NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not citable as precedent. It is a public record. 

## United States Court of Appeals for the Federal Circuit

05-1063 CANNON RUBBER LIMITED and AVENT AMERICA, INC., Plaintiffs-Appellants,

v. THE FIRST YEARS, INC., Defendant-Appellee.

__________________________ DECIDED: December 28, 2005

__________________________ Before NEWMAN, LOURIE, and RADER, Circuit Judges

. LOURIE, Circuit Judge

. Cannon Rubber Limited and Avent America, Inc. (collectively “Cannon”) appeal from the decision of the United States District Court for the Northern District of Illinois granting summary judgment of noninfringement of U.S. Patent 5,749,850 in favor of The First Years, Inc (“TFY”). Cannon Rubber Ltd. v. The First Years, Inc. , No. 03-C-4918 (N.D. Ill. Sept. 27, 2004) (“ Decision ”). Because the district c ourt erred in its construction of the claim limitation “a deformabl e diaphragm disposed in the body,” we vacate its decision granting judgment of noninfringement and remand for further proceedings consistent with this opinion.BACKGROUND The ’850 patent is entitled “Breast Pump,” and was issued to Cannon Rubber Limited as the assignee. The invention, with one of the two expressly disclosed embodiments shown below, relates to a device that is capable of pumping milk from the breast of a nursing mother. The stated objec t of the patent is to disclose an improved breast pump having a simpler design than its pr edecessors, thus making it easier to use and clean. ’850 patent, col. 1, ll. 46-48. T he illustrated breast pump has a body (1) with the following components attached to it: (1) a cone-shaped appendage (8, 9) that fits over the breast and nipple region; (2) an act uating means, shown in the figure below as a lever mechanism consisting of a plas tic handle (40) with a nose portion (43) positioned over a pivot (17); (3) a stem connec tor (26) that connects the nose portion to an elastic diaphragm (20); and (4) a valve ( 11) located below t he diaphragm. A milk receiving container can be screwed onto the body of the pump by screw threads (4).

The invention operates by having the user apply pressure to the actuating means either manually, e.g. , squeezing a pump handle, or through an electrical means, e.g. , an

05-1063 2electric motor. This results in the diaphragm being upwardly distorted. According to the patent, the upward distortion of the diaphragm creates negative pressure in the nipple region sufficient to simulate lactation. Id. , col. 1, ll. 54-57. The negative pressure is confined to the nipple region and the upper por tion of the pump body by a valve that closes when negative pressure is created, but opens as the pressure is being relieved. Opening of the valve allows the milk, whic h was trapped in the pump body while in the negative-pressure state, to flow into a receiv ing container. The nursing mother’s milk is accumulated by repeatedly applying and releas ing pressure to the actuating means, thereby repeatedly creating and relieving negativ e pressure in the nipple region and the body of the pump. On July 16, 2003, Cannon filed suit agains t TFY in the United States District Court for the Northern District of Illinois fo r infringement of clai ms 3 and 5 of the ’850 patent. TFY manufactures and sells breas t pumps. The products accused of infringement are TFY’s Easy ComfortTM Manual Breast Pump and Easy ComfortTM Deluxe Manual Breast Pump (collectivel y “accused products”). TFY denied Cannon’s allegations of infringement and argued that the patent wa s invalid under 35 U.S.C. §§ 102 and 112, ¶ 1. Cannon Rubber Ltd. v. The First Years, Inc. , No. 03-C-4918, slip op. at 1 (Sept. 17, 2004). On September 17, 2004, after conducting a hearing, the court construed certain limitations contained in claims 1, 3, and 5 of the ’850 patent. 1 Id.

1 Claim 1 of the ’850 patent, in pertinent part, reads as follows: a breast pump comprising: a body, said body having an inlet; * * * a deformable diaphragm disposed in the body;

05-1063 3The court construed the claim limitation “diaphragm disposed in the body” as a diaphragm that is “disposed of or mounted entirely within the body of the pump.” Id. , slip op. at 19. To arrive at its claim construction, the court referenced the patent specification’s description of the first, in terms of its appearance in the patent, of two disclosed embodiments and explai ned that the specification uses the phrase “in the body” to describe a diaphragm that is contai ned entirely within the body of the pump. Id. , slip op. at 18. To confirm its claim construction, the court compared the first embodiment to the second, which did not have a diaphragm contained entirely within the body of the pump. In the second embodiment, the upper portion of the diaphragm was located outside of the body of the pum p and the remaining portions were located inside of the body of the pump. The cour t noted that for the second embodiment the specification did not recite the “in the body ” language, as it did for the first embodiment, but uses the phrase “mounted thereon” to describe the location of its diaphragm. Id. The district court also construed the m eans-plus-function limitation “valve means mounted in the body for cyclically releasing the negative pressure which is generated in the inlet.” The court identifi ed the function of the limitation to be “cyclically releasing the negative pressure which is generated in the in let and regulating the flow of air through a passageway by opening, closing or obstructing the passageway.” Id. , slip op. at 12. According to the court, this recited functi on conforms to the or dinary meaning of the

actuating means operatively connected to the diaphragm for cyclically moving said diaphragm to generate a negative pressure in the inlet; and a valve means mounted in the body for cycl ically releasing the negative pressure which is generated in the inlet. Claim 3 depends from claim 1 and claim 5 depends from claim 3. Neither claim 3 nor 5, however, contains additional limitati ons that are at issue in this appeal.

05-1063 4word “valve,” and the functional language following the preposition “for.” Id. The court, relying on portions of the spec ification explaining how the negative pressure is relieved within the body of the pump, then determined that “the corresponding structure [of the valve means] with respect to the first em bodiment is the diaphragm 20, the spring 32, and the plug valve 11. As to the second embodiment, the corresponding structure [of the valve means] is the resilient diaphragm 51 and the button valve 80.” Id. , slip op. at 13. Based on its claim constructions, the district court addressed the parties’ competing motions for summary judgment of infringement. In granting TFY’s motion for summary judgment of no infringement, the cour t held that the accu sed products did not literally meet the “diaphragm disposed in the body” limitation because the upper portion of the accused products’ diaphragms lapped ov er the upper rim of the body of the pump, like the ’850 patent’s second embodiment, and thus the diaphragms were not contained entirely within the body of the pump. Decision , slip op. at 8-9. The court also held that there was no infringement under the doctrine of equivalents because Cannon did not meet its burden of identifying a genui ne issue of material fact whether the partially-contained diaphragms of the accused products were equivalent to a diaphragm that is contained entirely with in the body of the pump, as required by the claims. Id. , slip op at 10-12. According to the cour t, Cannon did not proffer any evidence, e.g. , an expert declaration or witness a ffidavit, that would have allowed a reasonable trier of fact to find that these two types of diaphragms were equivalent. Id. , slip op at 11. Once it determined that the accused products did not infringe the ’850 patent, the court denied TFY’s motion for summary judgment of invalidity as moot.

05-1063 5The district court entered final judgment on September 27, 2004. Cannon timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). DISCUSSION We review a district court’ s grant of summary judgment de novo , reapplying the same standard used by the district court. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp. , 149 F.3d 1309, 1315 (Fed. Cir. 1998). Summa ry judgment is appropriate if there is no genuine issue as to any material fa ct and the moving party is entitled to a judgment as a matter of law. Fed. R. Civ. P. 56(c). “The evidence of the non-movant is to be believed, and all justifiable infer ences are to be drawn in his favor.” Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 255 (1986). Claim construction is an issue of law, Markman v. Westview Instruments, Inc. , 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), that we also review de novo , Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).
I. “Diaphragm disposed in the body” On appeal, Cannon argues that the distri ct court’s decision was based on an erroneous construction of the claim limita tion “diaphragm disposed in the body.” According to Cannon, by requiring the di aphragm to be “disposed or mounted entirely within the body of the pump,” the court did not give the c ontested limitation its ordinary meaning. Cannon contends t hat under the ordinary meani ng of the phrase “in the body,” the entire diaphragm does not need to be “in the body,” and thus the court imported the term “entirely” from the specification to unduly narrow the scope of the claims. Cannon also argues t hat the patentee did not act as its own lexicographer to specially define the phrase “in the body,” orclearly disavow coverage of breast pumps

05-1063 6with diaphragms that are partially in the body from the claims. Instead, Cannon directs us to the patent’s “Summary of the Inv ention,” which it contends describes the diaphragm of the patent’s se cond embodiment as being “in the body” (neither party questions the district court’s determination t hat a portion of the diaphragm of the second embodiment is located outside of the body of the pump). TFY disputes Cannon’s charge that the dist rict court improperly failed to apply the ordinary meaning in construing the claim limi tation “diaphragm disposed in the body.” TFY basically repeats the analysi s contained in the court’s Markman decision, which noted that the ’850 patent specification us es the phrase “in the body” to describe an entirely-contained diaphragm and uses the phrase “mounted thereon” to describe a partially-contained diaphragm. TFY also assert s that the prosecution history supports the court’s claim construction. According to TFY, in response to a § 112 rejection, the patentee amended the language of the original claims from “mounting a [] diaphragm” to “diaphragm disposed in the body.” Pres umably viewing the term “mounting” to encompass only a partially-contained diaphr agm, TFY argues that Cannon should not be allowed to recapture previously surr endered subject matter. TFY also downplays Cannon’s reliance on a statement in the “Su mmary of the Invention” as being too ambiguous to overcome the clear distincti on in the way the specification describes entirely- versus partially-contained diaphragms in the body. We agree with Cannon that the district court improperly added the limitation “entirely” in its interpretation of the clai m limitation “diaphragm disposed in the body.” As an initial matter, we note that the term “in” is a simple, non-technical term, and that under its ordinary meaning, a “diaphragm disposed in the body” includes both

05-1063 7diaphragms contained entirely and partially in the body. See Brown v. 3M , 265 F.3d 1349, 1352 (Fed. Cir. 2001) (recogni zing that claim terms may not be technical terms of art, and do not require elaborate interpretation)

. For example, a trash bag is “in” a trashcan even though a portion of it is hanging outside of the trashcan. Moving on from the question of plain meani ng, we next address whether there is any justification for deviating from it. As discussed in Phillips v. AWH Corp. , 415 F.3d 1303, 1316-17 (Fed. Cir. 2005), we may depart fr om the plain meaning of a claim term when the patentee has acted as a lexic ographer or when the patentee has clearly limited the scope of the invention through a discl aimer in the specification or prosecution history. We conclude that neit her situation occurred here. As the district court recognized, the patent uses the phrase “in the body” in one instance to describe a diaphragm that is contained entirely wi thin the body of the pump, and the phrase “mounted thereon” in another instance to descr ibe a diaphragm that is contained partially within the body of the pump. These tw o cited instances, however, do not clearly indicate that the patentee intended to assign a more narrow definition to the phrase “in the body” than it would otherwise possess. See, e.g. , Elekta Instrument S.A. v. O.U.R. Scientific Int’l , 214 F.3d 1302, 1307 (Fed. Cir. 2000) (for a patentee to act as its own lexicographer defining a claim term differently from its ordinary meaning, the specification must clearly i ndicate the patentee’s intent to do so). Although the phrase “mounted thereon,” which indicate s that at least a portion of the diaphragm is on the outer surface of the body of the pump, may have a some what different meaning than the phrase “diaphragm disposed in the body ,” the two phrases are not mutually exclusive, viz. , a diaphragm “mounted t hereon” the body can also be a “diaphragm

05-1063 8disposed in the body,” as the second embodiment of the specificati on shows. Thus, the specification uses different words to high light the different ways that a diaphragm may be placed in the body of the pump. Mor eover, contrary to TFY’s position, the specification unambiguously uses the phrase “in the body” in the “Summary of the Invention” section to refer to diaphragms t hat are contained both entirely and partially in the body of the pump. ’850 paten t, col. 2, ll. 16-24. And the fact that the specification contains figures of embodim ents that are both entirely and partially in the body is a strong indication that the claims were intended to encompass both. Our review of the prosecution history al so does not clearly indicate that the patentee intended to disclaim coverage in t he claims for diaphragms that are not contained entirely within the body of the pump. See Omega Eng’g v. Raytek Corp. , 334 F.3d 1314, 1325-26 (Fed. Cir. 2003) (requiring a disclaimer of subject matter in the prosecution history to be “clear and unm istakable”). Although the patentee amended the claims, which originally recited “mount ing a [] diaphragm,” to a “diaphragm disposed in the body” in response to a § 112 indefin iteness rejection, that was not a clear disavowal of subject matter that was not co mpletely in the body. In his correspondence, the patent examiner did not re ject the originally-filed cl aims on the grounds that the claims containing the limitation “mounting a [] diaphragm” read on the prior art or was unsupported by the specification as filed. Rather, the exam iner took issue with the apparatus claims being “narrative in form and replete with indefinite and functional or operational language.” In making the am endment, the patentee merely replaced “operational” language, i.e. , “mounting a [] diaphragm,” with definite structural language, i.e. , a “diaphragm disposed in the body.” We are thus hard-pressed to conclude that

05-1063 9there has been a surrender of subject ma tter when the patentee has merely amended the claims to replace an original phrase with a different, but not narrower, amended phrase. At a minimum, this was not a “clear and unmistakable” disclaimer. II. “ Valve means” As an alternative ground for affirming the district court’s judgment of noninfringement, TFY argues that the court’ s construction of the “valve means” limitation, which included a deformable diaphragm as a corresponding structure, precludes a finding of literal infringement. Because the claims recite the limitations “deformable diaphragm disposed in the body” and “valve means” separately, TFY asserts that an accused device must contain separate structures meeting the respective limitations before there can be literal infringement. To support its position, TFY cites Gaus v. Conair Corp. , 363 F.3d 1284 (Fed. Cir. 2004), which it interprets as instructing that one component of an accused device cannot perform “double duty” and thereby satisfy two separate limitations of a clai m. According to TFY, because the accused products have only one structure, viz. , a deformable diaphragm, that meets two separate limitations, there can be no li teral infringement of the claims. We do not agree with TFY that the distri ct court’s construction of the claim limitation “valve means” compel s us to affirm its judgment of noninfringement. We first note that neither TFY nor Cannon challenges the district court’s construction of “valve means.” Thus, for purposes of this appeal only, we will assume that the court properly construed the “valve means” limitation. Usi ng that assumption, we conclude that the ’850 patent specification does not require that the “deform able diaphragm” and the “valve means” limitations must be embodied by separate components. In fact, the

05-1063 10specification teaches that it is the return of the diaphragm to it s original, undistorted position that causes the negat ive pressure in the body of the pump to be “released,” thus performing the function of the “valve means” limitation. ’850 patent, col. 7, ll. 45- 51. Because the district court construed t he claims to require a single diaphragm that meets both the “deformable di aphragm” and “valve means” limitat ions, the fact that the accused products have a single diaphragm that meets those claim limitations does not preclude a finding of literal infringement. See In re Kelley , 305 F.2d 909, 914 (CCPA 1962) (explaining that “[w]e see no reason why a single structural element . . . which performs two separate functions, cannot support a claim reciting broadly these two separate functions”). On the contrary, such a finding would prove that the two limitations have been met. Moreover, under TFY’s position that a single diaphragm cannot meet two separate limitations as a matte r of law, no device could literally infringe the ’850 patent because the district court construed the claims to require a single diaphragm to meet the two limitations. That would be an illogical result. Moreover, TFY’s reliance on Gaus to support its position is misplaced. The facts here are readily distinguishable from Gaus . In Gaus , the patent at issue was directed to a safety mechanism that prevents fatal s hocks to users of electrical appliances, e.g. , when the user drops a hairdryer into a bat htub. 363 F.3d at 1285. As TFY notes, the relevant claim language provided that the hous ing of the claimed device was comprised of “an electrical operating unit” and “a pair of spaced-apart electrically exposed conductive probe networks.” In Gaus we determined that, based on the description contained in the patent specification, the tw o limitations were embodied as two separate structural components of t he claimed invention. Id. at 1288-90. The accused product in

05-1063 11Gaus , however, did not have two separate components meeting the respective limitations, and thus we held ther e was no literal infringement. Id. at 1290. That is not our case. As explained above, there is nothi ng in the ’850 patent specification or the claims that require the “ deformable diaphragm” and “valve means” limitations to be embodied as two separate structural com ponents. On the contrary, the court’s construction of those limitations requires that both be embodied by the same single structure, viz. , a deformable diaphragm. Tellingly, TFY does not cite any case law prohibiting a claim from reci ting two limitations embodied by the same structural component. As another alternative ground for affirmi ng the district court’s judgment, TFY argues that the claims are invalid because t he “valve means” limitation does not comply with the definiteness requirem ent of 35 U.S.C. § 112, ¶ 1, in particular, that the specification contains no structure correspondi ng to the claimed function of the “valve means.” TFY’s invalidity argument attempts to broaden the district court’s judgment. Because the district court did not decide that issue, it is inappropriate for us to do so in this appeal. The matter may be considered on remand. COSTS Each party shall bear its own costs.

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