Insituform Technologies, Inc. v. Cat Contracting, Inc., s. 96-1078
| Decision Date | 05 November 1996 |
| Docket Number | 96-1099,Nos. 96-1078,s. 96-1078 |
| Citation | 40 USPQ2d 1602,99 F.3d 1098 |
| Parties | , 40 U.S.P.Q.2d 1602 INSITUFORM TECHNOLOGIES, INC., Insituform (Netherlands) B.V. and Insituform Gulf South, Inc., Plaintiffs/Cross-Appellants, v. CAT CONTRACTING, INC., Michigan Sewer Construction, Kanal Sanierung Hans Mueller GmbH & Co KG and Inliner U.S.A., Defendants-Appellants. |
| Court | U.S. Court of Appeals — Federal Circuit |
Harold James, James & Franklin, New York City, argued, for plaintiffs/cross-appellants.
Edward W. Goldstein, Tobor & Goldstein, L.L.P., Houston, TX, argued, for defendants-appellants. With him on the brief was John T. Polasek.
Before ARCHER, Chief Judge, MICHEL, and SCHALL, Circuit Judges.
Inliner 1 appeals from the district court's order denying its motion for post-verdict judgment notwithstanding the verdict ("JNOV") 2 of invalidity of United States Patent No. 4,336,012 ("the '012 patent"), the district court's order denying its motion to amend certain counterclaims, and the district court's final decision finding infringement under the doctrine of equivalents. Insituform 3 cross-appeals from the district court's order granting Inliner's motion for post-verdict JNOV of no literal infringement of claim 1 of the '012 patent. The case was submitted for decision after oral argument on July 10, 1996. We affirm in all respects, except one: we vacate the finding of infringement under the doctrine of equivalents and remand to redetermine infringement under the doctrine because, although the prosecution history of the '012 patent does not estop Insituform from claiming that the accused processes infringe, the district court's doctrine of equivalents infringement analysis was tainted by the use of an incorrect claim construction.
The appeal and cross-appeal at bar arise from a complex series of trials spanning five years in the U.S. District Court for the Southern District of Texas, Case No. H-90-1690. In February 1990, Insituform brought suit against Inliner, alleging infringement of the '012 patent. Inliner filed an answer, as well as counterclaims for a declaratory judgment of noninfringement, invalidity, and unenforceability of the '012 patent. Inliner also filed a counterclaim for tortious interference with contractual relations which included the assertion that "Insituform has successfully monopolized the market for soft-lining sewer rehabilitation in the United States for many years." The counterclaim did not, however, refer to the federal antitrust laws, nor was there a separate counterclaim alleging antitrust violations.
On March 5, 1991, almost a year after Insituform had filed its answer and counterclaims, the district court filed an order indicating that, inter alia, "defendants' counterclaim for antitrust violations is severed." 4 Shortly thereafter, Inliner entered a motion to amend its counterclaims so as "to include specific allegations regarding Insituform's antitrust violations." The district court did not take any immediate action on Inliner's motion.
In June 1991, the patent and state law issues in the case were tried to a jury for two weeks. At the close of the trial, the jury returned verdicts of infringement, no invalidity, no inequitable conduct, and no tortious interference with contract. Although the jury was instructed on both literal infringement and infringement under the doctrine of equivalents, the interrogatory form asked only whether "Inliner made, used, or sold a method that infringes claim one of the '012 patent," i.e., for a general infringement verdict. Inliner moved for JNOV on all issues. By order dated August 28, 1991, the court granted the JNOV motion in part, concluding that Inliner had not literally infringed the '012 patent and that it was entitled to retrial on the question of infringement under the doctrine of equivalents. The court denied Inliner's motion with respect to the jury's verdict of no invalidity, thus leaving that verdict intact.
In February 1995, the claim of infringement under the doctrine of equivalents was retried, this time to the bench, for three days. 5 On October 11, 1995, the district court denied Inliner's motion to amend its allegedly severed counterclaims. In November 1995, the district court entered amended findings of fact and conclusions of law, according to which two of Inliner's processes were found to have infringed under the doctrine. At that time, the court also explained that its earlier reference to the severance of an antitrust counterclaim had been "erroneous[ ]," inasmuch as no such counterclaim had ever existed.
Inliner appeals from the district court's (1) August 28, 1991 order denying its motion for post-verdict JNOV of invalidity of the '012 patent, (2) October 11, 1995 order denying its motion to amend the counterclaims, and (3) final decision finding infringement under the doctrine of equivalents despite Inliner's alleged prosecution history estoppel defense. Insituform cross-appeals from the district court's August 28, 1991 order granting Inliner's motion for post-verdict JNOV of no literal infringement of claim 1 of the '012 patent.
We write solely on the questions of infringement, both literal and by equivalency, of the '012 patent. Of the issues raised by the parties, only these infringement issues merit extended analysis. The jury's rejection of Inliner's attack on the validity of the '012 patent is amply supported by the evidence, and we discern no error in the district court's denial of Inliner's motion for post-verdict JNOV on this point. The district court's eventual denial of Inliner's 1991 motion to amend its "antitrust" counterclaim was not, as Inliner contends, an abuse of discretion, inasmuch as no "antitrust" counterclaim in need of amending ever existed. The district court's decisions on these two points are straightforward, and we affirm them without further discussion. Because the district court's grant of Inliner's motion for post-verdict JNOV of no literal infringement is consistent with the proper construction of claim 1 of the '012 patent, we affirm that grant. Although the district court properly determined that the prosecution history of the '012 patent did not estop Insituform from claiming infringement by the accused processes under the doctrine of equivalents, we vacate the district court's decision that Inliner infringed under the doctrine in light of Judge Gilmore's reliance on a claim construction that is incorrect as a matter of law.
Underground pipes, such as sewer pipes, are subjected to great stress. As a result Eric Wood, an inventor at Insituform, pioneered a process for rehabilitating a sewer or other underground pipe without digging it up. Specifically, in the process developed by Wood, one inverts within the pipe a flexible tubular liner comprising an impermeable plastic layer and a thick, resin-impregnated felt layer, such that the resin-impregnated felt layer is held against the inner wall of the pipe. The resin used to impregnate the felt is thermosetting; in other words, although soft while at "room" temperature, the resin hardens permanently when exposed to heat. After the tubular liner has been put in place--plastic layer facing in, felt side facing out--and pressed out to conform to the pipe under repair, hot water is pumped through the lining to harden the resin.
over time, the pipes develop cracks and other structural defects. Before the development of the technology involved in the case at bar, the only way to rehabilitate a section of underground pipe was to dig up the broken portion and replace it.
Early in the development of this technology, artisans learned that they could facilitate the impregnation process, as well as make the resulting impregnation more thorough, by drawing air from the interior of the felt tube during impregnation. In general, the processes at issue in the case at bar all involve (a) a tube of felt with an impermeable outer layer, (b) into which is placed a "slug" of resin large enough to impregnate fully that length of tubing, (c) after which the tube is drawn through squeezing rollers, (d) while a vacuum is drawn through at least one opening somewhere downstream of the "resin front."
U.S. Patent No. 4,182,262 to Everson ("the Everson patent") issued in January 1980. It teaches both an apparatus and method for impregnating the felt lining of a flexible tube with resin at the repair site, thus eliminating the need to transport heavier, already-impregnated tubing to the site. Col. 1, ll. 15-63. The preferred embodiment includes a vacuum pump that is attached, by means of a hose, to the far end of the length of tubing to be impregnated. Col. 6, l. 65--Col. 7, l. 8. The specification describes the drawing of the vacuum during impregnation as follows:
As the tube passes through the throat [between the conveyor belt and the first roller], it is flattened therein and the resin in the bulge is spread transversely of the frame from side to side within the tube. As the conveyor transports the tube through the apparatus, the tube passes through the flattener commencing at the leading end so that the resin is extruded along the tube toward said opposite end. When the tube is engaged in the throat, the motor driving the vacuum pump is energized, creating a negative pressure in the reservoir, the hose, and the end of the tube opposite the leading end. The impervious outer lamina [of the tube] minimizes intrusion of air into the tube so that an effective vacuum can be maintained. The negative pressure urges the fluid resin to flow within the tube toward said opposite end. The combined action of the flattener and the vacuum system thus cause[s] the resin thoroughly to impregnate the absorbent lamina of the length of the tube required to line the passageway.
Col. 9, ll. 1-19 (diagram reference...
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