Am. Innotek, Inc. v. United States, 11-223C

AMERICAN INNOTEK, INC., Plaintiff, v. THE UNITED STATES, Defendant.

No. 11-223C

United States Court of Federal Claims

April 12, 2016¹

Patent Infringement; 28 U.S.C. § 1498; Claim Construction; Claim Differentiation; Prosecution History Disclaimer; Indefiniteness; 35 U.S.C. § 112.

Daniel W. Ernsberger, Behrend & Ernsberger, P.C., 1200 Park Building, 355 Fifth Avenue, Pittsburgh, PA 15222, for Plaintiff.

Benjamin C. Mizer, John J. Fargo, U.S. Department of Justice, Civil Division, Commercial Litigation Branch, Intellectual Property Staff, Washington D.C., P.O. Box 480, Ben Franklin Station, Washington, D.C. 20044, for Defendant. Corey R. Anthony, U.S. Department of Justice, Of Counsel, for Defendant.

SECOND CLAIM CONSTRUCTION OPINION AND ORDER

WILLIAMS, Judge.

This patent infringement case involves bags for the containment and disposal of bodily fluids. Plaintiff, American Innotek, Inc. ("American Innotek"), claims that the United States infringed United States Patent No. 5,116,139 entitled "Fluid Containment Bag" (the "'139 Patent") by purchasing and using the accused product, a containment bag called the "Piddle Pak with Powder." The accused product was manufactured by New York City Industries for the Blind("NYCIB"), a non-profit entity that provides products to the Government on a noncompetitive basis pursuant to the Javits Wagner O'Day Act ("JWOD").²

In 2001, a government entity, the JWOD Committee for Purchase from People Who are Blind or Severely Disabled ("Committee") placed the accused product, NYCIB's Piddle Pak with Powder, on the JWOD procurement list as a mandatory source item for government agencies. Plaintiff alleges that as a result of this listing and the ensuing mandatory purchases and use by government agencies, its patent was infringed. Plaintiff contends that it lost government sales of its competing product, the Flight Extender, a urine containment bag using hydrophilic material, and seeks to recoup damages for the period of April 8, 2005 to May 26, 2009. PX 36 at A88-89.

The Court issued its first claim construction opinion on May 24, 2013, American Innotek, Inc. v. United States, 113 Fed. Cl. 668 (2013), and held a trial on liability and damages from September 16 through September 18, 2014, and September 30 through October 3, 2014. In the briefing following trial, the parties disputed the construction of an additional term that was not previously addressed. On October 6, 2015, the Court held oral argument to further develop the record on claim construction. Following argument, the parties submitted supplemental briefing addressing claim construction, concluding on December 28, 2015.

Findings of Fact³

The '139 Patent

The United States Patent and Trademark Office ("PTO") issued the '139 Patent entitled "Fluid Containment Bag" on May 26, 1992, from U.S. Patent Application No. 657,354 (the "'354 Application"), filed on February 15, 1991. JX 178. The '139 Patent lists four inventors: Ruth E. Young, Daniel L. Young, Richard E. Warrick, and Clarence A. Cassidy, and is assigned to American Innotek, Inc. Id. The '354 Application is a continuation-in-part of application No. 404,734 (the "'734 Application"), filed September 8, 1989, which itself is a continuation-in-part of application No. 3,848 (the "'848 Application"), filed January 14, 1987. Id. Both the '734 and '848 Applications were abandoned. Id. The '139 Patent expired on May 26, 2009. DX 154 ¶ 6.

The '139 Patent teaches a "containment and disposal bag for human bodily fluids." '139 Patent Abstract. The specification provides the following drawing as representative of the '139 Patent:

Image materials not available for display.

'139 Patent Fig. 8.

The '139 Patent contains one independent claim and 16 dependent claims. '139 Patent 8:39 - 10:30. American Innotek asserts that the NYCIB's Piddle Pak with Powder infringes independent Claim 1, and dependent Claims 2-4 and 17.

Independent Claim 1 discloses:

1. A containment bag for a fluid comprising water or water-based liquid such as bodily fluids which comprises:

a bag having a hollow interior defined by two sides meeting at opposite edges, a bottom and a top, with said edges and bottom sealed and said top at least partially open to receiving said;

a gellable hydrophilic material within said bag, said material becoming fully gelled within thirty seconds of said contact with said fluid when said is deposited in said bag, said gelation serving to essentially completely sequester said and prevent said fluid from thereafter being expelled from said bag;funnel means within said interior and having an open top, said funnel means being secured to said bag at said top of said bag, and extending downwardly within said interior to a narrower open bottom for conduction of fluid entering said open top through said funnel means and into said bag, with the open bottom of said funnel being disposed intermediate between said top and bottom of said bag, said open bottom being free from attachment to said sides of said bag such that flow of any unsequestered fluid within said bag back toward said funnel means acts to close said funnel means to prevent escape of said unsequestered fluid from said bag; and

closure means for closing the top of said bag after introduction of said fluid into said bag.

'139 Patent 8:39-66.

The '139 Patent lists in its References Cited a publication called "J. C. Bealer, Dept. of the Air Force, Letter to [General Services Administration ("GSA")] dated Oct. 11, 1989." Mr. James Bealer was a Logistics Manager for the Air Force and Program Manager for the Air Force's Productivity, Reliability, Availability, and Maintainability ("PRAM") Office. PX 64.1 at 8; JX 49. Mr. Bealer led a study from late 1989 through September 1991, comparing American Innotek's products covered by the '139 Patent -- the Brief Relief and Flight Extender -- to the Piddle Pak with Sponge. JX 52; JX 179 at 401. Mr. Bealer's October 11, 1989 letter to GSA -- listed in the '139 Patent and available in the prosecution history -- reads in full:

1. The Productivity, Reliability, Availability and Maintainability (PRAM) Program Office will be funding a test of a new type disposable relief bag to replace the old messy and totally unsanitary relief bag (NSN 8105-00-922-9469). The new relief bag called "Brief Relief" will be fielded to all active flying installations who have requested help in finding a better bag.

2. There still seems to be some confusion as to who will be the final approving authority to implement this product. I believe the new relief bag will speak for itself.

3. The old type relief bag (NSN 8105-00-922-9469) does not meet Mil Spec Mil-B-83665B and in our opinion poses a health hazard to those using them. The new brief relief bag exceeds present Mil Specs and can be used by women.

4. Cost to the government will be 50 percent less and have a 20-year cost savings of $3.3 million.

5. PRAM is presently working on revising the specification to upgrade the requirements and get a better bag in the field.

JX 179 at 401.

The referenced Mil-Spec B-83665B in paragraph 3 above is a military specification -- a United States Department of Defense ("DoD") standard used to provide a government contractor with a product's requirements to satisfy military needs. See 41 C.F.R. § 101-29.216-29.217.Military standards are more informative than industry standards in that a military specification is a DoD requirement, whereas industry standards are voluntary. Compare 41 C.F.R § 101.29.217 (defining a military specification for the Department of Defense Index of Specifications and Standards) with 41 C.F.R. § 101.29.218 (defining industry standards as "voluntary" for DoD).

Specifically, Military Specification Mil-B-83665B ("Mil-Spec B") is a 1981 Department of Defense standard covering "the requirements for one type of disposable plastic bag suitable for the collection, retention, and temporary storage of urine." JX 47 at G1378. Mil-Spec B provides an objective limit on the amount of leakage allowed in a military urine containment bag, prior to closing the bag, through an "inverted leak test." Id. at G1381. The test provides:

4.4.2 Inverted leakage test. This bag shall be filled with a minimum of 550 [cubic centimeters] of water and, without closing, quickly inverted. There shall be no more than 30 [cubic centimeters] of liquid spilled from the opening during a one-minute period.

Id. According to Mr. Bealer's 1989 letter to GSA, present in the '139 Patent specification and prosecution history, Plaintiff's Brief Relief product -- an embodiment of the '139 Patent -- met and exceeded this Mil-Spec B leakage requirement. '139 Patent References Cited; JX 179 at 401.

Discussion

Jurisdiction

This Court has exclusive jurisdiction over patent infringement actions against the Government under 28 U.S.C. § 1498(a). IRIS Corp. v. Japan Airlines Corp., 769 F.3d 1359, 1363 (Fed. Cir. 2014); Uusi, LLC v. United States, 110 Fed. Cl. 604, 609 (2013). Section 1498 provides in relevant part:

Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.

28 U.S.C. § 1498(a) (2012). Actions under § 1498 are limited to monetary damages. Advanced Software Design Co. v. Fed. Reserve Bank of St. Louis, 583 F.3d 1371, 1375 (Fed. Cir. 2009).

As the General Services Administration and Defense Logistics Agency purchased 981,250 Piddle Paks with Powder from NYCIB from April 8, 2005 to May 26, 2009, for military use, the Court has jurisdiction over the instant patent infringement action under 28 U.S.C. § 1498 for Defendant's alleged use of a patented invention without authority from the Patent Owner, American Innotek.

Claim Construction

The...