Case: 19-2175    Document: 61     Page: 1   Filed: 07/29/2020




        NOTE: This disposition is nonprecedential.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-TAD-
 KLH, 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 con-
 form 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 Ad-
 mar International, Inc. (“Admar”), BuyBabyDirect, LLC
 (“BBD”), Bayou Graphics and Design, LLC (“BGD”), Con-
 trol Services, Inc. (“CS”), and HHHII, LLC (“HHHII”) (col-
 lectively “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 equiv-
 alents, and that LNC had not shown that the ’178 patent
 was invalid. We reverse-in-part and affirm-in-part the dis-
 trict court’s claim construction order, vacate the district
 court’s order granting summary judgment of noninfringe-
 ment, affirm the district court’s order denying summary
 judgment of invalidity, vacate the district court’s order dis-
 missing Count III and awarding costs, and remand for fur-
 ther 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 por-
 tion . . . which can conform to the shape of an object.” ’178
 Patent, Abstract. The specification indicates that the pri-
 mary 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 con-
 tainer has continuous sidewalls (12) with one of the side-
 walls 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 capa-
 ble 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 seg-
 ment (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 cir-
 cular 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 flex-
 ible 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 gen-
     erally flat sidewall section and a generally non flex-
     ible 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 in-
     ward surface for unobstructed fluid flow out of said
     open upper sidewall end, and
     a handle located on the non flexible portion oppo-
     site 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 side-
 wall, referred to as the Nuby Tear Free Rinse Pail (“Ac-
 cused 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 al-
 leged 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 infringe-
 ment and patent invalidity together with counts directed
 to various state and federal unfair competition counter-
 claims. 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 Louisi-
 ana. After the case was transferred to Louisiana, the dis-
 trict 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 sepa-
 rate summary judgment motions directed to the question
 of infringement. McGinley’s motion sought summary judg-
 ment 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 dis-
 trict court granted both requests and the parties filed their
 cross motions directed to the invalidity issue.
     Since many of the noninfringement and invalidity is-
 sues 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 hear-
 ing. 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 judg-
 ment 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 Com-
 plaint 1 be dismissed without prejudice as moot given the


     1   McGinley’s “Count III claims seek[] to hold Defend-
 ants jointly and severally liable as a ‘single business enter-
 prise’” 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 or-
 dered 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 Cross-
 Appeal, 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 judg-
 ment 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 non-
 movant’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-CV-
 00821, 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 re-
 view de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
 574 U.S. 318, 326, 135 S. Ct. 831, 838 (2015). Any subsid-
 iary factual findings related to claim construction are re-
 viewed under the clearly erroneous standard. Id. Whether
 an accused device or method infringes a claim either liter-
 ally 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 re-
 solving reasonable factual inferences in favor of the pa-
 tentee, 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 Ac-
 cused Device meets the “generally flat” or “handle” limita-
 tions found in all asserted claims.
 The “generally flat” limitations:
     Before the district court, McGinley proposed constru-
 ing “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 in-
 wardly 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 par-
 ties agreed that the term “generally flat” is not limited to
 perfectly flat, the parties disputed whether the term “gen-
 erally 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 ren-
 ders 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 con-
 struction 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 con-
 sidered perfectly straight and flat”). Second, the district
 court rejected McGinley’s construction because it fails to
 take into account the prosecution history and because con-
 struing “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 dif-
 fers in its shape as compared to the remainder of the con-
 tinuous 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 gen-
 erally 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 dis-
 cussed below, these constructions are incorrect.
      With respect to part one, LNC is correct that the dis-
 trict court’s adoption of the “not perfectly flat” construction
 includes in that construction everything that is not per-
 fectly 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 sec-
 tions that are “perfectly flat,” which must also be consid-
 ered “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 con-
 struing the claim terms as it did, the district court effec-
 tively 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 sec-
 tion in the front and round/cylindrical sidewalls else-
 where. 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 re-
 mainder of the continuous sidewall is their shape.” McGin-
 ley, 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 com-
 pared 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 side-
 wall section,” and the claimed “generally flat sidewall sec-
 tion” 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 under-
 stood 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 per-
 son 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 prose-
 cution 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 construc-
 tion of ‘mostly flat and not curved’” is correct. Cross-Appel-
 lants’ 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] sur-
 face 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 dis-
 trict court—of “generally flat”: “mostly flat and not per-
 fectly 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 curva-
 ture, arc, bend or bow, would necessarily be considered per-
 fectly 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 dupli-
 cative—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 differentiat-
 ing 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 prosecu-
 tion history is devoid of any evidence to show that McGin-
 ley 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.” Ap-
 pellant’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 pa-
 tent “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 es-
 sentially conceded that a twelve degree V-shaped keel can-
 not 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-as-
 serted 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 in-
 wardly flexible panel.” McGinley, 2019 WL 2150384, at
 *12–14. Instead, according to McGinley, the prior art dis-
 closed “V-shaped” or “cylindrical” sidewalls or flexible pan-
 els. 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 “cy-
 lindrical or round” as “something other than generally
 flat.” Appellant’s Br. 25. Thus, like Schoell, McGinley dif-
 ferentiated 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 “per-
 fectly flat,” it (1) does not foreclose perfect flatness, and (2)
 can allow for minor imperfections, including curved por-
 tions. 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 as-
 serted claims, as “mostly flat and not, as a whole, V-shaped,
 round, or cylindrical.” For example, a “generally flat” flex-
 ible 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 ei-
 ther 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 sub-
 sequent 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 dis-
 pute 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 pro-
 vided 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 appli-
 cation of the claim term to the Accused Device. See Cross-
 Appellants’ Br. 51 (arguing the Accused Device “does not
 have a handle either “located on” or “joined to” the non-
 flexible 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 con-
 tainer 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 pa-
 tent 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 hold-
 ing 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 includ-
 ing 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 mar-
 keting material, which describes the Accused Device as
 having an “Easy Grip™ handle.” See, e.g., Tear-Free Rinse
 Pail, Nuby, https://www.nuby.com/usa/en/tear-free-rinse-
 pail-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 “em-
 brace in the claims or describe in the specifications all pos-
 sible 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 specifica-
 tions, 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 in-
 vention to which the patentee is entitled the right to ex-
 clude. 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 han-
 dle,” 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 or-
 der granting LNC’s motion for summary judgment of non-
 infringement should be reversed, while LNC argues that it
 should be affirmed. In its order granting summary judg-
 ment of noninfringement, the district court found that
 there was no material factual dispute that the alleged “gen-
 erally 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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 MCGINLEY   v. LUV N' CARE LTD.                              17



 limitation, when properly construed, does not require dif-
 ferentiation between the claimed sidewall section and the
 remainder of the continuous wall, the district court’s hold-
 ing was in error.
     On the facts before us, it is unclear whether the Ac-
 cused 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 fundamen-
 tally different construction of the term, “generally flat.”
 Accordingly, the district court’s grant of summary judg-
 ment of noninfringement is vacated and the issue is re-
 manded for further consideration in view of our
 construction.
      With respect to McGinley’s request that the court re-
 verse 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 nonin-
 fringement. 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 in-
 validity. 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 dis-
 closed 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 dis-
 pute 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 sec-
 tion 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. Hos-
 pira, 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 re-
 solving all reasonable factual inferences in favor of the pa-
 tentee, 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 pa-
 tent, 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 par-
 ties’ motions rest on the determination of the effective fil-
 ing 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 ques-
 tion 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 pa-
 tent 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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 MCGINLEY   v. LUV N' CARE LTD.                              19



 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 Ap-
 plication”). 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 dis-
 closed in the specification and drawings included in the
 Original Application.
      According to LNC, the district court erroneously con-
 cluded that the claims were supported by the Original Ap-
 plication and the ’325 Application. Cross-Appellant’s Br.
 55. LNC argues that, in reaching its conclusion, the dis-
 trict 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 ef-
 fects 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 dis-
 closed 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 pre-
 ferred 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 con-
 tainer 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 Fig-
 ure 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 specifica-
 tion of the ’178 patent, Figure 2 is a top and interior per-
 spective 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 side-
 wall 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 re-
 lies 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 inven-
 tion 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 dur-
 ing 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, re-
 instate 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). Be-
 cause 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 dis-
 missing Count III as moot and awarding costs.
                          CONCLUSION
     We have considered the parties’ remaining arguments
 and find them unpersuasive. Accordingly, we reverse-in-
 part and affirm-in-part the district court’s claim construc-
 tion order, vacate the district court’s order granting sum-
 mary judgment of noninfringement, affirm the district
 court’s order denying summary judgment of invalidity, va-
 cate 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.
