White Consol. Industries, Inc. v. Vega Servo-Control, Inc.

• Decision Date: 25 July 1983
• Docket Number: 83-548,INC,Nos. 83-516,SERVO-CONTRO,s. 83-516
• Parties: WHITE CONSOLIDATED INDUSTRIES, INC., Appellant/Cross Appellee, v. VEGA, Appellee/Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 788

713 F.2d 788

218 U.S.P.Q. 961

WHITE CONSOLIDATED INDUSTRIES, INC., Appellant/Cross Appellee, v. VEGA SERVO-CONTROL, INC., Appellee/Cross Appellant.

Nos. 83-516, 83-548.

United States Court of Appeals, Federal Circuit.

July 25, 1983.

Ronald L. Wanke, Chicago, Ill., argued, for appellant/cross appellee; Jeffrey L. Clark, Chicago, Ill., on brief.

Ernie L. Brooks, Southfield, Mich., argued, for appellee/cross appellant; David R. Syrowik, Southfield, Mich., on brief.

Before MARKEY, Chief Judge, and FRIEDMAN and RICH, Circuit Judges.

MARKEY, Chief Judge.

White Consolidated Industries, Inc. (White) appeals from a judgment of the United States District Court for the Eastern District of Michigan that U.S. Patent No. 3,668,653 (the '653 patent) issued June 6, 1972 for a "Control System" was invalid and not infringed. The '653 patent issued on application serial number 769,500, filed October 22, 1968. Vega Servo Control, Inc. (Vega) cross appeals the denial of its motion for attorney fees under 35 U.S.C. § 285 or Fed.R.Civ.P. 37(c). We affirm.

Background

White sued Vega on May 23, 1979, charging that the manufacture and sale of Vega IIIG EIA and Vega IIIG CL systems infringed the '653 patent. Vega denied infringement and asserted that the patent was invalid.

Judge Cohn entered judgment in Vega's favor on August 18, 1982. In an opinion dated July 8, 1982, he held the patent invalid for failure to meet the enablement and best mode requirements of 35 U.S.C. § 112, and found that though the accused devices performed the same functions to achieve the same results, they did so in a substantially different way and that White had therefore failed to prove infringement.

Judge Cohn denied Vega's motion for attorneys fees on August 18, 1982, denied The '653 patent

White's motion to amend and supplement the findings on September 16, 1982, and denied Vega's motion for financial sanctions under Fed.R.Civ.P. 37(c) on October 26, 1982.

The '653 patent is directed to a numerical control (NC) system for machine tools.

In an NC system, a machine tool (e.g., mill head, drill bit) is placed under the control of a computer program. The program, termed a "part program," is a series of instructions which define the operations to be performed in machining a particular part. The program is created either manually, by writing the instructions directly in machine-readable form (i.e., machine code) or with the assistance of a computer. In the latter situation, the part program is written in a numerical control language using English-like words and abbreviations. Those English-like statements are put into a general purpose computer and there translated into machine code by a computer program, called a "processor" or "translator".

The numerical control processor may be a two-pass or single-pass processor. In the former, the first (processing) pass converts program statements into a set of machine-readable instructions, termed CL data, which defines the coordinate points to be followed by the tool in producing the part. The second pass manipulates those instructions, taking into account the particular characteristics and idiosyncrasies of the machine tool, to produce the machine code. A single pass processor produces the machine code in a single computer run, internally performing the "processing" and "post-processing" functions.

Once the part program is created, a punched tape containing the part program in machine readable form is produced and loaded into the NC device connected to the tool. Some systems eliminate the punched tape by linking the NC device to the computer.

White markets an NC system under the name "Omnicontrol". That system, the subject of the '653 patent, links the computer and machine tool and provides for two-way communication between the operator and the computer, so that the operator may dynamically (i.e., while the program is running) modify the controlling part program.

The '653 system also includes a universal input feature so that a single part program can be used to control a plurality of machine tools, thus eliminating the need to create a new part program for each tool. This feature is accomplished by writing the part program in a universal NC language (i.e., machine tool independent) and employing a language translator in the control system to translate the program into machine code to control the tool. Describing the language translator, the '653 patent reads:

The language TRANSLATOR used in the RUN mode may be a known translator capable of converting, in a single pass, a part program in programming language form into a part program in machine language form, as for example SPLIT (Sundstrand Program Language Internally Translated). In the CONVERSATIONAL mode, where each source or language part instruction is individually translated into machine language form, the TRANSLATOR program is modified by the additions shown in FIG. 12.

At the time the application that resulted in the '653 patent was filed, SPLIT was a trade secret of Sundstrand, White's predecessor in interest, and was available only by purchase from Sundstrand.

In holding the '653 patent invalid, Judge Cohn determined that (1) the language translator was an integral part of the '653 system; (2) SPLIT was the only single pass language known to work in the '653 system at the time and was considered by the inventors to be the best mode; and (3) by failing to disclose SPLIT, the '653 patent failed of compliance with the enablement and best mode requirements of 35 U.S.C. § 112.

Issues

(1) Whether Judge Cohn erred in holding the '653 patent invalid for noncompliance (2) Whether Judge Cohn properly refused to award attorneys fees to Vega under 35 U.S.C. § 285 or Fed.R.Civ.P. 37(c).

with the enablement requirement of 35 U.S.C. § 112. ¹

OPINION

(1) Enablement under 35 U.S.C. § 112

35 U.S.C. § 112 requires that the invention be described "in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use the same." White does not claim that SPLIT was disclosed, but rather that the specification contains an enabling disclosure notwithstanding its omission. White says the '653 patent calls for a known or standard single pass translator "as for example SPLIT" and specifies the characteristics of such a translator; that SPLIT was only an example; and that there were other known single pass translators interchangeable with SPLIT. White says because those other translators, e.g., ACTION and COMPACT, were known to those skilled in the art and available to them, the enablement requirement is satisfied.

We disagree. Though one may refer to an element of a claimed invention held as a trade secret by name only and yet satisfy 35 U.S.C. § 112 if equivalent elements are known, and known to be equivalents, and available to those skilled in the art, In re Gebauer-Fuelnegg, et al., 50 USPQ 125, 28 Cust. & Pat.App. 1359, 121 F.2d 505 (1941), there is insufficient evidence here from which to conclude that suitable substitutes for SPLIT were known and widely available. ² Testimony that ACTION and COMPACT were "take-offs" of, i.e., patterned upon, SPLIT, does not, for example, establish that those translators were known to be suitable substitutes for SPLIT. That other translators were available when the application was filed is unavailing where there is no basis in the record for finding that a person skilled in the art on reading the specification would know that another single pass processor would be suitable. Indeed, the record here is to the contrary. The statements of Sundstrand, White's predecessor in interest, suggest that the inventors themselves (then employed by Sundstrand) originally considered SPLIT the only language suitable for operation in the "conversational" mode of the invention. Announcing Omnicontrol at a press conference held February 27, 1968, one week after the filing of the original application, ³ Sundstrand said:

A key operating mode of this System is what we call "Conversational SPLIT Reprogramming". This implies that the Sundstrand proprietary SPLIT Programming System is most compatible with the operating advantages of the System.

....

[T]here were (2) ... modes of operation on the machine--one is the "run Mode", and this is where proven programs are fed directly to the machine...