Fiskars Inc. v. Hunt Manufacturing Co.

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore NEWMAN, RADER, and SCHALL; NEWMAN
Citation221 F.3d 1318,55 USPQ2d 1569
Decision Date24 July 2000
Parties(Fed. Cir. 2000) FISKARS, INC. and FISKARS OY AB, Plaintiffs-Appellees, v. HUNT MANUFACTURING CO., Defendant-Appellant, and JOSEPH F. POSILLICO, Sanctioned Party-Appellant. 98-1560, -1566 DECIDED:

Page 1318

221 F.3d 1318 (Fed. Cir. 2000)
FISKARS, INC. and FISKARS OY AB, Plaintiffs-Appellees,
v.
HUNT MANUFACTURING CO., Defendant-Appellant, and JOSEPH F. POSILLICO, Sanctioned Party-Appellant.
98-1560, -1566
United States Court of Appeals for the Federal Circuit
DECIDED: July 24, 2000

Appealed from: United States District Court for the Western District of Wisconsin

Page 1319

David J. Harth, Foley & Lardner, of Madison, Wisconsin, argued for plaintiffs-appellees. With him on the brief were Joan L. Eads, Anat Hakim, and Nancy Y.T. Hanewicz. Of counsel was Jefferson Perkins.

Joseph F. Posillico, Synnestvedt & Lechner, LLP, of Philadelphia, Pennsylvania, argued for defendant-appellant and sanctioned party-appellant. With him on the brief were Mark D. Simpson, and Gary A. Hecht.

Before NEWMAN, RADER, and SCHALL, Circuit Judges.

NEWMAN, Circuit Judge.

Hunt Manufacturing Co. (Hunt) appeals the judgment of the United States District Court for the Western District of Wisconsin, 1 entered upon a jury verdict of infringement, under the doctrine of equivalents, of United States Patent No. 5,322,001 (the '001 or Fiskars patent) entitled "Paper Cutter with Circular Blades," owned by Fiskars Oy AB and Fiskars, Inc. (together "Fiskars"). Hunt also appeals the district court's determination that there was not inequitable conduct in the United States Patent and Trademark Office. Hunt and its counsel Joseph F. Posillico appeal the ruling that Mr. Posillico had vexatiously and unreasonably multiplied the proceedings on the issue of inequitable conduct, thereby incurring liability for Fiskars' litigation costs on that issue.

The judgment is affirmed.

BACKGROUND

The '001 patent is directed to a circular-blade paper cutter, illustrated in patent Figure 1:

Page 1320

Tabular or Graphical Material Omitted

In contrast with guillotine-type paper cutters which employ a long blade that pivots at one end, the patented cutter has a circular blade 18 enclosed in a carriage assembly 16 that rides along a rail 14. The rail is secured to the cutting board at both ends by pivots 27 which allow the rail to be raised for insertion of the paper. The blade assembly is biased upwardly by springs 48, as seen in the detailed drawings of the carriage assembly in patent Figures 5 and 6:

Tabular or Graphical Material Omitted

To cut the paper the carriage assembly enclosing the blade is pressed down and drawn along the rail. When the pressure is released the biasing springs return the carriage assembly and blade to an inoperative position, preventing accidental cuts of paper or operator.

Claims 1 and 8 are representative, with paragraphing and emphases added to show the terms at issue with respect to infringement under the doctrine of equivalents:

1. A cutting board assembly for cutting or trimming paper sheets, said assembly comprising

[a] a cutting board,

[b] a pair of posts mounted on said cutting board,

[c] a rail assembly pivotally mounted on said posts in a parallel relation to said cutting board,

Page 1321

[d] a carriage assembly mounted on said rail assembly for movement across the cutting board,

[e] a circular cutting blade mounted for rotary motion in said carriage assembly,

[f] means for biasing said carriage assembly to an inoperative position on said rail assembly, said biasing means comprises a pair of leaf springs mounted on said carriage assembly for biasing said carriage assembly to an inoperative position on said rail assembly

[g] whereby said carriage assembly must be moved from said inoperative position to an operative position on the rail assembly for cutting or trimming the paper sheets.

8. Apparatus for cutting sheet material comprising:

[a] a cutter board,

[b] a pair of pivot blocks mounted in a spaced relation on said cutter board,

[c] a rail assembly pivotally mounted on said pivot blocks for movement between operative and inoperative positions with respect to said board,

[d] a carriage assembly mounted on said rail assembly for translational movement across the board,

[e] said carriage assembly including a rotary cutting blade, and

[f] a spring assembly formed on said carriage assembly for biasing said carriage assembly to an inoperative position on said rail assembly

[g] whereby said cutting blade is activated by pressing said carriage assembly down and sliding said carriage assembly across said rail assembly.

The accused Hunt paper cutter, called the Heavy Duty Rotary 12 Paper Trimmer, differs in two ways from the Fiskars device that is described and claimed in the '001 patent. First, with respect to clause [e] of claims 1 and 8, in the Fiskars device the blade is mounted in the carriage assembly and the entire carriage assembly is biased by a spring, whereas the Hunt circular blade is mounted in a sub-assembly that is biased by a spring within the carriage assembly. Second, clause [f] of claim 1 specifies a pair of leaf springs, and clause [f] of claim 8 does not specify the kind of spring but states that the spring assembly is "formed on" the carriage assembly; the Hunt device uses a free-standing coil spring.

Upon Fiskars' suit for patent infringement Hunt raised the defenses of non-infringement, patent invalidity, and unenforceability for inequitable conduct. The district court granted partial summary judgment that Hunt did not literally infringe the '001 patent; that ruling is not appealed. Hunt abandoned the defense of patent invalidity at the start of trial. The issue of infringement under the doctrine of equivalents was tried to a jury. The issue of inequitable conduct was tried to the court.

I
INFRINGEMENT

A. Prosecution History Estoppel

The district court determined before trial that prosecution history estoppel did not preclude Fiskars from asserting infringement under the doctrine of equivalents. Hunt states that the court erred in its rulings concerning estoppel.

1. The Carriage Assembly

Hunt argues that Fiskars is estopped from asserting equivalency between the biased carriage assembly of the claims and the biased sub-assembly of the Hunt device because during prosecution Fiskars amended the term "cutting blade" to "carriage assembly." Fiskars argues that any presumption that the amendment was made for reasons of patentability was rebutted by evidence that this amendment was not made to overcome any cited reference: the inventor explained that this amendment was made to remove the unintended limitation of the claims to a cutting blade, for other blades such as perforating

Page 1322

and scoring blades could also be used without change in the device.

Hunt also relies on United States Patents No. 5,069,097 to Mori and No. 3,301,117 to Spaulding, both of which are directed to paper cutters. The examiner had cited Mori for its showing of a cutting assembly using a circular blade but lacking a means of biasing the cutting blade to an inoperative position, and Spaulding for its showing of a cutting assembly with means for biasing non-circular blades to an inoperative position on a rail. The district court discussed these patents, and their role in the patentability of the Fiskars patent, in extensive detail. The court observed that Mori shows a circular cutting blade that is biased downward toward the paper to be cut, but does not show biasing the blade and carriage upward to an inoperative position as in the Fiskars patent; the court found that the Mori cutting blade is biased in the opposite direction for a different purpose. Concerning Spaulding, the district court observed that Spaulding shows two non-circular blades protruding from the bottom of a carriage that rides on a rail that is upwardly biased by springs. In Spaulding downward pressure moves the rail and carriage assembly into contact with the paper, but when the cutter is not in use the blades protrude below the rail. By contrast, in the Fiskars device the carriage and blade, but not the rail, move to bring the blade into contact with the paper, such that when the cutter is not in use the blade does not protrude below the rail because both the carriage and the blade are biased upwardly.

The district court found that the amendment substituting "carriage assembly" for "cutting blade" was not directed to distinguishing the claims from the cited references, and thus that the amendment was not made for reasons of patentability. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33, 41 USPQ2d 1865, 1873 (1997) (the presumption that an amendment was made for reasons of patentability is "subject to rebuttal if an appropriate reason for a required amendment is established.") We discern no reversible error in the district court's conclusion. Thus the question of equivalency between these elements, the claimed biased assembly and the Hunt biased sub-assembly, was properly presented for jury determination.

2. The Biasing Spring

The Fiskars patent variously claims the biasing spring as "a pair of leaf springs" (claim 1), "a pair of spring blades" (claim 6), and "a spring assembly formed on the carriage assembly" (claim 8). The district court held that the prosecution history did not establish an estoppel against equivalency between the claimed biasing pair of leaf springs and the Hunt biasing coil spring, and presented the question of equivalency to the jury.

Hunt argues that all of the claims should be interpreted as limited to springs that are located "in the rail," and that any broader interpretation is estopped by the prosecution history. Only claim 10 states that the spring is located in the rail; claim 10 was not asserted against Hunt. Although no asserted claim requires that the spring is located in the rail, Hunt argues that this feature was emphasized during prosecution in order to distinguish the Spaulding and Mori references, and that the applicant deceived the examiner into thinking that all of the claims had been amended to include the limitation that appears in claim 10. The...

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64 practice notes
  • Card-Monroe Corp. v. Tuftco Corp., Case No. 1:14–cv–292
    • United States
    • United States District Courts. 6th Circuit. Eastern District of Tennessee
    • September 1, 2017
    ...be guilty of inequitable conduct if the reference was cited to the examiner ...." 270 F.Supp.3d 1035 Fiskars, Inc. v. Hunt Mfg. Co. , 221 F.3d 1318, 1327 (Fed. Cir. 2000). CMC cited both references during prosecution (Doc. 29–1, at 6–7) and, accordingly, cannot be guilty of inequitable cond......
  • Radiancy, Inc. v. Viatek Consumer Prods. Grp., Inc., No. 13–cv–3767 (NSR).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • March 28, 2014
    ...to the PTO Examiner, can be buried for the purposes of establishing inequitable conduct. See, e.g., Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1327 (Fed.Cir.2000) ("An applicant can not be guilty of inequitable conduct if the reference was cited to the examiner, [138 F.Supp.3d 318whethe......
  • The Chamberlain Group Inc. v. Lear Corp.., No. 05 CV 3449.
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • November 24, 2010
    ...analysis—it may be quite pertinent in assessing validity under the doctrine of equivalents. See, e.g., Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1324 (Fed.Cir.2000) (observing that “[i]nterchangeability is indeed relevant to equivalency”). Nevertheless, the Federal Circuit has made cle......
  • Halvonik v. Dudas, No. CIV.A. 99-863.
    • United States
    • U.S. District Court — District of Columbia
    • August 8, 2005
    ...objections to the procedure or the charges (which they did not) in any of these filings.15 See Page 123 Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1322 (Fed.Cir.2000) (noting the presumption that agencies act in accordance with law); Sanders v. United States Postal Serv., 801 F.2d 1328,......
  • Request a trial to view additional results
64 cases
  • Card-Monroe Corp. v. Tuftco Corp., Case No. 1:14–cv–292
    • United States
    • United States District Courts. 6th Circuit. Eastern District of Tennessee
    • September 1, 2017
    ...be guilty of inequitable conduct if the reference was cited to the examiner ...." 270 F.Supp.3d 1035 Fiskars, Inc. v. Hunt Mfg. Co. , 221 F.3d 1318, 1327 (Fed. Cir. 2000). CMC cited both references during prosecution (Doc. 29–1, at 6–7) and, accordingly, cannot be guilty of inequitable cond......
  • Radiancy, Inc. v. Viatek Consumer Prods. Grp., Inc., No. 13–cv–3767 (NSR).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • March 28, 2014
    ...to the PTO Examiner, can be buried for the purposes of establishing inequitable conduct. See, e.g., Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1327 (Fed.Cir.2000) ("An applicant can not be guilty of inequitable conduct if the reference was cited to the examiner, [138 F.Supp.3d 318whethe......
  • The Chamberlain Group Inc. v. Lear Corp.., No. 05 CV 3449.
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • November 24, 2010
    ...analysis—it may be quite pertinent in assessing validity under the doctrine of equivalents. See, e.g., Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1324 (Fed.Cir.2000) (observing that “[i]nterchangeability is indeed relevant to equivalency”). Nevertheless, the Federal Circuit has made cle......
  • Halvonik v. Dudas, No. CIV.A. 99-863.
    • United States
    • U.S. District Court — District of Columbia
    • August 8, 2005
    ...objections to the procedure or the charges (which they did not) in any of these filings.15 See Page 123 Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1322 (Fed.Cir.2000) (noting the presumption that agencies act in accordance with law); Sanders v. United States Postal Serv., 801 F.2d 1328,......
  • Request a trial to view additional results

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