Appendix — Cambridge Wire Cloth Co. v. Laitram Corp.

Supreme Court brief1989

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UNITED STATES COURT OF APPEALS FOR

THE FEDERAL CIRCUIT

88-1209, -1210

THE LAITRAM CORPORATION and

INTRALOX, INC.,

Plaintiffs-Appellants,

Vv.

CAMBRIDGE WIRE CLOTH COMPANY,

Defendant-Appellee.

DECIDED: December 12, 1988

Before MARKEY, Chief Judge, NICHOLS,

Senior Judge, and RE, Chief Judge.

The Laitram Corporation and Intralox,

Inc. (Laitram) appeal from a judgment of

the United States District Court for the

District of Maryland, No. 2 83-3126,

finding that the Cambridge Wire Cloth

Company (CWC) did not infringe Patent

Nos. 3,870,141, 4,051,949, and Re.30,341.

We reverse and remand.

“The Honorable Edward D. Re, Chief Judge of

the Court of International Trade, sitting by

designation.

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Background

In 1983, Laitram sued CWC for

infringement of U.S. Patents 3,870,141

('141), 4,051,949 ('949), 4,159,764

(‘763) and Re.30,341 (’'341). The accused

products were CWC’s modular plastic

conveyor belt (CAM-CLEAN I) and a belt

Grive system. In 1985, the U.S. District

Court for the District of Maryland upheld

the validity of the patents, found each

infringed, and enjoined further

infringement. Laitram Corp. v. Cambridge

Wire Cloth Co., 226 USPQ 289 (D. Md.

1985), aff'd in part, rev’d in part, 785

F. 2d 292, 228 USPQ 935 (Fed. Cir.),

cert. denied, 107 S.Ct. 85 (1986) (the

first trial). In a thorough and

comprehensive opinion, the court outlined

CWC’s failed effort to obtain rights to

the patented invention through merger,

acquisition, or joint venture, followed

by CWC’s engagement of a design firm to

“incorporate features similar to Laitram

patents." Id. at 291. The court

correctly interpreted the claims and

fully described the inventions and

patents in that opinion.

In mid-1986, CWC filed and the court

denied a motion to exclude form the

injunction a “redesigned” module (CAM-

CLEAN II). In November 1986, CWC sought

a judgment declaring CAM-CLEAN II non-

infringing. The court dismissed that

suit. When CWC began manufacture of CAM-

CLEAN II, Laitram sued for infringement

of claim 1 of the ‘141 patent, claim 21

of the ‘949 patent, and claim 1 of the

‘341 patent. Broadly, the ‘141 patent

discloses plastic modules having links

joinable by plastic rods to create a

conveyor belt; the ‘949 patent discloses

a module with raised ribs; and the ’341

patent discloses a sprocket drive system

for conveyor belts.

Laitram moved for a preliminary

injunction for a finding of contempt.

The court consolidated all matters before

it and conducted a six-hour trial on

November 12, 1987.’ In an opinion

dictated from the bench, the court found

that CAM-CLEAN II infringed none of the

three asserted claims and denied the

contempt motion.

Issues

1. Whether the district court erred

in determining non-infringement of the

asserted claims of the ‘141, ‘949, and

‘Laitram says "only minutes were allowed

for consideration of the '949 and ’'341 issues."

Because no such objection was presented to the

district court, it is disregarded here.

‘341 patents.

2. Whether the district court

properly denied the contempt motion.

OPINION

Introduction

This appeal again illustrates one of

the many difficult dichotomies that lurk

in the lacunae of patent law. On one

side rests the very important,

statutorily-created necessity of

employing the clearest possible wording

in preparing the specification and claims

of a patent, one of “the most difficult

legal instruments to draw with

2 On the other lies the

accuracy."

equally important, judicially-created

necessity of determining infringement

without the risk of injustice that may

2sperry v. Florida, 373 U.S. 379,, 383

(1963) (quoting Toplifft v. Topliff, 145 o.3. i356,

171 (1892)).

result from a blindered focus on words

alone. The former, set out in 35 U.S.C.

§ 112, recognizes a competitor’s need for

precise wording as an aid in avoiding

infringement. The latter is called the

"doctrine of equivalents". While

requiring a look at all the words while

resisting their tyranny,” and requiring,

because the claims measure the invention,

a look at all claim limitations, the

doctrine, in a proper case, "temper[s]

unsparing logic and prevent[s] an

infringer from stealing the benefits of

an invention." Graver Tank & Mfg. Co. v.

Linde Air Prods. Co., 339 U.S. 605, 608,

85 USPQ 328 at 330 (1950)(quoting Royal

Typewriter Co. v. Remington Rand, 168

*Rich, Escaping the Tyranny of Words-~-lIs

Evolution in Legal Thinking POssible?, 60 JPOS

271 (1978); wintes” The Disorderly Conduct of

Words, in Freedom’s Prophet 35 (E. Re ed. 1981).

F.2d 691, 692, (2d Cir. 1948) (L. Hand,

J.)). In that sense, the doctrine

recognizes a fact of the real business

world: words are not misappropriated;

claimed inventions are.”

In the present case, the semantic

antics of counsel at trial and in their

briefs on appeal have obfuscated the true

nature of the dispute as it must be

> That obfuscation led

perceived in law.

in turn to a failure to apply the

"substantially the same function in

substantially the same way to obtain

substantially the same result" guidance

“The competing policies present in 35 USC §

112 and the doctrine of equivalents are

exhaustively discussed in the additional opinions

filed in Pennwalt Corp. v. Durand-Wayland, Inc.,

833 F.2d 931, 4 USPQ2d 1737 (Fed. Cir. 1987). In

this case, it is unnecessary to repeat that

discussion.

Scounsel for each side accuses the other of

sanctionably distorting and misrepresenting the

record. Each recasts arguments of the other and

then attacks the recasted arguments.

of Graver Tank, 339 U.S. at 608, 85 USPQ

at 330.°

The basic facts are either undisputed

or accepted here as found by the district

court. The difficulty with the appealed

judgment lies in the district court’s

application to the facts of the law

governing determinations of infringement.

1. Infringement

The ‘141 Patent

(a) Claim Interpretation

Claim 1 of the ‘141 patent reads:

1. A module for constructing

linked structures, said module

comprising in combination:

a first plurality of link ends of

substantially identical width, each

being formed to circumscribe a

pivotal hole, said hole of said

first plurality being arranged

coaxially;

*The quoted phrase appears repeatedly in

the district court’s earlier opinion, 226 USPQ at

294, 296, 297, 301, 302, 303, and 304, but

appears nowhere in the opinion in this case and

is nowhere found in CWC’s brief.

a second like plurality of iinks of

substantially identical width, each

* being formed to circumscribe a

pivotal hole, said holes of said

second plurality being arranged

coaxially, the axes of respective

holes of both pluralities of link

ends being substantially parallel;

and

a plurality of spaced apart

elongated members each integrally

formed with and joining a pair of

corresponding link ends of said

first and second pluralities, said

members being joined by at least

one cross rib also formed

integrally therewith and extending

parallel to said axes;

said link ends being dimensioned

and spaced apart by a distance

slightly greater than said width so

that said module is end-to-end

reversible, so that a plurality of

gaid modules may be engaged with

each other at said ends.

It is undisputed that all limitations

of the claim, save the last, read

directly on CAM-CLEAN II. The district

court focused on the words "slightly

greater", correctly viewing that

adjectival phrase as 4 "sloppy term"

10a

requiring for its interpretation

reference to the specification, the

prosecution, and the prior litigation:

You cannot make exactly that

determination [whether "slightly

greater means .2 but not .3, or .3

but not .06."]. It is not exact.

It is not scientific. It isa

sloppy term, has no meaning for

this case outside of the claims of

Patent 141, as interpreted by the

prosecution of that patent in the

patent office and as interpreted by

the prior history of this

litigation, including Mr. Lapeyre’s

testimony, which is what he won on

in the first suit.

Having had a witness measure the link

end widths and the spacing between link

ends of Laitram’s commercial product and

of the accused CAM-CLEAN II module, the

court found the spacing in the former was

106% of the width and that in the latter

was 135%.’ Deeming the latter "more than

"Laitram vigorously argues "plain error" in

the district court’s comparison with a commercial

product instead of with the claim. CWC says

Laitram failed to object at trial. In view of

our disposition of the appeal, we need not and do

lla

slightly greater", the court found

noninfringement.® As discussed below,

application of the law governing

infringement by equivalents renders that

ultimate finding of noninfringement

clearly erroneous.

The phrase “slightly greater" is not

presented in a vacuum. The claim

contains definitional parameters: "so

that said module is end-to-end

not treat these arguments.

‘there are, apparently, two versions of the

belt called "CAM-CLEAN II", a “light duty” and a4

"heavy duty perforated top" version. The

district court appears to have focused only on

the former, for CWC’s vice-president-in-charge of

redesign testified twice on direct examination

that no change was “ever made in the link end

spacing of the heavy duty perf [sic] from CAM

CLEAN I to CAM CLEAN II", and that the only

change to that version was the (irrelevant)

removal of spacers on two of 24 link ends. The

"perforated top" was plaintiff’s exhibit 58 in

the first trial and was there found to be an

infringement. 226 USPQ at 304. For convenience,

we employ "CAM CLEAN II" here to designate the

accused product dealt with by the district court.

The parties’ dispute on whether certain products

were or were not accused of infringement in the

first and second trials must be resolved, if at

all, by the district court on remand.

12a

reversible, so that a plurality of said

modules may be engaged with each other at

said ends”".’

In addition, the district

court properly interpreted the claim in

light of the prosecution history in the

first trial, defining "slightly greater"

spacing in terms of its purpose, i.e.,

spacing that would "minimize bending and

maximize shear".

Assuming, arguendo, the district

court’s interpretation of the phrase

"slightly greater", in the second trial,

as the 106% width in Laitram’s product,

CWC’s 135% width may be seen as avoiding

a finding of literal infringement. The

question would remain, however, of

whether CWC’s 135% width constituted a

"after the first trial, the district court

found that the CAM-CLEAN I product met the end-

to-end definitional parameter. 226 USPQ at 296.

Neither "so that" was discussed in the opinion

from the bench after the second trial.

13a

change sufficient to escape a finding of

infringement under the doctrine of

equivalents.

(b) Doctrine of Equivalents

In the first trial, the court found

that CAM-CLEAN I constituted an

“infringement by equivalents of claim 1."

226 USPQ at 298. In this trial, the

court’s entire discussion of equivalence

with respect to CAM-CLEAN II, reads:

It is true that all that has been

done in the redesign of Cam-Clean

II is an alteration of the spacing,

relative spacing of the link ends.

That is true, but if the

result is that when the patent

language, the claim language is

viewed in context of its

prosecution history, as it has to

be under the doctrine of

equivalence (sic, equivalents), is

the result is that even applying

the doctrine of equivalence [sic]

there is no longer a spacing

between links that is only slightly

greater than the width of the

links, then there is no

infringement. That is all there is

to it. It is that simple.

l4a

To me the telling proof is made

up in two ways. Number one, the

tests, in my opinion--although the

difference is admittedly small at

working loads, at the higher loads,

where you would test to ascertain the

true strength of the material--in my

judgment the tests show that the Cam-

Clean II is less resistant to the

bending and elongation forces than the

original Cam-Clean, but that is not

real [sic] really the most important

question.

The most important question

is, what is the spacing of the

redesign Cam-Clean relative to the

width of the link ends?

The foregoing application of the

doctrine of equivalents is legally

flawed. Having determined that all CWC

did was to alter the spacing, the court

did not apply its own criterion derived

from the prosecution history in the

earlier trial, i.e., whether the

“alteration” left the spacing such that

it would still achieve the "minimize

bending/maximize shear” purpose the court

found as the measure of the “slightly

15a

greater" phrase in the limitation.

Applied to all the basic facts, the law

required a finding that the spacing in

CAM-CLEAN II was the equivalent of the

“slightly greater” limitation in the

claim.

The “tests” relied upon by the

district court were non-probative for at

least five reasons: (1) they subjected

the CAM-CLEAN II to a force more than

three times the 1500 pounds to which such

belts are subjected in use and for which

they are warranted (in the prior trial,

the district court correctly rejected

such tests because "the belt was

subjected to forces way beyond the normal

range that would be applied in a working

situation” and because "There is nothing

in Mr. Lapeyre’s patent, even when

considering file wrapper estoppel, that

16a

claims that the rod is immune to bending

in his invention under extraordinary

conditions")'®; (2) the "admittedly

small" difference was an elongation, at

the working load, of less than 1/5 the

width of a human hair; (3) there is

nothing in the “slightly greater”

limitation dealing with any “strength of

the material” criterion; (4) whether CAM-

CLEAN II is “less” resistant is

irrelevant if the test of equivalency is

met; and (5) the tests did nothing to

show that CAM-CLEAN II had been changed

sufficiently to escape the equivalency

formulation set out in Graver Tank.

rn the first trial, the court noted

("Furthermore") that the rod in the test was

uncapped. In the present tests, the rod was

capped. The court did not note that fact in the

present trial, but CWC’s reliance on it before us

is misplaced, for that fact cannot affect the

principle that infringement is not escaped by

proof that the accused product is less

satisfactory under extreme circumstances not met

in normal use.

17a

In applying the doctrine, the "most

important question", is not "what is the

spacing,” but whether the spacing in the

accused product is equivalent to that in

the claim, i.e., whether it continues to

meet the district court’s “minimize

bending/maximize shear" criterion. If it

does, the rest of the claim being fully

met, CWC’s CAM-CLEAN II and the claimed

invention are substantially the same,

used in substantially the same way, to

achieve substantially the same result.

The criterion is not "zero

bending/unlimited shear." That may be an

ideal condition, but it is not claimed to

be achieved by the invention. See U.S.

v. Telectronics, Inc., No. 87-1445/1446,

slip opinion at 6-7 (Fed. Cir. 1988)

("avoid fibrous tissue formation" did not

mean there could be no fibrous tissue).

18a

CWC asserts, and cites evidence to show,

only that CAM-CLEAN II is less efficient,

i.e., that it does not minimize bending

and maximize shear quite as much as the

claimed invention does. Assuming,

arguendo, the truth of that assertion, it

cannot alone prevent a finding of

infringement under the doctrine of

equivalents. Perkin-Elmer Corp. v.

Computervision Corp., 732 F.2d 888, 901,

221 USPQ 669, 679 (Fed. Cir. 1984)

("exact identity of results is not

required in establishing equivalency").

That application of the doctrine arises

out of a recognition of a second real-

world phenomenon: inefficient

infringement is still infringement.”

‘While CWC is telling the courts that CAM-

CLEAN II is inferior to CAM-CLEAN I and the

claimed invention, the record contains its

communications in which CWC is telling customers

and potential customers that CAM-CLEAN II is "an

even better product" than CAM-CLEAN I, and that

19a

CWC does not dispute its vice

president’s testimony that CAM-CLEAN 5 ® i

performs substantially the same function

to achieve substantially the same result

as CAM-CLEAN I, that CWC sells CAM-CLEAN

II modules as interchangeable

replacements for CAM-CLEAN I, and that

CWC warrants CAM-CLEAN II for use at the

same maximum working strength (1550

lbs/ft) as CAM-CLEAN I. Nor does CWC

dispute Laitram’s assertion that CWC

shaved only 11/1000 of an inch off its

link ends. CWC does assert, irrelevantly

in this case, that it added plastic to

belts formed of CAM-CLEAN II modules are

"engineered for maximum strength". Nowhere does

the record reflect that CWC admits to the real

world what it tells us in its brief in this

court, i.e., that "CAM-CLEAN II is significantly

weaker and it pays significant other penalties

for not infringing" including "increased slop in

the belt, a highly undesirable feature" (ignoring

its vice-president’s testimony that when the belt

is "installed the slop would not be an opereble

factor."). The district court found, as

indicated infra, that CAM-CLEAN II at operating

loads was "not significantly weaker".

20a

beef up the link ends, a change described

in a deposition of CWC’s vice-president

as "insignificant." Most significantly,

the Graver Tank formula for equivalence

appears nowhere in CWC’s brief and

nowhere does CWC suggest, nor does it

show any basis for finding, that CAM-

CLEAN II does not perform "substantially

the same function in substantially the

same way to obtain substantially the same

ni2

result.

The district court’s discussion of the

prosecution history and its effect on

range of equivalents to which claim 1 was

entitled was this:

‘2ewC does not argue that CAM-CLEAN II

corresponds to the prior art, nor that a range of

equivalents sufficient to encompass CAM-CLEAN II

would encompass the prior art. Indeed, CWC’s

vice-president in charge of the redesign

testified that CWC did not use any of the prior

art in arriving at CAM-CLEAN II.

2la

That is, Mr. Lapeyre, although

he has [sic] acknowledged as a

pioneer inventor and certainly is

the first person that came up with

the idea of this plastic modular

belting, which is a wonderful idea,

nonetheless, he could not make a

broad claim that would get through

the patent office. He tried it.

He tried a very broad claim.

x * *

It is true that the belt is not, at

rated operating load, significantly

weaker than the original Cam-Clean

belt was; and if, in fact, Mr.

Lapeyre were entitled to a broad

claim here that covered all modular

plastic belting with multiple

links, then certainly the Cam-Clean

II, as redesigned, would still

infringe and I would so hold. But

he is not entitled to a broad

patent.

The "very broad claim" referred to is

necessarily the broadest, i.e., claim 1

as originally filed. The amendment added

"by a distance slightly greater than said

width" after "apart". The court went

on to cite file history arguments and the

inventor’s testimony in the earlier

22a

trial, all in support of its perfectly

correct determination that the purpose of

spacing no more than slightly greater was

to minimize bending and maximize shear.”

It is clear that a module in which the

Spacing was so great as to have no or

very little effect in minimizing bending

and maximizing shear would not accomplish

the purpose attributed to the "slightly

greater" limitation, but that is not this

case. Nor did the district court find,

as it could not on this record, that CAM-

CLEAN II’s spacing had a minimize

bending/maximize shear effect

substantially different from that

‘Sthe focus on the phrase "slightly

greater" tended to obscure the importance of

other claim elements contributing to minimizing

of bending and the maximization of shear,

"spacing" unrelated to other elements having no

effect. Claim 1 was actually amended four times.

Two of the intermediate amendments spoke of

resistance to “bending forces". That language

was deleted before allowance.

23a

intended by the limitation, or from that

of CAM-CLEAN I, or from that of Laitram’s

product.”

The court erred in treating the

amendment of claim 1 and arguments in the

file history as sufficient to preclude a

finding of infringement under the

doctrine of equivalents. It is not

necessary, of course, that an inventor be

entitled to a broad claim covering all

possible products in a line of products

before a court may award an invention

‘SewC’s vice president in charge of its

redesign effort testified that it began with a

delta spacing of 112 thousandths of an inch, then

reduced it to 100 thousandths, then reduced it

further to the 80 thousandths finally chosen as

the spacing in CAM-CLEAN II, a classic exposition

of the process by which one may proceed in

appropriating an invention (albeit with a little-

less-than-perfect embodiment) in the belief that

one is rpg, words in a claim. In opposing

Laitram’s motion for preliminary injunction, CWC

submitted a drawing of the intermediate, non-

chosen version with 100 thousandths spacing.

24a

pioneer status,’

Or a range of

equivalents sufficient to encompass a

particular accused product. It is

commonplace for claims to inventions,

pioneer and non-pioneer, to be amended

during prosecution. Though the "area of

equivalence" may vary, the doctrine of

equivalents is applicable to both, Graver

Tf the district court meant to find that

claim 1 set forth a pioneer invention, it should

have awarded that invention a very wide range of

equivalents. Laitram included in the appendices

a copy of the Memorandum and Order issued by the

District Court for the Eastern District of

Wisconsin in Rexnord, Inc. v. The Laitram

Corporation and Intralox, Inc., No. 85-C-1039,

(Jan. 28, 1988) in which the court found, citing

evidence, that the inventions disclosed in the

'141 and '949 patents "revolutionized the

industry and warrant[(s] pioneer status." CWC

does not discuss the "pioneer" question, but says

Rexnord issued after the district court’s

decision in this case and involved a different

defendant and a different accused product,

neither of which assertions is relevant to

whether the invention is of a pioneer nature.

Because the district court in the present case

did not expressly find the invention either

pioneer or non-pioneer, and because the Rexnord

Memorandum and Order were not before the district

court and are not before this court in this

appeal, we deem it unnecessary to treat

the"pioneer" question in reaching our conclusions

here.

25a

Tank, 339 U.S. at 608, 85 USPQ at 330.

Thus it was not necessary that the

present inventor be entitled to a broad

claim covering "all modular plastic

belting with multiple links" before it

could be determined that "“CAM-CLEAN II,

as redesigned, would still infringe."

What counts is the thrust of an

amendment and remarks in the prosecution

history. Here the amendment added "by a

distance slightly greater than said

width" and the inventor’s remarks

described the purpose of such limited

spacing (necessarily in cooperation with

the rest of elements in the claim) as

being to minimize bending and maximize

shear. From the absence of any finding

that CAM-CLEAN II did not minimize

bending and maximize shear, and from the

district court’s uncontested finding that

26a

the "difference is admittedly small at

working loads", and from the district

court’s uncontested finding that CAM-

CLEAN II, even at extraordinary loads, is

only "less resistant to bending and

elongation forces", and from the district

court’s effectively uncontested finding

that “the belt is not, at operating load

significantly weaker," and from CWC’s

admission that CAM-CLEAN I and II are

interchangeable and identically

warranted, it can only be concluded that

in CAM-CLEAN II bending is minimized and

shear is maximized. Nothing in the

prosecution history of the ‘141 patent

conflicts in any manner with that

conclusion.

{d) Conclusion on the ‘141 Patent

Every limitation in claim l, or its

equivalent (the spacing in CAM-CLEAN II

27a

being equivalent to "slightly greater"),

is thus found in CAM-CLEAN II. Compare

Pennwalt, 833 F.2d at 939, 4 USPQ2d at

1743 (means-plus-function claim is not

infringed under the doctrine of

equivalents when accused device includes

no component performing one of functions

listed in claim or an equivalent

function). The simple fact that the

spacing, measured in 1000ths of an inch,

is greater in CAM-CLEAN II than in

Laitram’s commercial product, or greater

than in CAM-CLEAN I, or greater than some

generalized notion of "slightly", is

irrelevant when the spacing is

insufficient to move CAM-CLEAN II outside

the guidance of Graver Tank. Application

of the law governing determination of

equivalents to the established facts

requires a finding of infringement.

28a

The ‘949 Patent

Claim 21 reads:

21. A linked belt adapted to move

through a circular arc for use in

conjunction with a conveyor comb

having a plurality of spaced apart

parallel teeth, said belt

comprising:

a plurality of like modules, each of

said modules including a first and

second like pluralities of link ends

of substantially identical width, each

such end being formed to circumscribe

a pivotal hole through said width;

means for joining said pluralities

to one another so that the axes of

said holes of said first plurality

are arranged coaxially, the axes of

said holes of said second plurality

are arranged coaxially and the axes

of respective holes of both

pluralities of link ends are

substantially parallel,

a plurality of spaced apart

elongated upstanding vanes mounted

on said modules so as to extend in

a substantially parallel direction

to one another in a direction

transversely to the axes of said

holes of said both pluralities and

protrude substantially

perpendicularly from said module;

said link ends being dimensioned

and spaced apart by a distance

29a

slightly greater than said width.

said link ends of each of said

modules being releasably engaged

between the link ends of an

adjacent module except for

individual link ends disposed at

the extreme sides of said belt;

means for pivotally connecting said

modules at engaged link ends;

said elongated vanes of each said

modules being arranged in staggered

relation with respect to the vanes

of adjacent modules, said vanes of

each module being spaced from one

another sufficiently to form a

multiplicity of channels lying

beneath the upper most surface of

said belt when staggered, said

channels being adapted to receive

said teeth.

It being undisputed that CAM-CLEAN II

met each limitation save the fourth after

“comprising”, the district court focused

again on the “slightly greater”

limitation in determining non-

infringement of claim 21. Recognizing

that the prosecution history of the ‘949

patent contained nothing about spacing,

the court cited the prosecution history

30a

of the ‘141 patent’® and the inventor’s

testimony relating thereto in the first

trial, to the effect that the purpose of

the spacing was to minimize bending and

maximize shear. The court found

noninfringement, again without reference

to the guidance in Graver Tank,

concluding:

So, I think you are estopped to

reclaim any broader sense of the

claim language in Claim 21, 949

that is readable in claim 1 of 14l.

Therefore, I find no infringement

of Claim 21, 949 because in my

judgment the Cam-Clean II as

redesigned does not have spacing

between adjacent link ends then

[sic, that] is only slightly

greater than the width of the link

‘*Laitram correctly argues that the

prosecution history of the ‘141 patent cannot in

itself create an estoppel in relation to the

separate ‘949 patent for which application was

filed more than a year after the’'l4l patent

issued. Ignoring the district court’s statement

that it did apply the prosecution history of the

"141 patent (which it called the ‘mother’

patent), CWC says, incorrectly, that the district

court relied only on judicial estoppel in view of

the inventor’s earlier testimony. In view of our

disposition of the appeal, we need not and do not

treat these arguments.

3la

ends; and therefore I find no

infringement of Claim 21 of 949.

Thus, the district court found

noninfringement of the asserted claims of

the ‘141 and ‘949 patents on the same

basis. For the reasons outlined above in

respect of claim 1 of the ‘141 patent, 4

finding of infringement of claim 21 of

the ‘949 patent is required.

The ‘341 Patent

(a) The Claim

Claim 1 reads:

A sprocket and drive shaft assembly

for a chain link conveyor belt

subject to variations in width

comprising, in combination:

a drive shaft with a substantially

uniform, noncircular cross section;

and

a plurality of sprockets mounted in

driven engagement on said shaft for

supporting and driving a conveyor

belt; one of said sprockets being

releasably locked against axial

motion to provide for proper belt

tracking, all other of said

sprockets being free to move

axially.

There was in this second

question of any "redesign"

sprockets. The district

‘341 patent issue before it:

The question also is presen

regard to whether the sale

square drive sprockets by

the sale of round bore keyed

sprockets by CWC constitutes

infringement of Claims 1 and

reissued Patent 341.°

(b) Claim Interpretation

In the first trial, CWC admitted that

its sale of sprockets constituted

contributory infringement and limited its

defense to an assertion of invalidity.

In holding that CWC had failed to carry

‘Infringement of claim 3 was not alleged

in the complaint for infringement or on this

appeal. It was, apparently, involved in

Laitram’s motion for a holding of contempt. The

court necessarily meant that the question was

whether CWC’s sale of sprockets constitutes

contributory infringement. Because CWC conceded

infringement in the first trial, there was no

need to prove direct infringement and it was not

there necessary for Laitram to prove that a

purchaser of CWC sprockets had fixed one and

allowed the others to "float".

2 a

its burden of sustaining that defense,

ict court had this to say about

the invention claimed in the ’341 patent:

The essence of patent ‘341 is the

need to maintain a positive drive

relationship between the sprocket

and the belt while taking into

account the lateral expansion in

the belt caused by fluctuations in

temperature when the belt is put to

applications where the product is

conveyed from hot to cold or cold

to hot areas. This was a problem

in practice for Mr. Lapeyre which

he satisfied by coming up with the

idea embodied in ‘341, that is

fixing the central drive sprocket

and allowing the other two or more

lateral drive sprockets to float.

Additionally, to avoid the problem

of loss of a key or shearing of a

key (I take judicial notice that

keyed devices are frequently

subject to having the key sheared

and thus losing the drive

connection) he came up with the

idea of making the shaft on which

the sprockets are mounted square.

I_ do find that it was a known

principal [sic] at the time this

invention was made that a square

shaft could be substituted for a

keyed round shaft. This was a

principle of mechanical design. I

also find that Claghorn and

Comstock each showed sprocket drive

mechanisms that were not all fixed

in position along a drive shaft

However, none of them showed a

combination of one fixed and several!

free floating sprockets, wheth

mounted on a keyed round shaft or

square shaft. (Emphasis added

Therefore, the notion of the fre

float of several sprocket

fixing one central sprock

maintain positive drive i

disclosed in any of the p

So, I find that the use o

fixed and severally compl

floating unrestrained spr¢

not obvious from the prior art.

Furthermore, applying the test

obviousness, that is, that

something in the prio

itself suggest the co

all the ingredients o

do not find anything

Cremona, Claghorn and the prior ar

cited by the Patent Office that

Suggests putting together that "one

fixed and several free floating"

arrangement, together with a non-

round shaft. Variations on the

non-round shaft have been around

for years in one application or

another. (Emphasis added).

i aa >

Soma wou

) @

With regard to infringement of the

‘341 patent, it is not contested.

The sprocket as manufactured by

Cambridge and as taught in their

engineering devices, has one fixed and

several free floating it’s [sic] on

square shaft and it clearly, literal

infringes.

ahd

itempt, CWC described the inventi

ee)

imed in the ’341 patent:

The Patent’s claims in issue,

Claims 1-3, are directed to a

sprocket and drive shaft assembly

for a chain link conveyor subject

to variations in width with the

elements comprising a drive shaft

of substantially uniform non-

circular cross section and a

plurality of sprockets mounted in

driving engagement on the shaft to

drive the conveyor belts, one of

the sprockets being releasably

locked against axial movement to

provide belt tracking and all other

sprockets being free to move

axially. Thus, the Patent is not

directed to square bore sprockets

per se, or even the combination of

square bore sprockets and square

bore shafts. Instead, the Patent

covers the specific combination of

non-circular bore sprockets and

non-circular shaft, one of the

sprockets being fixed and the

others free to move axially on the

shaft. (Emphasis added).

CWC sells two types of sprockets,

referred to by the district court and

as "round bored" and "square bored".

cylindrical keyed shaft was referred to

as “round” and "circular". For

convenience, we employ the distri

soOurt’s terminology.

In finding that CWC’s sales

‘round bored" sprockets did not

constitute contributory infringement,

district court said:

Now, the next question

pertinent to the reissue of 341

patent is whether the plaintiff

Laitram has proved by a

preponderance of the evidence that

the sale of sprockets that are to

be fitted into a shaft that is

essentially round in cross-section

but that has rectangular key ways

installed -- in particular, the

application shows that the -- not

the patent application but the

practical application -- shows that

there are two key ways horizontally

opposed around the periphery of the

shaft, the round shaft, and that

a a A A

that is the mechanism that fixes the

sprocket into position on the shaft,

that transmits the motion of the shaft

to the sprocket, and I do find that

the plaintiff has not proved by a

preponderance of the evidence that

this device infringes on reissued

Patent 341, even when it is sold in

installation where one of the

sprockets is fixed and the other is

floating axially along the shaft.

The reason I so hold is that I

find that that Laitram is estopped

from its position taken and

testimony made in a prior trial, as

well as my prior findings with

regard to this to say that the

round shaft with key ways is the

functional equivalent of a square

board [sic, shaft].

It is evident from Claims 1

and 3 of reissued 341 and also the

narrative in column 4 of that

patent, especially lines 39 to 43,

that the benefit claimed from the

square drive is the better

transmission of force, which is

accomplished by the use of a

regular polygon.

Now, certainly there is

nothing in the patent that

explicitly says that there has to

be a regular polygon; and here I am

talking about something that does

not have circular sides but

something with straight sides, like

a hexagon or a square. There is

nothing in the patent that limits

38a

it to an irregular polygon. The

language, in fact, says,

substantially uniform in cross-

section and noncircular, or words

to that effect.

Now, certainly, the round

shaft with keys is substantially

uniform in cross-section because as

you go up and down it, the cross-

section is the same. The question

is whether it is noncircular. It

is true that if you trace a line

around the periphery, it is

uncircular, but under any practical

construction of the patent in light

of the testimony of Mr. Lepeyre at

the prior trial -- and here I am

talking about a transcript, page

59, with regard to keys in a

circular shaft or a round shaft,

that his idea of a circular shaft

includes a circular shaft that has

key ways in it or key ways in the

shaft to hold keys that transmit

the force to the sprocket. That is

what he said, and in his judgment

that was essentially -- or that,

not essentially, that was a

circular shaft. His idea is

noncircular.

The particular embodiment of

it in Claim 3 is square Claim 1 is

broader but still noncircular,

[sic, and] in my judgment does not

cover the round shaft with keys

which is a technology that has been

known for donkeys’ years and, in

fact, would not itself be a

patentable device and that is quite

39a

obvious; and, further, if you look

at my oral opinion in the other

case at 299, I indicated in there

that the square shaft was adopted

for the reason of avoiding the

problem of loss of a key or

shearing of a key.

And this is consistent with

Mr. Lepeyre’s testimony and I find

that a round shaft with keys is

essentially a circular shaft. it

is not a noncircular shaft, as that

is used in 341, as the inventor

himself views what is a circular

and noncircular shaft; and I think

that the resolution of this is

clear and the inventiveness in 341

was putting together the square

shaft or other regular polygonal

shaft, which gives you & very

positive drive mechanism, putting

that together with fixing one

sprocket and letting others float.

And frankly, I think that it

would be a result that would be

inequitable and not in conformity

with the evidence that has already

been laid before the Court and

therefore would not be a

sustainable result for me to S&y

now, that, oh, yes, well, the

circular shaft with keys is the

functional equivalent of a square

shaft and therefore the circular

shaft with keys infringes. That

would be an inequitable result and

one that is not allowed, given the

fact that I think it’s fair to

40a

estop the Plaintiff from adopting that

position in light of the history of

the 3126 [the first trial] case, the

testimony of Mr. Lepeyre in that case,

and my findings with regard to this

issue. (Emphasis added).

The inventor’s testimony described by

the court as found in the "transcript,

page 59" was this:

Q. And could you explain the

problems that relate to the use of

round shafts and tell the Court why

you went to a square shaft and the

rest?

A. Well in a round shaft, with a

sprocket having a round bore, the

sprocket in some way must be

fastened, prevent it from rotating

on the shaft. Otherwise it would

be useless as a driving member.

Therefore, key seats are cut into

the shaft, key seats are cut into

the sprockets, keys are put into

those key seats. Set screws are

put in to hold the keys in

position. If any of those parts

get loose, or if they fall into the

machine you have a devil of a time

getting them out, so I didn’t like

that. Number two, whereas you can

make a key sloppy fit into a shaft,

it’s a poor, it tends to be a poor

guide for axial guidance of the

sprocket, as the sprocket wants to

move along the shaft.

4la

As Laitram correctly points out, the

foregoing testimony dealt only with the

inventor’s reasons for selecting a square

shaft and square bored sprockets as his

preferred, commercial embodiment. It

could not, therefore, estop the inventor

from asserting that a keyed cylindrical

shaft is the functional equivalent of a

square shaft. Similarly, Laitram

correctly points out that "column 4 of

that patent, especially lines 39 to 43",

cited by the court, merely described the

preferred embodiment. The entire

sentence runs from line 36 to 43 and

reads:

Although other noncircular cross

sections such as hexagonal may be

employed, the square cross section

is preferred because it provides

maximum strength coupled with

maximum driving force--imparting

surfaces and corners, is

symmetrical with respect to the

rotational axis and lends itself to

fabrication simply and easily of a

42a

variety or combination of materials.

That the inventor preferred and

adopted commercially a square shaft,

because keys tend to fall out of keyed

shafts, is not a basis for limiting claim

1 to square or polygonal shafts.

References to a preferred embodiment,

such as those often present in a

specification, are not claim limitations.

SRI Int’l. v. Matsushita Elec. Corp. 775

F.2d 1107, 1121, 227 USPQ 577, 589 (Fed.

Cir. 1985) (in banc). Such reference is

thus not a basis here for limiting

"noncircular" to square or regular

polygonal shafts.*®

Sone prosecution history of the ‘341

patent was not discussed by the district court,

unlike that of the '141 patent, and does not

appear in the appendix presented by the parties

on this appeal. CWC does not argue that claim 1

is limited to square or polygonal shafts by the

prior art. CWC does argue that the court’s

earlier decision "“inferentially" interpreted the

°341 patent to exclude keyed cylindrical shafts,

and (without citation to the record) that the

inventor’s testimony at the first trial

WwW

CWC points to a single statement in

the inventor’s testimony at the first

trial (to which the district court made

no reference in this case). That

statement was that any engineering

professor would view a section of the

prior art Claghorn shaft as a circular

cross section because a keyway has been

milled in. The next question in that

testimony, however, was directed to

whether Claghorn’s shaft met the

"“noncircular” limitation, to which the

inventor answered, "It’s up in the air, I

guess. I would say to bracket that if

it’s noncircular cross section." Nothing

in that testimony would estop the

inventor from reliance on the functional

equivalency of square and keyed

distinguished keyed shafts "to save his patent

from prior art." Neither argument is sustainable

on the record.

44a

cylindrical shafts or from asserting that

the sale of keyed cylindrical shafts and

round bored sprockets for such shafts,

for use in an installation in which one

sprocket was fixed on the shaft and the

other sprockets were free to float

axially, constituted contributory

infringement under the doctrine of

equivalents.

As above indicated, the district court

held in its opinion after the first trial

that none of the prior art "showed a

combination of one fixed and several free

floating sprockets, whether mounted on a

keyed round shaft or on a square shaft,"

and that "it was a known principle

that a square shaft could be substituted

for a keyed round shaft," and that

"variations on the non-round shaft have

been around for years in one application

45a

or another," and that "[{T]he essence of

patent ‘341 is the need to maintain a

positive drive relationship between the

sprocket and the belt" in light of

expansion caused by temperature

fluctuations.’? Thus, the court, in

considering the validity issue,

interpreted the claim as drawn to fixed

and free floating sprockets on a non-

round shaft, without regard to the

particular cross sectional shape of the

non-round shaft. "Having construed the

claims one way for determining their

validity, it is axiomatic that the claims

must be construed in the same way for

94 keyed shaft obviously provides a

poe drive mechanism (at least until the key

reaks or falls out) and thus satisfies the "in

driven engagement" limitation of the claim. The

appendix contains no firm basis on which to

evaluate the parties’ ee gest “hed geet on

whether keyed shafts and round bored sprockets

were charged to infringe at the first trial, and

whether, after the first trial, CWC paid

royalties on both types of shafts and sprockets.

46a

infringement." W. L. Gore & Assoc., Inc.

v. Garlock, Inc., 842 F.2d 1275, 1279, 6

USPQ2d 1277, 1280 (Fed. Cir. 1988).

Here, the district court committed legal

error in interpreting claim 1 differently

for infringement, i.e., as though it were

limited to use of a square or other

regular polygonai shaft ("The

inventiveness in 341 was putting together

the square shaft or other regular

polygonal shaft, which gives you a very

positive drive mechanism, putting that

together with fixing one sprocket and

letting others float.").

Claim 3 is limited to a square shaft

and claim 6 is limited to a regular

polygonal shaft. The doctrine of claim

differentiation precludes a reading of

those limitations into claim 1 in

determining literal infringement.

47a

D.M.I., Inc. v. Deere & Co., 755 F.2d

1570, 1574, 225 USPQ 236, 239 (Fed. Cir.

1985). Apart from literal infringement,

the district court recognized that a

keyed cylindrical shaft is the functional

equivalent of a square shaft.” It

declined, however, to find infringement

under the doctrine of equivalents because

it felt that that result would be

"inequitable". The basis for that view

was that it was "fair to estop" Laitram

from reliance on the doctrine in light of

the history of the prior trial including

the inventor’s prior testimony. f the

20u 0A] square shaft could be substituted

for a keyed round shaft"; "whether mounted on 4

keyed round shaft or on a square shaft";

"Variations on the non-round shaft have been

around for years." 226 USPQ at 298, 299. In the

first trial, CWC stipulated to infringement

without reference to square or keyed shafts and

sprockets, CWC’s expert testified that keyed and

square shafts are obviously functional

equivalents, and CWC’s counsel repeated that

obvious fact in closing argument.

48a

inventor had led the court to sustain

Claim 1 of the patent in the first trial

on the basis that claim 1 must be limited

to noncircular shafts that are square or

otherwise polygonal in cross section, a

judicial estoppel might have precluded

any change from that position. Colonial

Refrigerated Transp., Inc. v. Mitchell,

403 F.2d 541, 550 (5th Cir. 1968). As

above indicated, however, we can find no

indication in the record that that is

what happened, or could have happened,

here.

(da) Conclusion on the ’341 Patent

The district court erred in applying

the law of contributory infringement when

it declined to find that sale of CWC’s

keyed cylindrical shafts and

corresponding sprockets, for use in

installations in which one sprocket is

49a

fixed and the others float, constituted

contributory infringement of claim 1 of

the ‘341 patent.”

2. Contempt

Absent infringement, there cannot be

contempt for violating an injunction.

KSM Fastening Sys. v. H.A. Jones Co., 776

F.2d 1522, 1528, 227 USPQ 676, 680 (Fed.

Cir. 1985). As the district court

*lehe district court found that Laitram had

not proved that CWC was "selling the square drive

sprockets in an infringing fashion," based solely

on the undocumented testimony of CWC’s vice

president Bailey that CWC instructed customers to

use them in "an installation wherein either all

of the sprockets float or all of the sprockets

are fixed," even though Bailey admitted that

neither such installation would work, that he

"wouldn’t think that he [the customer] would want

to do that," that CWC required no assurance of

compliance from customers, and that if a customer

wants to use a square drive sprocket, "they are

up to their own on that." Laitram supplied no

evidence of direct infringement by customers,

however, and has not on this appeal challenged

the district court’s holding that it failed to

carry its burden of proving that CWC sold square

shafts and square bored sprockets for an

installation in which sprockets were both fixed

and floating.

22ewC sold a square shaft and square bored

sprockets to a customer after the injunction was

entered. When Laitram charged that sale as a

50a

correctly stated, the standard for proof

of infringement is "by a preponderance of

the evidence" and the standard for

contempt is "by clear and convincing

evidence." Having found that Laitram

failed its burden under the lesser

standard, the court necessarily denied

Laitram’s motion for contempt in view of

the court’s noninfringement findings.

Those findings having been reversed,

remand becomes necessary to enable the

district court to exercise its discretion

in determining whether CWC’s conduct

amounted to contempt. See MAC Corp. v.

Williams Patent Crusher & Pulverizer Co.,

767 F.2d 882, 226 USPQ 515. (Fed. Cir.

1985).

contempt, CWC submitted an affidavit that it had

arranged for return by the customer of the square

shaft and square bored sprockets for substitution

of keyed shafts and round bored sprockets.

5la

CONCLUSION

The portions of the judgment based on

findings that claim 1 of the ‘141 patent

and claim 21 of the ‘949 patent were not

infringed by sales of CAM-CLEAN II, and

that claim 1 of the ‘341 patent was not

contributorily infringed by sales of

keyed round shafts and round bored

sprockets, are reversed. The case is

remanded for consideration of the motion

for contempt.

REVERSED AND REMANDED

52a

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

88-1209 - 1210

THE LAITRAM CORPORATION and

INTRALOX, INC.,

Plaintiffs-Appellants,

Vv.

CAMBRIDGE WIRE CLOTH COMPANY,

Defendant-Appellee.

JUDGMENT

On Appeal from the UNITED STATES DISTRICT

COURT FOR THE DISTRICT OF MARYLAND

in CASE NO(S). S 83-3126

This CAUSE having been heard and

considered, it is

ORDERED and ADJUDGED: REVERSED AND

REMANDED

ENTERED BY ORDER OF THE COURT

Dated___ Dec 12 1988 /s/

Francis X. Gindhart,

Clerk

ISSUED AS A MANDATE: February 1, 1989

Costs: Against; Appellee

Printing. .... . $1,980.24

TOCGi « «© «© © 2) + © «Owen

53a

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

88-1209, -1210

THE LAITRAM CORPORATION and

INTRALOX, INC.,

Plaintiffs-Appellants,

Vv.

CAMBRIDGE WIRE CLOTH COMPANY,

Defendant-Appellee.

Before MARKEY, Chief Judge, NICHOLS,

Senior Judge, and RE, Chief Judge.”

ORDER

A petition for rehearing having been

filed in this case,

UPON CONSIDERATION THEREOF, it is

ORDERED that the petition for

rehearing be, and the same hereby is,

denied.

*The Honorable Edward D. Re, Chief Judge of

the Court of International Trade, sitting by

designation.

54a

The suggestion for rehearing in banc

is under consideration.

FOR THE COURT

January 25, 1989 /s/

Francis X. Gindhart

Clerk

cc. PAUL H. HAYES

G. FRANKLIN ROTHWELL

55a

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

88-1209, -1210

THE LAITRAM CORPORATION and

INTRALOX, INC.,

Plaintiffs-Appellants,

Vv.

CAMBRIDGE WIRE CLOTH COMPANY,

Defendant-Appellee.

ORDER

A suggestion for rehearing in banc

having been filed in this case,

UPON CONSIDERATION THEREOF, it is

ORDERED that the suggestion for

rehearing in banc be, and same hereby is,

declined.

FOR THE COURT

/s/

Francis X. Gindhart

Clerk

Dated: February 9, 1989

cc: PAUL J. HAYES

G. FRANKLIN ROTHWELL

LAITRAM V. CAMBRIDGE, 88-1209, 1210

56a

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

Nos. 83-3126

THE LAITRAM CORPORATION

and INTRALOX, INC.,

Plaintiffs,

Vv.

CAMBRIDGE WIRE CLOTH COMPANY,

Defendant.

DECIDED: November 12, 1987

Before SMALKIN, Judge.

THE COURT: Having heard the evidence

presented today and the arguments of

counsel on the motion for contempt in

Civil Number S 83-3126, paper number 142,

and also in the matter of a preliminary

hearing which was advanced with a trial

on the merits in Civil Number S 87-939, I

now am going to enter an oral opinion

57a

which contains my findings of fact and

conclusion of law, whether specifically

so denominated or not, pursuant to

Federal Rule of Civil Procedure 52. I

reserve a right to make any changes or

amendment in the opinion, so long as I do

not alter the result.

This matter can only be understood in

light of the prior history of litigation

and background of the patents as

discussed in my opinion in Laitram versus

Cambridge Wire Cloth Company -- that is,

the S 83-3126 case as reported in 226

USPQ 289, opinion rendered March 19,

1985.

We are here today because the

Defendant Cambridge Wire Cloth has

attempted to redesign its plastic modular

belting so that it no longer infringes

the patent. I would say that they have

58a

tried everything they could, which

attempts were successfully resisted by

the Court at the prompting of Mr. Hayes

and the counsel for Laitram to get an

advisory opinion of the Court prior to

committing to manufacture or sale as to

whether the redesign continued to

infringe the patents.

Here in particular I am talking about

the Cam-Clean II modular belting. I am

not necessarily addressing -- in

connection with redesign -- in fact, not

at all in connection with redesign --

addressing the sprocket and drive

mechanism.

The issues for decision are whether

there has been contempt or there is now

infringement in the context of the 939

case of Claim 1 of Patent 141 and Claim

21 of Patent 949 by the redesigned Cam-

59a

Clean II modular belting. The question

also is presented with regard to whether

the sale of square drive sprockets by CWC

and the sale of round bore keyed drive

sprockets by CWC constitutes an

infringement of Claims 1 and 3 of

reissued Patent 341.

First, with regard to what the

standard of proof is, the general

standard of proof for civil contempt 1s

by clear and convincing evidence.

However, I have considered that this case

joins for trial essentially that issue

with the issue of the infringement

substantively raised in Civil Number 33%,

87-939; and obviously the burden there is

by a preponderance. So I have first

addressed the question of whether there

is proof by a preponderance that the Cam-

Clean II redesign infringes and chat the

60a

sale of sprockets infringes 341.

Obviously, if there is not proof by a

preponderance of the evidence there

cannot be proof by clear and convincing

evidence since a fortiori.

Turning first to the question of the

Square bore sprocket and the round bore

circular sprocket, I find that the

Plaintiff has not proved by a

preponderance of the evidence that CWC

is, in fact, selling the square drive

sprockets in an infringing fashion. I

find that the evidence is uncontradicted

to the effect that instructions are given

to customers that the square drive

sprocket is to be used only in

conjunction with an installation wherein

either all of the sprockets float or all

of the sprockets are fixed, and that does

not infringe, and I so hold on the basis

6la

of my prior opinion in 226 USPQ at 298-99

where I clearly held that the inventive

aspect of the reissue 341 patent was the

combination of a square drive sprocket

with one fixed and the remainder floating

and there cannot be infringement of that

patent if the sprocket, square drive

sprocket, is sold in the fashion that the

uncontradicted evidence shows that it is

sold by CWC.

Now the next question pertinent to the

reissue of 341 patent is whether the

Plaintiff Laitram has proved by a

preponderance of the evidence that the

sale of sprockets that are to be fitted

into a shaft that is essentially round in

cross-section but that has rectangular

key ways installed -- in particular, the

application shows that the -- not the

patent application but the practical

application -- shows that there are two

key ways horizontally opposed around the

periphery of the shaft, the round shaft,

and that that is the mechanism that fixes

the sprocket into position on the shaft,

that transmits the motion of the shaft to

the sprocket; and I do find that the

Plaintiff has not proved py a

preponderance of the evidence that this

device infringes on reissued Patent 341,

even when it is sold in an installation

where one of the sprockets is fixed and

the other is floating axially along the

shaft.

The reason I so hold is that I find

that Laitram is estopped from its

position taken and testimony made ina

prior trial, as well as my prior findings

with regard to this, to say that the

round shaft with key ways is the

functional equivalent of a square board.

It is evident from Claims 1 and 3 of

reissued 341 and also the narrative in

column 4 of that patent, especially lines

39 to 43, that the benefit claimed from

the square drive is the better

transmission of force, which is

accomplished by the use of a regular

polygon.

Now, certainly there is nothing in the

patent that explicitly says that there

has to be a regular polygon; and here I

am talking about something that does not

have circular sides but something with

straight sides, like a hexagon or a

square. There is nothing in the patent

that limits it to an irregular polygon.

The language, in fact, says,

64a

substantially uniform in cross-section

and noncircular, or words to that effect.

Now, certainly, the round shaft with

keys is substantially uniform in cross-

section because as you go up and down it,

the cross-section is the same. The

question is whether it is noncircular.

It is true that if you trace a line

around the periphery, it is uncircular;

but under any practical construction of

the patent in light of the testimony of

Mr. Lepeyre at the prior trial -- and

here I am talking about a transcript,

page 59, with regard to keys ina

circular shaft or a round shaft, that his

idea of a circular shaft includes a

circular shaft that has key ways in it or

key ways in the shaft to hold keys that

transmit the force to the sprocket. That

is what he said, and in his judgment that

65a

was essentially -- or that, not

essentially, that was a circular shaft.

His idea is noncircular.

The particular embodiment of it in

Claim 3 is square. Claim 1 is broader

but still noncircular, in my judgment

does not cover the round shaft with keys,

which is a technology that has been known

for donkeys’ years and, in fact, would

not itself be a patentable device and

that is quite obvious; and, furthermore,

if you look at my oral opinion in the

other case at 299, I indicated in there

that the square shaft was adopted for the

reason of avoiding the problem of loss of

a key or shearing of a key.

And this is consistent with Mr.

Lepeyre’s testimony and I find that a

round shaft with keys is essentially a

circular shaft. It is not a noncircular

66a

shaft, as that is used in 341, as the

inventor himself views what is a circular

and noncircular shaft; and I think that

the resolution of this is clear and the

inventiveness in 341 was putting together

the square shaft or other regular

polygonal shaft, which gives you a very

positive drive mechanism, putting that

together with fixing one sprocket and

letting others float.

And frankly I think that it would be a

result that would be inequitable and not

in conformity with the evidence that has

already been laid before the Court and

therefore would not be a sustainable

result for me to say now, that, oh, yes,

well, the circular shaft with keys is the

functional equivalent of a square shaft

and therefore the circular shaft with

keys infringes. That would be an

67a

inequitable result and one that is not

allowed, given the fact that I think it’s

fair to estop the Plaintiff from adopting

that position in light of the history of

the 3126 case, the testimony of Mr.

Lepeyre in that case, and my findings

with regard to this issue.

Therefore, I find no infringement of

the reissue 341 patent. That is, that

the Plaintiff has not proven infringement

by a preponderance of the evidence,

ergot, the Plaintiff has not proved

infringement by clear and convincing

evidence; and the Defendant is entitled

to prevail with regard to the 341 patent

in 83-3126 and 87-939.

Turning to the more vexatious issue

and one that has taken up more time and

energy of counsel and the Court and

witnesses in this case -- there is a

68a

claim that the redesigned Cam-Clean

belting, which will be referred to as

Cam-Clean II, infringes Claim 1 of Patent

141 and Claim 21 of Patent 949.

I think it is conceded by counsel that

unless each and every element of a claim

is infringed either literally or by the

doctrine of equivalence, there is no

infringement. That is, something can

infringe three out of four claims and

does not infringe. There must be

infringement of all claims.

The critical claim here is Claim -- as

I said -- 1 of 141, and Claim 21 of 949;

and the language is essentially identical

that is relevant to the particular issues

before the Court. And Claim 1 of 141 in

particular the fourth element of Claim l,

it says as follows: "Said link end being

dimensioned and spaced apart by a

69a

distance slightly greater than said width

Now, I believe that said width refers

to -- and I think this is agreed by all

counsel -- said width means the width of

the link ends themselves.

Continuing the quotation, " -- of the

element of the claim so that said module

is end to end reversible so that

plurality of said modules may be engaged

with each other at said ends."

I think it is fair to say that the

question in the first trial came down to

basically the same issue -- that is,

whether the Cam-Clean belting was, in

fact, spaced apart by a distance slightly

greater than the width of the link ends -

- that is, whether the space between the

link ends was slightly greater than their

70a

width; and that is what the whole case

came down to.

Now, this is discussed in the earlier

opinion in 226 USPQ at 297; and it is

clear that my decision was based on Mr.

Lepeyre’s testimony with regard to the

reason for having closed spacing of the

link ends in his invention. And to view

this in context, I must say that the way

of this invention was paved with lots of

prior art.

That is, Mr. Lepeyre, although he has

acknowledged as a pioneer inventor and

certainly is the first person that came

up with the idea of this plastic modular

belting, which is a wonderful idea,

nonetheless, he could not make a broad

Claim that would get through the Patent

Office. He tried it. He tried a very

broad claim.

Jla

For example, as the claim originally

came through -- it might take me a minute

to find it -- but before it started to

get amended, the claim -- the element I

am talking about in 141 patent said,

"Said links being dimensioned and spaced

apart so that said module is end to end

reversible."

Now, that is a very broad claim. The

patent examiner rejected that and the

patent examiner said, look, there is lots

of prior art. You have to come in and

amend your patent. So, it was amended

and in the amendment the spacing language

was inserted. So, as to said link ends

being dimensioned and said averages

slightly greater than said width -- this

is -- I am now looking at Amendment A,

which was filed with the patent office

January 8, 1973.

72a

And a narrative indicates that here at

pages 8 to 9, "In the instant invention

the link ends are dimensioned and spaced

apart by a distance slightly greater than

the width of the link ends. As a result,

the end sections of the modules fit or

are made snugly together and this snug

fit contributes significantly to the

ability of pivot connected modules to

resist deformation due to bending forces

across the axes of the pivot pin. The

stresses are absorbed largely by adjacent

link ends and a little shear is

transmitted to the pivot pin. Asa

result, the strength required for the

pivot rod is small as compared with

conventional conveyors, with the result

of polymeric materials can be used to

form the pivot pins as well, thus tending

73a

to eliminate the need to lubricate the

belt.

Now, that is not the only comment with

regard to this. There are other comments

throughout the patent history; and, for

example, I turn to the rejection of even

the amended patent, and then you have

another amendment that was submitted and

-- let’s see <-- received by the Patent

Office sometime in -- well, it is dated

3/1/74; and, again, there is talk about

the engagement of the link ends providing

structural strength to resist bending.

It is admitted that such resistance to

bending cannot be provided by a structure

in which a large number of modules do not

have plurality of link ends but only

Single link ends. This is at page 14.

Now, granted, that does not directly

address the quarrel with prior art; but

74a

the net result of all this was that when

you got to trial, Mr. Lepeyre gave his

_testimony of the purpose for maintaining

each of the adjacent link ends slightly

greater, as expressed in the claim, and

the width of the link end. And here I am

talking about his direct testimony, at

pages 21 and 22, 23.

He is talking specifically about the

planar alignment of the link ends; and,

as I read the testimony, he clearly said

that you want to get as little exposed

space of pivot rod as possible because

the link ends exposed pivot rod. You

have the link ends bending. You have --

the more shear you have; and the shear

resistance is more etficient than bending

resistance and is what you want to

maximize strength.

——___”-S--

75a

This is what he said at the trial and

this is what I relied upon to say that

what he had was, A, patentable over the

prior art and, B, that the Cam-Clean

product that was then extant infringed

the patent; and the point there was to

minimize the bending forces, to maximize

the shear and to have as little exposed

rod as possible. And this in my judgment

is what allowed there to be infringement

by equivalence, even though there was not

necessarily literal infringement in the

first claim patent.

You can physically see that there was

a channel of spacing that you could say

was more than slightly greater than the

width of the link end; but when you drew

the tangent lines you could see whether

it was six-thousandths or 31-thousandths.

There still was a very, very close planar

alignment of the places where the forces

were transmitted by the link ends to the

pivot rod -- therefore, having

practically no opportunity for bending

and maximizing shear.

I reject Mr. Hayes’s argument that

shear is solely a function of the

multiplicity of link ends. That argument

is disproved by the Poerink design. If

shear distribution were solely a function

of the multiplicity of link ends without

reference to spacing or their engagement

in proximity to each other, then there

would be no patentability of Lepeyre over

Poerink and there would not have been any

need to make the amendments in Lepeyre in

141 during the prosecution history to

obtain patentability; but clearly it is

the closeness of the spacing that is

77a

important with regard to where the forces

are transmitted.

This was the pivotal point -- not to

make a pun -- in the first opinion, and

it still is the pivotal point here. It

is true that all that has been done in

the redesign of Cam-Clean II is an

alteration of the spacing, relative

spacing of the link ends.

That is true; but if the result is

that when the patent language, the claim

language is viewed in context of its

prosecution history, as it has to be

under the doctrine of equivalents, if the

result is that even applying the doctrine

of equivalents there is no longer a

spacing between links that is only

slightly greater than the width of the

links, then there is no infringement.

78a

That is all there is to it. It is that

simple.

To me the telling proof is made up in

two ways. Number one, the tests, in my

opinion -- although the difference is

admittedly small at working loads, at the

higher loads, where you would test to

ascertain the true strength of the

material -- in my judgment the tests show

that the Cam-Clean II is less resistant

to the bending and elongation forces than

the original Cam-Clean; but that is not

really the most important question.

The most important question is, what

is the spacing of the redesign Cam-Clean

relative to the width of the link ends?

Therefore, I had Dr. Butler measure or

mike the link ends of the Cam-Clean II;

and he ascertained that expressing the

spacing as percentage of the link end

79a

width it came to 135.85 percent. That

is, there is a 35 percent greater spacing

than the width of the link end.

Looking at, at least, the embodiment,

the only embodiment we have right now of

the Lepeyre 141 -- which in my judgment,

as I recall the evidence at the first

trial, is the essential embodiment of the

invention and certainly is consistent

with all of the drawings in the i41 --

that is where the link ends are in

substantial contact with each other.

The width between the link ends is

only slightly greater. That is true. It

is only slightly greater; and "slightly"

here is viewed by again taking the

spacing as a percentage of the link end

width. And when you do that in the

Intralox belt it comes to 106.14. So,

you only have about a 6 percent greater

80a

spacing that the width of the link end.

This is only a slightly greater spacing

that the width of the link end.

However, 35 percent is about one-

third, which in my judgment is more than

slightly greater; and I make that

conclusion bearing in mind that this is a

matter of judgment. You cannot say

slightly greater means .2 but not .3, or

3 but not .06.

You cannot make exactly that

determination. It is not exact. It is

not scientific. It is a sloppy term; but

slightly greater, even though it is a

sloppy term, has no meaning for this case

outside the claims of Patent 141, as

interpreted by the prosecution of that

patent in the Patent Office and as

interpreted by the prior history of this

litigation, including Mr. Lepeyre’s

8la

testimony, which is what he won on in the

first suit.

Now, if, in fact, Cam-Clean was able

to redesign so that now the spacing

between adjacent links is now more than

slightly greater than the width of the

link ends, then they are no longer

infringing element 4 of Claim 1 of 141.

It is true that the belt is not, at rated

operating load, significantly weaker than

the original Cam-Clean belt was; and if,

in fact, Mr. Lepeyre were entitled to a

broad claim here that covered all modular

plastic belting with multiple links, then

certainly the Cam-Clean II, as

redesigned, would still infringe and I

would so hold. But he is not entitled to

a broad patent.

To get around all the prior art and

all the inventions of escalators and toys

82a

and powering belt and to get around all

that, he had to narrow his claims very,

very significantly in order to obtain a

patent and to keep it valid; and in doing

that he depended upon this question of

shear versus bending. And although Dr.

Butler says he does not make much of that

and Mr. Hayes now says he does not make

much of that as a matter of argument, Mr.

Lepeyre made a lot of that at the trial

and said, that is the thing makes his

invention patentable and it is the thing

that makes the Cam-Clean invention

infringe, the original Cam-Clean infringe

on his, because when you looked at where

the shear inventing forces were actually

transmitted to the rod, you would find

that the spacing was not significantly

greater than the width of the link end

itself.

83a

Here the percentages, as I said, speak

for themselves. Six percent in the

Intralox; 35 percent in the Cam-Clean II,

as redesigned. And in my judgment this

product does not infringe Claim 1 of

Patent 141. Therefore, there is no

contempt of the judgment in 3126 and I

find no infringement proved by a

preponderance in the 939 case.

Going on to the raised rib -~ that is,

Claim 21 of 949 -- the essential element

of that claim with regard to the spacing

of the link ends is in haec verba with

the fourth element of Claim l of the 141

patent; and it is true that there is not

the same file wrapper estoppel in the 949

patent as there is in the 141’s. But the

testimony of Mr. Lepeyre, applies pari

passu to the 141 and 949 patents with

regard to the spacing of the link ends, Il

84a

do not think there is any question about

that. And, furthermore, since the 949

was an improvement patent -- and I think,

Mr. Hayes, you will concede it was an

improvement patent on the 141, would you

not?

MR. HAYES: No.

THE COURT: You will not concede that?

All right: Well, in my judgment the

949 is an improvement patent on the 141.

I can understand why you do not want to

concede that. If I were you, maybe I

would not either; but anyway, I cannot

force you to concede that.

It seems to me that 94 is an

improvement on the 141 because it is

adapted to combing off objects; but the

basic design of the drive mechanism and

the force transmissions is the same as

between 141 and 949, which is why in my

85a

judgment you cannot broaden the spacing

Claim of 141 by the fact that there is

nothing in the 949 spacing claim that

narrows it during the prosecution of the

949 patent itself. That is the narrowing

of the mother patent -- I do not know

whether that is a term of patent art or

not -- anyway, the narrowing of the

mother patent that took place in 141, it

seems to me, has also got to be applied

in an improvement patent of 949.

I do not have the case at my finger

tips, but that is common sense.

Also, any doctrine of estoppel would

reach that same conclusion. Any common

law doctrine of estoppel would reach that

same conclusion. So I think you are

estopped to reclaim any broader sense of

the claim language in Claim 21, 949 that

is readable in Claim 1 of 14l.

86a

Therefore, I find no infringement of

Claim 21, 949 because in my judgment the

Cam-Clean II as redesigned does not have

spacing between adjacent link ends that

is only slightly greater than the width

of the link ends; and therefore I find no

infringement of Claim 21 of 949.

For those reasons I will deny the

motion for contempt on marginal order for

reasons stated in open court.

Marginal on 142, motion denied for

reasons stated in an oral opinion in open

court, this date; and Mr. Clerk I would

direct you enter a judgment in 87-939 as

follows, that the matter having come on

for a preliminary hearing and trial

having been consolidated pursuant to Rule

65 and for reasons stated by the Court on

the record at the conclusion of the trial

and hearing, judgment is rendered for the

Defendant against the Plaintiff. Each

side to bear its own costs.

All right. That is my judgment.

cr neeteaelaeniiannieiinnamieaiamaieinen

88a

35 USCS § 271

§ 271. Infringement of Patent

(a) Except as otherwise provided in this

title [35 USCS §§ 1 et seq.], whoever

without authority makes, uses or sells

any patented invention, within the United

States during the term of the patent

therefor, infringes the patent.

(b) Whoever actively induces

infringement of a patent shall be liable

as an infringer.

patented machine, manufacture,

combination or composition, or a material

Or apparatus for use in practicing a

patented process, constituting a material

part of the invention, knowing the same

to be especially made or especially

adapted for use in an infringement of

such patent, and not a staple article or

89a

commodity of commerce suitable for

substantial noninfringing use, shall be

liable as a contributory infringer.

xk * *

35 U.S.C.S. §271(a), (Bb), (Cc) (Law Co-op.

1981 & Supp. 1988)

90a

RULES OF CIVIL PROCEDURE

Rule 52. Findings by the Court.

(a) Effect. In all actions tried

upon the facts without a jury or with an

advisory jury, the court shall. find the

facts specially and state separately its

conclusions of law thereon, and judgment

shall be entered pursuant to Rule 58; and

in granting or refusing interlocutory

injunctions and the court shall similarly

set forth the findings of fact and

conclusions of law which constitute the

grounds of its action. Requests for

findings are not necessary for purposes

of review. Findings of fact, whether

based on oral or documentary evidence,

shall not be set aside unless clearly

erroneous, and due regard shall be given

to the opportunity of the trial court to

9la

judge of the credibility of the

witnesses. The findings of a master, to

the extent that the court adopts them,

shall be considered as the findings of

the court. It will be sufficient if the

findings of fact and conclusions of law

are stated orally and recorded in open

court following the close of the evidence

or appear in an opinion or memorandum of

decision filed by the court. Findings of

fact and conclusions of law are

unnecessary on decisions of motions under

Rule 12 or 56 or any other motion except

as provided in Rule 41(b).

Fed.R.Civ.P. 52(a).

92a

House Report No. 97-312, 97th Cong.,

lst Session (1981), pp. 37-38.

Section 119 - Technical Assistants

Chapter 17 of title 28, United States

Code, provides for the appointment of

employees for the United States courts of

appeals.

Section 119 of the bill authorizes the

Court of Appeals for the Federal Circuit

to appoint technical assistants. The

purpose of the provision is to authorize

the employment of lawyers who have

technical degrees and experience in a

scientific or engineering field or in

patent law in addition to their legal

training. The present Court of Customs

and Patent Appeals has made use of such

technical advisers for many years. The

service of these advisers is identical to

that of law clerk, except that they

93a

confer with the judges on technical as

well as legal matters.

It is important to understand and

appreciate the fundamental difference

between the use of technical advisers by

the Court of Customs and Patent Appeals

judges in the ex parte appeals from the

Patent and Trademark Office which they

now consider and a similar type of help

for judges who are called upon to resolve

technical issues in adversary patent

infringement cases of the kind that will

now be heard by the Court of Appeals for

the Federal Circuit.

The use of the technical advisers in

the Patent and Trademark Office ex parte

appeals is probably necessary, as the

judges need help in reviewing and

assessing arguments and technical points

made by the applicant for patent and the

94a

Patent and Trademark Office examiners.

This is so because in many of the appeals

presently heard by the Court of Customs

and Patent Appeals, and especially in

chemical and electronics cases, there is

sharp disagreement between the applicant

and the examiner regarding the technical

subject matter involved and the

disclosures of the application in issue

and of the patents or publications relied

on by the examiner in rejecting the

application. Obviously, the judges need

the assistance of the advisers in

resolving these disputes as to the

technical aspects of the appeal.

However, to use these advisers in

adversary patent infringement cases and

have them review and assess the technical

aspects of the evidence, as developed by

the sworn testimony of witnesses and as

95a

covered by the findings of fact entered

by the trial judge, is quite a different

matter. It is well established that

factual issues in a patent case must be

*ried and decided by the trial judge or a

jury in precisely the same manner as such

issues are tried in any other kind of a

lawsuit. The technical aspects of a

patent case are factual issues, and

patent cases are reviewed in the circuit

courts of appeals in the same manner as

with other appeals.

Thus, it is the settled practice of

the circuit courts of appeals in patent

cases to honor and respect Rule 52(a)

F.R.Civ.P., which provides that findings

of fact may not be set aside unless

clearly erroneous, giving due regard to

the opportunity of the trial court to

judge the credibility of witnesses. The

circuit courts have repeatedly held that

it is not their function to pass upon or

consider de novo the evidence received at

the trial or to weigh controverted

evidence. For example, in Hazeltine

Research v. Admiral Corp., 183 F.2d 953

(7th Cir. 1950), the court condemned the

practice of briefing and arguing patent

appeals in nisi prius proceedings and

emphasized that its function "on review

is no different than in any other kind of

case." Where a case might have gone

either way, the Seventh Circuit has said

it will not ignore the entered findings

and that it is not its function to make

an independent analysis and determination

of the factual issues is controversy.

O’Brien v. O’Brien, F.2d 254, 255 (7th

Cire. 1953).

97a

It should be recognized that technical

advisers will not be subject to cross-

examination, as are experts called by the

parties in an infringement action, and

there will be no record of the process by

which they evaluate and assess the

technical aspects of the evidence covered

by the trial court’s findings or the

jury’s verdict. Litigants are entitled

to know what their record is and that

that record is the record made in the

trial court. As was stated by the

Supreme Court in Goldberg v. Kelly, U.S.

254, 269 (1969).

where important

decisions turn on

questions of fact, due

process requires an

Opportunity to confront

and cross-examine adverse

witnesses.

98a

Thus, while the current standard of

review of and practices with respect to

ex parte appeals from the Patent and

Trademark Office are to be continued by

the Court of Appeals for the Federal

Circuit, it is the desire of the

committee that the judges be sensitive to

these due process considerations in their

employment of technical advisers when

reviewing adversary patent infringement

cases.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.