Pennwalt Corp. v. Durand-Wayland, Inc., DURAND-WAYLAN

• Citation: 833 F.2d 931,4 USPQ2d 1737
• Decision Date: 06 November 1987
• Docket Number: INC,Nos. 85-1882,DURAND-WAYLAN,85-1933,s. 85-1882
• Parties: PENNWALT CORPORATION, Appellant/Cross-Appellee, v., Appellee/Cross-Appellant. Appeal
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 931

833 F.2d 931

4 U.S.P.Q.2d 1737

PENNWALT CORPORATION, Appellant/Cross-Appellee, v. DURAND-WAYLAND, INC., Appellee/Cross-Appellant.

Appeal Nos. 85-1882, 85-1933.

United States Court of Appeals, Federal Circuit.

Nov. 6, 1987.

Joel S. Goldhammer, Seidel, Gonda & Goldhammer, P.C., Philadelphia, Pa., argued for appellant/cross-appellee. With him on the brief were Gregory J. Lavorgna and Steven J. Rocci, Philadelphia, Pa., of counsel.

George M. Hopkins, Newton, Hopkins & Ormsby, Atlanta, Ga., argued for appellee/cross-appellant. With him on the brief was Todd Deveau, Atlanta, Ga.

Before MARKEY, Chief Judge, FRIEDMAN, RICH and DAVIS, Circuit Judges, COWEN and BENNETT, Senior Circuit Judges, and SMITH, NIES, NEWMAN, BISSELL, ARCHER and MAYER, ^* Circuit Judges. ^**

BISSELL, Circuit Judge, filed an opinion, in which MARKEY, Chief Judge, FRIEDMAN, RICH, DAVIS, NIES and ARCHER, Circuit Judges, joined; BENNETT, Senior Circuit Judge, filed a dissent-in-part, in which COWEN, Senior Circuit Judge, SMITH and NEWMAN, Circuit Judges, joined. NIES, Circuit Judge, filed additional views; NEWMAN, Circuit Judge, filed a commentary.

BISSELL, Circuit Judge.

This appeal and cross-appeal are from a judgment of the United States District Court for the Northern District of Georgia, 225 USPQ 558 (N.D.Ga.1984). The district court found that Durand-Wayland's accused devices do not infringe any claim, literally or under the doctrine of equivalents. Unable to view that finding as clearly erroneous under Fed.R.Civ.P. 52(a), we affirm the judgment of noninfringement and vacate, as moot, that part of the judgment concerning the validity of Pennwalt's patent.

BACKGROUND

Pennwalt sued Durand-Wayland for infringing claims 1, 2, 10 and 18 (claims-at-issue) of its U.S. Patent No. 4,106,628 (the '628 patent) on an invention of Aaron J. Warkentin and George A. Mills, entitled "Sorter for Fruit and the Like." Following a nonjury trial on the issues of patent infringement and validity, the district court, on March 22, 1984, issued an opinion concluding that (1) the claims-at-issue were Pennwalt appeals from the district court's holding of noninfringement, both literally and under the doctrine of equivalents, and its award of costs against Pennwalt. Durand-Wayland appeals from the district court's validity holdings and its denial of Durand-Wayland's request for recovery of its attorney fees.

not anticipated by the prior art, (2) the '628 patent had not run afoul of the "on sale" bar of 35 U.S.C. Sec. 102(b) (1982), and (3) the accused devices did not infringe any of the claims-at-issue, either literally or under the doctrine of equivalents. In an unpublished supplemental order of April 26, 1984, the district court concluded as a matter of law that the claims-at-issue would not have been obvious in light of the prior art.

ISSUE

Our disposition of this appeal requires resolution of the single question of whether the district court's finding of no infringement was clearly erroneous.

OPINION

The '628 patent claims a sorter. The principal object of the invention is to provide a rapid means for sorting items, such as fruit, by color, weight, or a combination of these two characteristics. The sorter recited in claims 1 and 2 conveys items along a track having an electronic-weighing device that produces an electrical signal proportional to the weight of the item, along with signal comparison means, clock means, position indicating means, and discharge means, each of which performs specified functions. The specification describes the details of a "hard-wired" network consisting of discrete electrical components which perform each step of the claims, e.g., by comparing the signals from the weighing device to reference signals and sending an appropriate signal at the proper time to discharge the item into the container corresponding to its weight. The combined sorter of claims 10 and 18 is a multifunctional apparatus whereby the item is conveyed across the weighing device and also carried past an optical scanner that produces an electrical signal proportional to the color of the item. The signals from the weighing device and color sensor are combined and an appropriate signal is sent at the proper time to discharge the item into the container corresponding to its color and weight.

Durand-Wayland manufactures and sells two different types of sorting machines. The first accused device, the "Microsizer," sorts by weight only and employs software labeled either Version 2 or Version 5. The second accused device employs software labeled Version 6 and sorts by both color and weight through the use of the "Microsizer" in conjunction with a color detection apparatus called a "Microsorter."

A more complete description of the claimed invention and of the accused devices is set forth in the district court's opinion. Pennwalt, 225 USPQ at 559-60. The claims-at-issue are set forth in the district court's opinion. Id. at 564-65.

I. Literal Infringement

Pennwalt asserts on appeal that all limitations set forth in claims 1 and 2 and some limitations set forth in claims 10 and 18 can be read literally on the accused devices. Pennwalt contends that the district court erred in interpreting the claims by going beyond the means-plus-function language of a claim limitation and comparing the structure in the accused devices with the structure disclosed in the specification. Such comparison allegedly resulted in the court's reading nonexistent structural limitations into the claims. Pennwalt relies on the statement in Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607, 70 S.Ct. 854, 855, 94 L.Ed. 1097 (1950): "If accused matter falls clearly within the claim, infringement is made out and that is the end of it." In view of the literal breadth of means-plus-function language in the claims, that "test" for literal infringement would encompass any means that performed the function of a claim element. 35 U.S.C. Sec. 112 (1982). This is not the "test." The Graver Tank statement predated the inclusion in the 1952 Act of the provision specifically permitting "means" limitations, section 112, paragraph 6. See P. Federico, Commentary on the New Patent Law, 35 USCA 1, 25 (1954). As Judge Rich, one of the drafters of the statute, stated in a 1952 address explaining the import of section 112, paragraph 6:

If you adopt this practice, that element or step is to be construed--shall be construed (it is mandatory)--to cover the corresponding structure, material or acts described in the specification and equivalents thereof.

Address before the New York Patent Law Association (November 6, 1952), reprinted in R. Calvert, The Encyclopedia of Patent Practice and Invention Management 17, "Section 112--Means Claims" (1964).

Thus, section 112, paragraph 6, rules out the possibility that any and every means which performs the function specified in the claim literally satisfies that limitation. While encompassing equivalents of those disclosed in the specification, the provision, nevertheless, acts as a restriction on the literal satisfaction of a claim limitation. Data Line Corp. v. Micro Technologies, Inc., 813 F.2d 1196, 1201, 1 USPQ2d 2052, 2055 (Fed.Cir.1987). If the required function is not performed exactly in the accused device, it must be borne in mind that section 112, paragraph 6, equivalency is not involved. Section 112, paragraph 6, plays no role in determining whether an equivalent function is performed by the accused device under the doctrine of equivalents.

Thus, it was not legal error (as Pennwalt asserts) for the district court to have made a comparison between Durand-Wayland's structure and the structure disclosed in the specification for performing a particular function. The statute means exactly what it says: To determine whether a claim limitation is met literally, where expressed as a means for performing a stated function, the court must compare the accused structure with the disclosed structure, and must find equivalent structure as well as identity of claimed function for that structure. Palumbo v. Don-Joy Co., 762 F.2d 969, 975, 226 USPQ 5, 8 (Fed.Cir.1985); D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1575, 225 USPQ 236, 239 (Fed.Cir.1985); Radio Steel & Mfg. Co. v. MTD Prods., Inc., 731 F.2d 840, 848, 221 USPQ 657, 663 (Fed.Cir.1984).

Where the issue is raised, it is part of the ultimate burden of proof of the patent owner to establish, with respect to a claim limitation in means-plus-function form, that the structure in the accused device which performs that function is the same as or an equivalent of the structure disclosed in the specification. In essence, Pennwalt erroneously argues that, if an accused structure performs the function required by the claim, it is per se structurally equivalent. That view entirely eliminates the section 112, paragraph 6, restriction and has been rejected in the above-cited precedent of this court.

We need not, and do not, determine whether the district court correctly found no equivalency in structure because the district court also found that the accused devices, in any event, did not perform the same functions specified in the claim. For example, the district court found that the accused devices had no position indicating means which tracked the location of the item being sorted. That finding negates the possibility of finding literal infringement.

II. Infringement under the Doctrine of Equivalents

Under the doctrine of equivalents, infringement may be found (but not necessarily ¹) if an accused device performs substantially the same overall function or work, in substantially the same way, to obtain substantially the same overall result as the claimed invention. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 901-02, 221 USPQ 669, 679 (Fed.Cir.), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984); Graver Tank, 339 U.S. at 608, 70 S.Ct. at 856. That formulation, however, does not...