Opinion
Civ. No. 98-3488 (DRD).
July 14, 1999.
Ronald H. Shaljian, Esq., John P. Nulty, Esq., Boffa, Shaljian, Cammarata O'Connor, L.L.C., Jersey City, N.J., Roger W. Parkhurst, Esq., Parkhurst Wendel, LLP, Alexandria, VA., Attorneys for Plaintiff.
Robert J. Kipnees, Esq., Greenbaum, Rowe, Smith, Ravin, Davis Himmel, LLP, Woodbridge, N.J., Alan B. Clement, Esq., Timothy X. Gibson, Esq., Hedman, Gibson Costigan, P.C., New York, NY., Attorneys for Defendants.
O P I N I O N
An exclusive licensee of a patented bed rail telephone and clip brought this action against the distributors of a similar product claiming that the similar product infringes the licensee's patent. The plaintiff-licensee, Bedmate International Corporation ("Bedmate"), and the defendant-distributors, Med-Pat, Inc., Abraham Zagha, and Samuel Zagha ("Defendants"), cross-moved pursuant to Fed.R.Civ.P. 56 for partial summary judgment on the issue of infringement. Oral argument was heard on May 10, 1999. For the reasons set forth below, Bedmate's motion will be granted and Defendants' cross-motion will be denied.
I. BACKGROUND
A. Factual Background
In 1993, Robert E. Lee ("Lee") invented an assembly of a one-piece telephone and a clip for clipping such a telephone onto an upper horizontal rail of a hospital bed. On June 2, 1993, Lee applied to the United States Patent Trademark Office for a patent. On May 16, 1995, Lee's patent was approved and assigned the number 5,416,839 (the "'839 Patent"). While the application was pending, Bedmate was incorporated and given an exclusive license to sell the device covered by the '839 Patent. Bedmate has been marketing the patented product since 1993.
In 1997, Defendants began to market a similar device that allegedly infringed the '839 patent ("Med-Pat Model 1"). Upon becoming aware of Defendants' product, Bedmate immediately demanded that Defendants cease marketing it. In response, in 1998 Defendants modified their product and began to market a slightly different device in 1998 ("Med-Pat Model 2"). Bedmate once again demanded that Defendants cease marketing their product and filed this suit on July 24, 1998, when they failed to do so.
B. The '839 Patent
The '839 Patent contains eleven separate claims. The claims at issue in this case are numbers 1, 2, 3, 4, 6, and 11.
Claim 1 of the '839 patent provides:
1. A telephone clip assembly for clipping onto an upper horizontal rail of a bed-rail assembly of a hospital bed, the bed-rail assembly including said upper horizontal rail and a lower horizontal rail, comprising:
a one-piece telephone comprising a telephone body having a front surface presenting a speaker means, a back surface opposite said front surface, and a top surface joining said front and back surfaces to each other, said telephone body having a generally elongated shape;
abutment means for abutting against the lower horizontal rail of the bed-rail assembly, said abutment means comprising a bottom portion of the telephone body; and
universal mounting means for mounting the one-piece telephone to various types of bed-rail assemblies, said universal mounting means comprising a universal bed-rail clip affixed to said top surface of the one-piece telephone for clipping said one-piece telephone onto the upper horizontal rail of the bed-rail assembly, said universal bed-rail clip comprising top and bottom sides being joined together by a joining side and defining, opposite said joining side, an opening for receiving said upper horizontal rail, said universal bed-rail clip being substantially U-shaped in cross section, wherein a distance between internal surfaces of said top and bottom sides is about 0.75 to about 1.0 inches, said top side extends about 1.0 to about 1.5 inches from said joining side, at least one of said top and bottom sides is flexible between open and closed positions, and said open position permits passage of said upper horizontal rail through said opening into an interior of said universal bed-rail clip.
Claim 2 of the patent provides:
2. The device of claim 1, further comprising anti-rotation means for preventing said universal bed-rail clip from rotating relative to said one-piece telephone.
Claim 3 of the '839 Patent provides:
3. The device of claim 2, wherein said anti-rotation means comprises a protrusion extending from a bottom surface of said bottom side, and a recess of complementary shape formed in said top surface of said one piece telephone.
Claim 4 of the '839 Patent provides:
4. The device of claim 1, wherein the universal bed-rail clip further comprises fixation means for attaching the universal bed-rail clip to said one-piece telephone.
Claim 6 of the '839 Patent provides:
6. The device of claim 1, wherein the one-piece telephone and the universal bed-rail clip form a single, unitary piece.
Finally, claim 11 of the '839 Patent provides:
11. The device of claim 1, wherein said bottom portion of said telephone comprises an angular extension.
A drawing of the device protected by the patent is attached to this Opinion as Appendix 1.
C. Med-Pat Model XL88SW Bedrail Bracket Telephone
The Med-Pat Model XL88SW Bedrail Bracket Telephone ("Med-Pat Model 1") is a white plastic device constructed of high impact polystyrene. The device is comprised of a one piece telephone assembled with a bedrail bracket. The bracket includes attachment hooks, two of which fit into the backside of the top portion of the telephone and one of which attaches in an opening on the top surface of the telephone. The phone contains a hang up on/off switch, a dual tone IC ringer, three position volume control, a ringer indicator light, and a twenty foot cord. The device is hearing aid compatible, approved by the FCC, and is compatible with any of the holders manufactured by Med-Pat. A drawing of the XL88SW telephone is attached to this Opinion as Appendix 2.
D. Med-Pat's Rail Hanger Button Phone
The second allegedly infringing device is the Med-Pat Button Phone ("Med-Pat Model 2"), which, Bedmate claims, is virtually identical to the Med-Pat Model 1. See Plaintiff's Ex. 8. The difference between Med-Pat Model 2 and Med-Pat Model 1 is the structure of the rail hanger portion of the assembly. The bracket in Med-Pat Model 2 contains a top side, a joining side, and attachment hooks. The attachment hooks engage openings in the topmost back of the one-piece telephone, thereby affixing the entire bracket over the top of the phone. The top side contains an angular piece which reduces its capacity to bend. The remaining features of Med-Pat Model 2 are the same or substantially similar to that of the Med-Pat Model 1. A drawing of Med-Pat Model 2 is attached to this Opinion as Appendix 3.
II. STANDARD
The Court may grant summary judgment when, drawing all inferences in favor of the non-moving party, the pleadings, supporting papers, affidavits, and admissions on file, demonstrate that there is no genuine issue of material fact and that the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); see Todaro v. Bowman, 872 F.2d 43, 46 (3d Cir. 1989); Davis v. Portline Transportes Maritime Internacional, 16 F.3d 532, 536 n. 3 (3d Cir. 1994); Chipollini v. Spencer Gifts, Inc., 814 F.2d 893, 896 (3d Cir.) (in banc), cert. dismissed, 483 U.S. 1052, 108 S.Ct. 26, 97 L.Ed.2d 815 (1987). The Court's function is not to weigh the evidence and discern the truth of the matter, but to determine whether there is a genuine issue of material fact for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986);Petruzzi's IGA v. Darling-Delaware, 998 F.2d 1224, 1330 (3d Cir.), cert.denied, 510 U.S. 994, 114 S.Ct. 554, 126 L.Ed.2d 455 (1993). An issue is "genuine" if a reasonable jury could possibly hold in the non-movant's favor with regard to that issue. Anderson, 477 U.S. at 248; Miller v. Indiana Hospital, 843 F.2d 139, 143 (3d Cir.), cert. denied, 488 U.S. 870, 109 S.Ct. 178, 102 L.Ed.2d 147 (1988). A fact is material if it influences the outcome of the action under the governing substantive law. Anderson, 477 U.S. at 248.
In a patent infringement case, "[a] court may grant summary judgment when, upon construction of the claims and with all factual inferences drawn in favor of the non-movant, it is apparent that only one conclusion as to infringement could be reached by a reasonable jury." ATD Corp. v. Lydall, Inc., 159 F.3d 534, 540 (Fed. Cir. 1998); see also Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n. 8, 117 S.Ct. 1040, 1053 n. 8, 137 L.Ed.2d 146 (1997); Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 870 (Fed. Cir. 1998). The construction of the claim is purely a question of law. Id.; Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The question of infringement, however, presents issues of fact that a court should review with great care before granting a motion for summary judgment.Cole v. Kimberly-Clark Corp., 102 F.3d 524, 528 (Fed. Cir. 1996), cert.denied, 118 S.Ct. 56 (1997).
If the Court determines that there is no genuine issue of material fact and that the movant is entitled to judgment as a matter of law, then summary judgment may be granted.
III. DISCUSSION
Bedmate has moved for summary judgment and seeks an order declaring that both of Defendants' telephones infringe one or more claims of the '839 Patent. Defendants have cross-moved for summary judgment and seek an order of noninfringement or, in the alternative, a trial on the merits.
A. Patent Infringement
In a patent infringement action, a two-step analysis must be conducted. See EMI Group North America, Inc. v. Intel Corp., 157 F.3d 887, 891 (Fed. Cir. 1998), cert. denied, 119 S.Ct. 1756 (1999); Cybor Corp. v. FAS Tech., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (in banc);CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1152 (Fed. Cir. 1997), cert. denied, 118 S.Ct. 1039, 140 L.Ed.2d 105 (1998); Cole v. Kimberly-Clark Corp., 102 F.3d 524, 528 (Fed. Cir. 1996), cert. denied, 118 S.Ct. 56, 139 L.Ed.2d 20 (1997); Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (in banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (citing Read Corp. v. Portec, Inc., 970 F.2d 816, 821 (Fed. Cir. 1992)); Cleanox Envtl. Svcs., Inc. v. Hudson Envtl. Svcs., Inc., 14 F. Supp.2d 601, 606, aff'd in relevant part, Mantech Envtl. Corp. v. Hudson Envtl. Svcs., Inc., 152 F.3d 1368 (Fed. Cir. 1998); Phillips Elec. North Am. Corp. v. Universal Elec. Inc., 930 F. Supp. 986, 997 (D.Del. 1996). First, the meaning and scope of the patent claims asserted to be infringed must be determined. See Markman, 517 U.S. at 384, 116 S.Ct. 1384; EMI Group, 157 F.3d at 891;Cybor Corp., 138 F.3d at 1454; CVI/Beta Ventures, 112 F.3d at 1152;Cole, 102 F.3d at 528; Markman, 52 F.3d at 976; Cleanox, 14 F. Supp.2d at 607. This step is commonly referred to as "claim construction" or "claim interpretation." Markman, 52 F.3d at 976; Cleanox, 14 F. Supp.2d at 607. Second, the properly construed claims must be compared to the device or method that is accused of infringing. See EMI Group, 157 F.3d at 891;Cybor Corp., 138 F.3d at 1454; Markman, 52 F.3d at 976; Cleanox, 14 F. Supp.2d at 607.
B. Claim Construction
A patent is a fully integrated document that must set out a written description of the invention "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains" to practice the invention. 35 U.S.C. § 112 ("Section 112"). "[A] patent must describe the exact scope of an invention and its manufacture to secure to [the patentee] all to which he [or she] is entitled, [and] to apprise the public of what is still open to them." Markman, 517 U.S. at 373, 116 S.Ct. 1384.
The interpretation and construction of a patent claim are exclusively within the province of the court. Id. at 391, 116 S.Ct. 1384; see also Cybor Corp., 138 F.3d at 1454; CVI/Beta Ventures, 112 F.3d at 1152;Cleanox, 14 F. Supp.2d at 607. A court therefore has "the power and obligation to construe as a matter of law the meaning of language used in the patent claim." Markman, 52 F.3d at 979; see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1343 (Fed. Cir. 1998); Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1556 (Fed. Cir. 1995),cert. denied, 518 U.S. 1020, 116 S.Ct. 2554, 135 L.Ed.2d 1073 (1996);CVI/Beta Ventures, 112 F.3d at 1152; Cleanox, 14 F. Supp.2d at 607. When performing such an analysis, various sources may be consulted, including those that are intrinsic and extrinsic to the patent claims. See Cybor Corp., 138 F.3d at 1454; CVI/Beta Ventures, 112 F.3d at 1152; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996);Lubrizol, 64 F.3d at 1556; Markman, 52 F.3d at 979-80; Cleanox, 14 F. Supp.2d at 607.
There is a hierarchy of evidence to be considered when construing the language of a patent. Vitronics, 90 F.3d at 1582; see also Digital Biometrics, 149 F.3d at 1344; Cybor Corp., 138 F.3d at 1454 (majority opinion) and 1462 (Plager, J., concurring); Lubrizol, 64 F.3d at 1556;Cleanox, 14 F. Supp.2d at 607. First and foremost, the language of the claim defines the scope of the protected invention. See Bell Communications Research, Inc. v. Vitalink Communications, Corp., 55 F.3d 615, 619 (Fed. Cir. 1995); see also Vitronics, 90 F.3d at 1582;Cleanox, 14 F. Supp.2d at 607. Second, it is also necessary to review the specification of the patent. See Vitronics, 90 F.3d at 1582. Finally, a court may also consider the prosecution history of the patent if it has been placed in evidence. Vitronics, 90 F.3d at 1582.
1. The Claims
Section 112 mandates that a patent specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his [or her] invention." 35 U.S.C. § 112.
Section 112 states in relevant part that the
specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.35 U.S.C. § 112.
When interpreting a claim, the words of the claim itself are considered "to define the scope of the patented invention." Vitronics, 90 F.3d at 1582 (citing Bell Communications, 55 F.3d at 620). The words of the claim are interpreted in accordance with their ordinary meaning, as understood by a person reasonably skilled in the art. Id.; Quantum, 65 F.3d at 1580; Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387 (Fed. Cir. 1992); Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed. Cir. 1984); Phillips Elec. North Am. Corp. v. Universal Elec. Inc., 930 F. Supp. 986, 997 (D.Del. 1996).
A claim should not be construed in a manner that renders the claim language "meaningless or superfluous." Texas Instruments, Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993). If the inventor has used a term in a manner other than its ordinary meaning, that meaning should be given effect because the inventor is free to be his or her own lexicographer. Vitronics, 90 F.3d at 1582 (citing Hoechst Celanese Corp. v. BP Chems., Ltd., 78 F.3d 1575, 1578 (Fed. Cir.), cert.denied, 519 U.S. 911, 117 S.Ct. 275, 136 L.Ed.2d 198 (1996)); see also Markman, 52 F.3d at 980. Any term given a special meaning, however, must be so defined in the specification or its definition must be clear by implication. Markman, 52 F.3d at 980; Vitronics, 90 F.3d at 1582.
2. The Specification
The patent claims "must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979 (citing Autogiro, 384 F.2d at 397); see also SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985). Section 112 provides that
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.35 U.S.C. § 112. The specification is highly relevant to the claim construction analysis because it contains a written description of the invention that must be clear and complete enough to enable those of ordinary skill in the art to make and use it. Vitronics, 90 F.3d at 1582.
The specification must be reviewed to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning.Vitronics, 90 F.3d at 1582; CVI/Beta Ventures, 112 F.3d at 1153. In this regard, the specification "may act as a sort of dictionary, which explains the invention and may define terms used in the claims."Markman, 52 F.3d at 979. It acts as a dictionary when it "expressly defines terms used in the claims or when it defines terms by implication." Vitronics, 90 F.3d at 1582.
The specification, however, does not limit the right to exclude. That is the function and purpose of the claims. Markman, 52 F.3d at 980. Additionally, citations in the specification to a preferred embodiment, illustration, or example do not limit the scope of the patent claim.Lucas Aerospace, Ltd. v. Unison Indus., L.P., 890 F. Supp. 329, 332 (D.Del. 1995).
C. Construction of the '839 Patent
Claim 1 of the '839 Patent recites an "assembly" comprising a one-piece telephone having a bed-rail clip affixed to the top. The claim, as outlined above, describes the assembly in great detail. Additionally, the language of claims 2, 3, 4, 6, and 11 of the '839 Patent are phrased in dependent form.
It should also be noted that although the subsequent claims are dependent on Claim 1, the validity of each must be determined independently. See 35 U.S.C. § 282. Therefore, determination of infringement any one valid claim of the '839 Patent may constitute infringement.
D. Med-Pat Model 1
Bedmate contends that Defendants' Med-Pat Model 1 literally infringes Claims 1 through 4, 6, and 11 of the '839 patent. Literal infringement occurs whenever a limitation of the patent is literally found in the accused device. Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1105 (Fed. Cir. 1996), cert. denied, 520 U.S. 1115, 117 S.Ct. 1244, 137 L.Ed.2d 327 (1997); Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991); SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988). To literally infringe, the accused device must contain every limitation of the asserted claim. Laitram Corp., 939 F.2d at 1535. If the composition of the allegedly infringing product is undisputed, literal infringement becomes a matter of law amenable to summary judgment. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578 (Fed. Cir. 1996).
A limitation-by-limitation comparison of the '839 Patent's claims with Med-Pat Model 1 demonstrates that Med-Pat Model 1 literally infringes Claims 1, 2, 3, 4, 6, and 11.
1. Claim 1
As previously stated, Claim 1 commences with the language:
A telephone clip assembly for clipping onto an upper horizontal rail of a bed-rail assembly of a hospital bed, the bed-rail assembly including said upper horizontal rail and a lower horizontal rail, comprising:
Med-Pat Model 1, as fully assembled, satisfies this portion of the '839 Patent claim.
Claim 1 continues:
a one-piece telephone comprising a telephone body having a front surface presenting a speaker means, a back surface opposite said front surface, and a top surface joining said front and back surfaces to each other, said telephone body having a generally elongated shape;
The Med-Pat Model 1 telephone meets these additional limitations of Claim 1. See Plaintiff's Exhibit 5.
The claim continues:
abutment means for abutting against the lower horizontal rail of the bed-rail assembly, said abutment means comprising a bottom portion of the telephone body; and
Med-Pat Model 1 is within this language as well since it consists of a "bottom portion" that serves as a means for abutting against the lower portion of a horizontal bed-rail. See Plaintiff's Exhibit 5.
The claim continues:
universal mounting means for mounting the one-piece telephone to various types of bed-rail assemblies, said universal mounting means comprising a universal bed-rail clip affixed to said top surface of the one-piece telephone for clipping said one-piece telephone onto the upper horizontal rail of the bed-rail assembly,
As shown in the Court's Appendix 2, Med-Pat Model 1 falls within this language. Med-Pat Model 1 consists of a bed-rail clip affixed to the top of a one-piece plastic telephone. The clip on Defendants' device is used for attaching the one-piece telephone to the upper horizontal rail of a hospital bed-rail.
The claim then continues stating that:
said universal bed-rail clip comprising top and bottom sides being joined together by a joining side and defining, opposite said joining side, an opening for receiving said upper horizontal rail, said universal bed-rail clip being substantially U-shaped in cross section,
As shown in the Court's Appendix 2, Med-Pat Model 1's bed-rail clip consists of a top (T) and bottom (B) side joined together by a third side (J) and leaving open the fourth side to receive the actual bed-rail. Defendants' bed-rail clip for this model is also substantially U-shaped in its cross-section.
Claim 1 continues:
wherein a distance between internal surfaces of said top and bottom sides is about 0.75 to about 1.0 inches,
As shown in both Plaintiff's exhibits 3 and 5 and the Court's Appendix 2, the distance (D1) between the top and bottom sides of Med-Pat Model 1 is approximately 0.88 inches to approximately 0.94 inches. Therefore, Med-Pat Model 1 bed-rail clip falls within the language of Claim 1.
Claim One then continues:
said top side extends about 1.0 to about 1.5 inches from said joining side,
The parties dispute the meaning of this claim language. They agree that the starting point of the measurement is the inside surface of the joining side (J). Defendants contend that the measurement should extend from that surface to the outermost up-turned portion of the top side (T), which is a distance of 1.8125 inches. Bedmate contends that the measurement should extend from the inside surface of the joining side (J) either to the beginning of the down turned portion (1.375 inches) or to the lower most portion of the down turned portion (1.562 inches). Either measurement is within the claim language of "about 1.0 to about 1.5 inches from said joining side."
The outermost up-turned portion of Med-Pat Model 1's top side (T) plays no role in retaining the device on a hospital bed-rail. It could be lengthened or shortened with no effect upon the function of the device. Thus the appropriate distance to be measured under the language of Claim 1 is from the inside surface of the joining side (J) to either the beginning or to the lower most portion of the down turned portion.
Claim 1 concludes, stating that:
at least one of said top and bottom sides is flexible between open and closed positions, and said open position permits passage of said upper horizontal rail through said opening into an interior of said universal bed-rail clip.
As shown by the actual models and the Court's Appendix 2, the top side (T) of Med-Pat Model 1 is flexible enough to permit passage of an upper horizontal bed-rail into the U-shaped clip. Accordingly, Defendants' device is encompassed by this element of Claim 1.
2. Claim 2
Claim 2 of the '839 Patent is dependent upon Claim 1. As discussed in the previous section, all of the limitations set forth in Claim 1 are present in Med-Pat Model 1. Claim 2 states that the device of Claim 1 is:
further comprising anti-rotation means for preventing said universal bed-rail clip from rotating relative to said one-piece telephone.
As shown in Plaintiff's Exhibit 5 and the model of the telephone submitted with the motions, the hooks (H) located on both the undersurface of the bottom side (B) of the clip as well as the hooks (H) located at the very bottom of the joining side (J) of clip, when connected to their respective openings (O) on the top and back of the telephone, prevent the clip from rotating relative to the one-piece telephone. Therefore, the additional element in Claim 2 is present in Med-Pat Model 1.
3. Claim 3
Claim 3 of the '839 Patent is dependent upon Claim 2. The limitations of Claim 2 are present in Med-Pat Model 1. Claim 3 claims the device of Claim 2:
wherein said anti-rotation means comprises a protrusion extending from a bottom surface of said bottom side, and a recess of complementary shape formed in said top surface of said one piece telephone.
Med-Pat Model 1 includes a hook (H) extending from the bottom surface of the bottom side (B) of the clip and also includes an opening (O) in the top surface of the one-piece telephone in which this hook engages. Accordingly, there are present in Med-Pat Model 1 the additional elements incorporated in Claim 3.
4. Claim 4
Claim 4 is dependent upon Claim 1. As previously discussed, Med-Pat Model 1 includes all of the elements outlined in Claim 1. Claim 4 additionally states:
wherein the universal bed-rail clip further comprises fixation means for attaching the universal bed-rail clip to said one-piece telephone.
Med-Pat Model 1 has attachments hooks (H) located on the bottom of the joining side (J) of the clip. These hooks cooperate with openings (O) on the upper portion of the back surface of the one-piece telephone. Thus there are present in Med-Pat Model 1 the additional element of Claim 4.
5. Claim 6
Claim 6 is also dependent upon Claim 1. Med-Pat Model 1 possesses all the elements of Claim 1 of the '839 Patent. Claim 6 of the patent states:
wherein the one-piece telephone and the universal bed-rail clip form a single, unitary piece.
This language reads as Med-Pat Model 1. The bed-rail clip, with its attachment hooks, form a single unitary piece in precisely the manner in which the '839 Patent describes.
Various embodiments of the one-piece telephone/bed-rail clip assembly in the form of a single, unitary piece are described in the '839 Patent specification. The specification states that
[i]t should also be noted that the preferred embodiments discussed above include a radially expanding pin for insertion into a complementary hole in the one piece telephone or supporting bracket. Such attachment means provides a permanent join[t] between the clip and the one-piece telephone or supporting bracket, but a semi-permanent joining means may also be employed, as long as a rigid connection is maintained. Alternatively, the universal bed-rail clip may be co-molded with the supporting bracket or telephone as one piece.See '839 Patent Specification, at column 4, lines 26-35.
6. Claim 11
Claim 11 is likewise dependent upon Claim 1. As previously discussed, Med-Pat Model 1 embodies all of the elements of Claim 1. Claim 11 additionally states:
wherein said bottom portion of said telephone comprises an angular extension.
As demonstrated by both the Court's Appendix 2 and the actual model of the alleged infringing device, Med-Pat Model 1 contains an angular extension (E) on its bottom portion, bringing it within the additional limitation of Claim 11 of the '839 Patent.
7. Conclusion
After reading the claims of the '839 Patent on Med-Pat Model 1, it must be concluded that Med-Pat Model 1 literally infringes claims 1, 2, 3, 4, 6, and 11 of the '839 Patent. Each limitation contained in the patent claims at issue is literally found in the accused device. See Maxwell, 86 F.3d at 1105; Laitram Corp., 939 F.2d at 1535; SmithKline Diagnostics, Inc., 859 F.2d at 889. Accordingly, Bedmate's motion for summary judgment that Med-Pat Model 1 infringes claims 1-4, 6, and 11 of the '839 Patent will be granted and Defendants' cross-motion on the issue of patent noninfringement of this device will be denied.
E. Med-Pat Model 2
Bedmate contends that Med-Pat Model 2 infringes Claims 1, 2, 4, 6, and 11 of the '839 Patent under the doctrine of equivalents. Defendants assert that Bedmate is estopped from claiming infringement under that doctrine because certain embodiments of the '839 Patent had been surrendered in the application process. Alternatively, Defendants argue that Med-Pat Model 2 is dissimilar to the patented device and does not infringe the '839 Patent under the doctrine.
1. Defendants' Contention
Defendants urge that five critical elements of the '839 Patent claims are not present in Med-Pat Model 2 and, further, that the '839 Patent application history prevents Bedmate from relying on the doctrine of equivalents to overcome these differences. The elements of the claims which do not read literally on Med-Pat Model 2 are: 1) a universal mounting clip which is affixed to the top surface of the one-piece telephone; 2) a universal mounting clip that has a bottom side, and 3) which is substantially U-shaped in cross section; 4) either the top or bottom side of the universal mounting clip is flexible between open and closed positions; and 5) the top side of the universal mounting clip has a length of about 1.0 to about 1.5 inches. Reference can be made to Court's Appendix 1 (the '839 Patent device) and Court Appendix 3 (the Med-Pat Model 2 device) for a depiction of the differences. Court's Appendix 4, prepared by Defendants, illustrates Defendants' contentions.
Claim 1 of the '839 Patent specifies that the universal bed-rail clip be "affixed to said top surface of the one-piece telephone." In a June 9, 1994 Office Action, the Examiner rejected the originally filed claim of the '839 as being unpatentably obvious over Carlson, et al., United States Patent No. 5,241,592 (the "'592 Patent") in view of Carpenter, United States Patent No. 5,044,588 (the "'588 Patent"). The Examiner noted that "Carlson differs from the claimed invention in that it does not explicitly refer [to] the clip as a bed rail clip affixed to a top surface of the telephone."
After Bedmate's attorney conducted a personal interview with the Examiner, Bedmate filed claim amendments which included the recitation that the telephone included "a top surface forming a front surface presenting a speaker means and a back surface opposite the front surface and wherein the universal bed-rail clip was affixed to said top surface of the telephone."
In addition, the '839 Patent specification states that "a second aspect of the present invention includes a telephone support clip assembly comprising a telephone supporting bracket as described above having the universal bed-rail clip affixed to the top lip thereof."
Defendants note that the Med-Pat Model 2 universal bed-rail clip is affixed to the back of the telephone, not to the top, and therefore is not withing the literal language of the claims. Defendants argue that Bedmate cannot rely on the doctrine of equivalents with respect to this aspect of the claim because in order to secure allowance of Claim 11 (now Claim 1) 1) Bedmate urged that the limitation regarding affixation of the mounting clip to the top surface of this telephone distinguished the claims from the prior art, and 2) Bedmate amended the claims to point out explicitly that the mounting clip was required to be attached to the top surface of the telephone.
Next, Defendants note that Claim 1 of the '839 Patent recites the universal mounting means as 1) "comprising top and bottom sides being joined together by a joining side"; and 2) "being substantially U-shaped in cross-section." As can be observed in Court's Appendix 3, Med-Pat Model 2 does not have a bottom side and consequently is L-shaped rather than U-shaped in cross-section. It is Defendants' position that the '839 Patent specification disclosed prior art having both these attributes — no bottom side and a substantially L-shaped cross-section — and that, therefore, prior art estoppel precluded use of the doctrine of equivalents.
Thirdly, Defendants note that Claim 1 of the '839 Patent requires that in the universal bed-rail clip "at least one of said top and bottom sides is flexible between open and closed positions." Med-Pat Model 2 does not have a bottom, and its top side has been rendered inflexible by two arches between the spine of the hanger and the top side.
Finally, Defendants address the language of Claim 1 of the '839 Patent to the effect that the claimed universal bed-rail clip must have a top side that "extends about 1.0 to 1.5 inches from said joining side." In response to the Office Action dated June 9, 1994, in which the Examiner rejected the originally filed claims of the '839 Patent as being unpatentably obvious, Bedmate amended what is now Claim 1 to recite that the universal bed-rail clip had "a distance between internal surfaces of said top and bottom sides [of] about 0.75 to about 1.0 inches, said top side extends about 1.0 to about 1.5 inches from said joining side." As previously noted, according to Defendants' measurements, Med-Pat Model 2 has a top side which has a length of at least 1.8125 inches.
Original Claim 11, which became Claim 1, did not contain a recitation regarding the length of the top side. Claim 22 included such a recitation. In response to the rejection over prior art, Bedmate canceled Claim 22 and amended originally filed Claim 11 to recite the Claim 22 language. Defendants would give prosecution history estoppel effect to the amendment precluding Bedmate from now broadening its claim by use of the doctrine of equivalents.
Defendants summarize their contention of non-infringement by Med-Pat Model 2 under the doctrine of equivalents as follows:
'839 Patent Claim 1
requires affixation of clip to one-piece telephone on the top surface of the one-piece telephone
requires clip to have a bottom
requires clip to have a U-shaped cross section
requires either the top side or the bottom side of clip to be flexible
requires top side to have a length ranging from about 1.0 to about 1.5 inches
Med-Pat Model 2
hanger attaches to back surface of the one piece telephonehanger has no bottom side
hanger has an L-shaped cross section
hanger has no bottom side and includes two arches to prevent flexibility in the top side
hanger has a top side having a length of at least 1.8125 inches
2. Doctrine of Equivalents
Even if an accused device does not literally infringe a patent, infringement might still be found under the doctrine of equivalents. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Under the doctrine, "a product or process that does not literally infringe upon the express terms of a patent may nonetheless be found to infringe if there is `equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Id. at 21, 117 S.Ct. at 1045 (citing Graver Tank Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097, reh'g denied, 340 U.S. 845, 71 S.Ct. 12, 95 L.Ed.2d 620 (1950)). Guided by Graver Tank, the Court reiterated that an equivalency analysis is not a formulaic one, but rather, a contextual one that focuses on the patent, the prior art, and the particular circumstances of the case. Id. at 24, 117 S.Ct. at 1047 (quoting Graver Tank, 339 U.S. at 609, 70 S.Ct. at 856). As the Court stated,
[c]onsideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.Id. at 25, 117 S.Ct. at 1047 (quoting Graver Tank, 339 U.S. at 609, 70 S.Ct. at 856-67).
Although the Supreme Court remained committed to the doctrine of equivalents, it expressed concern that some lower federal courts have previously employed an overbroad interpretation that gave the doctrine "a life of its own, unbounded by patent claims." Id. at 28-29, 117 S.Ct. at 1048-49. To combat this overbroad interpretation, the Court stated that the doctrine "must be applied to individual elements of the claim, not to the invention as a whole" because it is each element that is "material to defining the scope of the patented invention." Id. at 30, 117 S.Ct. at 1049.
According to the Court of Appeals for the Federal Circuit, infringement under the doctrine of equivalents is normally an issue of fact to be submitted to the jury. Hilton Davis Chemical Co. v. Warner-Jenkinson Co., Inc., 62 F.3d 1512, 1522 (Fed. Cir. 1995), rev'd on other grounds, 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Therefore, summary judgment will only be granted when the evidence is such that no reasonable jury could conclude that the two elements are not the equivalent of each other. Warner-Jenkinson Co., 520 U.S. at 39 n. 8, 117 S.Ct. at 1053 n. 8.
3. The Linguistic Framework
Federal courts have employed different linguistic criteria for evaluating equivalence. Boehringer Ingelheim Animal Health, Inc. v. Schering-Plough Corp., 6 F. Supp.2d 324, 329 (D.N.J. 1998). The Supreme Court has expressed no preference as between the "triple identity" test, which focuses on the function served by a particular claim element, the way that element serves that function, and the result obtained by that element, or the "insubstantial differences" approach. See Warner-Jenkinson, 520 U.S. at 39, 117 S.Ct. at 1054.
The traditional "triple identity" test might not be "the test" to use in a particular case and, in some instances when used, may not end the inquiry. See Hilton-Davis, 62 F.3d at 1518, 1521-22; see also Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1222 (Fed. Cir. 1996). The "equivalents" inquiry seeks to determine if differences are insubstantial. Relevant to the inquiry are factors such as evidence of copying, designing around or evidence that persons reasonably skilled in the art would have known of the interchangeability of elements. See Hilton-Davis, 63 F.3d at 1518, 1521-22; see also Sofamor Danek Group, 74 F.3d at 1222.
Ultimately, the particular linguistic framework used is not as important as whether the test is relevant to the essential inquiry of whether the product or process contains elements identical or equivalent to each claimed element of the patented invention. Warner-Jenkinson, 520 U.S. at 40, 117 S.Ct. at 1054. The Supreme Court has noted that
[d]ifferent linguistic frameworks may be more suitable to different cases, depending on their particular facts. A focus on individual elements and a special vigilance against allowing the concept of equivalence to eliminate completely any such elements should reduce considerably the imprecision of whatever language is used. An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element.Id.
4. Prosecution History Estoppel
Prosecution history estoppel, also referred to as file wrapper estoppel, "precludes a patentee from obtaining in an infringement suit patent protection for subject matter which it relinquished during prosecution in order to obtain allowance of the claims." Desper Prod., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1338 (Fed. Cir. 1998). Prosecution history estoppel is an adaptation of the common law of estoppel to the processes of patent examination. See Sutter v. Robinson, 119 U.S. 530, 541, 7 S.Ct. 376, 30 L.Ed. 492 (1886). TheWarner-Jenkinson Court reinforced the equitable rule that one who takes a position in order to obtain a benefit cannot later disavow or take an inconsistent position after the requested benefit is obtained based on the position taken.
Patent prosecution is a public proceeding and forms a public record.Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 172 F.3d 1361 (Fed. Cir. 1999). After the patent has been issued, the public has full access to the examiner's objections and the patentee's responses along the path to the grant. Id. The estoppel arises from the patent examiner's reliance on the applicant's amendments and arguments in response to the examiner's objections. Id. The public interest in patent approval bestows on the public the right to invoke an estoppel on the premises of the examination. Therefore, "a patentee cannot recover for infringement under the doctrine of equivalents when the asserted equivalent was yielded during the examination process in order to obtain the patent." Id. (citing Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) ("claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent")).
The Warner-Jenkinson Court reaffirmed the significance of prosecution history estoppel in applying the doctrine of equivalents. See 520 U.S. at 33, 117 S.Ct. at 1051. The Court noted that "the estoppel arises from amendments that were required to be made for reasons of patentability, and established a new presumption that when it is not clear from the prosecution record why an amendment was made, there is a presumption that the amendment was made for reasons of patentability." Festo Corp., 172 F.3d at 1372. The Court stated that:
we think the better rule is to place the burden on the patent-holder to establish the reason for an amendment required during patent prosecution. The court would then decide whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by that amendment. Where no explanation is established, however, the court should presume that the PTO had a substantial reason related to patentability for including the limiting element added by amendment.Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. at 1051. This new presumption of estoppel is "subject to rebuttal if an appropriate reason for a required amendment is established." Id. Accordingly, the burden is shifted to the patentee. Id.; Festo Corp., 172 F.3d at 1372. "The court must consider the reason for the amendment and determine whether estoppel arises." Id. The Warner-Jenkinson Court further stated that
if the patent-holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded.Warner-Jenkinson, 520 U.S. at 40, 117 S.Ct. at 1054.
The Court did, however, reject the argument that any amendment during the patent prosecution would produce an estoppel. Festo Corp., 172 F.3d at 1372. The Court noted that "we see no substantial cause for requiring a more rigid rule invoking an estoppel regardless of the reasons for the change." Warner-Jenkinson, 520 U.S. at 32, 117 S.Ct. at 1050. The Court concluded by stating that "[w]here the reason for the change was not related to avoiding the prior art, the change may introduce a new element, but it does not necessarily preclude infringement by equivalents of that element." Id. at 33, 117 S.Ct. at 1050-51.
An examination of the prosecution history fails to establish a basis for defendants' defense of file wrapper or prior art estoppel.
Defendants refer to claim amendments that included recitations that the bed-rail clip be affixed to the top surface of the telephone. In the June 7, 1994, Office Action, the Examiner noted "Carlson differs from the claimed invention in that it does not explicitly refer [to] the clip as a bed-rail clip affixed to a top surface of the telephone." Furthermore, the Examiner noted that "[r]egarding claims 18-20 and 22, the construction of Carlson and Gunter differ from the claimed invention in that it does not show the dimensions of the clip." The Examiner stated that in any event "it is understood that the shape or dimension of the clip is dictated by the dimension of the rail. . . . [T]he court has ruled that changes in size/range does [sic] not constitute patent weight. . . . For all the reason [sic] above, it is obvious that the dimension of the clip is a matter of design preference as there is lacking a teaching of criticality, and such changes can be considered as a variation in the combination of Carlson and Gunter as the mounting environment changes."
The principle reason for the Examiner's initial rejection of the application was his conclusion that in the light of Carlson and Gunter "it would have been obvious for one skilled in this art to modify Carlson's clip combination as taught by Gunter, such that Carlson's concept can be adapted to a bed-rail mounting environment, such as a hospital bed." The conference that Bedmate's representatives had with the Examiner, its traverse to the rejection, and the amendments to the claims were designed to demonstrate that the telephone clip assembly that was the subject of the application was uniquely adapted for attachment to a hospital bed rail and included novel and nonobvious components which contributed to that special adaptation.
The patent prosecution history negates the contention that Bedmate has been estopped from making its doctrine of equivalents argument. First, the limitation "bed-rail clip affixed to a top surface of the one-piece telephone" appeared in the patent applicant's prosecution claim 11 as originally filed with the Patent Office. This cannot be used for estoppel purposes because claims, as originally filed, do not generate an estoppel. Festo, 172 F.3d at 1372. The "affixed to" claim language was not changed by amendment during any of the '839 Patent's prosecution.
Claim 11, which ultimately issued as '839 Patent Claim 1, was amended in other ways. First, claims 11 through 22 had been rejected by the examiner due to the Carlson and Gunter prior art references. Neither of those references, however, had anything to do with adapting telephones to hospital beds. As seen from the October 11, 1994, amendment to the claims, the amendments predominantly dealt with clarifying the purpose of the telephone clip. As previously discussed, the '839 Patent is designed for clipping telephones to hospital bed rails. See Plaintiff's Exhibit 16. Neither the Carlson nor the Gunter references dealt with clipping telephones to hospital bed rails.
Additionally, with respect to the limitations originally filed as claims 18 and 22, the examiner stated that "the combination of Carlson and Gunter differs from the claimed invention in that it does not show the dimension of the clip." See Plaintiff's Exhibit 14, at 4. Those dimensions, like the "affixed to" language, were present in the original claims of the application from which the '839 Patent ultimately issued. Moreover, no prior art cited to during the prosecution disclosed those features.
A fair reading of the prosecution history, therefore, would not lead a reasonable competitor to conclude that clips not affixed to the top of the phone or with lengths on the top side that differed from the literal dimensions listed in the patent had been surrendered in the application process. Accordingly, no prosecution history estoppel was generated by those features and there is no bar to Bedmate arguing that the Med-Pat Model 2 infringes the '839 Patent pursuant to the doctrine of equivalents.
Likewise, no prior art estoppel was generated during the prosecution of the patent. See Athletic Alternatives, Inc. v. Prince Mfg., Inc. , 73 F.3d 1573, 1583 (Fed. Cir. 1996) .
The basis for Defendants' cross-motion for summary judgment of noninfringement is that the Patent Office record establishes as a matter of law prosecution history estoppel and prior art estoppel. Having concluded that the record does not establish either form of estoppel, Defendants' cross-motion for summary judgment must be denied.
5. Infringement Pursuant to the Doctrine of Equivalents
Bedmate claims that Med-Pat Model 2 infringes Claims 1, 2, 4, 6, and 11 of the '839 Patent pursuant to the doctrine of equivalents. Again, it is necessary to evaluate each claim's language to determine whether the applicable elements of Med-Pat Model 2 are the equivalent of the corresponding elements of the protected device. In doing so, attention will be directed to the function served by each element, the way the element serves that function, and the result thus obtained by it. See Boehringer Ingelheim Animal Health, 6 F. Supp.2d at 331.
Claim 1 of the '839 patent begins with the following language:
A telephone clip assembly for clipping onto an upper horizontal rail of a bed-rail assembly of a hospital bed, the bed-rail assembly including said upper horizontal rail and a lower horizontal rail, comprising:
a one-piece telephone comprising a telephone body having a front surface presenting a speaker means, a back surface opposite said front surface, and a top surface joining said front and back surfaces to each other, said telephone body having a generally elongated shape;
abutment means for abutting against the lower horizontal rail of the bed-rail assembly, said abutment means comprising a bottom portion of the telephone body; and
The telephone portions of both the Med-Pat Model 1 and Med-Pat Model 2 are identical in construction and form. The only differences between the two models are the cord attachment and the volume control selector. These portions of the telephones, however, are not mentioned in the patent claim language. Accordingly, these features satisfy these elements of '839 Claim 1.
Claim 1 continues:
universal mounting means for mounting the one-piece telephone to various types of bed-rail assemblies, said universal mounting means comprising a universal bed-rail clip affixed to said top surface of the one-piece telephone for clipping said one-piece telephone onto the upper horizontal rail of the bed-rail assembly, said universal bed-rail clip comprising top and bottom sides being joined together by a joining side and defining, opposite said joining side, an opening for receiving said upper horizontal rail, said universal bed-rail clip being substantially U-shaped in cross section,
As indicated in Plaintiff's Exhibit 10 and shown through the model of the allegedly infringing device, Med-Pat Model 2's rail clip is comprised of a top side (T) and a joining side (J). Bedmate urges equivalency in that Med-Pat Model 2 utilizes the top portion and the top surface of the one-piece telephone as the equivalent of the bottom side (B) of the clip.
Although Med-Pat Model 2's clip does not have a bottom side similar to that of the Med-Pat Model 1 clip, it achieves the same effect by doing away with the bottom side (B) of the clip and having the top surface of the one-piece telephone function as both the bottom side (B) of the clip and the joining side of the one-piece telephone. The top (T) and joining sides (J) of the clip, together with the top portion of the telephone, perform the same function to achieve the same result in the same manner as the corresponding elements or limitations cited in Claim 1 of the '839 Patent. The top (T) and joining side (J) of the clip, along with the top portion to the telephone, define a U-shaped cross-section with an opening for receiving a horizontal hospital bed rail. These elements, while not literally duplicating equivalent elements of the '839 Patent, are the functional equivalent.
Claim 1 continues:
wherein a distance between internal surfaces of said top and bottom sides is about 0.75 to about 1.0 inches, said top side extends about 1.0 to about 1.5 inches from said joining side,
When considering whether Med-Pat Model 1 infringes the '839 Patent, it was found that, properly measured, the top side (T) is literally within the "about 1.0 to about 1.5 inches" language. That is because the up-turned portion of both Med-Pat Model 1's and Med-Pat Model 2's top side plays no role in retaining the device on a hospital bed-rail and should not enter into the measurement. Were it held that this does not fall within the literal language of the claims, it would certainly fall within the pertinent language by virtue of the doctrine of equivalents.
Claim 1 concludes:
at least one of said top and bottom sides is flexible between open and closed positions, and said open position permits passage of said upper horizontal rail through said opening into an interior of said universal bed-rail clip.
As indicated through an examination of Med-Pat Model 2, the top side (T) of the clip, despite the bracing members, remains flexible enough to permit passage of an upper horizontal bed rail into the U-shaped cross-section. Accordingly, Med-Pat Model 2 satisfies this final portion of Claim 1.
Med-Pat Model 2 also satisfies the language of Claim 2. Claim 2 states that the device outlined in Claim 1 is:
further comprising anti-rotation means for preventing said universal bed-rail clip from rotating relative to said one-piece telephone.
As shown in the Court's Appendix 3 as well as on the actual model of Med-Pat Model 2, the hooks (H) located on the very bottom of the joining side (J) of clip, when connected to their respective openings (O) on the back of the telephone, prevent the clip from rotating relative to the one-piece telephone. Therefore, the additional element in Claim 2 is present in Med-Pat Model 2, and, if not literally within the claim, is equivalent to the protected device.
Additionally, Med-Pat Model 2 satisfies the language of Claim 4. Claim 4, which is dependant upon Claim 1, states:
wherein the universal bed-rail clip further comprises fixation means for attaching the universal bed-rail clip to said one-piece telephone.
Med-Pat Model 2 has attachment hooks (H) located on the very bottom of the joining side (J) of the clip. These hooks (H) cooperate with openings (O) on the upper portion of the back surface of the one-piece telephone. The method of fixation for attaching the clip to the one-piece phone used by Defendants satisfies the additional element of Claim 4 and, therefore, Med-Pat Model 2 is literally within or the equivalent of the feature described in Claim 4.
Bedmate further contends that Med-Pat Model 2 infringes Claim 6 of the '839 Patent. Claim 6, which is also dependant upon Claim 1, states:
wherein the one-piece telephone and the universal bed-rail clip form a single, unitary piece.
Defendants' Med-Pat Model 2 satisfies the criteria outlined in Claim 6. The bed-rail clip, with its attachment hooks (H), form a single unitary piece in precisely the manner in which the '839 Patent describes. Accordingly, Med-Pat Model 2 satisfies the additional element outlined in Claim 6 and is equivalent to the protected device if not literally within the language of the claim.
See supra note 2.
Finally, Bedmate contends that Med-Pat Model 2 infringes Claim 11 of the '839 Patent. Claim 11, which is also dependent upon Claim 1, states:
wherein said bottom portion of said telephone comprises an angular extension.
As demonstrated by the actual model of the device, Med-Pat Model 2 contains an angular extension (E) on its bottom portion. This angular extension (E) of Med-Pat Model 2, which is identical to the angular extension (E) on Med-Pat Model 1 telephone, satisfies the additional limitation imposed by Claim 11 of the '839 Patent.
Although infringement pursuant to the doctrine of equivalents is generally a question of fact, see Hilton-Davis, 62 F.3d at 1552, the comparability of the '839 Patent's claims and Med-Pat Model 2 is so striking that no reasonable jury could find that this device is anything but the equivalent of the object protected by the patent.
III. CONCLUSION
Med-Pat Model 1 literally infringes claims 1 through 4, 6, and 11 of the '839 Patent. Bedmate is not barred by prosecution history estoppel or by prior art estoppel from claiming that Med-Pat Model 2 by application of the doctrine of equivalents infringes claims 1, 2, 4, 6, and 11 of the '839 Patent. By virtue of that doctrine, Med-Pat Model 2 infringes those claims of the '839 Patent. Consequently, Bedmate's motion for partial summary judgment will be granted. Defendants' cross-motion for partial summary judgment will be denied. An appropriate will issue.
O R D E R
Plaintiff, Bedmate International Corporation ("Plaintiff"), and the defendants, Med-Pat, Inc., Abraham Zagha, and Samuel Zagha ("Defendants"), having moved and cross-moved for partial summary judgment pursuant to Fed.R.Civ.P. 56; and the Court having heard oral argument on May 10, 1999; and in accordance with an opinion of even date;
IT IS this day of July, 1999, ORDERED as follows:
1. Plaintiff's motion for partial summary judgment is GRANTED, and it is adjudged that Defendants' Model XL88SW Bedrail Bracket Telephone infringes claims 1-4, 6, and 11 of Lee U.S. Patent 5,416,839; and that Defendants' Rail Hanger Button Phone infringes claims 1, 2, 4, 6, and 11 of the '839 Patent.
2. Defendants' cross-motion for summary judgment on the issue of noninfringement is DENIED.