Ishida Co. v. Taylor

• Decision Date: 20 July 2000
• Parties: (Fed. Cir. 2000) ISHIDA CO., LTD. and HEAT & CONTROL, INC., Plaintiffs-Appellees, v. ALFRED A. TAYLOR and TNA AUSTRALIA PTY LTD., Defendants-Appellants. 99-1537 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1310

221 F.3d 1310 (Fed. Cir. 2000)

ISHIDA CO., LTD. and HEAT & CONTROL, INC., Plaintiffs-Appellees, v. ALFRED A. TAYLOR and TNA AUSTRALIA PTY LTD., Defendants-Appellants.

99-1537

United States Court of Appeals for the Federal Circuit

DECIDED: July 20, 2000

Appealed from: United States District Court for the Northern District of California Judge Jeremy Fogel

Jai Ho Rho, Hogan & Hartson, LLP, of Los Angeles, California, argued for plaintiffs-appellees. With him on the brief were Stuart Lubitz; and David Lubitz, Hogan & Hartson, of Shinjuku-ku, Tokyo, Japan.

Dennis M. McWilliams, Lee, Mann, Smith, McWilliams, Sweeney & Ohlson, of Chicago, Illinois, argued for defendants-appellants. With him on the brief were William M. Lee, Jr. and William J. Lenz.

Before MICHEL, CLEVENGER, and RADER, Circuit Judges.

RADER, Circuit Judge.

Alfred A. Taylor and TNA Australia Pty Ltd. (collectively, Taylor) claimed that Ishida's Apex Bagmaker infringed U.S. Patent No. 4,663,917 (the '917 patent). After construing the claims of the patent, the district court granted summary judgment of non-infringement. See Ishida Co. v. Alfred A. Taylor, No. C-98-20418-JF (N.D. Cal. Nov. 23, 1998 and Jan. 25, 1999) (Ishida I and Ishida II); Ishida Co. v. Alfred A. Taylor, C-98-20418-JF (N.D. Cal. Aug. 4, 1999) (Ishida III). Because the district court correctly construed the claims and granted summary judgment, this court affirms.

I.

The '917 patent claims a machine for packaging food products such as potato chips. In the packaging process, a continuous tube of package material enters the machine. The machine first seals the bottom end of the tube and feeds an appropriate amount of product into the tube through the open end. Stripper bars converge on two sides of the open end and move down its length to "strip," i.e., move the product towards the sealed end of the tube. Finally, the machine seals the open end of the tube and then severs the completed bag from the tube. This sequence of steps repeats continuously.

The prior art performed all of these operations with either separately driven and timed machines, or with separate components of a single machine, each operating intermittently in the proper sequence. The '917 patent describes, in contrast, a single integrated machine that performs all of the operations in continuous motion. The patented machine features two shafts, which rotate on each side of the tube to strip, seal, and sever. The mechanical design of the machine determines the timing and sequencing of these steps. According to the '917 patent, the invention is faster and more reliable than non-integrated machines.

Arranged and labeled for convenience, claim 1, the only independent claim of the '917 patent, reads:

1. A stripping and sealing assembly for packaging apparatus, said apparatus including a product delivery head, a drive assembly to pass a tubular bag material past said delivery head so that product delivered from said head is located within said tubular bag material, said assembly including

[A] a pair of opposing sealing and stripping means located on opposite sides of said bag material at a position downstream of said delivery head relative to the direction of movement of said bag material through said apparatus, said sealing and stripping means being adapted to cooperate to sealingly close portions of said bag material and strip same,

[B] a first arm means supporting one of said sealing and stripping means, a second arm means supporting the other sealing and stripping means,

[1] and wherein the arms are rotatably driven in synchronism in opposite directions about spaced parallel axes extending generally transverse of the direction of movement of said bag material

[2] so that prior to sealing said bag material said sealing and stripping and means are moved along said bag material to strip same.

Figures 2 and 4 of the specification of the '917 patent illustrate two embodiments of the invention [Tabular or Graphical Material Omitted]

[Tabular or Graphical Material Omitted]

In both embodiments, shafts rotate around fixed axes. These shafts move arms which, in turn, convert the rotational motion into linear motion of the stripper bars on each side of the tube during the stripping part of the cycle. In the first embodiment, Figure 2, the stripping and sealing apparatus is mounted on a spring-loaded carriage, 17, which is attached to an arm 15, which is driven by rotating shaft 16. The carriage is forced by spring 18 to follow a "cam track" 23. The track determines the motion of the arms and the attached apparatus.

In the second embodiment, Figure 4, the rotational motion of the shafts is converted into linear stripper motion in a different way. The stripper bar 49 is mounted on arm 55 which is itself mounted, via pivot assembly 57, on support 47 that is rotated by the shaft 43. Arm 55 is so mounted to the pivot assembly 57 that it can pivot about an axis marked "+" on the teardrop-shaped portion of that assembly (not numbered separately in the patent). The teardrop-shaped portion of the pivot assembly is connected to the support arm 47 by a short bar, also not numbered, which pivots about another axis. As support arm 47 rotates around its fixed axis, the axis of rotation of the short connecting bar of the pivot assembly itself rotates, as does the stripper arm 55, so that the stripper bar 49 moves in orbit around the axis of rotation of shaft 43. By combining this mechanism with its mirror image on the left side of Figure 4, and appropriately choosing the length of the stripper arm 55, the position of its own axis of rotation on the pivot assembly, the length of the short arm of the pivot assembly, and the position at which that short arm is mounted to the support arm 47, the stripper bar can trace out a linear trajectory along the tube axis, even as the support arms are rotating about fixed rotational axes.

Claim 1 includes means-plus-function elements under 35 U.S.C. § 112 ¶ 6 (1994). The district court identified the first paragraph in the rearranged claim above, with the exception of the phrase "said assembly including," as a preamble. The district court interpreted paragraph [A] in the claim as a means-plus-function element, and identified the function of the "stripping and sealing means" as "stripping and sealing." See Ishida I, slip op. at 5. Construing the claim "to cover the corresponding structure, material, or acts described in the specification or equivalents thereof," as required by § 112 ¶ 6, the district court identified the structures corresponding to the stripping/sealing means individually for each embodiment:

For Embodiment 1 [Figure 2]: the four heads 14, the outer ends of two rotatable arms 15, the two stripper bars 22, the four telescoping carriages 17, the four arms 19, the four pivot pins 20, the four springs 18, the four cam followers 26 and the four cam tracks 23.

For Embodiment 2 [Figure 4]: two seal jaws with knife assemblies 46, the outer ends of two rotatable arms 45, two stripper bars 49 and 50, two pivotable members 53 and two pivotable members 55, two supports 47 and two supports 48, four spring loaded pivot assemblies 57 and four plug and socket members 58 and 59.

Id., slip op. at 6.

The district court also construed the first clause of paragraph [B] as a means-plus-function element, identifying the function as that of providing support for the sealing/stripping means. The trial court then identified the corresponding structure as arms 15 in embodiment 1 and arms 45 in embodiment 2. See id., slip op. at 7. The district court declined to interpret clauses [B][1] and [B][2] in the claim as a means-plus-function element "because it identifies particular structure rather than the means for accomplishing a certain function." Id. The district court read the "and wherein" clause in [B][1] to relate to the "stripping and sealing assembly" of the preamble, and not to the "arm means." This reading means that the "spaced parallel axes" element in [B][1] does not relate to a means-plus-function term. Accordingly, under the trial court's reading, the illustrations in the specification do not strictly limit the "spaced parallel axes" structure. Therefore, although both of the embodiments in the specification show axes of rotation that are fixed in time, the district court decided that the phrase "spaced parallel axes" in the claim means only two axes which are "spaced" by some distance such that they do not touch, and that this spacing distance is not necessarily fixed. See id., slip op. at 8.

Ishida's accused device, the Apex, performs the same stripping and sealing functions as does the device of the '917 patent. However, while the '917 invention achieves both the desired motions of its component parts and their timing by purely mechanical means, the Apex controls some of these motions with a computer. For this reason, the Apex device can achieve various trajectories for its sealing and stripping components.

For example, the Apex device can produce the trajectory illustrated in Figure 8A of U.S. Patent No. 5,347,795 to Fukuda,¹ as shown below.

[Tabular or Graphical Material Omitted]

In the accused device, as in the claimed '917 invention, the sealing and stripping components are mounted at the end of a rotating arm, schematically represented in the figure above as number 11. In contrast to the axes of rotation in the illustrated embodiments of the '917 patent, however, the axes of the Apex's arms are not fixed. Instead, these axes move so that the spacing between them changes. Thus, the stripping and sealing elements can follow various paths. In the Apex, the axes of rotation can be displaced along the line III-VI. In the example shown in Figure 8A, the axes move along this line between O and B during a complete sealing/stripping cycle. If the axis of rotation of the arm were fixed at O, the end of the arm would trace a circular trajectory centered at O, e.g., the arc...