Hi-Life Prods., Inc. v. Am. Nat'l Water-Mattress Corp., 842 F.2d 323 (Fed. Cir. 1988). · Go Syfert
Hi-Life Prods., Inc. v. Am. Nat'l Water-Mattress Corp., 842 F.2d 323 (Fed. Cir. 1988). Cases Citing This Book View Copy Cite
60 citation events (7 in the last 25 years) across 10 distinct courts.
Strongest positive: Media Queue, LLC v. Netflix, Inc. (cand, 2009-12-01)
Treatment trajectory · 1988 → 2026 · click a year to view as-of
1988 2007 2026
Top citers, strongest first. 27 distinct citers. How cited ↗
cited Cited as authority (rule) Media Queue, LLC v. Netflix, Inc.
N.D. Cal. · 2009 · confidence medium
Hi-Life Products, Inc. v. American National Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988).
cited Cited as authority (rule) ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.
N.D. Cal. · 2008 · confidence medium
Nat’l Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988). 3.
cited Cited as authority (rule) Regents of the University of California v. Micro Therapeutics, Inc.
N.D. Cal. · 2007 · confidence medium
Hi-Life Products, Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988).
cited Cited as authority (rule) Boston Scientific Corp. v. JOHNSTON & JOHNSON
N.D. Cal. · 2007 · confidence medium
Hi-Life Products, Inc. v. American National Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988).
cited Cited as authority (rule) Pixion, Inc. v. Placeware, Inc.
N.D. Cal. · 2005 · confidence medium
Hi-Life Products, Inc. v. American National Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988).
discussed Cited as authority (rule) Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., A/K/A Smc Corporation, and Smc Pneumatics, Inc. (2×)
Fed. Cir. · 2000 · confidence medium
Co., Inc., 793 F.2d 1279, 1284 , 230 U.S.P.Q. 45, 48 (Fed.Cir.1986) (Ne wman, Baldwin, Cowen) (“Amendment of claims during patent prosecution does not necessarily bar all benefit of the doctrine of equivalents.”); Great Northern Corp. v. Davis Core & Pad Co., Inc., 782 F.2d 159, 166 , 228 U.S.P.Q. 356, 359-60 (Fed.Cir.1986) (Rich, Markey, Kashiwa); Moeller v. Ionetics, Inc., 794 F.2d 653, 659 , 229 U.S.P.Q. 992, 996 (Fed.Cir.1986) (Nichols, Friedman, Smith); Chemical Eng’g Corp. v. Essef Indus., Inc., 795 F.2d 1565 , 1573 n. 8, 230 U.S.P.Q. 385 , 391 n. 8 (Fed.Cir.1986) (Markey, Rich, Ba…
discussed Cited as authority (rule) Antonious v. Spalding & Evenflo Companies, Inc.
D. Maryland · 1998 · confidence medium
Co., 54 F.3d 1570, 1580 (Fed.Cir.), cert. denied, 516 U.S. 987 , 116 S.Ct. 515 , 133 L.Ed.2d 424 (1995) (quoting Hi-Life Products, Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988)).
cited Cited as authority (rule) Carlisle Plastics, Inc. v. Spotless Enterprises, Inc.
E.D.N.Y · 1998 · confidence medium
Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988).
cited Cited as authority (rule) Kransco Manufacturing, Inc., Kransco and Mattel Power Wheels, Inc., Plaintiffs/cross-Appellants v. Hayes Specialties Corporation
Fed. Cir. · 1996 · confidence medium
Water-Mattress Corp., 842 F.2d 323, 325-26 , 6 USPQ2d 1132, 1134 (Fed.Cir.1988).
discussed Cited as authority (rule) Pall Corporation, Plaintiff/cross-Appellant v. Micron Separations, Inc. (2×)
Fed. Cir. · 1995 · confidence medium
Laitram v. NEC, 952 F.2d at 1361 , 21 USPQ2d at 1280; Hi-Life Products, Inc. v. American National Water-Mattress Corp., 842 F.2d 323, 325 , 6 USPQ2d 1132, 1134 (Fed.Cir.1988).
discussed Cited as authority (rule) Southwall Technologies, Inc. v. Cardinal Ig Company
Fed. Cir. · 1995 · confidence medium
When a court applies the doctrine of prosecution history estoppel to limit the scope of equivalents, “a close examination must be made as to, not only what was surrendered, but also the reason for such a surrender.” Hi-Life Prods., Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325 , 6 USPQ2d 1132, 1134 (Fed.Cir.1988) (quoting Bayer Aktiengesellschaft v. Duphar Int’l Research B.V., 738 F.2d 1237, 1243 , 222 USPQ 649, 653 (Fed.Cir.1984).
cited Cited as authority (rule) Sage Products, Inc. v. Devon Industries, Inc.
C.D. Cal. · 1994 · confidence medium
Hi-Life Products, Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988).
discussed Cited as authority (rule) North American Vaccine, Inc. And National Research Council of Canada v. American Cyanamid Company and Praxis Biologics, Inc. (2×)
Fed. Cir. · 1993 · confidence medium
Hi-Life Products., Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325 , 6 USPQ2d 1132, 1133 (Fed.Cir.1988).
cited Cited as authority (rule) Manildra Milling Corporation, Plaintiff/cross-Appellant v. Ogilvie Mills, Inc. v. Henkel Corporation and Henkel of America, Inc., Third-Party and John Thomas Honan, Counterclaim
3rd Cir. · 1993 · confidence medium
Hi-Life Prods., Inc. v. American Nat'l Water-Mattress Corp., 842 F.2d 323, 325 , 6 USPQ2d 1132, 1133 (Fed.Cir.1988).
discussed Cited as authority (rule) The Laitram Corporation v. Nec Corporation, Nec Information Systems, Inc., and Sears, Roebuck and Company (2×)
Fed. Cir. · 1992 · confidence medium
Cir.), cert. denied, 488 U.S. 927 , 109 S.Ct. 312 , 102 L.Ed.2d 330 (1988) (“The purpose of an amendment must be taken into account when considering prosecution history estoppel.”); Hi-Life Products, Inc. v. American National Water-Mattress *1362 Corp., 842 F.2d 323, 325 , 6 USPQ2d 1132, 1134 (Fed.Cir.1988) (“ ‘a close examination must be made as to, not only what was surrendered, but also the reason for such a surrender’ ”) (quoting Bayer Aktiengesellschaft v. Duphar International Research B.V., 738 F.2d 1237, 1243 , 222 USPQ 649, 653 (Fed.Cir.1984)); Hughes Aircraft Co. v. United…
cited Cited as authority (rule) Mobil Oil Corp. v. Amoco Chemicals Corp.
D. Del. · 1991 · confidence medium
Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988).
discussed Cited as authority (rule) Insituform of North America, Inc. v. Midwest Pipeliners, Inc.
S.D. Ohio · 1991 · confidence medium
“Literal infringement requires that the accused [device] embody every limitation of the asserted claims.” Hi-Life Products, Inc. v. American National Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988).
cited Cited as authority (rule) Spindelfabrik Suessen-Schurr, Stahlecker & Grill GmbH v. Savio S.P.A.
W.D.N.C. · 1991 · confidence medium
Hi-Life Products, Inc. v. American National Water-Mattress Corp., 842 F.2d 323, 325 (Fed.
cited Cited as authority (rule) Bert O. Jonsson, Besam Ab and Besam, Inc. v. The Stanley Works, the Stanley Works v. Besam, Inc.
Fed. Cir. · 1990 · confidence medium
See also E.I. du Pont de Nemours, 849 F.2d at 1438 , 7 USPQ2d at 1135; Hi-Life Prods., Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325 , 6 USPQ2d 1132, 1134 (Fed.Cir.1988).
discussed Cited as authority (rule) Gary G. Klein v. Cannondale Corporation
Fed. Cir. · 1989 · confidence medium
OPINION 7 * A. Material Facts 8 Summary judgment is appropriate only "when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law." Hi-Life Prods., Inc. v. American Nat'l Water-Mattress Corp., 842 F.2d 323, 325 , 6 USPQ2d 1132, 1133 (Fed.Cir.1988).
cited Cited as authority (rule) United States v. Toshoku America, Inc. And Federal Insurance Co., Defendants/cross-Appellants. Toshoku America, Inc., Third-Party/plaintiff v. Catz International, Inc., Third-Party/defendant and Fourth-Party/plaintiff v. Southern Commodities, Inc., Fourth-Party/defendant
3rd Cir. · 1989 · confidence medium
Rule 56(d) of the Rules of the United States Court of International Trade; Hi-Life Prods., Inc. v. American Nat'l Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988); SRI Int'l v. Matsushita Elec.
cited Cited as authority (rule) United States v. Toshoku America, Inc.
Fed. Cir. · 1989 · confidence medium
Rule 56(d) of the Rules of the United States Court of International Trade; Hi-Life Prods., Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988); SRI Int’l v. Matsushita Elec.
examined Cited as authority (rule) Hormone Research Foundation v. GENENTECH, INC. (3×) also: Cited "see"
N.D. Cal. · 1988 · confidence medium
The issue before the court is whether allowing plaintiffs to construe the Fig. 2 claims to encompass the accused products would “resurrect subject matter given up during prosecution to overcome rejections based on prior art.” Hi-Life Products v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir. 1988).
cited Cited "see" Transonic Systems, Inc. v. Fresenius USA, Inc.
N.D. Cal. · 2006 · signal: see · confidence high
See Hi-Life Products, Inc. v. American National Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988).
cited Cited "see" Spotless Enterprises, Inc. v. Carlisle Plastics, Inc.
E.D.N.Y · 2001 · signal: see · confidence high
See Hi-Life Prods., Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323 (Fed.Cir. 1988).
discussed Cited "see" Devon Industries, Inc. v. American Medical Manufacturing, Inc. (2×)
Fed. Cir. · 1994 · signal: see · confidence high
See Hi-Life Prods., Inc. v. American Nat'l Water-Mattress Corp., 842 F.2d 323, 325 , 6 USPQ2d 1132, 1133 (Fed.Cir.1988) (a determination of literal infringement requires that each limitation in the asserted claims be present in the accused device).
examined Cited "see" Advanced Cardiovascular Systems, Inc. v. Scimed Life Systems, Inc. (4×)
Fed. Cir. · 1989 · signal: see · confidence high
See Hi-Life Prods., Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325 , 6 USPQ2d 1132, 1133 (Fed.Cir.1988) (requiring both an absence of a genuine issue of material fact and entitlement to judgment as a matter of law before granting summary judgment).
Retrieving the full opinion text from the archive…
HI-LIFE PRODUCTS, INC., Plaintiff-Appellant,
v.
AMERICAN NATIONAL WATER-MATTRESS CORP., Defendant-Appellee
87-1587.
Court of Appeals for the Federal Circuit.
Mar 17, 1988.
842 F.2d 323
Harold L. Jackson, Jackson & Jones, Tus-tin, Cal., argued for plaintiff-appellant. With him on the brief was Stanley R. Jones., John W. Chestnut, Tilton, Fallon, Lung-mas & Chestnut, Chicago, Ill., argued for defendant-appellee. With him on the brief was Vasilios D. Dossas.
Markey, Davis, Bissell.
Cited by 35 opinions  |  Published
Reporter's Syllabus — editorial summary, not part of the Court's opinion

Harold L. Jackson, Jackson & Jones, Tustin, Cal., argued for plaintiff-appellant. With him on the brief was Stanley R. Jones.

John W. Chestnut, Tilton, Fallon, Lungmas & Chestnut, Chicago, Ill., argued for defendant-appellee. With him on the brief was Vasilios D. Dossas.

Before MARKEY, Chief Judge, and DAVIS and BISSELL, Circuit Judges.

BISSELL, Circuit Judge.

Lead Opinion

BISSELL, Circuit Judge.

Hi-Life Products, Inc. (Hi-Life) appeals from that portion of a final judgment of the United States District Court for the Central District of California providing that “[n]one of [American National Water-Mattress Corp.'s (AM-NAT)] waterbeds infringe [sic] [Hi-Life’s United States Letters] Patent No. 4,411,033....” See Hi-Life Prods., Inc. v. American Nat’l Water-Mattress Corp., 2 USPQ2d 1886 (1987) (order granting AM-NAT’s partial summary judgment motion, entered March 31, 1987 [available on WESTLAW, 1987 WL 16879] and final judgment entered July 30, 1987). We vacate and remand.

BACKGROUND

The 4,411,033 (’033) patent describes and claims a waterbed mattress containing a wave dampening structure made from an insert of open cell foam that has a material of low specific gravity disposed throughout its body. The open cells in the foam trap and restrict the movement of the water, thereby dampening excessive wave motion. To be effective in dampening the waves, the foam body must float at the top of the container. The inventor discovered and disclosed in the ’033 patent that by adding a lightweight material to the foam slab, the resulting structure would float and provide excellent wave dampening characteristics.

The ’033 patent, assigned to United Foam Corporation (UFC), issued October 5, 1983. UFC filed for bankruptcy in 1986. AM-NAT and Hi-Life both submitted bids for UFC’s assets, which included the '033 patent. Hi-Life was the successful bidder, but even before the transfer of the assets to Hi-Life was completed, AM-NAT commenced marketing a waterbed mattress similar to the waterbed mattress disclosed in the ’033 patent.

Shortly thereafter, Hi-Life filed suit against AM-NAT, alleging, inter alia, infringement of the ’033 patent. Both parties filed motions for partial summary judgment on the issue of infringement. In a March 31, 1987 order, the district court granted AM-NAT’s motion for partial summary judgment of noninfringement and denied Hi-Life’s cross-motion. In that order the district court found that the accused devices did not literally infringe the ’033 patent. The court, in addressing the issue of infringement under the doctrine of equivalents, reasoned that prosecution history estoppel precluded application of the doctrine. After the district court allowed both parties to dismiss the remaining issues without prejudice, final judgment of noninfringement was entered on July 30, 1987.

ISSUES

1. Whether the district court clearly erred in finding that the accused waterbed mattresses did not literally infringe the '033 patent.

2. Whether the district court erred in holding that Hi-Life was estopped from contending that the accused waterbed mat[*325] tresses infringed the ’033 patent under the doctrine of equivalents.

OPINION

I

[1] Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56; SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116, 227 USPQ 577, 581 (Fed.Cir.1985) (in banc). “[T]he district court must view the evidence in a light most favorable to the nonmovant and draw all reasonable inferences in its favor and must resolve all doubt over factual issues in favor of the party opposing summary judgment.” Id. (citations omitted).

On appeal, Hi-Life argues that AM-NAT’s waterbed mattresses literally infringe claims 1, 12, 16 and 21-28. Literal infringement requires that the accused waterbed mattresses embody every limitation of the asserted claims. Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 257, 225 USPQ 240, 241 (Fed.Cir.1985). Here, the district court correctly determined that AM-NAT’s waterbed mattresses did not literally infringe the claims of the ’033 patent because the open cell foam insert did not have a material of low specific gravity disposed throughout its body. Instead, AM-NAT’s foam insert floats because a sheet of low specific gravity material is attached to the bottom surface of the foam body. Hi-Life, 2 USPQ2d at 1887 [available on WESTLAW, 1987 WL 16879]. After reviewing the record and carefully considering Hi-Life’s arguments with all reasonable inferences drawn in its favor, we agree with the district court’s decision on the issue of literal infringement.

II

The district court never reached the issue of infringement under the doctrine of equivalents. Instead, it concluded as a matter of law that Hi-Life was estopped from contending that AM-NAT’s waterbeds infringe under the doctrine of equivalents because the claims were rejected by the patent examiner as unpatentable until amended to describe a material of low specific gravity disposed throughout the body of the foam. Id. We disagree.

The doctrine of prosecution history estoppel precludes a patentee from asserting equivalents that would resurrect subject matter given up during prosecution to overcome rejections based on prior art. Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1362, 219 USPQ 473, 481 (Fed.Cir.1983). When the doctrine “is invoked, a close examination must be made as to, not only what was surrendered, but also the reason for such a surrender.” Bayer Aktiengesellschaft v. Duphar Int’l Research B.V., 738 F.2d 1237, 1243, 222 USPQ 649, 653 (Fed.Cir.1984). At issue here are the equivalents that the patentee gave up by adopting the examiner’s proposed amendment. We have rejected the view that all amendments to claims operate as an estop-pel in finding infringement under the doctrine of equivalents:

Amendment of claims is a common practice in prosecution of patent applications. No reason or warrant exists for limiting application of the doctrine of equivalents to those comparatively few claims allowed exactly as originally filed and never amended. Amendments may be of different types and may serve different functions. Depending on the nature and purpose of an amendment, it may have a limiting effect within a spectrum ranging from great to small to zero.

Hughes, 717 F.2d at 1363, 219 USPQ at 481.

During prosecution of the ’033 patent application, the examiner rejected the claims set forth as unpatentable based on a number of prior art references, including non-waterbed art that taught disposing a lightweight material in an open cell foam structure. In a telephone interview, however, the examiner determined that it would not have been obvious to use such a prior art structure as a wave dampener in a waterbed mattress. The examiner suggested amending independent claim 1 to add the following language: “a material of low specific gravity disposed throughout its[*326] body, said material of low specific gravity causing the foam to float in the liquid, above the bottom wall of the container, close to the top wall of the container.” Claim 1 was duly amended and independent claim 26 was similarly amended, adding almost identical language. Thereafter, the '033 patent issued.

In this case, we cannot agree with the district court that these amendments preclude Hi-Life from asserting infringement under the doctrine of equivalents. Here, the patentee did not amend the claims to avoid cited prior art, but rather to better define a patentable invention. The limitation of disposing a lightweight material throughout an open cell foam was old in the non-waterbed art and did not in itself render the claims patentable. Accordingly, prosecution history estoppel was not created by the mere presence of the “disposed throughout” limitation in the claims. We have reviewed the other prior art of record and can find no reference that would support the district court’s holding. Therefore, the amended claims are entitled to some range of equivalents. We leave the breadth of that range to the district court’s determination.

CONCLUSION

We agree with the district court’s analysis that none of the accused devices literally infringe claims 1, 12, 16 and 21-28 of the '033 patent. However, we must vacate the judgment of noninfringement of the ’033 patent because the district court erred in its application of prosecution history estoppel. We remand for a determination of whether there is infringement, under the doctrine of equivalents, of claims 1, 12, 16 and 21-28 of the ’033 patent.

VACATED AND REMANDED.

Dissent

DAVIS, Circuit Judge,

dissenting.

I would affirm on the ground that the prosecution history prevents Hi-Life from showing that there was infringement under the doctrine of equivalents.[1]

When the examiner agreed to amend claim 1 to include a “limitation of low specific gravity material disposed throughout the body of the foam baffle (or wave dampening device)” he expressly added that this limitation “is not taught by the prior art and renders the claims patentable ” (emphasis added). To me this means that that limitation was a sine qua non for allowance of the claims. As such, the limitation is a necessary, integral part of the prosecution history and governs the application of the doctrine of equivalents. It is also plain to me (as it was to the district court) that the alleged infringer’s device does not meet that limitation because the infringer’s sheet was not disposed throughout the baffle (as demanded by the very limitation which the examiner thought made the claims “patentable”). Hi-Life fully accepted this amendment though it had the choice to reject it and to appeal to the Board of Appeals. By accepting that limitation, Hi-Life made it a full, necessary and integral part of the claims.

Accordingly, my view is that the district court correctly held that plaintiff Hi-Life “is estopped by prosecution history estop-pel from interpreting the claims of Patent No. 4,411,033 in a way which would cover defendant’s [ANWMC's] waterbeds.”

1

I agree with the majority that the district court correctly determined that AM-NAT’s waterbed mattress did not literally infringe the asserted claims of the '033 patent.