324 F.3d 1346 (Fed. Cir. 2003), 02-1030, Riverwood Intern. Corp. v. R.A. Jones & Co., Inc.
|Citation:||324 F.3d 1346|
|Party Name:||Riverwood Intern. Corp. v. R.A. Jones & Co., Inc.|
|Case Date:||March 31, 2003|
|Court:||United States Courts of Appeals, Court of Appeals for the Federal Circuit|
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John S. Kiernan, Debevoise & Plimpton, of New York, NY, argued for plaintiff-appellant. With him on the brief was Dennis H. Hranitzky. Of counsel on the brief were Wellington M. Manning, Jr. and Tim F. Williams, Dority & Manning, P.A., of Greenville South Carolina.
Gregory F. Ahrens, Wood, Herron & Evans, L.L.P., of Cincinnati, OH, argued for defendant-cross appellant. With him on the brief was P. Andrew Blatt. Of counsel on the brief was Bryan Cermak, IWKA Holding Corporation, of Troy, Michigan. Of counsel was Jerry B. Blackstock, Powell, Goldstein, Frazer & Murphy, L.L.P., of Atlanta, GA.
Before CLEVENGER, SCHALL and LINN, Circuit Judges.
LINN, Circuit Judge.
Riverwood International Corporation ("Riverwood") appeals from a final judgment of invalidity of certain claims of its U.S. Patent Nos. 5,666,789 ("the '789 Únt") and 5,692,361 ("the '361 patent"), entered by the United States District Court for the Northern District of Georgia in favor of the defendant R.A. Jones & Co. ("Jones"). Riverwood Int'l Corp. v. R.A. Jones & Co., No. 98-cv-2840-BBM (N.D.Ga. 2001). Jones conditionally cross-appeals the portion of the final judgment finding infringement of certain claims of the '789 and '361 patents, specifically contending that the district court erroneously construed the term "flight bars" by not limiting it to unitary structural members. We hold that the district court erred as a matter of law in its conclusion that U.S. Patent No. 5,241,806 ("the '806 patent") is prior art by admission to the two patents-in-suit. We also hold on the cross-appeal that the district court did not err by construing the term flight bars to include a plurality of pieces, not just unitary structural members. Accordingly, we vacate the holding that the '806 patent is prior art by admission, vacate the judgment of invalidity, affirm the claim construction issue on cross-appeal, and remand the case for a determination of the remaining inventorship issues.
Plaintiff Riverwood owns the '806, '789, and '361 patents ("patents-in-suit") directed to packaging methods and machines, such as those used in the food and beverage industries to group cans and bottles and load them into cartons. Jones is a machine manufacturer and competitor to Riverwood. Riverwood filed suit against Jones on September 29, 1998, alleging that Jones' cartoning machines infringed certain claims of the patents-in-suit. Jones counterclaimed, alleging invalidity of the asserted claims.
Kelley W. Ziegler is a named inventor on each of the patents-in-suit. The '806 patent, directed to various cartoner assemblies for loading article groups into open carton sleeves, issued on September 7, 1993, on an application filed on March 24, 1992. Ziegler, Allen L. Olson, and Curt W. Lovold are the three named inventors on the '806 patent. The '789 patent is directed to various continuous motion cartoning devices for loading stacked article groups into cartons and to a method of continuously loading cartons with stacked article groups having upper and lower sub-groups of articles. The '789 patent issued on September 16, 1997, on a continuation application with an effective filing date of March 1, 1993. Ziegler is the sole named inventor on the '789 patent. The '361 patent, directed to a continuous method of forming stacked or multiple layer article groups, issued on December 2, 1997, on a continuation application with an effective filing date of March 25, 1993. Ziegler, Jeffrey A. Lashyro, and Gary J. Vulgamore are the three named inventors on the '361 patent.
All of the asserted claims of the '806 patent found to be infringed depend from claim 1, which was previously held to be invalid. See Riverwood Int'l Corp. v. Mead Corp., 212 F.3d 1365, 1367, 54 USPQ2d 1763, 1766 (Fed.Cir. 2000). Claim 2 is representative of the dependent claims found to infringe. Claims 1 and 2 recite:
1. A cartoner assembly for loading article groups into open carton sleeves comprising:
a) an article infeed conveyor having a plurality of parallel guide structures fixed thereabove, said article infeed conveyor supplying a first stream of articles;
b) an article selecting conveyor having a plurality of spaced, parallel and transversely oriented fixed flight bars and a longitudinal travel path disposed adjacent to and parallel with said article infeed conveyor, said flight bars intersecting said article infeed guide structures at a predetermined angle to form and move a second longitudinal stream of article groups of a predetermined pattern;
c) a carton supply conveyor having spaced carton flight lugs synchronized and moving adjacent to and parallel with said article selecting conveyor to provide a third longitudinal stream of cartons with open ends facing said moving article groups; and
d) article group transfer means for moving article groups into the open ends of the carton sleeves, said article group transfer means comprising guide support means longitudinally moving in parallel synchronization with said carton supply conveyor, a plurality of transversely operative, longitudinally moving pushing mechanisms, and activation means to transversely move said pushing mechanisms at predetermined longitudinal positions.
2. The cartoner assembly of claim 1, further comprising article funnel means movable between said carton supply means and said article group transfer means and being constructed and arranged to guide said article groups into
the cartons and to maintain carton flap position as said transfer means is operative.
'806 patent, col. 14, ll. 35-68.
The only claim of the '789 patent found infringed, claim 18, claims:
18. A continuous motion cartoning apparatus for loading cartons with stacked article groups having upper and lower sub-groups of articles, comprising:
a) an article group selection and transport mechanism comprising a plurality of flight bars forming a longitudinally oriented moving stream of article groups of a predetermined stacked pattern including the upper and lower article sub-groups;
b) means to input a stream of articles at a first longitudinal location on said article group selection and transport mechanism and at a first vertical level to form the lower article sub-group;
c) means to place a divider on the lower article sub-group at a second longitudinal location;
d) means to input a stream of articles at third longitudinal location on said article group selection and transport mechanism and at a second vertical level to form the upper article sub-group on the divider;
e) a carton supply and transport mechanism disposed adjacent and parallel to said article group selection and transport mechanism, said carton supply and transport mechanism forming a longitudinally oriented moving stream of cartons which are spacially synchronized with the stacked article groups; and
f) a side loading mechanism synchronized to move article groups on said article group selection and transport mechanism into cartons on said carton supply and transport mechanism, said side loading mechanism being disposed adjacent said article group selection and transport means and comprising support means, moving in parallel synchronization with said article group selection and transport means, movable pushing means operative in a transverse direction, and activation means to move said pushing means at predetermined positions in a travel path.
'789 patent, col. 15, l. 3--col. 16, l. 18.
Representative claim 2 of the '361 patent, from which five of the eight asserted claims depend, claims:
2. A method for forming stacked article groups, comprising the steps of:
a) supplying at least two streams of articles, each at a predetermined vertically distinct level;
b) forming and longitudinally transporting a stream of first article sub-groups at a first level with an article group selection and transport mechanism having a plurality of fixed, transversely oriented, longitudinally moving flight bars which intersect said at least two supplied streams of articles;
c) placing a support base on a top surface of each said first article subgroup, said support base being substantially flat and having at least one flap member disposed along an edge thereof, said flap member being foldable over an edge of said top surface of said first article subgroup; and
d) forming a second article subgroup at a second level on top of said support base of each said longitudinally moving first article subgroup, with said article group selection and transport mechanism, whereby stacked article groups are formed.
'361 patent, col. 13, ll. 27-48.
During prosecution of each of the '789 and '361 patents, Riverwood's attorney filed an Information Disclosure Statement ("IDS"), pursuant to 37 C.F.R. §§ 1.56 and 1.97. Each IDS listed the '806 patent as
"prior art." Specifically, the forms identified the '806 patent as "Ziegler et al., Assigned to Applicant's Assignee," and listed the other cited patents along with the statement:
The prior art references listed constitute the closest art of which the Applicant is aware relating to the invention of the above identified Application. The Application discloses and claims an invention over this prior art.
The '806 patent is not statutory prior art for purposes of 35 U.S.C. § 102(a)--(d). Jones argued before the district court that the reference to the '806 patent in...
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