Golden Blount, Inc. v. Robert H. Peterson Co.
| Decision Date | 19 April 2004 |
| Docket Number | No. 03-1298.,03-1298. |
| Citation | 365 F.3d 1054 |
| Parties | GOLDEN BLOUNT, INC., Plaintiff-Appellee, v. ROBERT H. PETERSON CO., Defendant-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
William D. Harris, Jr., Schulz & Associates, of Dallas, TX, argued for plaintiff-appellee. With him on the brief were Charles W. Gaines and Greg H. Parker, Hitt Gaines P.C., of Richardson, TX.
Leland W. Hutchinson, Jr., Freeborn & Peters, of Chicago, IL, argued for defendant-appellant. With him on the brief were Jennifer L. Fitzgerald and David S. Becker.
Before MAYER, Chief Judge, NEWMAN, and LINN, Circuit Judges.
Opinion for the court filed by Circuit Judge LINN. Opinion concurring in part and dissenting in part filed by Circuit Judge NEWMAN.
Robert H. Peterson Co. ("Peterson") appeals from the final judgment of the United States District Court for the Northern District of Texas, which concluded that: (1) Peterson infringed certain claims of U.S. Patent No. 5,988,159 ("the '159 patent"), owned by Golden Blount, Inc. ("Blount"); (2) Peterson's infringement was willful; (3) prosecution history estoppel did not preclude the application of the doctrine of equivalents; (4) the '159 patent was not invalid; and (5) the case was exceptional, warranting the award of attorneys' fees. Golden Blount, Inc. v. Robert H. Peterson Co., No. 3-01-CV-0127-R (Aug. 9, 2002) ("Final Judgment"); Golden Blount, Inc. v. Robert H. Peterson Co., No. 3-01-CV-0127-R (Aug. 9, 2002) ("Findings of Fact & Conclusions of Law"). The district court also determined that Blount was entitled to lost profit damages. Findings of Fact & Conclusions of Law at 8, para. 9. Because the district court did not provide findings of fact to support a conclusion of infringement, as required by Rule 52(a) of the Federal Rules of Civil Procedure, the judgment is vacated-in-part and remanded. However, because Peterson has not shown invalidity by clear and convincing evidence, we affirm that portion of the judgment. Finally, we find no evidence of Peterson raising the issue of inequitable conduct before the district court, and therefore conclude that that argument has been waived.
The patent-in-suit relates to fireplace burners and associated equipment. In particular, the '159 patent discloses a gas-fired, artificial logs and coals-burner assembly arranged to "enhanc[e] the natural burn in cooperation of the fireplace draft as well as the aesthetic beauty of the imitation burning logs, coals, and embers." '159 patent, Abstract. The assembly is described as follows:
The present burner assembly is the combination of an inexpensive primary gas logs burner in gas flow communication with a secondary coals and embers-burner tube positioned forward and below the primary burner which operates to enhance the natural draft of the fireplace to improve efficiency of burn and aesthetic appeal of the gas-fired artificial logs, coals and embers-burner assembly.
Id. at col. 3, ll. 54-60.
Figure 2, below, illustrates a secondary burner apparatus 100 in combination with a primary burner tube 14. A connector 102 attaches the primary burner tube 14 to the secondary burner tube 104, creating an enclosed fluid path for gas. A valve 106 is interposed in this fluid path and enables a user to adjust the amount of gas entering the secondary burner. Id. at col. 5, ll. 26-40. Secondary burner tube 104 includes a plurality of apertures, or gas discharge ports, along its length. The apertures can be evenly spaced or clustered, and permit gas to be discharged in a direction away from the opening of the fireplace. Directing the gas discharge away from the opening enhances the aesthetic beauty of the fire and improves safety. Id. at col. 5, ll. 45-63.
Independent claims 1 and 17 are at issue in this suit, as well as dependent claims 2, 5, 7-9, 11-13, and 15-16. Independent claim 1 is representative and recites:
1. A gas-fired artificial logs and coals-burner assembly for fireplace comprising:
an elongated primary burner tube including a plurality of gas discharge ports;
a secondary coals burner elongated tube positioned forwardly of the primary burner tube;
a support means for holding the elongated primary burner in a raised level relative to the forwardly position secondary coals burner elongated tube;
the secondary coals burner elongated tube including a plurality of gas discharge ports;
the elongated primary burner tube and the secondary coals burner elongated tube communicating through tubular connection means wherein the gas flow to the secondary elongated coals burner tube is fed through the primary burner tube and the tubular connection means;
a valve for adjusting gas flow to the secondary coals burner elongated tube positioned in the tubular gas connection means; and
the primary burner tube being in communication with a gas source with a gas flow control means therein for controlling gas flow into said primary burner tube.
The '159 patent issued on November 23, 1999. On December 10, 1999, Blount sent a letter to Peterson, informing Peterson of the issuance of the '159 patent and stating that Blount believed Peterson to be "marketing a device that is substantially similar to the burner assembly" claimed in the patent. The letter further stated that Blount would "take whatever steps are reasonable and necessary to prevent infringement of the patent." Peterson acknowledged receipt of the letter on December 30, 1999. On May 3, 2000, Blount again wrote Peterson, stating:
We have inspected your EMB Series Ember Flame Booster and find it to be clearly within the scope of at least some of the claims of the subject patent. Our client views any infringement of its patent with great concern and will take necessary steps to stop any such infringement.
Peterson responded that it disagreed with Blount's assessment that the Peterson devices were substantially similar to the claimed invention and requested that Blount explain, in detail, the basis upon which Blount believed Peterson was infringing. Blount never answered, and on January 18, 2001, Blount filed this suit against Peterson, alleging patent infringement.
A bench trial was held, beginning on July 29, 2002. The district court issued its Final Judgment against Peterson on August 9, 2002, along with supporting Findings of Fact and Conclusions of Law. The district court concluded, among other things, that: (1) Peterson literally infringed each of the asserted claims, Findings of Fact & Conclusions of Law at 3, para. 16; id. at 7, para. 7; (2) if Peterson did not literally infringe, Peterson contributorily infringed or induced infringement, id. at 3-4, paras. 17-18; id. at 7, para. 3; (3) in the alternative, prosecution history estoppel did not apply, and Peterson infringed under the doctrine of equivalents, id. at 4, para. 19; id. at 7, para. 5; (4) Peterson's infringement was willful, id. at 5, para. 26; id. at 8, para. 10; (5) the claims of the patent are "valid," id. at 7, para. 7; (6) Blount had established the Panduit factors and was entitled to lost profit damages, id. at 8, para. 9; and (7) the case is exceptional under 35 U.S.C. § 285, supporting an award of attorney fees, id. at 8, para. 11. Peterson filed a timely appeal, asserting that each of the district court's conclusions was incorrect.
This court has jurisdiction over the appeal under 28 U.S.C. § 1295(a)(1).
On appeal from a bench trial, this court reviews the district court's conclusions of law de novo and findings of fact for clear error. Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1123 (Fed.Cir.2000). Claim construction is a question of law, reviewed de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc). A determination of infringement, whether literal or under the doctrine of equivalents, is a question of fact and is reviewed under the clearly erroneous standard. Biovail Corp. Int'l v. Andrx Pharms., Inc., 239 F.3d 1297, 1300 (Fed.Cir.2001). Invalidity based on obviousness is a question of law, reviewed de novo, based on underlying factual findings, reviewed for clear error. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). To establish invalidity, the supporting facts must be shown by clear and convincing evidence. WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed.Cir.1999).
Peterson argues first that the district court erred in finding literal infringement of each of the asserted claims because the district court's claim constructions are erroneous and the conclusion of literal infringement is not supported by any evidence. Peterson also argues that the district court's findings of contributory infringement and induced infringement are erroneous because the district court applied the incorrect standards and because there is no supporting evidence for the findings. Peterson further argues that the district court's conclusion, in the alternative, of infringement under the doctrine of equivalents is flawed because the district court's application reads out a claim limitation. Peterson also argues that prosecution history estoppel precludes a finding of infringement under the doctrine of equivalents. Blount, on the other hand, argues that the district court's claim constructions were proper, that the district court applied the correct standards, that the district court's infringement findings were supported by substantial evidence, and that prosecution history estoppel does not apply.
A determination of infringement requires a two-step analysis. The court must determine (1) "the scope and meaning of the patent claims asserted," and (2) how "the properly construed claims ... compare[] to the allegedly infringing device." Cybor Corp., 138 F.3d at 1454. Turning first to claim construction, there are two claim terms in...
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