Rosen v. Kahlenberg
| Decision Date | 20 February 1973 |
| Docket Number | No. 71-3529.,71-3529. |
| Citation | 474 F.2d 858 |
| Parties | Sidney ROSEN, Plaintiff-Appellee, v. James F. KAHLENBERG, d/b/a Kahlenberg-Globe Equipment Company, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Fifth Circuit |
Stefan M. Stein, Tampa, Fla., for defendant-appellant.
John C. Malloy, Miami, Fla., for plaintiff-appellee.
Before COLEMAN, AINSWORTH and DYER, Circuit Judges.
This is an appeal from a judgment in favor of Sidney Rosen against James F. Kahlenberg awarding damages for infringement of a patent covering a "Precision Pump."1 We reverse.
Prior to obtaining the patent in suit, Rosen invented a "Filling Machine" for high-speed filling of vials, ampoules, and small containers, for which United States Patent No. 2,807,213 was issued on September 24, 1957. To achieve more precise control in filling the containers, Rosen made certain improvements and sought another patent. In this connection a series of claims by Rosen was rejected by the Patent Office for lack of new invention. Finally, his eleventh claim was approved by the Patent Office, and United States Patent No. 2,907,614 issued on October 6, 1957. Kahlenberg, a competitor in the field of volumetric filling machines, manufactured pumps similar to the ones patented by Rosen.
On December 7, 1966, Rosen filed this suit against Kahlenberg, alleging infringement of Patent No. 2,907,614. The District Judge, after an extensive hearing, issued findings of fact and conclusions of law on December 18, 1970, D.C., 337 F.Supp. 1075, upholding the validity of the Rosen patent and finding infringement by the Kahlenberg pump. Further hearings on damages led to final judgment for $16,997 against Kahlenberg.
Our decision is based on two principal considerations. First, we hold that the accused Kahlenberg pump does not fall literally within the terms of the claim of the Rosen patent. Second, Rosen cannot prevail under the doctrine of equivalents, because an examination of the prior art as well as the file wrapper in the Rosen patent file convinces us that the doctrine is inapplicable.
Article I, section 8, clause 8 of the Constitution authorizes Congress "To promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries." Under this authority Congress requires the applicant for a patent like the one in the present case to include a claim pointing out the subject matter of the invention, specifications explaining the process of making and using it, and drawings illustrating the invention. 35 U.S.C. §§ 111-113 (1971). The claim circumscribes the rights of the patent much like a description in a deed limits the boundaries of property. McClain v. Ortmayer, 141 U.S. 419, 425, 12 S.Ct. 76, 78, 35 L.Ed. 800 (1891); Koykka, Infringement of Patents, 42 F.R.D. 43, 44 (1968). The specifications and drawings may be consulted to help interpret the claim. Permutit Co. v. Graver Corp., 284 U.S. 52, 60, 52 S.Ct. 53, 55, 76 L.Ed. 163 (1931); Bates v. Coe, 98 U.S. 31, 38, 25 L.Ed. 67, 71 (1878); Autogiro Co. v. United States, 181 Ct.Cl. 55, 63-64, 384 F.2d 391, 397-398 (1967).
The claim reads as follows:
A pump assembly in which a piston is adapted to reciprocate within a cylinder for pumping fluids comprising, a cylinder, means at one end of the cylinder through which the fluid is received and discharged, the other end of the cylinder having an opening for slidably receiving a piston rod which extends partly within and without the cylinder, said piston rod comprising an inner rod member and an outer sleeve member, the inner rod member having fixed to its end within the cylinder the innermost end of a piston, the opposite end of the piston comprising a bushing having a central aperture slidably receivable over the inner piston rod member, each piston end being slightly less in diameter than the inner diameter of the cylinder, a shoulder fixed inwardly from the fixed innermost end of the piston and about the end of the inner piston rod adjacent the fixed end of the piston and of larger diameter than the piston rod for receiving a plurality of elastic compression rings in which at least the center rings are of V cross-sectional form with flat side surfaces, the rings being of such width as to fill the space between the shoulder and the inner surface of the wall of the piston, the bushing end of the piston having a recess in its surface adjacent the shoulder for receiving a portion of the shoulder adjacent thereto to allow the bushing to be moved inwardly over the shoulder for a predetermined distance against the compression rings without interference from the shoulder, the sleeve member of the piston rod telescoping the inner rod member from the slidable bushing end of the piston to a point without the piston adjacent the outer end of the inner rod member having its end within the cylinder abutting the surface of the bushing end of the piston about the aperture and opposite the compression rings, the outer end of the inner piston rod member beyond the opening in the cylinder being provided with an external thread and the outer end of the sleeve piston rod member beyond the opening in the cylinder being provided with an internal thread for threadably receiving the threaded end of the inner rod member for fixing the two piston rod members relative to each other and means for locking the two piston rod members in adjusted position, whereby by adjusting the sleeve member relatively to the inner member the sleeve member moves the bushing end of the piston relative to the fixed end of the piston for regulating the pressure on the compression rings and means on the outer end of the inner piston rod member for connecting the same to a crank mechanism.
The pertinent drawings (as explained in the specifications2) are shown as follows:
COPYRIGHT MATERIAL OMITTED
To identify the parts essential for our discussion, we note that the claim describes an assembly with a piston composed of plastic V-shaped rings with holes in the center like doughnuts (numbered 36, 38, 40, and 54 in figures 3 and 6) enclosing a circular metal shoulder (numbered 56). The rings are sandwiched between two metal plates (numbered 32 and 34). Because the shoulder does not extend from the upper plate all the way down to the lower plate, there is a recess beneath the shoulder (visible in figure 3). A rod (numbered 44 in figures 2, 3, 4, and 5) extends from the shoulder down to any crankshaft which may be used to generate the reciprocating up and down motion of the piston within the cylinder. This rod is surrounded by an outer sleeve which extends from the lower plate down to a threaded nut (numbered 48 in figures 2 and 5). By turning the nut, the sleeve is pushed up or pulled down to adjust the compression on the rings. The purpose of this compression, according to the specifications and testimony in the record, is to enlarge the diameter of the rings by an external adjustment and thereby seal any leaks without dismantling the assembly.
Kahlenberg contends that there are two differences between his pump and the Rosen pump shown in the drawing. First, whereas Rosen's lower metal plate in the piston is concave so as to slide up over the shoulder when the nut is tightened, Kahlenberg's lower metal plate is flat so it only moves up to the bottom of the shoulder rather than over it. The following drawings graphically illustrate the first contention:
Second, Rosen's sleeve is fastened to the threaded nut. Kahlenberg's sleeve is not fastened to the threaded nut, so the sleeve may be pushed up by turning the nut but cannot be pulled down by turning the nut, as shown on the following drawings:
The District Judge referred to the language of Rosen's claim and decided that the claim described Kahlenberg's pump despite these differences between Rosen's drawing and Kahlenberg's pump.
With respect to the first difference, the claim speaks about "the bushing end of the piston having a recess in its surface adjacent the shoulder for receiving a portion of the shoulder adjacent thereto to allow the bushing to be moved inwardly over the shoulder for a predetermined distance against the compression rings without interference from the shoulder." Rosen contended in the District Court that the term bushing means not just the lower metal plate but also the portion of the compression rings surrounding the rest of the recess below the shoulder, as demonstrated by the darkened areas in the following drawings of both pumps.3 Through this definition Rosen's claim does cover Kahlenberg's pump. It has a recess in the bushing end of the piston, and the bushing moves inwardly over the shoulder.4
This definition, however, is inconsistent with the use of the word bushing elsewhere in the claim. In the above passage the bushing is said to move against the compression rings, so the bushing must be something other than the compression rings.5 Also, the passage does not merely state that the bushing end has a recess; rather, it states that the bushing end has a recess in its surface, namely, in the surface of the metal plate. Kahlenberg's pump has no recess in any surface.
In an earlier part of the Rosen claim, the lower end of the piston is said to comprise a bushing; it does not say that the lower end is part of a bushing. Then the claim states that both the upper and lower piston ends are slightly less in diameter than the inner diameter of the cylinder, whereas the compression rings are said to fill the space between the shoulder and the inner surface of the wall of the piston; thus the bushing has a diameter different from the diameter of the compression rings.
To make certain that the word bushing does not include the compression rings, we examined the terminology in the prior rejected claims in the Rosen application to the Patent Office. The antecedent claim nine6 thereof reads essentially like the approved claim, but...
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