Appendix — Kimberly-Clark Corp. v. Kalman

Supreme Court brief1984

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No. COERK

In The

Supreme Court of the United States

October Term, 1983

KIMBERLY-CLARK CORPORATION,

Petitioner,

vs.

PETER GABOR KALMAN,

Respondent.

Petition for a Writ of Certiorari to the United States Court of

Appeals for the Federal Circuit

APPENDIX

LEONARD J. SANTISI

CURTIS, MORRIS & SAFFORD, P.C.

Attorneys for Petitioner

530 Fifth Avenue

New York, New York 10036

(212) 840-3333

7843

*NJ (201) 257-68S0°NY (212) 840-9494¢PA (215) 563-5587

: MA (617) 542-1114*DC (202) 783-7288°USA (800) 221-0008

ar Tre a

APPENDIX

Page

le. Opinion of the Court of Appeals . . . +. + + «© «© « « 1

District Court Decision and Order,

August 17, 1982 > > * *. * hall * > > . > . 7. o — 7. oo > 28

» District Court Decision and Order,

mapener: 5S, . tReLs. «ee 4 oe 8 ee eo ew eee 46

4. Judguent of the Court of Appeals ...+.-e«+«-e-vee 56

5. Order of the Court of Appeals Denying Rehearing. . 57

6. Judgement of the District Court . .....+.+ee-s 58

= Patent in Issue, Kalman, U.S. Pat. No. 3,471,017. . 59

8. Moziek Patent, U.S. Patent No. 3,112,525 ..... 65

9. Garrahan Patent, U.S. Patent No. 1,195,576 .... 74

10. Excerpts of Trial Testimony, Kalman's

Expert Pickering ..+<«-cesewsevvcecscveeess 80

11. Excerpts of Trial Testimony, Kalman's

Bemee O° SELON 6 6-6 6c! ace ee oe Bas a 88

12. Excerpts of Trial Testimony, K-C's

Bupert Fischer. .6 6 «4 te ce oe 6 we et ee eee 95

United States Court of Appeals for the Federal Circuit

PETER GABOR KALMAN, ) Appeal No. 83-540.

Appellee,

KIMBERLY-CLARK CORPORATION,

Appellant.

DECIDED: July 19, 1983

Before RICH, DAVIS, BENNETT, SMITH, and NIES, Circuit Judges.

RICH, Circuit Judge.

This appeal is from the September 1/7, 1982, judgment of

the District Court for the Eastern District of Wisconsin,

sitting without a jury, holding claims 1, 3, 15, 18, 20, 23,

and 25 of appellee Kalman's U.S. Patent No. 3,471,017, issued

October 7, 1969, entitled "Filtering Process and Apparatus,"

valid and infringed by appellant Kimberly-Clark Corp. ("KC").

561 F. Supp. 628. We affirm.

Background

1. The Invention

The Kalman patent describes and claims a process and

apparatus for filtering a heat-scftened substance, for example,

a thermoplastic, by introducing a filter ribbon across a pas-

sage through which the substance flows. Figs. 1 and 2 of the

patent are here reproduced.

Important to the device are sealing ports 3 and 4 where,

through control of heaters 6, 7, 10, and 11, and water cooling

channels 8, 9, 12, and 13, the temperature is kept within a

lower range than that of the enclosure containing the hot plas-

tics melt so that "the quantities of rigid and semi-rigid

plastics material situated within the channels of these ports

act as self replacing sealing plugs at the entry and exit zones

of the filter ribbon." The filter ribbon or screen is shown at

1. The filtering device is for use in plastics extruders be-

tween the feed screw or ram and the outlet die.

A significant feature of the invention is that the extru-

sion process need not, as with some prior devices, be inter-

Tupted to change filters. Nor does it utilize methods such as

redirecting flow or incorporation of two filters on a slide to

be reciprocated as one filter becomes clogged or damaged. The

patent describes two primary methods of advancing the filter

ribbon, which rests against and is supported by

breaker plate 17, continuous and intermittent. The filter may

* *® *forwarded through the filtering enclo-

sure in steps by periodically shutting off

the water supply to ports 3 and 4 by means

of a valve, not shown, and by raising the

temperatures of these ports by means of the

cartridge heaters * * * . As the outer

skins of the substantially solid plastics

plugs within ports 3 and 4 eecnigger soften

rib 1 becomes free to move. Since the

cross-sectional area of exit slot 15 is

larger than that of inlet slot 14 and since

both plugs are still keyed onto ribbon 1 a

2 net hydrostatic force exists which forwards

tibbon 1 in the direction of arrow c to-

gether with the two plugs.

Continuing, Kalman emphasizes that it

: * * * will be ready [sic] seen by those

pe skilled in the art that the invention lends

itself also to continuous father’ than

periodic operation; in this method of

operating the invention ports 3 and 4 are

maintained at intermediate temperatures

which facilitate the required slow but con-

tinuous forwarding of ribbon 1 through the

apparatus.

;

Kalman also notes that “Economy in the consumption of filter

cloth may be achieved by using an endless, recirculating filter

ribbon loop; the impurities are filtered out as in the pre-

ceding embodiments of the invention and the surrounding solidi-

fied plastics material forming the sleeve 22 may be continu-

ously Temoved, together with the entrapped impurities for

example by melting or by solvent extraction."

Kalman concludes that

* *® * the essential feature of the invention

{is] that the filter is proveone in the form

of an extended ribbon which passes through a

steps

filtering enclosure sealed by partially or

fully solidified end plugs formed of the

material which is being filtered. Replacement

of the clogged filter areas and removal of

the impurities from the stream of the mate-

tial being filtered is achieved by a substan-

tially transverse movement of the filter

tibbon. This may most simply be brought

about by utilizing the hydrostatic pressure

present in extruders but may also be caused,

enhanced or retarded by direct mechanical

pull at either end of the ribbon.

The claims in issue read as follows (paragraphing of

or elements as used in KC's stipulation):

1. A process for filtering a heat-softened

substance flowing through a passage comprising

the steps of

introducing a filter in the form of a

filter band or ribbon by passing it through

inlet and outlet ports flanking said passage so

that a part of the filter extends across said

passage,

forcing the substance through the filter

part to filter said substance whilst providing

temperature conditions at said inlet and outlet

ports resulting in the formation within said

ports of sealing plugs of said substance of

adequate rigidity to prevent substantial leak-

age at said ports, and, when desired,

effecting movement of said filter through

said ports under conditions providing for

self-maintenance of said PET. plugs to

introduce another part of said filter band or

tibbon into said passage.

3. A process as claimed in claim 1 wherein

movement of said filter is effected inter-

mittently.

15. A process as claimed in claim 1 in

which said substance is a heat-softened

plastics material.

18. A filtering device, for filtering a

heat-softened substance, including

A body defini a ssage through which

said substance fem, be pre to ow and

slotted inlet and out d

pesseas, through which s Hitter in the form 3,8

perts of said filter across

said ts ee « adapted for the formation

therein, in use, of sealing plugs of the sub-

stance being filtered tmitting movement of

said filter through said slots without sub-

stantial leakage of said substance, and

means to provide temperature conditions at

said ports to form said plugs.

20. A filtering device as claimed in claim

18 wherein each slotted tt defines an ex-

tended channel through which said filter passes.

23. <A filtering device as claimed in claim

20 including means for controlling the tempera-

ture of each port.

25. <A filtering device as claimed in claim

20 wherein the channel of at least one of said

ports is parallel sided over at least part of

its length.

2. The Accused Infringing Devices

The accused infringing devices are Berlyn Continuous

Filters Model Nos. CF3539 and CF4549, purchased and installed

by KC in 1977. These devices, one of which is depicted below,

are essentially identical and differ only in size. They use a

hydraulic ram to incrementally push a series of three inter-

locked filter plates across the extrusion passage. The Berlyn

brochure states that "each filter plate has rectangular re-

cesses into which the actual filters are placed.. The filters

test against a breaker plate carefully perforated to allow the

passage of polymer through the entire arrangement with an

absolute minimum drop in pressure."

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A simplified visual comparison of the patented and

accused infringing screen changers is provided by an attorney's

sketches reproduced below, patented changer at the top, accused

Berlyn structure at the bottom, the latter employing the inter-

locking filter plates shown above pushed through the unit from

right to left by the ran.

3. The Prior Art

The principal prior art reference relied upon, which is

not listed in the Kalman patent, is U.S. Patent No. 3,112,525,

issued December 3, 1963, to Moziek for an "Apparatus for

Extruding Thermoplastic Material." The patent describes an

extrusion device that utilizes single slidable cartridge filter

assemblies each of which consists of a perforated screen

holder, a screen, and a ribbed screen retainer. The filter is

said to be changed without interrupting extrusion, but changing

is done by opening valve means located on either side of the

filter receiving passage and inserting a fresh filter

cartridge, which pushes the clogged filter cartridge out

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through the opposite valve means. The Moziek device is shown

below, 32 being the slidable cartridge assembly and 36a and 36b

the rotatable valves:

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Moziek states that

The tendency of most thermoplastic materials to

leak past the valve means is generally depen-

dent on the fluid viscosity of the thermo-

plastic material at the temperature of the

extrusion. For materials of low fluid vis-

cosity, it has been found that leakage can be

further reduced by supplemental cooling of the

valves. This may be most conveniently done by

hollowing or jacketing portions of the valve .

means to permit circulation of a cooling medium.

Garrahan, U.S. Patent No. 1,195,576, issued August 22,

1916, describes and claims a "Rubber-Reclaiming Machine." The

“invention relates to means for straining scrap rubber and the

like materials to remove therefrom foreign bodies, such es ~

ee, ie

metal, wood, stone or other hatd pieces or particles

been incorporated therein in the previous uses to 4 ni hb . Pe 2

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material may have been put." The patent shows a long ‘filter

plate m extending out of the filtering device. This construc-

tion, shown below, enables the operator to move the strainer

“from time to time so as to shift one part of the straining

atea out of the straining position and another into straining

position to enable cleaning of the former while the straining

operation proceeds uninterrupted.” Movement is accomplished

through attached screw z.

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U.S. Patent No. 3,007,199, issued November 7, 1961, to

Curtis for an "“Extruding Head Filter," discloses a slide screen

changer which has “a plurality of filter screens within a plas-

tics extrusion machine arranged in a manner so that the screens

may be alternately placed into operation very quickly by

hydraulic means so that one of the screens is always in opera-

tion while the other is exposed to permit cleaning.”

KC maintains that the pertinent teaching of Lodge patent

No. 2,507,311, issued May 9, 1950, for a "Strainer," is "the

ure of, tong bento eo: ofIih of PEReE secnme one. My Mle

and 32 from rolls 33, 34 and 35." Kalman emphasizes that "the

machine disclosed by Lodge must be shut down to effect a screen

change." Below is Fig. 1 from Lodge showing the strainer as

part of a tubing extruder.

KC states that patehts to Joukainen, Welt, Thomas, and

Lehner were cited "merely to show that the thermoplastic

working art recognized one could use cooling to make a thermo-

plastic material or a heat-softenable material act as a seal

when it is. solidified by cooling.” Emphasizing that the

patents disclose rotary screw extruders or rotary pumps for

plastic material, Kalman counters that "none of these four

patents discloses or suggests that the plastic material can

form seals by being solidified, for any purpose, and certainly

not for sealing filter members."

4. Proceedings in the District Court

Without waiving any of its defenses respecting validity,

KC stipulated that the asserted ciaims “read on" the accused a;

infringing devices, but for the limitations in claims 1 and 18 2”

which speak of a filter “in the form of band of ribbon.”

Since all other claims depend from 1 or 18, this limitation is.

common to all claims in suit. On his motion for summary judg-

ment on both validity and infringement, Kalman presented the

affidavits of two experts, both of whom concluded that both the

Kalman and Berlyn devices have a band of filter material.

Kalman also presented the testimony of three KC employees, two

of whom seemed to accept Kalman's attorney's suggestion that

the accused screen structure was like "a train of screen

pieces" connected end to end moving through the apparatus. The

other employee agreed to characterize it as “one long plate,”

or "like a band of filter material along the entire length of

"no

this plate, but for [the] dividers." Because KC presented

affidavits or other documents which controvert this testimony,"

the court concluded “that no facts are in dispute on the issue

of the band or ribbon." The court also concluded that "the

filters used in the Berlyn device are equivalents of those

described in the patent," and granted in part Kalman's motion

for summary judgment, ruling that the Kalman patent was in-

fringed but declining to rule on its validity. 215 USPQ 158

(E.D. Wis. 1981). The conclusion of equivalence is not chal-

lenged on appeal.

Because the district court felt that KC's arguments

regarding validity presented genuine issues of material fact

for trial, the court denied the remainder of Kalman's motion.

In addition to arguing that the Moziek patent casts doubt on

the validity of the claims in suit, KC asserted that the +

“effecting movement" language of claim 1 “must be interpreted * )

as being the type of movement for the filterscreen which relies

on a differential pressure acting on the plugs formed in the

filter inlet and outlet ports to impart movement to the filter-

screen device." If the claim is not so limited, KC argued, it

is invalid over the prior art; if it is so limited, KC asserts

that there is no infringement.

After a four-day trial, the district court found all

claims directly infringed by the Berlyn devices:

These claims contain no reference to movement

of the filter by hydrostatic pressure. Method

claim 1 refers merely to “effecting movement"

of the filter. When one looks to other claims,

it becomes clear that “effecting movement" in

claim 1 does not refer to one means of moving

the filter. Alternate means of effecting move-

ment are set forth in claims 5, 6, and 7.

Claim 7 states that a "tractive force” may be

applied to the filter to effect intermittent

movement of the filter. I read claim 7, as

does plainciff, to mean that a tractive force

alone may be used to move the filter.

The court emphasized that “the Berlyn devices must be compared

to the claims of the Kalman patent, not to a preferred, in this

case, more sophisticated embodiment as described in the speci-

fication." In conclusion, the court commented on the manner in

which the Berlyn devices advance the filter assembly:

That the Berlyn devices push rather than pull

the filter is not a difference of enough signi-

ficance to escape the charge of infringement.

Defendant's employee * * * testified during his

deposition that it makes no difference in the

Berlyn device whether the filter trays are

pushed or pulled.

Turning to the issue of validity, the court noted that

Moziek only :

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* * * discloses a variation on the screen

changer method of filtering plastic. It does

not call for continuous movement of the filter;

rather, as in screen changers, the change is

done all at once--that. is, an entire new filter.

is placed across the flow. Furthermore, Moziek

makes no provision for a band or ribbon or any

length of filter. Rather, as is typical for

screen changers, two filters are called for---

one being used, one bei cleaned. Although

Moziek teaches that the valves can be cooled to

prevent leakage, the theory of the cooling is

different from that in the Kalman patent. In

Moziek, leakage is primarily prevented by using

closely fitting metal parts. The cooling helps

prevent leakage past the valves. is is

vastly different from relying on the plastic

itself, as in Kalman, to form plugs.

Characterizing Moziek as disclosing a sliding "screen changer”

method while “the essence of the Kalman invention is the con-

tinuous filter," the court concluded that “The Moziek patent

falls far short of anticipating the Kalman patent [sic, claimed

invention] under 35 USC §102. * * * Moziek, as written, does

not teach what Kalman does." Because “specific problems not

provided for by the prior art” are solved by Kalman, for

example, “prevention of leakage; continuous filtering; and

maintenance of constant temperature and pressure in the plastic

upstream, the court also concluded that the claimed invention

meets the requirement of nonobviousness under 35 USC 103.

5. Atguments on Appeal.

KC argues that the district court gave the claims in

issue too narrow a scope and that, properly construed, each is

invalid under 35 USC 102(a), 102(b), 102(e), and/or 102(g) in

view of Moziek.- KC also asserts that the claims are invalid

under 35 USC 102(a) (known or used by others in this country

before Kalman's date of invention) in view of evidence which

shows that prior to “the effective date of invention of the

Kalman patent [sic, invention], Monsanto built and operated a

number of filter devices corresponding to the disclosure of the

Moziek patent."

Avering that all claims are also invalid under 35 USC

103, KC states that, following its anticipation analysis, “it

is clear that very little, if any, differences exist between

the prior art Moziek patent and the claims at issue. The only

difference is that the same filter band of the Moziek device is

not in both the inlet and outlet ports at the same time. Dean

Fischer [KC's expert] testified that the Kalman patent claims

do not require that this be so.” KC suggests that additional

expert testimony compels the conclusion that the claimed inven-

tion would have been obvious within the meaning of §103 in view

of Moziek taken with Garrahan, and that it was error for the

court both to discard Garrahan as a relevant reference and to

ignore that testimony. Moreover,

the recognition in the Curtis patent of supply-

ing cooling coils along with the recognition

that seals may be fo by cooling thermoplas-

elt, Thess ond Lebuet patente indicates chat

the level of ordinary skill in this art clearly

PP ty og Meek Boe rg of seals by chilling

KC concludes its arguments on validity by emphasizing

that the court erred in dismissing Moziek on its belief that

“che filter does not move continuously" and that “leakage of

plastic is to be minimized, not used as self-sealing plugs."

‘KC contends that the claims do not require continuous movement _

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and that they only require prevention of substantial leakage.

Further, it is argued, “if Moziek is discounted because leakage

is ,rimarily prevented by using closely fitting metal parts,

that is precisely what the Berlyn device uses as well. * * * If

Moziek is discounted because the major portion of the slot is

filled with the filter cartridge assembly, why shouldn't this

distinction apply to the accused Berlyn device which utilizes

this concept to a greater degree?"

Arguing that "Mere application of claim phraseology or a

word by word correspondence is not alone enough to establish

infringement"; that "the language of the claim must be read in

light of the specification and the file wrapper"; that the

“monopoly granted to the inventor can never be broader than the

invention disclosed to the public"; and that a specification or

its prosecution history "may not be used to enlarge the claim,”

KC contends that analysis of the actual invention Kalman

regards as his “leads inescapably to the conclusion that the

invention disclosed, relative to the advancement of the filter

when it is desired to effect a screen change, is the concept of

utilizing the internal hydrostatic pressure differential in

some manner." Thus construed, KC contends the claims are not

infringed. If the claims are not so construed, KC maintains

here -- as it did before the district court -- they are invalid.

Kalman asserts that resolution of the issues of infringe-

ment and validity revolve around the scope of the claims,

specifically, whether they must be read to include an unwritten

limitation that requires movement of the filter by differential

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¥ hydrostatic pressure. Noting that KC bas not shown ve of the

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findings of the district Saunt including infringement, to be

clearly erroneous, Kalman maintains that the court correctly

answered tiiis question in the negative, saying that the Kaiman

claims in issue “contain no reference to movement of the filter 4

by hydrostatic pressure."

Jurisdiction

Our subject matter jurisdiction over this appeal is a

provided by section 127(a) of the Federal Courts Improvement Act

of 1982, Pub. L. No. 97-164, 96 Stat. 25, which gives this court of

exclusive jurisdiction of appeals from final decisions of the ‘

federal district courts if the subject matter jurisdiction of

the district court was based, in whole or in part, on 28 USC at

1338(a), with exceptions not relevant here. 28 USC 1295(a)(1)

(1983). The district court's jurisdiction was so based.

OPINION aa

l. Infringement

As noted above, on Kalman's motion for summary judgment,

KC failed to introduce any evidence to rebut the affidavits a

submitted in support of Kalman's position on the meaning of the Ba

only claim language left in dispute by the parties’ stipulation

regarding literal infringement. Accordingly, the district court

gtanted the motion with respect to this issue, stating that “the

linked filters in the Berlyn continuous filter devices are

equivalents of the ‘band or ribbon’ described in the patent." ae

It also correctly noted that because of this holding, if the aa

claims are not read as KC wishes, it "has in effect admitted =

that it has infringed the patent."

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KC argues that, in light of the Kalman disclosure, the

independent claims must be read as limited to a process and ap-

paratus which"[effect] movement" of a filter band or ribbon by

differential hydrostatic pressure. The district court properly

rejected this contention, for dependent claims 2 and 33 (not in

issue) contain that very limitation,+/ and it is settled and

proper law that “Where some claims are broad and others narrow,

the narrow claim limitations cannot be read into the broad

whether to avoid invalidity or to escape infringement." Deere &

Co. v. International Harvester Co., 658 F.2d 1137, 1141, 211

USPQ 11, 16 (7th Cir. 1981); Cameron Iron Works, Inc. v.

Stekoll, 242 F.2d 17, 21, 112 USPQ 411, 415 (5th Cir. 1957)

(cases cited); Western States Machine Co. v. S.S. Hepworth Co.,

' 147 F.2d 345, 350, 64 USPQ 141, 146 (2d Cir. 1945) (cases

cited). See Maccarone v. Pincus & Tobias, Inc., ll F. Supp.

248, 251, 27 USPQ 104, 106-07 (ED NY 1935), aff'd mem., 82 F.2d

1015 (2d Cir. 1936). :

Because the accused devices fall within the scope of the

' asserted claims, as interpreted, the district court's factual

finding of identity of "invention," a question “chiefly to be

1/ Claim 2, which depends from claim 1, adds the limitation,

“wherein the filter band or ribbon is keyed to the sealing plu

within the outlet port and wherein the hydrostatic pressure o

said substance within said passage acting on said pee pt

within the outlet port is utilised [sic] to move said

let sealing plug."

Claim 33,

| mr pnare age “wher a the oueset “ tTesents a greater |

_ five area to said passage ti niet t to provide

hydrostatic fo for moving said filter through said device.

oft eg? »</ | <3

band or ribbon as a result of controlled extrusion of said out-

which depends from claims 26 and 18, adds the 4

a@net

determined by comparison of the two {inventions]," was not

clearly erroneous. See Coupe v. Royer, 155 U.S. 565, 579 (1895),

(The Court there adopted the words of Prof. William C. Robinson's

classic “work on Patents," (The Law of Patents for Useful

Inventions (1890) Vol. 3, p. 378) wherein he stated that where

the defendant “denies that the invention used by the defendant is

identical with that included in the plaintiff's patent, the court

defines the patented invention as indicated by the language of

the Claims; the jury judge whether the invention so defined

covers the art or article employed by the defendant.”). Indeed,

the stipulation by the parties, coupled with KC's failure to

counter Kalman's affidavits and evidence submitted in his motion

for summary judgment, dictated the conclusion of the district

court.

Nevertheless, KC argues that “despite literal readability

of the asserted claim language on the Berlyn filter process and

device," there can be no infringement under the law because

“there is no infringement of the true spirit and scope of the

invention made by Kalman,” citing Autogiro Co. v. United States,

384 F.2d 391, 155 USPQ 697 (Ct. Cl. 1967).

We do not agree. Because application of "reverse

equivalents" is a legal question, we conclude on this record, as

a matter of law, that thé Berlyn devices do the same work, in

substantially the same way, to accomplish substantially the same

result. Id. at 399-400, 155 USPQ at 704. While a Berlyn

brochure declares that its devices represent an improvement over

the Kalman invention, we cannot say that Seckye “has hae fer &

—— the posactphoe of the device ok ‘. peas oe: ;

patent, literally construed, have ceased to represent [Kalman's]

actual invention.” Westinghouse v. Boyden Power Brake Co., 170

U.S. 537, 568 (1898). : |

Because KC has not separately ergued any claims, we affirm

the finding of the district court that all asserted claims are

infringed. This brings us to the remaining issue of validity.

2. Validity

Again, KC's principal argument is that the Kalman

invention, as defined in the claims in suit, is anticipated by

Moziek2/ if the "effecting" and "permitting" movement language

of claims 1 and 18 is not “interpreted as being the type of

movement for the filterscreen which relies on a differential

pressure acting on the plugs formed in the filter inlet and

outlet ports to impart movement to the filterscreen device." We

have stated above that such limitation may not be “read into"

the claims. Hence our only remaining task is review of the

district court's determina- tion that the claims in issue are

neither anticipated by Moziek, nor rendered obvious, within the

meaning of 35 USC 103, by- the teachings of any combination of

ptior art references presented by KC.

a. Anticipation

A party asserting that a patent claim is anticipated under

35 USC 102 must demonstrate, among other things, identity of

invention. In cases like this, identity of invention is a

question of fact, e.g., Coupe v. Royer, supra at 578-79, and one

who seeks such a finding must show that each element of the

claim in issue is found, either expressly described or under

principles of inherency, in a single prior art reference, or

that the claimed invention was previously known or embodied in a

single prior art device or practice. Preliminary to this

determination, of course, is construction of the claims to

determine their meaning in light of -the specification and

prosecution bineney. which construction is a matter of law for

the court.

Although the claims make no mention of continuous movement

of the filter, the district court distinguished the claimed

invention from Moziek on the basis that that reference

* ¥* * discloses a variation on the screen

changer method of filtering plastic. It does

not call for continuous movement of the filter;

rather, as in screen changers, the change is

done all at once--that is, an entire new filter

is placed across the flow.

The court continued:

Although Moziek teaches that the valves can be

cooled prevent leakage, the Baie of Rad

cooling is different from er

In Moziek

Accordingly, after consideration of the Kalman and Moziek

inventions, the district court concluded that “The Moziek

patent falls far short of anticipating the Kalman patent,” for

the reason that "Moziek, as written, does not teach what Kalman

does." (Emphasis ours.) Citing Illinois Tool Works, Inc. v.

Sweetheart Plastics, Inc., 436 F.2d 1180, 1182-83 (7th Cir.

1971), the district court had previously emphasized that "To be

an sabiit cation a prior patent must include all the teachings

necessary to accomplish what the allegedly invalid patent

succeeds in doing." (Emphasis ours.)

This was a somewhat incorrect analysis of the law of

_anticipation, which requires that a distinction be made between

the invention described or taught and the invention claimed.

. The law of anticipation does “not require that the reference

"teach" what the subject patent teaches. Assuming that a

reference is properly "prior art," it is only necessary that

the claims under attack, as construed by the court, “read on”

something disclosed in the reference, i.e., all limitations of

the claim are found in the reference, or "fully met" by it.

While the court erred in stating that Moziek must, to

anticipate, disclose the same invention as that described by

Kalman, it still found that one element of the claimed

‘invention was not disclosed in Moziek, which is enough. The

court concluded that “Moziek makes no provision for a band or

ribbon or any length of filter." KC has not persuaded ue that

3 pee this finding was erroneous. Our study of the yest

tention it.

The district court properly concluded that, while the

interlocking multiple cartridge assembly found in the alleged

infringing Berlyn device is, as the court had previously held

on motion for summary judgment (215 USPQ at 162), equivalent to

a “filter band or ribbon," the single cartridge assembly found

in Moziek is not. In attempted refutation, KC points only to

the following inconclusive statement made by its expert at the

trial:

Well, I.believe that the, that through the car-

riage in Moziek with the screen in the, is in

the form of a band or ribbon.

_ Given the district court's summary judgment conclusion on the

interpretation of “band or ribbon," we are unable to find clear

error in the court's decision that KC did not sustain its

burden of demonstrating anticipation.

b. Obviousness

The district court began its discussion of obviousness by

noting the three inquiries mandated by Graham v. John Deere

Co., 383 U.S. 1, 17 (1966), which inquiries are simply those

required by the statute itself, 35 USC 103.

With respect to the scope and content of the prior art,

the court concluded

* * *that the prior art shows variations and

incremental improvements on the slide screen

changer for filtering thermoplastics and in-

cludes various forms of continuous filters f

other media which are somewhat easier to handle

than thermoplastics. cues ot eS

yhhe art reveals a way use

ilter with plastics. specific problens ‘Rot

ee ee re Ta ee fr be Menge ae

provided for by the hie att include, for

instance, the problem of how to prevent leakage

at the inlet and outlet ports. The step for-

ward taken by Kalman solves several problems at

once: prevention of leakage; continuous filter-

ing; and maintenance of constant temperature —

and pressure in the plastic upstream.

The court next said that the level of skill in the art is

determined in a number of ways and quoted the following from

Malsbary Mfg. Co. v. Ald, Inc., 447 F.2d 809, 811, 171 USPQ 7,

8 (7th Cir. 1971):

* * * the usual way of determining such level

is by referring to the subjective reaction of a

person thoroughly familiar with the particular

‘art and, if possible, one who practiced the art

at the crucial time in question.

The court then stated that "Mr. George Pickering, plaintiff's

expert, is such a person, and his testimony leads me to conclude

that Kalman's invention would not have been obvious to a person

of ordinary skill in the art at the time of the invention.

Those persons of ordinary skill simply did not see a solution to

the problems inherent in filtering plastics." Finally, in sup-

port of its determination, the court stated that the “Auto-

screen” devices “built under" Kalman's patent “have enjoyed com-

mercial success. Mr. Gerald Berlyn, in fact, attempted to

become a licensee for Autoscreens before he built his own

machine."

Five references are listed in the Kalman patent as having

been considered by the examiner. They include patents directed >

F m! > Prd ao. 4 “ee x, b oie, ay CR, oT ae ox | gs ae : 7 “4

other passage and of sealing the edges of the same against the

passage of unfiltered air and/or other gaseous body"; a contin-

vous filter “useful in the manufacture of paints, enamels. var-

Boras

pow

aise

nishes, lacquers and the like"; an automatic fluid testing

mechanism "for periodically depositing on a porous tape samples

of solid particles which are filtered from measured quantities

of fluids to be analyzed"; and an apparatus for filtering

liquid, “and more particularly, to improved apparatus for

filtering undesirable matter, impurities and the like from a

liquid solvent being used for cleaning material in a dry

cleaning operation or process.”

As the district court pointed out, although the examiner

cited the above five patents, he based no rejection on them.

Indeed, he allowed the claims as filed except for a few

examiner's amendments. 215 USPQ at 159. KC's principal

reliance is on the patents of Moziek and Garrahan. Like the

district court, we recognize they are more pertinent on the

obviousness issue than the art cited by the examiner and must be

carefully examined to determine whether KC has sustained the

burden placed on it by 35 USC 282.2/

Maem

~ 2

Ce 5

3/ The trial court referred to §282 as shifting the burden of

: roof to the party attacking validity, which is a mistake.

eae t places it there and there it stays. It may become more 7~

= or tase difficult to sustain as evidence is peeenen. bots GE

ae the burden never shifts. oe ide v. Cr Fe eal

Se Packi +» 523 F.2d 452, : (7th-

Of course, where the PTO has hae: considered facta "

televant to an issue in suit, nme, io no ne and to Rb tam

deference to its action in issuing the :

ony te find Bs facts controll in det

den of proof has has been fading wy ‘

ware at 546. a ab

I sts ; ft bah s

ches

Paeee

The trial court gave extensive consideration to Moziek

both on Kalman's motion for summary judgment and again at the

trial, heard testimony about it and about a machine allegedly

built according to its teachings and even heard testimony from

Moziek himself. We agree with the court's appraisal of that

reference as a typical screen changer type of machine with no

provision for a band or ribbon.

With respect to Garrahan, the trial court put ic in the

same catagory with Moziek, and we agree. We have one minor

point of disagreement which is that Garrahan was further

distinguished from Kalman on the ground that it dealt only with

straining rubber which the court seemed to _ exclude,

erroneously, from the category of "thermoplastics." It is

clear from Garrahan that his rubber was thermoplastic.

(softening with heat) since he discloses keeping it “as soft as

possible during the straining" by heating it. Furthermore,

Kalman's own specification refers to the filtration of

"Plastics, rubber and other materials which are usually

extruded." Nevertheless, the fact remains that Garrahan is no

closer prior art than Motiel. which specifically deals with

straining "plastics."

Though there is nothing to show that these two patents

Paar ne eee

oer.

were considered by the PTO, the burden of establishing facts to

support a conclusion of obviousness in view of the prior art as

remained on KC. Solder Removal Co. v. International Trade =

Commission, 582 F.2d 628, 632-33, 199 USPQ 129, 132-33 (CCPA |

ie). | 1978). | J eee ae

KC points to its cross examination of Kalman's expert,

and argues that his testimony reveals that "It would be obvious

to combine the teaching of Garrahan, that a long filter plate

extending out of a filter device could be used, with the device

disclosed by Moziek." The following exchange is relied upon:

Q. So, if I saw the device I had constructed [a

Moziek-type device] worked without leaking and I saw

Garrahan, could I say why can't I use Mr. Garrahan's

ergy te with a device that Mr. Moziek taught me to

build, because I know it would work?

A. What is Mr. Garrahan's teaching that you're

postulating?

Q. Use of a long filter band that extends out -- out

of my extruder pad or my screen changer body.

A. All right.

Q. Would that be a fair combination of the teachings

of Garrahan and Moziek?

A. Well, yes, I'd say so. This is a slide changer,

and that's a slide changer. Why not use this instead

of that.

In other words, KC’s argument is that it would have been obvious

within the meaning of 35 USC 103 to open the valves of the

Moziek device, leave them open, and combine it with the so-

called “long filter band,” which is not very long, that extends

through Garrahan to arrive at Kalman's claimed devices and pro-

cesses. With respect to the sealing plug claim limitations, KC

suggests that the prior art “indicates that the level of ordi-

nary skill in this art clearly recognized the formation of onete:s

by chilling of a hot thermoplastic."

We cannot agree, however, that this is anttnenane ss

defeat Kalman's claims. KC's ae are pet ry bok

hypothetical combinations of prior art features and amount to

nothing more than hindsight reconstructions. They fail to focus

on other evidence respecting the nonobviousness of Kalman's

claimed invention.

The district court found, based upon testimony given at

trial, that several long-standing problems were solved by

Kalman. At that time, the court concluded, “those persons of

ordinary skill simply did not see a solution to the problems

inherent in filtering plastics." Although KC responds that

"None of these elements form a part of the claimed Kalman

invention,” it has not established that these advantageous

results are not attributes of (i.e., that they have no nexus to)

the elated invention, which resides in a combination of steps

or elements. Accordingly, we hold none of the findings of the

district court to be clearly erroneous. Its decision holding

that the claims in suit have been infringed by KC and that KC

has failed to sustain its burden to show them invalid is

affirmed.

at of - ’ _ « ie 4 Zz te edits Pt, a es ee ad

£ t > a ” iy, Ana $ *

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF WISCONSIN

AUG 17 1088

Plaintiff,

v. Civil Action

Bo. 78-C-721

KIMBERLY-CLARK CORPORATION,

Defendant.

DECISION and ORDER

A four-day court trial in this patent

validity-infringement case ended on April 2, 1982. The case was

very ably presented by lead counsel for the parties, I. Irving

Silverman for the plpgintite and Leonard J. Santisi for the

defendant. The following constitutes sy findings of fact and

conclusions of law.

There are two issues in the case. One concerns the

validity of the patent in suit, U.S. Patent 3,471,017. If it is

valid, the second question is whether the sccused Berlyn

continuous filters sodel nos. CF3539 and CF4549 owned and used

by the Kimberly-Clark Corporation infringe the patent's process

p claims numbered 1, 3, and 15 and its apparatus claims numbered = |

18, 20, 23, and 25. “

The pleintiff Peter Gabor Kalman is « citizen of the —

United Kingdom. He resides in London, England. Keleen is oe a

patentee and owner of the patent in suit. His corporation, —

Process Developments Ltd. of London, sanufactures and bape

filter devices constructed according to the te

patent. ‘Kalman has also licensed Mobil O11 nee |

end use filter devices under the patent in the United &

The filter devices e>14 inthe United States ender the ps

=) 4

_ 2s ee ee

The Gefendant Kimberly-Clark Corporation of Seenah,

Wisconsin sanufactures, among other things, products fros

lwat-softenable plastics which it obteins in bulk, feeds to

apparatus which soften and extrude it through dies, spinnerets

or the like. The heat softened plastic is filtered during the

process. The end product is sheet saterial sade of plastic.

The Kalman Patent

The patent in suit describes a filtering process and

apparatus. It was issued on October 7, 1969 to Mr. Kalman based

on an application filed June 20, 1967. The date of the

invention is February 21, 1967, the filing Gate of Mr. Kalean's

corresponding British patent application.

The Kalman patent has two independent clains, clains 1

and 16, the first directed to the method of the invention and

the second to the apparatus of the invention. The invention

provides a seans of filtering molten plastic to remove

contaminants while the plastic is being forced through s central

bore toward # die or mold. The gist of the invention is the

provision of a continuous filter device in the fors of a “band

or ribbon” for heat-softened flowing plastic.

The invention operates when a length of filter is

passed across the flow of plastic. The filter is incrementally

moved to bring fresh filter areas into the flow path and resove

cloeqed filter areas from the path. ~ Controlled temperature heat

exchangers are positioned at the inlet and outlet ports through

which the filter passes. The heat exchangers cause the

formation of sealing plugs of rigid or semi-rigid plastic which

always surround the filter ends and sove with the filter. The

plugs sare continuously self-maintained or re-formed fros the

molten plastic to maintain seals as the filter soves. They

prevent leakage without the need for high pressure sealing or

extremely close tolerances during the operation of the device.

In the Kalean petent the filter is «a roll of

unsupported filter screening. Backup support for the screening

is provided by a fixed breaker plate that is built into the Me

enclosure and through which the filtered plastic: passes after it aa

has passed through the filter. . hr

The Kalman patent discloses examples of the means by a

which the filter is soved continuously into and through the 4

inlet port, scross the stream of flowing plastics, and into and :

through the outlet port without stopping the flow of plastics

and without stopping the operation of the extruder. One of

these procedures involves saking the outlet port larger than the

inlet port. As a consequence, the rigid or semi-rigid plug of

plastic material in the outlet port is under greater hydrostatic

pressure than the plug at the inlet port. Because the sealing 4B

plugs ere connected to the filter, the proseure causes the plugs "ie

and filter to move together toward the outlet port. The

movement slowly carries the sealing plug of the inlet port into .

the enclosure and expels the other one. The filter gradually a

moves across the stream of flowing plastics while the plastic is oe

being filtered through the A, The sovement is

accomplished without significant leakage because the sealing

plugs are always being formed and saintained.

Another procedure for soving the filter ribbon involves

increasing the forward sovement of the filter by pulling at the.

emerging end of the ribbon with « direct external force.

Sivsilarly, the forwarding movement of the filter ribbon say be 4

retarded by the application of # direct force to the ribbon at

the inlet port. ts * eG

Prior to the design and construction of the Berlyn BY:

devices of the type owned by the defendant, the ruronerean : Mi

devices were the only cont invous filter Setar seatianie oo a

i.) ets,

The file history of the Kalman petent indicates no

prosecution of the claims other than a sinor asendment by the

Examiner. With the minor amendzent, the clainus were sllowed as

filed. ‘The application upon which the patent issued wae filed

with 43 claims including the independent process claim 1 and the

independent apparatus cleis 18. Mone of the claias were

rejected by the Patent Office. Mo amendzents to the application

were made to distinguish the invention from an prior art. The

Patent Office cited five U.S. patents in the Kalman patent

application, but applied no art to the clains.

The language “band or ribbon” was never discussed or

argued between the applicant and the Exasiner, nor was ther® any

Giscussion of the use of hydrostatic pressure for soving the

filter or of the difference in size between the inlet and outlet

ports. The Patent. Office aid not object to any of the claizs in

suit which do not include references to the movement of the

filter by internal pressure or to ports of different sizes.

The Exazmifer's amendzsent inserted the phrase

“heat-softened” before “substance,” inserted the word

“temperature” before “condition” and changed the word “slot” to

the word “port” in Claim 1. Claim 18 was asended to insert the

phrase “for filtering a heat-softened substance” after “device,”

to change “can be passed and“ to “is passed and can be ...," and

to insert after “substance” the phrase “and means to provide

temperature conditions at said ports to form said plugs.” The

Examiner's amendment includes the statement, “The above

amendments have been authorized by applicant's attorney, Mr. Leo

Rosetta, via a telephone interview on January 30, 1969." The

application was issued following the amendment. The amendments

were made to claridy the claias, not to distinguish thes from

any prior art references.

vs r -

"x 4 as > Oe = ts ?

trie mite” me Pi) & eh Been’. 7 oer o i Perr NS

The Berlyn Filters

The accused devices, Berlyn Continuous Pilters Model

numbers CF3539 and CF4549 were sanvfsctured by the Berlyn

Corporetion of Worcester, Massachusetts, and sold to the

defendant Kimberly-Clark in 1977. They were in use prior to the

filing of this lawsuit and during the pendency of the suit.

The Berlyn screen changer Gevices operate without

stopping the extruder and without producing great variations in

the back pressure of the plastic in the extruder. The accused

devices have heated enclosures connected between the extruder

and the dies. The enclosures have a slot or channel transverse

of the plastic flow that intercepts the flow, an inlet port at

one end of the channel, end an outlet port at the other end.

Each of the accused devices has a string of three trays

in the channel ast ell times and the trays are soved from the

inlet port to the outlet port under the influence of an external

force, @ hydrevlic ras, pushing the string through the channel

in emall increments. Each tray is divided into small

compartments separated by narrow dividers. A small rectangle of

filter ecreening material is inserted into each of the

compartments before the tray is introduced into the channel.

Each tray is coupled to its neighbor so that all trays in the

channel sove simultaneously éuring the filtering process. The

trays have a number of perforations which are larger than the

interstices of the screen elements. ‘

A stream of sir at the ports controle the tesperature = |

eo that a solidified sealing plug is maintained and re-formed as

the string of trays moves ‘hrough the channel. The solidified i

plugs “surround the trays at the inlet ana outlet “en

The Cleins

In a stipulation files June 30, 1980, the defendant

agreed that clainas 1, 3, 15, 18, 20, 23, and 25 of the Kalsan

patent read on the accused Berlyn devices but for the

Gescription of the filter as a “bend or ribbon” and “in the form

of a band or ribbon.” Based in part on the stipuletion,

plaintiff moved for summary juégeent on both issues, velidity

and infringement. In a Gecision and order filed November 5,

1961, and hereby incorporated by reference into this decision, I

Getermined that the filters used in the accused Berlyn devices

were equivalents of the band or ribbon described in the patent.

I also dGetersined, however, that defendant had, although

somewhat belatedly, inserted another issue into the lawsuit,

thus preventing summary judgment. That issue was whether the

claims of the Kalsan patent sust be read as limited to a sethod

of moving the filter across the plastic by differential pressure

acting on the plugs formed in the inlet and outlet ports. If

so, Gefendant argued, because the accused devices depend on an

external hydravlic ram, there could be no infringement.

Defendant also argued, relying primarily on U.S. Patent ;

3,112,525, the so-called Moziek patent, that if the limitation |

is not read into the Kalman clains, the Kalean patent is ter

invelid. Following trial, the issues remain nearly the sane as * rad

choy wenisibe: damaeie debenbin. The controversy swirls around | as

the scope of the patent claias.

Infringement :

Plaintiff asserts infringesent of cleins is

20, 23, and 25. Infringement of Clains

at said ports and, when Gesired, effecting

movement of seid filter through said ports under

conditions providing for self-maintensence of said

sealing plugs to introduce another part of said

filter bané or ribbon into said passage.

3. <A process as cleiseéd in cleim 1 wherein

movement of said filter band or ribbon is

effected intermittently.

15. A process as clained in clais 1 in which

said substance is a heat-softened plastic

material.

16. <A filtering Gevice, for filtering «

heat-softened substance, including «® body

Gefining a passage through which said substance

can be caused to flow and slotted inlet and

a filter in the forms of « bend or ribbon is

passed and can be soved to introduce different

parts of said filter across said paessege, said

ports being adapted for the formation therein, in

use, Of sealing plugs of the substance being

filtered persitting soverment of said filter

through said slots without substential leakage of

eaid substance, and means to provide temperature

conditions at said ports to form said plugs.

20. <A filtering device as claimed in clais 18

wherein each slotted port defines an extended

channel through which said filter passes.

23. <A filtering device as claimed in claim 20

including means for controlling the tempersture

of each port.

25. A filtering device as claimed in claim 20

wherein the channel of at least one of said ports

is parallel sided over at least part of its |

length.

Because of the stipulation and the decision of November —

5, 1961, there are limited areas of controversy on the re =

infringement issue. It is agreed by the parties that the Berlyn i 2

: ie os i

7 a Cet te i oe . CE ae Fee rm ee, ae OO Las ee SS POG Oe Pt ee Pd, Va, a> eee

+ RS ey ee. ee eee ate A air es | ~ i eS

- 7 ~ ,

As on summary judgment, defendant asserts that the Kalean clains

> “sust be read in light of the patent specification and thus the

Y : claimed step of ‘effecting movement’ sust be read with the

é limitation that the movement is effected by differential

internal hydrostatic pressure.“ Defendant's Proposed Findings

Bo. 30, p- 12. Because the Berlyn device does not rely on

Gifferential pressure to effect sovement, but rather uses «

hydraulic ras, Gefendant ergues that there can be no

j infringement.

I finé thet claims 1, 3, 15, 18, 20, 23, and 25 are

directly infringed by the Berlyn devices. These claims contain

no reference to sovement of the filter by hydrostatic pressure.

Method claim 1 refers merely to “effecting movement” of the

filter. When one looks to other claims, it becomes clear that

“effecting movement” in claim 1 does not refer to one means of

moving the filter. Alternate means of effecting sovement are

set forth in cleims 5, 6, and 7. Claim 7 states that a

“tractive force” may be applied to the filter to effect

intermittent movement of the filter. I read claim 7, as does

plaintiff, to mean that a tractive force alone say be used to

move the filter.

In Getermining whether an accused device infringes a

patent, one must first examine the claims. If the seccused

Gevice falls within a claim, infringement exists. Graver Tank

vs Linde Co., 339 U.S. 605 (1950). ‘Thus the Berlyn devices must |

be compared to the claims of the Kalman patent, not to « Bats.

preferred, in this case, sore sophisticated qubadianes, as iS

described in the specifications. See: Beith v. Snow, 294 v.82 ;

(1998). Srtnedaeh Suatinn weet Seaeseimnbat; te Segtenee ba a

when the less sophisticated method here te, in effect, found in|

eR ee he SRE

pull the filter is not a difference of enough significance to

escape the charge of infringement. Defendant's employee, Edward

BH. Ruscher, testified during his deposition that it sakes no

4ifference in the Berlyn device whether the filter trays are

pushed or pulled. Thus, the Berlyn filters infringe clains 1,

3, 15, 18, 20, 23, and 25 of the Kalean patent.

Validity

The next issue is the validity of the patent. At the

time of the invention, it was

“known art to employ two distinct filter uzes

s separate perforated becking discs

and when one becomes clogged the other is sade to

continue filtering. This is achieved either by

redirecting the flow from one filter disc to the

other by means of a valve or by incorporating the

two filters and their supports in a slide which

can be periodically reciprocated transversely to

the flow of the plastics material. Eventually

however the clogged or damaged filter discs still

require replacement and this is an essentially

manual operation ig he | work with hot and

sticky objects and ~ attendance by

personnel. These usuelly involve

metal to setal sealing See stoting high

actuating forces and the use of costly hydraulic

equiment if leakage is to be minimized.” Kalman

Patent, Column 1, lines 54-68, emphasis added.

The Cowen patent, number 642,814, is an exasple of the

slide screen changer known in the art prior to the Kalsan

invention. _

One of the problems with « slide screen changer

filtering device was that it could not, with sufficient speed,

provide fresh filter to the streas of saterial that was

heavily contaminated with impurities. In 2 i

‘ee

plastic meteriels cosh 00 ehece ence used ty

quantity of impurities must be removed.

a a ae reese

pressure in the material upstream from the filter then results,

requiring @ constant changing of filters. The problems with

slide ecreen changers sre further described in « brochure

published by the Berlyn Corporstion called “Continuous

Pilters.” Trial Exhibit #¢56.

The seals of a slide screen changer were usually sade

with metal-to-metal contacts, including a soft setal bushing.

The slide screen could be pushed from one side to another with a

reasonable amount of force.

In 1967 plastics were being filtered at temperatures of

up to 600° Fahrenheit and at pressures of up to 5,000-6,000

pounds per square inch. Then, as now, in order to maintain a

consistent product eperging from the filter, there was a need to

keep the temperature and pressure of the plastic saterial

constant.

The problems addressed by the Kalean patent were how to

maintain constant temperatures and pressures, how to avoid

production delays for screen changes, and how to avoid excessive

leakage of the hot plastic material. Before the patented Kalean

devices were made, there was no screen changer or filtering

device for heat-softenable plastics. that moved slowly, a little

at a time, across « stream of plastic material.

Defendant argues that prior art references not before

reference relied on is U.S. Patent 3,112,525 (Moziek).

Defendant also relies on U.S. Patent 1,195,576 (Garrahan); U.s.—

Patent 2,507,311 (Lodge); U.S. Patent 3,007,199 (Curtis); v.85.

Garrahan and Curtis disclosed modified screen any, * baggie:

Garrahan is Geecribed as a rubber reclaiming enchine. ‘<

Giscloses ) tied screon filter aes where th

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+ > % Pain

the Patent Examiner invalidate the Kalman patent. The principal

Patent 2,920,347 (Joukainen); U.S. Patent 3,278,986 (Welt); Es

Patent 3,331,101 (Thomas); end U.S. Patent 3,354,504. ae WA

_——s Ps

Sse eS oS eS

a |

Clamping the filter between setel perts. However the

extruder must be shut down to present « new filter to the streas

of material, which is described as rubber, compovnds, or the

like. Joukainen Giscloses « seal for as rotary pusp of an

extruder Gevice. Joukainen has little or no relevance to

filtering.

Welt Giecloses « seal for « rotery pump of an extruder

Gevice. It is G@ifficult to see the relevance of Welt to

filtering. Thomas discloses Gouble-acting screw flights to

collect plastic material which leaks past the rotary shaft of an

extruéder. Joukainen, Welt and Thoses #11 require leakage of the

plastic material from the seal because the saterial has become

Gegraded ané must not reenter the streams of plastic saterial.

Lehner Giscloses @ stuffing box forming s seal st the high

pressure end of an extruder screw.

The Moziek petent is the one on which defendant

primarily relies. Mosiek discloses « process for filtering «

heat-softened substance. The patent discloses s heated extruder

barrel through which solten thermoplastic material flows. A

slidable cartridge assembly into which «a filter is placed is

positioned within « slot ecross the flow of the plastic and

against a fixed internal supporting breaker plate. At each open

end of the transverse channel Moziek discloses rotatable valve

assemblies. The valve assemblies are cylindrical with an

intermediate segment cutout. Provision is made to rotate these

valves 90°. When the valves are positioned in one position the

cylindrical portion of the valves serves to seal or block the

Sscuset opening Dut when they are rotated 90° the intermediate |

cutout segsent Se aligned with the channel opening eo 20 te, sa

permit ineertion of « new filter cartridge assembly through one

side and permit ® dirty or clogged filter serene sme 0e

x . of

Be one an tae eee? ; ee felt. Fes he gee

‘

Moziek discloses operating the filter with the filter

cartridge assembly fixed in the flow passage until the screen

becomes clogged and « filter change is necessary. At this point

Moziek indicates thet both valve cores must be open eo that a

channel or slot is completely open and a new fresh filter

cartridge is pushed through the slot with « retractable ras or

rod. This action pushes the fresh cartridge essembly until it

abuts the clogged essesbly within the filter body and soves the

new cartridge into the flow passage while forcing the clogged

assembly out of the outlet port. After this is completed,

Moziek discloses closing the valves until the next filter change —

is required. In the disclosure, the filter change occurs while

the extruder keeps operating so that there is no interruption in

the extrusion process. However, the inventor, John Moziek,

testified that the sachines built according to his

specifications by the Monsanto Corporation were stopped for

filter changes to avoid the excessive leakege which otherwise

occurred.

The Gescription of the valves which ere closed when the

Moziek device is in operation. includes a sethod of circulating

a cooling sedium in order to prevent leakage past the valves.

I find that the Moziek patent discloses « variation on

the screen changer sethod of filtering plastic. It does not

call for continuous sovement of the filter; rather, es in screen

changers, the change is done all at once--that is, en entire new

filter is pleced ecross the flow. Furthermore, Mosiek sakes no

provision for « band or ribbon or any length of filter. Rather,

ss is typical for screen changers, two filters are called

for~one being used, one being cleaned. Although Mosiek teaches

thet the valves can be cooled to prevent leakage, the theory of

Moziek, leakage ie primarily prevented by using closely

AL j *

or =

31 f 7 ; et

: jt an B i

» eae “@ a,

oP and

‘“

the cooling is different from that in the Kalman patent. ce “2, "1

ES ee Tee eee MS So ee eee ae

. ic ® a 7 , ¥ %

metal perts. The cooling helps prevent leskage past the

valves. Thies is vastly 4ifferent from relying on the plastic

iteelft, as in Kalean, to form plugs.

Defendant built @ model ecreen changer, Genonstrated at

trial (Exhibit €@73), which it cleims was constructed in

accordance with the teachings of the Mosiek patent. The sechine

was constructed in 1961 in the factory of the Berlyn

Corporation. Plaintiff objectes to the demonstration at trial;

the exhibit was received subject to sy determination es to

weight. I find, as indicated below, that the demonstration has

very little probative value. The sachine, constructed in 1961,

with adjustsents made in 1962, is not constructed under the

teachings of the Moziek patent. At best it is a hybrid sachina,

constructed by use of as much of the Moziek patent as possible,

but with tremendous overlays of knowledge ecquired subsequent to

Mosciek and, sore tellingly, subsequent to the Kalean disclosures.

The machine differs significantly from the teaching of

the Moziek patent. The Moziek sachine is to be run with the

valves closed; in the demonstration the valves were open. in

Moziek the filter is not a long filter extending through the

velves--indeed, how could it be if the valves are to remain

closed. In Mosiek, the filter does not sove continuously,

rather the ecreens are changed #11 at once. In Mosiek leakage

of plastic is to be sinisized, not used as self-sealing plugs as

in the Gesonstration. Defendant claims that it sade only sinor

modifications to Moziek to arrive at the demonstration machine.

I find that those sodifications were not sinor: they were

-'=-4#!==n¢ innovations taught by the Kalman patent. i

Although # patent is presumed valid under 35 U.S.C.

262, the preeuaption is not conclusive. St. Regis Paper Conve

Benis Co., $49 F.24 833 (7th Cir. 1977); cert. den., 434 mee

833. It shifts the burden of proof to the party nan 4,

validity of the patent. Republic Industries, Inc. v. Schiege

Leck Co., 592 7.24 963 (7th Cir. 1979). It is stated,

however, that the presumption does not exist in the face of

prior art not before the Patent Office. Republic Industries,

supra, Chicago Rawhide Mfg. Co. v. Crane Packing Co., 523 F.26

452 (7th Cir. 1975); cert. den., 423 U.S. 1091. In order to

weaken the presumption, the prior art references, cited to the

Gistrict court must be sore pertinent than those cited by the

Examiner. Uarco, Inc. v. Moore Business Forms, Inc., 440 F.2d

$80 (7th Cir. 1971); cert. den., 404 U.S. 873. Defendant argues

that the pstents cited sbove, especially Mosciek, Garrahan,

Curtis and Lodge, are more pertinent to the claised invention of

the Kalman patent than the prior art references cited but not

applied by the Patent Office. Defendant's argument with regard

to the prior art cited by the Examiner is that it is not

relevant to the Kalman invention because it does not desl with

filtering thermoplastic saterial. I must note that the sane

could be said of Garrahan ané Lodge, which on their face deal

with etraining rubber products.

The citations to privwr art in the Kalman patent include

statements regarding the prior art in Column 1 of the patent in

which is detailed the problems inherent in ecreen changers. The

patent explains in Columns 1 and 2 that the purpose of the

invention is to overcome the problems by use of a band or ribbon

of filter and to make use of the “temperature dependent

viecoelastic properties of the materials ... being filtered.”

Through the language in Column 1 regarding previous sethods of

filtering plastics, the Examiner was made aware of previous

patents on machines to filter plastics. Mogiek and Curtis are

simply variations on the many machines in which an attempt is

made to filter therreoplastic material while effecting screen .

changes without interfering with production.

4 te

Mosiek, as glossed by defendant, is of course such sore

pertinent than any of the prior ert citations. However, Moziek,

as written, without benefit of defendant's hindsight, recedes in

significance to its value as ancther example of @ slide screen

changer, whose presence on the scene is acknowledged at Column 1

of the Kalsan patent.

The essence of the Kalzan invention is the continuous

filter. It seems clear to me that the relevance of the prior

art cited by the Examiner was that the patents cited involved

continuous filters. To # degree greater than the prior art

cited by the defendant, Mickle, U.S. Patent 2,218,453;

Doubleday, U.S. Patent 2,675,129; Avery, U.S. Patent 3,138,015;

and Beduhn, U.S. Patent 3,310,172 are relevant to the essence of

the invention. They #11 involve seans of continuous sovement of

a ffiter so as to afford continuous filtration.

Even assuming, however, that Moziek and/or the other

citations relied on by defendant overcome the presumption of

validity, defendant has not shown that the Kalean inventior is

invalid under 35 U.S.C. § 102 or § 103.

The Moziek patent falls far short of anticipating the

Kalman patent under 35 U.S.C. § 102. To be in anticipation a

prior patent sust include all the teachings necessary to

accomplish what the allegedly invalid patent succeeds in doing.

T1linois Tool Works, Inc. v. Sweetheart Plastics, Inc., 436 F.26

ars (7th Cir. 1971). As explained above, Moziek, as wettiane a

ous apt ‘teeth ane Maden eecd, — =

that any of the other prior art citations are an anticipation of % a

wc Tolzan patent. A es ea 3

The Kalman patent is not invalid for obviousness under © |

35 U.S.C. f 399, ige2 een Sater ors te. he

e ere), SS aha

7 > >

Looking to the first criterion, I conclude that the :

prior art shows variations and incresental improvesents on the

slide screen changer for filtering thermoplastics ané includes

various forms of continuous filters for other sedia which are

somewhat easier to handle than thermoplastics. SHowever, none of

the prior art reveals a way to use a continuous filter with

plastics. Specific problems not provided for by the prior art

include, for instance, the problem of how to prevent leakage st

the inlet and outlet ports. The step forward teken by Kalzan

solves several problems at once: prevention of leakage;

continuous filtering: and saintenance of constant teuzperature

and pressure in the plastic upstreas.

The level of skill in the art is revealed in a nusber

of ways. In Malsbary Mfg. Co. v. Ald, Inc., 447 F.2d 809 (7th

Cir. 1971), the court stated that:

".e+ the usual way of deteraining such level is

by referring to the subjective reaction of «

person thoroughly fasiliar with the particular

art, ané if possible, one who practiced the art

at the crucial tise in question.”

Mr. George Pickering, plaintiff's expert, is such @ person, and

his testimony leads me to conclude that Kalaan's invention would

not have been obvious to a person of ordinary skill in the art

at the time of the invention. Those persons of ordinary skill

simply 4id not see a solution to the probleas inherent in

filtering plastics.

After an initial analysis regarding obviousness is

made, Graham, supra, at 17 and 18, indicates that secondary

‘tems may be considered: ’

“Buch seconiary considerations ss cossercial

y= canna longfelt but unsolved needs, failure of

others ««- ;

The autoscreen devices, built under the Kalman patent, have

enjoyed commercial success. Mr. Gerald Berlyn, in fact,

attempted to become a licensee for Autoscreens before he built

his own machines.

Finally, the United States Court of Appeals for this

circuit hee recently sade an observation which is particularly

relevant to the defense of obviousness in this case. In L. E.

Saver Machine Co. v. Cor ted Finishi + 210 U.8.P.Q.

Bl, 83 (7th Cir. 1981), it stated:

“The courts must take care not to conclude that

an invention is obvious because it has becouse

obvious by hindsight.*

Conclusion

Defendant's argument in this case is that the patent a

must be read to include « requiresent for sovement of the filter

by differential pressure. S60 read, defendant argues, the patent

is not infringed, but read without the requiresent the patent is

invalid for obviousness. The argument is undoubtedly ebuyer and

if the premise is accepted, defendant wins either way. However, ert

my examination of the evidence convinces se that the argument

rests on faulty premises and, like #11 such arguments, sust fail.

The Kalman patent does not require movement of the

filter by 4ifferential pressure, rather differential pressure is

used in the preferred embodiment of the invention. Thus, the |

Berlyn devices infringe the patent. It does not follow that the “y

mecers fe invalid. The patent takes great steps beyond the oy

prior art, including Moziek, and by itself, sets forth solutions ;

to several of the problems inherent in filtering heat-softened

> --

plestic. gen ck

In sccoréance with this decision, counsel for the

parties ere directed to confer and, if possible, agree on what

#3 further proceedings will be necessary to bring this case to its

conclusion in this court. Both counsel are to subsit a report

within 30 days outlining their view of further proceedings. 60

ORDERED.

Dated at Milwaukee, Wisconsin, this /7

Gay of August, 1982.

UNITED STATES DISTRICT JUDGE

6 RE: C1VED FILED £

Nov 5 ii «3 Mg) NOW'S 1981

UNITED STATES BLMERPCS COURT ‘neeeg -

EASTERN DISTRICT OF WISCONSIN

PETER GABOR KALMAN,

Plaintiff,

Vv. Civil Action

No. 78-C-721

KIMBERLY-CLARK CORPORATION,

Defendant.

DECISION and ORDER

Plaintiff Peter Gabor Kalman, owner of U.S. Patent

3,471,017, has moved for’ summary judgment establishing (1) that

the Berlyn continuous filter machines owned by defendant Kimberly-

Clark Corp. and used in their Neenah, Wisconsin plants infringe

Claims 18, 20, 23, and 25 of his patent; (2) that the process

used by the same machines infringes Claims 1, 3, and 15 of his

patent; and (3) that the patent is valid.

U.S. Patent 3,471,017 teaches a filtering process and

apparatus for filtering molten plastic to remove contaminants

while the plastic is being forced toward a dye or mold. It in-

cludes both apparatus and method claims and was issued October 7,

1969, to Mr. Kalman, the inventor. In the device a length of

filter is continuously moved across an enclosure through which

the melted plastic is flowing. The movement insures that a fresh 2 ;

filter is placed in the path of the flow and that the clogged

filter is removed. At the entrance and exit of the filter's

pathway are control temperature heat exchangers which solidify —

the plastic at that point and form-seals to prevent leakage a

melted plastic. Diagrams in plaintiff's brief filed en? 19," :

1981 are useful in envisioning the process. _ 5 ae

ur. Kalase is 9 cittsen of che Matted

opments Ltd. of London to manufacture and sell the filter devices

throughout the world, including the United States. The devices

are sold in the United States under the trademark “Autoscreen.”

Plaintiff has also licensed Mobil O11 Corp. to make and use

devices as described in the patent.

Kimberly-Clark is a Delaware corporation with a place

of business in Neenah, Wisconsin, in the Eastern District of Wis-

consin. It manufactures products from heat softenable plastics /

by using a device called the Berlyn continuous filter, Model Nos.

CF3539 and CF4549, manufactured by the Berlyn Corp. of Worcester,

Massachusetts. Kimberly-Clark used these devices prior to the

filing of this lawsuit. It has continued to use them during the

pendency of the lawsuit, with the defense being financed and

conducted by Berlyn.

Other undisputed facts as presented by the plaintiff

and accepted for purposes of the motion by the defendant are the

following. A publication of the Berlyn Corp. (Ex. MSJ-4) is an

illustrated advertising brochure which explains the operation of

the accused devices. The brochure refers to’ plaintpff's patent

and commercial devices embodying the plaintiff's patent. Although

plaintiff has not been permitted access to Kimberly-Clark plants

to view the accused devices in operation, photographs have been .

taken by the defendant and have been sepresented as truly depic-

ting the accused devices and the filter trays and filter medium

used in the devices (Ex. MSJ-7).

Defendants also agree that the file history of the |

patent (Ex. MSJ-11) shows that the patent application was allowed —

as filed with all claims and with minor Examiner's amendment of

the claims. The language “band or ribbon” was never discussed or

in controversy during the prosecution of the patent application. —

The U.S. Patent Office cited five U.S. patents in the appl at

but applied none of thea to the claius.

Defendant has stipulated (Ex. MSJ-2) that method Claims

1, 3, and 5 of the patent as well as Apperatus Claims 18, 20, 23,

and 25 read on the accused device and method but for the descrip-

tion of the filter as being “in the form of a band or ribbon.”

It is also undisputed that prior to Kalman's invention

filtering was done by screenholders or screenchangers. In one

type the screen was placed in a holder that crossed the flow of

the plastic and which required that the plastic flow be stopped

and the apparatus cooled before the screen element could be

changed. Another type included two screenholders and a slider.

One screen would cross the flow of the plastic. When that screen

became clogged, the other screen would be forced across the

channel into the flow. This device operated much like the famil-

iar old slide projector. According to plaintiff, disadvantages

are apparent in both devices. The first required shutting down

the production line, and the second was difficult to operate,

required careful surveillance, and had to be manually changed "

when the filter became clogged. Both devices leaked excessively

because of the back pressure of the plastic.

Both the Kalman device and the Berlyn continuous filter

operate without stopping the extruder or producing great varia-

tions in the pressure of the plastic in the extruder. The patented

device involves a long screen which is drawn across the path of

the plastic. The Berlyn filters have a string of three trays in

the screenchanger st all times, moving in very small timed incre-

ments across the flow of plastic. The trays are divided into

small compartments separated by narrow dividers. There is a

filter screen element in each compartment that is carried across ~~

the flow of plastic. The trays are coupled together anc move as.

a unit without coming apart through the filter enclosure, At thie

entrance and exit of the slots artugh Silah sie eorents win deaes

air-cooled heat exchangers that are adjusted to provide cool

plugs to prevent leakage of the molten plastic. SBoth plugs are

continuously renewed as the filters move through the enclosure.

In resisting the motion for summary judgment, defendant

emphasizes that in patent cases, in which it is necessary for the

court to consider expert testimony to translate and interpret

material and technical facts, summary judgment should be ap-

proached with trepidation. Citing Advanced Hydraulics, Inc. v.

| Otis Elevator Co., 525 F.2d 477 (7th Cir. 1975).

Even approaching the motion with trepidation in that

case, however, the court of appeals affirmed the district court's

granting of the motion. In Research Corp. v. Nasco Industriés,

Inc., 501 F.2d 358 (7th Cir. 1974), the court indicated that on

the issues before me, infringement and validity, summary judgment

should be entertained in a proper case:

“There is nothing in Rule 56 to forbid the use

of summary judgment procedures to determine

whether a genuine issue of fact exists, con--

cerning the factual foundation for determina-

tion of the ultimate issue of law: obviousness.

Although care must be exercised to assure that

controverted fact issues are not ignored, see

Tee-Pak, Inc. v. St. Regis Paper Co.,; 491 F.2d

1193 (6 Cir. 1974), *. . . @ suit concerning

the validity of a patent over the prior art is

not immune from disposition on motion for sus-

mary judgment even though, in addition to prior

art patents, deposition testimony of the appli-

cant and affidavits are involved, if no genuine

issue of material fact is present.’ A BR Inc.

v. Electro-Voice, Inc., 311 F.2d 508, 511 (7

Cir. 1962). ‘Further, it is well settled that,

in a proper case, the validity of a patent may

be determined by use of ig § sedqniet -.

Technograph Printed Circuits, Ltd. v. Methode

Electronics, Inc., 356 F.2d 442, 446 (7 Cir.

1966), cert. denied 384 U.S. 950, 86 S.Ct.

1570, 16 L.Ed.2d 547 (1966)."

Summary judgment is appropriate, the court goes’ on to state, in

instances “where the structure and mode of operation of the ac-

cused device may be readily comprehended by the court and compared

with the patent without need of technical explanation by expert

witnesses." At 362, Py.

WEE

ala Sa 5

;

One of the difficulties presented by summary judgment

motions in patent cases is determining whether the moving party,

whose burden it is, has established that no matcrie] facts are in

dispute. If the subject matter is technical, it is difficult for

a court, without the benefit of hearing expert testimony, to make

that initial determination. Because of that difficulty, plaintiff

has requested oral argument on this motion. That request is

being denied, however, ae my study of the moving papers convinces

me that though the determination is difficult, the result would

not be different after oral argument than it is here.

A patent is presumed valid (35 U.S.C. § 282) and the

burden of establishing invalidity by clear and convincing evi-

dence is om the defendant. 35 U.S.C. § 282; Helms Products v.

Lakeshore Mfg. Co., 227 F.2d 677 (7th Cir. 1955); Reese v. Elk-

hart Welding and Boiler Works, Inc., 447 F.2d 517 (7th Cir.

1971). A patent may be invalid because it is anticipated in a

prior art reference or because it is obvious. 35 U.S.C. 102 and

103. Before a determination of obviousness can be made, a court

must determine the scope and content of the prior art, the differ-

ence between the prior art and the cle‘ms at issue, and the level

of ordinary skill of a person in the pertinent art. Graham v.

John Deere Co., 383 U.S. 1 (1966).

For summary judgment to be appropriate as to the patent's

validity, then, no factual dispute must exist as to these rather

amorphous issues. Determining the proper result on summary judg-

ment becomes more difficult, in my view, when the movant seeks a

finding of validity rather than invalidity. For invalidity, it

wight be easy to judge that the patent at issue and one or two

citetions to prior art ere so similar that no dispute as to 5

mecerial facts could exist. A finding of tovelidity in sucha

case would be appropriate. When the sovant ome ete

validity, however, 0 setae meee ee ai

Oe.)

Sn ee ee

genuine issue is presented, and that determination requires an

understanding of the context of the invention -- the state of the

art.

Here, defendant argues that a certain patent, in this

case the Moziek patent (U.S. Patent No. 3,112,525), describes «a

device in which very little plastic is lost as the filter is

moved. On the other hand, plaintiff states that the invention it

teaches could not operate as disclosed due to the excessive

leakage of hot, high pressure plastic. To determine whether that

difference of opinion presents a genuine issue of material fact,

to say nothing of what the significance of those facts is, requires

expert testimony. I find that it would be improper to grant

summary judgment in this case on the issue of the patent's valid-

ity.

The issue of infringement also presents the preliminary

problem of determining whether facts are in dispute.

Plaintiff argues that any differences between the

Berlyn continuous filter devices and the autoscreen device made

under plaintiff's patent are insignificant and do not prevent a

finding of infringement. Defendant, on the other hand, argues

that there are two ways in which the Berlyn device differs from

the autoscreen, and that on the basis of these differences there

is no infringement. One of the differences perceived by the

defendant is that the continuous filter “in the form of a band or

ribbon” is not present in the Berlyn filter. Rather the iatter

uses discrete separable filcerplates pushed end to end through

the filter device. They have been described as linked as railroad

cars. The second difference defendant perceives is in the method |

of moving the filter acrose the plastic fiow. ; Ks

On the issue of the “band or ribbon,” pleintiff has > f

presented lengthy affidavits of two experts. One, John S. O'Brien

r : , J 4 at

7 7: al —- 7 ~~ Fe Cite oe , = iil a in 2s ry 2 ™ ro” =. 2" Bee - in =

ed — . 7 —_—"" a ed De’ he 3 “= ae — -+-. ~.. era” fe ? pie. noes al a ‘ “ ie att a cll °

; re

an attorney specializing in patent lew, after much discussion of

the devices in question, concludes:

“Defendant's filter formed of inter-connected

portions 1A, 18 and 1c. . . satisfies the fore-

going requirements of the patent for « filter

and or ribbon and, therefore, constitutes «

"filter band or ribbon,’ in ay opinion.”

The other expert, George E. Pickering, an engineering consultant

in plastics and plastics machinery, concludes, again after lengthy

analysis:

“I have said above that I consider that both

devices have a band of filter material so that

the language which has been alleged to signify

a difference namely a ‘band or ribbon’ as op-

posed to a side by side eee’ of filters

to me does not define « difference that has any

strength at all." MSJ-16, p. 25.

In addiction, plaintiff has presented testimony of

Richard M. Peterson (MSJ-5), Edward H. Ruscher (MSJ-8), and Carl

Sherman (MSJ-15), employees of the defendant, all of whow conceded

that the accused screen structure was the same as a band or «

train connected end to end moving through the apparatus.

Defendant presents no affidavits or other documents

which controvert this testimony. Rule 56(e) of the Federal Rules

of Civil Procedure provides:

“When a motion for summary judgment is made and

supported as provided in this rule, an adverse

party may not rest upon the mere allegations or

denials of his pleading, but his response, by

affidavits or as otherwise provided in this rule,

must set forth specific facts showing that there

is a genuine issue for trial. If h@® does not so

respond, summary a ig gh if appropriate. shall

be entered against hia.”

On the basis of defendant's failure to controvert the

evidence presented by the plaintiff, I conclude that no facts are

in dispute on the issue of the band or ribbon. On the basis of

the facts which sre in the record, I conclude that nothing in the

prosecution of the patent requires « limitation on the meaning of

these words. I also conclude that the filters used in the Berlyn

devices are equivalents of those described in the patent. See

Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339

U.S. 605 (1950).

At least as to Claim 1, however, defendant perceives «

second difference between the devices:

“Briefly, it is defendant's position that the

limitation in Kalman patent claims 1 which re-

cites ‘effecting movement of eaid filter through

said ports under conditions providing for self-

maintenance of said sealing plugs’ must be in-

terpreted as being the type of govement for the

filterscreen which relies on a differential

pressure acting on the plugs formed in the

filter inlet and outlet ports to impart move-

ment to the filterscreen element. The accused

devices do not utilize this feature to effect

movement of the filterscreen element. Instead,

the accused devices rely on an external hydraulic

ram pushing on the combined filter-filterscreen

support to inctementally advance the filter

through the device. Since the meaning of the

words in « claim must be determined with refer-

ence to the specification as a whole. . . and

the monopoly granted the inventor can never be

broader than the disclosed invention, .. . it

follows that a clear factual issue is present re-

garding the disclosure of the Kalman patent at

ssue.

Therefore, the argument goes, there is no infringement.

Plaintiff argues thet this theory is new to the lawsuit

and therefore presented in an untimely manner. In any case,

plaintiff argues, the scope of a patent claim is a question of

lav.

I am somewhat bewildered by defendant's argument.

Through the stipulation previously referred to (MSJ-2), defendant

has agreed that the Berlyn devices have « structure, which liter-

ally reads on the modified forw of the patent claims but for the

words “band or ribbon.” Defendant has stipulated that ite devices

literally read on the words “effecting movement of said filter

through said port under conditions providing for self-maintenance

of said sealing plugs to introduce another part of said filter

- + « into said passage.” It would seem chet the time for reising

an issue as to these words was when the stipulation was entered

into. In any case, however, defendant has presented no expert

evaluation of the phrase. Furthermore, plaintiff points out that

in Column 6, lines 53 through 58 of the patent, reference is made

to the fact that “the forwarding movement may be caused or in-

creased by pulling at the emerging end of the ribbon.”

Defendant's response to all of this is that “despite

the fact that the literal words of the stipulated amended patent

claims ‘literally reads on’ the accused machines, that the patent

claims when read in conjunction w'th the disclosure of the patent

and as limited by the prior art must be given an interpretation

which precludes a finding of infringement.”

To support this argument, defendant presents the affida-

vit of Leonard Santisi. The affidavit itself presents problems.

Santisi is principal trial counsel in this case, not an expert

witness. In addition, hie affidavit is conclusory. He briefly

discusses the effect of the prior art, specifically the Moziek

patent, but does not detail what information in the “disclosure

of the patent” requires the result defendant seeks.

As to the Moziek patent, defendant seems to be saying

that if the claim is not read as limited, then the patent is

invalid. I might add, if it is not read as limited then defendant

has in effect admitted that it has infringed the patent. Because

I have declined to rule here on the validity of the patent, the

issue will almost inevitably be presented et trial. Therefore,

nothing is gained by « ruling here on the scope of the claim as

to the movement of the filter through the plastic. Therefore,

plaintiff's motion for summary judgment will be denied in part

and granted in part. The finding on which plaintiff has poovesiet

is that the linked filters in the Berlyn continuous filter Bhi

are equivalents of the “band or ribbon” described in the peceee.

IT IS THEREFORE ORDERED that plaintiff's motion for

summary judgment is denied in part and granted in part.

IT IS FURTHER ORDERED that local counsel appear for «

brief conference with the court to discuss further proceedings in

this case on December 10, 1981, at 8:30 a.m. P-

Dated at Milwaukee, Wisconsin, this > day

} of November, 1981.

BY THE COURT:

Cea es

TERENCE T. EVANS

UNITED STATES DISTRICT JUDGE

Rnited States Court of Appeals for the Federal Circuit

PETER GABOR KALMAN, No. 83-540

Appellee, Dist. Ct. No. 78-C-721

KIMBERLY-CLARK CORPORATION,

Appellant.

Judgment

ON APPEAL from the U.S. Dist. Court for the Eastern Dist. of Wisconsin

This CAUSE having been heard and considered, it is

ORDERED and ADJUDGED: AFFIRMED.

DATED __ July 19, 1983 ___ ENTERED BY ORDER OF THE COURT

Petition for rehearing and :

suggestion for rehearing G E. Hutchinson, Clerk

i en banc; rehearing Denied,

> suggestion for rehearing

. en banc Declined,

September 20, 1983.

ISSUED AS A MANDATE: September 29, 1983

COSTS: Appellant

_- Printing Costs----- -$129.22 $e ei

_ Total---------- ~--=-$129.22 ee ee

United States Court of Appeals for the Federal Circuit

PETER GABOR KALMAN, )

Appellee,

v. ) Wo. 83-540

KIMBERLY-CLARK CORP.,

Appellant.

)

ORDER

A petition for rehearing and a suggestion or rehearing

_ @n banc having been filed in this case,

UPON CONSIDERATION THEREOF, it is Ordered by the court that

the petition for rehearing be, and the same is hereby, Denied.

The suggestion for rehearing en banc is declined.

FOR THE LOURT

September 20, 1983

Date

cc:1 Irving Silverman

Leonard J Santisi

KIMBERLY-CLARK CORPORATION

consideration

This action came un for%*SEAKANBT before the Court, Honorable TERENCE T. beans

. United States District Judge, Peeeding ARTE

EKAFSK and a decision having been duly rendered,

It is Ordered and Adjudged (1) Claims 1,3,15,18,20,23 =F 25 of plaintiff's

United States Letters Patent No. 3, 471, 017 oe = val

(2) Defendant, by its use of the accused Mode Nos. “cr3s39 and CF4549 — q

Berlyn Continuous Filters, has infringed cleias 1,3,15,18,20,23 and 3

3.080 ° Sesres. States Letters Patent No. 3,471,017.

*s decision and order of t 17, 1982, is

pede Fone herein as the Findings of t and Conclusions of

pursuant to Rule 52,

(4) Pursuant to Rule 54(b), FRCP, the court finds that there is no

just reason for delay for the entry of this judgmenc. :

Approved as to form:

ite tates strict

3,471,017

Ng iB

eke

oN)”

P. G. KALMAN

Oct. 7, 1969

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APPARATUS FOR EXTRUDING THERMOPLASTIC MATERIAL

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Dec. 3, 1963 J. MOZIEK

APPARATUS FOR EXTRUDING THERMOPLASTIC MATERIAL .

Filed Sept. 20, 196) 5S Sheets-Sheet 3

JOHN MOZIEK

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MOZIEK

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To all whom it

UNITED STATES PATENT OFFICE.

FREDERIC B. GARRAHAN, OF PATERSON, NEW JERSEY.

RUBBER-RECLAIMING MACHIVE

Specification of Letters Pateat. 8 Patented Aug. 22, 1916.

Aprlication Sled January 25,1996. Serial We. 74,338

1,195,576.

may ’

Be it known that I, Faupenic B. Ganna-

HAN, @ citizen of the United States, residing

at Paterson, in the county of Passaic and

State of New Jersey, have invented certain

new and useful Improvements in Rubber-

Reclaiming Machines, of which the follow-

ing is a specification.

1is invention relates to means for strain-

ing scrap ru and the like materials to

remove therefrom foreign bodies, such as

netal, wood, stone or other hard pieces or

particles that have been incor ted there-

in in the previous uses to which the material

may have been put.

One of the objects of the invention is to

provide 9 straining head which mar be at-

tached to any euitable apparatus, such es a

rubber insu ‘ting machine, having meanis to

force the material into and through the

straining head and sthich shall nave a

strainer or strainers slidable therein in its

or their own planes, together with means

to move said strainer or strainers frora time

to time so as to shift one part of the

straining area out of the straining posi-

tion and another inte straining position

to enable cleaning of the former «hile

the straining operation proceeds uninter-

rupted, the said means in the preferred

furm of the invention being carried by the

straining head so thet live strains and

stresses incident to the operation of said

means shall be aseumed wholly by the heed.

Another object is to provide & vorapsct,

practical and effective means to shift the

tote thor ates te pretliaiiak ai

r of ‘

re of the strainer or strainers

attsch- Bor i “rs |

head; Fig. 5 is an inside elevation of one

of the penne * ai thereof being shown

bruken away; Fig. 6 shows fre

the members of a strainer in longitudinal

section; Fig. 7 is a front elevation of said

attachment; Fig. 8 is a horizontal sectional

ry mpg view of the part of the strainer-

shifting means which includes a certain

-bos ; Fig. 9 is a vertical sectional tiew

reof; and. Fig. 10 is a detail illustrating.

rtly in section and partly in elevation. «

isconnective connection in sid means

@ is the tubing or in-nlating machine. aud

b its snitebly rotated stuck screw projecting

therefrom.

¢ is a suitable hend provided. with a pas-

sage d which, when the head is bolted

erly in place to the frame of the muchine ¢.

forms a continuation of the passage ¢ of the

machine in which its said stock-screw ro-

tates, and receives the outer end of said

sciew, the head being chambered fer the

circulation of « heuting Suid for D

the rubber or the like material as sit as &

tet during the straining operation. as

—_— at /.

the

poet eg

age v and Iaterally (at both

;

vant ¢

= such

iis

;

yee the correspond Rs, gp Pc pt te tur Se

: i ws ln i

“ .

‘et wpm

r J is

eee

those of the plate m p te «@ wire-

strainer sheet, ha perforations of .

sembled the back of plate o is substautially

flush with that of plate m. Plate o and sheet

46 pore formed in two sections, heing divided

zontally at the middle, as shown in Fi

5 and 6, ake ols cee pretend weocited

ie d presets os theriot fr m inie

, an e latter from injury by,

26 the larger particles of metal and other solids

in the rubber, and the latter of which holds

back the finer particles and shreds of fabric,

ete

The thickness of plate m is a trifle greater

30 then the depth of groove A (Fig. 4) co

that as wear occurs on the bronze

plates 2 the tightening of the wcrews & will

reestablish that intimate sealing contact be-

tween the strainer and the outer and inner

88 faces of the guideway which is necessary to

rent escape of the com and more

Aly to oat ealin pierce yi | which in

fact extends continuously around each out-

let (9’, 9’) of srid passage as to ench face

Ppp hit hok, al

and

head, gear bo

80 rigid § og ee re few 3

is ial foe

Meshing wi

— <= ore

ped

;

frirtstlty

ERS wisct

z edd

peplidesesd

2 BTR

ar Sl ST

Fe ut “Fe

2c egrets :

dita

vil eh

;

the material forward in the regular

ay. Thus a great waste of time (character-

izing the uperation of machines of this class

onl ha: nd only when the

ps As re is avoi in ihe use

the remorability of the plate o and sheet p.

Fav aware - it is not new to shift a

en sgent in « rubber straining appa-

ratus so cheats the draining ares from time

to time to perwit cleaning of the strainer 96

when clogz:d at one place while the strain-

in meetup fac s with ‘espect to an-

ber, as already intimated. But the eppa-

ratus herctofore proposed has not been pro-

vided with secrs to shift the straining 100

to be slop

accomplisied by hand. It is @ matter, more-

WT ccoctie bade es side yeaa

opre ares lec

upward shifting oration im

gg Pos A fs

- movement no injury can apt wy. «Porn

lect tu check it because the shifti

i don red clears

oceur

threaded

the nut.

Having thus fully described my

what I cleisa as mew and desire to secure by

it ae a

arain apperatus

combination, « straining besd hav

therethrough, means to furce the mute-

risl to be strained through said “

strainer slidable in its own plane in the

across tlie passe, and means, carried by

suid head, to shift the strainer in mid plane

a : Medora Fame ag

of its stra area lo sa

+ indoding, in

viel to be strat asid passage, «

mge, and iwneans, ing seid strainers w-

Ror and corcied oy eotd beod, for shifting

strainers in sy b

rough said ce, a

strainer slidable in its own plave in the

across the passe, a framing carried by the

head, and a rysicm of moving parts csrried

by the frawing for shifting the sirsiner.

4. A string apporetus inclediag, in

combination, a4 rsining head havin: a pes-

oes theretbrou_ i, mens to force the mete-

rial to be trained through sid 48

strainer 2'i.cble in its own plane in the he. J

acrocs the pastuss, a freming carried by the

becd, and « screw-end-rut counection Le

ene mid strain. ¢ end psp s

Fini appacretua nvropris'ns

ctathination, 6 teed aacenues rp te cs

straining bead beving @ pimacs there

through, mecns to force the miscrial to be

strained throuch ssid paesese, « strainer

slidable in its own plane in the head scross

slidable in its own plane in i

seid pases. sze, means, including a moving sys

tem of parts having « discunnective eunnec-

Gon bernean tuo of thea, for sitinn the O6

strainer in esid plane, and means, con-

-tensadh Cte tang Ieaperone 2 ahve aris

id connection.

me In combination, with a straining heel

having a passe therrt) is and means 66

to force the inatrrin: throu: said pamage, s

strainer guided in the head for mouvement

in its own plane across said pewage aad in-

anime, two separable wag ge, pr |

normnsily held fa.e to face by the and Te

i agsinet relative movement in

their ive pi-nes abd one beirg di-

vidal into twe sciions transversely of the

pe movement of the eirainer in the

the strainer being movable in each di- 75

recticn to cler are of said sections or the

other frum the bead.

_ 8. In comt ination, with a straining head

having « pemsce th-c.hrucwh and an cate

rir procve comutnicating with and extand- ge

ing crosswise of « cis) par. ta and with means

to force the metrial three said

a piite-lihe sirainer sirur uve slidable in

said prrevve and havin: a tiici naw geeuter

then ihe doth of the prowr., om oj-ctured 96

meess overlapping cod fon... t wich snid

ave & Guitlewns for the 6 rail-er, aad ad-

u she trons to Crew Che ope 7, il ee

erd the bit, &!4 creiver be vines & con-

tinuons ¢-sit:+ coni.ct around mid passice ee

on one side with tus id and on the other

with the aperivr:d murs

In tettiznuny whe~X 1.x my Bi

FE.DEI.IC B. GARRAHAN.

on f.

EXCERPTS OF CROSS-EXAMINATION TESTIMONY

OF KALMAN'S EXPERT GEORGE C. PICKERING

Appearing at pages 141-44 of Trial Transcript:

Q Have you read the Moziek patent?

A Yes, I have.

Q Are you familiar with what the Moziek patent

discloses?

A I think I am, yes, sir.

Q I think you testified with respect to Exhibit 66,

did you not?

A Yes,

Q The type of screen changer that you characterized

this being?

A I said it is a slide, it's a modified slide screen

changer from a process standpoint. It does the same task that

a slide screen changer does.

Q And your reasons were?

A It's a two-piece screen device, one of which is

exchanged for the other in front of the filtering medium.

Q When he wants to change his filter --

Right.

-- opens that valve so that's open, right?

Right.

It's not shown here, ‘cuz it's --

7» oO FF? O >

Not shown.

Q -- because of the drafting céchadaen’ But he would

turn this valve and would be open all the way across, wouldn't

it?

A It would.

Q Would you look at Moziek in that frame of reference

for me, please, and have that in your mind? This valve open,

that valve open, a new screen pack assembly coming in and

pushing the other one out?

A Right. That's what happened.

Q In that frame of reference --

A Right.

Q -- I'd like to ask you some questions on that. Does

Moziek disclose a process for filtering a heat sottened

substance flowing through a passage?

A Yes.

Q Passage being here, right?

A Right.

Q At least to that respect, Moziek is just as

pertinent as the file wrapper references that we were

discussing before, isn't that true?

A He's as pertinent.

Q At least as to the disclosure of being applicable to

a heat softened substance it is more pertinent, is it not?

A It's as pertinent.

Q It's not more pertinent than Avery, Beduhn -- let me

get them -- Moreton, Mickle, Doubleday, Avery and Beduhn, at if

least to the purpose of ee a heat softened substance

» aes

bs a «ie L eee Sant 2 -_

, oe

cee

ec oS Satie,

7 ee f

that one principle?

filtering

patent.

you.

2.8

operative

To the questions or to the, to the --

To the pertinency of being related to a device for

a heat softened substance?

Well, that's differenc than being pertinent to the

I realize that. But that's not the question I asked

Related to that substance, that subject, yes.

Moziek's more pertinent?

It's more pertinent to that subject.

Sure it is. You have pictured Moziek in the

mode I've given you, haven't you?

Yes, sir.

Does Moziek use the step of introducing a filter by

passing it through inlet and outlet ports flanking the passage

through which the material is being filtered?

when it isn't open.

We are discussing it when it's open. im

Yes, and I'm reminding you that it is not always

i) y abe is 84

Well, he takes it through the valve opening.

So, your answers are yes? ;

If you equate a valve opening to a port.

You don't want to call that a port?

Well, it's a port when it's open and it's not a port

oe | +: 5

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Q Fine. And I would like you to answer the question : ¥

in that operative mode. Is it a port? at

A When it's in that mode, it is a, it can be a port,

yes, I'll agree.

Q Does Moziek show having a part of his filter extend

across the passage through which the material being filtered

is flowing?

A He shows having his holes filled, sir.

Q We are looking -- and you're forgetting -- I'm

giving you this parameter. Both ports opening, the new one

coming in, let's say it's just pushing one quarter of the way

into the passage and the old one pushing out. Doesn't he say

he affects a screen change that way?

A Yes, he does.

Q At that time does Moziek show a part of the filter

extending across the passage?

A By passage, you mean the passage for the melt?

The passage for the melt.

Yes, it does, at that time.

To filter the substance, right?

It is, still undergoing filtering, yes.

EXCERPTS OF CROSS-EXAMINATION TESTIMONY

OF KALMAN'S EXPERT GEORGE C. PICKERING

Appearing at pages 148-49 of Trial Transcript:

Q What would be the reason it would help stop the

excess leak?

A Because it could be cooling it down coming through

the small surfaces, the small crevices between the valve stem

and the valve

Q And

what happens?

MR.

would you let

sentence?

THE

body.

when you cool a thermoplastic material down,

[Question read back below]

SILVERMAN [Counsel for Kalman]: Mr. Santisi,

the witness finish when he is in the middle of a

WITNESS: I'm sorry.

COURT: Have your finished?

WITNESS: I'm sorry. It may not have looked it.

MR. SANTISI [Counsel for K-C]:

Q I thought so. Do you want that question repeated?

No,

,r, oO »Y

I--

I can have the question --

I'm sorry. We got lost in the question.

MR. SANTISI: Could I have the reporter read

that question?

[Question noted above read back by eee a ]

A I thought I answered that.

MR. SANTISI:

: A Again, if that port was filled up with leaking ts”

material from around the filter plate with the valve closed tox 9

and it started to leak some more and you put water on it, you ‘ead

would, if it's leaking out through some small crevice between

the two parts of the valve and you cool the valve, it will

stop that excess leak from that excess material in that

chamber. x

Q And my question was why will it stop excess leakage?

Because the material will freeze up in it.

Porm a plug?

If you want to call it a plug.

on Fr ODO YF

A solidified mass of material. How's that if you

don't want to call it a plug?

A All right.

Lae es

o EXCERPTS OF CROSS-EXAMINATION TESTIMONY

OF _KALMAN'S EXPERT GEORGE C. PICKERING

Appearing at pages 176-77 of Trial Transcript:

Q Suppose I put one of those types of valves at 50A,

and I flowed a cooling medium through the port that Mr. Moziek

‘ says I may provide. Would you feel that that would

sufficiently cool the area of the slot immediately adjacent to

that valve, to a sufficient degree to solidify the

thermoplastic material, so as to form a plug?

A It is conceivable that if you put enough cold in

here you can work it back to form a plug way back in here. Or

a total plug of any size in here. Your hypothetical to me was

there was no leakage. No leakage. You see no leakage.

Implying it could be as far back as here. My answer first

was, it could be anywhere in here. Up to filling it, all the

way back to here. And the last point of freeze off would be

at the top. In here.

Q Your answer was that a plug could be formed there.

: A A plug could be formed here or anywhere in here.

Depending upon how much temperature you pour in here, how much

: heat you've got in here.

* Q Right. te Re ‘ :

: A It is way up in here. | me

; Q He doesn't tell you in his Patent, temperatures, i

does he? : a

He doesn't go into this, no. ae

But if that plug was formed cies aA ar :

a eee

A Which plug? There are several potential plugs. The

cold plugs --

Q °° Any one of them. If any one of the plugs you

mentioned were formed, would that plug act to prevent

substantial leakage of the thermoplastic material out the

inlet and outlet ports?

A Some plugs could some might not. This being way in

if we have a substantial leakage, it would come out into the

port as Moziek testified. And if this was cold, then, it

would start to freeze in here as a plug.

Q But the possibility exists when we analyze the

Moziek that that might happen, doesn't it?

A That it could form a frozen plug in here with cold

water here, yes.

EXCERPTS OF CROSS-EXAMINATION TESTIMONY

OF KALMAN'S EXPERT JOHN S. O'BRIEN

Appearing at pages 341-48 of Trial Transcript:

Q You're right. Thanks. Now, my question to you is

with that disclosure of the patent, is it your testimony that

Mr. Moziek is telling me when my valves are closed, if I want

to cool, but during my screen change operation when I'm

opening the valves, first shut off my cooling medium, then

open the valves; is that your testimony that this disclosure

A After the word “but” in your sentence there's no

disclosure of any kind pertaining to what you stated.

Q So, if he teaches me to use a cooling medium, am I

going contrary to the teachings of Mr. Moziek if I refuse to

shut off my cooling medium when I rotate my valve?

A No.

Q Okay. So, I'm going to operate it in that mode and

run my cooling medium while I open my valves?

A All right.

Q If you look at that apparatus, operating in that

condition, don't forget I'm still a sloppy machinist, and the

stuff doesn't leak out, do you have an opinion as to why?

A In other words, you have first experimented with

your various cooling media?

Q Yes, sir.

i A You finally found one?

s )

Q It might be liquid nitrogen, but I finally found

one.

A At which point nothing comes out?

Q Yeah.

A I think you're justified in concluding that you had

transferred enough heat away from the oncoming hot plastic

melt to reduce its viscosity at least and partially or fully

solidify it at a point where it would block the passage 34,

slot 34.

Q Would you call that a plug?

A A plug, yes, I'd call that a plug, if that's what it

was.

Q Mr. Pickering refused to acknowledge plug; he called

it a slug.

A I'm not responsible for Mr. Pickering's testimony.

Q But you acknowledge if that hypothetical condition

was, that would probably call whatever was in there stopping

the leakage a plug?

A Yes, I would say so.

* * 7

Q I'm setting it up. Okay?

A You got the Geeteiities in there.

Q Right.

A And how is that positioned?

Q Just ready. Okay? Now I'm going to do what Mr.

Moziek says, advance it. Okay?

mM Yes. 2 . : ! x

eee See oe ee ee

Q Abut and push. Okay?

A You're going to do the whole operation.

Q Yeah.

A You want me to read it on that while it's undergoing

that operation.

Q Let me ask you a question. You can sit there.

A All stones

Q In that mode, would you say that that device is a

filtering device, filtering a heat softened substance?

A Would you turn it just a wee bit?

Q All right. Can you see it now?

A Now what?

Q With those parameters, do we have a filtering device

for filtering a heat softened substance?

A Yes, we do.

Q Does it include a body defining a passage through

which that substance can be caused to flow?

A Yes, it does.

Q Does it have in that condition slotted inlet and

outlet ports flanking said passage?

A Yes, it does.

Q Can you pass a filter through those slotted inlet ae

passages?

A Well, you can do all sorts of things. But hwat is tad

being done -- t

Q Can you, in those parameters, pass a filter through rae ;

5 Maen Zi

in slotted inlet and outlet ports?

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A Filter of proper dimensions.

Q Filter of proper dimensions.

A Which is at least as long as the complete width of

that structure. The answer is yes.

Q If I did that;. and I kept pushing, wouté I introduce

different parts of that filter across this passage?

A Yes, you would.

Q Are the ports -- don't forget we have evolved -- I

finally got a material that doesn't leak out -- do the ports,

are they adapted, that's the inlet and outlet, are they

adapted for formation therein, in use, and that is the use I'm

talking about, of sealing plugs?

A That's the use you're talking about. But I'm the

one who's reading the Claim.

Q Sir, but I'm asking you the question.

oe” 2. ie

A Now, you're telling me --

MR. SANTISI:

Q Sir, I am going to ask the question, and I would

like a precise answer to the precise question I ask you.

A If I can, yes, sir.

Q And I might change the words of the claim, so listen

carefully. 3 .

A Now, if I cannot answer it, I'll say so.

. Q Absolutely. And, then, I will try to pose it so you

| feel competent to answer it.

A Now, I am reading the claim, correct?

Q All right. I have found, after trial and error in ey

my cooling medium -- , Bask:

A Yes. I understand. You're now at Element 2B on my. :

Chart 60B. a4 a

Q Would you say that that hypothetical device had

ports adapted for the formation therein, in use, -- this is

the use we're talking about, the movement use, the movement of :

the screen across, of sealing plugs of the substance being

filtered?

A That's all.

Q That's it.

A Yeah.

EXCERPTS OF CROSS-EXAMINATION TESTIMONY

OF KALMAN'S EXPERT JOHN S. O'BRIEN

Appearing at pages 355-56 of Trial Transcript:

Q Thank you. How long does a band have to be?

A No particular length. Long, use the definition you

read for the record. |

Q My gold watch band, that's a band?

A Right.

Q Suppose I tell you I had a screen assembly as shown

in Moziek's Figure 5. See that?

A Yeah.

Q And suppose I -- it's three pieces, the tray, the

screen, and the screen holder, do you see those three?

A I see that.

Q Assembled together. Suppose I told you that the

width of my assemblage, the three parts, was two and a half

inches and 22 inches long. Would you call that a band?

A It may be called a band.

Q Six inches long?

A Might be called a band.

Q How about -4 inches by 3 inches?

A Start that one again?

Q -400 inches by 3 inches, or 1 inch by 3 inches, is

that a band?

A Yes.

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EXCERPTS OF CROSS-EXAMINATION TESTIMONY

OF KALMAN'S EXPERT JOHN S. O'BRIEN

Appearing at page 358 of Trial Transcript:

Kalman.

>, oO FF

Well, let me pick out another patent. You picked

How about Garrahan 5? EA:

Yes. I'm familiar with Garrahan.

Does he show a long plate extending out?

He shows having a band, if you will.

He shows having a band, if I will. Yes, I will have’

that as a band. Do you have Garrahan 5?

EXCERPTS OF DIRECT TESTIMONY

OF K-C'S EXPERT DEAN DON A. FISCHER

Appearing at pages 518-26 of Trial Transcript:

Q I would like to put up a chart of the claims of the

Kalman patent with the Moziek device. And ask you, Dean

Fischer, if you can provide your opinion as to whether the

invention claimed in Claim 1, taken in conjunction with the

prior art, particularly the Moziek patent, can be read element

for element on the prior art devices that you have rapidly

explained?

A The Claim 1 calls for a process for filtering a

heat-softened substance flowing through a passage comprising

the steps of. That, of course, is what Moziek is about. Then

it states introducing a filter in the form of a filter band or

ribbon by passing it through inlet and outlet ports flanking

said passage so that a part of the filter extends across said

passage. Well, I believe that the, that through the cartridge

in Moziek with the screen in the, is in the form of a band or

a ribbon. And then you do pass it through inlet and outlet

ports when you're changing screens.

both of these patents are about changing screens.

And, so, you, when you put it in and move it across through to

the outlet port, it goes through the inlet port and when it

moves it goes out the outlet port. Even with the size shown.

And, as a matter. of fact, with even with the size shown igh

the, in the other view of the Moziek patent, this 32, this |

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aa ard

side of the screen is over on this pink abutment. So, it does

extend across the breaker plate.

But at any rate, you do pass this filter through the

inlet and outlet ports. There's no requirement in the claim

that it has to extend into the inlet and into the outlet port

at the same time. And, as a matter of fact, if you said that,

you wouldn't have to use the word “part” in here.

The claim says so that a part of the filter extends

across said passage. Then the claim goes on to state, forcing

the substance through the filter part to filter said substance

whilst providing temperature conditions at said inlet and

outlet ports resulting in the formation within said ports of

sealing plugs of said substance of adequate rigidity to

prevent substantial leakage at said ports.

Well, there's cooling, as we've all seen, there's

cooling in the valves of the Moziek patent. And whether the

valves are opened or closed, you do form, you do form hardened

material which forms a seal around the exit port and around

the inlet port. Now --

Q Does Moziek teach cooling both valves?

A Both valves, yes. It's plainly stated in the patent

that you cool -- it would be 50A and 50B, they use different

numbers because they're referring to the first figures, but foe

there's not the slightest doubt that both valves are cooled, ae

inlet and outlet valves. [It says, to prevent substantial

leakage at said ports.

. er

Well, this is sort of a functional limitation, and

the only way you could tell if you had that was to make a

model and try it out. Well, I saw the model work. And, in my

opinion, there was not substantial leakage. So, this is a

very indefinite term. What is substantial leakage? But, in

my opinion, there wasn't substantial leakage. a.

Then the claim goes on to state, when desired

effecting movement of said filter through said ports under ;

conditions providing for self-maintenance of said sealing

plugs to introduce another part of said filter band or ribbon

into said passage. Well, Moziek does this, and, to me, the

demonstration confirmed my opinion, because he did

self-maintain the sealing plugs to prevent any leakage and we

introduce another part of said filter band or ribbon into said

passage.

Now, when you put two of these together, just

pushing each other. Of course, that's part of the band like a

watchband, if you have three, you have a longer band. And if

you should decide to link them together, you still have a

band.

Q Do you --

A So, in my opinion, Moziek shows the things called

for in Claim 1, if there's one condition. However, I believe

that this phrase says, when desired effecting movement of said :

filter through said ports, I believe that refers to the 4g 4

t : vie

difference of pressure in Kalman which moves the filter back

and forth. 4 fe ae

Q And Moziek does not show it?

A And Moziek does not show that. So, if this claim

were interpreted as I would interpret in the means that you

need the difference of pressure to do the moving -- and that's

based on my reading of Claim 7, also -- you need a difference

in pressure to do the moving. And Moziek does not use a

difference of pressure to do the moving. But if you make this

claim broad enough that this covers a ram or anything else,

then Moziek would fulfill the requirements of the claim.

Q Do you feel among all the prior art that we have

briefly discussed here today that there is a fair teaching to

ultimately end up with a system that we saw demonstrated

today, that is, the linked plates passing through the Moziek

ports?

A Yes, I do. I don't believe -- I believe it would be -

obvious to almost anyone, let alone a man skilled in the art,

that if the plates were separating you could link them

together.

Q And that would be prior to 19, February 21, 1967, - 4

based on the prior art available to you?

A Yes.

C Because that is the critical date for the Kalman

patent?

A Yes.

7 er.

«a

Q Would you now give us your opinion as to your .

interpretation of the applicability of the Moziek patent,

Exhibit 35 against Claim 18?

a Yes. Claim 18 calls for a filtering device for

filtering a heat-softened substance. And that, of course, is .

what Moziek is. Then the claim states, a body defining a

passage through which said substance can be caused to flow.

Well, that would be the body, screw 14 is in the body, and the

substance flows through that body and down through and out the

bottom of Moziek. So, Moziek has that.

Slotted inlet and outlet ports flanking said

passage. Well, there's a port on the left and there's a port

on the right. And they're labeled, I would guess 56A and 56B.

Would point to a part of the ports. The ports are plainly

shown. There's one on the right and one on the left. So,

they flank the passage. And the passage that they're talking

about is through here, from top to bottom, the wav the plastic

flows. And they flank the passage.

Through which a filter in the form of a band or

ribbon is passed and can be moved to introduce different parts

of said filter across said passage. So, there is a filter, of

course, and it's in the cartridge 32 and it's in the passage,

as the claim calls for. and this is if this claim is

interpreted to be so broad that it's not limited to the

difference in force causing the movement. _ :

Then the claim goes on to ataye said a poets being

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the substance being filter permitting movement of said filter

through the slots without substantial leakage of said

substance. It uses the word "adapted," the ports being

adapted. Well, Moziek's ports are adapted to do that.

Whether he -- whether it's explicitly stated or not, we saw in

the demonstration today that the ports could work to form

sealing plugs even though they were left open. And there's

nothing -- if you have a Moziek device and you, and you left

the valves open, then it, it would infringe this claim;

whereas maybe if you close the valves it wouldn't infringe the

claim and that, of course, would be a difficult thing. You'd

have a difficult time deciding whether it infringed or not.

So, the ports in Moziek, in my opinion, are adapted

for formation therein in use of sealing plugs of the substance

being filtered permitting movement of said filter through the

slots without substantial leakage of said substance. And what

I said about substantial leakage, is, I'd state it here again,

I don't think there was what I would call substantial leakage.

And the term is really indefinite. And that's the way the

Moziek patent worked. I means, I saw the device demonstrated

and I have previously checked the device to see if it conforms

to that, the Moziek patent.

> Q I think you forgot the last element.

What?

The means --

I'm coming to the last column.

ae A And means to provide temperature conditions at said q

.. ports to form said plugs. And the temperature condition in

pS Moziek is formed by coolant going through those tubes shown in r

Z Figure 4, the tubes 63B and 63A is the tube for the coolant.

: So, that's the last element in the claim, and it's met by

a Moziek.

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.