Hoover Group, Inc. v. Custom Metalcraft, Inc., No. 93-1263
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
| Writing for the Court | Before ARCHER, Chief Judge, NEWMAN and CLEVENGER; PAULINE NEWMAN |
| Citation | 36 USPQ2d 1101,66 F.3d 299 |
| Docket Number | No. 93-1263 |
| Decision Date | 19 September 1995 |
| Parties | HOOVER GROUP, INC., Plaintiff-Appellee, v. CUSTOM METALCRAFT, INC., Defendant-Appellant. |
Page 299
v.
CUSTOM METALCRAFT, INC., Defendant-Appellant.
Federal Circuit.
Rehearing Denied; Suggestion for Rehearing In Banc Declined
Oct. 27, 1995.
Page 300
Timothy C. Russell, Sonnenschein Nath and Rosenthal, Washington, DC, argued for plaintiff-appellee.
Dennis L. Thomte, Zarley McKee Thomte Voorhees and Sease, Omaha, NE, argued for defendant-appellant.
Before ARCHER, Chief Judge, NEWMAN and CLEVENGER, Circuit Judges.
Opinion for the court filed by Circuit Judge NEWMAN. Circuit Judge CLEVENGER concurs in the result.
PAULINE NEWMAN, Circuit Judge.
Custom Metalcraft, Inc. (Custom) appeals the decision of the United States District
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Court for the District of Nebraska 1 that certain of its liquid storage tanks infringed United States Patents No. 4,840,284 (the '284 patent) and No. 4,785,958 (the '958 patent), owned by Hoover Group, Inc. (Hoover). We affirm the decision of validity of both patents and infringement of the '284 patent. We reverse the decision of infringement of claim 1 of the '958 patent. On remand for assessment of damages, the district court may consider whether claim 2 or 3 of the '958 patent is infringed.Both parties are manufacturers of metal tanks for holding and transporting liquids. The products at issue are sloped-bottom tanks of varying structure. The principle of sloped bottoms to facilitate drainage is not new, and the prior art shows tanks containing double bottoms and other ways of adjusting the bottom slope. Hoover states that an advantage of its patented tanks is their simplicity and ease of manufacture, reducing cost and enhancing durability while enabling the requisite complete drainage with the advantage of side discharge. Hoover states that no previously existing tank design met all of these criteria.
The '958 patent is directed to a tank having several structural elements, wherein a bottom plate has a bend radiating from the discharge opening, and a "divergent gap" that creates the sloped surface when the gap is closed. Claim 1 is directed to the tank structure, and claims 2 and 3 to its method of manufacture. Claim 1 follows:
1. A portable tank for liquid storage and transport having generally vertical sides and a sloped bottom for complete drainage of fluid from the tank, said bottom having upturned side portions that merge with upwardly extending wall portions terminating in a substantially horizontal upper edge, said bottom comprising:
a generally flat, rectangular bottom plate having a plurality of edges;
a discharge opening through said bottom plate near one of said edges;
a bend in said bottom plate radiating from said discharge opening in a direction extending away from said one edge;
a closed seam connecting said one edge with said opening, said seam formed from a divergent gap in the plate extending from the opening to said one edge, said gap converging at the opening so that when the gap is closed the bottom plate at the opening is moved downwardly to position said opening at the lowest point in said plate whereby liquid in said tank will be caused by gravity to flow into said bend and along said bend to said discharge opening to cause complete drainage of the tank contents without tipping of the tank.
The '284 patent has one claim, to a tank wherein a sloped bottom is created by a plurality of contoured surfaces and creases in the metal plate, directed to the discharge opening:
1. A portable tank for fluid storage and transport having generally vertical sides and a sloped bottom for complete drainage of fluid from the tank comprising:
a generally rectangular bottom plate having upwardly curved side portions that merge with upwardly extending wall portions that terminate in a substantially horizontal upper edge,
said bottom plate having an inner surface and an outer surface and having a discharge opening therethrough, said inner surface having a plurality of smooth contoured surfaces sloped toward said discharge opening and a plurality of creases between said sloped surfaces directed toward said discharge opening to thereby slope substantially all of said inner surface toward said discharge opening,
said side walls being mounted on and secured to said upper edge of said bottom plate,
said outer surface being contoured like said inner surface,
a plurality of feet attached to said outer surface of said plate and positioned at the corners of said plate, each of said feet having a sculptured upper edge conforming in shape to said bottom plate outer
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surface at the corner of said plate and being secured to said outer surface so that when said feet are resting on a horizontal surface said discharge opening is positioned at the lowest elevation of said bottom plate and said inner surface presents a smooth contoured surface sloping toward said discharge opening.The district court found that none of the prior tanks of Custom or Hoover anticipated or barred either patent, that Custom had adduced no evidence on the issue of obviousness, and that both patents were infringed.
Custom asserted that the patents in suit were invalid pursuant to 35 U.S.C. Sec. 102(a) and (b), based on various tanks sold by Custom and Hoover before the filing dates of the patents in suit.
A patent is invalid if the claimed invention was "known or used by others in this country ... before the invention thereof by the applicant for patent," 35 U.S.C. Sec. 102(a), or was "in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States," 35 U.S.C. Sec. 102(b). Invalidity based on lack of novelty (often called "anticipation") requires that the same invention, including each element and limitation of the claims, was known or used by others before it was invented by the patentee. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed.Cir.1991); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138, 231 USPQ 644, 646 (Fed.Cir.1986). Anticipation is a question of fact, and the district court's finding thereon is reviewed for clear error. Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, 45 F.3d 1550, 1554, 33 USPQ2d 1496, 1498 (Fed.Cir.1995); Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed.Cir.1984).
Custom asserted that several of its products embodied the inventions of the patents in suit and were sold more than a year before the filing dates of the patents (Jan. 15, 1988 for the '284 patent and Mar. 28, 1988 for the '958 patent), thus establishing a bar under Sec. 102(b) that did not require Custom to prove prior knowledge, before Hoover's date of invention, under Sec. 102(a). The products that Custom asserted against the '284 patent were a bin for holding granulated sugar...
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