Jackson Jordan, Inc. v. Plasser American Corp.

Decision Date09 November 1984
Docket Number83-1386,BAHNBAUMASCHINEN-INDUSTRIEGESELLSCHAFT,Nos. 83-1374,s. 83-1374
Citation224 USPQ 1,747 F.2d 1567
PartiesJACKSON JORDAN, INC., Appellee, v. PLASSER AMERICAN CORPORATION, Appellant. JACKSON JORDAN, INC., Appellant, v. FRANZ PLASSERm.b.H. and Plasser American Corporation, Appellees.
CourtU.S. Court of Appeals — Federal Circuit

Alfred H. Plyer, Jr., Chicago, Ill., for appellants.

Phillip H. Mayer, Chicago, Ill., for appellee; Stephen G. Rudisill and H. Michael Hartmann, Chicago, Ill., on brief.

Samuel J. Webster, Norfolk, Va., of counsel.

Before DAVIS, SMITH and NIES, Circuit Judges.

NIES, Circuit Judge.

These appeals are from the judgment in a consolidated Civil Action No. 82-825-N Jackson Jordan, Inc. v. Plasser American Corporation, before the U.S. District Court for the Eastern District of Virginia, Norfolk Division, reported at 219 USPQ 922 (1983). We reverse the holding that Patent No. 3,494,297 is invalid under 35 U.S.C. Sec. 102(b). This holding depended in part on giving a collateral estoppel effect, with which we disagree, to the decision in Plasser American Corporation v. Canron, Inc., 546 F.Supp. 589, 217 USPQ 823 (D.S.C.1980) on the scope of the claims. Accordingly, we vacate the judgment of invalidity and remand for further proceedings. In all other respects the judgment is affirmed.

Background

In Appeal No. 83-1374, Plasser challenges the correctness of the district court's application of the doctrine of collateral estoppel and the effect given to a stipulation; Jackson Jordan asserts error in the failure of the court to find (1) estoppel due to Plasser's delay in bringing suit, and (2) fraud (i.e., inequitable conduct) in connection with procurement of the '297 patent, and, in Appeal No. 83-1386, the cross-appeal, asserts error in dismissing its anti-trust claim also based on the alleged fraudulent procurement.

I.

The invention of the '297 patent is directed to a mobile track grading, lining, and tamping machine used in the maintenance of railroad tracks. The development of equipment in this field is fully described in the district court opinion, as well as in the Canron decision, and will not be repeated. Suffice here to know that in the mid-1960's it was conventional to have one machine (a tamper) first perform the vertical operation, that is the lifting of the rails and the tamping of ballast under the rails. This was followed by a separate lining machine, which correctly positioned the rails laterally. The difficulty in this sequential procedure was that the lining machine tended to spoil the vertical positioning that the tamper had just achieved. The objective in the industry, thus, was to develop a single machine which could perform both the lifting and lining operations. Several machines were developed (by different companies) which placed the lining means on the front or rear end of the tamper with ballast shoes or anchors outside the rails to take the force of the thrust necessary for lateral alignment. Such machines encountered problems because the ballast on the shoulder of the road bed was generally loose and the ballast shoes would slip from the lateral force. The invention of Plasser's '297 patent was directed to this specific problem. By suspending the lining means on the frame (sometimes referred to herein as the bridge) between the axles of a tamper, the frame of the tamper took the force from lining and transferred the force to the rails. Ballast anchors for alignment were thereby eliminated.

In the '297 patent, a number of embodiments are described wherein the lining means and the lifting means are placed in various positions along the frame of a combined lifting, lining and tamping machine. In one embodiment, Figure 11, lifting means, shown to include a ballast jack, are mounted on the frame of the tamper which extends in front of the front axle. Lining means (which do not utilize a ballast anchor) are mounted between the axles.

Figure 11, which is the center of the present controversy, appears as follows:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

This embodiment of the invention is described in the specification as follows:

A track lifting means 209 is also schematically shown and may take any suitable or conventional form, this means being positioned in accordance with the invention forwardly of the front axle 203. The illustrated embodiment [Figs. 11-14] is a hydraulic jack including cylinder 210 vertically movably supporting a shoe 212 engaging the surface 211 of the ballast or road bed, magnetic or mechanical rail clamping means cooperating with the shoe to lift the track.

The operation of Figure 11 is further described as follows:

When the machine of FIG. 11 reaches a track section to be resurfaced, it is stopped and the track lifting means 209 forwardly of the front axle is operated to level the track to the desired extent. The positioning of the track lifting means in relation to the front axle causes the latter to be lifted slightly with the track whereon it rests adjacent the lifting means. The leveled track section between the axles of the machine is now fixed at the desired grade by tamping and any necessary latreal [sic] alignment is effectuated by aligning means 107 [sic; 207] positioned behind the tamping means. The lateral alignment proceeds at a point where the track remains substantially in contact with the ballast so that no errors in the previously fixed grade are caused by the alignment, the full weight of the heavy machine resting on axles 202 and 203 to aid in downward pressure of the track against the tamped ballast. As the track is thus intermittently and progressively resurfaced section by section, the laterally operating ballast compacting means is operated to compact the ballast on each side of the track.

II.

The issue of collateral estoppel involves the interpretation of Claims 1 and 2 found by the district court here to have been given by the Canron court in the prior litigation.

Claim 1 of the '297 patent, in issue in this appeal and in Canron, is the following:

1. An improved mobile track maintenance machine arranged for movement on the track in the direction of track elongation and comprising a carriage frame having two ends, a front truck and a rear truck respectively supporting each carriage frame end for movement on the track, track tamping means and track grading means mounted on the carriage frame, the track grading means being constructed to lift the track and the tamping means being arranged to fix the track in the lifted position by tamping ballast under spaced ties supporting the track, and means for laterally aligning the track mounted on the carriage frame intermediate the trucks.

Dependent Claim 2, also in issue, reads:

2. The mobile track maintenance machine of claim 1, further comprising a reference line for laterally aligning the track in relation thereto, another reference line for grading the track in relation thereto, and a front bogie movable on the track and supporting one of the ends of both reference lines.

Also pertinent to our analysis is dependent claim 3:

3. The mobile track maintenance machine of claim 1, comprising pairs of said track aligning means, and further comprising pairs of said tamping means mounted on the frame forwardly of respective ones of said track aligning means in the direction of said trucks, and pairs of track lifting means mounted on the machine forwardly of the trucks, each of said pairs of means being symmetrically arranged on the machine in respect of a midpoint of the machine in the direction of the track elongation.

The district court held that the Canron court found the claims valid because one skilled in the art would know that "the claims require lifting between the axles as in 'bridge-type machines' " and "preclude the use of ballast jacks." (Emphasis added.) Further, the district court found that these limitations were necessary to the Canron court's decision on non-obviousness.

Using this narrow interpretation, the district court then held Claims 1 and 2 invalid because of a pre-trial stipulation by the parties. The parties had stipulated that a Plasser machine 06-32L, which was displayed at a Chicago trade show in March 1965, falls within the scope of the Claim 1 of the '297 patent. Thus, to avoid the statutory bar of 35 U.S.C. Sec. 102(b), Plasser must have an effective filing date for its U.S. patent application within a year of that date. 1 The district court rejected Plasser's entitlement to an October 1965 date through an earlier filed application '288 because of lack of support therein for Claim 1 as narrowly interpreted. The Figure 11 embodiment was carried forward from the earlier copending '288 application. 2 Claim 1 also had its origin in the '288 application but not in precisely the same terms. The limitation "means for laterally aligning ... intermediate the trucks" is, however, the same.

Plasser urges that Claim 1, in haec verba and in light of the specification, requires only lining means intermediate the axles or trucks and it is only in connection with lining that ballast anchors may not be used. Thus, under Plasser's interpretation, support for Claim 1 is found in Figure 11, even though that embodiment of the invention employs ballast jacks for lifting, and lifting means are in front of the front axle. The limitation of lining means intermediate the trucks is met by Figure 11.

According to Plasser, Claim 1 also covers the 06-32L embodiment, illustrated below, which has lifting and lining means in front of the front axle. 3 This embodiment requires a boom or beam which extends in front of the front axle and rests on a third truck. The boom transfers the reaction of lining to the rails and, thus, no ballast anchors are needed for lining. Plasser and Jackson Jordan agree that the lining means of 06-32L is "intermediate the trucks" as called for by the claim.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA...

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