Gemtron v. Saint-Gobain (Fed. Cir. 2009)
The Michigan-based district court found that Saint-Gobain’s refrigerator shelves infringe Gemtron’s patent No. 6,679,573 and awarded a permanent injunction against further infringement. The shelves were unique – primarily because the glass panel shelf securly snaps into its plastic frame rather than being held by adhesives. The claims required the plastic fram to be “relatively resiliant” so that the glass could snap into place.
The claim construction issue was interesting because it focused on timing. Saint-Gobain’s plastic frame was resiliant while still warm immediately after forming. However, it quickly hardened and became brittle afterward. The accused infringer argued that the limitation “‘relatively resilient’ should not mean ‘temporarily resilient immediately after cooking in an oven and before any opportunity to cool.’”
On appeal, the Federal Circuit affirmed – finding that the purpose of the resiliance (to install the glass panel) “suggests that the claimed resilience of the frame need only be exhibited during assembly.”
There is no discussion in the specification of any purpose for or value of the “relatively resilient” structural characteristic …, 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.
Affirmed.
- Note: The permanent injunction was affirmed without comment.
“Properly construed, the “relatively resilient” limitation requires no more than that the frame of the claimed shelf has the structural characteristic of having been temporarily deflected and subsequently rebounded to snap-secure the glass at the time of manufacture.”
That’s funny, in the quotation below I didn’t realize it was proper to construe “s”‘s as “ed”‘s.
“which temporarily deflects and subsequently rebounds”
Don’t worry though, they’ll be back in the saddle shortly. If the lawyers had actually helped them out better they probably wouldn’t have gotten this wrong in the first instance.
“One wonders, whether the ruling in Gemtron provides a way for others to avoid the restrictions of § 271(g) if its possible to effectively cast a process step as a functionally recited structural characteristic.”
I wouldn’t worry about it bob, the specific language of this claim just threw otherwise good judges for a loop. They’ll be back in the saddle before you know it. Everyone makes mistakes, and this one was a tough call.
23. (at issue)
A refrigerator shelf comprising a one-piece open frame made of substantially homogeneous polymeric/ copolymeric molded synthetic material and a piece of glass closing an opening defined by said frame; said open frame having opposite substantially parallel side frame portions and opposite substantially parallel front and rear frame portions; said glass piece having opposite substantially parallel side edges and opposite substantially parallel front and rear edges; said side, front and rear frame portions being substantially contiguous to said respective side, front and rear edges; each of said side frame portions being defined by an upper wall, a side wall depending from each upper wall and a lower wall projecting from its side wall toward an opposite side wall with the opposing lower walls being spaced from each other and each defining with an associated upper wall a glass piece side edge-receiving channel, each upper wall and lower wall having a terminal free edge, said glass piece side edges being spaced a predetermined distance from each other, said upper wall terminal free edges being spaced a predetermined distance from each other, said lower wall terminal free edges being spaced a predetermined distance from each other, the predetermined distance of the glass piece side edges being appreciably greater than the predetermined distance of said upper wall edges and only slightly greater than the predetermined distance between said lower wall terminal free edges whereby said glass piece side edges are captively retained in said glass piece side edge-receiving channels, and at least one lower wall of at least one of said front and rear frame portions including a relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure one of said glass piece front and rear edges in the glass piece edge-receiving channel of said at least one front and rear frame portion.
Now, RA, up until this point I haven’t actually said that the relatively resistant language in this claim was a problem, but was merely commenting in general.
I will go further to say that defining what a “relatively resilient” edge functions to do doesn’t necessarily help it out of 112 issues.
In this particular claim, I, for one, still do not know how resilient the edge is. I know one of its functions as described by the subsequent method step limitation (another issue).
Something about this decision does indeed smell fishy.
Personally I would have gone with “resilient” in my claim. There’s a 100% chance that it would not have affected the allowability of the claim, is a broader limitation, and avoids the litigable matter we are discussing.
“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.”
Whilst having no opinion on the validity of this claim, I can say that the above is 100% bs. Or at least it would be in prosecution before you get to enjoy the presumption o validity.
However, if one were, for some odd reason, to define the claim term as the DC did, the rest of the decision would be proper as written.
Bottom line is this. The edge is relatively resilient to an unknown edge, this alone is enough to make sure the resiliency requirement is unknowable, by anyone, be they of ordinary skill, infinite skill, no skill, or any skill in between. Furthermore, the fact that the edge piece must also possess properties (resiliency, form fittingness, not being overly adhesive (so that it doesn’t fail to temporarily reflect), etc. etc in order to perform the method step temporarily deflecting and rebounding to snap secure is not sufficient to tell that skilled or unskilled person the actual benchmark. That method step establishes at least one condition that the benchmark which the resiliency must be must match, but doesn’t fully resolve what the benchmark actually is, as there could be additional requirements. It could very well be required to be a number which is much higher than the requirement to perform that method step, but nobody will ever know, because we don’t know what edge the recited edge’s resiliency is relative to.
However, from what we know of the arguments presented by Saint-Gobain they would appear to have been insufficient to explain to the court why the term should be considered indefinite.
“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.”
That should never be an argument in a product case. Never. So long as the product existed in the state specified by the claim, at any point in time, it meets the claims limitations. If the court even went down this road it would be an admission that the process limitations in the claims are another very real issue. I think the court goes on to say that this isn’t a very real issue, because the argument is moot since it isn’t a process limitation.
““held capable of construction as structural, rather than process, limitations”).”
I agree, but this limitation doesn’t mention “capable” or anything of the sort. It mentions that it DOES something, not that it CAN do something. There is a difference, and just because the latter is implicit in the former doesn’t mean that you can ignore the former being present. At least for this reason alone, their analysis is a bit off in this case.
“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.”
Perfectly legitimate. If SG’s lawyers can’t be bothered to bring the issue before the court then let them suffer.
“The use of the phrase “temporarily deflects and subsequently rebounds to snap-secure” suggests that the claimed resilience of the frame need only be exhibited during assembly.”
That’s absolutely right, but does it suggest what the actual claimed resiliency is? No, it does not.
Michel, Schall n Linn must have been hitting the town pretty hard and had a rough morning before deciding this case. Three of our best tiptoeing along the sidelines of the road to the dark side. I have to admit though, even though SG failed to make its case with flying colors, the facts of the case tell the real story and the court could have looked there.
Paul, I think petitions under 37 CFR 1.181(a)(3) would be just as effective. They too go to the Group Director to get the matter addressed, at least in past experience.
Re the above question [about applications are being held up for years by proveable completely unreasonable examiner or SPE conduct]: I have often wondered why there is not more use of [filing a complaint under] the Administrative Procedure Act (5 U.S.C. §§ 551-559 and 701-706)? If well founded and done effectively that can get the attention of the PTO Solicitors Office to go to the Group Director to get the matter addressed, or otherwise settle the issue.
I found the court’s dismissal of the accused infringer’s territorial argument to be logically inconsistent with other portions of the opinion, and perhaps the most troubling aspect of the opinion.
As a general rule, “[i]nfringement of product claims by an imported product requires that the product be viewed in the form in which it is present within the United States.” Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1350 (Fed. Cir. 2001). The accused infringer argued in Gemtron that it manufactured the accused product in Mexico, and by the time the product had been imported into the United States the shelf assembly had cooled such that the frame no longer displayed the resilient characteristic. Thus, it contended that a product meeting all the claim limitations had never existed “within the United States” as required under § 271(a). See generally, Matthews, Annotated Patent Digest § 10:21 Infringing Act Must Occur “Within In the United States.” [hereinafter APD].
In rejecting the argument, the Federal Circuit rationalized that the product imported into the U.S. had a structure that had “BEEN temporarily deflected and subsequently rebounded to snap-secure the glass at the time of manufacture.” Slip Opn at 14, 2009 WL 2137154 at *8. (emphasis added) The court found that the accused product in its imported form met all the claim limitations since “[t]he end portions of the frames of the accused shelves are ‘relatively resilient,’ as that phrase is used in claim 23, in that they WERE temporarily deflected and subsequently rebounded when glass was being inserted into the frame during assembly.” Id. (emphasis added).
The court’s analysis, at least at first blush, appears inconsistent. In one portion of the opinion the court expressly holds that its construction of the “relatively resilient” limitation, and specifically, that the glass panel be “snap-secured” in the frame, did not transform the limitation into a product-by-process limitation, id. at p. 11, 2009 WL 2137154 at *6. But the court then finds that the imported product infringed because in its imported form the frame had previously been subjected to a processes whereby it was temporarily deflected and then snapped back to secure the plate. Notably no evidence had been introduced that subjecting the frame to the deflecting/snap-back process somehow altered the structural makeup of the frame such that structurally a frame subjected to the process was different from a frame that was not subjected to the process.
Typically, to prove liability for importing or selling in the U.S. a product that had been made abroad by a process patented in the U.S., a patentee must rely on 35 U.S.C. § 271(g). See generally, APD § 10:101 Importing Under § 271(g). [The law has not yet addressed whether § 271(g) applies to product-by-process claims. So whether 271(g) would have applied if the claim had been treated as being a product by process claim is an open issue.] Section 271(g) contains some significant limitations including that the infringing component must not “become[] a trivial and nonessential component of another product.” See generally, APD § 10:111 Overview of “Trivial and Nonessential Component.”
One wonders, whether the ruling in Gemtron provides a way for others to avoid the restrictions of § 271(g) if its possible to effectively cast a process step as a functionally recited structural characteristic.
Doesn’t anybody see a difference between product claims that recite features of starting materials and production steps that are undetectable in the final product, and those that are perfectly identifiable in the finished product. Compare “a capacitor anode made from tantalum powder with a specific surface area of blahdiblah and sintered, in an atmosphere of whoopsadaisy, at 1200 to 1400°C” with “an injection molded widget”. Here, it was immediately apparent from the accused shelf product that the plastic rim has been sprung on to the glass plate, so why should that claim feature not be accepted as a legitimate and clear “product feature” free of 112 worries? Seems to me though that obviousness ought to have brought down the claim, and would have done so, had this action started now, and not prior to KSR.
Quoting the court, 6K:
The full expression recited in the claim calls for a frame with a “relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure one of [the] glass piece
front and rear edges in the glass piece edge-receiving channel.”
The actual claim is better than your fine examples. :-)
“What if the specification defined “relatively resilient” as sufficiently flexible to allow installation of the shelving without breaking or significant deformation?
What if the claim recited this definition?”
Both of those are probably fine.
“6 – how would you feel about “substantially resilient”?
How about just “reslient” alone? ”
I have to put up with the first one since we “know what you mean” supposedly, at least in most instances. The second one probably isn’t bad, it is just really broad.
6 – how would you feel about “substantially resilient”?
How about just “reslient” alone?
What if the specification defined “relatively resilient” as sufficiently flexible to allow installation of the shelving without breaking or significant deformation?
What if the claim recited this definition?
“relatively resilient”
I have 0 patience with people using terms that define their invention IN RELATION to another device which is unspecified in the claim (might make an exception if the device the features is relative to is in the spec, maybe). 112’s all around.
“Can you give us an example of a Fed Circuit case that you agree with where the patent was found to be valid and infringed? I’m curious if any exist.”
In every single case where infringement is appealed to the Fed Cir, it *should* be found noninfringement. This is because, if a case is close enough for parties to take it all the way the to Fed Cir, the claims/patent are either ambiguous or being overzealously litigated. If the court stayed true to proper claim interpretation, 112, and 103, each of these close cases would be noninfringement. The only instances of true, legal infringemnt and validity are so clear cut that they never get litigated. So to answer your question, no.
How’d I do, MM?
“Whether it is constructed such that it deflects or not is a structural feature.”
Well, yes, we do disagree. Rather than argue about whether it is a “structural feature” it would probably best to ask whether the “feature” was claimed *functionally* or *structurally*, i.e., is it claimed in a matter that describes it’s structure (which would inherently capture its function, if properly claimed) or is it claimed in a mattter that describes its function (which would capture a broader scope of structures and should be accompanied by a broader disclosure of materials, particularly if such function is deemed to be a key “feature” of the invention)?
I think “able to deflect at the time the shelf is assembled” is a quintessential example of fuctional claiming. And unfortunately for the American public, including small and large businesses competing in this field, the claim term “relatively resilient” was not even defined as such in the specification. It had to be inferred.
This is a form of patent idolatry, enabled by the erosion of the definiteness standard under 35 USC 112.
Mooney,
Can you give us an example of a Fed Circuit case that you agree with where the patent was found to be valid and infringed? I’m curious if any exist.
“The ability “to deflect at the time the shelf is assembled” is not a structural characteristic. It’s a functional characteristic.”
I disagree, Malcolm. Whether it is constructed such that it deflects or not is a structural feature.
Now whether there is a definiteness problem is another issue.
Fed. Circuit: “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.”
The ability “to deflect at the time the shelf is assembled” is not a structural characteristic. It’s a functional characteristic.
Crap patent. Crap decision. Almost as crappy as the chicken dipping patent, but not quite.
Composition claims are nice to have. But terms like “relatively resilient”, if they are not expressly defined in the specification, have no place in a patent claim. If the attorney or agent drafting the application is incapable of claerly and objectively describing the composition, as was the case here, then perhaps a method claim should be used.
“There is no discussion in the specification of any purpose for or value of the “relatively resilient” structural characteristic …, other than to facilitate assembly of the shelf.”
Assembling a shelf is a method, not a composition. Maybe the Federal Circuit just wants to give the Supremes an excuse to rip ’em a new one with Bilski.
Wasn’t there a fairly recent case discussion of another (distinguishable) situation in which product infringement could only occur by an unintended and abnormal use of the product?
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