   United States Court of Appeals for the Federal Circuit

                                          05-1088


                               AQUATEX INDUSTRIES, INC.,

                                                      Plaintiff-Appellant,

                                             v.


                                 TECHNICHE SOLUTIONS,

                                                      Defendant-Appellee.



       Jack A. Wheat, Stites & Harbison, of Louisville, Kentucky, argued for plaintiff-
appellant. With him on the brief was Joel T. Beres. Of counsel on the brief were Richard S.
Myers, Jr., James R. Michels and Alexandra T. MacKay, of Nashville, Tennessee.

     James A. DeLanis, Baker Donelson Bearman Caldwell & Berkowitz, P.C., of Nashville,
Tennessee, argued for defendant-appellee. With him on the brief was W. Edward Ramage.

Appealed from: United States District Court for the Middle District of Tennessee

Chief Judge Robert L. Echols
 United States Court of Appeals for the Federal Circuit




                                         05-1088




                             AQUATEX INDUSTRIES, INC.,

                                                    Plaintiff-Appellant,

                                               v.

                               TECHNICHE SOLUTIONS,

                                                    Defendant-Appellee.


                            __________________________

                            DECIDED: August 19, 2005
                            __________________________


Before MAYER, GAJARSA, and DYK, Circuit Judges.

MAYER, Circuit Judge.

     AquaTex Industries, Inc. (“AquaTex”) appeals the judgment of the United States

District Court for the Middle District of Tennessee, AquaTex Indus. Inc. v. Techniche

Solutions, No. 02-CV-914 (M.D. Tenn. Sept. 27, 2004), granting summary judgment of

noninfringement in favor of Techniche Solutions (“Techniche”). Because there was no

literal infringement, and because the district court improperly determined that

prosecution history estoppel barred infringement under the doctrine of equivalents, we

affirm-in-part, reverse-in-part, and remand.
                                        Background

     AquaTex initiated this action against Techniche for contributory infringement of

United States Patent No. 6,371,977 (“the ’977 patent”). AquaTex is the assignee of the

’977 patent entitled “Protective Multi-Layered Liquid Retaining Composite.” Both parties

market multi-layered, liquid-retaining composite material for evaporative cooling

garments.      AquaTex contends that Techniche’s evaporative cooling garments and

products infringe the ’977 patent either literally or under the doctrine of equivalents.

     The ’977 patent claims a method of cooling a person through evaporation by

providing a multi-layered, liquid-retaining composite material comprising a fiberfill

batting, and either hydrophilic polymeric fibers or hydrophilic polymeric particles. The

technology is suited for use in a wide variety of items such as protective garments,

blankets, and compresses. In general terms, practice of the patented method involves

soaking a composite material in a liquid for a matter of minutes, wringing out the excess

liquid, and then placing the material or garment against a person for cooling by

evaporation.

     The ’977 patent specification describes the invention as including:

       a basic configuration of a multi-layered, liquid-retaining composite
       material comprising of: a conductive layer which is adapted for
       placement in close proximity to, or indirect contact with the body of the
       wearer; a filler layer impregnated [with] a fiberfill batting material and with
       liquid absorbent particles, fibers, or a combination of both; a retainer
       layer for retention of the filler layer between the conductive layer and the
       retention layer; and, if needed, an outside protective layer attached to, or
       placed adjacent to, the outermost surface of the retention layer.

’977 patent, col. 3, ll. 31-44. The patent includes 35 claims. Independent claims 1 and

9 are disputed in this case. Claim 1 reads:

       A method of cooling a person by evaporation, comprising:



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       providing a multi-layered, liquid-retaining composite material comprising a
       fiberfill batting material, and hydrophilic polymeric fibers that absorb at
       least about 2.5 times the fiber’s weight in water;
       soaking said multi-layered composite in a liquid;
       employing said multi-layered, liquid-retaining composite material as a
       garment or a flat sheet and evaporatively cooling said person.

’977 patent, col. 13, ll. 64-67 & col. 14, ll. 1-6 (emphasis added). Similarly, claim 9

requires the water-absorbent layer to comprise “a fiberfill batting material and

hydrophilic polymeric particles.”

     The specification of the ’977 patent describes a “filler layer impregnated [with] a

fiberfill batting material and with liquid absorbent particles, fibers, or a combination of

both[.]” col. 3, ll. 37-39. Further, the specification states:

           With respect to the liquid absorbent fibers, the blend is a combination
     of a superabsorbent polymeric fiber and a fiberfill or batting. The particular
     fiberfill is not known to be critical. That is, any commercial fiberfill may be
     used as long as it does not adversely affect the performance of the end
     composite. Accordingly, when the end composite is to be used as or part of
     a fire retardant garment, the fiberfill or batting is chosen accordingly. In
     such a case, the fiberfill is typically comprised of a flame and heat resistant
     material such as woven aramid and/or polybenzamidazole (“PBI”) fibers.
     That is, the fiberfill is selected from a group consisting of an aramid polymer
     fabric material, as [a] blend of aramid polymer fabric materials, a
     polybenzamidazole material, and a blend of aramid polymer fabric and
     polybenzamidazole materials. For other non-flame retardant applications,
     commercial fiberfill such as DuPont DACRON® available from DuPont, or
     polyester fiberfill products from Consolidated Textiles, Inc. of Charlotte, N.C.
     Additionally, U.S. Pat. Nos. 5,104,725; 4,304,817; and 4,818,599; all of
     which [are] incorporated by reference, disclose fiberfill fibers and blends
     suitable for certain applications of the present invention.

’977 patent, col. 3, ll. 45-65.       The commercial fiberfill examples described in the

specification are all synthetic or man-made materials. Likewise, the three United States

patents incorporated by reference each discloses and teaches the use of synthetic

polyester fiberfill or synthetic polyester fiberfill blends.




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     During prosecution of the ’977 patent the United States Patent and Trademark

Office initially rejected AquaTex’s current claims 1 and 9 as anticipated by United States

Patent No. 4,897,297 (“the ’297 patent”). The rejection focused on the ’297 patent’s

disclosure of a method for cooling a person using a multi-layered, liquid-retaining

composite material comprising a fiberfill batting material. The examiner noted that the

disclosed fiberfill batting material was a “mixture of synthetic polymer pulp or wood pulp,

which is a fiber.” In response to the office action, AquaTex traversed the rejection by

distinguishing the ’297 patent and by adding an additional claim limitation. AquaTex

contended that: “The ’297 Patent discloses a compress that is made from an elastic

fabric and comprises a hydrogel-forming polymeric material. The absorbent polymer

filler material may be particulate, and may be accompanied by a diluent filling material.”

Important to our analysis, AquaTex stated “the ’297 Patent fails to disclose or suggest

the fiberfill batting and polymeric fibers and/or particles of the composite material in the

claimed method.      Additionally, the ’297 Patent fails to disclose or suggest the

evaporative cooling method of the present invention.”        Addressing an obviousness

rejection by the examiner based upon the ’297 patent, AquaTex similarly pointed out

that “the ’297 Patent does not cool by evaporation, and is elastic.”

     AquaTex amended current claims 1 and 9 to specify cooling a person “by

evaporation” to distinguish the ’297 patent. As discussed in the office action response,

the combination of materials within the ’297 patent is designed to retain liquid and

insignificant amounts of evaporation would occur over long periods of time. AquaTex

contrasted the evaporative cooling method of the claimed invention which is designed to




05-1088                                      4
release rather than retain moisture. The examiner withdrew the rejection and allowed

the ’977 patent to issue.

     Techniche’s accused products use Vizorb®, which is manufactured by Buckeye

Technologies.     Vizorb® is a commercially available composite material primarily

containing cellulose fluffed pulp, but also incorporating both natural and synthetic fibers.

In particular, it is manufactured from wood cellulose, superabsorbent polymer,

bicomponent fiber, cellulose based carrier sheet, and a chemical binder. Physically,

Vizorb’s® fibers are between three to six millimeters in length and the product is glued

together. The superabsorbent in Vizorb® is generally referred to as a powder. It is

typically used in feminine hygiene products, baby diapers, and adult incontinence

products, not as filler for furniture, pillows, or sleeping bags.

     Techniche moved for summary judgment on the ground that its accused product

does not infringe AquaTex’s ’977 patent literally or by application of the doctrine of

equivalents.    AquaTex correspondingly moved for partial summary judgment that

Techniche’s products do infringe its ’977 patent.

     The trial court construed “fiberfill” from the perspective of one of ordinary skill in the

art to encompass synthetic fibers, and not natural fibers or a combination of synthetic

and natural fibers. The court based its claim construction analysis on the ordinary

meaning of the claim term “fiberfill” as elicited from a number of technical and industry

dictionaries. Further, the court examined the specification of the ’977 patent to reach

the determination that the commercial fiberfill batting contemplated by the patentee

must consist of polyester or other synthetic fibers.           It also found that AquaTex

disavowed the claim scope of natural fibers during prosecution of the ’977 patent by




05-1088                                        5
stating in its office action response that “the ’297 Patent fails to disclose or suggest the

fiberfill batting and polymeric fibers and/or particles of the composite material in the

claimed method.” The court concluded that AquaTex was barred from asserting any

doctrine of equivalents claim because it disavowed the use of wood pulp or a mixture of

synthetic and natural fibers as fiberfill in the water-absorbent layer. It reasoned that

prosecution history estoppel barred AquaTex from asserting that “fiberfill batting

material” could be partially comprised of natural fibers. The court granted Techniche’s

motion for summary judgment of noninfringement, denied its request for attorney fees,*

and denied AquaTex’s motion for sanctions, which is not at issue in this appeal.

AquaTex appeals and our jurisdiction is pursuant to 28 U.S.C. § 1295(a)(1).

                                        Discussion

     We review a district court’s grant of summary judgment de novo. Vanmoor v. Wal-

Mart Stores, Inc., 201 F.3d 1363, 1365 (Fed. Cir. 2000). “Summary judgment is

appropriate when there is no genuine issue as to any material fact and the moving party

is entitled to judgment as a matter of law.” Id. (citations omitted). Summary judgment is

improper “if the evidence is such that a reasonable jury could return a verdict for the

nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). “In the

context of a grant of summary judgment of no infringement, this court reviews the entire

infringement inquiry without deference.” Salazar v. Procter & Gamble Co., 2005 U.S.

App. LEXIS 1351, at *5 (Fed. Cir. July 8, 2005) (citing Omega Eng’g, Inc. v. Raytek


     *
         Because Techniche failed to cross appeal on this issue properly, we decline to
consider it. See Radio Steel & Mfg. Co. v. MTD Prods., Inc., 731 F.2d 840, 844 (Fed.
Cir. 1984) (“[A] party will not be permitted to argue before us an issue on which it has
lost and on which it has not appealed, where the result of acceptance of its argument
would be a reversal or modification of the judgment rather than an affirmance.”).


05-1088                                      6
Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003)).          Application of prosecution history

estoppel to limit the doctrine of equivalents presents a question of law that this court

also reviews without deference. Glaxo Wellcome, Inc. v. Impax Labs., Inc., 356 F.3d

1348, 1351 (Fed. Cir. 2004).

     Because the ’977 patent claims the use of evaporative cooling garments, rather

than the actual multi-layer fabric itself, AquaTex’s cause of action is one for contributory

infringement under 35 U.S.C. § 271(c). Although not directly infringing, a party may still

be liable for inducement or contributory infringement of a method claim if it sells

infringing devices to customers who use them in a way that directly infringes the method

claim.** R.F. Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1267 (Fed. Cir.

2003).        “Liability for either active inducement of infringement or for contributory

infringement is dependent upon the existence of direct infringement.” Joy Techs., Inc.

v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993).

     “An infringement analysis entails two steps. First, the meaning and scope of the

asserted patent claims is determined, and then the properly construed claims are

compared to the accused product or process.” Ranbaxy Pharms., Inc. v. Apotex, Inc.,

350 F.3d 1235, 1239-40 (Fed. Cir. 2003) (citing Cybor Corp. v. FAS Techs., Inc., 138




         **
            The trial court determined that in order for contributory infringement to exist,
Vizorb®, a component of Techniche’s products, must not have any substantial
noninfringing uses. Contributory infringement liability arises when one “sells within the
United States . . . a[n] . . . apparatus for use in practicing a patented process,
constituting a material part of the invention . . . and not a staple article or commodity of
commerce suitable for substantial noninfringing use . . . .” 35 U.S.C. § 271(c) (2000).
From the record before us, the “apparatus for use in practicing” the claimed methods is
Techniche’s multi-layered product. The proper question is not whether Vizorb® is a
staple article of commerce, which is readily apparent, but whether the accused
Techniche products are “suitable for substantial noninfringing use[s].”


05-1088                                       7
F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)). Claim construction is a question of law

reviewed de novo. Cybor Corp., 138 F.3d at 1456.

     To ascertain the meaning of a disputed claim term “the words of a claim are

generally given their ordinary and customary meaning,” as would be understood by “a

person of ordinary skill in the art in question at the time of the invention, i.e., as of the

effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, __,

(Fed. Cir. 2005) (en banc). The specification is of central importance in construing

claims because “the person of ordinary skill in the art is deemed to read the claim term

not only in the context of the particular claim in which the disputed term appears, but in

the context of the entire patent, including the specification.” Id. at *24. Where, as here,

the disputed claim term is technical or a term of art, “[t]he best source for understanding

[it] is the specification from which it arose, informed, as needed, by the prosecution

history.” Id. at *30 (quoting Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473,

1478 (Fed. Cir. 1998)).     Along with the intrinsic evidence of record, including the

prosecution history, extrinsic evidence can be useful in claim construction and “technical

dictionaries may provide [help] to a court ‘to better understand the underlying

technology’ and the way in which one of skill in the art might use the claim terms.” Id. at

*38 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996)).

     The claim limitation disputed by the parties is “fiberfill batting material,” and the

primary issue is whether it should be construed to encompass only synthetic fibers as

the trial court held. Resolution of the claim construction issue then controls whether

Vizorb® constitutes “fiberfill” as required by the ’977 patent for literal infringement




05-1088                                      8
because Vizorb® contains a combination of natural and synthetic fibers.                Whether

Techniche is liable for contributory infringement depends upon this issue.

     Turning to the specification of the ’977 patent, we examine the context of the term

“fiberfill” in the claims themselves. Both claims 1 and 9 call for a method of cooling a

person by evaporation through use of “a multi-layered, liquid-retaining composite

material comprising a fiberfill batting material, and hydrophilic polymeric fibers [particles

in claim 9] . . . .” As used in this context, the fiberfill batting material, in conjunction with

other polymeric fibers or particles, must be capable of liquid retention and evaporation.

The claims, however, offer little guidance as to the underlying composition of “fiberfill

batting material” apart from the functions it must be capable of performing.

     The written description, on the other hand, does provide guidance as to the

composition of “fiberfill batting material.” In the detailed description of the invention,

AquaTex dictated that “[t]he particular fiberfill is not known to be critical. That is, any

commercial fiberfill may be used as long as it does not adversely affect the performance

of the end composite.” ’977 patent, col. 3, ll. 47-50. From this statement, the patentee

has informed the public that any commercial fiberfill that is capable of performing the

claimed functions will suffice. The written description continues by describing numerous

examples of commercial grade fiberfill, all of which are comprised entirely of synthetic

materials.

     Because AquaTex chose to incorporate by reference the teachings of three United

States Patents to define the scope of the term “fiberfill,” these publications are highly

relevant to one of ordinary skill in the art for ascertaining the breadth of the claim term.

In United States Patent No. 4,304,817, the specification teaches that “[p]olyester fiberfill




05-1088                                        9
is used commercially in many garments and other articles because of its desirable

thermal insulating and aesthetic properties . . . . Most commercial polyester fiberfill has

been in the form of crimped polyester staple fiber.” col. 1, ll. 11-16. Similarly, the

remaining two patents describe “fiberfill” in terms of a synthetic, normally polyester, fiber

for use as a filling material. None of the patents discusses the possibility of using

natural fibers as commercial fiberfill batting.

     “In addition to consulting the specification . . . a court ‘should also consider the

patent’s prosecution history, if it is in evidence.’”   Phillips, 415 F.3d at __ (quoting

Markman v. Westview Instr., Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc)). In

interpreting “fiberfill,” the trial court relied heavily upon statements made during

prosecution of the ’977 patent as a clear disavowal of natural fibers for use as “fiberfill

batting material.” The prosecution history, however, is ambiguous and does not directly

address the composition of “fiberfill.”      Thus, we disagree with the trial court that

AquaTex’s arguments foreclose potential compositions of fiberfill, and we decline to give

the prosecution history much weight.         See Phillips, 415 F.3d at __ (because the

prosecution history represents an ongoing negotiation, “it often lacks the clarity of the

specification and thus is less useful for claim construction purposes”). Particularly, the

examiner represented that the prior art ’297 patent contained a blend of fiberfill batting

comprised of synthetic polymer pulp and wood pulp.             Instead of addressing the

composition of the fiberfill batting in the prior art, AquaTex chose to traverse the

rejection by distinguishing how the overall composition of materials was used, and by

pointing out that the prior art composition of materials was designed to retain liquid for

long periods of time. The representations made during prosecution neither support nor




05-1088                                       10
discredit any particular meaning of the term “fiberfill.” They are not a clear disavowal of

claim scope.

     The extrinsic evidence of record, in the form of technical dictionaries, supports

construing “fiberfill” as a purely synthetic fiber because it is consistently defined as such.

The definitions given in all but one of the dictionaries relied upon by the trial court define

“fiberfill” as either a synthetic fiber or as a man-made material used as a filler for various

items.    The contradictory source was a chemical dictionary that simply gave two

examples of natural materials that could constitute “fiberfill.” Other extrinsic industry

sources examined by the trial court lend support to construing “fiberfill” as a synthetic or

polyester fill material. The United States Customs Service, in its publication “Fiber

Trade Names and Generic Terms” Nov. 1999, lists “Fiberfill” as a “Fiber Trade Name”

for the generic term “Polyester.”       Similarly, the United States International Trade

Commission issued a ruling that polyester staple fiber is known in the industry as “fiber

for fill.” Certain Polyester Staple Fiber from Korea and Taiwan, Investigation Nos. 731-

TA-825-826 (Final) (May 5, 2000).

     While we adhere to the adage that limitations from the specification must not be

imported into the claims, see, e.g., Nazomi Communications, Inc. v. ARM Holdings,

PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005), based upon the teachings of the

specification, one of ordinary skill in the textile manufacturing industry would understand

that commercial “fiberfill batting material” is made of synthetic or polyester fibers. The

combined teachings within the specification of the ’977 patent, the patents incorporated

by reference, and the consistent interpretations in the industry publications would lead

one skilled in the art to this conclusion.        Therefore, we affirm the district court’s




05-1088                                      11
determination that the accused Techniche products do not literally infringe claims 1 and

9 of the ’977 patent.

     However, “[t]he doctrine of equivalents allows the patentee to claim those

insubstantial alterations that were not captured in drafting the original patent claim but

which could be created through trivial changes.”      Festo Corp. v. Shoketsu Kinzoku

Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002) (“Festo II”). Infringement under the

doctrine of equivalents requires that the accused product contain each limitation of the

claim or its equivalent. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,

40 (1997). An element in the accused product is equivalent to a claim limitation if the

differences between the two are insubstantial. The analysis focuses on whether the

element in the accused device “performs substantially the same function in substantially

the same way to obtain the same result” as the claim limitation. Graver Tank & Mfg. Co.

v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950) (internal quotation omitted).

     Prosecution history estoppel can prevent a patentee from relying on the doctrine of

equivalents when the patentee relinquishes subject matter during the prosecution of the

patent, either by amendment or argument. Pharmacia & Upjohn Co. v. Mylan Pharm.,

Inc., 170 F.3d 1373, 1376-77 (Fed. Cir. 1999). “The doctrine of prosecution history

estoppel limits the doctrine of equivalents when an applicant makes a narrowing

amendment for purposes of patentability, or clearly and unmistakably surrenders

subject matter by arguments made to an examiner.” Salazar, 2005 U.S. App. LEXIS

13517, at *6; see Festo II, 535 U.S. at 736 (narrowing amendment for purposes of

patentability); Eagle Comtronics, Inc. v. Arrow Communication Labs., Inc., 305 F.3d

1303, 1316 (Fed. Cir. 2002) (argument-based estoppel).




05-1088                                    12
     While at least one claim limitation was added here to overcome an anticipation

rejection during the prosecution of the patent, Techniche does not allege amendment-

based estoppel. Instead it asserts argument-based estoppel. To invoke argument-

based estoppel, the prosecution history “must evince a clear and unmistakable

surrender of subject matter.” Pharmacia, 170 F.3d at 1377 (internal quotation omitted).

To determine if subject matter has been relinquished, an objective test is applied,

inquiring “whether a competitor would reasonably believe that the applicant had

surrendered the relevant subject matter.” Cybor Corp., 138 F.3d at 1457.

     We do not see the clear and unmistakable surrender of subject matter required to

invoke argument-based prosecution history estoppel. During prosecution of the ’977

patent AquaTex stated that “the ’297 Patent fails to disclose or suggest the fiberfill

batting and polymeric fibers and/or particles of the composite material in the claimed

method.” Techniche and the trial court believe this argument limited claim coverage of

fiberfill to only synthetic fibers. The argument, however, does not address or even

relate to the composition of the fiberfill batting. Rather, it was based on the ’297 patent

not teaching or suggesting the overall composition of materials, or the use of the

disclosed compress to cool a person through evaporation. The compress of the ’297

patent was designed to retain much of its liquid over long periods of time, thus giving

the material a high heat capacity and a high insulative value. ’297 patent, col. 6, ll. 24-

55. The claimed invention of the ’977 patent achieves cooling through evaporation.

     The arguments made during prosecution, and the corresponding addition of the

claim limitation “by evaporation,” indicate that AquaTex was distinguishing the overall

method of cooling of its claimed invention from that of the ’297 patent. The subject




05-1088                                     13
matter surrendered by the narrowing amendment bears no relation to the composition of

the fiberfill batting material. There is no indication in the prosecution history whether or

not AquaTex agreed or disagreed with the examiner’s statement that the fiberfill found

in the prior art comprised natural fibers.    Thus, the trial court erred in holding that

prosecution history estoppel barred AquaTex from asserting infringement under the

doctrine of equivalents. Upon remand the trial court must consider whether or not each

limitation of the claims in dispute, or its equivalent, is present in the accused Techniche

products. See Graver Tank, 339 U.S. at 608.

                                        Conclusion

     Accordingly, the judgment of the United States District Court for the Middle District

of Tennessee is affirmed-in-part, reversed-in-part, and the case is remanded for further

proceedings consistent with this opinion.

                                         COSTS

     No costs.




            AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED




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