Mayer, Chief Judge, Rich,* and Schall, Circuit Judges.
The opinion of the court was delivered by: Schall, Circuit Judge.
NOTE: Pursuant to Fed. Cir. R. 47.6, this Disposition is not citable as precedent. It is a public record. This Disposition will appear in tables published periodically.
Anthony John Antonious appeals the decision of the United States District Court for the District of Maryland granting summary judgment of noninfringement in favor of Spalding & Evenflo Companies, Inc. and Spalding Sports Worldwide (Spalding) with respect to Antonious's U.S. Patent No. 5,328,184 (the '184 patent) and U.S. Design Patent Nos. 320,056 (the '056 patent) and 327,308 (the '308 patent), and holding the '056 and '308 patents invalid for violating 35 U.S.C. § 112, ¶ 1. See Antonious v. Spalding & Evenflo Cos., Inc., 44 F. Supp.2d 732 (D. Md. 1998). We affirm the district court's noninfringement summary judgment in favor of Spalding, but reverse its summary judgment decision that the design patents are invalid.
This case concerns iron type golf club heads. The '184 patent is directed to a club head design incorporating a cavity back bar weight mass configuration that is described as increasing golf club performance during a golf swing. The '056 and '308 patents are directed to ornamental designs of iron type golf club heads.
Antonious sued Spalding, claiming that Spalding's Top-Flite Tour (first through third generations) and Tour Edition irons infringed independent claims 1, 18, and 24, as well as associated dependent claims. See Antonious v. Spalding & Evenflo Cos., Inc., 44 F. Supp.2d at 736.*fn1 Claim 1 of the '184 patent, which the parties agree is representative, reads as follows (emphasis of disputed limitation added):
"1. An iron type golf club head for hitting a ball along an intended line of flight, said iron type golf club head comprising: a hosel, a heel, a toe, a ball striking face, a rear wall opposite said ball striking face, an upper surface including a top ridge, a lower surface including a sole, a center of gravity centrally located relative to said ball striking face, a peripheral mass located on said rear wall at an outer extremity of said club head, said peripheral mass and said rear wall defining a centrally located cavity formed within said peripheral mass; and a single weight member formed on and attached solely to said rear wall within said cavity, said weight member consisting essentially of a single back bar mass extending between an edge of said peripheral mass located adjacent said lower surface and an edge of said peripheral mass located adjacent said upper surface, said back bar mass being sized to provide a significant mass at its point of location to enhance the energy transfer of a golf ball being struck during the execution of a golf stroke, and said entire back bar mass being offset and completely spaced from the club head's center of gravity." '184 patent, col. 6 l. 46 - col. 7 l. 2.
The district court interpreted this limitation as follows:
"The phrase "formed on and attached solely to said rear wall within said cavity" is construed to mean that the weight member must be attached solely (i.e., only) to the rear wall (back side of the striking surface) and not attached also to the peripheral mass within the cavity." Antonious, 44 F. Supp.2d at 736.
Holding that there was no dispute of material fact that the corresponding weight member in the accused devices was "integral with, and attached to, the peripheral mass of the club," the court concluded that the devices did not literally infringe the '184 patent. Id. at 737. The court also held that there was no infringement under the doctrine of equivalents, stating that a finding of equivalence would impermissibly remove the limitation that the weight member be "formed on and attached solely to" the rear wall of the cavity. See id. at 737-38.
Antonious also claimed that Spalding's Top Flite Tour and Tour Editions infringed his '056 and '308 design patents. The district court granted summary judgment of noninfringement in favor of Spalding, stating that "no reasonable fact finder could find substantial similarity such that a purchaser would be deceived into thinking that the Spalding product was of the Antonious design." Antonious v. Spalding & Evenflo Cos., Inc., 1998 U.S. Dist. Lexis 10731, at *7 (D. Md. 1998). In addition, the court held both patents invalid for failure to meet the requirements of 35 U.S.C. § 112, ¶ 1, by reason of indefiniteness. See id. at 9-10.
Our review of a grant of summary judgment is plenary. See Cole v. Kimberly-Clark Corp., 102 F.3d 524, 528, 41 USPQ2d 1001, 1004 (Fed. Cir. 1996). We must determine whether "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Unidynamics Corp. v. Automatic Prod. Int'l, Ltd., 157 F.3d 1311, 1316, 48 USPQ2d 1099, 1102 (Fed. Cir. 1998) (quoting Fed. R. Civ. P. 56(c)). When determining whether a genuine issue of material fact exists, the evidence must be viewed in the light most favorable to the nonmovant and all reasonable inferences must be drawn in favor of that party. See id.
A. The '184 Utility Patent
"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976, 34 USPQ2d 1321, 1326 (Fed. Cir. 1995) (en banc). We review the first step de novo in a summary judgment case, just as we would after a full trial. See id. at 979, 34 USPQ2d at 1329. In the context of a district court's grant of summary judgment of noninfringement, our review of the second step consists, first, of a de novo determination as to whether any genuine issue of material fact exists, and second, if there is no genuine issue of material fact, a de novo review as to whether the alleged infringer was entitled to a judgment as a matter of law. See Cole, 102 F.3d at 528, 41 USPQ2d at 1004. In the absence of a genuine issue of material fact, summary judgment in favor of an alleged infringer is properly granted (a) in the context of literal infringement if no reasonable jury could determine that the accused device meets every limitation of the properly construed claims, see, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1476, 45 ...