## United States Court of Appeals for the Federal Circuit

2007-1214

OATEY CO., Plaintiff-Appellant,

v. IPS CORPORATION, Defendant-Appellee.

Jay R. Campbell , Renner, Otto, Boisselle & Skla r, LLP, of Cleveland, Ohio, argued for plaintiff-appellant. With hi m on the brief were Donald L. Otto and Mark C. Johnson

. Joseph A. Yanny , Yanny & Smith, of Los Ange les, California, argued for defendant-appellee. Appealed from: United States District C ourt for the Northern District of Ohio Judge Kathleen M. O’Malley

## United States Court of Appeals for the Federal Circuit

2007-1214

OATEY CO., Plaintiff-Appellant,

v. IPS CORPORATION, Defendant-Appellee.

Appeal from the United States District Court for the Northern District of Ohio in case no. 1:03-CV-1231, Judge Kathleen M. O'Malley.

__________________________ DECIDED: January 30, 2008

__________________________ Before NEWMAN, SCHALL, and LINN, Circuit Judges

. NEWMAN, Circuit Judge

.

The Oatey Company appeals the summary j udgment of the United States District Court for the Northern District of Ohio, ruli ng that U.S. Patent No. 6,148,850, owned by Oatey, is not infringed by I PS Corporation. The patented invention concerns washing machine outlet boxes, which are boxes that are installed in wall recesses during construction of a house in order to collect hoses for the input and output water flow of washing machines and other household appliances, particularly air conditioners. After a2007-1214 2 Markman hearing, the district court construed disputed claim terms and then granted summary judgment of non-infringement in favor of IPS, and dismissed IPS's counterclaims without prejudice. 1 We now modify the district cour t's claim construction, vacate the summary judgment of non-infringement, and remand for further proceedings.

The Patented Invention Washing machines require inputs of hot and cold water, and produce waste water that is expelled through a pipe or hose. In t he plumbing of older residential buildings the water supply pipes and the drain pipes or hoses were not alwa ys grouped together, and often the drainage was expelled into a sink bas in or tub. Newer homes, however, often include a built-in "outlet box" placed between s upport studs in a wall, the box having input ports for receiving hot and cold water pipes and outlet ports for drainage. In plumbing designs until the 1980s, the outlet box typically included a single drainage port that in some buildings was desi gned to receive waste water from more than one appliance. This design was common in the Southwest where air conditioning equipment was often located on the roof and the condensate line fed into the outlet box drain port. Some municipal plumbing codes were changed to prohibit designs in which other appliances shared the drain port used by a washing machine. As a result, plumbing

1 Oatey Co. v. IPS Corp. , No. 1:03 CV 1231, 2006 WL 581240 (N.D. Ohio Mar. 8, 2006) (construing claims); Oatey Co. v. IPS Corp. , No. 1:03 CV 1231 (N.D. Ohio Oct. 30, 2006) (clarifying claim construc tion); Oatey Co. v. IPS Corp. , No. 1:03 CV 1231 (N.D. Ohio Feb. 23, 2007) (summary judgment).supply manufacturers such as Oatey and IPS designed outlet boxes with separate ports to receive the drainage of appliances in addition to the washing machine. In 1999 Oatey filed the '850 patent applicat ion, directed to an outlet box that accommodated two output drain ports to comp ly with plumbing codes, and that also had a "tailpiece" to collect the effluent from these ports and release it into a single drain pipe. The structure was designed for ease of installation, and Oatey explains that the prior outlet boxes required that the installer perform severa l welds to join separate drain pipes from the two drain ports into a single pipe below the outle t box, as illustrated in the district court's opinion on claim construction:

PRIOR ART Oatey , 2006 WL 581240, at *6 (describi ng prior art). Oatey points to the six welds in this standard prior design, and explains that for the '850 patent a single tailpie ce is part of the

2007-1214 3outlet box and the installer need perform only a single weld, connecting the drain pipe to the tailpiece. Oatey states that its design is recognized in the industry as a useful innovation and is commercially successful, displa cing prior designs. The Oatey structure is illustrated in Figure 1 of the '850 patent:

2007-1214 4 The tailpiece (22) is affixed to the bottom wall (34) and receives a washing machine drain hose (18) and a condensate line from an air conditioner (20). The specification states that the tailpiece is preferably integrally formed with the bottom wall, but alternatively may be welded to the bottom wall. The interior of t he tailpiece contains two fluid passageways (24) and (26), which feed into a drain pipe (28). At the mouths of thes e fluid passageways are two juxtaposed drain ports, shown in Figure 2 at (54) and (56) in a top-down view of the

bottom wall:Figure 2 shows an optional test cap (52) that fits into a generally oblong opening (50) in the bottom wall. The test cap serves to temporarily seal this opening for pressure testing of the

installation. The base of t he test cap is welded to the bottom wall and two frangible knockout portions are removed to form the two juxtaposed drain ports (54) and (56). The '850 patent drawings also illustrate an embodiment wherein the two juxtaposed drain ports are shaped by the sides of the oblong opening in combination with a dividing wall provided by the tailpiece, as seen in Figur e 3 which shows the out let box without a test

cap:

2007-1214 52007-1214 6 Figure 3 shows a dividing wall (72) that separates the ta ilpiece into the two fluid passageways (24) and (26), and includes a trapez oidal step (76) at its upper edge. The trapezoidal step (76) and the boundaries of the opening (50) defi ne two drain ports at the mouths of two fluid passageways. The '850 specif ication explains that this trapezoidal step also accommodates the use of a test c ap to pressure-test the installation.

Claim Construction IPS makes and sells outlet boxes that Oatey st ates infringe claims 1, 2, 3, 5, and 17 of the '850 patent. Claim 1 is representative, with emphas is added to the clause whose meaning was disputed and whose interpreta tion was stipulated to determine noninfringement: 1. A washing machine outlet box comprising a housing including a bottom wall, first and second juxtaposed drai n ports in said bottom wall , and a common tailpiece for both of said drain ports extending from said bottom wall, said tailpiece extending completely around both of said drain ports in said bottom wall, said tailpie ce having an outlet for connection to a drain pipe. The district court postponed its claim c onstruction until this court issued its en banc decision in Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005). The Phillips decision confirmed that "[i]t is a 'bedrock principle' of patent law that 'the clai ms of a patent define the invention to which the patentee is entitled the right to exclude.'" Id. at 1312 (citing Innova/Pure Water, Inc. v. Safa ri Water Filtration Systems, Inc. , 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In addition, Phillips confirmed the importance of the specification in claim construction, 415 F.3d at 1315, and that, in construing the claims of a patent, the court should also consider the patent's prosecut ion history if it is in evidence, id. at 1317.2007-1214 7 The district court construed the clause "f irst and second juxtaposed drain ports in said bottom wall" as "two separate identifiabl e physical elements that are adjacent or near each other." The court further determined t hat this clause requires that there be two separate physical openings in the bottom wall of the outlet box, as shown in Figure 2, and not a single opening divided by a wall in the attac hed tailpiece, as shown in Figure 3. The district court rejected Oatey's position t hat the term "first and second juxtaposed drain ports" of claim 1 encompasses both of the embodiments in the drawings. The court determined that the claim requirement that the tailpiece extend "from" the bottom wall prevents any part of the tailpie ce, i.e. the dividing wall, fr om being "in" the bottom wall, whereas claim 1 requires that the two juxtaposed drain ports are "in the bottom wall." The district court pointed to claims 2 and 17, which state that the fluid passageways in the tailpiece receive liquid from the drain ports; the court concluded that this claiming format reinforces the conclusion that the drain ports are distinct stru ctures from the fluid passageways, and further supports the constructi on of claim 1 to limit the drain ports to

distinct structures formed in the bottom wall of the outlet box. The court held that the drain ports cannot be defined using the wall projecting from the tailpiece despite the illustration of such a structure in Figure 3. Thus the court concluded that the claims , correctly construed,

exclude the embodiment shown in Figure 3. On this claim construction the court granted summary judgment of noninfringement, for the parti es stipulated that Oatey cannot meet its burden of proving infringement if the claims exclude the embodiment shown in Figure 3.

DISCUSSION2007-1214 8 The district court's claim construction rece ives plenary review, including any factual findings on which the claim construction depends. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) ( en banc ); see Markman v. Westview Instruments, Inc. , 52 F.3d 967 (Fed. Cir. 1995) ( en banc ), aff'd , 517 U.S. 370 (1996). Oatey argues that the district court err ed both in its claim c onstruction and in its

determination that the structure depicted in Figure 3 is outside t he scope of claim 1 even as the court construed it. Oatey states that the de scriptive text describing the juxtaposed drain ports includes the embodiments in the drawings, and that a per son of ordinary skill in the

field of the invention would understand that the structure in Figure 3 is an embodiment of

the invention as set forth in t he specification and in claim 1. IPS responds that regardless of the specif ication's description and the presentation of Figure 3 as an embodiment of the invention, the patent provid es no definition for "first and second juxtaposed drain ports" that overri des the ordinary meaning of those terms. IPS states that the "ordinar y meaning" requires separate and di stinct ports in the bottom wall itself, and not merely partition of an el ongated opening. Thus I PS states that the district court correctly construed the clai ms in accordance with their plain meaning. We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification. E.g. , Verizon Servs. Corp. v. Vonage Holdings Corp. , 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting pr oposed claim interpretation that would exclude disclosed examples in the specificati on); Invitrogen Corp. v. Biocrest Mfg., L.P. , 327 F.3d 1364, 1369 (Fed. Cir. 2003) (f inding district court's claim construction erroneously excluded an embodiment described in an exampl e in the specification, where the prosecution history showed no such disavowal of claim scope); see also Vitronics Corp. v.2007-1214 9 Conceptronics, Inc. , 90 F.3d 1576, 1583 (Fed. Cir. 1996) (findi ng that a claim interpretation that excludes a preferred embodim ent is "rarely, if ever, correct"). However, we have interpreted claims to exclude embodiment s of the patented inv ention where those embodiments are clearly disclaim ed in the specification, see SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc. , 242 F.3d 1337, 1344 (Fed. Cir. 2001) (excluding subject matter from claim scope based on clear disclaimer in the specification), or prosecution history, see North Am. Container, Inc. v. Plastipak Packaging, Inc. , 415 F.3d 1335, 1345-46 (Fed. Cir. 2005) (exc luding from claim scope certain embodiments in the drawings based on disclaimer during prosecution).

There is no issue in this case of disclaime r or estoppel during pr osecution, as would preclude recovery of such lost scope, and IPS o ffers no support for its contrary suggestion. The specification states that the tailpiece is formed with or welded to the bottom of the outlet box and surrounds the oblong opening, supporti ng the patentee's co nstruction of the claims to include the drain ports formed by the oblong opening and the divider. Moreover, the specification explicitly discloses "that if a test cap is not used, the oblong opening in the bottom wall (in conjunction with the tailpiece) may itself define the drain ports." '850 patent, col. 2, lines 30-32; see also id. col. 4, lines 23-26. At leas e where claims can reasonably to interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative eviden ce on the contrary." IPS cannot support

its statement that the structur e of Figure 3 was disclaimed or subject to prosecution history estoppel. IPS states that inclusion of Figure 3 in the scope of claim 1 would encompass the prior art, which shows a single drain port; this argument requires the construction that2007-1214 10 Figure 3 shows a single drain por t. However, Figure 3 shows the structure whereby the two juxtaposed drain ports are formed, and the claims require two drain ports; we discern no merit to the argument that including Figur e 3 in claim 1 would include prior art. We conclude that the embodiment in Figure 3 was improperly excluded from the scope of claim 1. See MBO Labs., Inc. v. Becton, Dickinson & Co. , 474 F.3d 1323, 1333 (Fed. Cir. 2007) (rejecting claim construction that would exclud e embodiments illustrated in the drawings); Lava Trading, In c. v. Sonic Trading Mgmt., LLC , 445 F.3d 1348, 1353-55 (Fed. Cir. 2006) (rejecting claim construction that "excluded embodiments disclosed in the specification" including embodiments in the drawings); Vanderlande Industries Nederland BV v. United States Int'l Trade Comm'n , 366 F.3d 1311, 1320, 1322 (Fed. Cir. 2004) (declining to limit the term "gli de surface" to a specific embodiment where the descriptive text includes other embodiments). The recitation in claim 1 that the dr ain ports are in the

bottom wall does not exclude the Figure 3 embodiment whereby the ports are formed using a dividing wall provided by the tailpiece. In Figure 3 the juxtaposed drain ports are defined by the perimeter of the oblong opening in conjunction with the dividing wall. IPS argues that consideration of certain other claims serv es to restrict the scope of claim 1. However, claims 2 and 17 do not restri ct the construction of claim 1. It is not necessary to decide the meaning of "fluid passageways" in these subsidiary claims in order to construe claim 1. See Tandon Corp. v. United St ates Int'l Trade Comm'n , 831 F.2d 1017, 1023 (Fed. Cir. 1987) (explaini ng that there is a presumpt ion of difference in scope among a patent's claims, but clai ms may cover the same subjec t matter in different words). Although the term "first and se cond juxtaposed drain ports in said bottom wall" defines distinct openings, this does not exclude the di stinct openings formed as shown in the2007-1214 11 structure of Figure 3. The district court e rred in construing claim 1 as excluding this embodiment. The claim construction is modified accordingly. The summary judgment based on t he district court's claim construction as the basis for the stipulation of non-infr ingement is vacated. The case is remanded for further proceedings.

VACATED AND REMANDED