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Pall Corporation v. PTI Technologies, Inc.

Summary judgment of non-infringement in favor of plaintiff affirmed as to one patent and vacated as to another; case remanded so that district court could determine whether a person of ordinary skill in the art would conclude that coverage of the alleged infringing devices was disclosed during prosecution.

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Appealed from: The United States District Court for the Eastern District of New York

Judge David G. Trager

PTI Technologies Inc. (“PTI”) appeals from the decision of the United States District Court for the Eastern District of New York granting the motion of Pall Corporation (“Pall”) for summary judgment of non-infringement of U.S. Patent No. 4,663,041 (the “’041 patent”), the dismissal of PTI’s counterclaim for infringement of the ’041 patent, and the denial of PTI’s request for a permanent injunction. Pall Corp. v. PTI Techs. Inc., Nos. CV-97-1134, CV-98-2871 (E.D.N.Y. Jan. 11, 2000) (“judgment” or “Pall II”). Pall cross-appeals the district court’s grant of PTI’s motion for summary judgment of non-infringement of U.S. Patent No. 4,609,465 (the “’465 patent”), and the denial of Pall’s request for a permanent injunction. We affirm the district court’s grant of summary judgment of non-infringement of the ’041 patent. Although we find that the district court adopted an improper construction of the “end cap” limitation of claim 1 of the ’465 patent based on the claim language and the specification, we hold that the ’465 patent should be construed to exclude any interpretation that includes subject matter disclaimed during prosecution, and we vacate and remand so that the district court may determine whether a person of ordinary skill in the art would conclude that coverage of the alleged infringing devices was disclaimed during prosecution.

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