Insta-Foam Products, Inc. v. Universal Foam Systems, Inc.

• Decision Date: 26 June 1990
• Docket Number: INSTA-FOAM,No. 89-1142,89-1142
• Citation: 906 F.2d 698,15 USPQ2d 1295
• Parties: PRODUCTS, INC., Plaintiff-Appellee, v. UNIVERSAL FOAM SYSTEMS, INC., Defendant-Appellant. Federal Circuit
• Court: U.S. Court of Appeals — Federal Circuit

Page 698

906 F.2d 698

15 U.S.P.Q.2d 1295

INSTA-FOAM PRODUCTS, INC., Plaintiff-Appellee, v. UNIVERSAL FOAM SYSTEMS, INC., Defendant-Appellant.

No. 89-1142.

United States Court of Appeals,Federal Circuit.

June 26, 1990.

Rehearing Denied Aug. 27, 1990.

James T. Fitzgibbon, of Lockwood, Alex, Fitzgibbon & Cummings, Chicago, Ill., argued, for plaintiff-appellee. With him on the brief was Angelo J. Bufalino.

Donald R. Dunner, of Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued, for defendant-appellant. With him on the brief was Robert J. Gaybrick.

Before ARCHER and MAYER, Circuit Judges, and SKELTON, Senior Circuit Judge.

ARCHER, Circuit Judge.

Universal Foam Systems, Inc. (Universal) appeals from the Order of the United States District Court for the Eastern District of Wisconsin, No. 83-C-1952, entered August 19, 1988, holding it liable for infringement of claims 1-12 of reexamined U.S. Patent No. 3,784,110. We affirm.

Background

U.S. Patent No. 3,784,110 (the '110 patent), entitled "Mixing and Dispensing Gun Having a Replaceable Nozzle," was issued January 8, 1974 to William R. Brooks and is currently assigned to Insta-Foam Products, Inc. (Insta-Foam). In December of 1983, Insta-Foam filed suit against Universal for infringement of the '110 patent. Following the institution of the infringement suit and on the belief that there was a substantial new question as to the patentability of the '110 claims, Universal requested that the Commissioner of Patents reexamine the '110 patent. When the Commissioner granted Universal's request, the district court stayed the infringement suit pending the outcome of the reexamination proceeding.

Reexamination Certificate B1 3,784,110, issued by the Commissioner on December 4, 1984, confirmed the patentability of claim 4 of the '110 patent without amendment, incorporated into the patent amended claims 1-3 and 5 and added additional claims 6-12. The district court proceeding was then resumed, and resulted in a Decision and Order by the court holding that none of the claims of the '110 patent as modified by the Reexamination Certificate was invalid or unenforceable, and that all of the claims were infringed by Universal. Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., No. 83-C-1952 (E.D.Wis. May 29, 1986). In so doing, the court rejected Universal's defensive claim under 35 U.S.C. Sec. 307 (1988) that it had acquired intervening rights attendant to the reexamination of the '110 patent. Id., slip op. at 11.

Universal appealed and this court, in an unpublished opinion, affirmed the district court's judgment with respect to invalidity, but vacated and remanded on the infringement and enforceability issues. Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., 829 F.2d 43 (Fed.Cir.1987).

On remand, the district court reconsidered the infringement and enforceability issues, entered supplemental findings and reaffirmed its previous decision that the reexamined '110 patent was not unenforceable and was infringed by Universal. Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., No. 83-C-1952 (E.D.Wis. August 19, 1988). On motion by Insta-Foam, the district court later made supplemental findings with respect to Universal's intervening rights defense. Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., No. 83-C-1952 (E.D.Wis. October 26, 1988).

Universal now appeals from the district court's Order contending (1) that its foam gun does not infringe, either literally or under the doctrine of equivalents, any of the claims of the reexamined '110 patent and (2) that it acquired intervening rights with respect to claims 1-3 and 5-12, which claims were either amended or newly presented by Insta-Foam during the reexamination, see 35 U.S.C. Sec. 307.

For the reasons given below, we affirm the district court's decision that Universal's gun infringes claim 4 of the '110 patent under the doctrine of equivalents and therefore need not reach the other issues, including the sufficiency of Universal's intervening rights defense, raised in this appeal.

Discussion

Claim 4 of the '110 patent, an independent claim, defines several elements of the covered invention in "means plus function" format as permitted by 35 U.S.C. Sec. 112, 6th para. (1988). Claim 4 recites, in pertinent part:

4. In a dispensing gun for mixing and discharging multi-component fluids, the gun comprising ... plunger means connected to the trigger means for unseating the ball means and permitting fluid flow when the ball means is unseated, biasing means urging the plunger means away from the ball means thereby permitting the ball means to be normally seated on the valve seat means and the valve means to be normally closed, ... said biasing means engaging the housing means and the trigger means and normally urging the trigger means into an inoperative position, thereby pulling the connected plunger means away from the ball means and permitting the ball means to be normally seated with a fluid-tight seal on the valve seat means.

In connection with its literal infringement analysis, the district court made the following findings concerning claim 4 and Universal's accused gun:

44. Claim 4 calls for the "plunger means" to be "connected to the trigger means for unseating the ball means...." In the Universal gun, the function of the plunger is identical, i.e., it unseats the ball means. In order to perform the function of unseating the ball means, the plunger must be moved. The plunger and the ball move together for this purpose. The plunger in turn is directly contacted by and moved to the exact extent that the trigger is moved. Hence, the plunger is connected in use to the trigger. In Universal's gun, the ball means and the plunger are physically attached and always move together when the gun is used; in the '110 patent, the trigger and the plunger are shown as being attached so as to move together, and the ball moves when the gun is used. In both constructions, therefore, all three components--the trigger, the plunger, and the ball--must move together during operation. The fact that the parts are or are not separable when not functioning is immaterial. The claim language "connected to" refers to a function, i.e., a connection "in use" for "unseating" the ball. [Emphasis in original.]

45. In the Universal gun, the function of "urging the plunger means ... [to permit] the ball means to be seated on the valve seat means and the valve to be normally closed ..." is identically present. Universal's springs urge the plunger means and the attached ball means in such a way that the ball means becomes seated on the valve seat means, and the valve means are normally closed.

46. The only difference between the structure defined in plaintiff's claim 4 and the Universal gun is that plaintiff's plunger and ball are separable, while Universal's trigger and plunger are separable. Because the function is the same, it is immaterial whether Universal's plunger literally separates from the ball after the ball is seated. These are structurally equivalent because they function the same way.

47. In the Universal gun, the biasing means (the springs) clearly has the identical claimed function of "normally urging the trigger means into an inoperative position thereby pulling the connected plunger means away from the ball means and permitting the ball means to be normally seated with a fluid-tight seal on the valve seat means."

48. Universal's springs are positioned with one end against the housing and the other end engaging the plunger. The plunger is actuated by and moves with the trigger, so that the "biasing means" engages the "trigger means" and the "housing means" to urge the trigger means to an inoperative position.

49. Likewise, the language "pulling the connected plunger means away from the ball means" is also functional and signifies pulling the plunger means in a direction away from the ball means; the functional language "permitting the ball means to be normally seated with a fluid-tight seal on the valve seat means" is identically met by the Universal gun.

Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., No. 83-C-1952, slip op. at 12-14 (E.D.Wis. August 19, 1988).

With respect to infringement under the doctrine of equivalents, the court additionally found:

51. Even if there is no literal infringement of claim 4, I find that the Universal gun unquestionably infringes claim 4 of the '110 patent under the doctrine of equivalents. Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950).

52. The Universal gun performs substantially the same overall function in substantially the same way to obtain substantially the same result as the claimed invention. The only differences [sic] in the Universal gun and claim 4 of the '110 patent is the form of connection between three parts, i.e., the trigger, the ball, and the plunger, all of which cooperate in use by moving together to operate the gun valves. Claim 4 does not require these parts to be physically connected in the identical manner as is shown in the '110 specification.

Id. at 14.

Universal challenges the district court's finding that its gun infringes claim 4 of the '110 patent under the doctrine of equivalents on three bases: (1) that the evidence does not support the court's finding that Universal's gun operates in substantially the same way as the claimed invention; (2) that, in any event, infringement under the doctrine of equivalents is precluded by prosecution history estoppel; and (3) that its gun practices an invention disclosed in the prior art, i.e., the Johnson patent, U.S. patent 3,330,484.

Infringement under the doctrine of equivalents is an equitable doctrine devised for "situations where there is no literal infringement but [where] liability is nevertheless appropriate to prevent what is in essence a pirating of the patentee's invention." Loctite Corp. v. Ultraseal Ltd., 781...