EMD Millipore Corp. v. Allpure Technologies, Inc
Addressing a district court’s summary judgment of infringement, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s summary judgment, finding that the accused device did not literally infringe the asserted claims and that prosecution history estoppel precluded application of the doctrine of equivalents. EMD Millipore Corp. v. Allpure Technologies, Inc., Case No. 14-1140 (Fed. Cir., Sept. 29, 2014) (Prost, J.).
Plaintiff Millipore owned a patent directed to a device for introducing or withdrawing a sample from a container without contaminating the contents of the container. The single independent claim at issue was directed to a device that includes, among other things, “at least one removable replaceable transfer member” composed of several component parts: a “holder,” a “seal” and a “hypodermic needle.” The “seal” component of the transfer member included “a first end comprised of a bellows-shaped part” which was “sealingly attached to said holder, and a second end comprising a self-sealing membrane portion interiorly formed at an end of said bellows part.” The claimed device further included a “magazine part for removable securement” of the transfer member.
The parties’ sole dispute with respect to literal infringement was whether the accused device included a “transfer member” as required by the claims. The accused device, when assembled, includes a “transfer member” that contains a “seal.” However, as the district court explained, removal of the “transfer member” from the accused device involves disassembling the transfer member into its component parts. As a result, the disassembled, removed “transfer member” no longer contains “holder” and a “seal” as recited in the claims. Millipore appealed.
Millipore argued that regardless of the fact that the transfer member was itself disassembled when removed from the accused device, because each of the components of the transfer member were still removed, the transfer member as a whole was “removable.” The Federal Circuit rejected Millipore’s argument and concluded that “[i]f a transfer member does not exist when the device is disassembled . . . then there is no genuine issue of material fact over whether the [accused] device contains a ‘removable, replaceable transfer member’ as is literally required” by the claims. The Court therefore affirmed that there was no literal infringement because the accused product did not contain a removable transfer member, as required by the claims.
With respect to infringement under the doctrine of equivalents, the Federal Circuit found that prosecution history estoppel barred Millipore’s argument. During prosecution, applicants amended the pending claims by adding the language requiring that the seal element include a “first end comprised of a bellows-shaped part . . . [and] a second end comprising a self-sealing membrane portion interiorly formed to an end of said bellows part.” The applicant also stated that the claim had been amended to render it “allowable and distinguishable over the cited references.”
In view of these facts, the Federal Circuit concluded there was a rebuttable presumption of prosecution history estoppel. The Federal Circuit then noted that while Millipore bore the burden of rebutting the presumption of prosecution history estoppel, Millipore had chosen not to advance such an argument in front of the district court. Instead, Millipore had argued solely that there was no estoppel because the amendment in question did not narrow the scope of the claims. As a result, the Federal Circuit concluded that Millipore failed to rebut the presumption, and thus prosecution history estoppel barred application of the doctrine of equivalents.