Zodiac Pool Care v. Hoffinger Industries
| Decision Date | 24 March 2000 |
| Citation | 54 USPQ2d 1141,206 F.3d 1408 |
| Parties | (Fed. Cir. 2000) ZODIAC POOL CARE, INC., (formerly known as Baracuda International Corporation) Plaintiff-Appellant, v. HOFFINGER INDUSTRIES, INC., Defendant-Cross-Appellant. 99-1224, -1233 DECIDED: |
| Court | U.S. Court of Appeals — Federal Circuit |
Appealed from: United States District Court for the Northern District of Georgia, Judge Thomas W. Thrash, Jr. [Copyrighted Material Omitted] Caroline W. Spangenberg , Kilpatrick Stockton LLP, of Atlanta, Georgia, argued for plaintiff-appellant. With her on the brief were Dean W. Russell , Mitchell G. Stockwell , and Camilla C. Williams .
Timothy J. Buckley III , Finley & Buckley, P.C., of Atlanta, GA, argued for defendant-cross appellant.
Before BRYSON, Circuit Judge , SKELTON, Senior Circuit Judge , and GAJARSA, Circuit Judge .
Opinion for the court filed by Circuit Judge Gajarsa. Circuit Judge Bryson concurs in part and dissents in part.
Zodiac Pool Care, Inc. ("Zodiac") is the assignee of U.S. Patent Nos. 4,133,068 ("the `068 patent") and 5,014,382 ("the `382 patent"). In 1996, Zodiac sued Hoffinger Industries, Inc. ("Hoffinger") in the United States District Court for the Northern District of Georgia, alleging infringement of both patents. Zodiac further alleged that the infringement was willful, justifying an award of treble damages. Hoffinger answered by denying infringement of both patents and alleging that both patents are invalid.
Upon Hoffinger's motion for summary judgment and Zodiac's motion for partial summary judgment, the district court held that: (1) Hoffinger did not infringe the `068 patent either literally or under the Doctrine of Equivalents ("DOE"); (2) Hoffinger did not infringe the `382 patent literally; and (3) the `382 patent is not invalid. The court then allowed the case to proceed to trial on the issue of infringement of the `382 patent under the DOE. After a jury found that Hoffinger infringed the '382 patent under the DOE, and did so willfully, it awarded damages in the amount of $1,976,000. The parties then moved for judgment as a matter of law ("JMOL").
The district court granted Hoffinger's motion for JMOL, finding that Hoffinger did not infringe the `382 patent under the DOE. The district court also conditionally granted Hoffinger a new trial on the issue of damages and a new trial on infringement in the event this court finds that Hoffinger waived its right to seek JMOL by not renewing its motion in its entirety at the close of trial. Under Fed. R. Civ. P. 50(c), "[i]f the renewed motion for judgment as a matter of law is granted, the court shall also rule on the motion for a new trial, if any." The district court refused, however, to award Hoffinger attorney's fees.
The parties now cross-appeal. Because the district court properly construed the meaning of the terms of the `382 patent, awarded Hoffinger summary judgment on the issue of literal infringement of the `382 patent, granted Hoffinger JMOL on the issue DOE infringement of the '382 patent, and denied Hoffinger attorney fees, this court affirms.
Zodiac did not appeal the district court's entry of judgment of non- infringement of the `068 patent. Therefore, this appeal is limited to the issues relating to the `382 patent.1The `382 patent discloses a vacuum system for cleaning swimming pools. The pool cleaner system comprises four elements, as set forth in Claim 1 of the patent:
(a) a forwardly inclined body having a flow passage therethrough;
(b) an inlet foot having a water inlet, the inlet foot being attached to the body and connected to the flow passage and when in use, is proximate to a surface to be cleaned;
(c)a flexible disc surrounding the water inlet and rotably connected to the inlet foot, and having a peripheral edge; and
(d)a stop for preventing upward flexing of the peripheral edge beyond a predetermined amount located forward of the body and above and substantially inward of the peripheral edge.
A drawing of the system as claimed by the `382 patent is provided in the single figure of the patent, and is set forth below:
[Tabular or Graphical Material Omitted]
As described in the `382 patent, pool cleaners of the type claimed move in a step-wise manner automatically and in random fashion over submerged surfaces to be cleaned. As the cleaner moves, it traverses from horizontal surfaces to vertical surfaces, as well as the reverse. Unfortunately, the cleaner often becomes unbalanced as it moves around the pool, leaving the cleaner oriented away from the surface and the cleaner inlet away from the target surface. This reduces the cleaner's effectiveness, unless one attaches a cumbersome weight to one side of the cleaner and a float to the other side. While the weight and float solve the problem of orientation, they render the cleaner more burdensome to use. In addition, the disc of the typical cleaner resists and hinders the movement of the cleaner from horizontal to vertical surfaces and can cause damage to pools with vinyl sheet liners.
The invention of the `382 patent offers an alternative for keeping the cleaner properly oriented and the inlet close to the target surface. Instead of a weight and float, the invention uses an attached stop (13) for preventing the disc (6) from flexing upward as it moves across the surface. The stop is located upward and above the disc, and is attached to the body of the cleaner. Because the disc remains flat, the cleaner maintains a proper orientation. Properly oriented, the inlet remains close to the surface.
Hoffinger makes and sells automatic pool cleaners throughout the United States under the trade names "Glider" and "Cruiser." In 1996, Zodiac sued Hoffinger for patent infringement. Hoffinger responded by denying infringement and raising the affirmative defenses of patent invalidity under 35 U.S.C. §§ 102, 103 and 112 (1994).
The district court granted Hoffinger's motion for summary judgment that it did not literally infringe either of the asserted patents. See Baracuda Int'l Corp. v. Hoffinger Indus., Inc. , 4 F. Supp.2d 1188, 1198 (N.D. Ga. 1998).2The court also held as a matter of law that Hoffinger did not infringe the `068 patent under the DOE. Concomitantly, the district court granted Zodiac summary judgment on the issue of the validity of the `382 patent, and held that genuine issues of material fact precluded summary judgment on the issue of infringement of the `382 patent under the DOE. See id . The district court further held that fact issues precluded summary judgment on the issue of willfulness. See id.
Thereafter, the district court held a five-day jury trial on all outstanding issues. At issue were four claims of the '382 patent: independent claim 1 and dependent claims 2, 3 and 10. During the trial, Zodiac presented evidence that Hoffinger's accused devices included each of the four limitations of claim 1. In particular, the jury heard testimony from ten witnesses, received 55 exhibits and viewed a demonstration both live and on videotape of the Hoffinger devices in operation. The jury also heard testimony and reviewed other evidence on the specific issue of whether Hoffinger's weight arm was equivalent to the stop set forth in limitation (d).
Hoffinger effectively conceded that its accused devices included the first three limitations of independent claim 1. It vigorously denied, however, that its devices included the fourth limitation, (d): "a stop for preventing upward flexing of the peripheral edge [of the flexible disc] beyond a predetermined amount located forward of the body and above and substantially inward of the peripheral edge." Hoffinger produced evidence that its weight arm could not function as the stop in limitation (d), because its arm extended at least to the peripheral edge of the disk, and thus was not located "substantially inward" thereof. As a result, argued Hoffinger, its devices did not infringe the `382 patent at all. If anything, Hoffinger continued, its devices practiced the prior art disclosed in United States Patent No. 4,023,227 (the "'227 patent"), which is owned by Kreepy Krauly U.S.A., Inc. ("KK") and has since expired. Hoffinger also argued that its devices practiced aspects of other KK patents that it has licensed.
At the close of evidence, both parties moved for JMOL. Both motions were denied, and the court submitted the case to the jury. The jury found that Hoffinger not only infringed the `382 patent under the DOE, but did so willfully. It then awarded Zodiac damages in the amount of $1.976 million.
After the verdict, both parties renewed their motions for JMOL. Citing this court's decision in Sage Products, Inc. v. Devon Industries, Inc. , 126 F.3d 1420, 44 USPQ2d 1103 (Fed. Cir. 1997), Hoffinger argued that the asserted claims included specific structural limitations, and "the doctrine of equivalents cannot be used to expand those claims to cover foreseeable alterations, such as Hoffinger's weight arm, that were not specifically claimed by the patentee." Zodiac responded that Hoffinger had waived its right to renew its JMOL motion on the issue of infringement because it did not expressly renew the motion with specificity during its argument after the close of evidence. Zodiac also asserted that Sage Products did not limit the jury's authority to find infringement under the DOE.
The district court granted Hoffinger JMOL on the issue of infringement of the `382 patent under the DOE. The district court initially held that under Fed. R. Civ. P. 50, Hoffinger had preserved its right to renew its JMOL motion during its argument to the court after the close of evidence when it specifically addressed the issue of Zodiac's claim for lost profits. The court stated that it "understood the Defendant to be renewing its Rule 50 motion in its entirety, but only rearguing the point relating to the issue of lost profits." Moving to the merits of Hoffinger's motion, the...
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Proof of Equivalence After Festo
...an important role in determining whether the All Elements Rule would apply. See, e.g., Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1415 (Fed. Cir. 2000) ("holding that equivalence is untenable in light of the claims when properly construed"). In Zodiac, the patentee's c......