Hoover Group, Inc. v. Custom Metalcraft, Inc.

Decision Date19 September 1995
Docket NumberNo. 93-1263,93-1263
Citation36 USPQ2d 1101,66 F.3d 299
PartiesHOOVER GROUP, INC., Plaintiff-Appellee, v. CUSTOM METALCRAFT, INC., Defendant-Appellant.
CourtU.S. Court of Appeals — Federal Circuit

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 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.

BACKGROUND

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 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.

ANTICIPATION

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 sold to Plough, Inc. in 1982; a tank to hold fertilizer sold to Forest Lytle & Sons in 1981; and three tanks that were sold to AT & T, Nalco Chemical Co., and Progress Industries, which the district court called the "center discharge tanks." The products asserted against the '958 patent were certain Custom tanks sold to Four Seasons Paint Co. and the Missouri Highway and Transportation Department in the spring of 1987. Custom also alleged that certain tanks sold by Hoover to W.R. Grace & Co. on March 20, 1987 were manufactured in accordance with the '958 patent.

All of these prior tanks were the subject of testimony, drawings, and exhibits at trial. The district court found that each of the alleged anticipatory tanks lacked one or more of the elements or limitations of the claims of the patent against which they were asserted. With respect to the '284 patent, the district court found that the Plough sugar bin was not a tank suitable for storing liquids, but a bin for storage of dry materials; the suitability of this bin for storing liquids was the subject of conflicting testimony at trial. The district court also found that the three center discharge tanks did not have slopes caused by the presence of "a plurality of creases" and were not completely draining, lacking "a smooth contoured surface sloping toward said discharge opening." Witnesses for both sides testified concerning these facts. The district court's findings have not been shown to be clearly erroneous, including the ultimate findings that these tanks did not anticipate and did not bar the '284 patent.

Concerning Custom's sales to the Missouri Highway Department and the Four Seasons Paint Co., the district court reviewed the evidence concerning these tanks and found that the bottom of each tank was formed by a plurality of creases, a feature absent in the '958 patent, and that the inner surfaces were planar, not curved as in the '958 patent. Custom has not shown that the court's findings of fact were clearly erroneous. In addition, Custom does not allege clear error in the district court's finding that the tanks sold by Hoover to W.R. Grace did not embody the subject matter of the claims of the '958 patent.

No prior device was shown, by clear and convincing evidence, to contain all of the elements and limitations of either patent's claims. The district court's ruling that the patents in suit are not invalid in terms of 35 U.S.C. Sec. 102(a) or (b) is affirmed.

OBVIOUSNESS

Custom asserted in its pleadings that the inventions of the '284 and '958 patents would have been obvious to one of skill in the field of the invention at the time the invention was made, and thus are invalid pursuant to 35 U.S.C. Sec. 103. The district court found that Custom had introduced no evidence at trial as to obviousness.

Custom states that the evidence it...

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