Federal Circuit Finds Infringement Even After Product No Longer Meets Claim Limitations At Final Sale
By Ezra Pinsky – Edited by Sarah Sorscher
Gemtron Corp. v. Saint-Gobain Corp., No. 2009-1001 (Fed. Cir. July 20, 2009).
On July 20th, the United States Court of Appeals for the Federal Circuit affirmed a district court (Western District of Michigan) decision to grant a permanent injunction against Saint-Gobain because their refrigerator shelves infringed on Gemtron’s patent. The district court held that the patent encompasses shelves that are “relatively resilient” and flexible “when glass is being inserted into the frame” and not only “in the finished product.” It therefore covered several types of Saint-Gobains shelves and the court granted a partial summary judgment of infringement against those particular models. In an ensuing trial, a jury found that several other Saint-Gobains models infringed on the patent as well. The court then entered judgment in favor of Gemtron and granted a permanent injunction against further infringement. Writing for the Court of Appeals, Judge Linn affirmed both the lower court’s grant of summary judgment and its permanent injunction.
Patent law blogs PatentlyO, The Patent Prospector, and Gray on Claims summarize the court’s opinion and reasoning. Barry Barnett at Blawgletter examines the question of how Saint-Gobain could have infringed the U.S. patent when the shelves met the claim limitations only during their assembly in Mexico.
This case revolves around the alleged patent infringement by several Saint-Gobains refrigerator shelf models. At issue is claim 23 of U.S. Patent No. 6,679,573, which is owned by Gemtron. Gemtron’s patented shelf frame is uniquely designed to “snap-secure” the glass in place with “a relatively resilient end edge portion which temporarily deflects and subsequently rebounds.” The district court understood these terms to mean that the “end edge portion” could deflect and rebound “when glass is being inserted into the frame,” which the Saint-Gobains models were capable of doing during the stages in their manufacture when they were still warm. The fact that the shelves were no longer able to snap into place at the time of their actual use did not remove the models from the patent’s terms. As a result, the court granted a permanent injunction against further infringement and denied Saint-Gobain’s motions for judgment as a matter of law.
The Court of Appeals considered three issues that were at the heart of Saint-Gobain’s appeal: the meaning of the patent’s terms, the district court’s granting of summary judgment and denial of Saint-Gobain’s motion for judgment as a matter of law on infringement, and the district court’s denial of Saint-Gobain’s motion for judgment as a matter of law on obviousness. The Court of Appeals reviewed each of these issues de novo.
In order to determine the meaning of the patent’s terms, the court considered how they would be “understood by a person of ordinary skill in the art at the time of the invention.” While Saint-Gobain argued that the patent should only cover shelves that are “sufficiently flexible to permit the glass in the finished product” to be pushed into and out of the frame, the court, based on the specific language in the patent, agreed with Gemtron’s understanding that “the claimed resilience of the frame need only be exhibited during assembly.” The “relatively resilient” requirement is not an element of the process, but rather a structural feature of the shelf. Therefore, the patented characteristic is present if it exists “at the time the shelf is assembled.” Since Saint-Gobain’s shelf frames contain this feature, the court affirmed the district court’s understanding of the terms. Additionally, the court rejected the assertion that this patent actually functioned as a “product-by-process limitation” since “‘[s]nap-secure[d]‘ describes the structural relationship between the glass panel and the frame” and not merely the method by which it was constructed.
In regards to the second issue, the court pointed out that there were “no genuine issues as to any material fact” between the two parties. Saint-Gobain’s only argument was that there was no infringement since the shelves were only “reasonably resilient” while in Mexico. Therefore, Saint-Gobain argued that they did not violate the patent once they were brought into the United States since they no longer contained that feature. The court highlighted 35 U.S.C. §271(a) and said that “[e]ven if an infringing product is manufactured outside of the United States, a person infringes if he imports the product, or uses, offers to sell, or sells it in the United States.” Since the Saint-Gobain shelf frames met the patent’s limitation when they were manufactured, they violated the patent when the company ultimately sold them in the United States.
Finally, the court addressed the patent’s validity and Saint-Gobain’s appeal for a new trial on obviousness. The court first points out that Saint-Gobain did not try to exclude Gemtron’s expert testimony on the design’s “nonobviousness” at trial and they therefore could not do so later. The court then explains that the testimony did not, in fact, contradict the patent’s terms. Therefore, the motion for judgment as a matter of law was appropriately denied.
As a result of these considerations, the Court of Appeals affirmed the district court’s decision and agreed with their grant of a permanent injunction against further infringement.