# Petition for Writ of Certiorari — Cryo-Trans, Inc. v. General American Transportation Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386013_0076%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1997 - **Citation:** 520 U.S. 1155 ## Text Supreme Court, U.S. FILED 961098 JAN 7 1997 No. POrIce Or THE CLERK IN THE Supreme Court of the Gnited States OCTOBER TERM, 1996 CRYO-TRANS, INC., Petitioner, GENERAL AMERICAN TRANSPORTATION CORPORATION, Respondent. On Petition for a Writ of Certiorari to the United States Court of Appeals for the Federal Circuit PETITION FOR A WRIT OF CERTIORARI Of Counsel: DONALD R. DUNNER (Counsel of Record) JAMES P. DONOHUE HERBERT H. MINTZ BRUCE A. KASER HOWARD A. KWON MILLER, NASH, WIENER, FINNEGAN, HENDERSON, FARABOW, ‘HAGER & CARLSEN LLP GARRETT & DUNNER, LLP 4440 Two Union Streeet 1300 I Street, N.W. Seattle, Washington 98101-2352 Washington, D.C. 20005-3315 (206) 622-8484 (202) 408-4000 Counsel for Petitioner January, 1997 Cryo-Trans, Incorporated PRESS OF BYRON S. ADAMS # WASHINGTON, D.C. # 1-800-347-8208 i QUESTION PRESENTED In Markman v. Westview Instruments, this Court recognized that the construction of a patent claim presents a mixed question of fact and law for the trial judge. Is the U.S. Court of Appeals for the Federal Circuit correct in its practice of according no deference to the underlying fact findings upon which the trial judge’s claim construction in a patent infringement action is based? ii PARTIES TO THE PROCEEDING The parties to the proceedings in the United States Court of Appeals for the Federal Circuit were Petitioner Cryo-Trans, Inc. and Respondent General American Transportation Corporation. Cryo-Trans, Inc. does not have any parent companies or subsidiaries. ili TABLE OF CONTENTS Page wh py By ck iy y ore i PARTIES TO THE PROCEEDING ............. ii eye Cys 6 44 5 | > Se Vv ee ee 1 SE ee ee ee 2 FEDERAL RULE INVOLVED ...............-.- 2 STATEMENT OF THE CASE ...............-; 3 1. The Cryo-Trans Invention .............. 4 2. GATC’s Accused Railcar .............. 7 3. District Court Proceedings ............. 8 4. The Federal Circuit’s Decision .......... 11 REASONS FOR GRANTING THE PETITION ..... 14 I. The Petition Raises an Important Issue ..... 14 II. The Federal Circuit’s Practice Is in Conflict with Supreme Court Precedent ..........-. 17 Ee a 23 APPENDIX: Opinions of the United States Court of Appeals for the Federal Circuit (Aug. 14, 1996). ........... la Memorandum Opinion and Order of the United States District Court (July 14, 1995) ...........- 18a : iV Memorandum Opinion and Order of the United States District Court Supplementing Findings and Judgment CO. Re BE ae bie ae ee ee 67a Order of the United States Court of Appeals Denying Petition for Rehearing and Suggestion for Rehearing A ee CE... FO Se icv eter eae wae 77a Vv TABLE OF AUTHORITIES Page Cases: Anderson v. City of Bessemer City, 470 U.S. 564 CRU L x aia: 3 > 0p ee ce moe eee 19 Baumgartner v. United States, 322 U.S. 665 (1944) ... 20 Cooter & Gell v. Hartmarx Corp., 496 U.S. 384 SR nk ee Ok eo eee 18, 21 Elf Atochem North Am. Inc. v. Libbey-Owens Ford Co., 37 U.S.P.Q. 2d 1065 (D. Del: 1995) .......+-4-- 16 Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553 (Fed. Cir. 1995), cert. denied, 116 S. Ct. 2554 COND ei ae dh eee ee ee eee ees 15 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 72 26 O57 Ce, Ea, BR) ik 6 ne tea cess 15 First Options of Chicago, Inc. v. Kaplan, 115 S. Ct. 1920 CON 5h hers His ae 18, 20, 22 Gasperini v. Center for Humanities, Inc., 116 S. Ct. et CE 6 6 a RK KOE eS ees 17, 19 Hoechst Celanese Corp. v. BP Chem. Ltd., 78 F.3d 1575 (Fed. Cir.), cert. denied, 65 U.S.L.W. 3265 (U.S. SO sib erence ok oe ee 15 Huang v. Autoshade, Inc., CV 92 6487 RJK (C.D. Cal. Sis. 39: GH os ewe ee ae eee ee 14 vi (Table of Authorities continued) Page Loral Fairchild Corp. v. Victor Co. of Japan, 906 F. Supp. Tee GE Es EE vk Cea ee ee ee 14 Lucas-Aerospace, Ltd. v. Unison Indus., L.P., 890 F. ae. SEP CED. EOE. ISGOY «0 0.0 eb ease 0 ke 4 16 Markman v. Westview Instruments, Inc., 517 U.S. _, 116 eR 0). | ee ree passim Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (in banc), aff'd, 116 S. Ct. 1384 CTSPOP ccc tcc cue eweeraseeker cna passim Metautllics Sys. Co. v. Cooper, No. 96-1290 (Fed. Cir. IOOV. 15, ISFG) nc cere scncvteopes tees 17 Miller v. Fenton, 474 U.S. 104 (1985) .......... 17, 21 Moll v. Northern Telecom, Inc., No. 94-5451 (E.D. Pa. BZ; FOGG) on on 0 66 6 ie bee Ces 14 Ornelas v. United States, 116 S. Ct. 1657 (1996) . . 18, 19, 22 Salve Regina College v. Russell, 499 U.S. 225 (1991). . 18, 22 United Carbon Co. v. Binney Co., 317 U.S. 228 (1942) .. 19 Wainwright v. Sykes, 433 U.S. 72 (1977)... ...... 17 Weiner v. NEC Elec., Inc., No. 96-1052 (Fed. Cir. Dec. O.TGGR) nick ck wih ec cbstttmawia heen 17 Vil (Table of Authorities continued) Page Winans v. Denmead, 56 U.S. (15 How.) 330 (1853) . . 21, 22 Statutes and Rules: : Li Cokl By”: | narra Reka Sea ee 2 28. U.S.C. $8 1292(c), 1295 2... cee ecw cee 3 i ie a a | rer eee a 2, 4, 9, Ze Miscellanecus: Steven Alan Childress & Martha S. Davis, Federal Standards of Review (2d ed. 1992) .....-.-.-+-- 20 S att AR ae ait ae AE Acti nei tb. Cab tis ae what Blasidecins Sk IN THE Supreme Court of the Gnited States OCTOBER TERM, 1996 No. 96- CRYO-TRANS, INC., Petitioner, GENERAL AMERICAN TRANSPORTATION CORPORATION, Respondent. On Petition for a Writ of Certiorari to the United States Court of Appeals for the Federal Circuit PETITION FOR A WRIT OF CERTIORARI Petitioner Cryo-Trans, Inc. respectfully petitions this Court to grant a writ of certiorari to review the judgment of the United States Court of Appeals for the Federal Circuit. OPINIONS BELOW The opinions of the court of appeals, Appendix (“App.”) la-17a, are reported at 93 F.3d 766. The opinions of the district court, App. 18a-76a, are reported at 893 F. Supp. 774 ~ and 897 F. Supp. 1121. 2 JURISDICTION The judgment of the court of appeals was entered on August 14, 1996. App. la. A timely petition for rehearing and a suggestion for rehearing en banc was filed by Cryo- Trans on August 27, 1996, and was denied on October 10, 1996. App. 77a. The jurisdiction of this Court is invoked under 28 U.S.C. § 1254(1). FEDERAL RULE INVOLVED Rule 52 of the Federal Rules of Civil Procedure provides in part: (a) Effect. In all actions tried upon the facts without a jury or with an advisory jury, the court shall find specially and state separately its conclusions of law thereon, and judgment shali be entered pursuant to Rule 58; and in granting or refusing interlocutory injunctions the court shall similarly set forth the findings of fact and conclusions of law which constitute the grounds of its action. Requests for findings are not necessary for purposes of review. Findings of fact, whether based on oral or documentary evidence, shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses. The findings of a master, to the extent that the court adopts them, shail be considered as the findings of the court. It will be sufficient if the findings of fact and conclusions of law are stated orally and recorded in open court following the close of the evidence or appear in an opinion or memorandum of decision filed by the court. Findings of fact and conclusions of law are necessary on decisions of motions under Rule 12 or 3 56 or any other motion except as provided in subdivision (c) of this rule. STATEMENT OF THE CASE Last Term, this Court ruled that the meaning of terms used in a patent claim is exclusively for a judge, not a jury, to decide. Markman v. Westview Instruments, Inc., 517 US. __, 116 S. Ct. 1384 (1996). The Court thus resolved an issue of crucial importance to patent litigants by removing any uncertainty as to the respective roles of the trial judge and jury in patent infringement actions. But the Court left open the equally pivotal and unsettled question regarding the deference owed by the U.S. Court of Appeals for the Federal Circuit in reviewing the trial judge’s claim construction on appeal.’ This case squarely raises that fundamental issue. Importantly, the Markman Court indicated that patent claim construction presents a mixed question of law and fact. Under Rule 52(a) of the Federal Rules of Civil Procedure and Court precedent, such mixed questions presume some deference to underlying trial court findings of fact. The Federal Circuit, however, treats claim construction as a pure question of law, routinely according no deference to any district court determinations bound up in the claim interpretation analysis. That position and the absence of any clear direction from this Court on the proper standard of appellate review regarding claim construction has produced 1 The Federal Circuit possesses exclusive jurisdiction over appeals from judgments in civil actions for patent infringement. 28 U.S.C. §§ 1292(c), 1295. The proper appropriation of judicial duties as between the appellate court and trial judge in the critical claim construction area is unique to patent litigation, and since the Federal Circuit has exclusive jurisdiction over appeals in patent cases, issues relating to patent claim construction cannot be the subject of inter-circuit conflict. | 4 palpable concern at the district court level, where patent infringement trials are administered throughout the nation. This case focuses on the respective juridical responsibilities of the trial court and the court of appeals under the Markman regime. Whereas the trial judge here made various fact determinations in interpreting the claims to cover the accused infringing equipment, a divided panel of the Federal Circuit exceeded its appellate authority by rejecting the trial judge’s claim construction without affording any apparent consideration to the trial judge’s view of the evidence giving rise to that construction. Rather than accord proper deference to those findings as prescribed by Fed. R. Civ. P. 52(a), the majority independently reached a different interpretation that is inconsistent with the factual record developed at trial. This case represents one of the latest in a line of post- Markman cases in which the Federal Circuit has routinely usurped the role of the district courts in patent infringement disputes through misapplication of the de novo standard of review. As a result, the court of appeals has for all practical purposes supplanted the district courts as the court of first instance on claim interpretation, typically a central issue in patent litigation. Without correction and clarification by this Court, the Federal Circuit’s misapplication of its de novo authority will continue to dilute the fundamental role of the district courts in patent infringement actions. 1. The Cryo-Trans Invention A substantial portion of frozen food products shipped throughout the United States is carried via the nation’s rail Fe ee SE TUNES eh ee eee NEN! eS NS Ok 6 ae 5 system. (A1604).’ In the 1970’s, the frozen-food industry grew increasingly concerned about the continued ability of the aging fleet of mechanically-refrigerated railcars to transport frozen food products over long distances. By the 1980’s, the decline in the supply and reliability of mechanical refrigerator cars posed a significant threat to the industry’s ability to meet growing demand. (A1424, 1608, 2561-72). To improve and preserve their long-haul transportation capabilities, frozen food producers and shippers initiated development of a “cryogenic” railcar, refrigerated by liquid carbon dioxide (“CO,"), as an alternative to existing mechanical refrigerator cars. (A1522, 4482-95). Between 1980-85, an industry-sponsored cryogenic railcar research project, under the direction of Mr. Ralph P. Hill, the eventual inventor of the Cryo-Trans patent in suit, produced several experimental railcars using various methods of cryogenic refrigeration. (A1428-29, 2561-63, 2576-89). The earliest prototypes utilized an overhead manifold at the ceiling of the car to spray liquid CO, directly on top of the load of frozen food products to form a covering of CO, snow. (A1429-30, 4655). Direct contact of solid CO, with the cargo, however, caused over-freezing of the products near the top of the load and did not allow the entire load to remain consistently frozen during the entire trip. (A1431). In 1983, the project team designed a new prototype railcar that employed an overhead bunker to store CO, snow above the cargo load with openings, or vents, to allow cold CO, gas sublimating from the snow to drop down and cool the 7 “(A ” citations are to the record Appendix filed in the court of appeals. en 6 load.? (A4659, 4664-65). Burlington Northern Railroad, a project team participant, produced 75 railcars incorporating the new bunker design. (A1453, 4566-67). But while the Burlington Northern bunker design avoided the problems associated with direct-contact refrigeration, it left “hot spots” resulting in the undesirable thawing of frozen products. (A1449-50, 3914). Due to the hot-spot problem, the Burlington Northern cars were never accepted in the marketplace, the cars ultimately were taken out of service, and the industry research project terminated in March 1985. (A1449-50, 1453, 3914). Mr. Hili, however, did not give up. During the summer of 1985, he conceived of a cryogenic railcar design that effectively eliminated the hot-spot problems experienced by the Burlington Northern cars. (A1454, 3914-15, 3936-42). Mr. Hill’s cryogenic refrigeration system included the use of vents situated around the ceiling bunker, as well as corrugated side and end walls, providing an even flow of sublimated CO, gas to the cargo area and keeping the entire load frozen. (A1465-66, 3936-37). Mr. Marvin H. Weiner, who became intimately familiar with the problems plaguing earlier cryogenic railcar prototypes as the owner of a storage facility receiving long-haul frozen-food shipments, saw in Mr. Hill’s system the prospect of a commercially viable cryogenic railcar. (A1610, 1611-13). Mr. Weiner established Cryo- Trans, which ultimately developed and commercialized the invention. He assisted Mr. Hill in building a prototype of the cryogenic car, designated the “CRYX 1000,” which debuted in March 1986. (A1312). The CRYX 1000 was tested and refined, and it proved to be the first truly successful cryogenic railcar. 3 CO, gas is 52% heavier than air. App. 28a. 7 The Cryo-Trans patent on Mr. Hill’s cryogenic refrigeration system (U.S. Patent 4,704,876, referred to as “the ’876 patent”) was issued by the U.S. Patent and Trademark Office in 1987. (A2548-57). The °876 patent discloses Mr. Hill’s concept of a railcar refrigerated by CO, snow held in a compartment that runs along the length of the car above the cargo area and contains openings, or vents, adjacent the side and end walls of the car to allow sublimation and proper distribution of CO, gas around the frozen food load. (A1465-66, 2554-56). The effective flow of the cold CO, gas around the load keeps the frozen food refrigerated, even on long cross-country journeys. The CRYX 1000 was so well accepted in the marketplace that by 1989-90, Cryo-Trans had produced a total of 222 cars under lease with frozen food producers and shippers. (A5439). The trial court found that “food processors who leased Cryo-Trans’ cars were able to ship their product at a transportation cost that was considerably lower than the cost of using the older, mechanical cars.” App. 47a-48a. The court concluded that the Hill railcar design was an innovative, patentable improvement, id. at 56a-58a, and the Federal Circuit affirmed the validity of the ’876 patent, id. at 12a. 2. GATC’s Accused Railcar In late 1990, respondent General American Transportation Corporation (“GATC”) manufactured a prototype cryogenic railcar, known as the “GARX 68000,” by copying the Cryo-Trans CRYX 1000. (A1690-95, 1754- 56, 3246). The prototype was subsequently modified to make GATC’s production car, styled the “Arcticar.” The modification consisted of simply blocking the openings closest to the end walls of the car. (A1879-80). GATC argued that with this change, the Arcticar did not have openings “adjacent” the end walls as specified in the °876 patent Lean 8 claims, even though the nearly 68-foot railcar still had openings located less than three feet from the end walls that provided the same cooling effect. GATC took orders for the Arcticar railcar beginning in early 1991. 3. District Court Proceedings On March 1, 1991, GATC filed an action in the United States District Court for the Northern District of Illinois seeking a declaratory judgment that the °876 patent is invalid, unenforceable, and not infringed by GATC’s Arcticar railcar. (A89-90). | Cryo-Trans counterclaimed against GATC, alleging that GATC infringed and actively induced infringement of claims 1, 2, and 3 of the ’876 patent. (A102- 104). Prior to trial, GATC stipulated that the GARX 68000 literally infringed the °876 patent. (A1314). In addition, GATC stipulated that the “only significant change made to the GARX 68000 in April 1981 relative to claims 1, 2, and 3 of the Hill ’876 patent was the elimination of two ceiling bunker vents on each of the end walls of the railcar. (A1315). Thus, the issue of infringement turned on whether GATC’s modified railcar, the Arcticar, still met the claimed requirement of having “a plurality of openings” located “adjacent each of [the] side walls and end walls for permitting the flow of sublimated carbon dioxide gas.” (A2556 {emphasis added]). GATC did not dispute at trial that the Arcticar contained each and every element of claim 1 of the ’876 patent except that it contended there were no bunker vents “adjacent” to the end walls. Specifically, GATC argued that because the vents * The number of ceiling vents so removed represented only four out of a total of 53. (A4478). thee Stl SLB OMA ai aE iB REAR AER ay 5B OPE AD ALN ERS LEE 4, PI eR GA Tee Re ee ee tee 9 nearest to the end wall of the Arcticar are nearly three feet away, they are not “adjacent” to the end walls within the meaning of the claim. The parties presented their cases to the district court in a ten-day bench trial, during which the court received testimony and documentary evidence relating to the issue of claim construction. App. 19a. Relying on the Federal Circuit’s decision in Marknan v. Westview Instruments, Inc. , 52 F.3d 967 (Fed. Cir. 1995) (in banc), aff'd, 116 S. Ct. 1384 (1996), the trial court recognized that the “construction of a patent claim is a matter of law which can be determined by a review of all relevant evidence including the patent's prosecution history and extrinsic evidence regarding the true meaning of the language employed in the patent.” App. 52a. Accordingly, in its Memorandum Opinion and Order under Fed. R. Civ. P. 52(a), the trial court made abundantly clear that its express “Findings of Fact and Conclusions of Law .. . are based upon consideration of all the admissible evidence as well as this Court’s own assessment of the credibility of the trial witnesses.” Id. at 20a. The court relied on various sources of extrinsic evidence to provide a factual basis for interpreting “adjacent” as used in the patent claims and for determining whether the Arcticar has openings “adjacent” the end walls. Significantly, in addition to numerous technical documents and photographs detailing the structure of the accused Arcticar and a physical embodiment of the 876 patent (i.e., the production version of the CRYX 1000 railcar), the trial judge “conducted a site visit to personally inspect and view the railcars at issue.” Jd. at 19a. The trial judge also considered the sworn testimony of Mr. George Gerstman, called as an expert in patent law, Mr. Lewis Tyree, a technical expert, and Mr. Hill himself. Mr. 10 Gerstman noted that the ’876 patent did not provide any indication that the term “adjacent” should be given any meaning other than its ordinary meaning. Citing Webster’s Third New International Dictionary (Defendant’s Exhibit 134), Mr. Gerstman testified that the ordinary meaning of the term “adjacent” is “not far off.” (A1898). He maintained that the endmost vents in the Arcticar, located less than three feet from the end walls of a 67 foot, 8 inch car (1.e., less than 5% of the total length of the car), should be considered “adjacent” within the ordinary meaning of the term as it is used in the ’876 patent. (A1897). Mr. Gerstman’s view was strongly confirmed by Mr. Tyree and Mr. Hill. Mr. Tyree testified that the Arcticar “bunker vents which are three feet from the end wall of the car are sufficiently adjacent to provide, and will provide, a flow of sublimating CO, between the end walls and the load within the compartment both during the charging process and in-transit sublimation.” (A3926). Mr. Tyree’s testimony was uncontested at trial. Similarly, Mr. Hill explained that his invention operated by using “vents around the top of the [ceiling] bunker at the walls to allow vapor and cold air to flow downward through channels” on the walls and that the endmost vents in the Arcticar performed that precise function in relation to the end walls. (A1465-66).° In view of the evidence adduced at trial, the district court found that the “term ‘adjacent’ as used in patents means not necessarily at but nearby or near,” App. 43a, and concluded, likewise, that the term “as used in the ’876 Patent means ‘not far off,’” id. at 52a. Moreover, the court determined that ° For that matter, GATC conceded that the Arcticar does not work any differently than its admittedly infringing prototype in the way the load is cooled. App. 50a. AI ii ani 4 EU 11 “the purpose of the bunker vents of the ’876 Patent is to facilitate the passage of sublimating CO, along the corrugations making up the walls of the car” and that the “Arcticar’s bunker vents are close enough to provide the same function.” Jd. at 52a-53a. Thus, the district court ruled that “[g]iven the proximity of the Arcticar bunker vents to the end walls, the Arcticar literally infringes the ’876 Patent.” Jd. at 53a. 4. The Federal Circuit’s Decision On appeal, a split panel of the Federal Circuit reversed the district court’s finding of infringement on the ground that the court had misconstrued the claims at issue. In articulating the applicable standard of review, the majority pronounced that “[c]laim construction is a question of law, reviewed de novo on appeal.” Jd. at 6a. Under its view of de novo review, the Federal Circuit majority rejected the district court’s claim interpretation, adopting instead a contrary construction of the claims based on its own reading of the patent. The Federal Circuit majority confined itself exclusively to the “intrinsic” evidence, i.e., the claim language and the specification of the ’876 patent,’ gave no apparent consideration to the “extrinsic” evidence which informed the trial judge, and undertook to interpret the claim ° The trial court also held that the Arcticar infringed the ’876 patent under the doctrine of equivalents, App. 53a, and that the patent is valid and enforceable, id. at 56a, 58a, 61a. The court awarded Cryo-Trans $9,705,172 in damages and permanently enjoined GATC from further infringement of the ’876 patent. Jd. at 64a. The damages award was later modified to $8,983,440. Id. at 73a. ” The majority acknowledged that the ’876 patent’s prosecution history “is brief and not helpful to resolving the meaning of the disputed claim language.” App. 8a. 12 anew, without according any deference to the trial court’s findings of fact based on evaluation of all the evidence. Relying heavily on its interpretation of the patent specification, the majority concluded that the phrase “openings . . . adjacent each of said side walls and end walls” in Claim 1 refers to structurally distinct openings that are provided adjacent to each of the railcar’s four walls. Each opening is “adjacent” to only one wall, the nearest one to which it directs the downward flow of CO, gas. Thus, an opening “adjacent” to a side wall cannot also be an opening “adjacent” to an end wall. The patent does not contemplate the openings performing double duty in this manner. We therefore reject the district court’s claim construction, which was inconsistent with the specification and drawings and rendered superfluous the claim requirement for openings adjacent to the end walls.” [App. 8a]. In reaching that conclusion, the Federal Circuit ignored the fact findings that compelled the trial judge’s construction of the claims. Whereas the trial judge had found that the GATC Arcticar meets the claimed requirement of openings “adjacent” the end walls in view of its findings that the Arcticar includes openings that are physically located near to the end walls and achieve the disclosed purpose of effectively refrigerating the entire frozen food load, the Federal Circuit majority concluded that there are no openings in the Arcticar “adjacent” the end walls because the specification appeared to indicate that “the openings were all closest to and thus ‘adjacent’ to the side walls.” Id. i Nl AB aE won a ee a a ek in eee ae Eee ee Pee eed ae 13 Circuit Judge Mayer, dissenting, was clearly critical of the majority’s approach as rejecting the lower court’s claim analysis without deferring properly to its assessment of the evidence. He accepted the ordinary meaning of “adjacent” found by the trial judge, stating that: “[T]he term ‘adjacent’ as used in the ’876 patent means ‘not far off.’” Jd. at 13a. Moreover, he considered the majority’s “citations to the claim language and specification to support a meaning other than the ordinary meaning of ‘adjacent’ [to be] misplaced.”* Jd. In so concluding, Circuit Judge Mayer reasoned that [t]his court’s de novo claim construction would necessarily prevent a finding of infringement whenever a vent is nearer a side wall than an end wall. This cannot be. For example, a vent only an inch away from an end wall will not be considered “adjacent” to the end wall as long as the vent is less than an inch from a side wall. Given the dimensions at issue, surely a vent such a short distance from an end wall is “adjacent” to that wall and must be infringing. The difference between this hypothetical and our case is only a matter of degree. The vent here was only 33 inches from the wall of a railcar which is 812 inches long. The district court is in a much better position to evaluate this matter of degree. [App. 13a-14a (emphasis added)]. Cryo-Trans filed a petition for rehearing and a suggestion for rehearing en banc, which the court of appeals denied on October 10, 1995. App. 77a. * As an untenable consequence of the majority’s claim interpretation, the prototype of Mr. Hill’s invention (i.e., the original CRYX 1000) does not fall within the scope of the patent, notwithstanding that GATC had earlier admitted that “there is element-for-element correspondence between claims 1-3 of the 876 patent” and the prototype. (A5489). ’ | 14 REASONS FOR GRANTING THE PETITION I. The Petition Raises an Important Issue This petition should be granted because it raises an issue (i) of importance to the administration of justice, (ii) that regularly affects patent enforcement litigation, (iii) that is the subject of concern and criticism on the part of district court i judges, and (iv) is of vital interest to patent litigants. The issue concerns the propriety of the Federal Circuit’s practice | of routinely according no deference to the lower ccurt’s findings of fact underlying the construction of patent claims pursuant to Markman v. Westview Instruments, Inc., 116 S. Ct. 1384 (1996). This appellate practice eliminates the fact- finding role of the trial court, escalates the cost of patent litigation by heightening the necessity of appeal, and misallocates judicial resources in deciding the all-important question of claim construction. More particularly, patent claim construction is a critical aspect of patent enforcement litigation. “[T}o decide what the claims mean is nearly always to decide the case.” Markman, | 52 F.3d at 989 (Mayer, J., concurring in the judgment). While Markman clarified that the task of construing the meaning of terms in patent claims in the first instance falls to the trial judge,” the Court left unresolved the follow-on issue of whether the Federal Circuit must give any deference to district court findings on underlying or subsidiary facts that ee * In the Markman regime, claim construction is now regularly being decided by trial judges in bench trials or in so-called “Markman hearings.” See e.g., Loral Fairchild Corp. v. Victor Co. of Japan, 906 F. Supp. 798 (E.D.N.Y. 1995); Moll v. Northern Telecom, Inc., No. 94-5451 (E.D. Pa. Jan. 2, 1996) (reprinted at 1996 U.S. Dist LEXIS 175); Huang v. Autoshade, Inc., CY 92 6487 RJK (C.D. Cal. Nov. 13, 1996) (reprinted at 1996 U.S. Dist. LEXIS 17055). 15 might arise in construing the claims, particularly where the trial judge is the only fact finder.’° There is a strong and immediate public interest in addressing this issue because it directly affects how the Federal Circuit is to review a district court’s claim construction on appeal. 52 F.3d at 989 (Mayer, J., concurring). The Federal Circuit majority in Markman held that claim construction is purely a matter of law, reviewed de novo on appeal, and considered that there are no underlying or subsidiary findings of fact as to which deference must be given. 52 F.3d at 976-79. Accordingly, the court of appeals now routinely accords no deference to any aspect of the trial judge’s claim construction determination and will continue to do so in the absence of Supreme Court review. As the court made clear in Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1556 (Fed. Cir. 1995), cert. denied, 116 S. Ct. 2554 (1996), “[nJo matter when or how a judge performs the Markman task, on appeal we review the issue of claim interpretation independently without deference to the trial judge.” See also Hoechst Celanese Corp. v. BP Chem. Ltd., 78 F.3d 1575, 1578 (Fed. Cir.) (under Markman the Federal Circuit decides “disputed questions of claim interpretation without deference to the trier of fact”), cert. denied, 65 U.S.L.W. 3265 (U.S. 1996); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 72 F.3d 857, 863 (Fed. Cir. 1995) (the Federal Circuit engages in “independent determination of the construction of claims, as a matter of law, unencumbered by the trial process”). The court of appeals followed that routine practice in the instant case. ° Cf. 116 S. Ct. at 1393 n.10 (“Because we conclude that our precedent supports classifying the question [of claim construction] as one for the court, we need not decide ... the extent to which the Seventh Amendment can be said to have crystallized a law/fact distinction.”). 16 The Federal Circuit’s “no deference” approach has engendered contention in the trial court-appellate court relationship. District court judges have expressed concern that the standard of review employed by the court of appeals has effectively rendered the fact finding in which they regularly engage in construing patent claims a pointless exercise, thus diminishing their roie in patent infringement actions. In Lucas-Aerospace, Ltd. v. Unison Indus., L.P., 890 F. Supp. 329 (D. Del. 1995), District Judge Schwartz criticized as unrealistic the Federal Circuit’s disinclination to acknowledge that trial courts make factual findings based on extrinsic evidence as a vital and integral part of the claim interpretation process: If those possessed of a higher commission wish to rely on a cold written record and engage in de novo review of all claim constructions, that is their privilege. But when the Federal Circuit Court of Appeals states that the trial court does not do something that the trial court does and must do to perform [its] judicial function, that court knowingly enters a land of sophistry and fiction. {Id. at 333-34 n.7.] See also Elf Atochem North Am. Inc. v. Libbey-Owens Ford Co., 37 U.S.P.Q.2d 1065, 1074-75 (D. Del. 1995) (District Judge McKelvie positing that the Federal Circuit’s de novo review of claim construction will upset the ability of trial courts to efficiently administer patent trials). The acute concern and criticism of district court judges strongly signals the need for this Court’s supervision and review of the Federal Circuit’s claim construction practice. In addition, the Federal Circuit’s implementation of de novo review is a burden on judicial efficiency and is unfair to litigants who invest heavily in the district court’s trial process of receiving evidence and assessing claim construction, only 17 to have the decision ignored by the appellate court. Rather than fulfilling our legal system’s commitment to the trial as the “main event,” Wainwright v. Sykes, 433 U.S. 72, 90 (1977), the Federal Circuit has elevated the appeal to the principal arena for resolving all aspecis of claim construction. And given the decisive role of claim interpretation, parties must now look to the appellate forum in most patent cases, markedly increasing the already high cost of patent litigation, and diminishing the prospects for settlements at the district court level. For these reasons, it is evident that the Federal Circuit’s claim construction practice presents an important issue affecting efficient and economical judicial procedure in patent infringement litigation and the public interest that is on par with, if not greater than, the claim construction issue presented by the Markman case. II. The Federal Circuit’s Practice Is in Conflict with Supreme Court Precedent In Markman, this Court recognized that claim construction presents a mixed issue that “falls somewhere between a pristine legal standard and a simple historical fact.” Id. at 1395 (quoting Miller v. Fenton, 474 U.S. 104, 114 (1985)); see also Gasperini v. Center for Humanities, Inc , 116 S. Ct. 2211, 2227 (1996) (Stevens, J., dissenting) (recognizing Markman as involving a mixed question of law and fact).'' Acknowledging that neither history nor precedent '' Thus, contrary to the prevailing view at the Federal Circuit, this Court did not hold claim construction to be a pure question of law. Markman has been interpreted by a minority of Federal Circuit judges as treating patent claim construction as a mixed question of fact and law. Metaullics Sys. Co. v. Cooper, No. 96-1290 (Fed. Cir. Nov. 15, 1996) (Mayer, J.); Weiner v. NEC Elec., Inc., No. 96-1052 (Fed. Cir. Dec. 6, 1996) (Rader, J.). 18 provide “clear answers” regarding the factual and legal nature of claim construction in patent infringement litigation, the Court examined functional considerations in allocating that “mongrel practice” as between judge and jury. 116 S. Ct. at 1390, 1393. This functional analysis applies as well in determining the respective roles of the trial court and the court of appeals in the claim construction process. Specifically, the Court has held that “deferential review of mixed questions of law and fact is warranted when it appears that the district court is ‘better positioned’ than the appellate court to decide the issue in question or that probing appellate scrutiny will not contribute to the clarity of legaldoctrine.” Salve Regina College v. Russell, 499 U.S. 225, 233 (1991). Furthermore, “the reviewing attitude that a court of appeals takes toward a district court decision should depend upon the respective institutional advantages of trial and appellate courts.” First Options of Chicago, Inc. v. Kaplan, 115 S. Ct. 1920, 1926 (1995) (citation and internal quotes omitted). In the case of patent trials, the trial judge, as the principal receiver and evaluator of the evidence, is better positioned to assess.the meaning of terms used in patent claims than is the court of appeals. See Cooter & Gell v. Hartmarx Corp. , 496 U.S. 384, 402 (1990) (“Familiar with the issues and the litigants, the district court is better situated than the court of appeals to marshal the pertinent facts and apply the fact- dependent legal standard.”); see also Ornelas v. United States, 116 S. Ct. 1657, 1664 (Scalia, J., dissenting) (“An appellate court never has the benefit of the district court’s intimate familiarity with the details of the case--nor the full benefit of its hearing of the live testimony.”). Indeed, a trial judge often will take live testimony from technical and legal experts as well as the inventor, and assess the credibility and 19 demeanor of those witnesses. This Court has recognized the probative value of the inventor’s testimony in understanding the meaning of claims defining his or her invention. See United Carbon Co. v. Binney Co., 317 U.S. 228, 233 (1942) (“The clearest exposition of the significance which the terms employed in the claims had for those skilled in the art was given by the testimony of . . . one of the patentees.”). The trial judge is also likely to draw factual inferences from “physical or documentary evidence or . . . other facts” in the course of reaching its determination. See Anderson v. City of Bessemer City, 470 U.S. 564, 574 (1985). Here, the trial court not only had testimony and documentary evidence, but actually was able to visit the railcars at issue. By contrast, the ability of the court of appeals to determine what a patent claim means is hindered by the inherently limited nature of the appellate record. “Appellate briefs and fifteen minutes per side of attorney argument are not designed for de novo findings of disputed technologic questions.” Markman, 52 F.3d at 999 (Newman, J., dissenting). Moreover, “[dJuplication of the trial judge’s efforts on appeal would very likely contribute only negligibly to the accuracy of fact determination at a huge cost in diversion of judicial resources.” Anderson, 470 U.S. at 575. In view of the institutional limits of appellate courts, the Court has recognized that independent review of mixed questions still requires the reviewing court to “take care both to review findings of historical fact only for clear error and to give due weight to inferences drawn from those facts by [trial] judges.” Ornelas v. United States, 116 S. Ct. 1657, 1663 (1996); see also Gasperini, 116 S. Ct. at 2227 (Stevens, J., dissenting) (“mixed questions require courts to construe all record inferences in favor of the fact finder’s decision and then to determine whether, on the facts as found below, the legal standard has been met”). 20 Contrary to the Federal Circuit’s practice, absent clear error, it is the trial court that determines the facts in mixed fact/law questions. Such deference to the trial court, however, does not preclude independent appellate review. See Baumgartner v. United States, 322 U.S. 665, 671 (1944). Consistent with Supreme Court precedent, mixed questions of law and fact warrant independent or “de novo” review without sacrificing the deference properly due the findings of the trial court underlying its claim construction. Under the de novo standard, appellate review “should proceed like review of any other district court decision,” i.e., by exercising plenary review over the trial court’s legal conclusions and accepting findings of fact that are not clearly erroneous. Kaplan, 115 S. Ct. at 1926; see also Markman, 52 F.2d at 991 (Mayer, J., concurring) (noting that “any facts found in the course of interpreting the claims must be subject to the same standard by which we review any other factual determinations: for clear error in facts found by a court”). This bifurcated or split review permits the court of appeals to freely review legal conclusions but at the same time allows appropriate deference on questions for which its position is inferior. 1 Steven Alan Childress and Martha S. Davis, Federal Standards of Review § 2.19 (2d ed. 1992). The Federal Circuit’s routine practice of denying deference even to underlying facts in claim construction, such as the ordinary meanings of technical terms, is contrary to this Court’s announced principle of deferring on fact findings in mixed questions of fact and law. It essentially obliterates the trial court’s role in claim construction along with the types of evidentiary evaluation in which district court judges, as opposed to appellate court judges, regularly engage. Hence, the Federal Circuit’s practice plainly obstructs the proper allocation of judicial resources that the Court’s principle of deference in mixed fact/law questions seeks to secure. a Te av 21 This case exemplifies the consequence of the Federal Circuit’s failure to accord due deference to trial court findings of fact. While the Court has “long noted the difficulty of distinguishing between legal and factual issues,” it also has long recognized that patent claim construction lends itself to a number of basic factual inquiries, viz., (i) what is the structure or device, described by the patentee, as embodying his invention; (ii) what mode of operation is introduced and employed by this structure or device; (iii) what result is attained by means of this mode of operation; and (iv) does the specification of claim cover the described mode of operation by which the result is attained? Winans v. Denmead, 56 U.S. (15 How.) 330, 338-39 (1853). These are factors that the trial court here examined en route to its interpretation of the term “adjacent” in the context of the patent claim language. The trial judge made specific findings regarding the structure described in the patent, the mode of operation it embodied, and the practical result obtained in light of the claim language, specification and draWings of the 876 patent itself, as well as extrinsic evidence, including the testimony of witnesses and his own personal inspection of a physical embodiment of the claimed railcar. For example, the trial court found that the ordinary meaning of “adjacent” is “not far off.” The court also found that by being “adjacent” or “not far off” from the walls of the railcar, the claimed openings or vents facilitated the passage of sublimating CO, gas along the walls and into the cargo area. The court determined in view of such findings that the endmost openings in the accused GATC Arcticar are physically near Cooter, 496 U.S. at 401; see also Miller, 474 U.S. at 113 (“the appropriate methodology for distinguishing questions of fact from questions of law has been, to say the least, elusive.”). 22 enough to the end walls to provide the function required by the patent claims, and thus are “adjacent” to the end walls. Under Rule 52(a) and this Court’s precedent, including Markman, Salve Regina, Ornelas, and Kaplan, the Federal Circuit was bound to review the trial court’s Winans fact findings for clear error. But by starting afresh to make its own claim construction without any deference accorded to the trial judge’s findings, the Federal Circuit reached the result that the endmost openings in the accused Arcticar cannot be adjacent to the end walls as a matter of law, even though they achieve what the patent claim requires and sit less than three feet from the end walls of a railcar nearly 68 feet long. Had the appellate court given due deference to the district court’s underlying findings of fact, it should have, and likely would have, affirmed the finding of infringement. See App. 13a-14a. Virtually all patent infringement cases, like the one at issue here, involve claim construction, decided in the first instance by the district court judge. Until this Court undertakes review of the proper role of the court of appeals on the issue of claim construction, the Federal Circuit will continue to render worthless the substantial investment by litigants and the trial judge in effectuating the Markman mandate, essentially taking on to itself the entire analytical claim construction process of finding facts and drawing the legal conclusion thereon. Petitioner respectfully submits that this is an inefficient and unfair procedure for resolving the critical issue in patent infringement and is contrary to the proper appellate authority that the Federal Circuit should exercise under this Court’s precedent. This case affords the Court a timely opportunity to clarify the correct appellate review standard applicable to a trial judge’s claim construction--an issue conspicuously left open in Markman. Ee a ee CONC 23 LUSION For the reasons stated above, the petition for a writ of certiorari should be granted. Of Counsel: JAMES P. DONOHUE BRUCE A. KASER MILLER, NASH, WIENER, HAGER & CARLSEN LLP 4440 Two Union Streeet Seattle, Washington 98101-2352 (206) 622-8484 January, 1997 Respectfully submitted, DONALD R. DUNNER (Counsel of Record) HERBERT H. MINTZ HOWARD A. KWON FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 1300 I Street, N.W. Washington, D.C. 20005-3315 (202) 408-4000 Counsel for Petitioner Cryo-Trans, Incorporated APPENDIX la United States Court of Appeals for the Federal Circuit No. 95-1531 GENERAL AMERICAN TRANSPORTATION CORPORATION Plaintiff-Appellant, V. CRYO-TRANS, INCORPORATED, Defendant-Appellee. Aug. 14, 1996 Rehearing Denied; Suggestion for Rehearing In Banc Declined Oct. 10, 1996 Competitor brought declaratory judgment action against patentee, seeking declaration that its cryogenic refrigerated railcar did not infringe patent, and patentee filed infringement counterclaim. The United States District Court for the Northern District of Illinois, Ruben Castillo, J., 893 F.Supp. 774, ruled that patent was valid and that competitor’s railcar was infringing. Competitor appealed. The Court of Appeals, Lourie, Circuit Judge, held that: (1) competitor’s cryogenic railcar with carbon dioxide vent openings at ends of sidewalls did not infringe patent claiming vent openings “adjacent” to sidewalls and end walls, and (2) competitor’s railcar did not infringe patent under doctrine of equivalents. Affirmed in part and reversed in part. 2a Mayer, Circuit Judge, filed dissenting opinion. Kenneth J. Jurek, McDermott, Will & Emery, Chicago, Illinois, argued, for plaintiff-appellant. With him on the brief was Rosanne J. Faraci. Bruce A. Kaser, Miller, Nash, Wiener, Hager & Carlsen, Seattle, Washington, argued, for defendant-appellee. With him on the brief was James P. Donohue. Before MAYER, LOURIE, and SCHALL, Circuit Judges. LOURIE, Circuit Judge. General American Transportation Corp. (“GATC”) appeals from the judgment of the United States District Court for the Northern District of Illinois in which the court held GATC liable for patent infringement, awarded Cryo-Trans, Inc. $8,983,440 in damages, and entered a permanent injunction against GATC. General Am. Transp. Corp. v. Cryo-Trans, Inc., 897 F.Supp. 1121 (N.D.I.1995); General Am. Transp. Corp. v. Cryo-Trans, Inc., 893 F.Supp. 774 (N.D.I.1995). Because the court correctly held that the patent was net proved invalid, but misconstrued the claims and clearly erred in finding infringement, we affirm in part and reverse in part. BACKGROUND Cryo-Trans is the assignee of U.S. Patent 4,704,876, which concerns a “cryogenic” railcar for transporting frozen foods. Cryogenic railcars use inexpensive carbon dioxide (CO,) as the refrigerant. Conventional refrigerated railcars, on the other hand, employ mechanical refrigeration systems that consume fossil fuels and thus are more expensive to cperate. The cryogenic railcar disclosed in the ’876 patent has an insulated compartment (32) extending lengthwise along the top of the car. A system is provided for filling the compartment ‘ Pisiniticahs ail > 3a with solid carbon dioxide “snow” by injecting liquid CO, into the compartment under high pressure. The bottom of the compartment contains openings (66) adjacent to each of the car’s side walls (16, 18) and end walls (20, 22). In operation, the compartment is first filled with CO, snow and then the frozen food products are loaded into the cargo area (26). During transit, the CO, snow gradually sublimates as CO ,gas, which flows through the compartment’s openings (66) and moves downward along the side walls and end walls, enveloping and cooling the load. Each of the four walls has corrugated channels to facilitate the flow of the CO, gas down that particular wall. Figure 1 of the patent illustrates the railcar: FIG! = ‘3 a 2 Py eo ; l *o6, « = a aoe a ree ; / ‘ ; n i ae ~ H 1 @ - —, : mi. j BY Te 1 PGA Claim 1 is representative of the asserted claims. It reads, with emphasis on the language in dispute, as follows: 1. In a container adapted to be maintained in a refrigerated condition from the sublimation of carbon dioxide snow(,] the combination comprising: a storage area defined by a floor, a pair 4a of opposed side walls, a pair of opposed end walls, and a ceiling means; an insulated roof positioned above said ceiling means and defining therewith a compartment for supporting a supply of carbon dioxide snow, said compartment extending substantially the full length of said storage area; means in said compartment for forming carbon dioxide snow and means for connecting said carbon dioxide snow forming means to a supply of liquid carbon dioxide; a plurality of openings through said ceiling means adjacent [sic] each of said side walls and end walls for permitting the flow of sublimated carbon dioxide gas from said compartment; each of said walls being corrugated to define a plurality of channels therein open-sided toward the interior of the container whereby said carbon dioxide gas may flow from said openings in said ceiling means downwardly through said channels between said walls and a product load disposed in said container toward said floor. Numerous cryogenic railcars were known before the invention at issue here. The “AFFX 2000” railcar, for example, which was built and publicly used in 1983, embodied all the elements of claim 1 except that its compartment for holding CO, snow had openings adjacent to only one side wall and it had no openings adjacent to the end walls. U.K. Patent 399,678, issued to Kurth in 1933, disclosed a cryogenic railcar in which a compartment for holding solid CO, had openings adjacent to both side walls, but again had no openings adjacent to the end walls. It also had no corrugated walls or system for forming CO, snow using liquid CO, . GATC manufactured a cryogenic railcar that included a compartment for holding CO, snow. The bottom of the compartment had a row of openings provided lengthwise along its center and two rows of openings adjacent to the car’s opposite side walls. The openings adjacent to the side walls were each three inches from the nearest side wall, and the _ A Sa endmost of such openings were three feet from the nearest end wall. The endmost center row openings were six feet from the nearest end wall. The drawing below illustrates the arrangement of openings in GATC’s railcar compartment: Side Wall = ° re) rs} C rs} re) o| d oe O ° re) re) ° ° O olo_—s fo O ° lo ° O o | Side Wall In March 1991, after Cryo-Trans threatened to assert the 876 patent against GATC, GATC sued Cryo-Trans seeking, inter alia, a declaratory judgment that the patent was invalid, unenforceable, and not infringed. GATC argued that it did not infringe because the bottom of the compartment in its railcar lacked openings adjacent to the car’s end walls, as required by the claims. Cryo- Trans counterclaimed for infringement of claims 1-3. The district court conducted a bench trial in May 1995. At the conclusion of the trial, the court, relying on a dictionary definition, construed the term “adjacent” in the claims to mean “not far off” or “not necessarily at but nearby or near.” The court then found that the endmost openings adjacent to the side walls in GATC’s railcar compartment were “not far” from the car’s end walls and functioned as openings adjacent to the end walls. Thus, the court found that GATC had infringed the claims, both literally and under the doctrine of equivalents. It rejected GATC’s invalidity and unenforceability claims. The ee 6a court accordingly awarded Cryo-Trans $8,983,440 in damages and entered a permanent injunction. GATC appeals, challenging the district court’s findings that the °876 patent was infringed and not proved invalid. GATC does not appeal the court’s decision rejecting GATC’s unenforceability claim. DISCUSSION A. Infringement Determining whether a patent claim has been infringed requires a two-step analysis: “First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process.” Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839 (Fed.Cir.1993). Claim construction is a question of law, reviewed de novo on appeal. Markman v. Westview Instruments, Inc. , 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir. 1995) (in banc), aff'd, __. U.S.____ , 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The application of the claim to the accused device is a question of fact, reviewed for clear error. Mannesmann Demag Corp. v. Engineered Metal Prods. Co. , 793 F.2d 1279, 1282, 230 USPQ 45, 46 (Fed.Cir. 1986). GATC argues that the district court misconstrued the claim language “openings through said ceiling means adjacent to each of said side walls and end walls,” which led to a clearly erroneous finding of infringement. We agree. As explained below, the district court incorrectly held that openings “adjacent” to the side walls could also be considered to be openings “adjacent” to the end walls. That error led to a clearly erroneous finding of infringement. | 7a To ascertain the meaning of the claims, we consider the claim language, the specification, and the prosecution history. Markman, 52 F.3d at 979, 34 USPQ2d at 1329. Here, the claim, language itself distinguishes between the openings that are adjacent to the side walls and those that are adjacent to the end walls. Specifically, the claims require “openings ... adjacent each of said side walls and end walls,” which suggests that the openings adjacent to the side walls are structurally distinct from the openings adjacent to the end walls. The district court’s claim construction obliterated that distinction. In addition, the patent specification distinguishes between the openings that are adjacent to the side walls and those that are adjacent to the end wails. It states, in the “Summary of the Invention” section, that “[tJhe bottom of the compartment is provided with openings alorig each side and end wall of the car through which sublimating carbon dioxide gas may escape.” Col. 2, ll. 22-25 (emphasis added). Similarly, the “Detailed Description of the Invention” portion of the specification states: The bottom wall 40 of the compartment 32 is provided with a plurality of openings 66 along each of the side walls 16, 18 and along each end wall 20, 22 of the car and which openings are preferably slanted toward the adjacent wall. These openings are provided for the flow of carbon dioxide gas sublimating from the snow contained within the compartment 32 and which gas may then flow downwardly along the adjacent wall through the sinusoidal passageways defined thereby. The openings on opposite walls preferably are offset with respect to each other. Col. 3, ll. 41-51 (emphasis added). This arrangement of openings is said to yield an advantage: “[BJecause the cold carbon dioxide gas is flowing downwardly on each of the opposite sides and on the ends of the car and in direct contact 8a with the bottom of the load, all parts of the load will be maintained at a desirably low temperature.” Col. 5, ll. 59-64 ~ (emphasis added). Figure 1, to which the detailed description refers, depicts separate openings (66) adjacent to each of the side and end walls. Carbon dioxide gas is shown exiting each opening and travelling down the nearest wall. Thus, the specification and drawings teach that the openings are provided along all four walls, and that each opening directs the flow of CO, gas down a particular, “adjacent” wall, i.e., the nearest wall. This is not just the preferred embodiment of the invention; it is the only one described. Nothing in the claim language, specification, or drawings suggests that any of the dedicated side or end wall openings may be eliminated, or that an opening may be “adjacent” tw more than one wall. The prosecution history is brief and not helpful to resolving the meaning of the disputed claim language. Under these circumstances, we construe the phrase “openings ... adjacent each of said side walls and end walls” as referring to structurally distinct openings that are provided adjacent to each of the railcar’s four walls. Each opening is “adjacent” to only one wall, the nearest one to which it directs the downward flow of CO, gas. Thus, an opening “adjacent” to a side wall cannot also be an opening “adjacent” to an end wall. The patent does not contemplate the openings performing double duty in this manner. We therefore reject the district court’s claim construction, which was inconsistent with the specification and drawings and rendered superfluous the claim requirement for openings adjacent to the end walls. In GATC’s railcar, the openings were all closest to and thus “adjacent” to the side walls. The endmost openings are in fact twelve times the distance to the end w2!ls compared with their distance to the side walls. The car lacked “a plurality of openings ... adjacent each of said ... end walls,” as required by 9a the properly construed claims. We therefore hold that the district court clearly erred in finding literal infringement of claim 1 and dependent claims 2-3. See Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386 (Fed.Cir.1989) (“Where a claim does not read on an accused device exactly, there can be no literal infringement.”); Mannesmann Demag Corp., 793 F.2d at 1282, 230 USPQ at 46 (literal infringement requires that every element of the patent claim be met). Furthermore, the district court’s finding of infringement under the doctrine of equivalents was also clearly erroneous, for two reasons. First, the finding violated the principle that the doctrine may not be used to expand the scope of the patentee’s right to exclude so as to encompass the prior art. E.g., Key Mfg. Group, Inc. v. Microdot, Inc., 925 F.2d 1444, 1449, 17 USPQ2d 1806, 1810 (Fed.Cir.1991). Here, the AFFX 2002 railcar had all the elements of claim 1 except that its compartment for holding CO, snow had openings adjacent to only one side wall and it had no openings adjacent to the end walls. This design was known to be deficient because “hot spots” (areas of thawing) tended to form in the cargo area opposite the side where the CO, gas was introduced. Clearly those of ordinary skill in the art would have known that insufficient CO, gas was reaching this area. Thus, it would have been obvious to more uniformly cool the entire cargo area by providing openings along both side walls. The Kurth patent, in fact, disclosed a cryogenic railcar in which the compartment for holding the solid CO, had openings adjacent to both side walls. The AFFX 2002 and Kurth railcars were in the same field of endeavor as the claimed invention and were properly combinable prior art. The Kurth patent was not before the PTO during the prosecution of the ’876 patent. We are therefore convinced that the prior art fairly suggested a cryogenic railcar having the combination of features 10a present in GATC’s railcar, including a compartment having openings adjacent to both of the car’s side walls. Thus, since allowing the claims to encompass GATC’s car would cause the claims to cover subject matter obvious over the prior art, the car cannot be held to infringe the ’876 patent under the doctrine of equivalents. See Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 14 USPQ2d 1942 (Fed.Cir.), cert. denied, 498 U.S. 992, 111 S.Ct. 537, 112 L.Ed.2d 547 (1990). As we stated in Wilson Sporting Goods: [A] patentee should not be able to obtain, under the doctrine of equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims. The doctrine of equivalents exists to prevent a fraud on a patent, not to give a patentee something which he could not lawfully have obtained from the PTO had he tried. Thus, since prior art always limits what an inventor could have claimed, it limits the range of permissible equivalents of a claim. Id. at 684, 904 F.2d 677, 14 USPQ2d at 1948 (citation omitted); see also Stewart-Warner Corp. v. City of Pontiac, Michigan, 767 F.2d 1563, 1572, 226 USPQ 676, 682 (Fed.Cir.1985) (there can be no infringement under the doctrine when “the asserted range [of equivalents] would encompass the prior art at the very point at which the ... claims distinguish from that prior art”). Second, the district court’s finding of infringement under the doctrine of equivalents was clearly erroneous because “[t}here can be no infringement as a matter of law if a claim limitation is totally missing from the accused device.” London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1539, 20 USPQ2d 1456, 1459 (Fed.Cir.1991). GATC’s railcar had no openings adjacent to the end walls, as required by the claims, nor did GATC substitute an equivalent structure. Cryo-Trans argues that its expert testified that “the end-most vents of the center row will a ill RM lla provide a substitute for any ceiling vents eliminated by GATC.” We disagree with Cryo-Trans that each of the endmost center row openings, located six feet from the nearest end wall, was equivalent to a “plurality” of openings adjacent to the end walls. They are much further from the end walls than the endmost openings in the side walls, which we have held do not satisfy the claim limitation. Thus, because the accused device lacked an equivalent to “a plurality of openings ... adjacent each of said ... end walls,” there was no infringement under the doctrine of equivalents. See London, 946 F.2d at 1539, 20 USPQ2d at 1459; Pennwalt Corp. v. Durand- Wayland, Inc., 833 F.2d 931, 937, 4 USPQ2d 1737, 1741 (Fed.Cir. 1987) (in banc) (“A device that does not satisfy [a] limitation at least equivalently does not function in substantially the same way as the claimed invention.”), cert. denied, 485 U.S. 961, 108 S.Ct. 1226, 99 L.Ed.2d 426 (1988); Perkin- Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532, 3 USPQ2d 1321, 1324 (Fed.Cir.1987) (courts may not “convert a multi-limitation claim to one of [fewer] limitations to support a finding of equivalency”). Accordingly, we reverse the district court’s findings of literal infringement and infringement under the doctrine of equivalents. B. Validity GATC argues that “[iJf the district court’s claim construction is correct, then the ’876 Patent is invalid” under 35 U.S.C. §§ 102 and 103. GATC contends, inter alia, that if claim 1 were construed to cover a railcar that had no openings adjacent to the end walls, the combination of the AFFX 2002 railcar with the Kurth patent would render the claim invalid for obviousness. 12a We have agreed with GATC, however, that the district court’s claim construction was not correct. Thus, its obviousness argument directed to that claim construction is no longer pertinent. GATC has not argued or established that the prior art would have rendered obvious a cryogenic railcar having a compartment that included openings adjacent to all four walls, as required by the properly construed claims. We decline to speculate whether it would have been obvious to those of ordinary skill in the art to modify the AFFX 2002/Kurth railcar by adding openings adjacent to the end walls. Thus, the district court did not clearly err in concluding that GATC did not prove invalidity by clear and convincing evidence. We have considered the parties’ remaining arguments but find them either unpersuasive or unnecessary for resolution of the appeal. Among these arguments is GATC’s claim of prior invention by James Moe and Tom Maxwell. Moreover, in view of our conclusion concerning infringement, we must vacate the award of damages and the permanent injunction. GATC’s arguments concerning the correctness of the damages award are therefore moot. CONCLUSION The district court erred as a matter of law in construing the claims and clearly erred in finding infringement. Accordingly, the court’s decision finding infringement, awarding damages, and entering a permanent injunction is reversed. Its conclusion concerning validity is affirmed. COSTS No costs. AFFIRMED-IN-PART AND REVERSED-IN-PART. 13a MAYER, Circuit Judge, dissenting. The district court correctly construed the only claim limitation in dispute: “[T]he term ‘adjacent’ as used in the ’876 patent means ‘not far off.’” The court then found that the Openings nearest the end walls of General American Transportation Corporation's (GATC) accused railcar were “adjacent” to those walls and therefore literally infringed the Claim. I see no error in claim construction or in the finding of infringement. Claim limitations “will be given their ordinary meaning, unless it appears that the inventor used them differently.” ZMI/ Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1579 (Fed.Cir.1988). This court’s citations to the claim language and specification to support a meaning other than the ordinary meaning of “adjacent” are misplaced. The claims do require Openings adjacent to both end walls and side walls, but they do not define how close to the wall those openings must be to be considered adjacent. Nor do the claims require an opening to be closer to one wall than another to be considered adjacent to a particular wall. The only hint that an opening should be configured in a specific manner comes in a discussion of the inventor's preferred embodiment. Although we construe claims in light of the specification, we do not import the specification wholesale into the claims. Intervet Am., Inc. v. Kee-Vet Lab., Inc., 887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed.Cir.1989). It is improper to read the inventor’s preferred arrangement as a claim limitation here. This court’s de novo claim construction would necessarily prevent a finding of infringement whenever a vent is nearer a side wall than an end wall. This cannot be. For example, a vent only an inch away from an end wall will not be considered “adjacent” to the end wall as long as the vent is less than an inch from a side wall. Given the dimensions at issue, surely a vent l4a such a short distance from an end wall is “adjacent” to that wall and must be infringing. The difference between this hypothetical and our case is only a matter of degree. The vent here was only 33 inches from the end wall of a railcar which is 812 inches long. The district court is in a much better position to evaluate this matter of degree. The district court also correctly concluded that the claims were not obvious over the cited prior art, which it considered to include U.S. Patent No. 4,593,536 to Fink and Habel, the AFFX 2002 cryogenic railcar and variants thereof, U.S. Patent No. 3,561,226 to Rubin, and British Patent No. 399,678 to Kurth. It looked at the invention as whole and explicitly refused to “usfe] the patent or invention at issue as a guide to combine bits and pieces of earlier designs and then reach a conclusion of obviousness.” See Lindemann Maschinenfabrik GMBH vy. American Hoist & Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed.Cir.1984) (“[T]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination.”). The court concluded that “[tj]here is no clear suggestion of combining different pieces of prior art to produce the invention claimed by the ’876 Patent unless the patent is improperly used as a guide to make the combination.” Again, I find no error in the district court’s analysis of the prior art or in its finding that there was no motivation to combine the cited references. It was mindful that “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.Cir.1988) (citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012, 217 USPQ 193, 199 (Fed.Cir.1983)). 15a This court relies principally on a combination of the AFFX 2002 railcar, which admittedly disclosed many of the elements of the ’876 patent claim, and the Kurth patent, which disclosed openings in a dry ice bunker adjacent to both side walls of a railcar. This combination requires the precise measure of hindsight that the district court refused to supply. The evidence at trial showed that no one really understood the gas flow cooling mechanism of the AFFX 2002 cryogenic design. The Fink patent, which is based on the AFFX 2002, disclosed a system in which CO, gas supposedly exited the overhead bunker, flowed by convection down one side of the car, traveled underneath the load in the car, and then recirculated back up the other side of the car. If that were true, a second row of vents on the opposite side of the car would not only have been unnecessary, but likely would have been detrimental to the cooling convection flow that was thought to exist. There was thus no motivation to include the Kurth patent which disclosed openings on the opposite side walls of a railcar bunker. The 1933 Kurth patent also is directed to the loading and cradling of pre-made dry ice. There is no indication that “CO, snow” which subsequently sublimates is ever created in the bunker shown in Kurth, and the testimony at trial was that Kurth disclosed a “cold plate” bunker which simply provides a large cold surface for cooling the air in the lading compartment below. The extremely small number of vents disclosed in Kurth was unlikely to provide an adequate cooling mechanism for the sublimation of a bank of “CO, snow.” Given this testimony, I believe the district court could readily conclude that Kurth operated in a fundamentally different way from the other cryogenic cars cited as prior art. Without motivation to combine Kurth, the only reference which disclosed openings on both sides of a bunker, with the AFFX 2002, whose method of heat transfer was at best uncertain, GATC failed to prove by clear and convincing evidence that the ’876 patent is obvious. 16a —- The district court’s analysis is bolstered by the secondary considerations of nonobviousness. The court found that Cryo-Trans’ “’876 patent design has been accepted by the industry” and that it enjoys a high degree of commercial success. It also found that “[t]he ’876 patent design solved a long felt transportation problem for frozen food processors, who were searching for a viable solution since 1980 to the poor economic and maintenance viability problem of old railroad mechanical cars.” The district court further found that in late 1990, GATC became aware of Cryo-Trans’ commercially successful cryogenic railcar patent, and “decided it had to promptly get into the cryogenic railcar market and copy Cryo-Trans’ high cube car.” To this end, GATC obtained a copy of the original drawings of the Cryo-Trans car from the company which manufactured the railcar shell, and then moved the shell to a second manufacturer which completed the interior of the car along with identical cars that were being completed for Cryo-Trans. GATC admitted that its original prototype infringed the ’876 patent. After Cryo-Trans filed this suit, GATC merely blocked off several of the openings closest to the ends of its cars. At trial, one of GATC’s own engineers admitted that the accused device did not work any differently than the admittedly infringing first prototype. The trial court was surely correct when it concluded that “GATC copied the design of the Cryo-Trans high cube car after the commercial viability of the technology was proven by Cryo-Trans.” None of these findings are Clearly erroneous. The district court did not err in holding that the ’876 patent “represents a significant improvement from the relevant prior art and is not obvious from a review of the relevant prior art.” Eschewing the aid of hindsight to combine the cited references, 17a and with appropriate deference to the district court’s factual findings, I would affirm the judgment in its entirety. 18a United States District Court, N.D. Illinois, Eastern Division No. 91 C 1305 GENERAL AMERICAN TRANSPORTATION CORPORATION Plaintiff, Vv. CRYO-TRANS, INCORPORATED, Defendant. CRYO-TRANS, INCORPORATED, Counterclaim-Plaintiff, V. GENERAL AMERICAN TRANSPORTATION CORPORATION Counterclaim-Defendant. July 14, 1995 Competitor brought declaratory judgment action against patentee, seeking declaration that its cryogenic refrigerated railcar did not infringe patent, and patentee filed infringement counterclaim. The District Court, Castillo, J., held that: (1) competitor’s railcar infringed both literally and under doctrine of equivalents; (2) patent was not obvious in light of prior art; (3) patent was not invalid on grounds of inequitable conduct; (4) patentee was entitled to damage award of $9,705,172, 19a representing lost profits, price erosion and prejudgment interest; and (5) infringement of patent was not willful and case was not exceptional, so as to warrant award of attorneys’ fees in favor of patentee. Judgment accordingly. Scott William Petersen, Thomas Irving Ross, Randall Thomas Erickson, Hill, Steadman & Simpson, Chicago, IL, for plaintiff General American Transp. Corp. James P. Donohue, Bruce A. Kaser, Miller, Nash, Wiener, Hager & Carlsen, Seattle, WA, Kenneth E. Rechtoris, Carol Ann Genis, Bell, Boyd & Lloyd, Chicago, [L, for defendant Cryo-Trans, Inc. MEMORANDUM OPINION AND ORDER CASTILLO, District Judge. Due to the continued fast pace of American life, the production of frozen food products has continually expanded during the last decade. Yet, because railroad carriers had not replaced aging mechanical refrigeration cars since the early 1970's, the American transportation system explored the feasibility of using liquid carbon dioxide (“COQ,”) to create cryogenic railcar systems which could economically transport frozen food products. These developments led to the lispute in this case. Beginning on May 1, 1995 and continuing through May 10, 1995, this Court held a bench trial on this matter. During this patent trial, this Court has been called upon to decide questions of patent validity and infringement concerning competing cryogenic refrigerated railcars. During the trial, the Court received testimony and documentary evidence and conducted a site visit to personally inspect and view the railcars at issue in this case. Thereafter, the Court considered the written post-trial 20a submissions filed by each party. The Court hereby enters the following Findings of Fact and Conclusions of Law, which in contrast to its prior order in this matter, are based upon consideration of all the admissible evidence as well as this Court’s own assessment of the credibility of the trial witnesses. To the extent, if any, that the Findings of Fact as stated may be deemed Conclusions of Law, they shall be considered Conclusions of Law. Similarly, to the extent that matters expressed as Conclusions of Law may be deemed Findings of Fact, they shall also be considered Findings of Fact. FINDINGS OF FACT 1. This case involves a patent dispute between General American Transportation Corporation and Cryo-Trans Inc. 2. Plaintiff General American Transportation Corporation (“GATC”) is a corporation organized under the laws of New York, with its principal place of business in Chicago, Illinois. 3. Defendant Cryo-Trans, Inc. (“Cryo-Trans”) is a corporation organized under the laws of Maryland, with its principal place of business in Mt. Airy, Maryland. 4. GATC’s claim is an action for declaratory judgment, pursuant to 28 U.S.C. § 2201, with respect to the enforceability of United States Patent 4,704,876 (“the ’876 Patent”) against a cryogenic railcar produced and marketed by GATC. (Pl.’s Ex. A). 5. The ’876 Patent is owned by Cryo-Trans which has counterclaimed for patent infringement pursuant to 35 U.S.C. § 281. Figure 1 of the ’876 Patent is heréby incorporated into this opinion as Appendix A. (Pl.’s Ex. A). 6. Venue in this case is proper under 28 U.S.C. §§ 1391 and 1400(b) and jurisdiction is proper under 28 U.S.C. § 1338. 2la 7. On March 1, 1991, GATC filed a four-count complaint against Cryo-Trans seeking a declaratory judgment that the ’876 Patent, issued to Mr. Ralph P. Hill on November 10, 1987, and entitled “Cryogenic Refrigeration System” , is invalid, void and unenforceable, and further that the °876 Patent is not infringed by GATC’s cryogenic refrigerated boxcar design, presently commercialized in the United States under the tradename “Arcticar”. The complaint also sought a preliminary injunction enjoining Cryo-Trans from threatening patent infringement and other related litigation against actual and prospective users of GATC Arcticar boxcars. The extensive procedural history of this case includes a five-day hearing held before Magistrate Judge Rosemond in July, 1991, on the parties’ cross-motions for preliminary injunction. On August 12, 1994, Magistrate Judge Rosemond issued a formal Report and Recommendation which found in favor of GATC with respect to the issues raised before him in the parties’ cross-motions for preliminary injunction. 8. This Court adopted the recommended findings in the Magistrate Judge’s Report in a Memorandum Opinion dated December 20, 1994, which granted a preliminary injunction in favor of GATC, except that this Court rejected, as premature, Magistrate Judge Rosemond’s recommendation that GATC’s motion for attorney fees under 35 U.S.C. § 285 be granted. The Court’s December 20, 1994 order expressly indicated that this Court had not made any final determinations on the merits of this case. 9. GATC has been in the business of leasing railcars to the railroad industry for approximately 80 years, and for many years with respect to the business of manufacturing and leasing mechanically refrigerated railcars. In late 1990, GATC introduced a prototype mnon-mechanical, cryogenically refrigerated railcar using a bunker-style design. This prototype cryogenic railcar was designated the GARX 68000, and was a 4 22a built under the supervision of Mr. Erling Mowatt- Larssen, GATC’s Director of Engineering. The GARX 68000 was built and used only for demonstration and marketing purposes to solicit orders from frozen food shippers for the company’s anticipated production of a cryogenically refrigerated railcar | called the “Arcticar.” The prototype railcar has never been, and i is not, available for lease by customers. | 10. Around April of 1991, the GARX 68000 was modified several times to become the GATX production car design styled the “Arcticar.” Thereafter, in November of 1991 GATC obtained United States Patent 5,168,717 which incorporated the modified design. Figure 1 from this patent is hereby incorporated into this opinion as Appendix B. (Def.’s Ex. 228). The primary modification was the blocking up of the openings in the bunker floor adjacent the end walls. As a result, the Arcticar production railcar has no openings adjacent the end walls of the car. In early 1991, GATC obtained its first order for Arcticar railcars. 11. Cryo-Trans is the owner by assignment of the ’876 Patent. (Def.’s Ex. 139). In 1985, Mr. Marvin H. Weiner formed a sole proprietorship named “Cryo- Trans” for the purpose of developing a business involving the leasing of cryogenically refrigerated railcars. Cryo-Trans was incorporated to form Cryo- Trans, Inc. in 1987. Mr. Weiner is the chief executive officer and president of Cryo-Trans, Inc. Cryo-Trans’ cryogenically refrigerated railcars are referred to as CRYX railcars. Mr. Weiner is also the president of Mt. Airy Cold Storage (“Mt. Airy”), a frozen food storage facility used by frozen food processors which is located in Mt. Airy, Maryland. a es a i Se 12. The declared inventor of the ’876 Patent is Mr. Ralph P. Hill. Mr. Hill has not obtained other patents. (Tr. 118, 122). = 23a 13. At all relevant times prior to his retirement in 1988, Mr. Hill was vice president of distribution at Lamb-Weston, Inc. in Portland, Oregon. (Stip. No. 5). He was also a past chairman and long-time member of the American Frozen Food Institute’s Physical Distribution Council. Mr. Hill is credited with having made many outstanding contributions in rail transportation of frozen foods. 14. A critical issue facing the frozen food industry in the 1980’s was the availability of mechanical refrigerator cars owned by the nation’s railroads. The then-current policy of the railroads was not to replace aging mechanically refrigerated railcars as they became unserviceable. The frozen food industry’s dependence on mechanical refrigerator cars for long-haul movement was expected to be compounded by the continuing escalation of diesel fuel prices which would preclude long-haul truck movement and make the industry even more dependent on the railroads. Finding an alternative to the use of mechanical refrigerator cars had been a high priority matter for the American Frozen Food Institute Distribution Council and Transportation Committee since at least 1982. 15. The American Frozen Food Institute (“AFFI”) and the International Association of Refrigerated Warehouses (“IARW”) through the Refrigeration Research Foundation jointly formed a cryogenic railcar research and development task force (AFFI-IAWR Refrigerated Railcar Task Force) to explore the feasibility of using total loss refrigerants, such as liquid CO, to ensure an adequate transportation system for the expected growth of the frozen food industry. The United States Department of Agriculture provided the scientific monitoring and evaluation for the test shipments. Additionally, there was substantial resource involvement by the Burlington Northern Railroad. 24a 16. Recognizing that the supply of mechanically refrigerated Car Research Project. The project involved development of prototype railcars that relied on CO, , rather than mechanical systems, to provide refrigeration. Hill was a leading force behind the project. 17. Mr. Hill first initiated the Cryogenic Rail Car Research Project under the joint sponsorship of the AFFI and LARW, and later through a separately incorporated organization called the American Frozen Food Cryogenic Association for Rail Car Research—better known as AFFCAR-—which was a non-profit shipper’s association formed to purchase refrigerated railcars with which the AFFI cryogenic research and development task force could experiment. Hill was chairman and leader of AFFCAR throughout its existence. Throughout the Cryogenic Rail Car Research Project, Mr. Hill championed the need for research, raised funds, supervised the design, engineering and testing of prototype railcars, and kept the frozen food industry informed of the progress of the research. In 1985, he was recognized by the frozen food industry for his work in championing the need for cryogenic research, raising funds to build prototype cars, supervising design work, and engineering and testing prototype cars. (Def.’s Exs. 14, 22, 23, 30, 47, 233 q 28, 234 PP 17-18, 235 PP 15, 16, 21). 18. During 1980-1985, AFFCAR and/or Burlington Northern built a number of prototype cryogenic cars which were identified as the BNFE 3, AFFX 2001, AFFX 2002 and AFFX 2003 during the trial. 19. The AFFI task force decided that an insulated railcar loaded with frozen food and given an initial charge of cryogen would most likely be a technically and economically feasible cooling system. A series of test shipments were conducted over a one year period to determine the feasibility of using CO, as an 25a alternative refrigeration source for railcar shipments of frozen foods. The Burlington Northern Railroad donated its modified mechanical refrigerator test car (“the BNFE 3”) to be used in the AFFI cryogenic railcar project study. The BNFE 3 was a refrigerated railcar originally built as a meat car in 1966, and rebuilt with under-the-floor air delivery and a truck- type nosemount mechanical refrigeration unit in 1976. It was modified for CO, snow refrigeration in June of 1980. Seven shipments of various frozen commodities in the summer and fall of 1980 and the winter and spring of 1981 were made. The mechanical unit was not used during the testing. Upon evaluation of the test data from the BNFE 3 test shipments, the cryogenic railcar research task force concluded that the cryogenic refrigeration concept warranted further testing and consideration. 20. Ralph Hill, James Fink, Eddie Barron, LeRoy Couture and Biil McCollister were principally involved in the reconstruction of the BNFE 3 railcar in 1980. (Tr. 72). The BNFE 3 was a converted mechanical refrigeration car, which utilized an overhead rectangular manifold at the ceiling of the car to spray CO, directly on the load. It utilized a single loading of CO, at the place of embarkation. (Tr. 71-72). The BNFE 3 car proved that CO, had applications for use in transportation of frozen food, but had drawbacks which did not allow the entire load to remain consistently frozen during the entire trip. (Tr. 73). 21. With promising results from the BNFE 3 test shipments, the task force proceeded to plan and design the construction of a prototype cryogenic railcar with an on-board CO, temperature control system with no mechanical or electric parts; thus, eliminating costly mechanical diesel powered refrigeration. Construction of the prototype car—the AFFX 2001-—was completed in January of 1983. 26a 22. The AFFX 2001 car was built for AFFCAR as an attempted improvement over the BNFE 3 car. The AFFX 2001 utilized tanks of liquid CO, beneath the floor of the loading area to carry a supply of CO, on the railcar as well as a computer to sense temperature changes and to direct release of CO, snow on the load. (Tr. 81). 23. The salient features of the “AFFX 2001—Prototype Car Design” were as follows: The car is equipped with a liquid carbon dioxide refrigeration tank system. The system stores liquid carbon dioxide under pressure at zero degrees Fahrenheit in a series of interconnected aluminum storage tanks placed lengthwise to the car beneath the car’s aluminum floor. The tank system not only provides in transit storage for liquid carbon dioxide, but also acts as a barrier to heat entering the car and functions as a giant cold plate to keep the load frozen. An initial blanket of carbon dioxide snow is deposited in the air on top and around the load prior to departure from the loading warehouse. While in transit, the load receives additional charges of snow triggered by a thermostatically controlled temperature sensor in the ceiling of the car above the air and load. Operation of the refrigeration system requires only pneumatic power provided by the pressure of the liquid carbon dioxide. No electrical nor diesel power is needed. The prototype car is the largest and best insulated refrigerator car ever built. The car utilizes state of the art compressed polyurethane foam in place insulation placed behind interior fiberglass roof and wall panels with specially designed deep corrugated channels to allow the free flow of carbon monoxide gas over and around the load of frozen food. The exterior of the car is painted with Pee ee RT ee 27a a high gloss reflective acrylic white paint specially formulized to maximize reflection of radiant-heat from the sun to provide an exterior surface that can easily be cleaned. The prototype car has a capacity of 4,904 cubic feet, compared with the 4,050 cubic feet capacity of existing mechanical cars. The overall exterior length of the car is nearly 65 feet. The interior length is 58 feet. As evident from the above-quoted description, the AFFX 2001 was equipped with an under-the-floor liquid CO, cooling system, corrugated paneling on the side walls, and a piping system with which to inject liquid CO, directly on top of the cargo to form CO, snow. The AFFX 2001 proved impractical because of the extra weight of the car from the storage tanks of liquid CO, and because the computers, which controlled the release of CO, while in transit, were subject to breakdown due to the difficulties of the rail environment. (Tr. 83). 24. Mr. Hill was part of a group of people who helped to design the AFFX 2001. Other persons involved in designing the AFFX 2001 included Messrs. Fink, Habel, Couture and Jenkins. 25. One of the problems with the AFFX 2001 Cryogenic Prototype Railcar Design was that direct contact of solid CO, with the frozen cargo caused over- freezing of the frozen food product near the top of the shipments. The solution to the problem was to put a bunker between the cargo and the solid CO, . Accordingly, in a subsequent phase of the task force’s cryogenic railcar research, the Burlington Northern Railroad modified two existing large cube mechanical refrigerator cars with the Rubin Carbonaire Plate CO, Snow Bunker System. The two cas were called the AFFX 2002 and the AFFX 2003, and operated as follows: 28a These cars are equipped with a snow bunker which consists of a sheet metal chamber across the interior ceiling of the car. Liquid CO, is charged under pressure to supply lines accessible from either side of the A end (end opposite the brake wheel end) to the overhead bunker. As the liquid CO, is charged into the non-pressurized atmosphere in the bunker, it converts to snow which accumulates in the bunker under the entire ceiling of the car. The under surface of the bunker, which is the interior ceiling of the car, is insulated to control the sublimation (melting) of the snow and prevents extreme cold air from reaching the product in the car. As the CO, sublimates, the cold air drops down the side walls and around the load. (CO, is 52% heavier than air.) The AFFX 2002, which evolved over a two year period, utilized an overhead bunker to store the CO, snow after charging. (Tr. 856). The idea of using an overhead bunker was a result of collective discussions between Bill McCollister, James Fink, LeRoy Couture and Ralph Hill. (Def.’s Ex. 233 ¢ 18, Tr. 90). The Burlington Northern took the AFFX 2002 and the AFFX 2003 back after the AFFCAR project and put both cars in their fleet, and built 75 additional such cars in the remaining part of 1985—after March of that year. 26. The AFFX 2002 was an experimental car. (Tr. 866). It went on two test runs before ratification (Tr. 838-39; Barron Dep. at 30-31). The AFFX 2002 design showed that an overhead bunker might be a useful innovation. Nevertheless, the AFFX 2002 still needed improvement. Improvement was made to the design of the exhaust vents and floors which were incorporated into the AFFX 2002 for subsequent test runs and into the AFFX 2003, which was identical to the AFFX 2002, except for its overall length. (Tr. 435; Def.’s Ex. 233 ¢ 15; 29a Habel Dep. at 145-46; Barron Dep. at 21). Mr. Fink was principally responsible for the design of the AFFX 2002. (Tr. 163). 27. The cryogenically refrigerated railcar designated AFFX 2002 was built by employees of the Burlington Northern in June-July of 1983. Burlington Northern sold the railcar to AFFCAR after its completion. (Tr. 165, 437). This railcar was used to transport frozen food product from the State of Washington to an unloading site near Kansas City, Kansas, in the summer of 1983. Ralph Hill was familiar with the AFFX 2002 railcar construction. (Stip. No. 2). He witnessed the loading, testing, and unloading of the AFFX 2002 in 1983 and understood its construction. (/d.). Ralph Hill publicly asserted that the technology was available for anyone in the trade to use. (Pl.’s Ex. HH). 28. The AFFX 2002 was a converted mechanical refrigerator car having corrugated side and end walls, aluminum floor racks, corner floor drains used as cargo area vents, and an overhead bunker. (Pl.’s Exs. DF; DF(A). The bunker had screened vents along one side and alternating CO, nozzles penetrating into the duct. (Pl.’s Exs. DF, DF(A), EO). The bottom wall of the air duct was insulated. (Pl.’s Ex. EO). The CO, nozzles were connected to a CO, manifold pipe running the length of the car and connectable to an outside source of liquid CO,. (Pl.’s Ex. DF, DF(A)). The aluminum floor racks were of a herringbone coustruction with spaced apart slats running obliquely transversely and supported by lengthwise stringers to support the load. (Pl.’s Ex. DF; DF(A)). The stringers formed a plurality of parallel lengthwise channels for allowing CO, gas to flow beneath the cargo. A center rail between the floor racks would make it difficult for CO, gas to flow side to side under the floor. (Pl.’s Exs. DF(A), DX; Tr. 821-822, 826, 859-860). — Ra i oo 30a 29. When the AFFX 2002 railcar was initially charged with CO, , the doors were kept ajar to relieve pressure. (Def.’s Ex. 233 ¢ 16, Barron Dep. at 32- 33). Although the drain vents at each of the corners of the AFFX 2002 railcar were kept open during the charging phase, most of the pressure was relieved through the open door. (Tr. 867, 1071-72; Barron Dep. at 32-34). If the door was not kept open, the roof of the car was in jeopardy of being blown off because the drain vents were not sufficient to relieve the pressure. (Ir. 446- 47). 30. There is a dispute as to how the sublimated CO, gas would flow in the AFFX 2002. Many of the people involved in developing the AFFX 2002, including Messrs. Hill, Couture, Habel and Barron, believed that its CO, gas would drop down the sidewall nearest the bunker toward the aluminum floor racks, pass through the gaps between the slots on the aluminum floor racks beneath the load, and then go up on the opposite sidewall of the car and over the top of the load. (Tr. 87-88; Def.’s. Ex. 233 ¢ 14; Tr. 445; Habel Dep. at 148; Barron Dep. at 18). Mr. Fink, who also was involved in the design of the AFFX 2002, however, believed that the gas would flow on top of the load and go down both sidewalls. (Tr. 849). This theory of gas flow is contrary to what is claimed as the gas flow in the Fink and Habel Patent. (Pl’s. Ex DF; Tr. 858). While GATC’s in-court demonstration was of interest in trying to determine through the use of a simulated model how the AFFX 2002 actually may have worked, (Pl.’s Ex. HK), it is not entitled to much weight because it does not answer the question of how the relevant persons in the art believed the AFFX 2002 worked during the relevant time period. 31. Mr. Hill was involved in providing input and design assistance for the BNFE 3, the AFFX 2001, and the AFFX 2002/2003 cars. (Tr. 22, 84, 90, 418-20, 425-26). The development of a successful cryogenic railcar was very much an 3la evolutionary process involving trial and error. Mr. Hill was the only person who was aware of everything that was going on in connection with AFFCAR activities. He was the only person actively involved in the development phase of each and every prototype car developed by AFFCAR. (Def.’s Ex. 234). 32. Each of the prototypes developed by AFFCAR and/or Burlington Northern had problems. However, by 1985, Burlington Northern began to commercialize the AFFX 2002/2003 design and built 75 railcars incorporating the AFFX 2003 design. Burlington Northern indicated to the industry that it was going to seek a patent. As a result, AFFCAR disbanded in March 1985. (Tr. 92-93). 33. At the time AFFCAR disbanded in March of 1985, Mr. Hill and his employer Lamb-Weston knew that there were problems with the AFFX 2002/2003 design. In particular, it was generally known that the car had hot spots along the sidewall opposite the bunker vents, were, resulting in the thawing of frozen product by the time it reached the east coast. Therefore, Lamb-Weston instructed Mr. Hill to continue working on the development of a successful cryogenic car. (Tr. 95-96). 34. Burlington Northern patented the AFFX 2002/2003 design. The patent issued as U.S. Patent No. 4,593,536 to two Burlington Northern employees, James K. Fink and David H. Habel (“Fink and Habel Patent”). (Pl.’s Ex. CQ; Tr. 92- 93). The Fink and Habel Patent specifically disclosed that “[w]hen the refrigerant flakes sublimate in the bunker, the vapor flows from the bunker out the screen mesh, down the channel of the first sidewall, across the air flow channel and up the channel of the second sidewall, all by convection.” (Pi.’s Ex. CQ). Ultimately, Burlington Northern refurbished 75 cars utilizing a modified AFFX 2002/2003 design. These cars were not effective because they suffered from hot spots on the sidewall. 32a As a result, the Burlington Northern cars were never accepted in the marketplace, and ultimately were taken out of service. (Def.’s Ex. 233 ¢¢ 14-21). 35. The design that ultimately led to the °876 Patent was conceived by Mr. Hill during the summer of 1985. (Tr. 96; Def.’s Ex. 233 ¢ 22). During the summer of 1985, Mr. Hill spoke often to Mr. Jenkins, a fellow employee at Lamb-Weston, about how a CO, car should be designed. (Tr. 733-734). Mr. Hill often pulled out pieces of paper and made sketches. During the summer of 1985, Mr. Hill described a potential design for a CO, car to Mr. Jenkins which included a false ceiling created by the use of a bunker. (Tr. 737). During this same time period, Mr. Hill also described this idea to a Mr. LeRoy Couture, a marketing manager with the Burlington Northern. (Def.’s Ex. 233 ¢ 13). Mr. Hill’s idea included use of vents along both sides of the ceiling bunker, as well as the use of corrugated walls on the end walls and the side walls and flooring of the car. (Tr. 754). (Def.’s Ex. 235). Mr. Jenkins also saw Mr. Hill with blueprints regarding this design. (/d.; Tr. 747-49). Blueprints, which reflected Mr. Hill’s design, were prepared by Lamb-Weston’s engineering draftsman during the summer of 1985. (Tr. 96). 36. Mr. Hill’s employer, Lamb-Weston, was not interested in manufacturing railcars. It was interested in having someone else make them for Lamb-Weston’s use. (Tr. 266). 37. Mr. Weiner knew Mr. Hill because of the business relationship between Mt. Airy and Lamb-Weston. Mr. Weiner was familiar with the Burlington Northern cryogenic railcars because they had been off-loaded at Mt. Airy. Because of this, he also knew that the Burlington Northern cars—AFFX 2001 and 2002 (which were the AFFCAR prototypes)—had “hot spots” resulting in a thawing of frozen food product by the time the cars reached Mt. Airy. (Tr. 252). 33a 38. Mr. Weiner recognized the commercial potential of cryogenic railcars as a replacement to mechanical cars. Mr. Weiner and Mr. Hill agreed to work together to build a new prototype cryogenic railcar. Mr. Weiner agreed to fund the construction of a new prototype. (Tr. 253-54). 39. Mr. Weiner and Mr. Hill acquired and modified one of the AFFCAR prototypes, the AFFX 2001, into a new design. However, because the previously used construction facilities were no longer available, Messrs. Weiner and Hill had to find another party to do the modification work they desired. (Tr. 254). 40. Mr. Hill first met James S. Moe of C.V. Engineering in October of 1985. (Tr. 99; Stip. No. 3). At all relevant times, the company was commonly referred to simply as Cryo-Van, a company principally operated by James S. Moe and Tom Maxwell. Mr. Hill’s initial meeting with Mr. Moe led him to believe that Cryo-Van had the capability of modifying the AFFX 2001 into his new design because Cryo-Van had the capability to manufacture fiberglass which was an important component of the new design. (Tr. 100-101). 41. In late 1984, James Moe, with the assistance of Tom Maxwell, designed and developed a cryogenically refrigerated “all purpose container” for the transport of frozen fish. Mr. Moe is a natural mechanic with cryogenic experience. His real expertise is in design and finding creative practical solutions to mechanical problems. The container included a bunker (or tray) extending the full length and width of the container to serve as a false ceiling above the fish cargo and upon which solid carbon dioxide was placed. The bunker served the same purpose as all bunkers holding refrigerants such as solid carbon dioxide, to-wit: to prevent direct contact of the refrigerant with the cargo below and, thus, avoiding overfreezing of the top of the load. Cryo-Van’s bunker was formed with vent openings along the 34a side walls of the container to permit sublimated carbon dioxide gas to flow naturally down from the bunker to the cargo below. 42. In October of 1985, Mr. Hill sent blueprints of his design and of the original railcar which was to be converted into the new design (the AFFX 2001), to Cryo-Van. (Tr. 100). Mr. Moe ultimately threw away the blueprints sent to him by Mr. Hill. (Tr. 903). After receiving blueprints from Mr. Hill, C.V. Engineering submitted a bid to Mr. Hill in the amount of $22,150 by letter dated October 29, 1985. (Def.’s Ex. 21). This letter specifically acknowledges receipt of the blueprints from Mr. Hill and itemizes in detail the various changes requested by Mr. Hill for modification of the AFFX 2001 into the new design which ultimately became known as the CRYX 1000. (Jd.) Mr. Moe acknowledged that Mr. Hill’s prior designs included a bunker-type compartment. (Pl’s Ex. HP at 690). 43. Cryo-Van converted the AFFX 2001 to the CRYX 1000. Althowgh who actually designed the CRYX 1000 is not without some controversy, the evidence indicates that it is more likely than not that Mr. Hill principally designed the CRYX 1000. 44. The October 29, 1985 letter from Cryo-Van to Ralph Hill, while he was at Lamb Weston, Inc., confirms that the blueprints were sent to Cryo-Van by Mr. Hill. The first paragraph of the letter reads in pertinent part as follows: I [Tom Maxwell, General Manager of Cryo-Van] also thank you [Ralph Hill] very much for your prompt arrangement for expediting your blueprints on above The Court specifically finds by a preponderance of the trial evidence that it is more likely than not that this language referred to blueprints of Mr. Hill’s design. 35a 45. The second full paragraph of the October 29, 1985 letter reads in pertinent part as follows: Pursuant to our recent discussion on refurbished rail car # 2001 to Bfujnker type rail car, we would like to offer you our proposal after carefully review [ing] your blue-prints as follows: * * *£©* * *€ * y To remove existing end wall skins and install a vent from plenums to upper extremity of the end walls, 3. To make up and install a plenum at each end of the All-Air floor to connect to the vent to relieve the flash gas from the car at floor level, this imsures that all the gas is used for cooling before being emitted to the outside, * * * & * * 5. To install Fluted fiberglass panels on the end walls, 6. To install bunker system designed and built by C.V. System Engineering, Inc. A To install a single centered CO, manifold designed and built by C.V. System Engineering, Inc. with load, test and bleed controls under the car at one end. * * * *€* *€ * - 10. To remove the existing floor, tanks and grid work that now make up floor, — 11. To build up from the sub-floor to the base for the All-Air floor, 36a 12. To install an All-Air floor. Although Cryo-Van helped to improve the original Hiil design, this letter does not, contrary to GATC’s position, indicate that Cryo-Van principally invented the CRYX 1000. Messrs. Moe and Maxwell used Mr. Hill’s blueprints and the shell of the AFFX 2001 railcar to complete the construction of the CRYX 1000. 46. A December 10, 1985 letter from Mr. Marvin H. Weiner to Mr. M. Tom Maxwell, General Manager of C.V. System Engineering, Inc., states as follows: Dear Tom: You should by now have received AFFX 2001 (hereinafter referred to as CRYX 1000) for refurbishment. . . . The body of this letter contains the following paragraph: It is also my understanding from Ralph [Hill] that he has discussed the matter of patent searches, clearances and indemnification with you. Indemnification should be for Lamb-Wesion, Ralph and myself personally, Cryo- Trans and Mt. Airy Cold Storage. Based on the ultimate performance of CRYX 1000, we see this as the forerunner of mutually exciting times for all of us. : At the time of this letter, Messrs. Hill and Weiner were concerned that Cryo- Van’s liquid CO, bunker-style refrigeration system might be alleged to infringe the Rubin Carbonaire Plate CO, Snow Bunker System. (Pl.’s Ex. HP at 749). In the Rubin Patent [U.S. Letters Pat. No. 3,561,266], carbon dioxide gas was expanded within containers [bunkers] at the top of the vehicle storage area so as to form a deposit of snow within the 37a containers. (Pl.’s Ex. AL). The snow provided a cold surface on the bottom of the containers to cool the circulating air within the vehicle. In addition, in one embodiment, a single vent was provided in each container to permit carbon dioxide gas to flow into the storage area. In another embodiment, the carbon dioxide gas was vented to the atmosphere outside of the container. There were concerns over a possible patent suit by Burlington Northern. (Def.’s Ex. 39). These concerns ultimately led to a proposed Patent License Agreement between Cryo-Trans and Burlington Northern. (Def.’s Exs. 27, 29, 35, 36; Pl.’s Ex. HP at 745). Cryo-Trans also entered into a Patent License Agreement with the owner of the Rubin Patent. (Tr. 259-264; Def.’s Ex. 48). Given this background, Messrs. Weiner and Hill’s desire to obtain a “hold harmless” indemnification from Cryo- Van was understandable. 47. Cryo-Trans’ request for “hold harmless” indemnifi- cation was accepted by Cryo-Van by letter dated December 12, 1985. In closing, the letter stated the following: Regarding a patent, our attorney of Washington, D.C. indicated there is no such patent [that] was applied [for in] recent year[s], however, as you understand, we are going to apply our concept as patent as soon as possible. In this letter Messrs. Moe and Maxwell never claimed that they were the principal designers of the CRYX 1000. If they had been, it is extremely unlikely that they would have agreed to Mr. Weiner’s “hold harmless” request without some reciprocal business consideration. 48. A February 4, 1986 letter written by Cryo-Van to Mr. Weiner upon the completion of the CRYX 1000 also makes no claim that Cryo-Van had designed the CRYX 1000. Instead, 38a this letter merely refers to the “refurbishment of your CRYX 1000". (Def.’s Ex. 28). 49. Mr. Moe has no credible documentation which clearly and convincingly indicates that he conceived of the invention defined in the ’876 Patent prior to the time the invention was conceived by Mr. Hill. The earliest documentation that Mr. Moe has which allegedly supports any claim of inventorship by him is a sketch of a CO, container having a manifold and exhaust system, which was sealed and mailed on December 17, 1985--after Mr. Moe had met Messrs. Hill and Weiner. (P1.’s Ex. AK). The documentation submitted by GATC as evidence that Mr. Moe was the true inventor does not clearly contradict Mr. Hill’s claim of inventorship. This Court specifically finds that the testimony of Messrs. Hill and Weiner about the development and invention of the ’876 Patent was corroborated by admissible evidence and that Mr. Moe’s testimony concerning the same issue was not. Unlike Mr. Hill, Mr. Moe had no historical involvement in the development of cryogenically refrigerated railcars. Mr. Moe had no experience with railcars or with CO, manifold systems prior to building the CRYX 1000 for Cryo-Trans. 50. From 1983 to 1988, Mr. David Burgener served as Food Program Manager and/or Director of Applications for the Cardox Corporation. This position gave him engineering and marketing responsibilities with respect to the use of solid or liquid carbon dioxide for the refrigeration of food supplies. As part of the management of Cardox Corporation, Mr. Burgener was aware that a committee of the American Frozen Food Institute was exploring the feasibility of non-mechanical, cryogenic refrigeration for food shipments on railcars, and that Cardox was being solicited as a supplier of the liquid carbon dioxide to be used im such cryogenically refrigerated railcars. Cardox was at that time, and long has been, in the business of 39a selling solid or liquid carbon dioxide for use in refrigeration systems. 51. In March of 1986, Mr. Burgener witnessed the maiden voyage and unloading of the CRYX 1000 at the Mt. Airy Cold Storage warehouse in Mt. Airy, Maryland. The unloading of the CRYX 1000 occurred on March 14, 1986 at Cryo-Trans’ Mt. Airy Cold Storage warehouse in Mt. Airy, Maryland. At the unloading were representatives from Mt. Airy Cold Storage, Lamb-Weston, Liquid Air-Cardox, and the Burlington Northern Railroad. The unloading was also not a secret event. All who attended were there at the invitation of defendant Cryo-Trans’ chief executive officer, Mr. Weiner and/or Mr. Hill. 52. A July 2, 1986 letter from Mr. Weiner to Mr. Hill, which significantly predates this controversy and resulting litigation, also documents that Mr. Hill was the inventor of the CRYX 1001 design. (Def.’s Ex. 38). 53. On August 12, 1986, Ralph Hill, while still a Lamb-Weston employee, filed a patent application for the cryogenic refrigeration system at issue. The Hill patent application was prepared by Lamb-Weston’s attorney, Kenneth Klarquist. (Stip. No. 8). He did not have a copy of the original design blueprints in his file. He did have a copy of a sketch of the railcar reflecting changes to be made at Mells Cargo from the original CRYX 1000, which he could use to describe the best mode of the patented invention. (Klarquist Dep. at 103; Tr. 546). 54. Kenneth Klarquist, received, but did not disclose to the Patent Office, the Kurth British Patent 399,678 (Stip. No. 10; Pl.’s Ex. CR) (“the Kurth Patent”). Klarquist received the Kurth Patent and other prior art patents from Mr. David Abrams, who was Mr. Weiner’s patent attorney. (Stip. No. 9). Klarquist indicated that his usual practice was that he would, in 40a fact, have received such materials, and supplemented the disclosure already made to the Patent Office if he believed it was appropriate. (Klarquist Dep. at 63, 66-68). 55. The Kurth Patent (P1.’s Ex. CR) discloses a cryogenic refrigerated railcar with an overhead solid carbon dioxide bunker system having a plurality of openings arranged along the side walls for downward flow into the cargo area of sublimated CO, gas. (Pl.’s Ex. CR; Tr. 582, 599). 56. On or about December 2,-1986, the Patent and Trademark Office of the United States Department of Commerce rejected Mr. Hill’s patent application stating: The following. . . quotation of 35 U.S.C. 103. . . [is] the basis for all obvious rejections set forth in this Office: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences 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 to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. Subject matter developed by another person, which qualifies as prior art only under subsection (f) and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. a eI MT Te MS eT ee 4la Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fink et al or Cryogenic Rail Car in view of Hall. It would [be] obvious to modify either Fink et al or Cryogenic Rail Car to arrange the CO, flow within the wall channels for sinuous flow as taught in Hall Fig. 7. (Pl.’s Ex. 2). To obtain reconsideration of this denial, Hill amended Claims 1 and 6 of the Application to stress the corrugated nature of the containers’ walls. (Pl.’s Ex. 2). 57. On November 10, 1987, Hill’s application was granted, and the ’876 Patent was issued. The ’876 Patent states that “it is an object of the invention to provide a railcar construction utilizing carbon dioxide snow as the refrigerant wherein all the contents of the car will be maintained within desirable temperature limits during shipment.” (Def.’s Ex. 200). The invention relates to a refrigeration system for vehicles, and more particularly to the construction of storage compartments for utilizing carbon dioxide as a refrigerant in transporting products by vehicles such as trucks, trailers, railcars and the like. In April of 1990, Cryo-Trans acquired the °876 Patent from Lamb-Weston. (Def.’s Ex. 142). 58. Mr. Hill testified he last saw the original blueprints at Lamb-Weston. (Tr. 124). During the proceedings in this case, Mr. Hill was unable to produce the original blueprints that led to the °876 Patent. In 1988, after Mr. Hill’s departure, Lamb-Weston was sold to Con-Agra, Inc. Thereafter Lamb- Weston’s headquarters were moved from Portland, Oregon to Pasco, Washington and a substantial number of business records from Lamb-Weston were discarded. (Stip. No. 27). The original blueprints may have been discarded by Lamb-Weston. 59. Claim 1 of the ’876 Patent is an independent claim from which the other claims-claims 2 through 3—depend: 42a Claim 1. In a container adapted to be maintained in a refrigerated condition from the sublimation of carbon dioxide snow the combination comprising: a storage area defined by a floor, a pair of opposed side walls, a pair of opposed end walls, and a ceiling means an insulated roof positioned above said ceiling means and defining therewith a compartment for supporting a supply of carbon dioxide snow, said compartment extending substantially the full length of said car; means in said compartment for forming carbon dioxide snow and means for connecting said carbon dioxide snow forming means to a supply of liquid carbon dioxide; a plurality of openings through said ceiling means adjacent each of said side walls and end walls for permitting the flow of sublimated carbon dioxide gas from said compartment; each of said walls being corrugated to define a plurality of channels therein open-sided toward the interior of the container whereby said carbon dioxide gas may flow from said openings in said ceiling means downwardly through said channels between said walls and a product load disposed in said container toward said floor. Claims 2 and 3 of the patent incorporate all of the limitations of claim 1. In addition to that which is recited in claim 1, claim 2 calls for the “ceiling”, or bunker floor, to be insulated to resist heat transfer therethrough: 43a Claim 2. The container of claim 1 wherein said ceiling means comprises a layer of insulation to inhibit the transfer of heat through said ceiling means from said storage area. In addition to the limitations of claim 1, claim 3 states that the floor of the container is formed with a plurality of open top channels extending from one end wall to the other: Claim 3. The container of claim 1 wherein said floor is defined by a plurality load supporting elements defining open top floor channels ‘ extending substantially from one end wall to the other. 60. Immediately prior to trial, Cryo-Trans limited its claim for infringement of the ’876 Patent to any of Claims 1, 2 and 3. (Final Pretrial Order: Waiver of Claims). 61. The term “adjacent” as used in patents means not necessarily at but nearby or near. (Tr. 539). 62. On November 8, 1977, United States Letters Patent, No. 4,057,367 was issued to Mr. James S. Moe, and Messrs. Marvin B. Carter and Ray L. Carter for their invention of a “Combined Rotary-Reciprocating Piston Compressor,” to- wit: “[a] compact but high volume displacement, relatively noiseless and vibration free compressor for refrigeration gas or the like combining a rotary drive input with six cylinders and three reciprocating pistons within a rotor housed in a stator.” (Pl.’s Ex. AY). 63. On August 9, 1988, United States Letters Patent, No. 4,761,969 issued to Mr. James. S. Moe for the invention of “[a] non-mechanical refrigeration system particularly for use in a large insulated container such as a truck or railroad car for maintaining perishables at a desired low temperature during ‘a i shipment. A cryogenic material such as liquid CO, is used in a plurality of modes to permit or prevent exposure of the foodstuffs to CO, vapors.” (Pl.’s Ex. AZ). 64. Mr. Moe never sought to patent an invention exactly like the *876 Patent and his attorney never challenged the issuance of the ’876 Patent to Mr. Hill. 65. The cryogenic refrigeration system covered by the ’876 Patent at issue in this case, is essentially [a] railcar refrigerated by carbon dioxide snow [with a] compartment at top for containing a supply of such snow. Openings are provided along each side and end wall for escape of carbon dioxide gas from [the] compartment so it can flow down along each side of load and envelop same. Floor of car is formed with longitudinal channels with manifolds at ends of car to cause flow of gas toward one end along side walls and then through interior channels to discharge opening at opposite end. 66. Columns 1 and 2 of the specification text of the ’876 Patent make reference to and distinguish the subject invention from such prior art as-the Fink patent, which refers to a bunker-style cryogenically refrigerated railcar, and the AFFX 2001 railcar. As concerns the AFFX 2001 railcar, the ’876 Patent notes as a problem the direct deposit of carbon dioxide snow on the cargo load, causing overfreezing at exposed parts of the load. The Fink patent is acknowledged to disclose a bunker to contain carbon dioxide snow out of contact with the load, but is reported to not be effective in enveloping the load with cold carbon dioxide gas since the openings in the bunker floor are only along one side wall of the car. (Pl.’s Ex. A). 67. The specification text and drawings of the ’876 Patent describe a railcar refrigerated by carbon dioxide snow which is 45a deposited in a compartment or bunker beneath the roof of the railcar and overlying the cargo area of the railcar. The use of carbon dioxide as a refrigerant and the use of a bunker to hold carbon dioxide snow is all part of and taught by the prior art. Openings are provided along each side and end wall of the bunker floor through which sublimating carbon dioxide gas escapes from the bunker to flow down along the side walls and end walls of the car, enveloping the cargo. The use of openings in the ceiling of or in a bunker beneath the roof of a container to allow carbon dioxide gas to escape to and envelop the cargo below is all part of and taught by the prior art. Each of the cargo area walls is formed with sinuous channels to permit the flow of the carbon dioxide gas towards the floor beneath the cargo. The use of channeled or corrugated wail [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386013_0076%3A1. Public record. Not legal advice.