District Court's Summary Judgment Opinion Found to be Inconsistent With Its Own Claim Construction

Vita-Mix Corp. v. Basic Holding, Inc. (Fed. Cir. Sept. 16, 2009)

In this case, the district court (Northern District of Ohio) granted summary judgment of no direct infringement, no inducement of infringement, no contributory infringement, no invalidity based on anticipation, obviousness, or lack of enablement, no inequitable conduct, and no laches.  The Federal Circuit, in an opinion by Judge Prost, vacated and remanded the judgments of no direct infringement and no invalidity for anticipation, obviousness, or lack of enablement and affirmed the judgments of no inducement, no contributory infringement, no inequitable conduct, and no laches.

The patent at issue was directed to a method of preventing the formation of an air pocket around the moving blades of a consumer food blender comprising inserting a plunger into the body of the blender that blocks the air channel that creates air pockets when ingredients are blended.  During claim construction, the district court construed the claim term "plunger" as a "device that can be inserted into a blender" and also construed the claim at issue to exclude "stirring to disperse, dislodge, or break-up an air pocket after it has begun to form" based on prosecution disclaimer.  This disclaimer was at issue in the appeal.

Although the district court's claim construction was not itself appealed, Vita-Mix argued that the district court applied to the accused device a claim construction inconsistent with its claim construction order.  In its motion for summary judgment of no infringement, the defendants argued that their devices did not infringe because the stir sticks included with the blenders were used to stir the contents of the blender, and the patentee had disclaimed stirring.  The plaintiff countered by arguing it was irrelevant to the infringement analysis whether the defendants' stir stick was used to stir the ingredients in the blender as the plaintiff's theory of infringement was that it was the positioning of the stir stick, not the stirring action, that prevented air pockets from forming.  Essentially, plaintiff's argument was that the accused blenders infringed when the included stir stick was inserted into the pitcher but not actively stirred.  Plaintiff argued that since the disclaimer was limited to stirring for a particular purpose (namely, breaking up or dislodging air pockets after they begin to form), the defendants could not avoid infringement by just any stirring operation.

The district court held in its summary judgment opinion that plaintiff's position was "untenable" and that the patentee had disclaimed "all-stirring."  Plaintiff argued on appeal that this statement by the district court was inconsistent with the court's prior claim construction.  The Federal Circuit agreed, finding that the district court's initial claim construction was correct as the patentee had disclaimed specific stirring operations during prosecution, finding the district court was not correct in stating the patentee disclaimed all stirring, and stating that "[t]o find that the patentee disclaimed all stirring, regardless of whether and how the stirring acts on air pockets, ignores the nature of the distinction between a positioning that prevents air pockets from forming and an operation that breaks up air pockets after they have begun to form."

The Federal Circuit found that this claim construction issue affected both the direct infringement and invalidity analysis, and therefore vacated and remanded on both issues.  The district court had found that it was undisputed that the accused blenders could be used in either an infringing (when the included stir stick is inserted into the pitcher but not actively stirred) or non-infringing (when the included stir stick is inserted into the pitcher and actively stirred) manner.  Plaintiff had various direct infringement arguments, including a twenty-six second period in a QVC infomercial where an accused blender was allegedly in use and the stir stick was not used to stir the contents of the pitcher, testimony from an expert that the accused blenders would necessarily infringe the patent claims under certain circumstances, and testimony from another expert concerning a double-blind survey of blender users that found a certain percentage of users used the accused blenders in an infringing manner.  In light of the Federal Circuit's discussion on claim construction, the Court found that it would not be "too great an analytical leap for the jury to consider both experts' testimonies and conclude that infringement actually occurs in at least a small percentage of customer use."  For this reason, the finding of no direct infringement was vacated and remanded.

Regarding validity, the Federal Circuit pointed out that the district court had a made a point in its opinion of explaining that it was reviewing the validity issues under "its own" claim construction and not the plaintiff's proffered claim construction.  The Federal Circuit noted that "[w]hile it is not entirely clear what claim construction the [district] court refers to as its own in this application, it appears that the court is applying a construction that excludes all stirring."  Since such a construction was inconsistent with the district court's original claim construction the Federal Circuit vacated and remanded the finding of validity.

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