Cybor Corporation v. Fas Technologies, Inc., and Fastar Ltd., Defendants-Cross

Cybor Corporation (Cybor) appeals from the judgment of the United States District Court for the Northern District of California, 93-CV-20712 (Oct. 31, 1995), that Cybor pump, Model 5226, infringes the claims of U.S. Patent No. 5,167,837 (the '837 patent), currently owned by FAStar, Ltd. and exclusively licensed to FAS Technologies, Inc. (collectively FAS). FAS cross-appeals the judgment as to the damages calculation, the denial of enhanced damages, and the refusal to declare the case exceptional and to award attorney fees. A panel heard oral argument on January 29, 1997. Before its opinion issued, however, this court sua sponte on September 5, 1997 ordered that this case be decided in banc.

We affirm the district court's judgment in its entirety. In so doing, we conclude that the Supreme Court's unanimous affirmance in Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (Markman II ), of our in banc judgment in that case fully supports our conclusion that claim construction, as a purely legal issue, is subject to de novo review on appeal. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir.1995) (in banc) (Markman I ).

The '837 patent discloses a device and method for accurately dispensing industrial liquids. The primary use of the patented inventions is to dispense small volumes of liquid onto semiconductor wafers. Claim 1 is representative and reads:1

1. In a device for filtering and dispensing fluid in a precisely controlled manner, the combination of:

first pumping means;

second pumping means in fluid communication with said first pumping means; and

filtering means between said first and second pumping means, whereby said first pumping means pumps the fluid through said filtering means to said second pumping means;

in which each of said first and second pumping means includes surfaces that contact the fluid, said surfaces being of materials that are non-contaminating to industrial fluids which are viscous and/or high purity and/or sensitive to molecular shear; and

comprising means to enable said second pumping means to collect and/or dispense the fluid, or both, at rates or during periods of operation, or both, which are independent of rates or periods of operation, or both, respectively, of said first pumping means.

Figure 2 of the patent illustrates a preferred embodiment of the invention:NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

In the accused device, pump 1 draws the liquid from a source bottle through a feed line and through a three-way solenoid valve. The solenoid valve then closes the passage to the source bottle and opens the line to the filter, allowing pump 1 to deliver the liquid to the filter. After the liquid passes through the filter, the filtrate flows to a reservoir external to pump 2, where it accumulates until dispensed by pump 2. It is uncontested that the external reservoir, coupled with the second pump, allows the system to accumulate, dispense, or simultaneously accumulate and dispense filtrate. The filtrate leaves the reservoir through another three-way solenoid connector, or valve, and enters the second pump. The solenoid valve then closes the passage to the reservoir and opens the dispense port, through which the second pump dispenses the filtrate back through the solenoid valve and on through the dispensing port and line.

On September 23, 1993, Cybor sued FAS for a declaratory judgment of non-infringement, invalidity, and unenforceability of the '837 patent. FAS counterclaimed2 for infringement of all twenty claims and sought damages and injunctive relief. The case proceeded to trial, and the jury found by special verdict that the claims were not invalid, that Cybor literally infringed all the claims except 11, 12, and 16, and that these three remaining claims were infringed under the doctrine of equivalents. The jury determined the infringement to be willful for all claims except claim 16.

After the jury rendered its liability verdict, the district court denied Cybor's renewed motion for Judgment as a Matter of Law (JMOL) that it did not infringe the '837 patent, and also denied FAS's motion for an exceptional case award of attorney fees pursuant to 35 U.S.C. § 285 (1994). Prior to the entry of final judgment, however, this court decided Markman I, which held that claim construction is a matter of law to be determined exclusively by the judge. Cybor then filed a motion for reconsideration of its JMOL motion in light of that decision, but the district court denied reconsideration. After further proceedings on damages, the district court on October 11, 1995, filed its Findings of Fact and Conclusions of Law permanently enjoining Cybor from making, using, or selling its system, awarding FAS $130,912 in damages, and denying FAS's motion for enhanced damages under 35 U.S.C. § 284 (1994). The district court entered its final judgment on October 31, 1995, and these appeals followed.

A. This court reviews a denial of a motion for JMOL de novo by reapplying the JMOL standard. See Read Corp. v. Portec, Inc., 970 F.2d 816, 821, 23 USPQ2d 1426, 1431 (Fed.Cir.1992). Under this standard, we can reverse a denial of a motion for JMOL only if the jury's factual findings are not supported by substantial evidence or if the legal conclusions implied from the jury's verdict cannot in law be supported by those findings. See Kearns v. Chrysler Corp., 32 F.3d 1541, 1547-48, 31 USPQ2d 1746, 1751 (Fed.Cir.1994).

An infringement analysis involves two steps. First, the court determines the scope and meaning of the patent claims asserted, see Markman II, 517 U.S. at 371-73, 116 S.Ct. at 1387-88, and then the properly construed claims are compared to the allegedly infringing device, see Read Corp., 970 F.2d at 821, 23 USPQ2d at 1431. Although the law is clear that the judge, and not the jury, is to construe the claims, this case presents the issue of the proper role of this court in reviewing the district court's claim construction.

In Markman I, we held that, because claim construction is purely a matter of law, this court reviews the district court's claim construction de novo on appeal. See Markman I, 52 F.3d at 979, 981, 34 USPQ2d at 1329, 1331. In reaching this conclusion, we recognized that

[t]hrough this process of construing claims by, among other things, using certain extrinsic evidence that the court finds helpful and rejecting other evidence as unhelpful, and resolving disputes en route to pronouncing the meaning of claim language as a matter of law based on the patent documents themselves, the court is not crediting certain evidence over other evidence or making factual evidentiary findings. Rather, the court is looking to the extrinsic evidence to assist in its construction of the written document, a task it is required to perform. The district court's claim construction, enlightened by such extrinsic evidence as may be helpful, is still based upon the patent and prosecution history. It is therefore still construction, and is a matter of law subject to de novo review.

Id. at 981, 52 F.3d 967, 34 USPQ2d at 1331 (emphasis in original and footnote omitted).

After the Supreme Court's decision in Markman II, panels of this court have generally followed the review standard of Markman I. See Serrano v. Telular Corp., 111 F.3d 1578, 42 USPQ2d 1538 (Fed.Cir.1997); Alpex Computer Corp. v. Nintendo Co., 102 F.3d 1214, 40 USPQ2d 1667 (Fed.Cir.1996); Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 40 USPQ2d 1602 (Fed.Cir.1996); General Am. Transp. v. Cryo-Trans, Inc., 93 F.3d 766, 39 USPQ2d 1801 (Fed.Cir.1996). In some cases, however, a clearly erroneous standard has been applied to findings considered to be factual in nature that are incident to the judge's construction of patent claims. See Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1555-56, 42 USPQ2d 1737, 1742 (Fed.Cir.1997); Serrano, 111 F.3d at 1586, 42 USPQ2d at 1544, (Mayer, J., concurring); Wiener v. NEC Elecs. Inc., 102 F.3d 534, 539, 41 USPQ2d 1023, 1026 (Fed.Cir.1996); Metaullics Sys. Co. v. Cooper, 100 F.3d 938, 939, 40 USPQ2d 1798, 1799 (Fed.Cir.1996).3 We ordered that this case be decided in banc to resolve this conflict, and we conclude that the de novo standard of review as stated in Markman I remains good law.

B. The Supreme Court framed the question before it in Markman II in the alternative: "whether the interpretation of a so-called patent claim ... is a matter of law reserved entirely for the court, or subject to a Seventh Amendment guarantee that a jury will determine the meaning of any disputed term of art about which expert testimony is offered." Markman II, 517 U.S. at 372, 116 S.Ct. at 1387 (emphasis added). When it answered that question by stating that "[w]e hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court," id., the Court held that the totality of claim construction is a legal question to be decided by the judge. Nothing in the Supreme Court's opinion supports the view that the Court endorsed a silent, third option--that claim construction may involve subsidiary or underlying questions of fact.4 To the contrary, the Court expressly stated that "treating interpretive issues as purely legal will promote (though not guarantee) intrajurisdictional certainty through the application of stare decisis on those questions not yet subject to interjurisdictional uniformity under the authority of the single appeals court." Id. at 391, 116 S.Ct. at 1396 (emphasis added); see also id. at 387, 116 S.Ct. at 1394 (" 'Questions of construction are questions of law for the judge, not questions of fact for the jury' " (quoting A. Walker, Patent Laws § 75 at 173 (3d ed. 1895))). Indeed, the sentence demonstrates that the Supreme Court endorsed this court's role in providing national uniformity to the construction of a patent claim, a role that would be impeded if we were bound to give deference to a trial judge's asserted factual determinations incident to claim construction.

The opinions in some of our cases suggesting that there should be deference to what are asserted to be factual underpinnings of claim construction assert support from the language in Markman II stating that "construing a term of art after receipt of evidence" is a "mongrel practice," id. at 378, 116 S.Ct. at 1390, and that the issue may " 'fall[ ] somewhere between a pristine legal standard and a simple historical fact,' " id. at 388, 116 S.Ct. at 1395 (quoting Miller v. Fenton, 474 U.S. 104, 114, 106 S.Ct. 445, 451-52, 88 L.Ed.2d 405 (1985)). These characterizations, however, are only prefatory comments demonstrating the Supreme Court's recognition that the determination of whether patent claim construction is a question of law or fact is not simple or clear cut; they do not support the view that the Court held that while construction is a legal question for the judge, there may also be underlying fact questions. To the contrary, the court noted that

when an issue "falls somewhere between a pristine legal standard and a simple historical fact, the fact/law distinction at times has turned on a determination that, as a matter of sound administration of justice, one judicial actor is better positioned than another to decide the issue in question."

Id. (quoting Miller v. Fenton, 474 U.S. 104, 114, 106 S.Ct. 445, 451-52, 88 L.Ed.2d 405 (1985)) (emphasis added). Thus, the Supreme Court was addressing under which category, fact or law, claim construction should fall and not whether it should be classified as having two components, fact and law.

Further supporting the conclusion that claim construction is a pure issue of law is the Supreme Court's analysis of the role of expert testimony in claim construction. Generally, the Court has recognized the important role played by juries in evaluating the credibility of a witness, a key consideration in determining the appropriate judicial actor to decide an issue. See Miller, 474 U.S. at 114, 106 S.Ct. at 451-52. In the context of claim construction, however, the Court reasoned that, while credibility determinations theoretically could play a role in claim construction, the chance of such an occurrence is "doubtful" and that "any credibility determinations will be subsumed within the necessarily sophisticated analysis of the whole document, required by the standard construction rule that a term can be defined only in a way that comports with the instrument as a whole." Markman II, 517 U.S. at 389, 116 S.Ct. at 1395; see also id. at 388, 116 S.Ct. at 1394-95 (" '[T]he testimony of witnesses may be received.... But in the actual interpretation of the patent the court proceeds upon its own responsibility, as an arbiter of the law, giving to the patent its true and final character and force.' " (quoting 2 W. Robinson, Law of Patents § 732 at 481-83 (1890))). Such a conclusion is consistent with the view that claim construction, as a form of "document construction," id. at 388-90, 116 S.Ct. at 1395, is solely a question of law subject to de novo review, as noted above. See Markman I, 52 F.3d at 981, 34 USPQ2d at 1331.

Moreover, while the Supreme Court's opinion conclusively and repeatedly states that claim construction is purely legal, another view of the Court's decision also demonstrates that our standard of review remains intact. The Court's primary concern in Markman II was the Seventh Amendment issue of whether a right to a jury trial on claim construction inured to a party due to any potential factual issues involved. Because the Court did not discuss the appellate standard of review, Markman II can be read as addressing solely the respective roles of the judge and jury at the trial level and not the relationship between the district courts and this court. Although our conclusion in Markman I that claim construction is a matter of law was affirmed in all respects, even this narrower view of Markman II leaves Markman I as the controlling authority regarding our standard of review.

Thus, we conclude that the standard of review in Markman I, as discussed above, was not changed by the Supreme Court's decision in Markman II, and we therefore reaffirm that, as a purely legal question, we review claim construction de novo on appeal including any allegedly fact-based questions relating to claim construction. Accordingly, we today disavow any language in previous opinions of this court that holds, purports to hold, states, or suggests anything to the contrary, see, e.g., Fromson, 132 F.3d at 1444, 45 USPQ2d at 1274 ("The district court's findings of scientific/technological fact were material to the issue of construction of the term 'anodizing.' "); Eastman Kodak, 114 F.3d at 1555-56, 42 USPQ2d at 1742 (affirming district court's claim construction "recognizing both the trial court's 'trained ability to evaluate [expert] testimony in relation to the overall structure of the patent' and the trial court's 'better position to ascertain whether an expert's proposed definition fully comports with the specification and claims ....' " (quoting Markman II, 517 U.S. at 388-90, 116 S.Ct. at 1394-95)); Wiener, 102 F.3d at 539, 41 USPQ2d at 1026 (citing Markman II as controlling our standard of review and parenthetically quoting language from Markman II that claim construction " 'falls somewhere between a pristine legal standard and a simple historical fact.' "); Metaullics, 100 F.3d at 939, 40 USPQ2d at 1799 ("[B]ecause claim construction is a mixed question of law and fact, we may be required to defer to a trial court's factual findings. Where a district court makes findings of fact as part of claim construction, we may not set them aside absent clear error." (citations omitted)).

Cybor argues in this appeal that the district court improperly construed the two means-plus-function limitations in the relevant claims of the '837 patent--the "second pumping means" and the "means to enable" the second pumping means to accumulate liquid, dispense liquid, or both. Cybor also challenges the district court's construction of the limitation requiring that the fluid flow "to a second pumping means." All of these arguments turn on the question of whether the district court erred in refusing to limit the scope of the claims based on statements made to the examiner during prosecution.5 In particular, Cybor contends that the prosecution history does not allow the claimed "second pumping means" to cover any reservoir for accumulating fluid that is external to the second pump. Because Cybor's reservoir is external, Cybor argues that its second pump does not meet the second pumping means limitation. Its second pump alone, without regard to the external reservoir, is not able to satisfy the functional limitation of enabling the second pumping means to "accumulate liquid, dispense liquid, or both." With an intervening external reservoir, Cybor also argues that the fluid does not flow "to" a second pumping means from the filter means as required by the claims.

A. Under § 112, p 6, an accused device with structure not identical to the structure described in the patent will literally infringe the patent if the device performs the identical function required by the claim with a structure equivalent to that described in the patent. See Micro Chem., Inc. v. Great Plains Chem. Co., 103 F.3d 1538, 1547, 41 USPQ2d 1238, 1245-46 (Fed.Cir.1997). Prosecution history is relevant to the construction of a claim written in means-plus-function form. See United States v. Telectronics, Inc., 857 F.2d 778, 782, 8 USPQ2d 1217, 1220 (Fed.Cir.1988); Rite-Hite Corp. v. Kelley Co., 819 F.2d 1120, 1123, 2 USPQ2d 1915, 1917 (Fed.Cir.1987). Indeed, "just as prosecution history estoppel may act to estop an equivalence argument under the doctrine of equivalents, positions taken before the PTO may bar an inconsistent position on claim construction under § 112, p 6." Alpex, 102 F.3d at 1221, 40 USPQ2d at 1673. Clear assertions made in support of patentability thus may affect the range of equivalents under § 112, p 6. Cf. American Permahedge, Inc. v. Barcana, Inc., 105 F.3d 1441, 1446, 41 USPQ2d 1614, 1618 (Fed.Cir.1997); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1582, 37 USPQ2d 1365, 1373 (Fed.Cir.1996). The relevant inquiry is whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter. See Insituform Techs., Inc., v. Cat Contracting, Inc., 99 F.3d 1098, 1107-08, 40 USPQ2d 1602, 1608 (Fed.Cir.1996).

Cybor relies on two responses by the inventors to the examiner's obviousness rejection of the claims for its position that a pump structure with any external reservoir was given up during prosecution. In each instance, the examiner had cited Storkebaum et al., U.S. Patent No. 4,749,476 (Storkebaum). Storkebaum's container not only collects permeate; it also vents or discharges the fluid. The container feeds a conveying pump that powers the flow of a big circulation loop. The design of Storkebaum is not for the controlled dispensing of fluid. In the first response, the inventors argued that "Storkebaum specifically provides a separate container 12 for collecting permeate. Obviously, Storkebaum does not teach the collection of fluid in a second pumping means." (Emphasis added). In response to a later rejection, the inventors argued that "Storkebaum discloses a permeate collecting container 12 that is separate from the conveying pump 13. Nothing in Storkebaum discloses or makes obvious the claimed invention, nor the precise or flexible control provided by the second pump means of Claim 1." (Emphasis in original). From these statements, Cybor contends that FAS is precluded from asserting that a pump device with an external reservoir is a structural equivalent under § 112, p 6 to its patented device and that the district court, as a matter of law, should not have permitted the jury to consider its external reservoir in determining whether the differences between Cybor's second pump and the '837 patent's second pumping means were insubstantial.

FAS responds that the district court made all of the required determinations regarding claim construction and, in doing so, fully considered the prosecution history at issue. It then submitted the construed claims to the jury for its determination of infringement.6

We are not convinced that the district court erred in its claim construction or in denying Cybor's motion for JMOL. The district court construed several limitations, or disputed language, in the claims. With respect to the second pumping means limitation, the jury was instructed that it "refers to a structure identical to the structure disclosed in the specification of the patent, or the equivalent to that structure, which performs the function of fluid accumulator/dispense pump." With this instruction, the district court did not narrow the scope of the claim language to exclude a pump with any external reservoir as urged by Cybor. Instead, the jury was instructed to determine whether Cybor's device, with its pump and attached reservoir, was structurally equivalent and whether it had the same functionality as the second pumping means of the '837 patent.7

From our reading of the patent document and the prosecution history, we agree with the district court's construction and jury instructions. While it is quite clear the inventors limited the scope of their claims to overcome the Storkebaum reference, they emphasized the separateness of Storkebaum's container, both physically and functionally, as compared to the claimed invention. For example, the statements noted that Storkebaum "provides a separate container" and that it has a container "that is separate from the conveying pump." The specification of the '837 patent elaborates on the structure of the second pumping means and its "means to enable" as having tubing connecting the second pumping means to the second incremental pump advancement means, see col. 5, lines 49-52. While in the preferred embodiment, the '837 patent disclosed a storage reservoir inside the pump, it is not disputed that the claimed second pumping means encompasses both a pump and a reservoir having connecting tubing.

The Storkebaum device differs materially from the patented invention. Storkebaum discloses a filtering system to separate pressure sensitive substances from a liquid suspension. It has a conveying pump that operates to circulate the fluid through a large closed circuit loop. It also has a separate reservoir to collect and regulate the amount of permeate in the closed circuit. Thus, the container in the Storkebaum apparatus has the separate function and capability of venting or discharging excessive liquid in order to prevent undesirable build up of liquids in the system.

In view of the significant differences between the cited Storkebaum patent and the claimed invention, including the structurally separate container and independent function of discharging excess fluid in Storkebaum, the prosecution statements cannot properly be interpreted as precluding coverage of every type of external reservoir. In particular, we agree with the district court's apparent conclusion that these statements only disclaimed a physically unattached reservoir which has independent functionality. They did not disclaim a reservoir which is physically connected to the pump and which only collects fluid to be dispensed by that pump. Thus, we conclude that the district court did not err in instructing the jury in a manner which would permit it to consider the equivalency of Cybor's pump and reservoir to the claimed second pumping means. Further, it did not err in denying Cybor's JMOL motion on this issue.

B. Cybor further challenges the district court's claim interpretation regarding the claim limitation that the first pumping means pumps the fluid through the filtering means "to" the second pumping means. Cybor contends that this language requires that the liquid flow directly from the filtering means to the second pumping means without passing through any additional components. Because the fluid in Cybor's device flows through the external reservoir, which Cybor views as a component separate from the claimed second pumping means, Cybor argues that it does not infringe.

We reject Cybor's arguments because, as previously discussed, the external reservoir in the Cybor's device was apparently held by the jury to be a part of its "second pumping means" and not a separate component.

We also agree with the district court's interpretation that the "to" limitation requires only that the liquid move from the filter "in a pathway with a destination of the second pumping means" and does not preclude the fluid from passing through intervening components. Cf. Webster's II New Riverside Univ. Dictionary 1214 (1984) (defining "to" as "[i]n a direction toward"); see Vitronics, 90 F.3d at 1584 n. 6, 39 USPQ2d at 1578 n. 3 (noting that, although technically extrinsic evidence, the court is free to consult dictionaries at any time to help determine the meaning of claim terms). Nothing in the specification or prosecution history suggests the interpretation put forth by Cybor.

Applying the above interpretations, substantial evidence supports the jury's verdict that Cybor's device literally infringes the claims of the '837 patent. Accordingly, we conclude that the district court properly denied Cybor's motion for JMOL as to literal infringement.

Cybor also challenges the denial of its JMOL motion on the ground that its device does not infringe the '837 patent under the doctrine of equivalents. The jury determined that claims 11, 12, and 16 are not literally infringed but are infringed under the doctrine of equivalents. Claims 10, 11, and 12 read:

10. A method for filtering and dispensing industrial fluids which are viscous and/or high purity and/or shear sensitive, comprising the steps of: pumping the fluid through filtering means by first pumping means to second pumping means; accumulating the fluid in second pumping means at rates or during periods of operation, or both, independent of the rates or periods of operation, or both, respectively, of said first pumping means; and dispensing the fluid by operating said second pumping means.

11. The method of claim 10 wherein said accumulating step is achieved by operating said second pumping means on an intake stroke at the same rate at which said first pumping means is pumping said fluid through said filter, so that the fluid which has been filtered is accumulated in said second pumping means without being dispensed from said second pumping means.

12. The method of claim 10 wherein said accumulating step includes operating said second pumping means to draw said filtered fluid at a rate slightly greater than the rate at which said filtered fluid is being pumped by said first pumping means, such that there is a slight drawback of said fluid from a dispensing means of said second pumping means.

(Emphasis added). Claim 16 is a combination claim that reads:

16. In a device for filtering and dispensing high-purity and/or viscous and/or shear-sensitive fluid, the combination of: a first diaphragm-type pump; filtering means connected to receive the fluid from said first diaphragm-type pump; and a second diaphragm-type pump connected to receive the fluid from said filtering means, in which each of said first and second diaphragm-type pumps includes surfaces that contact the fluid, said surfaces being of materials that are non-contaminating to industrial fluids which are viscous and/or high purity and/or sensitive to molecular shear; and comprising means to enable said second diaphragm-type pump to collect and/or dispense the fluid, or both, at rates or during periods of operation, or both, which are independent of rates or periods of operation, or both, respectively of said first diaphragm-type pump.

(Emphasis added).

An accused device that does not literally infringe a claim may still infringe under the doctrine of equivalents if each limitation of the claim is met in the accused device either literally or equivalently. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., ---U.S. ----, ----, 117 S.Ct. 1040, 1054, 137 L.Ed.2d 146 (1997); see also Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 USPQ2d 1737, 1740 (Fed.Cir.1987) (in banc). Prosecutio