Patent Law

Off the Shelf

By Gary Odom and Jordan Kuhn

Saint-Gobain sought declaratory judgment of noninfringement and invalidity over refrigerator shelf patents owned by competitor Gemtron. Gemtron counterclaimed and ended up as plaintiff. The dispute came down to a single limitation in a single claim, over when the claimed invention had the glass panel shelf bottom snap into the frame. The answer: no set time.

Gemtron v. Saint-Gobain (CAFC 2009-1001) precedential

Claim 23 of 6,679,573, a continuation of 6,422,673, was the disputed claim.

Unlike prior art shelves that were constructed by bonding the edge of the glass panel to the frame using adhesive, the claimed shelf secures the glass panel in the frame using "relatively resilient" fingers so that the glass panel is "snap-secured" into place. Id. col.2 ll.42-47.

Saint-Gobain does not dispute that its accused refrigerator shelves meet all of the limitations of claim 23 except the limitation requiring that the frame have the claimed "relatively resilient end edge portion." S.J. Op. at 6. The district court construed the claim term "relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure" to mean that "the end edge portion is sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame." Id. at 2-3.

The only disputed claim term is "relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure." '573 patent col.8 ll.61-62. The district court construed this term to mean that "the end edge portion is sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame." S.J. Op. at 3 (emphasis added). Saint-Gobain argues that the term should have been construed to mean that "the end edge portion is sufficiently flexible to permit the glass in the finished product to be pushed out of the frame and pushed back into the frame." Br. for Defendant-Appellant Saint-Gobain Corp. at 25 (emphasis added). More particularly, Saint-Gobain argues that "relatively resilient" should not mean "temporarily resilient immediately after cooking in an oven and before any opportunity to cool." Id. at 26. Gemtron argues that the district court's construction was correct. The parties do not dispute that the "relatively resilient" limitation requires that the frame be flexible at some point in time. The dispute is about precisely when the frame must be flexible to satisfy the "relatively resilient" limitation.

Because neither party has identified any portion of the prosecution history or any extrinsic evidence bearing on the claim construction issues before us, we confine our analysis to the claim language and the specification. Looking first to the claim language, we note that claim 23 has no express temporal or temperature limitation requiring that the end edge portion be relatively resilient "always," or "at all temperatures," or "when in use in a refrigerator."

Like the claims, the specification focuses on the characteristics of the frame that enable snap-secure assembly of the claimed shelf... In fact, every time the structure of the "relatively resilient" edge portions is mentioned in the specification, it is in the context of a discussion of how that structure functions while the shelf is assembled.... There is no discussion in the specification of any purpose for or value of the "relatively resilient" structural characteristic of the end edge portions of the frame, other than to facilitate assembly of the shelf. This indicates that the end edge portions of the frame have the claimed structural characteristic--"relatively resilient"--if they are able to deflect at the time the shelf is assembled, to "snap-secure" the glass panel within the frame.

For these reasons, we affirm the district court's construction of "relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure" as used in claim 23 to mean that the end edge portion must be sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame.

Desperate thrashers in patent litigation always trot out some mangy dog of an argument in fond hopes of bamboozling the court. For Saint-Gobain, the ploy was to try to package the disputed limitation as product-by-process. The CAFC didn't bite.

Saint-Gobain argues that a construction requiring only that the frame deflect at the time that glass is being inserted into the frame during assembly transforms the "relatively resilient" limitation of claim 23 into a product-by-process limitation. We disagree. The limitation requires that the glass panel be "snap-secure[d]" in the frame. "Snap-secure[d]" describes the structural relationship between the glass panel and the frame, which is possessed by the claimed shelf because of the structural characteristics of the individual components. See, e.g., 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003) ("[E]ven words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense . . . ."); Hazani v. U.S. Int'l Trade Comm'n, 126 F.3d 1473, 1479 (Fed. Cir. 1997) (holding that claim is not product-by-process claim if it "describes the product more by its structure than by the process used to obtain it"); see also Garnero, 412 F.2d at 279 (noting that past-tense verbs such as "'intermixed,' 'ground in place,' 'press fitted,' 'etched,' and 'welded,' all . . . at one time or another have been separately held capable of construction as structural, rather than process, limitations."); Eric P. Mirabel, Product-By-Process Claims: A Practical Perspective, 68 J. Pat. & Trademark Off. Soc'y 3, 4-7 (1986). Defining a structural component by its functional as well as its physical characteristics is different from defining a structure solely by the process by which it is made. Our construction therefore does not transform the "relatively resilient" limitation of claim 23 into a product-by-process limitation.

The last gasp for Saint-Gobain was to wriggle for noninfringement because the accused product was made in Mexico. Never mind the law.

Claim 23 is directed to an apparatus--"[a] refrigerator shelf"--not a process. '573 patent col.8 l.32. Under 35 U.S.C. § 271(a), an accused infringer infringes an apparatus claim if it "makes, uses, offers to sell, or sells" the claimed apparatus "within the United States," or "imports [the apparatus] into the United States." Critically, it is the infringing act--making, using, offering to sell, selling, or importing--that must be within (or into) the United States. Even 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. See, e.g., In re N. Pigment Co., 71 F.2d 447, 456 (CCPA 1934) ("It has long been settled that articles patented in the United States cannot be manufactured abroad, imported, and sold in violation of the rights of the patentee.").

Affirmed. Patent valid and infringed.

Full post as published by The Patent Prospector on July 21, 2009 (boomark / email).