358 F.3d 1356 (Fed. Cir. 2004), 02-1410, Sulzer Textil A.G. v. Picanol N.V.

Docket Nº:02-1410, 02-1441.
Citation:358 F.3d 1356
Party Name:69 U.S.P.Q.2d 1961 SULZER TEXTIL A.G. and Sulzer Textile, Inc., Plaintiffs-Appellants, v. PICANOL N.V., Defendant-Cross Appellant.
Case Date:February 17, 2004
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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358 F.3d 1356 (Fed. Cir. 2004)

69 U.S.P.Q.2d 1961

SULZER TEXTIL A.G. and Sulzer Textile, Inc., Plaintiffs-Appellants,

v.

PICANOL N.V., Defendant-Cross Appellant.

Nos. 02-1410, 02-1441.

United States Court of Appeals, Federal Circuit

February 17, 2004

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K.T. Cherian, Townsend and Townsend and Crew, LLP, of San Francisco, CA, argued for plaintiffs-appellants. With him on the brief were J. George Seka and Igor Shoiket. Of counsel on the brief were Rickey L. Faulkner and S. Calvin Capshaw, Brown McCarroll, L.L.P. of Longview, TX; and Otis Carroll, Ireland, Carroll & Kelley, P.C., of Tyler, TX.

John P. Rowley III, Holland & Knight LLP, of McLean, VA, argued for defendant-cross appellant. With him on the brief were Jennifer A. Short and Joshua C. Krumholz, Holland & Knight LLP, of Boston, MA. Of counsel on the brief was J. Ernest Kenney, Bacon & Thomas, of Alexandria, VA.

Before LOURIE, GAJARSA, and LINN, Circuit Judges.

LINN, Circuit Judge.

This case presents a question as to the nature and extent to which district courts are required to give jury instructions in patent cases in which claim construction rulings on disputed claim terms are made prior to trial and followed by the parties during the course of the trial. We hold that it is the duty of trial courts in such cases to inform jurors both of the court's claim construction rulings on all disputed claim terms and of the jury's obligation to adopt and apply the court's determined meanings of disputed claim terms in the jury's deliberations of the facts.

Sulzer Textil A.G. and Sulzer Textile, Inc. (collectively, "Sulzer"), appeal from an order of the United States District Court for the Eastern District of Texas denying their motion for a new trial based on erroneous jury instructions, following a jury verdict in favor of Picanol N.V. ("Picanol"). Sulzer Textil A.G. v. Picanol N.V., No. 6:00cv279 (E.D.Tex. Apr. 19, 2002) (" Order "). Sulzer also appeals an order of the district court granting Picanol's motion in limine to preclude Sulzer from introducing evidence pertaining to infringement under the doctrine of equivalents. Sulzer Textil A.G. v. Picanol N.V., No. 6:00cv279 (E.D.Tex. Sept. 24, 2001) (" In Limine Order "). On cross-appeal, Picanol appeals an order of the district court denying its motion for attorneys' fees pursuant to 35 U.S.C. § 285. Sulzer Textil A.G. v. Picanol N.V., No. 6:00cv279 (E.D.Tex. Mar. 11, 2002) (" Fee Order "). As to the jury instructions, we conclude that the district court erred. But because Sulzer has failed to show prejudice resulting from such error, we affirm the district court's denial of Sulzer's motion for a new trial. Further, because the district court applied the appropriate legal standard in determining the case was not exceptional and did not clearly err in its factual findings supporting that determination, we affirm the district court's Fee Order as well.

A petition for panel rehearing was filed by Picanol, contending that the determination in our original opinion that Sulzer had not waived recourse to the doctrine of equivalents was not based on the correct record before the district court. Sulzer opposed based on its view of the record. Both parties were granted leave to file and did file additional materials from the trial court record. From these materials and the arguments presented on Picanol's petition for panel rehearing, it has become clear that counsel for both parties were not completely forthcoming in the initial briefing of this case with respect to the events surrounding the disposition of Picanol's Motion in Limine. We are disappointed that neither party alerted the

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court that a non-final copy of the district court's Pretrial Order that differed in material respects from the final Pretrial Order, as entered, was included in the Joint Appendix. We are also disappointed that neither party attempted to correct the court's misconceptions when questioned at oral argument. The record, as now correctly presented, raises questions on Sulzer's possible waiver that can only be answered by the district court on remand. We therefore grant Picanol's motion for panel rehearing to the extent of vacating this court's original decision on the issue of waiver by Sulzer of resort to infringement under the doctrine of equivalents and remand that issue to the district court for determination. This court's opinion is modified accordingly. The remaining portions of the opinion are unchanged.

BACKGROUND

This case concerns air-jet weaving machines for weaving threads or yarns into fabric. Woven fabric generally consists of perpendicular, interlaced threads or yarns. There are two categories of threads in a woven fabric--warp threads, extending longitudinally in the fabric, and weft threads, extending perpendicularly to the warp threads. Before weaving, a large number of parallel warp threads are arranged adjacent to each other. The fabric is then woven by inserting a weft thread, perpendicular to the warp threads, where the weft thread goes alternatively over or under each successive warp thread.

Although weaving is an ancient art, technology advances have made weaving more efficient. It would be impractical to weave any significant amount of fabric by inserting each weft over or under each warp; therefore, a weaving machine is used. A weaving machine may lift every other warp thread, relative to the remaining warp threads, forming two sets of warps--an upper set and a lower set, with a space in between, known as a "shed." A weft thread can then be inserted quickly through the shed, using one of a variety of techniques. For example, projectile-type weaving machines attach the leading edge of a weft thread to a bullet-like projectile that carries the weft through the shed. Rapier weaving machines employ long mechanical arms to carry the weft through the shed. Air-jet weaving machines use bursts of air to blow the weft thread through the shed. After the weft thread has been inserted through the shed, the upper and lower warp thread sets can then be exchanged, capturing the weft thread in a woven fashion. This process is repeated over and over to create fabric of a desired length.

With any of these types of weaving machines, the timing of the shed operation is critical. The shed must remain open from the beginning of weft insertion until the weft has reached the other side of the machine. If it closes prematurely, before the weft arrives at the other side of the fabric, a weaving fault occurs, leading to degraded fabric and potential machine stoppages. On the other hand, to optimize the rate of fabric production, the shed openings and closings must occur as rapidly as possible to increase the number of weft insertions per minute, and thus, the amount of fabric that can be produced.

Historically, the number of weft insertions per minute was limited by how rapidly the carrier of the weft could be transported through the shed. Projectile and rapier weaving machines, for example, have maximum weft insertion rates of approximately 400-500 insertions per minute. Sulzer's predecessor, the Dutch company Ruiti-Te Strake, introduced the first air-jet weaving machine in the 1970s. These machines promised a greater number of weft insertions per minute; however, they

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were not commercially successful because there was insufficient control over the weft insertion process. In response, Ruiti-Te Strake developed what is known as a "time controller," a system that coordinates and controls weft insertion in an air-jet weaving machine to ensure that the shed remains open until each weft is properly and fully inserted. The time controller system is the subject of U.S. Patent No. 4,446,893 ("the '893 patent"), owned by Sulzer. The time controller system permits the shed to close as soon as the weft has been fully inserted, without allowing for extra time as a safety margin, and thereby significantly increasing the number of weft insertions per minute.

The time controller of the '893 patent works by coordinating the insertion of the weft with the operational speed of the machine and making necessary adjustments to ensure fault-free operation while maintaining optimal machine speed. One embodiment disclosed in the '893 patent makes adjustments by varying the speed of the weft thread during insertion; another embodiment adjusts the speed of the machine. Claim 1, the only asserted independent claim of the '893 patent, recites:

1. In a method of controlling the operation of a weaving machine in which each weft thread is moved through a shed by means of a flowing fluid, the step of correlating the speed of the movement of each weft thread through the shed with the speed of operation of the weaving machine by:

(a) measuring the time occupied by movement of a weft thread through the shed;

(b) generating a first electrical signal which is a measure of such time;

(c) generating a second electrical signal which is a measure of a predetermined fraction of the time occupied by a weaving cycle of the machine;

(d) comparing said electrical signals and generating a third electrical signal which is a measure of the discrepancy between said first and second signals; and

(e) using said third signal to control one of said speeds in order to eliminate the discrepancy between first and second signals.

Another problem peculiar to air-jet weaving machines is caused by the manner in which weft threads are supplied. Thousands of yards of weft are typically wound onto a spool, from which thread is withdrawn by the air-jet as individual wefts are inserted through the shed. When the spool is nearing its end, the tail end of the...

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