Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc.

• Citation: 46 USPQ2d 1752,145 F.3d 1303
• Decision Date: 14 May 1998
• Docket Number: Nos. 97-1194,97-1401,s. 97-1194
• Parties: CHIUMINATTA CONCRETE CONCEPTS, INC., Edward Chiuminatta, and Alan R. Chiuminatta, Plaintiffs-Appellees, v. CARDINAL INDUSTRIES, INC. and Green Machine Corporation, Defendants-Appellants, and Allen Engineering Corporation, Defendant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1303

145 F.3d 1303

46 U.S.P.Q.2d 1752

CHIUMINATTA CONCRETE CONCEPTS, INC., Edward Chiuminatta, and Alan R. Chiuminatta, Plaintiffs-Appellees, v. CARDINAL INDUSTRIES, INC. and Green Machine Corporation Defendants-Appellants and Allen Engineering Corporation, Defendant.

Nos. 97-1194, 97-1401.

United States Court of Appeals Federal Circuit.

Decided May 14, 1998.

Rehearing Denied; Suggestion for Rehearing In Banc

Declined July 2, 1998.

Karen Vogel Weil, Knobbe, Martens, Olson & Bear, LLP, Newport Beach, CA, argued for plaintiffs-appellees. On the brief were James F. Lesniak, Paul A. Stewart, and Michael K. Friedland.

Joseph F. Posillico, Synnestvedt & Lechner, Philadelphia, PA, argued for defendants-appellants. On the brief was Gary A. Hecht.

Before MICHEL, PLAGER, and LOURIE, Circuit Judges.

LOURIE, Circuit Judge.

Cardinal Industries, Inc. and Green Machine Corporation (collectively Cardinal) appeal from the decision of the United States District Court for the Central District of California granting Chiuminatta Concrete Concepts, Inc., Edward Chiuminatta, and Alan Chiuminatta's (collectively Chiuminatta's) motion for partial summary judgment of infringement of two of Chiuminatta's patents. Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., Docket No. CV 95-4995 (C.D.Cal. Nov. 7, 1996). Cardinal also appeals from the district court's decision dismissing its affirmative defenses of patent invalidity and unenforceability and releasing the preliminary injunction bond following the entry of a permanent injunction on December 12, 1996.

The district court found that Cardinal infringed claim 11, an apparatus claim, of U.S. Patent B1 5,056,499 and infringed claims 1, 2, and 3, all method claims, of U.S. Patent B1 4,889,675. The court further concluded that the patents were neither invalid nor unenforceable. Because the district court erroneously construed a means-plus-function limitation of the apparatus claims, we reverse the summary judgment of infringement of that patent. We affirm the decision in all other respects.

BACKGROUND

Chiuminatta owns two patents, the '499 patent and the '675 patent relating to an apparatus and method, respectively, for cutting concrete before it has completely cured to a hardened condition. The apparatus claims are directed to a rotary saw that has two significant features. First, the leading edge of the saw rotates in an upward direction so as to prevent the accumulation of displaced wet concrete in the groove created behind the saw. Second, a support surface applies downward pressure at the point where the saw blade emerges from the concrete in order to prevent the upwardly rotating blade from damaging the concrete (commonly referred to as raveling, chipping, spalling, or cracking).

Claim 11 of the '499 patent (the sole apparatus claim on appeal) reads, with emphasis added, as follows:

A saw for cutting concrete even before the concrete has hardened to its typical, rock-like hardness, comprising:

a circular concrete cutting blade having sides and a leading cutting edge;

a motor connected to rotate the concrete cutting blade in an up-cut rotation;

means connected to the saw for supporting the surface of the concrete adjacent the leading edge of the cutting blade to inhibit chipping, spalling, or cracking of the concrete surface during cutting;

wheel means for movably supporting the saw on the surface of the concrete during cutting.

As illustrated in the following figure adapted from the patent, the only structure disclosed for supporting the surface of the concrete is a skid plate.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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The written description summarizes the invention, stating:

An apparatus is provided for cutting a groove in soft concrete. The apparatus can cut the concrete anytime after the concrete is finished and before the concrete attains its rock like hardness

....

The soft concrete saw has a base plate on which are mounted two wheels and a skid plate , each of which contacts the concrete to provide three point support on the concrete.... The saw blade extends through a ... slot in the skid plate, in order to project into and cut the concrete below the skid plate.

The dimensions of the slot in the skid plate are selected to support the concrete immediately adjacent the saw blade so as to prevent cracking of the concrete as it is cut.

'499 patent, col. 3, ll. 8-27.

Cardinal manufactures and sells the accused device, the Green Machine TM saw. It, too, uses a rotary blade that rotates upward at its leading edge. Additionally, as illustrated above, the accused device has two small wheels mounted adjacent to the leading edge of the saw blade . Cardinal concedes that these wheels support the surface of the concrete in order to prevent chipping, spalling, or cracking.

Cardinal also appeals the summary judgment of infringement of the asserted method claims of the '675 patent. Claim 3, which is representative of the asserted claims, reads, with emphasis added, as follows:

A method of cutting grooves in concrete, comprising the steps of:

...

cutting a groove in the surface with a rotating blade having an up-cut rotation and having a cutting edge and sides, the cutting occurring before the concrete has hardened sufficiently to allow cutting by a conventional abrasive concrete saw, while still producing an acceptable surface finish ... the cutting step occurring when the concrete has a hardness such that a 1.125 inch diameter steel rod with a flat end, and weighing about 5.75 pounds, would cause an indentation in the surface of the concrete of about 1/32 to 1/2 of an inch when the rod is dropped from a height of about 24 inches above the surface of the concrete; and supporting the surface immediately adjacent the sides of the cutting blade....

It is undisputed that the wheels in the accused device meet the "supporting the surface" step of the claimed method. However, Cardinal asserts that the accused device in normal commercial use does not perform the cutting step under the claimed conditions.

The district court ruled in favor of Chiuminatta. It held that (1) Cardinal's manufacture and sale of the accused device infringed claim 11 of the '499 patent, (2) Cardinal's manufacture and sale of the accused device induced infringement of method claims 1, 2 and 3 of the '675 patent, (3) the '675 patent had not been shown to be invalid under 35 U.S.C. § 103 for obviousness, and (4) the '675 patent is not unenforceable. The district court then granted Chiuminatta's motion for a permanent injunction and released Chiuminatta's preliminary injunction bond. Cardinal appeals each of the rulings to this court. We have jurisdiction pursuant to 28 U.S.C. § 1292(c)(1) (1994).

DISCUSSION

We review a district court's grant of summary judgment de novo. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994). Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). Thus, summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the opponent. Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274, 35 USPQ2d 1035, 1038 (Fed.Cir.1995).

A. The '499 Patent

1. Literal Infringement

Cardinal asserts that the district court erred by granting Chiuminatta's motion for summary judgment of infringement of claim 11 of the '499 patent and that the court erroneously construed the means limitation in that claim to include every conceivable support surface. Cardinal concedes that the accused device meets every claim limitation except the "means ... for supporting the surface of the concrete." However, Cardinal argues that under a proper analysis, that means limitation should be construed as corresponding only to the disclosed skid plate and to structures that are equivalent to that skid plate. An equivalent structure, argues Cardinal, is one that includes the essential structural components of the disclosed apparatus. Cardinal identifies in its brief the key essential structural component as a "hard plate fixedly mounted to the base of the saw," although Cardinal concedes that the particular shape of the plate and its means for attachment are not essential.

Chiuminatta responds that the district court correctly construed the means-plus-function limitation and properly concluded as a matter of law that the limitation reads on the accused device. Specifically, Chiuminatta argues that the limitation was properly construed as being broader than the disclosed skid plate to encompass any "support surface." Chiuminatta asserts that the court correctly premised its infringement finding on the observation that "both [the structure in the patent and the wheels of the accused device] consist of flat planes on either side of the saw blade which hold the concrete in place."

We must determine whether the district court erred in concluding that the means limitation reads on the accused device as a matter of law. Neither party argues that there are disputed fact questions regarding the accused device. Both parties agree that the means-plus-function clause is the only limitation in dispute and that all other limitations are met by the accused device. What they dispute is whether the scope of the means clause is broad enough to encompass wheels such as those on the accused device.

A means-plus-function limitation contemplated by 35 U.S.C. § 112, p 6 (1994) recites a function to be performed rather than definite structure or materials for performing that function. Such a limitation The...