The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending October 3, 2014. David Frist and Ross Barton prepared this edition.
Infringement: Literal Infringement
Infringement: Doctrine of Equivalents: Prosecution History Estoppel: By Argument
EMD Millipore Corp., et al. v. Allpure Technologies, Inc., No. 14-1140 (Fed. Cir. (D. Mass.) Sept. 29, 2014). Opinion by Prost, joined by O’Malley and Hughes.
In affirming the U.S. District Court for the District of Massachusetts’s grant of summary judgment of noninfringement, the Federal Circuit concluded that the accused device did not literally infringe, and prosecution history estoppel barred an argument under the doctrine of equivalents.
EMD Millipore Corporation, Merck Chemicals and Life Science AB, and Millipore SAS (collectively “Millipore”) owned the rights to U.S. Patent No. 6,032,543 (“the ’543 patent”), which is directed to a device for introducing or withdrawing a fluid sample from a container without contaminating the fluid. Millipore sued Allpure Technologies, Inc. (“Allpure”), alleging that Allpure’s TAKEONE device infringed the ’543 patent.
The district court construed the phrase “removable, replaceable transfer member” to mean “at least one transfer member that can be removed from the magazine part of the device and replaced with at least one removable, replaceable transfer member.” The district court also explained that “remove” means “to move . . . by taking off” or “to put aside, apart, or elsewhere,” and noted that “[t]ake off” and “put apart” are significantly different from “take apart” or disassemble. Based on these constructions, the district court granted summary judgment of noninfringement because the TAKEONE device did not include a “removable, replaceable transfer member” or its equivalent.
On appeal, Millipore argued that the district court misapplied its own construction because, when the TAKEONE device is disassembled, all components are still removed. The Federal Circuit, however, determined that the device did not literally infringe because the transfer member did not exist when the device is disassembled.
Millipore also argued that the district erred in granting summary judgment of noninfringement under the doctrine of equivalents. In response, Allpure argued that the district court should not have even considered the doctrine of equivalents because prosecution history estoppel barred such a claim. The Federal Circuit agreed with Allpure, noting that the disputed term was subject to a narrowing amendment and, as such, there exists a presumption that the reason for the amendment was a substantial one relating to patentability. Because Millipore did not rebut that presumption, the Federal Circuit concluded that the district court was not required to perform a doctrine of equivalents analysis. Because prosecution history estoppel barred a claim under the doctrine of equivalents and the TAKEONE device did not literally infringe, the Federal Circuit affirmed the grant of summary judgment
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