Docket No. 2014-1140
PROST, O’MALLEY, HUGHES
September 29, 2014
Brief Summary: DC decision of no infringement affirmed because there was no literal or DOE infringement. In addition, the FC panel concluded that, due to amendments made by Millipore, in response to a rejection, the DC “should have proceeded under the presumption that [PHE] applies” which would have placed the burden of rebuttal (Festo, FC 2003) on Millipore.
Summary: Millipore appealed DC grant of SJ to AllPure that it does not infringe US 6,032,543 relating to a device for introducing or withdrawing a sample from a container holding a fluid without contaminating the fluid. The DC found AllPure’s device “neither literally contains the claimed ‘removable, replaceable transfer member,’” or “provide an infringing equivalent”, and that prosecution history estoppel (PHE) “prevents Millipore from asserting the doctrine or equivalents”. The FC panel affirmed the DC decision. The claims require “at least one removable, replaceable transfer member…comprising a holder, a seal for sealing said aperture, a hypodermic needle having a tip…the seal [having] a first end comprised on a bellows-shaped part sealingly attached to said holder, and a second end comprising a self-sealing membrane portion interiorly formed at an end of said bellows part”. The parties did not disagree over the DC’s claim contstruction but disputed the meaning of the term “removed”. Citing a standard dictionary, the DC defined “remove” to mean “to move…by taking away or 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; ‘the former implies movement or separation of something as a whole, whereas the latter implies deconstruction.” AllPure argued that in order for its alleged “removable and replaceable transfer member”, its device must be disassembled. The FC concluded that “[i]f a transfer member does not exist when the device is disassembled, as even Millipore’s counsel admitted, then there is no genuine issue of material fact over whether” the device contains that member. The DC also concluded that DOE did not apply because the alleged “transfer member(s) of [AllPure’s] device do not serve the same function or function in the same way” as that claimed (AquaTex, FC 2005). AllPure argued that the DC should not have considered DOE due to PHE. The FC panel agreed with AllPure because Millipore “added the requirement that the seal have a first and second end with distinct elements”, which “narrows the seal limitation, which in turn narrows the transfer member limitation”, to overcome a rejection. The DC, therefore, should have proceeded under the presumption that [PHE] applies” which would have placed the burden of rebuttal (Festo, FC 2003) on Millipore. While this issue was discussed, it did “not change the outcome…as the district court still proceeded to grant summary judgment of no infringement under the doctrine of equivalents on the merits.”