Pac-Tec, Inc. v. Amerace Corp.

• Citation: 903 F.2d 796,14 USPQ2d 1871
• Decision Date: 09 May 1990
• Docket Number: INC,PAC-TE,89-1692,Nos. 89-1329,s. 89-1329
• Parties: , Plaintiff-Appellant, v. AMERACE CORPORATION, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 796

903 F.2d 796

14 U.S.P.Q.2d 1871

PAC-TEC, INC., Plaintiff-Appellant, v. AMERACE CORPORATION, Defendant-Appellee.

Nos. 89-1329, 89-1692.

United States Court of Appeals Federal Circuit.

May 9, 1990.

Owen E. Perry of Reising, Ethington, Barnard, Perry & Milton, Troy, Mich., argued for plaintiff-appellant. With him on the brief were Jeanne-Marie Buiteweg and Richard W. Hoffmann.

Ronald A. Sandler of Jones, Day, Reavis & Pogue, Chicago, Ill., argued for defendant-appellee. With him on the brief was Sandra B. Weiss. Of counsel were Charles Rutherford, Robert L. Kelly and Dykema Gossett, Detroit, Mich.

Before MARKEY, Chief Judge, BENNETT, Senior Circuit Judge, and PLAGER, Circuit Judge.

MARKEY, Chief Judge.

Pac-Tec, Inc. (Pac-Tec) appeals from a judgment of the United States District Court for the Eastern District of Michigan, No. 86CV73873DT (DeMascio, J.), that 13 claims of Amerace Corporation's (Amerace) patent 4,155,666 ('666) and 23 claims of Amerace's patent 4,195,945 ('945) were infringed and not invalid. Pac-Tec further appeals from an order denying its motion for recusal. Amerace seeks sanctions against Pac-Tec pursuant to Rule 38, Fed.R.App.P. We affirm the judgment and order and impose a sanction on Pac-Tec and its counsel.

I. BACKGROUND

A. The Patents and Accused Devices

Pavement markers mark road lanes and aid the direction of vehicular traffic. Those used in northern climes are subject to the impact of snowplow blades. The '666 and '945 patents are directed to "snowplowable" pavement markers. The markers have a "signal means," i.e., a reflector, carried and protected by a "base member," i.e., a one-piece metal casting, the reflector and casting adapted to being partially disposed below road level.

Claim 1 of the '666 patent is representative:

1. A low-profile pavement marker for use in snow areas for establishing on a finished roadway surface a marking visible from an oncoming vehicle while protecting the marking from damage by oncoming snowplow blades during snowplowing operations, said pavement marker comprising a base member defining two laterally spaced-apart ramp members each having a lower portion and an upper portion and an inclined surface extending between a lowermost end and an uppermost end to form an inclined ramp, the lower portion of said base member adapted to be recessed below the roadway surface with the upper portion of each said ramp member extending above the roadway surface, and signal means adapted to be disposed between and below said ramp members with a lower portion of the signal means disposed below the roadway surface and an upper portion of the signal means disposed above the roadway surface, so that an oncoming snowplow blade will ride up said ramp members and be deflected thereby from contact with said signal means as the snowplow blade passes over said pavement marker, said signal means, including at least a part of said lower portion thereof, being operative to reflect light incident upon said signal means from an oncoming vehicle back toward said oncoming vehicle, said ramps being so configured and arranged to provide adequate space therebetween to allow vehicle tires to wipe the signal means, and whereby said signal means by being partially recessed in use below the level of the associated roadway surface minimizes the total height of said pavement marker above the roadway surface thereby to reduce the impact energy imparted to said pavement and to oncoming vehicles striking said marker.

Claim 1 of the '945 patent is representative:

1. A base member for use as a component of a low-profile pavement marker for use in snow areas for establishing on a finished roadway surface a marking visible from an oncoming vehicle while protecting the marking from damage by oncoming snowplow blades during snowplowing operations, said base member having first and second laterally spaced-apart longitudinally extending ramp members each having a lower portion and an upper portion and an inclined surface extending between a lowermost end and an uppermost end to form an inclined ramp, the lower portion of said base member defining a longitudinally extending keel portion adapted to be recessed below the roadway surface with the upper portion of each said ramp member extending above the roadway surface, and said base member further having a support member interconnecting said ramp members and providing a downwardly facing bottom surface adapted to be disposed in a complementary recess in the associated pavement and a generally upwardly facing support surface adapted to carry signal means thereon, the signal means thus adapted to be disposed between and below said ramp members with an upper portion of the signal means disposed above the roadway surface, so that an oncoming snowplow blade will ride up said ramp members and be deflected thereby from contact with said signal means as the snowplow blade passes over said pavement marker, said ramps being so configured and arranged to provide adequate space therebetween to allow vehicle tires to wipe the signal means, and whereby said bottom surface by being recessed in use below the level of the associated roadway surface enables minimization of the total height of said base member above the roadway surface thereby to reduce the impact energy imparted to said base member and the pavement and to oncoming vehicles striking said base member.

Amerace manufactures and sells pavement markers. Pac-Tec obtained its casting from Amerace's casting supplier and began making its pavement markers. The district court described the Pac-Tec marker:

It has longitudinally extending ramp members with an inclined surface forming a ramp which is intended to extend above the roadway surface, while the lower portion is recessed below the roadway surface in such a way as to prevent jolting of snowplow blades. The ramps are arranged to provide adequate space for tires to wipe the signal means clear, yet are of such a height as to protect such signal from snowplow blades. A support member connects the ramp members, having an upper surface designed to carry a signal means, and a lower surface designed to be recessed below the roadway.

B. The Proceedings

Pac-Tec filed suit on September 15, 1986, seeking a declaration of invalidity and noninfringement of Amerace's patents. Amerace counterclaimed for infringement and moved for summary judgment on that issue. On March 3, 1988, the district court granted summary judgment that Pac-Tec infringed both patents.

Pac-Tec moved for summary judgment of invalidity on three grounds: (1) obviousness-type double patenting of the '666 and '945 patents with respect to each other and with respect to Amerace's patent 3,587,416 ('416); (2) lack of novelty over the '416 patent (35 U.S.C. Sec. 102(a), (b)); and (3) indefiniteness (35 U.S.C. Sec. 112). Amerace cross-moved for summary judgment on validity. The district court, on June 8, 1988, granted summary judgment to Amerace on issues (1) and (3) and denied summary judgment to both parties on issue (2).

After a trial on novelty in light of the '416 patent and United States Patent Nos. 2,260,498 (Wise) and 1,952,942 (Ross), the district court held that Pac-Tec had failed to establish lack of novelty and, on February 14, 1989, enjoined Pac-Tec from further infringement. ¹ Sanctioning Pac-Tec's counsel under Rule 11, Fed.R.Civ.P., the district court noted that Pac-Tec improperly raised in post-trial proceedings an entirely new patent marking issue, ordered that scurrilous references to Amerace's attorney be stricken from Pac-Tec's post-trial pleadings, and, pursuant to 35 U.S.C. Sec. 285, awarded Amerace its attorney fees in light of Pac-Tec's willful infringement and dilatory litigation tactics.

On March 13, 1989, Pac-Tec moved under 28 U.S.C. Secs. 144, 455(a) for recusal of Judge DeMascio, citing certain remarks from the bench. On August 21, 1989, while its recusal motion was pending, Pac-Tec filed a "Petition for Writ of Mandamus" asking this court to vacate or modify the injunction. This court, because Pac-Tec's appeal from the judgment was already pending in this court, treated the petition as a motion for stay and denied it on October 30, 1989, stating that Pac-Tec: (1) raised issues not presented to the district court, (2) misstated the record, and (3) directed an unfounded attack on the remarks of the district court on which Pac-Tec based its pending recusal motion. We sanctioned Pac-Tec for its frivolous petition and awarded Amerace its attorney fees and double costs under Rule 38, Fed.R.App.P. In re Pac-Tec, Inc., Misc. No. 260 (Fed.Cir. October 30, 1989).

After Judge DeMascio denied Pac-Tec's recusal motion (but before this court had issued its October 30 order) Pac-Tec sought from the Court of Appeals for the Sixth Circuit a writ of mandamus directing Judge DeMascio to vacate his denial. On December 8, 1989, the Sixth Circuit denied the petition as frivolous and sanctioned Pac-Tec by awarding Amerace its attorney fees and double costs under Rule 38, Fed.R.App.P. In re Pac-Tec, Inc., No. 89-2225 (6th Cir. December 8, 1989).

II. OPINION

This signifies the end, we trust, of Pac-Tec's and its counsel's singularly sanctionable sojourn among the hallowed halls of justice. Throughout this litigation, the conduct of Pac-Tec and its counsel have fouled the judicial nest. Continued on this appeal is the pestiferous pestilence that led to a Rule 11 sanction, striking portions of Pac-Tec's post-trial pleading, imposition of attorney fees for willful infringement and dilatory litigation at the trial level, and imposition of sanctions by two appellate courts.

The appeal itself is frivolous, and its frivolity is unrelieved by even one of counsel's many arguments. Beyond frivolity, however, the conduct of counsel in this litigation infects the judicial process with a disabling disease of deceit that the courts must act to expunge, for if courts remain passive, that...