843 F.2d 1349 (Fed. Cir. 1988), 86-1516, Durango Associates, Inc. v. Reflange, Inc.

Docket Nº:86-1516, 86-1517.
Citation:843 F.2d 1349
Party Name:6 U.S.P.Q.2d 1290 DURANGO ASSOCIATES, INC. and DND Corporation, Plaintiffs-Appellees, v. REFLANGE, INC., Defendant-Appellant, and Climax Portable Machine Tools, Inc., Defendant. DURANGO ASSOCIATES, INC. and DND Corporation, Plaintiffs-Appellees, v. REFLANGE, INC., Defendant, and Climax Portable Machine Tools, Inc., Defendant-Appellant.
Case Date:April 01, 1988
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1349

843 F.2d 1349 (Fed. Cir. 1988)

6 U.S.P.Q.2d 1290

DURANGO ASSOCIATES, INC. and DND Corporation, Plaintiffs-Appellees,

v.

REFLANGE, INC., Defendant-Appellant,

and

Climax Portable Machine Tools, Inc., Defendant.

DURANGO ASSOCIATES, INC. and DND Corporation, Plaintiffs-Appellees,

v.

REFLANGE, INC., Defendant,

and

Climax Portable Machine Tools, Inc., Defendant-Appellant.

Nos. 86-1516, 86-1517.

United States Court of Appeals, Federal Circuit

April 1, 1988

Page 1350

        Guy E. Matthews, of Guy E. Matthews, P.C., Houston, Tex., argued, for plaintiffs-appellees.

        Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued, for defendant-appellant. With him on the brief, were Herbert H. Mintz and Reid G. Adler. Also on the brief, were Michael O. Sutton, Arnold, White & Durkee, of Houston, Texas and James S. Leigh, Klarquist, Sparkman, Campbell, Leigh & Whinston, Portland, Or.

        Before FRIEDMAN and SMITH Circuit Judges, and SKELTON, Senior Circuit Judge.

        EDWARD S. SMITH, Circuit Judge.

        This case involves a patent infringement action by DND Corporation (DND) and Durango Associates, Inc. (Durango), against Reflange, Inc. (Reflange), and Climax Portable Machine Tools, Inc. (Climax). The United States District Court for the Southern District of Texas concluded that patent Nos. 3,762,246 ('246 patent) and 3,772,944 ('944 patent) were valid. 629 F.Supp. 443. The court found that claim 3 of the '246 patent was infringed by Climax's model FF 618 and that claim 1 of the '944 patent was infringed by models FF 618 and LFF 1840. The court also found that claims 1 and 7 of the '246 patent were not infringed by the FF 618 and the LFF 1840 and that claim 3 of the '246 patent was not infringed by the LFF 1840. Climax and Reflange appeal from the district court's judgment of infringement. 1

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We affirm in part, vacate in part, and remand.

Issues

        (1) Whether the district court erred in finding claim 3 of the '246 patent infringed by Climax's model FF 618.

        (2) Whether the district court erred in finding claim 1 of the '944 patent infringed by Climax's models FF 618 and LFF 1840.

Background

  1. The Technology.

            The patents in this case involve portable flange facing machines. A flange is a rim on the end of a pipe which projects at right angles to the pipe so that one pipe can be attached to another, usually with bolts. In order to maintain a good seal between the two pipes, the flange faces must be fairly smooth. The faces will wear with use, so they must be resurfaced periodically. Frequently, this must be done with the pipe in place, so a portable flange facer is necessary.

  2. The Patents.

            The '246 patent was issued on October 2, 1973, to Anthony F. Becker and was assigned to DND. It contains 8 claims, only 1 of which, claim 3, is asserted to be infringed. 2 The application which became the '246 patent originally contained a single independent claim, application claim 1, which broadly claimed the combination of a flange facer with a support column and base, attachment means for mounting it in the bore of a flanged pipe, and a means responsive to the rotation of a rotatable frame for automatically and continuously feeding a cutting tool radially with respect to the bore of the flanged pipe. Application claim 2 depended from application claim 1 and added the limitation that the base and support column be separate and including means for releasably attaching the support column to the base. Application claim 7 depended from application claim 2 and added the further limitation that the means for releasably attaching the support column to the base include means for expanding the base internally of the support column after the base has been aligned relative to the pipe. Application claims 1 and 2 were rejected as being anticipated by a previous patent, the Henderson patent, but application claim 7 was deemed allowable if rewritten in independent form. The amended claim was allowed as patent claim 3. Application claim 2 was later allowed after the addition of the limitation that the securing means be releasably attached to the support column to permit the mounting of the support column on the base after attachment to the pipe wall. (See Fig. 1.)

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

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            The '944 patent was issued on November 20, 1973, to Becker, et al., and was assigned to DND. It contains a single claim. 3 The application which became the '944 patent was originally filed as a continuation-in-part of the application that became the '246 patent. This status was denied because the applications involved different inventive entities. The application originally contained 14 claims, which were rejected on a variety of grounds, one of which was a rejection of several claims as anticipated by

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    the Henderson patent. All of the original claims were canceled and claims 15-20 were introduced. Claim 1 of the '944 patent was derived from application claims 18 and 20. Application claim 20 depended from application claim 18 and included two additional limitations:

            The structure set forth in claim 18, including:

            a power means support cap disposed at the upper end of said support column; and

            a single bolt vertically disposed and extending into the bore of said support column and releasably secured thereto to attach said support cap and power means to said support column, said bolt having an external diameter approximately the same size as the internal diameter of said bore of said support column.

            In support of the patentability of application claim 20 over the Henderson patent, the applicant's attorney argued that:

    Claim 20 is directed to a specific feature of the present invention relating to the mounting of the power means utilizing a single bolt at the upper end of the support column. This unique and unobvious arrangement provides the strength and support necessary to support the motor or power means on the support column in a position for driving the tubular frame. There is no comparable structure in the Henderson et al patent and therefore claim 20 is submitted to be allowable along with claim 18 and the other claims.

            Application claim 18 was rejected by the examiner, but application claim 20 was deemed allowable subject to being rewritten in independent form to include the limitations of application claim 18. The claim as amended was allowed as claim 1 of the '944 patent. (See Fig. 2.)

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

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  3. The Climax Machines.

            Climax has manufactured and sold two portable bore-mounted flange facers: models FF 618 and LFF 1840. The FF 618 is designed to be used in smaller bore pipes than the LFF 1840. Both models have a base, or chuck, and an essentially solid support column which are connected at the factory by screws threaded through the base into the bottom of the support column, which is also called the spindle. The base and column are mounted and aligned as a unit within the pipe to be refaced using jaws which project laterally from the base against the inside wall of the pipe. The jaws are adjusted differently in the two models. In the FF 618, the jaws are adjusted with remote chuck jaw adjustment screws and associated actuating rods which permit the jaws to be adjusted from the top of the machine. The jaws in the LFF 1840 must be adjusted at the base within the pipe. The support cap is attached to the column with a tapered split ring bushing which is placed over the column and forced against the support cap using set screws. (See Fig. 3.)

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

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  4. The Litigation.

            Climax decided to market a portable flange facing machine in 1975. DND notified Climax in August 1976 that its machines apparently infringed one or more claims of the '246 and '944 patents. Climax responded that it was consulting with its patent counsel and that it did not intend to infringe. Climax's patent attorney advised Climax that its design did not infringe the patents without ordering or analyzing the file histories of the patents. In September 1976, Climax informed DND of its position...

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