Modine Mfg. Co. v. U.S. Intern. Trade Com'n, 93-1513

• Decision Date: 05 February 1996
• Docket Number: No. 93-1513,93-1513
• Citation: 75 F.3d 1545,37 USPQ2d 1609
• Parties: MODINE MANUFACTURING COMPANY, Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Showa Aluminum Corporation and Showa Aluminum Corporation of America, and Mitsubishi Motors Corporation and Mitsubishi Motors Sales of America, and Mitsubishi Heavy Industries, Ltd. and Mitsubishi Heavy Industries America, Inc., Intervenors.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1545

75 F.3d 1545

37 U.S.P.Q.2d 1609

MODINE MANUFACTURING COMPANY, Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Showa Aluminum Corporation and Showa Aluminum Corporation of America,

and

Mitsubishi Motors Corporation and Mitsubishi Motors Sales of America,

and

Mitsubishi Heavy Industries, Ltd. and Mitsubishi Heavy

Industries America, Inc., Intervenors.

No. 93-1513.

United States Court of Appeals, Federal Circuit.

Feb. 5, 1996.

Richard J. Hoskins, Schiff, Hardin & Waite, Chicago, Illinois, argued for appellant. With him on the brief were Thomas B. Quinn, Stuart I. Graff, Patricia J. Thompson and Randall M. Whitmeyer. Also on the brief were V. James Adduci, II, Charles F. Schill and Peter B. Martine, Adduci, Mastriani, Schaumberg & Schill, Washington, DC.

Matthew T. Bailey, Office of General Counsel, U.S. International Trade Commission, Washington, DC, argued for appellee. With him on the brief were Lyn M. Schlitt, General Counsel and James A. Toupin, Assistant General Counsel. John S. Kiernan, Debevoise & Plimpton, New York City, argued for intervenor, Showa Aluminum Corporation of America. With him on the brief were James E. Armstrong, III, Ronald F. Naughton and Joseph J. Zito, Armstrong, Westerman, Hattori, McLeland & Naughton, Washington, DC.

Robert E. Montgomery, Jr. and Robert P. Parker, Paul, Weiss, Rifkind, Wharton & Garrison, Washington, DC, were on the brief for intervenor, Mitsubishi Heavy Industries, Ltd. and Mitsubishi Heavy Industries America, Inc.

Terrell C. Birch, Bernard L. Sweeney, Charles Gorenstein and Terry L. Clark, Birch, Stewart, Kolasch & Birch, Falls Church, Virginia, were on the brief for Mitsubishi Motors Corporation and Mitsubishi Motor Sales of America. Of counsel was Robert J. Kenny.

Before NEWMAN, MAYER, and CLEVENGER, Circuit Judges.

Opinion for the court filed by Circuit Judge NEWMAN. Circuit Judge MAYER dissents without opinion.

PAULINE NEWMAN, Circuit Judge.

Modine Manufacturing Co. appeals the decision of the United States International Trade Commission, ¹ holding that section 337 of the Tariff Act, 19 U.S.C. § 1337, was not violated by the importation of certain automotive condensers. The respondents before the Commission, who participate as intervenors in this appeal, manufacture in Japan and import, sell, and use the accused condensers in the United States: Showa Aluminum Corporation and Showa Aluminum Corporation of America; Mitsubishi Motors Corporation and Mitsubishi Motor Sales of America; and Mitsubishi Heavy Industries, Ltd. and Mitsubishi Heavy Industries America, Inc.

The issues on appeal are the validity and enforceability of Modine's United States Patent No. 4,998,580 (the '580 patent) and infringement by several models of condensers manufactured by Showa and imported, sold, and used by the intervenors. Modine is the appellant on the infringement issues, and the intervenors appeal the issues of validity and enforceability. We vacate the finding of noninfringement and remand for further proceedings based on the correct claim interpretation. On the other issues the Commission's decision is affirmed.

I THE PATENTED INVENTION

The invention of the '580 patent is described by Modine as a highly efficient and environmentally advanced condenser for use in automotive air conditioning. It is more compact, lighter, uses less refrigerant, outperforms prior condensers, and has the additional advantage of being usable with refrigerants other than chlorofluorocarbons. Modine states that it converted the entire industry to a new standard.

Claims 9 and 10 of the '580 patent, the only claims in suit, are shown with emphasis added to point out the two terms that are the focus of the infringement issues:

Claim 9. A condenser for a refrigerant in a cooling system comprising:

a pair of spaced, generally parallel, elongated cylindrical tubes defining headers;

a vapor inlet in one of said tubes;

a condensate outlet from one of said tubes;

said header tubes each having a series of elongated generally parallel slots with the slots in the series on one header tube aligned with and facing the slots in the series on the other header tube;

a tube row defined by a plurality of straight, tubes of flat cross-section and with flat side walls and having opposed ends extending in parallel between said header tubes, the ends of said flat cross-section tubes being disposed in corresponding aligned ones of said slots and in fluid communication with the interior of said header tubes, at least some of said tubes being in hydraulic parallel with each other;

web means within said flat cross-section tubes and extending between and joined to the flat side walls at spaced intervals to (a) define a plurality of discrete, hydraulically parallel flow paths within each flat cross-section tube that extend between said header tubes; to (b) absorb forces resulting from internal pressure within said condenser and tending to expand the flat cross-section tubes; and to (c) conduct heat between both said flat sides and fluid in said flow paths;

said flow paths being of relatively small hydraulic diameter which is defined as the cross-sectional area of the corresponding flow path multiplied by four (4) and divided by the wetted perimeter of the corresponding flow path;

serpentine fins incapable of supporting said flat cross-section tubes against substantial internal pressure extending between facing flat side walls of adjacent flat cross-section tubes;

each of said flow paths including at least one elongated crevice extending generally along the length of the associated flow path.

Claim 10. The condenser of claim 9 wherein each flow path has a plurality of said crevices.

It is not disputed that all of the elements of the claimed invention have counterparts in the accused condensers, and that infringement turns on the meaning and scope of the terms "flat side walls" and "relatively small hydraulic diameter." Modine challenges the correctness of the Commission's claim interpretation and the ensuing finding of non-infringement.

II

INFRINGEMENT

As we have recently held, "[b]ecause claim construction is a matter of law, the construction given the claims is reviewed de novo on appeal." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir.) (en banc ), cert. granted--

                , --- U.S. ----, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995).   Disputes as to the meaning and scope of terms as used in the claims are determined as a matter of law, based on the patent specification and the prosecution history if it is in evidence.  Id. at 979-80, 34 USPQ2d at 1329-30.   As stated in Markman, "[w]hen legal 'experts' offer their conflicting views of how the patent should be construed, or where the legal expert's view of how the patent should be construed conflicts with the patent document itself, such conflict does not create a question of fact nor can the expert opinion bind the court or relieve the court of its obligation to construe the claims according to the tenor of the patent.   This opinion testimony also does not change or affect the de novo appellate review standard for ascertaining the meaning of the claim language."  Id. at 983, 34 USPQ2d at 1333
                

A. THE FLAT SIDE WALLS

The Commission, adopting the ALJ's Initial Determination, held that the term "flat side walls" means the interior walls of the condenser tubes, and that although the Showa side walls are flat in that they are not rounded, they are not "flat" because most (but not all) of the Showa models have fin-like projections on their interior surfaces. On this term construction the Commission concluded that the Showa tubes do not have "flat side walls" and therefore that the claims are not infringed by any of the Showa models.

Modine states that "flat side walls" describes the shape of the tubes, and refers to the '580 specification which describes the condenser tubes as "noncircular in cross section" and as a "flattened tube." Modine states that the side walls are flat whether or not they have fins on their inner surfaces, pointing out that the specification as well as the claims show fins on the outer surfaces as well as webs on the inner surfaces. Claim 9 mentions "flat side walls" in several clauses:

a plurality of straight tubes of flat cross-section and with flat side walls ...

web means within said flat cross-section tubes and extending between and joined to the flat side walls ...

* * * * * *

serpentine fins incapable of supporting said flat cross-section tubes against substantial internal pressure extending between facing flat side walls of adjacent flat cross-section tubes;

Clause uses the word "flat" to describe both the cross-section and the side walls, but neither usage of "flat" requires that the interior or exterior wall surfaces be clear, without web or fin. Clause requires a web "joined to" the interior flat side walls, negating the ALJ's reading that the wall surfaces must be clear. Clause describes serpentine fins on flat side walls that are necessarily the exterior surfaces of the walls, contravening the ALJ's ruling that "flat side walls" means the interior walls.

The entirety of the claim's usage of flat side walls is consistent with the specification's description of the condenser tubes as "flattened" and "not circular." This plain reading is not affected by webs or fins on either the interior or the exterior surfaces of the walls, or by the crevices of claim 10. Indeed, a claim interpretation that would exclude the inventor's device is rarely the correct interpretation; such an interpretation requires highly persuasive evidentiary support, whereas in this case it received none, whether from the specification, the prosecution history, or the prior art.

We conclude that the term "flat side walls" means that the tube structure is flat, as the specification states, and does not prohibit the presence of fins, webs, or other attachments to either the interior or...