Tol-O-Matic, Inc. v. Proma Produkt-Und Marketing Gesellschaft m.b.H., TOL-O-MATI

• Decision Date: 26 September 1991
• Docket Number: TOL-O-MATI,Nos. 90-1153,90-1165,INC,PRODUKT-UND,s. 90-1153
• Citation: 945 F.2d 1546,20 USPQ2d 1332
• Parties: , Plaintiff/Cross-Appellant, v. PROMAMARKETING GESELLSCHAFT m.b.H. and Norgren Co., Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1546

945 F.2d 1546

20 U.S.P.Q.2d 1332

TOL-O-MATIC, INC., Plaintiff/Cross-Appellant, v. PROMA PRODUKT-UND MARKETING GESELLSCHAFT m.b.H. and Norgren

Co., Defendants-Appellants.

Nos. 90-1153, 90-1165.

United States Court of Appeals, Federal Circuit.

Sept. 26, 1991.

John M. Mason, Dorsey & Whitney, Minneapolis, Minn., argued for plaintiff/cross-appellant. With him on the brief were James H. Patterson, Richard C. Strasser and Peggy L. Hicks, of counsel.

George G. Matava, Sheridan, Ross & McIntosh, Denver, Colo., argued for defendants-appellants. With him on the brief were Craig C. Groseth and Todd P. Blakely.

Before NEWMAN and RADER, Circuit Judges, and SKELTON, Senior Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

This appeal is taken from the judgment of the United States District Court for the District of Colorado, holding claims 25-31 of the patent in suit invalid for lack of utility, unenforceable based on inequitable conduct, and not infringed. ¹ The judgment of unenforceability and invalidity are reversed. The judgment of noninfringement is affirmed.

The Patented Invention

Proma Produkt-Und Marketing Gesellschaft m.b.H. is the owner of United States Patent No. 4,664,020, invention of Siegmund Kaiser (the "Kaiser patent"). Norgren Company is the exclusive licensee under the patent. (The appellants will collectively be called "Proma".)

The Kaiser patent is directed to a rodless piston-cylinder. In rodless cylinders, an internal piston is driven by pneumatic or hydraulic pressure applied to one end of the cylinder. This piston is connected to a rib that extends through a slit that runs the length of the cylinder. In use, the rib is connected to an external load; when the piston is driven toward the opposite end of the cylinder, the load is moved. If the slit through which the rib passes is not maintained in a sealed condition, air or hydraulic fluid leaks from the cylinder and pressure is lost. As Kaiser discussed in the patent, the integrity of the slit seal can be compromised in two principal ways: internal pressure from within the cylinder may widen the slit; or the external load may drive the rib against one side of the slit, also causing widening.

In the Kaiser device, longitudinal grooves run the length of the cylinder wall, parallel to and located on either side of the slit. To the rib is attached a yoke that spans the slit and moves on guides along the grooves on the cylinder. As the rib and yoke move along the cylinder, forces tending to widen the slit are counteracted by the yoke "squeezing" the slit. Figure 2 of the Kaiser patent shows yoke (11) riding in grooves (16) on the outside of the cylinder:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Claim 25 was designated by the parties as representative of claims 25-31, the only claims that were litigated:

25. Piston-cylinder structure having an elongated tubular structure closed at its end; an elongated piston slidable in the cylinder;

a slit extending through the wall of the cylinder longitudinally with respect to its axis;

a motion transfer element secured to the piston and having a rib-like portion extending through said slit and to the outside of the cylinder wall movable longitudinally of the cylinder to transfer relative motion between the piston and the cylinder to an external device;

and means for flexibly sealing and closing off the slit in the cylinder in the regions between the closed ends thereof and the rib-like portion of the motion transfer element to seal the piston in portions of the cylinder and define closed cylinder chambers therein, wherein the motion transfer element includes a yoke extending laterally over the cylinder at the outside thereof;

interengaging guide track--guide element means are provided on the cylinder and the yoke of the motion transfer element, respectively, positioned at the outer surfaces of the cylinder between an end surface of the cylinder spanned by said yoke, and a transverse axis of symmetry of the cylinder to provide for lateral support of the portions of the cylinder separated by the slit and spanned by the yoke;

and

wherein the interengaging guide track--guide element means comprises guide grooves and guide strips matching, in cross section, the shape of the guide tracks.

The issues of infringement and utility turned on application to the accused structure of the emphasized words of the penultimate claim clause, which in turn required determination of the meaning to be given to these words in the context in which they are used. Trial was to a jury. Judgment on some issues was entered on special verdicts, and for some issues the district court decided the ultimate question based on the jury's answers to interrogatories.

Standard of Review

The standard of appellate review, upon denial or grant of judgment n.o.v., is whether in light of all the evidence and on correct instructions of law, a reasonable jury could have reached the verdict reached by this jury. Upon motion for judgment n.o.v., and on appellate review, the court will disturb the verdict "only if the evidence so conclusively favors [the moving party] that reasonable jurors could not arrive at a contrary verdict." Krause v. Dresser Industries, Inc., 910 F.2d 674, 677 (10th Cir.1990). ² See also, e.g., Rainbow Travel Service, Inc. v. Hilton Hotels Corp., 896 F.2d 1233, 1241 (10th Cir.1990); Sun Studs, Inc. v. ATA Equipment Leasing, Inc., 872 F.2d 978, 982, 10 USPQ2d 1338, 1341 (Fed.Cir.1989). Thus the appellate court reviews the evidence in order to determine whether there was substantial evidence in support of the jury's verdict. Kitchens v. Bryan County National Bank, 825 F.2d 248, 251 (10th Cir.1987); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1571, 1 USPQ2d 1081, 1084-85 (Fed.Cir.1986). Substantial evidence is such relevant evidence, in the record as a whole, as might be accepted by a reasonable mind as adequate to support the verdict under review. Quaker City Gear Works, Inc. v. Skil Corp., 747 F.2d 1446, 1454-55, 223 USPQ 1161, 1166-67 (Fed.Cir.1984), cert. denied, 471 U.S. 1136 (1985). The jury's verdict must stand unless the evidence is of such quality and weight that reasonable persons in the exercise of impartial judgment could not have returned that verdict. Zimmerman v. First Federal Savings & Loan Assoc., 848 F.2d 1047, 1051 (10th Cir.1988) ("we may find error only if the evidence points one way and is susceptible to no reasonable inferences supporting the party for whom the jury found"); Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1052 (Fed.Cir.), cert. denied, 484 U.S. 827, 108 S.Ct. 95, 98 L.Ed.2d 56 (1987).

Infringement

Proma asserts that the jury, in order to have reached its verdicts of noninfringement and non-utility, necessarily interpreted the claim words "to provide for lateral support of the portions of the cylinder separated by the slit and spanned by the yoke" as meaning that the yoke must prevent all widening of the slit during use, when the widening is due to internal pressure. Tol-O-Matic agrees with this view of the jury verdict; indeed, this is the position Tol-O-Matic pressed at trial. Proma states that this claim interpretation is incorrect, and that the claim as correctly interpreted requires only some degree of resistance to slit widening due to either internal pressure or side loading. Proma requests that this court correctly interpret the claim, and either remand for a new trial on our corrected claim interpretation, or hold that infringement must be found on the corrected claim interpretation and the undisputed facts.

The interpretation of claims is defined as a matter of law based on underlying facts. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037, 4 USPQ2d 1450, 1452-53 (Fed.Cir.1987); Tandon Corp. v. United States International Trade Commission, 831 F.2d 1017, 1021, 4 USPQ2d 1283, 1286 (Fed.Cir.1987); Howes v. Medical Components, Inc., 814 F.2d 638, 643, 2 USPQ2d 1271, 1273 (Fed.Cir.1987); Moeller v. Ionetics, Inc., 794 F.2d 653, 656, 229 USPQ 992 994 (Fed.Cir.1986). Interpretation of the claim words "provide for lateral support" required that the jury give consideration and weight to several underlying factual questions, including in this case the description of the claimed element in the specification, the intended meaning and usage of the claim terms by the patentee, what transpired during the prosecution of the patent application, and the technological evidence offered by the expert witnesses. When the meaning of a term in a patent claim is unclear, subject to varying interpretations, or ambiguous, the jury may interpret the term en route to deciding the issue of infringement. The jury's verdict of noninfringement is reviewed, in accordance with the rules governing review of jury determinations, to ascertain whether reasonable jurors could have interpreted the claim in a way that supports the verdict. Snellman v. Ricoh Co., Ltd., 862 F.2d 283, 288, 8 USPQ2d 1996, 1999-2000 (Fed.Cir.1988), cert. denied, 491 U.S. 910, 109 S.Ct. 3199, 105 L.Ed.2d 707 (1989) (substantial evidence supported jury's apparent claim interpretation, in view of expert testimony and the language of the specification), Vieau v. Japax, Inc., 823 F.2d 1510, 1515-17, 3 USPQ2d 1094, 1098-99 (Fed.Cir.1987) (reviewing trial evidence and testimony to determine whether a reasonable juror could have reached certain special verdicts interpreting disputed claim language); Data Line Corp. v. Micro Technologies, Inc., 813 F.2d 1196, 1200-02, 1 USPQ2d 2052, 2054-56 (Fed.Cir.1987) (reviewing evidence on reasonable jury standard, rejecting argument that trial court was required to determine the scope and construction of the claim); Palumbo v. Don-Joy Co., 762 F.2d 969, 974, 226 USPQ 5, 8 (Fed.Cir.1985) (when meaning of a claim term is disputed "then an underlying factual question arises, and construction of the claim should be...