Slimfold Mfg. Co., Inc. v. Kinkead Properties, Inc., Civ. A. No. C78-1798A.

• Decision Date: 25 July 1985
• Docket Number: Civ. A. No. C78-1798A.
• Citation: 626 F. Supp. 493,229 USPQ 298
• Parties: SLIMFOLD MANUFACTURING COMPANY, INC., Plaintiff, v. KINKEAD PROPERTIES, INC. and United States Gypsum Company, Defendants.
• Court: U.S. District Court — Northern District of Georgia

626 F. Supp. 493

229 USPQ 298

SLIMFOLD MANUFACTURING COMPANY, INC., Plaintiff, v. KINKEAD PROPERTIES, INC. and United States Gypsum Company, Defendants.

Civ. A. No. C78-1798A.

United States District Court, N.D. Georgia, Atlanta Division.

July 25, 1985.

Jones & Askew, Robert E. Richards, Atlanta, Ga., for plaintiff.

Patrick F. Henry, Sr., Frank Love, Jr., James Hawkins, Atlanta, Ga., Robert H. Robinson, U.S. Gypsum Co., Chicago, Ill., for defendants.

ORDER

FORRESTER, District Judge.

This patent infringement action is before the court on defendants' motion for summary judgment. The past history of this litigation is set out in detail in the court's order of November 19, 1984. Slimfold Manufacturing Co. v. Kinkead Products, Inc., 600 F.Supp. 1015 (N.D.Ga.1984).

THE REISSUED PATENT

Plaintiff commenced this action on October 20, 1978, alleging that the defendants had infringed United States Patent No. 3,810,274 (hereinafter referred to as the '274 patent). The '274 patent was issued to plaintiff on May 14, 1974, and pertains to a "Pivot and Guide Rod Assembly for Bi-Fold Door." Defendants moved early in this litigation to compel plaintiff to submit to a reissue proceeding pursuant to 35 C.F.R. §§ 251. Judge Robert Hall granted the motion of the defendants, and plaintiff was compelled to submit to reissue proceedings.

On April 17, 1984 the PTO reissued the '274 patent as United States Patent No. 31,553 (hereinafter referred to as the "Ford patent"). The Ford patent contains claims almost identical to the claims contained in the '274 patent except for the addition of one element in claim 1 of the patent required by the examiner as a condition for reissuance. The examiner noted in the course of the reissue proceedings that claims 1-3 would be rejected as vague and indefinite since no antecedent basis was present for the term "said collar" in the last line of claim 1.¹ The examiner pointed to the second paragraph of 35 USC § 112 requiring claims "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention," and required that claim 1 be amended to provide an antecedent basis for the recitation of "said collar." The requirements of 35 USC § 112 are stated specifically in 37 CFR § 1.75(d)(1):

The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the descriptions so that the meaning of the terms in the claims may be ascertainable by reference to the description.

One commentator has described this particular requirement as follows.

A foundation or an antecedent basis must be laid for each element recited. This can be done, usually in the preamble, by introducing each element with the indefinite article ("a" or "an"). Subsequent mention of the element is to be modified by the definite article or by "said" or by "the said," thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.

P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d Ed.1984).

In accordance with this practice, claim 1 was amended prior to reissuance, and the phrase "a collar on said sleeve" was added so that the collar clearly appears as an element in the claim.

This action is now before the court on the defendants' first motion for summary judgment which asks the court to hold that defendants' bi-fold door assembly does not infringe plaintiff's patented invention. Summary judgment is appropriate only if "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed.R. Civ.P. 56(c). The moving party bears the burden of demonstrating that there is no dispute as to a material fact. Warrior Tombigbee Transportation Co., Inc. v. M/V Nan Fung, 695 F.2d 1294, 1296 (11th Cir.1983). As the Court of Appeals for the Federal Circuit has noted,

Many, if not most, suits for patent infringement give rise to numerous and complex fact issues, rendering those suits inappropriate for summary disposition. Where no issue of material fact is present, however, courts should not hesitate to avoid an unnecessary trial by proceeding under Fed.Rule Civ.P. 56 without regard to the particular type of suit involved.

Chore-Time Equipment v. Cumberland Corp., 713 F.2d 774, 778-79 (Fed.Cir.1983). With this standard and guidance in mind, the court will consider the grounds for defendants' motion for summary judgment as to each of the claims of the `274 patent and the Ford patent which are allegedly infringed by defendants' doors.

THE EFFECT OF THE REISSUE PATENT

Defendants' first argument in support of summary judgment hinges on the effect of the reissued patent upon the original patent. Defendants allege that the `274 patent cannot be infringed because it was surrendered upon the issuance of the Ford patent on April 17, 1984. In light of the fact that defendants have not manufactured or caused to be manufactured any bi-fold doors since January 3, 1980, defendants argue that they cannot be said to have infringed the Ford patent. The first paragraph of 35 USC § 252 sets out the effect of a reissued patent upon the original patent:

The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but insofar as the claims of the original and reissued patents are identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.

It is the defendants' contention that the alteration made in claims 1-3 when the plaintiff provided an antecedent basis for the phrase "said collar" in claim 1 renders these claims changed for the purposes of 35 USC § 252. Defendants argue that this alteration broadened claims 1-3, and that these claims in the Ford patent are not identical with the same claims in the `274 patent.

A determination of whether claims 1-3 in the `274 patent continue in effect for the purposes of plaintiff's suit for infringement requires an interpretation of the word "identical" in 35 USC § 252. This problem of interpretation arose recently in a patent infringement action involving shipping bundles for oil pipe lengths. Seattle Box Co. v. Industrial Crating and Packing, Inc., 731 F.2d 818 (Fed.Cir.1984). The patent holder amended a claim in the reissue patent by adding the words "substantially equal to" to the words "greater than" when describing the height of spacer blocks in the shipping bundles when compared to the diameter of the pipe lengths. Id. at 822. While the court refused to decide exactly what "identical" means in 35 USC § 252, it stated that "it is clear, though, that `identical' means, at most, `without substantive change.'" Id. at 827-28. It was the opinion of the court that the addition of the words "substantially equal to" made a substantive change in the plaintiff's claims, and was not merely a clarification of language intended to make specific what was always implicit or inherent. Id.

This approach to the meaning of section 252 finds support in other cases. In Johnston v. Textron, 579 F.Supp. at 783, 790-93 (D.R.I.1984) the same "substantial change" standard was used. That case involved the alleged infringement of a patented slide clasp which served as a coupling device. During the prosecution of the plaintiff's reissue application, certain limitations were added to one of the claims. In particular, the reissued patent was narrowed by requiring that the outer holding member consist of a single piece of folded metal "folded on itself." The original claim regarding the outer holding member did not require that it consist of a single piece of metal. Id. at 789-90. This change and others like it convinced the court that the reissued claims were not substantially identical to that of the original patent.

In these two cases the substantive changes in the scope of claims in a reissued patent rendered the plaintiff vulnerable to a defense of intervening rights. Contrasting cases involve a modification of the wording of a claim so as to "clarify and make more precise the language used without substantive changes in the claims. The doctrine of intervening rights is inapplicable where claims of a reissued patent are substantially identical to those of original patent." Austin v. Marco Dental Products, Inc., 560 F.2d 966, 973 (9th Cir.1977), cert. denied, 435 U.S. 918, 98 S.Ct. 1477, 55 L.Ed.2d 511 (1978) (citations omitted). Such modifications can take the form of a correction of an error in the original claim which was not misleading. For example, in Akron Brass Co. v. Elkhart Brass Manufacturing Co., 353 F.2d 704 (7th Cir.1965), the court held that substitution of the word "outlet" for the word "inlet" was not a substantive change in the original claim in light of other language in the original claim which sufficiently disclosed the critical fact sought to be disclosed by substitution of the word "outlet." The court concluded that the claims in the original patent and reissued patent were essentially identical and that the corrections made did not "in any way enlarge or modify the substance of claim three as it appears in the original patent." Id. at 708.

Modification of language merely intended to eliminate ambiguity in the original claim is also permissible. For example, in a case involving a modification similar to that made in claims 1-3 of the Ford patent, the court found that the addition of a word to conform with reference to the word earlier in a claim was was not a change which rendered...