Townsend Engineering Co. v. Hitec Co., Ltd.

• Decision Date: 16 September 1987
• Docket Number: No. 87-1141,87-1141
• Citation: 829 F.2d 1086,4 USPQ2d 1136
• Parties: TOWNSEND ENGINEERING COMPANY, Plaintiff-Appellant, v. HITEC CO., LTD., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1086

829 F.2d 1086

4 U.S.P.Q.2d 1136

TOWNSEND ENGINEERING COMPANY, Plaintiff-Appellant, v. HITEC CO., LTD., Defendant-Appellee.

No. 87-1141.

United States Court of Appeals Federal Circuit.

Sept. 16, 1987.

Donald H. Zarley, Zarley, McKee, Thomte, Voorhees & Sease, Des Moines, Iowa, argued for plaintiff-appellant. With him on brief was Mark D. Hansing.

James D. Jacobs, Rosen, Dainow & Jacobs, New York City, argued for defendant-appellee. With him on brief, was Dennis M. Flaherty.

Before FRIEDMAN, Circuit Judge, BALDWIN, Senior Circuit Judge, and NEWMAN, Circuit Judge.

FRIEDMAN, Circuit Judge.

This is an appeal from a judgment of the United States District Court for the Northern District of Illinois granting summary judgment for the defendant in a patent infringement suit. The court found that there was no infringement, either literal or under the doctrine of equivalents. We affirm.

I

The invention the patent (No. 3,694,853) (the '853 patent) discloses is a sausage-stuffing machine. This case involves the "looper horn" claimed in the '853 patent, which loops stuffed sausages on hooks for further processing.

The appellant Townsend Engineering Company (Townsend) obtained the '853 patent by assignment from its inventor, Charles Austin Greider. Townsend also owned an earlier and now expired U.S. Patent (No. 3,191,222) (the '222 patent), on a sausage-stuffing machine, issued to its chief executive officer, Ray T. Townsend.

Encasing machines made according to the '222 patent had difficulty handling delicate casing material because of the shape of the machines' looper horn. In his specification in the '853 patent, Greider explained that he could avoid the tearing problems encountered in machines manufactured under the '222 patent by changing the shape and geometry of the looper horn:

The horn extension shown in U.S. Pat. No. 3,191,222 is helical or spiral in shape whereas the horn extension of the present invention is substantially straight and disposed at an angle with respect to the rotational axis of the bearing means (horn base 202) which supports the horn extension.

The application for the '853 patent originally included 27 claims. Claim 27 of the application, which as amended is now claim 5 of the '853 patent, the claim covering the looper horn, is the only claim relevant in this appeal. In pertinent part, claim 27 set forth

an elongated tube-like horn extension having first and second ends and a longitudinal base [sic: bore] extending therethrough for slidably receiving said casing, said first end of said horn extension being adapted to receive said casing;

bearing means on said support having an axis of rotation and rotatably supporting said first end of said horn extension, the longitudinal axis of said horn extension being substantially straight and forming an angle with respect to said axis of rotation of said bearing means....

In the first Office Action, the patent examiner rejected claim 27 as anticipated by the looper horn of the '222 patent. See 35 U.S.C. Sec. 102 (1982). In response, Greider cancelled claim 27 and substituted claim 30, which ultimately became claim 5 of the '853 patent. The most significant differences between claim 30 and claim 27 relate to the shape and length of the looper horn. The relevant portion of claim 30 is reproduced below, with underlining and brackets showing the language added to and deleted from claim 27:

an elongated tube-like horn extension having first and second end portions [ends] and a [longitudinal] bore extending therethrough and therebetween for slidably receiving said casing [, said first end of said horn extension being adapted to receive said casing], said second end portion having a length substantially greater than the length of said first end portion,

bearing means on said support having an axis of rotation and rotatably supporting said first end portion of said horn extension, said second end portion having a [the] longitudinal axis [of said horn extension] which is [being] substantially straight and which is angularly disposed [and forming an angle] with respect to the longitudinal axis of said first end portion and angularly disposed with respect to said axes of rotation of said bearing means....

In the remarks explaining the substitution of claim 30 for claim 27, Greider noted that the looper horn of the application differed from that in the '222 patent because the latter was both curved and rotating In the specification, [Greider] recognized that looping horns such as the one disclosed in the ['222 patent] have been previously used for looping link casings but it was specifically stated at page 18 of the specification that previous horns have not been adapted to handle delicate casings satisfactorily. The horn extension shown in the ['222] patent is helical or spiral in shape whereas the horn extension of the present invention is substantially straight and disposed at an angle with respect to the rotational axis of the bearing means which supports the horn extension. The result of the device described in claim 30 is that the casings are gently swung back and forth for looping over the hooks of the conveyor. This action is gentler and less likely to cause tearing of the casing than the action obtained from the previous helical horn.

With these changes, claim 30 was issued as claim 5 of the '853 patent.

Townsend filed the present suit against appellee HiTec Co., Ltd. (HiTec), alleging that HiTec's "Auto Wienker" sausage-stuffing machine infringed claim 5 of the '853 patent. The patented and accused looper horns are illustrated below:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

HiTec moved for summary judgment of non-infringement, asserting that the Auto Wienker did not infringe either literally or under the doctrine of equivalents. The district court granted the motion and dismissed the complaint. The court ruled that in order to infringe claim 5 literally, HiTec's looper horn had to:

consist of two parts, one part of which is (1) substantially longer than the other part and (2) substantially straight. In addition the horn must be rotated by a bearing means that supports the shorter part of the horn. Finally the longer part of the horn must be set off at an angle from the shorter part.

Townsend Eng'g Co. v. HiTec Co., 1 USPQ2d 1987, 1989 (N.D.Ill.1986). The district court noted that unlike the two-part, substantially straight horn claimed in the '853 patent, the Auto Wienker's The court also rejected Townsend's contention that the accused device infringed under the doctrine of equivalents. The court held that Townsend was barred by the doctrine of prosecution history estoppel from reading claim 5 to cover a looper horn like that embodied in the '222 patent:

                horn was "a one-piece continuously curved plastic tube...."  Id. at 1989-90.  Because it found that "even a cursory examination of the Auto Wienker horn establishes it does not truly have any of those crucial properties of the [looper horn disclosed in the '853 patent]," the court determined that there was no literal infringement.   Id. at 1989 (emphasis in original)
                

[Claim 5 of the '853 patent] was amended after an initial rejection by the patent examiner. That amendment was necessary to distinguish Claim 5 from material already embraced by the ['222] Patent and therefore found to have been anticipated under 35 U.S.C. Sec. 102. Because the looper horn in the ['222] Patent was curved or spiral, Greider was forced to add the limitation that his own looper horn comprises two parts, one of which is longer than and angularly disposed to the shorter part. Indeed, Greider's attorney emphasized the newlynarrowed description of the looper horn in the argument that accompanied amended Claim 5.

In light of that prosecution history, Townsend is estopped from using the doctrine of equivalents to avoid the specific words of limitation Greider chose to add to Claim 5 to obtain issuance of his patent....

Accordingly Townsend cannot argue the curved single-piece Auto Wienker looper horn (an embodiment abandoned in Claim 5 as amended) is the functional equivalent of the substantially straight two-piece Greider looper horn....

Id. at 1990-91 (footnote and citations omitted).

II

Although infringement, either literal or under the doctrine of equivalents, is a question of fact, see Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609, 70 S.Ct. 854, 856, 94 L.Ed. 1097, 85 USPQ 328, 331 (1950), " '[s]ummary judgment is as appropriate in a patent case as in any other' where no genuine issue of material fact is present and the movant is entitled to judgment as a matter of law." Brenner v. United States, 773 F.2d 306, 307, 227 USPQ 159, 160 (Fed.Cir.1985) (quoting Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 835, 221 USPQ 561, 564 (Fed.Cir.1984)). Thus, the granting of summary judgment will be upheld "where the claims do not 'read on' the accused structure" to establish literal infringement "and a prosecution history estoppel makes clear that no actual infringement under the doctrine of equivalents can be found." Id.; Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 225 USPQ 240 (Fed.Cir.1985).

Townsend contends that there are disputed issues of material fact relating to both literal infringement and infringement by equivalents that precluded the grant of summary judgment, and that in any event the district court erred in holding that the doctrine of prosecution history estoppel bars Townsend from invoking the doctrine of equivalents. To establish the existence of disputed issues of material fact, Townsend relies mainly upon the affidavit of its chief executive officer, Mr. Townsend, which it asserts established the existence of nine disputed issues of material fact. Townsend further asserts...