Tillotson, Ltd. v. Walbro Corp.
| Decision Date | 15 October 1987 |
| Docket Number | No. 86-1189,86-1189 |
| Citation | 4 USPQ2d 1450,831 F.2d 1033 |
| Parties | TILLOTSON, LTD., Appellant, v. WALBRO CORPORATION, Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Jeffrey A. Sadowski, of Harness, Dickey & Pierce, Birmingham, Mich., argued for appellant. With him on the brief was Ernest A. Beutler, of Harness, Dickey & Pierce, Birmingham, Mich.
George E. Frost, of Barnes, Kisselle, Raisch, Choate, Whittemore and Hulbert, Birmingham, Mich., argued for appellee. With him on the brief were Robert C. Choate and William H. Francis, of Barnes, Kisselle, Raisch, Choate, Whittemore and Hulbert, Birmingham, Mich.
Before DAVIS, SMITH and ARCHER, Circuit Judges.
Tillotson, Ltd. (Tillotson) appeals from a judgment of the United States District Court for the Eastern District of Michigan, Case No. 85-CV-10270-BC, granting summary judgment in favor of Walbro Corporation (Walbro) and holding Reissue Patent No. 31,233 ('233), assigned to Tillotson, invalid under 35 U.S.C. Sec. 251 (1982). We vacate and remand.
U.S. Patent No. 3,738,608 ('608) issued to Warren D. Nutten and Bernard C. Phillips on June 12, 1973, and was assigned to Borg-Warner Corporation, which subsequently assigned its rights to Tillotson. The '608 patent disclosed and claimed a vibration responsive valve for automatically modifying the mixture of fuel and air delivered to an internal combustion engine, typically a two-cycle chain saw engine, in order to govern the engine and prevent damage due to excessively high speed. Claim 1 of the '608 patent, the only independent claim, provided as follows:
1. A valve unit of the character disclosed including, in combination, a cylindrically-shaped housing having a bore therein defining a chamber, a ball-shaped valve member disposed for relative movement in the chamber, a seat for the valve member shaped to define a fuel port, spring means in the housing normally biasing the valve member to port-closing position, said spring means being the sole force biasing the valve member to port-closing position, passage means opening into the chamber for admitting fuel from a supply into the chamber, the mass of the valve and the pressure of the spring means being calibrated to be responsive to a predetermined frequency of vibration to effect movement of the valve member at said frequency away from port-closing position to permit fuel flow through said port. (Emphasis added.)
On October 19, 1979, six years after the issuance of the '608 patent, Borg-Warner Corporation, Tillotson's predecessor in interest, filed a reissue application under the "no defect" reissue practice available at that time, seeking reconsideration of the '608 patent in view of newly-discovered prior art. 37 C.F.R. Sec. 1.175(a)(4) (1979).
In response to the examiner's rejection of the original claims of the '608 patent which were incorporated in the reissue application, a supplemental reissue declaration was filed pursuant to 37 C.F.R. Sec. 1.175(a)(3) (1979), together with amended claims. The supplemental declaration alleged error by reason of the patentees claiming more than they had a right to claim. In addition to the spring means for closing the valve as set forth in the original claims, the declaration referred also to the presence of a "pressure differential between the mixing passage and fuel chamber." The operation of this spring means and pressure differential are perhaps best understood by reference to Figures 7, 8 and 11 of the '233 reissue patent and the explanation thereof. Figures 7 and 8 depict a conventional carburetor of the type used on chain saw engines.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The carburetor is described as having an air/fuel mixing passage 76 which includes an air inlet region 77, a venturi 78 having a restricted region 79, and an outlet region 80, where the carburetor is affixed to the intake manifold of the engine. When the engine is operating, the venturi provides a vacuum pressure which aspirates fuel from the fuel chamber 114 through a metering orifice 138 into the air stream. A throttle valve 94 varies the flow of air and fuel into the engine. If the engine is abruptly relieved of load, as for example when the chain saw passes out of a workpiece after a cut is completed, the throttle may still be open and engine speed may increase rapidly. To protect against engine damage from such a speed increase, the claimed valve assembly limits engine speed by means of a normally closed valve which opens to supply excess fuel to create an overly rich fuel/air mixture in response to engine vibrations associated with high engine speed.
One embodiment of the claimed valve assembly is illustrated in Figure 11.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The carburetor body 74 defines a mixing passage 76 through which the air/fuel mixture flows into an engine intake manifold when the engine is operating. A by-pass passage extends from fuel chamber 114, as indicated by reference numerals 200 and 192. A ball 208 normally closes this passage by closing port 205. A spring 209 exerts a biasing force on the ball towards the port-closing position to bias the ball against its seat to close the port. If the engine speed becomes excessive, the carburetor body 74 vibrates in response to engine vibrations causing the ball valve to disengage from its seat and permit excess fuel to flow through the by-pass passage. As the mixture in mixing passage 76 becomes overly rich, the engine speed is thereby slowed.
After the claims were amended, inter alia, to delete the phrase "sole force" and to include reference to the pressure differential, the examiner allowed the claims, and Reissue Patent No. Re 31,233 ('233) was issued on May 10, 1983, ten years after the issuance of the original '608 patent. Claim 8 of the '233 reissue patent, which replaced original claim 1, reads as follows:
8. An overspeed governing valve assembly for an internal combustion engine, which valve assembly is responsive to engine vibrations to introduce additional fuel into the engine for engine speed control, and which assembly includes On June 7, 1985, Tillotson filed suit against Walbro for infringement of the '233 reissue patent. Walbro answered and moved for summary judgment on the grounds of noninfringement, laches, intervening rights, and invalidity of the '233 reissue patent under 35 U.S.C. Sec. 103 (1982) for obviousness and/or under 35 U.S.C. Sec. 251 (1982) for enlarging the scope of the original claims more than two years after the issuance of the '608 patent. Following a hearing, the district court granted Walbro's motion for summary judgment on the ground that claim 8 broadened the scope of original claim 1 more than two years after issuance of the '608 patent, making the '233 reissue patent invalid under 35 U.S.C. Sec. 251 (1982). The court stated:
in combination, a cylindrically-shaped housing defining a first chamber, a ball-shaped valve member in said chamber disposed for relative movement therein in either a transverse or lengthwise direction regardless of the housing position with respect to the engine, said housing defining a seat for a valve member, which seat defines a fuel port, spring means in the housing normally biasing the valve member to port-closing position, said housing defining a fuel chamber and a mixing passage, operation of the engine developing a pressure differential between the pressures in the fuel chamber and mixing passage, both of which pressures are below atmospheric pressure, said spring means in cooperation with said pressure differential combining to bias said ball-shaped valve member to the port closing position, and said housing defining a fuel passage opening into the first chamber for admitting fuel into the first chamber, the mass of the valve member and the pressure of the spring means being calibrated to be responsive to a predetermined frequency of engine vibration to effect movement of the valve member at said predetermined frequency away from the port-closing position to permit fuel flow through said fuel port. (Emphasis added.)
The Court took the Defendant's Motion for Summary Judgment under advisement at the close of oral arguments for the somewhat unique reason that the defendant's position seemed to the court to be obviously correct. Perhaps something was being missed. Upon reexamination of Claim 1 in the original patent of Claim 8 in the reissue patent and the arguments in the briefs, the Court is left with the conclusion that Claim 1 can only be construed to say that the sole means of "biasing the valve member to the port-closing position" not only when the machine is not in operation, but when the machine is in operation, is a spring. A carburetor in which there were dual or combined means of maintaining the value [sic: valve] in position during operation could not infringe the original patent, but could infringe the reissued patent. The reissued patent did enlarge the scope of the claims of the original patent and is, therefore, invalid. The defendant's motion for summary judgment is granted.
Tillotson's motion for reconsideration was denied without additional findings.
The sole issue before this court is whether the district court was correct in holding that no genuine issue of material fact existed as to whether the '233 reissue patent broadened the scope of the '608 patent.
This court has stated that summary judgment under Rule 56, Fed.R.Civ.P., is appropriate in a patent case where no genuine issue of material fact remains for decision and the movant is entitled to judgment as a matter of law. Moeller v. Ionetics, Inc., 794 F.2d 653, 656, 229 USPQ 992, 994 (Fed.Cir.1986); Porter v. Farmers Supply Service, Inc., 790 F.2d 882, 884, 229 USPQ 814, 815 (Fed.Cir.1986). However, in a summary judgment motion to invalidate an existing patent, the burden on the moving party is indeed...
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