Michilin Prosperity Co. v. Fellowes Manufacturing Co.

Citations: 450 F. Supp. 2d 35; 2006 U.S. Dist. LEXIS 61912Docket: Civil Action 04-1025(RWR)(JMF)

Court: District Court, District of Columbia; August 30, 2006; Federal District Court

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Michilin Prosperity Co. filed a lawsuit against Fellowes Manufacturing Co., claiming infringement of United States Patent No. 6,550,701 ('701 patent') regarding the POWERSHRED PS70-2CD shredder. The court held a Markman hearing to interpret disputed patent claim terms. Key interpretations included: "two inports" meaning at least two inports, with specific orientations defined for "vertical channel walls" and "inclined, curved channel walls"; "touch switch" requiring physical contact for activation; the "paper touch switch" and "disc touch switch" as separate entities located in distinct positions; and the "single touch switch" of claim 4 as an additional switch to the other two.

The court determined that the '701 patent, while disclosing a one-switch embodiment, did not claim it, thus dedicating it to the public. Consequently, Michilin could not claim infringement under the doctrine of equivalents for this embodiment, leading the court to grant Fellowes's motion for summary judgment of non-infringement based on the disclosure-dedication rule. The '701 patent specifically describes a shredder with two inports (for paper and discs) activated by separate touch switches, while Fellowes's device incorporates only a single optical switch. The claim construction process emphasized examining the patent language, specification, and relevant extrinsic evidence to clarify ambiguities. The parties disagree on the interpretation of "two inports," with Michilin asserting a claim for exactly two, while Fellowes argues for the inclusion of two or more.

The '701 patent utilizes the term 'comprising' to encompass essential elements, specifically indicating that the invention includes at least two inports, while allowing for additional elements. The patent specifies a paper inport with 'inclined, curved channel walls' and a disc inport with 'vertical channel walls.' There is a dispute between Fellowes and Michilin regarding how to interpret the orientation of these channel walls: Fellowes argues it should be relative to the roller blades' plane, while Michilin contends it should be relative to the machine itself. The claim language and specification do not clarify this ambiguity, necessitating the consideration of extrinsic evidence. Inventor Frank Chang's deposition highlights that the vertical orientation of the disc inport relative to the roller blades is crucial for preventing ejection during shredding, which is a primary issue the patent addresses.

Additionally, the '701 patent activates its shredding function via a 'touch switch.' Fellowes asserts that this term means a switch requiring physical contact to activate, while Michilin proposes a broader interpretation. However, Michilin has conceded that the conventional definition aligns with Fellowes' interpretation, and no alternative definition is provided in the patent. This concession is established per Federal Rule of Civil Procedure 36(b), making it conclusive unless withdrawn or amended by court permission. Michilin's failure to contest this definition at a prior scheduling conference further solidifies Fellowes' position, leading to a summary judgment ruling of non-infringement based on the literal interpretation of 'touch switch' as requiring physical contact.

The claim language in the '701 patent is unequivocal; a 'touch switch' necessitates physical contact for activation. The patent specifies both a paper touch switch and a disc touch switch to be positioned at distinct locations between the inports and roller blades. Fellowes argues these should be interpreted as two separate switches at different locations, while Michilin contends that there could be one or two switches, with the stipulation that two must be in different locations. However, Claim 1 explicitly states there are two switches—one paper and one disc—each placed in separate locations, as supported by the patent text. Although Michilin notes a one-switch embodiment in the specification, this does not alter the explicit wording of Claim 1.

Claim 4, which depends on Claim 1, introduces a 'single touch switch' situated between the roller blades, capable of activating the blades regardless of the substance being fed. Michilin interprets 'single touch switch' as indicating a one-switch embodiment, citing cost-saving benefits from the specification. Nonetheless, Michilin acknowledges that Claim 4 relies on Claim 1, which specifies two switches. Fellowes argues that Claim 4's 'single touch switch' should be viewed as a third switch, in addition to the paper and disc switches, because dependent claims incorporate all limitations of their associated independent claims. Therefore, Claim 4's single switch must be considered an additional switch. The court is not permitted to redefine claims, as established in precedent.

Summary judgment is appropriate when there are no genuine issues of material fact, as outlined in Federal Rule of Civil Procedure 56(c). The disclosure-dedication rule states that if a patent drafter discloses subject matter in the specification but does not claim it, that subject matter is dedicated to the public and cannot be claimed as an infringing equivalent.

In Johnson, Johnston Assocs. Inc. v. R.E. Service Co., the Federal Circuit clarified that intent is not a factor in the disclosure-dedication analysis. Michilin's claim of infringement against Fellowes's single-switch shredder relies solely on the doctrine of equivalents. Fellowes previously sought summary judgment of non-infringement based on the disclosure-dedication rule, which was denied because Michilin had attempted to claim a one-switch embodiment in claim 4 of the '701 patent. However, it is now established that the '701 patent discloses, but does not claim, a single-switch shredder. The independent claim recites both a paper touch switch and a disc touch switch, necessitating that all dependent claims inherit these elements. Therefore, no single-switch embodiment is claimed. The Federal Circuit's decision in Toro Co. v. White Consolidated Industries reinforces that a patent holder’s intent does not alter the application of the disclosure-dedication rule. Consequently, Michilin cannot assert infringement under the doctrine of equivalents for the dedicated one-switch embodiment. There are no genuine issues of material fact remaining, granting Fellowes summary judgment of non-infringement. The court orders that Fellowes's motion for summary judgment is granted, vacating the earlier order denying this motion.

Fellowes's motion to expedite the briefing schedule on its third motion to compel and for sanctions was denied as moot. Fellowes's motions to file exhibits under seal in support of the third motion were granted. Michilin's motion to preclude discovery of extrinsic evidence and to exclude it from the Markman hearing was denied in part, while its motion in limine to exclude certain extrinsic evidence for claim construction was also denied. The parties are ordered to file a joint status report by September 8, 2006, with proposals regarding amending the supplemental scheduling order and case proceedings. Fellowes's motion for summary judgment of non-literal infringement was granted, but the motion based on the all limitations rule was denied. The court recognized its authority to reconsider interlocutory orders. Fellowes’s request to certify questions regarding infringement under the doctrine of equivalents of the '701 patent related to a one-switch shredder is moot due to the public dedication of the shredder and the summary judgment of non-infringement. Michilin's motion for reconsideration essentially sought to exclude extrinsic evidence from discovery and consideration in the Markman hearing.