Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.

• Decision Date: 19 April 1999
• Docket Number: No. 95-1066,95-1066
• Citation: 172 F.3d 1361,50 USPQ2d 1385
• Parties: FESTO CORPORATION, Plaintiff-Appellee, v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., a/k/a SMC Corporation, and SMC Pneumatics, Inc., Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1361

172 F.3d 1361

50 U.S.P.Q.2d 1385

FESTO CORPORATION, Plaintiff-Appellee, v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., a/k/a SMC

Corporation, and SMC Pneumatics, Inc.,

Defendants-Appellants.

No. 95-1066.

United States Court of Appeals, Federal Circuit.

April 19, 1999.

Charles R. Hoffman, Hoffman & Baron,of Jericho, New York, for plaintiff-appellee. with him on the brief was Gerald T. Bodner.

Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Arlington, Virginia, for defendants-appellants.

Before RICH, NEWMAN, and MICHEL, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

This case returns to us upon grant of certiorari by the United States Supreme Court, followed by vacatur and remand for further consideration in light of the Court's decision in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146, 41 USPQ2d 1865 (1997). ¹ We now affirm the district court's judgment with respect to infringement of the Carroll patent, vacate and remand for further proceedings with respect to the Stoll patent, and reinstate our prior decision on the other issues.

BACKGROUND

Festo Corporation sued Shoketsu Kinzoku Kogyo Kabushiki Co. (also known as SMC Corporation) and SMC Pneumatics, Inc. (collectively "SMC") in the United States District Court for the District of Massachusetts, for infringement of two patents relating to magnetically coupled rodless cylinders. Rodless cylinders are used to repeatedly move articles a short distance, for example in assembly lines. By pneumatic or other fluid pressure a piston is moved within a cylinder, and the movement is translated by coupling of the piston to a yoke or other structure outside of the cylinder, which in turn carries the article to be moved.

For magnetic rodless cylinders the piston is not physically attached or yoked to the outer structure, but instead is magnetically coupled to a slidable outer ring or cylinder called the "follower," that carries the article to be moved. When a burst of air or other fluid pressure moves the piston within the cylinder, by magnetic force the follower and its burden are correspondingly moved. The device, separated into its basic components, is pictured as follows:

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

Trial in the district court was preceded was preceded by an eleven-day evidentiary hearing before a special master. The master's report was followed by various motions, of which the district court granted Festo's motion for summary judgment that United States Patent No. 3,779,401 (the Carroll patent) was infringed under the doctrine of equivalents. The court also granted SMC's motion for judgment of noninfringement by certain models of its rodless cylinders. Literal infringement by certain other models was not disputed.

The remaining issues were tried to a jury. The jury found that there was infringement of United States Patent No. 4,354,125 (the Stoll patent) on grounds of equivalency, sustained the validity of both the Carroll and the Stoll patents, and assessed damages. The court entered judgment accordingly, denying duly made post-trial motions. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., No. 88-1814-PBS (D.Mass. Feb. 3, 1994).

On appeal of the issues of infringement of the Carroll and Stoll patents and damages, the Federal Circuit affirmed the judgments. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 72 F.3d 857, 37 USPQ2d 1161 (Fed.Cir.1995). SMC petitioned for writ of certiorari on two questions, with the following question directed to the doctrine of equivalents (the other question related to procedures involving the special master):

1. In a patent case, can the statutory requirement for patent claims (35 U.S.C. § 112, p2) and the statutory restriction for correcting them (35 U.S.C. § 251, p4) be nullified by the judicially created doctrine of equivalents?

Following its decision in Warner-Jenkinson the Court granted SMC's petition, vacated the Federal Circuit's decision, and remanded the case for further consideration; such a sequence of events is called a "GVR" (grant, vacate, remand). A GVR occurs when "intervening developments, or recent developments that we have reason to believe the court below did not fully consider, reveal a reasonable probability that the decision below rests upon a premise that the lower court would reject if given the opportunity for further consideration, and where it appears that such a redetermination may determine the ultimate outcome of the litigation, ..." Lawrence v. Chater, 516 U.S. 163, 167, 116 S.Ct. 604, 133 L.Ed.2d 545 (1996). The Court espoused the just purpose of avoiding unequal treatment among cases raising similar issues, to "improve the fairness and accuracy of judicial outcomes." Id. at 168, 116 S.Ct. 604. See also Stutson v. United States, 516 U.S. 193, 197, 116 S.Ct. 600, 133 L.Ed.2d 571 (1996) ("a GVR order both promotes fairness and respects the dignity of the Court of Appeals by enabling it to consider potentially relevant decisions and arguments that were not previously before it").

Upon remand this court invited additional briefing of the issues related to the doctrine of equivalents, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 117 F.3d 1385 (Fed.Cir.1997), and heard reargument as to both the Carroll and Stoll patents, including new issues of prosecution history estoppel upon which SMC submitted new evidence.

I THE CARROLL PATENT

The Carroll patent is directed to a magnetic rodless cylinder wherein several cylindrically shaped permanent magnets are

disposed on the piston, and the follower is fitted with several annular permanent magnets. The exterior of the device is shown in Figure 1, wherein the cylinder 10 is encircled by the follower bearing permanent magnets of annular shape 28, and having a gripping device 30 which grasps the article to be moved.

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Relevant to this appeal is the Figure 3 section taken at Y--Y of Figure 1, showing piston end member 22 bolted to magnet 20. The piston bears annular grooves 24 which accommodate sealing rings 26 adapted to engage the inner wall of cylinder 10 and form a fluid-tight seal.

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Reexamined claim 9, the only claim of the Carroll patent in suit, is as follows, with our paragraphing and emphasis added to the subject matter relevant to infringement by equivalency 9. A device for moving articles, which comprises:

a hollow cylinder formed of non-ferrous material and having opposite axial ends;

a piston mounted in the interior of the hollow cylinder and reciprocatingly slidable therein, the piston including a central mounting member disposed axially in the cylinder,

a plurality of cylindrically-shaped permanent magnets mounted on the central mounting member and spaced apart axially from each other, each magnet having a bore formed axially there-through for receiving the central mounting member,

at least one pair of end members mounted on the central mounting member and disposed on opposite axial sides of the plurality of magnets,

a pair of cushion members formed of resilient material, the cushion members being situated near opposite axial ends of the central mounting member to help prevent damage to the piston when the piston contacts an axial end of the cylinder,

and a pair of resilient sealing rings situated near opposite axial ends of the central mounting member and engaging the cylinder to effect a fluid-tight seal therewith;

a body mounted on the exterior of the hollow cylinder and reciprocatingly slidable thereon,

the body including a plurality of annularly shaped permanent magnets surrounding the cylinder and spaced apart from each other,

the permanent magnets of the piston and body being polarized so as to magnetically couple the body to the piston whereby movement of the piston inside the cylinder causes a corresponding movement of the body outside the cylinder,

the body further including means provided thereon for holding on the body an article to be moved; and

means for controlling the admission of pressure fluid into the cylinder and exhaust fluid from the cylinder for moving the piston in the cylinder,

the attractive forces between the permanent magnets of the piston and the body being such that movement of the piston causes corresponding movement of the body below a predetermined load on the body and such that above said predetermined load movement of the piston does not cause corresponding movement of the body.

All of the subject matter of claim 9 was conceded by SMC to be literally present in the accused SMC devices, except for the pair of sealing rings. Instead of a pair of sealing rings situated at opposite ends of the piston, the SMC devices have a single two-way sealing ring at the end of the piston that is in contact with the pressure fluid. The SMC devices also have guide rings situated at each end of the piston.

In Warner-Jenkinson the Court, after concluding that the doctrine of equivalents should be preserved, ² focussed on two aspects thereof: the all-elements rule and prosecution history estoppel. SMC states that the all-elements rule was violated by the district court's decision, and that the Court's new presumption of prosecution history estoppel precludes a holding of infringement, whether or not the all-elements rule also requires a decision in its favor. We reconsider the district court's judgment with respect to both of these aspects.

A THE ALL-ELEMENTS RULE

1. The Prior Proceedings

The substitution of a two-way sealing ring for the claimed pair of sealing rings was the basis of the district court's summary judgment of infringement of claim 9 The district court did not adopt SMC's view of the all-elements rule. Citing precedent wherein the all-elements rule was found to be satisfied when the function of the claimed element was performed...