Velo-Bind, Inc. v. Minnesota Min. & Mfg. Co.
| Decision Date | 14 July 1981 |
| Docket Number | 79-4448 and 79-4584,Nos. 79-3338,VELO-BIN,INCORPORATED,s. 79-3338 |
| Citation | 211 USPQ 926,647 F.2d 965 |
| Parties | , a California Corporation, Plaintiff-Appellant, v. MINNESOTA MINING & MANUFACTURING COMPANY, a corporation; 3M Business Products Sales, Inc., a corporation; Ro-Bind Corporation, a corporation; Rally Industries, a corporation; and Joe D. Giulie, Defendants-Appellees., a California Corporation, Plaintiff-Appellee, v. MINNESOTA MINING & MANUFACTURING COMPANY, a corporation; 3M Business Products Sales, Inc., a corporation; Ro-Bind Corporation, a corporation, and Rally Industries, a corporation, Defendants-Appellants., a California Corporation, Plaintiff-Appellee, v. MINNESOTA MINING & MANUFACTURING COMPANY, a corporation; and 3M Business Products Sales, Inc., a corporation, Defendants-Appellants. |
| Court | U.S. Court of Appeals — Ninth Circuit |
James K. Haynes, Orrick, Herrington & Sutcliffe, San Francisco, Cal. (argued), for Velo Bind; Julian Caplan, Gregg, Caplan & Higgins, Menlo Park, Cal., on brief.
Carl Hoppe, Eckhoff, Hoppe, Slick, Mitchell & Anderson, San Francisco, Cal., Stanley G. DeLaHunt, St. Paul, Minn., for Minnesota Mining.
Appeal from the United States District Court for the Northern District of California.
Before DUNIWAY, SNEED and POOLE, Circuit Judges.
In No. 79-4448 appellants (hereinafter 3M) appeal from the district court's judgment, entered following a jury trial, finding that the 3M Model 1000 binding machine infringes three valid patents owned by Velo-Bind, awarding damages to Velo-Bind of $3,934,333 plus interest, and permanently enjoining 3M from infringing the patents. We affirm in part and reverse in part.
In No. 79-4584 3M further appeals from the district court's refusal to modify the injunction so as to specifically exempt 3M's proposed 1000DA binding machine from its terms. We affirm.
In No. 79-3338 Velo-Bind cross-appeals from the district court's refusal to award treble damages and attorney's fees. We affirm.
In 1966, William Abildgaard and Charles Groswith formed what is now Velo-Bind for the purpose of inventing a new system of binding books and documents. After several false starts, they succeeded in 1968 in inventing a strip binding machine. Simply stated, this machine forms a bind by placing on either side of the pages to be bound, and then compressing, a male plastic strip with nail-like studs and a female plastic strip with holes corresponding to the studs.
The machine which Velo-Bind eventually developed for sale joins the two strips to form a lasting bind through the use of a "hot knife" process. In this process, once the strips are pressed together with the studs from the male strip projecting through the holes in the female strip, a hot knife or shear cuts off the excess length of the studs leaving heat softened stud ends. These malleable ends are then deformed into rivets by the striking action of heading arms. The rivet heads quickly cool creating a permanent bind.
Desiring to manufacture and market its invention but short of capital, Velo-Bind entered into negotiations with 3M in 1971. When these negotiations ended without an agreement, Velo-Bind proceeded on its own, eventually manufacturing several models of its by then patented strip binder, all of which employed the hot knife system.
3M also proceeded on its own. In 1975, 3M began selling its Model 1000 binding machine. Although a strip binding machine similar in structure to Velo-Bind's, 3M's machine forms its bind by means of ratchet teeth on the studs of the male strip, engaged and held in place by friction-locking blocks in the female strip. Thus there is no need to heat the stud ends in order to form rivets, and the excess length of the studs is removed by a cold knife.
Velo-Bind brought suit claiming infringement of three of its patents claims 1, 2, and 3 of patent No. 3,608,117 for Machine for Binding and Punching Sheets (hereinafter the '117 patent); claims 1 and 7 of patent No. 3,756,625 for Method and Apparatus for Binding Books (hereinafter the '625 patent); and the design patented in patent No. DES 227,195 for Machine for Binding Books (hereinafter design '195). Because claims 2 and 3 of the '117 patent and claim 7 of the '625 patent are dependent upon claim 1 of their respective patents, and because the design patent concerns only the outward appearance of the machine and only $250 in damages, the two claim 1's became the focus of the litigation.
At trial Velo-Bind presented extensive testimony by an expert witness, Harris Zimmerman. 3M did not counter with an expert of its own, nor did it challenge Zimmerman's qualifications. The jury found that each patent claim in issue was both valid and infringed, and awarded damages to Velo-Bind that included not only lost profit on the sale of the machines but also lost profit on the sale of unpatented paper, plastic strips, and book covers. The district court refused to overturn this verdict and further enjoined 3M from future infringements, without exception for 3M's proposed 1000DA model.
In these appeals 3M argues as a matter of law that there was no infringement, that Velo-Bind's patents are invalid, that the jury's damage measure was improper, and that 3M was entitled to a ruling that its proposed Model 1000DA did not infringe Velo-Bind's '117 and '625 patents. Velo-Bind cross-appeals from denial of treble damages and attorney's fees.
3M argues that its Model 1000 does not infringe Velo-Bind's patent claims as a matter of law, and thus that it was entitled to a judgment in its favor. The gist of 3M's argument is that when properly construed, Velo-Bind's mechanical patent claims refer only to a machine employing the hot-knife process. We disagree.
Claim 1 of the '117 patent describes a strip binding machine as follows:
Apparatus for binding sheets together with the use of a first strip, a plurality of studs projecting from and spaced longitudinally relative to said first strip and a second strip formed with apertures spaced longitudinally of said second strip at intervals complementary to said studs, said apparatus comprising a frame having means shaped to receive one said strip, a platen table adjacent said means to support apertured sheets, a pressure foot formed to engage the other of said strips, cooperating means on said frame and said pressure foot to move said pressure foot toward said first-mentioned means to bring said strips together with said studs projecting through said apertures, and shear means to cut off the ends of said studs projecting through said second strip.
Claim 1 of the '625 patent is much the same although it refers to a "cutting means" instead of a "shear means" to cut off the stud ends.
Recognizing that the literal language of either claim 1 covers its Model 1000, 3M seeks to limit the claims by reading into them both a hot knife and the hot knife binding process. 3M correctly argues that the use of "means" terminology brings into play 35 U.S.C. § 112. Under this section where a claim uses "means" language, "such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 3M argues that since the specifications must be referred to, and since they describe a hot knife or shear, each claim 1 must therefore be read to include a hot knife and the hot knife binding process thus excluding 3M's cold knife machine from its terms.
In making this argument 3M looks only to one part of the specifications the general description of the hot knife process preceding the claims. The claims themselves, however, are also part of the specifications. 35 U.S.C. § 112. And looking to the other claims, including those not at issue, it appears that by "shear means" or "cutting means" neither claim 1 refers only to a heated knife. For example, claim 4 of the '117 patent refers to "a plurality of blades and heating means to heat said blades." (emphasis added). Claim 9 of the same patent describes an "(a)pparatus which further comprises heating means to heat said shear means " (emphasis added). In view of the other claims in the two patents, it appears both that the failure of either claim 1 to specify a hot knife was deliberate and that in any event a "shear means" or "cutting means" and a "heating means" are different structures.
More importantly, 3M's argument of noninfringement assumes that if, by "shear means" or "cutting means" and the application of section 112, claim 1 of either patent must have reference to a hot knife, then it must also be understood to refer only to the hot knife binding process. Such an assumption is unwarranted. Neither claim 1 makes any reference to the hot knife binding process, and the description of this process in the specifications does not limit the claims. Smith v. Snow, 1935, 294 U.S. 1, 11, 55 S.Ct. 279, 283, 79 L.Ed. 721, ("the claims of the patent, not its specifications, measure the invention.").
Moreover, this assumption finds no support in section 112, which requires only that shear or cutting "means" be construed in light of the "corresponding structure, material or acts" in the specifications; it does not require that the claim be further limited to the description in the specifications. Nor can it be argued that the hot knife binding process as opposed to a hot knife is the "corresponding structure material or acts" of the shear or cutting means referred to in the claims. The shear or cutting means, whether hot or cold, function simply to cut off the stud ends. The process of creating a permanent bind, whether by friction fit strips, ratchet teeth on the male studs, or formation of rivet heads, is a separate matter. 3M showed as much in its cross-examination of Zimmerman:
Q. Now, what is the function which the shear...
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