Outlast Technologies, Inc. v. Frisby Technologies, Inc.

Citations: 298 F. Supp. 2d 1112; 2004 U.S. Dist. LEXIS 473; 2004 WL 64692Docket: CIV.01-F-1882CBS BNB

Court: District Court, D. Colorado; January 14, 2004; Federal District Court

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Outlast Technologies, Inc. has initiated a patent infringement lawsuit against Frisby Technologies, Inc., claiming that Frisby is infringing on Outlast's Patent No. 5,366,801 (the '801 Patent), which pertains to a coating with microencapsulated phase change materials for enhancing the thermal properties of fabrics. The court is currently considering two cross motions for partial summary judgment: Frisby’s motion for non-infringement, filed January 25, 2002, and Outlast’s motion asserting infringement, filed August 26, 2002. The case experienced a delay due to Frisby's bankruptcy filing, leading to a stay ordered on January 29, 2003. However, the United States Bankruptcy Court later modified the stay to allow the District Court to proceed with rulings on the cross motions. The parties clarified that the stay applies only to the counterclaims motion related to tortious interference and trade libel, while the motions addressing infringement are not stayed. Additionally, both parties consented to refer the dispositive motions to a magistrate judge for final determination, under local rules allowing magistrate judges to resolve motions pending for over six months.

The district judge approved the referral of dispositive motions to a magistrate judge on July 29, 2003, with the motions assigned by random draw. Outlast claims literal infringement of claims 1, 2, 3, and 6 of the '801 Patent, asserting that Frisby infringes these claims. Claims 2, 3, and 6 are dependent on claim 1, meaning if claim 1 is not infringed, the dependent claims cannot be found infringed (Jeneric/Pentron, Inc. v. Dillon Co. Inc.). Claim 1 describes an article with specific thermal storage properties and microcapsules containing temperature stabilizing materials.

Frisby contends it does not infringe the '801 Patent because the patentee disclaimed coverage for microcapsules applied through impregnation, and Frisby’s products are impregnated fabrics. Conversely, Outlast asserts that the patent covers the use of microencapsulated phase change materials in fabrics and that the disclaimer only pertains to fabrics designed for microcapsule rupture. The magistrate judge granted Frisby's Infringement Motion and denied Outlast's, concluding Frisby does not infringe the '801 Patent as a matter of law. Both parties agree that the case is suitable for summary judgment, emphasizing there are no disputes regarding the structure of Frisby’s ComforTemp non-woven fabrics, thus framing the infringement issue as one of claim construction.

Federal rules of civil procedure apply equally in patent cases as in other cases, allowing for summary judgment under Rule 56 when there is no genuine issue of material fact. Summary judgment is appropriate if the evidence, including pleadings and affidavits, shows that the movant is entitled to judgment as a matter of law. A genuine issue exists if a reasonable jury could find for the nonmoving party. The court must view facts favorably for the opposing party and allow reasonable inferences. The moving party has the initial burden to demonstrate the absence of genuine issues, while the opposing party must present specific facts showing a genuine issue for trial.

In this case, it is undisputed that Frisby’s ComforTemp nonwoven fabrics are impregnated with a polymeric binder and microcapsules of phase change material, created by applying this mixture to a nonwoven fabric and passing it through rollers. The '801 Patent uses the terms "base material" and "substrate" interchangeably. The dispute centers on the construction of patent claims rather than the structure of the products, which is agreed upon by both parties. Consequently, the issue of literal infringement is reduced to claim construction, making it suitable for summary judgment.

A literal patent infringement analysis consists of two steps: first, the proper construction of the asserted claim, and second, determining if the accused product or method infringes that claim as constructed (Vitronics Corp. v. Conceptronic, Inc.). Claim construction aims to clarify the claim language without altering its scope (Embrex, Inc. v. Service Engineering Corp.). It is a legal matter decided by the court (Markman v. Westview Instruments, Inc.). Courts rely on intrinsic evidence (like the patent specification and file history) and extrinsic evidence (such as expert testimony) to guide claim construction, although the primary focus is on the claims' language (Vitronics). Claim terms are presumed to carry their ordinary meanings as understood by skilled individuals in the relevant field at the time of invention (Rambus Inc. v. Infineon Technologies Ag). Courts will generally give claim terms their full ordinary meaning unless the patentee has explicitly defined a term or if the language used is unclear (Texas Digital Systems, Inc. v. Telegenix, Inc.). The intrinsic record must always be examined to see if the presumption of ordinary meaning is rebutted, particularly if the patentee has acted as their own lexicographer or has disclaimed certain meanings during prosecution, known as prosecution disclaimer (Johnson Worldwide; Rambus). This doctrine prevents patentees from reclaiming specific meanings that were disavowed during the patent application process (Omega Engineering, Inc. v. Raytek Corp.).

A review of intrinsic evidence typically suffices to clarify ambiguities in disputed claim terms, with reliance on extrinsic evidence deemed improper when the public record clearly defines the patent's scope. The claims, specification, and file history serve as the authoritative public record, which the public may depend on. The Federal Circuit emphasized the importance of prosecution disclaimer in promoting public notice and protecting reliance on statements made during patent prosecution. However, a prosecution disclaimer is only recognized when the patentee's statements unequivocally disavow a certain meaning in a clear and unmistakable manner.

In the case of Frisby's ComforTemp nonwovens, which are made by impregnating a nonwoven fabric, Frisby contends that its products do not infringe the '801 Patent due to a prosecution disclaimer regarding fabrics impregnated with phase change microcapsules. This argument is supported by three relevant prior art patents: 1) Bryant, which describes microspheres filled with phase change material incorporated into a fiber; 2) Doree, detailing a process of coating a substrate with microcapsules in a binder resin; and 3) Woo, which also involves impregnating a fabric with microcapsules mixed with a binder.

Claim 1 of the '801 Patent, derived from application claim 5, describes a fabric with enhanced thermal properties comprising a base material and a coating of binder and microcapsules. The examiner previously rejected application claim 5 as obvious, citing the combination of Bryant and Doree's teachings as a basis for the rejection, noting that while Bryant does not specifically disclose applying microspheres to a fabric's surface, the methods for such application are recognized in the field, with Doree providing a relevant example.

Application claim 5 was amended to define an article such as fabric or fiber with enhanced thermal storage properties comprising a base material and a coating that includes a binder and microcapsules containing temperature stabilizing means. The microcapsules are entirely submerged within the binder, preventing rupture and leakage of the phase change material, thus enhancing thermal stability when subjected to temperature changes. The patentees argued that their invention is distinct from prior art, particularly Doree, which involves microcapsules that intentionally protrude above the binder to facilitate the release of their contents upon rupture. They emphasized that their invention's microcapsules are protected by being fully embedded in the binder, which serves a dual wall function to safeguard the phase change material from leakage during rupture. 

Despite these distinctions, the examiner rejected the amended claim 5, citing 35 U.S.C. 103, asserting it was unpatentable in light of Bryant et al. and Woo. Bryant et al. described microspheres filled with phase change material incorporated into fibers to enhance thermal properties, while Woo discussed a method of impregnating fabrics with microcapsules mixed with a binder. The examiner concluded that it would have been obvious to combine these methods to achieve the claimed invention.

Application claim 5 was initially rejected due to concerns over the combination of microcapsules applied to fabric by impregnation. In response, the patentees amended claim 5 to specify an article, such as fabric or fiber, with enhanced thermal storage properties, which includes a base material and a coating of binder with microcapsules containing a temperature stabilizing means. The amendment clarified that the coating is applied to the surface of the substrate, contrasting with prior art by Woo, which depicted microcapsules bonded within the fabric, leaving the surface free of any binder or capsules for aesthetic purposes. The patentees argued that Woo’s method does not suggest a thicker binder or the benefits of having both the binder and microcapsules on the surface. The examiner accepted the second amendment, allowing claim 5 with minor changes. Outlast contended that the disclaimed products were not all impregnated fabrics but only those designed to facilitate microcapsule rupture. However, the patentees previously addressed concerns regarding microcapsule rupture and leakage, emphasizing that their invention uses a dual wall system to prevent leakage of phase change materials, distinguishing it from the prior art.

Rupture of microcapsules and leakage of phase change material were addressed by the first amendment to application claim 5 and were not the basis for the examiner's second rejection. The examiner clearly indicated that it would have been obvious to use Woo's method to impregnate microencapsulated phase change materials into fabric. The present invention differs from Woo by providing a coating applied to the substrate surface rather than embedding microcapsules within the fabric. The invention ensures that microcapsules do not rupture and, even if they break, the phase change material remains intact within a binder matrix. Unlike Woo, which places fragrance capsules within the fabric's interstitial spaces, the present invention positions microcapsules on the surface and within the substrate's interstices. The binder layer is designed to enclose the microcapsules and is less concerned with the substrate's texture and appearance. The prosecution history indicates that the second amendment narrowed claim 5 to exclude impregnation methods. Consequently, the patentee cannot reinterpret the claim to include the surrendered scope of impregnation after negotiating with the PTO for patentability. The legal precedent establishes that claims cannot be construed differently during prosecution and against alleged infringers.

Outlast contends that when claim terms are clear and unambiguous, neither the written description nor the prosecution history can alter the claim language, referencing E.I. du Pont de Nemours Co. v. Phillips Petroleum. Conversely, Frisby argues that prosecution history disclaimer can indeed override the plain meaning of claim terms, citing Omega Engineering. The Federal Circuit, in Johnson Worldwide, established that a party must identify specific claim terms to use written descriptions to limit a patent's scope; general references are insufficient. The Texas Digital case emphasizes that consulting the written description or prosecution history before determining ordinary meanings can improperly introduce limitations into claims.

In this matter, Claim 1 requires that the polymeric binder be "on the surface of said base material." The court may refer to specifications and prosecution history for claim construction. The doctrine of prosecution disclaimer is well established, preventing patentees from reclaiming meanings disavowed during prosecution. The patentee in this case explicitly disclaimed the application of microcapsules via impregnation, which led to the exclusion of such methods from the patent's coverage.

Frisby’s products are made by impregnating fabric, which does not align with Claim 1 of the '801 Patent, as it does not cover impregnated fabric. Therefore, the Frisby ComforTemp nonwovens do not infringe the '801 Patent, and Frisby is awarded judgment of non-infringement. Consequently, Frisby's motion for partial summary judgment is granted, while Outlast's motion is denied.