768 F.3d 1196
Fed. Cir.2014Background
- Millipore owns the 543 patent, disclosing a device for introducing or withdrawing a sample with a closed system to avoid contamination.
- Claim 1 requires at least one removable, replaceable transfer member with a holder, a seal, a bellows-shaped portion, and a membrane portion; the seal attaches to the container to form a closed system.
- AllPure’s TAKEONE is an aseptic sampling device attached to the container exterior; when disassembled, the transfer member components separate from the seal.
- The district court granted summary judgment of no literal infringement, finding TAKEONE lacks a removable, replaceable transfer member and thus does not literally infringe.
- Millipore challenged the district court’s claim construction and argued disassembly could satisfy removal, while AllPure argued removal requires complete transfer-member components with a seal present.
- The court also addressed prosecution history estoppel, deciding it barred Millipore’s doctrine of equivalents arguments, though the outcome did not depend on this doctrine.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Literal infringement of removal? | Millipore contends TAKEONE’s disassembly permits removal of a transfer member. | AllPure argues removal requires a complete transfer member with seal; disassembly destroys the seal. | No literal infringement; TAKEONE lacks a removable, replaceable transfer member when disassembled. |
| Does disassembly qualify as removal for claim scope? | Disassembly may remove components from the magazine part, satisfying removal. | Removal must leave a complete transfer member with seal; disassembly breaks the seal. | Disassembly does not satisfy removal; a removable transfer member must include all seal components. |
| Prosecution history estoppel and doctrine of equivalents | Millipore could rely on equivalents for the transfer-member limitation. | Estoppel applies due to narrowing amendments during prosecution, precluding equivalents. | Prosecution history estoppel bars Millipore from asserting the doctrine of equivalents. |
Key Cases Cited
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (U.S. 1997) (basis for prosecution history estoppel and the doctrine of equivalents framework)
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (U.S. 2002) (presumption of estoppel and exceptions to it)
- AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374 (Fed. Cir. 2005) (equivalents require substantial similarity in function and way)
- Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008) (infringement on summary judgment; standard for fact-based questions)
- Bai v. L & L Wings, Inc., 160 F.3d 1350 (Fed. Cir. 1998) (infringement and equivalents as questions of fact; summary judgment possible)
- Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314 (Fed. Cir. 2011) (infringement on summary judgment—when no reasonable jury could find all claim limitations present)