Neupak, Inc. v. Ideal Mfg. and Sales Corp., 41 Fed.Appx. 435 (2002)
`
`41Fed.Appx.435
`This case was notselected for publication in West’s
`Federal Reporter.
`See Fed.Rule ofAppellate Procedure 32.1generally
`governingcitation ofjudicial decisions issued on or
`after Jan.1,2007.See also U.S.Ct.ofApp.Fed.Cir.
`Rule 32.1.
`United States CourtofAppeals,
`Federal Circuit.
`
`NEUPAK,INC.,Plaintiff–Cross Appellant,
`v.
`IDEALMANUFACTURINGANDSALESCORP.,
`Defendant–Appellant.
`
`No.01–1368,01–1389.
`|
`DECIDED:June 24,2002.
`|
`RehearingDenied July19,2002.
`
`Assignee brought infringement action against competitor
`over patent directed toward mobile and flushable container
`filling unit. The United States District Court for the District
`of Minnesota, Paul A. Magnuson, J., determined that
`patent was neither invalid nor unenforceable but dismissed
`assignee’s patent
`infringement claims. Both parties
`appealed. The Court of Appeals, Bryson, Circuit Judge,
`held that: (1) prior version swing-arm fillers did not
`anticipate patent; (2) invention was not obvious in light of
`prior swing-arm fillers; (3) trial court could consider
`inventors’testimony about how invention was invented;
`(4) invention did not enjoy commercial success before it
`was patented; (5) inventor did not intend to mislead Patent
`and Trademark Office (PTO); and (6) amendment to patent
`was substantive.
`
`Affirmed.
`
`West Headnotes (7)
`
`patent directed toward mobile and flushable
`container filling unit. 35 U.S.C.A. §102(b).
`
`Cases that cite this headnote
`
`[2]
`
`Patents
`Particular products or processes
`
`and
`failed to prove by clear
`Competitor
`convincing evidence that patented invention
`directed toward mobile and flushable container
`filling unit was obvious
`in light of prior
`swing-arm fillers, even though modifications
`necessary to bridge gap between prior swing-arm
`fillers and claimed invention appeared to be
`modest and statements in prior art purportedly
`suggested benefit of one or another claim
`element.
`
`Cases that cite this headnote
`
`[3]
`
`Patents
`Admissibility of evidence
`
`Court could consider inventors’testimony about
`how they invented mobile
`and flushable
`container filling unit, even though obviousness
`was to be determined from perspective of
`hypothetical person of ordinary skill in the art;
`inventors’testimony was relevant
`to whether
`patented inventions would have been obvious to
`person of ordinary skill in the art and there was
`no indication that
`trial court misunderstood
`proper
`legal
`standard or gave
`inventors’
`testimony undue weight.
`
`2 Cases that cite this headnote
`
`[1]
`
`Patents
`Industrial machinery and equipment
`
`Prior version of swing-arm fillers did not satisfy
`“mobile filling unit transportable”limitation or
`“removably
`connected” or
`“removable
`connection” limitations, and therefore prior
`version swing-arm fillers did not anticipate
`
`[4]
`
`Patents
`Furniture and household appliances
`
`Invention directed toward mobile and flushable
`container filling unit did not enjoy commercial
`success before it was patented, even though
`competitor asserted that commercial success of
`
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Neupak, Inc. v. Ideal Mfg. and Sales Corp., 41 Fed.Appx. 435 (2002)
`
`patented device was due to characteristics
`already present in prior swing-arm fillers, that
`sales of mobile filling carts merely replaced sales
`of swing-arm fillers, and that sales increased
`because patent assignee increased its sales staff;
`inventor
`demonstrated
`nexus
`between
`commercial success and application for patent
`and prior swing arm fillers lacked at least two of
`the most beneficial features of the patent.
`
`1 Cases that cite this headnote
`
`[7]
`
`Patents
`In general;  utility
`
`US Patent 5,505,233. Valid.
`
`Cases that cite this headnote
`
`[5]
`
`Patents
`Application and proceedings
`
`Opinion
`
`BRYSON, Circuit Judge.
`
`*437 Before CLEVENGER, Circuit Judge, FRIEDMAN,
`Senior Circuit Judge, and BRYSON, Circuit Judge.
`
`Series of memorandums exchanged between
`inventor and his patent attorney during process of
`drafting inventor’s declaration for use
`in
`reexamination proceedings did not evince any
`intention to mislead Patent and Trademark Office
`(PTO), but instead showed typical back and forth
`that must take place between lawyer and client
`when preparing factually complicated and legally
`sophisticated affidavit.
`
`1 Cases that cite this headnote
`
`[6]
`
`Patents
`Narrowing claims
`
`**1 Ideal Manufacturing and Sales Corporation appeals
`from a judgment of the United States District Court for the
`District of Minnesota. The court held that U.S. Patent No.
`5,505,233 (“the ‘233 patent”), which is assigned to
`Neupak, Inc., is neither invalid nor unenforceable, and that
`Ideal is not entitled to attorney fees. Neupak cross-appeals
`from another portion of the district court’s judgment
`dismissing Neupak’s patent
`infringement claims. We
`affirm.
`
`I
`
`relates to a “mobile and flushable
`Neupak’s patent
`container filling unit,”a device used to fill containers, such
`as paint cans, with fluid. The patent discloses a machine
`that is movable from the filling position to a position where
`it can be cleaned or stored in preparation for use.
`
`Change in language of original claim of patent
`directed toward mobile and flushable container
`filling unit, that required first mobile filling unit
`having “a connection”to source of liquid product
`and flow means and “a connection”to sensing
`means,
`to amended claim that required first
`mobile
`filling
`unit
`having “a
`removable
`connection”to source of liquid product and “a
`removable connection” to sensing means, was
`substantive, on basis that amendment narrowed
`scope of claim, despite inventor’s assertion that
`adding word “removable” did
`not make
`substantive change in claim’s scope, but merely
`clarified claim. 35 U.S.C.A. §§252, 307(b).
`
`Cases that cite this headnote
`
`In 1996, Neupak filed this action, alleging that Ideal had
`manufactured and sold “lateral transfer fillers”embodying
`the inventions of the ’233 patent. Ideal then requested that
`the United States Patent and Trademark Office (“PTO”)
`reexamine
`the
`patent.
`The
`PTO conducted
`a
`reexamination, during which the lawsuit was suspended.
`At the conclusion of the reexamination, the PTO issued a
`reexamination certificate, in which several of the original
`claims of the patent were canceled, the remainder were
`amended, and several new claims were added. When the
`lawsuit resumed, Ideal amended its answer to include a
`counterclaim for a declaratory judgment that the asserted
`claims of the reexamined patent were invalid and that the
`patent was unenforceable because of inequitable conduct
`on Neupak’s part.
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
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`
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`Neupak, Inc. v. Ideal Mfg. and Sales Corp., 41 Fed.Appx. 435 (2002)
`
`On a motion for partial summary judgment, the district
`court entered an order holding that the asserted claims of
`the ’233 patent had been substantively changed during
`reexamination. The effect of that order was to bar, under 35
`U.S.C. §307(b), Neupak’s claims for damages during the
`period prior
`to the issuance of
`the reexamination
`certificate. The
`court
`then
`dismissed Neupak’s
`infringement claims.
`
`Following a bench trial on Ideal’s counterclaim, the court
`entered an order holding that the claims of the reexamined
`patent were not
`invalid and not unenforceable for
`inequitable conduct. Ideal has appealed from that order,
`while Neupak has cross-appealed from the district court’s
`order that claim 7 of the ’233 patent was substantively
`changed during reexamination.
`
`II
`
`A
`
`[1] Representative claim 8 of the reexamined ’233 patent
`reads as follows, with emphasis placed on the claim terms
`disputed in this appeal:
`
`8. Apparatus for filling containers with liquid products,
`comprising:
`
`means defining a filling position for such containers
`and comprising means supporting such containers,
`
`*438 a source of the liquid product to be supplied into
`the containers and flow means through which the
`liquid product is supplied,
`
`sensing means disposed at the filling position for
`determining the filling of the containers, comprising a
`plurality of load cells, each for a separate container;
`
`said source of liquid product for dispensing the liquid
`into the containers and also having a
`product
`removable connection to said sensing means to
`determine the filling of the liquid product into the
`containers, said second one of said filling units being
`in said cleaning area and being readied for operation
`and for transport to said filling position for the next
`filling of such containers.
`
`**2 Ideal asserts that Neupak’s sale of two swing-arm
`fillers to the Fuller O’Brien Company in 1992 invalidates
`claims 7–9, 12, 13, and 15 of the ’233 patent under the
`on-sale bar of 35 U.S.C. § 102(b). The district court
`rejected Ideal’s contention, finding that Ideal failed to
`prove that every element of the ’233 patent is shown in the
`1992 swing-arm fillers. In particular, the court found that
`the 1992 swing-arm fillers do not satisfy the claim
`limitation requiring “mobile filling units transportable
`relative to [the] filling position.”We agree with Ideal that
`the swing-arm fillers may be “mobile”in the sense that
`they are capable of being moved readily between different
`positions along the arc defined by the swing arm. We
`cannot agree, however,
`that
`the swing-arm fillers are
`sufficiently mobile so as to be “transportable,”because
`they are incapable of being carried over a long distance
`from one place to another. Rather, they are permanently
`affixed to the conveyor belt by the swing arm, and their
`range of motion is limited to positions along the arc
`defined by the swing arm. We therefore agree with the
`district court that in light of the different nature of their
`mobility, the swing arm fillers do not anticipate the claims.
`
`In addition to finding that the 1992 swing-arm fillers do not
`satisfy the “mobile filling unit transportable”limitation,
`the district court also found that the swing-arm fillers do
`not constitute invalidating prior art because they do not
`satisfy the limitation requiring that the apparatus have a
`“removable connection” (or
`that
`it be “removably
`connected”) to the sensing means. The district court
`construed the
`term “removable” to mean “easily
`removable,” and Ideal does not
`take issue with that
`construction. In the 1992 swing-arm fillers, the record
`shows that the load cells (the “sensing means”) are an
`integral part of the filling mechanism on the conveyor. The
`swing-arm fillers remain permanently affixed to the filling
`mechanism and load cells at all times via the pivot arms.
`The swing-arm fillers therefore cannot be considered
`“removably connected”to the sensing means for purposes
`of claim 15, because of
`the permanent
`structural
`connection between the swing-arm fillers and the load cells
`at the filling position.
`
`first and second mobile filling units transportable
`relative to said filling position, to said source of liquid
`product, and to said sensing means, said mobile filling
`units comprising movable floor engaging means
`supporting the filling units, and comprising a plurality
`of liquid product dispensing heads for
`filling a
`plurality of said containers at said plurality of load
`cells, said mobile filling units being alternately
`transportable to said filling position and being
`removable from said filling position and to a cleaning
`area, said first one of said filling units being in said
`filling position and having a removable connection to
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`*439 Ideal asserts that
`the “removable connection”
`limitation of claims 7–9, 12, and 13 is satisfied in the 1992
`
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`Neupak, Inc. v. Ideal Mfg. and Sales Corp., 41 Fed.Appx. 435 (2002)
`
`swing-arm fillers by the “quick-disconnect” fittings
`located on the individual dispensing heads, which can be
`used to disconnect
`the dispensing heads
`from the
`pneumatic air lines that control
`the operation of the
`dispensing valves in accordance with signals received from
`the load cells. Although the pneumatic control connections
`can be broken at the location of the quick-disconnect
`fittings, the district court did not clearly err in concluding
`that the pneumatic air lines, which connect the filling units
`and the load cells, are not easily removable and thus do not
`qualify as “removably connected.”The record shows that
`the pneumatic control lines are bundled in a conduit that
`remains permanently bolted to both the swing arm and the
`frame of the filling machine. In addition, an electrical
`switch with wires leading to the control panel remains
`bolted to the swing arm, and Ideal’s expert admitted that
`the swing-arm fillers would have to be taken out of service
`to be disconnected from the sensing means. In sum, we see
`no clear error in the district court’s conclusion that the
`1992 swing-arm fillers do not satisfy the “mobile filling
`unit
`transportable” limitation
`or
`the “removably
`connected” or “removable connection” limitations. We
`therefore uphold the district court’s conclusion that the
`swing-arm fillers do not anticipate the ’233 patent.
`
`B
`
`**3 [2] Ideal next contends that even if the 1992 swing-arm
`fillers do not constitute anticipating prior art, they render
`the claimed inventions obvious either on their own or in
`combination with other prior art. We disagree.
`
`In addition to not being “transportable” and not being
`either “removably connected” or having a “removable
`connection” to the sensing means, the 1992 swing-arm
`fillers do not satisfy several other limitations of the various
`claims of the ’233 patent. For example, Ideal
`itself
`identifies the “wheels”limitation of claims 5, 6, 14, and 15,
`as well as the “at all times unconnected” limitation of
`claims 10, 11, and 14, as not being met by the swing-arm
`fillers. Furthermore,
`the swing-arm fillers would not
`appear to satisfy the limitation of claim 7 requiring that the
`machine be transportable to a “remote cleaning area.”
`
`In an effort to bridge the gaps between the 1992 swing-arm
`fillers and the ’233 patent, Ideal argues that the requisite
`suggestion to modify the swing-arm fillers to obtain the
`inventions of
`the ’233 patent can be found in the
`swing-arm fillers themselves, the general problem they
`were designed to solve, and the knowledge of those of
`ordinary skill in the art. In particular, Ideal relies on
`testimony by its own employees that a person of ordinary
`
`skill in the art, upon viewing the 1992 swing-arm fillers,
`would have recognized that they could be made more
`versatile by removing them from the pivot arms and adding
`extra wheels to create freestanding filling units that could
`be moved to a wider variety of locations. The district court
`rejected much of the testimony regarding obviousness
`presented by Ideal because it “relied on hindsight
`to
`conclude that the ’233 patent was obvious.”Although the
`modifications necessary to bridge the gap between the
`swing-arm fillers and the claimed inventions appear to be
`modest, we cannot conclude that the district court clearly
`erred in finding that Ideal’s evidence did not constitute
`clear and convincing proof that the claimed inventions
`would have been obvious in light of the 1992 swing-arm
`fillers.
`
`In addition to the 1992 swing-arm fillers, Ideal points to
`seven other prior art references and contends that the
`inventions of *440 the ’233 patent claims would have been
`obvious in light of those references, in combination with
`the swing-arm fillers. In order to establish that the claims
`would have been obvious, Ideal must show some teaching,
`suggestion, or motivation to combine the prior art
`references in a manner that would result in the inventions
`of the ’233 patent. Winner Int’l Royalty Corp. v. Wang, 202
`F.3d 1340, 1348, 53 USPQ2d 1580, 1586 (Fed.Cir.2000).
`Ideal directs us to isolated statements in the prior art
`purportedly suggesting the benefit of one or another claim
`element. Considered individually or as a whole, however,
`the prior art references cited by Ideal do not lead us to
`conclude that the district court clearly erred in finding an
`absence of the necessary motivation or suggestion to
`combine the features of the prior art to obtain the patented
`inventions.
`
`**4 [3] Ideal next contends that
`in
`the district court,
`reaching its determination of nonobviousness, improperly
`credited the inventors’testimony about how they invented
`the subject matter of the ’233 patent. Although Ideal
`correctly notes that obviousness is determined from the
`perspective of a hypothetical person of ordinary skill in the
`art,
`the district court did not err by considering the
`inventors’testimony in the course of reaching its decision.
`The inventors’testimony was relevant to whether the
`inventions would have been obvious to a person of
`ordinary skill in the art, and there is no indication that the
`trial court misunderstood the proper legal standard or gave
`the inventors’testimony undue weight.
`
`[4] Ideal also challenges the district court’s finding that the
`’233 patent enjoyed commercial
`success, a factual
`determination that
`this court reviews for clear error.
`Winner, 202 F.3d at 1348, 53 USPQ2d at 1586. At trial,
`Neupak and ideal both submitted expert reports addressing
`
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Neupak, Inc. v. Ideal Mfg. and Sales Corp., 41 Fed.Appx. 435 (2002)
`
`the question whether Neupak’s mobile filling cart, the
`commercial embodiment of
`the ’233 patent, enjoyed
`commercial success. The district court found that Ideal’s
`evidence was “confusing”and that it “did not ... accurately
`portray the relevant markets.”On the other hand, the court
`credited Neupak’s evidence that its mobile filling cart
`“quickly became Neupak’s biggest seller, and now
`constitutes a large percentage of Neupak’s business.”
`
`success,
`When a patentee demonstrates commercial
`usually shown by significant sales in a relevant market, and
`shows that the successful product is an embodiment of the
`inventions disclosed and claimed in the patent,
`it
`is
`presumed that
`the commercial success is due to the
`patented invention. J.T. Eaton & Co. v. Atlantic Paste &
`Glue Co., 106 F.3d 1563, 1571, 41 USPQ2d 1641, 1647
`(Fed.Cir.1997). Although sales figures coupled with
`market data certainly provide stronger evidence of
`commercial success, sales figures alone can provide
`satisfactory evidence of commercial success. Tec Air, Inc.
`v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1361, 52
`USPQ2d 1294, 1299 (Fed.Cir.1999). Because the record
`shows that between 1995 and 2000 Neupak’s patented
`mobile filling carts enjoyed a significant increase in sales
`and constituted an increasing share of Neupak’s business,
`the district court did not clearly err in concluding that
`Neupak demonstrated a nexus between commercial
`success and the ’233 patent. The burden thus shifted to
`Ideal to prove that the commercial success was instead due
`to factors extraneous to the patented invention, such as
`advertising or superior workmanship. J.t. Eaton, 106 F.3d
`at 1571, 41 USPQ2d at 1647.
`
`In an effort to rebut Neupak’s showing of commercial
`success, Ideal makes two arguments. First, Ideal argues
`that the features allegedly responsible for the commercial
`*441 success of the patented device were already present
`in the 1992 swing-arm fillers, and that
`the sales of
`Neupak’s mobile filling carts merely replaced sales of the
`swing-arm fillers. Second,
`Ideal
`argues
`that
`the
`commercial success of Neupak’s patented mobile filling
`carts is attributable to an increase in Neupak’s sales staff.
`
`**5 Ideal’s efforts to explain away the commercial success
`of Neupak’s mobile filling carts do not persuade us that the
`district court clearly erred in finding commercial success.
`As discussed above, the swing arm fillers lacked at least
`two of the most beneficial features of the ’233 patent,
`namely the aspects of being “transportable” and being
`“removably
`connected” or
`having
`a “removable
`connection”to the sensing means. Those differences are
`significant because the record shows that the swing-arm
`fillers were
`commercially unworkable because of
`contamination problems resulting from cleaning the filling
`
`heads close to conveyer and because of floor congestion
`caused by the various product piping and cleaning solution
`hoses. Furthermore, we
`consider
`Ideal’s
`argument
`regarding the increase in Neupak’s sales staff to be little
`more than speculation.
`
`In sum, we are not prepared to overturn the district court’s
`ruling that Ideal failed to satisfy its heavy burden of
`proving, by clear and convincing evidence,
`that
`the
`inventions of the reexamined ’233 patent would have been
`obvious to one of ordinary skill in the art at the time they
`were invented. We therefore affirm the district court’s
`determination of nonobviousness.
`
`C
`
`[5] Terence Roberts, the President of Neupak, is one of the
`co-inventors of the ’233 patent. Ideal asserts that the ’233
`patent is unenforceable for inequitable conduct based on
`Mr. Roberts’s failure to disclose the 1992 swing-arm fillers
`and other prior art references to the PTO. The district court
`rejected Ideal’s inequitable conduct argument, finding (1)
`that 1992 swing-arm fillers were not material prior art and
`(2) that there was a lack of evidence of intent to deceive the
`PTO.
`
`Before the district court, Ideal argued that inequitable
`conduct occurred during both the original prosecution and
`the subsequent reexamination. Although the district court’s
`analysis of inequitable conduct focused primarily on the
`reexamination,
`the parties agree that
`the issue of
`inequitable conduct during the original prosecution is
`subsumed within the district court’s overall analysis of
`inequitable conduct.
`
`anticipation and obviousness
`In addressing Ideal’s
`arguments, we have already discussed the differences
`between the ’233 patent claims and the 1992 swing-arm
`fillers. Based on those differences, we conclude that the
`district court did not clearly err in determining that the
`1992 swing-arm fillers were not material prior art for
`purposes of the inequitable conduct analysis. We therefore
`do not reach Neupak’s argument that the 1992 swing-arm
`fillers were immaterial as a matter of law for purposes of
`the reexamination, on the ground that the prior art pertinent
`to a reexamination is limited by statute to patents and
`printed publications. See generally 35 U.S.C. §§301–305.
`
`The district court’s finding on intent depended heavily on
`its assessment of Mr. Roberts’s credibility. The district
`court also reviewed a series of memorandums exchanged
`between Mr. Roberts and his patent attorney during the
`
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Neupak, Inc. v. Ideal Mfg. and Sales Corp., 41 Fed.Appx. 435 (2002)
`
`process of drafting an inventor’s declaration for use in the
`reexamination proceedings. The court found that those
`memorandums did not evince any intention to mislead the
`*442 PTO, but instead showed “the typical back-and-forth
`that must take place between lawyer and client when
`preparing a factually complicated and legally sophisticated
`affidavit.”We find no clear error in that conclusion. Ideal
`also directs us to other evidence on the record, including
`the advertisement of the 1992 swing-arm fillers as “patent
`pending” at a October 1992 trade show, and various
`arguments made by Mr. Roberts’s patent attorney during
`the initial prosecution and subsequent
`reexamination.
`Having reviewed the record as a whole, we conclude that
`the district court’s finding of an absence of deceptive intent
`is not clearly erroneous. In light of the court’s findings on
`the issues of materiality and intent, we hold that the court
`did not abuse its discretion by rejecting Ideal’s inequitable
`conduct theory. Because we uphold the district court’s
`rulings on the issues of invalidity and unenforceability, we
`of course reject Ideal’s arguments that the district court
`should have held the case to be exceptional and awarded it
`attorney fees.
`
`III
`
`**6 [6] Neupak cross-appeals from the district court’s
`decision that claim 7 was substantively changed during
`reexamination. On appeal, Neupak urges this court to find
`that the amendments to claim 7 were merely clarifying
`rather than substantive in nature, and to direct the district
`court to reinstate the claims of infringement. Contrary to
`Ideal’s submission, we conclude that Neupak has not
`waived this
`issue,
`and we
`therefore
`address
`the
`cross-appeal on the merits.
`
`The purpose of reexamination is to permit a patentee or
`other interested person to obtain review and, if necessary,
`correction of the claims that resulted from the initial
`examination of the patent. Bloom Eng’g Co. v. N. Am. Mfg.
`Co., 129 F.3d 1247, 1249, 44 USPQ2d 1859, 1861
`(Fed.Cir.1997). The effect of a reexamined patent during
`the period before issuance of the reexamination certificate
`is governed by 35 U.S.C. §§252 and 307(b). Under those
`provisions, if the patentee makes substantive changes in
`the claims during reexamination, there is an irrebuttable
`presumption that
`the original claims were materially
`flawed. Bloom, 129 F.3d at 1249, 44 USPQ2d at 1861. In
`that setting,
`the statute relieves those who may have
`infringed the original claims from liability during the
`period before the claims are validated. Id.
`
`If substantive changes were made to original claim 7
`
`during reexamination, Ideal is not liable for infringement
`for the period preceding the issuance of the reexamination
`certificate on May 11, 1999. See Laitram Corp. v. NEC
`Corp., 163 F.3d 1342, 1346, 49 USPQ2d 1199, 1202
`(Fed.Cir.1998).
`In determining whether
`substantive
`changes were made, we look to whether the scope of
`amended claim 7 is identical to that of original claim 7,
`regardless of whether different words are used. See id. We
`review without deference the district court’s conclusion
`that the scope of claim 7 was substantively changed during
`reexamination. See id. at 1346–47, 49 USPQ2d at 1202.
`
`The language of original claim 7 required a first mobile
`filling unit having “a connection”to the source of liquid
`product and flow means and “a connection”to the sensing
`means. As amended during reexamination, claim 7
`requires a first mobile filling unit having “a removable
`connection” to the source of
`liquid product and “a
`removable connection” to the sensing means. Although
`original claim 7 purportedly encompassed devices having
`either permanent or removable connections, amended
`claim 7 covers only those devices having removable
`connections. A comparison *443 of the text of the original
`and reexamined claims thus suggests that the amendments
`narrowed the scope of claim 7.
`
`Neupak argues that the reexamination amendments adding
`the word “removable”did not make a substantive change
`in the claim’s scope, but merely clarified the claim.
`According to Neupak, statements elsewhere in the claim
`language and in the specification limited original claim 7
`to removable connections, and the amendments only
`clarified claim 7, rather than narrowing its scope.
`
`**7 Although Neupak asserts that the first and second
`filling units recited in original claim 7 are identical and
`interchangeable, there are stark differences in the claim
`language used to describe each filling unit. The first filling
`unit is claimed in original claim 7 as “being in said filling
`position and having a connection to said source of liquid
`product and said flow means for dispensing the liquid
`product into the containers and also having a connection to
`said sensing means to determine the filling of the liquid
`product into the containers.”In contrast, the second filling
`unit is claimed as
`
`being in said cleaning area and
`remote from said filling position
`and being readied for operation and
`for transport to said filling position
`wherein the second one of the filling
`units
`will
`be
`subsequently
`connected to the source of liquid
`products and to said sensing means
`
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
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`

`
`Neupak, Inc. v. Ideal Mfg. and Sales Corp., 41 Fed.Appx. 435 (2002)
`
`the
`for
`containers.
`
`next
`
`filling
`
`of
`
`such
`
`mobile filling units have removable connections to the
`product source and sensing means. We disagree.
`
`Although the written description could support claims to
`first and second mobile filling units that are identical and
`interchangeable, that is not how they were claimed. We
`therefore see no need to import such extraneous limitations
`into original claim 7.
`
`Neupak also argues that the claim language requiring the
`“second” mobile
`filling unit
`to be “subsequently
`connected”to both the product source and sensing means
`necessarily requires that the first filling unit be removably
`connected. We disagree. Although the “subsequently
`connected”language clearly relates to the connection of
`the second filling unit, there is no language in original
`claim 7 suggesting that it refers to connection subsequent
`to the connection of
`the first
`filling unit. Rather,
`“subsequently connected”refers to action that takes place
`following the second filling unit’s “being in said cleaning
`position and remote from said filling position and being
`readied for operation and for transport
`to said filling
`position.” The plain language of original claim 7 thus
`contemplates that a first
`filling unit may be either
`permanently or removably connected to the product source
`and
`sensing means,
`and
`that
`a
`second
`filling
`unit— subsequent
`to being readied for operation and
`transport— may be connected in tandem with the first.
`
`Neupak next directs us to the following text found in the
`specification:
`
`that
`should also be obvious
`It
`mobility of
`the unit allows for
`transport of a cleaned unit to the
`filling location, simple connection
`to a proper material source and to
`the various sensing devices which
`determine the desired filling points,
`volumetric or weight, performance
`of
`the
`filling
`operation
`and
`to
`thereafter
`total
`transport
`a
`cleaning area with another clean
`unit being moved in for the next
`material filling of containers.
`
`**8 Although the specification may well indicate that
`certain
`embodiments
`are
`preferred,
`particular
`embodiments appearing in a specification will not be read
`into the claims when the claim language is broader *444
`than such embodiments. Electro Med. Sys., S.A. v. Cooper
`Life Sciences, Inc., 34 F.3d 1048, 1054, 32 USPQ2d 1017,
`1021 (Fed.Cir.1994). Here, the specification of the ’233
`patent expressly states that the described embodiment is
`preferred, and there is nothing that would lead a reader to
`infer that the broad language of original claim 7 is limited
`to the preferred embodiment.
`
`Neupak fails to address the prosecution history of the ’233
`reexamination, which the district court analyzed in
`thorough detail
`in reaching its conclusion that
`the
`amendments to claim 7 were substantive in nature. In the
`November 3, 1998, advisory action, the examiner rejected
`the patentee’s argument that “because the specification
`discloses a removable connection, all limitations in the
`claim are construed to be removable.” Instead,
`the
`examiner noted that “the current claims clearly call for
`removable
`connections,
`as
`in claims 12–20,
`and
`connections which are worded broadly enough to include
`static connections, such as in claims 1–11. One of ordinary
`skill
`in the art would consider
`the claimed generic
`connections to include static connections.” Because the
`prosecution history illustrates that the addition of the word
`“removable” in amended claim 7 was necessary to
`distinguish that claim over the prior art, the district court
`correctly viewed the amendment as a substantive change in
`claim scope. Accordingly, we affirm the district court’s
`order barring Neupak from recovering damages for acts of
`alleged infringement predating the issuance of
`the
`reexamination certificate, and the court’s consequent
`dismissal of Neupak’s infringement claims.
`
`Each party shall bear its own costs for this appeal.
`
`All Citations
`
`41 Fed.Appx. 435, 2002 WL 1363568
`
`’233 patent, col. 6, ll. 33–40. Neupak argues that the
`reference in the specification to the act of “simple
`connection”limits original claim 7 to require that both
`End of Document
`
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
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`NOVARTIS EXHIBIT 2085
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