Shamrock Technologies, Inc. v. Medical Sterilization, Inc.
| Decision Date | 04 May 1990 |
| Docket Number | No. 89-1711,89-1711 |
| Citation | 903 F.2d 789 |
| Parties | SHAMROCK TECHNOLOGIES, INC., Plaintiff-Appellee, v. MEDICAL STERILIZATION, INC., and Robert S. Luniewski, Defendants-Appellants. |
| Court | U.S. Court of Appeals — Federal Circuit |
Richard S. Clark, Brumbaugh, Graves, Donohue & Raymond, New York City, for plaintiff-appellee. With him on the brief were James J. Maune and Marina T. Larson.
John Kurucz, Kane, Dalsimer, Sullivan, Kurucz, Levy, Eisele & Richard, New York City, for defendants-appellants. With him on the brief were William H. Dippert and Ronald E. Brown.
Before MARKEY, Chief Judge, and RICH and PLAGER, Circuit Judges.
Medical Sterilization, Inc. (MSI) and Robert S. Luniewski (Luniewski) appeal from a summary judgment of the United States District Court (Mishler, J.) for the Eastern District of New York, No. CV 88-1681. We affirm.
Luniewski was employed by Shamrock Technologies, Inc. (Shamrock) between May 1980 and July 1983. As a condition of employment, he agreed to assign his work-related inventions to Shamrock. Luniewski and William Neuberg jointly invented an apparatus and method for processing polytetrafluoroethylene (PTFE) with radiation. On March 26, 1982, Luniewski assigned his rights in the inventions to Shamrock. Patent applications were filed on May 3, 1982 and July 22, 1983. Having signed declarations to be filed with the patent applications, Luniewski left Shamrock in July 1983 and joined MSI as Vice President in charge of Operations. Thereafter, MSI began radiation processing of PTFE; first by an "original process", and, after this suit was commenced, by a "current process". 1
On May 31, 1988 and October 11, 1988, respectively, the applications issued as United States Patent Nos. 4,748,005 ('005) (apparatus) and 4,777,192 ('192) (method). On May 31, 1988 Shamrock sued MSI and Luniewski for infringement of its '005 patent. MSI and Luniewski counterclaimed for a declaration of invalidity. In an October 13, 1988 "Memorandum of Decision and Order", the district court applied the doctrine of assignor estoppel and granted Shamrock's partial summary judgment motion to strike affirmative defenses and to dismiss the counterclaim. The district court rejected the arguments that the assignment was fraudulently obtained and that privity was lacking between Luniewski and MSI. 2
On November 18, 1988, Shamrock amended its complaint, asserting infringement of the '192 patent.
In an August 8, 1989 "Memorandum of Decision and Order", the district court rejected a request to withdraw the October 13, 1988 order and entered summary judgment that: (1) the affirmative defenses and counterclaim relating to invalidity of the '192 patent were barred by assignor estoppel; (2) the defense of unenforceability of both patents was barred by assignor estoppel; and (3) the accused original and current processes infringed the patents. On August 24, 1989, the district court entered a "Final Partial Judgment" pursuant to Rule 54(b), Fed.R.Civ.P., 3 holding the patents not invalid, enforceable, and infringed and enjoining MSI and Luniewski from further infringement.
1. Whether the district court erred in granting summary judgment of infringement.
2. Whether the district court erred in holding that assignor estoppel precluded the invalidity and unenforceability defenses.
OPINIONSummary judgment is appropriate where "there is no genuine issue as to any material fact" and "the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). The facts are undisputed, and we have been shown no error in the district court's application of the law.
The '005 patent is directed to an apparatus for processing high molecular weight, flowable solid polytetrafluoroethylene. Claim 1 is representative: 4
Apparatus for batch radiation processing of a high molecular weight, flowable solid polytetrafluoroethylene material to degrade said material to lower its molecular weight and render it grindable into a powder, comprising a processing vessel for holding a batch of said material during processing, a source of particle radiation for supplying radiation to a selected region of said processing vessel, mechanical stirring means for agitating said material in said processing vessel during said processing thereby to repeatedly move said material into and out of said selected region whereby said material is uniformly irradiated, and water cooling means for maintaining said vessel and said material below a selected temperature during said processing.
The '192 patent resulted from a continuation-in-part of the application that resulted in the '005 patent and is directed to a method for processing PTFE. Claim 1 is representative:
(d) cooling said material to maintain a temperature below 500? F. during said processing.
Appellants admitted that their original process involved a processing vessel for holding PTFE during processing, a source of particle radiation for supplying radiation to a portion of said vessel, mechanical stirring means for agitating the PTFE in the vessel during processing in such manner that the PTFE repeatedly moves into and out of the region being irradiated, and injection of water into the PTFE to cool it during processing.
The current process differs from the original in that agitation is achieved with air pressure and paddles, air cooling has replaced water cooling, and an air classifier extracts particles of PTFE from the vessel.
Appellants focus on four claim limitations and their use of a prior art step, but fail to establish the presence of genuine issues of material fact. Though the district court said both patents are infringed by both processes, it is sufficient to note the correctness of its judgment based on infringement of the '005 patent by the original process and infringement of the '192 patent by the current process. See Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1556, 225 USPQ 26, 31 (Fed.Cir.1985) (); Lee v. United States, 809 F.2d 1406, 1408 (9th Cir.1987), cert. denied sub nom. Lee v. Eklutna, 484 U.S. 1041, 108 S.Ct. 772, 98 L.Ed.2d 859 (1988) ().
The district court correctly looked to the specifications and prosecution histories of the patents to illuminate the meaning of "uniformly irradiated". Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867, 228 USPQ 90, 93 (Fed.Cir.1985). The specifications point out that the prior art irradiated trays of PTFE on a conveyor belt, with upper layers of PTFE receiving more irradiation than lower layers. Hence the district court did not err in determining that "uniformly irradiated" refers to "more consistent exposure" of PTFE to radiation as contrasted with the "uneven irradiation" provided by the prior art. Appellants' argument that some of their PTFE granules melt and some are removed by an air classifier may at most indicate that they may not achieve perfect uniformity of radiation, but the district court correctly determined that the claim does not require absolute uniformity. Inefficient infringement is infringement still. Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 859, 9 USPQ2d 1289, 1294 (Fed.Cir.1988). The accused processes clearly fall within the scope of the "uniformly irradiated" limitation properly construed.
Appellants' argument that because the current process uses paddles and air pressure to agitate PTFE it does not meet this limitation was correctly rejected by district court as "meritless".
[the PTFE] below a selected temperature during processing"
Appellants say their spraying of water directly on the PTFE in the original process avoids this limitation because the '005 specification discloses a water jacket precluding contact between the water and the PTFE. The record, however, supplies no basis for reading the claim as limited to a water jacket or as precluding direct spraying of the PTFE. See E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d 1129, 1131 (Fed.Cir.1988); Loctite, 781 F.2d at 867, 228 USPQ at 93 (). Moreover, appellants admit that their vessel is "cooler than it would otherwise be without the addition of water [by spraying]." 5
Appellants say there is no evidence that their current process meets this limitation. We fully agree with the district court's analysis:
[appellants] do not assert that their processes involve temperatures above 500? F., but merely that the temperature is below 620?. Although [appellants] are correct in asserting that on a motion for summary judgment all inferences must be drawn in favor of the nonmovant, it has been held that:
the nonmovant must do more than merely present some evidence on an issue it asserts is disputed. Sufficient evidence for a jury to return a verdict in favor of the nonmovant must be forthcoming.
A.B. Chance Co. v. RTE Co. [Corp.], 854 F.2d 1307, 1311 (Fed.Cir.1988) (citing ...
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