Perkin-Elmer Corp. v. Westinghouse Elec. Corp.
| Decision Date | 24 June 1987 |
| Docket Number | PERKIN-ELMER,No. 86-646,86-646 |
| Citation | 3 USPQ2d 1321,822 F.2d 1528 |
| Parties | TheCORPORATION, Appellant, v. WESTINGHOUSE ELECTRIC CORPORATION, Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Francis T. Carr, Kenyon & Kenyon, New York City, for appellant. With him on brief were John C. Altmiller, Michael J. Lennon and Steven Anzalone.
Robert E. Isner, Nims, Howes, Collison & Isner, New York City, for appellee. With him on brief were William R. Hansen and Margaret Ranft. Also on brief was Walter G. Sutcliff, Westinghouse Elec. Corp., of Pittsburgh, Pa.
Before MARKEY, Chief Judge, NEWMAN and ARCHER, Circuit Judges.
Appeal from a judgment of the United States District Court for the Eastern District of New York. The district court found that Westinghouse's accused devices do not infringe claim 1 under the doctrine of equivalents. Unable to view that finding as clearly erroneous under Fed.R.Civ.P. 52(a), we affirm.
Perkin-Elmer sued Westinghouse for infringing its U.S. Patent No. 3,873,884 (the '884 patent) on an invention of Fred C. Gabriel (Gabriel), entitled "Electrodeless Discharge Lamp and Power Coupler Therefor". A nonjury trial on the issues of patent infringement and validity was held on August 6-10, 1979.
Before the district court, Perkin-Elmer conceded the absence of literal infringement, but alleged infringement under the doctrine of equivalents. Westinghouse conceded that the '884 patent, if narrowly construed, is valid. As noted by the district court, if the claim is to be "construed broadly as claimed by Perkin-Elmer, Westinghouse argue[d] that the patent is invalid for lack of specificity, lack of novelty, and obviousness." Saying the patent is valid "if interpreted narrowly," the district court upheld the validity of the '884 patent and found that Westinghouse did not infringe under the doctrine of equivalents.
Perkin-Elmer appeals from the district court's holding of non-infringement under the doctrine of equivalents. Westinghouse did not appeal from the district court's validity holding.
The sole issue is whether the district court's finding, that the accused devices do not infringe claim 1 of the '884 patent under the doctrine of equivalents, is clearly erroneous. 1
The claimed invention is a resonator coupler for an electrodeless discharge lamp (EDL).
EDL's have a trace of a selected element incorporated in them to provide a bright spectral line source of the selected metal for use in chemical analysis, particularly atomic absorption spectroscopy (AAS). AAS is performed by comparing the intensity of the EDL-generated spectral line, after it has passed through a test sample which has been atomized in a flame or other atom cell, to a previously measured and stored intensity of the EDL-generated spectral line after it has passed through a sample of a known concentration which has been similarly atomized. Although EDL's were known spectral line sources, they were of limited use due to their high cost, large size, unreliable operation, and undesirable electromagnetic problems.
Gabriel claimed his invention in very specific terms. The only independent claim in issue, claim 1, reads:
(a) 2 A resonator coupler for coupling a source of r-f electrical power into an electrodeless discharge lamp for starting and operating the lamp comprising:
(b) a grounded hollow cylinder of electrically conductive material open at one end, with a grounded base member at the other end;
(c) a helically coiled wire conductor concentrically within the cylinder and spaced from the inner walls thereof;
(d) means for mounting a discharge lamp substantially concentrically within one end position of the coil (e) the wire of the coil being one quarter wave long relative to the free-space wavelength of r-f power intended to be applied for operating a lamp mounted therein;
(j) whereby when said r-f power is applied to the coil, and before a discharge is ignited in the lamp, a voltage maximum occurs at the open circuited end of the coil and creates a potential extending through the lamp portion between said open circuited end and said base member for ionizing the gas in the lamp. [Emphasis added.]
The parties disputed the meaning of several clauses in the claim. The district court did not expressly construe claim 1; it clung to the literal language of the claim and found four fundamental differences between the claimed invention and the accused products of Westinghouse. Because of those differences, the district court found that the accused devices do not perform substantially the same function in substantially the same way to obtain the same result.
It is unnecessary for this court in this case to ascertain the interpretation the district court gave to the disputed clauses in the claim, from a review of the differences it found in those clauses or otherwise. 3 If that were done, and if we were then to conclude that the district court's construction of the claim was legal error, we would remand to the district court for an application of the properly construed claim to Westinghouse's devices. 4 Because of the differences found by the district court between the accused devices and the structure and operation set forth in claim clauses (h) and (i), the interpretation of which is undisputed, and because those differences sufficiently support the district court's determination of non-infringement under the doctrine of equivalents, a remand is not necessary and an affirmance is in order. 5
As often occurs, the record contains some evidence on which this court might, if sitting at trial, have found the facts differently. That is not, however, our role. When, as here, the district court has found the fact of non-equivalence and there is evidence to support that finding, we are not at liberty to reverse unless we can say that that finding was clearly erroneous. Anderson v. City of Bessemer City, 470 U.S. 564, 574, 105 S.Ct. 1504, 1512, 84 L.Ed.2d 518 (1985) (). In sum, a determination of non-equivalence is a finding of fact and we cannot say that that finding in this case was clearly erroneous.
The differences based on claim clauses (h) and (i) are for ease of reference denoted by the parties and the district court as tap coupling in the claimed invention and loop coupling in Westinghouse's two devices.
The patent discloses and claims in clauses (h) and (i) an autotransformer-type tap coupling with a tap point variably located on the helical coil for connecting it to the r-f power source. To obtain a high voltage within the EDL, the location of the tap point is selected to tune the resonant frequency of the EDL to the frequency of the r-f power source. And to maximize power transferred from the r-f source to the EDL, the location of the tap point is set to match the internal impedance of the EDL with the impedance of the r-f power source. The patent specification, describing the single embodiment in the drawing and specifically set out in the claim, makes clear that the tap was located on the coil to perform a particular function:
The tap 26 into the coil 15 is located relative to the turns of the coil so that when the lamp 10 is operating the coupler 11 is tuned to the frequency supplied by the r-f generator and the impedance of the coupler and lamp circuit matches the impedance of the r-f generator at the tap 26.
The district court found that the tap point and its positioning for purposes of frequency tuning and impedance matching, as claimed, is one of the "cardinal structural-functional-operational interrelationships" of the claimed invention. Perkin-Elmer does not challenge that critical finding.
Perkin-Elmer concedes that Westinghouse's devices employ a transformer-type loop coupling (as distinguished from an autotransformer-type tap coupling) in which the connecting point between the helical coil and the r-f power source is not fixed for purposes of frequency tuning or impedance matching. Perkin-Elmer also concedes that the claimed invention's autotransformer-type tap-coupling arrangement is different from Westinghouse's transformer-type loop-coupling arrangement. In the claimed invention, a portion of the secondary coil in the autotransformer circuit serves as a primary coil in that circuit, whereas, in the accused devices, the primary and secondary coils in the transformer circuit are separate.
Perkin-Elmer's candid concession of the aforementioned differences between the claimed invention and the accused devices is mandated by the record before us and there is no plausible basis for setting aside the findings on those differences as clearly erroneous. However, the critical question here is whether the differences in coupling establish that the claimed invention and the accused devices do not operate in substantially the same way. 6 If that question is answered in the affirmative, the district court's finding that the accused devices do not infringe claim 1 under the doctrine of equivalents cannot be found to have been clearly...
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