Petition for Writ of Certiorari — Shat-R-Shield, Inc. v. Trojan, Inc.

Supreme Court brief1992

Ask Donna

What actually matters in this document.

Text

-—_ G x Supreme Court, U.S,

9 yA di | FILED |

v0 OO 9?

In The | SPKE OF ! cou ;

Suprene Court of the Hnited States

- .

- October Term, i992

SHAT-R-SHIELD, INC.,

Petitioner,

VS.

TROJAN, INC.,

Respondent.

Petition for Writ of Certiorari to the United States Court of

Appeals for the Federal Circuit

PETITION FOR WRIT OF CERTIORARI

CHARLES LEE THOMASON

THOMASON & SPALDING

One Executive Drive

P.O. Box 8160

Red Bank, New Jersey 07701

(908) 530-9404

R. GALE RHODES, JR.

Counsel of Record

EVANS, OSBORNE & KREIZMAN

P.O. Box BB

Red Bank, New Jersey 07701

(908) 741-9550

Attorneys for Petitioner

2305

a ellate

ervices, inc.

(800) 3 APPEAL « (800) 5 APPEAL « (800) BRIEF 21

QUESTIONS PRESENTED

|. Whether a patent owner that seeks infringement remedies

should expect a lower court to follow this Court’s doctrine of

equivalence, as stated in Graver Tank, or the “‘all-limitations”

doctrine stated by the Federal Circuit.

THE PARTIES

AND RULE 29.1 LISTING

Petitioner Shat-R-Shield, Inc., isa North Carolina corporation

that operates from facilities in Salisbury, North Carolina. Petitioner

owns U.S. Patent No. 4,507,332 for a method of safety-coating

fluorescent lamps.There are no other parent or subsidiary

companies.

Respondent Trojan, Inc., 1s upon information and belief a

Kentucky corporation, that operates in Mount Sterling, Kentucky.

TABLE OF CONTENTS

Questions Presented ....................

The Parties and Rule 29.1! Listing.........

ER 8 gS a

ey a6 6 asa ee a Kee wee

Statement of Jurisdiction.................

Statutory Provisions Involved.............

Rn WE AU ccc eee nee

Reasons for Granting the Writ............

I. This Court needs to make it clear whether its Graver

Tank decision of evaluating patent claims and their

infringing equivalents as a whole has been overruled

impliedly by the Federal Circuit’s ‘‘all-limitations’’

ee tg an wu 4

I cg A

Contents

Page

TABLE OF CITATIONS

Cases Cited:

Andrew Corp. v. Gabriel Electronics, Inc., 847 F.2d 819 (Fed.

Cir. 1988), cert. denied, us. _, 109 S. CA. Siz

(1988) re

Atlas Powder Co. v. E.1. DuPont DeNemours, 720 F.2d 1569

(Fed. Cir. 1964)... 2.5.5 cece cence reer cw ecncens 7

Casler v. United States, 9 U.S.P.Q. 2d (Cl. Ct. 1988),

aff'd. 833 F.2d 1026 (Fed. Cir. 1989).....-...-----: 6

Crown Cork & Seal Co. v. Ethyl Corp., 11 U.S.P.Q. 1557

ce. Wik, CIN ov cin a wee ha eve ns eee snes 6

Dawson Chemical Co. v. Rohm and Haas Co., 448 U.S. 176

1.) [On err mer ee Pee ee 6

Graphicana Corp. v. Baia Corp., 472 F.2d 1202 (6th Cir.

Lk. RO PUTeeNeer er 7

Graver Tank Mfg. Co. v. Linde Air Products Co., 339 U.S.

ee ese roe L-. 3, 6 7, 9

King Inst. Corp. v. Perego, 737 F. Supp. 1227 (D. Mass.

| SO PEE r ror rr rerr err rr Ey Terres a ase 5

Lemelson v. United States, 752 F.2d 1538, 224 U.S.P.Q. 526

(Fed. Cir. 1985). ......0 2c ccc cn ee cccneenneceesces 8

Contents

Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320 (Fed.

Cir. 1991), ___. U.S. ___, 60 U.S.L.W. 3827 (1992)

Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931 (Fed.

Cir. 1987), cert. denied, 485 U.S. 961 (1988) .......

Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d

1528, 3 US.P.O. 28 1321 (ed. Ce.. 961) Wc ss ss

Richardson v. Suzuki Motor Co., 868 F.2d 1226 (Fed. Cir.

1989), cert denied, 5a. 110 S. Ct. 154

bp, CO PIE Pee PE GR Bs

Sanitary Refrig. Co. v. Winters, 220 U.S. 30 (1929).....

Spectra Corp. v. Lutz, 839 F.2d 1579 (Fed. Cir. 1988)

Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978

‘(. @ Mao, . | Peererererer tener or ra te

TWM Mfg. Co., Inc. v. Dura Corp., 772 F.2d 1261 (6th Cir.

ROSY gin ova 60k OTR eee

Cle. TORU) os he 5 ae eee eee

Universal Gym Equipment Inc. v. Erwa Exercise Equipment

Limited, 827 F.2d 1542 (Fed. Cir. 1987) ...........

Valmont Indus., Inc. v. Reinke Mfg. Co., 14 U.S.P.Q. 2d

S576 CD. BD: TRE oo civ ck ieoge ee sass aukeesees

Page

i.e

Contents

Page

Statutes Cited:

Section 271(a) of the Patent Act, Title 35 ............-. 2

y BOR Rome mrs” |) Perey re ee ee 2

Rule Cited:

Federal Rule of Civil Procedure 52..............--55:. 7

Other Authorities Cited:

Eshelman, Comment, 65 Tulane Law Rev. 883 (March,

1) Pee eer eee rey 6

Markey, The Federal Circuit and Congressional Intent, 4]

American Univ. Law Rev. 577 (Spring, 1992)... ... 6

APPENDIX

Appendix A — Opinion of the Court of Appeals Shat-R-

Shield, Inc. v. Trojan, Inc. (Fed. Cir. 91-1388, 91-1389,

| On) eee rrrere ree re es la

Appendix B — Opinion of the District Court, Shat-R-Shield,

Inc. v. Trojan, Inc. (E.D. Ky., Cir. No. 86-221, April

1S. MGB). oo canx'cdubues censeweens eeeeeeeeaeee 8a

Appendix C — Judgment of District Court Dated April 15,

| | SCOT ee rer re 47a

Appendix D -- Judgment of Court of Appeals Dated May

e Seperrrererereer oer re ro 49a

Contents

Page

Appendix E — Opinion of Court of Appeals, 7rojan, Inc.,

v. Shat-R-Shield, Inc. (Fed. Cir. 88-1528, 88-1529,

my Sere, Wer een ee te Sla

No.

In The

Supreme Court of the United States

October Term, 1992

SHAT-R-SHIELD, INC.,

Petitioner,

VS.

TROJAN, INC.,

Respondent.

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

Appeals for the Federal Circuit

PETITION FORA WRIT OF CERTIORARI

The petitioner, Shat-R-Shield, Inc., respectfully petitions fora

writ of certiorari to review the judgments of the United States Court

of Appeals for the Federal Circuit.

OPINIONS BELOW

Following a bench trial before the United States District Court

forthe Eastern District of Kentucky, the court made findings of fact

and conclusions of law, which were unreported, and which are

reprinted at Appendix B hereto. The judgment declaring the

petitioner’s patent valid and enforceable but not infringed is at

Appendix C.

The Court of Appeals for the Federal Circuit affirmed the

finding of non-infringement, vacated the declaration of validity,

and affirmed the remainder of the judgment. The Circuit Court’s

opinion is unreported and is reprinted at Appendix A hereto, and the

judgment is Appendix D.

An opinion from an earlier companion case between the same

litigants was put in issue, and that unreported opinion is reprinted at

Appendix E.

STATEMENT OF JURISDICTION

The judgment of the Court of Appeals was entered May 1,

1992. The jurisdiction of the Supreme Court to review this

judgment derives from 28 U.S.C. § 1254(1).

STATUTORY PROVISIONS INVOLVED

The petitioner's claim arose under Section 27 1(a) of the Patent

Act, Title 35, that provides in pertinent part as follows:

. whoever without authority makes, uses

or sells any patented invention, within the

United States during the term of the patent

therefore infringes the patent.

STATEMENT OF THE CASE

Presented for review on certiorari is a decision on an issue

central to the protection of patents. Tne decisional rule for the

doctrine of equivalence was established in 1950 by this Court. The

circuit added gloss to that rule in decisions involving patents for

devices, that typically pose questions like if a hinge equates to a

joint. The petitioner’s case concerns a patented process, that must

be viewed as a whole, and evaluating the equivalence of

methodology, not mechanisms, presents an appropriate case for this

Court to restore its doctrine of equivalents.

The petitioner is a small manufacturing firm that owes it

existence to the patents it was granted for coated lamps and for lamp

coating methods. Petitioner has pursued the protections accorded

those patents in two infringement suits, both tried against

respondent to conclusion. Each case turned on the patent

disclosures of exposing “predetermined” portions of a lamp to

“fluidized” particles of polymeric material. Presented here is a

decision in which petitioner's proof of infringement by equivalence

was measured incorrectly, because this Court's decisions on the

doctrine of equivalence are not followed in the lower courts. Those

courts’ decisional rules try instead to telescope between viewing

the equivalents of an invention “as a whole”, or out of that context,

as elemental parts. Moreover, the appellate panel here ignored the

prior decision, between these same parties, that the respondent

“predetermines” the extent of the coating applied to its lamps.

Compare, Appendix 3aand Appendix 54a.

The doctrine of equivalence stated by this Court has been

segmeated by diverse decisions of various circuit panels. As a

result, district courts and patent owners are unclear about how to

prove whether patents are infringed by equivalents. Certiorari

should be granted to clarify the doctrine of equivalence, so that

patents are accorded protection against infringement by

equivalents as a matter of settled law.

REASONS FOR GRANTING THE WRIT

THIS COURT NEEDS TO MAKE IT CLEAR WHETHER

ITS GRAVER TANK DECISION OF EVALUATING

PATENT CLAIMS AND- THEIR INFRINGING

EQUIVALENTS AS A WHOLE HAS BEEN

OVERRULED IMPLIEDLY BY THE FEDERAL

CIRCUIT’S “ALL-LIMITATIONS” RULES.

The essential inquiry to determine infringement by

equivalence asks whether the accused method performs

substantially the function, in substantially the way claimed in the

patent, to obtain substantially the result achieved by the patented

method. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339

U.S. 605 (1950). The petitioner and every patent owner that

endeavors to present proof and argument consistent with Graver

Tank must further argue each variant of the equivalence inquiry that

the Federal Circuit has developed.

Consider the patentholder that needs the protection of its

patents, who must prove a case of infringement that covers every

theory of equivalency. The patentee must try to chart a logical

course between the macro view of equivalence as a whole, and the

micro assessment of elemental equivalence. The dilemma of

choosing one or both approaches to proving equivalence is

widened, due to the uncertainty about whether to focus the

threshold inquiry on the whole process or on the elements. The

patentee has to prove that the invention and the accused process,

when viewed as a whole, function in substantially the same way to

achieve the same result, Graver Tank, id., at 608, while also

respecting circuit precedent that each element and all limitations in

the claimed method be found in a corresponding feature of the

accused method, and be shown to serve the same overall function to

achieve the same overall result. Pennwalt Corp. v. Durand-

Wayland, Inc., 833 F.2d 931, 934-35 (Fed. Cir. 1987) cert. denied,

485 U.S. 961, 1009 (1988). This elemental view of equivalence is

nearly atest for literal infringement. The tenet of Graver Tank that

an invention and its equivalents must be viewed as a whole is often

inconsistent with the circuit's view of each element, especially

where as here the patent covers a process that must be viewed as a

whole unlike a utility patent for parts combined into a device or

product.

This uncertainty and confusion about the doctrine of

equivalence leads courts to respect both approaches. See Malta v.

Schulmerich Carillons, Inc., 952 F. 2d 1320 (Fed. Cir. 1991)

(compare J. Rich: noting the circuit “has never adopted the three

prong approach to determining equivalency of a limitation”, but the

“function/way/result” equivalency analysis with respect toaclaim

limitation appears to be a helpful way to approach the problem”,

and, J. Newman, dissent, finding “evidence not only as to his

specific claim element but also as to the invention as a whole,

leaving no theory of equivalency uncovered.”), cert. denied,

__U.S. __,60U.S.L.W. 3827 (1992); King Inst. Corp. v. Perego,

- 737 F. Supp. 1227, 1238 (D. Mass. 1990) (espousing the “as a

* whole” analysis then the “each limitation” view).

Other cases favor the approach stated by this Court in Graver

Tank. See Uniroyal Inc. v. Rudkin- Wiley Corp., 939 F.2d 1540, 1544

(Fed. Cir. 1991) (trial court considered “the operation of the

invention and the accused deflector as a whole.”), and Sun Studs,

Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 989 (Fed. Cir. 1989)

(the “claimed and accused devices must be viewed and evaluated as

a whole.”); Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1240,

(Fed. Cir. 1989), cert. denied, __U.S.__, 110 S. Ct. 154 (1989)

(prejudicial to have “isolated [a] specific claim eiement ...

removed from the. . . claimed invention in its entirety”); Andrew

Corp. v. Gabriel Elec., Inc., 847 F.2d 819, 825 (Fed. Cir. 1988), cert.

denied, __ U.S. __,109 S. Ct. 312 (1988) (affirmed applying

“doctrine of equivalents to the accused device in light of the

claimed invention viewed as a whole’”’).

In addition, various decisions make one or another approach

the threshold inquiry. See Casler v. United States, 9 U.S.P.Q. 2d

1753, 1777-78 (Cl. Ct. 1988), aff'd, 883 F.2d 1026 (Fed. Cir. 1989)

and Crown Cork & Seal Co. v. Ethyl Corp., 11 U.S.P.Q. 1577, 1588

(E.D. Va. 1989) (both assessing equivalence first under Graver

Tank standard, then finding comparison of elements unnecessary).

The Courts acknowledge the “confusion” about equivalence,

Valmont Indus., Inc. v. Reinke Mfg. Co., 14 U.S.P.Q. 2d 1374, 1380

(D. Neb. 1990), and commentators recognize that the Federal

Circuit must “feel its way” to a definitive statement of the doctrine

of equivalence. Markey, The Federal Circuit and Congressional

Intent, 41 Amer. Univ. L. Rev. 577, 579 (Spring, 1992); Eshelman,

Comment, 65 Tul. L. Rev. 883, n. 11 (Mar. 1991).

The doctrine of equivalence has prime importance to patent

attorneys and patent owners concerned about the protectable scope

of their patents. This Court is asked to clarify the confusion in the

circuit and district courts about the viability of the Graver Tank

decision and about whether the infringement by equivalents

determination views each elemental step, removed from the context

of the process as a whole. Resolving the issue will “forestall”

continued confusion, and serve purposes substantially the same as

those recognized when certiorari was granted in Dawson Chemical

Co. v. Rohm and Haas Co., 448 U.S. 176, 179 and 185 atn. 4(1980).

In petitioner’s case, the district court decided against using the

Graver Tank standards, then it read the “‘all-limitation” rule as

requiring that a literal difference between elements precludes

equivalence. This approach was affirmed as a factual issue of

——_—_—_ Tee

infringement not shown to be clearly erroneous. The district court's

rejection of Graver Tank was indicated by its refusal to accept the

following proposed finding in petitioner’s Rule 52, F.R.Civ.P.

submission.

The Trojan coating process for fluorescent

lamps contains each claimed step of the ‘332

Patent literally “or with such variations as are

consistent with its being in substance the same

thing” as the process claimed in the *332

Patent. Sanitary Refrig. Co. v. Winters, 220

U.S. 30, 42 (1929); Graver Tank and Mfg. Co.

v. Linde Air Products Co., 399 U.S. 605, 608-

09 (1950); Graphicana Corp. v. Baia Corp.,

472 F.2d 1202, 1203 (6th Cir. 1973).

Trojan’s coating process “performs

substantially the same function in substantially

the same way” to yield the same result as the

‘332 Patent. Atlas Powder Co. v. E.J. DuPont

DeNemours, 720 F.2d 1569, 1579 (Fed. Cir.

1984); TWM Mfg. Co., Inc. v. Dura Corp.,772

F.2d 1261, 1269 (6th Cir. 1983).

The district court judge supplanted Graver Tank and the

authorities cited by petitioner with circuit panel decisions that

confuse infringement by equivalence with literal variations. In

place of petitioner’s proposed finding above, the court inserted the

following.

3. A finding of infringement under the

doctrine of equivalents requires finding that

the accused method or device performs

substantially the same function in substantially

the same way to obtain the same result. Where

the function is performed in a different way,

there is no equivalence. Spectra Corp. v. Lutz,

839 F.2d 1579, 1582 (Fed.Cir. 1988). The fact

that two devices achieve substantially the same

result creates no presumption that they do so in

substantially the same way. Universal Gym

Equipment Inc. v. Erwa Exercise Equipment

Limited, 827 F.2d 1542, 1548 (Fed.Cir. 1987).

The numerous differences between the Trojan

process and the claimed process compel a

finding that the Trojan coating process and the

claimed process compel a finding that the

Trojan coating process does not coat bulbs in

substantially the same way as the claimed

process. Consequently, the Trojan method

does not infringe Claims 1, 4, and 7 under the

doctrine of equivalents. [(Appendix B, hereto,

page 41a).]

The Spectra decision echoes the diverging views on

equivalence. There, a wax and polymer composition claimed in the

patent was replaced in the accused matter with only a wax. The

panel acknowledged the “all elements” rule and noted the missing

polymer, but its decision was based on the larger issue that the

claimed and accused composition did not work in substantially the

same way. Inthe petitioner’s case, the district court relied further on

citations to Lemelson v. United States, 752 F.2d 1538, 1551, 224

U.S.P.Q. 526, 533 (Fed.Cir. 1985) and Perkin-Elmer Corp. v.

Westinghouse Elec. Corp., 822 F.2d 1528,3U.S.P.Q. 2d 1321 (Fed.

Cir. 1987). These decisions take the narrowest view of omitted or

substituted elements. In Perkin-Elmer, the panel said a substituted

coupling was not equivalent, because that element failed the

function/way/result tests: to be equivalent, the “element substituted

inthe accused device... must not... substantially change the way in

which the function . . . is performed. /d., 822 F.2d at 1533. The

petitioner and others find it confusing to reconcile this elemental

test of function/way/result with, first, Malta, supra (this circuit

“has never adopted the three prong approach to determining

equivalency ofa limitation”), and second with Graver Tank, which

finds a patent claiming a “nonalkaline earth metal” ingredient was

infringed by the substitution of an alkaline earth metal. Because the

narrow rule was applied in petitioner’s case, his patent that claimed

a step of “exposing” the lamp to coating particles in a dry

“fluidized” dispersion was different, and so nonequivalent, to

coating with particles in a liquid “fluidized” dispension. This was

the finding, despite uncontradicted evidence of numerous

references in the prior art to the equivalence of using dry or liquid

dispersions as acoating medium (Appendix B, 21a, { (a); 21a-22a,

q (b); and 32a, J (c)). “An important factor is whether persons

reasonably skilled in the art would have known of the

interchangeability of an ingredient not contained in the patent with

one that was.” Graver Tank, supra, 339 U.S. at 609.

Had the district court recognized that Graver Tank still states

the doctrine of equivalence, then its myopic evaluation of the

equivalence issue may not have undermined petitioner's proofs and

its patent. Only aclarification of the doctrine of equivalence and a

remand to consider the issue properly can do justice in petitioner’s

case.

CONCLUSION

For all these reasons, a petition for certiorari should be granted.

Respectfully submitted,

CHARLES LEE THOMASON

THOMASON & SPALDING

One Executive Drive

Red Bank, New Jersey 07701

(908) 530-9404

R.GALE RHODES, JR.

Counsel of Record

EVANS, OSBORNE & KREIZ?iAN

P.O. Box BB

Red Bank, New Jersey 07701

(201)741-9550

Attorneys for Petitioner

APPENDIX A— OPINION OF THE COURT OF APPEALS,

SHAT-R-SHIELD, INC. V. TROJAN, INC. (FED. CIR. 91-

1388, 91-1389, MAY 1, 1992)

NOTE; Pursuant to Fed. Civ. R. 47.8, this disposition is not citable

as precedent. It is a public record. The disposition will appear in

tables published periodically.

UNITED STATES COURT OFAPPEALS

FOR THE FEDERAL CIRCUIT

91-1388, -1389

SHAT-R-SHIELD, INC.,

Plaintiff-Appellant,

TROJAN, INC.,

Defendant-Cross-Appellant.

DECIDED: May 1, 1992

Before NIES, Chief Judge, NEWMAN and MICHEL Circuit

Judges.

NIES, Chief Judge.

Shat-R-Shield, Inc. (SRS) appeals from the April 15, 1991,

judgmentof the United States District Court for the Eastern District

of Kentucky, No. 86-221, holding that Trojan, Inc.’s process of

applying a plastic coating to the glass envelope and portions of the

AppendixA

end caps of fluorescent lamps does not infringe U.S. Patent No.

4,507,332 (the ‘332 patent). Trojan cross-appeals the district

court’s holding that (1) the ‘332 patent is not invalid, (2) the ‘332

patent is not unenforceable,’ and (3) Trojan is not entitled to an

award of attorney fees. Trojan also asserts that SRS’s appeal to this

court is frivolous and warrants imposition of sanction. We vacate

the district court’s judgment with respect to validity and affirm the

remainder of the judgment. Trojan’s request for sanctions for the

appeal is denied.

DISCUSSION

I. SRS’S APPEAL

SRS appeals the district court’s holding that Trojan’s process

for coating fluorescent lamps does not infringe the ‘332 patent.

Because SRS expressly waived literal infringement at oral

argument, the only question on appeal is whether the district court

erred in holding that Trojan’s process does not infringe the *332

patent under the doctrine of equivalents. SRS argues that the district

court erred by (1) misinterpreting the scope of the claims, (2) using

the accused process as a reference point for the doctrine of

equivalents analysis instead of the patent’s claims, and (3) failing to

conducta proper function/way/result analysis.

SRS contends that the district court interpreted the claims two

different ways, broadly for the validity analysis and narrowly for

the infringement analysis. However, upon application of the correct

1. Trojan alleged that SRS's mislabeling of its products and false advertising

constituted unclean hands and caused the patent to become unenforceable. Because we

affirm the judgment of noninfringement, we need not address Trojan’ s argument.

(occas iii

AppendixA

claim construction, which we interpret as a matter of law, Key Mfg.

Group v. Microdot, Inc., 925 F.2d 1444, 1448, 17 USPQ2d 1806,

1809 (Fed. Cir. 1991), we find no legal error in the district court’s

infringement analysis.

Although distinctions exist between claims 1,4, and7, each of

these claims includes the steps of ‘‘masking said pins and all of said

and caps except said predetermined portion thereof’’ and

‘exposing said glass envelope and said predetermined portion of

said end caps to a fluidized bed of powder of said polymeric

material for a second predetermined period of time to apply a

coating of said powder to said glass envelope and to said

predetermined portion of said end caps.”

The district court found that “the Trojan coating process does

not coat bulbs in substantially the same way as the claimed process”

and that the Trojan process is “fundamentally different” from the

claimed process. Significantly, the district court also noted “[t]he

concerns behind the doctrine of equivalents [are] not present inthis

case.” See London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538,

20 USPQ2d 1456, 1458-59 (Fed. Cir. 1991) (application of the

doctrine of equivalents is the exception, rather than the rule, and is

not simply the second prong of every infringement charge).

In the accused process, the lamp’s pins are held by adapters.

The lamps are lowered into a liquid solution of plastisol, a

dispersion of extremely small particles of polyvinyl chloride (PVC)

suspended in a liquid plasticizer, and then rotated. As the only

contact between the liquid solution and the lamp occurs at the

surface of the liquid, masking is not required to protect the pins.

Also, because in the Trojan process “[t]he portion of the end caps

which is coated varies from lamp to lamp, and is thus not

‘predetermined,’” masking is not required to define a

AppendixA

predetermined coated portion of the end caps. Conversely, the

masking claimed in the ‘332 patent protects the pins from exposure

to the coating powder and defines the “predetermined portion” of

the end caps which is to be coated. Accordingly, the district court

specifically found that ‘‘the adapters of Trojan do not function as

masks.”’ SRS has not proven this finding clearly erroneous. There is

no substitution of an equivalent for the masking step.

The ‘332 patent also requires “a fluidized bed of powder,” i.e.,

powder supported in air. SRS argues that Trojan’s plastisol is

equivalent to the fluidized bed of ‘332 because both contain

particles supported in a fluidizing medium; air in the 332 process,

liquid plasticizer in Trojan’s process. The district court correctly

noted that powder coating and plastisol coating involve

‘fundamentally different mechanisms.” When the lamp is removed

from the fluidized bed of powder, it is covered with individual PVC

particles. When a lamp is removed from the Trojan plastisol bath, it

is coated in a liquid plasticizer which contains PVC particles.

Moreover, the process claimed in the ‘332 patent produces a coating

comprised only of PVC powder. The fluidizing agent, air, passes out

of the system. In the Trojan process, the coating is comprised of

both the particles of PVC and the fluidizing agent, the plasticizer.

While the end result, acoated lamp, may be comparable in each

process, the Trojan process achieves this result in a different way

from the process disclosed in the *332 patent with respect to both

steps required and materials. We are unpersuaded by SRS’s

arguments that equivalency between the accused process and the

limitations of the claims was established. Therefore, the district

court’s finding that the Trojan process does not infringe the ‘332

patent under the test set out in Graver Tank & Mfg. Co. v. Linde Air

Prods. Co., 339 U.S. 605 (1950), for determining infringement

under the doctrine of equivalents, is not clearly erroneous. Spectra

AppendixA

Corp. v. Lutz, 839 F.2d 1579, 1582, 5 USPQ2d 1867, 1869 (Fed. Cir.

1988).

SRS also asserts that the district court committed procedural

‘‘errors”’ by failing to narrow the issues under the partial summary

judgment procedure of Fed. R. Civ. P. 56(d) and by allowing Trojan

to name an expert witness beyond the date set in the pretrial order.

Both of these rulings are discretionary with the trial judge and no

abuse of discretion has been shown.

II. Trojan’s Cross-Appeal

While Trojan cross-appeals from the district court’s judgment

that the ‘332 patent is not invalid, it asks only that the judgment of

validity be vacated if we uphold the judgment of noninfringement.

This is in accordance with our usual practice. Advance Transformer

Co. v. Levinson, 837 F.2d 1081, 1084, 5 USPQ2d 1600, 1603 (Fed.

Cir. 1988); Pennwait Corp. v. Durand- Wayland Inc. ,833 F.2d 931,

939, 4 USPQ2d 1737, 1743 (Fed. Cir. 1987), cert. denied, 485 U.S.

961 & 1009 (1988) (en banc); Fonar Corp. v. Johnson & Johnson,

821 F.2d 627, 634, 3 USPQ2d 1109, 1114 (Fed. Cir. 1987), cert.

denied, 484 U.S. 1027 (1988). Accordingly, the district court’s

judgment holding that the ‘332 patent has not been proven invalid is

vacated.

AppendixA

Trojan cross-appeals the district court’s refusal to award

attorney fees under Fed. R. Civ. P. 11° and requests, as well, its

attorney fees and costs on appeal under Rule 38 for frivolous

appeal. We affirm the district court’s denial of attorney fees and

deny the Rule 38 request.

Trojan argues that SRS brought suit without having reasonable

basis for believing Trojan was infringing the *332 patent. Trojan

also charges that SRS made a claim of infringement totally devoid

of merit and put forth frivolous arguments, thereby subjecting

Trojan to litigation in bad faith. The district court expressly found,

this action was brought in good faith and on a

reasonable belief that the ‘332 patent may have

been infringed. [SRS] and its attorney could

have reasonably believed that they had a basis

for filing the lawsuit and the Court finds that

their conduct met the objective standard of

reasonableness under the circumstances. The

Court does not find that there was any improper

purpose in filing this lawsuit.

Trojan would have us treat the statement by SRS’s counsel,

made shortly after the process patent issued, that “it was not

proper” to sue under the process patent at that time, as, in effect, an

admission that SRS did not know what process Trojan was then

using. Trojan argues that SRS later filed this action without any

further investigation.

2. Trojan states that it relied on 35 U.S.C. § 285 (1988) as well but makes no

argument that this is an exceptional case within the meaning of the statute. Thus, this

statute has not been shown to apply.

AppendixA

SRS attempted to find out Trojan’s process through discovery

in a separate suit for infringement of its product patent. Thwarted in

that effort, it filed this suit based upon an examination of the

product. SRS’s president, Mr. James D. Nolan, filed an affidavit to

the effect that Trojan’s lamps bore marks similar to lamps made

using the process of the ‘332 patent. Trojan asserts Nolan’s

testimony is inconsistent with later testimony.

While others might have reached a different conclusion from

the trial court on the issue of whether SRS had areasonable basis for

making the pleadings of its complaint, we are unpersuaded that the

court here abused its discretion in denying sanctions. The exercise

of discretion respecting sanctions, particularly the denial of

sanctions, is the type of discretionary decision that is virtually

unreviewable. It would be wholly inappropriate for an appellate

court to impose trial sanctions, as Trojan urges, simply because it

disagreed with a factual finding of the trial court. The trial court is

clearly in the best position to “marshall the pertinent facts and apply

the fact-dependent legal standard mandated by rule 11.”’ Cooter &

Gell v. Hartmarx Corp., 496 U.S. 384,___, L1O L. Ed. 2d 359, 379-

80 (1990). In suia, Trojan has not convinced us that the district court

abused its discretion by refusing to award attorney fees under Rule

11. Cooter & Gell, 496U.S.at___, LIOL. Ed. 2d at 381-82 (1990).

Trojan argues that SRS’s appeal is frivolous as filed and as

argued, citing what it asserts as the weakness of SRS’s arguments

and SRS’s mischaracterization of the facts. Nonetheless, we hold

that SRS’s appeal is not frivolous and does not waisrant sanctions

under Rule 38.

APPENDIX B — OPINION OF THE DISTRICT COURT,

SHAT-R-SHIELD, INC. V. TROJAN, INC. (E.D. KY., CIR.

NO. 86-221, APRIL 15, 1992)

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF KENTUCKY

LEXINGTON

Civil Action No. 86-221

SHAT-R-SHIELD, INC.,

PLAINTIFF,

TROJAN,INC.,

DEFENDANT.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

In this civil action, plaintiff Shat-R-Shield, Inc. alleges that

defendant Trojan, Inc. has infringed, and continues to infringe,

United States Patent no. 4,507,332. Defendant Trojan

counterclaimed for a declaration of non-infringement and

invalidity of the ‘332 patent. All issues pertaining to damages were

severed for later consideration pursuant to rule 42(b) of the Federal

Rules of Civil Procedure. The infringement and validity issues were

tried to the Court beginning on November 13, 1990. The following

Findings of Fact and Conclusions of Law are made pursuant to rule

52(a).

Appendix B

I. FINDINGS OF FACT

A. THE PARTIES

1. The Plaintiff Shat-R-Shield, Inc. (hereinafter “SRS”) is a

North Carolina corporation with its principal place of business at

116 Ryan Patrick Drive, Salisbury, North Carolina 28144.

2. The defendant Trojan, Inc., (hereinafter “Trojan’’) is a

Kentucky corporation with its principal place of business at Old

Owingsville Road, Mt. Sterling, Kentucky 40353.

B. THE SRS PROCESS PATENT

1. The patent in suit is United States Patent no. 4,507,332

entitled “Methods of and Apparatus for Coating the Glass Envelope

and Predetermined Portions of the End Caps of a Fluorescent

Lamp.” The patent covers a particular method of coating a

fluorescent light bulb with plastic. The original application for the

patent was filed January 17, 1977, by James D. Nolan (“Nolan”) and

Axel T. Karlsson (“Karlsson”). This first application was

abandoned and continued into Serial no. 516, 658, filed July 25,

1983, naming the same inventors. The United States Patent &

Trademark Office examined the application and issued U.S. Patent

4,507,332 (“the ‘332 patent” or “the SRS Patent”) on March 26,

1985.

2. SRS (formerly called Incoplas) owns the ‘332 Patent, and

the process described in that patent is utilized by SRS to

manufacture safety coated fluorescent lamps.

10a

Appendix B

C. RELATED LITIGATION

1. In earlier litigation between the same parties in this district,

Civil Action No. 85-143, the validity and infringement of a related

patent, No. 4,506,189 (DX-25) were in issue. The “189 patent (“the

product patent”) covered a fluorescent light tube or bulb having a

plastic coating on it to prevent glass and other materials from

dispersing if the tube breaks. There were four claims in the product

patent, of which Claim 1 was the broadest. It read as follows:

In a fluorescent lamp including a glass

envelope and an end cap at each end of said

glass envelope, the improvement comprising:

integrally formed coating means

surrounding said glass envelope and a

predetermined portion of each of saidend caps;

and

said coating means being transparent to light

emanating from said fluorescent lamp and

upon said glass envelope being broken into

glass shards said coating means for

maintaining said glass shards and said end caps

in association thereby preventing the

broadcasting of said glass shards.

2. Inthe prior litigation, Trojan contended that the claims of the

product patent were invalid under 35 U.S.C. § 103, and that Trojan’s

coated fluorescent bulbs did not infringe the claims.

3. After atrial on the merits, findings of fact and conclusions of

law were entered declaring the product patent was valid, and that

Trojan had infringed the patent. Judgment was entered enjoining

lla

Appendix B

Trojan from manufacturing or selling its coated fluorescent bulbs.

4. Appeals were taken by both parties to the Court of Appeals

for the Federal Circuit. Trojan appealed from that part of the

judgment holding the product patent valid and infringed. SRS

appealed from that part of the judgment denying an accounting for

damages, refusing to find that Trojan’s conduct was wanton and

willful and denying an award of attorneys’ fees or treble damages.

5. On appeal, the Court of Appeals reversed the District Court

and held that the product patent was invalid for obviousness under

35 U.S.C. § 103. Trojan, Inc. v, Shat- R-Shield. Inc., 13 U.S.P.Q.2d

1732 (Fed.Cir. 1989) The basis for the decision of the Court of

Appeals was that two prior art patents, the Thomas Patent No.

3,621,323 (DX-33) and the Evans Patent No. 3,602,759 (DX-34)

made the product patent claims obvious to a person of ordinary skill

in the art. Having held the product patent invalid, the Court of

Appeals did not reach the other issues on appeal.

D. THE ‘332 PATENT IN SUIT

1. The ‘332 Patent describes the process invented by Nolan and

Karlsson and each process step is set forth in the claims. All of the

‘332 Patent claims were pleaded, but for simplicity the parties and

the Court have focused on the independent Claims 1,4, and 7.

2. Claim 1' is representative of the three independent claims of

the patent in suit and reads as follows:

1. Claims 1,4, and 7 are substantially similar, therefore only the full text of Claim

1 will be set forth in this opinion. Any significant points or differences in the claims will

be noted when necessary.

Iie enscnneieeeail

12a

Appendix B

A method of coating the glass envelope of a

fluorescent lamp and a predetermined portion

of the end caps of said lamp with a coating of

polymeric material and wherein said lamp is

provided with at least one electrical connecting

pin on each end cap and wherein said end caps

are secured to said glass envelope at radial

positions with respect thereto, said method

comprising:

(a)

(b)

(Cc)

(d)

securing said end caps against radial

displacement with respect to said glass

envelope;

subsequently, preheating said

fluorescent lamp to heat said glass

envelope and at least said predetermined

portion of said end caps to a first

predetermined temperature above the

melting point of said polymeric material

for a first predetermined period of time;

subsequently, masking said pins and all

of said end caps except said

predetermined portion thereof;

exposing said glass envelope and said

predetermined portion of said end caps to

a fluidized bed of powder of said

polymeric material for a second

predetermined period of time to apply a

coating of said powder to said glass

envelope and to said predetermined

portion of said end caps;

EEE

13a

Appendix B

(e) subsequently, reheating said _ glass

envelope and at least said predetermined

portion of said end caps to a second

predetermined temperature above said

melting point of said polymeric material

for athird predetermined amount of time

to melt and fuse said powder on said glass

envelope and said predetermined portion

of said end caps to form said applied

powder into a substantially uniformly

thick coating of polymeric material; and

(f) subsequently, unmasking said pins and

said end caps and unsecuring said end

caps.

Subparagraphs (a) through (f) define the six

separate steps of the claimed method.

3. As a predicate to determining infringement and validity, the

Court first defines the meaning of the process steps claimed in the

‘332 Patent and the scope of the patent claims. In this regard, the \

Court considers the usual and accepted meaning of the words used

in the patent claims, the meaning given those terms by the inventor,

and evidence of how the terms are used by persons skilled in the art

of plastic coating.

The patented process applies a safety coating to a common

fluorescent lamp that is a glass envelope with end caps secured to

each end. Fluorescent lamps have “at least one electrical

connecting pin on each end cap” and these “end caps” are secured to

the glass envelope of the tube at “radial positions,” (Claim 1). Most

fluorescent lamps are “provided with a pair of electrical connecting

pins oneachend cap” and these “pairs of electrical connecting pins

l4a

Appendix B

are in... radial alignment with each other.” (Claims 4&7).

The end caps are at radial positions with respect to the glass

envelope and the pairs of electrical connecting pins are in radial

alignment with each other so the lamp will fit into an electrical

fixture and illuminate. The radial alignment of the end caps and

pairs of electrical connecting pins must be maintained during and

after the coating process or the pairs of electrical connecting pins

will not fit into the electrical fixture.

(a) Securing. The first step in the ‘332 Patent process is

“securing” the end caps of the fluorescent lamp to prevent their

displacement or loosening during the preheating, coating, and

reheating steps. The function of this step is, as stated in Claim 1, to

secure the “end caps against radial displacement.” Claims 4&7

express the function of securing the “electrical connecting pins

against displacement out of... radial alignment.”

When asked toexplain this step, James Nolan testified that itis

accomplished by synchronizing the drives on each end of the lamp,

and that SRS ran intotrouble when it did not synchronize the drives.

Securing is a quality control and precautionary measure made

necessary because of variations in the end caps and the way they are

placed on the lamp by the manufacturer. End caps are glued to

opposite ends of the glass envelope with an adhesive that may melt

in the heating steps, and this could cause the end caps to become

loosened with respect to the glass envelope and the pairs of

electrical connecting pins to become displaced from their radial

alignment. Different fluorescent lamp manufacturers use different

types and amounts of adhesives to attach the end caps. At the time

the invention was made, the heat sensitivity of the end caps

adhesive was more ofa problem than today because of the improved

adhesives. The result of the “securing” step is to eliminate this

15a

Appendix B

occasional problem of loose end caps and misaligned electrical

pins.

One mode of “securing” taught in the ‘332 Patent specification

is to engage the end caps or the pins of the lamp and to impose

“sufficient force to securely engage the opposed end caps.” (col. 5,

line 5). The patent describes and the patent drawings depict

springloaded elements that engage and secure the end caps and

electrical connecting pins of the lamp. (Figs. 5&6 of PX-4).

Securing maintains the original placement and alignment of

the end caps and the electrical connecting pins on the lamp during

the heating and coating steps of the process. (‘332 Patent, col. 5,

lines 23-32). Claim 7 additionally incorporates rotation of the lamp

as part of the process. This rotation is imparted via the securing

means which as stated in the specification “engage the end caps

with sufficient force such that when the elements are rotated ...

rotation is imparted to the fluorescent lamp.” (col. 5, lines 19-21).

The securing step in Claims 1, 4, and 7 holds the end caps and pins

secure so that “they will not be moved out of such radial alignment

during the subsequent steps” of the process. (col. 5, lines 30).

(b) Preheating. The next step claimed in the ‘332 Patent is

preheating the “glass envelope and at least [a] predetermined

portion of [the] end cap toa... predetermined temperature above the

melting point of the polymeric material ... fora first predetermined

period of time.”

The inventor Nolan explained that preheating promotes

adherence between the polymeric coating material and the glass

envelope and end caps. Nolan also explained that, the time and

temperature of the preheating affects the thickness of the final

coating.

16a

Appendix B

The ‘332 Patent claim language requires that the preheating

temperature be above “the melting point” of the polymeric material

used for coating. The step of preheating above the melting point

means to apply heat to a temperature that will cause particles of

polymeric coating material to soften or to become tacky or sticky so

that the particles cling to the heated article.

The inventor Nolan testified that preheating above the melting

point in his invention meant heated enough to make the polymeric

material stick to the lamp, and the Court finds that this term would

mean the same to one of ordinary skill in the art.

Dr. Philip Reucroft of the University of Kentucky College of

Engineering, an expert on Materials Sciences, agreed that persons

in the plastic coating art use the terms melting point, sintering point,

and softening point interchangeably. Reucroft corroborated this by

reference to published scientific literature, specifically the text by

Swarj Paul, and by his reference to prior art patents. The

interchangeable use of these terms appears in DX-38 the Dettling

Patent no. 3,414,409 (col. 1, lines 61-2: “temp-_rsature above the

sintering or melting point of the coating material”; and, col. 4, lines

11-15: “the sintering or melting point of the coating material ... and

the melting or softening point”), as well as in DX-35 the Al Patent

no. 3,565,664 (col. 3, line. 58) (“the sintering or melting

temperature of a thermoplastic”); see also DX46 Knapsack, GB

#759,214 at lines 12-13 and 26-27.

The Modern Plastics Encyclopedia (DX-11) lists the

properties of polymeric materials, including the polyvinyl chloride

polymeric material used by defendant Trojan, and it refers

specifically to “melting” and to the “melting” temperature of those

materials. No evidence suggests that the inventors meant the

“melting” limitation to be inclusive only of crystalline polymers.

ceeemaaea aia aaa ia

17a

Appendix B

The greater weight of the evidence shows the inventors intended

that melting point would include temperature sufficient to soften

both crystalline and amorphous polymeric materials. Thus, the

Court concludes that the term melting point as applied to polymeric

material, including PVC, is synonymous with the softening or

sintering temperature that promotes adherence of the polymeric

material to the glass envelope and the predetermined portion of the

end caps of the lamp.

The optimum time and temperature parameters to melt the

chosen polymeric coating material are predetermined. One way

that the preheating to melting function can be achieved is with a

“radiant” or “convection heater” (‘332 Patent, col. 4, line 4)

including an oven. The inventors recognized that “advantageously”

the fluorescent lamp is preheated “to atemperature within the range

from about 150° F to 400° F for a period of time in the range from

about 5 seconds to 4 minutes.” (col. 6, lines 29-33). As a result of

preheating, the softened polymeric material will stick to the glass

envelope and portions of the end caps of the fluorescent lamp during

the coating step described below.

portion of the end caps and all of the electrical connecting pins. The

word mask is usually defined as a cover. In the ‘332 Patent claims,

the mask covers the electrical connecting “pins and all of [the] end

caps except [a] predetermined portion thereof.” (Claims 1,4&7).

The preamble of Claim 1 specifies coating a “predetermined”

portion of the end caps of the lamp. In the claimed process, the

extent of the coating is predetermined by masking. Step (c), the

masking step, is carried out after-preheating the bulb. Masking of

the electrical pins is essential in powder coating utilizing a fluidized

bed. The mask is illustrated in Figure 5, Part No. 21. Step (c) calls

for “masking said pins and all of said end caps except said

18a

Appendix B

predetermined portion thereof.”

The masking step functions to establish parameters for the

extent of the coating to be applied. Specifically, the polymeric

material contacts only those “portions of the end caps not covered

by the masking element” (col. 5, line 50&68). The mask is designed

to keep polymeric material particles off of the electrical connecting

pins. The other parameter is permitting the polymeric material to

coat that portion of the end caps that was predetermined to resultina

safety coating capable of maintaining the end caps in association

with pieces of the glass envelope should the lamp be broken.

Masking can be achieved with covers that are concentric but of

smaller diameter than the end cap. (Figs. 5&7). The patent

specification suggests that the “masking” and “securing” steps can

be accomplished with a “combination” element (col. 4, lines

37&49). In these ways, masking assures that no more than the

predetermined portion of the end caps is coated and that the covered

electrical connecting pins are not coated.

(d) Coating. The preheated glass envelope and predetermined

portions of the end caps are then exposed to powder or particles of

the polymeric coating material in a fluidized bed. The polymeric

particles are “fluidized” which means that the particles are

dispersed in a fluidizing medium. The functiou is “to apply a

coating” of polymeric particles tothe glass envelope and to only the

predetermined portions of the end caps. (Claims 1,4,&7).

The only coating method described in the specification of the

patent in suit utilizes a “fluidized bed” of powdered plastic. The

only powdered plastic disclosed in the specification is Surlyn, a

product of the DuPont Chemical Company, (col. 6, lines 45-49).

The powdered Surlyn is placed in a container having a perforated

plate to support the powder. Air is blown upwardly through the

| iene

19a

Appendix B

perforated plate and through the powder so as to suspend the

powder in the air stream. (Column 4, lines 6-14). The specification

states that the construction of the fluidized bed was known to those

skilled in the art. (col. 4, lines 6-9). To obtain the coating onthe bulb,

the bulb, which has been preheated to a temperature above the

melting point of the Surlyn powder, is immersed in the bed, so that

powder particles collect on the bulb. The bulb with the adhering

powder particles is then removed from the bed and placed inan oven

where it is reheated to a temperature above the melting point of the

powder, so that arelatively smooth coating is obtained.

Defendant’s expert Dr. Tony Hancock gave the opinion that

heat makes PVC gelatinous but, to a chemical engineer, gelation ~

and melting define different conditions. Perhaps a doctor of

chemical engineering would draw distinctions between melting

and gelation based on the molecular structure of the polymeric

material. However, the inventor Nolan, whois one of ordinary skill

in the plastic coating art, is not achemist, not an engineer, and holds

no post-secondary degree. The specification that Nolan gave to his

patent application used “melting” to describe the softening he

observed when plastic is heated. The Court’s interpretation of the

claimed steps in the ‘332 Patent of preheating and reheating above

the melting point is as Nolan testified. Dr. Reucroft and Dr.

Hancock agreed that unheated PVC particles in plasticizer do not

stick together, but when sufficient heat is applied, it causes these

solid PVC particles to soften and become sticky. To a person of

ordinary skill in the art, this softening with heat would be described

as melting. See Specialty Composites v. Cabot Corp., 845 F.2d981,

985 (Fed. Cir. 1988) (PVC in plasticizer will “havea lower melting

point”). Furthermore, the function of the claimed preheating is to

melt powder so that the powder will adhere to the bulb.

In sum, the coating step in the ‘332 Patent is “exposing” the

20a

Appendix B

entire “glass envelope” and only the “predetermined portions of the

end caps” to particles of polymeric coating material which are

dispersed in a fluidizing medium. As previously set forth, the

powder collects on all of the unmasked surfaces of the bulb. The

inventors Nolan and Karlsson testified that the surface level of the

fluidized bed could be controlled to be virtually flat just like a

liquid.

(e) Reheating. The coated lamp is next reheated according to

time and temperature conditions determined in advance to be

effective to “melt and fuse” the particles of polymeric material into

a “substantially uniformly thick coating.” (Claims 1,4,&7). Again

the lamp is exposed to a temperature “above the melting point” of

the polymeric material, as indicated in the preheating step.

However, the reheating step is longer, so that the lamp is heated for

enough time to melt and to fuse the particles of polymeric material

into a coating. Claim 7 adds the aspect of rotating the lamp during

the reheating step.

(f) Unmasking and Unsecuring. The last step entails

removing the masks that covered the pins and removing the coated

lamp from the securing apparatus. Step (f) of Claim 1 calls for

“unmasking said pins and said end caps and unsecuring said end

caps.” These steps are the reverse of steps (c) and (a) respectively.

E. VALIDITY

1. STANDARD

Trojan alleges that the claims of the patent in suit are invalid

under 35 U.S.C. § 103. The deterraination of validity requires an

analysis of the prior art, the differences between the teachings of the

prior art and the claims of the patent in suit, the level of skill inthe art

2la

Appendix B

at the time the invention was made, and whether or not the claims of

the patent in suit would have been obvious to the person of ordinary

skill in the art at the time the invention was made. Graham v. John

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

2. ART CITED BY EXAMINER

The Court first will review the scope and content of the prior art

cited by the Patent Examiner, as listed on the first page of the ‘332

Patent.

(a) The Shank reference, U.S. Patent no. 3,937,854, (DX-29)

teaches applying particles of polymeric material to glass items,

particularly bottles. Shank suggests a preheating step (col. 3, line 27

and col. 6, line 35), exposing glass articles to particles of polymeric

material, including Surlyn (col. 4, line 34), in a liquid (col. 4, line

45) ofadry (col. 4, line 52) dispersion by using fluidized bed (col. 4,

line 67) or spray (col. 6, line 31) methods. Shank suggests to apply a

coating over “substantially the entire ... article” (col. 7, line 49) or

“only toa limited area” of it (col. 7, Lines 55-6) and a post-heating

step (col. 4, line 63). The Shank coating “resists” but does not

prevent “scattering of glass fragments” if the bottle “is broken”

(col. 4, line 8). The Shank patents do not havea “securing” step akin

to that in the ‘332 Patent; the bottles are carried on “chucks” (col. 5,

line 63) which are not described or depicted.

(b) The Campagna Patent no. 3,856,498 (DX-32) discloses

methods of applying a “shatterproof” coating of polymeric material

to a glass vessel (col.1, line 66). It suggests “a preheat cycle, a

particulate coating application” and a post-heating or “fusing” step

(col. 4, lines 20-2). The preheated items can be “dipped ... into a

fluidized bed” (col. 5, line 35). However, Campagna recognizes

that “solvent systems” like a plastisol dip or “spray methods” can

22a

Appendix B

provide equivalent coating results (col. 5, lines 37-8). Campagna

grips the bottles at the neck between a fixed and a spring-loaded

element, (Fig. 4, part 34), or alternatively, grips the neck between

flat and notched elements (Fig. 12, part 92). These holders cover

part of the bottle and so, “portions of the neck are not coated” (col. 7,

lines 39-40).

apparatus that will hold the article to be coated and also “mask those

areas on which a coating is not desired” (col. 1, lines 51-2). The

combination holding and masking apparatus is a hollow “manifold”

(col. 2, line 51) through which pressurized air is blown thus

preventing the coating “material from coming into contact with the

heated surface of the object” being coated. (col. 2, line 45-6).

(d) The Koerper Patent no. 3,989,859 (DX-27) discloses the

preheating of an article (col. 2, line 33) that can be cylindrical (col.

3, line 26 & Fig. 3), and post-heating it (col. 5, line 19) after coating.

Koerper exposes the article to particles of polymeric material (col.

5, line 3-4 and col. 6, line 68) using a spray (col. 5, line 8) or a

fluidized bed (col. 6, line 59) application. Koerper coats the entire

tubular article while it turns on rotating rollers, which are cooled

“below the melting point” of the polymeric coating material (col. 5,

line 31-42).

(e) The Sentementes Patent no. 3,959,525 (DX-28), the

Audesse Patent no. 3,902,946 (DX-31) andthe Van Laar Patent no.

2,868,620 (DX-45) disclose methods of safety-coating photoflash

lamps with polymeric materials. During the coating step,

Sentementes simply clamps the bottom of the lamp, Audesse

similarly uses “chucks” (col. 5, line 14&16) and Van Laar holds the

bulbs in a “stand.” Sentementes uses a fluidized bed of polymeric

particles with preheating and postheating steps (col. 4, line 35-46).

———

23a

Appendix B

Van Laar dips the bulbs into a “dispersion of thermo-plastic ...

particles ... in a liquid” (col. 2, line 35-6) including polyviny!

chloride particles in a liquid dispersion (col. 4, line 17&39). These

particulate coatings differ from Audesse who uses a thermoplastic

sleeve that is vacuum shrunk onto the bulb and heated.

(f) The Boyce Patent no. 3,018,187 (DX-42) teaches the

application of a moisture-impervious coating to the glass envelope

of a fluorescent lamp. Dip and spray appiications are suggested

(col. 5, line 19-21). The entire glass envelope receives the coating,

and no disclosure or no suggestion is made about securing or

masking the base caps. Boyce does suggest removing “any excess

coating” (col. 4, line 13) manually with an “air knife” (col. 4, line

17).

The references cited by the Examiner involve some aspects of

holding, preheating, masking, coating with particles in fluid

dispersions, and post-heating. No one of these patents, however,

discloses all of the process steps claimed in the ‘332 Patent. These

references do not suggest combining their features one with another

in any way that would suggest that the combined steps of the

patented process would be obvious to a person skilled in the art of

coating. No one of these patents suggests accomplishing the same

function, in the same way, to obtain the result claimed in the ‘332

Patent. After reviewing these references and other patents in the

search fields listed, the Patent Examiner allowed a patent to issue on

the process claimed in the ‘332 Patent.

3. THE PATENTS PRESENTED BY TROJAN

Next, the Court examines the prior art offered at trial by Trojan

in support of its claim of invalidity.

24a

Appendix B

(a) Trojan relied on the pioneer patents on fluidized bed

coating, which are the Gemmer (DX-44) and Dettling patents (DX-

38,40&43). The Dettling ‘245 reference states, in pertinent part:

As is known, articles can be coated by the use

of fluidized beds. The coating material in

powder form is placed in a fluidized state and

the article to be coated is heated to a

temperature equal to or above the softening or

melting point of the coating material, is then

placed in the dense phase of the bed, moved to

and fro, and removed when the desired coating

thickness is attained, ... (Col. 1, lines 12-20)

The use of such beds has provided superior

coatings as well as-new processes which avoid

certain difficulties of old methods. For

example, it is possible to coat articles of

irregular and complex shapes very quickly and

simply and yet attain uniformity in spite of

shape differentials. Also, solvents and similar

materials needed in prior methods are

obviated. (Col. 1, lines 36-42)

The Dettling patent states among its

objectives:

... the provision of a means and a method for

holding articles in fluidized beds so that the

article to be coated is coated only at desired

areas. A still further objective is the provision

of a holder and a method of holding which

cia

25a

Appendix B

leads to auniform, well defined boundary line

between the area to be coated and the area to

remain uncoated. These and other objects will

appear hereinafter.

These objectives are accomplished by the

provision of holders which are clamps having a

covering area corresponding in size and shape

to the area of the article that is to remain

uncoated... (Col. 1, lines 60-71).

*x* *

Pressure is exerted through the clamps to hold

the article... (Col. 2, lines 25-26)

(b) The Dettling ‘245 reference goes on to describe a method

for coating atube, withreferenceto FIG. 1, as follows:

The tube 4 is preheated to the desired

temperature. When the tube is at the desired

temperature, the operator picks it up with the

cold holder and carries it to the fluidized bed

and immerses it in the dense phase of the bed

for such time as is necessary, usually about § to

10 seconds. With the article held by the holder,

a plurality of dippings can be made, and the

coated article may then be post heated, if

required for complete coating fusion. (Col. 2,

line 67-Col. 2, line 3)

Claim 8 of the Dettling ‘245 reference, reprinted as DX-59,

reads as follows:

26a

Appendix B

A method for applying a coating to a limited

portion of the surface of an article comprising

the steps of heating the article toa temperature

above the melting point of a pulverulent

coating material, engaging said article witha

holding device which covers and encloses all

portions of the article on which a coating is not

desired, immersing the article in the

pulverulent coating material so that the coating

material in proximity to the article surface

sinters and fuses into a complete coating, and

during the immersion maintaining the holding

device at a temperature below the sintering

temperature of the coating material.

Dettling U.S. Patent No. 3,419,409 (DX-38) discloses various

examples of fluidized bed powder coating processes in which an

article such as a pipe is preheated, exposed to a fluidized bed of

powdered polymeric material, and postheated. Gemmer Patent no.

2,844,489 (DX-44) is described asa coating for metal articles (col.

1, line 30), and the eleven examples are given (cols. 7 thru 10) for

coating various metal articles. In Dettling Patent no. 2,974,060,

(DX-43) the four coating examples given (cols. 4&5) are metal

articles. The Knapsack British reference (DX-46) is an equally

limited disclosure, and is cumulative of Gemmer.

The Dettling and Glemmer patents are cited in the Sharretts

(DX-37) and in the Sentementes (DX-28 at col. 2, line 30) patents,

which the Examiner did review and cite against the ‘332 Patent.

Thus, Trojan did not prove that the Examiner failed to consider the

Gemmer and Dettling patents when he searched the art pertinent to

the ‘332 Patent. Furthermore, Dettling and Gemmer are limited to

fluidized bed coating and thus, these are more narrow disclosures

———————————

2/a

Appendix B

than the art cited against the ‘332 Patent by the Examiner, which

teaches several forms of dip coating and spray methods. Also,

Dettling and Gemmer deal almost exclusively with coating metal

objects.

31, 1971, is a product patent for a lamp protected with a shrunk

plastic “sheath” (col. 1, line 62). The Evans reference recites that it

relates to electric lamps and “has particular reference to a

fluorescent lamp that is provided with a jacket or sheath which

comprises an integral part of the lamp.” (Col. 1, lines 5-6). One of

the problems it describes is that “the envelopes of fluorescent lamps

are fabricated from relatively thin walled glass tubing and are,

therefore, quite fragile. The lamps are, thus, mechanically weak,

and are easily and frequently broken during handling, shipping,

etc.” (Col. 1, lines 24-27). These problems were solved “by

enclosing all or part of the lamp ina sleeve that is fabricated from

shrinkable light transmitting plastic. Preferably the sleeve is made

of heat shrinkable plastic that is initially of such dimensions and so

oriented that it will fit loosely overthe lamp and, upon being heated,

will shrink and form a smooth tight-fitting sheet that conforrns to

the shape of the part of the lamp which it encloses.” (Col. 1, lines 57-

59).

The Evans patent further provides:

Tests have shown that fluorescent lamps

provided with such shrink fit plastic sheaths

can frequently be dropped from heights of 3 to

4 feet without breaking. Moreover, when the

bulb does break the sheath remains intact and

preserves the integrity of the lamp. The danger

that the force of the resulting implosion of the

28a

Appendix B

envelope may scatter glass fragments, lamp

parts, dust, etc. is accordingly eliminated.”

(Col. 6, lines 8-14).

The Evans patent contemplates that the sheath extends over the

end caps and is described as follows:

The lamp is inserted into the tubing and

centered so that about 1-1/2 inches of the

plastic sleeve extends beyond each of the base

faces. The lamp is then supported by the base

pins or base faces so that the plastic sleeve is

not held or restrained in any way and is thus

free to moveas it shrinks to fit the lamp.

The lamp is then uniformly heated to a

temperature of approximately 400° F. by

blowing heated air on the lamp while it is

rotated. This can be achieved by exposing the

lamp to radiant heat or by placing it in an oven.

When the plastic sleeve has shrunk into tight-

fitting engagement with the lamp, the lamp is

allowed to cool, during which time contact

with the hot plastic is avoided to prevent

scratching, etc. After the lamp is cooled, the

excess plastic at each end of the lamp is

trimmed witha sharp cutting tool.

(D X 60.)

In Trojan. Inc. v. Shat-R-Shield. Inc., 13 U.S.P.Q.2d

1732,1733-1734 (Fed.Cir. 1989), the Court of Appeals for the

Federal Circuit held that the Evans patent is directed to a protective

plastic coating ona fluorescent lamp, and that the Evans patent was

—_——— i

29a

Appendix B

pertinent prior art as to U.S. Patent No. 4,506,189, the product

patent. The Court of Appeals further held that Evans “teaches a

protective coating on a fluorescent lamp by covering the tube and

end caps with adherent polymeric material which prevents

disbursement of glass shards.”

Coating a glass lamp witha thermoplastic sleeve is disclosed in

the Audesse Pateni no. 3,902,946, (DX-31) which the Examiner

cited in the ‘332 Patent. The prior search fields for the Evans and

Audesse patents overlap in class 156/86 which is listed on both of

these references. Evans contains no teaching about securing the end

caps or the electrical connecting pins against radial displacement.

Evans and Audesse do not preheat the article to be coated. Evans

does not suggest masking the pins or any portions of the end caps. In

fact, Evans requires that the “excess plastic ... be trimmed by a

suitable cutting tool after the plastic has cooled.” (col. 3, line 20-22.

This trimming step is eliminated by the masking approach in the

‘332 Patent. Additionally, the Evans patent does not disclose the

fluidized bed coating process.

(d) The Quirk Patent no. 3,102,409 (DX-41) is a process patent

for applying a moisture-impervious coating of silicone to only the

glass envelope of a fluorescent lamp. The Quirk patent describes

“rolling” the lamps through a solution, thereby covering the entire

external service of the glass envelope, while limiting the depth of

immersion to prevent coating of electrical contacts. (DX-41, at

col.2, line 69 - col. 3, line 6).

Quirk is cumulative of the Boyce Patent no. 3,018,187, (DX-

42) which the examiner cited against the ‘332 Patent. In fact, the

Boyce reference, which discloses both dip and spray applications,

is broader than Quirk, which only dips the tube. No securing step

and no preheating step is suggested in Quirk and no masks are used.

30a

Appendix B

The lamp rolls through a silicone emulsion with its ends resting on

guide rails. (col. 3, line 3).

(e) The Al Patent no. 3,565,664 (DX-35) is another prior art

reference from the same class of patent, as the Shank and

Sentementes references. Al applies a coating to metal articles to

prevent corrosion. Al masks the threads of pipe by wrapping cork or

asbestos around the parts. No securing step is necessary or

suggested. The shatterproofing function of the ‘332 Patent is not

suggested inthe Al patent.

(f) The Beene Patent no. 3,535,136 (DX-36) discloses a

“tubular mask” to cover the threads on a pipe (col. 2, line 20). The

mask is tapered to form a definite raised edge to the coating, so it

will mate with acoated joint to be threaded on the pipe.

(g) Van Laar patent No. 2,868,670 (DX-45), issued January 13,

1959, discloses providing a coating on a flash bulb by immersing

the glass envelope ina dispersion of polyvinyl chloride (PVC) resin

particles, and subsequently heating it to solidify the coating.

(h) Thomas Patent No. 3,621,323, issued November 16, 1971,

relates to acoated incandescent electric light bulb. The coating is an

elastomeric coating extending over the glass envelope and over the

upper portion of the base of the bulb. The patent contains a specific

teaching that the coating should extend at least one-eighth of an

inch (1/8") over the base. Upon shattering of the glass, the coating

has sufficient strength to remain attached to the metallic base. The

resultant “pod” contains the glass fragments inside the pod.

The Thomas patent suggests a dip process coating that is

cumulative of the Van Laar Patent no. 2,868,670 (DX-45) which the

Examiner reviewed before he allowed the ‘332 Patent. Van Laar

‘

3la

Appendix B

U.S. Patent No. 2,868,670, discloses, at col. 2, lines 32-39,

providing a plastic coating on a flash bulb by immersing the glass

envelope in a dispersion of PVC particles in a liquid and

subsequently heating to solidify the polymeric iuaterial (DX45).

The prior art patents offered by Trojan are cumulative of, and in

many ways are more limited disclosures than, the patents reviewed

by the Patent Office when it issued the ‘332 Patent.

4. DIFFERENCES BETWEEN THE PRIOR ART AND

THE PATENTIN SUIT

(a) None of the prior art references suggest a securing step

having the function, form, and result of that found in the ‘332

Patent. The early coating process patents hold the workpiece in

tongs or simple apparatus. Even the glass and lamp references

suggest only unsophisticated holders, including chucks or clamps.

The fluorescent lamp references of Boyce, Quirk, and Evans

suggest no securing step or apparatus at all, and none can be clearly

envisioned from those disclosures. Nowhere does the prior art deal

with or suggest the problem of displacement or misalignment of end

caps sealed to the tubular article that is to be heated and then coated.

(b) The combination of process steps in the ’332 Patent is not

disclosed in any single prior art patent. None of the patents offered

by Trojan teach or suggest a method of coating the glass envelope

and predetermined portions of the end caps with a uniformly thick

coating of polymeric material that will contain glass shards and

maintain the end caps if the lamp is broken.

The Boyce, Quirk, and Evans references do not teach masking,

rather they suggest that unwanted coating should be manually cut

off as the final step. No reference suggests masking to achieve the

32a

Appendix B

function of ensuring the predetermined extent of the coating using a

moveable engageable.mask and no reference suggests a method of

masking that provides a coating, determined in advance, sufficient

to contain both the glass shards and the end caps if the lamp shatters.

the fluidized bed or in a liquid dispersion are found in the prior art.

So too is exposing only desired portions of the article to be coated

using methods of partial or total immersion. Primarily, the prior art

suggests methods for coating metal or other thick articles that retain

heat, unlike the thin glass wall ofa fluorescent lamp.

Dip coating with fluidized particles is not analogous to the

preformed sleeve that is heat shrunk onto an article. With the sleeve,

there is no preheating of the lamp. This also makes securing

unnecessary. Rather, the sleeve may be preheated before it is placed

around the lamp. See Audesse Patent no. 3,902,946, (DX-31) col. 4,

line 20-23 and Evans Patent no. 3,602,759, col. 2, line 75-col. 3, line

(d) The safety coating of polymeric material applied in the ‘332

Patent is substantially different and not suggested by the moisture-

impervious coating applied such as in the Boyce Patent no.

3,018,187 (DX-42) that the Examiner cited. In these references,

there is no preheating to promote adherence of the coating material,

and only the glass is coated with the silicone emulsion. Exposing

the glass envelope anda predetermined portion of each endcapona

fluorescent lamp is not disclosed and is not suggested by the prior

art.

(e) After considering the scope and content of the prior art, the

Court finds that the differences between the prior art and the

invention claimed in the ‘332 Patent would not have been obvious

33a

Appendix B

to one of ordinary skillin the art. No prior art reference suggests that

references be combined into the process disclosed in the ‘332

Patent.

(f) Trojan failed to present clear and convincing proof that the

process in the ‘332 Patent was known or used by others before

Nolan and Karlsson invented it. The Robroy deposition, referred to

by Trojan, concerns a process that was kept in confidence.

(g) Trojan failed to present clear and convincing evidence to

overcome the presumption of validity for the ‘332 Patent. The

United States Patent Office issued the ‘332 Patent after their

examination of the prior art, from which it was decided that the

process described by Nolan and Karlsson was a new, useful and

non-obvious invention.

(h) In addition, there are secondary indicia of non-

obviousness. The process in the ‘332 Patent is used successfully by

SRS and the product enjoys customer acceptance, which is directly

attributable to the ‘332 Patent process. The invention satisfied a

longfelt need, and the process succeeded where others had failed.

F. THE TROJAN PROCESS AND INFRINGEMENT

CLAIM

1. Trojan, at its manufacturing plant in Mt. Sterling, applies

polyvinyl chloride (PVC), a polymeric material, as a coating to the

glass envelope and a portion of each end cap of fluorescent lamps,

using a process that plaintiff has alleged infringes the ‘332 Patent.

2. The method used by Trojan to provide its coated fluorescent

light bulbs does not use a powder, does not use a fluidized bed, and

does not use Surlyn. Trojan’s method was independently developed

34a

Appendix B

in its facility in Meadsville, Pennsylvania in 1983 ard 1984, and

was put into commercial operation in Mt. Sterling, Kentucky in the

summer of 1984. Trojan’s method utilizes a liquid called a plastisol.

The plastisol is a dispersion of extremely small particles of

polyvinyl chloride suspended in a liquid plasticizer. Lawrence

Rice, who developed the Trojan process, testified that liquid

coating was selected by Trojan due to its simplicity and the desire to

avoid patent problems.

Joseph Satterlee, a former Trojan employee, acknowledged

that the overall function and result of the two processes were the

same. Satterlee agreed that the Trojan process “steps provide the

fluorescent lamp with a safety coating of polymeric material that

extended over the entire outer surface of the glass envelope and

portions of the end caps, [Trojan] determined in advance.” PX-17,

page 17, lines 1-8 (hereinafter denoted by page:line, e.g., 17:1-8).

While both Trojan and SRS apply a plastic coating that functions to

maintain the glass envelope and the end caps in association if the

fluorescent lamp is broken, the methods of applying the coating are

not equivalent.

3. In the Trojan process, the ends of each fluorescent tube are

placed manually into a supporting engagement with adapters. The

tube is supported at its opposite ends in a manner analogous to the

way the bulb is supported in use in fluorescent light fixtures. The

tube is rotated by a mechanism which drives the adaptor at one end

only and, while continuously rotating, the tube is placed in an oven

for a short period of time, then withdrawn from the oven, and then

lowered into touch contact with a liquid bath of the above-

mentioned plastisol. After a coating of the liquid plastisol has built

up on the exterior of the tube, the tube is raised to remove it from

contact with the bath, and, still rotating, is placed in an oven where

the plastisol is transformed into a transparent, tough gel.

35a

Appendix B

4. The Trojan process does not involve coating a

“predetermined portion” of the end caps, as set forth inthe preamble

of Claim 1. The portion of the end caps which is coated varies from

lamp to lamp, and thus is not “predetermined.”

5. Trojan’s heating of the lamps before and after coating does

not cause the end caps to loosen, and therefore no securing of the

end caps is necessary. In the Trojan process, the tube is driven for

rotation at only one end. There is no use of synchronized drives as in

the SRS process. Trojan’s method does not involve “securing” the

end caps as set forth in Step (a).

6. The Trojan coating process and the coating process claimed

in the patent in suit involve fundamentally different mechanisms.

Trojan’s process involves transforming the liquid plastisol into a

tough, transparent gel with limited application of heat, without

melting; the patent involves heating the powder to its melting point

to melt it into a liquid, followed by cooling to return it to a solid

state.

7. The Trojan process does not involve preheating the

fluorescent lamp to a temperature “above the melting point of said

polymeric material” as set forth in step (b). Trojan’s polymeric

material is unplasticized PVC in a liquid plastisol, which does not

have a melting point. Trojan’s preheating does not perform the same

function nor any analogous function of the SRS method. The liquid

plastisol will coat the bulb regardless of whetherit is preheated.

8. The Trojan process does not include masking as recited in

step (c). In the Trojan process, coating of the pins cannot occur

because they are kept above the level of the plastisol, and masking is

not needed. The adapters used by Trojan do not function as masks.

Furthermore, the step of placing the ends of the bulb in the adapters

in the Trojan process occurs before heating of the lamp, and

36a

Appendix B

accordingly the requirement of step (c) that the masking occur

“subsequently” to the “preheating” would not be met by Trojan’s

placement of the bulb ends in the adapters, even if the adapters did

function as masks.

9. The Trojan method does not meet the limitations of step (d)

because Trojan does not use a fluidized bed of powder, and Trojan

does not apply a coating of powder.

10. Trojan does reheat its bulbs after coating, but the reheating

does not melt and fuse a powder, and does not form an applied

powder into a coating. The function of Trojan’s reheating istocurea

liquid plastisol, not to melt and fuse a powder. The result of the

reheating is a solid, clear gel, whereas the result of the claimed step

(e) is a fused powder which does not become clear and solid until

after it is cooled.

11. The Trojan method does aot involve unmasking the pins

and end caps as set forth in step (f), nor does it involve “unsecuring”

the end caps as set forth in step (f), because the end caps are not

masked or “secured” in the manner claimed.

Il. CONCLUSIONS OF LAW

A. JURISDICTION AND VENUE

The Court has subject matter jurisdiction pursuant to 28 U.3.C.

§§ 1338, 2201, and 2202 and personal jurisdiction over both parties.

Venue is proper in this district.

B. VALIDITY

1. A patent is presumed to be valid, and the patent statute, 35

37a

Appendix B

U.S.C. § 282, places the burden of proving facts establishing

invalidity on the person asserting the claim. The patent challenger

must establish those facts by clear and convincing evidence, andthe

ultimate burden of persuasion never shifts from the patent

challenger. Jones v. Hardy, 727 F.2d 1524,1528 (Fed.Cir. 1984).

2. In challenging validity under 35 U.S.C. § 103, the

challenger’s burden is to show that “the difference between the

subject matter sought to be patented and the prior art are such that

the subject matter as a whole would have been obvious at the time

the invention was made toa person having ordinary skill inthe art to

which said subject matter pertains.” 35 U.S.C. § 103. In applying

the test, the Court must determine: (a) the scope and content of the

prior art; (b) the differences between the prior art and the patented

design; and (c) the level of ordinary skill in the art at the time the

invention was made. Graham v. John Deere Co., 383 U.S. 1, 17

(1966). Secondary considerations such as commercial success are

also relevant to the issue of validity. Graham v. John Deere Co., 383

U.S. at; 17-18, 86 S.Ct. at 693. For commercia! success to have

relevance, a nexus must be established between the merits of the

claimed invention and the commercial success. Cable Electric

Products, Inc. v. Genmark, Inc., 770 F.2d 1015,1027 (Fed.Cir.

1985).

3. Trojan failed to prove clearly and convincingly that any

reason exists to declare the ‘332 Patent invalid. Jones.v. Hardy, 727

F. 2d 1524, 1528 (Fed. Cir. 1984). Trojan failed to overcome the

statutory presumption of validity accorded the ‘332 Patent. 35

U.S.C. § 282; Carella v. Starlight Archery, 804 F. 2d 135, 138 (Fed.

Cir. 1984), aff’g597 F. Supp. 613 (E.D. Mich. 1984).

4. Trojan failed to prove clearly and convincingly that some

single prior art reference disclosed each and every element of the

patented invention. Carella, 804 F.2d at 135; RCA Co. v. Applied

38a

Appendix B

Digital Data Systems, Inc., 730 F. 2d 1440 (Fed. Cir. 1984); Panduit

Corp. v. Dennison Mfg., 774 F. 2d 1082, 1101 (Fed. Cir. 1985).

Trojan failed to come forward with clear and convincing evidence

that the invention in the ‘332 Patent was known or used publicly by

others before Nolan and Karlsson filed their application.

5. Trojan failed to present clear and convincing evidence

sufficient to overcome the presumption of validity accorded patents

issued after examination and evaluation by an Examiner of the

United States Patent Office. Structural Rubber v. Park Rubber, 749

F. 2d707 (Fed. Cir. 1984); Cordis Corp. v. Medtronic, Inc., 780 F.2d

991, 996 (Fed. Cir. 1985). The validity of a process patent is

unimpaired by whether the product is also patentable. /n re

Armstrong, 75 F. 2d 826, 832 (C.C. P.A. 1935) cert. denied, 296

U.S.576(1935);Application of Naylor, 369 F.2d 765, 768 (3rd. Cir.

1972).

6. Trojan failed to prove clearly and convincingly that the

subject matter of the invention in the ‘332 Patent would have been

obvious to one skilled in the art at the time the invention was made.

Carella, 804 F.2d at 135; Alco Std. Corp. v. TVA, 808 F. 2d 1490,

1498 (Fed. Cir. 1986) aff’g 597 F. Supp. 133 (W.D. Tenn. 1984).

The Court rejects the conclusion of defendant’s expert King, who

“envisioned” that unstated aspects were inherent in the prior art

disclosures. King’s “retrospective view-of inherence is not a

substitute for some teaching or suggestion” of the claimed

combination ina prior art reference. Jn re Newell, 891 F.2d 899, 901

(Fed. Cir. 1989); SmithKline Diagnostics Inc. v. Helena Labs.

Corp., 859 F.2d 878, 887 (Fed. Cir. 1988). In addition, the “mere

fact that the prior art could be modified” to resemble the ‘332 Patent

process “would not have made the modification obvious unless the

prior art suggested the desirability of the modification.” Jn re Mills,

916F. 2d 680, 682 (Fed. Ciz. 1990).

39a

Appendix B

7. Trojan failed to meet its burden of proof on its allegation that

the Patent Examiner failed to consider pertinent prior art. Solder

Removal v. USITC, 582 F. 2d 628, 633 n. 9 (C.C.P.A. 1978):

Lindemann Maschinenfabrik v. Am. Hoist & Derrick, 730 F. 2d

1452, 1460 (Fed. Cir. 1984). None of the references offered by

Trojan are more pertinent than the prior art considered by the

Examiner. The patents and prior art submitted by Trojan were

essentially cumulative of the referenced art. Rosemount, Inc. v.

Beckman Instruments, 727 F. 2d 1540, 1546 (Fed. Cir. 1984).

8. Evidence of commercial success that resulted from an

invention is one of the secondary considerations that indicates the

invention was not obvious to one skilled in the pertinent art.

Graham v. Deere, 383 U.S. 1, 17 (1986). The testimony of Mr.

Nolan that sales of fluorescent lamps coated using the patented

process had grown from zero to over $4 million is relevant evidence

of the commercial success of the product. Johns-Manville Corp. v.

Guardian Indus., 586 F. Supp. 1034 (E.D. Mich. 1983), aff’d, 770

F.2d 178 (Fed. Cir. 1985); Jack Winter, Inc. v. Koratron, Inc., 375

F.Supp. i (N.D. Cal. 1974).

The product produced by this patent satisfied a long-felt need

for such a product, and others had tried to produce such a product

and failed. See Carella, 804 F.2d at 135; Graham v. Jones, 383 U.S.

1,17 (1966). Moreover, the Court has recognized its obligation to

construe the claims of the ‘332 Patent so as to sustain their validity

as far as possible. Carman Indus., Inc. v. Wahl, 724 F. 2d 932, 937 n.

5 (Fed. Cir. 1983).

40a

Appendix B

C. INFRINGEMENT

1. The inquiry before this Court is whether the defendant’s

process infringes upon the process set forth in the ‘332 patent. To

resolve this inquiry, first the “patented invention as indicated by the

language of the claims must first be defined (a question of law), and

then the trier must judge whether the claims cover the accused

device (a question of fact).” Envirotech Co. v. Al George Ind., 730F.

2d 753, 758 (Fed. Cir. 1984). In addressing the first step, the patent

claims were “construed in light of the specification.” U.S. v. Adams,

383 U.S. 39,49 (1966), where necessary to ascertain “the scope and

meaning of the language employed in the claims,” Autogiro Co. of

America v. U.S., 384 F. 24391, 397 (Ct. Cl. 1967) (subs. hist. om.) as

one skilled in the art would construe them. SmithKline Diagnostics

Inc. v. Helena Labs. Corp., 859 F.2d 878, 882 (Fed. Cir. 1988).

2. A finding of infringement requires that each claim limitation

or its equivalent be present in the accused method. Lemelson v.

United States, 752 F.2d 1538, 1551 (Fed. Cir. 1985). In order fora

court to find infringement, the plaintiff must prove, by a

preponderance of the evidence, the presence of every element or its

substantial equivalent in the accused device. To be a “substantial

equivalent” the element substituted in the accused device for the

element set forth in the claim must not be such as would

substantially change the way in which the function of the claimed

invention is performed. Pennwalt Corp. v. Durand- Wayland, Inc.,

833 F.2d 931, 935 (Fed.Cir. 1987); Lemelson v. United States, 752

F.2d 1538, 1551, 224 U.S.P.Q. 526, 533 (Fed.Cir. 1985); Perkin-

Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 3

U.S.P.Q.2d 1321 (Fed.Cir. 1987). In light of the differences

between the Trojan process and that of Claims 1,4, and7, the Trojan

process does not literally infringe those claims.

4la

Appendix B

3. A finding of infringement under the doctrine of equivalents

requires finding that the accused method or device performs

substantially the same function in substantially the same way to

obtain the same result. Where the function is performed in a

different way, there is no equivalence. Spectra Corp. v. Lutz, 839

F.2d 1579, 1582 (Fed.Cir. 1988). The fact that two devices achieve

substantially the same result creates no presumption that they do so

in substantially the same way. Universal Gym Equipment Inc. v.

Erwa Exercise Equipment Limited, 827 F.2d 1542, 1548 (Fed.Cir.

1987). The numerous differences between the Trojan process and

the claimed process compel a finding that the Trojan coating

process does not coat bulbs in substantially the same way as the

claimed process. Consequently, the Trojan method does not

infringe Claims 1,4, and 7 under the doctrine of equivalents.

4. The burden is on the patentee to prove that the range of

equivalence which it seeks would not ensnare the prior art. Wilson

Sporting Goods Co. v. David Geoffrey and Associates, 904 F.2d

677, 684-685 (Fed.Cir. 1990); Stewart-Warner Corp. v. City of

Pontiac, 767 F.2d 1572, 226 U.S.P.Q. 676, 682 (Fed.Cir. 1985). The

prosecution history of a patent is also to be considered in

interpreting the claims. McGill v. John Zink Co., 736 F.2d 666, 221

U.S.P.Q. 944 (Fed.Cir. 1984).

5. The concerns behind the doctrine of equivalents is not

present in this case. The doctrine was developed to prevent an

infringer from stealing the benefit of an invention. Trojan did not

seek to misappropriate the work of Nolan and Karlsson. Rather,

Trojan expended great time and effort to develop its own method

and “invent around” the adversely held patent. Texas Instruments v.

U.S. International Trade Commission, 805 F.2d 1558, 1572 (Fed.

Cir. 1986).

42a

Appendix B

6. Inthe present case, the claims cannot be construed to read on

the accused method, either literally or under the doctrine of

equivalents. The process obtains essentially the same result,

however, they do not perform in substantially the same way. The

Trojan process is a liquid coating process which is fundamentally

different than the powder coating process claimed in the ‘332

patent.

D. UNENFORCEABILITY

1. A patent is unenforceable where the patentee has acted

inequitably. Keystone Driller v. General Excavator Co., 290 U.S.

240 (1933). Inequitable conduct may involve failure to disclose

material information or submission of false information. Proof of

inequitable conduct requires threshold showings of materiality and

intent. J.P. Stevens & Co., v. Lex Tex, Ltd., 747 F.2d 1553,1559-60

(Fed. Cir. 1984).

2. Prior to the establishment of the Federal Circuit, various

courts utilized different standards of materiality, the strictest being

the objective “but for” standard under which proof of materiality

requires a showing that the patent would not have issued but for the

inequitable conduct. See Plastic Container Corp. v. Continental

Plastics, 607 F.2d 885, 889 (10th Cir. 1979). The Federal Circuit has

held the standard of 37 C.F.R. § 1.56(a), whether there is a

substantial likelihood that a reasonable Examiner would consider

the information important, to be the appropriate starting point. J.P.

Stevens, 747 F.2d at 1559; American Hoist & Derrick Co. v. Sowa &

Sons, 725 F.2d 1350, 1362 (Fed.Cir. 1984), cert. denied, 469 US.

821 (1984).

3. Once the thresholds of materiality and intent are established,

the Court must balance them and determine as a matter of law

43a

Appendix B

whether the patent should be held unenforceable due to inequitable

conduct. J.P. Stevens & Co., 747 F.2d at 1560. Questions of

materiality and intent are interrelated, sothat alesser showing of the

materiality of the withheld information may suffice when an

intentional scheme to defraud is established. Whereas a greater

showing of the materiality of withheld information would

necessarily create an inference that its non-disclosure was

wrongful. American Hoist, 725 F.2d at 1363 (citing Digital

Equipment Corp. v. Diamond, 653 F.2d 701,716 (1st Cir. 1981 )).

4. The relationship of patent attorneys to the Patent Office

requires the highest degree of candor and good faith. “The Office

must rely upon their [patent attorneys] integrity and deal withthem

in a spirit of trust and confidence.” Kingsland v. Dorsey, 338 U.S.

318,319(1949),

5S. The duty of candor and good faith is summarized as follows,

at37C.F.R. § 1.56(a):

A duty of candor and good faith toward the

Patent and Trademark Office rests on the

inventor, on each attorney or agent who

prepares or prosecutes the application and

every other individual who is substantially

involved in the preparation of prosecution of

the application and who is associated with the

inventor, with the assignee or with anyone to

whom there is an obligation to assign the

application. All such individuals have a duty to

disclose to the Office information they are

aware of which is material to the examination

of the application. Such information is material

where there is a substantial likelihood that a

Appendix B

reasonable examiner would consider it

important in deciding whether to allow the

application to issue as a patent. The duty is

commensurate with the degree of involvement

in the preparation or prosecution of the

application.

6. Once a Court finds a violation of the duty of candor

amounting to inequitable conduct, every claim of the patent — not

just the particular claims to which the inequitable conduct is

directly connected — is unenforceable. J.P. Stevens & Co. v. Lex

Tex, Ltd., 747 F.2d 1553, 1561 (Fed.Cir. 1984).

7. Trojan contends that SRS’s conduct, including false

marking, advertising, bad faith in bringing and maintaining this

action, and Nolan’s failure to disclose the prior art of which he was

aware, constitutes inequitable conduct rendering the patent

unenforceable.

8. Trojan has failed to prove its defense of unenforceability.

Trojan presented some evidence that SRS continued using the

patent number for its product patent until all appeals of the litigation

concerning that product patent were exhausted. After that, some

brochures with the product patent number were distributed

inadvertently. There was no proof of wrongful intent. Sears,

Roebuck & Co. v. Sears, 744 F. Supp. 1297, 1308 (D. Del. 1990)

(“bad intent is the essence of the defense” of unclean hands).

Moreover, the conduct concerned the product patent, and not

the process “patent in suit.” Kolene Co. v. Motor City Metal

Treating, Inc., 440 F.2d77, 84 (6th Cir. 1971). The conduct was not

“directly related to the matter in litigation.” Keystone Driller Co. v.

General Elec. Co., 290 U.S. 240, 245 (1933), cited in Kearnev &

45a

Appendix B

Trucker Corp. v. Cincinnati Milacron Inc., 562 F. 2d 365,371 (6th

Cir. 1977).

9. Additionally, there is absolutely no evidence that material

information was intentionally withheld with intent to deceive the

Patent Office. The Court finds there was no breach of the duty of

candor or any inequitable or wrongful conduct that would affect the

enforceability of the ‘332 Patent.

E. ATTORNEYS’ FEES

1. Under rule 11 of the Federal Rules of Civil Procedure, the

signature of an attorney ona pleading, motion, or other paper that, to

the best of the signer’s knowledge, information, and belief, formed

after reasonable inquiry, certifies the pleading is well grounded in

fact and is warranted by existing lawora good faith argument for the

extension, modification, or reversal of existing law, and thatit is not

interposed for any improper purpose, such as to harass or to cause

unnecessary delay or needless increase in the cost of litigation. Ifa

pleading, motion, or other paper is signed in violation of this rule,

the Court, upon motion orupon its own initiative, shall impose upon

the party who signed it, arepresented party, or both, an appropriate

Sanction, which may include an order to pay to the other party or

parties the amount of the reasonable ex penses incurred because of

the filing of the pleading, motion, or other paper, including a

reasonable attorney’s fee.

“Under Rule 11, sanctions may be imposed if a reasonable

inquiry would have disclosed that the pleading, motion or other

paper was not well-grounded in fact.” Mann v. G & G

Manufacturing, Inc., 900 F.2d 953, 959 (6th Cir.), cert. denied, 111

S.Ct. 287 (1990). The test forthe imposition of rule 11 sanctions is

whether the individual attorney’s conduct was reasonable under the

46a

Appendix B

circumstances. In other words, the attorney’s conduct must “meet

an objective standard of reasonableness under the circumstances.”

Id. at 958.

2. Under 28 U.S.C. § 1927, any attorney who multiplies the

proceedings in any case unreasonably and vexatiously may be

required by the Court to satisfy personally the excess costs,

expenses, and attorney’s fees reasonably incurred because of such

conduct.

3. Under 35 U.S.C. § 285, the Court, in exceptional patent

cases, may award reasonable attorney’s fees to the prevailing party.

4. Trojan requests that this Court impose sanctions against

SRS, pursuant to the above listed provisions. This request is

primarily based upon the fact that this action was brought during the

course of discovery inthe earlier litigation.

5. The Court finds that this action was brought in good faith and

on areasonable belief that the ‘332 patent may have been infringed.

SRS and its attorney could have reasonably believed that they hada

basis for filing the lawsuit and the Court finds that their conduct met

the objective standard of reasonableness under the circumstances.

The Court does not find that there was any improper purpose in

filing this lawsuit. Therefore, the Court declines to award attorney

fees to Trojan in this case.

This 15th day of April, 1991.

s/ Karl S. Forester

KARLS. FORESTER, JUDGE

47a

APPENDIX C — JUDGMENT OF DISTRICT COURT

DATED APRIL 15, 1991

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF KENTUCKY

LEXINGTON

Civil Action No. 86-221

SHAT-R-SHIELD, INC.,

PLAINTIFF,

VS.

TROJAN, INC.

DEFENDANT.

JUDGMENT

ITIS HEREBY ORDERED ANDADJUDGED as follows:

1. U.S. Patent No. 4,507,332 is valid.

2. U.S. Patent No. 4,507,332 is not infringed by the defendant.

Trojan, Inc.

3.U.S. Patent No. 4,507,332 is enforceable.

4. Judgment is rendered in favor of the defendant on the

Complaint, and the Complaint is dismissed with prejudice.

48a

Appendix C

5. Judgment is rendered in favor of the plaintiff, Shat-R-

Shield, Inc., on the counterclaim.

6. Each party shall bear its own costs and attorney fees.

This 15thApril, 1991.

s/ KARLS. FORESTER

KARL'S. FORESTER, JUDGE

Notice is hereby given to the entry of this order or judgement

on4-15-91 ©

Leslie G. Whitmer, Clerk

By: Sharon Vicolyk, D.C.

49a

APPENDIX D — JUDGEMENT OF COURT OF APPEALS

DATED MAY 1, 1992

UNI7 ED STATES COURT OFAPPEALS

FOR THE FEDERAL CIRCUIT

91-1388, -1389

SHAT-R-SHIELD, INC.,

Piaintiff-Appellant,

VS.

TROJAN, INC.,

Defendant-Cross-Appellant.

JUDGMENT

Eastern District-of Kentucky

Filed

May 1, 1992

AT LEXINGTON

FRANCIS X. GINDHART

CLERK, U.S. DISTRICT COURT

ON APPEAL from the UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF KENTUCKY

In CASE NO(S). No. 86-221

50a

Appendix D

This CAUSE having been heard and considered, itis

ORDERED and ADJUDGED:

AFFIRMED AND VACATED

ENTERED BY ORDER OF THE COURT

DATED May 1, 1992

Francis X. Gindhart, Clerk

Sla

APPENDIX E — OPINION OF COURT OF APPEALS,

TROJAN, INC., V. SHAT-R-SHIELD, INC. (FED. CIR. 88-

1528, 88-1529, OCTOBER 31, 1989)

UNITED STATES COURT OFAPPEALS

FOR THE FEDERAL CIRCUIT

88-1528, -1529

TROJAN, INC..

Plaintiff-Appellant,

VS.

SHAT-R-SHIELD, INC.,

Defendant/Cross-Appellant.

Note: This opinion has not been prepared for publication in a

printed volume because it does not add significantly to the body of

law and is not of widespread legal interest. Itisa public record. It is

not citable as precedent. The decision will appear in tables

published periodically.

DECIDED: October 31, 1989

Before NIES, NEWMAN, and MICHEL. Circuit Judges.

NIES, CIRCUITJUDGE.

Trojan, Inc., appeals from the final judgment of the United

States District Court for the Eastern District of Kentucky, Trojan,

Inc. v. Shat-R-Shield, Inc., 703 F. Supp.609, 8 USPQ2d 1391 (E.D.

Ky. 1988), holding the four claims of United States Patent No.

52a

Appendix E

4.506.189 (‘189) in suit valid, infringed and enforceable, and

enjoining Trojan from further infringement but awarding no

damages. Shat-R-Shield, Inc., (SRS) cross-appeals, requesting a

remand for an accounting for damages. Because we reverse the

court’s holding on validity, we need not reach the other issues

raised in the appeal or cross-appeal.

OPINION

The general subject matter of the invention is a fluorescent

lamp on whicha plastic coating is placed to retain shards of glassif

the tube is broken. Applying the proper law to undisputed facts, we

reverse the court’s holding that the ‘189 patent claims were not

proved invalid for obviousness within the meaning of 35 U.S.C

§ 103 (1982). The district court erred in determining obviousness

simply over the Van Laar patent. When considered with the

teachings of the Evans and Thomas patents, the opposite

conclusion is compelled. Panduit Corp. v. Dennison Mfg., Co.,810

F.2d 1561, 1565, 1 USPQ2d 1593, 1595 (Fed. Cir. 1987).

Upon finding that Trojan’s expert witness was not persuasive

and credible,* the court held that “[tJhis finding of noncredibility

alone would prohibit Trojan from meeting its burden of proof on its

invalidity claim.” Trojan, Inc., 703 F. Supp. at 617, 8 USPQ2d at

1396. That ruling is erroneous as a matter of law. Opinion

testimony on the legal conclusion of obviousness is neither

necessary to prove one’s case nor controlling. Avia Group Int'l, Inc.

v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1564, 7 USPQ2d 1548, 1554

(Fed. Cir. 1988). Rejection of such testimony here did not relieve

the district court of its obligation to determine whether each of the

inventions claimed, i.e., each claim, would have been obvious to

*We have reviewed this testimony and fail to understand the basis for the dis trict

court’ s castigation of the expert personally. Simply rejecting the evidence is sufficient.

—EOOo

53a

Appendix E

one of ordinary skill in the art from all of the teachings presented in

the prior art before it.

The Evans patent, United States Patent No. 3,602,759, is

directed toidentical subject matter, i.e.,a protective plastic coating

on a fluorescent lamp. The court first rejected Evans on the

(grounds that “the claims of the [Evan’s] invention do not

demonstrate that the [coating] process is done ‘in situ.’” Trojan

Inc., 703 F. Supp. at 617, 8 USPQ2dat 1396. Contrary to the court’s

understanding, a prior art patent must be considered for what it

teaches, not merely for what it claims. See, e.g., W.L. Gore &Assoc.,

Inc. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed.

Cir. 1983), cert. denied, 469 U.S. 851 (1984). Also, it does not

follow that because the sleeve of plastic disclosed in the Evans’

patent is formed separately, ipso facto, no coating is “formed in

situ.” Indeed, the sleeve forms a coating with the application of heat

once the sleeve is in place on the lamp. Finally, the district court

failed to note that claim 1 of the ‘189 patent has no “‘in situ”

limitation.

The court also erroneously discounted the Evans patent

because it “was not practical_and could not be used successfully

commercially.” Jd. The relevance of a patent as prior art is not

affected by whether the claimed invention was ever

commercialized. /n re Blake, 352 F.2d 309, 312, 147 USPQ 289,

291 (CCPA 1965) (patent statute does not require commercial use

of subject matter of a prior-art disclosure for that disclosure to

qualify as a reference); cf. In re Deters, 515 F.2d 1152. | 155, 185

USPQ 644, 647, (CCPA 1975) (thatareferenceisa “paper patent” is

irrelevant to its value as evidence of level of skillinthe art).

The court also erroneously ruled “that the Evans patent would

not have issued if the [PTO] examiner had looked at the Thomas

S4a

Appendix E

patent.” Trojan, Inc., 703 F. Supp. at 618, 8 USPQ2d at 1397.

Notwithstanding that gratuitous assessment of invalidity by the

court, the Evans patent remains pertinent prior art.

The court discounted Thomas, U.S. Patent No. 3,621,323, as

cumulative to Van Laar. Jd. We do not agree. Thomas discloses a

coating onan incandescent bulb, which, as Trojan point out, “filled

the prior art gap between a one-time flashbulb [Van Laar] and a

continuously illuminated lamp.” Also, in the claimed invention, the

coating on the lamp must surround the glass envelope and a

“predetermined portion” of the end caps which prevents

interference with an electrical connection. Thomas contains that

teaching.

We conclude that the inventions of claims 1-4 of the ‘189

patent would have been obvious from the combined teachings of the

references to one of ordinary skill in the art. See Carella v. Starlight

Archery, 804 F.2d 135, 140,231 USPQ 644 (Fed. Cir. 1986). Evans

teaches a protective coating on a fluorescent lamp by covering the

tube and end caps with adherent polymeric material which prevents

disbursements of glass shards. The only limitations which even

arguably are not disclosed by the Evans patent alone are: coating a

“predetermined portion” of the end caps, recited in all the claims;

and “in situ”, recited in claims 2-4. The district court gave

“predetermined portion” the meaning of “determined in advance”

and the phrase “formed in situ” the meaning of unformed before

placement on the lamp. Given those meanings, teachings of both

limitations can be found in Thomas; at least“‘in situ” in Van Laar;

and Evans supplies the suggestion for use of a plastic protective

coating on either a single or double ended fluorescent lamp for the

same purpose. By rejecting Evans and Thomas as refrences, the

district court had an improper foundation upon which to base its

decision. Cf. In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231

USPQ 375, 380 (Fed. Cir. 1986)(“Non-obviousness cannot be

established by attacking references individually”).

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.