Slimfold Mfg. Co., Inc. v. Kinkead Industries, Inc.

• Decision Date: 21 January 1987
• Docket Number: No. 86-830,86-830
• Citation: 1 USPQ2d 1563,810 F.2d 1113
• Parties: , 1 U.S.P.Q.2d 1563 SLIMFOLD MANUFACTURING COMPANY, INC., Plaintiff-Appellee, v. KINKEAD INDUSTRIES, INC. and United States Gypsum Company, Defendants- Appellants. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1113

810 F.2d 1113

55 USLW 2423, 1 U.S.P.Q.2d 1563

SLIMFOLD MANUFACTURING COMPANY, INC., Plaintiff-Appellee, v. KINKEAD INDUSTRIES, INC. and United States Gypsum Company Defendants- Appellants.

Appeal No. 86-830.

United States Court of Appeals Federal Circuit.

Jan. 21, 1987.

Donald Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued for defendants-appellants. With him on the brief was Thomas H. Jenkins. Also on the brief were Frank Love, Jr. and James W. Hawkins, Powell, Goldstein, Frazer & Murphy, Atlanta, Ga., of counsel. Patrick H. Henry, Atlanta, Ga., of counsel.

Robert E. Richards, Jones & Askew, Atlanta, Ga., argued for plaintiff-appellee. With him on the brief was Anthony B. Askew.

Before NEWMAN, Circuit Judge, MILLER, Senior Circuit Judge, and ARCHER, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

Kinkead Industries, Inc. and United States Gypsum Co. (together "Kinkead" herein) appeal the decision of the United States District Court for the Northern District of Georgia, Atlanta Division ¹, denying Kinkead's motion for summary judgment of non-infringement of claims 1 through 3 of Patent No. Re. 31,553 ("the Ford reissue") owned by Slimfold Manufacturing Company, Inc. ("Slimfold"). Appeal was taken pursuant to 28 U.S.C. Sec. 1292(b), by order of the district court dated December 24, 1985 and petition to this court granted on January 15, 1986. We affirm.

Background

Reference is made to the district court's published decisions for the history of this action, which dates from 1978, when Slimfold sued Kinkead for infringement of U.S. Patent No. 3,810,274 ("the '274 patent"), invention of Ford et al., which issued on May 14, 1974 and was assigned to Slimfold.

During the infringement suit Slimfold was ordered by the court, on motion of Kinkead, to submit the '274 patent to reissue proceedings before the Patent and Trademark Office. Slimfold complied, and Kinkead participated in the proceeding by filing a "protest" whereby Kinkead brought various references and arguments to the attention of the examiner. The examiner held all four claims patentable on the merits of the references and arguments, but rejected claims 1 through 3 as vague and indefinite in terms of 35 U.S.C. Sec. 112 paragraph 2 because of the absence of an antecedent to the claim term "collar". After arguing unsuccessfully as to the need for such a change, Slimfold added the emphasized words as illustrated in claim 1:

1. In a metal door assembly:

a door panel comprising a face sheet,

a stiffening channel secured to one surface of said sheet along an edge thereof, said channel having a pair of spaced apart flanges extending outwardly from said surface and a connecting web,

a pivot rod assembly mounted in said channel,

said assembly comprising an elongated plastic sleeve extending through corresponding openings in said figures,

a collar on said sleeve,

sleeve retaining means operatively arranged between said sleeve and said channel to retain said sleeve in said channel,

a pivot rod having a shank portion positioned in said sleeve and slidable therein and an enlarged head portion,

a compression spring operatively arranged between said channel and said head portion for urging said head portion away from said channel,

and releasable latch means operatively arranged between said head portion and said sleeve for releasably retaining said head in a retracted position adjacent said collar.

The '274 patent was reissued on April 17, 1984 with this addition to claims 1 through 3.

Kinkead then moved the court for summary judgment of non-infringement, on the basis that (1) reissue claims 1 through 3 were not identical to those in the original '274 patent, as required by 35 U.S.C. Sec. 252 paragraph 1 ², and therefore Slimfold could not recover for infringement prior to the issue date of the Ford reissue, and (2) Kinkead's doors did not infringe claim 4.

The district court held that the change in claims 1 through 3 did not change their substantive scope, and observed that claim 4 was not changed at all. ³ Thus the district court held that "claims 1-4 of the '274 patent survived in essentially identical form in the Ford patent", 626 F.Supp. 499, 229 USPQ 302. The question before us is whether the district court correctly applied 35 U.S.C. Sec. 252 when it held that Kinkead did not acquire, because of the subsequent change to these claims on reissue, the right to have practiced the invention of claims 1 through 3 before reissue.

Analysis

The thrust of Kinkead's argument is that "identical" as used in Sec. 252 requires the strictest construction, and means that no change whatsoever in claim words or meaning is made on reissue. Kinkead argues alternatively that, should a less stringent standard be adopted, claims 1 through 3 of the Ford reissue do not meet any reasonable interpretation of the word "identical" because the change in the claims is substantive.

In support of its construction of the word "identical", Kinkead refers to the legislative history of the reissue statute and reminds us that prior to 1928 one could not recover for past infringement of a reissued patent even if the claims were unchanged. S.Rep. No. 579, 70th Cong., 1st Sess. 1 (1928); Abercrombie & Fitch Co. v. Baldwin, 245 U.S. 198, 209-10, 38 S.Ct. 104, 107-08, 62 L.Ed. 240 (1917); Luminous Unit Co. v. Freeman-Sweet Co., 3 F.2d 577, 579 (7th Cir.1924). Although the 1928 amendment expressly overruled this interpretation, and authorized the reissue of patents to correct errors while enabling recovery for past infringement of claims "identical" to those in the original patent, R.S. 4916, amended May 24, 1928, Pub.L. No. 501, 45 Stat. 732 (codified at 35 U.S.C. Sec. 64 (1946)), Kinkead argues that, in view of the law prior to amendment, this expansion of rights should be narrowly construed.

"Identical" has consistently been interpreted as not excluding minor word changes. See, e.g., Austin v. Marco Dental Prod., Inc., 560 F.2d 966, 973, 195 USPQ 529, 534 (9th Cir.1977), cert. denied, 435 U.S. 918, 98 S.Ct. 1477, 55 L.Ed.2d 511, 197 USPQ 448 (1978) (no intervening rights when claims are "substantially identical"); Akron Brass Co. v. Elkhart Brass Mfg. Co., 353 F.2d 704, 708-09 & n. 5, 147 USPQ 301, 304, 305 n. 5 (7th Cir.1965) (substitution of "outlet" for "inlet" found not to be a substantial change); Richmond Eng'g Co. v. Bowser, Inc., 264 F.2d 595, 597-98, 120 USPQ 508, 509-10 (4th Cir.1959) (despite rephrasing and rearrangement of elements of claim, "scope of the [reissue] claims [was] substantially identical"); Foxboro Co. v. Taylor Instrument Cos., 157 F.2d 226, 228, 70 USPQ 338, 340 (2d Cir.), cert. denied, 329 U.S. 800, 67 S.Ct. 494, 91 L.Ed. 684 (1946) ("identical" interpreted to mean "substantially identical"); Greer Hydraulics, Inc. v. Rusco Indus., Inc., 185 USPQ 83, 85 (C.D.Cal.1974) (no intervening rights because claims found "substantially identical" to those in original patent despite correction of spelling, clarification of language, and addition of word "activation" to conform to earlier reference in claim); General Plastic Corp. v. Finkelstein, 145 F.Supp. 862, 863-64, 110 USPQ 192, 193 (E.D.Pa.1956) (claim held "identical" because substitution of "generally U-shaped" for "inverted V-shaped" stated what was implied).

In essence, courts have held that it is the scope of the claim that must be identical, not that the identical words must be used. In Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed.Cir.1984), the court held it unnecessary to define "identical" as applied to that case, but expressed the view that it means "at most, without substantive change." Id. at 827-28, 221 USPQ at 575 (emphasis in original). In Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 977 (Fed.Cir.1986) this court discussed section 252 as applied to reexamination, and held that " 'identical' within the meaning of Sec. 252 first paragraph, means 'without substantive change' ".

Courts have rejected the theory that any word change whatsoever would ipso facto deprive a reissue claim of its original issue date and thereby allow a person to avoid liability for infringement because of technical corrections to the claims. This is consistent with the purpose of the reissue statute:

The reissue provisions of the Patent Act of 1952, like the reissue provisions of the earlier patent statutes are remedial in nature. They are based on fundamental principles of equity and fairness and should be so applied to the facts in any given case that justice will be done both to the patentee and to the public.

In re Willingham, 282 F.2d 353, 354-55, 127 USPQ 211, 214 (CCPA 1960). The standard applied is that of whether a particular change to the claims is substantive, such that the scope of the claims is no longer substantially identical. It is a reasonable standard, for it implements the purpose of the statute while enabling application "to the facts in any given case that justice will be done". Id.

Kinkead's position, before the district court and on this appeal, is that the change to claims 1 through 3 was substantive. Kinkead points to the examiner's insistence during the reissue proceedings that the lack of antecedent basis for "said collar" caused claims 1 through 3 to be "vague and indefinite". The examiner stated that it was "impossible to determine whether 'said collar' is or is not an element ... and, if it is, how it relates to other elements". Indeed, Slimfold was not able to dissuade the examiner from this view, in which Slimfold acquiesced when it inserted the antecedent clause "a collar on said sleeve".

The district court, after careful analysis of judicial holdings on the point, see 626 F.Supp. at 496-98, 229 USPQ at 300-01, held that the amendment to provide an antecedent basis for "said collar" did not change the substantive scope of the claims.

Kinkead argues that the district court erred because the amendment...