Duplan Corporation v. Deering Milliken, Inc.

• Decision Date: 14 November 1973
• Docket Number: 70-14,69-777,69-1096,71-87 to 71-102,70-385,68-705,70-968,70-295,70-683,Civ. A. No. 71-306,70-622,70-391,71-126,70-386,70-250,70-189,70-677,70-628,70-493,71-127 and 71-283.,70-358,71-115
• Citation: 370 F. Supp. 769
• Court: U.S. District Court — District of South Carolina
• Parties: The DUPLAN CORPORATION, Plaintiff, v. DEERING MILLIKEN, INC., et al., Defendants. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. The DUPLAN CORPORATION and Burlington Industries, Inc., Defendants. The DUPLAN CORPORATION et al., Plaintiffs on the Counterclaim, v. DEERING MILLIKEN RESEARCH CORPORATION, Defendant on the Counterclaim, and Deering Milliken, Inc., et al., Additional Defendants on Counterclaim.

370 F. Supp. 769

The DUPLAN CORPORATION, Plaintiff, v. DEERING MILLIKEN, INC., et al., Defendants.

DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. The DUPLAN CORPORATION and Burlington Industries, Inc., Defendants.

The DUPLAN CORPORATION et al., Plaintiffs on the Counterclaim, v. DEERING MILLIKEN RESEARCH CORPORATION, Defendant on the Counterclaim, and Deering Milliken, Inc., et al., Additional Defendants on Counterclaim.

Civ. A. Nos. 71-306, 70-968, 69-1096, 68-705, 69-777, 70-14, 70-189, 70-250, 70-295, 70-358, 70-385, 70-386, 70-391, 70-493, 70-622, 70-628, 70-677, 70-683, 71-87 to 71-102, 71-115, 71-126, 71-127 and 71-283.

United States District Court, D. South Carolina, Spartanburg Division.

November 14, 1973.

COPYRIGHT MATERIAL OMITTED

Fletcher C. Mann, Leatherwood, Walker, Todd & Mann, Greenville, S. C., Charles B. Park, III, Parrott, Bell, Seltzer, Park & Gibson, Charlotte, N. C., Anthony F. Phillips, Willkie, Farr & Gallagher, New York City, for United Merchants & Mfg. Inc., The Duplan Corp., The Schwarzenbach-Huber Co., Jonathan Logan, Inc., Frank Ix & Sons Va., Corp., Lawrence Texturing Corp., Burkyarns, Inc.

Edward P. Perrin, Perrin, Perrin & Mann, Spartanburg, S. C., David Rabin, McNeill Smith, Smith, Moore, Smith, Schell & Hunter, Greensboro, N. C., for Texfi Industries, Inc., Blanchard Yarn Co., Reliable Silk Dyeing Co., Dixie Yarns, Inc., Tex-Elastic Corp., Hemmerich Industries, Spring-Tex, Inc., Olympia Mills, Textured Fibres, Virginia Mills, Inc., Throwing Corp. of America.

Thomas A. Evins, Butler, Means, Evins & Browne, Spartanburg, S. C., Jay Greenfield, Simon H. Rifkind and David J. Brody of Paul, Weiss, Rifkind, Wharton & Garrison, New York City, for Deering Milliken, Inc., and Deering Milliken Research Corp.

Rufus M. Ward, Ward, Howell & Barnes, Spartanburg, S. C., Granville M. Brumbaugh of Brumbaugh, Graves, Donohue & Raymond, New York City, for Moulinage et Retorderie de Chavanoz, Ateliers Roannais de Constructions Textiles, (ARCT, France).

R. Hoke Robinson, Thomas T. Moore, Robinson, McFadden & Moore, Arthur O. Cooke, Cooke & Cooke, Greensboro, N. C., for ARCT, Inc.

W. Francis Marion, O. G. Calhoun, Haynsworth, Perry, Bryant, Marion & Johnstone, Greenville, S. C., John W. Malley, Wm. K. West, Jr., of Cushman, Darby & Cushman, Washington, D. C., for Burlington Industries, Inc., Madison Throwing Co., Inc., Leon-Ferenbach, Inc., National Spinning Co., Inc.

ORDER

ON RENEWED MOTION BY BURLINGTON INDUSTRIES, INC. FOR SUMMARY JUDGMENT THAT U.S. PATENT 2,741,893 IS NOT INFRINGED BY USE OF ARCT FT MACHINES

HEMPHILL, District Judge.

Burlington's renewed¹ motion for summary judgment² of non-infringement of United States Patent No. 2,741,893 invites decision by this court. Because of the complexity of this patent infringement litigation, the court feels it appropriate to review the guidelines to be followed where a summary judgment motion for infringement or non-infringement is being considered. It is elementary that a motion for summary judgment should not be granted where there is a genuine issue of fact to be resolved.

STATEMENT OF APPLICABLE LAW

There is no dispute that the scope of a patented invention is defined³ by the claims allowed by the Patent Office and appearing in the issued patent. A party directly infringes a patent by making, using, or selling the patented invention within the United States during the term of the patent without permission from a properly authorized party. 35 U.S.C. § 271(a) (1952). Direct infringement may be proved either by a literal reading on the patent claims or under the doctrine of equivalents.

DIRECT INFRINGEMENT BY LITERAL READING ON THE CLAIMS

In determining whether an accused device infringes the patent, the court must initially look at the language of the claims. If the accused device falls clearly within a literal reading on the claims, there is direct infringement and that is the end of it. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 607, 70 S.Ct. 854, 94 L.Ed. 1097, 1101 (1950).

The construction of the patent claims is a question of law for the court. Doble Engineering Co. v. Leeds & Northrup Co., 134 F.2d 78, 83 (1st Cir. 1943); Vanderveer v. Erie Malleable Iron Co., 238 F.2d 510, 514 (3d Cir. 1957), cert. den., 353 U.S. 937, 77 S.Ct. 815, 1 L.Ed.2d 760; Cold Metal Process Co. v. E. W. Bliss Co., 285 F.2d 231, 239 (6th Cir. 1960), cert. den., 366 U.S. 911, 81 S.Ct. 1085, 6 L.Ed.2d 235 (1961); Solomon v. Renstrom, 150 F.2d 805, 808 (8th Cir. 1945); Del Francia v. Stanthony Corp., 278 F.2d 745, 747 (9th Cir. 1960). The court may have recourse to the patent specification, drawings, and file wrapper (a shorthand phrase used in the trade for the prosecution papers in the United States Patent Office) to discern the meaning of terms of art. Sometimes a term of art appears in the patent claims, the meaning of which is subject to dispute by those persons ordinarily skilled in the art. Since the patent applicant is his own lexicographer and his own grammarian, no genuine issue of fact as to the meaning of a term used in the claims will be considered by the court to exist if the meaning is made incontrovertibly clear elsewhere in the patent or in the file wrapper. Lincoln Stores, Inc. v. Nashua Mfg. Co., 157 F.2d 154, 158 (1st Cir. 1946), cert. den., 329 U.S. 811, 67 S.Ct. 623, 91 L.Ed. 692 (1947); Frederick Hart & Co. v. Recordograph Corp., 169 F.2d 580, 583 (3d Cir. 1948); Morpul, Inc. v. Glen Raven Knitting Mill, Inc., 357 F.2d 732, 736 (4th Cir. 1966); Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812, 814-815 (7th Cir. 1943); Strong-Scott Mfg. Co. v. Weller, 112 F. 2d 389, 394 (8th Cir. 1940); Bianchi v. Barili, 168 F.2d 793, 799 (9th Cir. 1948); Dominion Magnesium Ltd. v. United States, 320 F.2d 388, 394, 162 Ct.Cl. 240 (1963).

The doctrine of file wrapper estoppel has two different functions. The first function involves the use of the file wrapper to determine the meaning of a term of art. This differs from the application of the doctrine in the second manner or its classic sense as expounded by the Supreme Court in Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 62 S.Ct. 513, 86 L.Ed. 736 (1942). As to the first function, the lower federal courts have applied the doctrine so as to estop the patent owner, after asserting to the Patent Office that a term of art has one meaning, from later asserting to a court that the same term of art has a different meaning. Berry Brothers Corp. v. Sigmon, 317 F.2d 700, 706 (4th Cir. 1963); United States v. Cold Metal Process Co., 62 F.Supp. 127, 140 (N.D. Ohio 1945), aff'd, 164 F.2d 754 (6th Cir. 1947), cert. den., 334 U.S. 811, 68 S.Ct. 1016, 92 L.Ed. 1742 (1948); Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812, 814-815 (7th Cir. 1943); Myers v. Beall Pipe & Tank Corp., 90 F.Supp. 265, 268 (D.Ore.1948), aff'd per curiam sub nom. Fruehauf Trailer Co. v. Myers, 181 F.2d 1008 (9th Cir. 1950), cert. den., 340 U.S. 827, 71 S.Ct. 63, 95 L.Ed. 607.

The doctrine of file wrapper estoppel was elucidated by Judges Sobeloff, Haynsworth and Boreman affirming Judge Craven⁴ in Berry Brothers Corp. v. Sigmon, supra, as follows:

Specifically named as elements, without which the Patent Office would not have receded from its initial rejection of Berry's application, was the substantially straight leading edge of the insert, with the upper and lower trailing edges united to one another by an outwardly projecting heel. This feature Berry emphasized in the second supplemental amendment, which he filed after discussions with the Patent Office. Not until the claim was thus circumscribed, were the officials willing to acknowledge that the combination was inventive. Before the amendment was made, the Examiners considered that Berry showed only a stretching of two socks, one over the other, upon an insert. This, as we have seen, did not strike them as inventive. The amendment which brought in the heel tipped the scales in favor of the application. Whether the Examiners were right or wrong in their insistence on the amendment is immaterial. A patentee, having deliberately taken a position in the Patent Office proceedings to induce the grant of the patent to him, is not thereafter permitted to repudiate that position. This is what is meant by file wrapper estoppel. 317 F.2d 700, at 706.

This court adopts and follows the direction of the Fourth Circuit.

DIRECT INFRINGEMENT UNDER DOCTRINE OF EQUIVALENTS

If a mere colorable departure from a literal reading on the claims would avoid direct infringement, a patent would be turned into a hollow right. Graver Tank & Mfg. Co., supra, 339 U. S., at 607, 70 S.Ct. 854, 94 L.Ed., at 1101. Therefore the Supreme Court recognized the doctrine of equivalents. Winans v. Denmead, 56 U.S. (15 How.) 330, 14 L.Ed. 717 (1853). The doctrine necessarily arose after the Patent Act of 1836 required for the first time in the history of the United States patent system that an applicant make "claims" to his invention. This requirement has been carried through into the present Patent Act:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C. § 112 (second paragraph) (1952).

The doctrine of equivalents states that there is a direct infringement of a patent claim if the accused device performs substantially the same function in substantially the same way to obtain substantially the same result. Union Paper Bag Machine Co. v. Murphy, 97 U.S. (7 Otto) 120, 125, 24 L.Ed. 935, 936 (1878); Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 74 L.Ed. 147, 156 (1929). In Graver Tank Co., supra, 339 U.S., at 608, 70 S.Ct., at 857, 94 L.Ed., at 1102, the leading case on the doctrine of equivalents, the Supreme Court said:

The essence of the doctrine is that one may not practice a fraud on a

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