Clearstream Wastewater Systems, Inc. v. Hydro-Action, Inc.
| Decision Date | 27 March 2000 |
| Docket Number | INC,DEFENDANTS-APPELLEES,No. 99-1299,PLAINTIFFS-APPELLANTS,HYDRO-ACTIO,99-1299 |
| Citation | 206 F.3d 1440,54 USPQ2d 1185 |
| Parties | (Fed. Cir. 2000) CLEARSTREAM WASTEWATER SYSTEMS, INC. AND JERRY L. MCKINNEY,, v.AND T. GIG DREWERY, |
| Court | U.S. Court of Appeals — Federal Circuit |
John R. Feather, of Houston, Texas, argued for plaintiffs-appellants. With him on the brief was Ernest Randall Smith, E. Randall Smith, P.C., of Houston, Texas.
John S. Egbert, Harrison & Egbert, of Houston, Texas, argued for defendants-appellees.
Before Plager, Schall, and Gajarsa Circuit Judges.
The United States District Court for the Southern District of Texas granted summary judgment of non-infringement of U.S. Patent No. 5,221,470 ("the '470 patent") against Clearstream Wastewater Systems, Inc. and Jerry L. McKinney (collectively "Clearstream"), and in favor of Hydro-Action, Inc. and T. Gig Drewery (collectively "Hydro-Action"). See Clearstream Wastewater Sys., Inc. v. Hydro-Action, Inc., No. H-95-5233 (S.D. Tex. Feb. 4, 1999). Clearstream appeals, arguing that the district court erred by limiting its construction of means-plus-function claim language to exclude from coverage a corresponding structure that was in the prior art. We agree that the district court erred in its claim construction and inappropriately granted summary judgment in favor of Hydro-Action. The judgment of the district court is therefore vacated, and the case is remanded for further proceedings.
On June 22, 1993, the '470 patent was issued to Jerry L. McKinney. The patent covers a wastewater treatment apparatus utilizing aerobic (i.e., air breathing) bacteria to digest solid organic particles in wastewater. The '470 patent was subsequently subject to re-examination by the United States Patent and Trademark Office. In Re-examination Certificate No. B15,211,470, the PTO confirmed the patentability of claims 1-9 of the patent. Mr. McKinney licensed the '470 patent to Clearstream Wastewater Systems, Inc., a manufacturer of wastewater treatment plants used in homes and small business facilities.
In wastewater treatment plants that utilize aerobic bacteria to clean wastewater, air must be supplied to the bacteria for it to thrive. In the prior art, the aeration of the wastewater is accomplished by pumping air through rigid-conduits, such as PVC pipes. The pipes extend from the top to the bottom of the tanks, where air is diffused through fine openings. Typically, wastewater treatment plants are buried underground with only a small opening in the top portions left unburied to allow access for cleaning and servicing. Because the prior art, rigid-conduits are generally located against the outside walls of aeration chambers, they are difficult to remove and replace because of smallness of the openings on the top portion of the plants.
Like the prior art, the wastewater treatment plant disclosed in the '470 patent provides air to an aeration chamber holding wastewater and bacteria. Figure 1 of the '470 patent, reproduced below, illustrates one embodiment of a treatment plant with an aeration chamber 20. The '470 patent discloses a structure, including a flexible air hose inserted through rigid-conduits, that allows for ease in replacement and servicing of the air supply system in wastewater treatment plants. See '470 patent, col. 2, ln. 4-11 and 60-62. An embodiment of a rigid-conduit 32 in which a flexible-hose 38 is inserted is illustrated in Figure 3. In sum, one of the novel features described in the '470 patent is the insertion of flexible-hoses into the rigid-conduits.
Another novel feature disclosed in the patent is a new filtering system near the exit of the plant. Though not directly at issue in this appeal, the presence of this feature in the claims is of importance as shall be explained.
[Tabular or Graphical Material Omitted]
Clearstream sued Hydro-Action, a competitor in the field of wastewater treatment plants, for infringement of claims 1, 3, 4, and 7 of the '470 patent. Claims 1 and 4 are independent claims. Claim 3 is dependent upon claim 1, and claim 7 is dependent on claim 4. Claims 1 and 4 read as follows (emphasis added):
1. In a wastewater treatment plant having an aeration chamber, an inlet located adjacent the top of the aeration chamber through which the waste water flows into the aeration chamber and downwardly toward the bottom of the aeration chamber, means for injecting air into the waste water in the aeration chamber to support the growth of aerobic microorganisms and a clarifier chamber within said aeration chamber, said clarifier chamber being formed by a partition in the form of an inverted, truncated cone-like member into the bottom of which the waster [sic] water flows from the aeration chamber and rises therein, the improvement comprising a filter housing mounted in the clarifier with an open lower end extending below the level of the waste water in the clarifier, a horizontal outlet tube connected to the filter housing through which the waste water can flow out of the filter housing and the clarifier, and a filter located in the housing below the level of waste water through which the waste water flows without turbulence to reach the outlet, said filter having a plurality of relatively narrow vertical passageways providing a large surface area for aerobic bacteria to cover and remove the small solid particles form [sic] the waste water as it flows upwardly through the filter toward the outlet, said means for injecting air in the aeration chamber also providing means to supply the aerobic bacteria covering the filter with sufficient oxygen to keep it functioning.
4. A waste water treatment plant comprising an aeration chamber and a clarification chamber within said aeration chamber, said clarifier chamber being formed by a partition in the form of an inverted, truncate cone-like member, an inlet at the upper end of the aeration chamber through which waste water can enter the chamber, means for aerating the liquid in the aeration chamber to promote aerobic digestion of the organic solids in the waste water in the aeration chamber and the clarification chamber, a passageway between the aeration chamber and the lower end of the clarification chamber to cause the waste water to flow upwardly in the clarification chamber without turbulence to allow large solid particles to fall downwardly through the upwardly moving waste water and re-enter the aeration chamber, a filter housing mounted in the upper end of the clarification chamber, an outlet conduit connected at one end to the upper end of the filter housing with the other end extending laterally out of the clarification chamber through which the waste water can flow out of the clarification chamber as it rises in the clarification chamber and the filter housing, a filter in the filter housing through which all of the waste water flows to reach the outlet conduit, said filter having a plurality of elongated, narrow, vertical passageways to provide a large surface area for aerobic bacteria to cover so the bacteria will remove the small solid particles from the waste water as it flows upwardly through the passageways at a flow rate that will allow any large particles reaching the filter to fall downwardly to the bottom of the clarifier.
Hydro-Action's accused wastewater treatment system indisputably utilizes only the prior art, rigid-conduit system for supplying air into the aeration chamber. Hydro-Action filed a motion for summary judgment, contending that its wastewater treatment plants do not infringe the '470 patent because they lack the "means for injecting air" or "means for aerating" limitations required by the disputed claims of the '470 patent. According to Hydro-Action, the only possible corresponding structure for the "means for injecting air" or "means for aerating" limitations is the flexible-hose structure described in the patent, which is not part of the accused plant. Hydro-Action contended that since the means limitations require use of the flexible-hose structure, a treatment plant, like Hydro-Action's accused device, that uses only the prior art, rigid-conduit structure cannot infringe the patent.
Clearstream disputed Hydro-Action's interpretation of the disputed means clauses. It argued that the rigid-conduit structure utilized in the prior art and in the accused plant is a corresponding structure to the means-plus-function limitations or is a structural equivalent thereof.
After holding an evidentiary hearing, the district court granted Hydro-Action's motion for summary judgment of non-infringement. It adopted Hydro-Action's view that the only corresponding structure for the "means for injecting air" and the "means for aerating" limitations was the new and inventive flexible-hose system. A prior art structure, such as a rigid-conduit system, could not be corresponding structure despite the fact that the '470 patent discloses both the flexible-hose structure and the prior art, rigid-conduit structure as structures capable of injecting air into the wastewater in the aeration chamber. The district court reasoned that because the patent discloses the disadvantages of the prior art, rigid-conduit structure and reveals inventive features, such as the flexible-hose, that are meant to overcome those disadvantages, then the prior art structure could not be considered a supporting structure or its equivalent for purposes of 35 U.S.C. 112, 6 (1994). Therefore, the district court concluded that because the '470 patent teaches away from the rigid-conduit structure of the prior art in favor of the flexible-hose configuration, Hydro-Action's accused plant, which uses the prior art structure, does not contain all the elements of claims 1, 3, 4, or 7, or their equivalents.
On appeal, Clearstream disputes the district court's claim...
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