NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

MICHAEL L. MCGINLEY, S.C. PRODUCTS, INC.,

Plaintiffs-Appellants

v.

LUV N' CARE LTD., ADMAR INTERNATIONAL, 

INC., BAYOU GRAPHICS & DESIGN, LLC, 

BUYBABYDIRECT, LLC, CONTROL SERVICES, 

INC., HHHII, LLC,

Defendants-Cross-Appellants

______________________

2019-2175, 2019-2190

______________________

Appeals from the United States District Court for the 

Western District of Louisiana in No. 3:17-cv-00821-TADKLH, Judge Terry A. Doughty.

______________________

Decided: July 29, 2020

______________________

KIP D. RICHARDS, Walters Renwick Richards Skeens & 

Vaughan, P.C., Kansas City, MO, for plaintiffs-appellants. 

 ROBERT M. CHIAVIELLO, JR., NubyLaw, Monroe, LA, for 

defendants-cross-appellants. 

 ______________________

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2 MCGINLEY v. LUV N' CARE LTD.

Before NEWMAN, O’MALLEY, and CHEN, Circuit Judges.

O’MALLEY, Circuit Judge.

Michael L. McGinley is the inventor of a container or 

pitcher having a “flexible side wall portion” that can conform to the shape of a child’s head, patented under U.S. 

Patent No. 8,636,178 (the “’178 patent”). Mr. McGinley and 

S.C. Products, Inc. (SCP) (collectively “McGinley”), brought 

a patent infringement suit against Luv N’ Care, Ltd. 

(“Luv”), and a number of other companies, including Admar International, Inc. (“Admar”), BuyBabyDirect, LLC 

(“BBD”), Bayou Graphics and Design, LLC (“BGD”), Control Services, Inc. (“CS”), and HHHII, LLC (“HHHII”) (collectively “LNC”) that are commonly-owned and controlled 

by Luv and its principals. On LNC’s motions for summary 

judgment, the United States District Court for the Western 

District of Louisiana ruled that LNC had not infringed the 

’178 patent, either literally or under the doctrine of equivalents, and that LNC had not shown that the ’178 patent 

was invalid. We reverse-in-part and affirm-in-part the district court’s claim construction order, vacate the district 

court’s order granting summary judgment of noninfringement, affirm the district court’s order denying summary 

judgment of invalidity, vacate the district court’s order dismissing Count III and awarding costs, and remand for further consideration.

BACKGROUND

The ’178 patent was filed on October 22, 2008, issued 

on January 28, 2014, and is directed to a container or 

pitcher “having a flexible side wall portion and rim portion . . . which can conform to the shape of an object.” ’178 

Patent, Abstract. The specification indicates that the primary purpose of the container is for rinsing shampoo or 

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MCGINLEY v. LUV N' CARE LTD. 3

soap from the head of a child. Id. at col. 2 ll. 57–63. Figures

6 and 9 illustrate embodiments of the container.

Id. at Figs. 6 & 9. The specification states that the container has continuous sidewalls (12) with one of the sidewalls having a sidewall portion (24) with a flexible panel 

portion (28). Id. at col. 4, ll. 4–61. The specification further 

states that the flexible panel portion is constructed of a 

thin flexible plastic or a flexible rubber panel that is capable of conforming to the shape of the head of a child. Id. at 

col. 4, ll. 43–61. In operation, the flexible panel portion is 

pressed against the front of the head above the eyes and 

the rinse water pours over the top of the head. Id. at col. 2, 

ll. 57–63. The specification indicates that the flexible panel 

portion prevents the rinse water from flowing into the 

child’s eyes or face. Id.

In a preferred embodiment of the invention, sidewall 

portion (24) is generally flat and may therefore differ in its 

shape as compared to the remainder of sidewall rim (12) 

and sidewall (20). Id. at col. 4, ll. 30–34. For example, if 

sidewall (12), in its construction, comprises a cylindrical 

container, then sidewall rim (20) will be comprised of a 

generally circular sidewall rim portion (26) and a generally 

flat sidewall rim portion or sidewall segment or rim segment (24). Id. at col. 4, ll. 34–38. The specification states, 

however, that generally continuous sidewall (12) can be of 

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4 MCGINLEY v. LUV N' CARE LTD.

any convenient shape, spanning shapes from square to circular to polygonal. Id. at col. 4, ll. 5–7.

The ’178 patent has two independent claims, 1 and 6, 

both of which include a continuous sidewall “having a flexible portion thereof that defines a generally flat sidewall 

section and a generally non flexible portion.” For purposes 

of this appeal, claim 1 is representative and reads:

A container comprising:

a generally continuous sidewall terminating in an 

upper sidewall end and a lower sidewall end and 

defining an inward fluid holding space bounded by 

said continuous sidewall, said continuous sidewall 

having a flexible portion thereof that defines a generally flat sidewall section and a generally non flexible portion joined on either end to the flexible 

portion, a bottom closing said lower sidewall end 

with said upper sidewall end being generally open,

a generally flat inwardly flexible panel forming a 

portion of said generally flat sidewall section and 

extending to form at least a portion of said upper 

sidewall end, the flexible panel facing outwardly 

and being sized, shaped and sufficiently pliable to 

matingly mold to the head of a person during use; 

said flexible panel having a generally smooth inward surface for unobstructed fluid flow out of said 

open upper sidewall end, and

a handle located on the non flexible portion opposite the flexible panel to allow a user to lift and 

pour the container when filled with liquid.

’178 Patent, claim 1 (disputed claim terms in italics).

LNC manufactures a rinse pail, having a flexible sidewall, referred to as the Nuby Tear Free Rinse Pail (“Accused Device”). On March 30, 2016, McGinley filed suit in 

the United States District Court for the Western District of 

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MCGINLEY v. LUV N' CARE LTD. 5

Missouri, naming Luv as the sole defendant. McGinley alleged Luv infringed the ’178 patent on the basis of Luv’s 

importation into the United States, making, using, offering 

for sale, and selling Luv’s Nuby Tear Free Rinse Pail. Luv 

subsequently filed its own action in the Western District of 

Louisiana seeking a declaratory judgment of no infringement and patent invalidity together with counts directed 

to various state and federal unfair competition counterclaims. These claims were later asserted as counterclaims

in the original action. 

Luv’s action in the Western District of Louisiana was

transferred to the Western District of Missouri under the 

“first to file” rule and the two actions were consolidated. 

Before discovery started, the U.S. Supreme Court decided 

TC Heartland, LLC v. Kraft Foods Group Brands LLC, 137 

S. Ct. 1514 (2017). Luv moved to transfer the case back to 

Louisiana. That motion was not opposed and the District 

Court for the Western District of Missouri transferred the 

consolidated actions back to the Western District of Louisiana. After the case was transferred to Louisiana, the district court granted McGinley’s motion to amend his 

complaint. On July 27, 2018, McGinley filed an Amended 

Complaint adding to his Count I infringement claim 

against Luv, infringement claims against the remaining 

LNC defendants.

At the conclusion of discovery, the parties filed separate summary judgment motions directed to the question 

of infringement. McGinley’s motion sought summary judgment that the Accused Device infringed claims 1, 2, 4, 6, 7 

and 9. LNC’s motion sought summary judgment that the 

Accused Device did not infringe any of the asserted claims 

because it did not include a “generally flat sidewall section” 

required by all asserted claims, a “generally flat inwardly 

flexible panel” required by claims 1, 2 and 4, or a “handle” 

as required by claims 1 and 6.

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6 MCGINLEY v. LUV N' CARE LTD.

While the motions on the infringement issues were 

pending, LNC sought leave to file a motion for summary 

judgment of invalidity relating to the effective filing date 

to be accorded the ’178 patent. In response, McGinley 

sought leave to file a cross-motion that the ’178 patent was 

entitled to the filing date of earlier applications. The district court granted both requests and the parties filed their 

cross motions directed to the invalidity issue.

Since many of the noninfringement and invalidity issues hinged on the proper interpretation of claim terms, 

the district court determined that it would benefit from a 

separate hearing on claim construction and set a Markman

hearing for April 3, 2019. The parties requested, and the 

district court agreed, to allow argument on the summary 

judgment motions at the same time as the Markman hearing. The district court issued its claim construction order 

on May 15, 2019. McGinley v. Luv N' Care, Ltd., No. 3:17-

CV-00821, 2019 WL 2150384 (W.D. La. May 15, 2019). On 

the same day, the district court issued its opinions and 

judgments on the parties’ motions for summary judgment. 

The district court granted LNC’s motion for summary judgment of noninfringement and denied McGinley’s motion. 

McGinley v. Luv N' Care, Ltd., No. 3:17-CV-00821, 2019 

WL 2150386 (W.D. La. May 15, 2019). The district court 

denied LNC’s motion for summary judgment of invalidity 

and granted McGinley’s cross-motion. McGinley v. Luv N' 

Care, Ltd., No. 3:17-CV-00821, 2019 WL 2150385 (W.D. La. 

May 15, 2019). 

On June 19, 2019, the district court further ordered 

that McGinley’s claims in Count III of the Amended Complaint1 be dismissed without prejudice as moot given the 

1 McGinley’s “Count III claims seek[] to hold Defendants jointly and severally liable as a ‘single business enterprise’” under Louisiana state law “for any damages or 

relief” that McGinley “recover[s] for the patent 

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MCGINLEY v. LUV N' CARE LTD. 7

Court’s summary judgment of noninfringement, and ordered that LNC is the prevailing party and will be awarded 

chargeable cost under 28 U.S.C. § 1920. McGinley v. Luv 

N' Care, Ltd., No. 3:17-CV-00821, 2019 WL 3282926, at *3–

5 (W.D. La. July 19, 2019).

The parties timely filed Notices of Appeal and CrossAppeal, and this appeal followed.

DISCUSSION

We review a grant of summary judgment under the 

law of the regional circuit, which in this case is the Fifth 

Circuit. See Charles Mach. Works, Inc. v. Vermeer Mfg. 

Co., 723 F.3d 1376, 1378 (Fed. Cir. 2013) (citing Grober v. 

Mako Prods., Inc., 686 F.3d 1335, 1344 (Fed. Cir. 2012)). 

The Fifth Circuit reviews a grant of “summary judgment de novo.” Patel v. Tex. Tech Univ., 941 F.3d 743, 747 

(5th Cir. 2019) (citing Ezell v. Kan. City S. Ry. Co., 866 F.3d 

294, 297 (5th Cir. 2017)). 

Summary judgment is appropriate when the moving 

party demonstrates that “there is no genuine dispute as to 

any material fact and the movant is entitled to judgment 

as a matter of law.” Fed. R. Civ. P. 56(a); Cheetah Omni 

LLC v. AT&T Servs., Inc., 949 F.3d 691, 693 (Fed. Cir. 

2020). “The evidence of the nonmovant is to be believed, 

and all justifiable inferences are to be drawn in [the nonmovant’s] favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 

242, 255 (1986); accord Triple Tee Golf, Inc. v. Nike, Inc., 

485 F.3d 253, 261 (5th Cir. 2005).

infringement alleged in Counts I and II of the Amended 

Complaint.” McGinley v. Luv N' Care, Ltd., No. 3:17-CV00821, 2019 WL 3282926, at *3 (W.D. La. July 19, 2019). 

The claims of relief stated in Count III are dependent on 

McGinley’s ability to recover infringement damages under 

Counts I or II. Id.

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8 MCGINLEY v. LUV N' CARE LTD.

I. Infringement

The district court determined as a matter of law that 

the Accused Device does not infringe the ’178 patent. An 

infringement analysis involves a two-step process: the 

court first determines the meaning of disputed claim terms 

and then the accused device is compared to the claims as 

construed. Markman v. Westview Instruments, Inc., 52 

F.3d 967, 976 (Fed. Cir. 1995), aff'd, 517 U.S. 370, 116 S.

Ct. 1384 (1996).

“[T]he ultimate issue of the proper construction of a 

claim should be treated as a question of law,” which we review de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 

574 U.S. 318, 326, 135 S. Ct. 831, 838 (2015). Any subsidiary factual findings related to claim construction are reviewed under the clearly erroneous standard. Id. Whether 

an accused device or method infringes a claim either literally or under the doctrine of equivalents is a question of 

fact. Thus, on appeal from a grant of summary judgment 

of noninfringement, we must determine whether, after resolving reasonable factual inferences in favor of the patentee, the district court correctly concluded that no 

reasonable jury could find infringement. Amgen Inc. v. 

Hospira, Inc., 944 F.3d 1327, 1335 (Fed. Cir. 2019).

A. Claim Construction

The principal question in this case is whether the Accused Device meets the “generally flat” or “handle” limitations found in all asserted claims.

The “generally flat” limitations:

Before the district court, McGinley proposed construing “generally flat” as used in claims 1 and 6 in regard to a 

“sidewall section” as “a sidewall section that need not be 

exactly or perfectly flat, but is mostly flat.” Similarly, 

McGinley proposed construing “generally flat” as used in 

claim 1 in regard to an “inwardly flexible panel” as “an inwardly flexible panel that need not be exactly or perfectly 

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MCGINLEY v. LUV N' CARE LTD. 9

flat, but is mostly flat.” LNC, on the other hand, proposed 

construing “generally flat” as used in all asserted claim 

limitations as “mostly flat and not curved.” While the parties agreed that the term “generally flat” is not limited to 

perfectly flat, the parties disputed whether the term “generally flat” allows for any curvature. 

The district court found that the “parties’ constructions 

are unhelpful and fail to consider the intrinsic record in its 

entirety.” McGinley, 2019 WL 2150384, at *14. First, the 

district court rejected LNC’s construction “because it renders the adverb ‘generally’ meaningless.” Id. According to 

the district court, LNC agrees that the term “generally flat” 

does not require “perfect flatness,” but “propose[s] a construction that excludes everything that is not perfectly 

flat.” Id. at *14–15 (stating “a surface that does not have 

any curvature, arc, bend or bow, would necessarily be considered perfectly straight and flat”). Second, the district 

court rejected McGinley’s construction because it fails to 

take into account the prosecution history and because construing “generally flat” to mean “mostly flat” provides little 

guidance. Id. at *15. The district court thereafter adopted 

its own constructions for the “generally flat” limitations. It 

construed the term “generally flat sidewall section” to 

mean “a section of the sidewall that is not perfectly flat, 

and differs in its shape as compared to the remainder of the 

continuous sidewall.” Id. at *16. It construed the term 

“generally flat inwardly flexible panel” to mean “a portion 

of the flat sidewall section that is not perfectly flat, and differs in its shape as compared to the remainder of the continuous sidewall.” Id.

On appeal, both parties argue that the district court 

misconstrued the “generally flat” claim limitations. As 

noted by LNC, the district court’s “construction of the generally flat limitation has two parts.” See Cross-Appellant’s 

Br. 20. Part one requires “a section of the sidewall that is 

not perfectly flat” and part two requires that the sidewall 

section “differs in its shape as compared to the remainder 

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10 MCGINLEY v. LUV N' CARE LTD.

of the continuous sidewall.” Id. This is an apt description 

of the district court’s constructions. While we agree with 

much of the district court’s analysis, for the reasons discussed below, these constructions are incorrect.

With respect to part one, LNC is correct that the district court’s adoption of the “not perfectly flat” construction 

includes in that construction everything that is not perfectly flat, including the completely rounded or cylindrical

surfaces of the prior art that McGinley has argued are not 

“generally flat.” Cross-Appellants’ Br. 21. Conversely, the 

district court’s construction explicitly excludes wall sections that are “perfectly flat,” which must also be considered “generally flat.” Id.

With respect to part two, McGinley is correct that, by 

requiring the “generally flat sidewall section” to differ in 

shape from the remainder of the continuous sidewall, the 

district court “restricted, by implication, the shape that the 

invention’s remaining continuous sidewall could take as 

well.” Appellant’s Br. 24. McGinley is correct that by construing the claim terms as it did, the district court effectively and impermissibly construed the asserted claims to 

limit the scope of the invention solely to one of the preferred 

embodiments—one having a “generally flat” sidewall section in the front and round/cylindrical sidewalls elsewhere.2 See id. at 24–25. Such a construction contradicts 

2 In its claim construction order, the district court 

found that “the ‘generally flat’ modifier . . . indicates that 

one of the differences between these sections and the remainder of the continuous sidewall is their shape.” McGinley, 2019 WL 2150384, at *11 (citing ’178 Patent, col. 4, ll. 

30–34). While the district court correctly notes that the 

’178 patent states “a generally flat portion of side wall 

rim 20 . . . may . . . differ, generally, in its shape as compared to the remainder of side wall rim 12 and side 

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MCGINLEY v. LUV N' CARE LTD. 11

the patent specification, which states that the “generally 

continuous side wall 12 . . . can be of any convenient shape, 

spanning shapes from square to circular to polygonal.” ’178 

Patent, col. 4, ll. 4–7. If, for example, the continuous side 

wall is a square, each side would be a “generally flat sidewall section,” and the claimed “generally flat sidewall section” would not differ in its shape as compared to the 

remainder of the continuous sidewall. 

Accordingly, the district court’s construction manages 

to be both too broad (part one), and too narrow (part two). 

Because the parties agree that resort to extrinsic evidence 

is unnecessary to ascertain the meaning of the claims, we 

may proceed to do so on our own. A claim term is construed 

according to its ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of 

the invention. Phillips v. AWH Corp., 415 F.3d 1303, 

1312–13 (Fed. Cir. 2005) (en banc). “[T]he court looks to 

those sources available to the public that show what a person of skill in the art would have understood disputed claim 

language to mean,” including “the words of the claims 

themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant 

scientific principles, the meaning of technical terms, and 

the state of the art.” Id. at 1314 (citations and internal 

quotation marks omitted).

LNC reiterates on appeal that its “proposed construction of ‘mostly flat and not curved’” is correct. Cross-Appellants’ Br. 24. For reasons explained by the district court, 

however, we agree that LNC’s proposed construction is too 

limiting. See McGinley, 2019 WL 2150384, at *15 (“[A] surface that does not have any curvature, arc, bend or bow, 

would necessarily be considered perfectly straight and 

flat.”) (italics added)). Indeed, a surface may have minor 

wall 20,” ’178 Patent, col. 4, ll. 30–34, the specification does 

not require such differentiation.

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12 MCGINLEY v. LUV N' CARE LTD.

curves and imperfections while remaining, as a whole,

“generally flat.”

McGinley argues that this court should adopt its newly 

proposed construction—borrowing language from the district court—of “generally flat”: “mostly flat and not perfectly flat; and capable of having some curvature, arc, bend 

or bow.” Appellant’s Br. 26. The district court, however, 

only noted that “a surface that does not have any curvature, arc, bend or bow, would necessarily be considered perfectly straight and flat.” McGinley, 2019 WL 2150384, at 

*15. We agree. Thus, the incorporation of this language 

into McGinley’s proposed construction on appeal is duplicative—it translates to “mostly flat and not perfectly flat; 

and not perfectly straight and flat.” 

As below, McGinley’s construction does not take into 

account arguments made during prosecution differentiating the asserted claims from the prior art. The district 

court correctly found that, during prosecution, McGinley 

“argued how the added limitation of ‘generally flat’ was not 

found in the prior art round pitchers in responding to [a]

double patenting rejection.” McGinley, 2019 WL 2150384, 

at *15. McGinley responds on appeal that “[t]he prosecution history is devoid of any evidence to show that McGinley intended to clearly distinguish the shape of the 

generally flat sidewall or flexible panel with the shape of 

the remaining sidewalls of the prior art containers.” Appellant’s Reply Br. 39. We are not convinced.

We agree with LNC that this case is similar to Schoell 

v. Regal Marine Indus., Inc. In Schoell, as here, the court 

was presented with the claim term “generally flat.” 

Schoell’s claims were initially rejected as obvious in view of 

an earlier Schoell patent. Schoell v. Regal Marine Indus., 

Inc., 247 F.3d 1202, 1208 (Fed. Cir. 2001), abrogated on 

other grounds by Teva, 574 U.S. 318. In response to the 

obviousness rejection, Schoell argued that his earlier patent “shows no generally flat aft keel,” and instead 

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MCGINLEY v. LUV N' CARE LTD. 13

describes a V-shaped aft keel. Schoell, 247 F.3d at 1208. 

The court thus held that “not only did Schoell differentiate 

between a V-shaped keel and a generally flat keel, he essentially conceded that a twelve degree V-shaped keel cannot be a generally flat keel as claimed . . .” Id. Here, the 

USPTO issued a double patenting rejection because the 

claims of the ’178 patent’s underlying application were the 

same as those in McGinley’s own earlier patent, disclosing 

fully rounded pitchers. McGinley amended the now-asserted claims during prosecution to include the “generally 

flat” limitation and argued that neither his prior patent nor 

the prior art claimed or disclosed, respectively, either a 

“generally flat sidewall section” or a “generally flat inwardly flexible panel.” McGinley, 2019 WL 2150384, at 

*12–14. Instead, according to McGinley, the prior art disclosed “V-shaped” or “cylindrical” sidewalls or flexible panels. See J.A. 2187 (arguing that “flexible portion of Bertone 

[prior art] is V-shaped and not generally flat”); J.A. 2216 

(distinguishing “generally flat” sidewall from cylindrical 

sidewall); J.A. 2236 (same). McGinley, himself, defines “cylindrical or round” as “something other than generally 

flat.” Appellant’s Br. 25. Thus, like Schoell, McGinley differentiated between V-shaped, round, or cylindrical on the 

one hand, and “generally flat” on the other.

While “generally flat,” in this case, does not mean “perfectly flat,” it (1) does not foreclose perfect flatness, and (2) 

can allow for minor imperfections, including curved portions. The limitations “generally flat sidewall section” and 

“generally flat inwardly flexible panel,” however, cannot 

cover sidewall sections or inwardly flexible panels that are, 

as a whole, V-shaped, round, or cylindrical. Accordingly, 

we construe the term “generally flat,” as used in all asserted claims, as “mostly flat and not, as a whole, V-shaped, 

round, or cylindrical.” For example, a “generally flat” flexible portion could be one that deviates from flatness by 

transitioning from a curved sidewall to a flat section of the 

flexible portion. But, on the other hand, a flexible portion 

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14 MCGINLEY v. LUV N' CARE LTD.

that overall has a rounded shape would not be “generally 

flat.”

The “handle” limitations:

Depending on the asserted claim, a “handle” must either be “located on” (claim 1) or “joined to” (claim 6) the 

non-flexible portion of the sidewall. Before the district 

court, McGinley proposed construing “handle” as “the part 

of a device that is designed or made to be grasped or held 

by the hand,” “located on” as “is a part of,” and “joined to” 

as “attached to, whether by separate manufacture and subsequent connection or by unitary construction or molding 

as an integrated unit.” McGinley, 2019 WL 2150384, at 

*16. LNC proposed construing both “handle located on” 

and “handle joined to” as “handle attached.” Id.

In its claim construction order, the district court found 

that the parties had not presented a fundamental dispute 

regarding the scope of a claim term, but instead argued an 

application of a claim term to an accused product. Id. at 

*17. For example, according to the district court, in LNC’s 

briefing, it did not propose a construction for the terms 

“handle,” “located on,” or “joined to.”3 Id. Instead, LNC 

consistently argued that the accused product is missing the 

handle limitations. Id. Thus, the district court found that 

LNC had not presented or articulated a fundamental dispute regarding the scope of a claim term, and that the term 

“handle” is unambiguous, is easily understood by a jury, 

and should be given its plain and ordinary meaning. Id.

(citing O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 

521 F.3d 1351, 1362 (Fed. Cir. 2008)). Similarly, the 

3 As noted by the district court, neither party provided constructions for the terms “located on” or “joined to” 

in their briefing, and both parties only proposed construing 

these terms after the Markman Hearing. McGinley, 2019 

WL 2150384, at *18.

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MCGINLEY v. LUV N' CARE LTD. 15

district court found that the terms “located on” and “joined 

to,” are unambiguous, easily understandable by a jury, and 

should be given their plain and ordinary meaning. Id.

On appeal, LNC’s argument again focuses on the application of the claim term to the Accused Device. See CrossAppellants’ Br. 51 (arguing the Accused Device “does not 

have a handle either “located on” or “joined to” the nonflexible portion of the container”). According to LNC, the 

Accused Device does not have a “handle,”4 but instead has 

a “separate smaller liquid holding chamber that can be 

used to grip the rinse pail.” Id. LNC argues that this 

smaller liquid holding chamber cannot be the claimed 

“handle” because: (1) it is part of a fully integrated container and if it were the “handle,” the requirement that the 

container has a generally continuous sidewall is missing; 

(2) all of the embodiments shown in the ’178 patent show a 

conventional handle, not one that operates as a separate 

chamber to hold rinse water; and (3) there is no suggestion 

in the written specification that the handle of the ’178 patent is intended to hold rinse water. Id. at 52–54. Implicit 

in LNC’s noninfringement position is an argument that the 

scope of this claim term must be limited to conventional 

handles, unintegrated into the container to which they are 

joined or on which they are located, and incapable of holding rinse water. 

In addressing LNC’s arguments below, the district 

court found that “the intrinsic evidence does not require a 

‘conventional handle,’ or preclude the handle from including a chamber to hold rinse water.” McGinley, 2019 WL 

4 McGinley argues, Appellants’ Reply Br. 57, and the 

court notes, that this assertion is belied by LNC’s own marketing material, which describes the Accused Device as 

having an “Easy GripTM handle.” See, e.g., Tear-Free Rinse 

Pail, Nuby, https://www.nuby.com/usa/en/tear-free-rinsepail-1-2.

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16 MCGINLEY v. LUV N' CARE LTD.

2150384, at *17. We agree. As the district court correctly 

noted, it is well established that an inventor need not “embrace in the claims or describe in the specifications all possible forms in which the claimed principle may be reduced 

to practice.” Smith v. Snow, 294 U.S. 1, 11, 55. S. Ct. 279, 

283 (1935) (“[T]he claims of the patent, not its specifications, measure the invention.”). It is a bedrock principle of 

patent law that the claims of a patent, not its specification 

or the embodiments described therein, that define the invention to which the patentee is entitled the right to exclude. Innova/Pure Water, Inc. v. Safari Water Filtration 

Sys., Inc., 381 F.3d 1111, 1115–16 (Fed. Cir. 2004). Thus, 

the mere fact that the ’178 patent specification discloses 

embodiments of the invention having a “conventional handle,” and not one integrated into the sidewall or one that 

holds rinse water, does not operate to limit the claims to 

that specific configuration. See Anchor Wall Sys., Inc. v. 

Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306–07 

(Fed. Cir. 2003).

Accordingly, we affirm the district court’s construction 

of the phrases “handle located on the non flexible portion” 

and “handle joined to the non flexible portion.” They are 

each given their plain and ordinary meaning.

B. Literal Infringement

On appeal, McGinley argues that the district court’s order granting LNC’s motion for summary judgment of noninfringement should be reversed, while LNC argues that it 

should be affirmed. In its order granting summary judgment of noninfringement, the district court found that 

there was no material factual dispute that the alleged “generally flat” sidewall section of the Accused Device “does not

differ[] in its shape as compared to the remainder of the 

continuous sidewall,” and, thus, that “summary judgment 

is appropriate because the Accused Device does not contain 

each and every element of the claims.” McGinley, 2019 WL 

2150386, at *4. As the “generally flat sidewall section” 

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limitation, when properly construed, does not require differentiation between the claimed sidewall section and the 

remainder of the continuous wall, the district court’s holding was in error. 

On the facts before us, it is unclear whether the Accused Device undisputedly infringes the asserted claims, 

when properly construed. Thus, we believe that the parties 

should be given the opportunity to present new evidence of 

infringement or noninfringement based on our fundamentally different construction of the term, “generally flat.” 

Accordingly, the district court’s grant of summary judgment of noninfringement is vacated and the issue is remanded for further consideration in view of our

construction.

With respect to McGinley’s request that the court reverse the district court’s denial of summary judgment of 

literal infringement, and LNC’s request that the court find 

that the district court erred in not finding that the Accused 

Device fails to disclose the “handle” limitations, the district 

court did not explicitly analyze whether the Accused Device 

satisfies the “handle” limitations, which is a question of 

fact, in its order granting summary judgment of noninfringement. We decline the opportunity to do so for the 

first time on appeal.

II. Invalidity

LNC cross-appeals from the district court’s judgment 

and order denying its motion for summary judgment of invalidity. The issue before the district court on that motion

was whether the claims of the ’178 patent were directed to 

subject matter—the “generally flat” limitations—not disclosed in McGinley’s earlier applications and therefore not 

entitled to an effective filing date before October 22, 2008. 

According to LNC, if the claims of the ’178 patent are not 

entitled to the benefit of an earlier filing date, then they 

are invalid, as violating the on-sale bar, as there is no dispute that McGinley began selling his “Shampoo Rinse Cup”

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18 MCGINLEY v. LUV N' CARE LTD.

embodying those claims in July 2004. Cross-Appellants’ 

Br. 9.

The “on-sale bar” rule is set forth in the portion of section 102(b) that provides that a person shall not be entitled 

to a patent if the invention was “on sale in this country, 

more than one year prior to the date of the application for 

patent in the United States.” 35 U.S.C. § 102(b) (pre-AIA).5 

Whether the on-sale bar applies is a question of law based 

on underlying factual findings. See Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1371 (Fed. Cir. 2016) (citing Grp. 

One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1045–46 

(Fed. Cir. 2001)). We must determine whether, after resolving all reasonable factual inferences in favor of the patentee, the ’178 patent is invalid as a matter of law. See id.

Before the district court, McGinley conceded that his 

Shampoo Rinse Cup embodies the invention of the ’178 patent, and that the Shampoo Rinse Cup was first offered for 

sale and sold in the United States by July 2004. Thus, as 

the district court correctly noted, “the outcome of the parties’ motions rest on the determination of the effective filing date for the asserted claims in the ’178 patent.” 

McGinley, 2019 WL 2150385, at *4. Determination of the 

priority date (e.g., the effective filing date) is purely a question of law if the facts underlying that determination are, 

as they are here, undisputed. See E.I. du Pont de Nemours 

& Co. v. MacDermid Printing Sols., L.L.C., 525 F.3d 1353, 

1359 (Fed. Cir. 2008).

The ’178 patent was based on a continuation-in-part 

(“CIP”) Application No. 12/255,797 (“the ’797 Application”), 

filed on October 22, 2008. The ’797 Application was a CIP 

5 Because the application resulting in the ’178 patent was filed before September 16, 2012, the effective date 

of the America Invents Act (“AIA”), the court refers to the 

pre-AIA version of § 102.

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of Application No. 10/770,325 (“the ’325 Application”) filed 

on February 2, 2004. The ’325 Application issued as United 

States Patent No. 7,441,675 (“the ’675 patent”) with all 

claims directed to a flexible panel pitcher or container with 

a divider. The ’325 Application was a CIP of Application 

No. 10/357,651 filed on February 4, 2003 (“the Original Application”). In its order denying LNC’s motion for summary 

judgment of invalidity, the district court found that claims 

1 and 6 of the ’178 patent are entitled to the February 4, 

2003 filing date of the Original Application and held that 

claims 1 and 6 of the ’178 patent are not invalid for failing 

to comply with the on-sale bar. Specifically, the district 

court found that the “generally flat” limitations are disclosed in the specification and drawings included in the

Original Application.

According to LNC, the district court erroneously concluded that the claims were supported by the Original Application and the ’325 Application. Cross-Appellant’s Br. 

55. LNC argues that, in reaching its conclusion, the district court made three mistakes: (1) it employed the wrong 

construction of “generally flat”; (2) it misconstrued the 

drawings and written description of the specification; and 

(3) it failed to give proper consideration to the estoppel effects of statements in the prosecution history. Id.

With respect to LNC’s first two arguments, we find that 

the district court did not misconstrue the drawings and 

written description of the specification, and that, when 

properly construed, the “generally flat” limitations are disclosed in the specification and drawings included in the

earlier applications. First, both the Original Application 

and the ’325 Application clearly describe, contrary to LNC’s 

assertions, sidewall portion (24)—a “generally flat” portion 

of sidewall. See, e.g., J.A. 2908 (“Side wall rim 20, in a preferred embodiment is comprised of side wall portion 24, 

which is a generally flat portion of side wall rim 20.”); J.A. 

1234 (same); J.A. 2909 (“[I]n the vicinity of a generally flat 

side wall rim portion 24[] is flexible panel 28 . . .”); J.A. 

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20 MCGINLEY v. LUV N' CARE LTD.

1234 (same). Second, both the Original Application and the 

’325 Application tout, as one of the benefits of having a

“generally flat rim segment” comprising a “generally flat” 

portion of sidewall, allowing “the flexible portion of the container to mold to a shape against which it is pressed and to 

allow large volumes of fluid to be passed from the container 

onto the object.” J.A. 2912; J.A. 1236. Finally, both the 

Original Application and the ’325 Application included Figure 2 of the ’178 patent, which McGinley stated during 

prosecution supported the addition of the “generally flat” 

claim limitations. See J.A. 2185. As noted in the specification of the ’178 patent, Figure 2 is a top and interior perspective view of the embodiment of Figure 1 (also included 

in the earlier applications). ’178 Patent, col. 3, ll. 26–27; 

J.A. 2920; J.A. 1245. Figure 1, in turn, clearly shows sidewall rim (20) and sidewall portion (24). Sidewall portion 

(24) is “generally flat” according to the earlier applications, 

the ’178 patent specification, and as construed by this 

court—it is mostly flat and is not, as a whole, V-shaped, 

round, or cylindrical.

With respect to its third argument on appeal, LNC relies on remarks that the patentee made in response to a

double patenting rejection. Cross-Appellant’s Br. 70–71. 

According to LNC, McGinley’s admission that the invention claimed in the ’178 patent relies at least in part on the 

new disclosure of Figure 9 added in the ’797 Application is 

dispositive. Id. We agree with the district court, however,

that “[i]t is clear from the rejection and the response that 

the patentee was not relying exclusively on Figures 2 and 

9 to make his point.” McGinley, 2019 WL 2150385, at *7. 

Instead, Figures 2 and 9 were examples showing that the 

“generally flat” limitations being added to the claims during prosecution had been previously disclosed, as detailed 

above, in the prior applications.

For the foregoing reasons, the district court’s order 

denying LNC’s motion for summary judgment of invalidity 

is affirmed.

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MCGINLEY v. LUV N' CARE LTD. 21

III. The District Court’s Order Dismissing Count III and 

Awarding LNC Costs as the “Prevailing Party”

McGinley requests that we vacate the district court’s 

Order dismissing Count III of the Amended Complaint, reinstate the claims as stated in Count III as no longer moot, 

and vacate the district court’s Order awarding LNC costs 

as the “prevailing party” under Fed. R. Civ. P. 54(d)(1). Because the district court dismissed the claims of Count III 

as moot only after finding that the Accused Device does not 

infringe the asserted claims, McGinley, 2019 WL 3282926, 

at *3, and because we vacate the district court’s finding of 

no infringement, we agree with McGinley that the claims 

of Count III should be reinstated on remand and that the 

district court’s Order awarding LNC costs as the prevailing 

party be vacated.

Accordingly, we vacate the district court’s Order dismissing Count III as moot and awarding costs.

CONCLUSION

We have considered the parties’ remaining arguments 

and find them unpersuasive. Accordingly, we reverse-inpart and affirm-in-part the district court’s claim construction order, vacate the district court’s order granting summary judgment of noninfringement, affirm the district 

court’s order denying summary judgment of invalidity, vacate the district court’s order dismissing Count III and 

awarding costs, and remand for further consideration. 

REVERSED-IN-PART, AFFIRMED-IN-PART, 

VACATED-IN-PART, AND REMANDED

COSTS

The parties shall bear their own costs.

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