Read Corp. v. Portec, Inc.

• Decision Date: 10 July 1992
• Docket Number: No. 91-1069,91-1069
• Citation: 23 USPQ2d 1426,970 F.2d 816
• Parties: The READ CORPORATION and F.T. Read & Sons, Inc., Plaintiffs-Appellees, v. PORTEC, INC., d/b/a Portec/Kolberg Division, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 816

970 F.2d 816

23 U.S.P.Q.2d 1426

The READ CORPORATION and F.T. Read & Sons, Inc., Plaintiffs-Appellees, v. PORTEC, INC., d/b/a Portec/Kolberg Division, Defendant-Appellant.

No. 91-1069.

United States Court of Appeals,

Federal Circuit.

July 10, 1992.

Rehearing Denied and Suggestion

for Rehearing In Banc Declined

Sept. 23, 1992.

Jack R. Pirozzolo, Willcox, Pirozzolo & McCarthy, Boston, Mass., argued for plaintiffs-appellees.

                With him on the brief was Richard L. Binder.   Also on the brief was Donald F. Parsons, Jr., Morris, Nichols, Arsht & Tunnell, of Wilmington, Delaware
                

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued for defendant-appellant. With him on the brief was Barry W. Graham.

Before NIES, Chief Judge, ARCHER, and MICHEL, Circuit Judges.

NIES, Chief Judge.

Portec, Inc., appeals from the May 25, 1990, final judgment, entered upon a jury verdict, of the United States District Court for the District of Delaware, Civil Action No. 88-29-JRR, holding Portec liable for infringement of U.S. Patent No. 4,197,194 (the '194 patent) and U.S. Design Patent No. 263,836 (the '836 patent), and awarding The Read Corporation and F.T. Read & Sons, Inc. (collectively Read) treble damages and attorney fees. The district court's opinion denying Portec's motion for JNOV is reported at Read Corp. v. Portec, Inc., 748 F.Supp. 1078 (D.Del.1990). The district court's opinion granting Read's motion for treble damages and attorney fees is reported at Read Corp. v. Portec Inc., 17 USPQ2d 1243, 1990 WL 265979 (D.Del.1990). We affirm the judgment with respect to liability for infringement of the '194 patent, reverse the judgment with respect to liability for infringement of the '836 patent and the enhancement of damages, vacate the award with respect to attorney fees, and remand for modification of the injunction and reconsideration of the award of Read's attorney fees in light of this opinion.

BACKGROUND

James L. Read is the president of Read and the named inventor in both the '194 and '836 patents. The '194 patent is directed to a portable loam screening apparatus for separating fine earth material from coarser materials. The '836 patent is directed to an ornamental design of such a screening apparatus. Below are figures from each of the patents:

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

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As seen above, the apparatus has a generally rectangular frame 12, made up of "tall end" 14 and "short end" 16 which are joined together by sides. Hitch 34 is attached to side 18 and wheels 36 are attached to the fourth side 20. The wheels are movable relative to the frame between an extended position where the weight of the apparatus is on the wheels, so that the apparatus can be transported, and a retracted position, as shown in Figure 1, so that the weight is transferred to the frame during operation.

In operation, a load of loam and coarse materials is dumped from a payloader over the tall end on to the vibrating screens 30 and 32. The screens are sloped so that Independent claims 2 and 7 of the '194 patent are at issue in this case. Claim 2 reads as follows: ¹

                when material is deposited on them, the finer material passes through the screens while the coarser material rolls off the screens and falls outside the frame next to short end 16.   The tall end 14 of the apparatus is completely open (visible in Fig. 6) so that the payloader can drive within the frame to scoop out the finer material deposited on the ground
                

2. A portable screening apparatus for separating coarse material from finer material comprising:

a frame of generally rectangular cross section and having a tall end and a short end joint [sic] by sides, said short end being closed from an upper edge of said short end to the ground and the lower portion of said tall end being completely open from the ground to a height sufficiently high to permit a payloader to collect the finer material from within the frame;

said frame at said tall end having a width sufficient to accommodate the shovel of a payloader;

a material separating shaker screen sloping downwardly from near the upper edge of said tall end to near the upper edge of said short end;

a set of wheels mounted to one of said sides and movable relative to said frame from an operative position for transporting said apparatus to an inoperative position for resting said frame flush on the ground; and

a trailer hitch mounted to the other of said sides.

(Emphasis added.)

As will become evident infra, critical to this case are the claim limitations requiring the short end to be closed "to the ground" and a set of wheels which are "movable relative to said frame" from "an operative position" to "an inoperative position for resting said frame flush on the ground."

U.S. Patent Application Serial No. 947,380, from which the '194 patent issued, was filed October 2, 1978, with 11 claims. Claim 2 as originally filed did not contain any wheels limitation, and required only that the short end be "closed." The examiner rejected all of the claims under 35 U.S.C. § 103 for obviousness in view of various combinations of references, particularly U.S. Patent No. 3,307,698 to Haffner (Haffner), U.S. Patent No. 1,806,934 to Deister (Deister) and U.S. Patent No. 2,284,692 to Strube (Strube).

In response, Read added to claim 2 (as well as to the other independent claims), the "set of wheels" limitation. No amendment was made to the closed end limitation. In the remarks accompanying the amendment, Read stressed the nonobviousness of the claimed invention based on numerous differences from the prior art including the "closed" short end, which acts as a barrier between the coarse material and the finer material, and the wheels limitation, which allows the apparatus to be transported or stably set on the ground during screening operations.

The record shows that the examiner, in a telephonic interview, agreed to allow the claims if amended to include

limitations more particularly pointing out the relationship of the width and height of the tall end portion of the frame to a payloader and the relation of where the short end's "closed" characteristics begin and end.

Claim 2 and the other independent claims were thereafter amended, by examiner's amendment, to include, among other things, the requirement that the short end be closed "to the ground." The claims were subsequently allowed.

Read has been making screening devices in accordance with its invention since the late 1970's under the name "Read Screen-All." In December of 1984, officials from Portec met with James Read to discuss a possible acquisition of Read by Portec. Those discussions proved fruitless, and In doing so, Portec obtained a written opinion by patent attorney Emory Groff, Jr., concerning the '194 and '836 patents in January of 1985. This opinion is very general, as it was prepared before Portec had done any significant development work. With respect to the '836 patent, Groff set forth the general test for design patent infringement, and noted that "[d]esign patents are generally narrowly construed by the courts." With respect to the '194 patent, Groff reviewed the patent and the file history, and concluded that "the limitations concerning the set of wheels, the hitch, the fully closed short end and the tall end opening extending to the ground are all critical limitations." After a brief discussion of the doctrine of equivalents, Groff concluded that "the claims of the patents could be circumvented to avoid infringement, however, whether or not the end result would produce an apparatus as efficient and commercially appealing as the Read devices, is questionable."

Portec began to consider whether it could produce a device to compete with the Read Screen-All.

Nothing further was done by Portec concerning development of a portable screening device until late 1986. By that time, the popularity of the Read Screen-All had increased further, and Portec renewed its interest in designing a device to compete with the Screen-All. This interest resulted in several meetings between Portec engineer Gerald Dahlinger and patent attorney Brett Valiquet in January and February of 1987. Notes from those meetings indicate that Dahlinger and Valiquet discussed several possibilities for designing around the claims of the '194 patent, including "wheels which are not movable relative to the frame and not moving the frame onto the ground," and a "completely open short end."

Over the next several months, Portec developed design drawings for its proposed portable screening device. This screening device had two features designed to avoid infringement of the '194 patent: (1) the bottom of the short end ended about six inches from the ground; and (2) fixed wheels and a "footpad" attached to each side of the frame replaced the retractable wheels. The footpads were long metal bars which extended the entire length of the sides and which were movable relative to the frame by hydraulic cylinders. The footpads could be extended so as to lift the wheels off the ground, placing the weight of the device on the footpads.

Drawings of this design were given to Valiquet for an analysis of infringement of both the '194 and '836 patents. Valiquet concluded, in a written opinion dated September 25, 1987, that Portec's proposed device did not infringe either patent. With respect to the '194 patent, after discussing the details of the claims and of Portec's device, Valiquet stated:

During prosecution before the U.S. patent office, Read was required by the patent office to add the limitation to his claims that the short end extends to the ground. Also, Read voluntarily added to his patent claims the concept of moving the frame so that it could be flush on the ground through use of movable wheels. Since these distinctions were added in view of prior art cited by the Examiner, Read cannot argue that Portec has any type of...