Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc.
| Decision Date | 26 March 1984 |
| Docket Number | No. 83-890,83-890 |
| Parties | SEATTLE BOX COMPANY, INC., d/b/a Seattle-Tacoma Box Company, Appellee, v. INDUSTRIAL CRATING & PACKING, INC., and James F. Rennels, Appellants. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Richard W. Seed, Seattle, Wash., argued for appellants. With him on brief was B.F. Berry, Seattle, Wash.
F.A. Utecht, Long Beach, Cal., argued for appellee. With him on brief were Ford E. Smith and David L. Garrison, Seattle, Wash.
Before DAVIS, Circuit Judge, NICHOLS, Senior Circuit Judge, and BALDWIN, Circuit Judge.
This appeal is from a judgment of the United States District Court for the Western District of Washington, holding United States Patent No. Re. 30,373 valid and infringed, 217 USPQ 343 (W.D.Wash.1982), granting a permanent injunction, and awarding damages. We affirm in part, reverse in part, vacate in part, and remand.
Plaintiff-appellee Seattle Box Company, Inc. ("Seattle Box") and defendant-appellant Industrial Crating and Packing, Inc. ("Industrial") are Washington State corporations which provide oil pipe bundling services to oil companies. Both corporations have their principal places of business in Washington State.
Seattle Box filed this action on July 2, 1980, alleging that Industrial infringed U.S. Patent No. 4,099,617 ("the '617 patent") entitled "Shipping Bundle for Numerous Pipe Lengths." Seattle Box brought the action in its capacity as assignee of the rights in the '617 patent. On August 19, 1980, the United States Patent and Trademark Office ("PTO") reissued the '617 patent, with broadened claims, in U.S. Patent No. Re. 30,373 ("the '373 reissue patent"). Seattle Box also was the assignee of the rights in this patent. On October 10, 1980, Seattle Box amended its complaint to allege infringement of the '373 reissue patent. Industrial answered and counterclaimed, alleging patent invalidity, noninfringement, and patent misuse.
The district court held in favor of Seattle Box on May 4, 1982, and after an accounting for damages, entered judgment on February 9, 1983. Industrial presses only the issues of patent invalidity and noninfringement here on appeal.
Until at least 1975, oil companies commonly transported oil pipes of various diameters and with weights upwards of 40 pounds per foot, as loose joints about 40 feet in length. Since no packaging procedure capable of safely and securely handling oil country pipe then existed, many pipes were irreparably damaged in transit and during loading and unloading operations. Rennels, a representative for Atlantic Richfield Company ("ARCO"), in late 1975 recognized ARCO's pipe transport problems and discussed with the patentee, Ferdinand J. Nist, Jr. ("Nist"), ARCO's need for a pipe bundling method which would get oil pipe to the Alaskan North Slope without bends, dents, or damaged ends. Although at the time of this discussion Nist had no experience in packaging oil pipes, he nevertheless undertook the project.
After extensive experimentation, which the district court opinion sets forth in great detail, Nist settled on a system in which he placed a tier of pipes across parallel horizontal wooden beams, or "sleepers." To ensure that adjacent pipes remained separated, Nist placed between them a double-concave wooden spacer block, depicted in Figure 1.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
FIGURE 1
Nist stacked several tiers of these crossing rows of sleepers and pipes in order to make one pipe bundle. To prevent the weight of the upper pipes from crushing the lower pipes in either a bundle or a stack of bundles, Nist made his spacer blocks with a height at least equal to the pipe's diameter; the spacer blocks, therefore, absorbed most of the weight of the overhead load.
Figures 2-4 below depict a pipe bundle made according to the Nist method. In these figures, pipes 18, 36, and 44 lie across wooden sleepers 10, 30, 40, and 50. Double-concave spacers 22 separate the pipe. Finally, strapping materials 38, 46, 52, 59, and 60 hold together the entire bundle.
Seattle Box filed an application for a patent on Nist's invention on February 17, 1977. Claim 1 of this application stated that the double-concave spacer block had a "height substantially equal to the thickness of the tier of pipe lengths."
Seattle Box's patent attorney, however, narrowed Claim 1 during the application's prosecution so as to specify that the spacer block had a height only "greater than the diameter of the pipe." Soon after the attorney made this narrowing amendment, although not necessarily because of it, the patent examiner allowed each of the application's claims. The '617 patent issued on July 11, 1978.
On December 1, 1978, Seattle Box filed an application to have the '617 patent reissued with broader claims. Nist averred in support of this application that neither the patent examiner nor the cited prior art required the narrow scope of the issued claims, and that the limitation on the height of the spacer block in his Claim 1 was unnecessary and "arose through inadvertence by counsel." Nist additionally stated that "in reality each overlying or superposed sleeper need only be separated from its underlying companion a distance equal to but not less than the diameter (i.e., the thickness) of the pipes in each tier interposed between the sleepers to avoid forces being applied to squeeze the pipe in bundle stacks or handling operations * * *."
The PTO granted the application for the reissue patent and issued the '373 reissue patent on August 19, 1980. In addition to allowing Seattle Box to amend Claim 1 to specify a spacer block "of a height substantially equal to or greater than the thickness of the tier of pipe length" [emphasis in original], the PTO also allowed five wholly new claims, Claims 8-12.
The reissued, amended Claim 1, upon which claims 2-6 depend, is a product claim for:
1. A shipping bundle formed of a plurality of lengths of pipe of a common size, comprising:
a base formed of a first plurality of transverse sleepers located in spaced-apart parallel arrangement;
a tier of pipe lengths resting on said base, adjacent pipe lengths of said tier being separated by blocks in transverse series, each block having opposed concavities substantially embracing the curved sides of said adjacent pipe lengths;
each of said series of blocks being located to stand on one of said sleepers and being of a height substantially equal to or greater than the thickness of the tier of pipe lengths;
a second plurality of sleepers, each traversing said pipe tier in overlying alignment with a sleeper of said first plurality, the sleepers of said second plurality being supported on the series of separating blocks; and
a bundling strap tightly encircling each sleeper of said first plurality, the separating blocks resting thereon, and the respective overlying sleeper. [Emphasis in the claim.]
The reissued, new Claim 8, upon which claims 10 through 12 depend, is a claim for a process using:
8. The method of bundling a plurality of lengths of pipe of a common size, comprising:
forming a first bundle base by laying down a first plurality of transverse sleepers in spaced-apart parallel locations;
depositing a first tier of pipes on said bundle base and at each location concavely chocking adjacent pairs of pipes of said tier in spaced-apart relation;
traversing the first tier of pipes with a second plurality of transverse sleepers aligned with said first plurality at each location and vertially [sic] spaced apart by said chocking from said first plurality a distance substantially equal to or greater than the diameter of said pipes;
tightly encircling the pipes of said first tier with strapping adjacent at least two of said locations; and,
tightly encircling the sleepers at each location with strapping.
Claims 7 and 9, withdrawn before trial, are not at issue here.
The parties argue three main issues in this appeal:
1. Did the trial court err in not holding the Nist '373 reissue patent invalid (a) for obviousness under 35 U.S.C. Sec. 103, (b) for indefiniteness under 35 U.S.C. Sec. 112, or (c) under the recapture rule for obtaining through reissue claims of improper scope?
2. Did the trial court err in (a) finding that Industrial presently infringes claims of the '373 reissue patent and (b) enjoining that infringement?
3. Did the trial court err in (a) finding that Industrial infringed claims of the '617 patent before the '373 reissue patent issued and (b) holding Industrial liable for that infringement?
We are, once again, confronted with a challenge to a trial court's judgment on the issue of obviousness. We begin, as usual, with a careful review of the district court's fact-findings made according to the Supreme Court's prescribed ritual: "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966). We cannot and will not set these fact-findings aside unless the appellant persuades us that the findings are clearly erroneous. Fed.R.Civ.P. 52(a). Since Industrial has not left us here with a definite and firm conviction that the trial judge has committed a mistake, we rely fully on the district court's findings.
Before trial, Industrial identified as prior art some seventy United States patents, three West German patents, a 1960...
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