McGill Inc. v. John Zink Co.
| Decision Date | 27 April 1984 |
| Docket Number | Nos. 83-1198,83-1217,s. 83-1198 |
| Parties | McGILL INCORPORATED, Appellee, v. JOHN ZINK COMPANY, Appellant. McGILL INCORPORATED, Cross-Appellant, v. JOHN ZINK COMPANY, Cross-Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
James D. Morton, Pittsburgh, Pa., argued, for appellant; Walther E. Wyss and Neil M. Rose, Chicago, Ill., on brief.
Jerry J. Dunlap, Oklahoma City, Okl., argued, for appellee; Gary Peterson, Oklahoma City, Okl., of counsel.
Before KASHIWA, Circuit Judge, COWEN, Senior Circuit Judge, and BENNETT, Circuit Judge.
This is a consolidated appeal from a judgment of the United States District Court for the Northern District of Oklahoma (No. 80-C-17-E), entered December 7, 1982, and from a post-trial order entered June 22, 1983. The judgment was in favor of appellee, owner of U.S. Patent No. 4,066,423 (the "423 patent"), and the district court awarded damages of $8,000,000. We affirm in part and reverse in part.
The patented invention relates to a process for recovering hydrocarbon vapors from an air-hydrocarbon mixture. It is a pollution-prevention process for recovering hydrocarbon vapors that have been vented from a storage tank. Appellee's invention is best described by its claim at issue:
2. A process for recovering hydrocarbon from an air-hydrocarbon mixture, comprising:
passing the air-hydrocarbon mixture through a solid adsorbent bed at slightly above atmospheric pressure, which bed is capable of selectively adsorbing the hydrocarbon components from the mixture to leave substantially hydrocarbon free air;
venting the substantially hydrocarbon free air to the atmosphere;
subjecting the hydrocarbon laden solid adsorbent bed to a near vacuum with a liquid ring vacuum pump to desorb the hydrocarbon components therefrom and produce a rich air-hydrocarbon vapor mixture containing a liquid from the liquid ring vacuum pump and a recovered liquid hydrocarbon;
separating the liquid from the liquid ring vacuum pump and the recovered liquid hydrocarbon from the rich air-hydrocarbon vapor mixture;
absorbing substantially all of the hydrocarbon components from the rich air-hydrocarbon vapor mixture with recovered liquid hydrocarbon absorbent in an absorber operating with a sufficiently high L/V ratio to produce a constant composition absorber overhead gas and a recovered liquid hydrocarbon mixed with said absorbent;
recycling the absorber overhead gas from the absorption step to a second solid adsorbent bed, capable of selectively absorbing the hydrocarbon therein to leave a substantially free hydrocarbon recycle air;
venting the substantially free hydrocarbon recycle air to the atmosphere;
separating the liquid ring vacuum pump liquid from the recovered liquid hydrocarbon produced in the separation step;
cooling the liquid ring vacuum pump liquid; and
recycling said liquid ring vacuum pump liquid for use in the liquid ring vacuum pump.
[Emphasis added.]
In operation, as best illustrated by Figure 1 of the patent, a source of light hydrocarbon contaminated air, such as that expelled from a gasoline storage tank, enters the lower portion of adsorbent vessel 12 via line 10. With valves 20 and 38 closed, hydrocarbon contaminated air is introduced at a pressure slightly above atmosphere. As the hydrocarbon contaminated air flows through the vessel, the adsorbent material packed in that vessel adsorbs substantially all of the hydrocarbon. Clean air is then expelled from the top of the vessel through line 22, check valve 24, line 26, and flame arrester 28. Prior to reaching the saturation point of the absorbent material packed in adsorbent vessel 12, valves 18 and 40 are closed and valve 20 is opened to route the hydrocarbon contaminated air from line 10 through line 14 to absorbent vessel 16 for use during the regeneration of the adsorbent material in vessel 12.
To regenerate the adsorbent material of vessel 12, valve 38 is first opened and a vacuum produced by pump 48 in vessel 12 desorbs the hydrocarbon from the adsorbent material to produce a rich air-hydrocarbon mixture comprised of approximately 85 to 90% hydrocarbon by volume. Pump 48 is a liquid ring vacuum pump that is capable of producing a near vacuum in either adsorbent vessel during regeneration. As this rich air-hydrocarbon mixture comes in direct contact with the pumping liquid used by pump 48, cooling of the air-hydrocarbon mixture occurs and a portion of the heavier hydrocarbon components in pump 48 condenses. Effluent from pump 48 is then admitted to separator 52 via line 50. Separator 52 is a vessel operated slightly above atmospheric pressure and designed to separate the vapor and liquid components of the pump effluent and to further separate the immiscible liquid used by the liquid ring pump from any recovered liquid hydrocarbon 1 condensed by the inherent cooling action of the pump.
The liquid components of the pump effluent are separated by a weir 54 located at the bottom portion of separator 52 over which the lighter hydrocarbon liquid may flow. The heavier pumping liquid, typically water, trapped by the weir, is withdrawn from bottom of the separator 52 by line 56 connected between the bottom of the separator and cooler 58. Cooled pump liquid from cooler 58 is recycled for use in pump 48 through line 60 connected between cooler 58 and pump 48. The specification of the patent states that the "[r]ecovered liquid hydrocarbon overflowing the weir 54 is withdrawn from separator 52 through line 62 connected between the lower portion of separator 52 and line 74 for use as a liquid adsorbent [sic]." The vapor phase of the pump effluent is withdrawn from separator 52 through line 64 connected between the upper portion of the separator and the bottom portion of absorber 70.
Absorber 70 is a conventional absorber operating near ambient temperature and slightly above atmospheric pressure. In absorber 70, the vapor from separator 52 comes in direct countercurrent contact with recovered liquid hydrocarbon introduced at the upper portion of the absorber via line 72 and the hydrocarbon components in the vapor are substantially absorbed. Recovered liquid hydrocarbon is withdrawn from the bottom of the absorber and passed to pump 76 via line 74. A portion of the recovered liquid hydrocarbon is discharged from the pump through line 78, and another portion passes from line 78 through line 80 to cooler 82. This latter portion of the recovered liquid hydrocarbon is first cooled and then recycled to the top of absorber 70 via line 72 for use as the absorbent. Vapor from the top of absorber 70, comprising approximately 20 to 30% hydrocarbon by volume, passes through line 84 from the top of the absorber to line 10 for recycling through adsorbent vessels 12 and 16.
When appellee, McGill Incorporated ("McGill"), filed its application, it claimed (original claim 7) the use of a "liquid hydrocarbon absorbent" in absorber 70. 2 A dependent claim (original claim 8) called for:
A process, as recited in claim 7, wherein the liquid hydrocarbon absorbent is recovered liquid hydrocarbon. [Emphasis added.]
A further dependent claim (original claim 9) 3 recited the process of claim 8 plus limitations relating to certain details of the vacuum pump.
In his first Office Action, the examiner rejected all claims; claims 6-8 for obviousness and claims 1-12 under 35 U.S.C. Sec. 112. The obviousness rejection related to the cooling function of pump 48. The exmainer further stated:
Claims 9-12 contain allowable subject matter and would be allowed if claim 9 is written in independent form to include all the limitations now present through dependency and if the 112 rejection is overcome.
McGill amended claim 7 by inserting the phrase "in an absorber operating with a sufficiently high L/V ratio" in the fifth paragraph of claim 7. 4
In his final Office Action, the examiner rejected claims 7 and 8, and objected to claim 9. Claims 7 and 8 were again rejected under 35 U.S.C. Sec. 103 in relation to the cooling function. The examiner again stated:
Claims 9-12 contain allowable subject matter and would be allowed when claim 9 is written in independent form to include all the limitations now present through dependency. Claims 10-12 depend from claim 9.
In response, McGill cancelled claims 7 and 8 and rewrote claim 9 in the independent form as new claim 14 which ultimately was allowed as the claim at issue, claim 2. In addition, McGill remarked:
Claims 7-8 have been cancelled in view of the Examiner's rejections. Claim 9 has been rewritten in independent form as new claim 14 including the limitations which were present through dependency. Claim 10 has been corrected to depend upon the new claim 14. [Emphasis added.]
At the close of all the evidence, appellant, John Zink Company ("Zink"), moved for directed verdict which was denied by the district court. A jury, after answering a set of special interrogatories pursuant to Fed.R.Civ.P. 49(b), returned a general verdict in favor of McGill. The jury found, inter alia, that McGill's invention would not have been obvious at the time of the invention and that the patent disclosed the best mode for practicing the invention. In addition, Zink was found to have infringed McGill's claim 2 and accordingly, McGill was awarded damages in the amount of $8,000,000. The district court entered a judgment in accordance with the jury verdict on December 7, 1982. In its order of June 22, 1983, the district court denied, inter alia, (1) Zink's motion for judgment notwithstanding the verdict ("JNOV") or in the alternative, motion for a new trial, and (2) McGill's motion to amend the judgment to include awards of increased damages, prejudgment interest, and attorneys' fees.
OPINIONIn determining patent infringement, two...
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