Vulcan, Inc. v. Fordees Corporation

MARTIN, Jr., Before BOYCE F. Circuit CELEBREZZE, Judge, Senior Circuit JOINER,* Judge, Judge. and District MARTIN, Jr., Judge. F. BOYCE Circuit Corporation appeals judg- Fordees from a patent validity infringement. ment of judica- The issues before concern us the res prior ta effect of a consent decree and the equivalents. Specifically, doctrine of For- 1) argues: it privity dees was not in with the defendant and is therefore not bound the determination decree; validity 2) in the consent entry it devices built after do decree infringe * Joiner, sitting by gan, designation. Honorable Charles W. States United Judge District for the Eastern District of Michi- pat dispute manufacturing selling is the “Titzel” reline

ent, granted Engineering, Titzel Inc. on towers. January 1965.1 The current owner of Early in Munroe contacted Fordees’ Vulcan, Inc., plaintiff be president and him told about the Titzel patented low. The and accused devices in Fordees, M&G and Titzel were portable towers, this case are work or “re against bidding then each other for a con- towers, rebuilding line” used in the refrac to build a Gary tract reline tower for the tory lining oxygen of basic furnaces in Corporation. Works United States Steel which steel is made. These furnaces are Although Fordees had never built reline lined with thick brick walls which retain the tower, it plan submitted bid on a based or molten metal and insulate the vessel from “cartoon.” accepted U.S. Steel this bid and generated. the heat extreme The signed purchase order with Fordees. As a eventually destroys refractory heat the lin contract, specifi- condition of the Fordees ing, replaced periodically. which must be cally agreed to hold Steel harmless relining process Since the takes a vessel out potential infringement from of the Titzel temporarily, lining service the must be patent. replaced possible. quickly as After accepted, pur-, its bid was Fordees Before the Titzel tower was introduced to engineering chased from a set of M&G industry, necessary the it was to build a drawings specifications containing for the ground wooden or metal scaffold from the construction of a reline tower. These draw- up procedure inside each vessel. This took asset; ings were principal prac- M&G’s its days complete required several to two tice was to subcontract construction work crews, scaffold, work to one build the the brought firms which the drawings. For- other to replace refractory lining. the It drawings purchased dees these with knowl- dangerous bricks, was also because lowered edge that the reline tower described top a crane the from of the vessel to the subject infringement was the of a scaffold, easily fall could on the workers. suit. Fordees also obtained technical assist- substantially changed The Titzel tower M&G, engineering ance and advice from the relining portable process. It is a free- purchasing drawings. after Because of standing collapses structure to fit pending litigation, Fordees insisted that through the chimney oxygen narrow of an indemnify against liability M&G it for in- working platform furnace. Its can be fringing patent. the Titzel or easily raised lowered to different levels. began Fordees then a reline construct guided A cage transports elevator bricks Except for Gary Works. for Thus, other platform. materials to the changes, minor dimensional it adhered to the Titzel tower eliminates danger both the specifications out set in the M&G draw- of falling brick inefficiency and the ings. building disassembling scaffolds. It also enables use of the overhead crane for 1971, against On October Titzel’s suit other jobs. Finally, it potential increases entry and Munroe ended M&G with the of a steel production by substantially reducing accompanying stipula- consent decree and required time to reline a vessel. tion. decree declared the Titzel infringed.

In both valid and Both predecessor, Vulcan’s M&G and Titzel En- gineering, brought agreed stipulate Munroe an action in the reline the Western District of Pennsylvania against in the engineering In- tower described draw- M&G ings dustrial president, infringed Associates and its sold to Robert Fordees Munroe, pat- They agreed drawings for also Titzel to return the (W.D.Pa. ent. Vulcan, decree, 70-1333). According Civ. #Act. Tit- Inc. to the M&G zel claimed infringed infringing that M&G had had built four reline towers and 1. 3,166,154. U.S. Letters Patent No. infringed by further supplying

had Fordees court also found that the reline towers with drawings and technical assistance.2 built Fordees after the consent decree infringed the Titzel We shall deal settlement, In agreed Vulcan to re- with those issues separately. lease M&G and liability Munroe from for any infringement completed acts of before Privity I. decree, intending date of the by this We must first decide whether the District clause to liability release Fordees from Court finding erred in that Fordees and the reline tower it building was then for the privies M&G were respect with to the sub- Gary entered, Works. After the decree was ject matter of the consent decree. If M&G and Munroe dissolved their reline privity M&G, Fordees was in then the tower business. judgment judicata is res and Fordees began In Fordees to construct addi- may not validity reexamine the of the Tit- tional reline towers. It bid for and obtain- zel ed a contract to build a second tower for Whether privity given exists in a Gary contract, the part Works. As of that question case is a of fact. Harrison v. again agreed Fordees to hold U.S. Steel Bldg: Ind., Inc., Bloomfield 435 F.2d 1192 against infringement harmless of the Titzel (6th 1970); Cir. Astron Ind. Chrys Assoc. v. Co., ler Motors (5th 405 F.2d 1968); 958 Cir. facts, On the basis foregoing of the the Crane Boom Life Guard Co. v. Saf-T Boom District Court concluded that Fordees was Co., (8th 362 1966), F.2d 317 Cir. cert. de in privity with M&G and was therefore nied, 908, 853, 386 U.S. 87 S.Ct. 17 L.Ed.2d by bound judgment: the 1971 consent (1966). 782 scope of our review is Where, here, during pendency the limited, therefore uphold and we must patent suit, infringement Fordees ac District findings Court’s unless are quired from the defendant in the suit clearly 52(a). erroneous. Fed.R.Civ.Proc. property rights designs engineer to Fordees contends that it was not a suc- ing and permitting technical assistance M&G, cessor in interest to it never Fordees to manufacture the device which acquired a property interest in the Titzel suit; subject is the of that where such patent, and that it received no benefit from acquisition is knowledge made with full According consent decree. argu- to this suit; pendency of the where the ment, merely Fordees was “under license” defendant in the agreed suit to indemnify to drawings, use the having bought M&G Fordees any damages for resulting from nothing “tangible” from “except, per- M&G Fordees’ of the in haps, paper on which designs ap- suit; where a judgment consent was ne peared.” gotiated in the action which benefitted Fordees; and where the judg consent argument This unpersuasive. is ment holds the valid infring “Privity” term, is ambiguous an a short ed; the Court privity finds Fordees is in designation hand persons for those who with the defendant in the suit. See A. “have sufficiently relationship close with Schnitger W. v. Canoga Corp., Electronics parties by the record to judg be bound (9th 462 1972); Note, F.2d 628 Cir. J. R. Clark Developments ment.” in the Law— Laughlin Co. v. Jones Corp., Judicata, & 818, Steel 288 (1952) Res 65 Harv.L.Rev. 856 (7th 1961), F.2d 279 Cir. (emphasis added). cert. denied 368 Our review of the record 828, (1961); 82 7 S.Ct. L.Ed.2d 32 ample discloses evidence that Fordees’ rela Alb, Inc., Inc. v. Noma Lites tionship 231 F.2d 662 in “sufficiently M&G was fact (2d 1956). Cir. privity. close” to establish stated, quite 2. The District Court which were accurate- made and one M&G of which ly, judgment that “the found that five reline was made Fordees connection with infringed towers the Titzel four of M&G.” 1110 result,

First, same and a bearing Fordees was more than “mere final decree product. of a fruit could never be purchaser” manufactured reached. Wholesale Gen. Chem Co. v. Standard See Id. at 938. Co., (4th Phosphate 178 Cir. & Acid F.2d Third, it is well established that one Co., Chrysler 1939). also Brunswick v. See bring non-party interest sufficient 1969); (7th R. Clark Co. 408 F.2d 335 Cir. J. judicata legal within ambit of res is a Co., 288 Laughlin & F.2d 279 v. Jones Steel duty, right, dependent wholly or interest or denied, 1961), cert. 368 U.S. part Moore, on the outcome of a lawsuit. (1961). pur For our L.Ed.2d 32 S.Ct. Here, 0.411(6). Federal Practice IB For H Fordees, Steel, poses, U.S. rather than must right according dees’ to build reline towers purchaser be considered the ultimate of the plans dependent M&G’s result on the towers. reline Pennsylvania litigation. of the Further more, indemnify Fordees insisted that M&G Second, the record reveals Fordees against potential it in liability Titzel acquired substance of the . fringement, thereby establishing another during litiga- from M&G of the course right hinged which on the outcome which tion ended in the consent decree. Finally, point Titzel-M&G lawsuit. we The fact that Fordees did not “title” obtain agreed the fact that Fordees to hold U.S. impor- drawings to the is immaterial. The against infringement harmless liabili Steel point drawings tant enabled ty Gary for the Works For tower. Both Fordees construct a reline to fulfill tower right indemnity duty to dees’ and its to Indeed, its contract with U.S. with- Steel. depended indemnify part pending in on the plans, out the Fordees would not have been litigation. tower, able to build any type of much reline Titzel By obtaining less a reline tower. suggests Moore an in Professor that knowledge technical embodied in M&G’sen- demnitor has sufficient to interests at stake gineering drawings, acquired sig- Fordees a privy by judgment. be bound We nificant interest which facilitated its busi- think an indemnitee also has a sufficient Saalfield, ness. In G&C Merriam Co. v. 190 interest, at least in a one case such as this (6th F. 1911), 927 Cir. upheld this court agrees in which the indemnitee to itself finding of privity on similar facts. Al- indemnify party a third to the respect with though the right” nature of “substantial subject litigation. matter of the See Schle precisely case, was never in that established Co., gel (6th Man. Co. v. USM 525 F.2d 775 we held: denied, 912, 1975), Cir. cert. 425 96 U.S. 1509, precise (1976); What was the 47 nature of the con- S.Ct. L.Ed.2d 763 American Safety Flight Systems, between Inc. v. The parties] ap- tract does not Garrett [the Co., (9th 1975); F.2d 288 In re pear .... 528 Cir. pre- The court well might Co., (W.D. sume, Skyline F.Supp. Lumber 311 112 be, if need the contract was Va.1970). only of agency an and did not transfer a right. substantial But it is not material. Fourth, Fordees continued with to deal The case already pending, and the con- entry M&G and Munroe after controversy whole had been submitted sent It obtained reline decree. a full set of for the judgment Though of the court. M&G, engineering drawings from a party, by Saalfield was bound the which to build tow- it used additional reline final decree of the party court. If a third addition, ers. In Fordees succeeded M&G may acquisition thus come into the of major supplier as a of reline towers rights pending litigation involved in with- technology reline tower when dis- M&G being out judgment, bound the final solved at conclusion of the lawsuit. require a suit in to de novo order was a These facts convince us that Fordees him, suit, might, pending bind he v. successor in interest to M&G. J. R. Clark Co., right Laughlin alienate that to with the supra. another Jones Steel &

lili recognize negotiations attempts distinguish to Clark we also Fordees for a noting that successor in that case ac- invariably reciprocal consent decree call for quired predecessor, compromises all the assets of the party relinquishes —each right something whereas obtained only might Fordees it have won had it pro- drawings. use M&G’s This distinction is litigation. Langsam, ceeded Res merit, without for the record indicates that Judgments Judicata Effects of Consent in only pos- substantial assets ever Infringement Litigation, M&G Patent 36 Fed. very engineering drawings sessed (1977). were the Bar 171 J. We note that consent acquired. subject that Fordees degree decrees are to a sufficient judicial supervision protect parties reject argument We also Fordees’ from overreaching. coercion and economic that a in formally successor interest must Schlegel Co., supra. See Man. USM Co. v. predecessor’s take over its business. In Therefore, engage we refuse in ad hoc Co., Schnitger Canoga v. Elec. F.2d 628 462 examinations valid consent decrees. See (9th 1971) curiam), (per Cir. the court found Equip. Co., American Co. v. Wikomi Man. privity prospective buyer of in between supra. manufacturer, fringing products and their who previously enjoined had been sell from We view reiterate we ex ing them. This derivative successive inter in pressed Schlegel, that we wish to encour property right est to the same was suffi age litigation. settlement in See privity. Equip. cient to establish See Amer. Ind., also Wallace Clark & Co. Acheson Co., Man. Co. v. Wikomi Man. 630 F.2d 544 Inc., (2d 1976), F.2d 532 846 Cir. cert. de (7th 1980). at 545 n. 1 Cir. nied, 2177, 425 U.S. 96 48 S.Ct. L.Ed.2d (1976); Co., 800 Aro Witan Co. v. Allied 531 longer Federal courts are no bound (6th 1975), denied, F.2d 1368 Cir. cert. by rigid parties definitions of the or their S.Ct. L.Ed.2d 140 privies judicata purposes applying res (1976); Langsam, supra. strong public estoppel. or Hayaka collateral Jackson v. achieving finality litigation interest wa, 1979), 605 F.2d 1121 cert. de by giving judicata advanced res effect nied, 952, 1601, 445 100 U.S. S.Ct. 63 Schlegel consent decrees. We in decided (1980). L.Ed.2d 787 See also Montana v. finality outweighs that the interest in the 155-158, States, 440 United 99 limiting patent monopolies, in interest ab 970, 974-76, (1979). S.Ct. 59 L.Ed.2d 210 strong overriding policy. sent a See also The evidence in the record us convinces Co., Ind., Wallace Clark v. Acheson & Inc. aligned” Fordees’ were closely interests “so Inc., Note, Merger supra; Bar and Treat with fairly those of M&G that were ment of Consent in Patent Decrees In represented the Pennsylvania proceed in fringement Litigation, 74 Colum.L.Rev. ings. Askew, Aerojet-General See Co. v. (1974). 1332 We see no in this reason case 1975), denied, 511 (5th F.2d 710 Cir. cert. purely private, to exalt the economic inter 423 U.S. 96 S.Ct. 46 L.Ed.2d 137 by est advanced Fordees above either of the (1975). See also Jefferson of School Soc. competing public in present interests Schle Bd., Science v. Act. Sub. Control 331 F.2d 76 gel. (D.C.Cir. 1973). Finally, Fordees invites us to examine the Infringement II. economic circumstances precipitated the consent argues decree. Fordees that it The we face is wheth second issue entered the consent decree under economic er the reline towers that Fordees built after duress, infringe pat therefore the decree have the Titzel should not the consent decree judicata recognize res validity effect. While we and its inter ent. The of a 3 law, damage might that fear pretation questions of a treble award are both which case, significant upon inquiries. be a incentive to In- may depend settle factual (1952). 3. 35 U.S.C. § hand, question

fringement, compared on the other the is Fordees with towers both the of fact. Metal Weidman Masters Glass Titzel and the M&G towers chal- Co., 1980); Master F.2d 1024 in lenged Pennsylvania the litigation. It Co., Schlegel supra. Co. v. In found that the appropriated Man. USM Fordees towers Weidman, precise the support Fifth Circuit summarized the neither the mode of —“base principles support” taught means apply of review we must to the Claim I of the — patent, specific nor the issue: method of connect- ing the carrier coupler means with the obviously infringed A if the Nevertheless, means. the court found these incorporates teaching accused device its too modifications minor to avoid substantial In literally reading read. equivalence. towers appropri- Fordees determine whether it been has thus in- ated basic principle Titzel’s and mode of fringed, its claims must be in con- read operation “normally as free-standing reline specifications nection its with its file towers”:

history; patent’s claims cannot be “Free-standing” requires that the struc- construed to reach beyond teachings position ture remain stable in without the expressed modifica- Minor cables, use of means such over- are, therefore, tions sufficient avoid special cranes brought head frames infringement. literal Such alterations specific purpose in for of holding it in however, may, result in a device that place. Each of the Fordees reline towers appropriates the incorpo- invention and position is stable in primary on a founda- rates concept its innovative into device tion at service floor various that performs substantially the same stabilize and the tower substantially way function in the same Admittedly, cables, within vessel. no substantially obtain the same result. braces, overhead cranes other ancillary or equivalents” protects “doctrine of brought specific devices are in for the patent and its inventor from such abuse. purpose of maintaining stability question, The ultimate as the title of requirement the structure. The that the implies, the rubric is whether the accused be standing free require does not functionally device is equivalent to the imply or that the is totally sup- structure patented equiva- one. What constitutes ported from its bottom or base. lency is determined context scope prior art, the nature of the primary argument Fordees’ on the in- the real invention disclosed its fringement issue is sup- that “base means specifications examples and the ex- port” is the heart of the Titzel For- tent of innovation A accomplished. pio- dees claims its own reline towers do neer patent disclosing a never function incorporate support not base means and accomplished before is entitled to broader infringe not literally thus do Titzel. It protection than one that makes minor presses further argues that a tower improvements technology. on known support without base means cannot be range equivalents of is also limited equivalent to the Titzel reline tower. patentee’s surrender or amend- The District Court decided that the es- response ment of claims to of demands patent free-standing sence of Titzel is a patent examiner, process a that cre- merely support tower and base means. wrapper ates estoppel.” “file 623 F.2d at Therefore, single Fordees’ omission or modi- 1026. of support fication base means not a change infringe-, material that would avoid A. The Equivalents Doctrine of legal ment. We find no or factual basis on The District Court disagree. decided that Fordees’ which As to the court below not- subsequent reline substantially ed, towers were “incorporation every of each and ele- equivalent to by ment, the reline exception, towers covered every without of claim of Titzel scrupulously The court patented pre- a structure is not an absolute means, er requisite finding cage to a of an means with said (empha- structure,” Clarage citing accused Fan Co. added). sis Co., v. B&F 148 F.2d 786 Sturtevant terms, then, By patent its does not 1947). solely support teach base means. As interpret patent, we the Titzel Furthermore, Romualdi, engineer- Dr. an language to reference of the ing expert, testified at trial that a reline claims, wrapper history, its file and the resting solely tower on feet at its base art, prior agree support we that base means would be an unstable structure that would is not the heart of the invention. A careful inevitably collapse under an eccentric load. reading I4 Claim itself He also confirmed that the Titzel reveals that the Titzel tower is not in fact taught support, several means of including solely supported by base means. Additional plurality support arms. In addition to supports produce are called for a free to itself, providing support for the tower these standing following structure. lan support working arms form the tower’s guage calls support: for two means of platform. portable A work particularly tower specification Vulcan’s Exhibit adapted having for use in vessels an the Titzel shows that the tower is opening smaller than the interior com- actually supported by ring a trunnion across prising an elongated adapt- tower means waist, its which allows rotation around a ed pass through opening in said pivot point. According Romualdi, to Dr. normally standing, vessel and be free said support “base means” is a term of art broad including tower means upper and lower enough any to include device below the portions having spaced apart vertically rings, “top waist or trunnion support” extending at members the corners of a anything means above. quadrangle, vertically extending said members on portion being pro- the lower prior Our review of the art reinforces the vertically vided with carrier means mova- conclusion support that base means is not thereon, ble base means on the lower significant the heart of Titzel. One of the portion adapted engage the vessel bot- advances Titzel achieved was the introduc tom spaced apart adjustable at level “free-standing’’ tion of a tower. No relin points whereby the may tower be leveled ing prior device found in the art can be supported, a plurality “free-standing.” described as theOn con spaced arms about said carrier means and trary, require support point all from some

pivoted thereon position parallel from a operati outside the vessel in which are portion the lower of the tower to a ng.5 position transverse to the means to tower foregoing From the form examination of working platform, spaced cage art, Titzel and the we guides within upper por- and lower interpre conclude that the District forming tions Court’s cage guide an inner ex- legally tation of Titzel tending adjacent pat from correct. The one end of the tower, grant enough tower to ent’s is broad opposite encompass end of said tower, cage free-standing vertically reline not one which movable on said cage guides solely within the relies on base means. upper and lower Titzel portions represents and lift means on the tow- a substantial advance over the er selectively raising prior through improve means lowering and art a number of cage means, ments, the cage said being taken in combination. It achieves selectively coupled with said carrier what is known in the art “synergy” as —the raising means for lowering and said carri- greater device as a whole is sum than the of only patent Relining prior 4. I Claim is the claim of four 5. in the devices the art include: allegedly infringed. Myers, 1,380,074; that has been U.S. Letters Patent No. Laa- beck, 2,563,682; Arnold, 2,933,918; No. No. Abarotin, 3,033,389. No. 1114 reason, reject untarily by parts. For this we For- restricts himself an

its amend- reading. narrow structure, dees’ ment of his claim to specific a having thus narrowed his claim in order We also find substantial evidence patent, “may by to obtain a he con- the record to the District Court’s struction, by the or resort to doctrine of the reline conclusion that towers construct equivalents, give larger to the claim the by ed Fordees after the consent decree fall scope it might which have had without patent within the claims of the Titzel under the amendments which amount to a dis- equivalents. the doctrine of See Graver claimer.” Products, Mfg. Air 339 Co. v. Linde U.S. 605, 854, 94 1097 (1950); Co., supra, 70 L.Ed. Arco slip op. S.Ct. Ind. v. Chemcast at Olympic Fastening Systems, 439, Inc. v. Tex Co., quoting I.T.S. Co. v. Essex 272 U.S. tron, Inc., (6th 1974), 504 609 429, 141, F.2d Cir. cert. 443-44, 136, 47 71 S.Ct. L.Ed. 335 denied, 1447, 420 U.S. 95 43 S.Ct. (1926) (citations emphasis omitted and add- (1975). L.Ed.2d 762 Dr. Romualdi testified ed). repeatedly and without contradiction that Vulcan, Fordees contends that hav there is no functional difference between ing previously argued before Patent £he towers, the Fordees and the M&G tower supported solely Office the tower is Furthermore, and the Titzel the bottom, from estopped the is now from specifications the for Fordees towers in claiming the heart of its invention is a plaintiff’s through exhibits 99 106 show vir standing free tower. tually identical structures.6 This evidence This be a classic for file wrap- would case supports finding the District Court’s per estoppel if Titzel’s original claim had equivalency. Arco See Ind. Chemcast free-standing described a if the Co., 1980). at F.2d 435 required Patent had Office the inventor to support by narrow his claim to recite base B. File Wrapper Estoppel facts, means alone. Were those the Vulcan Finally, we must consider whether estopped seeking would indeed be from prosecution history, wrapper,” or “file rejected benefit of the claim would be the Titzel patent operate will to remove prosecuting limited to towers with base Fordees’ towers from patent’s ambit. support. recently means of This court ob- Co., See Graham v. John Deere served that the “classic application of file (1966). 86 S.Ct. 15 L.Ed.2d 545 The wrapper estoppel occurs where a broad Supreme Court summarized the doctrine of claim is narrowed secure The “file wrapper estoppel” as follows: patentee estopped is thereafter from assert- It is well applicant settled that where an ing scope that his has originally to cover a new combination narrowing claimed before the amendment.” compelled is by rejection appli- his Co., supra, Arco Ind. v. Chemcast at 439. by cation the Patent to narrow Office his However, the Titzel file shows that claim the introduction of new ele- patent ultimately granted ment, actually is broad- he cannot issue after the of the er in scope description origi- than the dropping broaden his claim Thus, nal claims. element this case is reverse of which he compelled in- original clude in Arco. Titzel’s and first order to amended secure his . .. applications patentee estopped sup- is called for “base means thereafter port,” claim remarking rejected benefit of his claim the device was the or such major first construction of his amended derive its from claim thereto, equivalent (citation would be top support. bottom and to eliminate all omitted) applicant rejected So where an applica- whose Patent these Office claim rejected tions, on reference to a whereupon Titzel submitted a differ- objection appeal, without or vol- ent set of claims. Appendix. 6. See

1115 support in of the APPENDIX The inventor’s remarks claims, eventually accept- new which were

ed, not limit discussion to base did Rather, device

support. they described the “supported entirely by one the vessel” all

and as a “tower structure ... in which vessel within

of the comes from the operating.” is The

which the tower “free-standing”

as issued describes a struc- earlier,

ture. As we observed “free stand- from the bot-

ing” imply support does not Rather, engineers, language

tom. in the self-sufficiency. implies stability

it

Furthermore, taken the re- Fordees has context. history

marks in Titzel’s file out of language is not as limited as Fordees

suggests. It in fact describes a free-stand- For ex-

ing tower in numerous references. “(the is)

ample: supported entirely progress- in work is the vessel which the

ing.” Distinguishing the Titzel invention patents,

from the Abarotin Arnold and state, separate require

remarks “Both device;” and,

supporting to a in contrast previous patent, sugges-

third is no “there

tion Laaback of a tower structure such as

, that called for in the claims and in which all comes from the vessel within operating.”

which the tower is history con

Although the file does sup

tain certain remarks that stress base means,

port we need not infer an intention the remarks are exclusive. Those

statements were made in an effort to de distinguish pri-

scribe the device and to generally, distinguish

or art rather than patentability. art terms of See City Treating,

Kolene Co. Motor Metal

Inc., (6th 1971), 440 F.2d 77 cert. de Cir.

nied, 404 92 30 L.Ed.2d S.Ct. Schramm, Hinde, (1971); Inc. v. 385 (N.D.Ill.1974), mem.,

F.Supp. 1037 aff’d mem., (7th 1975),

F.2d 511 Cir. aff’d 1976). Accordingly,

F.2d 713 we wrapper estoppel

conclude that file will not infringement.

save Fordees from judgment of the District Court

affirmed.

1H7 JOINER, Judge, dissenting. District opinion. Claim 2 describes a temporary support feature to be setting used for I dissent. tower, the feature identified numerals through diagram on the appended to assumption prevailing On the opinion. this clear, however, It is that base judicata privity of res cir- law in this key support feature of prevents challeng- cuit the defendant from as is following evident from the issue, ing I validity at history applications successive for the would nonetheless hold that the record does patent. support finding not of and the ground. would reverse on this application The initial described a tower jack which had the means at bottom of the matter, with preliminary disagree As a I supporting positioning tower for and the crucial majority opinion’s the characteriza- Additionally, tower. the claims described teachings patent of the tion of the outrigger designed members on tower the regard re- support to means for the Titzel supporting spaced to bear on members from lining patent I of the teaches tower. Claim and outrigger about the tower. The mem- only support, one “base on means of means by bers are now identified numerals 36-39 portion adapted engage lower the the to diagram in the current of the The spaced apart adjustable bottom vessel at patent rejected office claim regarding the points whereby le- may level the tower be support base means in view of the Laaback supported and ...” The second velled. patent taught resting which a tower on one majority support by means of relied on the support point. application base The was portion patent does not exist. The of the then amended to the stress that base means supports claim on to the for refers relied primary were the of support the tower. working platform: plurality the “[A] However, outriggers references to the were support spaced about carrier arms said application This reject- retained. was also pivoted position means and thereon from a ed, but not because of relating the claims parallel portion of to the lower the tower Rather, support base outrigger means. the position transverse to the tower means to rejected feature in view of the Laaback aspect working platform...” form a This patent taught support which top by way of provide the not for support tower does platform conjunction with the base itself, by the tower but is the means which Finally, means identified appli- above. the supported. work is platform the resubmitted, cation was by this time a com- plete rewording of all the claims. The out- Secondly, majority plain- states the that rigger feature was relegated providing tiff’s exhibit 99 reveals that the tower is temporary support setting the tower. actually by a supported ring trunnion across only support The means identified in Claim waist, its which allows rotation around support I was the base means. however, pivot point. reflects, The record ring supports that the the trunnion not applicant’s lawyer The remarks of the tower, but the within which tow- vessel the in support submitted second the amended er is used. application give to the meaning substance standing.” of the term “free patent The case in this describes a tower is “normally standing.” that free term have bring been rewritten to [The claims] standing” given by “free be must content out fact normally that the tower is the claims of itself as its patent as well freestanding solely supported from above, history. file As of the noted Claim I the base of the tower . . . only sup- refers one means of port by base identified nu- The Laaback shows a vertical —the diagram appended meral 16 on to this primarily supported lift scaffold which is

H19 pellant appellee agree 28 and 32 that there is no top by the members at [the acting conjunction by with a difference between the first built platform] tower Again leveling subsequent by device 46 Fordees and towers built it. [at base]. suggestion in Laaback of a The fact there is no the defendant’s towers de- for in structure such as that called rived their primary support tower from the ser- support the claims and in which all distinguishes vice floor its towers from vessel within which the plaintiff’s comes from the patent, precludes finding operating. [Emphasis supplied.] of infringement. teaches sole support, base means and the method of remarks It was based on these support utilized the defendant is sub- approved examiner the final claims stantially different from claimed in and issued the simply and is equivalent. The use of a means to support the tower trial, expert, Dr. P. plaintiff’s At James from the service floor cannot be considered Romualdi, testified that the Titzel tower equivalent an because this support means of support had three means. He first identi- (Laaback is described in the pat- art fied the base means. He then iden- ent). plat- tified the contributed

form identified the numeral 30 when it reasons, I would conclude For these floor, is connected to the service 31. Final- finding of the district court’s ly, outrigger supports, he identified the but record, and reverse. supported by the is not supports stated that these are not essential platform operate when the base means and

together. stated that if the tower were He

supported only by the base means it would standing.

not be stable and thus not free

However, identifying portions when means, teaching support he

pointed regarding sup- to no reference

port platform derived from the when at-

tached to the service floor. He could not taught

have stated that such simply for it does not teach

by any means other than the base means temporary setting support

and the derived outriggers.

from the In fact the

drawings platform show that is not Figure

attached to the tower. 1 of the

diagrams appended opinion. to this

The record before this court indicates

that the Titzel tower functions in a manner

not described and in a man- rejected by

ner office. How-

ever, question before this court infringe plain-

whether defendant’s towers used,

tiff’s they towers as but whether in-

fringe plaintiff’s patent. This do not. the M&G court found

The district primarily were Fordees reline towers ap- floor. Eoth the service

supported from America,

UNITED STATES of

Plaintiff-Appellee,

Joseph MARINO, Joseph Castello, Pietro Mary Williams,

Orlando and Alice

Defendants-Appellants. 79-5277, 79-5304,

Nos. 79-5305

and 79-5278.

United States Appeals, Court of

Sixth Circuit.

Argued Dec. 1980. Aug. 31,

Decided 1981.

Rehearing 19,1981. Denied Oct.

Case Details

Case Name: Vulcan, Inc. v. Fordees Corporation

Court Name: Court of Appeals for the Sixth Circuit

Date Published: Oct 14, 1981

Citation: 658 F.2d 1106

Docket Number: 78-3325

Court Abbreviation: 6th Cir.