United States Court of Appeals for the Federal Circuit - PDF document

United States Court of Appeals for the Federal Circuit __________________________ DEERE & COMPANY, Plaintiff-Appellant, v. BUSH HOG, LLC, Defendant-Cross Appellant, AND GREAT PLAINS MANUFACTURING INCORPORATED, Defendant-Cross Appellant. __________________________ 2011-1629, -1630, -1631 __________________________ Appeal from the United States District Court for the Southern District of Iowa in Case No. 09-CV-0095, Senior Judge Charles R. Wolle. ___________________________ Decided: December 4, 2012 ___________________________ R ODERICK R. M CKELVIE , Covington & Burling LLP, of Washington, DC, argued for plaintiff-appellant. With him on the brief was R. J ASON F OWLER . C RAIG C. M ARTIN , Jenner & Block LLP, of Chicago, Il- linois, argued for defendant-cross appellant Bush Hog,

DEERE & CO v. BUSH HOG 2 LLC. With him on the brief were S TEVEN R. T RYBUS , of Chicago, Illinois, M ATTHEW S. H ELLMAN , of Washington, DC, and E LIZABETH A. E DMONDSON , of New York, New York. Of counsel were J EFFREY D. H ARTY and E DMUND J. S EASE , McKee, Voorhees & Sease, P.L.C., of Des Moines, Iowa. S COTT R. B ROWN , Hovey Williams LLP, of Overland Park, Kansas, argued for defendant-cross appellant Great Plains Manufacturing Incorporated. With him on the brief was M ATTHEW B. W ALTERS . __________________________ Before R ADER , Chief Judge , N EWMAN and P LAGER , Circuit Judges . R ADER , Chief Judge . The United States District Court for the Southern District of Iowa construed the terms of Deere & Co.’s (“Deere”) U.S. Patent No. 6,052,980 (the “’980 Patent”) and granted Bush Hog, LLC’s (“Bush Hog”) and Great Plains Manufacturing, Inc.’s (“Great Plains”) motions for summary judgment of noninfringement. This court affirms the construction of “rotary cutter deck” and the determination that the terms “substantially planar” and “easily washed off” do not render the asserted claims invalid under 35 U.S.C. § 112. Because the district erro- neously construed the term “into engagement with” to require direct contact, this court vacates that construc- tion, reverses the grant of summary judgment, and re- mands for further proceedings. I. The ’980 Patent discloses an “easy clean dual wall deck” for a rotary cutter. Bush Hog and Great Plains (collectively, “Defendants”), manufacture rotary cutters

3 DEERE & CO v. BUSH HOG that are pulled behind a tractor and used to mow wide swaths of ground. The accused rotary cutters can “rough cut” fields after a harvest or clear weeds and brush along roadsides. The ’980 Patent addresses a problem encoun- tered by rotary cutters: “[d]uring cutting/shredding of material, such as cotton[,] corn, milo and wheat stubble, grass, etc. with a rotary cutter, debris accumulates on the top of the cutter deck. If not regularly cleaned off, the debris retains moisture which eventually results in the deck rusting out.” ’980 Patent, col. 1, ll. 21–25. The specification explains that prior art rotary cutters had structural components such as gearboxes and deck bracings mounted either on top of or underneath the cutter deck. Id. col. 1, ll. 25–35. When placed on top of the deck, these components create traps for debris and water, making it difficult to clean the deck. Id. When placed underneath the deck, the structural components interfere with the flow of cut material, reducing cutting efficiency. Id. The ’980 Patent discloses a dual-wall deck that en- closes the structural components in a torsionally-strong box. This leaves smooth surfaces on the top and bottom of the deck. Figure 3 of the ’980 Patent shows a side view of the claimed dual-wall deck. In the embodiment shown, the front and rear of the upper deck wall 56 slope down to contact the lower deck wall 28 . Id. col. 2, l. 59 – col. 3, l. 4.

DEERE & CO v. BUSH HOG 4 ’980 Patent, fig. 3 (highlighting added). Claim 1 of the ’980 Patent recites: 1. A rotary cutter deck comprising: a lower, substantially planar, horizontal deck wall; an upper deck wall including a central portion elevated above said lower deck wall, and front and rear portions respectively sloped downwardly and forwardly, and downwardly and rearwardly from said central portion into engagement with, and being se- cured to , said lower deck wall; and right- and left-hand end wall structures re- spectively being joined to right- and left-hand ends of said lower and upper deck walls to thereby define a box section having torsional stiffness. Id. col. 4, ll. 44–53 (emphasis added). The district court construed the term “into engage- ment with” to mean “brought into contact with,” and construed “being secured to” as “fastened or attached.” Deere & Co. v. Bush Hog LLC (“ Claim Construction Order ”), No. 3:09-cv-95 (S.D. Iowa Jan. 25, 2011). The district court granted summary judgment of noninfringe- ment, holding Deere did not raise a genuine issue of material fact as to literal infringement because “the upper deck walls do not come into contact with the lower deck walls in any of the accused products.” Deere & Co. v. Bush Hog LLC (“ Summary Judgment Opinion ”), No. 3:09- cv-95, slip. op. at 13 (S.D. Iowa Aug. 1, 2011). In each of the accused products, an intermediate structure connects the upper deck wall to the lower deck

5 DEERE & CO v. BUSH HOG wall at both the front and rear portions of the deck. Id. at 3. Like the district court, this court refers to those inter- mediate structures as “connectors.” The size and shape of the connectors is different in the various accused prod- ucts, but the district court did not distinguish between different types of connectors in granting summary judg- ment. The differences are therefore irrelevant to this appeal. In addition to granting summary judgment of no lit- eral infringement, the district court held Deere could not assert infringement under the doctrine of equivalents because doing so would vitiate the “into engagement with” limitation. Id. at 15–16. Further, the district court barred Deere from asserting equivalence because the “into engagement with” limitation “specifically excludes struc- tures where the deck walls are not engaged with each other.” Id. at 16. The district court entered final judgment in favor of Defendants, dismissing without prejudice Defendants’ counterclaims of invalidity. This court has jurisdiction under 28 U.S.C. § 1295(a)(1). II. This court reviews claim construction without defer- ence. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1455–56 (Fed. Cir. 1998) (en banc). This court also re- views a district court’s grant of summary judgment with- out deference. ICU Med., Inc. v. Alaris Med. Sys. Inc. , 558 F.3d 1368, 1374 (Fed. Cir. 2009). The district court erroneously construed the term “into engagement with” to require direct contact between the upper and lower deck walls. At the outset, the claim language itself counsels against this narrow interpreta- tion of the term. “[T]he words of a claim ‘are generally

DEERE & CO v. BUSH HOG 6 given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp. , 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he 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 [it] ap- pears, but in the context of the entire patent, including the specification.” Id. at 1313. While claim terms are understood in light of the specification, a claim construc- tion must not import limitations from the specification into the claims. Id. at 1323. Claim 1 of the ’980 Patent requires the front and rear of the upper deck wall to slope downwardly “into engage- ment with, and being secured to,” the lower deck wall. ’908 Patent, col. 4, l. 49. To give effect to all terms of the claim, “secured to” and “into engagement with” must have distinct meanings. See Bicon, Inc. v. Straumann Co. , 441 F.3d 945, 950 (Fed. Cir. 2006). The parties agree that two objects may be “secured to” one another without being in direct contact. For example, a rigid bracket can “secure” two objects together yet maintain space between them. Defendants argue that if “engagement” also includes connection through indirect contact, then it is redundant with “secured to.” This court gives effect to the claim terms “secured to” and “engagement” as conveying distinct meanings. The term “engagement” connotes a connection between two objects in which the motion of one object is constrained by the other. This connection can be indirect, such as where a motor is engaged with a gear through a second, inter- mediate gear. The gear and motor are engaged even though they are not “secured” together, such as with nuts and bolts or by welding. Objects that are secured to one