permeate. Defendant's flow schematic reveals a flow control valve disposed at the nitrogen outlet end of the permeable membrane, (Dx 13, N00191, item 10), but no corresponding flow control valve appears on the nitrox permeate outlet end. Rather, a vacuum relief valve and a pressure relief valve are disposed at the end the nitrox end. (Dx 13, N00191, items 17 and 18.) Neither of these relief valves can perform a function identical to that described in Defendant's limitation, namely to selectively distribute the nitrox permeate. The relief valves can act to limit a characteristic but cannot act to stop or vary the flow.
2. Claim 24 Is Not Literally Infringed.
98. Because the Court finds that independent claim 23 is not infringed, dependent claim 24 is not infringed. See Wolverine World Wide, 38 F.3d at 1199. However, assuming arguendo that every limitation in claim 23 read on Defendant's system, the Court holds that Defendant's system does not literally infringe claim 24 because it does not include a nitrox storage assembly; a compressor; or a line which connects the compressor output to the nitrox assembly. The Court makes this and other alternative findings for the sake of providing a full and complete record in the event of an appeal. In this way the Court and the parties may avoid the possible expense and delay of a retrial to resolve these issues.
99. The Court does find, however, that Defendant's system includes a flexible air line which acts as a compressor feed line to supply the nitrox permeate to a compressor inlet.
3. Claim 29 Is Not Literally Infringed.
100. The Court concludes that Defendant's system does not literally infringe claim 29 because it fails to infringe independent claim 23 and dependent claim 24, upon both of which claim 29 depends. See Wolverine World Wide, 38 F.3d at 1199.
101. However, assuming arguendo that the Court had found that claims 23 and 24 were infringed, then the Court would have found claim 29 infringed because the conventional oxygen analyzer connected to the permeate outlet of the membrane in Defendant's device does satisfy the narrowed limitation found in dependent claim 29 for the means for detecting and measuring oxygen concentration in the permeate nitrox.
M. Doctrine of Equivalents.
102. Having found no literal infringement, the Court now considers whether infringement exists under the doctrine of equivalents. The accused device may infringe the patented invention under the doctrine of equivalents "if it performs substantially the same function in substantially the same way to obtain substantially the same result." Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S. Ct. 854, 856, 94 L. Ed. 1097 (1950).
103. Infringement analysis under the doctrine of equivalents is not the same as an analysis of literal infringement under 35 U.S.C. § 112, P 6, equivalents. Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931 (Fed. Cir. 1987). The doctrine of equivalents expands the protection of a patent claim to "[prevent] a copyist from evading patent claims with insubstantial changes." Valmont Industries, Inc., 983 F.2d at 1043. Under P 6, "an equivalent results from an insubstantial change which adds nothing of significance to the structure, material, or acts disclosed in the patent specification. A determination of § 112, P 6 equivalence does not involve the equitable tripartite test of the doctrine of equivalents." Id.
104. On the one hand, § 112, P 6 narrows the potentially broad implications of claim limitation with a means-plus-function element by finding literal infringement only where the accused device possesses an identical or equivalent structure, material, or act recited in the patent specification and where it performs an identical function. 983 F.2d at 1043-44. On the other hand, the doctrine of equivalents equitably expands claims by finding infringement where an accused device possesses only insubstantial differences from the invention. Id. To avoid conflicting with "the definitional and public-notice functions of the statutory claiming requirement," the Supreme Court held that "each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety." Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S. Ct. 1040, 1049, 137 L. Ed. 2d 146 (1997). Moreover, the range of equivalents under the doctrine of equivalents cannot "ensnare the prior art." We Care, Inc. v. Ultra-Mark Int'l Corp., 930 F.2d 1567, 1570 (Fed. Cir. 1991). By viewing the role of each limitation against the backdrop of the entire claim, the Court is able to decide "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." Warner-Jenkinson, 117 S. Ct. at 1054.
105. The doctrine of prosecution history, or file wrapper, estoppel "bars the patentee from recapturing subject matter that was surrendered by the patentee during prosecution in order to promote allowance of the claims." Regents of the Univ. of California v. Eli Lilly and Co., 119 F.3d 1559, 1573-74 (Fed. Cir. 1997)(internal quotations omitted). If a claim has been narrowed by an amendment to avoid a prior art rejection, the patentee may not argue that the surrendered subject matter is within the range of equivalents. Warner-Jenkinson, 117 S. Ct. at 1049-51.
106. Because determining whether the accused device infringes the claimed invention under the doctrine of equivalents involves deciding whether a claimed element is equivalent to an element in the accused device, "the proper time for evaluating equivalency - and thus knowledge of interchangeability between elements - is at the time of infringement, not at the time the patent issued." Warner-Jenkinson, 117 S. Ct. at 1053. Also, a skilled practitioner's knowledge of the interchangeability between the claimed and accused elements is relevant to the extent that it "provides content to, and limits on, the concept of 'equivalence.'" Id. at 1049.
N. Claim 23 Does Not Infringe Under the Doctrine of Equivalents.
107. The Court finds that Defendant's system does not directly infringe claim 23 under the doctrine of equivalents because it does not include an equivalent for each element of the claimed invention. The Court finds that Defendant's system includes elements equivalent to the claimed permeable membrane gas separation system and the claimed means for detecting an oxygen concentration. However, Defendant's system does not include an air supply to supply compressed air; an equivalent means to selectively distribute the nitrox permeate; or an equivalent means to selectively heat and cool the compressed air before it enters the permeable membrane.
108. The Court finds that Defendant's system does not include any element which could be equivalent to an air supply.
109. The Court finds that Defendant's system does not include elements equivalent to a means for selectively distributing the nitrox permeate. The relief valves located on the nitrox permeate outlet end of Defendant's system do not perform substantially the same function as a control valve. In other words, the relief valves cannot allow the flow of nitrox permeate to be "permitted, shut off and regulated." (See '845 patent, col. 5, line 11).
110. The Court finds that Defendant's system does not include elements equivalent to a means for selectively heating and cooling the compressed air before it enters the permeable membrane.
111. Plaintiff's patent specification teaches that a conventional pressure regulator "is used to reduce the pressure of the compressed air passing into a low pressure feed air line so that it is lower than approximately 600 p.s.i.g., and, typically, in the range of 50-250 p.s.i.g." ('845 patent, col. 2, line 66 - col. 3, line 2). The compressed, low-pressure air passes into the heat exchanger where it is selectively heated and cooled by the cycling of the solenoid valves as directed by the control unit. ('845 patent, col. 3, lines 2-23). In Defendant's system compressed air passes through a pressure regulator to reduce the pressure. (Dx 13, N00192). The compressed, low-pressure air is subsequently heated by a heater, which is regulated by a temperature controller. (Dx 13, N00192).
112. The two systems do not perform substantially the same function, "temperature conditioning," with substantially the same result. Plaintiff's system selectively heats and cools. Defendant's system only selectively heats. The Court notes that other prior art references contain the functional combination of a pressure regulator and a heater in the same configuration as found in Defendant's system. (Dx 3; Dx 18; Px 2A, U00248). The Court, in equitably extending the scope of Plaintiff's claimed invention, is precluded from "ensnaring the prior art." We Care, 930 F.2d at 1570. Therefore, whatever structure may be said to be equivalent to means for selectively heating and cooling under the doctrine of equivalents, it is clear that the combination of a pressure regulator and a heater or heat exchanger would not qualify.
113. The Court finds that persons of ordinary skill in the art would not recognize the combination of a pressure regulator and a heating element as interchangeable, and thereby equivalent, with the structure disclosed in the '845 patent specification as a means of selectively heating and cooling the feed air. The Court finds the testimony of Defendant's expert, Professor Benny D. Freeman as credible on this point and rejects Plaintiff's expert's testimony.
O. Claim 24 Does Not Infringe Under the Doctrine of Equivalents.
114. The Court concludes that Defendant's system does not directly infringe claim 24 under the doctrine of equivalents because the Court finds that independent claim 23 is not infringed and that Defendant's system does not include any element which could be equivalent to a nitrox storage assembly; a compressor; or a line which connects the compressor output to the nitrox assembly.
P. Claim 29 Does Not Infringe Under the Doctrine of Equivalents.
115. The Court concludes that Defendant's system does not directly infringe claim 29 under the doctrine of equivalents because independent claim 23 and dependent claim 24, on which claim 29 depends, are not infringed.
116. Assuming arguendo that claims 23 and 24 are infringed, then claim 29 would be infringed because Defendant's system includes an equivalent means for detecting oxygen which is located at the nitrox permeate outlet of the permeable membrane.
Q. Contributory Infringement.
117. Contributory infringement exists when anyone sells or offers to sell:
"a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use."
35 U.S.C. § 271(c).
118. The contributory infringement doctrine "exists to protect patent rights from subversion by those who, without directly infringing the patent themselves, engage in acts designed to facilitate infringement by others." Dawson Chemical Co. v. Rohm & Haas Co., 448 U.S. 176, 188, 100 S. Ct. 2601, 2609, 65 L. Ed. 2d 696 (1980). Contributory infringement protects a patentee "where enforcement against direct infringers would be difficult, and where the technicalities of patent law make it relatively easy to profit from another's invention without risking a charge of direct infringement." Id.
119. However, contributory infringement exists only when "the fact or intention of a direct infringement" is established. Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 526, 92 S. Ct. 1700, 1706, 32 L. Ed. 2d 273 (1972). If no one directly infringes the patent, there can be no contributory infringer. Aro Mfg. Co. v. Convertible Top Replacement, 365 U.S. 336, 341, 81 S. Ct. 599, 602, 5 L. Ed. 2d 592 (1961). Further, in an effort to balance the competing doctrines of contributory infringement and patent misuse, section 271(c) "adopts a restrictive definition of contributory infringement that distinguishes between staple and nonstaple articles of commerce. It also defines the class of nonstaple items narrowly." Dawson Chemical, 448 U.S. at 200, 100 S. Ct. at 2615.
120. The Court notes that even if a customer attached the missing elements which correspond to the unsatisfied claim limitations, the customer would not directly infringe the patented invention because Defendant's system does not literally or equivalently read on the means for selectively heating and cooling the compressed air limitation. Unless a customer changed the internal components found inside the Defendant's cabinet enclosure (a situation beyond Defendant's control or contemplation), this limitation would not be satisfied and thus the customer would not directly infringe the patented invention.
121. Therefore, in conducting the contributory infringement analysis, the Court will assume arguendo that the means for selectively heating and cooling; the means for detecting an oxygen concentration, and the permeable membrane gas separation system limitations have been satisfied and will limit its consideration to those elements from the claim limitations which are not found in Defendant's system.
122. Plaintiff did not prove that any of Defendant's customers had ever purchased a system and subsequently used it in a way that would infringe Plaintiff's patented invention. Defendant's sales contracts show that Defendant sold his system; they do not indicate how a customer used Defendant's system. Therefore, the Court will only conclude Defendant contributorily infringed the patented invention if it can find Defendant intended a customer to use its system in an infringing manner.
123. Defendant's sales brochure depicts three installation options. (Dx 12, N00145). The options depict different flow charts for the operation of Defendant's system. The Court finds that these flow charts are persuasive in demonstrating how Defendant's intended customers to use their cabinet system.
124. Option 1 depicts a straight-line process where the system includes, on the input side of Defendant's cabinet system, a high-pressure compressor which fills a bank of compressed air cylinders. This tandem is an air supply. The air from the storage cylinders can then flow through a high-pressure regulator (external to Defendant's cabinet system), and subsequently the compressed, low-pressure air enters Defendant's cabinet. On the output side of the cabinet, a second high-pressure compressor can be connected to a fitting located on the cabinet, (see Dx 13, N00191, item 12), which connects the compressor inlet to the nitrox permeate outlet of the permeable membrane (located inside the cabinet). The second compressor's outlet, which pumps compressed nitrox, is connected to either a bank of nitrox storage cylinders or nitrox scuba tanks. The bank of nitrox cylinders is a nitrox storage assembly.
125. Option 2 also depicts a straight-line process but changes the elements on the input side of Defendant's cabinet. In option 2, a low-pressure compressor acts directly as the air supply and pumps compressed, low-pressure air into an external pressure-reducing regulator (not a high-pressure regulator). All the elements on the output side of the cabinet are the same as in option 1.
126. Option 3 shows a circular process which more closely reads on the patented invention as it is described in the specification. On the input side of the cabinet is a bank of air storage cylinders as the air supply which sends high-pressure, compressed air through a high-pressure regulator and then into the cabinet. On the output side of the cabinet, the flow chart shows an ability to mix the output nitrox with ambient air and to direct the consequent mixture to the inlet of a high-pressure compressor. The outlet of the compressor is connected to a nitrox storage assembly and to the air supply located on the input side of the cabinet, thus completing the circle. This flow chart suggests that in this configuration Defendant's cabinet system can be used to create compressed nitrox (which may be mixed with ambient air) and that the external compressor can be used to fill the air supply to supply compressed air.
a. Claim 23.
127. The Court concludes that Defendant does not contributorily infringe claim 23 because Plaintiff did not meet its burden in showing by a preponderance of the evidence that Defendant intended its customer to use its cabinet system with a means for selectively distributing the nitrox.
128. The Court finds that Defendant's sales brochure demonstrates Defendant intended a customer to use Defendant's cabinet system with a compressed air supply. However, the Court found nothing offered into evidence which indicated that Defendant intended a customer to use, or that a customer actually used, a means for selectively distributing the nitrox.
b. Claim 24.
129. The Court concludes that Defendant does not contributorily infringe claim 24 because independent claim 23, upon which claim 24 depends, is not infringed.
130. Assuming arguendo that independent claim 23 is infringed, the Court would conclude that Defendant contributorily infringes claim 24. The Court finds that Defendant's sales brochure demonstrates Defendant intended a customer to use Defendant's cabinet system with a compressed air supply, a nitrox storage assembly and a compressor with lines connecting it between the nitrox permeate outlet line of Defendant's cabinet and the nitrox storage assembly.
c. Claim 29.
131. The Court concludes that Defendant does not contributorily infringe claim 29 because independent claim 23 and dependent claim 24, upon which claim 29 depends, are not infringed.
132. Assuming arguendo that independent claim 23 and 24 are infringed, the Court would conclude Defendant directly and contributorily infringes claim 29.
R. Willful Infringement.
133. When a potential infringer has notice of another's patent rights, he has an affirmative duty to exercise due care to determine whether he is infringing that patent. Underwater Devices, Inc. v. Morrison-Knudsen Co., Inc., 717 F.2d 1380, 1389-90 (Fed. Cir. 1983).
134. The Court holds that Defendant acted properly in contacting counsel to obtain legal advice and at all times exercised due care to avoid infringing the '845 patent. Even if the Court had found that Defendant's system was infringing, the Court finds that Defendant's conduct does not constitute willful infringement.
VIII. PATENT VALIDITY.
135. A patent is presumed valid, and each claim, whether independent or dependent, shall be presumed valid without regard to the validity of other claims. 35 U.S.C. § 282. The party attacking validity bears the burden of proving invalidity by clear and convincing evidence. Magnivision, Inc. v. Bonneau Co., 115 F.3d 956, 958 (Fed. Cir. 1997). The Court finds that Defendant has failed to meet its burden of proving the '845 patent or its claims invalid.
A. Anticipation under 35 U.S.C. § 102.
136. Infringement and anticipation are interrelated, or mirror images, in the sense that "that which infringes, if later, would anticipate, if earlier." Knapp v. Morss, 150 U.S. 221, 228, 14 S. Ct. 81, 84, 37 L. Ed. 1059 (1893). Anticipation is a question of fact. Electro Medical Systems, S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1052 (Fed. Cir. 1994). To establish anticipation under section 102, Defendant must prove by clear and convincing evidence that a single prior art discloses each and every element of the claimed invention.
Kegel Co., 127 F.3d 1420, 1997 WL 574561 at *9. The absence of even a single claim element from a prior art reference precludes anticipation by that reference. Minnesota Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1572 (Fed. Cir. 1992).
137. Whether deciding infringement or patent validity, a court must give the same interpretation and the same meaning to the patent claims. Kegel Co., 127 F.3d 1420, 1997 WL 574561 at *9. When an invention is claimed in means-plus-function language, the prior art reference does not anticipate the claimed invention if it does not disclose a structure which is capable of performing the functional limitation claimed in the "means" element. RCA Corp. v. Applied Digital Data Systems, 730 F.2d 1440, 1444 (Fed. Cir. 1984).
1. § 102(a) and (b).
138. Title 35 U.S.C. § 102(a) states:
A person shall be entitled to a patent unless --
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.