Mendenhall v. Astec Industries, Inc.

• Citation: 13 USPQ2d 1956,887 F.2d 1094
• Decision Date: 01 September 1989
• Docket Number: Nos. 89-1188,89-1245 and 89-1351,s. 89-1188
• Parties: Unpublished Disposition NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. Robert L. MENDENHALL and CMI Corporation, Plaintiffs/Cross-Appellants, v. ASTEC INDUSTRIES, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1094

887 F.2d 1094

13 U.S.P.Q.2d 1956

Unpublished Disposition

NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

Robert L. MENDENHALL and CMI Corporation, Plaintiffs/Cross-Appellants, v. ASTEC INDUSTRIES, INC., Defendant-Appellant.

Nos. 89-1188, 89-1245 and 89-1351.

United States Court of Appeals, Federal Circuit.

Sept. 1, 1989.

Rehearing Denied Sept. 30, 1989.

Suggestion for Rehearing In Banc Declined Oct. 16, 1989.

Before FRIEDMAN, NIES and MAYER, Circuit Judges.

PER CURIAM.

DECISION

The judgment of the United States District Court for the Eastern District of Tennessee, No. Civ.-1-86-229 (October 31, 1988), finding Astec Industries, Inc. liable for infringement of U.S. Patents Re. 31,904 and Re. 31,905, is affirmed.

OPINION

Appeal. Intent to deceive is an essential element of an inequitable conduct claim. Kingsdown Medical Consultants Ltd. v. Hollister Inc., 863 F.2d 867, 876, 9 USPQ2d 1384, 1392 (Fed.Cir.1988). After seeing and hearing Mendenhall and his patent attorney testify, the district court found that neither intended to deceive the PTO by not disclosing the Maplewood process because neither had sufficient knowledge of it. Astec has not shown that the district court was wrong in this finding. Therefore its conclusion that there was no inequitable conduct was well within its discretion.

Astec also maintains, however, that the I-15 use should have been disclosed during the prosecution of the '905 patent's parent, U.S. Patent No. 4,177,080 ('080 patent). The district court found that the I-15 use's "level of materiality, if any, to the '080 application is not high," and the parties argue over whether this means material or immaterial. We think it is irrelevant because the district court again credited the testimony of Mendenhall's patent attorney that the use was not disclosed to the PTO because he felt it was not pertinent to the subject matter claimed by the patent. The court therefore held that Astec failed to prove by clear and convincing evidence that nondisclosure of it "was the result of either bad faith or gross negligence by Mendenhall or his attorney." We cannot fault this conclusion.

The I-15 use was significantly different from the '080 patent. It involved the use of 100% recycle material, rather than the combination of recycle and virgin material, and the recycle material was introduced into the hot zone of the drum and not the cooler zone as required by the '080 patent. Thus, the court could permissibly reject the defense that the nondisclosure of the I-15 use was inequitable conduct.

The district court exhaustively examined and discussed the five references Astec claims anticipated the '904...