Coleco Industries v. UNITED STATES INTERN., ETC.
| Decision Date | 06 April 1978 |
| Docket Number | Appeal No. 77-21. |
| Citation | 573 F.2d 1247 |
| Parties | COLECO INDUSTRIES, INC., Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Diamond Pools, Branch Brook Co., Harrow Stores and Pool City, Appellees. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Peter L. Costas, Hartford, Conn., attorney of record, for Coleco Industries, Inc., appellant.
Russell N. Shewmaker, Michael H. Stein, Washington, D.C., Robert M. M. Seto, for U.S. Intern. Trade Commission.
J. Ralph King, Arlington, Va. (Lowe, King, Price & Markva, Arlington, Va.), for Diamond Pools, Branch Brook Co., Harrow Stores and Pool City, appellees.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This is an appeal taken from a decision in ITC Investigation No. 337-TA-25, rendered on April 29, 1977, by the United States International Trade Commission (Commission), In re Certain Above-ground Swimming Pools, 194 USPQ 273 (1977). The Commission unanimously decided that there was no violation of § 337 of the Tariff Act of 1930, as amended by the Trade Act of 1974 (19 U.S.C. § 1337)1 by the importation of certain above-ground swimming pools of the type having a flexible, water-retaining liner supported by a peripheral retaining wall assembled from sections fastened together. This court has authority under § 337(c)2 to review by appeal a final determination under § 337 by the Commission. This case presents the first appeal under the above statute, as amended, in which we reach the merits.3 We affirm.
On February 25, 1976, appellant filed a complaint with the Commission alleging infringement of claims 1, 2, 3 and 5 in U.S. Patent No. 3,268,917 ('917)4 and predatory pricing by the pool importers. Claim 1 is illustrative of the claimed subject matter:
1. In a swimming pool of the type having a liner member of flexible, relatively waterproof sheet material providing a bottom wall portion and a sidewall portion extending about the periphery of said bottom wall portion, the combination therewith of a frame assembly for supporting said liner member including a generally vertical support panel about the exterior periphery of said liner sidewall portion and closely adjacent thereto to provide horizontal support for said liner sidewall portion; a plurality of cooperating elongated horizontal support members extending in end-to-end relationship about said liner member at the upper edge of said liner sidewall portion and support panel, said horizontal support members having a top wall portion and a depending inner sidewall portion extending therealong providing a shoulder adjacent the upper edge portion of said support panel to align said support panel and limit movement thereof; generally vertical support members at the adjacent end portions of cooperating pairs of horizontal support members, said vertical support members extending outwardly of said vertical support panel and said inner sidewall portions of said horizontal support members, said vertical support members having vertically extending wall portions and a horizontal seating surface portion at the upper end thereof, the end portions of said horizontal support members having depending retaining elements thereon engaged with said seating surface portion to limit horizontal movement of said horizontal support members relative to said vertical support members and to each other; and cover members overlying the end portions of said cooperating pairs of horizontal support members and having retaining means thereon engaged with said vertical and horizontal support members to provide a firm assembly therewith. Emphasis ours.
The critical portions of the claimed invention and of the imported pools are illustrated in the following diagrams:
On April 1, 1977, a hearing was held. The Presiding Officer had decided that '917 was infringed and that no predatory pricing existed. The Commission, reviewing the recommendation of the Presiding Officer in light of the hearing record and post-hearing filings, found that '917 was not infringed and that there was no predatory pricing.5 The Commission stated, with regard to claims 1, 2, 3 and 5, that the question is whether the claim limitation "depending retaining elements thereon" included, within its scope, screws used to fasten together sections of the imported pools. The Presiding Officer interpreted the term to include screws. However, the Commission gave the term a narrower interpretation, reasoning that "thereon" required that the "elements" be in a "fixed relationship with the horizontal support members even when such members are not in use but are completely disconnected." The concept of a permanent attachment, the Commission concluded, is consistent with a literal reading of the limitation and is reinforced by a preferred embodiment. The Commission also discussed the doctrine of equivalents, which permits one to read a claim(s) on structures that employ substantially the same means to accomplish substantially the same result in substantially the same way. The doctrine was not applied in this case because the Commission preempted its operation by applying the doctrine of file wrapper estoppel. It decided that amendments and remarks made during prosecution limited the claimed invention by describing it as an improved interlock between the horizontal rails and the vertical support members. The Commission understood the claim amendments to be responsive to cited references and, therefore, an attempt to avoid rejection based upon those references. The imported pools are, according to the Commission, beyond the scope of the claimed invention under the narrow construction. Finally, the Commission concluded that there was no evidence on record to support a finding of predatory pricing.
Although this case brings several issues before the court, we find a touchstone for our decision in the infringement question alone. The resolution of this question turns on the interpretation of the claim language "depending retaining elements thereon," which in turn requires consideration of two underlying questions: (1) whether the screws of the imported pools, as they cooperate with the horizontal and vertical support members, constitute substantially the same means to accomplish substantially the same results in substantially the same way as the "depending retaining elements thereon" of '917 and, if so, (2) whether "file wrapper" estoppel applies in this case.
OPINIONPatent claims are the measure of a patent grant. Construction of claims to ascertain the intended boundaries of the patent grant is made by reference to the patent's specification. Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459, 473 (1966); United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 15 L.Ed.2d 572, 148 USPQ 479, 482 (1966). In '917, a passage in the specification is crucial and has become a subject of dispute. The passage states:
Although the retaining elements may be provided in the end portions of the horizontal support members alone by staking or by separate elements, a highly preferred construction therefor includes a separate locking member which overlies the end portions and has depending elements such as integrally formed lugs or separate elements which extend through apertures in the end portions to engage in the seating surface portion. Emphasis ours.
Appellant argues that this passage clarifies the claim language and that the above preferred embodiment includes depending elements either "integrally formed" or "separate" from the locking member. Screws, appellant contends, fall within the category of "separate" depending elements described as part of the preferred construction. The Supreme Court in Smith v. Snow, 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721, 24 USPQ 26 (1935), discussed the impact of a preferred embodiment upon claim language. The Court stated:
We may take it that, as the statute requires, the specifications just detailed show a way of using the inventor's method, and that he conceived that particular way described was the best one. But he is not confined to that particular mode of use, since the claims of the patent, not its specifications, measure the invention. Paper Bag Patent Case, 210 U.S. 405, 419, 28 S.Ct. 748, 52 L.Ed. 1122; McCarty v. Lehigh Valley R. Co., 160 U.S. 110, 116, 16 S.Ct. 240, 40 L.Ed. 358; Winans v. Denmead, 15 How. 330, 343, 14 L.Ed. 717. While the claims of a patent may incorporate the specifications or drawings by reference, see Snow v. Lake Shore R. Co., 121 U.S. 617, 630, 7 S.Ct. 1343, 30 L.Ed. 1004, and thus limit the patent to the form described in the specifications, it is not necessary to embrace in the claims or describe in the specifications all possible forms in which the claimed principle may be reduced to practice. 294 U.S. at 11, 55 S.Ct. at 283, 24 USPQ at 30.
A literal reading of the claims requires, as the Commission found, that "depending" and "thereon" mean a permanent relationship between the horizontal support members and the tabs. Moreover, the suggested embodiments support this interpretation. The claims construed in light of the specification do not literally read on screws as they are used in the imported pools. However, the case law shows that upon a finding of no literal infringement, courts have determined, as a sequence, if the doctrine of equivalents applies. Recourse can be had to the doctrine of equivalents,6 if the three-pronged test is met, i. e., that the allegedly infringing device...
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