Dayco Products Inc. v. Total Containment Inc.

• Decision Date: 20 July 2001
• Docket Number: PLAINTIFF-APPELLANT,No. 00-1503,DEFENDANT-APPELLEE,00-1503
• Citation: 59 USPQ2d 1489,258 F.3d 1317
• Parties: (Fed. Cir. 2001) DAYCO PRODUCTS, INC.,, v. TOTAL CONTAINMENT, INC., Decided:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1317

258 F.3d 1317 (Fed. Cir. 2001)

DAYCO PRODUCTS, INC., PLAINTIFF-APPELLANT, v. TOTAL CONTAINMENT, INC., DEFENDANT-APPELLEE.

No. 00-1503

United States Court of Appeals for the Federal Circuit

Decided: July 20, 2001

Rehearing and Rehearing En Banc

Denied: August 24, 2001

Appealed from: U.S. District Court for the Western District of Missouri

[Copyrighted Material Omitted]

Constance S. Huttner, Skadden, Arps, Slate, Meagher & Flom LLP, of New York, New York, argued for plaintiff-appellant. With him on the brief was Daniel A. DeVito. Of counsel was Joel K. Goldman, Husch & Eppenberger, of Kansas City, Missouri.

Randolph J. Huis, Volpe and Koenig, P.C., of Philadelphia, Pennsylvania, argued for defendant-appellee.

Before Mayer, Chief Judge, Linn, and DYK, Circuit Judges.

DYK, Circuit Judge.

Senior Judge Scott O. Wright

Dayco Products, Inc. ("Dayco") appeals from the decision of the United States District Court for the Western District of Missouri granting the motion of Total Containment, Inc. ("TCI") for summary judgment of non-infringement of U.S. Patent Nos. 5,129,686 (the "'686 patent"), 5,199,752 (the "'752 patent"), 5,297,822 (the "'822 patent"), 5,380,050 (the "'050 patent"), and 5,486,023 (the "'023 patent"). Dayco Prods., Inc. v. Total Containment, Inc., No. 99-3042-CV-S-SOW-ECF (W.D. Mo. July 7, 2000) ("Order").

We affirm the district court's grant of summary judgment of non-infringement of the '686 patent. However, we find that under a proper claim construction, issues of material fact remain regarding infringement of the '752, '822, '050, and '023 patents. Therefore, we vacate the grant of summary judgment of non-infringement of these patents and remand for further proceedings.

BACKGROUND

Dayco is the assignee of the '686, '752, '822, '050, and '023 patents, all of which relate to flexible hoses and coupling assemblies that may be sealingly connected to each other for use in underground gas containment systems. Each patent issued from a respective divisional application that claimed priority from the application that led to U.S. Patent No. 5,037,143. Therefore, the specifications of all the patents are nearly identical.

These patents describe a generally cylindrical polymeric hose having an inner hose with corrugations along its length into which a ferrule (or "insert means" in the language of the patent) is received. Figure 9 of the patent specifications (reproduced below) depicts the hose (31), which includes an inner hose (34) having an inner surface (81) defined by inward projections (35') and recesses (36'). The complementary insert means (61) has an exterior peripheral surface (77) defined by outward projections (78) and recesses (79). [Tabular or Graphical Material Omitted]

As shown in Figure 10 of the patent specifications (reproduced below), sections of hose may be joined to a hollow, generally cylindrical coupling (32). The insert means is placed within the bore of the inner hose, such that projections of the insert means are received by recesses of the inner hose and vice versa. The inner sleeve (51) of the coupling is then inserted into the bore of the insert means.

[Tabular or Graphical Material Omitted]

After the inner sleeve of the coupling is inserted, the coupling and the insert means surrounding it are radially expanded as shown in Figure 11 of the patent specifications (reproduced below), such that the projections and recesses of the insert means firmly contact respective recesses and projections of the inner hose's inner surface. Thus, the peripheral surface of the insert means is compressed against the inner surface of the inner hose to form a seal. The seal prevents fluid from leaking between the hose and the coupling, such that all fluid passing through the hose passes through the coupling.

[Tabular or Graphical Material Omitted]

Independent claim 1 of the '050 patent is representative of the claims in suit in most respects. The pertinent terms are highlighted:

1. In a hose construction comprising a tubular hose having an inner peripheral surface means and an outer peripheral surface means, and a coupling secured to one end of said tubular hose, the improvement wherein said inner peripheral surface means of said tubular hose comprises an inner corrugated hose made of polymeric material and having inwardly directed projections with recesses there between and extending from said one end of said tubular hose to the other end thereof and wherein said coupling has an insert means disposed in said one end of said tubular hose and being radially outwardly expanded into sealing relation with said inner corrugated hose, said insert means having an outer peripheral surface means defined by a plurality of outwardly directed projections with recesses there between, said projections of said insert means being respectively received in said recesses of said inner hose and said projections of said inner hose being respectively received in said recesses of said insert means whereby the interior of said tubular hose is substantially sealed to the interior of said coupling, said projections of said insert means each having a transverse cross-sectional configuration of a certain length that is different from the transverse cross-sectional length of each of said recesses of said inner hose.

'050 patent, col. 10, lines 21-45 (emphases added).

Each claim 1 of the other patents in suit is similar to claim 1 of the '050 patent but with the following differences in the highlighted portions. Instead of referring to "outwardly directed projections," the '686 patent claims a hose construction with "outwardly convex projections." '686 patent, col. 10, lines 22-23 (emphasis added). Instead of referring to "projections of the insert means each having a transverse cross-sectional configuration of a certain length that is different from the . . . length of [the] recesses of [the] inner hose," the '686 patent claims a hose construction with "projections of said insert means each having a transverse cross-sectional configuration defined by a radius of a certain length and said recesses of said insert means each having a transverse cross-sectional configuration defined by a radius of a predetermined length that is longer than said certain length." '686 patent, col. 10, lines 29-36 (emphases added).

The '822 patent is different in that instead of claiming a "hose construction," it claims "a coupling for a hose construction" with "projections of said insert means being adapted to be respectively received in said recesses of said inner hose and said projections of said inner hose being adapted to be respectively received in said recesses of said insert means." '822 patent, col. 10, lines 31-36 (emphases added).

The '752 patent and the '822 patent are different in that instead of comparing the lengths of the insert means projections to the lengths of the inner hose recesses they claim "projections of said insert means each having a transverse cross-sectional configuration of a certain length and said recesses of said insert means each having a transverse cross-sectional configuration of a predetermined length that is different than said certain length." '752 patent, col. 10, lines 38-43; '822 patent, col. 10, lines 38-43 (emphasis added).

The '752 and '686 patents are also different in that instead of claiming an inner hose with "inwardly directed projections," they claim an inner hose with "inwardly convex projections." '752 patent, col. 10, line 24; '686 patent, col. 10, line 15 (emphasis added).

Dayco initiated an action against TCI in the Western District of Missouri on February 10, 1999, inter alia, for infringement of the '686, '752, '822, '050, and '023 patents. ¹ On June 30, 1999, TCI answered and counterclaimed by denying infringement, alleging that all the patents asserted by Dayco were invalid and/or unenforceable, and alleging that TCI had licensed the patents. TCI subsequently amended its counterclaims to specifically allege that Dayco had committed inequitable conduct during the prosecution of the applications that led to the patents in suit.

Dayco and TCI both moved for summary judgment with respect to claim construction and infringement issues, and on June 26, 2000, the district court conducted a Markman hearing limited to claim construction issues. On July 7, 2000, the district court construed the disputed claim language, including the phrase "said projections of said insert means being respectively received in said recesses of said inner hose," which it determined to mean "three or more projections that extend outward from the peripheral surface of the insert means with two or more recesses located between the projections. . . . resulting in an alignment of the projections with the recesses where the projections are completely received within the recesses of the inner hose." Order, slip op. at 4 (emphases added). With respect to the '050 and '023 patents, the district court construed the limitation that the length of the insert means projections be "different from" the length of each of the inner hose recesses to simply mean that the length of the insert means projections must be "different from" the length of the inner hose recesses. Id. at 4-5. With respect to the '752 and '822 patents, the district court construed the limitation that the length of the insert projections be "different than" the length insert means recesses to mean that the length of the insert means recesses must be "greater than" the length of the inner hose projections. Id. at 5 (emphasis added).

Based on that claim construction, the district court granted TCI's motion for summary judgment of non-infringement, both literally and under the doctrine of equivalents. Id. at 7-10. The district court compared the construed claims to TCI's hose products, which include an insert means having corrugations on its outer surface defined by alternating angled sawtooth shaped protrusions and partially...