General American Transp. Corp. v. Cryo-Trans, Inc.

• Decision Date: 14 August 1996
• Docket Number: CRYO-TRAN,D,INCORPORATE,No. 95-1531,95-1531
• Citation: 39 USPQ2d 1801,93 F.3d 766
• Parties: GENERAL AMERICAN TRANSPORTATION CORPORATION Plaintiff-Appellant, v.efendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 766

93 F.3d 766

39 U.S.P.Q.2d 1801

GENERAL AMERICAN TRANSPORTATION CORPORATION Plaintiff-Appellant, v. CRYO-TRANS, INCORPORATED, Defendant-Appellee.

No. 95-1531.

United States Court of Appeals, Federal Circuit.

Aug. 14, 1996.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Oct. 10, 1996.

Kenneth J. Jurek, McDermott, Will & Emery, Chicago, Illinois, argued, for plaintiff-appellant. With him on the brief was Rosanne J. Faraci.

Bruce A. Kaser, Miller, Nash, Wiener, Hager & Carlsen, Seattle, Washington, argued, for defendant-appellee. With him on the brief was James P. Donohue.

Before MAYER, LOURIE, and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

General American Transportation Corp. ("GATC") appeals from the judgment of the United States District Court for the Northern District of Illinois in which the court held GATC liable for patent infringement, awarded Cryo-Trans, Inc. $8,983,440 in damages, and entered a permanent injunction against GATC. General Am. Transp. Corp. v. Cryo-Trans, Inc., 897 F.Supp. 1121 (N.D.Ill.1995); General Am. Transp. Corp. v. Cryo-Trans, Inc., 893 F.Supp. 774 (N.D.Ill.1995). Because the court correctly held that the patent was not proved invalid, but misconstrued the claims and clearly erred in finding infringement, we affirm in part and reverse in part.

BACKGROUND

Cryo-Trans is the assignee of U.S. Patent 4,704,876, which concerns a "cryogenic" railcar for transporting frozen foods. Cryogenic railcars use inexpensive carbon dioxide (CO sub2 ) as the refrigerant. Conventional refrigerated railcars, on the other hand, employ mechanical refrigeration systems that consume fossil fuels and thus are more expensive to operate.

The cryogenic railcar disclosed in the '876 patent has an insulated compartment (32) extending lengthwise along the top of the car. A system is provided for filling the compartment with solid carbon dioxide "snow" by injecting liquid CO sub2 into the compartment under high pressure. The bottom of the compartment contains openings (66) adjacent to each of the car's side walls (16, 18) and end walls (20, 22). In operation, the compartment is first filled with CO sub2 snow and then the frozen food products are loaded into the cargo area (26). During transit, the CO sub2 snow gradually sublimates as CO sub2 gas, which flows through the compartment's openings (66) and moves downward along the side walls and end walls, enveloping and cooling the load. Each of the four walls has corrugated channels to facilitate the flow of the CO sub2 gas down that particular wall. Figure 1 of the patent illustrates the railcar:

FIG 1

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Claim 1 is representative of the asserted claims. It reads, with emphasis on the language in dispute, as follows:

1. In a container adapted to be maintained in a refrigerated condition from the sublimation of carbon dioxide snow[,] the combination comprising:

a storage area defined by a floor, a pair of opposed side walls, a pair of opposed end walls, and a ceiling means;

an insulated roof positioned above said ceiling means and defining therewith a compartment for supporting a supply of carbon dioxide snow, said compartment extending substantially the full length of said storage area;

means in said compartment for forming carbon dioxide snow and means for connecting said carbon dioxide snow forming means to a supply of liquid carbon dioxide;

a plurality of openings through said ceiling means adjacent [sic] each of said side walls and end walls for permitting the flow of sublimated carbon dioxide gas from said compartment;

each of said walls being corrugated to define a plurality of channels therein open-sided toward the interior of the container whereby said carbon dioxide gas may flow from said openings in said ceiling means downwardly through said channels between said walls and a product load disposed in said container toward said floor.

Numerous cryogenic railcars were known before the invention at issue here. The "AFFX 2002" railcar, for example, which was built and publicly used in 1983, embodied all the elements of claim 1 except that its compartment for holding CO sub2 snow had openings adjacent to only one side wall and it had no openings adjacent to the end walls. U.K. Patent 399,678, issued to Kurth in 1933, disclosed a cryogenic railcar in which a compartment for holding solid CO sub2 had openings adjacent to both side walls, but again had no openings adjacent to the end walls. It also had no corrugated walls or system for forming CO sub2 snow using liquid CO sub2 .

GATC manufactured a cryogenic railcar that included a compartment for holding CO sub2 snow. The bottom of the compartment had a row of openings provided lengthwise along its center and two rows of openings adjacent to the car's opposite side walls. The openings adjacent to the side walls were each three inches from the nearest side wall, and the endmost of such openings were three feet from the nearest end wall. The endmost

center row openings were six feet from the nearest end wall. The drawing below illustrates the arrangement of openings in GATC's railcar compartment:

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In March 1991, after Cryo-Trans threatened to assert the '876 patent against GATC, GATC sued Cryo-Trans seeking, inter alia, a declaratory judgment that the patent was invalid, unenforceable, and not infringed. GATC argued that it did not infringe because the bottom of the compartment in its railcar lacked openings adjacent to the car's end walls, as required by the claims. Cryo-Trans counterclaimed for infringement of claims 1-3.

The district court conducted a bench trial in May 1995. At the conclusion of the trial, the court, relying on a dictionary definition, construed the term "adjacent" in the claims to mean "not far off" or "not necessarily at but nearby or near." The court then found that the endmost openings adjacent to the side walls in GATC's railcar compartment were "not far" from the car's end walls and functioned as openings adjacent to the end walls. Thus, the court found that GATC had infringed the claims, both literally and under the doctrine of equivalents. It rejected GATC's invalidity and unenforceability claims. The court accordingly awarded Cryo-Trans $8,983,440 in damages and entered a permanent injunction.

GATC appeals, challenging the district court's findings that the '876 patent was infringed and not proved invalid. GATC does not appeal the court's decision rejecting GATC's unenforceability claim.

DISCUSSION

A. Infringement

Determining whether a patent claim has been infringed requires a two-step analysis: "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839 (Fed.Cir.1993). Claim construction is a question of law, reviewed de novo on appeal. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir.1995) (in banc), aff'd, --- U.S. ----, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The application of the claim to the accused device is a question of fact, reviewed for clear error. Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279, 1282, 230 USPQ 45, 46 (Fed.Cir.1986).

GATC argues that the district court misconstrued the claim language "openings through said ceiling means adjacent to each of said side walls and end walls," which led to a clearly erroneous finding of infringement. We agree. As explained below, the district court incorrectly held that openings "adjacent" to the side walls could also be considered to be openings "adjacent" to the end walls. That error led to a clearly erroneous finding of infringement.

To ascertain the meaning of the claims, we consider the claim language, the specification, and the prosecution history. Markman, 52 F.3d at 979, 34 USPQ2d at 1329. Here, the claim language itself distinguishes In addition, the patent specification distinguishes between the openings that are adjacent to the side walls and those that are adjacent to the end walls. It states, in the "Summary of the Invention" section, that "[t]he bottom of the compartment is provided with openings along each side and end wall of the car through which sublimating carbon dioxide gas may escape." Col. 2, ll. 22-25 (emphasis added). Similarly, the "Detailed Description of the Invention" portion of the specification states:

between the openings that are adjacent to the side walls and those that are adjacent to the end walls. Specifically, the claims require "openings ... adjacent each of said side walls and end walls," which suggests that the openings adjacent to the side walls are structurally distinct from the openings adjacent to the end walls. The district court's claim construction obliterated that distinction.

The bottom wall 40 of the compartment 32 is provided with a plurality of openings 66 along each of the side walls 16, 18 and along each end wall 20, 22 of the car and which openings are preferably slanted toward the adjacent wall. These openings are provided for the flow of carbon dioxide gas sublimating from the snow contained within the compartment 32 and which gas may then flow downwardly along the adjacent wall through the sinusoidal passageways defined thereby. The openings on opposite walls preferably are offset with respect to each other.

Col. 3, ll. 41-51 (emphasis added). This arrangement of openings is said to yield an advantage: "[B]ecause the cold carbon dioxide gas is flowing downwardly on each of the opposite sides and on the ends of the car and in direct contact with the bottom of the load, all parts of the load will be maintained at a desirably low temperature." Col. 5, ll. 59-64 (emphasis added). Figure 1, to which the detailed...