BASF AGRO B.V., ARNHEM (NL), WADENSWIL BRANCH et al v. MAKHTESHIM AGAN OF NORTH AMERICA, INC. (MANA) et al
Filing
237
AMENDED MEMORANDUM OPINION AND ORDER signed by JUDGE WILLIAM L. OSTEEN JR. on 1/11/12 that Defendants' Modified Motion for Summary Judgment Based on Non-Infringement (Doc. 188 ) is GRANTED and Counts II and III of Plaintiffs' Complaint (Doc. 1 ) are DISMISSED WITH PREJUDICE. A judgment dismissing Counts II and III of Plaintiffs' Complaint with prejudice will be forthcoming. (Wilson, JoAnne)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
BASF AGRO B.V., ARNHEM (NL),
WADENSWIL BRANCH, BAYER S.A.S.
Plaintiffs,
v.
MAKHTESHIM AGAN OF NORTH
AMERICA, INC. (MANA),
CONTROL SOLUTIONS, INC.
Defendants.
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1:10CV276
AMENDED MEMORANDUM OPINION AND ORDER
OSTEEN, JR., District Judge
Presently before the court is Defendants’ Modified Motion
for Summary Judgment Based on Non-Infringement (Doc. 188).
Defendants Makhteshim Agan of North America, Inc. (“MANA”) and
Control Solutions, Inc. (“CSI”) have filed a brief in support of
the motion (Doc. 189).
Plaintiffs BASF Agro B.V., Arnhem (NL),
Wädenswil Branch (“BASF”) and Bayer S.A.S. (“Bayer”) have filed a
response in opposition (Doc. 195), and Defendants have filed a
reply (Doc. 211).
Further, this court held a hearing regarding
the motion on October 20, 2011.
Defendants’ modified motion for
summary judgment is now ripe for adjudication, and for the
reasons set forth herein, this court will grant the motion.
I.
BACKGROUND
Plaintiffs BASF and Bayer brought this patent infringement
action, alleging that Defendants MANA and CSI will infringe
United States Patent Nos. 6,414,010 (“the ‘010 patent”) and
6,835,743 (“the ‘743 patent”), in violation of 35 U.S.C. § 271.
Inventor Yasuo Kimura (“Mr. Kimura”) acquired the ‘010
patent in 2002 and the ‘743 patent in 2004.
Both patents are
entitled “Pesticidal Pyrazoles and Derivatives,” and both teach a
method of using certain insecticidal compounds in order to
protect a building or future building against damage caused by
insects.1
Bayer is the assignee and owner of both the ‘010
patent and the ‘743 patent (collectively, “the Kimura patents”),
and BASF is the exclusive licensee of the Kimura patents in the
United States with respect to the insecticidal compound Fipronil.
(See Compl. (Doc. 1) ¶¶ 13, 15.)
Defendants MANA and CSI sell an insecticidal compound
containing Fiprionil (“Taurus SC”) which utilizes application
instructions (or “method-of-use” instructions) which generally
require application of an exterior perimeter treatment and a
localized interior treatment.
In summary, Plaintiffs contend
that the instructions on Taurus SC infringe the Kimura patents or
induce infringement of the Kimura patents.
1
It is undisputed that the ‘743 patent is a divisional
patent with the same priority date and specification as the ‘010
patent. (See Markman Hr’g Tr. (Doc. 148) at 10-11.)
2
Neither party disputes the content of the application
instructions for each of their respective Fipronil products.
Defendants’ Taurus SC EP/LI instructions are of particular
significance to this order, and those instructions state in part:
“This treatment method is designed to be non-invasive to the
interior of the structure with the establishment of a continuous
treated zone along the exterior of the foundation and only
treating interior spaces where termite activity has been found.”
(Defs.’ Br. Supp. Modified Mot. Summ. J. Ex. I (Doc. 189-9) at 10
(emphasis added).)
The “Exterior Perimeter Treatment” portion of
the EP/LI instructions states further: “To prevent termite
infestation of a structure, exterior perimeter applications of
Taurus SC must be made in a manner which will create a continuous
treated zone.”
(Id. (emphasis added).)
Moreover, the EP/LI
instructions repeatedly call for the establishment of a
“continuous treated zone” along the exterior of the structure, or
a “complete exterior perimeter treatment zone.”
2
(Id. at 10-12.)2
With respect to future buildings, the “Pre-Construction
Treatment” portion of the Taurus SC instructions states, in
pertinent part: “For an exterior perimeter pre-construction
treatment, Taurus SC must be applied in such a way as to create a
continuous treated zone along the exterior foundation of the
structure.” (Defs.’ Br. Supp. Modified Mot. Summ. J. Ex. I (Doc.
189-9) at 6 (emphases added).) That portion of the instructions
goes on to direct: “Refer to the [EP/LI] section of this label
for instructions on applications to the exterior perimeter of a
structure and to critical areas in the interior of the
structure.” (Id.) Thus, with regard to future buildings, the
Taurus SC instructions incorporate the EP/LI section’s
requirements of a “continuous treated zone” along the exterior of
3
Based on their repeated directions to create a “continuous
treated zone” along the exterior of the structure, this court
finds that Defendants’ EP/LI instructions require application of
insecticide in a continuous treated zone, without loopholes,
around a building.
Plaintiffs do not contend that the Taurus SC exterior
perimeter instructions, standing alone, infringe the patents at
issue in this case.
Instead, it is the Taurus SC
“Localized
Interior Treatment” portion of Defendants’ EP/LI instructions
that leads to the alleged infringement of the Kimura patents.
The Taurus SC “Localized Interior Treatment” instruction directs:
As part of a complete treatment, targeted interior
applications may be made to vulnerable areas such as
around plumbing or utility services penetrating floors,
bath and/or shower traps, or along concrete expansion
joints or settlement cracks.
If know [sic] termite activity exists in areas inside
living spaces or in non-living spaces (such as crawl
spaces, plenums etc.) of the structure, a localized
interior treatment must be made at the immediate
vicinity of the termite activity and radiating out at
least 2 feet from the site in two or more directions.
(Defs.’ Br. Supp. Modified Mot. Summ. J. Ex. I (Doc. 189-9) at
12.)
This language implies that a “continuous treated zone” is
unnecessary on the structure’s interior and the formation of
discrete untreated locations is acceptable.
Plaintiffs assert
that these instructions constitute, or induce, infringement of
the structure, or a “complete exterior perimeter treatment zone.”
(Id. at 10-12.)
4
the Kimura patents, as the asserted claims of the Kimura patents
specifically teach the purposeful formation of “untreated
locations.”
(See e.g., Compl. Ex. B (Doc. 1-3) at 5, col. 5, l.
58.)
Plaintiffs assert that Defendants, through the Taurus SC
application instructions, will infringe claims 1, 2, 6, 8, 9, 10,
18, 19, 21, and 23 of the ‘010 patent and claims 1, 2, 5, 6, 7,
and 14 of the ‘743 patent.
at 2.)3
(Joint Pre-Hr’g Statement (Doc. 133)
This court has already construed the disputed terms of
the Kimura patents in an order entered on June 30, 2011 (“Markman
Order”) (Doc. 183).
II.
LEGAL STANDARD
Summary judgment is appropriate where an examination of the
pleadings, affidavits, and other proper discovery materials
before the court demonstrates that no genuine issue of material
fact exists and that the moving party is entitled to judgment as
a matter of law.
See Fed. R. Civ. P. 56.
The moving party bears
the burden of initially demonstrating the absence of a genuine
issue of material fact.
323 (1986).
Celotex Corp. v. Catrett, 477 U.S. 317,
If the moving party has met that burden, then the
nonmoving party must persuade the court that a genuine issue
remains for trial by “go[ing] beyond the pleadings” and
3
All citations in this Order to documents filed with the
court refer to the page numbers located at the bottom right-hand
corner of the documents as they appear on CM/ECF.
5
introducing evidence that establishes “specific facts showing
that there is a genuine issue for trial.”
Id. at 324 (internal
quotation marks omitted).
In considering a motion for summary judgment, the court is
not to weigh the evidence, but rather must determine whether
there is a genuine issue for trial.
Inc., 477 U.S. 242, 249 (1986).
Anderson v. Liberty Lobby,
The court must view the facts in
the light most favorable to the nonmovant, drawing all
justifiable inferences in that party’s favor.
Id. at 255.
A
mere factual dispute is insufficient to prevent summary judgment;
the fact in question must be material, and the dispute must be
genuine.
Fed. R. Civ. P. 56; Anderson, 477 U.S. at 247-48.
Material facts are those facts necessary to establish the
elements of a party’s cause of action.
248.
Anderson, 477 U.S. at
A dispute is only “genuine” if “the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.”
Id.
III. ANALYSIS
In support of their motion for summary judgment, Defendants
argue, inter alia, that the accused label for Defendants’ Taurus
SC product instructs users to apply that product in a manner that
was disclaimed during prosecution of the Kimura patents.
Br. Supp. Modified Mot. Summ. J. (Doc. 189) at 15.)
(Defs.’
Because Mr.
Kimura disclaimed that application method, Defendants contend,
6
the Taurus SC label does not infringe, or induce infringement of,
the Kimura patents.
(Id. at 15-16.)
Plaintiffs argue that Defendants’ Taurus SC label instructs
users to practice the Kimura patents’ invention and merely adds
prior art to that invention.
(Pls.’ Br. Opp’n Defs.’ Modified
Mot. Summ. J. (Doc. 195) at 10-11.)
Plaintiffs’ argument is
premised upon their belief that the claims of the Kimura patents
are open-ended “comprising” claims and that “the addition of
elements or steps to [such a] claim is still an infringement.”
(Id. at 11.)
Each of the asserted claims of the Kimura patents contains
in its preamble, or depends from a claim whose preamble contains,
the phrase “comprising the steps of.”
(See Compl. Ex. B (Doc. 1-
3) at 5, col. 5, l. 52; id. at 6, col. 7, ll. 45-46; Compl. Ex. C
(Doc. 1-4) at 5, col. 5, l. 55.)
When a patent claim uses the word “comprising” as
its transitional phrase, the use of “comprising”
creates a presumption that the body of the claim is
open. In the parlance of patent law, the transition
“comprising” creates a presumption that the recited
elements are only a part of the device, that the claim
does not exclude additional, unrecited elements.
Crystal Semiconductor Corp. v. TriTech Microelecs. Int’l, Inc.,
246 F.3d 1336, 1348 (Fed. Cir. 2001); see also Free Motion
Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1347 (Fed.
Cir. 2005) (“The addition of unclaimed elements does not
typically defeat infringement when a patent uses an open
7
transitional phrase such as ‘comprising.’”); Gillette Co. v.
Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005)
(“The word ‘comprising’ transitioning from the preamble to the
body signals that the entire claim is presumptively
open-ended.”).
The Kimura patents’ use of the word “comprising”
thus creates a presumption that the patents’ claims do not
exclude unrecited elements and that infringement cannot be
avoided through the simple addition of unclaimed elements.
However, a patentee can rebut the presumption stemming from
use of the word “comprising” by clearly disavowing certain
unrecited elements and thereby actively excluding those elements
from the scope of the patent’s claims.
See Free Motion Fitness,
Inc., 423 F.3d at 1353 (“The presence of an undesirable prior art
feature in addition to the elements recited in the claim . . .
does not limit the claim unless there is a clear and unmistakable
disclaimer of claim scope.” (emphasis added)).
When a patentee
clearly disclaims particular elements, an accused device or
method that adds those very disclaimed elements to the patented
invention will be deemed noninfringing.
N. Telecom Ltd. v.
Samsung Elecs. Co., 215 F.3d 1281, 1296-97 (Fed. Cir. 2000)
(“[I]f a patent requires A, and the accused device or process
uses A and B, infringement will be avoided only if the patent’s
definition of A excludes the possibility of B.”); RFID Tracker,
Ltd. v. Wal-Mart Stores, Inc., 342 F. App’x 628, 630-32 (Fed.
8
Cir. 2009) (per curiam) (affirming summary judgment of
noninfringement based on a finding that the patentee’s disavowal
of claim scope rebutted the presumption arising from use of an
open-ended term).
In its Markman Order, this court has already found that Mr.
Kimura made “an express, intrinsic disclaimer of subject matter”
when he stated in the Kimura patents’ specifications that
“‘[a]nother object of the instant invention is to provide a
termite treatment without barrier.’”
(Doc. 183 at 14 (quoting
Compl. Ex. B (Doc. 1-3) at 3, col. 1, ll. 43-44).)
More
specifically, after examining what Mr. Kimura meant by “without
barrier,” this court found that Mr. Kimura “disclaimed applying
insecticide without loopholes around a building, under a
building, and both around and under a building.”
(Id. at 19-20.)
This court also noted that Mr. Kimura’s disclaimer of barrier
treatments affects all the asserted claims of the Kimura patents.
(Id. at 26 n.10.)
Thus, even assuming arguendo that Defendants’
Taurus SC label instructs users to practice the invention that is
claimed in the Kimura patents on the interior of a building, this
court must find the Taurus SC label to be noninfringing if that
label also instructs users to apply the product in a manner which
has been clearly and unmistakably disclaimed (See N. Telecom
Ltd., 215 F.3d at 1296-97) – that is, without loopholes around a
building, under a building, or both around and under a building.
9
See Free Motion Fitness, Inc., 423 F.3d at 1353; N. Telecom Ltd.,
215 F.3d at 1296-97; RFID Tracker, Ltd., 342 F. App’x at 630-32.
There is no dispute that Defendants’ Taurus SC label
instructs users, at least in part, to apply the product in a
manner that falls within the disclaimer that this court found in
its Markman Order.
The “General Information” portion of the
label states: “This product must be applied in manner [sic] which
provides a continuous treated zone to effectively prevent
termites from infesting wood.”
(Defs.’ Br. Supp. Modified Mot.
Summ. J. Ex. I (Doc. 189-9) at 4 (emphases added).)
Further, the
“Exterior Perimeter/Localized Interior” (“EP/LI”) portion of the
label, which is the particular portion that Plaintiffs contend
infringes the Kimura patents, (e.g., Pls.’ Br. Opp’n Defs.’
Modified Mot. Summ. J. (Doc. 195) at 12-14), calls for “the
establishment of a continuous treated zone along the exterior of
the foundation” and states that “[t]o prevent termite infestation
of a structure, exterior perimeter applications of Taurus SC must
be made in a manner which will create a continuous treated zone.”
(Defs.’ Br. Supp. Modified Mot. Summ. J. Ex. I (Doc. 189-9) at 10
(emphases added).)
The Taurus SC label thus directs users to
apply the product without loopholes around a building, a method
that Mr. Kimura specifically disclaimed.
Indeed, although
Plaintiffs disagree with this court’s construction of the term
“barrier” as used by Mr. Kimura, Plaintiffs concede that
10
Defendants’ Taurus SC label instructs users to apply the product
in a manner that falls within this court’s construction of Mr.
Kimura’s disclaimer.
(E.g., Pls.’ Br. Opp’n Defs.’ Modified Mot.
Summ. J. (Doc. 195) at 10-11 (“While Plaintiffs respectfully
disagree with this [court’s] definition that a prior art
‘barrier’ exists on one side of the boundary, Defendants’ use of
that prior art on the outside as part of their application does
not avoid the Kimura claims . . . .” (emphasis added)); Prelim.
Inj. Hr’g Tr. (Doc. 149) at 90 (admission by Plaintiffs’ expert,
Dr. Michael F. Potter, that “the Taurus label . . . provide[s]
instructions for providing a continuous barrier around the
exterior of the building”).)
Because Defendants’ Taurus SC label
instructs users to apply the product without loopholes around a
building and thus requires a treatment method that Mr. Kimura
specifically disclaimed, this court concludes as a matter of law
that the label does not infringe, or induce infringement of, the
Kimura patents.
See Free Motion Fitness, Inc., 423 F.3d at 1353;
N. Telecom Ltd., 215 F.3d at 1296-97; RFID Tracker, Ltd., 342 F.
App’x at 630-32.
Plaintiffs contend that “[t]he law is settled that the
addition of elements or steps to an open-ended comprising claim
is still an infringement.”
Summ. J. (Doc. 195) at 11.)
(Pls.’ Br. Opp’n Defs.’ Modified Mot.
This position does not give due
consideration to the crucial distinction between elements that a
11
patentee merely fails to claim, or simply disfavors, and those
elements that the patentee clearly and unmistakably disclaims.
Plaintiffs rely heavily on Gillette Co. v. Energizer Holdings,
Inc.
In that case, the objective of the patented invention at
issue was “to reduce drag forces in safety razors with more than
two blades.”
405 F.3d at 1371.
The accused infringing device
was a safety razor with four blades.
Id. at 1369.
Primarily
because the patent at issue made reference only to “a group of
first, second, and third blades,” the district court concluded
that the patent covered only a three-bladed razor.
70 (internal quotation marks omitted).
Id. at 1369-
The Federal Circuit
vacated the district court’s decision, id. at 1368, in large part
because the patent claim at issue was an open-ended “comprising”
claim.
Id. at 1371 (“The word ‘comprising’ transitioning from
the preamble to the body signals that the entire claim is
presumptively open-ended.”).
However, the Federal Circuit also acknowledged that a
patentee can disavow claim scope through “words or expressions of
manifest exclusion.”
omitted).
Id. at 1374 (internal quotation marks
The court considered the possibility of a disclaimer
and found that, “[d]espite the numerous cites to three-bladed
razors plucked from the written description, no statement in the
patent surrenders or excludes a four-bladed razor.”
Id.
In
other words, the Federal Circuit found nothing to rebut the
12
presumption that “[t]he addition of elements not recited in [an
open-ended] claim cannot defeat infringement.”
See id. at 1372.
Unlike the patentee in Gillette Co., Mr. Kimura used words
of manifest exclusion when he stated that an object of his
invention “is to provide a termite treatment without barrier.”
(Compl. Ex. B (Doc. 1-3) at 3, col. 1, ll. 43-44 (emphasis
added).)
In so doing, Mr. Kimura rebutted the presumption that
the claims of his patents do not exclude, inter alia, applying
insecticide without loopholes around a building.
See Free Motion
Fitness, Inc., 423 F.3d at 1353; N. Telecom Ltd., 215 F.3d at
1296-97; RFID Tracker, Ltd., 342 F. App’x at 630-32.
(See also
Markman Order (Doc. 183) at 19-20.)
The differences between Gillette Co. and the instant case do
not end there.
The Federal Circuit stated in Gillette Co. that
“[t]he inventive contributions of the [patent at issue] are
varying progressively the exposure and spacing parameters of the
blades to overcome the undesired drag forces produced by razors
with multiple blades, not simply limiting the number of blades to
three.”
405 F.3d at 1369.
The court stated further that
“[t]hese principles of progressive blade exposure and progressive
blade span could apply equally to four or five blades.”
1371.
Id. at
Meanwhile, among the stated objectives of the Kimura
patents are the following: “to provide an improved process of
protection of houses,” “to protect the building with the minimum
13
amount of insecticidally active ingredient,” and “to have a good
level of protection of buildings against termites while reducing
the amount of applied insecticide.”
3, col. 1, ll. 18-19, 23-28.)
(Compl. Ex. B (Doc. 1-3) at
Part of the inventive contribution
of Mr. Kimura’s patented loophole method is to improve on the
prior art by limiting the amount of applied insecticide.
This
principle cannot apply equally to an insecticide application that
fully incorporates what Mr. Kimura understood and defined as the
prior art and then adds a loophole application on the other side
of the outer walls of the building to be protected.
Simply put,
it is not possible to, in Mr. Kimura’s words, “provide a termite
treatment without barrier,” (id. at 3, col. 1, ll. 43-44), if the
treatment utilizes what Mr. Kimura defined as a barrier.
Other Federal Circuit precedents likewise bear out the
importance of the distinction between unclaimed elements and
disclaimed elements.
In Free Motion Fitness, Inc. v. Cybex
International, Inc., the Federal Circuit began its analysis by
stating that “[t]he addition of unclaimed elements does not
typically defeat infringement when a patent uses an open
transitional phrase such as ‘comprising.’”
(emphasis added).
423 F.3d at 1347
During prosecution of the patent at issue in
that case, the patentee was required to distinguish its invention
from a prior art patent that “discloses an exercise device
wherein the axes of rotation of the adjustable arms are
14
transverse to the axes of rotation of the pulleys.”
Id. at 1352.
The patentee “overcame the rejection to the prior art . . .
patent by amending the claims to include a ‘rotating about an
axis substantially parallel to the second axis’ limitation” and
by arguing that the transverse orientation of the pulley
disclosed in the prior art was “undesirable.”
Id.
The Federal Circuit concluded that the plaintiff patentee
was not “estopped to assert infringement by a device
that—although including extension arms with axes of rotation
substantially parallel to the pulleys—also has the undesirable
[transverse pulley orientation].”
Id. at 1353.
The court
reasoned:
The presence of an undesirable prior art feature in
addition to the elements recited in the claim, even
when the undesirability of that feature formed the
basis of an amendment and argument overcoming a
rejection during prosecution, does not limit the claim
unless there is a clear and unmistakable disclaimer of
claim scope.
Id. (emphasis added).
Unlike the patentee in Free Motion Fitness, Inc., Mr. Kimura
did not merely distinguish his invention from the prior art
barrier method or describe that method as undesirable.
Rather,
Mr. Kimura disavowed the barrier treatment method by describing
his invention as “a termite treatment without barrier.”
Ex. B (Doc. 1-3) at 3, col. 1, ll. 43-44.)
(Compl.
Mr. Kimura’s “clear
and unmistakable disclaimer of claim scope” limits his claims
15
such that a treatment method that incorporates a barrier, as
defined by Mr. Kimura, must be found not to infringe the Kimura
patents.
See Free Motion Fitness, Inc., 423 F.3d at 1353.
Another noteworthy Federal Circuit case is Northern Telecom
Ltd. v. Samsung Electronics Co., in which the defendants argued
that the accused process was noninfringing because it included an
element that was not claimed in the patent at issue.
1292.
215 F.3d at
However, both the defendants and the Federal Circuit
recognized that an accused infringer’s addition of unclaimed
elements to a claimed process “will not ordinarily prevent a
finding of infringement.”
Id.
Thus, the issue before the court
was not whether the asserted patent contemplated the presence of
the unclaimed element, but whether the patent contemplated that
element and specifically excluded it.
Id. at 1292-93.
The Federal Circuit considered the patent’s specification
and prosecution history, as well as extrinsic evidence, and found
that although the patent described the element in question as
undesirable and did not explicitly claim that element, neither
did the patent specifically state the exclusion of that element
as a necessary part of the invention.
Id. at 1293-96.
The court
thus concluded that the defendants’ addition of the undesirable
element to the plaintiff’s patented process did not render the
defendants’ process noninfringing.
Federal Circuit stated:
16
Id. at 1296.
In closing, the
[I]f a patent requires A, and the accused device or
process uses A and B, infringement will be avoided only
if the patent’s definition of A excludes the
possibility of B. Statements simply noting a
distinction between A and B are thus unhelpful: what
matters is not that the patent describes A and B as
different, but whether, according to the patent, A and
B must be mutually exclusive.
Id. at 1296-97 (citations omitted).
Unlike the patentee in Northern Telecom Ltd., Mr. Kimura did
not simply distinguish his patented method from the prior art
barrier method and then fail to claim a barrier as an additional
element of his invention.
Rather, in describing his invention as
“a termite treatment without barrier,” (Compl. Ex. B (Doc. 1-3)
at 3, col. 1, ll. 43-44), Mr. Kimura declared that his method and
the barrier method “must be mutually exclusive.”
Ltd., 215 F.3d at 1297.
See N. Telecom
Thus, a treatment method that
incorporates a barrier, as defined by Mr. Kimura, must be found
not to infringe the Kimura patents.
See id. at 1296-97.
Plaintiffs contend that summary judgment is unwarranted
because “[t]he Court did not rule that Kimura disclaimed the
combination of using (1) a prior art ‘barrier’ (as the Court
construed ‘barrier’ . . . ) on one side of a building’s boundary
and (2) Kimura’s inventive ‘loopholes’ . . . on the other side.”
(Pls.’ Br. Opp’n Defs.’ Modified Mot. Summ. J. (Doc. 195) at 910.)
Plaintiffs are correct that in this court’s claim
construction order, this court construed the disclaimer language
and did not determine infringement issues.
17
However, in Northern
Telecom Ltd., the Federal Circuit indicated that a patentee’s
exclusion of a particular element from the invention is
sufficient to disclaim not only the disavowed element, but also
the combination of that element and the claimed invention.
The
court stated: “[I]f a patent requires A, and the accused device
or process uses A and B, infringement will be avoided only if the
patent’s definition of A excludes the possibility of B.”
F.3d at 1296-97.
215
See also, e.g., id. at 1294 (implying that
intrinsic evidence “specifically stat[ing an element’s] exclusion
as part of the invention” is sufficient to disclaim the
combination of that element and the claimed invention); id. at
1296 (implying that an inventor’s statement that a claimed
process “must exclude” an element is sufficient to disclaim the
combination of that element and the claimed invention).
The use of an exterior barrier as a required element of
treatment is prior art as defined and clearly disclaimed by Mr.
Kimura.
Under Northern Telecom, because Mr. Kimura clearly and
unmistakably disclaimed the use of a prior art barrier, the prior
art barrier and Mr. Kimura’s invention became “mutually
exclusive.”
See Northern Telecom Ltd., 215 F.3d at 1297.
Thus,
by definition, one practicing a form of treatment which requires
both an exterior barrier element and an interior loophole element
is not practicing Mr. Kimura’s invention.
This court finds that
Mr. Kimura’s description of his invention as “a termite treatment
18
without barrier,” (Compl. Ex. B (Doc. 1-3) at 3, col. 1, ll. 4344), excludes barrier treatments from the invention and therefore
the combination of a barrier treatment and Mr. Kimura’s loopholes
does not infringe the patents at issue.
IV.
CONCLUSION
The Kimura patents’ use of the word “comprising” as a
transitional phrase creates a presumption that the patents’
claims are open-ended.
However, Mr. Kimura clearly and
unmistakably disclaimed the barrier method of insecticide
application.
This court therefore finds that Mr. Kimura rebutted
the presumption that the “comprising” claims of his patents do
not exclude the prior art barrier method.
It is undisputed that
Defendants’ accused Taurus SC label requires users to apply
Defendants’ product in a manner that falls within Mr. Kimura’s
definition of “barrier.”
Thus, even assuming arguendo that
Defendants’ label also instructs users to simultaneously practice
the invention that is claimed in the Kimura patents on the
interior, this court concludes as a matter of law that
Defendants’ label does not infringe, or induce infringement of,
the Kimura patents.
For the reasons stated herein, IT IS ORDERED that
Defendants’ Modified Motion for Summary Judgment Based on NonInfringement (Doc. 188) is GRANTED and Counts II and III of
Plaintiffs’ Complaint (Doc. 1) are DISMISSED WITH PREJUDICE.
19
A
judgment dismissing Counts II and III of Plaintiffs’ Complaint
with prejudice will be forthcoming.
This the 11th day of January 2012.
United States District Judge
20
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