Nikken USA, Inc. v. Robinsons-May, Inc.

Citation: 51 F. App'x 874Docket: Nos. 01-1420, 02-1006 and 02-1106

Court: Court of Appeals for the Federal Circuit; November 19, 2002; Federal Appellate Court

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Nikken, Inc. appeals a ruling from the Central District of California that granted summary judgment to HoMedics, Inc. and forty-one retail defendants, finding that HoMedics' magnetic therapy wrap products do not infringe U.S. Patent 5,304,111. Additionally, Nikken contests the ruling that HoMedics' magnetic therapy curved insole products also do not infringe the same patent, and that infringement of U.S. Patent 4,489,711 by HoMedics' straight insole products was not willful. HoMedics cross-appeals the denial of its judgment as a matter of law regarding infringement of the ’711 patent. The court’s ruling is affirmed in part, reversed in part, and remanded in part.

Nikken owns two patents related to therapeutic magnets: the ’111 patent, which describes a flexible magnetic sheet with a curved magnetization pattern, and the ’711 patent, which covers a flexible magnetic sheet with a straight magnetization pattern and its application method. HoMedics' accused products include fabric wrap products with hard magnets and magnetized shoe insoles with either straight or curved patterns. Nikken alleged direct and contributory infringement based on these products.

The district court found that the fabric wrap products did not literally infringe claim 4 of the ’111 patent because they consist of magnets attached to non-magnetizable materials, thus granting summary judgment for HoMedics on that basis. However, the court identified a genuine issue of material fact regarding the doctrine of equivalents, leading to a denial of summary judgment on that ground.

The court addressed the alleged infringement of claim 4 of the ’111 patent concerning curved insole products. It interpreted 'having a planar skin compatible surface' to allow for various constructions of the magnetizable sheet, concluding that Nikken had raised genuine issues of material fact regarding literal infringement. As a result, the court denied HoMedics’ motion for summary judgment on this issue. Regarding the straight insole products and the ’711 patent, the court defined claim 1 to require either self-adhesion or attachment via a compatible self-adhesive plaster. Consequently, it found that claim 12 did not necessitate the use of such plaster, leading to similar findings of genuine material fact and the denial of HoMedics’ motion for summary judgment of noninfringement of the ’711 patent.

The court later granted reconsideration of the summary judgment order in light of the Festo Corp. case, determining that the 'magnetizable flexible sheet' limitation had been narrowed during prosecution, thus applying prosecution history estoppel to bar findings of infringement under the doctrine of equivalents for fabric wrap products. Summary judgment was entered declaring these products non-infringing.

The court subsequently issued an order construing remaining claims, specifically analyzing three limitations in claim 4 of the ’111 patent. It clarified the meaning of 'regular, translationally repeating pattern of non-concentric curved first and second areas of alternating magnetic polarity', 'magnetized integrally into the sheet', and 'a plurality of said curved areas'. For the ’711 patent, it reiterated prior interpretations regarding claim 1 and assessed claim 12 as not incorporating the self-adhesive limitation. The case proceeded to trial, where the jury found that the curved insoles infringed claim 4 of the ’111 patent, and the straight insoles infringed claims 1 and 12 of the ’711 patent, concluding that HoMedics’ infringement was willful, but not the retailers’.

Following the jury verdict, both parties sought judgment as a matter of law (JMOL). The court found a complete lack of evidence supporting Nikken's claim of infringement regarding the 'first and second areas of alternating magnetic polarity' limitation and granted HoMedics’ JMOL that the curved insoles do not infringe claim 4 of the ’111 patent. The court denied HoMedics’ JMOL for claims 1 and 12 of the ’711 patent, determining that Nikken presented sufficient evidence in its case-in-chief. Additionally, the court ruled that HoMedics’ infringement of the ’711 patent was not willful, as Nikken failed to show evidence of intentional copying or negligence.

Nikken is appealing the district court's decisions, while HoMedics is cross-appealing the denial of JMOL. On appeal, Nikken argues that the court erred in its interpretation of "magnetizable flexible sheet," contending that the requirement for the entire sheet to be magnetizable was incorrect. Nikken claims that the phrase should allow for a flexible sheet with permanently magnetized portions. Furthermore, Nikken challenges the court's refusal to allow the doctrine of equivalents, asserting that a recent Supreme Court ruling affects the applicability of prosecution history estoppel as referenced by the Festo decision. Nikken believes it should have been permitted to introduce evidence of infringement under this doctrine.

In response, HoMedics argues that the court's construction of claim 4 was correct and that the fabric wraps do not literally infringe because they lack a magnetizable flexible sheet. HoMedics asserts that a sheet with discrete magnets cannot be equivalent to a magnetizable flexible sheet, and Nikken did not provide evidence of equivalence.

The district court correctly interpreted "magnetizable flexible sheet" to mean that the sheet must itself be capable of being magnetized, supported by its plain meaning, dictionary definitions, and additional claim language requiring magnetization to be integral to the sheet. The court's definition is consistent with the patent specification, which describes the magnetization pattern as being "magnetically imprinted" into flexible magnetic material. Nikken's argument that the court improperly required every aspect of the sheet to be magnetizable misinterprets the necessity for the sheet itself to be magnetizable.

Regarding infringement, the court held that the fabric wrap products do not literally infringe claim 4, as they consist of flexible sheets made from neoprene or polyurethane, which are not magnetizable. The only magnetizable components are discrete magnets sewn into the wraps, which do not constitute part of the flexible sheets. The court also concluded that the fabric wraps cannot be considered to infringe under the doctrine of equivalents due to Nikken's failure to provide evidence supporting equivalence. While the prior law may have incorrectly barred equivalence claims, the current legal framework established by the Supreme Court's Festo decision does not grant Nikken any range of equivalents. The broad interpretation of "magnetizable flexible sheet" proposed by Nikken would dilute the claim limitation, which is impermissible. Therefore, the district court's summary judgment of no infringement was affirmed, as no reasonable fact-finder could determine that the fabric wraps infringe the ’111 patent in any capacity.

Nikken appeals the district court's judgment as a matter of law (JMOL), which ruled that its curved insole products do not infringe claim 4 of the ’111 patent. Nikken argues that the court improperly disregarded evidence presented in rebuttal and asserts that its evidence, including the patent, the accused insoles, magnetic viewing film, and expert testimony, sufficiently supports the jury's infringement finding. Nikken also challenges the court's claim construction, specifically the instruction that 'first and second areas of alternating magnetic polarity' mandates 'magnets of one polarity placed atop magnets of the other polarity.' Nikken claims this construction improperly limits the claim, contradicts the specification, and is physically impossible, as magnets inherently possess two opposite poles.

HoMedics counters that Nikken failed to demonstrate evidence for the 'first and second areas of alternating magnetic polarity' during its case-in-chief, thus not establishing a prima facie case of infringement. Furthermore, HoMedics defends the court's discretion in excluding rebuttal evidence during the JMOL motion and maintains the court's claim interpretation aligns with the specification. 

The summary agrees with Nikken, stating that the district court's claim construction was flawed. It notes that the proper interpretation of 'first and second areas of alternating magnetic polarity' should reflect that magnets inherently have two poles, and the claim does not necessitate that opposite polarities be stacked. Instead, areas of one polarity can be adjacent to areas of the opposite polarity, as illustrated in the patent's preferred embodiment. Ultimately, claim 4 requires areas of one polarity that share curved boundaries with alternating areas of the opposite polarity, rather than stipulating their vertical arrangement.

The district court's judgment as a matter of law (JMOL) that Nikken's curved insole products do not infringe claim 4 of the ’111 patent was found to be erroneous. The court incorrectly concluded that Nikken failed to provide evidence regarding the 'first and second areas of alternating magnetic polarity' limitation due to a restrictive interpretation of the claim. Nikken had sufficient evidence, including the accused products, magnetic viewing film, and testimony from Ronald Reagin, to support the jury's finding of infringement. 

The district court's error in claim construction did not affect the outcome, as the jury's finding of infringement under the narrower interpretation would still hold under a broader interpretation. The district court also did not fully assess evidence concerning the 'permanently magnetized portions' limitation after ruling on the first limitation. However, the evidence presented was adequate for a reasonable jury to conclude that the curved insoles possess 'permanently magnetized portions.' 

Thus, the appellate court reversed the JMOL regarding the curved insoles and reinstated the jury's infringement finding. 

In a cross-appeal, HoMedics challenged the denial of JMOL for straight insole products, arguing that they do not literally infringe claims 1 and 12 of the ’711 patent. HoMedics contended that the straight insoles lack a self-adhesive feature or attachment by a self-adhesive plaster, asserting that the district court’s interpretation of claim 1 was flawed. They claimed that the court did not fully construe claim 1, which, according to HoMedics, requires the insole itself to be self-adhesive, as the patent history disclaimed insoles that could use a self-adhesive plaster. HoMedics argued that the district court’s interpretation made the 'attachable to the skin with a self-adhesive plaster' limitation meaningless. Given a proper construction, HoMedics asserted that the straight insoles do not infringe claim 1.

Nikken contends that claim 1 does not necessitate a self-adhesive component and that HoMedics’ straight insoles are 'attachable to the skin.' However, it is emphasized that the district court misinterpreted claim 1, which should be read to mean that the sheet must be either 'self-adhesive to the skin' or 'attachable to the skin by a self-adhesive plaster.' The court noted that the straight insoles are not self-adhesive, leading to the critical inquiry of whether they can be 'attachable to the skin by a self-adhesive plaster.' A proper interpretation of 'attachable' requires that the magnetic sheet can independently attach to the skin using a self-adhesive plaster, rather than relying on external means for attachment. The court rejected any broad interpretation that would render the term 'attachable' meaningless. Additionally, the prosecution history of the patent plays a crucial role in defining its scope, particularly as the patent owner previously disclaimed devices not inherently self-adhesive or lacking self-adhesive plasters. Consequently, the claim cannot be construed to include items previously disclaimed. Ultimately, the court determined that the straight insoles do not meet the criteria established in claim 1, as they lack self-adhesiveness and any means of attachment through a plaster. Thus, it concluded that there could be no reasonable jury finding of infringement regarding the straight insole products under claim 1 of the ’711 patent.

HoMedics contends that claim 12 of the ’711 patent requires the application of a magnetized plastic sheet to the skin, arguing that merely placing straight insoles near the skin does not satisfy this requirement. They assert that the ordinary meaning of "applying it" denotes attachment rather than proximity, and this interpretation is supported by the prosecution history and the lack of distinction between claims during reexaminations. HoMedics also emphasizes that Nikken failed to provide evidence that the insoles were self-adhesive or used in conjunction with self-adhesive materials. In response, Nikken argues that the adhesive aspect is specific to claim 1 and should not apply to claim 12, asserting that sufficient evidence supports the jury's finding of infringement.

The court agrees with HoMedics, determining that "applying it" must refer to attaching the magnetized sheet to the skin, as the language following "a heat field for a therapeutic purpose" would otherwise be redundant. The court interprets "applying" to mean that the magnetized sheet must be in contact with the skin, consistent with the patent's specification, which describes instances of "sticking" the sheet to the skin. Consequently, the court concludes that the straight insoles do not infringe claim 12 because they are not affixed to the skin but merely placed in shoes.

Thus, the court reverses the district court's denial of judgment as a matter of law (JMOL), concluding that the straight insole products cannot infringe the ’711 patent. Additionally, Nikken challenges the district court’s finding that HoMedics’ infringement was not willful, citing evidence of HoMedics’ design copying, knowledge of the patents, and failed licensing attempts.

HoMedics challenges Nikken's claims of willful infringement, asserting that there is inadequate evidence to support the jury's finding of willfulness. HoMedics contends that Nikken's arguments regarding willfulness for the ’111 patent are not properly raised on appeal since the district court did not address this aspect in its judgment as a matter of law (JMOL) order. Following the reversal of the district court's JMOL denial regarding the ’711 patent, the willfulness issue concerning that patent is rendered moot. However, with the reinstatement of the jury's finding of infringement for the ’111 patent, the willfulness issue for that patent remains relevant.

Nikken provided evidence at trial indicating willfulness for both patents, which the jury affirmed. HoMedics sought JMOL to declare that any infringement of both patents was not willful, but the district court's JMOL ruling only addressed the ’711 patent, as it had previously found the ’111 patent not infringed. On appeal, Nikken argues that HoMedics’ infringement of both patents was willful. The court concludes that Nikken has appropriately raised the willfulness issue concerning the ’111 patent.

Evidence presented included HoMedics' knowledge of the ’111 patent, acquisition of Nikken’s product samples, the similarity of HoMedics’ insoles to the patent claims, and a delayed opinion letter from HoMedics concerning the patent. This evidence sufficiently supports the jury's finding of willful infringement by clear and convincing evidence. However, since the district court did not rule on the enhancement of damages due to willful infringement, the matter is remanded for that determination.

In conclusion, the court affirms that HoMedics' fabric wrap products do not infringe the ’111 patent, but reverses the ruling regarding HoMedics' curved insoles, reinstating the jury's finding of infringement for that patent. The court also reverses the denial of JMOL for the ’711 patent, stating that no reasonable jury could find infringement for the straight insoles. The court does not address the willfulness of the ’711 patent due to mootness but finds adequate evidence for the willfulness of the infringement of the ’111 patent and remands for a decision on enhanced damages. The ruling concludes with an affirmation in part, a reversal in part, and a remand in part.

The parties reached a stipulated summary judgment of noninfringement regarding defendants Ames Department Stores, Costco Wholesale Corp., and Pricesmart in the case Nikken USA, Inc. v. Robinsons-May, Inc. The judgment references the acknowledgment by physicists of the speculative possibility of natural magnetic monopoles. The district court derived the 'atop' requirement from a preferred embodiment and a specific figure in the patent's specification, which illustrates a polka dot magnetization pattern; however, these examples do not necessitate opposite polarities being stacked. This interpretation aligns with the court's determination that the term 'magnetizable' in claim 4 of the '111 patent implies the sheet must be capable of becoming a magnet. The court also correctly ruled that limitations from claim 1, such as 'self adhesive' and 'attaching,' should not be applied to claim 12, although utilizing the self-adhesive feature from claim 1 to affix a sheet to the skin is likely the intended application method.