                       NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                        2009-1367


                         RANDALL MAY INTERNATIONAL, INC.,

                                                        Plaintiff/Counterclaim Defendant-
                                                        Appellee,

                                           and

                                     RANDALL MAY,

                                                        Counterclaim Defendant-
                                                        Appellee,

                                            v.

                             DEG MUSIC PRODUCTS, INC.,

                                                        Defendant/Counterclaimant-
                                                        Appellant,

                                           and

                                     DYNASTY USA,

                                                        Defendant.


       Peter R. Afrasiabi, Turner Green Afrasiabi & Arledge, LLP, of Costa Mesa,
California, argued for all appellees.

       Dennis G. Martin, Blakely, Sokoloff, Taylor & Zafman, LLP, of Los Angeles,
California, argued for defendant/counterclaimant-appellant. With him on the brief was
Willmore F. Holbrow, III.

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

Judge Terry J. Hatter, Jr.
                     NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                        2009-1367


                        RANDALL MAY INTERNATIONAL, INC.,

                                                        Plaintiff/Counterclaim Defendant -
                                                        Appellee,

                                            and

                                     RANDALL MAY,

                                                        Counterclaim Defendant-
                                                        Appellee,

                                             v.

                             DEG MUSIC PRODUCTS, INC.,

                                                        Defendant/Counterclaimant –
                                                        Appellant,

                                            and

                                     DYNASTY USA,

                                                        Defendant.

Appeal from the United States District Court for the Central District of California in case
no. 05-CV-894, Judge Terry J. Hatter, Jr.

                            __________________________

                               DECIDED: May 11, 2010
                            __________________________


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

MICHEL, Chief Judge.

       This patent infringement and breach of contract case comes on appeal from the

U.S. District Court for the Central District of California. The patent-in-suit, appellees
Randall May International, Inc. and Randall May’s (“collectively “May”) U.S. Patent No.

6,881,886 B2 (the “’886 patent”), claims a shoulder-mounted harness for holding a

percussion instrument, typically a drum, upon the torso of a musician in a marching

band. The case presents four issues for the court to decide: (1) whether this court has

jurisdiction to hear this appeal under 28 U.S.C. § 1292(c); (2) whether the district court

erred in its construction of independent claim 17 and dependent claim 19 of the ’886

patent; (3) whether the district court erred in granting summary judgment of infringement

to May and denying appellants DEG Music Products, Inc. and Dynasty USA’s

(collectively “DEG”) cross-motion for summary judgment of non-infringement; and (4)

whether the district court erred in its interpretation of a settlement agreement from a

prior dispute over a patent other than the patent-in-suit and applying it to the

infringement of the patent-in-suit. For the reasons set forth below, we (1) hold that we

have jurisdiction under § 1292(c) to hear this appeal (2) reverse the district court’s claim

construction (3) reverse the district court’s grant of summary judgment of literal

infringement and (4) reverse the district court’s grant of summary judgment on the

breach of contract.

                                PROCEDURAL HISTORY

      May and DEG, competitors in the marching band supplies business, have a

considerable history of litigation.   In 2002, May sued DEG for infringement of U.S.

Patent No. 6,329,583 B1 (the “’583 patent”). That suit was concluded via a settlement

agreement (the “2003 Agreement”) reached in March 2003. Of relevance to this appeal

was a covenant contained within the 2003 Agreement in which DEG agreed not to

infringe May’s patents. In 2004, May accused DEG of breaching the 2003 Agreement




2009-1367                                    2
by infringing the ’583 patent with a drum harness design that is not at issue in this

appeal. That dispute was settled via an exchange of letters in June and July 2004, in

which the parties agreed that a redesign of the accused harness in which the shoulder

pieces were welded to the wings of a Y-shaped chest piece did not infringe the ’583

patent and, consequently, did not breach the Agreement. However, that redesign is

now accused of infringing May’s ’886 patent.

       May filed this suit in the district court on September 14, 2005, asserting (1) two

patent infringement claims against the new DEG product (2) a claim under the Lanham

Act and (3) a claim for breach of the 2003 Agreement.         DEG counterclaimed with

antitrust and other claims based on conduct antedating the 2003 Agreement and its

releases. On October 17, 2007 the district court awarded summary judgment against

DEG for those claims based on conduct that occurred prior to, and was covered by, the

mutual general releases and waivers in the 2003 Agreement. The district court then

held a Markman hearing on January 14, 2008, and subsequently issued its claim

construction order on April 11, 2008. 1

       May subsequently moved for summary judgment on its claim asserting literal

infringement of the ’886 patent, which the court granted on August 6, 2008. 2        The

district court also granted summary judgment for May on its breach of contract claim,

adjudging DEG to be in breach of the 2003 Agreement by (1) infringing the ’886 patent

and (2) asserting in its complaint antitrust and patent misuse claims that were barred by

1
  The order was altered on August 16, 2008 to correct a “scrivener’s error”, changing
“and” to “or” in one phrase of the construction.
2
  Because the district court granted summary judgment based on literal infringement, it
did not reach the question of whether DEG infringed the ’886 patent under the doctrine
of equivalents.



2009-1367                                  3
the mutual general releases in the 2003 Agreement. Prevailing on each of these counts

entitled May to seek attorneys’ fees under a fee-shifting provision of the 2003

Agreement. Finally, the district court also granted May summary judgment with respect

to DEG’s antitrust counterclaims and patent misuse affirmative defenses based on

conduct postdating that 2003 Agreement.

      DEG consequently withdrew its patent invalidity claims and May made the

decision to press forward at trial on only the issue of its claims for damages for

infringement of the ’886 patent, willfulness, and breach of the 2003 Agreement.

However, before the trial could commence on its scheduled date of January 2009, DEG

filed a motion applying to stay the trial pending an appeal pursuant to 28 U.S.C.

§ 1292(c). The district court entertained briefing on the issue of the language of the

parties’ proposed permanent injunctions and final judgments and subsequently entered

a final judgment on April 13, 2009.    Following the district court’s entry of its final

judgment, DEG appealed to this court, essentially seeking a writ of mandamus ordering

a stay of the district court’s trial on the damages issues. We denied DEG’s appeal on

the grounds that it could not show that the district court abused its discretion by

continuing on to trial on the damages issues. Randall May Int’l, Inc. v. DEG Music

Products, Inc., No. 2009-1367, 2009 WL 2355838, at *1 (Fed. Cir. July 30, 2009). This

appeal followed.

                                    DISCUSSION

                     I. Jurisdiction Under 28 U.S.C. § 1292(c)(2)

      As a threshold matter, May contends that the appeal should be dismissed

because it claims that this court lacks jurisdiction to hear it under 28 U.S.C.




2009-1367                                 4
§ 1292(c)(2). According to May, § 1292(c) applies to appeals only in cases where the

sole remaining issue to be tried is an accounting of damages on the patent claims. May

asserts that, since other non-patent-related issues remain to be tried in this case (viz.,

damages in the breach of contract claims), § 1292(c) is not applicable and the court

therefore lacks jurisdiction to hear the appeal.

       Under 28 U.S.C. § 1295, this court has exclusive jurisdiction of an appeal from a

“final decision” of a district court whose jurisdiction, in whole or in part, arises under an

Act of Congress relating to patents. 28 U.S.C. § 1295(a)(1); see also Johannsen v. Pay

Less Drug Stores Northwest, Inc., 918 F.2d 160, 161-62 (Fed. Cir. 1990). Furthermore,

under 28 U.S.C. § 1292(c):

       The United States Court of Appeals for the Federal Circuit shall have
       exclusive jurisdiction—

       (1) of an appeal from an interlocutory order or decree described in
           subsection (a) or (b) of this section in any case over which the court
           would have jurisdiction of an appeal under section 1295 of this title;
           and

       (2) of an appeal from a judgment in a civil action for patent infringement
           which would otherwise be appealable to the United States Court of
           Appeals for the Federal Circuit and is final except for an accounting.

28 U.S.C. § 1292(c). Subsection (2) of § 1292(c) forms the basis of May’s objection to

this court’s jurisdiction. Section 1292(c)(2) is a patent-specific appellate provision that

provides exclusive jurisdiction to this court in appeals from final judgments in

infringement actions which would be otherwise appealable except for a determination of

damages. See Cent. Admixture Pharm. Servs., Inc. v. Advanced Cardiac Solutions,

P.C., 482 F.3d 1347, 1353 (Fed. Cir. 2007). May contends that this subsection is not

generally applicable to appeals where all that remains is an accounting of damages.




2009-1367                                    5
Rather, argues May, it is applicable only to cases where all that remains is an

accounting of infringement damages.        May acknowledges that a patent accounting

remains to be made in the district court (the patent infringement damages and

willfulness claims). But May asserts that because there also remains an accounting to

be made with respect to damages for the breach of contract claim, § 1292(c)(2) does

not apply, and this court consequently lacks jurisdiction to hear this appeal.

       In its “Final Judgment Except for an Accounting”, the district court wrote, in

relevant part:

       This is a final judgment except for an accounting pursuant to 28 U.S.C.
       § 1292(c)(2) because only the following issues remain to be tried to a jury:
       (a) damages for DEG’s breach of contract; (b) damages for DEG’s patent
       infringement; and (c) whether DEG’s patent issue was willful.

Thus the district court makes explicit that there remain no liability issues with respect to

the patent infringement claim, nor any other relief, such as injunctive relief, that remains

to be adjudicated by the district court, either of which would preclude jurisdiction under §

1292(c). See Ultra-Precision Mfg. Ltd. v. Ford Motor Co., 338 F.3d 1353, 1356-57 (Fed.

Cir. 2003). Neither does there remain to be adjudicated any liability issue with respect

to the breach of contract claim; only trial on the amount of damages remains to be

conducted by the district court with respect that claim.

       It is uncontested by the parties that a determination of damages on the

infringement claim has yet to be made by the district court. Moreover, although the

district court has yet to determine whether DEG’s literal infringement was willful, such a

pending determination of willfulness by the district court does not destroy our jurisdiction

under § 1292(c)(2). See Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1337 (Fed.




2009-1367                                    6
Cir. 2009) (Court has jurisdiction under § 1292(c)(1) and (2) when willfulness and

damages determinations remain pending in district court) .

       This court’s jurisprudence has been crystal clear on the issue that jurisdiction

under § 1292(c) does not exist when any issue other than a damages accounting exists

in a patent case below. See, e.g., Pause Tech. LLC v. TiVo Inc., 401 F.3d 1290, 1293

(Fed. Cir. 2005) (finding no jurisdiction when patent invalidity claim not adjudicated);

Nystrom v. TREX Co., Inc., 339 F.3d 1347, 1351 (Fed. Cir. 2003) (finding no jurisdiction

when invalidity and unenforceability counterclaims remain pending at the district court);

Stewart Sys. Inc. v. Baking Tech. Systems, Inc., 41 F.3d 1519, 1519 (Fed. Cir. 1994)

(finding no jurisdiction in appeal from adjudication of two of three patents-in-suit). What

is less clear is whether jurisdiction exists under § 1292(c)(2) in a case where an

accounting remains to be performed not only on the patent claims, but also on a non-

patent related claim.

       May enlists Johannsen in support of its argument that no jurisdiction exists for

this court to hear DEG’s appeal because there is an outstanding non-patent related

accounting yet to be determined by the district court. 918 F.2d at 160. However,

Johannsen is distinguishable from the instant case. The plaintiff in Johannsen alleged

patent infringement and federal and state unfair competition claims. Id. at 161. The

district court ruled against the plaintiff on the infringement claims, but for the plaintiff on

certain of the unfair competition claims. Id. Before damages or injunctive relief could

be adjudicated by the district court, the plaintiff and defendants both appealed the

judgment to this court, claiming jurisdiction under § 1292(c)(2). Id. Thus, in Johannsen,

unlike in the current appeal, there was no finding of infringement, nor was there any




2009-1367                                     7
pending accounting of damages for a patent-related claim. On the contrary, the only

claims pending adjudication in the district court in Johannsen were a damages

accounting and injunctive relief with respect to the non-patent-related unfair competition

claims. Consequently, this court ruled that it lacked jurisdiction to hear this case under

§ 1292(c)(2). According to the court:

      We see no reason why the introduction of non-patent claims should trigger
      § 1292(c)(2) and change the basic interplay between that statute and
      § 1295. If § 1292(c)(2) does not apply to the denial of a pure patent claim-
      for want of an impending patent accounting — then the introduction of
      other claims, which do not offer the prospect of a patent accounting,
      cannot matter. It is irrelevant that those other claims offer the prospect of
      non-patent accountings. The statute's purpose was “to prevent a great
      burden of expense to litigants in actions to determine the validity of
      patents, where an accounting is involved ... [Under the statute an] appeal
      can be taken ... so as to obviate the cost of an accounting in the event the
      case is reversed on appeal.” H. R. Rep. No. 1890, 69th Cong., 2d Sess. 1
      (1927). In enacting § 1292(c)(2) and its predecessors, Congress
      expressed a desire to allow interlocutory appeals over the prospect of an
      unnecessary patent accounting, not just any accounting.

Id. at 163 (emphases in original). Thus, a pending non-patent accounting cannot, by

itself, trigger jurisdiction under § 1292(c)(2) as a substitute for a non-existent pending

accounting related to a failed patent infringement claim. Indeed, as we noted above,

such non-patent related accountings are irrelevant to the interplay between § 1292(c)

and § 1295.

      Such is not the instance here. In the case at bar, the district court found that

DEG had literally infringed May’s ’886 patent and issued final judgment to that effect,

staying only the damages accounting and willfulness determination on the patent-

related claims. These are the necessary and sufficient conditions to trigger jurisdiction

under § 1292(c)(2). The existence of a pending damages accounting in the breach of




2009-1367                                   8
contract claims is simply irrelevant to the issue of whether this court has jurisdiction over

the appeal of the patent infringement issue in the district court below.

       We therefore hold that this court has jurisdiction to hear the appeal of the patent

infringement claims under § 1292(c)(2). However, whether this court has jurisdiction to

also hear the breach of contract claims is a somewhat more difficult issue.

       Section 1295 explicitly requires that the decision of the district court be “final.” 28

U.S.C. § 1295(a)(1). The accounting that remains to be performed with respect to the

breach of contract claims in this case does not fall under the explicit jurisdictional aegis

of § 1292(c)(2).     Under the latter statute, an “accounting” refers to infringement

damages pursuant to 35 U.S.C. § 284.           28 U.S.C. § 1292(c)(2); see also Special

Devices, Inc. v. OEA, Inc., 269 F.3d 1340, 1342 n.2 (Fed. Cir. 2001). The question,

therefore, is whether this court’s jurisdictional power to hear the infringement claims

under § 1292(c)      extends as well to the breach of contract claims for which an

accounting has yet to be determined. We hold that it does.

       In Majorette Toys (U.S.) Inc. v. Darda, Inc. U.S.A.,          we held that we had

jurisdiction to hear an appeal under § 1292 in a case in which a final judgment of patent

validity, infringement, and attorneys’ fees had been awarded and damages and

injunctive relief had been granted, although no accounting of the attorneys’ fees had yet

been performed by the district court. 798 F.2d 1390, 1391 (Fed. Cir. 1986). According

to the court:

       If an appeal in a patent case can come to this Court under § 1292(c)(2)
       after validity and infringement are determined but prior to determining
       damages, it makes no sense not to allow an appeal after validity,
       infringement, and damages are ascertained, and an award of attorney
       fees granted, even though the exact amount of attorney fees (and costs)
       has not been precisely ascertained. If any of the trial court's holdings of



2009-1367                                     9
        validity, enforceability, or infringement is overturned, there will, in all
        likelihood, be no occasion to quantify, let alone award, attorney fees.
        Similarly, such quantification will be irrelevant if on appeal this Court
        determines that it was an abuse of discretion to award attorney fees at all.
        Accordingly, allowing the present appeal will prevent loss of time and
        expense….

Id.

        By contrast, in OEA, we held that when there had been no finding of infringement

in the district court, the court lacked jurisdiction to hear an appeal when an accounting

of attorneys’ fees awarded by the district court had not been performed. 269 F.3d at

1340.    In OEA, the alleged infringer sought declaratory judgment of invalidity and

noninfringement against the patentee.       Id. at 1342.    After entry of partial summary

judgment of invalidity against the patentee, the plaintiff filed a motion for attorneys’ fees,

and the district court agreed, deeming the case exceptional under 35 U.S.C. § 285

because of the patentee’s inequitable conduct before the USPTO.                Id.   Prior to

determination of the amount of the attorneys’ fees by the district court, the defendant

appealed to this court, claiming jurisdiction under § 1292(c)(2). Id.

        We disagreed, holding that this court lacked jurisdiction to hear the case under

§ 1295. Specifically, we held that a decision to award attorneys’ fees for which there

had not yet been an accounting did not render the judgment of the case “final” as

required by § 1295 and that, therefore, this court lacked jurisdiction to hear the appeal.

Id. at 1346. However, in a footnote, the court noted that § 1292(c)(2) did not apply to

the case because there had been no finding of patent infringement by the district court.

Id. at 1342 n.2. Moreover, the court in OEA explicitly distinguished the case before it

from Majorette Toys, in which there had been a judgment of infringement in the district

court and, consequently, jurisdiction existed under § 1292(c)(2). Id. at 1346.



2009-1367                                    10
       Although there is no precedential opinion of this court that is squarely on point,

the jurisprudence of this court inferentially points to our having jurisdiction under

§ 1292(c)(2) extending to the breach of contract claims in the instant appeal. In OEA,

this court held that it lacked jurisdiction under § 1295 to hear a case in which attorneys’

fees had been awarded, but not yet accounted, and likewise lacked jurisdiction under

§ 1292(c)(2) because there had been no judgment of infringement in the district court.

However, when, as in Majorette Toys, jurisdiction existed under § 1292(c)(2) because

there had been a judgment of infringement in the court below, this court also had

jurisdiction under that statute to hear the appeal on the matter of attorneys’ fees which

had not yet been accounted. Thus, when jurisdiction under § 1292(c)(2) is created by a

final judgment of patent infringement in the district court, even though an accounting of

infringement has not yet been performed, the court can also hear an appeal of related

judgments in the case, even if an accounting of damages related to the non-patent

claims has not been performed either. We therefore hold that this court has jurisdiction

under 28 U.S.C. § 1292(c)(2) to hear this appeal with respect to both the infringement

and the breach of contract claims.

       Such a holding makes sense in light of the recognized purpose of §§ 1295 and

1292. The purpose of the final judgment rule embodied in § 1295 is to avoid piecemeal

litigation and permit appeals only from final judgments, i.e., a judgment that “ends

litigation on the merits and leaves nothing for the court to do but execute the judgment.”

Catlin v. United States, 324 U.S. 229, 233 (1945). At the same time, § 1292(c) seeks to

promote judicial economy by sparing the time and expense of determining damages for

patent infringement and the losses incurred when recoveries are ultimately denied by




2009-1367                                   11
reversal of decrees on the merits. McCullough v. Kammerer Corp., 331 U.S. 96, 97

(1947) (referring to the statutory predecessor of § 1292). Consequently, since we have

jurisdiction over the patent infringement claims under § 1292(c)(2) and, since only an

accounting remains on the breach of contract damages, we have jurisdiction to hear this

appeal.

       Furthermore, we have additional jurisdiction over this appeal under 28 U.S.C.

§ 1292(a)(1) and (c)(1).    As part of its order granting May’s motion for summary

judgment, the district court enjoined DEG from making, using, manufacturing, importing,

exporting, selling, loaning, giving away, advertising, or offering to sell the infringing

harness, or providing replacement harnesses or harness parts for the infringing

harnesses to any of DEG's endorsees or drum corps.            The district court’s order is

consequently appealable as an order granting injunctive relief pursuant to §§ 1292(a)(1)

and (c)(1). See Randall May Intern., Inc. v. DEG Music Products, Inc., No. 2009-1367,

2009 WL 2355838, at *1 n.1 (Fed. Cir. July 30, 2009).

                        II. The District Court’s Claim Construction

       We turn next to the district court’s construction of the claims of the ’886 patent.

Claim construction is a matter of law which we review without deference.            Nazomi

Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005). When

exercising the power to review claim construction, this court determines the meaning

and scope of the relevant claim language and decides whether the district court's

determination of the meaning and scope of the relevant claim language is coterminous

with that construction. Where it is not, the district court has erred in its construction of

the claims. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,




2009-1367                                   12
1115 (Fed. Cir. 2004). However, in reviewing a district court's claim construction, this

court takes into account the views of the trial judge. Nazomi, 403 F.3d at 1371. Though

we review those views and the record de novo, “common sense dictates that the trial

judge's view will carry weight.” Id. (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d

1448, 1454 (Fed. Cir. 1998) (Plager, J., concurring)).

       The district court issued its claim construction order on April 11, 2008. At issue

in this appeal are independent claim 17 and dependent claim 19 of the ’866 patent. The

district court construed these claims as follows:

       Claim 17 of the '886 Patent                        Construction

A shoulder supported harness assembly for           A harness device that allows the user to
supporting percussion instruments,                  support a percussion instrument.
comprising:

a shoulder supported carrier structure for          The piece of the device that connects on
supporting percussion instruments having            the user's back to the back member and
changeable or adjustable shoulder                   which then sits on the user's shoulders
supporting members for securing said                and performs the function of supporting
structure on the shoulders of a user; and           the balance of the device while allowing
                                                    the user to adjust the upper section of
                                                    the device relative to the lower section
                                                    and to replace, remove or substitute the
                                                    shoulder supporting members with other
                                                    shoulder supporting members of
                                                    different sizes,

a back member that spans across and                 A back bar that spans across the user's
is secured to each of the shoulder                  back to connect to each end of the
supporting members.                                 shoulder supporting members.

       Claim 19 of the '886 Patent                        Construction

The securing mechanism from claim                   The securing mechanism refers to a
17 wherein the securing mechanism                   locking mechanism that is applied to
locks the orientation of the shoulder               the back member and shoulder
supporting members and the back                     supporting members such that they are
member.                                             affixed together in a manner that
                                                    precludes any change in orientation,



2009-1367                                    13
                                                   i.e., they are welded together or
                                                   otherwise locked.

       DEG argues that the district court erred in its claim construction because it failed

to define the claim limitation of “changeable or adjustable shoulder supporting

members.” Specifically, argues DEG, the court erred in removing the “adjustability”

feature of the “shoulder supporting members” and thus broadened the scope of the

claim to cover any adjustable drum carrier borne on the shoulders of the drummer.

According to DEG, the court erroneously applied the limitation of “adjustability” to the

carrier as a whole, rather than to the shoulder pieces specifically. Consequently, under

the district court’s claim construction, as long as the adjustability feature can be found

somewhere on the harness such that the upper section can be adjusted relative to the

lower section, the adjustability limitation of the claim is met.

       Since the district court provided no explanation of the reasoning behind its claim

construction, and since we review claim construction de novo, we look first to intrinsic

evidence in construing the claims, i.e., the language of the claims themselves, the

written description portion of the specification, and the prosecution history. Vitronics

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996). The critical claim

language in claim 17 is “a shoulder supported carrier structure … having changeable or

adjustable shoulder supporting members for securing said structure on the shoulders of

a user.”    The language of the claim expressly teaches more than one “shoulder

supporting member” and this language most clearly maps onto those portions of the

harness that support the harness over the shoulder, viz., the two arched shoulder

pieces. These likewise reasonably correspond to the “shoulder straps” described in the

specification of the ’886 patent. The chest piece and the back bar can be excluded from



2009-1367                                     14
this claim limitation because they are singular pieces and do not come into contact the

shoulders of the drummer.     Furthermore, the back bar is separately defined in the

following limitations of the claim. The additional chest pieces and the drum carrier

brackets comprise the remainder of the “shoulder supported carrier structure” of claim

17.

      Moreover, the claim language teaches that the shoulder supporting members

should be “changeable” or “adjustable”: these terms immediately precede the term

“shoulder supporting members” and the only reasonable construction, therefore, is that

these shoulder supporting members themselves, rather than the entire assembly,

should be adjustable or changeable. And, in the specification of the ’886 patent, the

“shoulder straps” which correspond to the shoulder supporting members of claim 17,

are not immovably or irretrievably fixed to the back bar and other portions of the

supporting carrier, but rather are adjustable or removable so as to be interchangeable

with other shoulder straps.   For example, the specification describes one preferred

embodiment in which the: “[v]est portion (the remainder of the carrier corresponding to

the chest pieces) is removably secured to [the] shoulder straps by screws or bolts and

has a pair of J-rod receptacles secured by screws or bolts.”      Likewise, a second

embodiment is described in which the:

      [b]ack support or back member as shown in this figure is removably
      secured to shoulder straps by screws bolts or threaded fasteners and has
      padding. Bolts extend out from the removable back member, and extend
      into elongated slots located in the shoulder straps to allow for width
      adjustment on one or both shoulder straps. Alternately slots may be
      incorporated into the back member, and a square neck carriage bolt may
      be used in prevent rotation of the bolt when tightening the nut. The back
      member may be secured to removable shoulder straps. Removable
      shoulder straps of various sizes can be used to accommodate different
      size users.



2009-1367                                 15
       Vest portion is adjustably and removably secured to shoulder straps by
       screws or bolts which extend through elongated slots which permits
       adjustment of the straps relative to vest portion.

And in every other embodiment described in the specification, the shoulder straps are

described and depicted as being changeable or adjustable (or both). Even in those

embodiments wherein the shoulder straps are spot welded to the back bar, they are still

adjustable or removable with respect to the anterior vest portion of the harness.

       We hold, therefore, that the district court erred in its construction of claim 17

(and, consequently, in its construction of dependent claim 19 as well). The district

court’s elision of the claim limitation (supported by the specification) that the shoulder

supporting members are either changeable or adjustable is legal error because all the

limitations in a claim must be considered meaningful. Cablestrand Corp. v. Wallshein,

29 F.3d 644 (Fed. Cir. 1994). We therefore amend the district court’s language in the

portion of its construction of Claim 17 which reads:

       The piece of the device that connects on the user's back to the back
       member and which then sits on the user's shoulders and performs the
       function of supporting the balance of the device while allowing the user to
       adjust the upper section of the device relative to the lower section and to
       replace, remove or substitute the shoulder supporting members with other
       shoulder supporting members of different sizes

to read:

       The adjustable or changeable pieces of the device that rest on the user's
       shoulders and perform the function of supporting the balance of the device
       and which connect the back member, situated against the user’s back,
       with the upper portion of the device that rests on the user’s chest.

   III. The District Court’s Grant of Summary Judgment for May and Denial of DEG’s
                  Motion for Summary Judgment of Literal Non-Infringement.




2009-1367                                   16
      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. Fed. R.

Civ. P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).         Thus,

summary judgment may be granted when no “reasonable jury could return a verdict for

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

deciding whether summary judgment was appropriate, we view the evidence in a light

most favorable to the opposing party and resolve doubts in its favor. Ethicon Endo-

Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998).

      DEG’s Dynasty P20-DAST V-Bar Snare Drum Carrier (the “harness”) is one of

the accused devices at issue in this appeal and is typical in all relevant respects. The

harness consists of two curved shoulder pieces, each of which is welded to an end of

the horizontal back bar at the rear of the device. The curved shoulder pieces arc

forward over the wearer’s shoulders where each is welded to an arm of a Y-shaped

chest piece in front. The Y-shaped chest piece is bolted in turn to a triangular middle

chest piece through one of a series of holes in each. The middle chest piece is bolted

in turn to an oblate lower chest piece via a series of three elongate slots in the lower

portion of the middle chest piece.     Finally, each of the two J-shaped drum carrier

brackets is bolted to the lower chest piece via one of several pairs of holes in the lower

chest piece.

      The harness is adjustable to the drummer’s height in several ways: (1) by

selecting different holes by which to bolt the Y-shaped chest piece to the middle chest

piece; (2) by tightening the three bolts connecting the middle and lower chest pieces at

different positions along the slots in the middle chest piece; (3) by choosing different




2009-1367                                  17
pairs of holes by which to attach the drum carrier brackets to the lower chest piece; and

(4) by adjusting the length of the legs of the drum carrier brackets at the point of their

attachment to the lower chest piece. Most importantly for the purposes of this appeal,

the back bar, shoulder pieces, and Y-shaped chest piece of the accused devices are all

welded together, and consequently form a fixed, inflexible, and non-adjustable unit.

Consequently, the shoulder supporting members of DEG’s accused device are neither

changeable nor adjustable.     True, the entire welded structure (i.e., the back bar,

shoulder members, and Y-shaped chest piece combined) could be removed from the

remainder of the harness and interchanged with another such piece. But the language

of both the claim and the specification expressly teaches that the shoulder supporting

members/shoulder straps are themselves adjustable or changeable. In DEG’s device,

they are not.

       Given our new construction of Claim 17 supra, DEG’s accused device cannot

reasonably be said to literally infringe May’s ’866 patent. The ’866 patent discloses

shoulder supporting members that are changeable or adjustable, whereas those of

DEG’s harness are not adjustable and cannot be changed without simultaneously

jettisoning the back bar and Y-shaped chest piece at the same time.                Literal

infringement requires that the accused device literally embodies every limitation of the

claim. Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362, 1370 (Fed. Cir. 2000).

Since the DEG harness’ shoulder supporting members do not embody Claim 17’s

limitations of being adjustable or changeable, they do not literally infringe the ’866

patent. Consequently, we reverse the district court’s grant of summary judgment of




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literal infringement to May and also reverse the district court’s denial of DEG’s motion

for summary judgment of literal non-infringement.



              IV. The District Court’s Interpretation of the 2003 Agreement

       Finally, DEG argues that the district court erred in its interpretation of the 2003

Agreement. Although the holding above renders this issue moot, in the interests of

completeness, we will address it.

       The language of the 2003 Agreement at issue states:

       DEG Music .... agrees not to manufacture, distribute, or sell, directly or
       indirectly, any products that infringe the '583 Patent or any and all Letters
       Patent, which may be granted in the United States and all foreign
       countries, and any reissue, reexamination, continuation, contlnuation-in-
       part, division or extension thereof.

The 2003 Agreement expressly adopts California law. The district court found that the

relevant language of the 2003 Agreement was clear and unambiguous and that the

2003 Agreement prohibits DEG from infringing any and all patents (including the ’886

patent), not just the ’583 patent and its lineage. Consequently, the district court granted

summary judgment of breach of contract against DEG.

       DEG advances the argument that the district court erred in not considering parol

evidence offered in the form of a declaration by DEG’s president, Mark Schafer (the

“Schafer declaration”). California law requires at least a preliminary consideration of all

credible evidence offered to prove the intention of the parties. Pacific Gas & Elec. Co.

v. G. W. Thomas Drayage & Rigging Co., 442 P.2d 641, 645. (Cal. 1968). Under

California law:

       ‘The test of admissibility of extrinsic evidence to explain the meaning of a
       written instrument is not whether it appears to the court to be plain and



2009-1367                                   19
       unambiguous on its face, but whether the offered evidence is relevant to
       prove a meaning to which the language of the instrument is reasonably
       susceptible.’ To determine whether offered evidence is relevant to prove
       such a meaning the court must consider all credible evidence offered to
       prove the intention of the parties. ‘If the court decides, after considering
       this evidence, that the language of a contract, in the light of all the
       circumstances, is ‘fairly susceptible of either one of the two interpretations
       contended for’, extrinsic evidence to prove either of such meanings is
       admissible.

Delta Dynamics, Inc. v. Arioto, 446 P.2d 785, 787 (Cal. 1968) (quoting Pacific Gas, 442

P.2d at 645). Furthermore:

       Although extrinsic evidence is not admissible to add to, detract from, or
       vary the terms of a written contract, these terms must first be determined
       before it can be decided whether or not extrinsic evidence is being offered
       for a prohibited purpose. The fact that the terms of an instrument appear
       clear to a judge does not preclude the possibility that the parties chose the
       language of the instrument to express different terms.

Pacific Gas, 442 P.2d at 645.

       Accordingly, the court was required to consider whether the parol evidence

offered was credible to prove the intentions of May and DEG with respect to the 2003

Agreement and to define the terms of the contract. There is nothing in the record to

suggest that the court considered whether the parol evidence offered was credible to

demonstrate the intentions of the parties, merely the finding by the district court that the

language of the 2003 Agreement was clear and unambiguous.                    Moreover, an

interpretation of the 2003 Agreement to mean that DEG contractually agreed that it

would never infringe any patent that ever issued to May, anywhere, and until the end of

time, is plainly unreasonable. Likewise, a similar interpretation of the 2003 Agreement

to mean that DEG agreed never to contest the validity of any patent that ever issued to

May is similarly absurd and not a provision to which DEG would have reasonably

agreed. Rather, we interpret the contract to mean that DEG agreed not to challenge



2009-1367                                   20
May’s ’583 patent and its lineage or any of May’s patents that were extant at the time of

the 2003 Agreement’s execution.      We therefore hold that patents granted to May

subsequent to the 2003 Agreement and not in the lineage of the ’583 patent, including

the ’866 patent which issued in April 2005, were not within the contemplation of the

contract. Consequently, we reverse the district court’s summary judgment of breach of

contract.

                                    CONCLUSION

       For the reasons set forth above, we: (1) reverse the district court’s claim

construction of claims 17 and 19 of the ’886 patent; (2) reverse the district court’s

summary judgment of literal infringement; and (3) reverse the district court’s summary

judgment of breach of contract.



                                      REVERSED




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