Oregon Saw Chain Corp. v. McCulloch Motors Corp.

• Decision Date: 12 December 1963
• Docket Number: No. 18290.,18290.
• Citation: 323 F.2d 758
• Parties: OREGON SAW CHAIN CORPORATION, a Corporation, Appellant, v. McCULLOCH MOTORS CORPORATION, a Corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

323 F.2d 758 (1963)

OREGON SAW CHAIN CORPORATION, a Corporation, Appellant, v. McCULLOCH MOTORS CORPORATION, a Corporation, Appellee.

No. 18290.

United States Court of Appeals Ninth Circuit.

October 9, 1963.

Rehearing Denied December 12, 1963.

Lyon & Lyon, and Lewis E. Lyon, Los Angeles, Cal., and Buckhorn, Cheatham & Blore, and Elmer A. Buckhorn, Portland, Or., for appellant.

R. Welton Whann, Los Angeles, John F. Swain, San Francisco, and Robert M. McManigal, Los Angeles, Cal., for appellee.

Before BARNES, JERTBERG and KOELSCH, Circuit Judges.

BARNES, Circuit Judge.

McCulloch Motors Corporation, a corporation (hereinafter referred to as McCulloch, plaintiff or appellee) sued below for declaratory relief in connection with United States Letters Patent No. 2,508,784 and No. 2,622,636 (hereinafter referred to as '784 and '636, respectively). The sole defendant was Oregon Saw Chain Corporation, a corporation (hereinafter referred to as Oregon, defendant, or appellant), the owner of Cox patents '636 and '784.

This declaratory relief action was brought under Sections 1338(a) and 2201 of Title 28 United States Code. Jurisdiction on appeal lies with this court. 28 U.S.C. § 1291.

The district court judge granted a motion for partial summary judgment on file wrapper estoppel, holding that McCulloch had not infringed any claim of '636 by the manufacture, use or sale of saw chains, represented by Exhibits A-3 to A-21, inclusive, the alleged infringing chains.

The motion was granted in the court below on Ground 1 of McCulloch's motion, to-wit:

"1. The claims of defendant\'s Patent No. 2,622,636 are not infringed as a matter of law for the reason that because of file wrapper estoppel the claims are expressly limited so as to exclude from their scope plaintiff\'s curved tooth saw chains, Exhibits A-3 to A-21."

The second and third grounds urged in support of the motion for partial summary judgment¹ (public use and sale more than one year prior to filing of claims, and "double patenting") were not considered or ruled upon by the trial judge, and we are not here concerned with them.

The court made findings of fact and conclusions of law in support of its judgment. A vital finding is Number 6, reading as follows:

"6. Considering Patent No. 2,622,636 by its four corners, the claims, specifications, the drawings and the file wrapper contents of Patent No. 2,622,636, together with Oregon Saw Chain\'s various admissions, there is no genuine issue that Patent No. 2,622,636 covered, and was meant to cover, only L-shaped teeth, i. e., teeth which were constructed so that the bottom cutting portion and the side cutting portion joined at an angle with a sharp cutting corner and not rounded, curved or arcuate teeth, as are McCulloch\'s Exhibits A-3 to A-21, inclusive."²

This finding follows precisely the thinking expressed by the trial judge in his memorandum of December 4, 1961, wherein, before using the exact language of Finding 6 quoted above, he stated:

"There does not seem to be any dispute that all of McCulloch\'s cutter teeth (Exhibits A-3 to A-21, inclusive) are curved, round or arcuate, and that none are L-shaped so that the bottom and side cutters are both flat, joined at an angle with a sharp cutting corner. A physical examination of the exhibits shows there is no genuine issue as to this."³

Oregon urges that the facts so stated are in dispute, and the court's judgment is not supported in law.

A "kerf" is defined as "a slit or notch made in cutting, usually by a saw." (Webster's Third New Int. Dictionary, p. 1238 (1961).)

As we understand the problem, on any saw some portion thereof must not only cut down from its bottom resting upon the material to be sawed, but the slit or notch must be cleared of sawdust so as to permit a further downward thrust of the cutting surface; to prevent the sawdust from jamming between the side of the saw and the kerf walls; to hold the cutting teeth in perfect alignment and prevent "canting;" thus decreasing the amount of saw kerf; and act in some way to prevent the cutting teeth from "digging" too deep or too far down.

In earlier chain saws, this was accomplished by having different teeth with different purposes perform different functions. Some were "drag teeth" or "raker teeth" in addition to the requisite "cutting teeth." Wolf Patent, Fig. 4, No. 18, Tr. p. 675, filed March 10, 1920. The Martin Patent (Tr. pp. 672-674), filed November 18, 1914, showed "cutting teeth" (Fig. 5, No. 4) and "drag teeth" or "planer teeth" (Fig. 6, No. 10) and "gage teeth" (Fig. 6, No. 12). The Zandecki Patent (Tr. pp. 683-685), filed June 7, 1941, showed a chain with a "cutting tooth" (Figs. 3 and 4, No. 11); a "gage tooth" (Figs. 3 and 4, No. 12); and "clean-out teeth" (Figs. 3 and 4, No. 14).

In the original Hassler Patent (Tr. pp. 688-693), filed April 1, 1940, these different teeth were described as "cutting teeth" (Fig. 12, Nos. 60, 61); "router teeth" (Fig. 12, Nos. 62, 63); and "drag teeth" (Fig. 12, No. 67).

The '636 Cox patent, urges appellant, "is the first to disclose the invention of a simplified saw chain in which the kerf side wall and kerf bottom cutting functions were performed by the same teeth," (Appellant's Brf., p. 6; Reply Brf., p. 3) with "all cutter teeth alike except for being of right and left hand configuration."⁴ This "single type of tooth" is the Cox invention, urges appellant, yet appellant states:

"The invention of the Cox patent does not lie in the particular shape or configuration of the cutting elements." (Emphasis appellant\'s.)

In support of this emphasized statement, however, appellant quotes from the Cox Patent, Col. 1, lines 14-24, the following:

"It is a principal object of this invention to provide certain improvements in chain saws of the kind above stated that will eliminate many of the difficulties and disadvantages that are now encountered in the use of, or which reside in many present-day types of chain saws and which are caused primarily by the cutter design and by reason of the fact that those cutters which form the sides of the kerf and the rakers or cutters which cut the kerf material free are separate from each other in the chain belt." (Tr. V-5, 661. Emphasis added.)

Despite the claimed primary effect of the cutter design, which "as illustrated by Cox, have a side cutting portion and a bottom cutting portion which are joined together in L-formation and as indicated have sharp cutting corners" (Appellant's Brf., p. 7), appellant urges upon us that "the District Court erred in the construction of the Cox claims by limiting the same to L-shaped cutting teeth having bottom and side cutting portions which are joined at a sharp angle." (Brf. p. 8.)

This is not what the trial judge stated in his memorandum nor in his findings. Nowhere does he refer, as appellant states, to a joinder of the side and bottom cutting portions at "a sharp angle." He refers to the two portions "joined at an angle, with a sharp cutting corner." (Emphasis added.)

"L-shaped" is defined as "having the shape of a capital L" (Webster's Third New Int. Dictionary, p. 1342 (1961)).

We refer to and consider the drawing set forth in the margin. It is a portion of Exhibit B, showing Figure 3 of the Cox '636 Patent and Figure 3 of the McCulloch chain, Exhibit A-9.

Appellant urges that one cannot read the Cox claims to require that the bottom cutting portion and the side cutting portion be "joined at an angle with a sharp cutting corner." We disagree. We can discover no other way that they could be read.

We have described one tooth with two cutting edges, (a) bottom cutting and (b) side cutting. The first is called in the claims an outer or cutter flange, or toe portion, of the cutter tooth. It is "substantially rectangular." "The forward edge of the flanged toe portion is transverse to the line of travel of the chain and is beveled and sharpened to present a planing or cutting edge, as shown at 48." (Emphasis added.) (Cox Patent, Col. 4, lines 65-69, Tr. p. 662.) The side cutting edge is "that vertical and forwardly facing edge portion of the laterally inclined shank portion * * * that is even with the forward cutting edge 48 * * * and * * * is designed to form the cut that defines the side of the kerf. The sharpened angle that is formed by the merging of the chisel cutting edges 48 and 50 of the toe and shank portions, respectively, forms the lower corner cut of the kerf as the link advances." (Cox Patent, Col. 4, line 75 to Col. 5, line 9. Emphasis added.)

It is difficult to see how one could state any more clearly that two cutting surfaces meet at a cutting corner at an angle, which angled corner is of necessity sharp.

We have been referring to the description of the invention in the '636 specifications. In the claims themselves, we find the same single cutter tooth with a side wall portion and an outer flange portion; the side wall portion being similarly laterally offset; the flange portion likewise extending substantially at right angles to the plane of said body, the foremost edges of said side wall and flange portions being likewise sharpened (Claim 1).

It is, of course, true that Cox did not claim he was inventing a single tooth with side and bottom corners joined at an angle with a sharp cutting corner. It is true he did not claim "my tooth is not rounded or curved or arcuate." But he did claim a tooth with an angle, not a curve, under any fair reading of his claims. To read his claims as to cover all curved teeth seems to us to unnecessarily and unfairly enlarge the doctrine of equivalents, as appellant suggests should be done.

The claim of a patent is to be understood and interpreted in the light of its specifications. Schriber-Schroth Co. v. Cleveland Trust Co., 1940, 311 U.S. 211, 61 S.Ct. 235; Payne Furnace & Supply Co. v. Williams-Wallace Co., 9 Cir. 1941, 117 F.2d 823.

"The claims are to be read in light of the specifications." Kemart Corp. v....