Utter v. Hiraga
| Decision Date | 28 April 1988 |
| Docket Number | No. 87-1531,87-1531 |
| Citation | 845 F.2d 993,6 USPQ2d 1709 |
| Parties | , 6 U.S.P.Q.2d 1709 UTTER, Appellant, v. HIRAGA et al., Appellees. |
| Court | U.S. Court of Appeals — Federal Circuit |
William M. Wesley, Neuman, Williams, Anderson & Olson, Chicago, Ill., argued for appellant. With him on the brief were Theodore W. Anderson, John J. Cavanaugh and Robert W. Fieseler.
Scott F. Partridge, Banner, Birch, McKie & Beckett, Washington, D.C., argued for appellees. With him on the brief were James A. Niegowski and Joseph M. Skerpon.
Before MARKEY, Chief Judge, NICHOLS, Senior Circuit Judge, and NIES, Circuit Judge.
Utter appeals from a decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (board), awarding priority of invention to Hiraga et al., the senior party, in Interference No. 101,068 ('068 interference). Hiraga moved to dismiss the appeal, saying an agreement between the parties precluded Utter from appealing the board's decision. We deny Hiraga's motion to dismiss and affirm the board's decision.
The contested invention involves scroll compressors. Scroll compressors, which are used in air conditioners, have two spirals interfitted with each other. One spiral is fixed, while the other orbits its center, compressing pockets of fluid by pushing them inward around the ever-narrower space between the spirals. In a "radially compliant" scroll compressor, the outer surface of the orbiting spiral meets the inner surface of the fixed spiral as it pushes the fluid pockets around.
In the late 1970's and early 1980's, Masaharu Hiraga and Kiyoshi Terauchi in Japan, Robert E. Utter in Wisconsin, and John E. McCullough et al. in Massachusetts, were working to solve two problems in radially compliant scroll compressor technology: (1) maintaining a constant force where the spiral surfaces meet, to seal the fluid pockets with minimal surface wear, and (2) eliminating vibration caused by centrifugal force on the orbiting spiral. Hiraga, Utter, and McCullough each found that a force constant at all operating speeds could be generated by connecting the orbiting spiral to its drive shaft in a particular geometric relationship, while offsetting centrifugal force with a counterweight.
On March 18, 1980, Hiraga filed a patent application in Japan, Serial No. 34,559/1980. On October 8, 1980, Utter filed in the PTO a patent application entitled "Scroll-Type Fluid Displacement Apparatus With Radially Compliant Driving Means," Serial No. 195,289. On March 18, 1981, claiming the benefit of his earlier Japanese application, Hiraga filed a United States patent application, Serial No. 244,961, entitled "Scroll-Type Fluid Displacement Apparatus With Balanced Drive Means." On April 3, 1981, McCullough filed patent application Serial No. 250,730, entitled "Compact Scroll-Type Fluid Compressor With Swing-Link Driving Means."
Utter's application disclosed two preferred embodiments, an "internal pivot" and an "external pivot" configuration. Hiraga disclosed the internal pivot as the preferred embodiment, and did not specifically disclose the external pivot. McCullough's application disclosed only the external pivot species.
On March 10, 1983, the examiner suggested that Hiraga add two claims for the purpose of interference. 37 C.F.R. Sec. 1.203(b) (1982). On July 8, 1983, the PTO declared three interferences. The '068 interference involved Hiraga, Utter and McCullough, and consisted of one generic count taken from claim 17 of Utter's application. Interference 101,069 ('069 interference), between Utter and McCullough, consisted of one count to the external pivot species within the scope of the generic '068 count. Interference 101,071 ('071 interference), between Hiraga and Utter, consisted of one count to the internal pivot species within the scope of the '068 count.
On April 3, 1984, the parties to the interferences entered into an "AGREEMENT" (1984 agreement) providing, in part:
WHEREAS, to avoid the delay and expense associated with formal interference proceedings in the [PTO] and in the Courts of the United States ..., the parties hereto, agree as follows:
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2. PROCEDURE
(a) [T]he attorneys for the parties to the respective interferences shall jointly make a conscientious effort to reach agreement as to the proper determination regarding priority and all other issues in said interferences....
(b) If the attorneys for the parties in any interference are unable to agree as to the proper determination of any issue or issues in such interference as contemplated in Paragraph 2(a) hereof, ... such disputed issue or issues shall be referred to and decided by a panel ( ...) of one or more neutral experts in the field of patent law, the decision of whom will be binding upon the parties with no further right of appeal.
The parties were unable to resolve among themselves the issues in the interferences. Accordingly, in June 1984, pursuant to p 2(b) of the 1984 agreement, they selected an arbitrator to decide disputed issues. They executed an addendum to the 1984 agreement, which provided that the arbitrator "shall act as the expert for deciding issues in the interferences constituting the subject matter of said agreement unless the parties mutually agree otherwise in writing."
On July 23, 1984, Utter filed in the PTO a preliminary motion under 37 C.F.R. Sec. 1.231(a)(1) (1984) to dissolve the '068 interference as to Hiraga (Motion I). Utter argued that Hiraga's application was specifically limited to the internal pivot construction, and so did not support the broad interference count, and that Hiraga had disclaimed the external pivot construction. On November 21, 1984, the Interference Examiner transmitted the motion to the Primary Examiner. The Primary Examiner denied it on March 11, 1985, saying Hiraga's disclosure of the internal pivot species supported the broad count, and that the evidence did not show Hiraga had disclaimed anything. On May 28, 1985, the Commissioner denied Utter's petition for review. See 37 C.F.R. Sec. 1.244 (1984).
In an October 23, 1985, decision, the arbitrator resolved some, but not all, of the issues in the interferences. Conditioned on the outcome of further proceedings, the arbitrator found that Hiraga was entitled to priority in the '068 and '071 interferences based on his Japanese filing date, and Utter was entitled to priority in the '069 interference. The arbitrator declined to decide some issues, including those raised in Utter's Motion I, saying:
It is the position of the arbitrator, agreed to by the parties, that certain matters (sometimes referred to as matters of patentability), are peculiarly within the province of the Patent Office for decision; and it is believed that in the present interferences, these matters are those which were transmitted to and upon which the Primary Examiner made his motion decisions. Accordingly, as to these matters, the arbitrator expresses no opinion, and they are being submitted to the Board at final hearing, to the extent that these matters are reraised by the parties.
The arbitrator concluded:
It is respectfully submitted by the arbitrator that the findings hereinafter set forth, together with such decision by the Board as may be made upon the matter of the Motions, will enable the Board to make the appropriate awards of priority in these interferences.
Each party stipulated that the arbitrator's findings were "binding and conclusive respecting the issue of priority rights," but "reserve[d] all rights" to submit arguments to the board "respecting all issues in these proceedings that are not resolved by the stipulated findings of [the arbitrator]."
The parties presented to the board the interference issues not resolved by the arbitrator. Utter argued, as he had in his Motion I, that Hiraga's application did not support the full scope of the '068 interference generic count, and that Hiraga had disclaimed the external pivot species within that count.
In a June 9, 1987 final decision, the board rejected Utter's arguments. The board said it had found no disclaimers in the record that "preclude[d Hiraga et al.] from being awarded priority as to the generic subject matter if they are found to be otherwise entitled thereto." The board said Hiraga did not have to limit his claims to the internal pivot configuration, in view of Hiraga's broadly stated "objects of the invention" and this statement in the specification:
This invention has been described in detail in connection with the preferred embodiments, but these are examples only and this invention is not restricted thereto. It will be easily understood by those skilled in the art that the other variations and modifications can be easily made within the scope of this invention.
The board said the prior art patents Hiraga cited, which disclosed external pivots, plus Hiraga's disclosure of the proper geometry and counterweight in his description of the internal pivot embodiment, "would have enabled one skilled in the art to incorporate this teaching into the [external pivot] embodiment." The board concluded:
The citation of the McCullough and other patents which employed the swing-link external pivot connection between the drive shaft and the scroll, the broadly recited objects and the specific description of the boss-bushing internal pivot are more than enough to support the generic claim here presented by Hiraga et al, which is merely silent as to the location of the pivot with respect to periphery of the boss. We hold that Hiraga et al have an enabling disclosure and written description of their claim which corresponds exactly to the '068 count.
The board further held that, because Hiraga's Japanese application disclosed an embodiment of the...
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