Joy Technologies, Inc. v. Flakt, Inc.

• Decision Date: 06 October 1993
• Docket Number: No. 92-1405,92-1405
• Citation: 28 USPQ2d 1378,6 F.3d 770
• Parties: JOY TECHNOLOGIES, INC., Plaintiff-Appellee, and A/S Niro Atomizer, Involuntary Plaintiff, v. FLAKT, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 770

6 F.3d 770

28 U.S.P.Q.2d 1378

JOY TECHNOLOGIES, INC., Plaintiff-Appellee and A/S Niro Atomizer, Involuntary Plaintiff, v. FLAKT, INC., Defendant-Appellant.

No. 92-1405.

United States Court of Appeals Federal Circuit.

Oct. 6, 1993.

James Galbraith, Kenyon & Kenyon, New York City, argued for appellant. With him on the brief were Paul Lempel, Lynne Darcy and Donna M. Praiss.

Robert A. Schroeder, Pretty, Schroeder, Brueggemann & Clark, Los Angeles, CA, argued for appellee. With him on the brief was Edward G. Poplawski.

Before NIES, Chief Judge, BENNETT, Senior Circuit Judge, and ARCHER, Circuit Judge.

NIES, Chief Judge.

Flakt, Inc., brings an interlocutory appeal for review of the scope of an injunction entered by the United States District Court for the District of Delaware dated May 29, 1992, in Civil Action No. 89-533-JJF, brought by Joy Technologies, Inc., for infringement of U.S. Patent No. 4,279,873 (the '873 patent). This court stayed the injunction pending issuance of this decision. The stay of the injunction is vacated. The injunction is vacated and this aspect of the case is remanded to the district court with instructions to issue an injunction of a scope which conforms to this decision.

I. BACKGROUND

Judgment was entered by the district court against Flakt for infringement of various claims of the '873 patent. All of the claims in the '873 patent are method claims directed to an improved process for desulfurizing flue gas produced from the combustion of fuels which contain sulfur, such as coal. The particular method claimed in the '873 patent includes the partial recycle of calcium hydroxide used in the desulfurization process. Both Joy and Flakt are in the business of designing and building flue gas desulfurization (FGD) plants throughout the United States for use in conjunction with industrial plants, such as power plants for production of electricity. ¹

In response to Joy's post-trial motion, the district court entered an order which states in its entirety, "[F]or the reasons set forth in the Memorandum Opinion issued this date The critical question is whether sale and production of a machine/system capable of carrying out the patented process which requires five years to construct is considered contributory infringement when there will be no direct infringement, i.e. use of the machine/system, within the patent term.

                [May 29, 1992], IT IS HEREBY ORDERED that [Joy's] Motion for Permanent Injunction is GRANTED as detailed in the Memorandum Opinion."   In the May 29, 1992, memorandum opinion, the district court discussed enjoining Flakt from further direct infringement, contributory infringement and inducement of infringement and spelled out that this meant Flakt was precluded from entering into any contracts during the term of the '873 patent for the sale or construction of any air pollution control system designed to carry out the patented process.  The sole issue respecting the scope of the injunction was framed by the district court as follows
                

(Emphasis added.)

II. FORM OF THE INJUNCTION

The injunction issued by the district court does not conform to Fed.R.Civ.P. 65(d) (1993) ² in that the order granting the injunction and the prohibitions set out in the memorandum opinion are not in a single document. While the parties address the form of the injunction only peripherally, this defect would require vacating and remanding the injunctive order for compliance as to form and specificity. Additive Controls and Measurement Sys. v. Flowdata, Inc., 986 F.2d 476, 25 USPQ2d 1798 (Fed.Cir.1993). It is, however, evident that the district court intended to and, the parties agree, did enjoin Flakt from bidding or entering contracts or building a plant which will not be capable of carrying out the desulfurization/recycle process of the '873 patent until after the patent expires on July 21, 1998. This prohibition is the main issue of the appeal.

III. STANDARD OF REVIEW

While the right to exclude is the essence of the concept of property, ³ district courts are, nevertheless, given broad discretion under 35 U.S.C. Sec. 283 (1988) ⁴ to determine whether the facts of a case warrant the grant of an injunction and to determine the scope of the injunction. Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 936, 945, 22 USPQ2d 1119, 1127 (Fed.Cir.1992). Accordingly, we review a district court's decision to grant an injunction and the scope of that injunction for abuse of discretion. Id. An abuse of discretion may be established by showing that the district court either made a clear error of judgment in weighing relevant factors, or exercised its discretion based on an error of law or on findings which were clearly erroneous. A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1039, 22 USPQ2d 1321, 1333 (Fed.Cir.1992); Seattle Box Co. v. Industrial Crating & Packing Inc., 756 F.2d 1574, 1581, 225 USPQ 357, 363 (Fed.Cir.1985).

In addition to committing the grant of an injunction to a district court's discretion, section 283 requires that the purpose behind the injunction must be "to prevent the violation of any right secured by patent." 35 U.S.C. Sec. 283. See alsoEli Lilly and Co. v. Medtronic, Inc., 915 F.2d 670, 674, 16 USPQ2d 2020, 2024 (Fed.Cir.1990) ("[A]n injunction is only proper to the extent it is 'to On appeal, Flakt argues that the injunction enjoins Flakt from performing acts which do not violate Joy's rights secured by the '873 patent. Joy responds that the broad scope of the injunction is necessary to protect it from infringement by Flakt and threatened infringement by others. Joy further argues that "duplicitous" conduct by Flakt provided the district court with justification for granting a broad injunction.

prevent the violation of any right secured by patent.' "). An injunction for infringement may not be punitive. Amstar Corp. v. Envirotech Corp., 823 F.2d 1538, 1549, 3 USPQ2d 1412, 1420 (Fed.Cir.1987) ("Punishment is not the purpose of an injunction....").

IV.

SCOPE OF INJUNCTION

A.

Sales by Flakt of Equipment Do Not Constitute Direct

Infringement of the Method Patent

A utility patent grants to the patentee the right to exclude others from making, using, or selling the patented invention throughout the United States for the seventeen year term of the patent. 35 U.S.C. Sec. 154 (1988). Notwithstanding various defenses to patent infringement which are not applicable to the present appeal, "whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent." 35 U.S.C. Sec. 271(a) (1988). The making, using, or selling of a patented invention is the usual meaning of the expression "direct infringement" and will be used herein in that sense. SeeHewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed.Cir.), cert. denied, 493 U.S. 1076, 110 S.Ct. 1125, 107 L.Ed.2d 1031 (1990). ⁵

Joy argues that the making or selling of an industrial plant designed to enable use of the patented FGD system may constitute a sale of the process claimed in the '873 patent within the meaning of section 271(a), particularly where a contract contains engineering details and performance guarantees. Thus, per Joy, the injunction merely prevents Flakt from depriving Joy of its exclusive right to sell its patented invention. We disagree. The law is unequivocal that the sale of equipment to perform a process is not a sale of the process within the meaning of section 271(a).

In Standard Havens Products, Inc. v. Gencor Industries, Inc., 953 F.2d 1360, 1374, 21 USPQ2d 1321, 1332 (Fed.Cir.1991), cert. denied, --- U.S. ----, 113 S.Ct. 60, 121 L.Ed.2d 28 (1992), discussed more fully hereinbelow, the method claims of the patent at issue were held not directly infringed by the mere sale of an apparatus capable of performing the claimed process. The sale of the apparatus in Standard Havens was not a direct infringement because a method or process claim is directly infringed only when the process is performed. SeeAtlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 836, 23 USPQ2d 1481, 1482-83 (Fed.Cir.1992) (Because defendant "does not manufacture ... [patentee] cannot charge ... infringement of the process claims."); see alsoAtlantic Thermoplastics Co. v. Faytex Corp., 974 F.2d 1279, 1284, 23 USPQ2d 1801, 1805 (Fed.Cir.1992) (Newman, J., dissenting to denial of in banc) ("[P]rocess claims ... are infringed only when the process is used."); BB Chem. Co. v. Ellis, 117 F.2d 829, 833, 48 USPQ 487, 491 (1st Cir.1941) ("To be direct infringers, the defendants must have used the plaintiff's process."); Philad Co. v. Lechler Lab., Inc., 107 F.2d 747, 748, 43 USPQ 284, 286 (2d Cir.1939) ("The patent sought to be enforced is on a process of waving hair. It does not give the plaintiff a monopoly in the appliances by which the process is operated."); Moore Filter Co. v. Tonopah-Belmont Dev. Co., 201 F. 532, 541 (3d Cir.1912) ("In considering the question of the infringement of a process patent, it must be borne in mind that ... the test of infringement is whether such

process is utilized by the infringer."); Dennison Mfg. Co. v. Ben Clements & Sons, Inc., 467 F.Supp. 391, 427, 203 USPQ 895, 924 (S.D.N.Y.1979) ("To be a direct infringer of the method claims, defendant must be found to have used the attachments in question in the manner prescribed in the method claims."). That the sale of equipment to perform a process is not a direct infringement of the process within the meaning of section 271(a) is further highlighted by 35 U.S.C. Sec. 271(c) (1988), discussed infra, which provides in pertinent part that such a sale may be a contributory infringement. To hold that the sale of equipment which performs a patented process is itself a direct infringement would make that portion of section 271(c) relating to the sale of an apparatus for use in practicing a patented process meaningless....