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 & Sklar, LLP, of Cleveland, Ohio, 

argued for plaintiff-appellant. With him on the brief were Donald L. Otto and Mark C. 

Johnson. 

 Joseph A. Yanny, Yanny & Smith, of Los Angeles, California, argued for 

defendant-appellee. 

 

Appealed from: United States District Court 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 judgment of the United States District 

Court for the Northern District of Ohio, ruling that U.S. Patent No. 6,148,850, owned by 

Oatey, is not infringed by IPS 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 a 
2007-1214 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 court'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 the plumbing of older residential buildings the 

water supply pipes and the drain pipes or hoses were not always grouped together, and 

often the drainage was expelled into a sink basin or tub. Newer homes, however, often 

include a built-in "outlet box" placed between support 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 designed 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 construction); 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 application, directed to an outlet box that 

accommodated two output drain ports to comply 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 several welds to join separate drain pipes from the 

two drain ports into a single pipe below the outlet box, as illustrated in the district court's 

opinion on claim construction: 

PRIOR ART

Oatey, 2006 WL 581240, at *6 (describing prior art). Oatey points to the six welds in this 

standard prior design, and explains that for the '850 patent a single tailpiece is part of the 

2007-1214 3 
outlet 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, displacing 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 the tailpiece contains two fluid passageways (24) 

and (26), which feed into a drain pipe (28). At the mouths of these 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 the 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 Figure 3 which shows the outlet box without a test 

cap: 

2007-1214 5 
2007-1214 6 

Figure 3 shows a dividing wall (72) that separates the tailpiece into the two fluid 

passageways (24) and (26), and includes a trapezoidal step (76) at its upper edge. The 

trapezoidal step (76) and the boundaries of the opening (50) define two drain ports at the 

mouths of two fluid passageways. The '850 specification explains that this trapezoidal step 

also accommodates the use of a test cap to pressure-test the installation. 

Claim Construction

IPS makes and sells outlet boxes that Oatey states infringe claims 1, 2, 3, 5, and 17 

of the '850 patent. Claim 1 is representative, with emphasis added to the clause whose 

meaning was disputed and whose interpretation was stipulated to determine noninfringement: 

1. A washing machine outlet box comprising a housing including a 

bottom wall, first and second juxtaposed drain 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 tailpiece having an outlet for connection to a 

drain pipe. 

The district court postponed its claim construction 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 claims 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. Safari 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 prosecution history if it is in evidence, id. at 1317. 
2007-1214 7 

The district court construed the clause "first and second juxtaposed drain ports in 

said bottom wall" as "two separate identifiable physical elements that are adjacent or near 

each other." The court further determined that 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 attached tailpiece, as shown in Figure 3. The 

district court rejected Oatey's position that 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 tailpiece, i.e. the dividing wall, from 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 structures from the fluid 

passageways, and further supports the construction 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 parties stipulated that Oatey cannot meet its 

burden of proving infringement if the claims exclude the embodiment shown in Figure 3. 

 DISCUSSION 
2007-1214 8 

The district court's claim construction receives 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 erred both in its claim construction and in its 

determination that the structure depicted in Figure 3 is outside the scope of claim 1 even as 

the court construed it. Oatey states that the descriptive text describing the juxtaposed drain 

ports includes the embodiments in the drawings, and that a person 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 the specification and in claim 1. 

IPS responds that regardless of the specification's description and the presentation 

of Figure 3 as an embodiment of the invention, the patent provides no definition for "first 

and second juxtaposed drain ports" that overrides the ordinary meaning of those terms. 

IPS states that the "ordinary meaning" requires separate and distinct ports in the bottom 

wall itself, and not merely partition of an elongated opening. Thus IPS states that the 

district court correctly construed the claims 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 proposed claim interpretation that would 

exclude disclosed examples in the specification); Invitrogen Corp. v. Biocrest Mfg., L.P., 

327 F.3d 1364, 1369 (Fed. Cir. 2003) (finding district court's claim construction erroneously 

excluded an embodiment described in an example 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) (finding that a claim interpretation 

that excludes a preferred embodiment is "rarely, if ever, correct"). However, we have 

interpreted claims to exclude embodiments of the patented invention where those 

embodiments are clearly disclaimed 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) (excluding from claim scope certain embodiments in the 

drawings based on disclaimer during prosecution). 

There is no issue in this case of disclaimer or estoppel during prosecution, as would 

preclude recovery of such lost scope, and IPS offers 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, supporting the patentee's construction 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 lease where claims can reasonably to 

interpreted to include a specific embodiment, it is incorrect to construe the claims to 

exclude that embodiment, absent probative evidence on the contrary." IPS cannot support 

its statement that the structure 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 that 
2007-1214 10 

Figure 3 shows a single drain port. 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 Figure 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 exclude embodiments illustrated in 

the drawings); Lava Trading, Inc. 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 "glide surface" to a specific embodiment where the descriptive 

text includes other embodiments). The recitation in claim 1 that the drain 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 serves to restrict the scope of 

claim 1. However, claims 2 and 17 do not restrict 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 States Int'l Trade Comm'n, 831 F.2d 

1017, 1023 (Fed. Cir. 1987) (explaining that there is a presumption of difference in scope 

among a patent's claims, but claims may cover the same subject matter in different words). 

 Although the term "first and second juxtaposed drain ports in said bottom wall" defines 

distinct openings, this does not exclude the distinct openings formed as shown in the 
2007-1214 11 

structure of Figure 3. The district court erred in construing claim 1 as excluding this 

embodiment. The claim construction is modified accordingly. 

The summary judgment based on the district court's claim construction as the basis 

for the stipulation of non-infringement is vacated. The case is remanded for further 

proceedings. 

VACATED AND REMANDED