## United States Court of Appeals for the Federal Circuit

05-1088

AQUATEX INDUSTRIES, INC., Plaintiff-Appellant,

v.
TECHNICHE SOLUTIONS, Defendant-Appellee.

Jack A. Wheat , Stites & Harbison, of Louisville, Kentucky, argued for plaintiffappellant. With him on the brief was Joel T. Beres . Of counsel on the brief were Richard S. Myers, Jr. , James R. Michels and Alexandra T. MacKay , of Nashville, Tennessee. James A. DeLanis , Baker Donelson Bearman Caldwell & Berkowitz, P.C. , of Nashville, Tennessee, argued for defendant-appellee. With him on the brief was W. Edward Ramage

. Appealed from: United States District C ourt for the Middle District of Tennessee Chief Judge Robert L. Echols

## United States Court of Appeals for the Federal Circuit

05-1088

AQUATEX INDUSTRIES, INC., Plaintiff-Appellant,

v. TECHNICHE SOLUTIONS, Defendant-Appellee.

__________________________ DECIDED: August 19, 2005

__________________________ Before MAYER, GAJARSA, and DYK, Circuit Judges

. MAYER, Circuit Judge

. AquaTex Industries, Inc. (“AquaTex”) appe als the judgment of the United States District Court for the Middle Di strict of Tennessee, AquaTex Indus. Inc. v. Techniche Solutions , No. 02-CV-914 (M.D. Tenn. Sept. 27, 2004), granting summary judgment of noninfringement in favor of Techniche Solutions (“Techniche”). Because there was no literal infringement, and because the dist rict court improperly determined that prosecution history estoppel barred infringement under the doctrine of equivalents, we affirm-in-part, reverse-in-part, and remand.Background AquaTex initiated this action against Te c hniche for contributory infringem ent of United States Patent No. 6,371, 977 (“the ’977 patent”). A quaTex is the ass i gnee of the ’977 patent entitled “Protectiv e Multi-Layered Liquid Retainin g Composite.” Both parties market multi-layered , liqu i d-retaining co mposite material for evapor ative cooling garments. AquaT ex contends that Tec hniche’s ev aporative cooling garments and products infringe the ’977 patent ei ther literally or under the doct rine of equivalents. The ’977 patent claims a method of cooling a person through evapor ation by providin g a multi-lay e red, liqu i d-retaining composite material comprising a fiberfill batting, and either hy drophilic po lymeric fibers or hy drophilic polymeric particles. T h e technology is suited for use in a wide var i et y of items such as protective garments, blankets, and compresses. In general terms, pr actice of the patented method inv o lv es soaking a c o mposite material in a liquid for a matter of minutes, wringing out the excess liquid, and then plac ing the m a terial or garment against a person for cooling by evaporation. The ’977 patent specification des cr ibes the invention as including:

a basic c onfiguration of a m u lti-layered , liqu i d-retaining co mposite material comprising of: a conduc tive layer whic h is ada pted for placement in close pr oximity to, or i ndirect contact with the body of the wearer; a fi ller layer impregnated [with] a fiberfill batting material and with liquid abs orbent particles, fibers, or a combination of both; a retainer layer for retention of the filler lay e r between the condu ctive layer and the retention layer; and, if needed, an outside pr otective lay e r attached to, or placed adjacent to, the outermost su rface of the retention layer. ’977 patent , col. 3, ll. 31-44. The patent includes 35 claims . Independent claims 1 and 9 are disputed in this case. Claim 1 reads: A method of cooling a person by evaporation, comprising:

05-1088 2providin g a multi-layered, liqu i d-reta ining composite material comprising a fiberfill batting material , and hy drophilic polymeric fibers that absorb a t least about 2.5 times the fiber’s weight in wat e r; soaking said multi-layered composite in a liquid; employing said mult i-layered, liquid -retaining composite material as a garment or a flat sheet and evapo ratively cooling said person. ’977 patent , col. 13, ll. 64-67 & col. 14, ll. 1-6 (emphasis added). Similarly, claim 9 requires the water-absorbent layer to comp rise “a fiberfill batting material and hydrophilic polymeric particles.” The sp ecification of t he ’977 pa tent de scribes a “fille r layer imp r egnated [ with] a fiberfill batt i ng materia l and with liqu i d a b so rbent particles, fibers, or a combinatio n of both[.]” col

. 3, ll. 37-39. Fu r t her, the specification states: With respect to the liquid absorbent fibers, the blend is a combination of a superabsorbent polymeric fiber and a fiberfill or b a tting. The particular fiberfill is n o t known t o be critica l

. That is, any commercial fiberf ill may b e used as long as it does not adversely affect the performance of the end composite. Accordingly, when the end co mposite is to be used as or part of a fire retardant garment, the fiberfill or batting is cho s en accord ingly. In such a cas e , the fiberfill is typica lly comprised of a flame and he at resistant material such as wov en aramid and/ or polybenzamidazole (“PBI”) fibers. That is, the fiberfill is s e lected from a group consisting of an aramid polym e r fabric material, as [a] blend of ar amid polymer fabric m a terials, a polybenzamidazole material, and a blen d of aramid polymer fabric and polybenzamidazole materials. For ot her non-flame retardant applic ations, commercial fiberfill su ch as DuP ont DACRON® available from DuPont, or polyester fiberfill pro d u cts fr om Conso lidat ed Te xtiles , In c. of Charlotte, N.C. Additionally , U.S. Pat. Nos. 5, 104,725; 4,304,817; and 4,818,599; all of which [are] incorporat ed by reference, disc lose fiberfill fibers and blends suitable for certain applications of the present invention. ’977 paten t, col. 3, l l . 45-65. The comme rcial fiber fill e x amples describ ed in the specification are all sy nthetic or man-made materials. Like wise, the three United States patents incorporated by reference each discl oses and teaches the use of synthetic polyester fiberfill or synthetic pol y e ster fiberfill ble nds.

05-1088 3During prosecution of the ’977 patent t he United States Pate nt and Trademark Office initially rejected AquaTex’s current clai ms 1 and 9 as anticipated by Unit ed States Patent No. 4,897,297 (“the ’297 patent”). The rejection fo cused on the ’297 patent’s disclos ure of a method for cooling a person using a multi-layered, liqu i d-retainin g composite material comprising a fiberfill batti ng materia l . The exa m iner noted that the disclos ed fiberfill batting material was a “mixtur e of synthetic polym er pulp or wood pu lp, which is a fiber.” In respons e to the office action, AquaTe x traversed the rejection by distinguishing the ’297 pat ent and by adding an additional cl aim limitation. AquaTex contended that: “The ’297 Patent discloses a compress that is made from an elastic fabric and comprises a hydrogel-forming poly meric material. The absorbent polymer filler material may be particulate, and may b e a ccompa n ied by a d ilue n t filling material.” Important to our analysis, A quaTex stated “the ’297 Patent fa ils to disclos e or sugge st the fiberfill batting and polymeric fibers and/or particles of t he composite material in the claimed method. Additionally, the ’297 Pa tent f a ils to dis c lose or suggest the evaporativ e cooling method of the present inventio n.” Addressing an obviousness rejection by the examiner based upon the ’297 patent, AquaTex si milarly pointed out that “the ’297 Patent does not cool by evaporation, and is elastic.” AquaTex amended current claims 1 and 9 to specify cooling a person “by evaporation” to distinguish th e ’297 patent. As discus s ed in the office action response, the combination of material s within the ’297 patent is des igned to retain liquid and insignificant amounts of evaporat ion would occur over long periods of time. AquaT e x contrasted the evapor ative coolin g method of the claimed inve ntion whic h is designed to

05-1088 4release rather than retain moisture. The examiner withdrew the rejection and allowed the ’977 patent to issue. Techniche’s accused products use Vizorb ®, whic h is manufactured by Buckeye Technologies. Vizorb® is a commercially available composite material primarily containing cellulose fluffed pulp, but also inc o rporating both natural and sy nthetic fibers. In particular, it is manufactured from wood cellulose, superabsorbent polymer, bicomponent fiber, cellulose bas ed carrier sheet, and a chemic al binder. Physically , Vizorb’s ® f i bers are between thr ee to six mill imeters in length and the product is glued together. The superabsorbent in Viz o rb® is generally referred to as a powder. It is typically used in feminine hy giene produc ts, baby diapers, and adult incontinenc e products, not as filler for furniture, pillo ws, or sleep ing ba gs. Techniche moved for summary judgment on the ground that its accused pr oduct does not infringe AquaTex’s ’977 patent literally or by appl icat ion of the doctrine of equivalents

. AquaT ex correspondingly m o ved for partial summary judgment that Techniche’s products do infringe its ’977 patent. The trial court construed “fiberfill” from the perspective of one of ordinary skill in the art to encompass synthetic fiber s, and not natur al fibers or a comb ination of synthetic and natural fibers. The court based its cl aim construction analysis on the ordinary meaning of the cla i m term “fiber fill” as elicite d from a num ber of technica l a n d in dustry dictionaries

. Further, the court examined th e specific ation of the ’977 patent to reach the determination tha t the commercial fib e rfill battin g contemplated by th e patentee must consist of polyester or other synthet ic fibers. It also found that AquaTe x disavowed the claim scope of natural fibers during prosecution of the ’977 patent by

05-1088 5stating in its office action respons e that “the ’297 Patent fails to disclose or suggest the fiberfill b a tting an d po lymeric fib e rs and/or par ticles of the composite material in the claimed m e thod.” The court concluded that AquaT ex was barred from asserting any doctrine of equivalents claim becau se it disav o wed the use of wood pulp or a mixture o f synthetic and natural fibers as fiberfill in th e water-absorbent layer. It reasoned that prosecutio n history estoppel b a rred Aqu a Te x from asserting that “fiberfill batting material” could be partially comprised of na tural fibers. The court granted Technich e’s motion for summary judgment of noninfringem ent, denied its request for attorney fees, * and denied AquaTex’s motion for sanctions, wh ich is not at issue in this appeal. AquaTex appeals and our juri sdic tion is pursuant to 28 U.S.C. § 1295(a)(1). Discussion We review a district court’ s grant of summary judgment de novo . Vanmoor v. WalMart Store s , Inc. , 201 F.3d 1363, 1365 (Fed. Cir. 2000). “Summary judgment is appropriate when there is no genuine issue as to any materi al fact and the moving par t y is entitled t o judgment as a matter of law.” I d

. (citations omitted). Summary judgment is improper “if the evidence is suc h that a r easonable jury could return a verdict for the nonmoving party.” A nders on v. Liberty Lobby, Inc. , 477 U.S. 242, 248 (1986). “In the context of a grant of summary judgment of no infringement, th is court reviews the entire infringement inquiry without def erence.” Salazar v. Procter & Gamble Co. , 2005 U.S. App. LEXIS 1351, at *5 (Fed. Cir. July 8, 2005) (citing Om ega Eng’g, Inc

. v. Raytek

* Because Technic he failed to cross app eal on this issue prop erly, we de cline to consider it. See Radio Steel & Mfg. Co . v. MTD Prods., Inc. , 731 F.2d 8 4 0, 844 (Fed. Cir. 1984) (“[A] party will not be permitted to argue before us an issue on which it ha s lost and on whic h it has not appealed, where the result of accept ance of its argument would be a reversal or modification of t he judgment rather than an affirmance.”).

05-1088 6Corp. , 334 F.3d 1314, 1320 ( F ed. Cir. 2003)). Applic ation of pr osecution histor y estoppel to limit the doctrine of equivalents presents a question of law that this court also reviews without deference. Glax o W e llcome, Inc. v. Impax Labs., Inc. , 356 F.3d 1348, 1351 (Fed. Cir. 2004). Because t he ’977 patent claims the us e of evaporative coolin g garments, rather than the ac tual multi-layer fabr ic itself, AquaTex’s caus e of action is one for c ontributory infringement under 35 U.S.C. § 271( c). Although not directly in fringing, a party may still be liable f o r inducement or contributory infr ingem ent of a method claim if it sells infringing devices to customers who use them in a way that directly infringes the method claim. ** R.F. Del., Inc. v. Pac. K e ystone Techs., Inc. , 326 F.3d 1255, 1267 (Fed. Cir. 2003). “Liability for either ac tive induc em ent of infringement or for contributory infringement is dependent upon the existence of direct infringement.” Joy Techs., Inc. v. Flakt, Inc

. , 6 F.3d 770, 774 (Fed. Cir. 1993). “An infringement analysis entails two st eps. First, the meaning and scope of the asserted patent claims is determined, and then the properly construed claims are compared to the accused product or process.” Ranbaxy Pharms., Inc. v. Apotex, Inc., 350 F.3d 1235, 1239-40 (Fed. Cir . 2003) (citing Cybor Corp. v. FAS Techs., Inc. , 138

** The trial court determined that in order for contributory infringement to exist, Vizorb®, a component of Techniche’s products, must not have any substantial noninfringing uses. Contributor y infringem ent liabilit y arises when one “sells within the United States . . . a[n] . . . apparatus fo r use in practicing a patented process, constituting a material part of the invention . . . and not a st aple art i cle or com m odity of commerce suitable for substantia l noninfringing use . . . .” 35 U.S.C. § 271(c) (2000). From the record before us, the “apparatus for use in practicing” the claimed methods is Techniche’s multi-lay e red product. The pr oper quest i on is not whether Vizorb® is a staple article of commerce, which is readily apparen t, but whether the accused Techniche products are “suitable fo r substantial noninfringing use[s ].”

05-1088 7F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)). Cla im construction is a quest i on of la w reviewed de novo . Cybor Corp. , 138 F.3d at 1456. To ascertain the meaning of a disput ed claim term “the words of a c l aim are generally given their ordinary and custom ary meaning,” as would be understood by “a person of ordinary sk ill in the art in question at the time of the invention, i. e., as of the effective filing date of t he patent applic ation.” P h illips v. AWH Corp. , 415 F.3d 1303, __, (Fed. Cir. 2005) (en banc). Th e spec ification is of c ent ral importance in construing claims bec ause “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular c l aim in whic h t he dis puted term appears, but in the context of the entire patent, in cluding the specification.” Id. at *24. Where, as here, the disputed claim term is technical or a term of art, “[t]he best source for understanding [it] is the specification from which it ar ose, informed, as needed, by the prosecution history.” Id

. at *30 (quoting Multif orm Desi cc ants, Inc. v. Medzam Ltd. , 133 F.3d 1473, 1478 (Fed. Cir. 1998)). Along with the intr insic evidence of record, including the prosecution history, extrinsi c evidence can be useful in cl aim construction and “technic a l dictionaries may provide [help] to a court ‘to better understand the underlying technology ’ and the way in which one of skill in the art might use the claim terms.” Id. at *38 (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1584 (Fed. Cir. 1996)). The claim limitation disputed by the parti es is “fiberfill batting m a terial,” and the primary issue is whether it should be const r ued to encompass only synthetic fibers as the trial court held. Resoluti on of the claim construction issue t hen controls whether Vizorb® c onstitutes “fiberfill” as required by the ’977 patent for literal infringement

05-1088 8because Vizorb® c o ntains a combination of natural and synthetic fibers. Whether Techniche is liable for contributory in fringement depends upon this issue. Turning to the specific ation of the ’ 977 patent, we examine the context of the term “fiberfill” in the clai ms themselves. Both claims 1 and 9 call for a method of cooling a person by evaporation through use of “a multi-layered, liquid-retaining composit e material co mprising a fiberfill batting material, and hydro philic po ly meric fibers [particles in cla i m 9] . . . .” As used in this contex t, the fiberfill b a tting material, in conj unction wit h other poly m eric fibers or particles, must be c apable of liquid ret ent ion and evaporation. The claims, however, offer little guidance as to the underlying c o mpos ition of “fiberfill batting material” apart from the functions it must be capable of performing. The written description, on the other hand, does provide guidance as to the composition of “fiberfi ll batting material.” In the deta iled description of the inv ention , AquaTex dictated that “[t]he parti cular fiberfill is not known to be critical. That is, any commercial fiberfill may be used as long as it does not adversely a ffect the performance of the end composite.” ’977 pat ent, col. 3, ll. 47-50. From this statement, the patentee has informed the pub lic that any commercial fi berfill t hat is capa ble of performing the claimed functions will suffice. The written description continues by describing numerous
examp l es of commercial grade fi berfill, all of which are comp rised entirely of synthetic materials. Because AquaTex chose to incorporate by reference the teachings of three United States Patents to define the sco pe of the te rm “fiberfill,” these public ations are highly relevant to one of ordinary skill in the art for ascertainin g t he breadth of the c l aim term. In United States Patent No. 4, 304 ,817, the specificatio n teaches th at “[p]olyester fiberfill

05-1088 9is used commercially in many garments and other articles because of its desirable thermal ins u lating and aesthetic properties . . . . Most comme rcial poly e ster fiberfill ha s been in the form of crimped polyester staple fiber .” col. 1, ll. 11-16. Similarly, the remaining t w o patents describe “fiberfill” in te rms of a synthetic, normally polyester, fiber for use as a fillin g material. None of t he patents discusses the possibility of usin g natural fibe rs as commercial fibe rfill batting. “In addition to consulting the specificati on . . . a court ‘should als o consider the patent’s pr osecution hist ory, if it is in evidence.’” Phillips , 415 F.3d at __ (quoting Markman v. Westview Instr., In c. , 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc)). In interpreting “fiberfill,” the trial court relied heavily upon statements made durin g prosecution of the ’977 patent as a clear disavowal of natu ral fi bers for use as “fiberfi ll batting material.” The prosecution history, however, is ambiguous and does not directly address th e composition of “fib erfill.” Th us , we dis agree with the trial court that AquaTe x ’s arguments foreclose p o t ential co mpositions of fiberf ill, and we de cline to giv e the prosecution history much weight. See Phillips , 415 F.3d at __ (because the prosecution history represent s an ongoing negotiation, “it ofte n lacks the c l arity of the specification and thus is less us eful for claim construction purpos es”). Parti c ularly, the examiner represented that the prior art ’297 patent c ontained a blend of fiberfill batting comprised of synthetic polymer pulp and wood pulp. Instead of addressing the compositio n of the fiberfill b a tting in the prior art, AquaTe x c hose to traverse the rejection by distinguis hing how the overall compos ition of materials was us ed, and by pointing out that the prior art composition of materials was des igned to retain liquid f o r long periods of time. The repres entations made during prosecution neither support nor

05-1088 10discredit a n y particular meaning of the term “fi berfill.” They are not a clear disavo wal of claim scope. The extrinsic evidence of record, in t he form of technical di ctionaries, supports construing “fiberfill” as a purely s y nthetic fib e r because it is cons is tently defin ed as such

. The definitions giv en in all but one of the dic t ionaries re lied upon by the trial c o urt define “fiberfill” as either a sy nthetic fibe r or as a man-made material us e d as a filler for various items. The contradictory s ource was a chemical dictionary that simply gave two
examp l es of natural materials that could cons titute “fiberfill.” Ot her extrinsic indust ry

sources e x amined by the trial co urt lend su pport to construing “fiberfill” as a synthetic o r polyester fill material. The Unit ed States Customs Service, in its publication “Fiber Trade Nam e s and Ge neric Terms” Nov. 1999, lists “Fiberfill” as a “Fiber Trade Name” for the generic term “Polyester.” Similarl y, the Un ited States International Trade Commission issued a ruling that pol yester s t aple fiber is known in the industry as “fiber for fill.” Certain Polye s ter St aple Fiber from Korea and Taiwan , Investigation Nos. 731- TA-825-826 (Final) (May 5, 2000). While we adhere to the adage that limitations from the specific ation must not be imported into the claims, see, e.g. , Nazomi Communications, Inc. v. ARM Holdings, PLC , 403 F.3d 1364, 1369 (Fed. Cir. 2005), based upon the teachings of the specification, one of or dinary skill in the textile manufacturing indus try would understand that commercial “fiber fill batti ng material” is made of s y nthetic or polyester fibers. Th e combined t eachings within the s p ecification of the ’977 patent, t he patents inc o rporated by reference, and the consistent interpretati ons in the industry pub lications would lead one skilled in the art to this c onclus i on. Therefore, we affirm the district court’s

05-1088 11determination that the accused T e chniche products do not litera lly infringe claims 1 and 9 of the ’977 patent. Howev e r, “[t]he doctrine of equivalent s allows the patentee to claim those insubstantial alterations that were not capt ured in drafting the original patent claim but which could be created through trivial changes.” Festo Corp. v. Shoketsu Kinzok u Kogyo Kabushiki Co. , 535 U.S. 722, 733 (2002) (“Festo II ”). Infringement under the doctrine of equivalents requires that the accused product c ontain each limita t ion of the claim or its equivalent. Warner-Jenkin so n Co. v. Hilton Dav i s Che m . Co. , 520 U.S. 17, 40 (1997). An element in the a ccused product is equivalent to a claim limit ation if the differences between the two are insubstant ial. The analysis foc u ses on whether the element in the accused devic e “p erforms substantially the same function in substantially the same way to obt ain the same result” as t he claim limitation. Graver Tank & Mfg. Co. v. Linde Air Prods. Co. , 339 U.S. 605, 608 (1950) (int ernal quotation omitted). Prosecution history estoppel c a n prevent a patentee fr om relying on the doctrine of equivalents when the patentee relinquishes subj ect matter during the prosecution of the patent, either by amendment or argument. Pharmacia & Up john Co. v. Mylan Pharm., Inc. , 170 F.3d 1373, 1376-77 (F ed. Cir . 1999). “The doctrine of prosecution history estoppel limits the doctrine of equival ents when an applic ant makes a narrowing amendment for purposes of patentability, or clearly and unmistakably s u rrenders subject matter by arguments ma de to an examiner.” Salazar , 2005 U.S. App. LEXIS 13517, at *6; see Festo II , 535 U.S. at 736 (narrowing amendment for purposes of patentability); Eagle Comtronics, Inc. v. Arrow Communication Labs., Inc. , 305 F.3d 1303, 1316 (Fed. Cir. 2002) (ar gument-based estoppel).

05-1088 12While at least one claim limitation wa s added here to overcome an antic ipation rejection during the prosecut ion of the patent, Technic he does not allege amendmentbased estoppel. Instead it asserts argument -based estoppel. To invoke argumentbased estoppel, the prosecution history “must evince a clear and unmistakable surrender of subject matter.” Pharmacia , 170 F.3d at 1377 (internal qu otation omitted)

. To determine if subject matter has been reli nquished, an objective test is applied, inquiring “ w hether a competitor would r easonably believe that the applic ant had surrendered the relevant subj ect matter.” C y bor Corp. , 138 F.3d at 1457. We do not see the clear and unmistakable surrender of subject matter required t o invoke argument-based prosecut ion history estoppel. During pr osecution of the ’977 patent AquaTex stated t hat “the ’297 Patent fails to di sclos e or suggest the fiberfill batting and polymeric fibers and/or particles of the composite material in t h e claimed method.” Techniche and the tr ial court believe this argum ent lim ited claim coverage o f fiberfill to only synth etic fibers. The ar g u ment, however, doe s not addr ess or eve n relate to the composition of the fi berfill ba tting. Rather, it was based on the ’297 patent not teaching or suggesting the overall c o mposition of materi als, or the use of the disclos ed c o mpress to cool a per son through evaporation. The c o mpress of the ’297 patent was designed to retain much of its li quid over long periods of time, thus giving the material a high heat capacity and a high insula tive value. ’297 patent, col. 6, ll. 24- 55. The claimed invention of the ’977 pat ent achieves cooling through evaporation. The arguments made during prosecution, and the corresponding additio n of the claim limitation “by ev aporation,” indic a te t hat AquaT ex was dis t i nguishing the overall method of cooling of its clai med invention from that of the ’297 patent. The subject

05-1088 13matter surrendered by the narrowing amendment bears no relation to the composition of the fiberfill batting material. Ther e is no indi cation in th e prosecuti on history whether or not AquaT ex agre ed or disagree d with the examiner’s statem ent that the fi berfill foun d in the prior art comprised natural fibers. Thus, the trial court e rred in holding that prosecution history estoppel barred AquaTex from asse rting infringement under the doctrine of equivalents

. Upon remand the trial court must c onsider whether or not each limitation of the claims in di spute, or its equivalent, is pr esent in the accused Techniche products. See Graver Tank , 339 U.S. at 608. Conclusion Accordingly, the judgment of the United States District Court for the Middle District of Tenness ee is affirmed-in-part, reversed-in -part, and the case is remanded for further proceedings consistent with this opinion. COSTS No costs.

AFFIRMED-IN-PART, REV E R S E D -IN-PART , AND RE MANDE D

05-1088 14