W.L. Gore & Associates, Inc. v. Garlock, Inc.

• Decision Date: 28 March 1988
• Docket Number: Nos. 87-1296,87-1341,s. 87-1296
• Citation: 842 F.2d 1275,6 USPQ2d 1277
• Parties: , 6 U.S.P.Q.2d 1277 W.L. GORE & ASSOCIATES, INC., Plaintiff/Cross-Appellant, v. GARLOCK, INC., Defendant/Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1275

842 F.2d 1275

56 USLW 2587, 6 U.S.P.Q.2d 1277

W.L. GORE & ASSOCIATES, INC., Plaintiff/Cross-Appellant, v. GARLOCK, INC., Defendant/Appellant.

Nos. 87-1296, 87-1341.

United States Court of Appeals Federal Circuit.

March 28, 1988.

David H. Pfeffer, Morgan & Finnegan, New York City, argued, for plaintiff/cross-appellant. With him on the brief, were Janet Dore and John C. Andres. Also on the brief, was John S. Campbell, Newark, Del., of counsel.

John J. Mackiewicz, Woodcock Washburn Kurtz Mackiewicz & Norris, Philadelphia, argued, for defendant/appellant. With him on the brief, were Dale M. Heist and Henrik D. Parker. Also on the brief, were William D. Ginn and Stephen H. Daniels, Thompson, Hine & Flory, Cleveland, Ohio, of counsel.

Before MARKEY, Chief Judge, RICH, Circuit Judge, and MILLER, Senior Circuit Judge.

RICH, Circuit Judge.

These are cross-appeals from the February 6, 1987, Order of the United States District Court for the Northern District of Ohio holding that: (1) Garlock, Inc. (Garlock) infringed claim 19 of W.L. Gore &

Associates' (Gore) patent No. 3,953,566 ('566) by its process for making PLASTOLON film; (2) Garlock infringed claim 19 of the '566 patent by its process for making PTFE (polytetrafluoroethylene) filament; (3) Garlock did not infringe claim 3 of the '566 patent by its process for making PLASTI-THREAD tape; (4) Garlock infringed claims 14 and 43 of Gore's patent No. 4,187,390 ('390) by making and selling its PLASTOLON film; (5) Garlock infringed claims 18 and 67 of the '390 patent by making and using its PTFE filament and by making and selling its LATTICE BRAID packing material; and (6) Garlock induced infringement of claims 36 and 77 of the '390 patent by making and selling its PLASTOLON film for use in KLIMATE rainwear fabric. The district court permanently enjoined Garlock from using its process for making PLASTOLON film and from making, marketing, or selling the film. We affirm in part, reverse in part, and remand.

Background

This case returns after a remand by this court to the district court for a determination of infringement. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). The background of the patents in suit is set out in the earlier opinion and will not be repeated here.

The trial was held in 1982, and on November 19, 1982, the district court issued a decision holding the claims of both patents invalid for anticipation under 35 U.S.C. Sec. 102, for obviousness under 35 U.S.C. Sec. 103, and for indefiniteness under 35 U.S.C. Sec. 112. W.L. Gore & Assocs. v. Garlock, Inc., 220 USPQ 220 (N.D.Ohio 1982). The district court held the patents invalid under Sec. 112 in part because it found that the term "rate of stretch" in the claims was indefinite. The district court also found that Gore did not commit fraud in obtaining the patents and denied Garlock's request for attorney fees, but did not decide the issue of infringement.

This court affirmed the holdings that claim 1 and claim 17 of the '566 patent were invalid under Sec. 102(b) and Sec. 103 respectively, but reversed as to the invalidity of all other claims of both patents. W.L. Gore, 721 F.2d 1540, 220 USPQ 303. This court held in part that Garlock had not proved that the phrase "stretching ... at a rate exceeding about 10% per second" in the claims was indefinite under Sec. 112. Id. at 1557, 220 USPQ at 316. It affirmed the lower court's holding that Gore did not commit fraud in the PTO and its denial of attorney fees to Garlock. Id. at 1558-59, 220 USPQ at 317. The court declined Gore's suggestion that it decide the issue of infringement and remanded for a determination of infringement by the district court, neither expressing nor implying any view on that issue. Id. at 1559, 220 USPQ at 317-18.

On remand, Garlock proposed to offer additional evidence on infringement and Gore moved to exclude the evidence. The district court did not rule on Gore's motion but allowed Gore additional discovery on the proposed evidence. The court then decided infringement without hearing or receiving any additional evidence.

The Decision on Appeal

On February 6, 1987, nearly five years after the trial, the district court issued its decision on infringement. W.L. Gore & Assoc. v. Garlock, Inc., 670 F.Supp. 760, 3 USPQ2d 1511 (N.D.Ohio 1987). Garlock admitted that its process for making PLASTOLON film met each limitation of claim 19 of the '566 process patent except for the "rate of stretch." The district court held that under the law of the case as decided by this court, the term "rate of stretch" meant percent of stretch divided by time of stretching. Applying this construction to Garlock's process, the court found that Garlock infringed claim 19 because it stretched PTFE at a rate of over 10% per second. The court also found that Garlock's PLASTOLON film infringed claims 14 and 43 of the '390 product patent and that Garlock induced infringement of claims 36 and 77 of the '390 patent by Likewise, the district court held that Garlock's process for making PTFE filament infringed claim 19 of the '566 patent because the process stretched PTFE at a rate greater than 10% per second to more than five times its original length before sintering it by heating it to its crystalline melting point of 327?C. The court further found that Garlock's PTFE filament and LATTICE BRAID packing material infringed claims 18 and 67 of the '390 patent.

making and selling PLASTOLON film for use in KLIMATE rainwear fabric.

The district court held that Gore had not proved that Garlock's process for making PLASTI-THREAD tape infringed claim 3 of the '566 patent either literally or under the doctrine of equivalents. Gore had not shown that Garlock's process met the limitation of a rate of stretch of "about 100% per second," but only that it was somewhere between 76.5% a second and 139% per second.

The district court enjoined Garlock from using its process for making PLASTOLON film and from making, marketing or selling the film. The court refused, however, to enter an injunction with respect to Garlock's PTFE filament or LATTICE BRAID packing material because Garlock no longer made or sold either one.

After the decision, Garlock asked the district court to modify the injunction to permit it to make PLASTOLON film so that it could become a second-tier subcontractor for a proposed federal government contract. The court denied the request but granted a partial stay pending appeal to allow Garlock to participate in the bidding process.

Garlock appeals from the finding of infringement and the issuance of the injunction with respect to its PLASTOLON film. Gore appeals from the finding that Garlock's process for making PLASTI-THREAD tape did not infringe and the denial of an injunction with respect to the PTFE filament and LATTICE BRAID packing material.

OPINION

1. Infringement

a. "Rate of Stretch"

Garlock argued to the district court on remand that the term "rate of stretch" in the claims meant "change in velocity with respect to distance along the stretch sample." For this, Garlock cited statements in the prosecution history distinguishing "rate of stretch" from "speed of stretch." If the "rate of stretch" in Garlock's film process is calculated this way, the rate decreases exponentially to under 10% per second before the PTFE is stretched to five times its original width, as called for in claim 19.

The district court, however, held that the term "rate of stretch" was not open for interpretation:

Because the matter is before the Court on remand, the law-of-the-case doctrine bars reconsideration of the holdings of the Court of Appeals....

....

... If the meaning of "rate of stretch" were open to interpretation, then the Court of Appeals would have remanded to redetermine the question of indefiniteness. It did not; rather, it excluded as irrelevant, both expressly and implicitly, all evidence of the meaning of the term which Garlock now argues.... Here, the Court of Appeals has held for purposes of determining validity, "rate of stretch" means percent of stretch divided by time of stretching; for purposes of determining infringement, this Court must apply the same definition.

3 USPQ2d at 1514.

The law of the case doctrine was judicially created to ensure judicial efficiency and to prevent the possibility of endless litigation. Central Soya Co. v. Geo. A. Hormel & Co., 723 F.2d 1573, 1580, 220 USPQ 490, 495 (Fed.Cir.1983). The doctrine applies not only to issues discussed and decided but also those decided by necessary implication. Smith Int'l, Inc. v. Hughes Tool Co., 759 F.2d 1572, 1577, 225 USPQ 889, 892 (Fed.Cir.), cert. denied, 474 U.S. 827, 106 S.Ct. 87, 88 L.Ed.2d 71 (1985). See also Kori Corp. v. Wilco Marsh Buggies & Draglines, Inc., 761 F.2d 649, 657, 225 USPQ 985, 990 (Fed.Cir.), cert. denied, 474 U.S. 902, 106 S.Ct. 230, 88 L.Ed.2d 229 (1985).

In its earlier decision, this court held that the patent claims were not invalid under Sec. 112 for indefiniteness. There was uncontradicted evidence that at the time the application was filed, "stretch rate" meant to those skilled in the art "the percent of stretch divided by the time of stretching." 721 F.2d at 1556, 220 USPQ at 315. The court also held that claim 1 of the '566 patent was anticipated under Sec. 102(a) by the 401 machine in Gore's shop. This holding was predicated on the district court's determination that the "rate of stretch" accomplished in the 401 machine was greater than 10% per second based on the spacing of the rollers. Id. at 1548-49, 220 USPQ at 309.

Having construed the claims one way for determining their validity, it is axiomatic that the claims must be construed in the same way for infringement. See, e.g., Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1449, 223 USPQ 603, 610 (Fed.Cir.1984). The district court was bound by this court's...