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November 17, 2005.

METALAST, S.A. Sociedad Unipersonal, Defendant.

The opinion of the court was delivered by: JOHN BATES, District Judge


This long-pending action concerns the alleged infringement of a patent on a ladder designed mainly for use in swimming pools. The Court held a claim construction hearing on October 11, 2002, and subsequently issued a memorandum opinion construing the patent claim at issue. See Intex Recreation Corp. v. Metalast, S.A., 245 F. Supp. 2d 65, 79 (D.D.C. 2003) ("Intex I"). In a subsequent opinion, the Court entered summary judgment in favor of Metalast on the issue of patent validity, entered summary judgment in favor of Intex on the issue of literal infringement, and permitted further briefing on Metalast's claim that Intex infringed on Metalast's patent under the doctrine of equivalents. Intex Recreation Corp. v. Metalast, S.A., slip op. (D.D.C. May 20, 2005) ("Intex II") (2005 WL 1214600). Presently before the Court is Intex's motion for summary judgment on the final issue remaining in this case — whether Intex's product infringes on defendant's patent under the doctrine of equivalents. In response, Metalast asks the Court to reconsider its decision on the construction of the claim based on the intervening judicial decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and also to revisit the issue of literal infringement. After a careful review, the Court concludes that its claim construction opinion is consistent with Phillips and that Intex is entitled to summary judgment. BACKGROUND

The underlying facts of this case have been articulated at length in the prior opinions and are repeated here only as relevant to the issues now before the Court. Metalast, a Spanish corporation, is the owner of U.S. Patent No. 5,547,041 ("the '041 patent") directed to the means for attachment of the steps of a ladder to the vertical uprights. See '041 Patent Abstract (Intex's Mem., Ex. 1).*fn1 A characteristic trait of the ladder includes, inter alia, tubular apertures near the ends of each rung defined by a sleeve for receiving the vertical uprights. Id.

  The issue of patent infringement turns on the meaning of the phrase "uninterrupted inner surfaces" — a phrase used in Claim 1 of the '041 patent to describe the inner surfaces of the rung sleeves.*fn2 On February 12, 2003, the Court entered a decision stating that "the term `uninterrupted inner surfaces' in the '041 patent shall be construed as meaning `smooth' or `uniform' inner surfaces." Intex I, 245 F. Supp. 2d at 79. The Court explained in detail that, in reaching this interpretation, the Court had rejected the interpretation of "uninterrupted" as a "unitary" one-piece rung sleeve — the competing interpretation advanced by Metalast — and instead concluded that Intex's interpretation focusing on the "smooth" or "uniform" character of the inner surfaces was more consistent with the claim language, context, drawings, dictionary definitions, and expert testimony. Id. at 71-73, 79. The Court thus construed the claim "uninterrupted" inner surface as a surface "having no gaps, protrusions, or recesses." Id. at 71, 72, 73. The pending arguments regarding claim construction and infringement are presented in light of the Court's construction of Claim 1.


  Summary judgment is appropriate when the pleadings and the evidence demonstrate that "there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c)). The summary judgment standard is applicable in patent cases, as it is in any other case. See Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998). The party seeking summary judgment bears the initial responsibility of demonstrating the absence of a genuine dispute of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The moving party may successfully support its motion by "informing the district court of the basis for its motion, and identifying those portions of `the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it believes demonstrate the absence of a genuine issue of material fact." Id. (quoting Fed.R.Civ.P. 56(c))). In determining whether there exists a genuine issue of material fact sufficient to preclude summary judgment, the court must regard the non-movant's statements as true and accept all evidence and make all inferences in the non-movant's favor. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). A non-moving party, however, must establish more than the "mere existence of a scintilla of evidence" in support of its position. Id. at 252. By pointing to the absence of evidence proffered by the non-moving party, a moving party may succeed on summary judgment. Celotex, 477 U.S. at 322. "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50 (internal citations omitted). Summary judgment is appropriate if the non-movant fails to offer "evidence on which the jury could reasonably find for the [non-movant]." Id. at 252.


  Intex asserts several grounds in support of its request for summary judgment on the issue of infringement under the doctrine of equivalents, including prosecution history estoppel, the rule against vitiation of claim terms, and a showing on the merits that the differences in the relevant ladder designs are not insubstantial. Before addressing the doctrine of equivalents, however, the Court first must address the threshold issue raised by Metalast's response brief — whether this Court's earlier claim construction decision should be reconsidered in light of the recent Phillips decision from the en banc Federal Circuit.

  I. Consistency of the Claim Construction Decision With Phillips v. AWH Corp.

  Metalast contends that the Court's construction of "uninterrupted inner surfaces" is based on an erroneous "dictionary-based" methodology that has recently been rejected by the Federal Circuit sitting en banc in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Metalast's argument is based on the characterization of the claim construction opinion as applying a "presumption" that the dictionary definition of a term would govern in the absence of "clear, explicit direction in the claim specification or prosecution history." Metalast Mem. at 1. The Court agrees that Phillips clarifies the law on the role of dictionary definitions in the claim construction process. See 415 F.3d at 1312 ("We have also previously considered the use of dictionaries in claim construction. What we have said in that regard requires clarification."). Moreover, the Court believes that in so doing, the Federal Circuit necessarily overruled those cases applying a presumption that dictionary definitions govern unless refuted by intrinsic evidence such as the claim specification and prosecution history. However, this Court's claim construction opinion is consistent with the principles articulated in Phillips and assigns an appropriate secondary role to dictionary definitions — that is, one of confirming a construction of the claim derived in the first instance from the claim language and patent specification. To the extent there is any doubt about that, this opinion confirms that secondary role for dictionary definitions.

  In Phillips, the Federal Circuit discussed the differing roles of intrinsic and extrinsic evidence, and reiterated the continued validity of its prior precedent on claim construction — particularly Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) — that focused first on the claim language and the patent specification:
[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms. See Vitronics, 90 F.3d at 1582; see also ACTV, Inc. v. Walt Disney Co,, 346 F.3d 1082, 1088 (Fed. Cir. 2003) ("the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms").
. . . The claims, of course, do not stand alone. Rather, they are part of "a fully integrated written instrument," Markman, 52 F.3d at 978, consisting principally of a specification that concludes with the claims. For that reason, claims "must be read in view of the specification, of which they are a part." Id. at 979. As we stated in Vitronics, the specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." 90 F.3d at 1582.
Phillips, 415 F.3d 1314-15. These principles are well-accepted, and indeed, were reiterated in Intex I. See 245 F. Supp. 2d at 68-69 (quoting Vitronics, 90 F.3d at 1582).
  The Phillips court next discussed the importance of prosecution history as intrinsic evidence that may inform the meaning of claim language, but also noted the limitations of prosecution history:
Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent. . . . Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes. . . . Nonetheless, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution. . . .
Phillips, 415 F.3d at 1317 (citations omitted).
  The Federal Circuit then addressed the role of extrinsic evidence — dictionaries, as well as other types (e.g., expert and inventor testimony and treatises). Id. Extrinsic evidence should only be considered "in the context of the intrinsic evidence," but remains a permissible secondary aid in helping the court determine what a person of ordinary skill in the art would understand claim terms to mean. Id. at 1319. In this context, the court reconsidered the precedent established by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), the "leading case" in a series of cases establishing a presumption in favor of dictionary definitions. Phillips, 415 F.3d at 1319. Under the Texas Digital approach, the presumption could be overcome only where the patentee explicitly set forth a different definition of the term or where "the inventor has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction." Id. The Phillips court found a presumption in favor of dictionary definitions to be inconsistent with its rulings that "the specification is `the single best guide to the meaning of a disputed term.'" Id. at 1321 (quoting Vitronics, 90 F.3d at 1582). The Federal Circuit further explained that:
The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent. Properly viewed, the "ordinary meaning" of a claim term is its meaning to the ordinary artisan after reading the entire patent. Yet heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification.
Id. at 1321. Although cautioning against giving undue weight to dictionaries, the court emphasized that judges may, in their discretion, make appropriate use of dictionaries within the context of intrinsic evidence. Id. at 1322.

  With this clarification by the Federal Circuit in mind, the Court now turns to whether the Intex I claim construction decision is consistent with the principles articulated in Phillips, and in particular the secondary role assigned to dictionaries. This Court concludes that no change in the claim construction decision is warranted. The decision is properly based primarily on the intrinsic evidence, and looked to dictionary definitions to "buttress" that conclusion, consistent with Phillips. Hence, although this Court's discussion of claim construction post-Phillips would be somewhat different, the result of the analysis does not change. The Court's claim construction decision began with a review of the legal standards generally governing claim construction. Although Metalast is correct that the decision recited the presumption in favor of dictionary definitions from Texas Digital, the decision placed significant reliance on the principle that "courts `should ...

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