Helena Laboratories Corporation v. Alpha Scientific Corporation

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1503
HELENA LABORATORIES CORPORATION,
Plaintiff-Appellee,
v.
ALPHA SCIENTIFIC CORPORATION,
Defendant-Appellant.
Jerold I. Schneider, Akerman Senterfitt, of West Palm Beach, Florida, argued for
plaintiff-appellee.
Joshua R. Slavitt, Pepper Hamilton LLP, of Philadelphia, Pennsylvania, argued
for defendant-appellant. With him on the brief were Joseph F. Posillico and Marc S.
Segal, Synnestvedt & Lechner LLP, of Philadelphia, Pennsylvania.
Appealed from: United States District Court for the Eastern District of Texas
Judge Ron Clark

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NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1503
HELENA LABORATORIES CORPORATION,
Plaintiff-Appellee,
v.
ALPHA SCIENTIFIC CORPORATION,
Defendant-Appellant.
Appeal from the United States District Court for the Eastern District of Texas in case no.
1:06-CV-16, Judge Ron Clark.
___________________________
DECIDED: April 16, 2008
___________________________
Before RADER, Circuit Judge, CLEVENGER, Senior Circuit Judge, and MOORE,
Circuit Judge.
MOORE, Circuit Judge.
Defendant-Appellant, Alpha Scientific Corporation (Alpha) appeals the judgment
of the United States District Court for the Eastern District of Texas granting summary
judgment of noninfringement in favor of Plaintiff-Appellee, Helena Laboratories
Corporation (Helena). We affirm the judgment of the district court.
BACKGROUND
On January 12, 2006, Helena brought a declaratory judgment action against
Alpha for noninfringement and invalidity of U.S. Patent No. 5,344,666 (’666 patent).
The invention in question relates to dispensing devices for use with stoppered
containers such as blood collection tubes. Alpha counterclaimed for infringement of the

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’666 patent. Helena conceded that all of the elements of the claims of the ’666 patent,
other than “stabilizing supports,” are found literally in the H-Pette 3611 dispensing
device. The district court construed this term to exclude the “end of the passageway out
of which fluid is dispensed.” Based on its construction the district court granted
summary judgment of noninfringement as to Helena’s H-Pette 3611 dispensing device.
Subsequently, the district court approved the parties’ stipulation of the dismissal of all
claims and counterclaims asserted in the action for which summary judgment had not
been granted. On July 12, 2007, the district court entered a final judgment in favor of
Helena. Alpha appealed.
DISCUSSION
We review a district court’s grant of summary judgment de novo. Hilgraeve Corp.
v. McAfee Assocs., Inc., 224 F.3d 1349, 1352 (Fed. Cir. 2000). Summary judgment is
proper only “if the pleadings, the discovery and disclosure materials on file, and any
affidavits show that there is no genuine issue as to any material fact and that the
movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c).
A determination of noninfringement, either literal or under the doctrine of
equivalents, is a question of fact. IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d
1422, 1429 (Fed. Cir. 2000). “Thus, on appeal from a grant of summary judgment of
noninfringement, we must determine whether, after resolving reasonable factual
inferences in favor of the patentee, the district court correctly concluded that no
reasonable jury could find infringement.” Id. Claim construction is a question of law that
we review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir.
1998) (en banc). Finally, “we review issues relating to the application of prosecution
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history estoppel de novo.” Conoco, Inc. v. Energy & Envt’l, L.C., 460 F.3d 1349, 1357
(Fed. Cir. 2006).
I. Claim Construction
In determining the meaning of a disputed claim limitation, we look primarily to the
intrinsic evidence of record, examining the claim language, the written description, and
the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)
(en banc). The claims at issue are claims 1-3, 5-7, 9-12, 18, 20, 22-26, 28-34, 39-42,
56, and 57 of which claims 1, 24, and 41 are independent. Claims 1 and 24 are
directed to a device for dispensing an amount of fluid from a stoppered container to a
target surface. Claim 41 is directed to a method for dispensing an amount of fluid from
a stoppered container to a target surface. Each of the independent claims recite the
term “stabilizing supports.” Representative claim 1 states:
A device for dispensing an amount of fluid from a stoppered container to a
target surface, comprising:
a dispenser body having a passageway formed therein,
one end of said dispenser body including a surface for engaging
said stoppered container and
another end of said dispenser body including stabilizing supports
for engaging said target surface, and
said passageway including means for passing through said
stoppered container to interior portions of said stoppered container, for
accessing the fluid in said stoppered container and for dispensing said
fluid from said passageway and to said target surface responsive to forces
applied relative to said dispenser body.
’666 patent col.5 11.55-68 (emphasis added). The district court construed the term
“stabilizing supports” to exclude the “end of the passageway out of which fluid is
dispensed.”1 We agree.
1 As the specification consistently describes the end of the passageway out
of which fluid is dispensed as the “dispensing tip,” so shall we.
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First, the claim language compels the district court’s construction. The three
independent claims (1, 24, and 41) include stabilizing supports and a separately
claimed structure through which the fluid flows from the interior of the test tube or
container to the target surface. Independent claim 1 refers to this latter structure as “a
passageway . . . said passageway including means . . . for dispensing said fluid from
said passageway and to said target surface.” Claim 24 refers to this latter structure as
“a passageway” and “passageway means . . . said passageway means includes means
. . . for dispensing said fluid from said passageway . . . to said target surface.” Claim 41
expressly refers to this latter structure as a “dispensing tip.” Independent claims 1 and
24 do not expressly recite a dispensing tip. Moreover, claims 10 and 32 refers to the
passageway as including a dispensing tip. These dependent claims support the
conclusion that the dispensing tip is part of the passageway and not one of the
stabilizing supports.
Second, the written description supports the construction that the stabilizing
supports do not include the dispensing tip. No description of stabilizing supports in the
’666 patent refers to the dispensing tip and no description of dispensing tip in the ’666
patent refers to the stabilizing supports. Each is consistently described as a different
structure. For example, the ’666 patent states that “[i]t is another objective of this
invention to adequately separate stabilizing supports from the dispensing tip by
sufficient distance so that the dispensed fluid does not come in contact with the
stabilizing supports, thereby avoiding contamination.” ’666 patent col.2 ll.39-44.
Further, as Alpha acknowledges, the invention of the ’666 patent involves dispensing a
predetermined amount of fluid. The ’666 patent explains how the predetermined
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amount is dispensed: (1) “Stabilizing supports are provided so that fluid emerges from
a dispensing tip located a predetermined distance above the target surface which
determines the quantity of fluid dispensed.” Id. at Abstract; (2) “Flange-like stabilizing
supports 26 extend radially outward and axially beyond the end of dispensing tip 22 by
a predetermined distance which is related to the amount of dispensed fluid desired.” Id.
at col.4 ll.9-12; (3) “Also the stabilizing supports 26 may be furnished with an adjustable
component so that various gap distances 33 may be selected to determine the quantity
of fluid dispensed.” Id. at col.4 ll.14-18. Finally, according to the ’666 patent: “[t]he
supports also transmit reactive force from the target surface to compress the rubber
stopper of the closed specimen tube.” Id. at Abstract. Nowhere does the ’666 patent
suggest that the dispensing tip transmits the force to the rubber stopper. Rather, only
the plural stabilizing supports must contact the target surface to transmit the force to the
stopper and keep the dispensing tip spaced above the target surface during the
intended use of the device, dispensing a predetermined amount of fluid. We agree with
the district court that the term stabilizing supports excludes the end of the passageway
out of which fluid is dispensed.
II. Literal Infringement
We also agree with the district court that Helena’s product does not literally
infringe the claims at issue. It is uncontested that the H-Pette 3611 product includes a
dispensing tip and a circumferential disk positioned above the dispensing tip such that
only one point on the disk may contact a flat target surface at a time. Furthermore, it is
uncontested that the independent claims of the ’666 patent require a plurality of
stabilizing supports in addition to an end of a passageway. Because a “stabilizing
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support” excludes the dispensing tip, and because the H-Pette 3611 product includes at
most a single stabilizing support, no reasonable jury could conclude that the Helena’s
product literally infringes the claims at issue.
III. Doctrine of Equivalents
We also agree with the district court that Alpha’s claim of infringement under the
doctrine of equivalents is barred by prosecution history estoppel. Prosecution history
estoppel “limits the doctrine of equivalents when an applicant makes a narrowing
amendment for purposes of patentability, or clearly and unmistakably surrenders
subject matter by arguments made to an examiner.” AquaTex Indus., Inc. v. Techniche
Solutions, 419 F.3d 1373, 1382 (Fed. Cir. 2005).
During prosecution, the patent examiner rejected all claims based upon U.S.
Patent Nos. 3,366,278 (Fobes) and 3,589,820 (Ward). With respect to the “stabilizing
supports” limitation, the patent examiner stated that Fobes fails to teach that the means
for dispensing a predetermined amount of fluid is stabilizing supports that contact the
target surface but Ward teaches such means. Alpha responded by arguing that neither
reference discloses a device capable of dispensing a predetermined amount of fluid. In
particular, Alpha argued: (1) “Fobes is incapable of dispensing predetermined amounts
of fluid to the engaged target surface. . . .” by noting that “Fobes provides no structure
for dispensing a predetermined amount of fluid to the desired surface.” (emphasis in
original); and (2) “Key to this are applicant’s stabilizing supports for engaging the target
surface, so that fluid in the container can be accessed and dispensed from the
dispensing device to the target surface that it engages.” We agree with the district court
that the prosecution history requires that the stabilizing supports must keep the
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2007-1503 7
dispensing opening a predetermined distance from the target surface. Alpha’s
surrender of this subject matter was clear and unmistakable. Further, we agree with the
district court that the ’666 patent teaches that it is the predetermined distance from the
target surface that results in the dispensing of a predetermined amount.
Finally, we also agree with the district court that no reasonable jury could
conclude the accused infringing device is capable of dispensing a predetermined
amount of fluid. The claims require stabilizing supports that keep the dispensing end a
predetermined distance from the target surface which results in a predetermined
amount of fluid being dispensed. In contrast, the H-Pette Model 3611 has a disk that
serves as its single support. The distance between the target surface and the
dispensing end of the accused infringing device is not predetermined but instead will
vary with the angle of the application of the disk to the target surface. When pressure is
applied to the disk of the H-Pette Model 3611, the amount of fluid dispensed depends
on the angle of the application of the disk and the force applied to the disk. We have
considered all of Helena’s arguments, but conclude that the district court was correct
that no reasonable jury could conclude that the accused device is capable of dispensing
a predetermined amount of liquid.
For the foregoing reasons we affirm the judgment of the district court.

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