53 F.3d 1270 (Fed. Cir. 1995), 94-1315, Transmatic, Inc. v. Gulton Industries, Inc.

Docket Nº94-1315, 94-1316.
Citation53 F.3d 1270
Party Name35 U.S.P.Q.2d 1035 TRANSMATIC, INC., Plaintiff/Cross-Appellant, v. GULTON INDUSTRIES, INC., Defendant-Appellant.
Case DateMay 01, 1995
CourtUnited States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1270

53 F.3d 1270 (Fed. Cir. 1995)

35 U.S.P.Q.2d 1035

TRANSMATIC, INC., Plaintiff/Cross-Appellant,

v.

GULTON INDUSTRIES, INC., Defendant-Appellant.

No. 94-1315, 94-1316.

United States Court of Appeals, Federal Circuit

May 1, 1995

Rehearing Denied May 26, 1995.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

July 5, 1995.

Page 1271

[Copyrighted Material Omitted]

Page 1272

Owen E. Perry, Reising, Ethington, Barnard, Perry & Milton, Troy, MI, argued, for plaintiff/cross-appellant. With him on brief were Richard W. Hoffmann and Jeanne-Marie Marshall.

William F. Dudine, Jr., Darby & Darby, P.C., New York City, argued, for defendant-appellant. With him on brief were Ira Jay Levy and Morris Relson. Of counsel was Bernard J. Cantor.

Before ARCHER, Chief Judge, PLAGER and LOURIE, Circuit Judges.

LOURIE, Circuit Judge.

Gulton Industries, Inc. appeals from the March 31, 1993 order of the United States District Court for the Eastern District of Michigan granting Transmatic, Inc.'s motion for partial summary judgment striking Gulton's affirmative defense of invalidity with respect to claim 1 of reexamined U.S. Patent 4,387,415. Gulton also appeals from the court's April 8, 1994 order (1) holding Gulton liable for infringement of claim 1 of the '415 patent under the doctrine of equivalents, (2) holding that Transmatic did not engage in inequitable conduct so as to render the '415 patent unenforceable, and (3) awarding Transmatic $3,023,773.00 in damages. Transmatic cross-appeals from the court's March 31, 1993 order granting partial summary judgment of no literal infringement. Transmatic also cross-appeals from the court's November 8, 1993 order holding that Transmatic had no right to a jury trial on the issue of willful infringement and from the court's subsequent determination on the merits that Gulton did not willfully infringe the patent. The orders appealed from are reported at Transmatic, Inc. v. Gulton Indus., Inc., 818 F.Supp. 1052, 27 USPQ2d 1561 (E.D.Mich.1993); Transmatic, Inc. v. Gulton Indus., Inc., 835 F.Supp. 1026, 29 USPQ2d 1541 (E.D.Mich.1993), and Transmatic, Inc. v. Gulton Indus., Inc., 849 F.Supp. 526, 31 USPQ2d 1225 (E.D.Mich.1994). Because the district court failed to make sufficient factual findings in support of its damage award, we vacate the damage award and remand for further proceedings consistent with this opinion. We also reverse the finding of no literal infringement, vacate the finding of infringement under the doctrine of equivalents as moot, and affirm on the other issues raised.

BACKGROUND

Transmatic owns the '415 patent directed to a cornice lighting fixture for public transit vehicles, such as buses. This type of lighting fixture is capable of supporting and illuminating an advertising card, while also illuminating the interior of the transit vehicle.

Claim 1, the sole claim at issue, reads as follows:

1. A cornice lighting fixture for public transit vehicles, the lighting fixture comprising: a unitary member made as a pultrusion from resin and glass fibers so as to have an elongated shape with a uniform cross section along the length thereof, said unitary member including a light housing that defines one longitudinal margin of the fixture and a trim panel that extends vertically and horizontally from the light housing to define another longitudinal margin of the fixture, said light housing opening toward the direction in which light is to be provided by the fixture, said trim panel including one extremity defining the longitudinal fixture margin opposite the longitudinal fixture margin defined by the housing, said one extremity of the trim panel having a tab adapted to mount one edge of an advertising card on the trim panel, said trim panel also including another extremity

Page 1273

connected directly to the housing in a fixed relationship thereto and having another tab adapted to mount another edge of the advertising card such that the card is positioned immediately adjacent the light housing; an electrical connector support for mounting a fluorescent tube on the light housing; and a light cover for cooperating with the light housing to enclose a mounted fluorescent tube within the housing (emphasis added).

Transmatic's device was the first cornice lighting fixture to be made by "pultrusion," a technique for making glass-reinforced plastics whereby continuous bundles of glass fibers are impregnated with a liquid resin, then passed through a high temperature oven. Hawley's Condensed Chemical Dictionary 977 (12th ed. 1993). The invention achieved considerable success, garnering a 90% share of the front-lighted bus fixture market before Gulton introduced its competing device. A cross-sectional view of a preferred embodiment of the patented fixture is shown below:

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


Gulton's product is also a single-piece (unitary) cornice lighting fixture made as a pultrusion from resin and glass fibers. Structurally, it is essentially the same as the preferred embodiment of Transmatic's device disclosed in the '415 patent, except that the light housing in Gulton's device includes an approximately three and a half inch extension or flange. The flange extends the light housing to a point beyond a light cover associated with the light housing. Although Gulton's own design drawings had labeled the flange as part of the light housing, Gulton characterized the flange during litigation as a component separate and distinct from the light housing itself. This distinction is the basis for the infringement decisions, see infra. A cross-sectional view of the accused product is shown below, with the key portion of the device indicated by an arrow:

Page 1274

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


Before trial, the district court granted partial summary judgment in favor of Transmatic striking Gulton's affirmative defense of invalidity and granted partial summary judgment of no literal infringement in favor of Gulton. 818 F.Supp. at 1060-68, 27 USPQ2d at 1567-74. Then, on October 4, 1993, although Transmatic had made a timely demand for a jury trial, the court issued an order advising the parties that it would conduct a bench trial with an advisory jury. Transmatic did not protest. On November 1, 1993, after more than a week of trial and after the close of Transmatic's case-in-chief, Transmatic argued that the issue of willfulness was one for the jury and not the court to decide and that any jury verdict on willfulness should bind the court. The court disagreed, holding that Transmatic had no right to a jury trial on the willfulness issue or any of the other issues remaining in the case. 835 F.Supp. at 1027-33, 29 USPQ2d at 1542-47. At the conclusion of trial, the court held Gulton liable for infringement of claim 1 under the doctrine of equivalents, found the infringement to be not willful, and awarded Transmatic $3,023,773.00 in damages. 849 F.Supp. at 530-38, 543, 31 USPQ2d at 1227-34, 1238-39. The court also held that Transmatic did not engage in inequitable conduct so as to render the '415 patent unenforceable. Id. at 538-43, 31 USPQ2d at 1234-38. This appeal and cross-appeal followed.

DISCUSSION

I. Gulton's Appeal

  1. Validity

    On appeal, Gulton first challenges the district court's grant of partial summary judgment striking Gulton's affirmative defense of invalidity with respect to claim 1 of the '415 patent. Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77, 12 USPQ2d 1382, 1383 (Fed.Cir.1989). Summary judgment may thus be granted when no "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, Poller v. Columbia Broadcasting Sys., Inc., 368 U.S. 464, 473, 82 S.Ct. 486, 491, 7 L.Ed.2d 458 (1962), with doubts resolved in favor of the opponent, Cantor v. Detroit Edison Co., 428 U.S. 579, 582, 96 S.Ct. 3110, 3113-14, 49 L.Ed.2d 1141 (1976). We review de novo a district court's grant of summary judgment. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994).

    After considering the prior art of record and Gulton's arguments, the district court determined that, as a matter of law,

    Page 1275

    Gulton could not establish invalidity by clear and convincing evidence. Accordingly, the court granted partial summary judgment in favor of Transmatic, holding that claim 1 of the '415 patent was not invalid. On appeal, Gulton argues, inter alia, that the court failed to consider the propriety of combining prior art references showing pultrusion techniques with those pertaining to lighting fixtures. In reply, Transmatic argues that the court correctly concluded that Gulton could not meet its burden of proving invalidity by clear and convincing evidence.

    We agree with Transmatic. It is apparent from the district court's opinion that the court considered all the relevant prior art, including prior art references describing pultrusion technology, in reaching its nonobviousness determination. The court also took into account relevant secondary evidence of nonobviousness, particularly the failure of others to achieve the patented invention and the commercial success of the patented device. The claims twice passed scrutiny in the PTO, including a reexamination procedure in which Gulton participated as the requester. The patent is presumed valid. 35 U.S.C. Sec. 282 (1988). Having carefully reviewed the record and the parties' arguments, we conclude that there is no genuine issue of material fact relating to validity and that...

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  • 157 F.Supp.2d 110 (D.Mass. 2001), 94-10758, Bailey v. Dart Container Corp. of Michigan
    • United States
    • Federal Cases United States District Courts 1st Circuit District of Massachusetts
    • August 17, 2001
    ...the claims for their Page 120 meaning independent of any working embodiment") (citing Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1278 (Fed.Cir. 1995) ("[T]he district court erred by importing unnecessary functional limitations into the claim")). Consideration of t......
  • 352 F.Supp.2d 403 (S.D.N.Y. 2004), 02 Civ.7936, Astrazeneca Pharmaceuticals, LP v. Mayne Pharma (USA), Inc.
    • United States
    • Federal Cases United States District Courts 2nd Circuit Southern District of New York
    • December 28, 2004
    ...Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1338-39 (Fed.Cir.2001) ; Page 410 Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277 (Fed.Cir.1995); Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed.Cir.1988). Further, functional limitations expressed in the specific......
  • 416 F.Supp.2d 632 (N.D.Ill. 2006), 04 C 3509, Pliant Corp. v. MSC Marketing & Technology, Inc.
    • United States
    • Federal Cases United States District Courts 7th Circuit Northern District of Illinois
    • February 15, 2006
    ...however, are not limited to the embodiment shown in the specifications. Anchor Wall, 340 F.3d at 1307; Transmatic, Inc. v. Gulton Indus., 53 F.3d 1270, 1277 (Fed.Cir.1995). Limitations appearing only in the specifications cannot be read into a claim because "the claim, not the specific......
  • 486 F.Supp.2d 330 (S.D.N.Y. 2007), 00 Civ. 4992, Scanner Technologies Corp. v. Icos Vision Systems Corp., N.V.
    • United States
    • Federal Cases United States District Courts 2nd Circuit Southern District of New York
    • May 22, 2007
    ...product or method includes each and every element or limitation of the claims in question. See Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277 (Fed.Cir.1995); Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1582 (Fed.Cir.1995). It is the patentee's burden to show lite......
  • Request a trial to view additional results
169 cases
  • 157 F.Supp.2d 110 (D.Mass. 2001), 94-10758, Bailey v. Dart Container Corp. of Michigan
    • United States
    • Federal Cases United States District Courts 1st Circuit District of Massachusetts
    • August 17, 2001
    ...the claims for their Page 120 meaning independent of any working embodiment") (citing Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1278 (Fed.Cir. 1995) ("[T]he district court erred by importing unnecessary functional limitations into the claim")). Consideration of t......
  • 352 F.Supp.2d 403 (S.D.N.Y. 2004), 02 Civ.7936, Astrazeneca Pharmaceuticals, LP v. Mayne Pharma (USA), Inc.
    • United States
    • Federal Cases United States District Courts 2nd Circuit Southern District of New York
    • December 28, 2004
    ...Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1338-39 (Fed.Cir.2001) ; Page 410 Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277 (Fed.Cir.1995); Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed.Cir.1988). Further, functional limitations expressed in the specific......
  • 416 F.Supp.2d 632 (N.D.Ill. 2006), 04 C 3509, Pliant Corp. v. MSC Marketing & Technology, Inc.
    • United States
    • Federal Cases United States District Courts 7th Circuit Northern District of Illinois
    • February 15, 2006
    ...however, are not limited to the embodiment shown in the specifications. Anchor Wall, 340 F.3d at 1307; Transmatic, Inc. v. Gulton Indus., 53 F.3d 1270, 1277 (Fed.Cir.1995). Limitations appearing only in the specifications cannot be read into a claim because "the claim, not the specific......
  • 486 F.Supp.2d 330 (S.D.N.Y. 2007), 00 Civ. 4992, Scanner Technologies Corp. v. Icos Vision Systems Corp., N.V.
    • United States
    • Federal Cases United States District Courts 2nd Circuit Southern District of New York
    • May 22, 2007
    ...product or method includes each and every element or limitation of the claims in question. See Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277 (Fed.Cir.1995); Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1582 (Fed.Cir.1995). It is the patentee's burden to show lite......
  • Request a trial to view additional results