Marsh-McBirney, Inc. v. Montedoro-Whitney Corp.

• Decision Date: 07 August 1989
• Docket Number: 88-1344,MARSH-M,88-1450 and 88-1598,Nos. 88-1318,88-1421,MONTEDORO-WHITNEY,s. 88-1318
• Citation: 11 USPQ2d 1794,882 F.2d 498
• Parties: cBIRNEY, INC., Plaintiff-Appellee, v.CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 498

882 F.2d 498

11 U.S.P.Q.2d 1794

MARSH-McBIRNEY, INC., Plaintiff-Appellee, v. MONTEDORO-WHITNEY CORPORATION, Defendant-Appellant.

Nos. 88-1318, 88-1344, 88-1421, 88-1450 and 88-1598.

United States Court of Appeals Federal Circuit.

Aug. 7, 1989.

Suggestion for Rehearing In Banc Declined Sept. 25, 1989.

J. Alan Galbraith, Williams & Connolly, Washington, D.C., argued for plaintiff-appellee.

Thomas J. Scott, Pennie & Edmonds, Washington, D.C., argued for defendant-appellant. With him on the brief was Joseph V. Colaianni. Also on the brief was Frank Frisenda, Jr., Frisenda, Morris & Nicholson, Los Angeles, Cal., of counsel.

Before FRIEDMAN, MAYER and MICHEL, Circuit Judges.

OPINION

MAYER, Circuit Judge.

Marsh-McBirney, Inc. sued Montedoro-Whitney Corporation for infringement of its U.S. Patent No. 4,083,246, for a flow rate meter. The United States District Court for the Central District of California, No. 86-3022, found that Montedoro-Whitney devices with electromagnetic probes were infringing but devices equipped with acoustic probes were not. The court issued a permanent injunction against Montedoro-Whitney prohibiting production of the infringing devices and awarded Marsh-McBirney $1.8 million in damages. We dismiss Montedoro-Whitney's appeals of the infringement findings, Nos. 88-1318 and 88-1344, and affirm the judgment in No. 88-1421 on damages and the injunction; we reverse the judgment of noninfringement by devices with acoustic probes in No. 88-1450, and remand for determination of damages and injunctive relief against the devices with acoustic probes.

Background

The '246 patent discloses a flow rate meter for measuring the flow of fluid in a partially filled conduit, channel or similar passage. Its most pertinent application is measuring the flow of water in sewers. Specifically, claim 1 of the patent reads:

1. Apparatus for measuring the flow of fluid in a conduit, channel or the like, comprising

(a) means mounted in the conduit for producing an average fluid velocity signal, including

(1) a probe;

(2) means for mounting said probe between the low water mark and the bottom of said conduit, whereby said probe produces a local velocity signal; and

(3) means for modifying said local velocity signal to produce said average velocity signal;

(b) means for producing a fluid height signal corresponding to the height of the fluid in the conduit;

(c) transfer function means for converting the fluid height signal to a fluid area signal;

(d) means for multiplying the average fluid velocity signal with the fluid area signal to produce a fluid flow rate signal; and

(e) indicator means connected with the output of said multiplier means for producing an indication of the magnitude of said fluid flow rate signal.

Claim 2 claims the "[a]pparatus as defined in claim 1, wherein said probe comprises an electromagnetic probe of velocity sensing means."

Before the '246 patent, most of the art focused on the "magic point," where the average velocity could be determined directly. If the fluid level fell below the magic point, the flow meter would not work. Devices above the low water mark were also susceptible to clogging in sewer environments. Other prior art devices avoided the measurement of average velocity altogether. The '246 patent covered the first invention to disclose a means of mounting a probe at the low water mark to measure local velocity and then modifying it to achieve an average velocity signal.

The devices of Montedoro-Whitney that are the subjects of this suit are the WDFM-7 and WDFM-8 models. The WDFM-7 is a stand-alone flow meter which measures certain parameters in a conduit or channel and provides the measurements to a microprocessor programmed to make flow calculations. The WDFM-8 is a data collection device which records the measurement data that is provided to a general purpose computer capable of doing flow calculations.

In addition to meters with electromagnetic probes like Marsh-McBirney's, Montedoro-Whitney also produces flow meters equipped with bi-directional acoustic probes. Both types of probes are mounted at the low water mark and determine local velocity.

In finding infringement, the district court first rejected Marsh-McBirney's claim of literal infringement because element (a)(3) of claim 1 requires the production of an average velocity signal and neither WDFM-7 nor WDFM-8 devices separately produce an average velocity signal. Still, the district court found that the Montedoro-Whitney devices merely resequenced the fluid flow computations, and while average velocity was not expressly computed, it was still there. Accordingly, there was infringement under the doctrine of equivalents.

Turning to the acoustic probes, however, the court found that they had several nondispositive advantages over the electromagnetic probes, including greater accuracy and resistance to fouling from grease and slime accumulation. It said that Montedoro-Whitney developed the first successful bi-directional acoustic probe, and that, in applying for the patent in 1976, Marsh chose the electromagnetic probe over the then available acoustic probes. The court therefore concluded that acoustic probes were not "probes" as recited in claim 1 and were not infringing.

On damages, the district court held that Montedoro-Whitney and Marsh-McBirney were the only competitors in a domestic niche of the market because theirs were the only devices to measure velocity at the low water mark and consequently were far more accurate than devices of other competitors. Therefore it computed damages by a "lost profits" analysis.

In this court, the parties present a panoply of procedural and substantive matters. Each side contends the other's appeal on liability is untimely. Montedoro-Whitney appeals the findings of infringement by devices with electromagnetic probes, the computation of damages, and the propriety of the injunction. Marsh-McBirney cross-appeals on the finding of noninfringement by Montedoro-Whitney's devices with acoustic probes.

On March 22, 1988, Montedoro-Whitney appealed ostensibly under 28 U.S.C. Sec. 1292(c)(2) (1982) from the district court's March 10, 11 and 16 oral findings of fact and conclusions of law addressed to infringement by Montedoro-Whitney's WDFM-7 and WDFM-8 sensors equipped with electromagnetic probes. Montedoro-Whitney filed a second appeal on April 7 appealing further oral findings and conclusions announced on March 24, 29 and 30. The parties focus their arguments on the March 16 findings; for the sake of clarity, we do, too. But our analysis applies equally to the other findings addressed in the March 22 and April 7 appeals, Nos. 88-1318 and 88-1344. Montedoro-Whitney also filed another appeal limited to damages, No. 88-1421, on May 18, 1988, after the court entered final judgment on April 25. Marsh-McBirney did not cross appeal the finding of noninfringement of devices with acoustic probes until May 24, 1988, No. 88-1450, after the final judgment.

In separate motions and in their appeals, the parties strive mightily to exclude each other's appeals for untimeliness. Montedoro-Whitney argues that section 1292(c)(2) permits it to appeal from a judgment or order of infringement that is final except for an accounting, and the March 16, 1988, oral opinion was such an order. Because Marsh-McBirney did not file a cross-appeal within fourteen days of Montedoro-Whitney's appeal or within thirty days of the March 16 findings, Montedoro-Whitney maintains that the May 24 cross-appeal is untimely. Marsh-McBirney counters that the March 16 finding was not appealable under section 1292(c)(2), and because Montedoro-Whitney limited its appeal of May 18, 1988, to damages, its earlier premature appeals on liability are now lost. We agree with Marsh-McBirney and that leaves only Montedoro-Whitney's appeal of damages and the injunction, and Marsh-McBirney's cross-appeal of noninfringement by the acoustic probes before us.

Discussion

A. Timeliness of the Appeals

We look first to our jurisdiction. Times for appeal are jurisdictional and cannot be waived. Browder v. Director, Ill. Dep't of Corrections, 434 U.S. 257, 264, 98 S.Ct. 556, 560, 54 L.Ed.2d 521 (1978); see also Tylo Suana, S.A. v. Amerec Corp., 826 F.2d 7, 9, 3 USPQ2d 1792, 1793 (Fed.Cir.1987).

Section 1292(c)(2) provides: "The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction ... of an appeal from a judgment in a civil action for patent infringement which would otherwise be appealable to the United States Court of Appeals for the Federal Circuit and is final except for an accounting." In determining whether a judgment is "final except for an accounting," the key is the "binding effect in disposing of the [patent infringement] question." McCullough v. Kammerer Corp., 331 U.S. 96, 99, 67 S.Ct. 1165, 1167, 91 L.Ed. 1365, 73 USPQ 136, 138 (1947). Section 1292(c)(2) still requires a judgment, not just the announcement of findings of fact and conclusions of law. Cf. H.A. Jones Co. v. KSM Fastening Sys., 745 F.2d 630, 631, 223 USPQ 689, 689 (Fed.Cir.1984). Rule 54(a) of the Federal Rules of Civil Procedure describes a judgment as "a decree or any order from which an appeal lies."

A judgment is not appealable within the meaning of Federal Rule of Appellate Procedure 4(a)(6) unless it is entered in compliance with Rules 58 and 79(a) of the Rules of Civil Procedure. Rule 58 requires that "[e]very judgment shall be set forth on a separate document." Absent waiver, there is no judgment without a separate document. United States v. Indrelunas, 411 U.S. 216, 220, 93 S.Ct. 1562, 1564, 36 L.Ed.2d 202 (1973); Bandag, Inc. v. Al Bolser Tire Stores, Inc., 719 F.2d 392, 393, 219 USPQ 1049 (Fed.Cir.1983). The purpose of this rule is to save litigants from losing the opportunity to appeal because they failed to recognize which docket entry constituted the entry of a final judgment. Indrelunas, 411 U.S. at...