Marquip v. Fosber America

• Decision Date: 06 December 1999
• Citation: 53 USPQ2d 1015,198 F.3d 1363
• Parties: (Fed. Cir. 1999) MARQUIP, INC., Plaintiff-Appellant, v. FOSBER AMERICA, INC. and FOSBER SPA, Defendants-Appellees, and UNITED CONTAINER MACHINERY, INC., Defendant-Appellee. 99-1025,-1120 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1363

198 F.3d 1363 (Fed. Cir. 1999)

MARQUIP, INC., Plaintiff-Appellant, v. FOSBER AMERICA, INC. and FOSBER SPA, Defendants-Appellees and UNITED CONTAINER MACHINERY, INC., Defendant-Appellee.

99-1025,-1120

United States Court of Appeals for the Federal Circuit

DECIDED: December 6, 1999

Rehearing Denied: January 27, 2000

Appealed from: United States District Court for the Western District of Wisconsin Chief Judge John C. Shabaz

Russell J. Barron, Foley & Lardner, of Milwaukee, Wisconsin, argued for plaintiff-appellant. With him on the brief were David J. Harth and Joan L. Eads, Foley and Lardner, of Madison, Wisconsin. Of counsel were Allen A. Arntsen, Foley & Lardner, of Madison, Wisconsin, and Jeffrey N. Costakos, Foley and Lardner, of Milwaukee, Wisconsin.

David L. De Bruin, Michael, Best & Friedrich, LLP, of Milwaukee, Wisconsin, argued for defendants-appellees, Fosber America, Inc. and Fosber SPA. With him on the brief were Gary A. Ahrens, Toni L. Bonney and J. Christopher Carraway.

John E. Nathan, Fish & Neave, of New York, New York, argued for defendant-appellee, United Container Machinery, Inc. With him on the brief were Daniel M. Gantt and Catherine Nyarady. Of counsel on the brief was John F. Hovel, Kravit, Gass, Hovel & Leitner, S.C., of Milwaukee, Wisconsin.

Before MICHEL, RADER, and GAJARSA, Circuit Judges.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the Western District of Wisconsin ruled that defendants Fosber America, Inc., Fosber SpA, and United Container Machinery, Inc. did not infringe U.S. Patent No. 4,200,276 (the '276 patent) under the doctrine of equivalents. See Marquip, Inc. v. Fosber America, Inc., No. 96-C-726-S (W.D. Wis. Sept. 14, 1998) (order). The district court also denied Marquip, Inc.'s motion for relief under Fed. R. Civ. P. 60(b). See Marquip, Inc. v. Fosber America, Inc., No. 96-C-726-S (W.D. Wis. Dec. 8, 1998) (order). Because the district court properly concluded as a matter of law that the claims at issue cannot cover the accused device under the doctrine of equivalents, this court affirms. This court also affirms the district court's denial of the Rule 60(b) motion because the district court did not abuse its discretion.

I.

The '276 patent claims a method and device for shingling and stacking corrugated paperboard sheets without interrupting the continuous flow of sheets. Because the corrugator runs continuously, it is difficult to remove completed stacks of sheets without interrupting the flow of the corrugator. The invention solves this problem by creating a gap in the flow of sheets. The gap allows sufficient time to discharge a completed stack without interrupting the corrugator. Claims 9 and 13, the only two claims at issue, recite a method and a device, respectively, for automatically changing the speed of the conveyor belts to create a gap:

9. In the method of conveying sheets in succession from a first location along a plurality of separate in-line conveyors to a stacker wherein a vertical stack of a predetermined number of sheets is to be formed, and wherein said plurality of conveyors are traveling at the same speed, the steps of:

(a) shingling said sheets as they pass said location to form a group of shingled sheets for stacking,

(b) increasing the speed of said group of shingled sheets,

(c) and slowing each said separate in-line conveyor individually and seccessively [sic] in a downstream direction in response to passage of the trailing end of said group past the end of each respective separate conveyor to thereby slow sheets traveling upstream of said group of sheets.

13. In a device for conveying sheets in succession from a first location along a plurality of separate in-line conveyors to a stacker wherein a vertical stack of a predetermined number of sheets is to be formed, and wherein said plurality of conveyors are traveling at the same speed, the combination comprising:

(a) means for shingling said sheets as they pass said location to form a group of shingled sheets for stacking,

(b) means for increasing the speed of said group of shingled sheets,

(c) and means for slowing each said separate in-line conveyor individually and successively in a downstream direction in response to passage of the trailing end of said group past the end of each respective separate conveyor to thereby slow sheets traveling upstream of said group of sheets.

'276 patent, col. 7, ll. 22-39; col. 8, ll. 31-47 (emphasis added).

Marquip asserts that versions 1, 2, 3, and 4 of the Fosber device infringe claims 9 and 13 of the '276 patent. Both parties rely on a stipulated description of the process in the accused Fosber devices. Version 2 is the most basic of the Fosber devices. In Version 2, a "shingling nip" continuously shingles or overlaps sheets onto a moving conveyor. The first conveyor moves the shingled sheets to a second conveyor, which moves at the same speed as the first. The Fosber device has an interrupt mechanism between the first and second conveyors. This mechanism grasps and holds some sheets to create a gap in the flow of sheets. Specifically, when the trailing end of the last sheet in a predetermined number of sheets (the preceding group) moves past the pinch point of the interrupt mechanism, the mechanism grabs and stops the next sheet. This action creates a gap and starts the next group of a predetermined number of sheets (the succeeding group).

At about the same time the interrupter grasps the first sheet in the next group, two other events also occur: (1) the second conveyor and all other conveyors downstream of the interrupt mechanism speed up, carrying the preceding group toward a stacker at the end of the conveyors, and (2) the first conveyor slows down. When the preceding group leaves the third conveyor, the second conveyor slows again to the pace of the first conveyor and the interrupt mechanism releases the succeeding group. Similarly, the third conveyor slows when the preceding group passes the fourth conveyor. The fourth conveyor slows when the preceding group is on a downstacker at the end of the conveyors. The downstacker discharges the preceding group from the stacker and makes room for a new stack.

Fosber's Version 1 differs from Version 2 only in the location of the interrupt mechanism - namely midway along the second conveyor. When the interrupt mechanism closes, the interrupt mechanism itself moves at the same speed as the first conveyor. In Version 1, the second conveyor operates exactly the same as in Version 2, namely speeding up to widen the gap. Version 3 is the same as Version 1, except that two conveyors replace the first conveyor, but they always run at the same speed. Version 4 is the same as Version 2 except that, again, two conveyors replace the first conveyor and always run at the same speed. For purposes of this opinion, it suffices to discuss Version 2 as representative of all Fosber devices, which contain an interrupt mechanism and conveyors with varying speeds.

At the initial trial, the district court considered two of Marquip's patents, the '276 patent and U.S. Patent No. 4,273,325. The district court granted summary judgment that Fosber did not infringe the two patents either literally or under the doctrine of equivalents. See Marquip, Inc. v. Fosber America, Inc., No. 96-C-726-S (W.D. Wis. June 10, 1997) (order) (Marquip I). When Marquip appealed Marquip I, this court affirmed the district court's grant of summary judgment that Fosber did not literally infringe the '276 patent but vacated the summary judgment of non-infringement under the doctrine of equivalents. See Marquip, Inc. v. Fosber America, Inc., No. 97-1441, 1998 U.S. App. LEXIS 27136 (Fed. Cir. 1998) (Marquip II). As part of the ruling, this court construed the limitation "group" as an accumulation of a predetermined number of sheets. On remand, the district court again granted summary judgment of non-infringement under the doctrine of equivalents. See Marquip, Inc. v. Fosber America, Inc., No. 96-C-726-S (W.D. Wis. Sept. 14, 1998) (order) (Marquip III).

The critical issue in Marquip III was whether element (c) of claims 9 and 13 covered the Fosber device. The district court concluded that the Fosber device performs the recited function of slowing the conveyors and obtains the result of decreasing the speed of the sheets traveling upstream. See id. at 10. The district court determined, however, that the Fosber device performs the function "in a fundamentally different way." Id. In particular, the district court held that "[t]he presence of a functional interrupt mechanism [in the Fosber device], not the minimal change in timing required by its presence, is that which makes defendants' machines operate in a substantially different way" from the claimed inventions. Id. at 13. Marquip appeals.

In a separate appeal, Marquip appeals the district court's refusal to set aside final judgment under Fed. R. Civ. P. 60(b). See Marquip, Inc. v. Fosber America Inc., No. 96-C-726-S (W.D. Wis. Dec. 8, 1998) (order) (Marquip IV). Marquip based its motion on newly discovered evidence about the Fosber device, allegedly withheld by Fosber during discovery. This court consolidates the two appeals and addresses both the infringement and Rule 60(b) issues in this opinion.

II.

This court reviews a district court's grant of summary judgment without deference. See Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed. Cir. 1994). Summary judgment requires the moving party to show both the absence of genuine issues of material fact and entitlement to judgment as a matter of law. See Fed. R. Civ. P. 56(c). In reviewing the district court's summary judgment, this court draws all reasonable inferences from the evidence in favor of the non-movant, Marquip. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).

To infringe under the doctrine of equivalents, the accused product must contain...