said closure in covering relation with said
container” is concerned, the specification states that “[t]he closure 10 is circular in
shape, having a substantially planar cover portion and may vary in size depending upon
the size of the beverage container 11.” Id. col. 2, ll. 5-8. When one looks to the figures
referenced in the written specification, it is apparent that the above function is
performed by the manner in which the closure (10) fits together with the beverage
container (11), as depicted in Figures 2 and 5. As far as the function “attaching the thin
membrane to an inner surface of the closure” is concerned, the specification explains
that “[a]fter the closure 10 is manufactured to the form shown in FIG. 4, the thin
membrane 13 is assembled or insert molded into the spout 12.” Id., col. 2, ll. 48-50.
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Once the closure 10 and membrane 13 are manufactured to the forms depicted in the
figures of the ’347 patent, the specification explains that the “closed position [of the
membrane 13] makes the closure 10, with the beverage container 11 attached, a spill-
proof device even if tipped or over-turned.” Id., col. 3, l. 4-6. When one looks to the
figures referenced in the written specification, it is apparent that the second function at
issue is performed by the manner in which the membrane (13) fits together with the
spout (12), as depicted in Figure 2.
Thus, in this case, the only structure disclosed in the specification of the ’347
patent that is capable of performing the function of “selectively maintaining said closure
in covering relation with said container,” is the structure disclosed in Figures 2 and 5.
That structure consists of the configuration of the closure (10) with the container (11), as
represented in Figures 2 and 5. Likewise, the only structure disclosed in the ’347 patent
that is capable of performing the function of “attaching the thin membrane to an inner
surface of the closure,” is the structure disclosed in Figure 2. That structure consists of
the configuration of the membrane (13) and the inner spout (12), as represented in
Figure 2. We therefore conclude that the district court erred in ruling that the
specification lacks disclosure of structure which one skilled in the art would understand
as being adequate to perform the functions of “selectively maintaining said closure in
covering relation with said container” and “attaching the thin membrane to an inner
surface of the closure.” It was this ruling which formed the basis for the court’s
determination that the claims asserted by Freeman against Gerber Products were
indefinite.
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For the foregoing reasons, the district court’s grant of summary judgment that
claims 7, 9, 11, 14, 16, 17, 18, and 20 of the ’347 patent are indefinite and invalid as a
matter of law is reversed. The case is remanded to the district court for further
proceedings consistent with this opinion, beginning with the construction of the asserted
claims. The court will then address remaining validity issues, as well as issues of
infringement as appropriate.
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