interviews between the attorney and the examiner, the examiner made two "examiner's amendments," and the absence of the "single vaccination" limitation in all but three claims "may very well have been discussed." Id.
The present case is different. In Intervet three claims were expressly limited to one vaccination, while the others were not. The Intervet court did not have to interpret an existing term. The Intervet court itself acknowledged the difference between "interpreting what is meant by a word in a claim[, which is proper via reliance on the prosecution history,] . . . [and] adding an extraneous limitation appearing in the [prosecution history], which is improper." Id. at 1053 (emphasis in the original); Vitronics, 90 F.3d at 1582 (in interpreting claim, "the court may also consider the prosecution history of the patent, if in evidence"). In addition, unlike the Intervet attorney, Ms. Hannafan amended claim 37(40) in response to the Examiner's vagueness, not patentability, concern. Then, in response to the Examiner's patentability objection, she explained how the amended claim 37(40) differed from the prior art, thereby defining "selecting." Unlike in Intervet there is no evidence of further contact between the Examiner and Ms. Hannafan, during which the Examiner could have acquired a different understanding than that conveyed by the May 12, 1986 Amendment. Unlike Intervet, the only logical conclusion is that the Examiner allowed claim 37(40) because of Ms. Hannafan's explanation, not in spite of it. See Intervet, 887 F.2d at 1054.
Clintec insists that the Examiner knew that "selecting" and "sorting" had different meanings, see id. ("The examiner was fully aware of what claims he was allowing."), and that Ms. Hannafan's error would be obvious to anyone perusing the prosecution history, see Southwall Techs., 54 F.3d at 1578 (competitors "must be able to rely on the patent documents[, including prosecution history,] . . . in ascertaining the scope of a patentee's right to exclude"), because (1) neither the original nor the amended claim 37(40) contained the term "sorting;" (2) prior to the May 12, 1986 Amendment, the Examiner demonstrated that she knew the difference between "selecting" and "sorting;" (3) Clintec amended the original claim 37(40) to add a "selecting," not a "sorting," function; and (4) the Examiner did not require Clintec to further amend claim 37(40) to include a "sorting" limitation. However, these statements are unresponsive to Baxa's argument, i.e., that in the one and only response by Clintec to the rejection of its patent, Clintec (through Ms. Hannafan) effectively defined "selecting" as "sorting," thereby shaping the Examiner's and the public's understanding of the meaning of that word.
In Viskase v. American Nat'l Can Co., also relied upon by Clintec, the issue was the meaning of the term "about" as used in the phrase "a density below about 0.91 g Ö." The plaintiff argued that it meant a number between 0.905 and 0.914. The defendant argued that it meant 0.910. 947 F. Supp. at 1202. One of the defendant's reasons was that in a letter sent to the Patent Office after the plaintiff's patent had been allowed, the plaintiff's attorney stated that the patent "does not have a density below about 0.910 g Ö." Id. (emphasis added). Following Intervet, this court disregarded the attorney's statement because "in no other place in the prosecution history did Viskase use a third decimal point," id., the attorney used the word "about," suggesting numbers "slightly above and slightly below," id. at 1201, "the Examiner certainly knew that the claims themselves included broader language than the limitation of 0.910,"
and " the Examiner "did not require an amendment." Id. at 1202.
The present case is different. By limiting "about 0.91" to "0.910," the defendant was advocating a construction contrary to the term's "ordinary dictionary definition" and to its understanding by "persons skilled in the art." Id. The Examiner in the present case did not indicate that she differentiated between "sorting" and "selecting." See supra. The term "sorting" appears more than once in the prosecution history because Clintec's Ms. Hannafan used it to distinguish claims 1, 19, 37(40), 67, 87, and 93 from Axelson. See supra. In addition, the specification abounds with the term "sorting," in contrast to "selecting." See supra. Finally, it is not surprising that the Examiner in this case did not require a further amendment of claim 37(40) since she had been provided with the definition of "selecting" by the May 12, 1986 Amendment.
In the third case relied on by Clintec, International Rectifier, the attorney "plainly wrongly" distinguished prior art. The court concluded that the Patent Office must have "found other grounds on which to distinguish [prior art] and did not rely on the erroneous statement made by counsel." 38 U.S.P.Q. at 1091. Clintec cites this case in support of its contention that the Examiner must have distinguished claim 37(40) from Axelson on grounds other than those represented by Ms. Hannafan. However, Ms. Hannafan's explanation that "selecting" in claim 37(40) required sorting to minimize the number of source solution containers would not have appeared "plainly wrong," see id., to the Examiner who herself rejected claim 37(40) as unpatentable over Axelson.
I conclude, therefore, that the meaning of "selecting" in claims 40 and 67 is identical to that of "sorting" in claims 1, 19, 87, and 93. Since there is no genuine issue of material fact that Baxa's compounders employ the identical or equivalent structure for "sorting" as that disclosed in the '010 patent, see supra, there can be no literal infringement of claims 40 and 67. Carroll Touch, 15 F.3d at 1578 (literal infringement of means-plus-function element requires that accused device (1) perform identical function and (2) do so with identical or equivalent structure). Accordingly, Baxa's summary judgment motion on literal infringement and cross-summary judgment motion viz-a-viz claim 40 are granted. Clintec's summary judgment viz-a-viz claim 40 is denied.
II. Infringement under the Doctrine of Equivalents
Under the doctrine of equivalents,
a product or process that does not literally infringe upon the express terms of a patent claim 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.
Warner-Jenkinson, 117 S. Ct. at 1045. The issue is whether "the accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention[.]" Id. at 1054. The "role played by each element in the context of the specific patent claim" must be compared to a substitute element in the accused device to determine whether the latter "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. "To establish infringement under the doctrine of equivalents, every claim element must be present in the accused device, either exactly or by an equivalent." Storer v. Hayes Microcomputer Prods., Inc., 960 F. Supp. 498, 503 (D. Mass. 1997) (citing Warner-Jenkinson Co., 117 S. Ct. at 1054).
At issue is the "sorting" function element,
whereby the host computer ("way") sorts solutions to be compounded ("function") to minimize the number of source solution containers ("result"). Clintec has not offered evidence from which a reasonable fact finder could conclude that Baxa's compounders' software performs substantially the same function in substantially the same way. As discussed above, even if there is a factual dispute as to whether Baxa's compounders' software may be used to minimize the number of source solution containers, that result is achieved through the exercise of human judgment. As a matter of law, the exercise of human judgment is not an equivalent of software. See Davies, 31 Fed. Cl. at 778-79; Valley Recreation Prods., 1994 WL 530818, at *3 (Fed. Cir. Sept. 30, 1994) (affirming grant of summary judgment to alleged infringer under doctrine of equivalents, where patented device kept score through operator-activated key pad, whereas accused device did so automatically and without human participation); see also Valmont Indus., Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1043 n.2 (Fed. Cir. 1993)("the accused device and the claimed invention cannot work in substantially the same way if a [claim] limitation (including its equivalent) is missing") (quotation omitted).
Clintec says that it is settled that the determination of infringement under the doctrine of equivalents is a question of fact. However, "where the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment." Warner-Jenkinson, 117 S. Ct. at 1053 n.8.
Clintec also argues that the "pioneering" nature of its invention precludes summary judgment in favor of Baxa. However, Clintec has not cited any authority supporting this proposition.
Finally, Clintec claims that Baxa copied and that it could not have designed around Clintec's compounders. Baxa disputes these contentions. Clintec argues that this dispute precludes summary judgment and cites Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1519 (Fed. Cir. 1995). Upon reversing Hilton Davis Chem., however, the Supreme Court greatly de-emphasized the relevance of the alleged infringer's behavior to the primary inquiry under the doctrine of equivalents. Warner-Jenkinson, 117 S. Ct. at 1052. Accordingly, Baxa's summary judgment motion with respect to the doctrine of equivalents is granted.
For the reasons stated above, Baxa's summary judgment motion and cross-summary judgment motion are granted. Clintec's cross-summary judgment motion regarding literal infringement of claim 40 is denied. Baxa's summary judgment motion with respect to the doctrine of equivalents is granted as to all '010 patent claims.
Elaine E. Bucklo
United States District Judge
Dated: August 21, 1997