The opinion of the court was delivered by: Trager, District Judge:
Spotless Enterprises, Inc. and Spotless Plastics Pty. Ltd. (together,
"Spotless"), manufactures of clothing hangers, brought this action
against Carlisle Plastics, Inc., now known as A&E Products Group, L.P.
("A&E"), for infringing certain claims of a patent held by Spotless. Both
parties now move for summary judgment as to the infringement claims. The
parties agree that the dispositive issue in this motion is the proper
interpretation of the term "parallel edges" in the Spotless patent.
The Patent and Trademark Office ("PTO") issued patent number 5,509,587
(the "'587 Patent") to Spotless on April 23, 1996. The '587 Patent was
issued for a clothing hanger invented by Spotless that was designed to
maximize display area for retail clothing stores (the "Spotless
Hanger"). The basic concept embodied in the '587 Patent is a hanger with
two upswept arms, which raise garments held by the hanger. Employed in
retail stores, this hanger offers a distinct advantage over a hanger with
straight or downward arms by allowing more garments to be displayed in
the same amount of vertical space.
At the time the '587 Patent was issued, the concept of a hanger with
upswept arms was not new to the industry. Hangers of this general type are
called "low profile" hangers. In fact, when Spotless presented an earlier
version of the Spotless Hanger to the Patent and Trademark Office in May
of 1994, it was rejected because the examiner deemed it to be obvious
from a previous patent, a hanger designed by DeVito. Zuckerman Decl.,
Ex. B, pp. s000319-21. The DeVito hanger, like the Spotless Hanger, shows
upswept arms extending from the hook. Silfin Decl. Ex. F. Consequently,
the examiner rejected the earlier patent application, stating that
"DeVito discloses a structure for a garment hanger including . . . first
and second upswept arms." Zuckerman Decl., Ex. B, p. s000319.
In order to overcome this rejection, Spotless amended the claims in its
patent application, emphasizing the fact that the arms of the Spotless
Hanger were divided into two parts. The first part of each arm, called
the "inner arm," extended horizontally from the hook, while the second
part of each arm, called the "upswept outer arm," extended upward from the
end of each inner arm. In this revised application, Spotless argued that
the horizontal inner arms distinguished the hanger from prior art,
specifically DeVito, in that it allowed promotional materials to be
displayed on the hanger. Id. at s000332. A retailer could display a
promotional card on the hanger by folding the card in half, passing the
hook of the hanger through a hole in the fold and resting the folded part
of the card on the flat inner arms of the hanger. Id. The arms on the
DeVito hanger, on the other hand, immediately curve upward from the
hook; thus, they do not provide any flat surface to support a promotional
card. Id. at s000332-33. The amendments in this revised patent
application, submitted to the PTO in June of 1995, id. at s000326, were,
nonetheless, insufficient to define over the prior art without one more
amendment. Id. at s000346.
Spotless and the examiner agreed to the substance of this final
amendment during a conversation on September 28, 1995. Id. at s000346.
The amendment altered Claims 1, 9, and 16 to include the requirement that
the horizontal inner arms and upswept outer arms have "first and second
parallel edges." Id. at s000348. Originally, the examiner had proposed
that the claims require "first and second parallel webs," but the word
"edges" was substituted, although it is not evident from the prosecution
history why this change was made. Wilczynski Decl., Exs. 8, 9. The webs
are molded plastic pieces that run along the body of the hanger for
structural support, appearing as the top and bottom portions of the body
in a cross-sectional drawing. See infra, Figs. 1-3.*fn1 For some
unexplained reason, the faxed proposal from the examiner containing the
words "parallel webs" and the subsequent proposal containing the words
"parallel edges" were not included in the prosecution history of the '587
Patent, although the claims were amended to include the "parallel edges"
language. After this amendment, the PTO allowed the claims, and the
hanger received patent number 5,509,587.
Included in the '587 Patent were three claims for slightly different
versions of the Spotless Hanger, Claims 1, 9, and 13.*fn2 In their final
form, these claims describe, in relevant part, the inner and outer arms
(b) a body member comprising first and second
horizontally opposing extending inner arm portions
with first and second parallel edges. . .
(c) first and second upswept arm portions with first
and second parallel edges. . .
Zuckerman Decl., Ex. A ('587 Patent).
The '587 Patent contains seventeen drawings, including front view, rear
view, cross-sections of the arms of the hanger, and right and left end
views. Id. None of the seventeen drawings, however, provides a view from
the top of the hanger looking down or from the bottom of the hanger
Different Dimensions, Inc. ("DDI") once offered a low profile hanger
known as the DDI 726 which was very similar to the Spotless Hanger.
Zuckerman Decl., ¶ 6. When Spotless received a patent for the its
'587 hanger, A&E, which had purchased DDI, was concerned that the DDI 726
may infringe the '587 Patent. Id. As a result, Alex Zuckerman, who was
president of A&E at the time, designed two new low profile hangers, known
as the DDI 344 and the DDI 345. Both the DDI 344 and 345 are known by the
model number 735 (the "735 Model"). Id. In an attempt to distinguish the
735 Model from the Spotless Hanger, the arms of the 735 Model have a
straight top web and a curved bottom web; thus, the top edge of the arm
and the bottom edge of the arm are not parallel. Id. The 735 Model is the
hanger design which Spotless alleges infringes the '587 Patent.
On April 22, 1998, after this litigation began, Spotless filed an
application to reissue the '587 Patent. The differences between the
original patent and the reissued patent all related to the definition of
the word "edges." Specifically, Spotless sought: 1) to alter two of the
cross-sectional drawings by adding labels to the front and back edges of
the webs; 2) to add a further description of the hanger in the
specification clarifying that these newly labeled edges must be parallel;
and 3) to include the omitted examiner proposals concerning the words
"parallel webs" and "parallel edges" in the prosecution history. The
examiner rejected the first application for reissue, finding, among other
things, that it was not necessary because the arms would "clearly
inherently" have parallel edges. Wilczynski Decl., Ex. 14, p. 3.
Spotless's second application for the reissue application was granted,
although there is no indication in the '873 Reissue prosecution history
as to how the examiner's concerns were alleviated. The patent was
reissued as Reissue Patent 36,873 (the "'873 Reissue"), Pl. Reply Mem.,
Ex. A. The claims themselves were not altered in any relevant way by the
'873 Reissue. Id.
The determination whether a product infringes a patent involves a
two-step process. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473,
1476 (Fed Cir. 1998). The district court must first interpret the
language of the claim, and, second, the properly interpreted claim must
be compared to the challenged product to determine if there is
infringement. Id. (citing Carroll Touch, Inc. v. Electro Mechanical
Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993)). The first question,
interpretation, is exclusively for the court to resolve. See Markman v.
Westview Inst., Inc., 517 U.S. 370, 116 S.Ct. 1384 (1996).
The parties agree that the only term that requires interpretation in
the present motion is the term "parallel edges." The parties further
agree that, with respect to the literal infringement claim, the
resolution of the first issue, i.e., the proper interpretation of the
term "parallel edges," will be dispositive as to the second.
When interpreting a term in a patent, a court must first look to the
intrinsic evidence. Bell & Howell Doc. Mgmt. Prods Co. v. Altek Sys.,
132 F.3d 701, 705 (Fed. Cir. 1997). This evidence includes the claims
themselves, the written description in the specification, the drawings in
the patent, and the prosecution history of the patent. Id. This evidence
is usually sufficient to interpret a term, and, if it is sufficient, it
is improper for a court to resort to extrinsic evidence. Id. at 705-06.
The first issue that must be resolved, therefore, is what consideration
to give the information in the '873 Reissue that was not included in the
'587 Patent. Spotless argues that, because the '587 Patent was
surrendered by Spotless when the PTO allowed the '873 Reissue, the latter
is the only patent before the court, and all additional information
contained in the '873 Reissue is intrinsic evidence.
To be sure, § 252 of Title 35 requires that "every reissued patent
shall have the same effect and operation in law, on the trial of actions
for causes thereafter arising as if the same had been originally granted
in such amended form . . ." See 35 U.S.C. § 252 (Supp. 2000). That
statute continues, however:
but in so far as the claims of the original and
reissued patents are identical, such surrender shall
not affect any action then pending nor abate any cause
of action then existing, and the reissued patent, to
the extent that its claims are identical with the
original patent, shall constitute a continuation
thereof and have effect continuously from the date of
the original patent.
The term "identical" has been interpreted by the Federal Circuit to
mean "without substantive change." Kaufman Co., Inc. v. Lantech, Inc.,
807 F.2d 970, 976 (Fed. Cir. 1986); Seattle Box Co., Inc. v. Industrial
Crating & Packing, Inc., 731 F.2d 818, 828 (Fed. Cir. 1984). Although
some minor changes were made to the claims in the '873 Reissue, the
parties agree that, for the purposes of this motion, no substantive
changes were made to the claims in dispute. Accordingly, it would seem
that the additional specification language, drawing labels, and
prosecution history in the '873 Reissue should not be considered at all.
After all, the statute clearly states that the surrender of the original
patent "shall not affect" any pending litigation, and the present
litigation was pending at the time the PTO allowed the '873 Reissue.
However, the language quoted above was added to protect the patent holder
by keeping alive any infringement claims based on the original patent in
the event that the patent was reissued during the litigation. Before the
enactment of § 252, such claims were dismissed for failure to state a
claim due to the fact that the original patent had been surrendered. See
Seattle Box, 731 F.2d at 827 (explaining history and purpose of §
252). Thus, the question becomes whether the language of § 252 also
protects the alleged infringer by preventing a patent holder from changing
the specification, drawings, or prosecution history after litigation has
commenced in order to bolster the patent holder's pending infringement
The answer to this question is apparently "no." The Federal Circuit has
held that the prosecution history of a reissued patent should be
considered in interpreting the language of the claims. See Howes v.
Medical Components, Inc., 814 F.2d 638 (Fed. Cir. 1987). In Howes, the
Federal Circuit reversed the district court for failing to consider the
prosecution history of a reissued patent, despite the fact that the patent
was reissued during the pendency of the lawsuit. Id. at 645-46; see also
E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430,
1439 (Fed. Cir. 1988) (finding that district court erred where it "seemed
to ignore arguments made during the reissue/reexamination proceeding"
when interpreting claims).
It would be troublesome, however, to find that A&E's 735 Model
infringes the '873 Reissue based on information that was not available to
A&E when it was designing the 735 Model. The purpose of requiring courts
to try to resolve patent infringement claims on the basis of intrinsic
evidence and to avoid, if possible, considering extrinsic evidence is
that competitors should be entitled to rely on the contents of the file
wrapper when attempting to design a product which does not infringe on
the patent. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
(Fed. Cir. 1996). This is precisely what A&E did, based on the original
'587 Patent. It would appear not only unjust, but also inconsistent with
the underlying policies of the patent law, now to base a determination
that A&E infringed the patent on information that was not part of the
public record at the time A&E designed the 735 Model, regardless of
whether that information substantively altered the claims of the original
patent. To do so would expose any subsequent inventor who seeks to improve
the art to the risk of paying substantial damages by the simple expedient
of allowing a patent holder to obtain a reissued patent and then use the
changes in that patent in a pending infringement suit in order to prevail
with its interpretation of a disputed term. See Stairmaster
Sports/Medical Prod. Inc. v. Groupe Procycle, Inc., No. Civ. 97-396
(MMS), 1998 WL 290296 (D. Del. May 20, 1998) (recognizing risk of
allowing patent holder to "self-servingly make a reissue declaration that
broadens the scope of the claims beyond what was intended by the inventor
when the initial patent was first filed").*fn3
This potential risk is balanced to a certain extent by the ability of
the court, in interpreting the claim, to take into consideration the
motivation for adding or altering the specification in a reissue applied
for during the litigation. Nevertheless, it is far from clear that new
information added to a patent by way of a reissue during litigation
should be given any substantial weight where that information was added
for the admitted purpose of "clarifying" the very term which is at the
center of the dispute between the parties.
Notwithstanding this concern, the Federal Circuit has been clear on the
point, and, accordingly, the '873 Reissue will be considered in full in
interpreting the term "parallel edges." In doing so, however, it must be
remembered that the first consideration in interpreting a claim is the
language of a claim itself. Neither the specification, DuPont, 849 F.2d
at 1433, nor the prosecution history, Markman v. Westview Instr., Inc.,
52 F.3d 967, 980 (Fed. Cir. 1995), aff'd 517 U.S. 370, 116 S.Ct. 1384
(1996), can be used to "enlarge, diminish or vary the ...