Petition for Writ of Certiorari — SMC Corp. v. Norgren, Inc. (No. 09-412)
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No. 09-412 001 6- <8
OFFICE OF THE CLERK
INTHE yiffasn K. Suter, Cierk
Supreme Court of the United States
SMC CORPORATION and
SMC CORPORATION OF AMERICA,
Petitioners,
v.
NORGREN, INC.,
Respondent,
and
U.S. INTERNATIONAL TRADE COMMISSION
Respondent.
On Petition for a Writ of Certiorari
to the United States Court of Appeals
for the Federal Circuit
PETITION FOR WRIT OF CERTIORARI
ARTHUR I. NEUSTADT
Counsel of Record
THOMAS J. FISHER
BARRY J. HERMAN
ERIC W. SCHWEIBENZ
OBLON, SPIVAK, MCCLELLAND,
MAIER & NEUSTADT, L.L.P.
1940 Duke Street
Alexandria, VA 22314
(703) 413-3000
Counsel for Petitioners
1
QUESTION PRESENTED FOR REVIEW
The claims in a patent are critical since they
define the scope of the exclusionary right. Prior to
Markman v. Westview Instruments, Inc., 52 F.3d 967
(Fed. Cir. 1995) (en band, affd, 517 U.S. 370 (1996),
the jury construed the claims. Although this Court in
its Markman decision supra held as a matter of policy
that the claims should be construed by the district
court, this Court did not hold that this construction
was entitled to no deference upon appeal.
In Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448 (Fed. Cir. 1998) (en band, the Federal Circuit
held that a district court’s claim construction was
entitled to no deference upon appeal. This ruling has
resulted in a highly unsatisfactory situation during
the last eleven years, fe, a claim construction
reversal rate of roughly 40%, a need for many patent
cases to be tried more than once, and increasing
dissatisfaction by the district courts whose claim
constructions are afforded no deference and are
reversed almost half the time. Although some
Federal Circuit judges have long recognized this
problem, it appears that its correction can only come
from this Court. Thus, the question presented for
review is -
Should the Federal Circuit accord deference to a
district court’s claim construction?
|
CORPORATE DISCLOSURE STATEMENT
SMC Corporation is the parent of SMC
Corporation of America. No publicly held company
owns 10% or more of its stock.
ill
TABLE OF CONTENTS
QUESTION PRESENTED FOR REVIEW. ................. i
CORPORATE DISCLOSURE STATEMENT. ............ il
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Federal Circuit’s Decision...................ccssesesseees 4
REASONS FOR GRANTING THE PETITION ......... 8
Cybor’s “No Deference” Rule Has
Resulted in an Unacceptably High
Roughly 40% Reversal Rate.....................0.00008. 8
1V
Cybor’s “No Deference” Rule Has
Alienated the District Courts Whose
Claim Constructions Are Reversed Almost
Be I Gio sca caus ctcwiedenercedccnepeddnsvosseiavinses 18
Cybor’s “No Deference” Rule Is Not
Supported By This Court’s Markman
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APPENDIX
Appendix A - Federal Circuit decision,
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Appendix B - ITC decision, April 14, 2008 ............. lla
Appendix C - ALJ decision, February 13, 2008...... 15a
Appendix D - Order denying petition for
rehearing en banc, August 21, 2009.................. 99a
Appendix E - American Bar Association Amgen
amicus brief, April 25, 2007 ...............ccccccsoccees. 101la
Appendix F - Federal Circuit Bar Association
Amgen amicus brief, April 25, 2007 ................ 110a
Appendix G - James F. Holderman, et al.,
The Patent Litigation Predicament
in the United States,
2007 U. Ill. J.L. Tech. & Pol’y 1 (2007)............ 129a
Vv
TABLE OF AUTHORITIES
Cases
Amgen Inc. v. Hoechst Marion Roussel Inc.,
469 F.3d 1039 (Fed. Cir. 2006) (en banzo)......... 11, 12
Certain Connecting Devices (“Quick-Clamps”), For
Use with Modular Compressed Air Conditioning
Units, Including Filters, Regulators, and
Lubricators (“FRL’s’) That Are Part of Larger
Pneumatic Systems and the FRL Units They
Connect, ITC Inv. No. 337-TA-587,
ES FS Cette BU CE BOE onc cscccccscsccecccceccaces 1
Cooter & Gell v. Hartmarx Corp.,
I BD opicoacissscensnkevssincexscdwincesecaensvvcesnved 14
Cybor Corp. v. FAS Techs., Inc.,
138 F.3d 1448 (Fed. Cir. 1998) (en bano)........ passim
Irdeto Access, Inc. v. Echostar Satellite Corp.,
383 F.3d 1296 (Fed. Cir. 2004)............:ssssserseeserees 6-7
Markman v. Westview Instruments, Inc.,
Be re I oosss vovcsccshaviceuuasiivsv.chassccdaneces 9,18
Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995) (en banc)........ 11, 17, 18
Norgren v. ITC,
2009 U.S. App. LEXIS 10984 (Fed. Cir. 2009) ........ 1
vl
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en bano)........ passim
Salve Regina College v. Russell,
NN cnccessurcsinssarsassssescvsuesecoasvesnevesens 14
Vitronics Corp. v. Conceptronic Inc.,
00 F.Sd 1676 (red. Cir. 1906)...........0:ssscrssscerrcsssceess 6
Statute
I I os css cdh dsaesncceaninnnxnevensebetiointioens 1
Other
Gretchen Ann Bender, Uncertainty and
Unpredictability in Patent Litigation:
The Time is Ripe for Consistent Claim
Construction Methodology,
8 J. Intell. Prop. L. 175 (Spring 2001) ..............0c008s )
Christian A. Chu, Empirical Analysis of the
Federal Circuit's Claim Construction Trends,
16 Berkeley Tech. L.J. 1075 (Fall 2001) «0.000.000.0000. )
James F’. Holderman, et al., The Patent
Litigation Predicament in the United States,
2007 U. Ill. J.L. Tech. & Pol’y 1 (2007) ...8, 19, 20, 21
Kimberly A. Moore, Markman Eight Years Later:
Is Claim Construction More Predictable?
9 Lewis & Clark L. Rev. 231 (2005) ............. 9,10, 13
vl1l
Andrew T. Zidel, Patent Claim Construction in
the Trial Courts: A Study Showing the Need
for Clear Guidance from the Federal Circuit,
33 Seton Hall L. Rev. 711 (2009)................ Sas LO
OPINIONS BELOW
The Federal Circuit’s decision is reported at
2009 U.S. App. LEXIS 10984 (Fed. Cir. 2009). The
ALJ’s decision (adopted by the ITC) is reported at
2008 ITC LEXIS 285 (ITC 2008).
JURISDICTION
The Federal Circuit’s decision was entered on
May 26, 2009. SMC’s petition for rehearing en banc
was denied on August 21, 2009. The basis for this
Court’s jurisdiction is 28 U.S.C. §1254(1).
STATEMENT OF CASE
Procedural History
Respondent Norgren Inc. (“Norgren”) filed a
complaint before the U.S. International Trade
Commission (“ITC”) against SMC Corporation and
SMC Corporation of America (collectively “SMC”)
asserting infringement of U.S. patent 5,372,392 (“the
‘392 patent”). Administrative Law Judge (“ALJ”)
Carl C. Charneski conducted a hearing and developed
an evidentiary record. Based on this record, the ALJ
provided claim constructions for the disputed claim
terms, and found non-infringement based upon his
construction of the claim term “a_ generally
rectangular ported flange.” The ITC adopted this
decision as its final determination.
Norgren appealed to the Federal Circuit and
SMC intervened. The Federal Circuit afforded the
ALJ’s construction no deference, adopted its own de
novo construction, held that SMC literally infringed
and remanded to the ITC to reconsider validity of the
‘392 patent under the Federal Circuit’s new claim
construction. SMC filed a petition for rehearing en
banc in which it challenged, snter a/ia, the Federal
Circuit’s rule in Cyhor that a district court’s claim
construction is entitled no deference, but its petition
was denied.
SMC’s Products
The subject matter of this suit pertains to a
connector (or clamp) used to connect components,
such as a filter (“F”), regulator (“R”) or lubricator
(“L”), in a pneumatic (air) line. The accused SMC
connectors are designed to connect FRL’s having two
mounting ears (an ear on each side of a face), which
are received into the connector. These mounting ears
are shown below in orange.
SMC’s Mounting Ears
3
Norgren’s ‘392 Patent
Norgren’s ‘392 patent is directed to a connector
which, instead of connecting mounting ears, is
designed to connect to a generally rectangular ported
flange on the FRL units. Norgren’s flange, claimed as
“a generally rectangular ported flange,” is shown
below in red. (SMC’s mounting ears preceded
Norgren’s rectangular ported flange by about ten
years).
Norgren’s Generally Rectangular Ported Flange
ALJ’s Decision
After a three day evidentiary hearing during
which the ALJ heard testimony on claim construction
by both Norgren’s and SMC’s experts, and after the
submission of extensive post trial briefing, the ALJ
issued a comprehensive 66 page Initial
Determination, that includes a 33 page section on
claim construction, App. 23a°62a, of which 15 pages
are dedicated to the construction of the claim term “a
4
generally rectangular ported flange,” App. 35a-52a,
concluding that “a generally rectangular ported
flange’ is a flange of rectangular shape with
projections on all four sides and a hole in the middle
that is used as a port.” App. 44a, emphasis added.
This construction was not surprising since a
rectangle has four sides.
The ALJ discounted the testimony of Norgren’s
expert since, during the hearing, he admitted that he
did not review the prosecution history, he did not
even know what a prosecution history was, and he
had no concern that his interpretation of claim
language might be inconsistent with the prosecution
history. App. 48a.
The ITC declined Norgren’s request to review
the ALJ’s decision, adopting it as _ its final
determination. App. 1la-ld4a.
Federal Circuit’s Decision
Despite the ALJ’s detailed consideration of the
proper claim construction for “a generally rectangular
ported flange,” the Federal Circuit gave his decision
short shrift, holding that “[wle review claim
construction de novo,” citing Cybor. Unbound by any
requirement that it afford any deference to the ALJ's
decision, the Federal Circuit proceeded to find for
reasons not entirely clear in its decision that the
language a “generally rectangular ported flange” did
not require a flange which was generally rectangular
with a port in its center.
5
The Federal Circuit afforded no deference to the
ALJ’s consideration of what transpired at the
evidentiary hearing, or to his well-reasoned claim
construction, and concluded with little explanation
that “[nJothing in the claims, written description or
prosecution history requires four projecting rims.”
App. 7a. However, the claims do require a “generally
rectangular” ported flange and a rectangle has four
sides. The Federal Circuit further stated that “[t]he
claims of the ‘392 patent do not recite the terms ‘rim’
or ‘projection.” Jd. However, the claims do recite the
term “generally rectangular ported flange” which
requires four “rims” or “projections” since a rectangle
has four sides.
The Federal Circuit also concluded with little
explanation that “under the _ well-established
prohibition on importing limitations from the
specification into the claims, see Phillips v. AWH
Corp., 415 F.3d 1303, 1320, 1323, the ‘generally
rectangular ported flange’ of the asserted claims of
the ‘392 patent is not limited to a flange having four
projecting rims.” App. 8a. This conclusion is directly
contrary to the ALJ’s determination that:
In view of the fact that the clamp must be
four-sided, and the clamp is _ specifically
adapted to engage the generally rectangular
ported flanges of the FRLs, it is reasonable
to conclude that each rectangular flange is
engaged on all four of its sides by the four:
sided clamp. Thus, the clamp is adapted to
engage flanges with four projecting rims.
App 52a.
6
The ALJ further explained that:
Norgren offers no explanation as to why, if
the clamp were adapted to engage a flange
with only two projecting rims, the claim
emphasizes the generally rectangular shape
of the flange, and moreover, why the claim
requires as a limitation that the clamp be
four-sided. There is nothing in the claim
language, the specification, or the
prosecution history (quoted above) to
indicate that somehow a four-sided clamp
fitting over a generally rectangular (ie.,
four-sided) flange could fit over only two
sides of the rectangle, or how a rectangle
could have only two sides.
App. 57a, emphasis added.
The Federal Circuit’s decision is also contrary to
the fundamental claim construction rule in PaAil/ips,
supra, that the specification is “the single best guide
to the meaning of a disputed term.”
Assigning such a limited role to _ the
specification, and in particular requiring
that any definition of claim language in the
specification be express, 1s inconsistent with
our rulings that the specification 1s “the
single best guide to the meaning of a
disputed term,” and that the specification
“acts as a dictionary when it expressly
defines terms used in the claims or when it
defines terms by implication.” Vitronics, 90
F.3d at 1582; Jrdeto Access, Inc. v. Echostar
7
Satellite Corp. 383 F.3d 1295, 1300 (Fed.
Cir. 2004) (“Even when guidance is not
provided in explicit definitional format, the
specification may define claim terms by
umplication such that the meaning may be
found in or ascertained by a reading of the
patent documents.”) (citations omitted).
Phillips, 415 F.3d at 1320-21, emphasis added.
Phillips was followed by the ALJ but the Federal
Circuit failed to heed its mandate that the focus be
upon the language of the claim as supported by the
specification (and drawings) and not upon extrinsic
matters. Pursuant to this mandate, the Federal
Circuit should have focused upon the claim language
“a generally rectangular ported flange” and not upon
the extrinsic terms “rim” or “projection.”
Had the Federal Circuit accorded deference to
the ALJ’s claim construction, its conclusion likely
would have been different and correct. In short, the
ALJ correctly held that the claim term rectangular
ported flange required a flange in the shape of a
rectangle, e., one with four sides. The Federal
Circuit, however, according no deference to the ALdJ’s
claim construction, held that the claim term
rectangular ported flange did not require a flange
with four sides (“nothing in the claims ... requires
four projecting rims [sides]”). Cybor’s “no deference”
rule permitted the Federal Circuit to summarily
dismiss the ALJ’s construction and find that a
rectangular ported flange need not have four sides.
8
REASONS FOR GRANTING THE PETITION
Cybor’s “No Deference” Rule Has Resulted in an
Unacceptably High Roughly 40% Reversal Rate
In his law review article entitled “The Patent
Litigation Predicament in the United States,” Chief
Judge James F. Holderman of the United States
District Court for the Northern District of Illinois
states that “the reversals by the Federal Circuit of
district court decisions on patent claim construction
are nothing of which to be proud” and describes
reversal rates of 33-50%. App. 132a, emphasis added.
Depending on what statistics and whose
opinion one looks at, the reversals by the
Federal Circuit of district court decisions on
patent claim construction are nothing of
which to be proud. The rate of these
reversals adds to the uncertainty In patent
litigation. In 1998, two years after the
United States Supreme Court’s opinion in
Markman v. Westview Instruments, Inc.
affirming the Federal Cuircuit’s decision,
Federal Circuit Judge Randall Rader, in his
concurrence in the en banc decision Cybor
Corp. v. FAS Technologies, Inc., opined that
from his vantage point it appeared the
reversal rate regarding patent claim
construction by district court judges was
“hovering near 50%” for the cases decided
during the approximately two and a half
year period of April 1995 through November
1997. After that startling revelation from a
highly respected appellant jurist, Professor
9
Kimberly Moore, now herself a judge of the
United States Court of Appeals for the
Federal Circuit, undertook a = detailed
analysis of all Federal Circuit claim
construction cases from April 23, 1996, (the
day the Supreme Court issued its decision in
Markman) through December 31, 2000, and
concluded “that district judges improperly
construe patent claim terms in 33% of the
cases appealed to the Federal Circuit.”
Another scholar, Christian A. Chu, studied
Federal Circuit cases between January 1,
1998, and April 30, 2000. Chu found that
the reversal rate was 44%. Other similar
studies placed the reversal rate around 40%.
App. 132a°133a, emphasis added, footnotes omitted.
Although the case at bar involves the ITC, the ALJ
in an ITC proceeding functions as a trial judge
similar to a district court judge with respect to claim
construction.
Judge Holderman’s article refers to a number of
studies showing a 40% reversal rate which, not
surprisingly, leads to “uncertainty and
unpredictability in patent litigation.”
E.g., Gretchen Ann Bender, Uncertainty and
Unpredictability in Patent Litigation: The
Time is Ripe _ for Consistent Claim
Construction Methodology, 8 J. Intell. Prop.
L. 175, 206-07 (Spring 2001) (finding a 40%
reversal rate from Markman opinion through
2000); Kimberly A. Moore, Markman Eight
Years Later: Is Claim Construction More
10
Predictable?, 9 Lewis & Clark L. Rev. 231,
236-39 (2005) |hereinafter Moore, Markman
Eight Years Later] (indicating a 40.8%
reversal rate if summary affirmances are
excluded, a 34.51% if summary affirmances
are included, and a 37.5% reversal rate in
cases in which the Federal Circuit held one
or more patent claims wrongly construed);
Andrew T. Zidel, Patent Claim Construction
in the Trial Courts: A Study Showing the
Need for Clear Guidance from the Federal
Circuit, 33 Seton Hall L. Rev. 711, 745-46
(2003) (showing a 41.5% reversal rate (39 out
of 94) of district court claim construction
decisions during 2001).
App. 161a-162a, n.11, emphasis added.
There can be little disagreement that a 40%
reversal rate is unacceptably high for a properly
functioning patent system. At least four Federal
Circuit judges have expressed a desire to overrule
Cybor’s “no deference” rule, but it does not appear
that the Federal Circuit is willing to do so.
Chief Judge Michel stated that Cybor’s “no
deference” rule is the source of four serious problems
- (1) a steadily high reversal rate, (2) a lack of
predictability which “confounds” trial judges and
discourages settlements, (3) a waste of the district
court’s claim construction, especially where the
district court spent much more time on it than the
Federal Circuit ever could and (4) the need for the
Federal Circuit to redo the tedious “minutia” of claim
construction.
11
Rehearing this case en banc would have
enabled us to reconsider Cybor’s rule of de
novo review for claim construction in light of
our eight years of experience with its
application. J have come to believe that
reconsideration is appropriate and revision
may be advisable.
In my view, four practical problems have
emerged under the Markman-Cybor regime:
(1) a steadily high reversal rate (2) a lack of
predictability about appellate outcomes,
which may confound trial judges and
discourage settlements; (3) Joss of the
comparative advantage often enjoyed by the
district judges who heard or read all of the
evidence and may have spent more time on
the claim constructions than we ever could
on appeal; and (4) inundation of our court
with the minutia of construing numercus
disputed claim terms (in multiple claims and
patents) in nearly every patent case.
K*E*
Whatever our resolution, however, I believe
the time has come for us to re-examine
Cybor’s no deference rule. | hope that we
will do so at our next opportunity, and I
expect we will.
Amgen Inc. v. Hoechst Marion Roussel Inc., 469 F.3d
1039, 1040-41 (Fed. Cir. 2006) (Michel, C.J., with
whom Rader, J., joins, dissenting from the denial of
the petition for rehearing en banc), emphasis added.
12
Similarly, Judge Newman stated:
I continue to believe that findings of
science/technology-based facts in [claim
constructions in] patent cases should receive
appellate review on the same basis as other
science-based findings, guided by Daubert
and the Court’s ensuing elaborations. ... Jt
is time to reopen the question and to rethink,
en banc, the optimum approach to accuracy,
consistency, and predictability in the
resolution of patent [claim construction]
disputes, with due attention to judicial
structure, litigants’ needs, and the national
interest in invention and innovation.
Td. at 1043 (Newman, J., dissenting), emphasis
added.
Judge Rader was of a like view - “I agree with
the reasoning of Chief Judge Michel’s and Judge
Newman’s dissents. Like them, I urge this court to
accord deference to the factual components of the
lower court’s claim construction.” Id. at 1044 (Rader,
J., dissenting), emphasis added.
Judge Moore also dissented - “I dissent because
I believe this court should have taken this case en
banc to reconsider its position on deference to district
court claim construction articulated in Cybor Corp. v.
FAS Tech., Inc., 138 F.3d 1448, 1454-55 (Fed. Cir.
1998) (holding that claim construction was purely a
matter of law and therefore subject to de novo
review).” Jd. at 1046 (Moore, J., dissenting),
emphasis added.
13
The American Bar Association (“ABA”), whose
Intellectual Property Law Section is the world’s
largest organization of intellectual property
professionals (App. 102a), previously submitted an
amicus brief to this Court seeking to overturn
Cybor’s “no deference” rule, noting that this rule has
resulted in “a high reversal rate” which in turn has
“increased the cost of litigation by frequently
requiring relitigation of issues following a reversal.”
One consequence of the Federal Circuit’s
plenary de novo review of these fact-
intensive issues, as one would expect, has
been a Aigh reversal rate® This high
reversal rate has significantly increased the
cost of litigation by frequently requiring
relitigation of issues following a reversal, or
at the very least forcing parties to put in
proof and make arguments in the alternative
because of the uncertainty of the final claim
construction.
3 See, e.g., Kimberly A. Moore, Markman
Eight Years Later: Is Claim Construction
More Predictable?, 9 Lewis & Clark L. Rev.
231, 232 (2005) (citing 34.5% reversal rate
for 1996-2003); Cybor Corp. v. FAS
Technologies, Inc., 138 F.3d 1448, 1476
(Fed. Cir. 1998) (Rader, J., dissenting)
(38.3% reversal rate per court’s 1997
official statistics).
App. 103a-104a, emphasis added, footnotes omitted.
14
The ABA further pointed out that Cybor’s “no
deference” rule is particularly inappropriate since it
is the district courts and not the Federal Circuit that
are better situated to apply a fact-dependent legal
standard such as the standard used in claim
construction (the meaning of the claims to one skilled
in the art).
The Cybor approach gives insufficient
recognition to the proper competencies of the
trial and appellate courts. As this Court has
recognized, district courts are better situated
to apply fact-dependent legal standards. 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 Salve
Regina College v. Russell, 499 U.S. 225, 233
(1991) (“deferential review of mixed
questions of law and fact is warranted when
it appears 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 legal doctrine”). District court
findings on fact-intensive inquiries
underlying claim constructions, Phillips, 415
F.3d at 1331, should be given deference for
precisely these reasons.
App. 106a, emphasis added.
15
The ABA further noted that Cybor’s “no
deference” rule resulted in “a substantial reversal
rate, ... considerable inefficiencies, unpredictability
and added expense.”
The de novo review of all aspects of claim
constructions under Cybor has contributed to
a substantial reversal rate of district court
rulings by the Federal Circuit. Members of
the ABA have observed that instead of
having the intended effect of “providing
national uniformity to the construction of a
patent claim,” Cybor, 138 F.3d at 1455, this
approach instead has introduced into patent
litigation considerable inefficiencies,
unpredictability, and added expense.
App. 107a, emphasis added, footnotes omitted.
The ABA concluded that reviewing’ the
underlying findings of fact in a claim construction for
clear error would decrease the reversal rate which
would reduce patent litigation costs which in turn
would benefit both patentees and accused infringers
alike.
Reviewing a district court’s ultimate claim
construction de novo and the underlying
findings of fact for clear error will decrease
the reversal rate at the Federal Circuit. A
lower reversal rate would help reduce patent
litigation costs by limiting instances of
relitigation and the use of inefficient trial
strategies that account for the likelihood of
16
reversal, which in turn would benefit both
patentees and accused infringers alike.
App. 107a-108a, footnotes omitted.
The Federal Circuit Bar Association (“FCBA”), a
national organization consisting of approximately
2,400 attorneys whose practice concerns the Federal
Circuit in all aspects of its jurisdiction (App. 111a),
also previously submitted an amicus brief to this
Court seeking to overturn Cybor’s “no deference”
rule, noting that this rule “has produced an
unacceptably high appellate reversal rate of claim
constructions, spawning uncertainty among patent
litigants, postponing resolution of patent cases, and
discouraging settlement.” App. 112a.
The FCBA further noted the _ surprising
reluctance of the Federal Circuit to reconsider
Cybor’s “no deference” rule.
The Federal Circuit has refused to reconsider
Cybor despite widespread recognition among
practitioners—and even a majority of the
Federal Circutt’s own judges—that Cybor is
seriously flawed. In the nine years since the
Federal Circuit decided Cybor, de novo
review of claim construction has rendered
patent litigation less predictable, spawned
unnecessary legal conflict, and discouraged
settlement.
App. 113a, emphasis added.
The FCBA further pointed out that its members
had litigated patent claims under Cyhor’s “no
17
deference” rule for many years with highly
unsatisfactory results.
Our members have now litigated patent
claims under the Cybor rule for nine years.
As the result of this experience, the FCBA
has concluded that, not only has de novo
review of claim construction failed to
“improve the process of patent litigation”; it
has spawned an unacceptably high reversal
rate and, with it, endemic uncertainty among
litigants and practitioners.
App. 116a, emphasis added, footnote omitted.
In fact, as pointed out by the FCBA, Cybor’s “no
deference” rule has produced the opposite of its
desired effect.
As a result, Cybor has produced the opposite
of its desired effect. Far from encouraging
authoritative early construction: of patent
claims, de novo review instead defers until
the appellate decision the point at which
litigants and _ practitioners can_ reliably
assess their likelihood of prevailing. At that
point, the opportunity for early resolution is
long past. As Judge Rader explains, the
“Markman I regime means that the tria/
court’s early claim interpretation provides no
early certainty at all, but only opens the
bidding. The meaning of a claim is not
certain until nearly the last step in the
process—decision by the Court of Appeals for
18
the Federal Circuit.” Cybor, 138 F.3d at
1476 (Rader, J., dissenting).
App. 117a, emphasis added.
The FCBA also noted the inconsistency between
the statements of a number of Federal Circuit judges
that they desired to revisit Cybor’s “no deference”
rule with the contradictory fact that the Federal
Circuit continually fails to do so.
As recently as 2005, the Federal Circuit
refused to revisit the Cybor rule en banc,
even after requesting briefing from the
parties on whether it is “appropriate .. . to
accord any deference to any aspect of trial
court claim construction rulings.” /PaAzi/lips,
415 F.3d at 1328. Because the Federal
Circuit has inexplicably refused to revisit
Cybor despite the inclination of many of its
Judges to do so, and because the Cybor rule
undermines the _ orderly and_ timely
resolution of patent cases, this Court should
grant the Petition for Certiorari.
App. 122a, emphasis added, footnote omitted.
Cybor’s “No Deference” Rule Has Alienated the
District Courts Whose Claim Constructions Are
Reversed Almost Half the Time
There is little dispute that claim construction
proceedings require a great deal of time and effort.
Claim construction or Markman hearings “are often
longer than jury trials” and, in these hearings, the
19
parties battle over experts offering
conflicting evidence regarding who qualifies
as one of ordinary skill in the art; the
meaning of patent terms to that person; the
state of the art at the time of the invention;
contradictory dictionary definitions and
which would be consulted by the skilled
artisan; the scope of specialized terms; the
problem a patent was solving; what is
related or pertinent art; whether a
construction was disallowed during
prosecution; how one of skill in the art would
understand statements during prosecution;
and on and on.
Phillips, supra, 415 F.3d at 1332 (Mayer, J.,
with whom Newman, J., joins dissenting),
emphasis added.
Not surprisingly, district courts are alienated by
a system requiring they devote extensive time and
effort to hear and decide claim construction issues
only to have their decisions reversed almost half the
time since the Federal Circuit, pursuant to Cybor,
affords their decisions no deference.
Judge Holderman, in his law review article,
laments the “high reversal rate” and characterizes
Cybor’s “no deference” rule as “another major factor
contributing to the number of patent claim
construction reversals.”
Before we district court judges shoulder all
the responsibility for the part of the patent
litigation predicament stemming from the
20
high reversal rate, mentioned earlier, let me
just say in our defense that there 1s another
major factor contributing to the number of
patent claim construction reversals. The
decisions we district judges make regarding
patent claim construction are currently
reviewed by the United States Court of
Appeals for the Federal Circuit under a de
novo standard, which allows the United
States Court of Appeals for the Federal
Circuit to determine the correctness of our
rulings as to the definition of patent claim
terms without any deference to what we did
in the district court.
App. 138a, emphasis added, footnotes omitted.
Judge Holderman further complains about the
impact of Cybor’s “no deference” rule.
As a result of the de novo standard of
appellate review applied to our claim
construction determinations, we United
States district court judges feel like the late
comedian Rodney Dangertield because our
opinions “get no respect.” The de novo
standard allows the United States Court of
Appeals for the Federal Circuit to look at our
determinations anew and determine the
correctness of our rulings based upon factual
and legal arguments presented by counsel to
the Court of Appeals for the Federal! Circuit,
rather than what was presented to us trial
court judges.
21
App. 139a, emphasis added, footnotes omitted.
Judge Holderman also points out that it makes
little sense to review claim construction de novo
because the meaning of a patent claim term has no
precedential effect on the meaning to be given to that
same claim term used in another patent in another
field of art.
While claim construction involves many of
what one would consider to be factual
determinations, it is reviewed entirely de
novo as an issue of law by the Federal
Circuit, even though the meaning of a patent
claim term at the time of filing of the patent
application has no precedential affect on the
meaning to be given to that same claim term
used in another patent in another field of
art.
App. 139a-140a, emphasis added.
Cybor’s “No Deference” Rule Is Not Supported By
This Court’s Markman Decision
The Federal Circuit’s stated basis for Cybor’s “no
deference” rule is this Court’s Markman decision.
Cybor, 138 F.3d at 1451. However, this Court held
only that, as a matter of policy, judges not juries
should construe the claims and did not hold that this
policy requires the Federal Circuit to review district
court claim constructions without deference. As
pointed out by then Chief Judge Mayer Qoined by
Judge Newman) dissenting in Cybor,
22
... | respectfully disagree with the opinion
because it profoundly misapprehends
Markman y. Westview Instruments, Inc.,
116 S.Ct. 1384 (1996). The Supreme Court
... decided as a matter of policy that judges,
not juries, are better able to perform this
task [claim construction] given the
complexity of evidence and documentation.
. Nevertheless, having so ruled, it seems to
me the Court would not also have repealed
part of the Federal Rules of Civil Procedure
and Evidence without so much as a mention
that district courts ... need not find facts
when evidence is disputed in these cases.
Nor would it have so excused this court from
the normal, historical role of appellate courts
to review for reversible error, and installed it
as a collegial trial court.
Cybor, 138 F.3d at 1463-64, emphasis added (except
for “policy”).
Judge Newman also submitted a separate
dissent Goined by Chief Judge Mayer),
Thus it is quite discouraging to observe this
en banc ruling wherein the Federal Circuit
prohibits itself from considering the findings
of fact made by the trial court. ... This
disavowal deprives the court, and the
parties, of the accumulated progress and
experience of the trial, including the findings
of the trial judge, and leaves us on appeal
with an expurgated record and generally
inferior basis of decision. Recognizing that
23
our appellate role is to decide whether the
claims were correctly interpreted in light of
all of the evidence, it 1s mysterious why we
choose to self-censor what we will consider
on appeal. It is equally obscure why this
court would prohibit itself from relying on a
trial court’s findings, or from choosing
between disputed expert positions.
Id. at 1481, emphasis added.
CONCLUSION
The Federal Circuit has been reviewing district
court claim constructions under Cybor’s “no
deference” rule for over eleven years. This rule has
led to an unacceptably high roughly 40% reversal
rate for claim constructions. Further, this rule has
alienated the district courts whose’ claim
constructions are accorded no deference and are
reversed almost half the time. Although some
Federal Circuit judges want to reconsider this rule,
the Federal Circuit has not done so and does not
appear to be willing to do s». As a practical matter,
only this Court can vacate this rule and its highly
unacceptable roughly 40% claim _ construction
reversal rate.
October 6, 2009
24
Respectfully submitted,
ARTHUR I. NEUSTADT
Counsel of Record
THOMAS J. FISHER
BARRY J. HERMAN
ERIC W. SCHWEIBENZ
OBLON, SPIVAK, MCCLELLAND
MAIER & NEUSTADT, L.L.P.
1940 Duke Strect
Alexandria, Virginia 22314
Counsel for Petitioners
APPENDIX
la
Appendix A
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
2008-1415
NORGREN INC.,
Appellant,
Vv.
INTERNATIONAL TRADE COMMISSION,
Appellee,
and
SMC CORPORATION and
SMC CORPORATION OF AMERICA,
Intervenors.
On appeal from the United States International
Trade Commission in Investigation No. 337-TA-587.
DECIDED: May 26, 2009
Before SCHALL, GAJARSA, and MOORE, Circuit
Judges.
2a
MOORE, Circuit Judge.
Norgren, Inc. (Norgren) appeals from a final
determination of the International Trade Commission
(ITC) in a section 337 investigation. See 19 U.S.C. §
1337. Norgren is the assignee of U.S. Patent No.
5,572,392 (the ’392 patent). The ITC instituted this
investigation based on a complaint filed by Norgren
that named SMC Corporation and SMC Corporation
of America (collectively, SMC), among others, as
respondents. The administrative law judge (ALJ)
concluded in an initial determination that SMC did
not violate section 337 because the accused SMC
structures do not infringe the 392 patent. The ALJ
also determined that the asserted claims of the ’392
patent are nonobvious. The ITC declined to review
the ALJ’s initial determination and terminated the
investigation with a finding of no violation. Norgren
appeals. For the following reasons, we reverse-in-
part, vacate-in-part, and remand.
BACKGROUND
The technology at issue concerns structures that
connect fluid-conditioning units—e.g., filters,
regulators, and lubricators (FRLs)--in a compressed
air pipeline. Between an air compressor and a point
of use, a pipeline can include various conditioning
units connected in series. Problems associated with
prior art connecting structures included high
production costs and loose parts requiring assembly
by a user. An object of the invention of the ’392
patent was to permit ready disconnection of FRLs.
These compressed air systems are typically found in
assembly-line manufacturing operations, and ready
3a
disconnection of FRLs limits the amount of service
time for which an assembly line might need to be
shut down. The ’392 patent claims a connecting
structure wherein one side of the structure can be
pivoted in and out of its operating position. Figures 1
and 4 show the preferred embodiment of the ’392
patent:
oy
Ny
8 6
=
Fig. 4
Figure 4 depicts a connecting structure as it connects
two FRL units having outlet ports (27 and 31) and
flanges (26 and 30). The parties and the ALJ refer to
the vertical portions of the flanges as projecting rims,
and we will do the same. Figure 1 is an exploded
view of the connecting structure. The rectangular
spacer (2) slides into the u-shaped member (1) along
channels (5, 6, and 7), with elongated member (3) in
the raised position. The projecting rims of the flanges
slide in between the spacer and the channel walls.
The elongated member is then lowered and bolted
closed. The primary issue on appeal—claim
construction—focuses on the projecting rims of the
flanges.
4a
DISCUSSION
Norgren filed a complaint with the ITC in which
it alleged violations of section 337 in the importation
into the United States, the sale for importation, and
the sale within the United States after importation of
certain SMC connecting structures that allegedly
infringe claims 1—5, 7, and 9 of the ’892 patent. The
ALJ held an administrative tral, received post-
hearing briefing from the parties, and then issued an
initial determination in which he concluded that
there was no violation of section 337. More
specifically, the ALJ found that the accused SMC
connecting structures do not infringe the asserted
claims because they do not meet the claim limitation
of “a four-sided generally rectangular clamp adapted,
in its operative clamping position, to engage, in
parallel relationship with one another, the pair of
ported flanges.” The ALJ also determined that the
asserted claims of the ’392 patent are nonobvious.
The ITC decided not to review the initial
determination and terminated the investigation with
a finding of no violation.
Norgren appeals, challenging the ALJ’s claim
construction. Both the ITC (as appellee) and SMC (as
intervenors) respond that the ALJ’s finding of
noninfringement was correct because the underlying
claim construction was correct. SMC also argues that
the ALJ erred in concluding that the asserted claims
are not invalid for obviousness. We have jurisdiction
under 28 U.S.C. § 1295(a)(6).
5a
We review claim construction de novo. Gemstar-
TV Guide Int'l, Inc. v. Int'l Trade Comm’n, 383 F.3d
1352, 1360 (Fed. Cir. 2004); see also Cybor Corp. v.
FAS Techs., Inc., 138 F.3d 1448, 1455-56 (Fed. Cir.
1998) (en banc). Independent claim 1 of the ’392
patent recites as follows:
1. Connecting structure for contiguously
connecting together a pair of fluid-flow
elements, each fluid flow element
including a_generally rectangular ported
flange so as to define a pair of ported
flanges associated with the fluid-flow
elements, said connecting structure
comprising:
a four-sided, generally rectangular
clamp adapted, in its operative
clamping position, to engage, in
parallel relationship with one
another, the pair of ported
flanges, one of said sides of the
clamp being pivotally mounted so
that said one side can be pivoted
out of said operative clamping
position in order to permit
reception of said flanges into the
clamp and then pivoted back into
said operative clamping position,
6a
sealing means for establishing fluid-
tight communication between the
respective ports formed in said
flanges, and
locking means for releasably locking
said one side in said operative
clamping position, in which
position the clamp urges the
flanges towards one another
thereby establishing together
with said sealing means, said
fluid-tight communication
between said ports.
Because this claim recites a “clamp adapted . . . to
engage ... the pair of ported flanges,” the parties
agree that we must construe “generally rectangular
ported flange,” which appears in the preamble of
claim 1, insofar as the flange is configured to permit
engagement by the clamp. The ALJ explained,
“whether or not the flange on an FRL must have two
or four . . . rims is the salient issue to be determined.”
The ALJ stated:
the word “flange,” as used in the claims of
the ’392 patent, is the structure that is
received into the claimed clamp, and
further that “a generally rectangular
ported flange” is a flange of rectangular
shape with projections on all four sides
and a hole in the middle that is used as a
port.
The ALJ further explained:
7a
In view of the fact that the clamp must be
four-sided, and the clamp is _ specially
adapted to engage the generally
rectangular ported flanges of the FRLs, it
is reasonable to conclude that each
rectangular flange is engaged on all four of
its sides by the four-sided clamp. Thus,
the clamp is adapted to engage flanges
with four projecting rims.
Norgren argues that the ALJ’s claim construction is
erroneous for requiring that cach flange has
projections (or projecting rims) on all four sides.! We
agree.
Nothing in the claims, written description or
prosecution history requires four projecting rims.
The claims of the 392 patent do not recite the terms
“rim” or “projection.” Indeed the term “rim” does not
appear anywhere in the ‘’392 patent. The
specification refers to two items as projections—the
hook attached to the rectangular spacer and a ridge
in another embodiment of the u-shaped member—
neither of which are present on the flanges or relate
' In its briefs, Norgren also maintained that the ALJ’s claim
construction incorrectly requires that the entire flange be
received into the clamp. At oral argument, however, counsel for
Norgren and counsel for SMC conceded that for the SMC
accused structures, flanges do not extend beyond the clamp.
Oral Argument Tr. 9:07-11:46 (Norgren), 35:08—-36:47 (SMC).
In other words, the accused SMC connecting structures permit
reception of two flanges entirely into the clamp. Accordingly, we
do not address this issue.
8a
to the flanges in any way. See ’392 patent col.2 1.62,
col.3 1.1, col.4 1.19. It is true that the figures of the
’°392 patent depict a preferred embodiment that
includes two flanges, each with four projecting rims.
See id. figs.3 & 4. But these figures are the full
extent to which the patent refers to flanges with four
projecting rims. Thus under the well-established
prohibition on importing limitations from the
specification into the claims, see Phillips v. AWH
Corp., 415 F.3d 1303, 1320, 1323, the “generally
rectangular ported flange” of the asserted claims of
the 392 patent is not limited to a flange having four
projecting rims.
The “generally rectangular” language pertains to
the overall shape of the flange. The figures below
depicting the Norgren and SMC flanges attached to
the FRLs show that cach is gencrally rectangular.
The subsequent Figures show just the two flanges.
The dotted lines indicate the projections (rims). The
SMC device has two, the Norgren device four.
A Generally Rectangular Ported Flange SMC’s Moanting Ears
Norgren SMC
Generally Rectangular Mounting Ears
Ported Flange
SMC Br. 23-24. The claim limitation “rectangular” is
satisfied by the overall shape of the flange and does
necessitate four rims. The “ported” language
indicates that the flange have a port or hole in the
center for the passage of fluid. This cannot be the
source of the four rims limitation. That leaves the
word “flange.” Neither party is suggesting that one of
ordinary skill in the art would understand the word
flange alone to necessitate four rims. Although the
word flange necessarily calls to mind a protrusion,
rim or projection, nothing in the specification of the
‘392 patent suggests that the claimed flange must
always include four rims. A “generally rectangular
ported flange” is a generally rectangular projection
with a hole for fluid passage. Norgren admitted,
however, that the flange must have “sufficient
projecting rims for the clamp to function.” See Initial
Determination at 18. But this does not require four
rims.
10a
Although it is possible for a four-sided, generally
rectangular clamp to engage each generally
rectangular flange on all four sides, nothing in the
claims or the rest of the specification requires that
every side contain a rim. For these reasons, the
ALJ’s construction is erroneous as it reads a
limitation into the claims.
It is undisputed that the accused SMC structures
are ported and generally rectangular. The accused
SMC structures have two “mounting ears,” 1.e., two
projecting rims. Applying the correct claim
construction of “generally rectangular ported flange”
to the undisputed facts, we _ reverse’ the
noninfringement determination of the ITC.
Lastly, SMC asserts that we could affirm the ITC
determination of no violation by concluding that the
ALJ erred in concluding that the ‘392 patent is
nonobvious. We believe, however, that the ALJ
should evaluate obviousness in the first instance
under the correct construction of “generally
rectangular ported flange’—1i.e., a construction that
does not require a flange having projections on all
four sides.
CONCLUSION
In light of the change to claim construction, we
reverse the ITC’s determination of noninfringement,
vacate the ITC’s determination of nonobviousness,
and remand.
lla
Appendix B
UNITED STATES INTERNATIONAL TRADE
COMMISSION
Washington, D.C.
In the Matter of
Certain-Connecting Devices
(“Quick-Clamps”) for Use with
Modular Compressed Air Investigation No.
Conditioning Units, Including | 337-TA-587
Filters, Regulators, and
Lubricators ““FRL’s”) That
Are Part of Larger Pneumatic
Systems and the FRL Units
They Connect
NOTICE OF COMMISSION DECISION NOT TO
REVIEW AN INITIAL DETERMINATION OF THE
ADMINISTRATIVE LAW JUDGE FINDING NO
VIOLATION OF SECTION 337; TERMINATION OF
THE INVESTIGATION
AGENCY: USS. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that the U.S.
International Trade Commission has determined not
to review an initial determination (“ID”) issued by the
presiding administrative law judge (“ALJ”)
determining that there is no violation of section 337
of the Tariff Act of 1930.
12a
FOR FURTHER INFORMATION CONTACT: Mark
B. Rees, Office of the General Counsel, U.S.
International Trade Commission, 500 E Street, S.W..,
Washington, D.C. 20436, telephone (202) 205-3116.
Copies of non-confidential documents filed in
connection with this investigation are or will be
available for inspection during official business hours
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary,
U.S. International Trade Commission, 500 E Street,
S.W., Washington, D.C. 20436, telephone (202) 205-
2000. General information concerning’ the
Commission may also be obtained by accessing its
Internet server at Attp//www.usitc.gov. The public
record for this investigation may be viewed on the
Commission’s electronic docket (EDIS) at
http-/edis.usitc.gov. Hearing-impaired persons are
advised that information on this matter can be
obtained by contacting the Commission’s TDD
terminal on (202) 205-1810.
SUPPLEMENTARY INFORMATION: The
Commission instituted this investigation on
November 13, 2006, based on a complaint filed by
Norgren, Inc. (““Norgren”) of Littleton, Colorado. 71
Fed. Reg. 66193 (Nov. 13, 2006). An amended
complaint was filed on October 25, 2006. A
supplement to the complaint was filed on November
1, 2006. The amended complaint alleged violations of
section 337 of the Tariff Act of 1930 (19 U.S.C. §
1337) in the importation into the United States, the
sale for importation, or the sale within the United
States after importation of certain devices for
modular compressed air conditioning units and the
FRL units they connect by reason of infringement of
claims 1-9 of U.S. Patent No. 5,372,392 (“the ‘392
13a
patent”). The amended complaint also alleged that a
domestic industry exists with regard to the ‘392
patent. under subsection (a)(2) of section 337. The
amended complaint named SMC Corporation of
Japan; SMC Corporation of America of Indianapolis,
Indiana (collectively, “SMC”); AIRTAC of China; and
MFD Pneumatics (“MFD”) of Chicago, Illinois as the
respondents and requested a limited exclusion order
and a cease and desist order. On July 13, 2007, the
Commission determined not to review an ID
terminating the investigation with respect to MFD
and AIRTAC on the basis of a consent order
stipulation and consent order.
On February 13, 2008, the ALJ issued his final
ID finding no violation of section 337 of the Tariff Act
of 1930 (19 U.S.C. § 1337). Specifically, the ALJ
found that there had been an importation of SMC’s
accused products and that none of the accused
products infringe the asserted claims of the ‘392
patent. He also found that the asserted claims are
not invalid due to obviousness. He further found that
Norgren satisfies the domestic industry requirement
with respect to the ‘392 patent. On February 285,
2008, the ALJ issued a recommended determination
on remedy and bonding in the event the Commission
reversed his finding of no violation of section 337.
On February 25, 2008, Norgren and SMC each
filed a separate petition for review of the ID. The
Commission Investigative Attorney (“IA”) did not file
a petition for review. On March 3, 2008, Norgren and
SMC filed responses in opposition to each other’s
petitions for review, and the IA filed her response in
opposition to both petitions.
l4a
On March 5, 2008, the Commission determined
to extend the deadline for determining whether to
review the ID by 14 days, ze., until April 14, 2008.
Having examined the record of this investigation,
including the ALJ’s final ID and the submissions of
the parties, the Commission has determined not to
review the ALJ’s determination and has terminated
this investigation with a finding of no violation.
The authority for the Commission’s
determination is contained in section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337), and in
section 210.42-45 of the Commission’s Rules of
Practice and Procedure (19 C.F.R. § 210.42-45).
By order of the Commission.
/s/
Marilyn R. Abbott Secretary to
the Commission
Issued: April 14, 2008
15a
Appendix C
UNITED STATES INTERNATIONAL TRADE
COMMISSION
Washington, D.C.
In the Matter of
Certain-Connecting Devices
(“Quick-Clamps”) for Use with
Modular Compressed Air Investigation No.
Conditioning Units, Including | 337-TA-587
Filters, Regulators, and
Lubricators (““FRL’s”) That
Are Part of Larger Pneumatic
Systems and the FRL Units
They Connect
INITIAL DETERMINAT‘ON
Administrative Law Judge Carl C. Charneski
Pursuant to the notice of investigation, 71 Fed.
Reg. 66193 (2006), this is the Initial Determination
in the matter of Certain Connecting Devices
(“Quick-Clamps”) for Use with Modular
Compressed Air Conditioning Units, Including
Filters, Regulators, and Lubricators (“FRL’s”) That
Are Part of Larger Pneumatic Systems and the
FRL Units They Connect, United States
International Trade Commission Investigation No.
337-TA-587. See 19 C.F.R. § 210.42(a).
It is held that no violation of section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. § 1337, has
16a
occurred in the importation into the United States,
the sale for importation, or the sale within the
United States after importation of certain connecting
devices for use with modular compressed air
conditioning units, including filters, regulators, and
lubricators (“FRL’s”) that are part of larger
pneumatic systems and the FRL units they connect
by reason of infringement of one or more of claims 1
through 9 of United States Patent No. 5,372,392.
17a
The following abbreviations may be used in this
Initia] Determination:
ALJ - Administrative Law Judge
ALJX- Administrative Law Judge Exhibit
CDX - Complainant’s Demonstrative Exhibit
CPX - Complainant’s Physical Exhibit
CX - Complainant’s Exhibit
Dep. - Deposition
EDIS -_ Electronic Document Imaging System
FF - Finding(s) of Fact
JPX - Joint Physical Exhibit
JX - Joint Exhibit
PCL - Proposed Conclusion of Law (CPCL, RPCL
or SPCL)
PFF - Proposed FF (CPFF, RPFF or SPFF)
PRF - Proposed Reply or Rebuttal Finding (CPRF,
RPRF or SPRF)
RDX - Respondents’ Demonstrative Exhibit
RPX - Respondents’ Physical Exhibit
RX - Respondents’ Exhibit
SX - Commission Investigative Staff Exhibit
Tr. - Transcript.
* Table of Contents omitted for printing
18a
I. BACKGROUND
A. Institution and Procedural History of This
Investigation
By publication of a notice in the Federal Register
on November 13, 2006, pursuant to subsection (b) of
section 337 of the Tariff Act of 1930, as amended, the
Commission instituted this investigation with respect
to U.S. Patent No. 5,372,392 (“the ‘392 patent”) to
determine:
[W]hether there is a violation of
subsection (a)(1)(B) of section 337 in the
importation into the United States, the sale
for importation, or the sale within the
United States after importation of certain
devices for modular compressed _ air
conditioning units and the FRL units they
connect by reason of infringement of one or
more of claims 1-9, and whether an
industry in the United States exists as
required by subsection (a)(2) of section 337.
71 Fed. Reg. 66193 (2006).!
Norgren, Inc. (“Norgren”) of Littleton, Colorado is
the complainant. The respondents named in the
complaint were: SMC Corporation of Tokyo, Japan
and SMC Corporation of America of Indianapolis,
Indiana (collectively, “SMC”); AIRTAC of Ningbo,
China; and MFD Pneumatics of Chicago, Illinois.
The Commission Investigative Staff (“Staff’) of the
' As discussed, infra, only claims 1-5, 7, and 9 of the ‘392 patent
are asserted to be infringed.
19a
Commission’s Office of Unfair Import Investigations
is also a party in this investigation. Jd.
AIRTAC and MFD Pneumatics were terminated
from this investigation on the basis of consent orders.
See Order No. 7 (Initial Determination), Notice of
Commission Decision Not to Review (July 13, 2007).
Thus, the SMC companies are the only respondents
remaining in this investigation.
The evidentiary hearing on the question of
violation of section 337 commenced _ on
November 27, 2007, and concluded on November 29,
2007. All parties, ze., Norgren, SMC and the Staff,
were represented at the hearing. Hearing Tr. 21-772.
B. The Products at Issue
This investigation pertains to products used in
the compressed air and pneumatics industry. In
particular, this investigation concerns “connecting
devices” used to connect filters, regulators or
lubricators installed in compressed air systems,
typically in assembly line type manufacturing
applications. In the industry, and during this
investigation, fi/ters, regulators and Jubricators are
commonly referred to as “FRLs.” See, e.g., Norgren
Br. at 21-23; SMC Br. at 1-4; Staff Br. at 3.2. While
FRLs are prominently featured by the parties, it is
? The benefits of FRLs are generally as follows: a “filter” rids
pollutants, such as water, from the compressed air system; a
“regulator” reduces the amount of compressed air appropriate
for the specific process; and a “lubricator” injects lubrication into
the air flow to protect the air tools from pollutants. See
Wiskamp Tr. 238-240; Kuchta Tr. 503.
20a
important to keep in mind the fact that the focus of
this investigation is upon the connecting devices by
which the FRLs are attached to the compressed air
systems. See p. 10 (Figs. 1 & 2), infra, for an
illustration of a connecting device; see also, p. 11,
infra, (for illustration of an FRL).
Norgren accuses SMC’s more recently designed
FRL connectors, referred to as “new style” connectors,
of infringing the ‘392 patent.’ Norgren argues that
SMC’s FRLs also infringe the patent, as do
pneumatic systems that incorporate SMC’s accused
connectors and FRLs. Norgren Br. at 21. There is
disagreement among the parties as to whether any
accused SMC connector infringes the ‘392 patent, and
whether the ‘392 patent can be construed to cover
FRLs and all the possible types of compressed air
systems accused by Norgren. There is also
disagreement as to the range of downstream
products, if any, that should be included in any
exclusion order that might issue. See, e.g., Staff Br.
at 27-28; SMC Br. at 10-16.4 Nevertheless, the three
specific categories of products put in issue by Norgren
are the following:
> Older-style connectors are still manufactured by SMC. See
Kuchta Tr. 532. They are not, however, the subject of Norgren’s
case. See, e.g., Norgren Br. at 21; Wiskamp Tr. 331.
“The scope of any exclusion order that should issue as a result
of this investigation, including the possible exclusion of
downstream products, shall be discussed in the Recommended
Determination on remedy to issue pursuant to 19 C.F.R. §
210.42(a)(1)(ii).
21a
(1) SMC’s “new style” connectors with at
least the following model numbers (Y100,
Y100T, Y200, Y200T, Y300, Y300T, Y400,
Y400T, Y500, Y500T, Y600 and Y600T),
and which may be exemplified by the SMC
Y400;
(2) SMC FRLs; and
(3) “Additional Downstream Products,”
identified as lelvery larger pneumatic
system that incorporates the SMC
connector and FRLs.”
Norgren Br. at 21-23.
There is no dispute that for the purposes of this
investigation, the “new style” SMC connectors do not
differ materially from each other. See, e.g., Norgren
Br. at 21 (illustrating an SMC Y400 as representative
of the accused connectors); Staff Br. at 26 & n.7
(referring to the SMC Y400 as representative, and
noting the similarity of the SMC connectors, except
for the Y100 which has only “a slightly different
configuration for the sealing means”).
Il. IMPORTATION OR SALE
The importation or sale requirement of section
337 has not been contested. Thus, it is found that
SMC sells for importation, imports and, or, sells after
importation articles accused in this investigation.
The importation or sale requirement of section 337 is
satisfied.
22a
Indeed, the record evidence shows that SMC
manufactures the accused connectors and FRLs in
Japan and China, and then imports them into the
United States by selling them to its United States
subsidiary. Although occasionally SCM attaches
connectors to FRLs prior to importation, SMC usually
brings the components into the United States in their
individual state. Thereafter, combinations of FRLs
and connectors are usually made in this country by
SMC, distributors or customers. Kuchta Tr. 536;
Pusateri Tr. 551, 554-556.
In addition, Norgren cites an admission by SMC
that other companies not named as respondents (/.e.,
Nippei Toyama Corp., Makino Milling Machine Co.,
Ltd., Mitsui Seiki Kogyo Co., Ltd., Tsugami Corp.,
Okuma Corp., Yamazaki Mazak Corp., Mori Seki Co.,
Ltd., and Fanuc Ltd.) may ship both its older version
connectors, and its newer (accused) version
connectors into the United States either alone, or as
part of a “larger product.” The details of those
products are not specified in the record. See CX-
143 (Interrog. Responses), SMC Resp. No. 31;
Kuchta Tr. 534 535.5
* Norgren relies on no evidence other than that cited above, and
the fact that no contrary evidence was presented during the
hearing. See Norgren Br. at 3, 53: see also CPFF 12.3 (“SMC's
FRLs are present in larger OEM (Original Equipment
Manufacturer) equipment. Kuchta Tr. 534-535”); Kuchta Tr.
534-535 (In this context, “a larger machine that contains some
series of FRL components” is “any industrial automated
machine that uses compressed air.”).
23a
Ill. CLAIM CONSTRUCTION
This investigation is based on Norgren’s
allegation that certain products manufactured and,
or, sold by SMC infringe one or more specified claims
of Norgren’s United States Patent No. 5,372,392. See
JX-1. The claims of the patent are subject to
numerous corrections contained in the Certificate of
Correction (dated Dec. 13, 1994 and issued Apr. 11,
1995), included in JX-1. A copy of the patent’s
prosecution history is marked as JX-2.
A. Applicable Law
Pursuant to the Commission’s notice of
investigation, this is a patent-based investigation.
See 71 Fed. Reg. 66193 (2006). Accordingly, all of the
unfair acts alleged by Norgren to have occurred are
instances of alleged infringement of the ‘392 patent.
Any finding of infringement or non-infringement
requires a two-step analytical approach. First, the
asserted patent claims must be construed as a matter
of law to determine their proper scope.* Second, a
factual determination must be made as to whether
the properly construed claims read on the accused
devices. See Markman v. Westview Instruments,
Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)(en banc), affd,
517 U.S. 370 (1996).
6 Only those claim terms that are in controversy need to be
construed, and only to the extent necessary to resolve the
controversy. Vanderlande Indus. Nederland BV v. Intl Trade
Comm., 366 F.3d 1311, 1323 (Fed. Cir. 2004); Vivid Tech., Inc. v.
American Sci. & Engg, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
24a
Claim construction begins with the language of
the claims themselves. Claims should be given their
ordinary and customary meaning as understood by a
person of ordinary skill in the art, viewing the claim
terms in the context of the entire patent. Phillips v.
AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005),
cert. denied, 546 U.S. 1170 (2006). With respect to
claim preambles, the Court of Appeals for the Federal
Circuit has explained that:
[A] claim preamble has the import that the
claim as a whole suggests for it. In other
words, when the claim drafter chooses to
use both the preamble and the body to
define the subject matter of the claimed
invention, the invention so defined, and
not some other, is the one the patent
protects.
Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332,
1339 (Fed. Cir. 2003) (quoting Bel] Communications
Research, Inc. v. Vitalink Communications Corp., 55
F.3d 615, 620 (Fed. Cir. 1995)).
In some instances, claim terms do not have
particular meaning in a field of art, and claim
construction involves little more than the application
of the widely accepted meaning of commonly
understood words. Phillips, 415 F.3d at 1314. In
such circumstances, general purpose dictionaries
may be helpful. In many cases, claim terms have a
specialized meaning, and it is necessary to determine
what a person of skill in the art would have
understood disputed claim language to mean, by
analyzing the words of the claims themselves, the
25a
remainder of the specification, the prosecution
history, and extrinsic evidence concerning relevant
scientific principles, as well as the meaning of
technical terms, and the state of the art. Jd. (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration
Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).
In cases in which the meaning of a claim term is
uncertain, the specification usually is the best guide
to the meaning of the term. /d. at 1815. As a general
rule, the particular examples or embodiments
discussed in the specification are not to be read into
the claims as limitations. Markman, 52 F.3d at 979.
However, the specification is always highly relevant
to the claim construction analysis. The specification
is usually dispositive. It is the single best guide to
the meaning of a disputed term. Phillips, 415 F.3d at
1315. Moreover; “[t]he construction that stays true to
the claim language and most naturally aligns with
the patent’s description of the invention will be, in
the end, the correct construction.” Jd. at 1316.
If the intrinsic evidence does not establish the
meaning of a claim, then extrinsic evidence may be
considered. Extrinsic evidence consists of all
evidence external to the patent and the prosecution
history, including inventor testimony, expert
testimony and learned treatises. Id. at 1317.
Inventor testimony can be useful to shed light on the
relevant art. In evaluating expert testimony, a court
should discount any expert testimony that is clearly
at odds with the claim construction mandated by the
claims themselves, the written description, and the
prosecution history, in other words, with the written
record of the patent. /d. at 1318. Extrinsic evidence
26a
may be considered if a court deems it helpful in
determining the true meaning of language used in
the patent claims. /d.
B. The ‘392 Patent
The ‘392 patent, which is entitled “Connecting
Devices,” issuec to Myron Dunn, Kevin T. Dickson,
and Urs T. Moeker on December 13, 1994, based on
an application filed on June 24, 19938. JX-1; JX-2.
None of the listed inventors was called as a witness
during the hearing.
As described in the ‘392 patent specification, the
field of the claimed invention “relates to devices for
connecting together fluid flow elements, especially
but not exclusively fluid-conditioning units, such as,
for example, pressure regulators, filters and
lubricators for use in compressed air systems.” JX-1,
col. 1, ll. 6-10. With respect to the prior art, the
patent explains:
As is well-known, a compressed air pipeline
usually includes, intermediate the air
compressor and a point of use, a plurality of
conditioning units through which the
compressed air sequentially passes.
Depending on the circumstances, there will
usually be two or more such_ units
positioned adjacent to one another. For
example, a typical arrangement might
comprise a bank of three units, namely a
filter, regulator and lubricator. In any
event, it is known to provide “modular”
units, and means for connecting them,
27a
whereby any number of units, as desired,
may be readily connected together and into
the compressed air pipeline so that the air
will pass though them in the desired
sequence, for example through a filter,
pressure regulator and lubricator, in that
order. Several connecting means have over
— the years been developed and
commercialized but, whilst technically
satisfactory, many have been relatively
expensive to produce and/or have consisted
of loose parts that have to be assembled by
the user, some of which are susceptible to
being lost.
Id., col. 1, ll. 12-31. Thus, the patent states, it “is an
object of the present invention to provide a simple,
relatively inexpensive, preferably unitary connecting
means for sealingly connecting together fluid flow
elements which permits ready disconnection of the
elements when desired.” Jd, col. 1, Ill. 32-36
(Background of the Invention).
To summarize the claimed invention, the
specification states:
In its broadest aspect, the present invention
provides connecting means for contiguously
connecting together a pair of fluid-flow
elements, said means comprising a four-
sided, generally rectangular clamp adapted,
in its operative clamping position, to
engage, in parallel relationship with one
another, a pair of ported flanges associated
respectively with said elements and further
28a
comprising sealing means for establishing
fluid-tight communication between the
respective ports formed in said flanges, one
of said sides of the clamp being pivotally
mounted so that said one side can be
pivoted out of said operative clamping
position in order to permit reception of said
flanges into the clamp and then pivoted
back into said operative clamping position,
and locking means to lock said one side in
said operative clamping position.
In a preferred embodiment, the sealing
means comprises a rectangular, plate-like
spacer having a fluid flow bore extending
through it between its two major faces, the
bore being about the same diameter as the
ports in said flanges, and the spacer is
located centrally within the _ generally
rectangular clamp by, for example, one or
more screws or rivets. Each major face of
the spacer has a_= sealing’ surface
circumscribing the opposite extremities of
the bore and each sealing surface may
support, for example in an annular groove,
an O-ring seal. In such preferred
embodiment, the locking means preferably
comprises a screw or bolt held captive by
the pivotally mounted side of the clamp and
which can be screwed to tightness into a
threaded bore formed in the spacer or in an
adjacent side of the clamp. Preferably, the
said one side of the clamp is pivotally
mounted on the spacer or on an adjacent
29a
side of the clamp by means of a hinge-like
mounting.
Accordingly, it will be appreciated that the
connecting means of the invention may be a
unitary structure in the sense that it has no
loose parts that might otherwise get lost by
the user.
Td. col. 1, 1. 39 through col. 2, 1. 8 (“Summary of the
Invention”).
Various aspects of the preferred embodiments
are illustrated in the ‘392 patent specification,
including Figure 1 and Figure 2, reproduced below.
Figure 1 is described as “a perspective view, in
exploded form, of a connecting means constructed in
accordance with the invention.” Figure 2 is “a cross-
section on the line II - II of Fig. 1.” JX-1, col. 2, ll. 14-
17. While this illustration does not depict the entire
scope of the patent claims, it is helpful in
understanding the nature of the connecting devices
covered by the patent.
30a
Similarly, one may obtain a visual representation
of how the preferred embodiment of the claimed
connecting device might connect a compressed air
filter unit and a compressed air lubricator unit by
referring to the specification’s Figure 3, which is
reproduced below, in which diagram 22 represents an
air filter unit, and diagram 23 represents an air
lubricator unit. See JX-1, col. 2, ll. 18-21, col. 3, ll.
21-24.
C. One of Ordin Skill in the Relevant Art
As discussed in the background and summary
portions of the specification (quoted above), the
subject matter of the ‘392 patent encompasses the
engineering of a mechanical device, as well as its
practical and common application in the compressed
air industry in 19938.
3la
With respect to the question of one of ordinary
skill in the art relevant to the claims of the ‘392
patent, Norgren discounts the need for a bachelor’s
degree. Rather, it submits that “lolnly a person with
a deep understanding of the FRL industry at the time
of the invention would know what these claim terms
meant in that industry and only such a person would
have the proper perspective to know what would have
been obvious to engineers designing devices for the
industry at the time.” Norgren Br. at 8. (Norgren
apparently is referring to its non-degreed expert,
John Wiskamp. See Tr. 209-210.) Norgren further
submits, “Of much greater importance is experience
in the FRL and pneumatics industry at the time. of
the invention allowing one to understand the market
demands, product performance and _ design
requirements.” Jd.
Accordingly, Norgren proposes that a person of
ordinary skill in the art relevant to the ‘392 patent is
“a person with several years of experience in the
pneumatics and air preparation (FRL) fields, with
specific experience in the design and development of
commonly used FRL product lines such as the
Excelon and Quik Clamp products lines.” Norgren
Br. at 8.’
SMC argues that a “person of ordinary skill in
the art to which the ‘392 patent is directed would
have a bachelors degree in engineering and two to
” Excelon and Quik Clamp are Norgren products that were
developed in the early 1990s. Wiskamp Tr. 224-225; Robertson
Tr. 44-47. In fact, the Quik Clamp (interchangeably referred to
as a Quick-Clamp) is the connecting device that is the subject of
the ‘392 patent at issue in this investigation.
32a
four years of industry experience.” SMC Br. at 12.
(SMC apparently is referring to the
accomplishments of its own expert, Dr. David
Trumper. See Tr. 596-598.)
The Staff believes that both Norgren and SMC
are partly correct. Staff submits that one of ordinary
skill in the art “should have either (1) several years of
experience in the FRL industry (essentially Norgren’s
position) or (2) an engineering degree with two years
of industry experience (essentially SMC’s position).”
Staff Reply Br. at 1-2 n.1.8
In determining the level of ordinary skill here,
Staff points out that the person who designed the
accused SMC connectors holds an engineering degree,
while the inventors listed on the ‘392 patent, who
concurrently designed Norgren’s Quik Clamp
product, include both engineers and non-engineers.
Staff also bases its analysis on Norgren’s admission
during the pre-hearing phase of this investigation
that the technology at issue is “simple.” Jd.
The record in this investigation, including the
specification of the ‘392 patent, shows that one of
ordinary skill in the art relevant to the ‘392 patent
would have a thorough understanding of how FRLs
are connected in a compressed air pipeline, and would
* Staff submits that in determining the level of skill in the art, a
court looks at six factors: “(1) the educational level of the
inventor; (2) type of problems encountered in the art; (3) prior
art solutions to those problems; (4) rapidity with which
innovations are made; (5) sophistication of the technology: and
(6) educational level of active workers in the field.
Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696
(Fed. Cir, 1983).” Staff Reply Br. at 1 n.1.
33a
understand engineering concepts sufficiently to
design a workable connector for such FRLs. The
evidence shows that in 1993, one could have acquired
such ordinary skill through education, practical
industry experience, or both. See Wiskamp Tr. 216-
220, 224-225, 750-752; ‘Trumper' Tr. 600.
Consequently, one of ordinary skill in the relevant art
in 1993 would have had several years of industry
experience working with FRLs and connectors, or
would have had an engineering degree with two years
of industry experience.
D. The Di lai d ir
Proper Construction
Norgren asserts claims 1, 2, 3, 4,5, 7and 9 ofthe |.
‘392 patent against SMC in this investigation. See
Norgren Br. at 23-38. Claim 1 is the only
independent claim of the patent. See JX-1, col. 4, 1.
44 through col. 6, 1. 21 (all nine claims of the ‘392
patent). In its corrected form, claim 1 provides as
follows:
1. Connecting structure for contiguously
connecting together a pair of fluid-flow
elements, each fluid flow’ element
including a generally rectangular ported
flange so as to define a pair of ported
flanges associated with the fluid-flow
elements, said connecting _— structure
comprising:
a four-sided, generally rectangular clamp
adapted, in its operative clamping position,
to engage, in parallel relationship with one
34a
another, the pair of ported flanges, one of
said sides of the clamp being pivotally
mounted so that said one side can be
pivoted out of said operative clamping
position in order to permit reception of
said flanges into the clamp and then
pivoted back into said operative clamping
position,
sealing means for establishing fluid-tight
communication between the _ respective
ports formed in said flanges, and
locking means for releasably locking said
one side in said operative clamping
position, in which position the clamp urges
the flanges towards one another thereby
establishing together with said sealing
means, said fluid-tight communication
between said ports.
JX-1, col. 4, ll. 44-66 (ee Certificate of Correction).
The parties’ proposed claim constructions differ
from one another, and their different interpretations
of the claimed invention affect numerous portions of
the asserted claims. Nevertheless, upon consideration
of all the parties’ post-hearing filings, including their
reply briefs, it is evident that the _ relevant
infringement, validity and domestic industry issucs
in this investigation turn upon the _ proper
construction of the following claim terms or
limitations, cach of which is found in claim 1, w7z., (1)
“a generally rectangular ported flange,” (2) “a four-
sided generally rectangular clamp adapted, in its
35a
operative clamping position, to engage, in parallel
relationship with one another, the pair of ported
flanges” and (3) “pivotally mounted.” See, eg,
Norgren Br. at 9; SMC Reply Br. at 1-9; Staff Br. at
1-4. Each of these limitations is discussed in
separate sections below.
1. “a generally rectangular ported flange”
As quoted above, the preamble of claim 1 refers
to “a generally rectangular ported flange.” Norgren
argues that because the term “appears in the
preamble of the claim and does not breathe life and
meaning into the claim .. . [the] FRLs and the
corresponding flanges on their sides are not per se
limitations of claim 1-8.” Norgren Br. at 6, 9
(paraphrasing Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)).
Nevertheless, Norgren concedes that the term must
be construed in order to understand other portions of
the claims which undisputably do recite limitations
on the claimed invention, such as the subsequently
required “clamp” that engages the flanges of an FRL.
Norgren Br. at 9-10.
Norgren argues that during the hearing its
expert, John Wiskamp, testified that a flange was a
“connection device,” and further that “a person of
ordinary skill in the art circa 1993 would understand
flange to be any general connection feature used to
join two faces together.” Norgren Br. at 13 (citing
Wiskamp Tr. 260-261, 455 (emphasis in original);
CPFF 7.2 and 7.2.1).9 Thus, Norgren proposes the
* It is evident that Norgren relies on its expert’s testimony to
argue that a flange is a structure greater in scope than the
36a
following construction for “a generally rectangular
ported flange”:
A rectangular or close to rectangular
attachment feature that allows’ the
connector to engage and/or align two FRLs
in parallel relationship with each other
such that a fluid tight seal is maintained
between the respective ports on the FRLs.
Td. at 13.
As seen in Norgren’s proposed construction, as
well as in portions of the claim preamble, the claimed
connector engages the flanges of two separate FLRs
so as to align them in parallel. It is not disputed that
the claimed connector must accommodate a “port” or
hole that allows fluid (such as compressed and
treated air which is often called a “fluid” in the art) to
flow from one FLR to another after the FLRs have
been aligned. Nor is it disputed by any party that the
alignment and creation of a fluid-tight seal is
performed by means of a clamp that is expressly
required by the body of the claim (and which is
discussed in detail below). Consequently, Norgren
expressly admits that the “rectangular attachment
feature,” which it identifies as a “flange,” “Includes
sufficient projecting rims for the clamp to function, it
projecting rims. However, Norgren’s argument that a flange is
separate from the claimed connecting device (an argument with
which this Tribunal happens to concur) is not advanced by its
own expert’s testimony which, as summarized in Norgren’s brief
and also quoted supra, was to the effect that a flange is in fact a
“connection device.” See Norgren Br. at 13.
37a
is rectangular, and it has a port.” Norgren Br. at 15
(emphasis added).
Norgren does not admit that the projecting rims
themselves constitute a flange or flanges. Rather,
Norgren argues that to equate the projecting rims
with the flanges recited in the preamble of the claim
would require an improper reliance on excerpts from
the specification’s description of the preferred
embodiment, would contradict statements made on
behalf of the applicants during prosecution, and
would be contrary to admissions made by SMC’s
expert (Dr. Trumper) during the hearing. Jd.
It further argues that equating the projecting
rims of the flange with the flange itself would make
little sense when one considers the devices at issue
and the function they are designed to accomplish. In
particular, complainant asserts:
It would make no sense that the rims
themselves are either rectangular or
ported as it would serve no purpose in the
claimed invention or in any of the
embodiments disclosed within the patent.
If the flanges are rims or edges as SMC
argues, they would not have holes or ports
in them as needed to accomplish the
invention claimed in the patent.
Norgren Br. at 15.
Norgren’s brief contains a depiction of a device
that allegedly exhibits “a generally rectangular
ported flange,” according to its proposed construction.
In that regard, Norgren argues that during the
38a
hearing, SMC’s expert witness (Dr. Trumper)
referred to a portion of a prior art device depicted in
RX-20 (the patent to “Ribble”) as containing such a
flange. According to Norgren, Dr. Trumper testified
that the so-called flange was not restricted to the
projecting rims themselves (called “wedges” in
Ribble), and that the flange in question had only two
projecting rims (or “wedges”), not four. Norgren Br.
at 13-14. (As discussed, infra, SMC takes issue with
Norgren’s’ characterization of Dr. Trumper’s
testimony.)
The Figure at right
from the Ribble
specification (and
Norgren’s brief),
highlighted by Norgren
to exemplify “a generally
rectangular ported
flange,” is illustrative of
complainant’s argument.
See Norgren Br. at 14.
Norgren states that the reason SMC’s expert
“could testity that such a structure is a flange —
indeed a generally rectangular ported flange — is
because that structure is just that: generally
rectangular, ported, and an attachment feature that
allowls] the connector to engage and/or align two
FRLs.” Jd. Indeed, Norgren argues, that inasmuch
as patent claims are not bound by the preferred
embodiments of the specification, “the generally
rectangular ported flanges that the clamp is adapted
to engage in the claims can not require the flanges to
39a
have any projecting rims, let alone four projecting
rims.” Jd. at 12 (emphasis in original). This
statement appears to conflict with another that is
also contained in Norgren’s brief, and which is quoted
above, to the effect that the flange must have
“sufficient projecting rims for the clamp to function.”
See Norgren Br. at 15.
In any event, it is clear Norgren argues that the
flange referred to in the preamble of claim 1 may
have either four projecting rims (as in a described in
the preferred embodiment) or two such rims (as
illustrated in the prior art Ribble patent), and
possibly Norgren may be arguing that the flange
could have no projecting rims at all. In this
investigation, all prior art cited against the ‘392
patent has a rim or rims, or similar features; and all
accused devices, and all devices used to establish a
domestic industry have two or four projecting rims.
Thus, whether or not the flange on an FRL must have
two or four such rims is the salient issue to be
determined.
SMC argues that “a generally rectangular ported
flange’ should be construed to mean a flange of
rectangular shape with projections on all four sides
and a hole in the middle that is used as a port.” SMC
Br. at 13, 16.19 Thus, in contrast to Norgren’s
proposed construction, SMC would require rims
' SMC provides a representation of such a flange in RDX-1
(illustration on the left portion of the exhibit), which is
reproduced in its brief at page 27. RDX-1 also contains a
representation of part of an accused device (illustration on the
right), which is not relevant to the claim construction issue.
40a
projecting from all four sides of the flange. While
SMC’s proposed construction of this term is not as
broad as Norgren’s, it should be noted that contrary
to Norgren’s concerns about SMC’s_ proposed
construction, SMC does not limit its construction of
“flange” to projecting rims. Rather, SMC views the
rims as projecting from the larger flange structure.
SMC argues that the specification of the ‘392
patent does not impart any special meaning to the
claim term “a generally rectangular ported flange.”
Nevertheless, SMC also argues that one cannot
disregard the specification, and in this case, the
embodiments of the specification consistently depict
in figures, and describe in words, a_ generally
rectangular flange with rims projecting on all four
sides, as well as a four-sided clamp that receives the
rims projecting from all four sides of the flange. SMC
Br. at 13-14.
In addition, SMC submits that, as stated by its
expert, Dr. Trumper, one of ordinary skill would
understand a generally rectangular ported flange to
be rectangular with rims projecting on all four sides
with a hole in the middle. /d. at 14, citing Trumper
Tr. 601. In SMC’s view, such a claim construction
“stays true to the claim language, and most naturally
aligns with the patent’s description of the invention.”
Id. (citing Phillips, 415 F.3d at 1316; SafeTCare Mfg.
Co. v. Tele-Made, Inc., 497 F.3d 1262, 1269-70 (Fed.
Cir. 2007)(specification relied on to understand what
the patentee had claimed and disclaimed)).
SMC further submits that Norgren
mischaracterizes Dr. Trumper’s testimony regarding
4la
the prior art Ribble patent (RX-20). SMC argues that
Dr. Trumper did not testify that this prior art
discloses a generally rectangular ported flange as
described in the claim preamble. Rather, Dr.
Trumper testified that Ribble discloses a three-sided
clamp, and “li]f you wanted to add a flange projecting
rim on the top and bottom of Ribble and then add a
fourth side that hinges, all of those would be
standard mechanical design choices.” SMC Reply Br.
at 5 (quoting Trumper Tr. 621).1!
SMC also argues that its proposed claim
construction is consistent with arguments made on
behalf of applicants during patent prosecution in
which Norgren amended the claims to restrict each
fluid-flow element so as to include “a generally
rectangular ported flange.” Thus, it is asserted that
Norgren cannot now argue that the term, “a generally
rectangular ported flange”, covers flanges that are not
'' Dr. Trumper may have misspoken during the hearing, or if
not, perhaps SMC should have moved to correct the transcript.
However, the quotation, supra, from the hearing testimony of
Dr. Trumper accurately reflects the official transcript which
indicates that he said “top and bottom,” rather than “top or
bottom” as stated in SMC’s reply brief.
In any event, it is clear from the transcript that while Dr.
Trumper did refer to the Ribble embodiment as having a sort of
a flange, contrary to Norgren’s characterization of his
testimony, he did not say that Ribble disclosed a flange such as
that referred to in claim 1. More particularly, as part of the
same testimony on the issue of alleged obviousness, Dr.
Trumper explained how one would have to modify the Ribble
clamp in order for it to have a “four-sided generally rectangular
shape.” See Trumper Tr. 620-621.
42a
rectangular or are not ported. SMC Br. at 15 (citing
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1323-28 (Fed. Cir. 2003)(holding that claim cannot be
construed to encompass subject matter that patentee
disavowed during prosecution to obtain allowance)).
SMC further submits that its proposed claim
construction is consistent with the position taken by
Norgren in connection with the domestic industry
issue to the effect that Norgren’s own “Quik Clamp”
connector, which engages four projecting rims,
practices the patent. Jd.
Finally, SMC argues that one should ignore
Norgren’s position that “a generally rectangular
ported flange” is not a claim limitation due to its
placement in the claim preamble inasmuch as
reference to the flange occurs four times in the body.
of claim 1. Jd. at n.4. Thus, both Norgren and SMC
argue that the term “a generally rectangular ported
flange” must be construed, albeit for different
reasons.
The Staff proposes that a “generally rectangular
ported flange” should be construed as “a flange
having a rectangular or close to rectangular shape
with projections on all four sides with an opening in
the middle.” Staff Br. at 7.12 Although later portions
'? The term “middle” as used by SMC and the Staff has not been
placed in contention. No precise definition of the term is
proposed by any party. It appears to be at least tacitly agreed
by all parties that a port must be provided somewhere within
the space delineated by the outer edges of the flange, and by
necessity in such a location and in such dimensions so as to
accommodate the fluid (compressed air) flowing through the
predetermined openings in the FRLs.
43a
of the Staffs brief do refer to flanges as rims, see,
e.g., Staff Br. at 9, this definition identifies flanges as
comprising projections, as well as a surface that
provides an opening in the middle. The Staff bases
its proposed construction in large part on the fact
that all asserted claims require a_ four-sided,
generally rectangular clamp adapted to engage a pair
of the (generally rectangular ) flanges at issue. /d. at
7-8.
The Staff also argues that SMC has offered a
definition that is consistent with evidence intrinsic to
the patent, consistent with extrinsic evidence, and
consistent with evidence presented at the hearing.
Thus, the Staff states that it can concur with SMC’s
proposed claim construction of this term. /d. at 8-9.
In contrast, the Staff argues, Norgren has sought
to justify a tenuous infringement position by
attempting during the course of this investigation to
move away from a “projecting rim” construction of the
flange at issue in favor of an “amorphous and generic
definition” that “ignores the claim language of claim
1, disregards the ‘392 patent specification, and
moreover conflicts with the plain and ordinary
meaning of the term ‘flange.’ /d. at 8 (citing, inter
alia, Norgren’s Mot. for Partial Summ. Deter., Mot.
Dkt. No. 587-10 at 15 (in which Norgren’s expert
defined a “flange” as a “projecting rim to attach to
something else”)).
Based on the arguments of the parties, it is
evident that all agree that whether the claim term “a
generally rectangular ported flange” appears in the
preamble of claim 1 by way of explanation, or
44a
whether it is present in the preamble to add a
particular limitation to the claimed invention, it must
be construed because of the relationship between the
flange and the clamp, the latter of which is
indisputably a claim hmitation. Further, it must be
determined what the claim indicates by use of the
term “a generally rectangular flange” with particular
emphasis on defining the word “flange” which is in
dispute. Finally, it must be determined whether or
not the generally rectangular flange referred to in the
preamble must have four projecting rims.
For the reasons detailed below, it is determined
that the word “flange,” as used in the claims of the
‘392 patent, is the structure that is received into the
claimed clamp, and further that “a _ generally
rectangular ported flange” is a flange of rectangular
shape with projections on all four sides and a hole in
the middle that is used as a port.
We begin with the critical inquiry whether “a
generally rectangular ported flange” is a claim
limitation contained in the preamble of claim. This
inquiry is most clearly decided by referring again to
the text at issue, which by way of review, is as
follows:
Connecting structure for contiguously
connecting together a pair of fluid-flow
elements, each fluid flow element
including a generally rectangular ported
flange so as to define a pair of ported
flanges associated with the fluid-flow
elements, said connecting — structure
comprising...
45a
JX-1, col. 4, ll. 44-48 (emphasis added).
According to the plain language of the preamble,
a connecting structure is claimed, and required
elements or limitations of which are to follow in the
body of the claim. The preamble does, however, set
forth the context in which the claimed “connecting
structure” is to be used, which is the contiguous
connection of a pair of “fluid flow elements” (or FRLs)
having certain features. The features of each FLR
include “a generally rectangular ported flange” so
that when taken together, two FRLs present “a pair
of ported flanges.!° It is undisputed that language
found in the body of the claim, particularly the text
that recites a clamp adapted for use with the flanges
of the FRLs, refers back to this preamble language.
However, there is no indication in the plain language
of the claim that the flanges on the FRLs are
limitations placed on the claimed “connecting
structure.” In fact, as may be seen from the plain
language quoted above, the claimed connector is
actually described as a “connecting structure” that is
not the same as the “fluid flow elements” (7e., FRLs)
which bear the flanges.!4 It is clear that the
' A “pair” of flanges does not refer to the flanges located on
opposite sides of a single fluid flow element. Rather, when the
flange on one side of one unit is positioned next to the flange on
the side of a second unit, those two flanges located on two units
constitute “a pair” of flanges that are to be engaged by the
claimed connector.
'* An argument made by Norgren on behalf of the applicants
during prosecution of the ‘392 patent is not consistent with this
fact. Specifically, in order to overcome an _ indefiniteness
rejection of claims 1-8 before the U.S. Patent and Trademark
46a
“connecting structure” is the subject matter claimed
by claim 1, and not the FRLs or any of the FRL
features.
Inasmuch as limitations contained in the body of
the claim interact with the generally rectangular
ported flanges of the FRLs described in the preamble,
a question is raised as to the meaning of the term
“flange.” At the outset, it may be noted that two
possible issues stand resolved in the parties’ brief.
First, no party has confounded the rims that
project from a flange with the entirely of the flange
itself. In any event, Norgren correctly points out that
the claim refers to a “ported flange,” and it would
make no sense for the projecting rims to have a “port”
or hole through which compressed air could flow.'5
Clearly, the “ported flange” referred to in the claim
must pertain to a structure greater than projecting
rims to be engaged by the clamp.
Office, Norgren made the following argument to the effect that
fluid flow elements are not a part of the claimed combination:
The fluid flow elements and flanges defined in the
preamble of claim 1 are not part of the claimed
combination. The claimed combination provides a
clamp, sealing means and locking means for connecting
the fluid flow elements.
JX-2 (‘392 Prosecution History), May 25, 1994 Amendment, page
4 (emphasis added).
'S As seen in the summary of the parties’ arguments, supra,
there is no dispute that the flanges must be “ported,” or have a
hole, to allow the flow of fluid (most likely treated, compressed
air).
47a
Second, the parties do not disagree with respect
to the words, “generally rectangular.” All agree that
a precise definition of “rectangular” or “generally
rectangular” is not required by the claim and the art.
All also agree that the flange in question nee@. not be
perfectly rectangular, and proportions of the sides
need not be set forth with specificity.
Nevertheless, SMC and the Staff cannot agree
with Norgren on a proper definition of the term
“flange.” Norgren has, as already mentioned,
proposed more than one definition of the term
“flange” during the course of this investigation. Ina
motion for summary determination, Norgren argued
that a flange is a “projecting rim to attach to
something.” See Norgren’s Mot. for Partial Summ.
Deter., Mot. Dkt. No. 587-10 at 15. During the
hearing, Norgren’s expert, John Wiskamp, testified
that after consulting various dictionaries, he learned
that the word “flange” can have a number of
meanings, but testified that “the jargon for my
industry of flange would be the connection device,
that which allows a connection to be guided into a
connection and the connection to be completed.”
Wiskamp Tr. 442.
Norgren put forth no other evidence to support or
detail such a_ definition. Moreover, although
Wiskamp may have consulted dictionaries to learn
the various definitions of “flange,” he never consulted
the prosecution history of the ‘392 patent for any
purpose whatsoever, a significant short-coming. That
Norgren’s expert paid no attention whatsoever to the
prosecution history, and deemed it irrelevant to the
claim construction of the disputed terms, alleged
48a
infringement and patent validity, is demonstrated by
the following hearing testimony:
Q@. During your direct testimony, you went
through, you described to us what you had
done which led to your conclusion of
infringement, during this investigation that
you made. Did you review the prosecution
history of the ‘392 patent?
A. No, I did not.
Q. Do you know what a prosecution history
is?
A. Not necessarily.
Q. Did you have any concern that when you
were interpreting claim 1 and_ the
remainder of the claims that your
interpretation would be inconsistent with
the prosecution history?
A. No, I did not.
Wiskamp Tr. 428.
Mr. Wiskeamp’s failure to consider’ the
prosecution history means that although he may be a
technical expert who can provide factual and opinion
testimony concerning the compressed air and
pneumatics industry and FRL connections in general,
his testimony concerning the meaning of the patent
(not just the term “flange”) is clouded by the fact that
he surprisingly did not review all of the intrinsic
patent evidence. One can never know whether his
testimony would have changed if he had reviewed it.
49a
At this post-hearing stage, Norgren has finally
settled upon a definition that is, as correctly argued
by the Staff, “amorphous and generic.” Indeed,
Norgren now argues in its brief that to one of
ordinary skill in 1993, a “flange” was simply “any
general connection feature used to join two faces
together.” Similarly, “a generally rectangular
flange,” according to Norgren’s brief, is a “rectangular
or close to rectangular attachment feature that allows
the connector to engage and/or align two FRLs in
parallel relationship with each other such that a fluid
tight seal is maintained between the respective ports
on the FRLs.” When trying to locate a “flange,”
Norgren simply directs one to an “attachment
feature.” See, eg., Norgren Br. at 13-14 (claim
construction), 37 (infringement).
Furthermore, Norgren argues that one must look
at the “entire attachment feature.” Norgren Br. at 13,
15 (“The term ‘flange’ in the ‘392 patent claims can
only refer to the entire attachment feature on the
FRL.”). However, it is difficult, if not impossible, to
determine exactly what Norgren would delineate as
an “attachment feature” or more precisely, an “entire
attachment feature.”
Still, there are some illustrations of such features
provided by Norgren in connection with the
infringement issuc, and also specifically with regard
to claim construction, which shed some light on how
Norgren’s position could be applied. For example,
above in this section in which Norgren’s argument
was first summarized, see p. 17, there is a figure from
the Ribble prior art patent that was highlighted by
Norgren to show a “flange” such as that mentioned in
50a
the claim preamble. In that illustration, Norgren has
highlighted, among other things, the projecting rims
(or wedges), the structure that exists on a plane
between the rims (which includes the hole or port
through which fluid may flow), and the top part of the
structure that stands between the main body of the
FRL and the aforementioned surface with rims and a
port. However, there is no support in _ the
specification for designating any structure not
received into the clamp as a “flange” or a part thereof.
The language of claim 1 provides in part: “one of
said sides of the clamp being pivotally mounted so
that said one side can be pivoted out of said operative
clamping position zn order to permit reception of said
flanges into the clamp and then pivoted back into
said operative clamping position....”. JX-1, col. 4, ll
53-55 (emphasis added). Thus, the “flanges”
according to the plain language of claim 1 are the
portions each FRL that are received “into the clamp.”
This is consistent with the definition of a flange
proposed by SMC (and as to which the Staff is
amenable). However, this portion of the claim
language is contrary to the arguments set forth by
Norgren that would encompass the so-callea “entire
attachment feature,” which (although vague) is
shown by Norgren to include portions of the structure
behind the flange, which are not received into the
clamp. '®
16
As discussed, supra, the value, if any, of Wiskamp’'s
statements concerning patent terms is called into question by
the fact that he had not read the prosecution history at the time
of the hearing. Nevertheless, it should be noted that at one
point during the hearing, Norgren, though its expert, admitted
5la
The specification of the ‘392 patent provides
written and pictorial descriptions of flanges that are
consistent with the understanding provided by the
claim language. These portions of the specification
pertain to a preferred embodiment of the claimed
invention, and no need has been shown to restrict the
that the flange is the structure received into the clamp, as
follows:
Q. You testified, I believe yesterday, that a flange
means a connecting device. Is that true?
A. It goes into a connecting device, that’s what I meant
to say, the flange -- are we talking about the flange on
the compressor units?
Q. The flange that’s discussed in claim 1?
A. Yes. It’s part of that connection, it’s the connection
method it receives -- it’s used to make the connection.
Q. What’s your understanding of the term flange as it’s
used in claim 1 of the °392 patent?
A. It’s easier for me to show, but essentially if I were to
take a Norgren product or an SMC product, and note
ine entire structure that is received by the clamping
system, that which would be inside of the clamp would
be what I would consider the flange structure of the
compressed air components.
Q. So the flange would be inside the clamp —
A. What goes into the clamp, what would be -- what
would fit into the corresponding surfaces in the clamp.
It might be easier to show.
Wiskamp Tr. 441-442 (emphasis added).
52a
claims to the preferred embodiment. Thus, for
example, the claimed connecting structure need not
necessarily be adapted to engage flanges that are
exactly like those depicted in the specification.
Nevertheless, it is to be assumed that the
embodiments of the specification are consistent with
the claim language. In this instance, the flanges
described in the specification are consistent with the
understanding of the term provided by the claim
language. For example, in Figure 3 (reproduced above
in section III B) item 30 is labeled as “a rectangular
connecting flange,” and item 26 also depicts a flange
and the edges of the flanges. They are shown (to use
the precise claim language) following their “reception
into the clamp.” JX-1, col. 3, ll. 29-38, col. 4, 1. 28. See
Trumper Tr. 601-602 (discussing the flanges
described in the specification).
Consequently, the flange referred to in the
preamble of claim 1 is the structure with projecting
rims that is received into the clamp. A question
remains, however, as to whether there must be four
projecting rims, or whether it may have only two.
In view of the fact that the clamp must be four-
sided, and the clamp is specially adapted to engage
the generally rectangular ported flanges of the FRLs,
it is reasonable to conclude that the each rectangular
flange is engaged on all four of its sides by the four-
sided clamp. Thus, the clamp is adapted to engage
flanges with four projecting rims. The nature of the
clamp is further detailed immediately below.
53a
2. “a four-sided generally rectangular clamp
adapted, in its operative clamping
position, to engage, in parallel relationship
with one another, the pair of ported
flanges”
This portion of the language of claim 1 could be
addressed in unison, or broken into two parts, 1e., “a
four-sided generally rectangular clamp,” and the
remaining portion focused on the term “adapted”
(“adapted, in its operative clamping position, to
engage, in parallel relationship with one another, the
pair of ported flanges”). However, all of this claim
language occurs in series, and is punctuated after the
word “adapted” so as to group together the terms
“clamp” and its modifier “adapted.” Thus, it is useful
to discuss this text together, rather than treating it
as two separate claim limitations. In any event, as
seen throughout this claim construction analysis and
in many of the briefs filed by the parties, “flange,”
“clamp” and “adapted” are claim terms that
undisputedly have a close relationship in the ‘392
patent claims that reflects the fact that the flange
and adapted clamp structures work together in the
claimed connecting device to join together two fluid
flow elements (such as FRLs).!7
'? Norgren and the Staff have tied the “adapted” portion of the
claim language to other, specific portions of text that act as
distinct claim limitations. For example, in its main post-hearing
brief, Norgren groups under the same heading the term
“adapted” with the previously discussed claim term (ie, a
generally rectangular ported flange) because the adaptation at
issue relates to ported flanges. However, the text of Norgren’s
54a
Norgren argues that the words in the phrase “a
four-sided generally rectangular clamp” “need no
special definition and none of the parties contendls]
that there are any terms of art in this phrase or that
the specification limits the scope of the ordinary
meaning of the words.” Norgren, therefore, proposes
that the term be construed to mean “a clamp that has
four sides and is either rectangular or close to
rectangular in shape.” Norgren Br. at 15-16.
Further, as discussed above, while Norgren takes
that position that the generally rectangular ported
flanges are not a claim limitation, Norgren admits
that the four-sided clamp must be, as per the claim
language, “adapted in its operative clamping position,
to engage, in parallel relationship with one another,
the pair of ported flanges.” See Jd. at 9-10 (fn.
omitted). Of course, Norgren argues that such an
adaptation includes engagement with a flange having
only two projecting rims (or apparently even no such
rims), while SMC and the Staff argue that four rims
must be provided.
SMC states that the term “a _ four-sided,
generally rectangular clamp’ should be construed to
discussion also closely ties the “clamp” element to the term
“adapted.” See Norgren Br. at 9.
The Staff discusses the phrase “adapted . . . to engage” in
relation to the generally rectangular ported flanges, but treats it
as a separate limitation. See Staff Br. at 7 (claim construction),
14-16 (claim construction), 29 (infringement), 31-32
(infringement).
SMC does not treat “adapted” and text that immediately
follows it as a distinct claim limitation. See SMC Br. at 12-19.
55a
mean a rectangular-shaped clamp having four sides.”
SMC Br. at 16. SMC states that this construction in
consistent with the ‘392 patent specification and
prosecution history, as well as the testimony of its
expert concerning the understanding of one of
ordinary skill in the art. /d. at 16-19. SMC observes
in its reply brief that its proposed construction agrees
with that of Norgren and the Staff. SMC Reply Br. at
6.
In its reply, SMC further notes Staff's concern
that SMC may be attempting to read the term
“generally” out of the claims by, among other things,
leaving the word “generally” out of its proposed
construction for this term as recited in its proposed
construction. See /d. at 6 (citing Staff Br. at 16-18).
However, SMC clarifies in its reply that “the
pertinent feature being claimed by this limitation is
that the clamp has four sides and is rectangular in
shape (be it perfectly or imperfectly rectangular).” Jd.
In addition, SMC concurs with the view of the Staff
(detailed below) that the four sides of the rectangular
clamp must “engage” the generally rectangular
ported flanges so as to fit over said flanges and not
merely be in contact with them. Jd.
Indeed, the Staff argues that “a four-sided
generally rectangular clamp” is a “rectangular or
close to rectangular shaped clamp having four sides.”
Staff Br. at 16. Further, the Staff does argue (as
anticipated by SMC) that the clamp must be adapted
so as to “fit over the ‘generally rectangular ported
flanges’ not merely be in contact with them.” Staff
Br. at 14. Staff submits that such a construction is
consistent with the specification, and also the
56a
prosecution history in which Norgren, on behalf of
the applicant, distinguished the claimed clamp from
the prior art by arguing that its clamp can be pivoted
out of its operative position in order “to fit the clamp
over flanges of fluid flow element.” Jd at 14-15
(quoting JX-2, May 29, 1994 Amendment, pages 4-5).
This Tribunal concurs that “a four-sided
generally rectangular clamp” is rectangular or close
to rectangular in its shape, and thus has four sides.
It is further determined that the clamp must be
adapted to engage the generally rectangular ported
flanges of the “fluid flow elements” described in the
claim preamble. Thus, the dimensions of the sides of
the clamp must accommodate the sides of the flanges.
In addition, for the reasons stated by the Staff,
which are grounded in the prosecution history of the
asserted patent, the clamp must be adapted so that it
fits over the flanges of the FRLs. See Hkchian v.
Home Depot, Inc., 104 F.3d 1299, 13804 (Fed. Cir.
1997)(“[Slince by distinguishing the claimed
invention over the prior art, the applicant is
indicating what the claims do not cover, he is by
implication surrendering such protection.”). Indeed,
it is clear that when the applicants amended their
claims to overcome a prior art rejection under 35
U.S.C. § 103 (obviousness), they differentiated their
claimed invention by stating that the clamp fits over
the flanges, as follows:
Neither of the primary references,
Edmaier and Abbes, discloses a clamp of
rectangular shape wherein one of the sides
is pivotally mounted so that it can be
57a
pivoted out of its operative position in
order to fit the clamp over flanges of fluid-
flow elements.
JX-2, May 29, 1994 Amendment, pages 4-5 (emphasis
added). Norgren’s application was subsequently
allowed. See JX-002, June 8, 1994 Notice of
Allowability.
The four-sided clamp must engage, or fit over,
the flanges of the fluid flow elements, and in doing so
it necessarily fits over all four edges of the generally
rectangular flanges. The applicants did not tell the
examiner that the clamp fits over only part of the
flange. In fact, there is nothing in the claim
language, the specification, or the prosecution history
to suggest anything less.
Norgren offers no explanation as to why, if the
clamp were adapted to engage a flange with only two
projecting rims, the claim emphasizes the generally
rectangular shape of the flange, and moreover, why
the claim requires as a limitation that the clamp be
four-sided. There is nothing in the claim language,
the specification, or the prosecution history (quoted
above) to indicate that somehow a four-sided clamp
fitting over a generally rectangular (.e., four-sided)
flange could fit over only two sides of the rectangle, or
how a rectangle could have only two sides.
The mechanics of how the clamp in the claimed
invention engages, or fits over, all four sides is
clarified by understanding that one side of the clamp
is “pivotally mounted,” a claim limitation discussed
immediately below.
58a
3. “pivotally mounted”
With respect to the sides of the required four-
sided, generally rectangular clamp, claim 1 provides:
“one of said sides of the clamp being pivotally
mounted so that said one side can be pivoted out of
said operative clamping position in order to permit
reception of said flanges into the clamp and then
pivoted back into said operative clamping position ....”
JX-1, col. 4, 11.53-57 (emphasis added).
The fact that the claimed clamp has a side that is
“pivotally mounted” relates to the manner in which
the clamp engages the flanges on the two fluid flow
elements in order to join them. As discussed above,
the connector’s clamp structure must cover the flange
on each fluid flow element, rather than merely
coming into contact with the flanges. As described in
the claim language, to allow the clamp to fit around a
flange, one of its sides may be moved and then
secured back in place. In the words of the claim, one
side is “pivotally mounted” on the remaining portion
of the clamp. That much is undisputed.
However, questions have been raised in this
investigation regarding the mounting itself, and
specifically whether the clamp is limited so that the
side that can pivot must be mounted in a “hinge-like”
manner so as to have “no loose parts.”
SMC relics on the specification and expert
testimony to argue that “the proper construction of
the term ‘pivotally mounted’ is a hinge-like mount
with no loose parts.” SeeSMC Br. at 19-21. Norgren
rejects any such additional hmitations to the claim
59a
structure, and proposes that “pivotally mounted”
means “placed or fastened in a way that allows an
object to move about a point.” See Norgren Br. at 16-
20. Similarly, the Staff rejects the additional
limitations proposed by SMC, and argues that
“pivotally mounted” should be construed as “placed or
fastened in a way that allows an object to move about
a point.” See Staff Br. at 18-23.
SMC’s proposed construction is rejected. The
term at issue, ze, “pivotally mounted,” tells the
reader “how” the side of the clamp moves, z.e., it
“pivots;” it is “pivotally mounted.” SMC seeks to
convert the language at issue into the noun, or the
thing itself, 2e., SMC argues that “pivotally mounted”
means “a hinge-like mount.” Yet, the term “pivotally
mounted” says nothing about the physical structure
of the side of the claimed clamp that pivots, or the
structure by which it is mounted on the rest of the
clamp. It does not say whether the side is capable of
pivoting because it is mounted on a hinge, hinge-like
structure, or by some other means. Nor does the
term “pivotally mounted” indicate whether or not
there are loose parts.
SMC’s claim construction would also
impermissibly limit the claims of the ‘392 patent to a
preferred embodiment. Although the ‘392
specification repeatedly emphasizes “a hinge-like
mount” and “no loose parts,” it does so exclusively in
the context of preferred embodiments. }8
18 See JX°1, col. 1, ll. 32-36 (a “preferably unitary connecting
means’); col. 2, ll. 1-4 (“Preferably, the said one side of the clamp
is pivotally mounted on the spacer or on an adjacent side of the
clamp by means of a hinge-like mounting.”); col. 2, ll. 5-9
60a
Consequently, inasmuch as the inventors emphasized
that a “hinge-like mount” and “no loose parts” are
preferred embodiments, the claims should not be so
limited. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1370 (Fed. Cir. 2003)(“An invention may
possess a number of advantages or purposes, and
there is no requirement that every claim directed to
that invention be limited to encompass all of them.”).
Moreover, as noted by the Staff, it appears that
the ‘392 specification discloses an embodiment that
does not require a “hinge-like mount” for purposes of
“pivotally mounting” one side of the clamp.!9 In
particular, the device depicted in Figure 1
(reproduced above in section III B, at page 10)
utilizes “a generally U-shaped stirrup 17 pivotally
hung on the L-shaped projection 14,” attached to a
spacer (labeled as item 2). JX-1, col. 2, 1. 66 through
col. 4, 1. 1. The specification does not characterize
this embodiment as having a “hinge-like mount.” In
contrast, the specification also discloses in Figure 5,
an “alternative design” to that disclosed in Figure 1,
(“Accordingly, it will be appreciated that the connecting means
of the invention may be a unitary structure in the sense that it
has no loose parts that might otherwise get lost by the
user.”emphasis added); col. 3, ll. 57-61 (“[T]he preferred
connecting means of the invention described above is, when its
components are assembled together, unitary in nature, is
relatively simple and inexpensive to manufacture and is simple
to manipulate.”)(emphasis added)); col. 3, ll. 62-66 (a “hingedly
mounted” preferred embodiment).
'? As a general rule, claim interpretations that operate to
exclude the preferred embodiment, are “rarely, if ever, correct
and require highly persuasive evidentiary support.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
6la
in which the elements are “retained together in
hinge-like fashion by means of a pin 37 that passes
through the bore 35.” JX-1, col. 2, ll. 24-27; col. 4, ll.
3-15. Thus, the specification supports a broader
definition of the term “pivotally mounted,” than one
requiring a hinge-like mount.
Finally, although claim differentiation cannot be
used unjustifiably to broaden the scope of the claims,
it can be relied on as support for a claim construction
that is entirely consistent with the intrinsic record.
See Phillips, 415 F.3d at 1324-35 (relying on the
doctrine of claim differentiation to support the
conclusion that one skilled in the art reading the
specification would not limit the claims to a preferred
embodiment). Moreover, a claim construction that
renders a dependent claim _ superfluous is
presumptively unreasonable. Beachcombers _ v.
Wilde Wood Creative Prods., Inc., 31 F.3d 1154, 1162
(Fed. Cir. 1994). In this instance, dependent claims 5
and 7, add the limitation that “one side of the clamp
is captively and pivotally mounted.” The use of the
term “captively” suggests that one side of the clamp is
mounted in a secure or confined fashion such that
there are no loose parts. The use of the word
“captive” in claims 5 and 7 also shows that the
patentee did not intend the “pivotally mounted” side
of the clamp inclaim 1 necessarily to be captive.
When questioned during the hearing about the
difference between “pivotally mounted” and
“captively,” as used in the claims, SMC’s expert
testified that they meant the same thing. See
Trumper Tr. 659. This trend continues in SMC’s
brief that downplays the dependent claims with
62a
additional limitations based on the term “captively.”
However, if those words have the same meaning in
the ‘392 patent, then the dependent claims have
sought to add superfluous limitations. It is improper,
however, to eliminate claim limitations as every word
in a claim is material and must be considered.
Bincon, Inc. v. Strauman Co., 441 F.3d 945, 950 (Fed.
Cir. 2006)(“[C]laims are interpreted with an cye
toward giving effect to all terms in the claim.”).
Accordingly, for the reason stated above,
“pivotally mounted” is construed to mean “placed or
fastened in way that allows an object to move about a
point.” A hinge-like mounting with no loose parts is
not required.
IV. INFRINGEMENT DETERMINATION
As detailed above, Norgren accuses SMC
products of infringing one or more claims of the
asserted ‘392 patent. It is argued that although the
products literally infringe the asserted claim,
infringement could, in the alternative, be found
under the doctrine of equivalents. See Norgren Br. at
23-38.
A. Applicable Law
In a section 337 investigation, the complainant
bears the burden of proving infringement of the
asserted patent claims by a preponderance of the
evidence. Certain Flooring Products, Inv. No. 337-
TA-443, Commission Notice of Final Determination of »
No Violation of Section 337, 2002 WL 448690 at 59,
(March 22, 2002); Enercon GmbH v. Int'l Trade
Comm'n, 151 F.3d 1376 (Fed. Cir. 1998).
63a
Each patent claim element or limitation is
considered material and essential. London v. Carson
Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir.
1991). Literal infringement of a claim occurs when
every limitation recited in the claim appears in the
accused device, ie, when the properly construed
claim reads on the accused device exactly. AmaAz/
Enters., Ltd v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed.
Cir. 1996); Southwall Tech. v. Cardinal IG Co., 54
F.3d 1570, 1575 (Fed Cir. 1995).
If the accused product does not literally infringe
the patent claim, infringement might be found under
the doctrine of equivalents. The Supreme Court has
described the essential inquiry of the doctrine of
equivalents analysis in terms of whether the accused
product or process contains elements identical or
equivalent to each claimed element of the patented
invention. WarnerJenkinson Co., Inc. v. Hilton
Davis Chemical Co., 520 U.S. 17, 40 (1997).
Under the doctrine of equivalents, infringement
may be found if the accused product or process
performs substantially the same function in
substantially the same way to obtain substantially
the same result. Va/mont [ndus., Inc. v. Reinke Mfg.
Co., 983 F.2d 1039, 1043 (Fed. Cir. 1993). The
doctrine of equivalents does not allow claim
limitations to be ignored. Evidence must be presented
on a limitation-by-limitation basis, and not for the
invention as a whole. Warner-Jenkinson, 520 U.S. at
29; Hughes Aircraft Co. v. U.S., 86 F.3d 1566 (Fed.
Cir. 1996). Thus, if an element is missing or not
satisfied, infringement cannot be found under the
doctrine of equivalents as a matter of law. See, e.g.,
64a
Wright Medical, 122 F.3d 1440, 1444 (Fed. Cir. 1997);
Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d
394, 398 (Fed. Cir. 1994); London v. Carson Pirie
Scott & Co., 946 F.2d 1534, 1538-39 (Fed. Cir. 1991);
Becton Dickinson and Co. v. C.R. Bard, Inc., 922 F.2d
792, 798 (Fed. Cir. 1990).
The concept of equivalency cannot embrace a
structure that is specifically excluded from the scope
of the claims. AtA/etic Alternatives v. Prince Mfg.,
Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996). In applying
the doctrine of equivalents, the Commission must be
informed by the fundamental principle that a patent’s
claims define the limits of its protection. See Charles
Greiner & Co. v. Mari-Med. Mfg., Inc., 92 F.2d 1031,
1036 (Fed. Cir. 1992). As the Supreme Court has
affirmed:
Each element contained in a patent claim
is deemed material to defining the scope of
the patented invention, and thus the
doctrine of equivalents must be applied to
individual elements of the claim, not to the
invention as a whole. It is isaportant to
ensure that the application of the doctrine,
even as to an individual element, is not
allowed such broad play as to effectively
eliminate that element in its entirety.
Warner-Jenkinson, 520 U.S. at 29.
Prosecution history estoppel may bar the
patentee from asserting equivalents if the scope: of
the claims has been narrowed by amendment during
prosecution. A narrowing amendment may occur
65a
when either a _ preexisting claim limitation is
narrowed by amendment, or a new ciaim limitation is
added by amendment. These decisions make no
distinction between the narrowing of a preexisting
limitation and the addition of a new limitation.
Either amendment will give rise to a presumptive
estoppel if made for a reason related to patentability.
Honeywell Int] inc. v. Hamilton Sundstrand Corp.,
370 F.3d 1131, 1139-41 (Fed. Cir. 2004), cert. denied,
545 U.S. 1127 (2005)(citing Warner-Jenkinson, 520
U.S. at 22, 33-34; and Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-34,
741 (2002)). The presumption of estoppel may be
rebutted if the patentee can demonstrate that: (1) the
alleged equivalent would have been unforeseeable at
the time the narrowing amendment was made; (2) the
rationale underlying the narrowing amendment bore
no more than a tangential relation to the equivalent
at issue; or (3) there was some other reason
suggesting that the patentee could not reasonably
have been expected to have described the alleged
equivalent. Honeywell, 370 F.3d at 1140 (citing, inter
alia, Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003)(en
bano)).
B. Analysis of the Accused Products
As discussed above in section I B (Products at
Issue), Norgren alleges that some or all of the SMC
products at issue infringe all claims of the ‘392
patent, except claims 6 and 8, as follows: claim 1 (all
connectors), claim 2 (all connectors), claim 3 (all
connectors), claim 4 (all connectors), claim 5 (all
connectors), claim 7 (all connectors), and claim 9
66a
(SMC’s fluid flow elements when engaged with a
connector). It is alleged that the infringement occurs
literally, or in the alternative, under the doctrine of
equivalents. See Norgren Brief at 21-38.
1. Claim 1
a. No Literal Infringement
As discussed above in section I B, SMC’s Y400 is
representative of the “new style” connectors accused
of infringing independent claim 1, as well as several
dependent claims of the ‘392 _ patent. A
representative depiction of SMC’s new style
connector, similar to that found in Norgren’s brief,
the Staff's brief, and CX-82 (an SMC catalog) is
reproduced below:
Y400
For the reasons stated below, it is found that the
accused Norgren connectors do not literally infringe
claim 1.
i. a four-sided generally rectangular clamp
adapted, in its operative clamping position, to
engage, in parallel relationship with one
another, the pair of ported flanges
67a
As held in the section on claim construction,
claim 1 requires a four-sided, generally rectangular
clamp adapted to engage a pair of generally
rectangular ported flanges located on two fluid flow
elements. In particular, it was determined that the
clamp must engage four projecting rims on each
flange. As seen in a representative sample of an
SMC FRL, marked as RPX-11, the SMC units to
which the accused products connect have two, not
four, ear-like projections on either side of the port.
See RPX-11. This distinction is fatal to Norgren’s
infringement case.
Taku Tomita, the designer of the accused SMC
products and FRL units, explained during the
hearing that the accused products are all adapted to
connect to these two ear-like projections rather than
a generally rectangular ported flange. See Tomita Tr.
586-588. SMC’s technical expert, Dr. Trumper,
confirmed that SMC’s FRL units have two ear-like
projections and not a generally rectangular ported
flange. In particular, Dr. Trumper explained that
there are no projections on the top and bottom of
SMC’s modular FRL units. There are mounting ears
only on the left and right sides of the unit. See
Trumper Tr. 606. Dr. Trumper also confirmed that
SMC’s accused products are not adapted to connect to
a “generally rectangular flange” with four projecting
rims. See Trumper Tr. 601, 604-605, 607.
Norgren has argued, however, that SMC’s
accused products are adapted to engage flanges of
various types, including a modified flange of a
Norgren product that normally has four projecting
rims, as represented by CPX-8. See Norgren Br. at
68a
27-28. This exhibit and Norgren’s related testimony
have no probative value, and do not demonstrate that
SMC’s accused products meet the claim limitation for
at least two reasons.
First, Norgren was unable at the hearing to
explain how the Norgren FRL unit was modified, or
who made the modifications. Nor was any
explanation provided by complainant for the fact the
modified FRL had been repainted in a manner such
that the modifications were not readily apparent. See
Wiskamp Tr. 433-436. Second, and perhaps most
telling, is the fact that Norgren had to modify the
Norgren FRL unit in order to attach it to SMC’s
accused connector. This modification demonstrates
that the connector is not in fact adapted to engage 2
generally rectangular ported flange.
Further, as explained above in the section on
claim construction, in the context of the asserted
claims, “engage” means “fits over.” Thus, claim 1
requires that each side of the four-sided, generally
rectangular clamp must fit over a corresponding side
of the “generally rectangular ported flange.” SMC’s
accused connector, however, does not fit over a
generally rectangular ported flange, ie, a flange
having projections on all four sides, as claimed by the
‘392 patent. The evidence presented at the hearing
confirms that only the two wing-like parts on the
retainer located on SMC’s accused connectors fit over
the two ear-like projections on the SMC FRL unit.
See Tomita Tr. 586-587.29 Thus, the fact that SMC’s
*° A visual inspection of RX-6 (an SMC connector) and RX-10 (an
SMC FRL) shows that when they are connected, the wings on
69a
accused devices only fit over two “projecting ears,”
rather than a flange having projecting rims on all
four sides, is yet another reason why the SMC
accused devices do not literally infringe claim 1 of the
‘392 patent.
In sum, based on the above, the evidence shows
that the accused products do not provide a four-sided,
generally rectangular clamp that is adapted to
engage a pair of generally rectangular ported flanges,
as required by claim 1. Thus, SMC’s infringement
claim must fail.
Nevertheless, it is found that the accused SMC
connectors do provide a “four-sided generally
rectangular clamp,” even though that clamp is not
adapted in such as way as to infringe. SMC and its
expert contends that the accused connectors are two-
sided, not four-sided. See, e.g., Trumper Tr. 609. The
record evidence shows otherwise.
At the hearing, SMC contended that the two
sides of its accused connectors consist of a front
the sides of the clamp fit over the projecting rims on the sides of
an FRL flange, while the top of the flange rests against two
small, block-like features that Dr. Trumper calls “alignment
details” located at the top of the clamp. The flange is not
received into that portion of the clamp. In fact, Dr. Trumper
testified that the top of the “FRL,” rather than the top of the
“flange” rests against the so-called alignment details,
presumably because there is no projecting rim on that edge of
the FRL. Meanwhile, the bottom of the flange stops at the point
of a long horizontal indentation or “groove” into which a bar or
“spacer” of the clamp fits. The spacer does not, however, fit over
the bottom of the flange. It is simply tightened into the groove.
See Trumper Tr. 640-642 (cross-examination concerning the
connection between RPX-6 and RPX-10).
70a
retaining clip and a back retaining clip. See Trumper
Tr. 609 (“Yes, this is a two-sided clamp, the clamping
is effected with these retaining clippings, as we’ve
called them, or retainers, there’s an outer retainer,
and then there’s an inner retainer... .”). However,
as observed at the hearing, in order for SMC’s
connector to function properly all four sides of the
connecter were needed, which include the bolt, the
pin, and the spacer. See Trumper Tr. 684-685. Thus,
as assembled in the accused devices, the clamps do
have four sides as required by claim 1. There is no
dispute that its shape is generally rectangular.
Nonetheless, as noted above, because the accused
connectors do not accept generally rectangular ported
flanges, Norgren’s infringement assertion as to claim
1 must still fail.
it. SMC’s Accused Connectors Include a
Pivotally Mounted Side
As detailed above in the section on claim
construction, claim 1 does not require that one side of
the clamp be hingedly-mounted so as to have no loose
parts, as argued by SMC. Rather, in order to meet
the “pivotally mounted” limitation, the side need only
be “placed or fastened in way that allows an object to
move about a point.”
SMC’s accused connectors contain at least one
side that is placed or fastened in such a way that it
can move about a point. While it is not hingedly-
mounted, which SMC would require, there is no
genuine dispute that the accused connectors contain
such a feature. See SMC Br. at 28-30; Wiskamp Tr.
275. However, for the reasons mentioned above, the
7la
finding that the accused devices do not infringe claim
1 remains unchanged.
b. The Doctrine of Equivalents
Norgren devotes approximately three pages of its
post-hearing brief to its argument that to the extent
the elements of the ‘392 patent are not literally
present in the SMC devices, SMC infringes under the
doctrine of equivalents. See Norgren Br. at 36-38.
SMC and the Staff argue that Norgren is estopped
from arguing the doctrine of equivalents, at least
with respect to claim 1, the only independent claim
asserted, and further that the record lacks of any
pertinent evidence. See SMC Br. at 31-34; Staff Br.
at 31-32.
It is found that Norgren is barred from asserting
the doctrine of equivalents as to key claim limitations
that are relevant to the infringement issues in this
investigation. As discussed above in section IV A,
under the Supreme Court’s Festo opinion and similar
case law, prosecution history estoppel may bar the
patentee from asserting equivalents if the scope of
the claims has been narrowed by amendment during
prosecution. In this case, claim 1 was initially
rejected by the PTO examiner under 35 U.S.C. § 112
because it was unclear as to whether the FRLs with
their flanges were part of the claimed combination.
See JX-2, February 25, 1994 Office Action, page 2. In
response, Norgren amended claim 1, as follows:
Connecting [means] structure for
contiguously connecting together a pair of
fluid-flow elements, each fluid flow element
72a
including a generally rectangular _ ported
flange so as to define a pair of ported
flanges associated with the _fluid-flow
elements....
JX-2, May 29, 1994 Amendment, page 1.?!
Thus, when Norgren amended claim 1, it
relinquished coverage of a clamp designed to engage
fluid-flow elements with flanges of any configuration.
Instead, Norgren limited the scope of claim 1 to a
clamp designed to operate with elements that have
generally rectangular ported flanges, ie. flanges
having four sides. Moreover, as discussed in
connection with the claim construction issues,
Norgren distinguished its claimed invention, and
traversed the examiner’s rejection, by arguing that
its connector is designed “to fit the clamp over flanges
of fluid flow elements.” JX-2, May 29, 1994
Amendment, pages 4-5. Thus, Norgren argued that
the clamp fits over generally rectangular flanges, not
parts of flanges (e.g., only two sides) or not at all (e.z.,
a flange with no rims over which a clamp could fit).
Norgren cannot now seek to regain, through the
doctrine of equivalents, that which it surrendered to
obtain issuance of the patent. Thus, it could not be
found that claim 1 is infringed, even under the
doctrine of equivalents, by a clamp that fits around
only two sides of a generally rectangular flange,
effectively rendering the rectangular shape of the
flanges and the clamp meaningless. Nor could
7! Pursuant to PTO practice, underlining indicates language
added to the claim and brackets indicate language deleted from
the claim. See Grauer Tr. 728.
73a
Norgren argue that the clamp engages the flanges in
any manner other than by fitting around them. For
at least those reasons, the SMC connector, which
does not fit around four sides of a flange (but rather
fits over only a portion of two projecting rims), could
not be found under the doctrine of equivalents to
satisfy the lmitations of independent claim 1.
In addition, SMC and the Staff are correct in
their arguments that the record contains little, if any,
evidence to support a finding of infringement under
the doctrine of equivalents. Norgren’s scant citations
to the record (which largely depend upon the
testimony of SMC’s Dr. Trumper and Taku Tomita)
do not present a case of infringement under the
doctrine of equivalents. See Norgren Br. at 37. In
fact, SMC’s witnesses aside, Norgren would have
been hampered in any attempt to put on a case of its
own concerning the doctrine of equivalents given the
damaging testimony of its own expert. In that
regard, during cross-examination at the hearing in
this investigation, SMC adduced the following
testimony from Norgren’s expert:
Q. And I guess the correct lines would be 4
through 15. And the question was, “do you
understand what type of infringement
you're arguing there?
“Answer: No.I|“]
“Question: Do you’ understand the
difference between literal infringement
and infringement under the doctrine of
equivalents?”
74a
And then the answer is “no.”
And this was your testimony on, as I say,
October 12 of ‘07. So would it be fair to say
at that time, you did not understand the
difference between literal infringement
and infringement under the doctrine of
equivalents?
A. I stand by what I said.
Q. And do you recall that you had already
submitted an expert report at that time?
A. Yes.
Q. And the testimony you gave on direct,
do you think any of that testimony was
directed to doctrine of equivalents
infringement?
A. I don’t know.
Q. Would it be fair to say that even today
you do not understand the difference
between literal infringement and doctrine
of equivalents infringement?
A. Correct.
Wiskamp Tr. 432-433 (emphasis added).??
*? Despite this admission, Wiskamp’s expert reports nonetheless
contain statements that were written in view of the doctrine of
equivalents. Most notable is the following:
75a
Due to the fact that Norgren is estopped from arguing
the doctrine of equivalents with respect to certain
aspects of claim 1, and in view of the lack of record
evidence concerning the doctrine of equivalents, it is
not found that the accused SMC products infringe
claim 1 under the doctrine of equivalents.
2. Claims 2-5, 7 and 9
Inasmuch as each claim limitation must be
present in an accused device in order for
infringement to be found (either literally or under the
doctrine of equivalents), a device cannot infringe a
dependent claim if it does not practice every
limitation of the independent claim from which it
depends. See WarnerJenkinson Co., 520 U.S. at 40;
Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352,
1359 (Fed. Cir. 2007). Therefore, in this instance,
83. If the court determines that the flange must
have rims on each of the four sides, then the SMC
attachment feature performs the same function
described in the ‘392 patent specification in the
same way and with the same result. The SMC
attachment feature has flanges with two edges that
urge the two air conditioning units together when
the connector’s locking means is tightened.
Rebuttal Expert Report of John C. Wiskamp, { 83, page 17 (filed
Sept. 19, 2007)(emphasis added).
Yet, as seen in the transcript portion, quoted supra, Mr.
Wiskamp testified that he was ignorant of the doctrine of
equivalents. In any event, during the hearing he did not
analyze SMC’s devices in terms of the function-way-result test
recited in the rebuttal report, nor did he in any other manner
provide testimony to support the statements that are contained
in his expert reports which relate to the doctrine of equivalents.
76a
inasmuch as no accused product contains each
limitation of the only independent claim, which is
claim 1, none of the other asserted, dependent claims
can be found to infringe.
However, it noted that with respect to the
infringement issue (as opposed to the claim
construction issue), SMC did not brief the particular
limitations added by the asserted dependent claims.
Rather, SMC relied on its non-infringement of
independent claim 1 to argue that the dependent
claims are not infringed. See SMC Br. at 31; SMC
Reply Br. at 10-14. In contrast, Norgren provided at
least a cursory briefing for all of the dependent
claims, with citations to record evidence. See
Norgren Br. at 32-36. Consequently, if it were found
that SMC infringed claim 1, SMC might also be
exposed to liability for infringement of the other
asserted claims.
In addition, claim 9 deserves special attention
because it contains a substantially more detailed
definition of a fluid flow element, and Norgren sets
forth broader infringement allegations with respect to
claim 9. Claim 9 provides, as follows:
9. Connecting structure according to claim
1, wherein said fluid flow elements include
a first compressed air-conditioning unit
and a second air-conditioning unit, said
clamp being constructed and arranged to
connect said first compressed _§air-
conditioning unit to said second air
conditioning unit.
T7a
JX-1, col. 6, ll. 16°21.
Norgren argues that “[c]]aim 9 includes within
its scope the FRLs that are adapted to engage with
the SMC connector.” Norgren Br. at 34. It submits
that contrary to some of the arguments raised during
the pre-hearing phase of this investigation, nothing
in the prosecution history prevents FRLs from being
added as an additional limitation on the invention by
claim 9. However, Norgren offers little to
demonstrate that FRLs are actually added as a
limitation. See /d. at 34-36.
Rather, claim 9 by its plain language defines the
fluid flow elements referred to in claim 1 (beginning
in the preamble) such that according to claim 9 they
must include first and second air-conditioning units.
However, as discussed at length above, this Tribunal
agrees with Norgren that the fluid flow units are not
in and of themselves limitations on the invention
claimed in claim 1; and nor are they limitations with
respect to claim 9. Claim 9 merely further defines
the fluid flow elements to be joined by the claimed
connector. As in the case of claim 1, the clamp of
claim 9 is a limitation on the invention. The claimed
clamp must not only be adapted to engage generally
rectangular ported flanges, as in claim 1, but in
accordance with claim 9 the clamp must be
“constructed and arranged to connect said first
compressed air-conditioning unit to said second air-
conditioning unit.”
Granted, there is a symmetry between claim 1
and claim 9 in the way that the fluid flow elements
are further defined in claim 9, and in the way that
78a
the plain language of claim 9 further limits the clamp
to be used with such air-conditioning units. There is,
however, no indication in the language of claim 9 that
the air-conditioning units are limitations on the
claimed invention. Indeed, as in the case of claim 1,
the plain language of claim 9 states that a
“Iclonnecting structure” is claimed, not a fluid flow
element such as an FRL, or any type of air-
conditioning unit.
In addition, Norgren cites to no support for this
broader infringement argument in the specification,
and indeed none is there. This fact further supports
a finding that Norgren’s infringement argument with
respect to claim 9 is in error. If claim 9 were
construed to cover FRLs or an “air conditioning unit,”
a substantial question would be raised as to whether
or not the specification adequately supports claim 9.
Consequently, claim 9 is not infringed because
independent claim 1 is not infringed. Further, even if
claim 9 were infringed, a finding of infringement
could not extend to SMC’s FRLs, but would cover only
the accused connectors.
As stated above in section I B, Norgren accuses of
infringement SMC’s FRLs and “lelvery larger
pneumatic system that incorporates the SMC
connector and FRLs.” See Norgren Br. at 21-23. Yet,
the only infringement argument made by Norgren
that could possibly be understood to address products
other than SMC’s connectors is the above argument
concerning claim 9. Even if Norgren had intended to
set forth other legal or factual arguments are to why
devices other than connectors should be found to
79a
infringe, it did not do so. Nevertheless, as stated
above, the question of whether SMC FRLs and
pneumatic systems should be excluded = as
downstream products, not necessarily as infringing
products, will be discussed in the Recommended
Determination on the question of remedy.
V. VALIDITY
A. Background
One cannot be held lable for practicing an
invalid patent claim. See Pandro/ USA, LP v.
AirBoss Railway Prods., Inc., 320 F.3d 1354, 1365
(Fed. Cir. 2003). However, the claims of a patent are
presumed to be valid. 35 U.S.C. § 282; DMI Inc. v.
Deere & Co., 802 F.2d 421 (Fed. Cir. 1986). Although
a complainant has the burden of proving a violation
of section 337, it can rely on this presumption of
validity. A respondent that has raised patent
invalidity as an affirmative defense must overcome
the presumption by “clear and convincing” evidence of
invalidity. Checkpoint Systems, Inc. v. United States
Int'l Trade Comm’n, 54 F.3d 756, 761 (Fed. Cir.
1995).
SMC argues as an affirmative defense in this
investigation that the asserted claims of the ‘392
patent are invalid. In particular, SMC argues that
the claims are invalid as obvious under 35 U.S.C. §
103. SMC asserts that its allegations are not
dependent on the application of Norgren’s proposed
claim construction, but that the claims are obvious
even under SMC’s narrower proposed construction.
Numerous grounds of potential obviousness were
80a
raised during this investigation. However, in its
post-hearing brief, SMC argues that the claims are
invalid in view of (1) SMC’s older style connector from
1984, with U.S. Patent No. 4,533,020 to Yamazaki
(RX-22) as a description of SMC’s older style
connector, and (2) a combination of U.S. Patent No.
4,400,018 to Abbes et al. (RX-21) and U.S. Patent No.
4,915,418 to Palatchy (RX-27).23 See SMC Br. at 34-
43; RPFF 93-94 (concerning the Yamazaki patent,
which is not raised directly in SMC’s brief); RPCL 4-
6.
Norgren denies that its asserted claims are
invalid. See Norgren Br. at 38-44. The Staff argues
that the asserted claims are not invalid when
properly construed. The Staff does, however, argue
that under Norgren’s overly broad construction of the
claims, they would be invalid. See Staff Br. 33-43.
B. Applicable Law of Obviousness
Obviousness is grounded in 35 U.S.C. § 103,
which provides, znter alia, that:
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
23 SMC made only passing reference to other prior art to
reinforce its main arguments. See SMC Br. at 39 n.7.
8la
subject matter pertains. Patentability
shall not be negatived by the manner in
which the invention was made.
35 U.S.C. § 103(a).
An allegation of obviousness is evaluated under
the so-called Graham factors: (1) the scope and
content of the prior art; (2) the differences between
the prior art and the claims at issue; (3) the level of
ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S.
1, 13-17 (1966).
“One of the ways in which a patent’s subject
matter can be proved obvious is by noting that there
existed at the time of invention a known problem for
which there was an obvious solution encompassed by
the patent’s claims.” ASR Int'l Co. v. Teleflex Inc.,
No. 04-1360, _.. U.S. __., 127, 3.Ct. 1727, 1742
(2007). “[A]ny need or problem known in the field of
endeavor at the time of invention and addressed by
the patent can provide a reason for combing the
elements in the manner claimed.” /d.
Specific teachings, suggestions or motivations to
combine prior art may provide helpful insights into
the state of the art at the time of alleged invention.
Id. at 1741. Nevertheless, “an obviousness analysis
cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles
and the explicit content of issued patents. The
diversity of inventive pursuits and of modern
technology counsels against limiting the analysis in
82a
this way.” Jd. “Under the correct analysis, any need
or problem known in the field of endeavor at the time
of invention and addressed by the patent can provide
a reason for combining the elements in the manner
claimed.” Jd. at 1742. A “person of ordinary skill is
also a person of ordinary creativity...” Jd.
The Federal Circuit has harmonized the KSR
opinion with many prior circuit court opinions by
holding that when a patent challenger contends that
a patent is invalid for obviousness based on a
combination of prior art references, “the burden falls
on the patent challenger to show by clear and
convincing evidence that a person of ordinary skill in
the art would have had reason to attempt to make
the composition or device, or carry out the claimed
process, and would have had a reasonable expectation
of success in doing so. PharmaStem Therapeutics,
Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir.
2007)(citing Medichem S.A. v. Rolabo S.L., 437 F.3d
1175, 1164 (Fed. Cir. 2006)); Noelle v. Lederman, 355
F.3d 1343, 1351-52 (Fed. Cir. 2004); Brown &
Wiliamson Tobacco Corp. v. Philip Morris, Inc., 229
F.3d 1120, 1121 (Fed .Cir. 2000) and ASR, 127 S.Ct.
at 1740 (“a combination of elements ‘must do more
than yield a predictable result’; combining elements
that work together ‘in an unexpected and fruitful
manner’ would not have been obvious”).
The ultimate determination of whether an
invention would have been obvious is a legal
conclusion based on underlying findings of fact. Jn re
Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999).
83a
C. Analysis of the Asserted Claims
1. Claim 1
SMC argues that Norgren’s expert admitted that
the only difference between SMC’s 1984 connector
and claim 1 of the ‘392 patent is that Norgren’s
claimed connector includes a pivotally mounted side
or hinge so that there are no loose parts. SMC argues
that it would have been obvious to use a hinge if one
were concerned about having loose parts, and in fact
the prior art Palatchy patent specifically disclosed a
circular flange connector in which one of the halves
was connected to the other half with a hinge for ease
of closing and thus had no loose parts. Further, SMC
argues, there was nothing new about Norgren’s
connector adapted to receive a ported rectangular
flange because prior art such as the Abbes patent was
adapted to receive a circular flange with a clamp, and
the use of a rectangular shape would have simply
been a design choice to one of ordinary skill.24 It is
argued that even the use of a hinge such as that
disclosed in Palatchy would have been merely a
design choice. See SMC Br. at 38-42. As stated
above, these arguments are rejected by Norgren and
the Staff.
It must observed that Norgren’s expert did, in
fact, admit during his deposition that the only
24 SMC argues that inasmuch as Norgren has argued that the
definition of a rectangular ported flange and a rectangular
clamp are so broad that SMC connector infringes, only the use of
a hinged mount with no loose parts is genuinely at issue. See
SMC Br. at 40 (citing Evans Cooling Sys., Inc. v. General Motors
Corp., 125 F.3d 1448 (Fed. Cir. 1997)).
84a
difference between prior art such as the old SMC
connector and the claimed invention of the ‘392
patent is the fact that one side of the clamp pivots.
At the hearing, it was impossible for him to distance
himself from that prior testimony. See Wiskamp Tr.
331-343. Indeed, he had little choice but to make this
admission in view of the fact that by the time of the
hearing Norgren’s proposed construction of the term
“generally rectangular ported flange,” and the four-
side clamp limitation (including the “adapted” nature
of the clamp) had become extremely broad so as to
capture the accused SMC devices. As argued by
SMC, it would, therefore, be permissible to look only
to the “pivotally mounted” limitation of claim 1 to
determine whether or not the claim is valid. Indeed,
if Norgren’s broad interpretation of claim 1 were
adopted as the proper construction of the claim there
would be no choice but to do so. However, when the
claim is properly construed to be more limited, as
detailed above in the section on claim construction,
the record does not contain clear and convincing
evidence of obviousness.
The Palatchy patent discloses circular pipe
couplings formed from segments that provide a
circular housing which encircle and connect pipes
together. RX-27, col. 1, ll. 5-7. In particular, the
Palatchy inventors provide that the segments that
form the pipe couplings are “hingedly interconnected
together so that the plumber may position and hold
one segment upon the pipes to be coupled and the
remaining segments may simply be hung beneath
that one segment in position and ready to be pivoted
into coupling position when the plumber is ready.”
RX-27, col. 2, ll. 18-24. SMC’s expert also confirmed
85a
that Palatchy discloses a clamp with a hinge-like
connection capable of pivoting. See Trumper Tr. 617-
618.
The Abbes and Yamazaki patents (and the old
SMC connector) disclose different shaped clamps.
Specifically, Abbes discloses a circular-shaped clamp
consisting of semi-circular halves that are connected
together by two bolts. The Abbes clamp connects to a
circular shaped flange. Tramper Tr. 616-617.
Yamazaki, or the SMC old-style connector, is a
generally rectangular-shaped clamp that connects to
mounting ears. See Wiskamp Tr. 338-339; RPX-1.
It might be tempting to suggest that one skilled
in the art would have modified Abbes in view of
Palatchy to arrive at the connecting structure of
claim 1. Yet, both of those references were before the
examiner during prosecution, and claim 1 was
amended specifically to avoid the prior art. Further,
none of the prior art that SMC has identified
discloses a four-sided generally rectangular clamp
that is adapted to engage a generally rectangular
ported flange. Abbes, Yamazaki and the old SMC
relate to clamps adapted to engage mounting ears or
a circular flange. The claimed invention of the ‘392
patent is not merely a combination of old elements.
Nor is there evidence as to why one skilled in the
art would have made modifications in view of the
prior art to arrive at the claimed invention. Yet,
under ASR, a party claiming obviousness must still
“identify a reason that would have prompted a person
of ordinary skill in the relevant field to combine the
elements in a way the claimed new invention does.”
86a
See KSR, 127 S.Ct. at 1741; PharmaStem, 491 F.3d
at 1360. In particular, SMC’s expert testimony failed
to establish that generally rectangular ported flanges
were known in the art at the time of the invention, or
that one skilled in the art would have had a reason to
modify the prior art connectors so that they were
adapted to fit such flanges. Nor does the record
explain how one of ordinary skill would have
integrated a pivoting side into the clamp design. See,
e.g., Trumper Tr. 618-619. Asserting that such
structures would have been design choices fails to
explain how such choices would have been made, the
ease with which they would have been executed, and
the expectations that one might have had in
implementing such _ designs. Perhaps more
importantly, the record evidence does not explain
why one would have chosen to combine the elements
at issue from all of the other design choices that were
available in 1993.
Accordingly, it has not been shown by clear and
convincing evidence that claim 1 would have been
obvious.
2. The Dependent Asserted Claims 2-5, 7 and 9
SMC argues that during the hearing Norgren
“did not assert that there was anything unique or
unobvious with respect to the subject matter of the
asserted dependent claims.” For each asserted
dependent claim, SMC provides a brief citation to the
testimony of its expert that the dependent claims
would in fact have been ob
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