Anheuser-Busch Companies, Inc. v. Crown Cork & Seal Technologies Corp. ( 2004 )

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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ANHEUSER-BUSCH COMPANIES, INC.,
METAL CONTAINER CORPORATION,
and ANHEUSER-BUSCH INC.,
Plaintiffs-Cross Appellants,
v.
CROWN CORK & SEAL TECHNOLOGIES CORPORATION
and CROWN CORK & SEAL CO. (USA), INC.,
Defendants-Appellants.
__________________________
DECIDED: December 23, 2004
__________________________
Before MAYER, Chief Judge, LOURIE, and DYK, Circuit Judges.
LOURIE, Circuit Judge.
Crown Cork & Seal Technologies Corp. and Crown Cork & Seal Co. (USA), Inc.
(collectively “Crown”) appeal from the decision of the United States District Court for the
Western District of Wisconsin granting summary judgment of noninfringement of United
States Patent 6,065,634 in favor of Anheuser-Busch Companies, Inc., Metal Container
Corp., and Anheuser-Busch, Inc. (collectively “Anheuser”). Anheuser-Busch Co. et al.
v. Crown Cork & Seal Tech. Corp. and Crown Cork & Seal Co. (USA), Inc., No. 03-CV-
137-S (W.D. Wis. Dec. 11, 2003) (“Judgment”). Anheuser cross-appeals from the
decision of the district court granting summary judgment of noninfringement of United
States Patent D387,987 in favor of Crown. Because we agree that Crown does not
infringe the ’987 patent, we affirm the court’s summary judgment of noninfringement of
that patent. However, because the court erred in its construction of Claim 1 of the ’634
patent, we vacate the court’s summary judgment of noninfringement of that patent and
remand for the court to redetermine whether Anheuser infringes that patent based on
our modified claim construction.
BACKGROUND
The technology in this case relates to the geometry of can ends. The geometry
of a can end may affect both the strength of the can and the amount of metal used to
manufacture the can. Because of the enormous number of cans that are manufactured,
a small saving in the amount of metal used per can end may result in significant
financial savings to the manufacturer. Crown owns the ’634 patent directed to a can
end having a chuck wall that is inclined to an axis perpendicular to the central panel of
the can end. Figure 4 of the ’634 patent, shown below, illustrates a sectioned side view
of an embodiment of the claimed can end with a chuck wall (24), a chuck wall angle
(C˚), and a central panel (26).
Claim 1, the only independent claim asserted by Crown, reads as follows:
A can end comprising;
a peripheral cover hook;
a chuck wall dependent from an interior of the cover
hook;
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an outwardly concave annular reinforcing bead extending
radially inwards from the chuck wall; and
a central panel supported by an inner portion of the
reinforcing bead;
wherein the chuck wall is inclined to an axis perpendicular to
the exterior of the central panel at an angle between 40˚ to
60˚, and a concave cross-sectional radius of the reinforcing
bead is less than 0.75 mm.
This appeal also involves the ornamental design of can ends. Figures 8 and 9 of
the ’987 patent, shown below, are the top and side plan views of the claimed design.
Cross-appellant Metal Container Corporation, the manufacturer of can ends used by
Anheuser-Busch and accused by Crown of infringing the ’634 patent, owns the ’987
patent and is a co-plaintiff in this action.
In March 2003, Anheuser filed suit against Crown seeking a declaration that its
“LOF+” can ends do not infringe the ’634 patent. Anheuser’s suit also alleged that
Crown’s “SuperEnd” can ends infringe the ’987 patent. Figures 1 and 2 of U.S. Patent
D476,889, shown below, disclose the design of SuperEnd. Crown counterclaimed for
infringement of its ’634 patent and noninfringement of the ’987 patent.
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On the parties’ competing motions for summary judgment regarding infringement
of the ’634 patent, the district court construed claim 1 to require a “flat” chuck wall.
Judgment, at slip op. at 11-12. Based on the limitation requiring the chuck wall to be
inclined “at an angle,” the court reasoned that “only a flat wall would be described as
inclining at ‘an’ angle.” Id. at 12. The court explained that a can end with an arcuate
chuck wall, such as LOF+, would have an infinite number of angles and would not be
described as having “an angle.” Id. The court also supported its construction of the
term “chuck wall” by finding that the preferred embodiment and drawings only disclosed
can ends with flat chuck walls. Id. at 12-13. The court further noted that the single
manufacturing method disclosed in the specification would result in a can end with a flat
chuck wall. Id. at 13. Finally, the court concluded that the prosecution history did not
indicate that the patentee contemplated a nonflat chuck wall. Id. Based on its claim
construction, the court then determined that LOF+ did not infringe the ’634 patent, either
literally or under the doctrine of equivalents. Id. at 13-15.
The district court also addressed the parties’ competing motions for summary
judgment regarding infringement of the ’987 patent. In determining the points of novelty
of the ’987 patent, the court considered three prior art United States patents:
(1) D365,988; (2) 5,711,488; and (3) D382,481. From the prior art, the court discerned
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the following three points of novelty: (1) the tab end of the recess is slightly wider
relative to the opening end of the recess in the ’987 patent than in the prior art; (2) the
tab end of the recess is distinctly flattened in the ’987 patent, giving the appearance of
two distinct corners rather than the continuous arc of the prior art; and (3) the
combination of the tab shape and the tab end recess shape leaves greater space
between the tab and the recess edge in the ’987 patent than in the prior art with similar
tab shapes (the ’488 and ’481 patents). Id. at 18. In concluding that SuperEnd does
not infringe the ’987 patent, the court found that the overall appearance of SuperEnd
was much closer to the prior art design than to the ’987 patent’s design. Id. at 19.
Crown has timely appealed and Anheuser has timely cross-appealed to this
court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review a district court's grant of summary judgment de novo, reapplying the
same standard used by the district court. Ethicon Endo-Surgery, Inc. v. U.S. Surgical
Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). Summary judgment is appropriate if 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 evidence of the non-movant is
to be believed, and all justifiable inferences are to be drawn in his favor.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
A determination of infringement of a utility patent requires a two-step analysis.
“First, the court determines the scope and meaning of the patent claims asserted . . .
[and second,] the properly construed claims are compared to the allegedly infringing
device.” Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en
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banc) (citations omitted). Step one, claim construction, is a question of law, Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970- 71 (Fed. Cir. 1995) (en banc), aff’d, 517
U.S. 370 (1996), that we review de novo, Cybor, 138 F.3d at 1456. Step two,
comparison of the claims to the accused device, requires a determination that every
claim limitation or its equivalent be found in the accused device. Warner-Jenkinson Co.
v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997). That determination is a question of
fact. Bai v. L & L Wings Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
Similarly, whether a design patent is infringed is also determined by first
construing the claim to the design and then comparing it to the design of the accused
device. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). A design
patent only protects the novel, ornamental features of the patented design. OddzOn
Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405-06 (Fed. Cir. 1997) (citations
omitted). The comparison step of the infringement analysis requires the fact-finder to
determine whether the patented design as a whole is substantially similar in appearance
to the accused design. The patented and accused designs do not have to be identical
in order for the design patent to infringe. Braun Inc. v. Dynamics Corp. of Am., 975 F.2d
815, 820 (Fed. Cir. 1992).
For there to be infringement, the accused design must also contain substantially
the same points of novelty that distinguished the patented design from the prior art.
Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc., 162 F.3d 1113, 1118
(Fed. Cir. 1998). Similarity of overall appearance is an insufficient basis for a finding of
infringement, unless the similarity embraces the points of novelty of the patented
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design. Id. The points of novelty determination is a question of fact. Bernhardt, L.L.C.
v. Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed. Cir. 2004).
I. The ’634 Patent
On appeal, Crown challenges the district court's summary judgment of
noninfringement of the ’634 patent, arguing that the court erred in its claim construction
analysis. Crown contends that the court erred by reading a “flat” chuck wall limitation
into claim 1. The court, according to Crown, mistakenly believed that only flat structures
could be inclined at an angle. Crown also alleges that the court improperly imported the
“flat” limitation into the claims from the preferred embodiment and a process disclosed
in the specification. Finally, Crown asserts that the court erred by relying upon the lack
of discussion regarding nonflat chuck walls in the prosecution history to justify its unduly
narrow construction.
Anheuser responds with numerous arguments to support the district court’s claim
construction. Anheuser initially argues that the dictionary definitions of the claim terms
“inclined” and “axis” require flat chuck walls. Next, Anheuser contends that because the
’634 patent stresses the importance of using a frustoconical chuck to manufacture the
can end, the claims must be limited to a flat chuck wall.1 Anheuser also asserts that
Crown limited its claims to a flat chuck wall by not distinguishing its claims from the prior
art during prosecution on that basis. Finally, Anheuser contends that the testimony of
one of the ’634 patent’s inventors that the patent’s specification describes a can end
with a flat chuck wall, confirms the court’s construction.
1
A frustoconical chuck is a mechanical device with a flat cross section that
stamps the shape of the chuck wall into the can end.
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We agree with Crown that the district court erred in construing the claims to
require a flat chuck wall. “Where a specification does not require a[n extraneous]
limitation, that limitation should not be read from the specification into the claims.” E.I.
Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.3d 1430, 1433 (Fed. Cir.
1988). Here, there is no dispute that the claims do not expressly require flat chuck
walls, and we do not find that the specification or the prosecution history expressly or
implicitly require the chuck walls to be flat. Indeed, the patent explains that an objective
of the invention is to develop a sufficiently strong can that uses less metal. ’634 patent,
col. 1:20-22; 1:54-65. This objective is accomplished by adjusting the chuck wall angle.
Id. The patent does not indicate that the shape of the chuck wall is necessary to
accomplish this goal. Thus, no basis exists for the court to import the “flat” limitation
from the preferred embodiment into the claims.
Anheuser’s arguments supporting the district court’s construction are
unpersuasive. We take each of Anheuser’s arguments in turn. Anheuser’s definition of
the term “incline”—having a leaning or a slope usually from the vertical or horizontal—
simply does not require a flat chuck wall. For example, steps of a stair are commonly
said to incline at an angle, and there is no question that the steps are not flat.2 The
term “axis,” also defined by Anheuser, does not relate to the shape of the chuck wall.
Thus, the plain meaning of the claim terms does not require a flat chuck wall.
We also reject Anheuser’s argument that the method of manufacture disclosed in
the patent requires the chuck wall to be flat. The patent discloses that the method of
2
This stair example also overcomes the district court’s observation that only
a flat chuck wall can incline at “an” angle. Like an arcuate-shaped chuck wall, the steps
of a stair have multiple angles and slopes. Nonetheless, the steps have an angle of
inclination.
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manufacture relied upon by Anheuser is “a second aspect” of the invention, with the first
aspect of the invention being the geometry of the can end itself. ’634 patent, cols. 1:56-
2:30. Because claim 1 is a product claim that is not limited to a particular method of
manufacture, “we decline to superimpose a process limitation.” Cordis Corp. v.
Medtronic Ave, Inc., 339 F.3d 1352, 1357 (Fed. Cir. 2003) (citing Vanguard Prods.
Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000) (holding that the
limitation of a thin layer “integral therewith” described the product and did not designate
a specific manufacturing process, and that a “method of manufacture, even when cited
as advantageous, does not of itself convert product claims into claims limited to a
particular process”)).
Anheuser’s reference to the prosecution history to support Crown’s purported
acquiescence to the court’s construction of a flat chuck wall is also unavailing. A critical
flaw in Anheuser’s argument is that a flat chuck wall is not a basis of distinction between
Crown’s claims and the prior art. As we have construed the claims, they cover both flat
and nonflat chuck walls.
Finally, Anheuser’s reliance upon inventor testimony is misplaced. An inventor’s
testimony regarding the scope of his claims is not conclusive of the legal meaning of the
claims. E.g., Bell & Howell DMP Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997).
Nonetheless, we have reviewed the inventor testimony cited by Anheuser and do not
find that it compels a construction of a flat chuck wall.
In the alternative, if we do not find that claim 1 requires a flat chuck wall,
Anheuser contends that the claim is invalid under 35 U.S.C. § 112, ¶1 for lack of written
description and enablement. Anheuser asserts that the written description of the ’634
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patent does not demonstrate that patentees were in possession of a can end with an
arcuate-shaped chuck wall. Anheuser also asserts that in view of the absence of any
disclosure of an arcuate chuck wall, claim 1 fails to satisfy the enablement requirement.
Whether a patent specification complies with the written description requirement
is a question of fact that we review for substantial evidence. PIN/NIP, Inc. v. Platte
Chem. Co., 304 F.3d 1235, 1243 (Fed. Cir. 2002). The issue of enablement is a matter
of law that we review without deference; however, we review the factual underpinnings
of enablement for substantial evidence. BJ Servs. Co. v. Halliburton Energy Servs.,
Inc., 338 F.3d 1368, 1371-72 (Fed. Cir. 2003).
We reject Anheuser’s lack of written description argument. Anheuser’s argument
centering on whether there is a written description of an arcuate-shaped chuck wall
misses the point. The relevant inquiry is whether a claim not limited to a flat chuck wall
is described. We find that it is. Furthermore, Anheuser does not meet its burden of
proving lack of written description by merely arguing that the patent’s sole embodiment
has a flat chuck wall. Anheuser cites Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473 (Fed. Cir. 1998), to support this written description argument, but the facts of
Gentry Gallery are distinguishable from this appeal. In Gentry Gallery, the claims were
invalid for lack of written description because the specification clearly identified the
console as the only location for the controls but the claims did not contain such a
limitation. Id. at 1479-80. Here, the written description of the ’634 patent neither
discussed the shape of the chuck wall nor required the chuck wall to be flat. Other than
the reference to the patent’s preferred embodiment, Anheuser can point to nothing in
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the written description requiring the invention to be narrower than the scope of the
claims.
We also reject Anheuser’s argument of lack of enablement. “The enablement
requirement is met if the description enables any mode of making and using the claimed
invention.” Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533 (Fed. Cir. 1991).
As explained above, the claimed invention does not require an arcuate-shaped chuck
wall. Moreover, it is not clear that a different mode of making and using the chuck wall
applies depending upon whether it is flat or not. Because the ’634 patent’s written
description indisputably enables a person of ordinary skill in the art to make and use the
claimed invention with a chuck wall, irrespective of whether it is flat or nonflat, the
enablement requirement is satisfied.
We have considered Anheuser’s remaining arguments regarding the ’634 patent
and find them not persuasive.
II. The ’987 Patent
In challenging the district court’s decision that SuperEnd does not infringe the
’987 patent, Anheuser makes two arguments. First, Anheuser contends that the court
erred by determining the points of novelty as a question of law instead of a question of
fact. Secondly, Anheuser asserts that the court should have given it an opportunity to
submit evidence and argument contesting the court’s determination of the points of
novelty. Although Anheuser raises valid points regarding the district court’s
determination of the points of novelty, we nonetheless affirm the decision. SuperEnd
does not infringe the ’987 patent under the substantial similarity test, even if Anheuser is
correct concerning the district court’s points of novelty characterization. We do not
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reach these questions regarding the point of novelty test because we conclude that
summary judgment was appropriate due to the absence of a genuine dispute as to any
material fact concerning the substantial similarity test, and both tests must be satisfied.
As shown above, in figures 8 and 9 of the ’987 patent, the claimed invention is
characterized by, inter alia, a trapezoid-shaped recess area with the width of the tab
side only slightly smaller than the width of the opening side, a relatively significant
amount of space between the end of the tab and the edge of the recess, a relatively
small amount of space between the edge of the central panel and the top of the chuck
wall, and the chuck wall is almost perpendicular to the central panel.
Based on this partial claim construction, we conclude, as a matter of law, that
SuperEnd does not infringe the ’987 patent. The recess area of SuperEnd has a
relatively smaller width on the tab side than in the ’987 patent. That gives the recess
area of SuperEnd a more pear-like shape compared to the more rectangle-like shape of
the ’987 patent. The space between the end of the tab and the edge of the recess in
SuperEnd is also relatively smaller compared to the ’987 patent. Finally, the
appearance of the area between the edge of the central panel and the top of the chuck
wall of SuperEnd is clearly distinguishable from that in the ’987 patent. The chuck wall
of SuperEnd is relatively longer and more angled compared to the ’987 patent. These
individual differences contribute to a substantial difference in the overall appearance
between SuperEnd and the design of the ’987 patent, and no reasonable fact-finder
could conclude otherwise. Such a conclusion is compelled irrespective of the issue that
Anheuser raises, i.e., whether the district court improperly evaluated the points of
novelty issue as a matter of law. Its treatment of that issue was at most harmless error.
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CONCLUSION
We vacate the district court's order granting summary judgment of
noninfringement of the ’634 patent and we remand for further proceedings. We affirm
the judgment of noninfringement of the ’987 patent.
Costs
Each party shall bear its own costs.
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