Pfaff v. Wells Electronics, Inc., 92-1431

• Decision Date: 10 September 1993
• Docket Number: No. 92-1431,92-1431
• Citation: 28 USPQ2d 1119,5 F.3d 514
• Parties: Wayne K. PFAFF, Plaintiff-Appellant, v. WELLS ELECTRONICS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 514

5 F.3d 514

28 U.S.P.Q.2d 1119

Wayne K. PFAFF, Plaintiff-Appellant, v. WELLS ELECTRONICS, INC., Defendant-Appellee.

No. 92-1431.

United States Court of Appeals Federal Circuit.

Sept. 10, 1993.

Barry L. Grossman, Banner, Birch, McKie & Beckett, of Washington, DC, argued for plaintiff-appellant. With him on the brief was Joseph M. Skerpon.

James D. Hall, Oltsch, Knoblock & Hall, P.C., South Bend, IN, argued for defendant-appellee.

Before PLAGER, Circuit Judge, BENNETT, Senior Circuit Judge, and SCHALL, Circuit Judge.

PLAGER, Circuit Judge.

Plaintiff Wayne K. Pfaff appeals the judgment of the United States District Court for the Northern District of Texas (district court or Texas court), No. 3-91-CV-1542-H (June 2, 1992), in a patent infringement suit. The district court granted summary judgment of noninfringement to defendant Wells Electronics, Inc. (Wells). We reverse and remand for further proceedings because the district court erred by resolving a disputed material factual issue on summary judgment.

FACTUAL BACKGROUND

Pfaff is the inventor and owner of United States Patent No. 4,491,377 ('377 patent), which relates to a housing for mounting and testing leadless chip carriers. ¹ Pfaff's housing contains three basic elements: (1) a base support, (2) conductive pins arranged vertically on the base to form a rectangular cavity the size of the leadless chip carrier, and (3) an open lid or spreader on top of the pins. For convenience, a chip enclosed in a leadless chip carrier is hereinafter referred to simply as a "chip."

To operate the device, one depresses the lid, which presses against the conductive pins, thus spreading them outward to increase the cavity's size. The chip can then be inserted through the opening in the lid into the cavity defined by the pins. When the lid is released, the conductive pins spring inward to make electrical contact with the chip. The pins not only provide electrical contact, but also hold the chip securely in place. To remove the chip, one inverts the housing and presses on the lid; this spreads the pins and allows the chip to fall out.

Claim 1 of Pfaff's patent, which is representative of the claims at issue, ² reads:

1. Mounting means for a leadless chip carrier comprising:

(a) base support means having first and second oppositely disposed major faces;

(b) a plurality of axially elongated conductive pins passing transversely through said base support means substantially perpendicular to said first and second major faces, the opposed inner edges of the ends of said pins extending from said first major face arranged to define a cavity substantially conforming to at least two oppositely disposed lateral peripheral dimensions of said leadless chip carrier in a plane parallel with said first major face and the inner edges of said pins converging slightly inwardly with distance from said first major face; and

(c) unitary means operable independently of said leadless chip carrier reciprocally moveable axially with respect to said pins and coacting with said opposed inner edges of said pins for uniformly spreading the ends of said pins extending from said first major face to permit the insertion of a leadless chip carrier therebetween. [emphasis added]

In 1986 Pfaff sued Wells in the United States District Court for the Northern District of Indiana (Indiana court), alleging that two of Wells' devices infringed claims 1 and 6-10 of the '377 patent. Wells counterclaimed that Pfaff's patent was invalid. The Indiana court held that Pfaff's patent was not invalid and that Wells' devices did not infringe claim 1 of Pfaff's patent because their pins were not "axially elongated" and did not have opposed inwardly converging inner edges. Instead, the pins "are shortened and are rolled outwardly by a return bent portion." Furthermore,

[t]he unitary spreader means of the Wells device does not coact with those inner Pfaff v. Wells Electronics, Inc., 9 USPQ2d 1366, 1369-70 1988 WL 156744 (N.D.Ind.1988), aff'd, 884 F.2d 1399 12 USPQ2d 1158 (Fed.Cir.1989) (nonprecedential).

edges of the conductive pins that define the cavity. The unitary spreader means of the Wells device coacts with an arm extended from the pins. Even if the court views the arms ... as inner edges of the conductive pins, those "inner edges" formed by the arms are not the same "inner edges" that define the cavity.

The Indiana court also held that prosecution history estoppel prevented Pfaff from claiming infringement under the doctrine of equivalents. The Patent and Trademark Office (PTO) Examiner had rejected original claim 1, as filed, on the grounds it was anticipated by (1) William Pauza et al., U.S. Patent No. 3,753,211, which discloses a direct force insertion device in which the lid presses against the outer edges of the pins to force them inwardly into contact with a chip, and by (2) Anhalt, U.S. Patent No. 4,159,861, which discloses a device in which pins rise from the base with an inward incline and then bend outward in a semi-circular fashion to end in a downwardly extending arm, and in which a camming device presses upwardly against the semi-circular portion of the arms to retract the pins outwardly. To distinguish these references, Pfaff amended Claim 1 to recite "axially elongated" to describe the pins and the phrase "coacting with said opposed inner edges of said pins" in reference to the spreader.

In affirming that decision, this court said that "the claim requires the coaction of the spreader means with the pin ends' inner edges which define the cavity." Pfaff v. Wells Electronics, Inc., 12 USPQ2d 1158, 1159, 884 F.2d 1399 (Fed.Cir.1989) (nonprecedential). We agreed with the Indiana court that Wells' devices were noninfringing because their pins were not axially elongated and did not incline in a plane substantially parallel to the first major face, and because their spreaders coacted with a portion of the pin ends that did not define the cavity. We also agreed with the Indiana court that prosecution history estoppel prevented Pfaff from construing Wells' pins and spreader as equivalents; "Pfaff amended his claims [to overcome prior art by] adding 'axially elongated' to limit his pins and 'inner edges' to limit the structure defining the cavity." Id. at 3.

On August 1, 1991 Pfaff commenced this suit in Texas, alleging that six of Wells' subsequently-developed devices infringed claims 1, 6-7, 10-11 and 19 of his patent. On April 15, 1992 Wells moved for summary judgment. On May 1, 1992 Pfaff filed a brief in opposition; on May 11, 1992 Wells replied. On June 2, 1992 the Texas court granted summary judgment to Wells. With regard to literal infringement, the court said:

Defendant's six devices depart from at least one essential element of Plaintiff's Patent claims. Specifically, the unitary spreader means of Defendant's six devices do not coact with the inner edges of the conductive pins that define the cavity.... Defendant's unitary spreaders coact with portions of the pins which are laterally removed from the inner edges of the pins which define the cavity. In no instance do the unitary spreaders come in contact with the cavity.

Defendant also argues that two other essential elements of the Plaintiff's claims are not satisfied by the accused device: the pins in the accused device are not axially elongated, and they do not inwardly incline [in] any plane substantially parallel to the first major face of the socket housing. The Court, however, need not address Defendant's additional arguments because as stated above, the fact that a single element essential to the Patent Claims 1 and 7 is not present in the accused device defeats Plaintiff's assertions of infringement.

Pfaff v. Wells Electronics, Inc., No. 3-91-CV-1542-H, slip op. at 6-7 (N.D.Tex. June 2, 1992) (emphasis in original).

The court also found no infringement under the doctrine of equivalents:

It is beyond question, and the Indiana Court has so found, that one of the specific elements amended by Plaintiff to overcome the deficiencies of his application Claims 1 and 7 was that the spreader means operated on and coacted with the inner edges of the pin, as contrasted to the outer edges.

Furthermore, the inner edges of the pins was defined as those edges "mating with" or "defining the cavity". Plaintiff now can not contend that Defendant's devices with the spreader means coacting with the outer edges of the pins which do not mate with or define the cavity are equivalents. The doctrine of prosecution [history] estoppel defeats Plaintiff's reliance on the doctrine of equivalents.

Id. at 9 (emphasis in original, citations omitted).

On June 12, 1992 Pfaff filed a motion for reconsideration and submitted deposition excerpts and an expert affidavit testifying that the Wells spreaders coact with "inner edges" of the conductive pins. On June 17, 1992, the district court denied reconsideration.

DISCUSSION

Summary judgment is proper only if there is no genuine issue of material fact and the prevailing party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). All evidence must be viewed in the light most favorable to the non-moving party, and all reasonable inferences should be drawn in favor of the non-moving party. Telectronics Pacing Sys., Inc. v. Ventritex, Inc., 982 F.2d 1520, 1522, 25 USPQ2d 1196, 1197-98 (Fed.Cir.1992). In reviewing the trial court's decision, we are required to independently determine whether the standards for summary judgment have been met. C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 673, 15 USPQ2d 1540, 1543 (Fed.Cir.1990).

A. Collateral Estoppel/Issue Preclusion

In its ruling, the Texas court relied on the Indiana court's claim interpretation as "res judicata:"

Despite the disparity in the devices and two of the Claims at issue, the Indiana Court's findings in relation to the prosecution history of the Patent, and the elements essential to certain Claims in the Patent are...