In Brief: 2008-1157 Duratech Ind. v. Bridgeview Mfg.

Posted on | May 18, 2008 | No Comments

2008-1157 Duratech Ind. v. Bridgeview Mfg.
ND 3:05-cv-90

Judge Rodney Webb construed the key limitation “a manipulator mounted
inside the container for driving crop material into the disintegrator”
as means-plus-function language and limited it to the structure
disclosed.  Declaratory judgment defendant/patentee Bridgeview stipulated that the accused products did not infringe that construction and filed this appeal.

Summary of Argument from the brief of DJ defendant/appellant
Bridgeview.  Dorsey & Whitney, Minneapolis MN (Peter Lancaster,
Heather Redmond).

The district court’s judgment of
noninfringement of the ‘104 patent should be reversed, based on an
appropriate construction of the “manipulator” limitation of claim 1 of
the ‘104 patent. The district court reached its Markman
decision through multiple legal errors, each facilitated by Duratech
having waited until oral argument to raise its key arguments.
Well-established Federal Circuit law, expert opinions, dictionaries,
the prior art, the patent specification, and the file history all lead
to the conclusion that the “manipulator” limitation should not be
treated as a means-plus-function limitation, and should, instead, be
given its plain meaning to one of ordinary skill in the art.

First, the absence of “means” language from the claim
entitles Bridgeview to the strong presumption that § 112 ¶ 6 does not
apply to the “manipulator” limitation in the ‘104 patent. Lighting World, Inc. v. Birchwood Lighting, Inc.,
382 F.3d 1354, 1358 (Fed. Cir. 2004). Nothing in the prior art, the
specification, or the prosecution history overcomes that presumption in
this case.

Second, when the correct legal test is applied, the term
“manipulator” is not a means-plus-function term. To determine if the
presumption against means-plus-function treatment can be overcome, this
Court consistently has asked one key question: whether the claim
denotes sufficiently definite structure. Phillips v. AWH Corp.,
415 F.3d 1303, 1311 (Fed. Cir. 2005) (en banc). Here, treatment of the
term “manipulator” in dictionaries and the prior art, as well as the
opinion of experts, demonstrates that “manipulator” is a noun denoting
structure.

Finally, in concluding that the “manipulator” limitation
should be given means-plus-function treatment, the district court
heavily relied on an incorrect reading of the file history. There is no
evidence to suggest that the Patent Office required the addition of
“means-plus-function” language in connection with claim 1, or that
Bridgeview narrowed the “manipulator” language in order to overcome a
rejection.

The district court’s errors combined to result in a common legal error identified by this Court in Phillips: importing limitations from the specification into the claim. Phillips,
415 F.3d at 1323 (“although the specification often describes very
specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments”). When the law is
correctly applied to the “manipulator” limitation in claim 1,
means-plus-function treatment is inappropriate.

Summary
of Argument from the brief of DJ plaintiff/appellee Duratech Ind.
Bradford & Coenen, Omaha NE (DC Bradford, Justin Eichmann) and
Thomte Patent Law Office, Omaha NE (Dennis Thomte).

The
phrase “a manipulator mounted inside the container for, driving the
crop material into the disintegrator” is a means-plus-function
limitation pursuant to 35 U.S.C. § 112(6). Although it is presumed that
a limitation or element that does not contain the word “means” is
presumed to fall outside means-plus-function strictures, that
presumption collapses when an element lacking the term “means”
nonetheless relies on functional terms rather than structure or
material to describe performance of the claimed function. Micro Chemical, Inc. v. Great Plains Chemical Co.,
194 F.3d 1250, 52 U.S.P.Q.2d 1258, 1263 (Fed.Cir. 1999). In this case,
the term “manipulator” does not describe structure to perform the
function “for driving the crop material into the disintegrator.” The
term “manipulator” is not a term which is understood by a person of
ordinary skill in the art. In fact, the Applicant on the ‘104 Patent
did not use the term “manipulator” at any place in the specification
but only used the term in two claims.

Bridgeview argues that the District Court erred in its claim
interpretation under the theory of claim differentiation. The law is
clear in the Federal Circuit that the doctrine of claim differentiation
cannot override the statutory requirements of § 112(6). Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 76 U.S.P.Q.2d 1662 (Fed.Cir. 2005) and Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533,1538,19 U.S.P.Q.2d 1367 (Fed.Cir. 1991).

The District Court did not limit its claim construction to the only
embodiment disclosed in the specification of the ‘104 Patent. The ‘104
Patent is very clear that the “manipulation means” or “means for
manipulating” or “support and manipulation means” includes at least a
pair of rollers with paddles extending therefrom and which defined a
disintegration opening therebetween, and side walls which have
projections extending therefrom so as to be close to the rotating
paddles. The District Court’s claim construction did not include
rollers with paddles or side walls with projections. Therefore, the
District Court’s claim construction was not limited to the single
embodiment disclosed in the specification as alleged by Bridgeview.

 

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