Perini America, Inc. v. Paper Converting Mach. Co.
| Decision Date | 22 October 1987 |
| Docket Number | 87-1170,Nos. 87-1150,s. 87-1150 |
| Citation | 4 USPQ2d 1621,832 F.2d 581 |
| Parties | PERINI AMERICA, INC. Plaintiff-Cross-Appellant, v. PAPER CONVERTING MACHINE COMPANY, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Theodore W. Anderson, Neuman, Williams, Anderson & Olson, Chicago, Ill., argued for plaintiff-cross-appellant. With him on the brief were Noel I. Smith and Vasilios D. Dossas. Also on the brief was James P. Brady, Foley & Lardner, Milwaukee, Wis., of counsel.
Jerome F. Fallon, Tilton, Fallon, Lungmus & Chestnut, Chicago, Ill., argued for defendant-appellant.
Before MARKEY, Chief Judge, BALDWIN, Senior Circuit Judge, and NIES, Circuit Judge.
Paper Converting Machine Company ("PCM") appeals from a declaratory judgment of the United States District Court for the Eastern District of Wisconsin (Reynolds, J.), # 82-C-596, that Perini America, Inc. ("Perini") did not infringe PCM's United States Patent Nos. 3,556,907 ('907) and 3,867,225 ('225). Perini cross-appeals from an order denying its request for attorney fees. We affirm.
PCM and Perini deal in embosser systems used in fabricating paper towels. Modern kitchen paper towels absorb far more liquid per sheet than did their predecessors, because of increased bulk created when separately embossed webs of paper are joined by glue. The first such towel was marketed by Procter and Gamble Company. It joined two webs at projections ("pegs") formed by an embossing roll, i.e., in a "peg-to-peg" manner.
Procter and Gamble's product and method of making it was disclosed and claimed in the Wells patent, U.S. Patent No. 3,414,459 (Wells). Wells discloses two embossing rolls rotating synchronously. A glue applicator coacts with one of the rolls to apply adhesive to the pegs of a web while it is still on that roll. The two webs join at a "marrying" nip where the two embossing rolls meet.
"Designing around" the Wells patent, Ernst Nystrand, Vice President of Engineering for PCM, developed a machine for producing paper towels with characteristics similar to those of Procter and Gamble's product. Noting that Wells required carefully registered and synchronized rolls to ensure peg-to-peg alignment, Nystrand adjusted the predetermined rotational position or "phasing" of the rolls and thus In towels produced on the Nystrand machine the webs line up in a peg-to-valley or "nested" configuration. Although the rolls still have to be synchronized to maintain peg-to-valley nesting, less than perfect synchronization is permissible because the peg-to-valley configuration allows more leeway for error without giving up satisfactory bulk and spacing between the towel webs.
avoided the need for strict precision and synchronization.
In 1969, PCM filed a patent application in Nystrand's name for a "Machine for Producing Laminated Embossed Webs." The original application (Serial No. 793,430) contained machine, method, and product claims, but PCM retained only the machine claims in that application when the examiner required an election.
On January 19, 1971, PCM's '907 issued. Claim 1 reads:
A machine for producing laminated, embossed webs comprising a frame, first and second embossing units mounted on said frame, each unit including an embossing roll having a pattern of projections of about 10 to about 200 per square inch, and a platen roll for coaction with each embossing roll, means for rotating said rolls and for feeding a web for travel on the rolls of each unit to develop two embossed webs, adhesive applying means on said frame for one of said units, a third roll operatively associated with the first unit embossing roll to press both webs against said first unit embossing roll and adhere the two webs together, the first and second unit embossing rolls being oriented relative to each other to position the projections in one web intermediate the projections in the other web as the webs approach said third roll.
PCM's '225 patent contained Nystrand's method claims. During its prosecution the PTO cited Wells and U.S. Patent No. 3,547,723 to Gresham (Gresham).
The '225 patent issued on February 18, 1975. Claim 1 reads:
A method for producing laminated embossed webs comprising separately embossing two webs each with a pattern of projections of about 10 to about 200 per square inch and a height of about 0.01 to about 0.05 inches, applying adhesive to at least some of the projections of one of said webs while the same is supported on an embossing roll, orienting said webs so that the projections face each other and interlace with each other so as to provide air spacing in the interlacing, and applying a linear laminating pressure by passing said webs through the nip defined by a marrying roll and the embossing roll which provided the projections on said one web to join said webs while said one web has the projections thereon supported and while maintaining the hardness of said marrying roll and the pressure in said nip to prevent distortion of the projections of the other said webs.
On May 17, 1982 Perini sought a declaratory judgment that its Double Embossed Random Laminating II (DERL II) machine did not infringe any claim of either the '907 or '225 patent, that the patents were invalid, and that they were unenforceable because of PCM's inequitable conduct before the Patent and Trademark Office (PTO). PCM counterclaimed for infringement of claim 1 of each patent.
A bench trial was held July 17-27, 1984. On December 30, 1986, the trial court entered this judgment:
IT IS ORDERED AND ADJUDGED
that a declaratory judgment is entered for plaintiff Perini America, Incorporated.
IT IS FURTHER ORDERED AND ADJUDGED that the plaintiff's Double Embossed Random Laminating II embossing/laminating machinery does not infringe the U.S. Patent Nos. 3,556,907 and 3,867,225 owned by defendant Paper Converting Machine Company.
The trial court issued simultaneously with its judgment a Decision and Order PCM appeals from the judgment. Perini appeals from the order denying its request for attorney fees. 1
which included a comprehensive 47-page set of 98 Findings of Fact and 26 Conclusions of Law. In that Decision and Order, the court found noninfringement, concluded that Perini had not proven the patents invalid, concluded that Perini had not proven PCM guilty of inequitable conduct, and denied the requests of both parties for attorney fees.
(1) Whether the trial court erred in finding that Perini's DERL II machine did not infringe the claims of either patent.
(2) Whether the trial court abused its discretion in denying Perini's request for attorney fees.
PCM charges the trial court with a litany of errors in interpreting the scope of the patent claims at issue and in finding noninfringement. It is axiomatic, however, that this court does not undertake to retry the entire case on appeal. A trial court's conclusions on the scope of the claims are reviewable as matters of law, but findings on disputed meanings of terms in the claims and on the infringement issue must be shown to have been clearly erroneous. Palumbo v. Don-Joy Co., 762 F.2d 969, 974-75, 226 USPQ 5, 8 (Fed.Cir.1985); McGill Inc. v. John Zink Co., 736 F.2d 666, 671-72, 221 USPQ 944, 948 (Fed.Cir.), cert. denied, 469 U.S. 1037, 105 S.Ct. 514, 83 L.Ed.2d 404 (1984); see Perkin-Elmer Corp. v. Westinghouse Corp., 822 F.2d 1528, 1530-31, 3 USPQ2d 1321, 1323 (Fed.Cir.1987) ().
That a claim must be interpreted in a certain way is a conclusion of law. Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569, 219 USPQ 1137, 1140 (Fed.Cir.1983). Like all legal conclusions, that conclusion rises out of and rests on a foundation built of established (undisputed or correctly found) facts. Interpretation of a claim, or of its scope, should not be assayed until that foundation is in place. If the meaning of terms in the claim, the specification, other claims, or prosecution history is disputed, that dispute must be resolved as a question of fact before interpretation can begin. Confusion may be caused by the circumstance in which resolution of the question on the meaning of a term or terms dictates the interpretation of the claim, but that is not unusual, legal conclusions being dictated by established facts and not the other way around, and does not change the nature of the meaning-of-terms inquiry from one of fact to one of law. With the meaning of terms in the claims, specification, etc. established, it may still be necessary to interpret the claim, with its now-defined terms, in light of the specification and prosecution history, with their now-defined terms. It is that interpretation based on established facts that constitutes a legal conclusion reviewable as a matter of law.
Claims are construed by reference to the specification, the prosecution history, other claims, and expert testimony. McGill, 736 F.2d at 671-75, 221 USPQ at 948-51. Analyzing the language of claim 1 of the '907 patent and claim 1 of the '225 patent in light of the patents' specifications and extensive prosecution history, the trial
court correctly concluded that those claims require initial registration and synchronous operation of embossing rolls.
Claim 1 of the '907 patent requires orientation of the rolls relative to each other, to position the pegs on one web intermediate those on the other and thus achieve "nesting." The claim broadly covers "means" for rotating the rolls to accomplish that result. The specification discloses one way of achieving orientation, i.e., rotation of the rolls in synchronism, though not...
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