Intermatic Incorporated, Plaintiff-Cross v. The Lamson & Sessions Co., Intermatic Incorporated v. Lamson & Sessions Co.
Docket: 01-1028
Court: Court of Appeals for the Federal Circuit; December 16, 2001; Federal Appellate Court
The Federal Circuit case 273 F.3d 1355 involves Intermatic Incorporated as the plaintiff and The Lamson Sessions Co. as the defendant, concerning patent infringement and validity issues. The Lamson Sessions Co. appealed a district court ruling from the Northern District of Illinois, which denied their motion for judgment as a matter of law and for a new trial after a jury found in favor of Intermatic, determining that Lamson’s outdoor electrical outlet covers infringed on Intermatic's U.S. Patent 5,280,135. The district court also ruled that specific claims of the patent were not invalid due to obviousness.
Intermatic cross-appealed, challenging the exclusion of certain evidence regarding future damages and the denial of enhanced damages and attorney fees. Additionally, Intermatic contested a separate judgment in a subsequent infringement lawsuit, which found no infringement of the same patent concerning another line of Lamson outlet covers.
The Federal Circuit affirmed in part and reversed in part the district court’s decision in the first case (Intermatic I), while fully affirming the decision in the second case (Intermatic II). The '135 patent pertains to weatherproof electrical outlet covers designed to protect outdoor outlets, specifically accommodating various outlet types.
The '135 patent describes an outdoor weatherproof electrical outlet cover designed to protect outlets from weather elements while accommodating different outlet types. It features a base plate with an aperture, a removable insert, and a protective housing. The patent includes nineteen claims, with claims 2 and 19 not at issue in the current appeal. Three independent claims are relevant:
1. **Independent Claim 1** specifies a weatherproof outlet cover with:
- A base plate that connects weatherproof to the outlet, featuring an aperture that can accommodate the outlet in only one of two possible orientations at a time.
- An insert that fits within the base plate's aperture, tailored for one outlet orientation.
- A protective housing that encloses the outlet, even when a plug is inserted.
2. **Independent Claim 12** similarly requires an insert and a base plate with an aperture for multiple orientations.
3. **Independent Claim 14** was modified during reexamination and describes a weather-resistant outlet cover with:
- A base mounted around the electrical box that has an aperture.
- A housing pivotally connected to the base, providing moisture resistance in front of the electrical device.
- An insert that fits within the base's aperture and includes an aperture conforming to the electrical service device.
Claim 14 includes the "insert" limitation but omits the "multiple orientation" limitation. The patent illustrates a typical outlet cover comprising a base plate that accommodates various outlet styles, with the insert providing a secure, flush connection to protect the outlet from weather conditions.
The insert 14 can be oriented differently based on the type of electrical outlet it is meant to protect. The protective housing 16 is designed to cover a base plate 12, forming a closed space that accommodates an electrical outlet with at least one plug inserted. Lamson manufactures various weatherproof electrical outlet covers, each featuring a base plate, protective housing, and one or two inserts according to the outlet type. However, Lamson's outlet covers differ from the '135 patent in two main ways: (1) Lamson's inserts do not fit within the base plate's aperture due to ribs that outline the receptacle configuration, and (2) Lamson's covers are not designed to accommodate both horizontal and vertical outlets simultaneously.
Intermatic filed a lawsuit against Lamson for infringing the '135 patent, targeting specific Lamson products identified as "ribbed products." The district court interpreted the "insert within the aperture" requirement to mean the insert must fit within the aperture's outer dimensions, excluding the flange and raised ledge. The "multiple orientation" limitation was construed to include base plates that can accommodate outlets oriented 180 degrees apart. Based on this interpretation, the court granted summary judgment for Lamson regarding literal infringement but denied it concerning infringement under the doctrine of equivalents.
Following a jury trial, it was determined that Lamson's ribbed products infringed various claims of the '135 patent under the doctrine of equivalents, while dependent claims were found invalid due to obviousness. During the damages phase, the district court barred Lamson from introducing evidence of redesigned outlet covers (ribless products) as noninfringing substitutes and also restricted Intermatic from presenting future damages evidence.
The jury concluded that Lamson willfully infringed the '135 patent through the sale of ribbed products, resulting in an award of $12,500,000 to Intermatic for lost profits and price erosion. Both parties subsequently filed multiple post-trial motions. Lamson sought a judgment as a matter of law (JMOL) or a new trial, arguing that independent claims 1 and 12 should be deemed obvious based on the jury's findings regarding dependent claims 6, 9, and 11; that Intermatic's evidence for equivalence was insufficient; that Intermatic was not entitled to lost profits; and that evidence regarding Lamson's ribless products was improperly excluded. Conversely, Intermatic requested enhanced damages, attorney fees, and a JMOL asserting that claims 6, 9, and 11 were not obvious based on prior art. The district court denied Lamson's motions but granted Intermatic's JMOL regarding the non-obviousness of claims 6, 9, and 11. Following the judgment in Intermatic I, Intermatic filed a new lawsuit (Intermatic II) against Lamson for infringing ribless products, which had been excluded from the first trial. The court granted summary judgment for Lamson, ruling that Lamson did not literally infringe under the court's interpretation of "insert within the aperture" and that prosecution history estoppel precluded infringement under the doctrine of equivalents. Lamson appeals the denial of its JMOL concerning noninfringement and the grant of JMOL for claims 6, 9, and 11's non-obviousness, while Intermatic cross-appeals the exclusion of future damages evidence and the denial of enhanced damages and attorney fees, and challenges the summary judgment of noninfringement in Intermatic II. Jurisdiction is established under 28 U.S.C. 1295(a)(1). Summary judgment is appropriate when there are no genuine material facts in dispute, and the evidence is viewed in favor of the nonmovant. The standard of review for summary judgment and JMOL is de novo, focusing on whether there is a legally sufficient basis for the jury's findings. An appellant must demonstrate that the jury's conclusions lack substantial evidentiary support or that the legal implications of the verdict cannot be sustained.
A determination of patent infringement involves a two-step analysis: first, the court defines the scope and meaning of the asserted patent claims; second, the claims are compared to the allegedly infringing device. Literal infringement requires that every limitation of the patent claim is present in the accused device. However, infringement may also occur under the doctrine of equivalents, where each limitation is met either literally or equivalently. Claim construction is a legal issue reviewed de novo, while the determination of infringement is a factual question. Additionally, the applicability of prosecution history estoppel is a legal question also reviewed de novo.
In a dispute regarding the "multiple orientation" limitation in claims 1 and 12, Lamson argues that the district court incorrectly construed this limitation to include one hundred eighty-degree rotations of the insert, claiming it should only encompass a design that allows for both horizontal and vertical outlets using a symmetrical insert rotated ninety degrees. Intermatic counters that the claim language supports one hundred eighty-degree rotations and that claim differentiation principles prevent restricting the limitation to Lamson's interpretation. The court agrees with Intermatic, affirming that the district court's interpretation of the "multiple orientation" limitation is correct, as the terms should be given their ordinary meanings absent an express intent to define them otherwise. The claims require an aperture that accommodates the insert in two orientations without specifying the degree of rotation, allowing flexibility beyond the ninety-degree separation suggested by Lamson.
The specification supports a broad interpretation of the "multiple orientation" limitation, allowing for the insert to be positioned in multiple orientations to accommodate electrical outlets in both horizontal and vertical arrangements. This includes the possibility of a 180-degree rotation, which is necessary for outlets with asymmetrical plug receptacles. The examiner acknowledged that an insert could be positioned in two orientations that are 180 degrees apart, indicating that the 90-degree rotation proposed by Lamson is merely a preferred embodiment rather than a limitation.
Claim 3 of the '135 patent, which is dependent on claim 1, specifies that the aperture must be large enough to fit an outlet in both vertical and horizontal positions. According to the doctrine of claim differentiation, each claim in a patent is presumed to differ in scope, particularly in cases where the only substantive difference between claims relates to limitations that should not be read into an independent claim. Therefore, the district court's interpretation of the "multiple orientation" limitation, including 180-degree rotations, is upheld.
Regarding the "insert within the aperture" limitation, while Lamson's products were found to meet this requirement under the doctrine of equivalents, Intermatic argues that this limitation should be interpreted literally to include not just the "insert plate" but also the flange and raised ledge. Lamson contends that the district court's interpretation was correct in excluding these additional components, as the specification treats them as separate from the claimed "insert."
The district court correctly interpreted the "insert within the aperture" limitation to exclude the flange and raised ledge, as indicated by the patent specification, which clearly defines the "insert" as a distinct element that connects to, but is separate from, the flange and raised ledge. The specification articulates that the insert has a defined structure, and the district court's ruling that the insert must fit within the aperture is affirmed. Intermatic's claim that Lamson's ribbed outlet covers infringe the '135 patent is unconvincing; merely having a portion of the ribbed insert within the aperture does not satisfy the definition of "insert" as outlined in the patent. The insert must fill the void between the aperture and the electrical outlet, not just occupy space within the aperture. Consequently, the court affirmed that Lamson's ribbed products do not literally infringe the patent. Lamson also challenges the jury's consideration of whether its products infringe under the doctrine of equivalents, asserting that prosecution history estoppel prevents Intermatic from claiming that the ribbed portion meets the limitation of "insert within the aperture."
Intermatic argues that substantial evidence supports the jury's finding of equivalence regarding the ribs in Lamson's inserts, which perform the same functions as the "insert within the aperture" limitation, achieving similar weatherproofing results. Intermatic contends that prosecution history estoppel does not prevent its claim of equivalence, asserting that any estoppel applies only to reexamined claim 14. Originally, claim 14 required the "insert [to be] adapted to be mounted in the base," and it was not amended during initial prosecution. However, during reexamination, the claim was amended to require that the insert be "adapted to be accommodated within the aperture in the base" to overcome prior art rejections, leading to its allowance by the United States Patent and Trademark Office.
Due to the amendment made for patentability reasons, Intermatic is barred from obtaining any range of equivalents for the "insert within the aperture" limitation in claim 14. This equivalence bar also extends to all claims containing the same limitation. The legal principle is supported by the precedent in Builders Concrete, Inc. v. Bremerton Concrete Products Co., where the court ruled that prosecution history estoppel applies to claims with limitations added to avoid prior art, even if those claims were not amended themselves. The court emphasized that the prosecution history of all claims should be considered to determine the fair scope of any claim under review.
The court determined that prosecution history estoppel precluded the patentee from claiming equivalence between the accused structure and claim 10 of its patent due to a modification made to claim 1 to overcome prior art objections. This principle applies similarly to claim limitations narrowed during reexamination, indicating that any resulting estoppel affects all related claims containing that limitation, ensuring consistent treatment of identical terms across claims within the same patent. Arguments made during reexamination to distinguish prior art retroactively limit the scope of the claim as of the patent's issue date, not the date of the arguments. Therefore, the court rejected the notion that the timing of amendments influences the applicability of prosecution history estoppel, concluding that no claims were entitled to equivalence regarding the "insert within the aperture" limitation under the precedent set in Festo. The court found that Lamson's ribbed products did not literally satisfy this limitation, leading to a determination of noninfringement and an error in the district court's denial of Lamson's motion for judgment as a matter of law (JMOL). Additionally, since Intermatic did not claim that Lamson's ribless outlet covers literally infringed the patent and was not entitled to any range of equivalents, the district court correctly granted summary judgment that these covers did not infringe. Lamson's counterclaim for invalidity remains valid despite the noninfringement finding, requiring the court to address issues related to inconsistent obviousness verdicts.
Inconsistent verdicts in patent law are treated as procedural issues subject to the regional circuit's law, specifically the Seventh Circuit in this instance. The jury answered twenty-three special interrogatories regarding the obviousness of claims from the '135 patent. They found all independent claims not invalid for obviousness while determining dependent claims 6, 9, and 11 to be invalid. Upon Intermatic's motion for judgment as a matter of law (JMOL), the district court found a conflict between the jury's findings and resolved it by ruling that claims 6, 9, and 11 are also not invalid for obviousness. Lamson contended that the jury's incompatible verdicts warranted a new trial based on evidence of invalidity for all claims. However, Intermatic argued that the district court effectively utilized the jury's special interrogatory responses to clarify the conflict per Federal Rule of Civil Procedure 49(b). The Stone case cited by Lamson is distinguished as it applies only when verdicts are logically incompatible. Under Rule 49(b), a court facing inconsistent general verdicts with consistent special interrogatory answers has three options: return the jury for further consideration, order a new trial, or harmonize the verdict with the answers. In this case, the jury's responses indicated that prior art did not disclose an "insert within the aperture," a critical element of the independent claims. Consequently, dependent claims 6, 9, and 11, which include this limitation, are also deemed not invalid over the cited prior art.
The district court's decision to grant Judgment as a Matter of Law (JMOL) regarding the non-invalidity of claims 6, 9, and 11 of the '135 patent for obviousness was upheld. However, the court erred in denying Lamson's JMOL motion regarding noninfringement of ribbed products in Intermatic I. In Intermatic II, the court properly granted summary judgment of noninfringement for ribless products. Consequently, the ruling on Intermatic I is partially affirmed and reversed, while Intermatic II is affirmed.
The claims at issue share a common limitation expressed as "insert within the aperture," which both parties agree does not differ appreciably among them. A dissenting opinion argues against the majority's ruling that an unamended claim is barred from equivalency solely due to the amendment of a broader claim. The dissent emphasizes that traditional estoppel rules allow unamended claims to retain some equivalency, thus critiquing the majority for extending the absolute bar from the Festo case without sufficient justification, potentially undermining the doctrine of equivalents in patent prosecution.
