Before Plager, Schall, and Gajarsa, Circuit Judges.
The opinion of the court was delivered by: Plager, Circuit Judge
NOTE: Pursuant to Fed. Cir. R. 47.6, this Disposition is not citable as precedent. It is a public record. The Disposition will appear in tables published periodically.
Harold G. Abbey appeals two summary judgment decisions of the United States District Court for the Southern District of Florida. See Abbey v. Bill Ussery Motors, Inc., No. 93-6231 (S.D. Fla. Feb. 28, 1999). We affirm the district court's grant of summary judgment of noninfringement, and also affirm the district court's grant of summary judgment that the original and reexamined claims of Abbey's patent are not identical.
Abbey brought suit against Mercedes-Benz A.G., Mercedes-Benz of North America, Inc., Bill Ussery Motors, Inc., and L.P. Evans Motors of West Palm Beach, Inc., (collectively "Defendants") alleging that fuel-injection systems used in certain Mercedes automobiles infringed Abbey's U.S. Patent No. 4,387,685 ("the original '685 patent"). Robert Bosch, GmbH intervened as a defendant and requested that the United States Patent and Trademark Office ("PTO") re-examine the original '685 patent. During reexamination, the PTO examiner finally rejected several claims, including independent claim 1, as unpatentable in light of several prior art references not cited during the original prosecution. After unsuccessful appeals, Abbey obtained allowance of his claims by amending them to include significant limitations.
After Abbey received his reexamination certificate, the district court reinstated the infringement action, which it had dismissed in view of the examiner's final rejection during reexamination. Defendants moved for summary judgment of noninfringement and partial summary judgment that Abbey could enforce the claims of the reexamined '685 patent only from the date of the reexamination certificate because the reexamined claims were not identical to those of the original '685 patent. After the district court held a Markman hearing to construe the claims of the reexamined '685 patent, it granted both of Defendants' summary judgment motions.
Summary judgment is proper when there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c). In deciding whether a genuine issue of material fact exists, the evidence must be viewed in the light most favorable to the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). We review the district court's grant of summary judgment without deference. See Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed. Cir. 1994). A. Summary Judgment of Noninfringement
The first step of an infringement analysis is claim construction, which we review independently. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1451, 1456, 46 USPQ2d 1169, 1171, 1174 (Fed. Cir. 1998) (en banc). The only claim construction issue is whether the fluidic system of claim 1, the only independent claim of the reexamined '685 patent, requires a spool having an "interior passage." The pertinent claim limitation reads:
a cylindrical spool supported within the tubular section of casing for free axial movement therein, said spool having an interior . . . flow passage extending to a downstream end of said spool, said spool defining an exterior . . . flow passage in the annular space between the exterior surface of the spool and the tubular section of casing . . . whereby the fluid stream admitted into the tubular section of casing is divided and flows through the interior and exterior passages, said spool having at least said exterior . . . flow passage, causing said fluid stream to exert a . . . force on the spool . . . ; (emphasis added).
In determining the scope of a claim, we look first to the plain language of the claim itself. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed. Cir. 1996). We agree with the district court that the claim language unambiguously recites a spool containing an interior passage and defining an exterior passage. The language reciting that the fluid stream "flows through the interior and exterior passages" is further evidence that the claim requires an interior passage in the spool.
The original prosecution history confirms that the spool requires an interior and an exterior passage. Although Abbey's originally filed claims did not require an interior passage, he canceled his original claims in response to the examiner's prior art rejection and submitted a new claim, which issued as claim 1, reciting a spool with an interior passage and defining an exterior passage. Therefore, according to both the plain language of the claim and the prosecution history, the claim requires a spool having an interior passage.
Abbey argues that the claim language "said spool having at least said exterior . . . flow passage" indicates that only an exterior passage is required, and that a "solid plug" device with no interior passage falls within the scope of the claim. This cited language is not inconsistent with the requirement that the spool have both an interior and an exterior passage as required by the other claim language cited above, which Abbey ignores.
The second step of an infringement analysis requires the patentee to prove that the accused device embodies every limitation of the claim, either literally or by a substantial equivalent. See Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1578, 27 USPQ2d 1836, 1840 (Fed. Cir. 1993). Abbey has set forth no argument, in either his response to Defendants' motion for summary judgment or his appeal brief filed with this court, that Defendants' devices infringe the claims of the '685 patent either literally or under the doctrine of equivalents.*fn1 Indeed, Abbey has repeatedly conceded that the accused devices do not contain an interior ...