Valmont Industries, Inc. v. Reinke Mfg. Co., Inc.

Citation983 F.2d 1039,25 USPQ2d 1451
Decision Date07 January 1993
Docket Number91-1378,Nos. 91-1377,s. 91-1377
PartiesVALMONT INDUSTRIES, INC., Plaintiff/Cross-Appellant, v. REINKE MANUFACTURING COMPANY, INC., Defendant-Appellant.
CourtU.S. Court of Appeals — Federal Circuit

Dennis L. Thomte, Zarley, McKee, Thomte, Voorhees & Sease, of Omaha, NE, argued for plaintiff/cross-appellant.

G. Brian Pingel, Shearer, Templer & Pingel, P.C., of West Des Moines, IA, argued for defendant-appellant.

Before MICHEL, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER, Circuit Judge.

RADER, Circuit Judge.

The United States District Court for the District of Nebraska determined that Reinke Manufacturing Company infringed Valmont Industries' U.S. Patent No. Re. 31,838 ('838 patent). Valmont Indus. v. Reinke Mfg. Co., 14 USPQ2d 1374, 1990 WL 67881 (D.Neb.1990). Because the district court incorrectly found infringement of claims containing means-plus-function limitations, this court reverses.

BACKGROUND

On April 9, 1974, U.S. Patent No. 3,802,627 (the '627 patent) issued on an invention of David Seckler and David Porat, assignors to Valmont's predecessor-in-interest. The '627 patent was reissued as the '838 patent in 1980. The '838 patent claims a self-propelled irrigation apparatus for watering non-circular areas. Specifically, the '838 patent describes an apparatus to water the corners of a field which a center pivot irrigator misses. A center pivot irrigation system includes a main arm assembly mounted at one end to a central pivot and supported at intervals by self-propelled support towers. The main arm rotates around a center water supply and irrigates a circular area of land. A standard center pivot irrigation system, however, does not supply water to the corners of a square plot of land.

The '838 patent features an apparatus which attaches to the main arm of a center pivot irrigator and waters the corners of a field. Claim one states:

1. Irrigating apparatus for supplying water to a non-circular area, comprising a rotatable main arm assembly mounted at one end to a fixed base pivot and rotatable thereabout for supplying water to a first portion of said area, an extension arm assembly at the other end of said main arm assembly for supplying water to portions of said area outside of said first portion, said extension arm assembly and main arm assembly each being supported on one of more support towers, with each assembly supporting a plurality of spaced irrigating sprinklers, said main arm assembly support towers having wheels and wheel driving means, means for moving said extension arm assembly with respect to said main arm assembly, and control means for operating said moving means to move said extension arm assembly relative to said main arm assembly to irrigate said portions outside of said first portion as said main arm rotates.

(Underlined matter indicates additions made during reissue.)

The patent claims an irrigating apparatus with an extension arm assembly. This extension arm, which connects to the free end of the main arm assembly, swings out to irrigate portions of the field outside the main arm's circular coverage. Like the Following electronic signals, the '838 patent's extension arm assembly moves out into the corners of a field. To reduce crop damage, the extension arm support towers follow the same path into the corner with each revolution. The specification notes that angle encoders at the center pivot and the end of the main arm control the extension arm to ensure these uniform revolutions. The center pivot angle encoder measures the angle between the main arm and a predefined axis in the field. The second angle encoder measures the angle between the extension and the main arms. These angle encoders send a digital signal to a comparator circuit which monitors the angular relation of the two arms.

centrally pivoted main arm, self-propelled towers support the extension arm.

The comparator sends an electronic signal to a steering motor on a wheel of the extension arm. The electronic signal pivots the wheel to keep the extension arm in place relative to the main arm. Drive motors attached to the wheel propel the extension arm. In this manner, the '838 patent's extension arm follows a precise path dictated by these angular relationships.

In March 1974, two Valmont employees, Mr. Robert Daugherty and Mr. William Eaton, also sought a patent on enhanced center pivot technology. Their application also described an extension arm to irrigate areas outside the main arm's reach. The extension arm in the Daugherty and Eaton invention, however, followed a buried electrical conductor, not electrical signals generated by angle comparators. In September 1975, U.S. Patent No. 3,902,668 issued on the Daugherty and Eaton invention to Valmont.

In 1980, Valmont filed reissue applications for both the '627 and '668 patents. The Patent and Trademark Office (PTO) approved the Seckler and Porat application as Patent No. Re. 31,838, but refused to reissue the Daugherty and Eaton patent ('668). During reissue proceedings on the Daugherty and Eaton patent, Valmont contended that the buried cable steering system was "completely different" from the angle comparator steering system in the '627 patent.

In 1985, Valmont sued Reinke for infringement of the '838 patent. Reinke manufactured and sold corner irrigation systems. Reinke's extension arm follows a buried cable. The district court found that Reinke had infringed the '838 patent. Reinke appealed.

DISCUSSION

The district court found that Reinke had infringed claims 1, 2, 3, 8, 14, 18, and 22 of the '838 patent. Each of these claims uses "means-plus-function" language. The primary infringement issue in this case involves the "control means" element of claim 1:

[C]ontrol means for operating said moving means to move said extension arm assembly relative to said main arm assembly....

In relation to this control means limitation, the trial court stated:

The Court concludes that the means for steering in the two systems are equivalent--that is they are substantially the same function--there's a control means for operating the moving means; they perform the function in substantially the same way--by imparting an electric signal to the steering motors to cause the steering wheels to pivot; and they achieve substantially the same result--the movement of the extension arm in an angle relative to the main arm in order to reach and irrigate the corners of a field....

Valmont, 14 USPQ2d at 1381. Apparently the district court applied some form of equivalency analysis to find infringement. In the context of a means-plus-function claim, the district court might have applied either the equivalency analysis of 35 U.S.C. § 112 (1988) or the doctrine of equivalents.

Section 112

The Patent Act provides explicit guidance for interpretation of claim elements expressed in means-plus-function terms:

An element in a claim for a combination may be expressed as a means or step 35 U.S.C. § 112, p 6.

for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Congress added this language to the Patent Act of 1952 to change the doctrine enunciated in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3 (1946). See, P.J. Federico, Commentary on the New Patent Act, Preface to 35 U.S.C.A. 25 (1954) (Commentary). In Halliburton, the Supreme Court prohibited use of means-plus-function language to describe the "most crucial element" of a combination claim:

The language of the claim thus describes this most crucial element in the "new" combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus. We have held that a claim with such a description of a product is invalid as a violation of [the patent statute].

Halliburton, 329 U.S. at 9, 67 S.Ct. at 10. In particular, the Supreme Court feared that means-plus-function language was overbroad and ambiguous. Id. at 12, 67 S.Ct. at 12 ("Under these circumstances the broadness, ambiguity, and overhanging threat of the functional claim of Walker become apparent.").

Congress decided to permit broad means-plus-function language, but provided a standard to make the broad claim language more definite. The 1952 Patent Act included a new section 112. This new language permits a patent applicant to express an element in a combination claim as a means for performing a function. The applicant need not recite structure, material, or acts in the claim's means-plus-function limitation. With this new section, the 1952 Act rendered Halliburton obsolete. Commentary at 25.

The second clause of the new paragraph, however, places a limiting condition on an applicant's use of means-plus-function language. 35 U.S.C. § 112, p 6. A claim limitation described as a means for performing a function, if read literally, could encompass any conceivable means for performing the function. Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386 (Fed.Cir.1989). This second clause confines the breadth of protection otherwise permitted by the first clause. Id. The applicant must describe in the patent specification some structure which performs the specified function. Moreover, a court must construe the functional claim language "to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112. Section 112 thus permits means-plus-function language in a combination claim, but with a "string attached." The "attached string" limits the applicant to the structure, material, or acts in the specification and their equivalents. Indeed the section operates more like the reverse doctrine of equivalents than the doctrine of equivalents...

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