Coleco Industries, Inc. v. International Trade Commission

Rich, Judge,

concurring,

witb wbom Market, Chief Judge, joins.'

Tbe record, more particularly tbe file bistory of appellant’s patent, makes it abundantly clear tbat tbe invention of tbe ’917 patent in suit is simply — to use appellant’s own words (EX 135) — “an improvement for interlocking tbe horizontal rails or support members witb tbe vertical support members or posts.” Tbe only means disclosed for doing tbat are either depending tabs struck down out of tbe bottom end portions of tbe sbeetmetal horizontal rails, which leaves boles in them, or a separate locking member or plate witb depending tabs, which tabs can be inserted through tbe boles in tbe ends of tbe rails, or both. Whichever form of tabs is used, they lock tbe rail ends to tbe posts by being inserted in matching slots in a seating plate on tbe top of tbe post. That is appellant’s interlock invention.

Reading tbe claims in suit in tbe light of tbe specification, as they must be, they are literally limited to “depending retaining elements [tabs]” on “tbe end portions of said horizontal support members [rails].” Utilizing dictionary definitions of tbe word “depending,” tbe ITC held tbat tbe “retaining elements” bad to ho fixed to tbe rails, by being integral therewith or otherwise. So construed, tbe claims of course do not read on entirely separate fastening elements such as tbe screws appellant argues meet tbe term “depending retaining elements” of tbe claims in suit.

Tbe claims, therefore, are not infringed when they are given their ordinary meaning. This is still true even if tbe claims are given a construction broad enough to read on having tbe tabs on a separate locking member, which is appellant’s preferred embodiment, though such construction would be stretching them considerably.

As to applying tbe doctrine of equivalents in this case, no basis has been laid for its application by showing, for example, tbat appellant’s invention has made a great advance in tbe art or tbat appellees have appropriated tbe essence of tbe invention. The doctrine is an exception to tbe rule tbat patentees are limited to what they claim and is not applied in every case. See 7 Deller’s Walker on Patents § 546 (2d ed. 1972). I would point out tbat in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950), tbe Court said at 608 tbat tbe doctrine of equivalents may be applied “when tbe proper circumstances for its application arise.” One such circumstance is appropriating the invention while avoiding claim limitations through use of equivalents therefor. Appellant invented an interlock between metal members which appellees have come no where near appropri *119 ating. All they use is screws. Surely, it is not necessary to make a complicated excursion into the prior art to establish what we can judicially notice, that nothing is commoner than securing parts together with screws; and, if the parts be of sheet metal, securing them with sheet-metal screws. The technology of fastening metal parts together with screws is common property and no part of appellant’s invention. The fact cannot-be obscured by writing long combination claims in “peripheral” form with appellant’s invention buried in the middle; he has made it clear as day that the swimming pool, or the swimming pool frame assembly, is not what he invented, but only the improved interlocking connections between the rails and posts thereof by which they are attached to each other.- Having made that clear in his specification and claims and prosecution history, it is utterly absurd that he should now contend that his invention encompasses the use of screws instead of the interlock he invented. If he is to so insist, he does so “to the death,” for, as the Commission minority opinions pointed out, if the claims read on fastening the parts together with screws they must be invalid. Arriving at this conclusion does not require an estoppel.

Finding no ground for applying the doctrine of equivalents, I likewise find no reason to counter it by invoking the doctrine of estoppel based on the prosecution history — quaintly still called “file wrapper” estoppel though it has never been clear what the wrapper, or table of contents of the file which it is, has to do with the estoppel. This is a simple case and it should be simply disposed of by agreeing with the ITC majority’s construction of the claims. At least it is reasonable and saves them from certain invalidity. Appellant must be content with protection on what he invented which is the most the patent statutes entitle him to. The fundamental and correct approach to this case is to ask: What did appellant invent? Are ap-pellees using it? The invocation of complicated patent law doctrines and counter doctrines to answer those easily-answered questions is wholly unnecessary. The unnecessary discussion of them, which I do not join, only complicates the case law.

The majority applies the “three-pronged test of equivalency” — does defendant employ “substantially the same means to accomplish substantially the same result in substantially the same way”? — to find that defendant’s screw connection is, in law, the equivalent of patent-ee’s invention. I disagree with the analysis because at least two prongs of the test are not satisfied. Assuming the same result is attained (securing posts and rails together), defendant’s screws are not “substantially the same means” as the patentee’s tabs and slots and they do not function in “substantially the same way.” Whether the total result is substantially the same is also a matter of doubt. *120 The tabs provide functions the screws cannot; they allow the pool elements to be initially assembled without inserting screws.

If a patentee is estopped by his prosecution history to assert that a claim is broad enough to be infringed by an accused structure, as the majority is holding to be the case here, it is wasted motion, if not an absurdity, to first apply the doctrine of equivalents to expand the claim “beyond its literal confines” to cover the structure and in the next breath contract it to its original literal scope. It suffices to apply the estoppel. Clearly, the doctrine of equivalents is inapplicable. That was apparently the view the Commission took of the matter.

In conclusion, this is simply not a case for application of the doctrine of equivalents. The minimum showing for a finding of infringement on any theory is that the alleged infringer has taken something the pat-entee invented. There is no such showing here.