Haynes Intern., Inc. v. Jessop Steel Co.

• Citation: 8 F.3d 1573,28 USPQ2d 1652
• Decision Date: 01 November 1993
• Docket Number: No. 91-1410,91-1410
• Parties: HAYNES INTERNATIONAL, INC., Plaintiff-Appellant, v. JESSOP STEEL COMPANY, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1573

8 F.3d 1573

28 U.S.P.Q.2d 1652

HAYNES INTERNATIONAL, INC., Plaintiff-Appellant, v. JESSOP STEEL COMPANY, Defendant-Appellee.

No. 91-1410.

United States Court of Appeals, Federal Circuit.

Nov. 1, 1993.

As Clarified on Motion for Rehearing and

Rehearing In Banc Feb. 8, 1994. ^*

Suggestion for Rehearing In Banc Declined

Feb. 25, 1994.

Victor M. Wigman, Wigman & Cohen, P.C., Arlington, VA, argued for plaintiff-appellant. With him on the brief was Lynn J. Alstadt, Buchanan Ingersoll, P.C., Pittsburgh, PA.

William H. Webb, Webb, Burden, Ziesenheim & Webb, P.C., Pittsburgh, PA, argued for defendant-appellee. With him on the brief was Kent E. Baldauf.

Before RICH, NEWMAN and PLAGER, Circuit Judges.

PLAGER, Circuit Judge.

This is a patent infringement case, involving infringement under the doctrine of equivalents. Haynes International, Inc. (Haynes) appeals the final decision of the United States District Court for the Western District of Pennsylvania (Civil Action No. 87-2717) entered on June 14, 1991. The district court granted Jessop Steel Company's (Jessop) motion for summary judgment of non-infringement of U.S. Patent No. 4,533,414 (the '414 patent), both literally and under the doctrine of equivalents, and granted its request for attorney fees. Haynes only appeals the judgment on the doctrine of equivalents issue. We affirm the grant of summary judgment, and reverse the grant of attorney fees.

I. BACKGROUND

Haynes is the current owner of the '414 patent, which issued on August 6, 1985. The '414 patent is directed to a corrosion-resistant nickel-based alloy containing chromium, molybdenum, and tungsten. Cabot Corporation (Cabot) is the former owner of the '414 patent and thus is Haynes' predecessor-in-interest. Cabot was responsible for securing the issuance of the '414 patent. Jessop is the manufacturer of an alloy which Haynes alleges infringes its patent.

On December 18, 1987, Haynes filed a complaint against Jessop in the District Court for the Western District of Pennsylvania charging Jessop with, inter alia, infringement of the '414 patent. Jessop subsequently filed an answer denying patent infringement and a counterclaim seeking declaratory relief. On September 4, 1990, after the parties had conducted limited discovery, Jessop filed a motion for summary judgment of non-infringement, invalidity, and unenforceability of the '414 patent, and a request for attorney fees.

The court then referred the matter to a magistrate pursuant to 28 U.S.C. § 636(b)(1)(A) and (B) (1988). On January 9, 1991, the magistrate issued a report recommending that Jessop be awarded summary judgment of non-infringement. The magistrate did not address Jessop's motion for summary judgment of invalidity or unenforceability because he found these issues to be moot. The magistrate also did not address Jessop's request for attorney fees.

When Jessop objected to the magistrate's failure to address its request for attorney fees, the magistrate, on March 22, 1991, issued a supplemental report reaffirming the non-infringement recommendations in the previous report, and recommending that Jessop be awarded attorney fees on the basis that Haynes should have known that its infringement claim would be barred by prosecution history estoppel, and its suit was therefore frivolous. On May 21, 1991, the district court judge, in a memorandum order, adopted the magistrate's recommendations. On June 14, 1991, the court entered a final decision granting Jessop's motion for summary judgment of non-infringement, and awarding Jessop attorney fees in accordance with the previous memorandum order. This appeal followed.

II. DISCUSSION

The sole claim in the '414 patent reads:

1. The wrought product form of an alloy consisting essentially of, in weight percent, about 22 chromium, about 13 molybdenum, about 3 tungsten, less than 0.5 columbium, less than 0.5 tantalum, less than 0.1 carbon, less than 0.2 silicon, less than 0.5 manganese, about 3 iron, less than 0.7 aluminum plus titanium, less than 0.5 vanadium and the balance nickel plus impurities wherein the ratio of molybdenum to tungsten is within the range 3:1 to 5:1, wherein the ratio of iron to tungsten is within the range 1:1 to 3:1, and wherein said ratios provide said alloy with an optimum combination of corrosion resistant properties in a variety of corrosive media and hot and cold working properties to permit production of thin sheet, tubing and other commercial forms. (Emphasis ours.)

The dispute in this case centers on the about 22 chromium limitation, Jessop conceding that its alloy meets all the other limitations of the claim. It is undisputed that Jessop's alloy has a chromium content of between 20.74 to 20.81%. The district court ¹ concluded that this limitation is not met by Jessop's alloy, either literally or under the doctrine of equivalents. The basis for its conclusion on the doctrine of equivalents issue was prosecution history estoppel. That portion of the judgment is before us on appeal.

A. Standard of Review

This court reviews a grant of summary judgment to determine whether any genuine issues of material fact are in dispute, and whether any errors of law were made. London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1537, 20 USPQ2d 1456, 1458 (Fed.Cir.1991).

We review an award of attorney fees to determine if the district court abused its discretion or made its determination under an erroneous conception of the law. Bayer Aktiengesellschaft v. Duphar Intern. Research, 738 F.2d 1237, 1242, 222 USPQ 649, 652 (Fed.Cir.1984).

B. Infringement Under the Doctrine of Equivalents

1.

As originally filed in the Patent and Trademark Office (PTO), the '414 application contained nine claims, of which only claims 1, 4, and 5 are relevant here. Those claims read in relevant part:

1. An alloy consisting essentially of, in weight percent, 20 to 24 chromium, ... (Emphasis ours.)

* * * * * *

4. The alloy of claim 1 wherein the alloy contains about 21 to 23 chromium, ... (Emphasis ours.)

5. The alloy of claim 1 containing about 22 chromium, ... (Emphasis ours.)

Claim 1 was the only independent claim in the application. Claims 4 and 5 were dependent from claim 1. As is evident, the claims recited progressively narrower ranges of chromium content. The chromium content of Jessop's alloy was included within the specific terms of original claim 1, and perhaps original claim 4 (the about question).

During prosecution, the examiner rejected claims 1, 4, and 5 for obviousness on the basis of U.S. Patent No. 3,203,792 to Scheil et al. (hereinafter "Scheil"), the commercial embodiment of Scheil, known as the C-276 alloy, and U.S. Patent 1,836,317 to Franks. The principal difference between the claimed subject matter and the cited prior art was that the claims recited a different but overlapping range of chromium content. ² The examiner considered this difference to be immaterial.

To rebut the examiner's rejection, Cabot amended claim 1 in a manner which is not material to this appeal. It also submitted test data purporting to show that the claimed range of chromium content results in unexpected advantageous corrosion resistance properties. Cabot generated the test data by preparing samples of alloys having varying compositions, and then measuring the corrosion resistance properties of each. Significantly, the only alloy which Cabot prepared which was within the literal scope of the pending claims was an alloy having a chromium content of 21.96% known as the C-20 alloy.

Cabot further submitted an affidavit (the Manning affidavit) which stated that "the chromium range of 20% to 24% [recited in claim 1] is very critical, and merely increasing (or decreasing) chromium content does not expectedly result in better overall corrosion resistance to a variety of corrosive media."

The examiner responded by issuing a final action rejecting the claims on the basis of Scheil. After again amending claim 1 in a manner which is not material to this appeal, Cabot appealed to the Board of Patent Appeals and Interferences (Board). The Board ruled that the examiner had established a prima facie obviousness rejection of the claims as unpatentable over the combination of Scheil and its C-276 alloy. ³ The Board noted that all limitations except chromium content were expressly met by the C-276 alloy, and that it would have been presumptively obvious to modify the chromium content of that alloy to achieve the claimed chromium content in view of the teachings in Scheil.

However, with regard to claim 5, the Board decided that Cabot, through submission of the test data for the C-20 alloy, had successfully rebutted the prima facie rejection. According to the Board, this evidence showed that an alloy within the scope of that claim, the C-20 alloy, had unexpected properties over the prior art. Accordingly, the Board reversed the examiner's rejection of that claim.

With regard to claims 1 and 4, the Board decided that the proffered evidence failed to rebut the prima facie rejection of these claims on the grounds that "[i]t is conjectural whether the improvements shown would also be exhibited by all alloys within the scope of the claims, other than Alloy C-20." [Emphasis added]. Accordingly, the Board affirmed the examiner's rejection of claims 1 and 4.

Cabot then rewrote claim 5 in independent form, and cancelled claims 1 and 4. Despite the fact that the statement in the Manning affidavit, attesting to the criticality of the claimed chromium content, suggested that Cabot had or was able to generate such additional test data, and that Cabot might have assumed that the Board's action, in allowing claim 5, indicated that the submission of additional test data would have procured the issuance of claims 1 and 4, Cabot never submitted additional test data or continued prosecution of claims 1 or 4 (through a continuation or reissue application). The patent issued with claim 5 (renumbered as claim 1) as the sole claim.

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