LaBounty Mfg., Inc. v. U.S. Intern. Trade Com'n

• Decision Date: 21 February 1989
• Docket Number: Nos. 87-1258,87-1525,s. 87-1258
• Citation: 867 F.2d 1572,9 USPQ2d 1995
• Parties: , 9 U.S.P.Q.2d 1995 LaBOUNTY MANUFACTURING, INC., Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Dudley Shearing Machine Manufacturing Co., Ltd., Intervenor.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1572

867 F.2d 1572

10 ITRD 2500, 9 U.S.P.Q.2d 1995

LaBOUNTY MANUFACTURING, INC., Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Dudley Shearing Machine Manufacturing Co., Ltd., Intervenor.

Nos. 87-1258, 87-1525.

United States Court of Appeals, Federal Circuit.

Feb. 21, 1989.

H. Dale Palmatier and Gerald E. Helget, of Palmatier & Sjoquist, Minneapolis, Minn., argued, for appellant. With them on the brief was R.V. Lupo, of Lupo, Lipman & Lever, Washington, D.C.

Jack M. Simmons, III, of the U.S. Intern. Trade Com'n, Washington, D.C., argued, for appellee. With him on the brief, were Lyn M. Schlitt, Gen. Counsel, James A. Toupin, Asst. Gen. Counsel and Kristian Anderson.

W. Thad Adams, III, Charlotte, N.C., argued, for intervenor. With him on the brief, were Jeffrey J. Davis, of Moore & VanAllen, Charlotte, N.C., and James A. Oliff, of Parkhurst & Oliff, Washington, D.C.

Before NIES, BISSELL and ARCHER, Circuit Judges.

PER CURIAM.

LaBounty Manufacturing, Inc. (LaBounty) appeals from the final decision of the United States International Trade Commission (ITC) in Investigation No. 337-TA-252, "Certain Heavy-Duty Mobile Scrap Shears, " not to review the administrative law judge's (ALJ) order holding, in a summary determination, that LaBounty's U.S. Patent No. 4,519,135 ('135) was not infringed and terminating the investigation. LaBounty also appeals the denial of its motion to set aside the final action of the ITC and the denial of its petition for reconsideration. The noninfringement determination of the ITC is vacated and the case is remanded for further proceedings consistent with this opinion. ^*

OPINION

A. The ITC instituted the Scrap Shears investigation under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. Sec. 1337 (1982 & Supp. IV 1986), based on the assertion that claims 7 and 20 of LaBounty's '135 patent were infringed by the scrap shears of Dudley Shearing Machine Manufacturing Co., Ltd. (Dudley). The patented invention and the accused devices are heavy duty mobile scrap shears used in the demolition and scrap processing industry. The patented device and accused devices are depicted below.

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

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

The shear of the invention described in the '135 patent includes a lower jaw and an upper jaw which are interconnected by a pivot and bearing structure that accommodates swinging of the upper jaw relative to the lower jaw. The upper jaw has a shear blade which has inner and outer edge portions oriented obliquely to each other. The lower jaw has a similar shear blade and a rigid guide blade extending outward from the pivot. The supporting surface of both the inner and outer portion of the guide blade is spaced below the inner and outer portions of the lower shear blade. The specification of the '135 patent states:

The guide blade, which is spaced by the width of the open slot from the cutting edge of the lower shear blade, has its upper edge spaced well below the cutting edge of the lower shear blade. The guide blade will thereby provide a workpiece support for the workpiece after the blades have sheared off a length of the workpiece. The backhoe boom and shear may then be swung to the side and thereby move the shear blade along the workpiece in preparation for cutting off another length of the workpiece. As a result, a long girder or pipe or heavy cable may be cut several times into short lengths without dropping the workpiece and without having to repeatedly pick the workpiece off the ground.

Claims 7 and 20 of the patent describe the spacing between the edge of the lower shear blade and the supporting surface of the guide blade. The question at issue is whether the spacing requirements apply to both the inner and outer portions of the guide blade.

Claim 7 of the patent reads in pertinent part:

the guide blade having a top supporting surface spaced below the cutting edge of the lower shear blade by a distance at least as great as the approximate thickness of the lower shear blade to be normally spaced below the workpiece on the shear blade, the top supporting surface extending along both of the inner and outer edge portions of the lower shear blade....

The pertinent portion of claim 20 reads:

the guide blade having a top supporting surface spaced below the workpiece engaging edge portions of the lower shear blade by a distance approximating the depth of the insert bar on the lower shear blade to be normally spaced below the workpiece on the shear blade, the top supporting surface extending along both of the inner and outer edge portions of the lower shear blade....

The ITC construed these claims as requiring that the spacing between the top supporting surface of the guide blade and the lower shear blade be applied to both the inner and outer portions of the guide blade. Since Dudley's devices did not satisfy this limitation, the ALJ held there was no literal infringement of the '135 patent. Further, on the basis that the claim limitations relating to the spacing were amended during prosecution, the ALJ held that LaBounty is "estopped by the prosecution history of the '135 application from asserting the doctrine of equivalents."

LaBounty contends that, properly interpreted, disputed claims 7 and 20 require only a portion of the supporting surface of the guide blade to comply with the spacing limitations stated in the claims. The ALJ erred, according to LaBounty, in requiring that both the inner and outer portions of the supporting surface of the guide blade meet the distance requirement limitation.

B. Analysis of patent infringement involves two inquiries: the claims must be properly construed to determine their scope, and then it must be determined whether the properly interpreted claims encompass the accused structure. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1054, 5 USPQ2d 1434, 1441 (Fed.Cir.), cert. denied, --- U.S. ----, 109 S.Ct. 75, 102 L.Ed.2d 51 (1988). Claim construction is reviewed as a matter of law. The interpretation of a claim, however, may depend on evidentiary material about which there is a factual dispute, requiring the resolution of factual issues. ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1578, 6 USPQ2d 1557, 1559 (Fed.Cir.1988). "To ascertain the true meaning of disputed claim language, resort should be made to the claims at issue, the specification, and the prosecution history." Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867, 228 USPQ 90, 93 (Fed.Cir.1985); accord Moeller v. Ionetics, Inc., 794 F.2d 653, 656, 229 USPQ 992, 994 (Fed.Cir.1986). "[T]he prosecution history ... limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance." Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293, 296 (Fed.Cir.1985).

Although claims 7 and 20 require that the top supporting surface of the guide blade extend along both the inner and outer portions of the lower shear blade, the language does not clearly indicate whether the requisite spacing must exist all along the guide blade. This question is clarified by the specification of the '135 patent which states:

As is evident in FIGS. 3 and 4, the supporting edge portions 28.1 and 28.2 of the guide blade are spaced below the edge portions 32.1 and 33.1 of the lower shear blade 27 by a distance approximating the thickness of the shear blade 27, or approximating the depth of the inset bars 32, 33 as seen in FIG. 4.

The ALJ noted that at the time claim 7 was amended to provide spacing limitations and claim 20 was added, the above sentence was added to the specification. LaBounty argued that "the added language conforms to the language used in the claims." This change taught, according to the ALJ, that the spacing limitation applied to both supporting surfaces of the guide blade.

During the prosecution of the '135 patent, LaBounty also argued, with reference to claims 7 and 20, that "[t]he guide blade in the present invention has its top supporting surface 28.1, 28.2 spaced below the edge portion of the lower shear blade by a very substantial distance." (Emphasis added.) The top supporting surface of the guide blade, which was to be "spaced below the edge portion," again was intended to consist of both inner 28.1 and outer 28.2 portions of the guide blade. LaBounty also noted that "important aspects of the present invention which are set forth in claim 7" are that "[a]s the shearing action occurs ... the top supporting surface of the guide blade is spaced sufficiently far below the edge portion of the lower shear blade as to prevent any interference between the workpiece and the top surface of the guide blade until the principal amount of cutting of the workpiece has been accomplished." It further stated during prosecution with respect to amended claim 7 that:

the top supporting surface of the guide blade extend[s] along both of the inner and outer edge portions of the lower shear blade and [is] spaced below the cutting edge of the lower shear blade by a distance at least as great as the approximate thickness of the lower shear blade. Claim 7 is clearly allowable.

As to the new...