Vehicular Tech. Corp. v. Titan Wheel Inter.
| Decision Date | 22 May 2000 |
| Citation | 54 USPQ2d 1841,212 F.3d 1377 |
| Parties | (Fed. Cir. 2000) VEHICULAR TECHNOLOGIES CORPORATION, Plaintiff-Appellant, v. TITAN WHEEL INTERNATIONAL, INC., DYNEER CORPORATION, TRANSAMERICA AUTO PARTS COMPANY, INC., and LEON ROSSER AUTO SERVICE, INC., Defendants-Appellees. 99-1042 DECIDED: |
| Court | U.S. Court of Appeals — Federal Circuit |
Richard A. Killworth, Killworth, Gottman, Hagan & Schaeff, L.L.P., of Dayton, Ohio, argued for plaintiff-appellant. Of counsel on the brief were Ronald L. Johnston, James R. Farrand, and James S. Blackburn, Blanc Williams Johnston & Kronstadt, LLP, of Los Angeles, California.
Kent A. Herink, Davis, Brown, Koehn, Shors, & Roberts, P.C., of Des Moines, Iowa, argued for defendants-appellees. With him on the brief was Patricia L. Ades.
Before PLAGER, CLEVENGER, and RADER, Circuit Judges.
Opinion for the court filed PER CURIAM. Circuit Judge RADER concurs.
The United States District Court for the Central District of California granted the motion of Titan Wheel International, Inc., Dyneer Corp., Transamerica Auto Parts Co., Inc., and Leon Rosser Auto Service, Inc. (collectively Tractech) for summary judgment of non-infringement of U.S. Patent No. 5,413,015 (the '015 patent), assigned to Vehicular Technologies Corporation (PowerTrax). Because the comparable assembly in the accused E-Z Locker product contains a single spring and a plug, the district court found that it cannot, as a matter of law, infringe the patented double-spring assembly. Because the record supports the district court's judgment, this court affirms.
This court has previously addressed the issue of the spring limitation in the '015 patent in its earlier review of a preliminary injunction. See Vehicular Techs. v. Titan Wheel Int'l, Inc., 141 F.3d 1084, 46 USPQ2d 1257 (Fed. Cir. 1998) (Vehicular Tech.). As discussed in that decision, the '015 patent claims a locking differential for use in automobiles. The written description of the '015 patent set forth the basis for the invention:
[A] long-standing need has existed for a differential mechanism which permits assembly, maintenance and repair in both manufacture and installation to be as simple as possible so that the likelihood of problems is greatly reduced.
'015 patent, col. 1, ll. 45-49. In its review of the preliminary injunction, this court further explained the assembly problems addressed by the invention:
The spring-disk-pin design of the prior art created special installation problems. Many locking differentials are designed as after-market add-ons whose parts can be installed into an existing differential by a do-it-yourself backyard mechanic. However, there is very little space inside a differential to install all the parts. With the spring-disk-pin design, each small part had to be carefully inserted in the tight space between the drive plates and then repositioned, often using a prying tool and a hacksaw blade to hold the parts in place and the spring in a compressed position. The disks were particularly troublesome because they slid around on the end of the spring and often fell off or were lost during installation.
The '015 patent is directed toward an improved locking differential whose parts are easier to manufacture, install and maintain than those of prior art locking differentials. The application for the '015 patent, filed June 28, 1993, and listing John Zentmyer (Zentmyer) as the inventor, focused on three main improvements: (1) window openings in the outside rims of the drive plates, (2) newly designed spring assemblies that use two concentric coil springs and a pin rather than a spring-disk-pin grouping, and (3) spring passageways with oblong cross-sections.
Vehicular Tech., 141 F.3d at 1086. Claim 1 of the '015 patent, representative of the claims at issue, recites:
1. A differential mechanism comprising:
output means;
driving means in spaced relationship to said output means;
driven means operably responsive to said driving means for powering said output means;
said driven means having a pair of clutch driving members coaxially disposed with respect to each other and having opposing spaced-apart surfaces faces;
biasing means interposed between said driving surface faces comprising at least a pin in alignment with a spring assembly consisting of two concentric springs bearing against one end of said pin;
said springs and said pin in axial alignment disposed in an elongated passageway jointly provided in each of said pair of clutch drive members;
each of said clutch drive members has inspection and access openings communicating with said passageway so as to expose said springs and said pins respectively; and
said spring passageway is of oblong configuration in transverse cross-section.
'015 patent, col. 4, l. 65 to col. 5, l. 30
Tractech's accused device includes all of the claim limitations except the "spring assembly consisting of two concentric springs bearing against one end of said pin." Tractech has substituted a single spring and a plug fitting into the spring for this limitation. One surface of Tractech's plug bears against one end of the pin. Figure 5 from Tractech's U.S. Patent No. 5,715,733 shows the concentric spring feature of the '015 invention - represented as prior art in Tractech's later patent - and Figure 7 from that patent illustrates Tractech's accused device:
[Tabular or Graphical Material Omitted]
In the prior art device of Figure 5, spring 128 fits within spring 124 and the two springs compress against pin 126. In Tractech's accused device of Figure 7, plug 228 fits within spring 224. The smaller-diameter part of the plug, 228b, is held inside single spring 224 while the larger-diameter part of the plug, 228a, bears against pin 226.
The district court initially granted PowerTrax's motion for a preliminary injunction, finding that PowerTrax had shown a reasonable likelihood of success in proving Tractech's spring-and-plug assembly equivalent to the claimed spring assembly. See Vehicular Tech., 141 F.3d at 1089. In reaching the conclusion that the accused device "performs the same functions, in substantially the same way, and accomplishes the same results," the district court had determined the functions of the patented spring assembly. In addition to the function stated in the claim - providing a biasing force - the district court also identified the two additional functions of "through the windows installation" and "the elimination of the loose disks in the original Lock-Right product." Id. In fact, the patent's "summary of the invention" mentions one primary objective of the invention ("simplif[ying] both the manufacture and installation of component parts") and five other objectives that the trial court aptly summarized in its recitation of the three functions of the claimed invention.
On appeal, this court vacated the preliminary injunction. In its analysis of the role played by each limitation in the context of the claim, see Warner-Jenkinson Co. v. Hilton-Davis Chem. Co., 520 U.S. 17, 40 (1997), this court found an additional function of the claimed invention, beyond those found by the trial court, namely that of enhancing reliability. This additional function appeared within one of the five secondary objectives mentioned in the "summary of the invention" section of the '015 patent. Because this additional function is critical to this appeal, this court restates the references to this function in the specification of the patent:
SUMMARY OF THE INVENTION
. . . .
Another object of the present invention is to provide a differential mechanism wherein component parts of the assembly, such as clutch members, are joined together by a resilient means comprising a pair of oppositely-wound concentric springs bearing against a pin so that the strength of the spring and reliability of the resilient means are increased.
'015 patent, col. 2, ll. 14-20.
. . . .
[Because of the dual spring feature], should one spring break or become weakened, the mechanism will continue to function as the second spring will bear the load and prevent the broken spring from exiting the assembly.
Id., col. 4, ll. 26-29.
Thus, this court read the specification to endow the dual-concentric spring assembly with "the ability to stay centered on the end of the pin and to continue functioning" even when one spring breaks. See Vehicular Tech.,141 F.3d at 1091. This additional function - missing in the accused device on the basis of the preliminary injunction record - prevented this court from agreeing with the district court that PowerTrax had a reasonable likelihood of success on its claim of infringement under the doctrine of equivalents. Although an accused device could conceivably lack an insignificant function of a single claim limitation and still be only insubstantially different than the claimed invention, this court found that possibility unlikely in this case on the preliminary injunction record. See id. (). Thus, this court properly retained the focus on "whether the captured plug in the accused device can be a substantial equivalent to the claimed inner spring." Id. at 1089.
On remand, the district court, after hearing additional evidence, granted Tractech's motion for summary judgment. The trial court reasoned that "the patent contains unmistakable assertions disavowing all devices without a double-spring assembly." Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., No. SA CV 96-216 AHS (Eex), slip op. at 7 (C.D. Cal. Sept. 21, 1998). Further the trial court stated: "[T]he term 'consisting of' in the relevant claim language precludes the application of the...
To continue reading
Request your trial
-
E2interactive, Inc. v. Blackhawk Network, Inc.
...the claim-definitional portion of the infringement instruction, where appropriate. 2. "Comprising." Vehicular Techs. Corp. v. Titan WheelInt 7, Inc., 212 F.3d 1377,1382-83 (Fed. Cir. 2000). CollegeNet, Inc. v. Apply Yours elf, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005); Mars, Inc. v. H.J. H......
-
Pfizer Inc. v. Teva Pharmaceuticals Usa, Inc.
..."The phrase consisting of is a term of art in patent law signifying restriction and exclusion." See Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1382-83 (Fed.Cir.2000). In other words, "consisting of' means these-and-only-these-options. See Norian Corp. v. Stryker Corp.......
-
Engineered Products Co. v. Donaldson Co., Inc.
...granting such a motion "sets a high hurdle which th[e] court does not lightly attempt to surmount." Vehicular Techs. Co. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1381 (Fed.Cir.2000). Because the parties have filed cross-motions for summary judgment on the issue of infringement, the Court'......
-
Va. Innovation Scis., Inc. v. Samsung Elecs. Co.
...does not diminish the difficulty of the jury's task or the reasonableness of the defense.) (citing Vehicular Tech. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1381 (Fed.Cir.2000)). If a defense, which was ultimately rejected by the jury, can nevertheless be considered reasonable due to......
-
Proof of Equivalence After Festo
...be considered to be insubstantially changed from the claimed invention." Vehicular Technologies Corp. v. Titan Wheel International Inc., 212 F.3d 1377, 1382 (Fed. Cir. 2000). On the other hand, an accused device which lacks a non-critical function of a claim limitation could still be insubs......
-
Foreseeability Does Not Bar The Doctrine Of Equivalents, Including For Means-Plus-Function Limitations
...at *16-18 (W.D. Wash. Feb. 1, 2013). 11 126 F.3d 1420 (Fed. Cir. 1997). 12 See, e.g., Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1384 (Fed. Cir. 2000) (Rader, J., concurring); Johnson & Johnston Assocs., Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1056-59 (Fed. Cir. 20......
-
Chapter §2.02 Components of Patent Claims
...usage that 'consisting of' is closed-ended and conveys limitation and exclusion."); Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1382 (Fed. Cir. 2000) (stating that "[t]he phrase 'consisting of' is a term of art in patent law signifying restriction and exclusion, while,......