Glaverbel Societe Anonyme v. Northlake Marketing & Supply, Inc.

Citation45 F.3d 1550,33 USPQ2d 1496
Decision Date23 January 1995
Docket NumberNos. 92-1316,92-1317,s. 92-1316
Parties1995-1 Trade Cases P 70,891, 33 U.S.P.Q.2d 1496 GLAVERBEL SOCIETE ANONYME and Fosbel, Inc., Plaintiffs/Cross-Appellants, v. NORTHLAKE MARKETING & SUPPLY, INC., Frank Zlamal, Samuel E. May, and Jim Hamilton, Defendants-Appellants.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Jerold I. Schneider, Spencer, Frank & Schneider, Washington, DC, argued, for plaintiffs/cross-appellants. With him on brief was Brian M. Kolkowski. Also on brief was George H. Spencer.

Ronald H. Isroff, Ulmer & Berne, Cleveland, OH, was on brief, for plaintiff/cross-appellant, Fosbel, Inc.

Anthony S. DiVincenzo, Campbell & DiVincenzo, Chicago, IL, argued, for defendants-appellants. With him on brief was John C. Brezina, Brezina & Buckingham, Oak Brook, IL.

Before NEWMAN, MAYER, and CLEVENGER, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Northlake Marketing & Supply, Inc., Frank Zlamal, Samuel E. May, and Jim Hamilton (together "Northlake") appeal the judgment of the United States District Court for the Northern District of Indiana, 1 upholding the validity of United States Patents Nos. 3,684,560 (the '560 patent) and 4,489,022 (the '022 patent), and declining to find fraudulent procurement or that the patents were used to violate the antitrust laws. Glaverbel Societe Anonyme and its exclusive licensee Fosbel, Inc. (collectively "Glaverbel") cross-appeal the grant of Northlake's motion for summary judgment of non-infringement. 2 We sustain the judgment on appeal, reverse in part the summary judgment on cross-appeal, and remand for trial of the issue of infringement.

I

PATENT VALIDITY

The Patents in Suit

The '560 and '022 patents relate to a ceramic welding process for repairing industrial furnaces. Ceramic welding is described as the process of forming a coherent refractory mass on the furnace wall. In the patented process this is achieved by projecting, against the wall of the furnace, particles of an oxidizable substance that burns exothermically and a refractory substance, whereby an exothermic reaction at the surface welds the refractory mass to the wall. Claim 1 of the '560 patent, the broadest claim, is as follows:

1. A process of forming a refractory mass comprising the steps of:

projecting against a surface particles of at least one oxidizable substance which burns by combining with oxygen with accompanying evolution of heat, said particles having an average size of less than 50 microns, and particles of at least one different substance, along with a combustion supporting gas,

at least one of said substances being of a composition such that under the heat of combustion of said oxidizable substance a coherent refractory mass is formed from said oxidizable substance and the different substance;

and burning the oxidizable substance substantially entirely while it is being projected against such surface for forming such refractory mass.

Claim 13 defines the "oxidizable substance" as aluminum, silicon, magnesium, or zirconium, and Claim 14 requires that the heat evolved by the burning step raise the temperature of the surface sufficiently to soften the surface.

The broadest claim of the '022 patent is as follows:

1. A process of forming a refractory mass comprising burning particles of exothermically Glaverbel describes the '022 patent as an improvement on the '560 patent, based on the use of silicon and aluminum particles in specified amount and proportions. According to Glaverbel flash-back is minimized, the completeness of the reaction is maximized, the cohesiveness of the refractory mass is improved, and the ratio of heat generated to oxidizable material used is optimized. As a result, states Glaverbel, it is no longer necessary to match the composition of the refractory mass and the furnace wall in order to obtain a satisfactory ceramic weld.

oxidizable material having an average grain size of less than 50 Sm while mixed with particles of incombustible refractory material during projection of the mixture against a surface to form a coherent refractory mass on said surface, said oxidizable material comprises silicon and aluminum, the aluminum being present in an amount not exceeding 9% by weight of the total mixture, and wherein the aluminum and silicon are together present in an amount not exceeding 15% by weight of the total mixture.

Anticipation

Anticipation is a question of fact. Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 619, 225 USPQ 634, 637 (Fed.Cir.), cert. dismissed, 474 U.S. 976, 106 S.Ct. 340, 88 L.Ed.2d 326 (1985). When trial is to the court, the district court's finding with respect to anticipation is reviewed for clear error, with due regard to the burden and standard of proof. Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed.Cir.1984).

The district court found that the '560 and '022 patents are not invalid for anticipation. Anticipation requires identity of the claimed process and a process of the prior art; the claimed process, including each step thereof, must have been described or embodied, either expressly or inherently, in a single reference. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed.Cir.1991); see Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369, 21 USPQ2d 1321, 1328 (Fed.Cir.1991) ("Anticipation can occur when a claimed limitation is 'inherent' or otherwise implicit in the relevant reference.")

Northlake relied at trial on Swedish Patent No. 102,083 (the Swedish patent) and United States Patent No. 2,976,166 (the White patent), arguing that the claims of both of the Glaverbel patents overlap with or read on either or both of these references. The district court found that the processes described in the references are not similar to the processes of the patents in suit. Northlake argues that the '560 and '022 claims are invalid if they can be read on the prior art, even if the processes are not similar. That is, Northlake argues that the '560 and '022 claims can be interpreted so broadly that they include the prior art. Anticipation, however, requires identity of invention: the claimed invention, as described in appropriately construed claims, must be the same as that of the reference, in order to anticipate. Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1267, 20 USPQ2d 1746, 1748 (Fed.Cir.1991). See also In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed.Cir.1990) ("the reference must describe the applicant's claimed invention sufficiently to have placed a person of ordinary skill in the field of the invention in possession of it").

In determining whether a patented invention is anticipated, the claims are read in the context of the patent specification in which they arise and in which the invention is described. If needed to impart clarity or avoid ambiguity, the prosecution history and the prior art may also be consulted in order to ascertain whether the patentee's invention is novel or was previously known to the art. Lindemann, 730 F.2d at 1458, 221 USPQ at 485 ("In deciding the issue of anticipation, the trier of fact must identify the elements of the claims, determine their meaning in light of the specification and prosecution history and identify corresponding elements disclosed in the allegedly anticipating reference.") Cf. Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116, 1 USPQ2d 1563, 1566 (Fed.Cir.1987) (claims are not interpreted "in a vacuum").

There was testimony that the prior art processes relate to flame-spraying, not combustion at the furnace wall. The district court found that the Swedish and the White patents describe heating the refractory material with a flame and using the flame to project the material against the wall, whereas the '560 and '022 patents require an exothermic reaction wherein oxidation or burning occurs at the surface of the wall. The district court also found that the Swedish patent relates to sintering, defined as "adherence below the melting point," whereas the claimed processes relate to welding above the melting point.

Clear error has not been shown in the district court's findings concerning the prior art. It was not an incorrect methodology for the court to interpret the '560 and '022 patent claims in light of the patent specifications and the prior art and to receive the testimony of experts in the field of the invention, when comparing the patented invention with the prior art for the purpose of determining whether they were the same. See Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 815, 19 L.Ed. 829 (1870) ("variations, scarcely noticeable to a common reader, would be detected by an expert in the art"); E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1435-36, 7 USPQ2d 1129, 1133-34 (Fed.Cir.) (expert testimony on issue of novelty), cert. denied, 488 U.S. 986, 109 S.Ct. 542, 102 L.Ed.2d 572 (1988).

Northlake has not shown clear error in the finding of the district court that the claims of the '560 and '022 patents are not invalid for anticipation.

Obviousness

Northlake states that the district court neglected to conduct a full analysis of obviousness as required by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966). The obviousness of a patented invention is determined by applying the law of 35 U.S.C. Sec. 103 to findings of fact relating to the scope and content of the prior art, the differences between the claimed invention and the prior art, and the level of ordinary skill in the art. Graham, 383 U.S. at 17, 86 S.Ct. at 693, 148 USPQ at 467. Objective evidence such as commercial success, copying, or long-felt need, is relevant, and when present must be considered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39, 218 USPQ 871, 879 ...

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