Opinion
Case No. 6:00-cv-1087-Orl-22JGG
January 24, 2002
ORDER
This cause comes before the Court on the following motions: Defendants' Joint Motion to Construe U.S. Patent No. 5,642,906 (Doc. 80); Plaintiff's Motion for Markman Hearing (Doc. 83); Defendants' Joint Motion to Construe U.S. Patent No. 5,855,395 (Doc. 86); Plaintiffs Motion for Summary Judgment (Doc. 106); Defendants' Motion for Summary Judgment of Non-Infringement (Doc. 119); Defendants' Motion for Summary Judgment of Invalidity for Prior Art (Doc. 111); and Defendants' Motion for Summary Judgment of Patent Invalidity Under 35 U.S.C. § 102(f) and § 112 (Doc. 116).
I. BACKGROUND
Plaintiff, ABP Patent Holdings LLP ("ABP"), is the assignee of three patents, U.S. Patent No. 5,642,906 ("the `906 Patent"), U.S. Patent No. 5,855,395 ("the `395 Patent"), and U.S. Patent No. 6,036,231 ("the `231 Patent"). ABP filed this action alleging that Defendants, Convergent Label Technology, Inc. ("Convergent") and Moore North America, Inc. ("Moore"), infringed the afore-mentioned patents. The parties filed the instant motions asking the Court to construe certain claims in each patent. On October 17, 2001 and October 24, 2001, Magistrate Judge James Glazebrook held a Markman hearing on the instant motions. At the hearing, the parties agreed that the `231 patent does not require interpretation by the Court.
ABP and Moore have since reached a settlement and entered into a consent judgment. See Doc. 214. As a result of that judgment, Moore is no longer a party to this action. The Court will, therefore, only address the issues as they pertain to Convergent.
ABP's patents concern an efficient method of labeling prescription drug vials. The patents disclose pharmacy forms having labels upon which prescription information may be printed. The labels can then be simultaneously removed by a pharmacist, separated from each other if necessary, and then simultaneously applied to a prescription bottle. Additionally, ABP's pharmacy forms have a backing sheet to which the labels adhere. The labels are connected to each other by perforations that allow the labels to be readily separated from each other before being applied to the prescription bottle.
Convergent supplies pharmacy label forms to various pharmacies, in competition with ABP. ABP's Complaint alleges that Convergent has infringed or induced infringement of certain claims in the `906 and `395 patents. Convergent contends that during the prosecution of the patents, ABP limited the scope of its claims. Convergent therefore asks that the Court construe Claim 1 of the `906 patent and Claim 17 of the `395 patent to require that the main label of ABP's form be connected to the auxiliary labels on the form. ABP argues that the disputed claims merely require that any two labels on the form be connected.
ABP's Complaint asserts a claim for infringement of Claim 19 of the `395 Patent. However, Claim 19 is dependent on Claim 18, which is dependent on independent Claim 17. Therefore, the parties ask the Court to construe Claim 17.
After conducting a Markman hearing and reviewing the parties' memoranda and supporting evidence, Judge Glazebrook issued a Report and Recommendation ("RR") in which he determined that both Claim 1 of the `906 patent and Claim 17 of the `395 patent should be construed to require that the main and auxiliary labels of ABP's form be connected. ABP filed objections to the R R; those objections are now ripe for review.
Additionally, the parties have filed cross-motions for summary judgment which are also ripe for review.
II. MOTIONS TO CONSTRUE PATENTS A. Standard of Review
After a magistrate judge issues a report and recommendation, the district judge must make a de novo determination of the findings and/or recommendations to which any party objects. 28 U.S.C. § 636(b)(1). After reviewing the RR, objections, and response thereto, the district judge "may accept, reject, or modify, in whole or in part," the findings or recommendations made by the magistrate. Id.
B. DISCUSSION
ABP raises essentially two objections to the RR. First, it contends that Judge Glazebrook impermissibly added language to the disputed claims, in effect, rewriting them. Second, ABP argues that Judge Glazebrook incorrectly concluded that ABP disavowed subject matter otherwise available in the disputed claims.
Before the Court undertakes an analysis of the disputed claims, it must address ABP's contention that Judge Glazebrook added language to its claims. The Court believes that Judge Glazebrook took no such steps. The motions filed by both ABP and Convergent requested that the Court construe the disputed claims. It is well settled that the task of claim construction permits and requires the Court "neither to limit nor to broaden the claims, but to define, as a matter of law, the invention that has been patented." Netword, LLC v. Centraal Corporation, 242 F.3d 1347, 1352 (Fed. Cir. 2001). In the RR, Judge Glazebrook determined that the phrase "one of the labels" should be understood to mean the "main label." He further determined that the phrase "another label" referred to the "auxiliary label." In coming to these conclusions, Judge Glazebrook did not "add" to the language of the claims. Rather, he defined those arguably ambiguous terms in a manner that he believed to be consistent with the patent specification and the prosecution history. As such, ABP's objection on the grounds that Judge Glazebrook impermissibly added language to the claims is without merit.
1. The `906 Patent
Turning now to the actual construction of the claims, the Court first addresses ABP's objections to the RR's treatment of Claim 1 of the `906 patent.
Claim 1 reads in its entirety:
A method for use by a pharmacist in labeling a container for a prescription drug to be dispensed to a customer, comprising the steps of:
I.providing blank form for printing on at least one label to be affixed to the container, the form comprising:
(a) at least two labels releasably adhered to a backing sheet, each of said labels being provided with a printable surface upon which may be printed information relating to the prescription drug;
(b) adhesive means on the surface of each of said labels that is opposite the printable surface for affixing said labels to said container; and
(c) means for connecting said labels such that:
(1) the removal of one of the labels from the backing sheet will simultaneously remove from the backing sheet the other label to which it is connected; and
(2) the two removed labels optionally may be readily separated from each other prior to affixing any of said labels to said container;
II. printing information concerning a prescription on at least one of said labels;
III. simultaneously removing from the backing sheet at least said two labels; and
IV. affixing at least one of said two labels to said prescription drug container.
Defendants' Exhibit 2 at Tab U.S. Patent 5,642,906, MNA 000119.
ABP argues that the language of Claim 1 is not ambiguous, and must therefore, be given its plain and ordinary meaning, which is not limited in scope to a pharmacy form in which the main and auxiliary labels are connected. Convergent contends that both the patent specification and prosecution history of the `906 patent make it clear that the claims "are directed to a prescription pharmacy label having a main prescription label connected by tear lines to auxiliary warning labels." Doc. 81 at 9.
The starting point for the Court's analysis of Claim I is the actual language of the claim. It is well-settled that, "as a general rule, all terms in a patent claim are to be given their plain, ordinary and accustomed meaning to one of ordinary skill in the relevant art." Rexnord Corp. v. Laitram Corp., 2001 WL 1456191 at *3 (Fed. Cir.) (quoting Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed. Cir. 1999)). Ordinarily, "there is `a heavy presumption' in favor of the ordinary meaning of claim language" Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (quoting Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999)). However, that presumption can be overcome: "(1) where the patentee has chosen to be his own lexicographer, or (2) where a claim term deprives the claim of clarity such that there is `no means by which the scope of the claim may be ascertained from the language used.'" Id. ABP argues that neither of these situations exists, and Claim 1 should, therefore, be construed only by the terms of its plain meaning.
ABP contends, and Judge Glazebrook agreed that "Claim 1 does not literally require connected main and warning labels that are simultaneously removable." Doc. 190 at 16. This Court also agrees with that statement. Claim 1 does not use the words "main" or "warning" to describe the labels on its form. ABP believes the Court's inquiry should end here. Were the Court to accept this position, any pharmacy label form in which any two labels were connected would infringe upon Claim 1.
Convergent argues that the literal language of Claim 1 cannot be the starting and ending point for determining its scope. The law clearly supports Convergent's position. "It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification, and, if in evidence, the prosecution history . . . Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language." Bell Atlantic at 1267 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); See also Pall Corporation v. PTI Technologies, Inc., 259 F.3d 1383, 1391 ("We have repeatedly held that, in addition to the specification, the prosecution history must be considered in construing claims."). As the Federal Circuit explained:
claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose. Thus the claims are construed to state the legal scope of each patented invention, on examination of the language of the claims, the description in the specification, and the prosecution history.Netword, 242 F.3d at 1352. The prosecution history is therefore relevant to determine whether the patentee "has relinquished a potential claim construction in an amendment to the claim or in an argument to overcome or distinguish a reference." Bell Atlantic, 262 F.3d at 1268.
It is to the intrinsic evidence of the `906 patent that the Court now turns its attention. The Court believes that the specification and prosecution history are relevant on two grounds: (1) first, ABP's statements in response to the examiner's concerns about the patentability of its invention amount to a disavowal of subject matter, limiting the scope of its claims; and (2) Claim 1 includes "means-plus-function" elements that require the Court to consider the scope of the invention in light of the written description of the invention as stated in the patent specification.
As a preliminary matter, ABP objects to using the specification and prosecution history to construe Claim 1 on the basis that the statements and arguments therein were made in reference to only the preferred embodiment of its invention and, therefore, cannot be said to limit all the embodiments of the invention. This argument is without merit. "Although the specification need not present every embodiment or permutation of the invention and the claims are not limited to the preferred embodiment of the invention, neither do the claims enlarge what is patented beyond what the inventor has described as the invention." Netword, 242 F.3d at 1352 (citing Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998)). As the following will show, the prosecution history makes it clear that ABP described its invention in such a way as to require that there be a connection between the main label and at least one of the auxiliary labels on the pharmacy form.
a. Prosecution History
The RR included a lengthy and thorough examination off the prosecution history of the ABP patents. The Court does not wish its own examination of the prosecution history to be redundant; however, the Court's de novo review of this matter relies heavily on the numerous representations made by ABP during the prosecution of its patents. These representations make it clear that ABP disavowed certain subject matter and limited the scope of its claims.
The `906 patent relates back to the original application filed when ABP first sought to patent its invention ("the `415 Application"). That application was filed with the PTO on September 16, 1993. ABP ultimately abandoned that application after the examiner rejected all claims for anticipation and obviousness, pursuant to 35 U.S.C. § 103 and 112. In rejecting the claims, the examiner found that ABP's pharmacy form was obvious and anticipated in view of prior art forms disclosed in the Browning and Garrison Patents (U.S. Patent 5,147,699 and U.S. Patent 5,328,208, respectively).
After ABP abandoned the `415 Application, it filed the `906 Application as a continuation of the `415 Application. In its Patentability Brief, ABP addressed several of the grounds for rejection of the `415 Application. In describing its invention, ABP stated:
Applicants' forms may be advantageously used in any business situation requiring an adhesive main label and the optional use of one or more adhesive auxiliary labels to be applied with the main label. . .
Prior to applicants' invention, the custom printing of the main prescription label and associated warning labels was done on forms that required entirely separate operations by the pharmacist dispensing the prescription to remove each of the labels from the printed form and then separately affix the main drug container label and any associated warning label(s).
According to the invention of this application, a blank business form is provided having, inter alia, an adhesive main label, e.g. a drug container prescription label, and one or more smaller adhesive auxiliary labels, e.g. warning labels. The form permits the user to simultaneously apply the main label and at least one auxiliary label from the backing sheet, readily separate any unused ( i.e. not printed upon) auxiliary label(s) from the printed main label, and simultaneously apply the main label and any printed upon auxiliary label(s) to a receptive surface, e.g., a prescription drug container.
Defendant's Ex. 2 at Tab `906 Patent Prosecution History, MNA 000176-77 (emphasis in original).
In responding to the examiner's determination that the `415 Application failed to sufficiently distinguish ABP's invention from the prior art of the Browning patent, ABP stated:
Second, a form according to applicant's invention requires that at least one of the auxiliary labels . . . separate from the form when the main label . . . is removed from the form. The Browning et al. form perforations are such that the price tags . . . are not removed from the form sheet with the central portion . . . or with each other.
Defendant's Ex. 2 at Tab `906 Patent Prosecution History, MNA 000178 (emphasis added).
It is clear to the Court that ABP intended to distinguish its invention from prior art on the basis that at least one of the auxiliary labels had to separate from the form when the main label was removed. Yet, ABP now urges the Court not to limit the scope of its claims on the basis of that distinction. However, it has been repeatedly stated that when a patentee relies on a limitation in its arguments to the PTO in order to distinguish prior art, it cannot later argue that the scope of its claims has not been limited. See Hollister Inc. v. E.R. Squibb Sons Inc., 902 F.2d 44, 14 U.S.P.Q. 2069, 2070 (Fed. Cir. 1990); Beloit Corp. v. J.M Voith, GMBH, 626 F. Supp. 991, 1007 (E.D. Va. 1986) ("Material representations made to the PTO (with or without amendment) to define and explain the claimed invention for the purpose of distinguishing it from the prior art limit the proper interpretation of the claim language.").
Indeed the Federal Circuit has confirmed:
Even when the ordinary meaning of the claim is clear, it is well-established that "[t]he prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution". . . "[B]y distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover, he is by implication surrendering such protection."Pall, 259 F.3d 1383, 1392 (Fed. Cir. 2001) (quoting SouthwallTechs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995); Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997)) (emphasis added).
That Court's statement is particularly instructive in the instant case. In its objections to the RR, ABP asserts that Judge Glazebrook "did not purport to find any surrender of subject matter based upon the alteration of a claim to `escape an examiner rejection.'" Doc. 196 at 3. It is clear from the above-quoted language, however, that such surrender can be found by implication when an applicant distinguishes its invention over the prior art. In stating that its invention "requires that at least one of the auxiliary labels . . . separate from the form when the main label . . . is removed from the form," and distinguishing the prior art on the basis that those forms did not require simultaneous removal, ABP, by implication, surrendered protection for any pharmacy form in which one of the auxiliary labels did not separate from the form when the main label was removed.
ABP maintains that its remarks to the PTO, as quoted in the RR, were "taken out of their proper context and given a distorted meaning." Doc. 196 at 6. The Court disagrees. The context of ABP's statements is clear; in the face of the rejection of the `415 Application, and in an effort to obtain a patent on the invention disclosed in the `906 Application, ABP distinguished the prior art on the basis that it did not teach simultaneous removal and application of the main and auxiliary labels. Though this was not the only distinction made between the prior art and ABP's form, it was a significant one. So significant, in fact, that it now prevents the Court from interpreting Claim 1 in the same broad terms in which it is written.
ABP also argues that its representations to the PTO were made prior to the existence of Claim 60, which is now Claim 1. However, in the same response in which it first asserted Claim 60, ABP continued to distinguish its invention based on the simultaneous removal of the main and auxiliary labels. In a section entitled, "A. The References," ABP distinguished its form from the Cavender form (U.S. Patent 3,993,814), which disclosed a label form having a large address label (L') and many smaller price labels (L). The price labels on that form are connected to each other by perforations, but are severed from the larger label. In distinguishing that form, ABP stated:
Similarly, the price tag sublabels of Cavender's label L are completely separated from label L [sic. L'] and its sublabels by the recipient before use, so there can be no simultaneous removal as between any of these labels and any labels comprising L'.
Defendants' Ex. 2, at Tab `906 Patent Prosecution History, MNA 000290.
ABP explains that, in making this statement, ABP's counsel "was simply pointing out that Cavender did not teach simultaneous removal of any of the labels disclosed in the Cavender patent, whereas simultaneous removal is a novel feature of the application." Doc. 196 at 11. The Court finds it hard to accept this explanation. First, it bears repeating that Cavender's price labels (L) were attached to each other by perforation. It appears obvious that, because of the perforations, the removal of one of the price labels would result in the removal of the other price labels. Secondly, in stating that, "there can be no simultaneous removal as between any of these labels and any labels comprising L'," ABP's use of the conjunctive "and" shows that it intended to highlight that the Cavender form did not allow simultaneous removal of the main label and the sublabels. For the Court to interpret that sentence in any other way, it would have to ignore the rules regarding proper use of the English language. The Court declines to resort to such a bold action in order to spare ABP the consequences of its own statements.
Later, in addressing the differences between its invention and the Browning patent, ABP stated that "all of the observations made as to Cavender also apply to this Browning reference. There is no teaching of applicants' invention as defined in the new claims." Defendant's Ex. 2 at Tab `906 Patent Prosecution History, MNA 000290. ABP later stated, "the new claims distinguish over all of the references." Id., MNA 000291.
By again distinguishing its invention based on connecting main and auxiliary labels, and further stating that the new claims distinguished over the references, ABP limited the scope of the new claims, just as it had earlier limited the scope of the previous claims.
b. Means-Plus-Function
Even if ABP's representations in the patentability brief do not limit the scope of the claims, the Court believes that they are limited by the patent specification. Claim 1 includes a "means-plus-function" element. The presence of such an element in a claim requires the Court to interpret the claim in accordance with 35 U.S.C. § 112(6), which states:
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.
Claim 1 reads in relevant part:
A method for use by a pharmacist in labeling a container for a prescription drug to be dispensed to a customer, comprising the steps of:
I. providing blank form for printing on at least one label to be affixed to the container, the form comprising:
. . .
(c) means for connecting said labels such that:
(1) the removal of one of the labels from the backing sheet will simultaneously remove from the backing sheet the other label to which it is connected; and
(2) the two removed labels optionally may be readily separated from each other prior to affixing any of said labels to said container.
Defendants' Ex. 2 at Tab U.S. Patent 5,642,906, MNA 000119.
ABP admits that there are means-plus-function claims in the `906 patent, but states that the parties have no dispute about their meaning. See Doc. 196 at 15. Indeed, Convergent acknowledges that "the `connecting means' limitation is limited to a score line or perforated tear line between the connected labels, and to equivalents of a score or perforated tear line." Doc. 100 at 12. Though the parties agree as to the structure of ABP's forms, that is not the Court's sole inquiry. When a claim includes means-plus-function elements, the Court must also identify the claimed function of that structure. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1536 (Fed. Cir. 1991).
Claim 1 makes it clear that the function of the pharmacy form is to allow the removal of pharmacy labels so that the removal of one label from the backing sheet will simultaneously remove another label, and so that the two labels can be readily separated from each other before being affixed to the prescription bottle. Having identified the function of the invention, the Court can now construe the means-plus-function claim, which "derive[s] (its] scope from the structure disclosed in the written description." Ballard Medical Products v. Allegiance Healthcare Corp., 268 F.3d 1352, 1360 (Fed. Cir. 2001).
The written description a form with "a peelable vial label having a pressure sensitive adhesive connected to removable strips of computer selected warning labels also having a pressure sensitive adhesive." Defendants' Ex. 2 at Tab U.S. Patent 5,642,906, MNA 000117 (emphasis added). This description only discloses the preferred embodiment of the label form, however § 112(6) clearly states that the "claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112(6) (emphasis added). Therefore, the Court does not have to construe the claim in light of every possible embodiment.
The description of the form in the specification informs the Court's analysis, as do ABP's representations to the PTO. In the patentability brief, ABP made the following argument:
In the Final Rejection in the parent case, the Examiner stated:
It has been held that a recitation with respect to the manner in which a claimed blank is intended to be employed does not differentiate the claimed blank from a prior art blank form satisfying the claimed structural limitations.
Exhibit A at page 3, No. 4, 2nd ¶ (emphasis added). This characterization of applicants' form seems to be off the mark.
Functionally, applicants' forms result in at least one auxiliary label simultaneously separating from the backing sheet with the main label and in that auxiliary label optionally being readily separated from the main label if desired by the user. These features are not manners of use, but necessary functional characteristics requiring structure(s) permitting this result. These functional requirements of applicants' new forms cannot be ignored in assessing patentability under the guise of "manner of use." See, e.g., Hollister Inc. v. E.R. Squibb Sons Inc., 14 U.S.P.Q.2d 2069, 2070 (Fed. Cir. 1990) (functional limitations in claims cannot be ignored — to do so "flies in the face of the `all elements' rule of claim construction").
Neither the Browning et al. form nor the Garrison form expressly taught in these references results in the simultaneous removal and optional subsequent separations features of applicants' forms. The Examiner in the Final rejection stated that Garrison's
die cuts are an equivalent structure known in the art to the tear lines and since these two paper separators were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute a die cut for a tear line.
Exhibit A at page 5, No. 6, 3rd ¶. The die cuts separating Garrison's main label and adjoining auxiliary label, and each of the auxiliary labels from each other, preclude a Garrison form from meeting applicants' claims. That is, because die cuts are used by Garrison, the Garrison-form user cannot simultaneously remove one or more auxiliary labels with the main label — the main label is completely separated from all auxiliary labels. Also, the option of subsequently separating any simultaneously-removed auxiliary label from the mail label after removal from the backing sheet obviously does not exist with a Garrison-type form: since there is nothing linking the two labels in the first place, there can be no optional subsequent separation of the labels."
Defendant's Ex. 2 at Tab `906 Patent Prosecution History, MNA 000179-80.
Having made this argument to the PTO in an effort to distinguish its invention from prior art, ABP cannot now argue that those representations should not be used to determine the scope of its claims.
Accordingly, the Court determines that the scope of Claim 1 of the `906 patent is limited to a pharmacy form having a main label connected to at least one of the auxiliary labels.
2. The `395 Patent
The parties requested that the Court also construe Claim 17 of U.S. Patent 5,855,395. Judge Glazebrook also interpreted that claim to require a main label connected to auxiliary labels. ABP objects to this construction of the `395 patent on essentially the same grounds as it objects to his construction of the `906 patent.
Claim 17 reads:
A method of forming a composite label for a container useful in dispensing drugs by a pharmacist in which the composite label includes both a main label portion with specific drug or patient information and at least one warning label portion containing warning information, and in which the main and warning label portions may be rapidly and efficiently printed and affixed to the container, the method comprising the steps of:
providing a blank form having the main label portion and plural warning label portions releasably adhered to a backing sheet, both the main label portion and the warning sheet portions having respective outer surfaces for receiving printed information thereon;
printing drug or patient specific information onto the outer surface of the main label portion in a first direction; and
printing warning information onto the outer surface of at least one of the warning label portions in a second direction which is generally lateral to the first printing direction on the main label portion.
Defendants' Ex. 2 at Tab U.S. Patent 5,855,395, MNA 000476.
Read literally, Claim 17 does not state that the main label portion and one warning label portions are connected to each other. However, as it did with respect to Claim 1 of the `906 patent, Convergent argues that Claim 17 should be read to require such a connection, in light of the specification and prosecution history. ABP again argues that the claim language is controlling, and should not be read to require that any of the labels on the form be connected, so long as the form has the specific label portions, patient advisory form, and enumerated printing features.
Once again, the Court, in construing Claim 17, must turn its attention to the intrinsic evidence in order to "determine whether the patentee has set forth an explicit definition of a term contrary to its ordinary meaning, has disclaimed subject matter, or has otherwise limited the scope of its claims." Day International, Inc. v. Reeves Bros., Inc., 260 F.3d 1343, 1348 (Fed. Cir. 2001).
It is clear to the Court that, in its communications with the PTO during the prosecution of the `395 patent, ABP disclaimed subject matter and limited the scope of Claim 17. In an Information Disclosure Statement ("IDS") to the PTO, ABP stated that it was attaching a specimen of one of Defendant Moore's business forms. At the time, it was unclear whether the Moore form was prior art; it was later deemed not to be. Nevertheless, while it was unsure whether the Moore firm was prior art, ABP submitted the form and informed the PTO that:
Applicants' undersigned counsel has removed the main drug container label portion and reattached it to the adhesive backing, so as to permit the Examiner to see that the main container label portion is not attached to the warning labels in such a way as to permit the two to come off together, as is the case with Applicant's invention.
Defendants' Ex. 2 at Tab `395 Patent Prosecution History, MNA 000535. ABP now argues that this statement should be given no weight because the Moore form was later determined not to be prior art. However, it is ironic that ABP distinguished the Moore form on the basis that the main and auxiliary labels were not attached, but later filed this action accusing that very form of being an infringing use of its patent. Obviously, at the time of submitting the IDS, ABP believed it necessary to distinguish its form from other forms on the basis that its form's main and auxiliary labels were connected.
ABP argues that the RR mischaracterized the statement made in the IDS, and that "the statement has to be evaluated in light of the claims." Doc. 196 at 19. However, the case law makes it clear that the claims are to be read in view of the specification and prosecution history, not the other way around. See SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, 242 F.3d 1337 (Fed. Cir. 2001); Netword, 242 F.3d at 1352.
In any event, the IDS is not the only source of proof that ABP limited the scope of its claims. In an amendment to the `395 application, ABP's counsel thanked the examiner for the courtesy of a telephone interview to discuss the patentability of ABP's forms. of particular relevance to the Court's inquiry is the following portion of ABP's remarks:
During the interview, Examiner Han also pointed out that the CVS label relied on in ¶ 7 of the Office Action was the label relied upon in the co-pending reexamination, and not the CVS label which is appended as Attachment A to Applicant's earlier invention disclosure statement. With reference to the CVS label included with the reexamination, Applicant's counsel then pointed out the deficiencies of that as prior art; it was particularly observed that the three elongated strips between the main vial label portion attached to the backing strip and the patient advisory leaflet section of the form are not attached to the main vial label in such a way that those strips are lifted from the backing strip together with the vial label.
Defendants' Ex. 2 at Tab `395 Patent Prosecution History, MNA 000590-91 (emphasis added).
Later, in addressing the rejection of its claims including the former Claim 32 (which is now Claim 17), based on the above-mentioned CVS form ABP pointed out:
. . . that this form does not at all relate to the subject matter of the rejected claims for the reasons discussed in Section I above. Of particular note, the lifting of the main (vial) label portion from the backing sheet clearly does not achieve simultaneous removal of the three elongated strips underneath the main label portion, in direct contrast to the recitation of the rejected claims. Further the rejected claims contain additional recitation — notably the recitation to the direction of elongation in Claim 13 — which also distinguishes over the CVS label.
Defendants' Ex. 2 at Tab `395 Patent Prosecution History, MNA 000596 (emphasis added).
After ABP amended the `395 application, the PTO issued a Notice of Allowability. In the section entitled, "Reasons for Allowance," the examiner stated:
the prior art of record does not show a pharmacy form having a removable label sheet with a plurality of elongated auxiliary labels smaller than a main label which extend lateral to a first tear line that is generally vertical from the top to bottom edge of the sheet which permits the auxiliary labels to be simultaneously removed from a backing sheet with the main label and subsequently separable from the main label and a method of labeling which prints information on the main label in one direction and in another direction on the auxiliary labels in one printing pass and then the simultaneously affixing the main label and used auxiliary labels with printing to the surface of a drug container.
Defendants' Ex. 2 at Tab `395 Patent Prosecution History, MNA 000625-26. Significantly this was the only reason for allowance given by the examiner. The examiner's explanation makes it abundantly clear to the Court that the patent was allowed, at least in part, on the basis that the main and auxiliary labels could be simultaneously removed from the backing sheet and affixed to a drug container. Such simultaneous removal and application would seemingly be impossible if the labels were not connected in some way.
Accordingly, the Court believes that the prosecution history shows that the scope of Claim 17 is limited both by ABP's representations to the PTO and the examiner's explanation of her reason for allowing the claims asserted in the amendment. Consequently, the Court defines Claim 17 as requiring that the main label portion be attached to at least one of the warning label portions of the pharmacy form.
Were the Court to construe Claim 1 of the `906 Patent and Claim 17 of the `395 Patent in the manner urged by ABP's, it would essentially render the public notice function of patent prosecution meaningless, and prevent competitors from relying on the representations made by the patentee during the prosecution of the patent. As the case law repeatedly states, patentees cannot narrow the scope of their inventions in order to distinguish prior art, but later broaden the scope of their inventions by using broad claim language.
Nowhere in any of its communications with the PTO did ABP attempt to depict its forms as requiring anything other than a main label connected to at least one auxiliary label. ABP never stated or implied that its invention covered: (1) a pharmacy form in which the auxiliary labels connected to each other but not the main label, or (2) a form in which the auxiliary labels connected to neither the main label or the other auxiliary labels. ABP argues in its objections to the RR that both Convergent and Judge Glazebrook have taken its representations to the PTO out of context. This argument is not credible. It has been shown both in the RR and in this analysis that ABP repeatedly distinguished its forms over prior art by pointing to the connection between the main and auxiliary labels that allows the labels to be simultaneously removed and affixed. Having distinguished its invention, at least in part, on that basis, ABP cannot now have it both ways by claiming that the distinction should not be read into all the claims.
In conclusion, the dispute between the parties boils down to what evidence should be used to construe ABP's patent claims. ABP essentially asks the Court to read Claim 1 of the `906 patent and Claim 17 of the `395 patent in a vacuum, without regard to the representations it made in order to obtain the patents. Convergent asks the Court to read ABP's patent claims in light of the way in which ABP repeatedly described and distinguished its invention during prosecution. The case law makes it clear that the patent specification and prosecution history are both necessary and useful tools in claim construction, and must be considered in addition to the language of claims. Upon review of the evidence, the Court has determined that ABP disavowed by implication any form in which the main and auxiliary labels were not connected. Consequently, the Court defines Claim I of the `906 Patent and Claim 17 of the `395 Patent as requiring that the form's main label be connected to at least one of the auxiliary labels.
III. INFRINGEMENT
Both ABP and Convergent have filed motions for summary judgment. ABP asks the Court to grant summary judgment in its favor on the issue of whether Convergent infringed the `906 and `395 Patents. Convergent, on the other hand, asks the Court to grant summary judgment in its favor on the issue of non-infringement.
ABP's claims with respect to the `231 Patent were only applicable to Defendant Moore. Because Moore is no longer a party to this action, and Convergent is not accused of infringing the `231 Patent, the Court need only consider whether the `906 and `395 Patents were infringed by Convergent.
A patent infringement analysis requires the Court to take two steps. Pall, 259 F.3d 1383, 1389. "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Id. (quoting Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1476 (Fed. Cir. 1998)). Viewing the facts and inferences in the most favorable light to the moving party, "summary judgment is proper only if `no reasonable jury could return a verdict for the nonmoving party.'" Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d (1986).
Usually, "[t]he court's construction of the claims . . . decides the question of infringement, whether literal infringement or under the doctrine of equivalents." Netword, 242 F.3d 1347, 1350. The Court has already construed ABP's claims, and determined that both Claim 1 of the `906 Patent and Claim 17 of the `395 Patent require that the main label of the pharmacy form be connected to at least one auxiliary label. The only remaining issue for the Court, therefore, is whether Convergent's label forms infringe on ABP's patents.
Convergent's accused products consist of: (1) forms having labels in which the larger main label is not connected to any of the smaller auxiliary labels, but at least two of the auxiliary labels are connected ("the Group II labels"); and (2) forms in which no labels are connected, i.e. the main label is not connected to the auxiliary label, and none of the auxiliary labels are connected to each other ("the Group III labels"). See Joint Final Pretrial Statement, Doc. 169 at 56.
In order for a patentee to establish infringement, "every limitation set forth in a patent claim must be found in an accused product of process exactly or by a substantial equivalent [consequently] the failure to meet a single limitation is sufficient to negate infringement of the claim." Laitram, 939 F.2d 1533, 1535. It is clear from the way in which the parties have described the Group II and III forms that none of Convergent's forms consist of a main label connected to any of the auxiliary labels. Because such a connection is a claim limitation as construed by the Court, ABP has failed to establish that Convergent's labels have infringed every element of the disputed claims. Consequently, no reasonable jury could find that Convergent infringed either the `906 or `395 Patents, and summary judgment is due to be granted in its favor.
IV. INVALIDITY
In addition to filing a motion for summary judgment of non-infringement, Convergent also filed two separate motions for invalidity of ABP's patents. Because Convergent raised the issue of invalidity as an affirmative defense to ABP's claims, rather than as a counterclaim, the Court declines to address the merits of these motions. See Brunswick Corp. v. United States, 34 Fed.Cl. 532, 557 (Fed.Cl. 1995); Cardinal Chem. v. Morton Int'l, Inc., 508 U.S. 83, 93-94, 113 S.Ct. 1967, 1974, 124 L.Ed.2d 1 (1993) ("An unnecessary ruling on an affirmative defense is not the same as the necessary resolution of a counterclaim for a declaratory judgment . . . [t]o hold a patent valid if it is not infringed is to decide a hypothetical case.").
V. CONCLUSION
The Court has construed the disputed claims of the `906 and `395 Patents as requiring that ABP's label forms consist of a main label connected to at least one of the auxiliary labels on the form. Because the accused forms do not have connecting main and auxiliary labels, Convergent has not infringed ABP's Patents.
Based on the foregoing, it is ORDERED that:
1. The Report and Recommendation (Doc. 190) is approved and adopted.
2. Plaintiff's Objections to the Report and Recommendation (Doc. 196) are overruled.
3. Defendants' Joint Motion to Construe U.S. Patent No. 5,642,906 (Doc. 80), filed August 27, 2001, is GRANTED.
4. Plaintiff's Motion for Markman Hearing (Doc. 83), filed August 27, 2001, is DENIED as moot, as the hearing was held before Magistrate Judge Glazebrook on October 17, 2001 and October 24, 2001.
5. Defendants' Joint Motion to Construe U.S. Patent No. 5,855,395 (Doc. 86), filed August 27, 2001, is GRANTED.
6. Plaintiff's Motion for Summary Judgment (Doc. 106), filed October 5, 2001, is DENIED.
7. Defendants' Motion for Summary Judgment of Non-Infringement (Doc. 119), filed October 5, 2001, is GRANTED.
8. Defendants' Motion for Summary Judgment of Invalidity for Prior Art (Doc. 111), filed October 5, 2001, is DENIED as moot.
9. Defendants' Motion for Summary Judgment of Patent Invalidity Under 35 U.S.C. § 102(f) and § 112, filed October 5, 2001, is DENIED as moot.
10. All other pending motions in this case are DENIED as moot.
11. The Clerk shall enter a final judgment in this case, providing that the Plaintiff shall take nothing on its claims against the Defendant, and that the Defendant shall recover its costs of action.
12. This case shall be removed from the January 2002 trial calendar.
13. The Clerk shall close this case.
DONE and ORDERED in Orlando, Florida.