Appeal from the United States District Court for the Eastern District of Virginia, Case No. 11-CV-0345, Judge James R. Spencer.
Robert M. Tyler, McGuire Woods LLP, of Richmond, Virginia, argued for plaintiff-appellant. With him on the brief were Kristen M. Calleja and William N. Federspiel.
Richard D. Harris, Greenberg Traurig, LLP, of Chicago, Illinois, argued for defendant-appellee. With him on the brief were Kevin J. O'Shea and Matthew J. Levinstein. Of counsel on the brief was Kimberly Warshawsky, of Phoenix, Arizona.
Before O'Malley, Bryson, and Reyna, Circuit Judges.
O'Malley Circuit Judge
Hamilton Beach Brands, Inc. ("Hamilton Beach") appeals from the decision of the United States District Court for the Eastern District of Virginia granting in part Sunbeam Products, Inc.'s ("Sunbeam") motion for summary judgment finding claims 1 and 3–7 ("asserted claims") of U.S. Patent No. 7, 947, 928 ("the '928 patent") invalid as anticipated. The district court also found that Sunbeam did not literally infringe the asserted claims of the '928 patent. Hamilton Beach's appeal is timely, and we have jurisdiction under 28 U.S.C. § 1295(a)(1). For the reasons below, we affirm the district court's ruling that the asserted claims are invalid under the on-sale bar.
Hamilton Beach and Sunbeam are direct competitors in the small kitchen appliance industry. Both Hamilton Beach and Sunbeam sell competing versions of "slow cookers, " which are electrically heated lidded pots that are used to cook food at low temperatures for long periods. See New Oxford English Dictionary (3d ed. 2010) ("slow cooker, n. a large electric pot used for cooking food"). Hamilton Beach is the assignee of the '928 patent, which is directed to a particular type of portable slow cooker.
The '928 patent, filed June 4, 2010, is a continuation of U.S. Patent Application No. 12/255, 188, which, in turn, is a continuation of U.S. Patent Application No. 11/365, 222 ("the '222 application"). The '222 application was filed on March 1, 2006 and issued on February 3, 2009, as U.S. Patent No. 7, 485, 831 ("the '831 patent"). In other words, the '928 patent directly at issue in this case is the "grandchild" of the '831 patent. The '831 patent disclosed a "portable" slow cooker. The claimed slow cooker included clips used to seal the detachable lid of the device on the housing of the cooker. The sealing action provided by the clips is intended to limit leaking during transport. See '831 patent, col. 1, 11. 16-34. The '831 patent provides an image of a preferred embodiment:
'831 patent, col. 2, 11. 29-34. The written description provides that at least one "chip" (element 22) is used, among other elements, to seal the lid onto the body of the slow cooker. Id., col. 5, U. 13-46.
Hamilton Beach's commercial embodiment of its patented invention is the Stay or Go® slow cooker. According to Hamilton Beach, the Stay or Go® slow cooker was a tremendous commercial success and increased Hamilton Beach's market share by over 30 percent. In response to Hamilton Beach's success. Sunbeam, the previous market leader, developed a competing slow cooker called the Cook & Carry®. Sunbeam attempted to design around the '831 patent claims by mounting sealing clips on the lid of the slow cooker rather than on the body.
Hamilton Beach responded to Sunbeam's introduction of its slow cooker by filing a continuation of the '222 application, which eventually matured into the '928 patent. As could be predicted, the '928 patent claimed a slow cooker with sealing clips on the lid of the slow cooker. See '928 patent, col. 8, ll. 34–49. During prosecution of the '928 patent, Hamilton Beach argued that a person of ordinary skill in the art would recognize that placing the clips on the lid was wholly consistent with the original disclosure in the '222 application. The patent office agreed, and the '928 patent issued on May 24, 2011. That same day, Hamilton Beach filed suit alleging that Sunbeam's Cook & Carry® slow cooker infringed the '928 patent. See Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc., 3:11-cv-00345-JRS, ECF No. 1 (E.D. Va. May 24, 2011).
Hamilton Beach alleged that Sunbeam's Cook & Carry® slow cooker infringed claims 1 and 3–7 of the '928 patent ("asserted claims"). Claim 1 is representative and provides:
1. A slow cooker for heating of food stuffs, the slow cooker comprising:
a housing having a base and a side wall extending therefrom to define a heating cavity within the housing, the housing further having a housing rim at a first, free edge of the side ...