Jackson Jordan, Inc. v. Plasser American Corp.

• Decision Date: 23 April 1987
• Docket Number: No. 86-1118,86-1118
• Citation: 824 F.2d 977
• Parties: Unpublished disposition NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. JACKSON JORDAN, INC., Appellant, v. PLASSER AMERICAN CORPORATION, Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 977

824 F.2d 977

Unpublished disposition

NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

JACKSON JORDAN, INC., Appellant, v. PLASSER AMERICAN CORPORATION, Appellee.

Appeal No. 86-1118.

United States Court of Appeals, Federal Circuit.

April 23, 1987.

Before RICH, SMITH and NIES, Circuit Judges.

NIES, Circuit Judge.

DECISION

Jackson Jordan, Inc. seeks review of the Order of the United States District Court for the Eastern District of Virginia, Norfolk Division, Civil Action No. 82-825-N, holding claims 1 and 2 of U.S. Patent No. 3,494,297 ('297), assigned to Plasser American Corp., valid, not unenforceable, and infringed by Jackson. We affirm.

DISCUSSION

The '297 patent relates to a combined track lifting and tamping lining machine for maintaining the orientation of railroad tracks. Jackson filed a declaratory judgment action against Plasser, alleging invalidity and noninfringement of the '297 patent. That action was consolidated with a second suit in which Jackson alleged that Plasser had violated the antitrust laws by fraudulently obtaining the '297 patent from the U.S. Patent and Trademark Office (PTO). Plasser counterclaimed alleging that various Jackson machines infringed its patent. The district court held claims 1 and 2 of the patent invalid under 35 U.S.C. Sec. 102(b) based upon the proposition that Plasser was collaterally estopped from arguing for a claim interpretation different from that asserted in a previous litigation, Plasser American Corp. v. Canron, Inc., 546 F.Supp. 589, 217 USPQ 823 (D.S.C.1980). Jackson Jordan, Inc. v. Plasser Am. Corp., 219 USPQ 922, 931 (E.D.Va.1983). The court dismissed Jackson's antitrust claim, holding that Jackson had failed to demonstrate that Plasser engaged in fraud before the PTO during the prosecution of the '297 patent. 219 USPQ at 936. This court reversed the holding as to collateral estoppel, vacated the holding of invalidity, and remanded the case for further action, but affirmed the judgment in all other respects. Jackson Jordan, Inc. v. Plasser Am. Corp., 747 F.2d 1567, 224 USPQ 1 (Fed.Cir.1984).

On remand the district court determined that: (1) claims 1 and 2 of the '297 patent are not anticipated under 35 U.S.C. Sec. 102 and (2) would not have been obvious under 35 U.S.C. Sec. 103; (3) Plasser did not fail to comply with the best mode requirement of 35 U.S.C. Sec. 112, (4) Plasser did not engage in inequitable conduct during the prosecution of its patent; and (5) various Jackson machines infringe claims 1 and 2.

As a preliminary matter, we feel compelled to remind Jackson of the requisite burden of proof and standard of review in this case, which it apparently has ignored. Every patent claim is presumed to be valid. 35 U.S.C. Sec. 282 (1982); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360, 220 USPQ 763, 771 (Fed.Cir.), cert. denied, 105 S.Ct. 95 (1984). The party attacking validity can overcome that presumption only by presenting "clear and convincing" evidence establishing facts which lead to a finding or conclusion of invalidity. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 387 (Fed.Cir.), cert. dismissed, 468 U.S. 1228 (1984); American Hoist, 725 F.2d at 1360, 220 USPQ at 771. To prevail on appeal, Jackson must convince this court that the district court's fact findings are clearly erroneous, see Fed.R.Civ.P. 52(a), or that the court's legal conclusions are incorrect as a matter of law, or both. See Atlas Powder Co. v. E.I. Dupont de Nemours & Co., 750 F.2d 1569, 1573, 224 USPQ 409, 411 (Fed.Cir.1984). To satisfy the "clearly erroneous" standard, Jackson must leave this court with a definite and firm conviction that the district court made a mistake. See United States v. United States Gypsum Co., 333 U.S. 364, 395, 76 USPQ 430, 443 (1948); SSIH Equip. S.A. v. United States Int'l Trade Comm'n, 718 F.2d 365, 381, 218 USPQ 678, 692 (Fed.Cir.1983).

We further find it necessary at this point to correct a basic misunderstanding underlying Jackson's attempt to improperly restrict the scope of the claims to Figure 11 of the '297 patent. Throughout its briefs and at oral argument, Jackson has contended that Figure 11 is "the invention" and is determinative of both the validity and infringement issues in this case. It is a truism that because the district court interpreted the scope of the claims as encompassing the embodiment of Figure 11, any prior art rendering that scope of the claims anticipated or obvious will invalidate the claims. However, that does not mean Figure 11 is the "invention." The claims "must be construed in the identical way for both infringement and validity." Kimberly-Clark Corp. v. Johnson & Johnson Co., 745 F.2d 1437, 1449, 223 USPQ 603, 610 (Fed.Cir.1984). Figure 11 is but one of several embodiments disclosed in the '297 patent and covered by the instant claims in which the lifting and lining means are placed in various positions along the frame of the machine. See Jackson Jordan, 747 F.2d at 1569, 224 USPQ at 2. All devices which fall within the scope of the claims infringe the claims, not just those identical to the species of Figure 11.

Turning now to Jackson's first argument, it asserts that Plasser's own U.S. Patent No. 3,196,803 ('803) ¹ anticipates claim 1 under 35 U.S.C. Sec. 102. Anticipation requires, in a single prior art disclosure, the presence of all the elements of a claimed invention. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264, 1270 (Fed.Cir.1984); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983), cert. denied, 465 U.S. 1026 (1984). Claim 1 of the '297 patent sets forth a combined lifting, tamping, and lining machine. The district court found that the '803 patent discloses essentially a separate machine for lining which followed well behind the rear truck. The court further found that the '803 machine was precisely the type of machine that met with disfavor in the 1960's and spurred Plasser and others to develop a combined machine. Based on those findings, the court found that the '803 device did not anticipate claim 1. Jackson merely disputes those findings and draws our attention to the "striking similarity" between Figure 11 of the '297 patent, which, we agree, falls within the scope of claim 1, and the structure disclosed in the '803 patent. Per Jackson, "[t]he '803 patent ... clearly discloses a combined lifting, tamping and lining machine with the lining mechanism between axles of the machine." However, such arguments of counsel, which fail to demonstrate clear error in the district court's findings, are inadequate to sustain Jackson's burden on appeal. ²

Jackson asserts that claims 1 and 2 of the '297 patent would have been obvious under 35 U.S.C. Sec. 103. In support of its argument Jackson repeatedly states as "facts" disputed matters specifically rejected by the trial court without even acknowledging that a contrary finding was made. We decline Jackson's invitation to review this case de novo. Absent a showing that the facts underlying the court's obviousness determination were clearly erroneous, Rule 52(a) mandates that they be accepted. On the legal issue we are unpersuaded by Jackson's mere conclusory assertion that one of ordinary skill in the art would have found it obvious to combine an AL-202-03 liner and a conventional tamper. The court disagreed in view of the inventor's awareness of such machines and his unsuccessful attempts to develop a combined machine before developing the machine embodied in the '297 patent. The court did not err in considering his unsuccessful efforts as strong evidence that the combination would not have been obvious to one skilled in the art. Moreover, although the court clearly recognized that the invention...