Statements in specification lead to narrower claim construction and noninfringement
August 06, 2007
In a decision on Friday, the Federal Circuit affirmed a district court decision granting summary judgment of noninfringement. The only claim at issue required motors to apply a "pushing" force. The defendant's motors applied a "pulling" force that was, through intermediate apparatus, translated to a "pushing" force, but the court held that the patentee had disclaimed such devices in the specification. Specifically, the specification stated that it was an "important feature" of the invention that the motors apply pushing forces, and that motors applying pulling forces were known in the prior art. As a result, the Federal Circuit held that this disclaimer in the specification precluded a finding that the accused device infringed.

More details of SafeTCare Mfg., Inc. v. Tele-Made, Inc. after the jump.

The plaintiff, SafeTCare, owns a patent claiming a modular bariatric bed which uses electric motors to exert a pushing force on movable sections of the bed to control mattress contour and height. Figure 5 of the patent is illustrative:

Figure 5

The only claim at issue was claim 12, which reads (relevant limitation emphasized):

12. A bed comprising:

a frame;

a plurality of deck sections pivotally connected to said frame to support a mattress, each of said plurality of deck sections having first and opposite sides and first and opposite pull out extensions slidable outwardly from said first and opposite sides between a retracted position at which said plurality of deck sections have a relatively narrow width by which to support a mattress having a correspondingly narrow width and an extended position at which said plurality of deck sections have a relatively wide width by which to support a mattress having a correspondingly wide width; and

a plurality of electric motors carried by said frame and coupled to respective ones of said plurality of deck sections for exerting a pushing force on said plurality of deck sections for causing said deck sections to rotate upwardly relative to said frame so as to adjust the contour of the mattress.

SafeTCare argued that the Tri-Flex II bariatric bed, made by the defendant Burke, was within the scope of claim 12 even though the Tri-Flex II uses a motor to apply a pulling force to adjust mattress contour and height. The Burke bed uses a pulling force on one end of a section with a center pivot to exert a pushing force on the other end of the section, so that the resulting force on the deck is a pushing force.

Before addressing the merits of the case, the Federal Circuit raised sua sponte the issue of subject matter jurisdiction. The court noted that it may only take appellate jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) when a final decision of a district court has been entered. In this case, the district court had not dismissed the claims and counterclaims of the six defendants, including a counterclaim from Burke. Ultimately, after the district court entered a final judgment nunc pro tunc pursuant to Rule 54(b), the court determined that the jurisdictional defect was cured and allowed the appeal to proceed. By doing so the Federal Circuit continues to follow other circuits which hold that a premature notice of appeal ripens upon a proper Rule 54(b) judgment.

In reviewing the district court's grant of summary judgment, the court noted that neither party disputed that "a pushing force" was determined to mean "a physical force applied in a direction away from the body exerting it." Thus the crucial question as phrased by the court was "whether the limitation in Claim 12 of a motor 'exerting a pushing force on said . . . deck section' includes within its scope a motor that indirectly exerts a force on the deck section and away from the motor." SafeTCare argued that claim 12 includes any motor that "applies a physical force to the deck sections that cause the deck sections to lift upwardly" and away from the motor. The defendant Burke asserted that the motor must exert a pushing force through an intermediary directly against the lift dog or deck panel.

The Federal Circuit sided with Burke. In affirming the grant of summary judgment, the court found that, all other things being equal, the claim was drafted broadly enough to encompass Burke's device. However, relying on language from the specification, the court affirmed the summary judgment of noninfringement. Specifically, the court noted that SafeTCare emphasized that it was "important" that its invention applied pushing forces rather than pulling forces against the deck panel or lift dog. The specification also noted that prior art devices utilized pulling forces. Based on these statements, the court, citing its 2005 en banc claim construction case Phillips v. AWH Corp., found the specification precluded a broad interpretation of the claim that would literally encompass Burke's device. This disavowal in the specification also meant there could be no infringement under the doctrine of equivalents.

This case reminds patent practitioners of two important points. First, be mindful when describing features of an invention as "important," "critical," "essential," or the like, as those types of statements under current Federal Circuit jurisprudence can sometimes limit the claims. Second, ensure when appealing a district court's decision that a final, appealable judgment has been entered so as to avoid otherwise unnecessary procedural issues. The Federal Circuit has been particularly vigilant about this issue recently.

To read the full decision in SafeTCare Mfg., Inc. v. Tele-Made, Inc., click here.

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