                 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


                                       04-1503

                   OUTLAST TECHNOLOGIES, INCORPORATED,

                                                      Plaintiff-Appellant,


                                           v.


                    FRISBY TECHNOLOGIES, INCORPORATED,

                                                      Defendant-Appellee.


                           __________________________

                           DECIDED: March 30, 2005
                           __________________________


Before MICHEL, Chief Judge, RADER, and SCHALL, Circuit Judges.

SCHALL, Circuit Judge.


                                      DECISION

      Outlast Technologies, Inc. (“Outlast”), acting as an exclusive licensee, sued

Frisby Technologies, Inc. (“Frisby”) for infringement of U.S. Patent No. 5,366,801

(issued Nov. 22, 1994) (“the ’801 patent”) in the United States District Court for the

District of Colorado. Frisby denied infringement and asserted counterclaims for tortious

interference with business relations and trade libel. On January 14, 2004, the district

court granted Frisby partial summary judgment of non-infringement. Outlast Techs.,
Inc. v. Frisby Techs., Inc., 298 F. Supp. 2d 1112 (D. Colo. 2004) (“Summary

Judgment”). The court subsequently certified the judgment under Fed. R. Civ. P. 54(b)

and Outlast appealed to this court. Because we conclude that the district court erred in

construing the asserted claims, we reverse and remand for further proceedings

consistent with this decision.

                                     DISCUSSION

                                           I.

       The technology at issue in this case relates to temperature-resistant, phase-

change materials (“PCMs”). PCMs resist change in temperature by changing between

their solid and liquid states. For instance, if the ambient temperature increases, the

PCMs change from their solid to liquid phase and, in making this phase change, absorb

heat from the surrounding environment.          Similarly, if the ambient temperature

decreases, the PCMs change back from their liquid to solid phase, which, in turn, has

the incidental effect of releasing heat back into the environment. There are numerous

types of PCMs, and different types of PCMs exhibit different phase-change

temperatures. This allows for temperature control based on the particular type of PCM

selected.

       The temperature-resistant properties of PCMs make them well suited for use in

jackets, gloves, hats, and other articles of clothing where it is desirable to have a

material resistant to changes in temperature. For example, when incorporated into the

fabric of a ski jacket, the PCMs work to maintain a constant, comfortable temperature

for the wearer. If the wearer starts to get too warm, the PCMs absorb the heat and

thereby keep the wearer cool; if the wearer starts to get too cold, the PCMs release heat




04-1503                                    2
and warm the wearer. This is the general application claimed by the ’801 patent. Claim

1 is representative and reads:

              An article having enhanced thermal storage properties and
              repeatability of thermal response consisting essentially of:

                a base material (50) selected from the group consisting of
                  fabrics and fibers, and

                a coating (10) covering at least a portion of the surface of
                  said base material (50) and comprising:

                   a polymeric binder (20), and

                   a plurality of microcapsules (30) dispersed throughout
                     and submerged within said binder (20) on the surface
                     of said base material (50) so as to be surrounded
                     thereby, said microcapsules (30) containing a
                     temperature stabilizing means selected from the
                     group consisting of phase change materials and
                     plastic crystals, whereby the article exhibits enhanced
                     thermal stability when subjected to heat or cold.

’801 patent, col. 5, ll. 35-50 (numerals and emphases added). An embodiment of the

claim is shown below in figures 2 and 3 from the ’801 patent, where figure 3 is a cross-

sectional view of figure 2.




04-1503                                     3
       As shown in figures 2 and 3, the article consists generally of a coating (10),

which is a mixture of microcapsules (30) and a polymeric binder (20), and a base

material (50). Although not specifically identified in the figures, the PCMs are enclosed

within the microcapsules (30), which are in turn surrounded by the polymeric binder

(20). This creates a “dual wall” structure around the PCMs—the first wall being formed

by the microcapsules (30) and the second wall by the polymeric binder (20)—that

serves to retain the PCMs within the article. It is this coating that is then applied to the

surface of the base material to form the temperature-change-resistant article. Note that

in figures 2 and 3 the base material is a fabric, but the claim states that it could also be

an individual fiber.

                                             II.

On September 24, 2001, Outlast sued Frisby for infringement of the ’801 patent.

Outlast specifically alleged that Frisby’s ComforTemp® product, a non-woven fabric,

infringed independent claim 1 and dependent claims 2, 3, and 6 of the ’801 patent.

Summary Judgment, 298 F. Supp. 2d at 1114. Frisby denied infringement and filed

counterclaims for tortious interference with business relations and trade libel. In due

course, the parties filed cross motions for summary judgment. However, before the

court could rule on the motions, all proceedings were stayed as a result of Frisby filing

for bankruptcy in the United States Bankruptcy Court for the Middle District of North



04-1503                                      4
Carolina. Id. at 1113. Subsequently, the bankruptcy court modified the stay order to

allow the cross-motions for summary judgment on infringement to go forward. Id. at

1113-14.

        Thereafter, the parties agreed to have the case referred to a magistrate judge.

On January 14, 2004, the magistrate judge granted partial summary judgment in favor

of Frisby. The court’s decision was based on its construction of the term “on the surface

of said base material.” Specifically, the court determined that during prosecution of the

’801 patent the patentees disclaimed articles in which the microcapsules were

impregnated in the fabric. Id. at 1123. It therefore concluded that “on the surface of

said base material” was strictly limited to mean articles with microcapsules only on the

surface of the fabric. See id. at 1123-24. As a result, and because “it [was] undisputed

that Frisby’s accused products [were] made by impregnating a nonwoven fabric starting

material,” the court granted Frisby partial summary judgment of non-infringement. Id. at

1124.

        The court applied prosecution disclaimer based on statements the patentees

made in overcoming an obviousness rejection by the Examiner; specifically, statements

made in overcoming the Examiner’s obviousness rejection based on “the Bryant

reference” in view of “the Woo reference.”1 Id. at 1120. According to the Examiner, the

combination rendered the claimed invention obvious because the Bryant reference

disclosed microcapsules filled with a PCM, id. at 1118, and the Woo reference disclosed



        1
              This was actually the second obviousness rejection. The Examiner had
previously rejected the claims as obvious in view of the Bryant and Doree references.
Summary Judgment, 298 F. Supp. 2d at 1119-20. In response, the patentees amended
the claims and successfully distinguished their invention from that combination based
on its “dual wall” structure. Id. at 1120.


04-1503                                    5
an article made by applying a mixture of microcapsules and binder material to a fabric

and then “impregnating” the mixture into the fabric by passing the coated fabric through

a pair of heated rollers, id. at 1119.

       In response to the rejection, the patentees amended claim 1 by adding, among

other things, the “on the surface of said base material” language.2 In addition, the

patentees submitted accompanying remarks explaining how the claimed invention

differed from Woo. It was from these additional remarks that the district court concluded

the patentees disclaimed impregnated fabrics. In particular, the court focused on the

following statement:

               In contrast [to Woo], the present invention is a coating that is
               applied to the surface or the substrate (i.e., the fabric or the
               fiber) and is intended to remain on the surface.

Id. at 1122.      Based on this statement, the court held that the patentees had

unambiguously disclaimed impregnated fabrics and, therefore, “on the surface of said

base material” meant that the binder-microcapsule mixture must be only on the surface

of the fabric; not impregnated within the fabric. Id. at 1122-23.

       The district court acknowledged that the patentees’ accompanying remarks

contained statements indicating that the coating could also be located within the

interstices of the fabric:

               In contrast, in the present invention, the microcapsules are
               placed on the surface of the substrate as well as within the
               interstices of the substrate, should there be any such
               interstices . . . .

Id. at 1122. However, the court concluded that

       2
             The patentees also amended another limitation of the claim to read “a
coating covering at least a portion of the surface of said base material and comprising:
 . . . .”


04-1503                                       6
               [t]he patentee’s additional statements in the amendment
               form cannot alter the clear effect of the prosecution history . .
               . . Prosecution history disclaimer is substantive, focusing on
               the “subject matter the patentee relinquished or disclaimed.”
               Here, . . . “the simple chronology of the prosecution history”
               leads inexorably to the conclusion that the second
               amendment to [the claim] narrowed the scope of that claim
               to exclude application of the microcapsules by impregnation.

Id. (citations omitted).

       The district court certified its summary judgment decision under Fed. R. Civ. P.

54(b) and Outlast timely appealed to this court.3 We have jurisdiction pursuant to 28

U.S.C. § 1295(a)(1).

                                              III.

       We review a grant of summary judgment de novo. TorPharm Inc. v. Ranbaxy

Pharms., Inc., 336 F.3d 1322, 1326 (Fed. Cir. 2003). Summary judgment is appropriate

“if the pleadings, depositions, answers to interrogatories, and admissions on file,

together with the affidavits, if any, show that there is no genuine issue as to any material

fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ.

P. 56(c).   Resolution of a patent infringement claim requires a district court to first

construe the claims and, second, compare the accused product to the properly

construed claims. Mars, Inc. v. H.J. Heinz Co., L.P., 377 F.3d 1369, 1373 (Fed. Cir.

2004). The first step is a question of law, while the second is a question of fact. Power

Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 1406 (Fed. Cir. 2004).

       “It is well-settled that, in interpreting an asserted claim, the court should look first

to the intrinsic evidence of record, i.e., the patent itself, including the claims, the



       3
              The bankruptcy court again modified the stay order for the sole purpose of
allowing Outlast to appeal the district court’s summary judgment decision. (J.A. at 990.)


04-1503                                        7
specification and, if in evidence, the prosecution history.”             Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Under this framework, claim

terms are given their ordinary meaning “unless the patentee unequivocally imparted a

novel meaning to those terms or expressly relinquished claim scope during

prosecution.”    Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir.

2003). Accordingly, we have held that ambiguous statements in the prosecution history

are not sufficient to surrender claim scope. Kumar v. Ovonic Battery Co., Inc., 351 F.3d

1364, 1371 (Fed. Cir. 2003).          Rather, “for prosecution disclaimer to attach, our

precedent requires that the alleged disavowing actions or statements made during

prosecution be both clear and unmistakable.” Omega Eng’g, 334 F.3d at 1326.

         On appeal, Outlast first contends that the district court erred by not giving “on the

surface of said base material” its plain and ordinary meaning. More specifically, Outlast

argues that the statements made by the patentees in distinguishing the Woo reference

do not support the court’s conclusion that the patentees disclaimed all articles in which

the microcapsules are impregnated into the fabric.          Outlast asserts that the district

court’s construction has the impermissible effect of reading a process limitation into a

product claim and of excluding two of the three embodiments disclosed in the ’801

patent’s specification. Second, Outlast urges that, under the correct claim construction,

the district court should have granted partial summary judgment of infringement in its

favor.

         In response, Frisby contends that the district court properly interpreted claim 1 to

exclude articles containing impregnated microcapsules. First, Frisby argues that the

patentees unambiguously disclaimed impregnated fabrics during prosecution of the ’801




04-1503                                        8
patent. Frisby asserts that the district court properly ignored the patentees’ statement

that the microcapsules could also be dispersed within the interstices of the base

material because the statement is of no legal significance according to this court’s

decision in Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed.

Cir. 2003). Second, even if prosecution disclaimer did not occur, Frisby urges that the

district court’s construction is nevertheless supported by the plain language of the claim,

because the “consisting essentially of” transition phrase means that the article must

“consist essentially of surface coated fabric.” Frisby further urges that the Markush form

of the limitation “a base material selected from the group consisting of fabrics and

fibers,” precludes Outlast from arguing that impregnated fabrics consist essentially of

surface coated fibers. This, according to Frisby, is because the use of a Markush group

requires that the base material consist either of fabric or fiber, but not both.

                                             IV.

       We agree with Outlast that the district court erred in its construction of the

asserted claims.      First, we do not think that the patentees clearly disclaimed

impregnated materials or materials made by an impregnation process4 during

prosecution of the ’801 patent. It is true that in distinguishing Woo the patentees stated

that

              the present invention is a coating that is applied to the
              surface or the substrate (i.e., the fabric or the fiber) and is
              intended to remain on the surface.




       4
              We note that, absent clear and unambiguous evidence to the contrary, a
product claim is not limited to, or does not exclude, products made by a particular
process. See Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372
(Fed. Cir. 2000).


04-1503                                       9
Summary Judgment, 298 F. Supp. 2d at 1122.             However, as already noted, the

patentees went on to state that

              in the present invention, the microcapsules are placed on the
              surface of the substrate as well as within the interstices of
              the substrate, should there be any such interstices . . . .

Id. These seemingly contradictory statements do not unequivocally or unambiguously

disclaim articles in which the microcapsules are impregnated within the interstices of the

substrate. On the contrary, such contradictory statements are indicative of ambiguity.5

       The district court ignored the second statement on the ground that it could not

overcome the substantive effect of the prior statement. Id. The court indicated that this

was because, after the patentees amended the claim to overcome the first obviousness

rejection, “the examiner found that application of microcapsules by impregnation was

obvious under Woo, and the patentees were required following the second rejection to

give up application by impregnation to gain patentability.” Id. This, however, is not

necessarily true. Woo appeared to disclose an article in which all of the microcapsules

were impregnated within the fabric, i.e., no microcapsules remained on the surface of

the fabric. The patentees’ statement can consequently be interpreted as distinguishing

Woo on that ground, i.e., on the more limited ground that, unlike Woo, in the claimed

invention microcapsules are not only dispersed within the interstices of the fabric but

also on the surface of the fabric. Indeed, in the same paragraph in which the patentees

stated that the microcapsules were intended to remain on the surface of the fabric, they

also stated that the



       5
             Contrary to Frisby’s contention, our decision in Springs Window, supra, in
no way suggests that we should ignore the second of two conflicting statements in the
prosecution history.


04-1503                                    10
              present invention allows a much greater quantity of
              microcapsules to be located on the substrate since the entire
              surface and not only the interstices between fibers is
              available for capsule loading.

(J.A. at 211.) In short, the prosecution history does not provide unambiguous evidence

that the patentees disclaimed all impregnated fabrics or fabrics made by an

impregnation process.

       Second, we are also not persuaded by Frisby’s argument that the plain language

of the claim requires the article to consist essentially of a surface coated fabric or fiber.

The claim does require that the article consist essentially of a base material and a

coating.   However, with respect to the coating, the claim expressly states that the

coating must merely cover “at least a portion of the surface of said base material.” ’801

patent, col. 5., ll. 40-41 (emphasis added). Nor does the fact that the base material

limitation is written in Markush format have a material effect on our construction

because it merely requires the base material to consist of a fabric or a fiber. Therefore,

if the base material is fabric, the claim requires at least a portion of the fabric’s surface

to be covered by the coating. However, it does not preclude the coating from also being

dispersed within the interstices of the fabric.

       In sum, we hold that “on the surface of said base material” does not exclude

articles in which microcapsules are dispersed within the fabric, whether by impregnation

or some other process. The limitation simply means that the coating (i.e., the mixture of

microcapsules and polymeric binder) is dispersed on at least a portion of the surface of

the base material, irrespective of whether the coating is also dispersed within the

interstices of the base material.




04-1503                                      11
                                             V.

      Based on the record before us, we do not think it is appropriate for us to reach

the second step of the infringement analysis.     That is because the second step—

comparing the accused product to the properly construed claims—is a question of fact

that the district court did not address in granting summary judgment. The court granted

summary judgment of non-infringement on the ground that Frisby’s ComforTemp®

product was made of impregnated fabric, after noting that it was “undisputed that

Frisby’s accused products are made by impregnating a nonwoven fabric starting

material.” Summary Judgment, 298 F. Supp. 2d at 1124. On appeal, however, the

parties do not appear to agree on the structure of the base material of the accused

product. (Br. of Frisby at 26-28.) In addition, Outlast disputes the admissibility of the

declarations of Dr. Peter S. Grynaeus and Mr. Rory Holmes. (Br. of Outlast at 57, 60.)

Therefore, considering that we have reversed the district court’s claim construction, we

think it is appropriate that the district court have the first opportunity to address any

evidentiary issues as to infringement. Accordingly, we reverse the grant of summary

judgment and remand the case for further proceedings on infringement in view of the

claim construction set forth above.

      Each party shall bear its own costs.




04-1503                                      12
