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3M Innovative Properties Co. v. The Clorox Co.: US District Court : PATENT - fact questions bar summary judgment regarding patent infringement

* A sealed version of this Order was issued on December 7, 2007 [Docket No. 66]. This
redacted version blacks out confidential information identified by Defendants.
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
3M Innovative Properties Company
and CUNO Incorporated,
REDACTED*
Plaintiffs,
MEMORANDUM OPINION AND
v. ORDER
Civil No. 06-3540 ADM/AJB
The Clorox Company;
The Brita Products Company; Brita LP;
Sears, Roebuck & Company; and
Pentair Filtration, Inc.,
Defendants.
______________________________________________________________________________
Jonathan E. Singer, Esq. and Courtney Nelson Wills, Esq., Fish & Richardson PC, Minneapolis,
MN, argued on behalf of Plaintiffs.
Roderick M. Thompson, Esq. and June Tai, Esq., Farella Braun & Martel LLP, San Francisco,
CA; Edward M. Laine, Esq. and David A. Prange, Esq., Oppenheimer Wolff & Donnelly LLP,
Minneapolis, MN, argued on behalf of Defendants; Patrick W. Bengtsson, Esq., The Clorox
Company, Oakland, CA, appeared on behalf of Defendants The Clorox Company, Brita Products
Company, Brita LP, and Sears, Roebuck & Company.
______________________________________________________________________________
I. INTRODUCTION
On August 14, 2007, the undersigned United States District Judge heard oral argument
on Defendants The Clorox Company (Clorox); The Brita Products Company and Brita LP
(collectively Brita); Sears, Roebuck & Company (Sears); and Pentair Filtration, Inc.s
(Pentair) (Clorox, Brita, and Sears collectively are Defendants) Motion for Summary
Judgment [Docket No. 46]. In their First Amended Complaint [Docket No. 41], Plaintiffs 3M
Innovative Properties Company (3M IPC) and CUNO Incorporated (CUNO) (collectively
1 The statute provides that [a] patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of this title, if the differences
between the subject matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived
2
Plaintiffs) allege that Defendants infringed U.S. Patent Nos. 6,027,644 (the 644 Patent) and
6,193,884 (the 884 Patent). Defendants seek a declaratory judgment of non-infringement of
both the 644 and 884 Patents. Joint Answer [Docket No. 21]. For the reasons set forth below,
Defendants Motion for Summary Judgment is denied.
II. BACKGROUND
CUNO, a subsidiary of 3M Company (3M), designs, manufactures, and markets water
filtration products for refrigerators. Mem. in Oppn to Mot. for Summ. J. [Docket No. 54] at 3.
The 644 and 884 Patents, entitled dripless purification manifold and cartridge, cover many of
the disposable refrigerator water filters sold by CUNO. Id. The inventors of the 644 and 884
Patents are Jan Magnusson, Allan Lonneman, and David Botts, who were affiliated with
PentaPure, a company based in Eagan, Minnesota. Id. PentaPure was acquired by CUNO in
2004, and CUNO was acquired by 3M in 2005. Id. 3M IPC owns the 644 and 884 Patents
(collectively the Magnusson Patents) by assignment. Id. 3M IPC exclusively licenses the
Magnusson Patents to CUNO. Id.
The 644 Patent describes a two-stage recessed filter cartridge design that engages with a
corresponding protruding manifold on a refrigerator. The 644 Patent matured from U.S. Patent
Application Number 08/984,893 (the 644 application), which was filed on December 4, 1997.
Prange Aff. [Docket No. 49] Ex. 1 at 3M0013291. The patent examiner initially rejected all the
claims in the 644 application as obvious under 35 U.S.C. 103(a)1 in light of two prior art
by the manner in which the invention was made.
3
references, U.S. Patent No. 5,486,288 issued to Stanford, and U.S. Patent No. 5,548,893 issued
to Koelfgen. Prange Aff. Ex. 1 at 3M0013382-95. The examiner concluded in part: It would
have been obvious to one having ordinary skill in the art . . . to provide within the filter of
Stanford, an inlet/outlet means comprising a two stage recess, as taught by Koelfgen, to increase
the flow of fluid entering the filter cartridge. Prange Aff. Ex. 1 at 3M0013384, 3M0013387-88.
In response, the applicants amended each of the independent claims of the 644
application to include the following limitation:
the first cylindrical stage presenting a first mating surface for mating with the filter
apparatus manifold and the second substantially cylindrical stage presenting a second
mating surface for mating with the filter apparatus manifold, the first and second mating
surfaces being substantially continuous and free of interruption by fluid seals.
Prange Aff. Ex. 1 at 3M0013400-403. The applicants explained that [s]ince the filters are the
replaceable portion of the filter assembly, it is a considerable cost benefit to form the mating
surfaces continuously and to not be required to include seals in the filter structure. Prange Aff.
Ex. 1 at 3M0013404. The examiner issued a notice of allowance, concluding that the new
limitation defined over the prior art because the closest prior art of recorda combination of
Koelfgen and Stanfordrequires the mating surfaces of the two stage recess to be interrupted
by fluid seals. Prange Aff. Ex. 1 at 3M0013414-415. The 644 Patent issued on February 22,
2000.
The 884 Patent, issued on February 27, 2001, is a continuation of the 644 Patent. The
prosecution history of the 884 Patent is similar to that of the 644 Patent. The examiner rejected
the initial claims of the 884 application as being obvious in light of the same prior art. Prange
4
Aff. Ex. 4 at 3M0000768 -79. Similar to the 644 application, the applicants amended the
independent claims of the 884 patent to require substantially continuous mating surfaces that
are free of sealing means or free of interruption by fluid seals. Prange Aff. Ex. 4 at
3M00000783-84, 3M00000792-93. Based on these amendments, the examiner concluded the
claims were allowable because they defined over the prior art. Prange Aff. Ex. 4 at 3M0000817-
21.
In 2003, Pentair and Brita partnered together to develop and market a refrigerator water
filtration system to compete with CUNOs system. Nelson Wills Decl. [Docket No. 56] Ex. 13
at 4-5. In the summer of 2006, Brita and Pentair launched the GERF-100 disposable water filter.
Prange Aff. Ex. 5. The GERF-100 includes an o-ring, which is commonly used as a seal, within
the filter cartridges two-stage recess. Prange Aff. Ex. 5. Brita and Pentair have also developed
a prototype filter, , that includes an o-ring within the two-stage recess.
Prange Aff. Ex. 6.
Plaintiffs assert that the GERF-100 (collectively the accused
products) infringe Claims 1, 2, 3, 4, 6, 7, and 8 of the 644 Patent. Pls. Mem. in Oppn to Mot.
for Summ. J. at 6. Claims 2, 3, and 4 are dependent on Claim 1. 644 Patent at 7:8-7:22. Claim
1 is representative of the claims of the 644 Patent that Plaintiffs are asserting. Pls. Mem. in
Oppn to Mot. for Summ. J. at 7. Claim 1 recites:
A filter cartridge for use with a filter apparatus manifold having a flow inlet and a flow
outlet, the filter apparatus manifold and the filter cartridge comprising a filter appartus
when the filter cartridge is brought into operable engagement with the filter apparatus
manifold, comprising:
. . .
inlet/outlet means being a two stage recess, the recess having a first cylindrical stage and
5
further having a second substantially cylindrical stage being concentric with the first
cylindrical stage channel and the second cylindrical stage being in flow communication
with the hollow flow core of the filter means, the first cylindrical stage presenting a first
mating surface for mating with the filter apparatus manifold and the second substantially
cylindrical stage presenting a second mating surface for mating with the filter apparatus
manifold, the first and second mating surfaces being substantially continuous and free of
interruption by fluid seals . . . .
644 Patent at 6:45-6:67.
Plaintiffs assert that the accused products infringe Claims 10, 11, 12, 13, 14, and 16 of
the 884 Patent. Mem. in Oppn to Mot. for Summ. J. at 6. Claims 11, 12, and 13 depend from
Claim 10, and Claim 16 depends from Claim 14. 884 Patent at 8:17-8:37, 10:4-10:6. Claim 10
is representative of the claims of the 884 Patent that Plaintiffs are asserting. Pls. Mem. in
Oppn to Mot. for Summ. J. at 8. Claim 10 recites:
A coupling system for coupling a treatment cartridge to a manifold, the coupling system
comprising:
a coupler being couplable to the manifold and being operably couplable to the treatment
cartridge and having;
a coupler inlet annular recess defined about a coupler longitudinal axis, the coupler inlet
annular recess presenting an annular outer wall and having a circular bottom margin, at
least one inlet port being defined in the circular bottom margin displaced from the
coupler longitudinal axis,
a coupler outlet annular recess defined about the coupler longitudinal axis, the coupler
outlet annular recess depending from the coupler inlet annular recess circular bottom
margin and presenting a coupler annular outer wall and having a circular bottom margin,
at least one outlet port being defined in the circular bottom margin coincident with the
coupler longitudinal axis;
at least one annular coupler interlocking member being disposed radially outward of the
coupler inlet annular recess; and
the coupler presenting a plurality of mating surfaces for sealingly mating to the manifold,
6
the plurality of mating surfaces being substantially continuous and free of sealing means.
884 Patent at 7:59-8:16.
III. DISCUSSION
A. Summary Judgment Standard
Federal Rule of Civil Procedure 56(c) provides that summary judgment shall issue if the
pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no
genuine issue as to any material fact and that the movant is entitled to judgment as a matter of
law. Fed. R. Civ. P. 56(c); see Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.
574, 587 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986); Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). On a motion for summary judgment, the Court views the
evidence in the light most favorable to the nonmoving party. Ludwig v. Anderson, 54 F.3d 465,
470 (8th Cir. 1995). The nonmoving party may not rest on mere allegations or denials, but
must demonstrate on the record the existence of specific facts which create a genuine issue for
trial. Krenik v. County of Le Sueur, 47 F.3d 953, 957 (8th Cir. 1995).
B. Patent Infringement
An infringement analysis requires two steps: (1) claim construction to determine the
scope and meaning of the asserted claims, and (2) a comparison of the properly construed claims
with the allegedly infringing device to determine whether the device embodies every limitation
of the claims. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en
banc). Claim construction is a matter of law for the court. Markman v. Westview Instruments,
Inc., 517 U.S. 370, 372 (1996). Whether the accused device infringes a claim, either literally or
under the doctrine of equivalents, is a question of fact. See Insituform Techs., Inc. v. Cat
7
Contracting, Inc., 161 F.3d 688, 692, (Fed. Cir. 1998). Thus, to grant a motion for summary
judgment based on noninfringement, the court must determine that no reasonable jury could find
infringement. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed. Cir.
2000).
1. Claim Construction
In construing patent claims, courts should look first to intrinsic evidence, which includes
the claims, the specification, and the prosecution history. Vitrionics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996). Claim words are given their ordinary and customary
meaning, which is the meaning that the term would have to a person of ordinary skill in the art
in question at the time of the invention, i.e., as of the effective filing date of the patent
application. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). However, a
patentee can choose to be his or her own lexicographer by clearly setting forth an explicit
definition for a claim term. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985,
989 (Fed. Cir. 1999). Claim terms should be construed consistently with [their] appearance in
other places in the same claim or other claims of the same patent. Rexnord Corp. v. The
Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). The specification is the single best guide
to the meaning of a disputed term. Vitrionics, 90 F.3d at 1582. Courts are nonetheless
cautioned not to import limitations from the specification into the claims. Phillips, 415 F.3d
at 1323.
If the intrinsic evidence does not resolve ambiguity in the claim terms, courts may
consider extrinsic evidence such as expert testimony, inventor testimony, dictionaries, and
technical treatises and articles. Vitrionics, 90 F.3d at 1584; Mantech Envtl. Corp. v. Hudson
8
Envtl. Servs., Inc., 152 F.3d 1368, 1373 (Fed. Cir. 1998). Courts may rely on dictionary
definitions when construing claim terms, so long as the dictionary definition does not contradict
any definition found in or ascertained by a reading of the patent documents. Phillips, 415 F.3d
at 1322-23.
a. Mating Surfaces
The first term to be interpreted is mating surface. The phrase appears in independent
Claims 1, 7, and 8, and dependent Claim 5 (which depends from Claim 1) of the 644 Patent, and
the phrase appears in independent Claims 1, 10, and 14 of the 884 Patent.
Claims 1 and 5 of the 644 Patent provide representative uses of mating surface in the
644 Patent. Claim 1 of the 644 Patent recites an inlet outlet means being a two stage
recess . . . the first cylindrical stage presenting a first mating surface for mating with the filter
apparatus manifold and the second substantially cylindrical stage presenting a second mating
surface for mating with the filter apparatus manifold . . . 644 Patent at 6:56-6:65. Claim 5 of
the 644 Patent recites [t]he filter cartridge of claim 4 having a substantially planar mating
surface for mating engagement with the filter apparatus manifold, the mating surface presenting
a generally circular outer margin, the recess first cylindrical stage first end opening being
defined central to the mating surface and [] at least two shoulder flanges being radially
outwardly disposed with respect to the outer margin of the planar mating surface. Id. at 7:23-
7:30.
Defendants first propose that mating surfaces be construed as those surfaces of the
cartridge which fit with or mount to the manifold. Defs. Mem. in Supp. of Mot. for Summ. J.
[Docket No. 48] at 15. Defendants later propose a second definition of mating surfaces as the
9
surfaces presented by the two stage recess that fit together or mount with the manifold. Id. at
21. Plaintiffs propose that mating surface be defined as the the portion of the cylindrical
stage that is presented to the manifold for mating. Pls. Mem. in Oppn to Mot. for Summ. J. at
19.
The Court adopts Defendants first proposed definition of mating surface as those
surfaces of the cartridge which fit with or mount to the manifold. Defendants second proposed
definition and Plaintiffs proposed definition of mating surface include only mating surfaces of
the two-stage cylindrical recess. Both definitions fail to include the substantially planar mating
surface in Claim 5 of the 644 Patent. Although Plaintiffs have not asserted Claim 5, courts
look to the words of the claims themselves, both asserted and nonasserted, to define the scope
of the patented invention. Vitrionics, 90 F.3d at 1582. Defendants first proposed definition of
mating surface encompasses the substantially planar mating surface in Claim 5 of the 644
Patent, as well as the mating surfaces presented by the first and second cylindrical stages of the
two-stage recess.
Additionally, Defendants first proposed definition of mating surface is more useful
than Plaintiffs proposed definition because Defendants definition defines the word mate as
to fit with or mount to. This definition of mate is consistent with the use of the term in the
644 Patent, and it is consistent with the plain and ordinary meaning of the term. See Anchor
Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1309 (Fed Cir. 2003) (noting that
ordinary meaning of word mate is to join or fit together). Plaintiffs proposed definition is
2 The parties have not construed the term surface, and the Court finds it is unnecessary
to do so.
10
circular because it fails to define mate.2
The parties do not argue that the meaning of mating surface is different in the 844
Patent than in the 644 Patent. Defining mating surfaces as those surfaces of the cartridge
which fit with or mount to the manifold is consistent with the use of mating surface in Claims
1, 10, and 14 of the 884 Patent. See 884 Patent at 7:17, 7:25, 7:33-7:34, 8:13-8:15, 8:64-9:3.
b. First Cylindrical Stage
Claim 1 of the 644 Patent recites the first cylindrical stage presenting a first mating
surface for mating with the filter apparatus manifold . . . . 644 Patent at 6:61-6:63. The parties
dispute whether the mating surface presented by the first cylindrical stage includes the horizontal
surface from which the second cylindrical stage depends. Plaintiffs argue Claim 3 of the 644
demonstrates that the said horizontal surface is not a mating surface presented by the first
cylindrical stage. Claim 3 recites:
The filter cartridge of claim 1 wherein the connecting wall between the recess first
cylindrical stage and recess second cylindrical stage has a tapered projection thereon, the
tapered projection acting to engage a valve disposed in the filter apparatus manifold, said
engagement opening said valve when the filter cartridge is brought into operable
engagement with the filter apparatus manifold.
Id. at 7:12-7:18. Claim 8 of the 644 Patent also refers to a connecting wall: the second stage
diameter being less than the first stage diameter and having a first end operably coupled to the
second end of the first cylindrical stage by a connecting wall and having an opening being
defined at the second end thereof . . . . Id. at 8:32-8:37. Claim 14 of the 884 Patent uses
identical language in referring to a connecting wall. 884 Patent at 8:51-56.
11
Plaintiffs contend that Claim 3 of the 644 Patent shows that the horizontal connecting
wall is between, and therefore not part of, the recess first and second cylindrical stages.
Accordingly, Plaintiffs argue that: (1) the horizontal connecting wall is not a mating surface, and
(2) the horizontal connecting wall is not presented by the first cylindrical stage of the two-stage
recess. Plaintiffs first argument requires little analysis. Plaintiffs conclusorily assert that the
horizontal connecting wall does not present a surface for mating. Pls. Mem. in Oppn at 21.
However, regardless of whether the horizontal connecting wall is part of the first cylindrical
stage of the two-stage recess, the horizontal connecting wall is a mating surface because it fits
with the manifold. Plaintiffs fail to explain how the vertical cylindrical walls of the two-stage
recess mate with the manifold and yet the horizontal connecting wall does not.
Plaintiffs second argument is that the horizontal connecting wall is not presented by the
first cylindrical stage of the two-stage recess. This argument requires a limited claim
construction of whether the term first cylindrical stage includes a horizontal surface. Again,
Plaintiffs rely on the language in Claim 3, which depends from Claim 1, that the connecting wall
is between the first and second cylindrical stage. However, Claim 6 of the 644 Patent, which
also depends from Claim 1, and Claim 9 contradict Plaintiffs argument. Claim 6 of the 644
Patent recites:
The filter cartridge of claim 5 wherein the inlet/outlet means includes a flow inlet and a
flow outlet, the flow inlet being at least one bore intersecting the recess first cylindrical
stage and depending therefrom to define a depending flow passageway to the filter
means, the flow outlet being defined by the recess second cylindrical stage, the recess
second cylindrical stage forming a flow passageway in flow communication with the
filter means.
644 Patent at 7:31-7:38 (emphasis added); see also 644 Patent Claim 9. The illustration of the
preferred embodiment in the specification of the 644 Patent makes clear that the flow inlet
12
bore intersects the horizontal surface that connects the vertical cylindrical walls of the recess
first and second cylindrical stages. See 644 Patent Figure 1 (35 - inlet port). Under the plain
language of Claims 6 and 9 , the horizontal surface that the flow inlet bore intersects is part of
the recess first cylindrical stage. This horizontal surface is the connecting wall referred to in
Claim 3. Thus, Claim 3 and Claims 6 and 9 of the 644 Patent are inconsistent regarding
whether the connecting wall is part of the first cylindrical stage: in Claim 3, the horizontal
connecting wall is between the recess first cylindrical stage and recess second cylindrical
stage, whereas in Claims 6 and 9 the horizontal connecting wall is part of the recess first
cylindrical stage.
Claims are not interpreted in a vacuum, but are part of and are read in light of the
specification. Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed Cir. 1987).
The 644 Patents Description of the Preferred Embodiment supports the conclusion that the
horizontal connecting wall is part of the recess first cylindrical stage of the two-stage recess. For
example, the preferred embodiment states that [p]rojecting from the first of the 2 stages 36, 49
at the recess 8 is a raised, tapered projection 72 that engages the stem valve 60 with the fitting
and the rotation of the cartridge 10 to the manifold 4 . . . . 644 Patent at 4:37-4:40. Figure 3 of
the specification demonstrates that the raised, tapered projection projects from a horizontal
surface. Id. Figure 3 (72 - tapered projection). Therefore, according to the specification, the first
cylindrical stage of the two-stage recess contains a horizontal surface. This horizontal surface
corresponds to the connecting wall referred to in Claim 3 of the 644 Patent.
The Court finds that the claims and the specification of the 644 Patent demonstrate that
the horizontal connecting wall referred to in Claim 3 is part of the first cylindrical stage of the
13
two-stage recess. This limited construction of first cylindrical stage as including the
horizontal connecting wall is also consistent with the claims of the 884 Patent. For the purpose
of Defendants Motion for Summary Judgment, it is unnecessary to further define the term first
cylindrical stage.
c. Fluid Seal
The term fluid seal appears in independent Claims 1, 7, and 8 of the 644 Patent. 644
Patent at 6:67, 7:59, 8:50. Plaintiffs propose that fluid seal be construed as a structure that
operates to seal fluid. Pls. Mem. in Oppn to Summ. J. at 26. Defendants contend that claim
construction of fluid seal is unnecessary. Defs. Reply Mem. [Docket No. 60] at 6. Instead,
Defendants advocate a limited construction of fluid seal as including a standard o-ring.
Id. at 6.
The Court finds it is necessary to construe the term fluid seal in order to decide
Defendants Motion for Summary Judgment. Plaintiffs proposed definition of fluid seal fails
to define seal. Plaintiffs have provided three dictionary definitions from 1996. Courts may
rely on dictionary definitions when construing claim terms, so long as the dictionary definition
does not contradict any definition found in or ascertained by a reading of the patent documents.
Phillips, 415 F.3d at 1322-23. The 1996 Merriam-Websters Collegiate Dictionary defines
seal as a tight and perfect closure (as against the passage of gas or water). Merriam-
Websters Collegiate Dictionary 1052 (10th ed. 1996). The 1996 Websters New World College
Dictionary defines seal as a tight closure, as against the passage of air or water. Websters
New World College Dictionary 1210 (3d ed. 1996). The 1996 Random House Compact
Unabridged Dictionary defines seal as anything that tightly or completely closes or secures a
14
thing . . . . Random House Compact Unabridged Dictionary 1726 (Special 2d ed. 1996). The
Court construes the term fluid seal as a structure that operates as a tight or complete closure
against the passage of a fluid. This definition is consistent with the use of the term fluid seal
in the claims, specification, and prosecution history of the 644 Patent.
Defendants request for a limited claim construction that the term fluid seal includes a
standard o-ring is rejected. Defendants argue that the term fluid seal in the 644 Patent is a
structural claim element, rather than a functional claim element. Defendants rely on Schwing
GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002), for the
proposition that [w]here a claim uses clear structural language, it is generally improper to
interpret it as having functional requirements. However, the term fluid seal, by itself, does
not amount to clear structural language. The use of the word seal carries with it the ordinary
meaning and function of a seal. Under Defendants proposal, an o-ring is automatically a
fluid seal regardless of whether it actually performs this function in the filter cartridge. The
intrinsic evidence regarding the 644 Patent does not support such a construction.
The term fluid seal also appears in independent Claim 14 and dependent Claim 11
(which depends from Claim 10) of the 884 Patent. The definition of fluid seal is the same in
the 884 Patent as in the 644 Patent.
d. Sealing Means
The term sealing means is used in the 884 Patent in independent Claims 1 and 10,
dependent Claims 2 and 9, which depend from Claim 1, and dependent 11, which depends from
Claim 10. See 884 Patent at 7:9, 7:34, 7:36, 7:56, 8:16, 8:21-24. Plaintiffs contend that the
term invokes the means-plus-function provision of 35 U.S.C. 112, 6:
15
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.
Whether certain claim language invokes 35 U.S.C. 112, 6 is an exercise in claim
construction and . . . a question of law. Personalized Media Commcns, LLC v. Intl Trade
Commn, 161 F.3d 696, 702 (Fed. Cir. 1998). Use of the term means in a claim limitation
creates a presumption that section 112, paragraph 6 has been invoked. Kemco Sales, Inc. v.
Control Papers Co., Inc., 208 F.3d 1352, 1361 (Fed. Cir. 2000). However, [t]his presumption
may be overcome in two ways. First, a claim element that uses the word means but recites no
function corresponding to the means does not invoke 112, 6. Second, even if the claim
element specifies a function, if it also recites sufficient structure or material for performing that
function, 112, 6 does not apply. Allen Eng'g Corp. v. Bartell Indus., 299 F.3d 1336, 1347
(Fed. Cir. 2002) (quotations marks and citations omitted). In determining whether a term in a
claim limitation recites sufficient structure, the court inquires into whether the term, as the
name for structure, has a reasonably well understood meaning in the art. Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).
Here, Claim 10 recites a sealing means, invoking the means plus function presumption.
884 Patent at 8:16. Plaintiffs contend that the function of the sealing means in Claim 10 is
sealing. Pls. Mem. in Oppn to Mot. for Summ. J. at 29. At oral argument, Defendants
argued that Claim 10 does not state a function. Claim 10 recites in relevant part a coupler
presenting a plurality of mating surfaces for sealingly mating to the manifold, the plurality of
mating surfaces being substantially continuous and free of sealing means. 884 Patent at 8:13-
8:16. The Court finds that Claim 10 adequately recites a functionthe function of a sealing
16
means is sealing.
Plaintiffs contend that sealing means does not recite sufficient structure for sealing.
Defendants argue, however, that the term sealing means invokes sufficient structure and detail
to rebut the presumption that 35 U.S.C. 112, 6 applies. Defendants rely on Cole v. Kimberly-
Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996), where the Federal Circuit held that the term
perforation means in the patent claim at issue did not trigger 35 U.S.C. 112, 6 because the
claim describes the structure supporting the tearing function (i.e., perforations). The claim
describes not only the structure that supports the tearing function, but also its location (extending
from the leg band to the waist band) and extent (extending through the outer impermeable
layer). Defendants also cite Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365
(Fed. Cir. 2000), where the Federal Circuit held that the term baffle means recited sufficient
structure to rebut the presumption that 112, 6 applied. Cole and Envirco Corp. are
distinguishable from the instant case, however, because the term seal does not recite as much
structure as the terms perforation and baffle did in Cole and Envirco Corp. respectively.
Therefore, the Court finds that sealing means invokes the means-plus-function provision of 35
U.S.C. 112, 6.
After a court establishes that a means-plus-function limitation is at issue, it must then
construe the function recited in that claim and determine what structures have been disclosed that
correspond to the means for performing that function. Kemco Sales, 208 F.3d 1352, 1361 (Fed.
Cir. 2000). Consistent with the construction of fluid seals, the Court construes sealing as
operating as a tight or complete closure, as against the passage of a fluid. The parties agree
that the corresponding structure disclosed in the 884 Patents specification is an o-ring. Pls.
17
Mem. in Oppn to Mot. for Summ. J. at 29; Defs. Reply Mem. at 8.
2. Infringement
Defendants seek summary judgment on Plaintiffs allegations that Defendants accused
products infringe Claims 1, 2, 3, 4, 6, 7, and 8 of the 644 Patent, and Claims 10, 11, 12, 13, 14,
and 16 of the 884 Patent.
a. The Asserted Claims of the 644 Patent
Defendants argue for summary judgment of noninfringement of the asserted claims of the
644 Patent because the mating surface of the first cylindrical stage of the two-stage recess of the
accused products is interrupted by a fluid seal. The relevant portion of independent Claim 1 of
the 644 Patent recites:
[A] two stage recess, the recess having a first cylindrical stage and further having a
second substantially cylindrical stage being concentric with the first cylindrical stage
channel . . . the first cylindrical stage presenting a first mating surface for mating with the
filter apparatus manifold and the second substantially cylindrical stage presenting a
second mating surface for mating with the filter apparatus manifold, the first and second
mating surfaces being substantially continuous and free of interruption by fluid seals.
644 Patent at 6:56-6:67. The only claim limitation at issue is the limitation that the mating
surface of the first cylindrical stage be continuous and free of interruption by fluid seals.
Both of Defendants accused products contain an o-ring located at the outer
circumferential margin of the horizontal connecting wall of the first cylindrical stage. Having
found that the mating surface of the first cylindrical stage includes the horizontal connecting
wall, the Court concludes that the o-rings in the accused products interrupt the mating surface of
the first cylindrical stage of the two-stage recess, and there is no genuine issue of material fact on
the issue.
Therefore, Defendants Motion for Summary Judgment turns on whether the o-ring is a
18
fluid seal. Defendants contend that the claim language, the patent specification, and the file
history of the 644 Patent all show that o-rings are a type of fluid seal. Plaintiffs do not
dispute that o-rings can be fluid seals. However, Plaintiffs argue that the o-rings in the Brita
GERF-100 are not fluid seals because they leak under certain testing conditions. Plaintiffs have
been unable to test the protoype form. Defendants contend
that Plaintiffs tests are meaningless because Plaintiffs violated established testing protocols and
tested the GERF-100 at water pressures far in excess of intended operating conditions. The
Court finds there is a genuine issue of material fact regarding whether the o-rings in the accused
products are fluid seals. Therefore, there is a genuine issue of material fact regarding whether
the accused products infringe Claim 1 of the 644 Patent.
Claims 2, 3, 4, and 6 of the 644 Patent all depend from Claim 1. Therefore, there is a
genuine issue of material fact regarding whether the accused products infringe Claims 2, 3, 4,
and 6. Further, independent Claims 7 and 8 of the 644 Patent both refer to the first and second
mating surfaces being substantially continuous and free of interruption by fluid seals. This
language is identical to the language in Claim 1. Therefore, the Court concludes there is a
genuine issue of material fact regarding whether the accused products infringe independent
Claims 7 and 8 of the 644 Patent.
b. The Asserted Claims of the 884 Patent
Independent Claim 14 of 884 Patent also refers to the first and second mating surfaces
being substantially continuous and free of interruption by fluid seals. 884 Patent at 9:1-9:3.
This language is identical to the language discussed above regarding the 644 Patent. There is a
genuine issue of material fact regarding whether the accused products o-rings are a fluid seal,
19
and therefore there is a genuine issue of material fact regarding infringement of Claim 14 and
Claim 16, which depends from Claim of 14.
Independent Claim 10 of the 884 Patent recites in part a coupler presenting a plurality
of mating surfaces for sealingly mating to the manifold, the plurality of mating surfaces being
substantially continuous and free of sealing means. 884 Patent at 8:13-8:16. As discussed
above, sealing means is a means-plus-function element. To prove literal infringement of a
means-plus-function claim, the patentee must establish that the accused device employs
structure identical or equivalent to the structure disclosed in the patent and that the accused
device performs the identical function specified in the claim. WMS Gaming, Inc. v. Intl Game
Tech., 184 F.3d 1339, 1350 (Fed. Cir. 1999). The accused devices both incorporate an o-ring,
which the parties agree is the structure disclosed in the specification of the 884 Patent.
However, for the same reason there is a genuine issue of material fact regarding whether the orings
on the accused products are fluid seals, there is a genuine issue of material fact regarding
whether the o-rings on the accused products perform the function of sealing. Therefore, there is
a genuine issue of material fact regarding whether the accused products infringe Claim 10 and
Claims 11, 12, and 13, which depend from Claim 10.
20
IV. CONCLUSION
Based upon the foregoing, and all the files, records, and proceedings herein, IT IS
HEREBY ORDERED that Defendants Motion for Summary Judgment [Docket No. 46] is
DENIED.
BY THE COURT:
s/Ann D. Montgomery
ANN D. MONTGOMERY
U.S. DISTRICT JUDGE
Dated: December 17, 2007.
 

 
 
 

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