*1 HILL, CLARK, judgment, Before KRAVITCH and erroneous case whereupon the Judges. Circuit in this court. DISMISSED BY THE COURT: case appel-
This is before the on court lant’s motion to file brief time. out of reviewing file,
motion In DENIED. 21, 1983, we note the district April granted court plaintiff’s motion unopposed CO., CATERPILLAR TRACTOR to dismiss his action prejudice pur- without corporation, Appellee, California 41(b). April suant Fed.R.Civ.P. On v. 1983, the Clerk of the en- District Court BERCO, etc., S.p.A., Appellant. tered final judgment in favor de- and against plaintiff, fendants which Appeal No. 83-553. obviously was May a mistake. On Appeals, United States Court of plaintiff filed bringing his notice of appeal, Federal Circuit. the case to this court. July May On the district court sua entered sponte vacating judg- an order 60(a). pursuant
ment to Fed.R.Civ.P. While the district court its was correct in reliance
UH Rothstein, 111., Seymour Chicago, ap- for brief were Denis pellant. With him on A. 111., Ryan, Chicago, Bernstein and Robert C. of counsel. 111., Wood, Chicago,
James appellee. C. With him on brief William E. was McCrack- en, 111., Chicago, of counsel. MARKEY, Judge,
Before and DA- Chief BALDWIN, Judges. VIS and Circuit MARKEY, Judge. Chief Appeal from a of the district judgment court for the of Wyoming, holding District infringed. We and 19 affirm.
Background
Caterpillar (Caterpillar) Tractor Co. sued Berco, (Berco), replacement parts S.p.A. manufacturer, Machinery and Wortham Co. distributor, injunction, an and vacat- Wyoming judgment, ordered (Wortham), Caterpillar’s accounting. Patent No. an Af- permit ed the order to 3,841,718 “Augmented for an (’718 patent) damages, Judge ter waived Load Compensating Crescent Seal With judgment Brimmer reinstated the final (Reins- L. Reinsma Ring” issued to Harold stayed injunction pending appeal. Caterpillar. ma) assigned appeal Berco and Wortham do not from *3 charged Berco’s had Caterpillar After validity, challenge but holding Berco, on infringement, an type I seal as II constitutes finding type that Berco’s seal counsel, producing a modi- began advice of an of claims and 19. infringement I.1 II) place type fied (type seal trial, Judge Brimmer five-day After a The Invention infringed 19 valid and held claims and and claimed in ’718 The seal disclosed seals, entering II type I and type and lubri- part in suit is sealed 41 conclusions. Berco had findings type for crawler tractors. The to the cated track respect with admitted lubricating a final oil in the track Judge Brimmer entered seal retains type I seal. the seals are shown views of 1. Cross sectional below. out, vention, its track dirt could lubricate keeps and contaminants
joints and factory, initial in the during assembly only in the field enabling lubrication thus being impractical lubrication field the track. Oth- increasing the useful life of likely. lubricant contamination was because tried, effec- proved were but none er seals in which in the severe environments seal is 3 of Figure tive claimed shown in in- patent: are used. Before the tractors *4 of a seal comprised
The claimed seal 51 is The thin wall section therebetween. shaped a cross-sec- ring having crescent of minimum thickness to maximum provide tion, supra, ring note and a load flexibility. flexibility, Because of that al- states, compressed operating in their shown the seal most all of face load derived phan- being by free states shown their ring 45. from the load driving The 43 has a ring tom outlines. History Prosecution driving engaged in non-rotative flange Caterpillar filed Patent Application U.S. sealing contact with counterbore 35 and 116,157 (original application) No. Serial at in rotative contact flange engaged rejected February The examiner bushing with the end face of a under all nine claims as U.S.C. § thin wall flanges by are connected two 3,390,922 (’922 section Patent No. anticipated providing section 51 flexible provided specification original ap- patent) for a “Track Pin issued to Seal” 116,157. Caterpillar. No. assigned plication Reinsma 2, 6, 7, 8 and rejected also examiner 15,1972, Caterpillar filed con- On October indefinite, 112 as 9 under 35 U.S.C. § (CIP) tinuation-in-part application Serial “the term ‘thin’ is mean- saying, examiner 300,817, material containing new defin- No. comparison “thin”, no exists ingless, drawing since basis a discussion and ing 6) patent. of the ’922 (Figure definition of “thin” was in the claims.” No *5 After an examiner’s amendment not here the claims must be learned from a study of relevant, all all patent documents; nineteen relevant claims of the CIP and the were claims must be applied allowed and to the the CIP issued accused struc on October tures. 14, Autogiro Co. of 1974, America v. United as the patent. ’718 States, 55, 181 391, Ct.Cl. 384 401, F.2d 155 USPQ 697, Issue 705 (Ct.Cl.1967). Whether Judge Brimmer erred in finding It is undisputed that the language of that the Berco Type II Seal constituted an claims 1 and 19 reads directly on Berco’s infringement 1, seal, II type of claims except 10 and 19. the language deal
ing the hinge with wall section between the driving and sealing flanges. 1, In claim OPINION that language is: “a wall section of sub Review of findings of infringement stantially thinner cross section than that of limited to a determination of whether those ” flanges 19, the .... In claim the lan findings can be said to have been clearly guage is: “the being wall section of thin 52(a). erroneous. Fed.R.Civ.P. cross-section relative to that of the ends.....” It is apparent from that lan- Claims 1 and 19 guage that claims 1 specify hinge and 19 a Determination of infringe wall section having thinner cross section ment requires two steps: the meaning of than do both flanges or ends. The both
1115
Berco’s
II seal is thinner than mark
hinge
type
of
Office
course of the two appli-
(A telephone
it is not thinner than
cations.
sealing flange,
but
interview was con-
examiner,
with the
flange.
supra.
note
ducted
but no
driving
summary
See
not, therefore,
However,
recorded.)
1 and 19 do
read on was
it
Claims
is clear that
seal,
no
not
type
Caterpillar
Berco’s
II
and there is
literal
did
a claim defining
hinge
those claims.
section as
having
of
thinner cross
only
flanges
section than
one of the
of
Caterpillar necessarily
Thus
relies on the
course could not have cancelled or amended
equivalents, asserting
doctrine
that
patent.
it to secure the
See Nasco Inc. v.
type
“performs substantially
II seal
Inc.,
352
Vision-Wrap,
(7th
F.2d
909
substantially
same function in
the same
Cir.1965). Nor did
enter
re-
the same result.”
way
obtain
Graver
marks in the file
to the
wrapper
effect that
Mfg.
Co.,
Tank
Co. v. Linde Air Products
&
section must have a cross section
605, 608,
854, 856,
94 L.Ed.
U.S.
S.Ct.
flanges
thinner than both of the
for the seal
USPQ
(1950).
That test is
or for the
patentable
to work
claims to be
here,
met
where Berco’s
II seal is
type
prior
over the
art.
prior
Nor would the
art
substantially
pro-
the same structure and
appear
any
to dictate
such limitation. As
the same
substantially
duces
result
sub-
indicated,
rejection
above
of interest
stantially
way. Nothing
same
of rec-
was related
not
to prior art.
ord,
example,
establishes that a thinner
Thus,
nothing
there is
in the file history to
driving flange affects either the mode of
estop Caterpillar from relying on the doc-
operation
or the result obtained
trine
equivalents.
To limit Caterpillar to
II
type
seal.
reading
a literal
of the claims would in this
Berco counters with the doctrine of file
protection
case “convert the
of the patent
history estoppel.
long
has
been settled
“[I]t
grant
into
hollow and useless thing.”
may
recourse
not be had to
doc-
[the
Graver,
at
at
U.S.
S.Ct.
855.2
trine of equivalents]
recapture
patentee
which the
has surrendered by
Claim 10
amendment.” Exhibit
Co. v. Ace
Supply
language
of claim dealing
Patents
Corp.,
U.S.
62 S.Ct.
*6
hinge
with the
wall section reads: “a thin-
513, 518,
736,
USPQ 275,
86 L.Ed.
52
279
connecting
wall section
the flanges
pro
and
(1942).
”
viding
hinge
a flexible
therebetween ....
The
between the
interplay
doctrines of
19,
1
Unlike claims
and
claim 10 contains no
equivalents
estoppel governs
and
determi-
to a relationship
flanges
reference
with the
nation
-infringement
respect
of
with
to
or ends. Claim 10 in its
reads
entirety
19,
1
governed by
and
and is in turn
Berco’s
II
directly
type
on
seal and is thus
the
of the ’718
prosecution history
patent.
literally infringed.3
patent
Claims 1 and 19 of the
Berco and Wortham seek to read the limi-
were first
The rec
presented
CIP.
tation of claims 1 and 19 into claim
complete
ord
not be
with
to all
may
respect
asserting that “thin” must mean thinner
However,
arguments
flanges.
made to the Patent and Trade-
than
in
nothing
both
attempts
design
non-infringing
appropriat-
2. Bona-fide
a
to define an invention that was not
product
estoppel.
are one of
beneficial
results
the
of the
ed. Hence the doctrine of
by
system
incentive-to-disclose
established
the
patent
bona
course,
statute.
The
fides of such at-
possible, of
for
claim to
3.
It is
be
however,
tempts,
governed solely by
where,
are not
literally
actually infringed,
but not
patent
whether
may
the words of a
claim can be
example, a claim
“read on” a structure
literally
newly-designed
product.
read on the
having no relation to the invention.
Instances
Westinghouse
Boyden
The matter is not one for semantic antics alone.
v.
Power
rare. See
are
invention,
infringer appropriates
Co.,
An
707, 722,
an
not
Brake
18
170 U.S.
S.Ct.
equivalents.
case,
words. Hence the doctrine of
At
(1898).
present
the
the record any 10 relationship protection lowed claim because of obtaining patent foreign of between the wall section thinness render of cer might countries consideration flanges. contrary, and claim 10 On representations inappropriate, tain of types not in claims 1 and language contains found of ample authority there is such in decisions Moreover, substantially claim 10 is com other courts and when such matters original application same as claim of the be considered. prise they relevant evidence must describing to the respect language with toflex, Aeroquip Corp., Stra Inc. v. section.” Because claim 10 was “thin-wall 83-587, (Fed.Cir. Appeal slip op. No. at 18 change without in the critical lan- allowed July 1983). particular instructions guage, it is reasonable to conclude that its and here that representation cited indicate was based upon allowance other limitations. equivalent Berco’s embodiment was not not may Courts introduce into a claim limi- not, however, contemplated. That does explicitly tations which are contained in denying serve as a basis for of application Rousso, USPQ 108, In re other claims. equivalents the doctrine 1 and of to claims (CCPA 1955). nothing Thus of record 19. Nor those cited could instructions requires that “thin” in claim be read as representation reading serve as a basis for flanges.” limited to “thinner than both limitation into claim 10. In the case, therefore, the cited instructions and Berco and allege Wortham if are representation require insufficient claim “thin” in 10 is not read as “thinner Judge findings reversal of Brimmer’s flanges”, rejection than the then the clearly as erroneous. of substantially identical claim of the original application, for failure to define
thin, meaningless. position Conclusion ignores That the matter added by the CIP to define Judge did not in finding Brimmer err “thin.” The ’718 patent specifically de substantively that Berco’s II seal in- type scribes the center hinge portion as about fringes claims 1 and 19 the doctrine under thick 0.040 inches and states that it should equivalents literally and substantive- be no more than a maximum of 0.080 ly infringes judgment ap- claim must, Construing inches. as we claim 10 in pealed from with accordingly affirmed light specification, States v. United 1, 10, respect to claims and 19. Adams, 708, 709, 15 388 U.S. 86 S.Ct. Affirmed. USPQ (1966), L.Ed.2d it is clear that the term thin in that claim is not DAVIS, dissenting in Judge, part. Circuit II meaningless. type seals fall range by within the defined thinness I agree opinion except with court’s and identified “thin” in claim 10. for the use of doctrine of equivalents *7 infringe Those seals therefore claim 10. find of claims 1 19. infringement My and position is that precluded by Berco and Wortham cite instruc the course its the prosecution of of ’718 Caterpillar’s tions of to his foreign counsel patent claiming from but anything literal counsel describing associate the embodi infringement (with respect to the relative top ment at of supra, the footnote and a 1, hinge thickness of and flanges) the the two representation of his German associate to of those two claims —and it is there plain patent the distinguishing German office infringement was no literal here. references, over during Caterpillar’s certain of prosecution patent on this: applications prosecution history the shows same invention in original applica- Great Britain and Ger nine of Caterpillar’s claims Though of many. rejected no is cited for the tion were all on the 35 authority basis that to also of proposition foreign instructions U.S.C. 102 and § U.S.C. § foreign rejected embody counsel and Those claims did not the representation pat considered, patent of requirement ent offices should and the be “thick-thin-thick”
1H7 1247, 1257-58, 197 rejection USPQ (C.C.P.A. 19. To avoid the the F.2d claims 1 and 1978, a continuation-in-part appli- emphasis original). filed in also Auto applicant See States, 1 and 19- containing 55, cation new claims v. giro Co. United Ct.Cl. setting 391, claim 1 forth for the first time the 400-01, USPQ (Ct.Cl. F.2d sealing flanges “the and language driving 1967); Selph v. United Teledyne McCormick section of being by States, interconnected a wall 672, 1000, 214 Ct.Cl. 558 F.2d 1006- thinner cross section than that substantially 07, USPQ (Ct.Cl.1977). There is for flanges,” specifying and claim 19 nothing to indicate that Caterpillar’s argu hinge the first time that the was a “thin ment to the PTO on the relative thinness of relative to that of the ends cross section hinge unnecessary superfluous. the was or * * In his new the application, pat- *.” claim Because which does not call for expressly pointed entee out to the Patent construction, the “thick-thin-thick” was lit- (1) and Trademark that “the thin Office I erally infringed, join majority with the the ring flexible section in the seal of that claim. The existence of claim with invention a substantial dis- provides its in sharp wording contrast to claims 1 (2) and that prior tinction over art”1 means me in the circumstances hinge portion of the seal was about that the inventor intended those three O.040 inches thick as contrasted to 0.100 for claims to interpreted literally. be Accord- for the driving flange sealing and 0.130 I ingly, would affirm as to claim 10 but new flange. appli- All the 19 claims of the reverse as to claims 1 and 19. rejected cation were then under 35 U.S.C. telephone but after an unrecorded (the unknown) of call substance which (in Examiner revised the claims a now manner)
immaterial and the issued. history, the basis of the prosecution On pat- the District concluded that “the Court ent claims were indeed narrowed to over- objections raised the Patent come Of- CO., Appellant, BALLY/MIDWAY MFG. also that be es- Caterpillar “may fice” and v. from the term ‘thin’ as rela- topped using TRADE U.S. INTERNATIONAL driving sealing flanges.” tive to He COMMISSION, Appellee. decided, however, apply the doctrine of I error equivalents. think this was Appeal 82-32. No. view, which, my claims 1 and as to in Appeals, Court of United States effect patentee plain told PTO Federal Circuit. what exactly those two meant “A hav- they patentee said —and no more. Aug. his ing argued a narrow construction for Patent and claims before United States (PTO) preclud-
Trademark Office should be arguing ed from a broader construction * * * infringement. purposes utilizes the doctrine [Wjhenever patentee in an suit to equivalents *8 claims, he his scope opens extend the of his any case rebuttal based on statements he during prosecution.” made on the record Industries, International Inc. v. U.S. Coleco Commission, Trade 65 C.C.P.A. supra. 112). reject- (as original See ed under well as § that the had been 1. Note