Petition for Writ of Certiorari — McGill Inc. v. John Zink Co.

Supreme Court brief1984

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CASE NO... OCT 2 W904

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in The =

Supreme Court of the United States

October Term, 1984

ry.

McGILL INCORPORATED,

Petitioner,

Vv.

JOHN ZINK COMPANY,

Respondent.

fa’

ON WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

fy.

PETITION FOR WRIT OF CERTIORARI

ra’

JERRY J. DUNLAP*

Gary PETERSON

Dun.ap & CoppING

420 One Benham Place

9400 North Broadway

Oklahoma City, Oklahoma 73114

(405) 478-5344

Attorneys for Petitioner

*Counsel of Record

COCKLE LAW BRIEF PRINTING CO., (800) 835-7427 Ext. 333

QUESTIONS PRESENTED

What protection, if any, do the patent statutes pro-

vide against a competitor who duplicates almost every

element of a patented invention, but who avoids the

literal terminology of the patent claim?

Should the Court reexamine the status of the doctrine

of equivalents—the judicially-created rule permitting

a finding of patent infringement notwithstanding the

absence of literal invasion of the patent claim—last

addressed in Graver Tank Manufacturing Co. v. Linde

Air Products Co., 339 U.S. 605 (1950) ?

May a federal litigant be effectively denied the right

to a jury trial through an appellate court’s determina-

tion of disputed fact issues as if they were questions

of law?

THE PARTIES

The parties’ names are stated in the caption.

ili

TABLE OF CONTENTS

Pages

QUESTIONS PRESENTED cn cccccccscssccscsmegenee ok

THE PARTIES .......... a i ileatedisceldieapettibinteneabes il

TABLE OF CONTENTS ............ 2 Sie a . iii

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Nee mnmevisnmananenmnn ena 1

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CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED ............. ee a

Donne Oe 2a OARS 3

1. The Parties and Their Lawsuit .000000000000000... 3

2. The Evidence of Patent ‘-hdeedtnaa By

BEQuivale nts .n.cccccccccsssceeicnne | Sh i 5

3. The Jury’s Verdict for the Petitioner 000... 7

4. The Court of Appeals’ Panel Reversal 7

5. The Rehearing Jn Banc and Its Resolution .... 8

REASONS FOR GRANTING THE WRIT WWW. 8

a 13

APPENDIX

Opinion of the Court of Appeals for the Federal

Cireuit, entered April 27, 1984 nn cccccseeneene App. 1

Order of the aiatrict Court on Post-Trial Motions,

ceustutisnnaammmmatann App. 22

Judgment of the Court of Appeals, entered April 27,

EE App. 35

Order of the Court of Appeals modifying opinion and

denying petition for rehearing, entered June 4,

a adaeceenttiencerreesevnsmitntrteenonenanntnnmne App. 36

Order of the Court of Asoun declining second sug-

gestion for rehearing im banc, entered September 6,

EE EE App. 40

TABLE OF CONTENTS—Continued

Pages

Order of the Court of Appeals modifying order of

June 4, 1984, entered June 5, 1984 2000000000... App. 38

Order of the Court of Appeals accepting suggestion

for rehearing im banc, entered June 15, 1984 ....... App. 38

Order of the Court of Appeals declining suggestion

for rehearing i banc, entered July 16, 1984... App. 39

TABLE OF AUTHORITIES

Cases:

Exhibit Supply Co. v. Ace Patents Corp., 315 U.S.

Be ED . istiisteissotin ntcecidancielesslaemiaceatnsiiaenlbaniacedtaeniiapiniisiece: 6

Graver Tank & Manufacturing Co. v. Linde Air

Products Co., 339 U.S. 605 (1950) 20.6, 9, 10, 12

Royal Typewriter Co. v. Remington Rand, Inc.,

168 F.2d 691 (2nd Cir. 1948) , 9

Standard Industries, Ine. v. Tigrett Industries,

i Ce My Se SE cccitntecinnietndiinhincinaennaes 10

Winans v. Denmead, 15 How. 330 (1854) 0... 9

CONSTITUTIONAL PROVISIONS AND STATUTES:

United States Constitution

= siadeesipemealiaieniescieeipennidininladiialitil 2,12

United States Code

| ——__:_ESRREPERBSrreerverrennne testevocer” Neer on oO 2

28 U.S.C. §$1338(a). .............. siactipebealiaepaniaiessieidaeitadiesaksiaiadaain 3

a es eI hii cseeieicctthckractalestinalteiptaiatcicacaahiai eine aren 3, 8

Ti SD sacteteeinedicintiniscieennintiniiineniiiaanl 3,8

TABLE OF AUTHORITIES— Continued

Pages

Orner AUTHORITIES:

APLA Bulletin, January-February 1971 200000. 10

The Third Branch, October 1983 000 12

CASE NO. "

rT, =

In The

Supreme Court of the United States

October Term, 1984

‘o_o

“

McGILL INCORPORATED,

Petitioner,

JOHN ZINK COMPANY,

Respondent.

— =

“

ON WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

PETITION FOR WRIT OF CERTIORARI

if.

_/~_

The Petitioner, McGill Incorporated, requests that a

writ of certiorari issue to review the judgment of the

United States Court of Appeals for the Federal Circuit

entered in this case on April 27, 1984.

—_*

OPINIONS BELOW

The opinivi of the United States Court of Appeals

for the Federal Circuit (App. 1-22)' is reported at 736

‘Citations to the Appendix to this Petition are prefaced by

“App.”, followed by the page number. Citations to the Joint

Appendix filed in the Court of Appeals are prefaced by “JA”,

followed by the page number. Citations to the trial transcript

are prefaced by “Tr.”, followed by the page number.

—_—

F.2d 666 (Fed. Cir. 1984). The order entered in the case

by the United States District Court for the Northern Dis-

trict of Oklahoma (App. 23-34) is unreported.

. 4

JURISDICTION

The Petitioner is seeking a writ of certiorari to the

United States Court of Appeals for the Federal Circuit

in order to review a judgment entered on April 27, i984

(App. 34-35).

A petition for rehearing was denied by the Court of

Appeals panel on June 4, 1984 (App. 36-37). A sugges-

tion for rehearing «nm banc was accepted by the Court of

Appeals on June 15, 1984 ( App. 38-39) ; however, the Court

of Appeals subsequently declined rehearing i banc on

July 16, 1984 (App. 39). A second suggestion for rehear-

ing in banc was declined September 6, 1984 (Anp. 40).

The Chief Justice entered an order extending the time

within which to petition for certiorari to November 1, 1984

(No. A-135).

Jurisdiction is invoked under 28 U.S.C. §1254(1).

+>.

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

United States Constitution, amendment VII provides

in pertinent portion:

.. no fact tried by a jury, shall be otherwise reex-

amined in any Court of the United States, than ac-

cording to the rules of the common law.

35 U.S.C. § 112 provides, in pertinent portion:

The specification shall conclude with one or more

claims particularly pointing out and distinctly claim-

ing the subject matter which the applicant regards

as his invention.

An element in a claim for a combination may be

expressed as a means or step for performing a spec-

ified function without the recital of structure, mate-

rial, or acts in support thereof, and such claim shall

be construed to cover the corresponding struc‘ure,

material, or acts described in the specification and

equivalents thereof.

35 U.S.C. § 271(a) provides:

Except as otherwise provided in this title, whoever

without authority makes, uses or sells any patented

invention, within the United States during the term

of the patent therefor, infringes the patent.

~o-

STATEMENT OF THE CASE

The Petitioner (“McGill”) filed this action for pat-

ent infringement against the Respondent (“Zink”) in the

United States District Court for the Northern District of

Oklahoma. Federal jurisdiction was based on 28 U.S.C.

§ 1338(a).

1. The Parties and Their Lawsuit.

McGill is an Oklahoma company which was founded

in 1973 by a Tulsa man, James McGill (JA 37a, 40a-4la).

In 1976, Mr. MeGill and his firm’s first employee, William

Scott, invented a new kind of process for use in controll-

ing the air pollvtion associated with large volumes of

gasoline, such as che gasoline held in storage tanks and

tank trucks (JA 4la-42a, 78a-S80a). Two years later, the

Patent and Trademark Office issued a patent on their in-

vention (JA 557a).

McGill began offering equipment which practiced the

patented process to oil companies beginning in late 1976

(JA 92a). Initially, the MeGill process met with consid-

erable skepticism, because potential customers did not

think that the process would work (Tr. 1369-70). Even-

tually, however, the efficiency and economy of the McGill

process earned it widespread acceptance: as of late 1982,

the McGill equipment had earned over 52 million dollars

in sales revenue (J.A 84a-87a).

Zink is a subsidiary of Pittsburg-based Allegheny

International, Ine.; one of its numerous lines of business

is the manufacture and sale of air po’lution control equip-

ment (JA 187a-188a). In 1978, after learning of the suc-

cess of MceGill’s vapor recovery equ’sment, Zink instructed

its engineers to investigate the MeGill system and to )uild

a competitive system (JA 12la, 134a, 138a-140a). Zink

engineers subsequently visited a gasoline storage facility

where a McGill system had been installed, and made photo-

copies of the plans of the McGill system (JA 121a-125a).

When Zink began marketing a competitive vapor recov-

ery system in 1979, the Zink process turned out to be

identical to that used in McGill’s commercial equipment

(JA 188a, 189a, 417a). Many of the smallest design de-

tails of the Zink system, such as orientation of pipes,

placement of components, and locations of connections,

were identical to those in the McGill system (JA 189a-

207a).

McGill filed this patent infringement lawsuit in early

1980. Zink denied that it infringed the patent, and con-

tended that the patent was invalid. The case was tried

to a jury for 24% weeks during November and December

of 1982.

2. The Evidence of Patent Infringement by Equivalents.

The claim of the McGill patent in suit set out a 10-

step process for recovering hydrocarbon vapors. Zink’s

expert witness did not dispute that Zink used 9 of the 10

patented steps (Tr. 1295-98). The one remaining step of

the patent claim provided for absorption to be carried

out with a “recovered liquid hydrocarbon absorbent.” In

the corresponding Zink process step, gasoline was used

as the absorbent. Zink contended that its gasoline ab-

sorbent was not “recovered liquid hydrocarbon absorb-

ent”, and therefore denied that it had infringed the patent

claim.

McGill based its contention of infringenent on two

theories. First, McGill claimed that Zink’s gasoline ab-

sorbent was the same thing as “recovered liquid hydro-

carbon absorbent”, and that Zink “literally” infringed the

patent claim. This contention was rejected by the Court

of Appeals, and is not being challenged here.

Second, McGill contended that, even if the patent was

not literally infringed, Zink’s gasoline absorbent was equiv-

alent to the claimed “recovered liquid hydreearbon ab-

sorbent”, and that Zink therefore infringed the claim under

the doctrine of equivalents announced in this Court’s de-

cision in Graver Tank € Manufacturing Co. v. Linde Air

Products Co., 339 U.S. 605 (1950).

To support its contention of infringement under the

doctrine of equivalents, MeGill offered the following evi-

dence:

1. Operating tests showed that the process worked

with either gasoline (used in the Zink system) or

recovered liquid hydrocarbon (which the Court of

Appeals eventually determined the patent liter-

ally covered) (JA 6la, 66a, 475a-487a; Tr. 1168).

2. The McGill patent expressly states that either

gasoline (JA 56la, column 4, lines 23-24) or re-

covered liquid hydrocarbon (JA 56la, column 3,

lines 55-59) can be used as the absorbent in the

process. The disclosure of both types of absor-

bents in the patent was admitted by Zink’s own

expert witness (JA 425a).

3. Recovered liquid hydrocarbon and gasoline have

a close chemical relationship: recovered liquid

hydrocarbon is just gasoline without its higher

molecular weight ingredients (Tr. 875).

The case was submitted to the jury on both theories:

literal infringement and infringement under the doctrine

of equivalents (Tr. 1941-42).

Zink’s principal defense against MeGill’s contention

of infringement under the doctrine of equivalents was the

so-called doctrine of “file wrapper estoppel” announced in

Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126

(1942). However, the file wrapper estoppel defense was

not submitted to the jury in this case, and the Court of

Appeals did not rely on it (App. 14-15).

3. The Jury’s Verdict for the Petitioner.

In response to the District Court’s special interroga-

tories, the jury found that Zink had infringed the patent

and rejected Zink’s challenges to the patent’s validity. The

jury further found that Zink’s infringement had been will-

ful, and awarded McGill $8,000,000.00 in damages (JA 12a-

16a).

The District Court denied Zink’s motion for judgment

n.o.v. on the issue of patent infringement, and entered

judgment on the jury’s verdict (App. 24-25; JA 29a).

4. The Court of Appeals’ Panel Reversal.

A three-judge panel of the U.S. Court of Appeals for

the Federal Circuit reversed the District Court’s judgment

on the ground that there was insufficient evidence to sup-

port the jury’s finding of patent infringement (App. 19-

20).

In an opinion filed in April of 1984, the panel decided

that Zink did not literally infringe the McGill patent claim.

Although the doctrine of equivalents had been submitted

to the jury and had been briefed and argued on appeal,

the panel's opinion did not address the issue of equival-

ency. Without reaching the issue of infringement under

the doctrine of equivalents, the panc| reversed the damage

award to McGill.

After a petition for rehearing was filed by McGill, the

panel amended its opinion to add a one-paragraph finding

that there was also insufficient evidence of infringement

under the doctrine of equivalents (App. 37). The panel

distinguished Zink’s process from the process claimed in

the patent on the ground that the processes used “differ-

ent ways” to perform the same function. The panel’s opin-

ion did not diseuss the evidence of equivaleney offered by

MeGill.

5 The Rehearing In Banc and Its Resolution.

About two weeks after the panel issued its modified

opinion, the Court of Appeals for the Federal Cireuit or-

dered rehearing of the case in banc (App. 38-39). One

month later, without explanation, the Court of Appeals re-

versed its earlier order and declined rehearing in banc

(App. 39).

REASONS FOR GRANTING THE WRIT

This case presents a recurring question of consider-

able importance to the owners of the over 1.1 million United

States patents now in force, and to the actual and poten-

tial competitors of these patent owners. The question re-

lates to the legal standard controlling how close a competi-

tor ean get to a patent without infringing it.

Patent infringement is defined by 35 U.S.C. § 271(a)

as an unauthorized making, using or selling of a “patented

invention” within the United States. The “invention” of

a patent is defined by the patent’s claims, which are re-

quired by 35 U.S.C. § 112 to particularly point out and dis-

tinctly claim “the subject matter which the applicant re-

gards as his invention.” While these statutes may sug-

gest that a patent cannot be infringed beyond the literal

limits of its claims, this has not, in fact, ever been the law.

The problem with limiting the scope of a patent to

the words of its claims is that words are often all too easy

to design around. A copie: can avoid the literal terms of

a patent claims simply by substituting an equivalent fea-

ture which has a different name than the corresponding

claimed feature. If a competitor could appropriate the

advantages of a patented invention in this way, without

liability for infringement, a patent would be virtually

worthless.

In order to do justice to the patent owner in this situ-

ation, the courts have developed the rule that substitution

of an equivalent for a feature defined by a patent claim

will not avoid infringement. This “doctrine of equiva-

lents” was first approved by this Court in Winans v. Den-

mead, 15 How. 330 (1854). Its purpose is “to temper un-

sparing logic and prevent an infringer from stealing the

benefit of the invention.” Royal Typewriter Co. v. Rem-

ington Rand, Inc., 168 F.2d 691, 692 (2nd Cir. 1948) (L.

Hand, J.).

The doctrine of equivalents was last applied by this

Court in Graver Tank & Manufacturing Co. v. Linde Air

Products, 339 U.S. 605 (1950). There, the Court defined

an equivalent as something which performs “substantially

the same function in substantially the same way to obtain

the same result.” 339 U.S. at 608. The Graver decision

characterized equivalence as a factual question, depend-

ing on consideration of the purpose for which an ingredient

is used, its qualities, its function, and whether others would

have known of the interchangeability of the claimed in-

gredient for another. 339 U.S. at 609.

During the past 34 years, the doctrine of equivalents

has been applied hundreds of times by lower federal trial

and appellate courts. Since the doctrine defines the outer

limits of patent infringement, its economic consequences

have been substantial: any decision on whether or not to

compete in a patent-oriented market must inevitably take

the doctrine into account. Yet the doctrine’s evolution and

development since 1950 has occurred almost entirely in the

lower federal courts: with one exception, this Court has

not returned to the doctrine of equivalents since the Graver

decision.

The one exception is Standard Industries, Inc. v. Ti-

grett Industries, Inc., 397 U.S. 586 (1970). There, the

United States, as amicus curiae, criticized the Graver de-

cision as an undue expansion of the rights of patent own-

ers, and urged the Court either to abolish or fundamen.

tally reformulate the doctrine of equivalents.’ These argu-

ments were left undecided, however, when the case was

affirmed by an equally divided Court.

This case offers the Court an opportunity to return

to the issue left open after Standard Industries: whether

the doctrine of equivalents continues to have validity. This

case is a particularly appropriate one in which to address

this issue, because the decision below has so limited the

concept of equivalency as to deprive it of most, if not all,

of its effectiveness.

There was no dispute in this case that the Respondent

used 9 of the 10 steps of the Petitioner’s patented process.

As to the remaining step, the Petitioner offered substan-

tial evidence that the Respondent’s gasoline absorbent was

equivalent to the “recovered liquid hydrocarbon absorbent”

claimed in the patent. The most compelling evidence of

equivalency was a statement in the text of the patent itself

2APLA Bulletin, January-February 1970, at 28-29.

saying that a gasoline absorbent could be used in the pat-

ented process. The Respondent not only used this gaso-

line absorbent in its own process, but also used it in the

same concentration range (‘‘L/V ratio’’) recommended in

the patent. Yet, even though the jury had been instructed

on the doctrine of equivalents, and even though the doc-

trine had been argued on appeal, the Court of Appeals’

first action in this case was to overturn the jury’s verdict

because there was no infringement of the literal words of

the patent claim: the Court did not even reach the equiva-

loney issue.

After a petition for rehearing was filed, the Court of

Appeals added a paragraph to its opinion holding that

there was insufficient evidence of infringement by equi-

valents because the Respondent’s process operated in a

“different way” than the patented process (App. 37).

Unlike the Graver court, the Court of Appeals in this

ease did not analyze the evidence of equivalency offered

by the Petitioner; nor did the Court of Appeals explain

why reasonable jurors could not rely on this evidence to

find infringement. Instead, the Court of Appeals simply

offered its own factual conclusion that the two absorbents

were ‘‘different.”

By refusing to uphold a factual finding of infringe-

uient when it believed the accused process was ‘‘differ-

ent” than the claim, the Court of Appeals has left the doc-

trine of equivalents little, if any, room in which to oper-

ate. Any departure by a competitor from the words of a

claim can be characterized as making an ingredient ‘‘dif-

ferent’? from the claim. If the doctrine of equivalents

can be avoided by the mere characterization of two things

as ‘“‘different’’, and thus not ‘‘substantially the same”,

there will seldom, if ever, be any occasion when the doc-

trine can be invoked.

The Court of Appeals’ reading of the doctrine of

equivalents in this ease is particularly troubling in view

of the Seventh Amendiment’s jury trial guarantee. As

noted in the Graver decision, equivalency is a factual

question. 339 U.S. at 609. A jury’s finding of infringe-

ment under the doctrine is therefore protected from ap-

pellate reexamination other “than according to the rules

of the common law.’’ The Federal Cireuit panel effec-

tively treated the equivalency issue as a question of law,

on which it was free to make its own determination that

the two processes were ‘‘different.” In so doing, the

panel chose to disregard the evidence which supported

the jury’s infringement finding—a procedure not in ac-

cordance with ‘*the rules of the common law.”’

The decision below apparently generated some con-

troversy within the Federal Cireuit: the Court granted

rehearing im banc even before a response to the im banc

suggestion could be filed. Yet the Court of Appeals later

decided, by an undisclosed vote, not to rehear the case.

Given the Federal Circuit’s internal rule requiring its

panels to follow previous decisions of other panels’, it

appears that a majority of the Federal Circuit judges is

now willing to accept the highly restrictive approach to

the doctrine of equivalents taken by the panel in this case.

In view of the Federal Circuit’s exclusive, nationwide

jurisdiction over patent infringement cases, the decision

in this case suggests an unpromising future for the doc-

trine of equivalents.

3The Third Branch, October 1983, at 8 (interview with Chief

Judge Markey).

As applied by the Court of Appeals in this case, the

doctrine of equivalents has become little more than a

semantic exercise for appellate judges—a matter of

whether judges will call things ‘‘substantially the same’’

or “different”. This Court should grant certiorari and

determine whether the doctrine of equivalents, as it has

been heretofore applied by judges and juries, continues

to have validity.

tS.

“

CONCLUSION

A writ of certiorari should be granted.

Respectfully submitted,

Jerry J. Dun ap*

Gary Prrerson

Dun.ap & CoppDING

420 One Benham Place

9400 North Broadway

Oklahoma City, Oklahoma 73114

(405) 478-5344

Attorneys for Petitioner

*Counsel of Record

App. 1

APPENDIX

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

Appeal No. 83-1198

McGILL INCORPORATED,

Appellee,

JOHN ZINK COMPANY,

Appellant.

Appeal No. 83-1217

McGILL INCORPORATED,

Cross-Appellant,

JOHN ZINK COMPANY,

Cross-Appellee.

DECIDED: April 27, 1984

Before KASHIWA, Circuit Judge, COWEN, Senior Cir-

cuit Judge, and BENNETT, Circuit Judge.

KASHIWA, Circuit Judge.

This is a consolidated appeal from a judgment of the

United States District Court for the Northern District

of Oklahoma (No. 80-C-17-E), entered December 7, 1982,

and from a post-trial order entered June 22, 1983. The

judgment was in favor of appellee, owner of U.S. Patent

No. 4,066,423 (the “ ‘423 patent”), and the district court

awarded damages of $8,000,000. We affirm in part and

reverse in part.

App. 2

The Invention

The patented invention relates to a process for re-

covering hydrocarbon vapors from an air-hydrocar bon

mixture. It is a pollution-prevention process for recov-

ering hydrocarbon vapors that have been vented from a

storage tank. Appellee’s invention is best described by

its claim at issue:

2. A process for recovering hydrocarbon from

an air-hydrocarbon mixture, comprising:

passing the air-hydrocarbon mixture through a

solid adsorbent bed at slightly above atmospheric

pressure, which bed is capable of selectively adsorb-

ing the hydrocarbon components from the mixture

to leave substantially hydrocarbon free air;

venting the substantially hydrocarbon free air

to the atmosphere ;

subjecting the hydrocarbon laden solid adsorb-

ent bed to a near vacuum with a liquid ring vacuum

pump to desorb the hydrocarbon components there-

from and produce a rich air-hydrocarbon vapor mix-

ture containing a liquid from the liquid ring vacuum

pump and a recovered liquid hydrocarbon ;

separating the liquid from the liquid ring vacuum

pump and the recovered liquid hydrocarbon from the

rich air-hydrocarbon vapor mixture;

absorbing substantially all of the hydrocarbon

components from the rich air-hydrocarbon vapor mix-

ture with recovered liquid hydrocarbon absorbent in

an absorber operating with a sufficiently high L/V

ratio to produce a constant composition absorber ov-

erhead gas and a recovered liquid hydrocarbon mixed

with said absorbent;

recycling the absorber overhead gas from the ab-

sorption step to a second solid adsorbent bed, capable

App. 3

of selectively absorbing the hydrocarbon therein to

leave a substantially free hydrocarbon recycle air;

venting the substantially free hydrocarbon re-

eyele air to the atmosphere ;

separating the liquid ring vacuum pump liquid

from the recovered liquid hydrocarbon produced in

the separation step;

cooling the liquid ring vacuum pump liquid; and

recycling said liquid ring vacuum pump liquid

for use in the liquid ring vacuum pump.

[Emphasis added. }

App. 4

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In operation, as best illustrated by Figure 1 of the

patent, a source of light hydrocarbon contaminated air,

such as that expelled from a gasoline storage tank, enters

the lower portion of adsorbent vessel 12 via line 10. With

valves 20 and 38 closed, hydrocarbon contaminated air

is introduced at a pressure slightly above atmosphere.

As the hydrocarbon contaminated air flows through the

vessel, the adsorbent material packed in that vessel ad-

sorbs substantially all of the hydrocarbon. Clean air is

then expelled from the top of the vessel through line 22,

check valve 24, line 26, and flame arrester 28. Prior to

reaching the saturation point of the adsorbent material

packed in adsorbent vessel 12, valves 18 and 40 are closed

and valve 20 is opened to route the hydrocarbon contam-

inated air from line 10 through line 14 to adsorbent ves-

sel 16 for use dvring the regeneration of the adsorbent

material in vessel 12.

To regenerate the adsorbent material of vessel 12,

valve 38 is first opened and a vacuum produced by pump

48 in vessel 12 desorbs the hydrocarbon from the adsorb-

ent material to produce a rich air-hydrocarbon mixture

comprised of approximately 85 to 90% hydrocarbon by

volume. Pump 48 is a liquid ring vacuum pump that is

capable of producing a near vacuum in either adsorbent

vessel during regeneration. As this rich air-hydrocarbon

mixture comes in direct contact with the pumping liquid

used by pump 48, cooling of the air-hydrocarbon mixture

occurs and a portion of the heavier hydrocarbon compon-

ents in pump 48 condenses. Effluent from pump 48 is then

admitted to separator 52 via line 50. Separator 52 is a

vessel operated sligatly above atmospheric pressure and

designed to separate the vapor and liquid components of

App. 6

the pump effluent and to further separate the immiscible

liquid used by the liquid ring pump from any recovered

liquid hydrocarbon! condensed by the inherent cooling

action of the pump.

The liquid components of the pump effiuent are sep-

arated by a weir 54 located at the bettom portion of sepa-

rator 52 over which the lighter hydroearbon liquid may

flow. The heavier pumping liquid, typically water, trapped

by the weir, is withdrawn from bottom of the separator

52 by line 56 connected between the bottom of the separa-

tor and cooler 58. Cooled pump liquid from cooler 58 is

reeyeled for use in pump 48 through line 60 connected be-

tween cooler 58 and pump 48. The specification of the

patent states that the “[r]ecovered liquid hydrocarbon

overflowing the weir 54 is withdrawn from separator 52

through line 62 connected between the lower portion of

separator 52 and line 74 for use as a liquid adsorbent

[sie].” The vapor phase of the pump effluent is withdrawn

from separator 52 through line 64 connected between the

upper portion of the separator and the bottom portion of

absorber 70.

Absorber 70 is a conventional absorber operating near

ambient temperature and slightly above atmospheric pres-

sure. In absorber 70, the vapor from separator 52 comes

in direct countercurrent contact with recovered liquid hy-

drocarbon introduced at the upper portion of the absorber

via line 72 and the hydrocarbon components in the vapor

'Since the terms ‘‘recovered liquid hydrocarbon” and “‘re-

covered hydrocarbon liquid’’ are used interchangeably in the

patent and the parties do not dispute the fact that both terms

define the same product, only the terms “recovered liquid hy-

drocarbon” is used in this opinion.

App. 7

are substantially absorbed. Recovered liquid hydrocarbon

is withdrawn from the bottom of the absorber and passed

to pump 76 via line 74. A portion of the recovered liquid

hydrocarbon is discharged from the pump through line 78,

and another portion passes from line 78 through line 80 to

cooler 82. This latter portion of the recovered liquid hy-

droecarbon is first cooled and then reeyeled to the top of

absorber 70 via line 72 for use as the absorbent. Vapor

from the top of absorber 70, comprising approximately 20

to 30% hydrocarbon by volume, passes through line 84 from

the top of the absorber to line 10 for recycling through

absorbent vessels 12 and 16.

Prosecution History

When appellee, MeGill Incorporated (“McGill”), filed

its application, it claimed (original claim 7) the use of a

“liquid hydroearbon absorbent” in absorber 70.2 A de-

?Original claim 7 states:

7. A process for recovering hydrocarbon from an

air-hydrocarbon mixture, comprising:

passing the air-hydrocarbon mixture through a solid

adsorbent bed at slightly above atmospheric pressure,

which bed is capabic of selectively adsorbing the hydro-

carbon components from the mixture to leave substan-

tially hydrocarbon free air;

venting the substantially hydrocarbon free air to the

atmosphere;

subjecting the hydrocarbon laden solid adsorbent bed

to a near vacuum with a liquid ring vacuum pump to de-

sorb the hydrocarbon components therefrom and pro-

duce a rich air-hydrocarbon vapor mixture containing a

liquid from the liquid ring vacuum pump and a recovered

liquid hydrocarbon;

(Continued on next page)

App. 8

pendent claim (original claim 8) called for:

A process, as resided in claim 7, wherein the liquid

hydrocarbon absorbent is recovered liquid hydrocar-

bon. [Emphasis added. ]

A further dependent claim (original claim 9) recited

tle process of claim 8 plus limitations relating to certain

details of the vacuum pump.

In his first Office Action, the examiner rejected all

claims; claims 6-8 for obviousness and claims 1-12 under

35 U.S.C. § 112. The obviousness rejection related to the

cooling function of pump 48. The examiner further stated:

Claims 9-12 contain allowable subject matter and would

be allowed if claim 9 is written in independent form

to include all the limitations now present through de-

pendency and if the 112 rejection is overcome.

(Continued from previous page)

separating the liquid from the liquid ring vacuum

pump and the recovered liquid hydrocarbon from the rich

air-hydrocarbon vapor mixture;

absorbing substantially all of the hydrocarbon com-

ponents from the rich air-hydrocarbon vapor mixture with

a liquid hydrocarbon absorbent to produce a constant

composition absorber overhead gas and a recovered liquid

hydrocarbon mixed with said absorbent;

recycling the absorber overhead gas from the absorp-

tion step to a second solid adsorbent bed, capable of

selectively absorbing the hydrocarbon therein to leave a

substantially free hydrocarbon recycle air; and

venting the substantially free hydrocarbon recycle

2ii io ine atmosphere. [Emphasis added. ]

3Original claim 9 states:

9. A process, as recited in claim 8, further compris-

ing: .

separating the liquid ring vacuum pump liquid from

the recovered liquid hydrocarbon produced in the sep-

aration step;

cooling the liquid ring vacuum pump liquid; and

recycling said liquid ring vacuum pump liquid for

use in the liquid ring vacuum pump.

App. 9

McGill amended claim 7 by inserting the phrase “in

an absorber operating with a sufficiently high L/V ratio”

in the fifth paragraph of claim 7.4

In his final Office Action, the examiner rejected claims

7 and 8, and objected to claim 9. Clainis 7 and 8 were again

rejected under 35 U.S.C. § 103 in relation to the cooling

function. The examiner again stated:

Claims 9-12 contain allowable subject matter and

would be allowed when claim 9 is written in inde-

pendent form to include all the limitations now present

through dependency. Claims 10-12 depend from

claim 9.

In response, McGill eancelled claims 7 and 8 and rewrote

claim 9 in the independent form as new claim 14 which

ultimately was allowed as the claim at issue, claim 2. In

addition, MeGill remarked:

Claims 7-8 have been cancelled in view of the Ex-

aminer’s rejections. Claim 9 has been rewritten in

independent form as new claim 14 including the limi-

tations which were present through dependency. Claim

10 has been corrected to depend upon the new claim 14.

[Emphasis added. ]

District Court Proceeding

At the close of all the evidence, appellant, John Zink

Company (“Zink”), moved for directed verdict which was

‘Amended claim 7, in pertinent parts, states:

absorbing substantially all of the hydrocarbon com-

ponents from the rich air-hydrocarbon vapor mixture with

a liquid hydrocarbon absorbent in an absorber operating

with a sufficiently high L/V ratio to produce a constant

composition absorber overhead gas and a recovered liq-

uid hydrocarbon mixed with said absorbent. [Emphasis

in original.] :

App. 10

denied by the district court. A jury, after answering a

set of special interrogatories pursuant to Fed. R. Civ. P.

49(b), returned a general verdict in favor of MeGill. The

jury found, inter alia, that MeGill’s invention would not

have been obvious at the time of the invention and that

the patent disclosed the best mode for practicing the in-

vention. In addition, Zink was found to have infringed

MeGill’s claim 2 and accordingly, MeGill was awarded dam-

ages in the amount of $8,000,000. The district court en-

tered a judgment in accordance with the jury verdict on

December 7, 1982. In its order of June 22, 1983, the dis-

trict court denied, inter alia, (1) Zink’s motion for judg-

ment notwithstanding the verdict (“JNOV”) or in the al-

ternative, motion for a new trial, and (2) MeGill’s motion

to amend the judgment to include awards of increased dam-

ages, prejudgment interest, and attorneys’ fees.

OPINION

In determining patent infringement, two inquiries are

involved—(1) the scope of the claims and (2) whether the

claimed invention has been infringed. SSJE Equipment

S.A. v. USITC, 713 F.2d 746, 757, 218 USPQ 673, 688 (Fed.

Cir. 1983); Autogiro Co. of America v. United States, 384

F.2d 391, 401, 155 USPQ 697, 705 (Ct. Cl. 1967). The first

inquiry, a determination of the scope of the claims, is a

question of law. SSIH Equipment, supra. If the language

of the claims is undisputed, the district court could inter-

pret or construe the undisputed claims as a matter of law.

Singer Manufacturing Co. v. Cramer, 192 U.S. 265, 275

(1904); see Super Products Corp. v. D P Way Corp., 546

F.2d 748, 756, 192 USPQ 417, 423 (7th Cir. 1976); cf.

App. 11

Chemical Construction Corp .v. Continental Engineering,

Ltd., 407 F.2d 989, 991 (5th Cir. 1969). If, however, the

meaning of a icrm of art in the claims is disputed and

extrinsic evidence is needed to explain the meaning, con-

struction of the claims could be left to a jury. Envirotech

Corp. v. Al George, Inc., App. No. 83-1107 (Fed. Cir. Mar.

19, 1984); cf. Hong Kong Export Credit Insurance Corp.

v. Dun & Bradstreet, 414 F. Supp. 153, 157 (S.D.N.Y

1975). In the latter instance, the jury cannot be directed

to the disputed meaning for the term of art. Cf. Butler

v. Local Union 823, International Brotherhood of Team-

sters, 514 F.2d 442, 452 (8th Cir.), cert. denied, 423 U.S.

924 (1975).

Where, as here, the overall question of infringement

was answered by a jury and the losing party’s motion for

JNOV was denied, an appellate court’s review of the de-

nial is limited. Connell v. Sears, Roebuck &@ Co., 722 F.2d

1542, 1546, 220 USPQ 1938, 197 (Fed. Cir. 1983). The ap-

pellate court is permitted to review only the sufficiency

of the evidence, a question of law. Baltimore € Carolina

Line, Inc. v. Redman, 295 U.S. 654, 659 (1935). Such a

review must be conducted within a set of guidelines which

include: (1) a consideration of all the evidence, (2) in a

light most favorable to the non-moving party, (3) drawing

all reasonable inferences favorable to that party, (4)

without determining the credibility of the witnesses, and

(5) without substituting the court’s choice for that of the

jury between conflicting elements in the evidence. Con-

nell, supra.

To obtain a reversal, appellant (the moving party

helow) must persuade us that either (1) the jury’s find-

ings were not supported by substantial evidence or (2)

_ App. 12

those findings cannot support the legal conclusions which

necessarily were drawn by the jury in forming its verdict.

Railroad Dynamics, Inc. v. A. Stucki Co., — F.2d —, —,

220 USPQ 929, 936 (Fed. Cir. 1984.) If, however, there

was substantial evidence of such quality and weight that

reasonable and fair-minded men in the exercise of im-

partial judgment could reasonably return a verdict for

the non-moving party, then the denial of the JNOV was

correct. Envirotech, supra, slip op. at 10-11.

In the instant case, the jury’s finding of infringement

was predicated on construction of claim 2. To obtain a

reversal, Zink must demonstrate that no reasonable juror

could have interpreted the claim in the fashion that sup-

ports the infringement finding, e.g., in the fashion urged

by McGill. Since the jury did not make express findings

on claim construction, we must presume the existence of

facts necessary to support the claim construction urged

by McGill and determine if those faets were supported by

substantial evidence. Railroad Dynamics, supra. Zink

must convince us that there is no set of facts, consistent

with MeGill’s interpretation, that was supported by sub-

stantial evidence.

Claim Const ruction—Claim At Issue

The thresho'd requirement in claim construction is an

examination of the claim at issue. In the inctant case,

McGill argues that the phrase ‘‘recovered liquid hydro-

carbon absorbent” in the claim at issue means an unde-

fined absorbent that is capable of recovering a substance

called “recovered liquid hydrocarbon”. Zink, on the

other hand, argues that the phrase means that the recov-

ered liquid hydrocarbon is peing used as an absorbent.

App. 13

Thus, Zink’s use of fresh gasoline in the absorption step

would be an infringing use under MecGill’s interpretation

and net an infringing use under Zink’s.

To support its interpretation, McGill first contends

that ‘‘recovered liquid hydrocarbon absorbent” and ‘‘re-

covered liquid hydrocarbon” cannot be the same substance

due to the following passage in the fifth paragraph of

claim 2: ‘‘a recovered liquid hydrocarbon mixed with said

absorbent’’. It seems to argue that mixing requires the

presence of two different substances. Zink, however,

counters with the contention that the overall language of

claim 2 is consistent with its interpretation. In addition,

Zink argues that the use of the words ‘‘said absorbent”

merely refers to previously defined ‘‘recovered liquid

hydrocarbon absorbent” and does not mean that the re-

covered liquid hydrocarbon is not being used as the ab-

sorbent.

Thus, the language of the claim at issue is in dis-

pute,> and Zink contends that other tools of claim con-

struction must be used to interpret the claim.

Claim Construction—File History

In construing or interpreting claims, a whole host of

factors may be considered. Fromson v. Advance Offset

Plate, Inc., 720 F.2d 1565, 219 USPQ 1137 (Fed. Cir.

1983) ; Autogire, 384 F.2d at 401, 155 USPQ at 705. One

Sit is interesting to note that the district court could deter-

mine in the first instance, as a matter of law, whether or not

the language of the claim at issue was ambiguous and would

require extrinsic evidence for interpreting that claim. Cf.

Seitz v. Brewers’ Refrigerating Mach. Co., 141 U.S. 510, 517

(1891); Motor Carriers Council of St. Louis, Inc. v. Local Union

No. 600, 486 F.2d 650, 653 (8th Cir. 1973).

App. 14

such factor is the prosecution history of the patent. The

Court, in Graham v. John Deere Co., 383 U.S. 1, 33 (1966),

stated that ‘‘an invention is construed not only in light of

the claims, but also with refernce to the file wrapper or

prosecution history in the Patent Office.”

In the instant case, McGill contends that prosecution

history estoppel is inapplicable since the claim at issue

and in particular, the phrase ‘‘recovered liquid hydrocar-

bon absorbent,’ was not amended or distinguished in

response to a prior art rejection, citing Hughes Aircraft

Co. v. United States, 717 F.2d 1341, 1862, 219 USPQ 473,

481 (Fed. Cir. 1983). It argues that the amendments to

the predecessor claims of the claim at issue were made

only in response to a section 112 rejection for original

claim 9 and in response to a rejection regarding the

vacuum pump for original claim 7. Since there were

neither amendments nor arguments in the file history re-

garding “recovered liquid hydrocarbon absorbent,” Me-

Gill contends that there was no surrender by amendment

that could support a finding of estoppel, citing Caterpillar

Tractor Co. v. Berco, S.P.A., 714 F.2d 1110, 1115, 219

USPQ 185, 187-88 (Fed. Cir. 1983). In addition, McGill

argues that whether or not the absorbent was ‘‘recov-

ered’? was nut a pivotal issue during prosecution because

the examiner twice rejected both claim 7 and 8 on the

basis of the same prior art without differentiating the

only difference between these claims—‘‘recovered.”’ If

this issue had been pivotal, McGill contends, the examiner

would have allowed claim 8 and rejected claim 7. McGill

concludes that the phrase ‘‘recovered liquid hydrocarbon

absorbent”? means an undefined absorbent that is capable

of recovering a substance called ‘‘recovered liquid hydro-

carbon.” Zink’s use of fresh gasoline as the absorbent in

App. 15

the absorption step is, therefore, an infringing use. We

disagree.

Prosecution history may be used not only in an estop-

pel context but also as a claim construction tool. Fromson,

supra. Where, as here, an unambiguous limitation such

as the one that was present in original claim 8 was vol-

untarily added to a subsequent claim during prosecution,

it may be used to construe the claim. In the instant case,

the examiner twice remarked that original claim 9 would

he allowed if it were rewritten in an idependent form and

ineluded al! the limitations present through dependency.

The phrase ‘‘recovered liquid hydrocarbon absorbent’? in

original claim 8 was clearly a limitation, a limitation hav-

ing the meaning: recovered liquid hydrocarbon being used

as an absorbent. Since this condition for allowance was

clear and the limitation of original claim 8 was clear on

its face, the appearance of the phrase in new claim 14 was

an indication, as interpreted by Zink, that the limitation™

of original claim 8 had been incorporated into the new

claim.

Claim Construction—S pecification

Another factor in claim construction is the use of the

patent specification. McClain v. Ortmayer, 141 U.S. 419

(1891); Fromson, 720 F.2d at 1569-70, 219 USPQ at 1140.

Words which were defined in the specification must be

given the same meaning when used in a claim. General

Electric Co. v. United States, 572 F.2d 745, 753, 198 USPQ

65, 71 (Ct. Cl. 1978). In Autogire, 348 F.2d at 397-98, 155

USPQ at 702-3, the Court of Claims stated:

In serving its statutory purpose, the specification

aids in ascertaining the scope and meaning of the

App. 16

language employed in the claims inasmuch as words

must be used in the same way in both the claims and

the specification. U.S.Pat.Off. Rule 75(d). The use

of the specification as a concordance for the claims

is accepted by almost every court, and is a basic con-

cept of patent law. [Footnotes omitted.}

In the specification of the patent at issue, the phrase

‘**recovered liquid hydrocarbon absorbent’’ is not defined.

However, the phrase ‘‘recovered liquid hydrocarbon’’ is

not defined. However, the phrase ‘recovered liquid

hydrocarbon” and the word “absorbent” are defined.

For example, the specification states that the “[r]ecov-

ered liquid hydrocarbon overflowing the weir 54 is with-

drawn from separator 52 through line 62 connected be-

tween the lower portion of separator 52 and line 74 for

use as a liquid adsorbent [sic].’’ The specification then

describes the direct countercurrent contact of the vapor

hydrocarbon component and the recovered liquid hydro-

earbon ‘‘introduced in the upper portion of the absorber

via line 72.” In addition, the specification discloses that

a portion of the recovered liquid hydrocarbon discharged

from absorber 70 is first cooled by cooler 82 and then

pumped via line 72 to the top of absorber 70 “for use as

absorbent.”

li is clear from the specification that the recovered

liquid hydrocarbon functions as the absorbent in absorber

70. Contrary to McGill’s construction, the phrase ‘‘recov-

ered liquid hydrocarbon absorbent” does not mean an un-

defined absorbent that is capable of recovering a sub-

stance called ‘‘recovered liquid hydrocarbon.’’ In addi-

tion, all of the drawings of the patent show only the use

of recovered liquid hydrocarbon as the absorbent. Do-

minion Magnesium Ltd. v. United States, 320 F.2d 388,

App. 17

394, 138 USPQ 306, 310 (Ct. Cl. 1963). Thus, the phrase

**recovered liquid hydrecarbon absorbent” in claim 2, as

urged by Zink, has the meaning that was defined in the

specification which is recovered liquid hydrocarbon being

used as an absorbent.

Claim Construction—Other Claims

A third factor in claim construction is the use of

other claims in the patent to determine the scope of the

claim at issue. Fromson, 720 F.2d at 1570, 219 USPQ at

1140-41; General Electric, 572 F.2d at 751, 198 USPQ at

70.

in dependent claim 3,° the steps of cooling the recov.

ered liquid hydrocarbon discharged by absorber 70 and the

recycling of the cooled liquid to the absorber are claimed.

The cooled recovered liquid hydrocarbon are reeycled to

absorber 70 ‘‘for use as absorbent in the absorption step.”

McGill contends that if independent claim 2 is interpreted

to include an absorption step carried out with ‘recovered

liquid hydrocarbon,”’ then the second step of dependent

claim 3 would be vedundant. As such, it would be an im-

proper reading of a limitation explicitly set forth in a de-

pendent claim into an independent claim, citing Eniiron

mental Designs, Ltd. v. Union Oil Co. of Califorma, 715

°Claim 3 states:

3. A process, as recited in claim 2, the further steps com-

prising:

cooling a portion of the recovered liquid by hyuro-

carbon; ot

recycling the cooled recovered liquid hydrocarbon

for use as absorbent in the absorption step.

App. 18

F.2d 698, 699, 218 USPQ 865, 871 (Fed. Cir. 1983). We

disagree,

McGill is miseonstruing claims 2 and 3. It seems to

be reading claim 2 to mean that something other than re-

covered liquid hydrocarbon was used as the absorbent in

the initial or first absorption step. Then, in light of claim

3, only the cooled recovered liquid hydrocarbon is being

recycled as the absorbent. Since the specification and

drawings fail to show the use of anything but the recov-

ered liquid hydrocarbon as the absorbent, Zink contends

that this is a tortured reading. It interprets claim 3 to

mean that the the ‘‘recovered liquid hydrocarbon’’ of

claim 2, already being used as the absorbent, is further

cooled and reeyeled for the same use.

Claim Construction—Expert Testimony

In addition to tools of claim construction such as file

history, patent specification, and other claims in the pat-

ent, testimony by expert witnesses may be used to con-

strue claims. See Control Components, Inc. v. Valtek,

Inc., 609 F.2d 763, 770, 204 USPQ 785, 791 (Sth Cir.), cert.

denied, 449 U.S. 1022 (1980). Such testimony is evidence

of construction of the claims as they would be construed

by those skilled in the art. F'romson, 720 F.2d at 1571, 219

USPQ at 1142. In this regard, experts for both sides tes-

tified as to their interpretation of the phrase ‘‘recovered

liquid hydrocarbon absorbent.”

McGill contends that the testimony of two of its ex-

perts, a co-inventor of the ’423 patent and its patent law

expert, supports its interpretation of claim 2. The co-in-

ventor stated that recovered liquid hydrocarbon was not

the same thing as recovered liquid hydrocarbon absorb-

App. 19

ent. The patent law expert interpreted the phrase ‘‘re-

covered liquid hydrocarbon absorbent’’ to mean an unde-

fined absorbent that is capable of recovery a substance

called ‘‘recovered liquid hydrocarhon.’’ MeGill also eon-

tends that U.S. Patent No. 3,770,622, cited in the ’423 pat-

ent, confirms the interpretation it urges.

Zink, however, disputes the interpretation of Me-

Gill’s experts. Its own patent law expert equated recov-

ered liquid hydrocarbon with recovered liquid hydrocar-

hon absorbent. Zink also argues that even a Dr. Garwin,

another one of McGill’s experts, testified that the absorb-

ent and the recovered liquid hydrocarbon were the same

substance. In particular, Zink contends that its cross-

examination of McGill’s patent law expert raised ques-

tions regarding that expert’s interpretation of claim 2.

Claim Construction—Conclusion

After considering the record taken as a whole, includ-

ing the experts’ testimony, Hayes v. Department of the

Navy, App. No. 83-1219, slip op. at 5 (Fed. Cir. Feb. 9,

1984) ; see Control Components, supra; cf. Moraine Prod-

ucts v. ICI America, Inc., 5388 F.2d 134, 146, 191 USPQ 65,

75 (7th Cir.), cert. denied, 429 U.S. 941 (1976), we are

convineed that there is no set of facts, consistent with Mce-

Gill’s interpretation, that is supported by substantial evi-

dence. Thus, McGill’s interpretation of claim 2, a legal

conclusion implied from the jury’s finding of infringe-

nent, cannot be upheld, premised as it must be on facts

which are not supported by substantial evidence.

McGill’s No. 2 claim is limited, instead, to an absorb-

ent which consisted of recovered liquid hydrocarbon. It

is undisputed that fresh gasoline, as used by Zink to re-

cover liquid hydrocarbon, is not ‘‘recovered liquid hydro-

App. 20

carbon’’ as that term is used in the ‘423 patent. As such,

Zink’s use of fresh gasoline as the absorbent in nonin-

fringing. Accordingly, the district court should have

granted Zink’s motion for JNOV in relation to infringe-

ment and the district court’s denial is reversed.

In addition to the argument that claim 2 was mis-

construed as to its scope in regard to the infringement

issue, Zink next argues that the district court committed

reversible error when it failed to submit to the jury the

tripartite factual inquiries as mandated by Graham, 383

U.S. at 17. Zink contends that these factual inquiries

should have been submitted as special interrogatories to

the jury. American Hoist & Derrick Co. v. Sowa & Sons,

Inc., 725 F.2d 1350, 1361, 220 USPQ 763, 771-72 (Fed. Cir.

1984); cf. Ratlroad Dynamics, — F.2d at —, 220 USPQ

at 938;

The interrogatories which were proposed by Zink are

not a part of the record of the district court. Maryland

Casualty Co. v. Jones, 279 U.S. 792, 796 (1929); Under-

water Dev.ces, Inc. v. Morrison-Knudsen Co., 717 F.2d

1380, 1388, 219 USPQ 569, 575 (Fed. Cir. 1983). As ad-

mitted by Zink, these interrogatories were submitted to

the district judge during a special Sunday session and

were never made a part of the record. In light of these

facts, we need not and do rot reach the issue whether the

district court improperly failed to submit Graham-type

factual interrogatories to the jury.’

’Zink’s underlying argument regarding obviousness _ is

based on a construction of McGill's claim 2 that includes gas-

oline as “recovered liquid hydrocarbon absorbent.” Since such

a construction of claim 2 has been reversed, we need not and

do not reach the substantive obviousness issue.

App. 21

Zink further argues that McGill’s patent is invalid

for failure to disclose the best mode of operation. It con-

tends that a feature known as “purge air” was incorpo-

rated into the first commercial unit of MeGill’s invention

and has been used in every unit sold since that time. ‘The

failure to disclose this feature in the patent specification

violated the best mode requirement,’ and therefore invali-

dates the patent.

After hearing testimony, including those of the two

inventors, the jury found’ that Zink failed to prove that

the best mode was not disclosed. Since the best mode

issue is a question of fact, see Union Carbide Corp. v.

Borg-Warner Corp., 550 F.2d 355, 360, 193 USPQ 1, 5-6

(6th Cir. 1977) (Miller, J., sitting by designation) (district

court’s finding on best mode reviewed under the clearly

8The best mode requirement is stated in the first para-

graph of 35 U.S.C. § 112:

§ 112. Specification

The specification shall contain a written description

of the invention, and of the manner and process of mak-

ing and using it, in such full, clear, concise, and exact

terms as to enable any person skilled in the art to which

it pertain, or with which it is most nearly connected, to

make and use the same, and shall set forth the best mode

contemplated by the inventor of carrying out his inven-

tion. [Emphasis added. ]

°The jury found for McGill in answering special interroga-

tory No. 7, which states:

7. Do you find that the Defendant [Zink] has proved by

the required degree of proof that James McGill and Wil-

liam Scott [Inventors] failed to disclose in their patent

application the best mode known to either of them at the

time for practicing their invention?

Answer Yes or No No

App. 22

erroneous standard), a jury’s determination must be up-

held unless Zink can convince us that it was not supported

by substantial evidence. In the instant case, it has failed

to meet its burden.

Conclusion

Since the issues discussed above are dispositive of

this case, we need not and do not reach other issues in the

appeal and cross-appeal. Accordingly, that portion of the

judgment regarding the validity of the ’423 patent is af-

firmed. That portion of the judgment regarding infringe-

ment is reversed, and the damage award is reversed. Each

party shall bear its own costs.

AFFIRMED-IN-PART REVERSED-IN-PART

No. 80-C-17-E

[IN THE UNITED STATES DISTRICT COURT

FOR THE NURTHERN DISTRICT OF OKLAHOMA

MeGILL INCORPORATED,

Plaintiff,

vs. |

JOHN ZINK COMPANY,

Defendant.

ORDER ON POST-TRIAL MOTIONS

(Filed June 22, 1983)

The Court has before it the following motions filed

by the parties since the date of the jury verdict in this

case :

App. 23

1. Motion of the Defendant for Judgment Notwith-

standing the Verdict or in the Alternative for a

New Trial;

2. Motion of the Plaintiff to Amend Judgment;

3. Motion of the Plaintiff for Additional Findings

of Fact and Conclusions of Law;

4. Application of the Plaintiff for a hearing on post-

trial issues.

The Court, having considered the briefs submitted hy

the parties, and having concluded its review of the record

and materials submitted, enters this Order addressing

each of the motions filed by the parties.

For reasons further set forth below, the Court finds

that it will not be necessary to set a hearing on post-trial

motions. Therefore the Plaintiff’s application for hear-

ing on post-trial motions will be denied.

DEFENDANT’S MOTION FOR JUDGMENT

NOTWITHSTANDING VERDICT OR IN THE

ALTERNATIVE FOR NEW TRIAL

At the close of all the evidence, the Defendant filed

with the Court a motion for a directed verdict. The De-

fendant’s motion was denied. After the reading of the

verdict of the jury the Motion for Directed Verdict was

renewed as a Motion for Judgment Notwithstanding the

Verdict. In the alternative, the Defendant moves for a

new trial. In support of its motion, the Defendant asserts

that the verdict is contrary to the overwhelming weight

of the evidence and that prejudicial error was committed

by the Court in regard to the failure to submit certain

interrogatories to the jury, the admission of testimony of

App. 24

the Plaintiff’s patent expert, the failure to instruct on the

law relating to abandoned patent applications and the

giving of an improper instruction regarding lost profits.

Like the motion for directed verdict, a motion for

judgment notwithstanding the verdict (N.O.V.) tests the

legal sufficiency of evidence. See Urtt v. Transport Com-

mercial Corp., 479 F.2d 766 (5th Cir. 1973). In passing

on a motion for judgment N.O.V., the Court is not to weigh

the evidence or pass on the credibility of the witnesses

or substitute its judgment for that of the jury. Rather

it must view the evidence most favorably to the non-

movant and give that party the benefit of all reasonable

inferences from the evidence. Yazzie v. Sullivent, 561

F.2d 183 (10th Cir. 1977).

The question in each instance is not whether there is

no evidence supporting the party against whom the

motion is made but whether there is evidence upon

which the jury could probably find a verdict for that

party. ... The philosophy of this doctrine is that there

must be a minimum of interference with the jury.

See Fazzie, supra at page 188. A “judgment N.O.V. may

not be granted unless the evidence points but one way and

is susceptible to no reasonable inferences which may sus-

tain the position of the party against whom the motion

is made.” (Citation omitted). Barnett v. Life Insurance

Company of the Southwest, 562 F.2d 15, 17 (10th Cir.

1977).

To prevail on its metion for new trial, the Defend-

ant must demonstrate that the verdict was clearly or over-

whelmingly against the weight of the evidence. Prebble

v. Brodrick, 535 F.2d 605 (10th Cir. 1976); Holmes v.

Wack, 464 F.2d 86 (10th Cir. 1972). Again here it is not

the duty of the court to set aside a verdict merely because

App. 25

it might have reached a different result or because the

evidence is sharply in conflict. The Court must abstain

from interfering with the verdict of the jury unless it is

clear that the jury has reached a “seriously erroneously

result”. 6A, Moore’s Federal Practice, §59.08(5).

Under these standards, the Court finds that the evi-

dence in this case was not insufficient to support the ver-

dict, nor was the verdict of the jury against the weight

of the evidence.

The Defendant also asserts that the damages awarded

»y the jury were excessive. The Court here must avoid

substituting its own judgment for the jury’s, and must

uphold the damages award of the jury unless it is “grossly

excessive” or “shocks the conscience” of the Court. A

trial judge has the chief responsibility for passing on the

question as to whether a new trial ought to be granted

on the ground of excessive or inadequate damages.” (Ci-

tation omitted). Sitkwood v. Kerr-McGee Corporation,

485 F.Supp. 566 (W.D. Okla. 1979). “A verdict should not

be set aside unless the Court is convinced that it is the

result of bias, prejudice or passion.” Metcalfe v. A.T. &

S.F. Ry., 491 F.2d 892 (10th Cir. 1974); Wells v. Colorado

College, F.2d 158 (10th Cir. 1973). Cited in Stlkwood,

supra, page 589.

The verdict in this case does not fall within that cate-

gory. It is not so clearly excessive that the Court finds

it an injustice or unacceptable based upon the evidence.

The damages awarded by the jury were well below evi-

dence submitted by the Plaintiff of lost gross profits, and

the Court cannot say that the jury did not consider other

deductions from profits in the calculation of the award.

App. 26

The Defendant also asserts that error was committed

by the Court in the admission of evidence and in the in-

structions to the jury. The Co»rt has reviewed its rui-

ings on the admission of evidence cited by the Defendant

and finds that the admission was not erroneous. The

Court has also reviewed its instructions and special inter-

rogatories to the jury. The Court finds that the instrue-

tions as a whole properly set forth the factual inquiries

required by Graham v. John Deere, 383 U.S. 1, 86 S.Ct.

684 (1966) in the determination of the obviousness or non-

obviousness of the invention. The Court has reexamined

its rulings on Defendant’s objections to instructions and

special interrogatories and finds no error therein.

PLAINTIFF’S MOTION TO AMEND JUDGMENT

In its answer and counter-claim, the Defendant coun-

ter-claimed for a declaratory judgment that McGill’s pat-

ent was invalid and not infringed by the Defendant.

At the conclusion of the Plaintiff’s evidence, the

Court directed a verdict of non-infringement as to claims

3 through 5. Considering the ruling of the Court, the

question of the validity of claims 3 through 5 is now moot.

Under Rule 57 of the Federal Rules of Civil Pro-

cedure declaratory judgment actions are triable by a jury.

The jury was duly instructed as to the law to be applied

to the facts in regard to the validity and infringement of

the McGill patent. The jury’s verdict of infringement,

contributory infringement and inducing of infringement

of claim 2 by the Defendant dictates that the Court should

enter judgment against the Defendant on that portion of

its counter-claim requesting a declaration of non-infringe-

ment of claim 2.

App. 27

The uitimate test of patent validity is one of the law.

Great A & P Tea Co. v. Supermarket Corp., 340 U.S. 147,

71 S.Ct. 127 (1950). “It has long been clear that the Con-

stitution requires that there be some ‘invention’ to be

entitled to patent protection”. Sakraida v. Agpre, Inc.,

425 U.S. 273, 96 S.Ct. 1532, 1536. A determination of “in-

vention” has historically involved a comparison of the

subject ma‘ter of the patent with the skill of the calling.

Graham v. John Deere, 383 U.S. 1, 86 S.Ct. 684 (1966).

A valid patent must possess novelty and utility, 35 U.S.C.

§§ 101 and 102, and non-obviousness, 35 U.S.C. § 103. “Ob-

viousness” is a legal conclusion based upon factual evi-

dence. The Supreme Court in Graham v. John Deere,

supra, sets out the basic factual inquiries to be made in

the determination of obviousness.

Under § 103, the scope and content of the prior art

are to be determined; differences between the prior

art and the claims at issue are to be ascertained; and

the level of ordinary skill in the pertinent art re-

solved.

The Court submitted this case to the jury requesting

a general verdict with special interrogatories. In its gen-

eral instructions to the jury the Court set forth the three

factual inquiries which they were required to make in

their determination of obviousness. To aid in the deter-

mination of the general verdict, the Court submitted to

the jury several special interrogatories addressing all

material issues in regard to patent validity. Consistent

with its general verdict, the jury indicated in response

to special interrogatory number 4 that the Defendant had

not proven by the required degree of proof that the proc-

ess covered by the McGill patent was obvious. The jury

answered the following question in the negative.

App. 28

Keeping in mind the Court’s instructions as to the re-

quired factual inquiries to determine ‘‘obviousness”’,

do you find that the Defendant has proved, hy the

required degree of proof that the McGill patent is not

valid because the differences between the process

covered by the McGill patent and the prior art are

such that they would have been obvious to a person of

ordinary skill in the art at the time James McGill and

William Scott made their invention.

The Court after considering the record before it and

in view of the facts presented concurs with the finding of

the jury that the differences between the process covered

by the McGill patent and the prior art are not such that

would have been obvious to a person of ordinary skill in

the art at the time James McGill and William Scott made

their invention. It is therefore the ruling of this Court

that the process covered by claim 2 of the McGill patent

meets the obviousness test. It is further the ruling of this

Court that claim 2 of the McGill patent, having met the

test for validity, is valid.

Plaintiff requested in its original and supplemental

complaints that the Court grant a permanent injunction

against the infringement contributory infringement and

inducing of infringement of its patent by the Defendant.

The Plaintiff asserts that, in view of the Defendant’s sta-

tus as a competitor of the Plaintiff, and in view of evi-

dence that the Defendant had continued to sell equipment

adapted to infringe the Plaintiff’s patent until the time of

trial and that the Defendant had continued to operate its

demonstration unit in Tulsa that the Defendant will con-

tinue to cause competitive injury to the Plaintiff and

should be enjoined from such activities in the future.

The jury after due deliberation found that the De-

fendant had infringed claim 2 of the McGill patent, the

App. 29

Defendant had indvced the in‘ringement of claim 2 by its

customers, and had contributed to infringement by its cus-

tomers.

The Court finds that the Plaintiff McGill is entitled

to an injunction under Title 35, U.S.C.A. 4 283 against the

Defendant Zink enjoining further infringement of claim 2

of the McGill patent and enjoining contributory infringe-

ment and the inducing of infringement of claim 2 of the

McGill patent, letters patent no. 4,066,423.

Increase damages and attorneys’ fees: Title 35

U.S.C. § 284 permits the Court to award damages up to

three times the amount found adequate by the jury to

compensate the Plaintiff for the infringement.

35 U.S.C. 4 285 allows the Court to award reasonable

attorney’s fees to the prevailing party in an exceptional

case. Both these sections have been used to compensate

the prevailing perty for the inequitable conduct of his

opponent and thus are applicable only in unusual cases.

Deere & Co., v. International Harvester Co., 658 F.2d

1137 (7th Cir. 1981).

S. etion 284, allowing the Court to award treble dam-

ages, has been interpreted by the Courts to apply only in

eases of bad faith where conscious and willful infringe-

ment are found. Lam, Inc. v. Johns-Manville Corp., 668

F 2d 462 (10th Cir. 1982); Milgo FE ectric Corp. v. United

Business Communications, Inc., 623 F.2d 645 (10th Cir.

1980); Deere & Co., swora. “Thus, in cas s where the is-

sues ave close and fairly celatable and are litigated in

good faith, treble damages should not be awarded.” Deere

& Co., supra at 1146. “An infringer who reasonably doubt-

BEST AVAILABLE COPY

App. 30

ed that the patent was invalid has not willfully infringed

the patent.” Lam, Inc., supra at page 474.

The jury, in response te interrogatory no. 16, found

that Zink’s infringement was willful. Since the award of

increased damages and attorney’s fees is within the dis-

cretion of the Court, such a finding by the jury is purely

advisory and does not compel the Court to award either

attorney’s fees or damages. See White v. Marbel, Inc.,

369 F.Supp. 1321 (M.D. Fla., 1973), modified in other re-

spects, 509 F.2d 287 (5th Cir. 1975).

The Court declines to accept the advisory finding of

the jury on the issue of willful infringement. The Court

finds from a preponderance of the evidence that the

requisite finding of bad faith could not be found to sup-

port a finding of willful infringement. The Court cannot

find under the standards and authorities set forth above

that the conduct of the Defendant before or during the

litigation was such as to rise to the level of bad faith re-

quired by the Courts in the award of treble damages.

Attorney’s fees are awarded “to compensate the pre-

vailing party because the losing party’s misconduct was

so unfair and reckless as to make it unconscionable for

the prevailing party to sustain the expense of counsel.”

Lam, Inc., supra at page 476; Q-Panel Co. v. Newfield,

432 F.2d 210, 211 (10th Cir. 1973). The Tenth Circuit

recognizes as basis for awards of attorney's fees either

willful infringement or the assertion of “sham or frivol-

ous defenses that increase significantly the patent holder's

legal expenses through unduly protracted litigation.” Id.

The Court finds that neither have been shown by the evi-

dence in this case. Therefore, Plaintiff’s motion for in-

App. 31

creased damages and for the award of attorney's fees will

be denied.

Pre-judgment interest: Plaintiff has requested that

the Court award prejudgment interest under 35 U.S.C.

§ 284. Section 284 gives the Court general authority to

award interest and costs. The Supreme Court has set

standards for the award of pre-judgment interest under

§ 284 in General Motors Corp. v. Devex Corp., et al.,

— U.S. — (1983) (reported in supplement to Vol. 217,

no. 8, U.S.P.Q. Weekly Advance Sheets, May 23, 1983).

The Court states that “the underlying purpose of the pro-

vision strongly suggests that pre-judgment interest should

ordinarily be awarded where necessary to afford the Plain-

tiff full compensation for the infringement.” The Court

stated that in the typical case an award of pre-judgment

interest is necessary to “insure that the patent owner is

placed in as good a position as he would have been in had

the infringer entered into a reasonable royalty agree-

ment.” Id. The policy behind the award is clearly to

insure that Plaintiff is adequately compensated for the

infringement. Although the Court held that pre-judgment

interest should ordinarily be awarded absent any justifica-

tion for withholding such award, it allewed that there may

be appropriate circumstances under which pre-judgment

interest would not be awarded. It is the opinion of the

Court that this is such a case. Plaintiff was not awarded

damages in the amount equa! to a “reasonable royalty” for

the use of its patent, but was awarded adequate compen-

satory damages by the jury based upon evidence submit-

ted of lost profits. The damages awarded, while not ex-

cessive, are sufficient to “adequately compensate” the

Plaintiff for the infringement of its patent. The Court

App. 32

believes that this is a circumstance in which the Plaintiff

would not need the award of pre-judgment interest up to

a level such that the total award would amount to an ade-

quate compensation for infringement. Therefore, the

Court denies Plaintiff’s motion for pre-judgment interest.

DEFENDANT’S APPLICATION FOR

ATTORNEY’S FEES

The Court finds and orders this is not the type of ex-

ceptional case as set forth in True Temper Corp. v. C.F.

& I. Stecl Corp., 601 F.2d 495 (10th Cir. 1979) requiring

the award of attorney’s fees to the Defendant due to the

bad faith of the Plaintiff in bringing suit for infringement

of claims 3 through 5. The Court therefore denies the De-

fendant’s motion for attorney fees based upon alieged

fraud committed by the Plaintiff on this Court and on the

Patent and Trademark Office.

MOTION OF THE PLAINTIFF FOR

ADDITIONAL FINDINGS OF FACT AND

CONCLUSIONS OF LAW

Plaintiff moves the Court for additional Findings of

Fact and Conclusions of Law in regard to several issues

of law listed in the pre-trial order. The Court has pre-

viously addressed the questions of obviousness, patent

validity, injunctive relief, increased damages, attorney’s

fees and pre-judgment interest. The Court submitted to

the jury the question of whether or not the Defendant had

proved whether the patentees, James McGill and William

Scott, themselves invented the subject matter of the patent.

The Court declines to disturb the finding of the jury that

the defense was not proven. The Court also submitted to

App. 33

the jury the question of whether or not the McGill patent

was unenforceable because of a failure of James McGill

and William Scott to cite to the patent office prior art

which was more pertinent to their patent application than

prior art which they cited. The jury found that there was

no such fraud on the patent office, and the Court declines

to disturb the finding of the jury.

The Defendant listed as a question of law in the pre-

trial order whether the Plaintiff was guilty of fraud on

this Court by filing this litigation and continuing to prose-

eute it with admitted full knowledge of the prior public

use of the Mark IV gasoline vapor recovery unit at Port

Arthur, Texas. As previously set forth above, after a

review of all the evidence, the Court does not find suffi-

cient evidence to show that this case was brought with

anything but a good faith belief in the validity of the

patent in suit. The Court finds that there was no such

bad faith as to constitute a fraud on the Court.

IT IS THEREFORE THE ORDER OF THIS

COURT that Defendant’s motion under Rule 50(b) for a

judgment notwithstanding the verdict or in the alterna-

tive for a new trial be and hereby is denied.

IT IS FURTHER ORDERED that the Plaintiff’s mo-

tion for increased damages be and hereby is denied.

IT IS FURTHER ORDERED that Plaintiff’s motion

for assessment of attorney’s fees be and hereby is denied.

IT IS FURTHER ORDERED that Plaintiff’s motion

for assessment of pre-judgment interest be and hereby is

denied.

App. 34

IT IS FURTHER ORDERED that D. fendant’s appli-

cation for assessment of attorney’s fees be and hereby is

denied.

IT IS FURTHER ORDERED that Plaintiff’s Appli-

cation for Hearing on Post-Trial Issues be, and hereby is,

denied.

IT IS FURTHER ORDERED that the conelusions of

law required of the Court are as set forth above.

IT IS FURTHER ORDERED that Defendant Zink

be enjoined from further infringement of claim 2 of the

McGill Patent, letters patent no. 4,066,423. Defendant is

further enjoined from inducing infringement and contrib-

uting to infringement by its customers, of claim 2 of let-

ters patent no. 4,066,423.

ORDERED this 22nd day of June, 1983.

/s/ James O. Ellison

United States District Court

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

No. 83-1198

80-C-17-E

McGILL INCORPORATED,

Appellee,

JOHN ZINK COMPANY,

Appellant.

App. 35

No. 83-1217

80-C-17-E

McGILL INCORPORATED,

Cross-Appe!lant,

JOHN ZINK COMPANY,

Cross-Appellee.

JUDGMENT

ON APPEAL from the US District Court for the North-

ern District of Oklahoma

This CAUSE having been heard and considered, tt is

ORDERED and ADJUDGED: AFFIRMED IN PART

AND REVERSED IN PART.

Entered By Order Of The Court

George E. Hutchinson, Clerk

/s/ George E. Hutchinson, Clerk

DATED April 27, 1984

Appellee’s Petition for

Rehearing and Suggestion for

Rehearing In Bane, filed

May 9, 1984.

Petition for Rehearing,

Denied, June 4, 1984,

Suggestion for Rehearing,

In Bane, Declined,

July 16, 1984.

ISSUED AS A MANDATE: July 24, 1984

App. 36

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

Appeal No. 83-1198

McGILL INCORPORATED,

Appellee,

JOHN ZINK COMPANY,

Appellant.

Appeal No. 83-1217

McGILL INCORPORATED,

Cross-Appellant,

JOHN ZINK COMPANY,

Cross-Appellee.

Before KASHIWA, Circuit Judge, COWEN, Senior

Circuit Judge, and BENNETT, Circutt Judge.

ORDER

Appellee/Cross-Appellant, McGill Inc., filed a petition

for panel rehearing on May 9, 1984. After careful con-

sideration of its contentions, we hereby grant the petition

for the limited purpose of modifying our published opin-

ion dated April 27, 1984.

Discussion

To clarify our decision in the pub‘ished opinion, we

make the following amendmeni to that opinion:

page 9, line 4 from bottom, change “713 F.2d 746,

757” to “718 F.2d 365, 376”

page 13, footnote 5, line 3, change “ambiguous” to

“disputed”

App. 37

p. 16, line 9, add “Thus, the specification discloses a

process in which the absorbent is created in-

ternally within the system and not a process

that utilizes an external liquid as its absorb-

ent.

16, line 16, after “of”, add “internally-created,”

16, line 21, after “is”, add “internally-created,”

17, line 15, after “than”, add “internally-created,”

17, line 2 from bottom, after second “the”, add ‘in-

ternally-created,”

SoD

p. 19, after line 18, insert paragraph:

“In regard to possible infringement under

the doctrine of equivalents, we are similarly

convinced that there is no set of facts, consist-

ent with McGill’s interpretation, that is sup-

ported by substantial evidence. As discussed

above, there is no substantial evidence to sup-

port McGill’s interpretation that its process uses

an absorbent that is not the internally-created,

recovered liquid hydrocarbon. In light of the

fact that Zink’s process utilizes an absorbent

that is comprised of an external fluid, MeGill’s

and Zink’s processes are not equivalents in that

different ways are used to perform the desired

function. Graver Tank € Manufacturing Co.

v. Linde Air Products Co., 339 U.S. 605, 608-9

(1950); Carman Industries, Inc. v. Wahl, 724

F.2d 932, 942, 220 USPQ 481, 488-89 (Fed. Cir.

1983). Thus, any finding regarding equivalence

is not supported by substantial evidence.”

p. 19, line 20, after “of”, add “internally-created,”

FOR THE COURT

/s/ Shiro Kashiwa

Circuit Judge

Date: June 4, 1984

App. 38

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

June 5, 1984

ERRA'TUM

Appeal Nos. 83-1198/83-1217

McGill Incorporated v. John Zink Company

This erratum is amending the order dated June 4, 1984.

Please make the following correction:

The inserted paragraph at page 19, line 10:

Change “comprised” to —composed—.

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

717 Madison Place, N.W.

Washington, D.C. 20439

June 15, 1984

George E. Hutchinson Telephone 633-6550

Clerk Area Code 202

Mr. Walther E. Wyss Mr. Jerry J. Dunlap

Mason, Kolehmainen, Dunlap & Codding

Rathburn, & Wyss— 420 One Benham Place

Suite 4200 9400 North Broadway

20 North Wacker Drive Oklahoma City, Oklahoma

Chicago, Illinois 60606 73114

RE: McGill Incorporated v. John Zink Company

Appeal Nos. 83-1198 and 83-1217

Dear Sirs:

The Court has considered the suggestion for rehear-

ing in bane by the appellee and has today accepted that

suggestion.

App. 39

It is not anticipated, at this time, that further brief-

ing or oral argument will be required. However, should

the Court decide otherwise, you will be promptly advised.

Very truly yours,

/s/ George E. Hutchinson

ec: Neil M. Rose, Esq.

James D. Morton, Esq.

GEH :bam

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

No. 83-1198

83-1217

McGILL INCORPORATED,

Appellee,

JOHN ZINK COMPANY,

Appellant.

ORDER

A suggestion for rehearing in bane liaving been filed

in this case,

UPON CONSIDERATION THEREOP, it is Ordered

by the court that the suggestion for rehearing in banc be,

and the same is hereby, Declined.

FOR THE COURT

/s/ George E. Hutchinson, Clerk

Date: July 16, 1984

ec: Walther EK. Wyss

Jerry J. Dunlap

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

No. 83-1198

83-1217

McGILL INCORPORATED,

Appellee /Cross-Appellant,

JOHN ZINK COMPANY,

Appellant/Cross-Appellee.

ORDER

A motion to recall the mandate and a second sugges-

tion for rehearing in banc having been filed in this case,

UPON CONSIDERATION THEREOP, it is Ordered

by the Court that the motion to recall the mandate is De-

nied and the second suggestion for rehearing in banc be,

and the same is hereby, Declined.

FOR THE COURT

/s/ George E. Hutchinson, Clerk

September 6, 1984

ec: Walther E. Wyss

Jerry J. Dunlap

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.