Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 95-1066

• Decision Date: 14 December 1995
• Docket Number: No. 95-1066,95-1066
• Citation: 37 USPQ2d 1161,72 F.3d 857
• Parties: FESTO CORPORATION, Plaintiff-Appellee, v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., a/k/a SMC Corporation, and SMC Pneumatics, Inc., Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 857

72 F.3d 857

37 U.S.P.Q.2d 1161

FESTO CORPORATION, Plaintiff-Appellee, v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., a/k/a SMC

Corporation, and SMC Pneumatics, Inc.,

Defendants-Appellants.

No. 95-1066.

United States Court of Appeals, Federal Circuit.

Dec. 14, 1995.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

March 6, 1996.

Charles R. Hoffmann, Hoffmann & Baron, Jericho, New York, argued for plaintiff-appellee. With him on the brief was Gerald T. Bodner.

Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., Arlington, Virginia, argued for defendants-appellants.

Before RICH, NEWMAN, and MICHEL, Circuit Judges.

NEWMAN, Circuit Judge.

Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., also known as SMC Corporation, and SMC Pneumatics, Inc. (collectively SMC) seek reversal of the judgment of the United States District Court for the District of Massachusetts, ¹ holding that SMC had infringed two patents owned by Festo Corporation and assessing damages. The patents relate to magnetically coupled rodless cylinders wherein the follower moves by magnetic attraction to the piston, which is moved hydraulically or pneumatically. We affirm the judgment.

I SUMMARY JUDGMENT--THE CARROLL PATENT

Before trial the district court granted Festo's motion for partial summary judgment, finding infringement of United States Patent No. 3,779,401 (the Carroll patent) under the doctrine of equivalents. SMC, appealing this judgment, argues that in summarily finding infringement the trial judge engaged in impermissible fact-finding, contrary to the appropriate standard for Rule 56 determinations. We review the summary judgment for correctness of the process, as well as for its legal conclusion. The grant of summary judgment is given plenary review on appeal.

Summary judgment is appropriate when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). A material fact is one whose finding is necessary to the proceedings. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). A genuine issue of material fact is shown to exist if sufficient evidence is presented whereby a reasonable fact finder could decide the question in favor of the nonmoving party. Id. The evidence submitted by the nonmovant, in opposition to a motion for summary judgment, "is to be believed, and all justifiable inferences are to be drawn in his favor." Id. at 255, 106 S.Ct. at 2513.

In ruling on a motion for summary judgment the court must bear in mind the actual quantum and quality of proof necessary to support liability under the applicable law. Id. at 254, 106 S.Ct. at 2513. It is the opposing party's responsibility to raise issues of material fact that would make summary judgment inappropriate. Matsushita Elec.

Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-87, 106 S.Ct. 1348, 1355-56, 89 L.Ed.2d 538 (1986). The court must assess the adequacy of the nonmovant's response and must determine whether the showing the nonmovant asserts it would have made at trial would be sufficient to sustain its position. See Celotex, 477 U.S. at 322, 106 S.Ct. at 2552.

The infringement issue concerning the Carroll patent, which expired in 1990, was focused on reexamined claim 9, shown in the margin. ² All of the claim elements were conceded to be literally present in the accused devices except for both members of the pair of resilient sealing rings. SMC stated to the special master "We've decided that we will not be presenting any testimony concerning infringement." Absent evidence that placed in dispute the facts of infringement, summary judgment could properly be granted on undisputed facts.

In granting summary judgment that the claim was infringed, the district court observed that SMC offered no evidence to refute Festo's assertion that substantially the same function was performed, in substantially the same way with the same result, by the claimed pair of resilient sealing rings when situated one at each end of the central mounting member, and by SMC's single ring situated at the end contacted by the pressure fluid. Although SMC now argues that there has not been compliance with the "all elements rule" of Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 USPQ2d 1737, 1739-40 (Fed.Cir.1987) (in banc), cert. denied, 485 U.S. 961, 1009, 108 S.Ct. 1226, 1474, 99 L.Ed.2d 426, 703 (1988), we take note that, as held in Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 398, 29 USPQ2d 1767, 1769 (Fed.Cir.1994) and Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed.Cir.1991), there need not be one-to-one correspondence between the components of an accused device and the claimed invention. It was not disputed that the rings served the primary function of providing a tight seal at the end contacted by the pressure fluid. There was undisputed evidence to support a finding that the two-way seal employed by SMC, as used in the accused device, corresponds to the two resilient sealing rings of the claimed invention. On the record that was the basis of the motion for summary judgment we do not discern reversible error in the court's grant of summary judgment of infringement as to the Carroll patent. That judgment is affirmed.

II THE JURY TRIAL

The remaining issues were tried to the jury. The jury found valid the Carroll patent and the Stoll patent (United States Patent No. 4,354,125), found the Stoll patent infringed, and assessed damages. The district court entered judgment on the jury verdict, denying duly made post-trial motions. The issues appealed relate only to infringement and damages; no appeal is taken on the issue of validity of either the Carroll or the Stoll patent.

We review the jury verdict to ascertain whether there was substantial evidence whereby a reasonable jury could have reached the verdict that was reached. Substantial evidence is such relevant evidence, on the record as a whole, as could be accepted by a reasonable mind as adequate to support the verdict. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 673 (Fed.Cir.), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984). The court must consider the evidence in the light most favorable to the party in whose favor the jury found, and must not substitute its choice for the jury's in drawing factual inferences or deciding between conflicting evidence. Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1580, 24 USPQ2d 1401, 1419 (Fed.Cir.1992).

A. INFRINGEMENT OF THE STOLL PATENT

Stoll patent claim 1 is shown in the margin. ³ The issue of infringement focused on the claim clauses relating to the guide rings and sealing rings, for some of the accused devices contained four rings and some contained only three rings; and to the magnetizable material in the sleeve of the follower. The presence of all other claim elements and limitations in the accused devices was conceded. We confirmed in Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 35 USPQ2d 1641 (Fed.Cir.1995) (en banc ) that the fundamental inquiry with respect to equivalency is whether the accused device is substantially the same as the patented invention, affirming the utility of the function/way/result test for substantial identity, and the relevance of objective considerations such as copying or independent development.

Both sides presented testimony and made cogent arguments at trial on the merits of their respective positions on the technologic aspects of equivalency. There was expert testimony on behalf of Festo that the SMC cylinder having a follower using an aluminum alloy sleeve encircling the magnets is substantially the same as the claimed cylinder There was also evidence before the jury concerning the double rings at each end of the central member. SMC argues that the omission of one of the sealing rings precludes a finding of infringement, under the "all elements rule" of Pennwalt. However, this rule does not require a one-to-one correspondence of components. See, e.g., Dolly v. Spalding, 16 F.3d at 398, 29 USPQ2d at 1769; Intel v. ITC, 946 F.2d at 832, 20 USPQ2d at 1171. There was testimony concerning the effect of the omission by SMC of one of the four rings, and the effect of the location of the omitted ring distal from the pressure medium. Festo presented testimony that the use by SMC of a guiding ring at both ends, retaining the wiping/sealing ring only at the end adjacent the pressure medium, corresponded to and was equivalent to the claimed ring structure, and that the SMC ring structure would still improve the life of the piston, although not as effectively as would the use of two rings at both ends. Inefficient infringement is still infringement. Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 859, 9 USPQ2d 1289, 1294 (Fed.Cir.1988), cert. denied, 490 U.S. 1068, 109 S.Ct. 2069, 104 L.Ed.2d 634 (1989).

wherein the sleeve is made of "magnetizable material," and that both serve the function of reducing magnetic leakage. Festo's expert witness in the field of physics and magnetism, Dr. Schroeder, explained that because of the small gap, any magnetic flux leaking from the cylinder is very small. He showed the tests he conducted on the SMC sleeve, and explained the evidence that a 300% reduction in magnetic leakage fields was produced by the SMC sleeve. Dr. Schroeder explained how he analyzed the composition of the SMC sleeve and compared it to the sleeve described in the patent. He testified that the SMC sleeve formed a magnetic circuit in substantially the same way as the sleeve of the patent, that it served the same function of...