                       NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                    2007-1417, -1462

                           HEUFT SYSTEMTECHNIK GMBH,

                                                        Plaintiff-Cross Appellant,

                                             v.


                          INDUSTRIAL DYNAMICS CO., LTD.,

                                                        Defendant-Appellant,

                                            and

                                   STEVE CALHOUN,

                                                        Defendant.



        Richard W. Young, Drinker Biddle & Reath LLP, of Chicago, Illinois, argued for
plaintiff-cross appellant. With him on the brief were R. Michael Duffy, David A. Frey and
Carrie A. Beyer. Of counsel on the brief was Jeffrey G. Killian, of Washington, DC. Of
counsel was James S. Blackburn, Arnold & Porter, LLP, of Los Angeles, California.

      Joseph R. Re, Knobbe, Martens, Olson & Bear, LLP, of Irvine, California, argued
for defendant-appellant. With him on the brief were Karen Vogel Weil, Steven J.
Nataupsky, Sheila N. Swaroop, Matthew S. Bellinger and Marko R. Zoretic.

Appealed from: United States District Court for the Central District of California

Judge George P. Schiavelli
                       NOTE: This disposition is nonprecedential.

 United States Court of Appeals for the Federal Circuit
                                    2007-1417, -1462

                           HEUFT SYSTEMTECHNIK GMBH,

                                                        Plaintiff-Cross Appellant,

                                             v.

                          INDUSTRIAL DYNAMICS CO., LTD,

                                                        Defendant-Appellant,

                                            and

                                   STEVE CALHOUN,

                                                        Defendant.

Appeals from the United States District Court for the Central District of California in case
no. 05-CV-6299, Judge George P. Schiavelli.

                            __________________________

                               DECIDED: June 25, 2008
                            __________________________

Before MICHEL, Chief Circuit Judge, NEWMAN and LINN, Circuit Judges.

LINN, Circuit Judge.

       Industrial Dynamics Co., Ltd. (“IDC”) appeals from a final judgment of the United

States District Court for the Central District of California. Heuft Systemtechnik GmbH v.

Indus. Dynamics Co., No. 05-CV-6299 (C.D. Cal. July 6, 2007). The judgment, entered

following a jury trial, adjudged IDC liable for infringement of U.S. Patent No. 6,298,974

(“the ’974 patent”). IDC challenges the district court’s claim construction and the denial

of its motion for judgment of non-infringement as a matter of law. Heuft Systemtechnik
GmbH (“Heuft”) cross-appeals from the final judgment. Heuft challenges the district

court’s exclusion of damages evidence and its refusal to grant a permanent injunction.

       We conclude that the district court incorrectly construed the claim terms at issue.

Under the correct constructions, it is undisputed that IDC does not infringe the claims of

the ’974 patent. As a result, we reverse the district court’s denial of IDC’s motion for

judgment of non-infringement as a matter of law and remand with instructions to enter

judgment in favor of IDC. We do not reach the issues raised in Heuft’s cross-appeal.

                                    I. BACKGROUND

       Heuft designs, manufactures, and sells equipment used in bottling plants.          It

owns numerous patents in this field, including the patents at issue in this case—U.S.

Patent No. 6,155,408 (“the ’408 patent”) and the ’974 patent.          Both patents relate

generally to the handling and inspection of bottles (referred to broadly in the patents as

“containers”) for defects and debris, a key feature of which is arranging the bottles in a

way that is stable.

       The ’408 patent is directed to a “method and apparatus for rotating rotationally

symmetrical containers such as bottles, while transporting them under backup

pressure.” During prosecution of the ’408 patent, the examiner repeatedly rejected 1 the

claims over PCT Publication WO 83/00135 (“the Christian reference” 2 ). The examiner

eventually allowed the claims, however, after Heuft made various arguments and




       1
              The prosecution history of the ’408 patent is discussed in detail, infra.
       2
               The named inventor in this publication is Erik Christian Mernoe. The
examiner initially misidentified the inventor by his middle name, however, and that error
has propagated throughout these proceedings. To avoid confusion, we will continue to
refer to the publication as the Christian reference.


2007-1417, -1462                         2
amendments in response to the rejections. The ’974 patent is directed to a “method

and apparatus for inspecting rotating containers.” It is a divisional of the ’408 patent,

and therefore includes an identical specification. The examiner allowed all of the claims

of the ’974 patent without rejection.

       In 2005, several years after issuance of these patents, Heuft filed suit against

IDC, alleging that certain bottling apparatuses sold by IDC infringed both the ’408 and

’974 patents. The parties later stipulated to dismissal with prejudice of all claims under

the ’408 patent, thus leaving only the ’974 patent in suit. In October 2006, the district

court construed the two claim terms of the ’974 patent at issue, adopting Heuft’s

proposed constructions for “arranging” in claim 1 and “stabilizing means” in claim 6.

These constructions were based on the plain meanings of those terms. The district

court declined to adopt IDC’s proposed constructions, which were based on alleged

disclaimers of scope during prosecution of the ’408 patent. A jury trial followed. As

relevant to this appeal, during trial the district court granted IDC’s motion to exclude the

damages testimony of Heuft’s expert, on the basis that the fundamental document

underlying that testimony was not reliable. Because the expert’s testimony was Heuft’s

only evidence of damages, the district court took that issue from the jury. The jury

eventually rendered its verdict, finding that IDC infringed the ’974 patent as construed

by the district court.

       Following trial, the district court addressed a number of post-trial motions. It

denied IDC’s renewed motion for judgment of non-infringement as a matter of law,

finding substantial evidence to support the jury’s verdict. The district court also denied

Heuft’s request for a permanent injunction, finding that Heuft had failed to show




2007-1417, -1462                         3
irreparable harm or that the balance of hardships weighed in its favor. Finally, the

district court declined to award any damages, despite the jury verdict in Heuft’s favor.

The parties timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

                                    II. DISCUSSION

                                 A. Standard of Review

      Claim construction is a question of law, see Markman v. Westview Instruments,

Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), over

which we exercise plenary review. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,

1456 (Fed. Cir. 1998) (en banc). Infringement, either literal or under the doctrine of

equivalents, is a question of fact. Miken Composites, L.L.C. v. Wilson Sporting Goods

Co., 515 F.3d 1331, 1336 (Fed. Cir. 2008).

      The grant or denial of a motion for judgment as a matter of law is reviewed under

the law of the regional circuit. Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil

Co., 425 F.3d 1366, 1372 (Fed. Cir. 2005). In the Ninth Circuit, the grant or denial of a

motion for judgment as a matter of law is reviewed de novo. Pavao v. Pagay, 307 F.3d

915, 918 (9th Cir. 2002).    Judgment as a matter of law “is proper if the evidence,

construed in the light most favorable to the nonmoving party, permits only one

reasonable conclusion, and that conclusion is contrary to the jury’s verdict.” Id. “[W]hen

reviewing a motion for judgment as a matter of law, we apply the law as it should be,

rather than the law as it was read to the jury.” Fisher v. City of San Jose, 509 F.3d 952,

957 (9th Cir. 2007) (quoting Pincay v. Andrews, 238 F.3d 1106, 1109 n.4 (9th Cir.

2001)).




2007-1417, -1462                        4
                                       B. Analysis

       Infringement of the ’974 patent is dependent upon the interpretation of two claim

terms relating to the arrangement of containers in a way that maintains stability. We

first address construction of these claim terms. We then assess the impact of those

constructions on infringement.

                                  1. Claim Construction

       Claim 1 of the ’974 patent recites “rotating the containers continuously alternately

in opposite directions by arranging one of two consecutive containers stable against one

of the at least two railings and the other stable against the other of the at least two

railings.” Claim 6 recites a “stabilizing means for the stable arrangement of one of two

consecutive containers.” The district court construed “arranging” in claim 1 as “putting

into a proper order or into a correct or suitable sequence, relationship or adjustment.”

Heuft Systemtechnik GmbH v. Indus. Dynamics Co., No. 05-CV-6299, slip op. at 2 (C.D.

Cal. Oct. 6, 2006).    It construed “stabilizing means” in claim 6 as “narrowing the

distance between the guiderails at an angle sufficient to interrupt the chaotic behavior of

the bottles.” Id. IDC argues that the claims of the ’974 patent cannot be construed to

encompass stably arranging containers using exit angles less than 30°, because such

angles were disclaimed during prosecution of the related ’408 patent. Heuft counters

that the claim terms were correctly construed, contending that the prosecution history of

the ’974 patent is silent as to the measure of the exit angle, and that any disclaimer that

may have arisen during prosecution of the ’408 patent does not apply to the claims of

the ’974 patent.




2007-1417, -1462                         5
       Prosecution disclaimer occurs when a patentee, either through argument or

amendment, surrenders claim scope during the course of prosecution. Elbex Video,

Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). Amendments

or arguments that are merely vague, ambiguous, or subject to other reasonable

interpretation are not sufficient to surrender claim scope. Omega Eng’g, Inc. v. Raytek

Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003). Rather, in order for prosecution disclaimer

to attach, the patentee’s actions must be “clear and unmistakable.” Id. at 1326.

       We agree with IDC that in the ’408 patent, Heuft disclaimed “arranging . . .

containers . . . stable” or “means for the stable arrangement of . . . containers” using

angles less than 30°. This is because its actions during prosecution were clear and

unmistakable.     From the outset of prosecution of the ’408 patent application, the

examiner rejected all pending claims over the Christian reference under 35 U.S.C.

§§ 102 and 103. Heuft, in response, made amendments to the claims and argued, inter

alia, that “the present invention provides for the increase and sharp decrease at an

angle β of the distance between the railings creating the stable arrangement. This

stable arrangement stops the propagation of any disturbances downstream. As noted

above, Christian does not disclose any means for such stable arrangement.” J.A. at

5078. When Heuft made this argument, no independent claim contained a limitation

relating to the exit angle of the railings.

       The examiner continued to reject the claims under the Christian reference,

countering that “Christian’s guides . . . provide stable arrangement . . . .” Id. at 5089.

Heuft subsequently amended the independent claims to expressly recite an exit angle of

30° to 100°.     E.g., id. at 5092 (amending claim to recite “arranging one of two




2007-1417, -1462                              6
consecutive containers stable against one of the at least two railings and the other

container stable against the other railing in the direction of conveyance after the first

area by reducing the distance between said at least two railings at an angle β of the

lateral railings to each other of about 30° to 100° to about somewhat more than the

diameter of the containers” (amendment emphasized)).             This amendment tracked

language in the specification relating to the only embodiment directed to angled

guiderails. See ’408 patent, col. 2, ll. 12-18 (“[T]he distance between the two railings in

the direction of conveyance is to begin with gradually broadened [sic] to about 1.5 times

the diameter of the containers and then narrowed down at an angle of the two railings to

each other of about 30 to 100°, preferably 50 to 80°, to somewhat more than the

diameter of the containers.”). Accompanying this amendment, Heuft again argued that

the relatively large exit angle of its invention distinguished it from Christian: “In an area

following the first area, he [sic] angle β[3] of the present invention also produces a more

marked change than the gradual reduction in the space between the rails as seen in

Christian. Christian does not suggest that there are the given advantages provided by

angle β in the area following the first area.” J.A. at 5094.

       In a final office action, the examiner continued to reject the claims over the

Christian reference, observing that “[i]t is obvious that following the first area, there

would be a second area wherein Christian’s railings will be about 1.5 times the diameter

of the containers as the distance between the railings is reducing to somewhat wider

than the diameter of a single container. Such tapered configuration of the railings would




       3
             As noted above, Heuft defined the angle β in the amendments to the
claims as “about 30° to 100°.”


2007-1417, -1462                          7
obviously result in a tapered angle within 30° to 100° or 50° to 80°.” Id. at 5114. Heuft

filed a continued prosecution application, in which it added several new claims and

made amendments to the existing ones, relating primarily to the geometry of the

guiderails.   Heuft also attempted to amend the specification.      One such attempted

amendment indicated that the “[t]he critical features [of the invention] are the distance

between the railings 14 and above all the angle β at which that distance narrows down

in the third area 28.” Id. at 5144 (emphasis added). Once again, Heuft argued that the

relatively large angle recited in the claims distinguished the invention over Christian.

The examiner did not allow the amended specification, however, because it was not

accompanied by a statement indicating that the amendment did not add new matter.

The examiner did, however, stop applying the Christian reference after Heuft’s

amendments to the claims, presumably because the added limitations persuaded the

examiner that the claims were patentably distinct.            Following argument and

amendments to the claims to address the examiner’s remaining rejection under 35

U.S.C. § 112 ¶ 1, the examiner allowed the claims to issue.

       Thus, throughout the course of prosecution of the ’408 patent, Heuft not only

repeatedly distinguished its claims over the Christian reference on the basis of the large

exit angle’s ability to stably arrange the containers, it also amended all of those claims

to require an exit angle between 30° to 100°, a span which directly tracks the only

discussion in the specification indicating an appropriate range for stably arranging

containers. Under these circumstances, we have little difficultly concluding that Heuft

clearly and unmistakably disclaimed exit angles less than 30°, at least with respect to




2007-1417, -1462                        8
the ’408 patent. The salient question is whether this disclaimer flows to the related ’974

patent.

       It is well-settled that “prosecution disclaimer may arise from disavowals made

during the prosecution of ancestor patent applications.” Ormco Corp. v. Align Tech.,

Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (quoting Omega Eng’g, Inc. v. Raytek Corp.,

334 F.3d 1314, 1333 (Fed. Cir. 2003)). “When the application of prosecution disclaimer

involves statements from prosecution of a familial patent relating to the same subject

matter as the claim language at issue in the patent being construed, those statements in

the familial application are relevant in construing the claims at issue.” Id. Thus, the

issue is whether the disclaiming statements Heuft made with respect to the ’408 patent

related to the same subject matter that is at issue in the ’974 patent.

       The charts below display (with relevant language emphasized) the claim

language at issue in the ’408 patent application when the disavowing statements were

first made (following Heuft’s first amendment to the claims), see J.A. at 5073-74, the

claim language as it appears in the issued ’408 patent, and, finally, the corresponding

language in the claims of the ’974 patent. The first chart shows a comparison for the

“arranging . . . containers . . . stable” limitation:




2007-1417, -1462                             9
       ’408 application           ’408 patent (as issued)        ’974 patent (as issued)
      (1st amendment)
 1.d. arranging one of two      1.c. arranging one of two      1.e. rotating the containers
 consecutive       containers   consecutive       containers   continuously alternately in
 stable against one of the at   stable against one of the at   opposite directions by
 least two railings and the     least two railings and the     arranging one of two
 other    container    stable   other stable against the       consecutive       containers
 against the other railing in   other of the at least two      stable against one of the at
 the       direction       of   railings in the direction of   least two railings and the
 conveyance after the first     conveyance after the first     other stable against the
 area.                          area by reducing the           other of the at least two
                                distance between said at       railings in the direction of
                                least two railings at an       conveyance after the first
                                angle β of the lateral         area;
                                railings to each other of
                                about 30° to 100° to about
                                somewhat more than the
                                diameter of the containers
                                and arranging the at least
                                two railings substantially
                                symmetrical to the midline
                                of the conveying surface;
                                thereby     rotating    said
                                containers.

The second chart shows a like comparison for the “means for the stable arrangement of

. . . containers” limitation:




2007-1417, -1462                         10
       ’408 application          ’408 patent (as issued)        ’974 patent (as issued)
      (1st amendment)
2.d. means for the stable      2.d. means for the stable      6.e. stabilizing means for
arrangement of one of at       arrangement of one of two      the stable arrangement of
least     two    consecutive   consecutive containers at      one of two consecutive
containers at one railing      one of the at least two        containers at one of the at
and of the other container     railings and of the other      least two railings and of
at the other railing, the      container at the other of      the other container at the
means following the first      the at least two railings,     other of the at least two
area.                          the stable arrangement         railings    the   stabilizing
                               means following the first      means being disposed in
                               area in the direction of       the       direction         of
                               conveyance             and     conveyance after the first
                               comprising said distance       area.
                               between said at least two
                               railings       substantially
                               symmetrically reducing at
                               an angle β of said at least
                               two railings to each other
                               of about 30° to 100° to
                               about somewhat more
                               than the diameter of the
                               containers and arranging
                               said at least two railings
                               substantially symmetrical
                               to the midline of the
                               conveying surface.

       As illustrated by these charts, the statements Heuft made during prosecution of

the ’408 patent related to the same subject matter that is at issue in the relevant claim

limitations of the ’974 patent—namely, “arranging . . . containers . . . stable” and “means

for the stable arrangement of . . . containers.”       Consequently, the arguments and

amendments Heuft made during prosecution of the ’408 patent also operate to disclaim

exit angles less than 30° in the claims of the ’974 patent.




2007-1417, -1462                         11
                                     2. Infringement

       Following trial, IDC renewed its motion for judgment of non-infringement as a

matter of law. It argued that the record lacked substantial evidence to support the jury’s

verdict of infringement, under either the district court’s constructions of the claim terms

or under constructions wherein exit angles less than 30° were disclaimed. The district

court denied IDC’s motion.       IDC contends that it is entitled to judgment of non-

infringement as a matter of law if we find that Heuft has disclaimed exit angles less than

30°, because the undisputed evidence at trial showed that the accused infringing

products have exit angles of either 12° or 14°.    Heuft does not confront IDC’s position

head on, responding only that:

      Adoption of a different claim construction would necessitate a new trial as
      Heuft presented its entire case based on the claim construction adopted
      by the district court. In particular, as a result of the district court’s claim
      construction, Heuft did not present any evidence of infringement by
      equivalent structure under 35 U.S.C. § 112 ¶ 6 and agreed to remove
      language regarding infringement by equivalent structure under 35 U.S.C.
      § 112 ¶ 6 from the final jury instructions.

Cross-Appellant’s Br. at 33 n.4 (citations omitted). Heuft does not dispute that IDC’s

accused products have exit angles of 12° and 14°—substantially less than 30°—only

that, if remanded on IDC’s proffered claim construction, it should be able to assert that

IDC’s products infringe claim 6 as structural equivalents under § 112 ¶ 6.

       Heuft’s argument misunderstands the concept of disclaimer. Disclaimer operates

to prevent a patentee from capturing subject matter disavowed during prosecution, and

applies with equal force to means-plus-function claims. See Ballard Med. Prods. v.

Allegiance Healthcare Corp., 268 F.3d 1352, 1359 (Fed. Cir. 2001) (“When a patentee

advises the examiner (and the public after patent issuance) that a particular structure is

not within his invention, the patentee is not permitted to assert in a subsequent


2007-1417, -1462                        12
infringement action that the same structure is equivalent to the structure described in

the patentee’s specification for purposes of section 112 paragraph 6.”); see also Omega

Eng’g, 334 F.3d at 1325 (discussing Ballard Med. Prods.). Thus, when Heuft broadly

disclaimed exit angles less than 30° during prosecution, it foreclosed the possibility that

it could later attempt to assert that a 12° or 14° exit angle is structurally equivalent to an

exit angle that, due to the disclaimer, must be 30° or more. Consequently, because it is

undisputed that the exit angles of IDC’s accused products are substantially less than

30°, “the evidence . . . permits only one reasonable conclusion, and that conclusion is

contrary to the jury’s verdict.” Pavao, 307 F.3d at 918. Accordingly, IDC is entitled to

judgment of non-infringement as a matter of law.

                                    III. CONCLUSION

       For the foregoing reasons, we reverse the district court’s denial of IDC’s motion

for judgment of non-infringement as a matter of law and remand with instructions to

enter judgment in favor of IDC.




2007-1417, -1462                          13
