Infringing Characteristic Need Not Be Present in Finished Product
The U.S. Court of Appeals for the Federal Circuit affirmed a district court’s claim construction, holding that a structural component defined in terms of its function need only be flexible at the time of manufacture and not in the finished product. Gemtron Corp. v. Saint-Gobain Corp., Case No. 2009-1001 (Fed. Cir., July 20, 2009) (Linn, J.).
Gemtron accused Saint-Gobain of infringing Gemtron’s patent directed to a two-piece refrigerator shelf comprised of a frame and a glass panel, in which the frame includes “a relatively resilient end edge portion that temporarily deflects and subsequently rebounds to snap-secure” the glass panel. Saint-Gobain did not dispute that during manufacture of the accused shelves, the frame was heated to a temperature at which it became flexible enough to temporarily deflect upon insertion of a glass panel and subsequently rebound to snap-secure the glass panel. However, Saint-Gobain showed that the accused shelves were not sufficiently flexible to allow insertion of glass into the frame at room temperature because the frame lost its flexibility after cooling. The district court construed “relatively resilient” as a characteristic occurring when the glass was inserted into the frame during manufacture, rather than at the time of actual use in a refrigerator or freezer. As a result, the accused shelves were found to infringe the patent-in-suit. Saint-Gobain appealed.
The Federal Circuit affirmed. Saint-Gobain argued that “relatively resilient” should mean that the end edge portion is sufficiently flexible to permit glass in the finished product to be pushed out of the frame and back into the frame. The Court disagreed and found that the claim language suggested that the claimed resilience only needed to be exhibited during assembly. The Court also found that, even though the claim language tied the “relatively resilient” characteristic to its function in assembling the shelf, “that characteristic is nonetheless a structural attribute possessed by the claimed frame and is not a process limitation.” In addition, the Court relied on the specification to show that the “relatively resilient” terminology was always mentioned in the context of how the shelf was assembled and was never mentioned any purpose or value of being “relatively resilient” other than in the context of facilitating assembly of the shelf.
Saint-Gobain also argued that the Court’s construction transformed the limitation into a product-by-process limitation. The Court stated that the claim requires the glass panel be snap-secured in the frame, which is a structural relationship possessed by the claimed shelf. Accordingly, defining a structural component by both its functional and physical characteristics was different from defining a structure solely by the process of making the structure. Therefore, the Court concluded that its construction did not transform the claim language into a product-by-process limitation.
Even though Saint-Gobain manufactured the accused shelves outside the United States, the importation and sale of the shelves inside the United States constituted infringement. The Court noted that the claim was directed to an apparatus, not a process, and the “relatively resilient” limitation required that the frame include the structural characteristic of having been deflected and subsequently rebounded to snap-secure the glass at the time of manufacture. Therefore, Saint-Gobain infringed the patent-in-suit by importing and selling shelves having this characteristic in the United States.