Rite-Hite Corp. v. Kelley Co., Inc.
| Decision Date | 21 May 1987 |
| Docket Number | RITE-HITE,86-1158,Nos. 86-1096,s. 86-1096 |
| Citation | 2 USPQ2d 1915,819 F.2d 1120 |
| Parties | CORPORATION, et al., Appellees, Cross-appellants, v. KELLEY COMPANY, INC., Appellant, Cross-appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Glenn O. Starke, Andrus, Sceales, Starke & Sawall, Milwaukee, Wis., argued, for appellant/cross-appellee. With him on the brief, was Gary A. Essmann.
Theodore W. Anderson, Neuman, Williams, Anderson & Olson, Chicago, Ill., argued, for appellees/cross-appellants. With him on the brief, were Arthur A. Olson, Jr., Lawrence E. Apolzon, Newman, Williams, Anderson & Olson of Chicago, Ill. Also on the brief, was Gilbert W. Church, Foley & Lardner, Milwaukee, Wis.
Before SMITH, NEWMAN, and BISSELL, Circuit Judges.
Kelley Company, Inc. ("Kelley") appeals the judgment of the United States District Court for the Eastern District of Wisconsin, Rite-Hite Corp. * v. Kelley Co., 629 F.Supp. 1042, 231 U.S.P.Q. 161 (E.D.Wis.1986), holding not invalid and infringed certain claims of U.S. Patent No. 4,373,847 ("the '847 patent") owned by Rite-Hite Corporation. Injunctive relief was granted, but stayed during pendency of this appeal. Rite-Hite cross-appeals the district court's failure to find willful infringement and its denial of attorney fees and multiplied damages. We affirm the district court's judgment.
The '847 patent, invention of Steven J. Hipp and Norbert Hahn entitled "Releasable Locking Device", is for an apparatus for securing a parked vehicle such as a truck, to an adjacent upright structure such as a loading dock, in order to prevent the truck from pulling away during loading or unloading. The district court found that the device was the result of a "long and arduous" development program, Rite-Hite, 629 F.Supp. at 1048, 231 U.S.P.Q. at 163, was an advancement in the art of vehicle restraints, id., at 1049, 231 U.S.P.Q. at 164, and achieved commercial success, id., at 1051, 231 U.S.P.Q. at 166.
Claim 1, the broadest claim, is as follows:
(g) said second means, when in an inoperative mode, being adapted to be in a lowered nonlocking relation with the parked vehicle.
Kelley argues that the district court erred in holding that the claims of the '847 patent were not invalid, and on appeal refers particularly to Taylor U.S. Patent No. 4,148,498 ("the Taylor patent"). The district court held that Kelley had not met its burden of proving invalidity and, following discussion of the prior art, the court stated that "the claimed combination would not have been obvious to one skilled in the art", and that "[e]ven if these [prior art] devices include each of the claimed mechanical elements, their structure, interrelationship, application, and operation vary so drastically and distinctly from the claimed invention that it cannot be found that these devices show the claimed combination." Id., at 1055-56, 231 U.S.P.Q. at 169. No error has been demonstrated in this conclusion.
Kelley asserts that the "pivotal point" in this appeal is the construction of the claims, arguing that Rite-Hite necessarily construed the claims narrowly before the United States Patent and Trademark Office ("PTO") in order to obtain their allowance over the Taylor patent. Kelley states that the scope and validity of the claims in light of the Taylor patent's disclosure was "vigorously argued" in the district court proceedings, but also argues that Taylor was inadequately weighted and understood by the district court because the court did not specifically refer to Taylor in its findings on validity.
Kelley's arguments with respect to the Taylor patent turn in significant part on the prosecution of the Rite-Hite patent application before the PTO. It is not disputed that the Taylor patent was a cited reference. Kelley's position is that Rite-Hite "quite likely" made oral representations to the examiner "stressing the difference" between Taylor and the claimed invention, in order to obtain allowance of the claims. Kelley charges that Rite-Hite violated PTO regulations pertinent to amendments and interviews with patent examiners, by filing an inadequate record of the interview held in connection with Rite-Hite's petition to expedite the prosecution of its application, implying that Rite-Hite in "callous disregard of the PTO rules" did not record representations made to the examiner.
The PTO record of that interview contains the Examiner Interview Summary Record, a form filled out by the examiner. On the form the examiner had placed a check mark by the printed statement: "It is not necessary for applicant to provide a separate record of the substance of the interview."
The written amendment and response that Rite-Hite mailed to the PTO the day following the interview are consistent with the examiner's record of the interview. In that response Rite-Hite discussed the Taylor trailer hitch as requiring compensation for pitch, roll, and turning movements, and careful alignment of the ball and socket parts of the tractor and trailer "to effect a secure interlocking relation." Rite-Hite distinguished the Taylor problem, and its solution, from its own invention:
There is no positioning of a ball in a socket or the like required with applicants' structure. In fact, the claimed structure is capable of automatically compensating for variations in size and shape which commonly occur in ICC bars.
Kelley argues that the amendment and response filed after the interview were not fully responsive as required by 37 C.F.R. Secs. 1.111 and 1.133(b). See also Manual of Patent Examining Procedure Sec. 713.04 (4th ed. 1979). The examiner did not so hold, upon inspection as required by Manual Sec. 714.05. Kelley has provided neither evidence nor inference to overcome the presumption that the PTO complied with its own rules, including those rules relating to review of the content of amendments filed by an applicant. No irregularity has been shown in the examiner's actions or record of the interview.
The district court correctly did not require more of the patent applicant than was required by the PTO. The record provides no support for Kelley's argument that Rite-Hite "quite likely" took a position before the PTO contrary to its present position. Nor is there support for Kelley's argument that the scope of the claims must be restricted merely because Rite-Hite followed the examiner's instructions and did not file a separate interview summary.
Having been shown no clear error in the factual findings of the district court, and discerning no error of law, we affirm that Kelley has not proven the '847 patent invalid.
The burden of proving infringement by a preponderance of the evidence is on the person asserting the patent right. Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361, 219 U.S.P.Q. 473, 480 (Fed.Cir.1983).
Determination of infringement of claims written in means-plus-function form is governed by 35 U.S.C. Sec. 112 paragraph 6, which states that "such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." The patent specification, other claims in the patent, the prosecution history, and expert testimony may be considered in ascertaining claim scope under section 112. See King Instrument Corp. v. Otari Corp., 767 F.2d 853, 862, 226 U.S.P.Q. 402, 408 (Fed.Cir.1985), cert. denied, --- U.S. ----, 106 S.Ct. 1197, 89 L.Ed.2d 312 (1986); Palumbo v. Don-Joy Co., 762 F.2d 969, 975, 226 U.S.P.Q. 5, 8 (Fed.Cir.1985).
Kelley argues that if the patent claims are construed sufficiently narrowly to preserve their validity in view of the Taylor reference, then the claims also exclude and can not be infringed by the Kelley device. This argument appears to be based in part on Kelley's position, which was not accepted by the district court, that the only element of the '847 claims that could be distinguished from the Taylor reference is the "third means" of claim clause (d).
Looking specifically at the "third means", Taylor teaches the use of a meshed nut-and-screw assembly for raising and lowering Taylor's hook assembly. Kelley argues that this is a direct mechanical analog of Kelley's rack-and-pinion mechanism, and that both these mechanisms are different from the one-way locking ratchet- and-pawl shown in the '847 specification. The district court reviewed the evidence and found the Kelley rack-and-pinion to be equivalent to the ratchet-and-pawl described in the specification:
While, in the preferred embodiment described in the '847 patent, the first part of the retaining...
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