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



United States Court of Appeals for the Federal Circuit

                                          05-1063

               CANNON RUBBER LIMITED and AVENT AMERICA, INC.,

                                                  Plaintiffs-Appellants,

                                             v.

                                  THE FIRST YEARS, INC.,

                                                  Defendant-Appellee.

                                __________________________

                                DECIDED: December 28, 2005
                                __________________________


Before NEWMAN, LOURIE, and RADER, Circuit Judges.

LOURIE, Circuit Judge.

       Cannon Rubber Limited and Avent America, Inc. (collectively “Cannon”) appeal

from the decision of the United States District Court for the Northern District of Illinois

granting summary judgment of noninfringement of U.S. Patent 5,749,850 in favor of The

First Years, Inc (“TFY”). Cannon Rubber Ltd. v. The First Years, Inc., No. 03-C-4918

(N.D. Ill. Sept. 27, 2004) (“Decision”). Because the district court erred in its construction

of the claim limitation “a deformable diaphragm disposed in the body,” we vacate its

decision granting judgment of noninfringement and remand for further proceedings

consistent with this opinion.
                                    BACKGROUND

      The ’850 patent is entitled “Breast Pump,” and was issued to Cannon Rubber

Limited as the assignee.     The invention, with one of the two expressly disclosed

embodiments shown below, relates to a device that is capable of pumping milk from the

breast of a nursing mother. The stated object of the patent is to disclose an improved

breast pump having a simpler design than its predecessors, thus making it easier to use

and clean. ’850 patent, col. 1, ll. 46-48. The illustrated breast pump has a body (1) with

the following components attached to it: (1) a cone-shaped appendage (8, 9) that fits

over the breast and nipple region; (2) an actuating means, shown in the figure below as

a lever mechanism consisting of a plastic handle (40) with a nose portion (43)

positioned over a pivot (17); (3) a stem connector (26) that connects the nose portion to

an elastic diaphragm (20); and (4) a valve (11) located below the diaphragm. A milk

receiving container can be screwed onto the body of the pump by screw threads (4).




      The invention operates by having the user apply pressure to the actuating means

either manually, e.g., squeezing a pump handle, or through an electrical means, e.g., an


05-1063                                     2
electric motor. This results in the diaphragm being upwardly distorted. According to the

patent, the upward distortion of the diaphragm creates negative pressure in the nipple

region sufficient to simulate lactation. Id., col. 1, ll. 54-57. The negative pressure is

confined to the nipple region and the upper portion of the pump body by a valve that

closes when negative pressure is created, but opens as the pressure is being relieved.

Opening of the valve allows the milk, which was trapped in the pump body while in the

negative-pressure state, to flow into a receiving container. The nursing mother’s milk is

accumulated by repeatedly applying and releasing pressure to the actuating means,

thereby repeatedly creating and relieving negative pressure in the nipple region and the

body of the pump.

       On July 16, 2003, Cannon filed suit against TFY in the United States District

Court for the Northern District of Illinois for infringement of claims 3 and 5 of the ’850

patent.     TFY manufactures and sells breast pumps.             The products accused of

infringement are TFY’s Easy Comfort™ Manual Breast Pump and Easy Comfort™

Deluxe Manual Breast Pump (collectively “accused products”). TFY denied Cannon’s

allegations of infringement and argued that the patent was invalid under 35 U.S.C.

§§ 102 and 112, ¶ 1. Cannon Rubber Ltd. v. The First Years, Inc., No. 03-C-4918, slip

op. at 1 (Sept. 17, 2004). On September 17, 2004, after conducting a hearing, the court

construed certain limitations contained in claims 1, 3, and 5 of the ’850 patent.1 Id.



       1
           Claim 1 of the ’850 patent, in pertinent part, reads as follows:

       a breast pump comprising:
       a body, said body having an inlet;

                    ***
       a deformable diaphragm disposed in the body;


05-1063                                        3
       The court construed the claim limitation “diaphragm disposed in the body” as a

diaphragm that is “disposed of or mounted entirely within the body of the pump.” Id.,

slip op. at 19.   To arrive at its claim construction, the court referenced the patent

specification’s description of the first, in terms of its appearance in the patent, of two

disclosed embodiments and explained that the specification uses the phrase “in the

body” to describe a diaphragm that is contained entirely within the body of the pump.

Id., slip op. at 18.   To confirm its claim construction, the court compared the first

embodiment to the second, which did not have a diaphragm contained entirely within

the body of the pump. In the second embodiment, the upper portion of the diaphragm

was located outside of the body of the pump and the remaining portions were located

inside of the body of the pump. The court noted that for the second embodiment the

specification did not recite the “in the body” language, as it did for the first embodiment,

but uses the phrase “mounted thereon” to describe the location of its diaphragm. Id.

       The district court also construed the means-plus-function limitation “valve means

mounted in the body for cyclically releasing the negative pressure which is generated in

the inlet.” The court identified the function of the limitation to be “cyclically releasing the

negative pressure which is generated in the inlet and regulating the flow of air through a

passageway by opening, closing or obstructing the passageway.” Id., slip op. at 12.

According to the court, this recited function conforms to the ordinary meaning of the



       actuating means operatively connected to the diaphragm for cyclically moving
said diaphragm to generate a negative pressure in the inlet; and
       a valve means mounted in the body for cyclically releasing the negative pressure
which is generated in the inlet.

       Claim 3 depends from claim 1 and claim 5 depends from claim 3. Neither claim 3
nor 5, however, contains additional limitations that are at issue in this appeal.


05-1063                                       4
word “valve,” and the functional language following the preposition “for.” Id. The court,

relying on portions of the specification explaining how the negative pressure is relieved

within the body of the pump, then determined that “the corresponding structure [of the

valve means] with respect to the first embodiment is the diaphragm 20, the spring 32,

and the plug valve 11. As to the second embodiment, the corresponding structure [of

the valve means] is the resilient diaphragm 51 and the button valve 80.” Id., slip op. at

13.

      Based on its claim constructions, the district court addressed the parties’

competing motions for summary judgment of infringement. In granting TFY’s motion for

summary judgment of no infringement, the court held that the accused products did not

literally meet the “diaphragm disposed in the body” limitation because the upper portion

of the accused products’ diaphragms lapped over the upper rim of the body of the

pump, like the ’850 patent’s second embodiment, and thus the diaphragms were not

contained entirely within the body of the pump. Decision, slip op. at 8-9. The court also

held that there was no infringement under the doctrine of equivalents because Cannon

did not meet its burden of identifying a genuine issue of material fact whether the

partially-contained diaphragms of the accused products were equivalent to a diaphragm

that is contained entirely within the body of the pump, as required by the claims. Id., slip

op at 10-12. According to the court, Cannon did not proffer any evidence, e.g., an

expert declaration or witness affidavit, that would have allowed a reasonable trier of fact

to find that these two types of diaphragms were equivalent. Id., slip op at 11. Once it

determined that the accused products did not infringe the ’850 patent, the court denied

TFY’s motion for summary judgment of invalidity as moot.




05-1063                                      5
      The district court entered final judgment on September 27, 2004. Cannon timely

appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

                                     DISCUSSION

      We review a district court’s grant of summary judgment de novo, reapplying the

same standard used by the district court. Ethicon Endo-Surgery, Inc. v. U.S. Surgical

Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). Summary judgment is appropriate if there

is no genuine issue as to any material fact and the moving party is entitled to a

judgment as a matter of law. Fed. R. Civ. P. 56(c). “The evidence of the non-movant is

to be believed, and all justifiable inferences are to be drawn in his favor.” Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Claim construction is an issue of law,

Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en

banc), that we also review de novo, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,

1456 (Fed. Cir. 1998) (en banc).

      I.     “Diaphragm disposed in the body”

      On appeal, Cannon argues that the district court’s decision was based on an

erroneous construction of the claim limitation “diaphragm disposed in the body.”

According to Cannon, by requiring the diaphragm to be “disposed or mounted entirely

within the body of the pump,” the court did not give the contested limitation its ordinary

meaning.   Cannon contends that under the ordinary meaning of the phrase “in the

body,” the entire diaphragm does not need to be “in the body,” and thus the court

imported the term “entirely” from the specification to unduly narrow the scope of the

claims. Cannon also argues that the patentee did not act as its own lexicographer to

specially define the phrase “in the body,” or clearly disavow coverage of breast pumps




05-1063                                     6
with diaphragms that are partially in the body from the claims. Instead, Cannon directs

us to the patent’s “Summary of the Invention,” which it contends describes the

diaphragm of the patent’s second embodiment as being “in the body” (neither party

questions the district court’s determination that a portion of the diaphragm of the second

embodiment is located outside of the body of the pump).

      TFY disputes Cannon’s charge that the district court improperly failed to apply the

ordinary meaning in construing the claim limitation “diaphragm disposed in the body.”

TFY basically repeats the analysis contained in the court’s Markman decision, which

noted that the ’850 patent specification uses the phrase “in the body” to describe an

entirely-contained diaphragm and uses the phrase “mounted thereon” to describe a

partially-contained diaphragm. TFY also asserts that the prosecution history supports

the court’s claim construction. According to TFY, in response to a § 112 rejection, the

patentee amended the language of the original claims from “mounting a [] diaphragm” to

“diaphragm disposed in the body.”        Presumably viewing the term “mounting” to

encompass only a partially-contained diaphragm, TFY argues that Cannon should not

be allowed to recapture previously surrendered subject matter. TFY also downplays

Cannon’s reliance on a statement in the “Summary of the Invention” as being too

ambiguous to overcome the clear distinction in the way the specification describes

entirely- versus partially-contained diaphragms in the body.

      We agree with Cannon that the district court improperly added the limitation

“entirely” in its interpretation of the claim limitation “diaphragm disposed in the body.”

As an initial matter, we note that the term “in” is a simple, non-technical term, and that

under its ordinary meaning, a “diaphragm disposed in the body” includes both




05-1063                                     7
diaphragms contained entirely and partially in the body. See Brown v. 3M, 265 F.3d

1349, 1352 (Fed. Cir. 2001) (recognizing that claim terms may not be technical terms of

art, and do not require elaborate interpretation). For example, a trash bag is “in” a

trashcan even though a portion of it is hanging outside of the trashcan.

      Moving on from the question of plain meaning, we next address whether there is

any justification for deviating from it. As discussed in Phillips v. AWH Corp., 415 F.3d

1303, 1316-17 (Fed. Cir. 2005), we may depart from the plain meaning of a claim term

when the patentee has acted as a lexicographer or when the patentee has clearly

limited the scope of the invention through a disclaimer in the specification or prosecution

history. We conclude that neither situation occurred here.

      As the district court recognized, the patent uses the phrase “in the body” in one

instance to describe a diaphragm that is contained entirely within the body of the pump,

and the phrase “mounted thereon” in another instance to describe a diaphragm that is

contained partially within the body of the pump. These two cited instances, however, do

not clearly indicate that the patentee intended to assign a more narrow definition to the

phrase “in the body” than it would otherwise possess. See, e.g., Elekta Instrument S.A.

v. O.U.R. Scientific Int’l, 214 F.3d 1302, 1307 (Fed. Cir. 2000) (for a patentee to act as

its own lexicographer defining a claim term differently from its ordinary meaning, the

specification must clearly indicate the patentee’s intent to do so). Although the phrase

“mounted thereon,” which indicates that at least a portion of the diaphragm is on the

outer surface of the body of the pump, may have a somewhat different meaning than

the phrase “diaphragm disposed in the body,” the two phrases are not mutually

exclusive, viz., a diaphragm “mounted thereon” the body can also be a “diaphragm




05-1063                                     8
disposed in the body,” as the second embodiment of the specification shows. Thus, the

specification uses different words to highlight the different ways that a diaphragm may

be placed in the body of the pump.          Moreover, contrary to TFY’s position, the

specification unambiguously uses the phrase “in the body” in the “Summary of the

Invention” section to refer to diaphragms that are contained both entirely and partially in

the body of the pump. ’850 patent, col. 2, ll. 16-24. And the fact that the specification

contains figures of embodiments that are both entirely and partially in the body is a

strong indication that the claims were intended to encompass both.

      Our review of the prosecution history also does not clearly indicate that the

patentee intended to disclaim coverage in the claims for diaphragms that are not

contained entirely within the body of the pump. See Omega Eng’g v. Raytek Corp., 334

F.3d 1314, 1325-26 (Fed. Cir. 2003) (requiring a disclaimer of subject matter in the

prosecution history to be “clear and unmistakable”). Although the patentee amended

the claims, which originally recited “mounting a [] diaphragm,” to a “diaphragm disposed

in the body” in response to a § 112 indefiniteness rejection, that was not a clear

disavowal of subject matter that was not completely in the body. In his correspondence,

the patent examiner did not reject the originally-filed claims on the grounds that the

claims containing the limitation “mounting a [] diaphragm” read on the prior art or was

unsupported by the specification as filed. Rather, the examiner took issue with the

apparatus claims being “narrative in form and replete with indefinite and functional or

operational language.”    In making the amendment, the patentee merely replaced

“operational” language, i.e., “mounting a [] diaphragm,” with definite structural language,

i.e., a “diaphragm disposed in the body.” We are thus hard-pressed to conclude that




05-1063                                     9
there has been a surrender of subject matter when the patentee has merely amended

the claims to replace an original phrase with a different, but not narrower, amended

phrase. At a minimum, this was not a “clear and unmistakable” disclaimer.

      II.     “Valve means”

       As an alternative ground for affirming the district court’s judgment of

noninfringement, TFY argues that the court’s construction of the “valve means”

limitation, which included a deformable diaphragm as a corresponding structure,

precludes a finding of literal infringement. Because the claims recite the limitations

“deformable diaphragm disposed in the body” and “valve means” separately, TFY

asserts that an accused device must contain separate structures meeting the respective

limitations before there can be literal infringement. To support its position, TFY cites

Gaus v. Conair Corp., 363 F.3d 1284 (Fed. Cir. 2004), which it interprets as instructing

that one component of an accused device cannot perform “double duty” and thereby

satisfy two separate limitations of a claim. According to TFY, because the accused

products have only one structure, viz., a deformable diaphragm, that meets two

separate limitations, there can be no literal infringement of the claims.

       We do not agree with TFY that the district court’s construction of the claim

limitation “valve means” compels us to affirm its judgment of noninfringement. We first

note that neither TFY nor Cannon challenges the district court’s construction of “valve

means.” Thus, for purposes of this appeal only, we will assume that the court properly

construed the “valve means” limitation. Using that assumption, we conclude that the

’850 patent specification does not require that the “deformable diaphragm” and the

“valve means” limitations must be embodied by separate components.          In fact, the




05-1063                                     10
specification teaches that it is the return of the diaphragm to its original, undistorted

position that causes the negative pressure in the body of the pump to be “released,”

thus performing the function of the “valve means” limitation. ’850 patent, col. 7, ll. 45-

51. Because the district court construed the claims to require a single diaphragm that

meets both the “deformable diaphragm” and “valve means” limitations, the fact that the

accused products have a single diaphragm that meets those claim limitations does not

preclude a finding of literal infringement. See In re Kelley, 305 F.2d 909, 914 (CCPA

1962) (explaining that “[w]e see no reason why a single structural element . . . which

performs two separate functions, cannot support a claim reciting broadly these two

separate functions”).    On the contrary, such a finding would prove that the two

limitations have been met. Moreover, under TFY’s position that a single diaphragm

cannot meet two separate limitations as a matter of law, no device could literally infringe

the ’850 patent because the district court construed the claims to require a single

diaphragm to meet the two limitations. That would be an illogical result.

       Moreover, TFY’s reliance on Gaus to support its position is misplaced. The facts

here are readily distinguishable from Gaus. In Gaus, the patent at issue was directed to

a safety mechanism that prevents fatal shocks to users of electrical appliances, e.g.,

when the user drops a hairdryer into a bathtub. 363 F.3d at 1285. As TFY notes, the

relevant claim language provided that the housing of the claimed device was comprised

of “an electrical operating unit” and “a pair of spaced-apart electrically exposed

conductive probe networks.” In Gaus we determined that, based on the description

contained in the patent specification, the two limitations were embodied as two separate

structural components of the claimed invention. Id. at 1288-90. The accused product in




05-1063                                     11
Gaus, however, did not have two separate components meeting the respective

limitations, and thus we held there was no literal infringement. Id. at 1290. That is not

our case. As explained above, there is nothing in the ’850 patent specification or the

claims that require the “deformable diaphragm” and “valve means” limitations to be

embodied as two separate structural components.            On the contrary, the court’s

construction of those limitations requires that both be embodied by the same single

structure, viz., a deformable diaphragm. Tellingly, TFY does not cite any case law

prohibiting a claim from reciting two limitations embodied by the same structural

component.

       As another alternative ground for affirming the district court’s judgment, TFY

argues that the claims are invalid because the “valve means” limitation does not comply

with the definiteness requirement of 35 U.S.C. § 112, ¶ 1, in particular, that the

specification contains no structure corresponding to the claimed function of the “valve

means.” TFY’s invalidity argument attempts to broaden the district court’s judgment.

Because the district court did not decide that issue, it is inappropriate for us to do so in

this appeal. The matter may be considered on remand.

                                         COSTS

       Each party shall bear its own costs.




05-1063                                       12
