Burgess & Associates, Inc. v. Klingensmith

• Citation: 487 F.2d 321
• Decision Date: 19 December 1973
• Docket Number: 72-1556.,No. 72-1557,72-1557
• Parties: BURGESS & ASSOCIATES, INC., an Ohio corporation, Plaintiff-Appellant, v. Ben C. KLINGENSMITH, an Individual, et al., Defendants-Appellees. Ben C. KLINGENSMITH, an Individual, et al., Defendants-Appellants, v. BURGESS & ASSOCIATES, INC., an Ohio corporation, Plaintiff-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

487 F.2d 321 (1973)

BURGESS & ASSOCIATES, INC., an Ohio corporation, Plaintiff-Appellant, v. Ben C. KLINGENSMITH, an Individual, et al., Defendants-Appellees.

Ben C. KLINGENSMITH, an Individual, et al., Defendants-Appellants, v. BURGESS & ASSOCIATES, INC., an Ohio corporation, Plaintiff-Appellee.

Nos. 72-1557, 72-1556.

United States Court of Appeals, Ninth Circuit.

November 6, 1973.

As Amended on Denial of Rehearing December 19, 1973.

Robert D. Hornbaker (argued), Los Angeles, Cal., for Ben C. Klingensmith et al.

R. Douglas Lyon (argued), Reginald E. Caughey, of Lyon & Lyon, Los Angeles, Cal., for Burgess & Associates, Inc.

Before BROWNING and WRIGHT, Circuit Judges, and SOLOMON^*, District Judge.

SOLOMON, District Judge:

Both parties appeal from portions of a judgment holding one patent valid and infringed and another patent invalid.

Burgess & Associates, Inc. (Burgess) is the assignee of U. S. Patent No. 3,023,738 (738 patent) and U. S. Patent No. 3,367,480 (480 patent). Burgess brought this action for infringement of claims 1 and 2 of the 738 patent and claims 1, 2, and 4 of the 480 patent against Ben C. Klingensmith and his associates, ABM Industries, Inc., Donald Kanning, and Arthur Longstreet (Klingensmith). Klingensmith denied infringement and alleged in a counterclaim that the patents were invalid, or, if valid, had been misused.

The district court held that the 738 patent was valid and infringed. It also held the 480 patent was invalid. The court enjoined Klingensmith from infringing the 738 patent and ordered an accounting. Klingensmith appeals from the finding that the 738 patent was valid and infringed and Burgess appeals from the finding that the 480 patent is invalid.

The 738 Patent: Infringement

The 738 patent describes a pneumatic free-piston vibrator. The vibrator is used in connection with a bowl with a helical track along its inside surface. The patented device vibrates parts placed in the bottom of the bowl, orienting them in a given direction and making them proceed up the helical path to a conveyor belt. The vibrator and feeder bowl are used to feed parts at a constant rate of speed and with a given spatial orientation.

Pneumatic vibrators to feed parts are old in the art. Burgess asserts that the older vibrators could control the frequency of the piston stroke but not its amplitude; that is, they could control the number of strokes per minute but not the length of the stroke. Burgess contends that the 738 vibrator achieves a higher rate of feed and more precise spatial orientation of parts by controlling the amplitude of the piston stroke.

Burgess originally applied for a patent on the 738 device on March 24, 1959. In his original application he claimed¹ ". . . a device having an inlet line for conducting gas under pressure to said device to effect recipricatory movement of said piston . . . ." That claim was rejected three times as unpatentable over the prior art. Burgess then cancelled that claim and substituted claim 1 of the 738 patent.² The claim contained the following language:

. . . means coacting in response to the position of said piston in said chamber respectively to alternately apply said pressurized gas to opposite ends of the piston for a portion of its stroke, . . . and other means coacting in response to the position of said piston respectively to alternately couple the end of the chamber opposed to the applied gas to the outlet line for a portion of the piston stroke. . . .

The new sixteen-line claim was not merely an expanded version of the cancelled claim. Although the cancelled claim covered all devices "to effect reciprocatory movement of the piston", the claim as finally allowed contained specific means clauses describing which devices were covered. The means clauses narrowed the scope of the claim in two important respects:

(1) The means clauses limited the claim to devices in which "other means", as distinguished from the means used to connect the chamber with the inlet line, ". . . couple the end of the chamber opposed to the applied gas to the outlet line." In other words, the claim did not cover vibrators which use the same means to connect the ends of the piston chamber to both the inlet and outlet lines.

(2) The means clauses covered only devices which "alternately couple the ends of the chamber opposed to the applied gas to the outlet line for a portion of the stroke . . . ." In other words, the claim did not cover vibrators in which the end of the piston chamber opposed to the applied gas is not connected to the outlet line.

The first accused device of Klingensmith uses the same means to connect one side of the piston chamber with both the inlet and outlet lines. The second accused device has one side of the piston chamber which is not connected to the outlet line when it is the side "opposed to the applied gas." Neither device is covered by the means clauses in the 738 patent.

Burgess added the specific means clauses to obtain the patent. He is therefore estopped from claiming that Klingensmith's devices, not covered by those means clauses, infringe the 738 patent. ". . . Claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent." Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 702, 15 L.Ed.2d 545 (1966).

Burgess argues that Klingensmith's vibrators are the equivalents of the vibrator claimed in the 738 patent, even though not directly covered by its claims. Under the doctrine of equivalents a device infringes if it performs "substantially the same function in substantially the same way to obtain the same result" as the patented device. Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950).

File wrapper estoppel prevents the application of the doctrine of equivalents. "The patentee may not, by resort to the doctrine of equivalents, give to an allowed claim a scope which it might have had without the amendments, the cancellation of which amounts to a disclaimer." Schriber Co. v. Cleveland Trust Co., 311 U.S. 211, 221, 61 S.Ct. 235, 240, 85 L.Ed. 132 (1940); Keating v. Stearnes Imperial Co., 347 F.2d 444, 446 (7th Cir. 1965).

Neither the Klingensmith's devices infringed the 738 patent. The trial judge's contrary finding was clearly erroneous.

The 738 Patent: Validity

Our holding that Klingensmith's devices do not infringe the 738 patent does not render moot the question of the patent's validity, since its validity is challenged in Klingensmith's counterclaim. Altvater v. Freeman, 319 U.S. 359, 363, 63 S.Ct. 1115, 87 L.Ed. 1450 (1943).

In his findings of fact, the trial judge found that the combination of elements defined in claims 1 and 2 of the 738 patent "produce a wholly new and unexpected result, the ability to control amplitude and frequency independently." Those claims in the patent cover only "means . . . to control the amplitude of reciprocation of the piston." Neither claim mentions a means to control amplitude and frequency independently. The trial judge therefore based his finding of nonobviousness on a means not claimed in the patent. Since the claims are the sole measure of the monopoly granted by the patent, Aro Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc., 365 U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961), the trial judge erred in relying on a means of the patented device not mentioned in the claims. See Lincoln Co. v. Stewart-Warner Corp., 303 U.S. 545, 550, 58 S.Ct. 662, 82 L.Ed. 1008 (1938); see also John Deere Co. v....