Appendix — Insituform Technologies, Inc. v. Cat Contracting, Inc.
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APPENDIX A — OPINION OF THE UNITED STATES
COURT OF APPEALS FOR THE FEDERAL CIRCUIT
DATED AND REISSUED OCTOBER 30, 1998
United States Court of Appeals for the Federal Circuit
97-1232
INSITUFORM TECHNOLOGIES, INC., INSITUFORM
(NETHERLANDS) B.V. and INSITUFORM
GULF SOUTH, INC.,
Plaintiffs-Appellees,
V.
CAT CONTRACTING, INC., MICHIGAN SEWER
CONSTRUCTION, KANAL SANIERUNG HANS
MUELLER GmbH & CO. KG and INLINER U.S.A..
Defendants-Appellants.
Reissued: October 30, 1998
Before MICHEL, Circuit Judge, ARCHER, Senior Circuit
Judge, and SCHALL, Circuit Judge.
MICHEL, Circuit Judge.
Defendants, Cat Contracting, Inc. (“CAT”), Michigan
Sewer Construction (“MSC”), Kanal Sanierung Hans Mueller
GmbH & Co. KG (“KM”), and Inliner U.S.A. (“Inliner”)
(collectively, “Defendants”) appeal the judgment of the United
States District Court for the Southern District of Texas In
Insituform Technologies, Inc. v. Cat Contracting, Inc., CA No.
2a
Appendix A
H-90-1690 (Dec. 31, 1996) (hereinafter, “/nsituform IT’),
holding Inliner’s Processes | and 2 each infringes claim | of
United States Patent No. 4,336,012 (the “ ’012 patent’) under
the doctrine of equivalents and enjoining Defendants from
practicing either Process | or 2. Because we hold that Inliner’s
Process | was shown to infringe the °012 patent, but Inliner’s
Process 2 was not shown to infringe, and because as to one
defendant, KM, the finding of infringement was clearly
erroneous as entirely unsupported, at least on the record on
appeal, we affirm-in-part, reverse-in-part, vacate-in-part and
remand.
BACKGROUND
The °012 patent is directed towards a process for lining
pipelines and passageways, particularly sewers, which may
suffer from leaks. Using the patented method, damaged
underground pipelines and passageways can be repaired without
removing them from the ground. Claim | covers a method for
the impregnation of a flexible tube liner prior to installing the
liner in a damaged pipeline. The liner has an outer layer of
impermeable film and an inner, resin-absorbent, felt layer. The
claimed method involves applying a vacuum to the inside of
the liner by cutting a window in the outer impermeable film
layer, applying a cup to the outside of the window, and
connecting the other end of the cup to a vacuum source using a
flexible hose. As each section of the liner has its resin-absorbent
material impregnated, the cup is moved downstream and the
previous window is sealed. The process is repeated for
respective lengths of liner until the entire liner has been
impregnated. The resin-impregnated liner is then inserted into
a damaged pipe. The method of installation in the pipe is not at
issue here.
3a
Appendix A
Inliner’s Process 1, the “multiple cup process,” uses four
to six cups to draw a vacuum from a corresponding number of
windows in the liner. When the cup closest to the advancing
resin is removed and the window that was beneath it is sealed.
the remaining downstream cups continue to draw a vacuum in
the liner. See /nsituform Gulf South, Inc. v. CAT Contracting,
Inc., 99 F.3d 1098, 1104-05, 40 USPQ2d 1602, 1607 (Fed. Cir.
1997) (hereafter, “Jnsituform I’). Interruption of the vacuum
during the impregnation process is thereby avoided or
diminished by the use of the multiple cups. Inliner’s Process 2,
the “multiple needle process,” replaces multiple cups with
multiple metal tubes or needles. The needles are inserted
through all of the layers of the liner rather than merely placed
over holes in the outer layer, and they provide a continuous
vacuum from inside the liner rather than through the felt. See
id.'
In 1990, Insituform sued Defendants for infringement of
the ‘012 patent and of United States Patent No. 4,009,063 (the
“ "063 patent”),’ both claiming methods invented by Eric Wood
and owned by Insituform Technologies, Inc. Liability and
damages were bifurcated, and damages are not at issue here. In
1991, a jury returned a verdict that the 012 patent was infringed
by both Processes 1 and 2 and was not invalid. The district
judge granted Inliner’s motion for JNOV with respect to literal
infringement of both processes, and ordered a new trial with
respect to infringement under the doctrine of equivalents. In
1995, at the retrial the court found equivalent infringement of
claim | by both processes. On appeal, this court affirmed the
1. Inliner did not develop Process 2 until 1991, after the first phase
of the case had already been tried to a jury.
2. The *063 patent is not at issue in this appeal.
4a
Appendix A
order for JNOV with respect to literal infringement but vacated
the district court’s determination of equivalent infringement
as based on an erroneous claim construction and remanded the
case for re-determination of equivalent infringement based on
the correct claim construction. See /nsituform I, 99 F.3d at 1109,
40 USPQ2d at 1610.
Method claim 1, the only claim at issue, is reproduced
below.’ For background in the technology and in the patent in
3. Claim 1:
1. A method of impregnating with a curable resin an
inner layer of resin absorbent material disposed in an
elongate flexible tube having an outer layer formed by an
impremeable [sic] film, the method comprising the steps
of
(1) introducing into one end of the elongate
tube a mass of the curable resin sufficient
to impregnate the entire resin absorbent
inner layer of the tube,
(2) forming a window in the impermeable outer
layer of the tube at a distance from said one
end of the tube,
(3) drawing through the window a vacuum in
the interior of the tube downstream of said
one end by disposing over the window a cup
connected by a flexible hose to a vacuum
source which cup prevents ingress of air
into the interior of the tube while the tube
is being evacuated, the outer layer of the
tube being substantially impermeable to air,
(Cont'd)
Sa
Appendix A
suit, the reader is directed to Jnsituform I, 99 F.3d 1098, 40
USPQ2d 1602. In /nsituform J, this court interpreted certain
limitations of claim 1. Specifically, we held that the literal scope
of claim 1 is limited to “a process using only one vacuum cup
which inherently creates a discontinuous vacuum.” Jnsituform
I, 99 F.3d at 1106, 40 USPQ2d at 1608. Under the correct
claim construction, we affirmed the district court’s JNOV of
(Cont'd)
(4) Beginning at or near the end at which the
curable resin mass was introduced, passing
the tube between squeezing members which
force the resin to flow towards the region
~ of vacuum application as the tube
progresses through the squeezing members,
(S) when the resin reaches the vicinity of the
region of vacuum application, removing the
cup and sealing the window,
(6) providing another window in the
impermeable layer of the tube downstream
of the previously formed window,
(7) drawing through the new window a vacuum
in the interior of the tube while
progressively moving the tube through the
squeezing members to force the resin to
flow toward the new region of vacuum
application, and
(8) repeating steps 5, 6, and 7, where necessary
to impregnate the entire resin absorbent
inner layer of the flexible tube.
012 pat., col. 6, I. 37 - col. 7, 1. 6.
6a
Appendix A
no literal infringement because the accused Inliner methods
use multiple cups or needles. See id. at 1107, 40 USPQ2d at
1608. We also concluded that the doctrine of prosecution history
estoppel did not preclude Insituform from asserting that its nght
to exclude extends broadly enough to cover either Process | or
Process 2, but we did not affirm the district court’s finding of
infringement under the doctrine of equivalents because it was
based on an incorrect claim construction. See id. at 1109, 40
USPQ2d at 1610. We therefore vacated the determination of
infringement by Processes | and 2 under the doctrine of
equivalents and remanded the case for the district court to
re-determine equivalent infringement applying the correct claim
construction. See id.
On remand the court determined that both Inliner’s
Processes | and 2 infringed claim | of the ’012 patent under
the doctrine of equivalents. Inliner timely appealed to this court,
and the appeal was submitted for our decision following oral
argument on July 8, 1998. We have jurisdiction over this appeal
pursuant to 28 U.S.C. § 1295(a)(1) (1994).
DISCUSSION
I. Prosecution History Estoppel
Although we held in /nsituform / that “the prosecution
history does not estop Insituform from asserting that the right
to exclude extends broadly enough to cover either Process | or
Process 2,” Insituform 1, 99 F.3d at 1109, 40 USPQ2d at 1610,
Defendants now argue that the district court erred in its
determination on remand that “[t]here is nothing in the file
history of the ’012 patent or the prior art which prevents claim
1 from covering Defendants’ processes,” /nsituform, slip op
7a
Appendix A
at 20 (Dec. 31, 1996). According to Defendants, however, the
Supreme Court’s Warner-Jenkinson decision, issued after our
remand in /nsituform I, further limited the doctrine of
equivalents so that it cannot apply in this case. See
Warner-Jenkinson Co. v. Hilton-Davis Chem. Co., 520 U.S.
17, __, 1178S. Ct. 1040, 1051, 41 USPQ2d 1865, 1873 (1997)
(holding that where no explanation is given for an amendment
made during prosecution of a patent, a presumption is to be
applied against the patentee that the amendment was made for
purposes of patentability). Inliner asserts that when Insituform
amended claim | in response to a 35 U.S.C. § 103 rejection of
application claims 1-6 based on United States Patent No.
4,182,262 to Everson (“Everson”), Insituform necessarily gave
up coverage of any process in which the vacuum was created
at multiple vacuum sources because it provided no explanation
for such a narrowing amendment.
As we discussed in Jnsituform J, however, Everson
discloses “both the use of a continuous vacuum and the creation
of that vacuum from only a single vacuum source at the far end
of the tube opposite the resin source.” Jnsituform I, 99 F.3d at
1108, 40 USPQ2d at 1609. Everson discloses nothing about
multiple vacuum sources or their placement on the liner close
to the resin front. In its response to the PTO rejection, Insituform
canceled application claim | and filed a new, narrower claim
in its place. The new claim, which became patent claim 1,
incorporated each of canceled claims 1, 2, 3, and 4, but
otherwise added no new limitations. In its remarks to the PTO,
Insituform specifically noted that:
Everson’s method is ineffective when dealing with
long lengths of tube because that method requires
an exceedingly large suction compressor.
8a
Appendix A
Applicant’s method solves the problem of
impregnating long lengths of tubing by forming a
window in the tube’s impermeable skin, drawing
the resin to the region of the window by a
vacuum....
Response to First Office Action, March 30, 1982, p.4. We held,
therefore, in Jnsituform I:
Insituform solved this [Everson] problem by placing
the suction source closer to the resin front thus
allowing the use of a smaller suction compressor.
Thus, Insituform unequivocally gave up coverage
to a process in which a single vacuum source is
located at the far end of the tube.
Id. at 1108, 40 USPQ2d at 1610 (emphasis added). The stated
reason, therefore, for Insituform’s amendment to overcome the
Everson reference was to avoid the need to use a large
compressor when the vacuum 1s created a significant distance
from the resin source. See id. The Warner-Jenkinson
presumption, therefore, which comes into play only when no
explanation is given for a claim amendment, is not applicable
to this case because Insituform made clear that the reason for
the amendment was to overcome the prior art teaching creation
of a single source vacuum at the far end of the liner.
Defendants argue, however, that other statements made in
the remarks to the Patent Office warrant limitation of claim |
by prosecution history estoppel to a single cup process. Again,
we discussed such statements in /nsituform I:
in explaining its amendments, Insituform discussed
the use of a single vacuum source which was to be
a, a, a,
9a
Appendix A
moved along the tube as the resin front advanced.
This suggests that Insituform envisioned the use of
discontinuous vacuum created sequentially by only
one vacuum source. However, this statement alone
is too equivocal to be read as a statement which
would estop Insituform from equivalently covering
a number of small compressors spread along the
tube creating a continuous vacuum.
Id. at 1108, 40 USPQ2d at 1610 (emphasis added). Defendants
urge that the above-emphasized statement in /nsituform I proves
that Insituform did not explain why claim 1| was limited, and
“(ijn [these] circumstances, prosecution history estoppel
[should] bar the application of a doctrine of equivalents as to
that element,” Warner-Jenkinson, 117 S. Ct. at 1051, 41
USPQ2d at 1873.
In these remarks, however, Insituform was simply
explaining the use of the claimed method and its statements
did not negate the earlier-discussed, clear explanation of the
reason for the amendment. Therefore, we hold that Insituform
did explain the reason for its changes in claim 1, and those
reasons do not prohibit application of the doctrine of equivalents
completely, but only with respect to the subject matter surrender
of a large, single vacuum source placed a significant distance
from the resin front. See IJnsituform I, 99 F.3d at 1109, 40
USPQ2d at 1610. We conclude, as we did in Jnsituform IJ, that
“prosecution history does not estop Insituform from asserting
that the right to exclude extends broadly enough to cover either
Process | or Process 2.” Jd. Warner-Jenkinson changed nothing
applicable here. The district court’s determination on remand
after Jnsituform I, therefore, is affirmed.
10a
Appendix A
Il. Infringement Under the Doctrine of Equivalents
Infringement, both literal and under the doctrine of
equivalents, is a question of fact which we review for clear
error when tried to the court. See SR/ Int'l v. Matsushita Elec.
Corp. of Am., 775 F.2d 1107, 1125, 227 USPQ 577, 589 (Fed.
Cir. 1985) (in banc); see also Hilton-Davis Chem. Co. v.
Warner-Jenkinson Co., Inc., 62 F.3d 1512, 1520, 35 USPQ2d
1641, 1657 (Fed. Cir. 1995) (in banc), rev'd on other grounds,
117 S. Ct. 1040, 520 U.S. 17, 41 USPQ2d 1865 (1997). “In
applying the doctrine of equivalents, it is often enough to assess
whether the claimed and accused products or processes included
substantially the same function, way, and result.” Hilton-Davis,
62 F.3d at 1518, 39 USPQ2d at 1645.
A. Process 1
The district court held that Defendants’ Process 1, the
multiple cup process, infringed claim 1 of the ’012 patent under
the doctrine of equivalents. Defendants argue, however, that
the district court’s determination was clearly erroneous because
it ignores the substantial differences between the one-cup
process of claim | and the accused multiple cup process.
Defendants specifically identify three “substantial
differences”: “[m]ore cups, continuous vacuum, [and] ability
to impregnate longer, thicker liners faster, .. . We address each
of these differences in turn. First, although claim 1 only claims
the method of using one cup to impregnate the tube with resin,
the multiple cups used in the accused process each perform
precisely the same steps and functions as the single cup of the
claimed method. Every limitation in claim 1, therefore, is met
by at least one cup in Defendants’ multiple cup process. That
lla
Appendix A
all the cups together may not meet every limitation does not
necessarily avoid equivalent infringement.
Second, Defendants assert that their multiple cup process
draws a vacuum continuously whereas claim | inherently draws
a vacuum discontinuously. A discontinuous vacuum is not a
limitation of claim 1, although it is inherent in the operation of
a single cup. In Defendants’ accused method, the operation of
eacn cup of the set draws a vacuum discontinuously, at least
when it is moved from one location on the tube to another
location further downstream of the resin front.
Moreover, the district court found that the use of multiple
cups results “in a continuous vacuum which enhances the degree
of vacuum achieved at the resin front,” but that “there is
nonetheless an insubstantial difference between” claim 1 and
the multiple-cup process. We discern no clear error in this
finding. There was evidence that the degree to which the
multiple-cup process enhances the vacuum at the resin front,
as compared to the single-cup process, is insubstantial. In
particular, there was evidence that, in the claimed single-cup
process, the amount of time when no vacuum was applied at
the resin front was minimal so there was no substantial effect
on the vacuum at that location. Furthermore, there was evidence
that, like the single-cup process, the shifting of cups in the
multiple-cup process results in a lessening of the vacuum at
the resin front.
Third, Defendants argue that their method is more efficient
because it can impregnate “longer, thicker liners faster.” While
Defendants’ claim may be true, it is irrelevant because every
one of claim 1’s limitations is still met, at least equivalently.
Hence, it does not matter that Defendants’ Process 1 may be
12a
Appendix A
better or more efficient. See Amstar Corp. v. Envirotech Corp.,
730 F.2d 1476, 1482, 221 USPQ 649, 653 (Fed. Cir. 1984)
(quoting McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d
381, 402, 145 USPQ 6, 22 (10th Cir. 1965) (“infringement
cannot be avoided by the mere fact that the accused device is
more or less efficient or performs additional functions”’)).
Defendants, therefore, have not identified to us any
substantial differences between the accused method and the
limitations of the method of claim 1. The district court’s
determination of infringement of claim 1 by Process | under
the doctrine of equivalents is therefore affirmed.
B. Process 2
The district court held that there were no substantial
differences between Defendants’ accused Process 2, the
multiple needle process, and the method of claim 1. /nsituform,
slip op. at 18-19. The district court found:
Both the cup and the tube [needle] are, as claim |
states, “connected by a flexible hose to a vacuum
source’, both are the means provided for the
application of vacuum, they both do the same thing
(suck a vacuum) by the same means (being
connected to a vacuum source) to achieve the same
result (produce a satisfactory vacuum at the resin
front).
Id. at 19. From this analysis it appears that the district court
determined the “function” of the cup to be to “suck a vacuum,”
the “way” to be by “being connected to a vacuum source,” and
the “result” to be to “produce a satisfactory vacuum at the resin
boven es Later fa
BOS Fi be Aten Ge Ve
13a
Appendix A
front.” Defendants assert on appeal that the court’s
function-way-result analysis is fatally flawed because it
describes Everson. Although not clear to us that the district
court’s function-way-result analysis for the cup limitation
would encompass the Everson patent, we nevertheless hold that
the district court’s function-way-result analysis involves too
much overlapping and is overly broad. Specifically, the district
court’s identification of the limitation’s “function” merges with
the “way” and the “result”: to provide a vacuum, to be connected
to a vacuum source, and to produce a satisfactory vacuum at
the resin front all define basically the same thing.
Under the proper “way” part of the function-way-result
analysis, the “way” the cup provides a vacuum is by being
disposed over a “window” cut in the outer, plastic liner of the
tube and pressed on top of the exposed felt layer and being
connected at the other end to a vacuum source. By contrast, the
“way” Process 2 needles provide a vacuum is by being inserted
through multiple punctures into the center of the tube (through
the felt layer) and being connected at their other ends to a
vacuum source. The question then becomes: are these two
“ways” equivalent, or did the district court clearly err in holding
that Defendant’s Process 2 infringed claim | under the doctrine
of equivalents? Defendants assert that the distinction between
the cup and the needle is substantial, and the fact that the district
court dismissed this distinction as “irrelevant” under the
equivalents analysis is fatal.
Another factor that affects our equivalent infringement
analysis is that the inventor of the 012 patent attempted to use
a needle instead of a cup prior to filing his application. For a
reason that is disputed by the parties, he changed to a cup, and
when his patent application was filed, no mention of the possible
14a
Appendix A
use of a needle was made. Insituform argues that the inventor’s
early use of needles shows that needles are old in the art and
are known substitutions for cups. Defendants argue, however,
that the inventor’s “failure” with needles is evidence of a
substantial difference between needles and cups. It is not
apparent from the district court’s opinion that it considered this
prior attempt with needles. The evidence that the inventor first
tried to use needles and then changed to cups without disclosing
to the public that needles were, indeed, an option, supports an
inference that the inventor was unable satisfactorily to practice
his claimed method using a needle instead of a cup.
We therefore hold that, based on the evidence of substantial
differences between the claimed single cup process and the
accused multiple needle process, and the district court’s legal
errors in defining incorrectly the “way” in its function-
way-result analysis and dismissing structural differences as
irrelevant, the district court reversibly erred in finding that
Defendants’ multiple needle process infringed Insituform’s
claim 1 under the doctrine of equivalents. Once the “way” is
correctly defined and the structural differences are properly
considered, no reasonable trier of fact could have found the
claimed single cup process and the accused multiple needle
process to be equivalent.
III. District Court’s Refusal to Consider Now Evidence
Prior to remand, this case had been tried twice on the issue
of equivalent infringement, once to a jury and a second time to
the court. Defendants now argue that the district court erred
reversibly in refusing on remand to consider their new evidence
of lack of equivalent infringement. We review the district
court’s refusal to allow Defendants to supplement the record
a
15a
Appendix A
on remand for abuse of discretion. See Westvaco Corp. v.
International Paper Co., 991 F.2d 735, 745, 26 USPQ2d 1353,
1362 (Fed. Cir. 1993) (applying regional circuit law); Rollins
v. Fort Bend Indep. School Dist., 89 F.3d 1205, 1220 (Sth Cir.
1996) (abuse of discretion standard).
Defendants assert that this “new” evidence showed, inter
alia, the substantiality of the differences between the accused
processes and method claim 1, and that Insituform witnesses
had “not been truthful during testimony taken at the 1995 trial.”
Further, asserts Defendants, this court on remand gave the
district court a “directive” to make new findings in accordance
with the corrected claim construction, presumably necessitating
at least the submission of further evidence.
We are unpersuaded, however, that the reasons cited by
Defendants for the district court to accept supplemental
evidence “mandate” its acceptance. First, our reversal today of
the district court’s finding of equivalent infringement of the
multiple needle process shows that sufficient evidence was
already present in the record based upon which the district court
could have correctly decided the issue without submission of
new evidence. Nor have Defendants shown that the evidence
could not have been found and submitted at the first trial.
Second, a review of the relevant language in /nsituform I does
not reveal a “mandate” for further, broader fact-finding by the
district court. We therefore conclude that the district court did
not abuse its discretion or remand in refusing to admit
Defendants’ supplemental evidence.
IV. Liability of KM
Defendants assert that the district court committed
reversible error in holding that KM induced infringement of
l6a
Appendix A
the 012 patent. This .ssue was decided by the district court in
1995 and appealed to this court. Insituform argues that we
considered this issue already in /nsituform J, and that, therefore,
it is the law of the case. We disagree. In /nsituform I, we did
not reach this issue because we vacated the district court’s
finding of direct infringement. See Met-Coil Sys. Corp. v.
Korners Unlimited, Inc., 803 F.2d 684, 687 (Fed. Cir. 1987)
(Liability for inducement under § 271(b) is dependent on
showing that the conduct being induced constitutes direct
infringement. ).
Defendants argue, inter alia, that the evidence fails to show
that KM induced infringement of the '012 patent because the
district court found, and Insituform does not dispute, that KM
did not know of the existence of the ’012 patent until after
Insituform filed its complaint on February 2, 1990. Thus,
Defendants assert, KM’s acts cannot establish liability for
inducing infringement of the ’012 patent, because all accused
acts by KM occurred before KM knew of the patent. A crucial
element of induced infringement is that the inducer must have
actual or constructive knowledge of the patent. A separate
corporation related to KM licensed the infringing technology
to Inliner after KM received notice of the °012 patent. The
separate corporation 1s not a party to this case, and there were
no findings that this affiliate was KM’s alter ego. We agree
that Defendants have shown clear error on the district court’s
finding that KM induced infringement. As the trial court made
no finding on the alter ego issue, instead of reversing, we vacate
the district court’s holding and remand as to that issue.
V. Liability of MSC
Defendants assert that the district court committed
reversible error in holding MSC fully liable as the other
17a
Appendix A
defendants. Defendants argue that MSC’s sole contribution to
the joint venture was to provide financing, if necessary, and
bonding. Defendants argue that “[d]uring trial in 1995, Inliner
moved for JMOL on this issue,” and the district court denied
the motion. Defendants, however, did not raise this issue in
Insituform I, and therefore, it is not properly before the court
today. Because Defendants did not properly appeal this issue
after the 1995 decision, it has been waived. Moreover, as
Insituform asserts in response, the bifurcated damages trial will
determine for what amount MSC is actually responsible, which
may be less than for other defendants.
CONCLUSION
Because Defendants did not demonstrate clear error by the
district court in its finding that Process 1 equivalently infringed
claim | of the ’012 patent, we affirm with respect to Process 1.
With respect to Process 2, however, we hold that the district
court did clearly err in finding that Defendants infringed and
legally erred in its methodology; and therefore, we reverse.
We further hold that the district court clearly erred in finding
that KM induced infringement, and we vacate its holding and
remand as to this issue. We do not review the district court’s
determinations of liability for MSC as that issue is not properly
before us. The decision, therefore, is
AFFIRMED-IN PART, REVERSED-IN-PART.
VACATED-IN-PART and REMANDED.
COSTS
Each party shall bear its own costs.
— |
18a
APPENDIX B — REVISED FINDINGS OF FACT AND
CONCLUSIONS OF LAW DATED DECEMBER 27, 1996
AND ENTERED DECEMBER 31, 1996
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
CIVIL ACTION NO. H-90-1690
INSITUFORM TECHNOLOGIES, INC., INSITUFORM
(NETHERLANDS) B.V., AND INSITUFORM GULF SOUTH,
INC.,
Plaintiffs,
CAT CONTRACTING, INC., MICHIGAN SEWER
CONSTRUCTION COMPANY, KANAL SANIERUNG
HANS MULLER GmbH & CO. KG, AND INLINER U:S.A.,
Defendants.
REVISED FINDINGS OF FACT
AND CONCLUSIONS OF LAW
This case was tried to the Court from February 21, 1995 to
February 23, 1995. At the conclusion of the case, this Court
entered findings of fact and conclusions of law (Instrument No.
238) finding infringement under the doctrine of equivalents.
Inliner appealed this Court’s order denying its motion for
judgment as a matter of law on the invalidity claim, this Court’s
order denying its motion to amend other claims, and the Court’s
order finding infringement under the doctrine of equivalents.
19a
Appendix B
The Federal Circuit has remanded this case to the district
court for new findings on the issue of claim construction. The
Court held that“. . . as the district court’s doctrine of equivalents
analysis was distorted by its incorrect claim construction, we
must remand for new findings regarding this issue in accordance
with the correct claim construction, ...”. The issue of claim
construction is a matter of law for the court to decide, involving
the review of patent specifications, prosecution history,
language of the patent claims, and, if necessary, extrinsic
evidence. Texas Instruments v. U.S. Int'l Trade Com'n, 988
F.2d 1165, 1171 (Fed. Cir. 1993). The court must decide and
explicate its findings regarding claim construction on the record.
Genentech, Inc. v. Wellcome Foundation Ltd., 29 F.3d 1555
(Fed. Cir. 1994). Once the claim of a patent is interpreted to
determine its scope and meaning, the court, as the factfinder in
this case, can determine whether the accused device is within
the scope of the properly constructed meaning. North American
Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1573
(Fed. Cir. 1993), cert. denied, 114 S.Ct. 1645 (1994). While
the question of infringement is a question of fact, the Court has
sufficient evidence before it to make a determination of
infringement without additional proceedings. Accordingly, the
Court issues the following “Second Amended Findings of Fact
and Conclusions of Law:
FINDINGS OF FACT
Procedural History
1. In February 1990, Defendants were sued for
infringement of U.S. Patents 4,009,063 of February 22, 1977
and 4,336,012 of December 18, 1982, both the inventions of
Eric Wood and both now owned by Insituform Technologies,
Inc.
20a
Appendix B
2. In 1991, there was a jury trial of the issues of
infringement and validity of the °063 and ’012 patents. The
jury returned a verdict finding validity and infringement as to
both patents.
3. Defendants moved for judgment notwithstanding the
verdict or new trials as to all issues. Judge Hughes granted
Defendants’ JNOV motions with respect to literal infringement
of both patents, ordered a new trial with respect to the issue of
infringement by the doctrine of equivalents of both patents,
and denied Defendants’ motion in all other respects.
4. Trial of the issues of recoverable damages as against
each defendant has been bifurcated, and is not here involved,
nor was it involved in the 1991 trial.
5. The °063 patent expired February 22, 1984. The parties
have stipulated that it is no longer involved in this lawsuit.
Parties and Jurisdiction
6. Plaintiff Insituform (Netherlands) B.V. (“Insituform”)
is a corporation of the Netherlands, with a principal place of
business at Herengracht 552, Amsterdam 1001, Netherlands.
Insituform Technologies, Inc. (“ITI”) is a Delaware corporation,
having a principal place of business at 3315 Democrat Road,
Memphis, Tennessee 38118. Insituform Gulf South, Inc.
(“INS”) is a Texas corporation, having a principal place of
business at 131 North Richey, Pasadena, Texas 77506.
7. Defendant Cat Contracting, Inc. (“CAT”) is a Michigan
corporation, having its principal place of business at 2022 FM
528, Alvin, Texas, 77518. Michigan Sewer Construction
2la
Appendix B
Company (“Michigan Sewer”) is a Michigan corporation,
having a principal place of business at 21720 West Eight Mile
Road, Southfield, Michigan 48075. Kanal Mueller Gruppe
International (KMG) is a corporation of the Federal Republic
of Germany, having a place of business at 4938
Schieder-Schwalengerg, Federal Republic of Gemany. Kanal
Sanierung Hans Mueller GmbH & CO KG (“KM”), is a licensee
of KMG for the country of Germany. Inliner U.S.A. (“Inliner’’)
is a corporation of the State of Delaware, having a principal
place of business in Houston, Texas.
8. This Court has jurisdiction over the parties and the
subject matter of this case 28 U.S.C. §§ 1331, 1338(a), 2201
and 2202. Venue is proper in the Southern District of Texas.
28 U.S.C. §§ 1391 and 1400.
Background
9. Sewer pipes and the linings of sewer pipes are subjected
to stresses. That is particularly true in the case of underground
sewer pipes. It is necessary that the lining be capable of
withstanding those stresses for an appreciable period of time,
as long as SO years.
10. To accommodate those requirements, Eric Wood,
through Insituform, pioneered a process in which the soft liners
are made up of a relatively thick layer of felt which is
impregnated with a thermosetting resin. (A themosetting resin
is a resin which, when subjected to heat, will become hard but
which, before the heat is applied, is soft.) After the felt liner
has been put in place within the pipe to be repaired and has
been pressed outwardly so as to conform to the pipe, the resin
is heated, by flowing hot water through the lining, causing the
22a
Appendix B
resin to set. The strength of the lining thus produced is primarily
dependent upon the set resin which has impregnated the I:ning.
It is essential, if the lining is to have the desired strength and
longevity, that the impregnation of the felt by the resin be
substantially uniform.
11. Soft linings of the type in question are inserted in
lengths that are usually many hundreds of feet long. When such
linings are impregnated with resin they weigh many tons. Some
jobs have involved the use of as much of 100 tons of resin. The
felt that is used is quite dense and it is difficult to get the resin
into the felt and ensure that the felt is substantially fully
impregnated by the resin. A way needed to be found to achieve
a substantially complete impregnation of felt linings of the size
involved with the understanding that the presence of any
substantial amount of air in the liner after impregnation would
be unacceptable.
12. The major impediment to uniform impregnation of the
felt by the resin is the presence of air in the felt. The resin must
displace the air, and do so substantially completely, if the felt
is to be uniformly and satisfactorily impregnated.
13. Early on in the development of this technology, it was
learned that the impregnation process would be greatly
facilitated if air were to be sucked from the interior of the felt
tube. During the impregnation process, a method was utilized
where a vacuum pump was connected at the far end for the
lining and air was sucked out of the lining from that far end
until a satisfactory vacuum was created in the lining. That is
what is shown in Everson patent 4,182,262 of 1980 and in the
British Rhys-Jones article of 1975. It took a very appreciable
length of time before sucking air from the free end of the liner
23a
Appendix B
produced a satisfactory vacuum at the point in the liner where
the resin was beginning to enter the felt (the “resin front”), and
impregnation could not start until that had been accomplished.
The lengths of the liners used at the time of Everson and
Rhys-Jones were relatively short, however, so the length of
time involved was marginally acceptable. As the length of the
liners increased, the time needed to produce the desired vacuum
at the resin front increased as the square of the distance involved
— a liner twice as long would need four times as much time,
and a liner four times as long would need sixteen times as much
time. It is to this problem that the patent in suit, 4,366,012 of
December 28, 1982, is directed.
The Patent In Suit
14. When Mr. Wood filed the patent application, original
claim 1 called broadly for the application of the vacuum while
the impregnation process is taking place. Original claims 2 and
3 added to claim | that the resin was introduced into one end of
the tube and fed down the tube by means of nip rollers and the
vacuum was applied to the interior of the tube downstream of
the resin mass. Original claim 4 added to the above that the
vacuum was applied through a window formed in the wall of
the tube by means of a cup connected to a source of vacuum.
the cup moving with the tube during its movement relative to
the nip rollers, and the cup being removed and applied to a
position spaced downstream from the previous window, the
previous window being sealed by means of a patch or the like,
whereby the process is repeated for respective lengths of the
‘ube until the entire tube length has been impregnated.
15. The Patent Examiner, in his first action on the merits,
rejected all of those claims on the basis of the Everson patent,
24a
Appendix B
the Examiner saying: “The claimed process does not appear to
differ in any unobvious aspect from that of the reference.”
16. In response, by amendment dated April 6, 1982,
applicant canceled the official claims and added the claims that
appear in the patent. Patent claim | reads as follows:
a. A method of impregnating with a curable resin
an inner layer of resin absorbent material disposed
in an elongate flexible tube having an outer layer
formed by an impermeable film, the method
comprising the steps of
(1) introducing into one end of the
elonyate tube a mass of the curable resin
sufficient to impregnate the entire resin
absorbent inner layer of the tube,
(2) forming a window in the impermeable
outer layer of the tube at a distance from
said one end of the tube,
(3) drawing through the window a
vacuum in the interior of the tube
downstream of said one end by disposing
over the window a cup connected by a
flexible hose to a vacuum source which
cup prevents ingress of air into the interior
of the tube while the tube is being
evacuated, the outer layer of the tube
being substantially impermeable to air,
(4) beginning at or near the end at which
the curable resin mass was introduced,
25a
Appendix B
passing the tube between squeezing
members which force the resin to flow
towards the region of vacuum application
as the tube progresses through the
squeezing members,
(5) when the resin reaches the vicinity of
the region of vacuum application,
removing the cup and sealing the window,
(6) providing another window in the
impermeable layer of the tube
downstream of the previously formed
window,
(7) drawing through the new window a
vacuum in the interior of the tube while
progressively moving the tube through the
Squeezing members to force the resin to
flow toward the new region of vacuum
application, and
(8) repeating steps 5, 6, and 7, where
necessary to impregnate the entire resin
absorbent inner layer of the flexible tube.
17. Applicant explained the similarity of the new claim to
the original application claim 4 to the Examiner as follows:
“(Application) Claim 10 (ultimately patent claim 1)
incorporates the substance of canceled claims 1, 2, 3 and 4.”
Applicant’s total argument to the Examiner as to the
patentability of that claim was as follows:
26a
Appendix B
rhe principal reference relied on in the rejection
of claims 1 to 6 is the patent to Everson (U.S.
4,182,262). Everson’s method 1s ineffective when
dealing with long lengths of tube because that
method requires an exceedingly large suction
compressor. Applicant's method solves the problem
of impregnating long lengths of tubing by forming
a window in the tube’s impermeable skin, drawing
the resin to the region of the window by a vacuum
while squeezing the tube to force the resin to flow
toward the evacuated region, sealing the window,
and repeating the process at another window farther
lownstream. Thus by iterating and reiterating that
process, the resin 1s drawn along to impregnate the
entire length of the tube.
It 1s submitted that applicant has taught an
improvement upon Everson’s method which makes
feasible the impregnation of long tube lengths and
that the grant of a patent on that improvement 1s
merited
Accordingly, reexamination of this application
requested
ipplication claim 5, and reads as follows:
2. The method according to claim 1, further
including the step of forming an initial air seal at
the end of the flexible tube at which the mass of
resin was introduced by closing off that end of the
tube after introduction of the mass of resin and
S$. Patent claim 2 covers the subject matter of original
27a
Appendix B
before vacuum is applied to the interior of tube to
draw the resin toward the region of vacuum
application.
19. Patent claim 3 covers the subject matter of original
application claim 6, and reads as follows:
3. The method according to claim 1, wherein said
outer layer of the flexible tube is defined by a fel
sheet coated with a synthetic resinous material that
forms said film, the method further including the
steps of
(1) sewing together adjacent edges of tl
felt sheet to form the tube, and
(11) covering the resultant seam with
sealing strip that is impervious to ait
20. With the explanations and clarifications to
Examiner, the application was then allowed. U.S. Patent Ni
4,366,012 (°012 Patent), entitled “Impregnation Process
issued to Eric Wood on December 28, 1982. Insituform is the
owner of the °012 patent. ITI is the exclusive licensee withi
the United States, and has granted a sublicense to INS for
territory that includes the City of Houston. It is stil] in ful
force and effect, and for purposes of this proceeding its validit
is established.
y
Background of Earlier Proceedings
21. In early 1989, after reading about KM’s propriet
4
sewer rehabilitation technology ina trade magazine. Mr. G
28a
Appendix B
Catallo, the president of CAT, contacted KM for the purpose
of obtaining a license for that technology. In March 1989 he
traveled to Europe to observe KM’s process for impregnating
and installing liners in underground sewer lines, and to negotiate
a license from KM.
22. On March 17, 1989, Mr. Catallo signed a letter of intent
with KM to license the technology. On March 21, he submitted
a bid on behalf of CAT Contracting and Michigan Sewer to
perform pipe rehabilitation services for the City of Houston,
specifically, Wastewater Job Nos. 3907-12 and 3907-16,
sometimes referred to as the “Sims Bayou Contracts.” CAT
Michigan Sewer (a joint venture) submitted the low bid and
was eventually awarded the contract.
23. During the bidding process, Mr. Catallo received a
letter dated April 7, 1989 from Insituform’s attorney, Mr.
Harold James, notifying CAT and Michigan Sewer that if they
practiced the process being utilized by KM, they would infringe
U.S. Patents 4,009,063 ((063 patent) and 4,786,345 (°345
patent). The letter did not mention the ’012 patent, nor was
Mr. Catallo notified of the ‘012 patent until this lawsuit was
filed. :
24. On February 2, 1990, Plaintiffs filed an original
complaint against Defendants in the Eastern District of
Michigan, alleging infringement not only of the 063 and °345
patents, but also of the °012 patent. In May 1990 the case was
transferred to the Southern District of Texas. The Plaintiffs filed
an amended complaint in this court, realleging infringement of
the °063 and °012 patents, but dropping charges relating to the
345 patent. Defendants filed an answer, alleging that, among
other things, the patents were not infringed.
29a
Appendix B
25. In June 1991, after a two-week trial, a jury returned a
verdict that included the finding that both patents were
infringed. Defendants filed motions for new trial and judgement
notwithstanding the verdict. In pertinent part, the Defendants
argued that the evidence showed that Plaintiffs were legally
estopped from construing claim | to cover Defendants’ Multiple
Cup Process (“Process 1,” discussed in greater detail below),
either literally or by the doctrine of equivalents.
26. In August 1991 this Court partially granted
Defendants’ motions, ordering a judgment notwithstanding the
verdict on the issue of literal infringement of both patents, and
granting a new trial on the issue of infringement under the
doctrine of equivalents. The issue of damages had previously
been bifurcated from the issue of infringement by order of the
Court dated March 5, 199]. Although the March 5, 1991 order
also erroneously referred to the bifurcation of the defendants’
counterclaim for antitrust violations, the Defendant’s motion
for leave to amend to add a claim for antitrust violations was
never granted, and has been subsequently denied by this Court.
27. In January 1995 Plaintiffs dismissed with prejudice
their charges of infringement of the ’063 patent, leaving as the
only issue whether Defendants infringe the °012 patent under
the doctrine of equivalents. In addition to the Multiple Cup
Process (Process 1), the Plaintiffs are alleging that the Multiple
Needle Process (Process 2) also infringes the '012 patent.
Process 2 was not accused of infringement in the original trial,
nor had Process 2 been disclosed by the Defendants at the time
of the first trial.
30a
Appendix B
Defendants’ Accused Impregnation Processes
28. Defendants have carried out in this country. or, in the
case of KM, have induced the carrying out of processes for the
rehabilitation of pipelines using a lining formed primarily of
an appropriate thickness of felt impregnated with a
thermosetting resin, which lining when soft is inserted into the
damaged pipe, urged out toward the pipe interior, and subjected
to heat in order to set the resin. The strength of Defendants’
linings, like that of plaintiffs’ lining, depends upon the thickness
of the lining and the substantially complete impregnation of
the felt by the unset resin. Defendants have over the years varied
the impregnation process that they employed, but in all of those
processes the felt is in tubular form with an impermeable film
on the outside, a mass of resin sufficient to impregnate a
predetermined extensive length of the liner (sometimes the
entire length of the liner) is introduced into the tube, an opening
is made in the impermeable film at a predetermined distance
from the resin, vacuum is drawn through that opening, the lining
is caused to move through squeezing rollers located upstream
of the resin mass, and when that resin mass, because of the
movement of the lining through the squeezing rollers,
approaches the opening through which suction 1s being exerted,
that is to say, the vicinity of the region of vacuum application,
the vacuum source is removed from that opening, the opening
is sealed, a new opening is provided in the impermeable layer
downstream of the resin, vacuum is drawn through the new
opening, the lining being progressively continuously moved
and the process 1s repeated for whatever number of times are
required for the given length of lining and the amount of resin
introduced.
29. There are three variations in the impregnation process
carried out by Defendants. In one, which Mr. Catallo testified
=
3la
Appendix B
at the first trial was carried out about 20% of the time, the
vacuum was applied by means of a single vacuum cup which
remained in place throughout the impregnation process.
30. Ina second process described at the first trial and here
called Process 1 by Defendants, a plurality of vacuum cups
(usually four) were simultaneously applied to a corresponding
plurality of openings along the length of the liner. When the
resin front approaches the region of vacuum application (the
leading cup), it is removed and that opening is sealed, the second
cup is removed and the first cup is put in its place, the third cup
is removed and the second cup is put in its place, and so on
until finally the last cup is removed, a new opening is formed
in the impermeable layer downstream of the last then-existing
opening, and the last cup is placed over that new opening. The
lining is moved continuously through the nip rollers as this
goes on.
31. Since the first trial, Defendants have gone to a third
process, here called Process 2 by Defendants, which modifies
Process | in two respects. First, instead of using a vacuum cup,
they use a tube (they call ita “needle”) connected at one end to
the vacuum pump with its other end penetrating the
impermeable film and being exposed to the felt, vacuum being
drawn through that tube. Second, instead of shifting all of the
tubes when the first tube approaches the resin front, they leave
tubes 2 and 3, etc. in place and when the first tube is removed
and its hole sealed, that first tube is moved to a position
downstream from the last tube, where it is caused to penetrate
the lining and draw a vacuum. |
32. In both of these multi-cup Processes 1 and 2.
Defendants are removing the suction source (cup or tube) from
32a
Appendix B
the hole close to the resin front, sealing that hole, making a
new opening downstream and applying the suction source (cup
or tube) to that new hole, and continuing that procedure
sequentially while the lining is continuously moving through
the squeezing rollers and over the mass of introduced resin.
33. K-M also uses an impregnation process involving the
sequential application of vacuum to the liner, which was
demonstrated to Mr. Catallo when he visited Germany and
before he commenced his activities complained of in this
lawsuit. In that process an opening is formed relatively near
the resin front and a vacuum cup is applied. When that opening
approaches the resin front, a second opening is made
downstream of the lining and a second vacuum cup 1s applied,
the first vacuum cup is removed, the first opening is sealed,
and the process is continued sequentially for as long as is
appropriate.
The Function of the Vacuum
34. What the vacuum does in the impregnation process 1s
ensure that there is as little air as possible in the felt at the
resin front, where the resin is entering the felt. The presence of
air elsewhere in the felt is of no direct significance. It is only
the vacuum in the felt at the resin front which determines the
degree to which impregnation of the felt by the resin occurs.
35. The felt before impregnation is quite dense, so that air
flow through it is restricted. That is one reason why, when
suction is exerted only from the far end of the liner, it takes
many hours to produce an adequate degree of suction at the
resin front, and that is why the suction process disclose in the
Everson and Rhys-Jones prior art references, while marginally
33a
Appendix B
practical when employed with relatively short and narrow
linings, is totally impractical if employed with longer and wider
linings such as are commonplace today.
36. When the suction source (cup or tube) approaches the
resin front and is removed, exposing the opening through which
suction had previously been drawn, air tends to enter the lining
through that opening and reduce the degree of suction within
the lining, and particularly at the resin front. However, it is
only a matter of five second or less to remove the suction source
and seal the opening, and during that time very little air enters
the lining and reaches the resin front. Similarly, only a very
few seconds is involved between making the second opening,
through which air tends to enter, and covering that second
opening with the suction source, and in practice only about
15-20 seconds is involved in the entire procedure of removing
the section source, sealing the opening, making the new opening
and applying the suction source to the new opening. During
that time, the degree of vacuum at the resin front does decrease
somewhat, but not to a material degree. In practice the
impregnation process continues uninterrupted during that time,
with the lining continuously moving forward at a constant speed
and the resin continuously impregnating newly presented
portions of the felt.
37. Hence, in the single-cup process disclosed in the ’012
patent, while the act of sucking air from the liner is interrupted
during the few seconds required to effectuate the shift in
position of the suction cup, and the degree of suction at the
resin front decreases as a result, there is always a sufficient
degree of vacuum at the resin front to provide for effective
substantially complete impregnation of the felt. The vacuum
within the liner, and particularly the vacuum at the resin front,
34a
Appendix B
is not interrupted or discontinuous. It is variable, but to a degree
which makes no difference insofar as substantially complete
felt impregnation 1s concerned.
38. The claim of the patent calls for forming a window
and disposing a cup over that window to create a vacuum.
Although the scope of the claim is limited to a process which
uses only one vacuum cup that results in a discontinuous
vacuum, Insituform and its licensees sometimes use the
single-cup process, but more often the multiple-cup process,
because the multiple-cup process more rapidly achieves the
desired vacuum at the resin front when relatively wide or thick
liners are being impregnated. The reason wide or thick liners
call for multiple cups is that with them the cross-sectional area
of the felt exposed to the resin is quite large, making the
obtaining of an adequate vacuum more difficult. The more
suction cups that are working at any one time the more rapidly
is the requisite degree of vacuum achieved at the resin front.
The shifting of cups in the multiple-cup process results in a
lessening of the vacuum at the resin front, just as in the case of
the single-cup process, but the difference in degree in either
the single-cup or multiple-cup process is not material in the
overall carrying out of the impregnation process.
39. The claim calls for “an outer layer formed by an
impermeable film.” The purpose and function of that outer layer
is to Keep the resin in the felt during the impregnation process.
Defendants’ processes involve the use of a plastic layer
immediately outside the felt layer which is also impermeable
during the impregnation process, and which keeps the resin in
the felt during the impregnation process. The function of the
impermeable layer is to keep the resin in the felt layer during
impregnation. The impermeable plastic layer performs this
35a
Appendix B
function in the claim 1 method performed by the Plaintiff and
in the Process 1 and 2 methods performed by the Defendant
even though the Defendant has a very thin felt layer on top of
their impermeable layer.
40. Defendant has presented evidence to attempt to
demonstrate the substantiality of differences between the
methods that they use in Processes | and 2 and the Plaintiff's
method in Claim 1 of the patent to avoid a finding of
infringement under the doctrine of equivalents. Defendants
describe the substantiality of the differences as follows:
Multiple Cup Process (Process | )
41. The Multiple Cup Process {Process 1) was based on
KM’s process used in Europe. It involves a process whereby a
quantity of curable resin is introduced inside one end (the
upstream end) of an elongated hose-like liner, which has felt
as Its outermost surface. A plastic layer is sandwiched between
the outer felt layer and an inner felt layer. The liner is positioned
along a tilted conveyer belt, causing the resin to flow
downstream. Slits are formed 10-15 feet apart in the outer felt
and plastic layer of the liner. Multiple vacuum cups (typically
4-6) are then positioned over the slits. A vacuum pump is
connected to the cups by hoses. The cups apply vacuum
simultaneously along the liner, to pull air from the inner felt
layer, allowing the flowing resin to evenly soak or impregnate
the inner felt.
42. Interruption of vacuum during the process is avoided
by using the multiple Cups to draw a continuous vacuum beyond
the isolated region closest to the resin. The continuous vacuum
zone extends approximately 30-50 feet along the liner. When
36a
Appendix B
the cup closest to the resin is removed, the remaining cups
positioned farther downstream continue to draw vacuum on the
inner felt. The presence of those cups insures that a continuous
uninterrupted vacuum is maintained.
Multiple Needle Process (Process 2)
43. The Multiple Needle Process (Process 2) was
developed by CAT in 1991 to replace Process 1. In Process 2,
multiple hollow needles (typically 4-6), are positioned
approximately 10-15 feet apart along the liner. Those needles
apply a continuous vacuum to the liner.
44. A quantity of curable resin is introduced inside one
end (the upstream end) of the elongated hose-like liner. As in
Process 1, the outermost surface of the hose-like liner is made
of felt, and the liner is positioned along a tilted conveyer belt,
causing the resin to flow downstream.
45. Each needle is used to puncture the liner, such that the
needle tip is positioned in the inner felt. The needles are inserted
so that they point horizontally in the direction of the resin. Each
needle is anchored to the liner, and is connected to the vacuum
pump by a hose. When the vacuum pumpp is activated, the
needles draw a vacuum from the inner felt through the tip of
the needle. The needles apply vacuum simultaneously along
the liner, to pull air from the inner felt layer, allowing the
flowing resin to evenly soak or impregnate the inner felt.
46. A continuous uninterrupted vacuum is maintained at
all times on the inner felt. When the resin approaches the first
needle, that needle is removed and the hole sealed. When that
needle is removed, the remaining needles positioned farther
37a
Appendix B
downstream continue to draw vacuum on the inner felt.
Interruption of vacuum is avoided, since the needles continue
to draw a vacuum beyond the isolated region closest the resin
The continuous vacuum zone extends approximately 30-50 feet
along the liner.
Conclusory Findings
47. The Court has considered the evidence of the
substantiality of the differences between Plaintiff's patent Claim
| and the processes used by the Defendants. Defendants’
Processes | and 2 do not differ substantially from the process
disclosed in the ’012 patent. They correspond in every detail
to claim 1| of the ’012 patent, perform the same function
(producing effective vacuum at the resin front) by the same
means (sequential application of vacuum to the interior of the
liner at points along the liner as the liner is moved) and achieve
the same result (uniform impregnation of the felt by the resin).
48. Rather than using one cup with a discontinuous
vacuum, Process | uses multiple cups with a continuous
vacuum. The Court has evaluated the substantiality of the
differences between Plaintiff's Patent Claim 1 and Process 1.
While the addition of more cups prevents a finding of literal
infringement, it fails, in this case, to prevent a finding of
infringement under the doctrine of equivalents. It is not
reasonable for the Defendants to believe that the enhancement
of the process by the use of multiple cups results in a substantial
difference between Process | and the process in Patent Claim
1. Neither is it reasonable for Defendants to have concluded
that Inliner relinquished coverage of processes using multiple
cups. Defendants’ Process 1 is the full equivalent of the process
described in claim 1 of the ’012 patent. It does the same thing
by the same means to accomplish the same result.
38a
Appendix B
49. Rather than using one cup with a discontinuous
vacuum, Process 2 uses multiple needles with a continuous
vacuum. The Court has also evaluated the substantiality of the
differences between Plaintiff's Patent Claim | and Process 2.
While the substitution of needles for cups and the addition of
multiple needles prevents a finding of literal infringement, it
fails, in this case, to prevent a finding of infringement under
the doctrine of equivalents. Again, while the needles result in
some enhancement in performance, it is not reasonable for the
Defendants to conclude that this resulted in a substantial
difference between its process and that of the Plaintiff or that
Plaintiff relinquished any rights to this type of process.
Defendants’ Process 2 is the full equivalent of the process
described in claim 1 of the ’012 patent. It does the same thing
by the same means to accomplish the same result. The purpose,
function and result of the cup, as claim | points out in section
(3), is to “prevent(s) ingress of air into the interior of the tube
while the tube is being evacuated”, which is precisely the
purpose, function and result of the needle. Both the cup and
the needle are, as claim 1 states, “connected by a flexible hose
to a vacuum source”, both are the means provided for the
application of vacuum, they both do the same thing (suck a
vacuum) by the same means (being connected to a vacuum
source) to achieve the same result (produce a satisfactory
vacuum at the resin front).
50. The vacuum at the resin front when carrying out the
multiple-cup Frocess 1 or multiple-needle Process 2 may be
somewhat more efficient, during the time that the vacuum cups
are being shifted, however, modification by the addition of
multiple cups to the process to create this additional efficiency
does not avoid infringement by equivalency because the
multiple cups perform the same function in the same way to
achieve the same results.
39a
Appendix B
51. Neither does the substitution of the needle for the cup
avoid infringement by equivalency because the mere
modification of this feature does not avoid the fact that the
basic features of Claim 1 of the patent have been adopted. This
new feature performs substantially the same function, in
substantially the same way, to achieve substantially the same
result. This apparatus distinction is irrelevant in the
determination of whether the Defendants’ processes infringe
under the doctrine of equivalents.
52. There is nothing in the file history of the ’012 patent
or the prior art which prevents claim 1 from covering
Defendants’ processes. The patentee originally claimed, in
claim 1, all types of vacuum application, and in claim 4 he
originally claimed the sequential application of vacuum. The
prior art cited by the Examiner did not show that sequential
vacuum application, and by amending the claims, the patentee
abandoned protection broad enough to include all types of
vacuum application but properly retained claims to sequential
vacuum application, which is precisely what Defendants do in
all of their processes.
53. Because the claims in patent speak to the use of one
cup, they result in a discontinuous vacuum. The use of the
multiple cup and multiple needle processes result in a
continuous vacuum which enhances the degree of vacuum
achieved at the resin front. While this enhancement results in
an improvement of the process, there is nonetheless an
insubstantial difference between Patent Claim 1 and Processes
1 and 2.
—_
40a
Appendix B
CONCLUSIONS OF LAW
1. The Constitution of the United States authorizes
Congress to enact laws to promote the progress of science and
useful arts by granting inventors exclusive rights to their
inventions for limited periods. These grants, known as
“patents”, serve the advancement of science because, after the
grant period of seventeen (17) years expires, the invention is
given to the public for free use by all. As part of the Department
of Commerce, the United States Patent and Trademark Office
was set up for the purpose of granting patents. It is made up of
individuals with technical and legal training whose job it is to
carefully review all applications of patents and to issue the
patents when appropriate. Because patent examiners have
technical and legal expertise, their decisions as to patentability
are given great weight. Congress has passed a statute which
requires courts to respect the decisions of these experts by
resolving doubts as to whether granted patents are valid in favor
of the inventor. This is known as the “presumption of validity”.
United States Constitution, Article I, Section 8, Clause 8, Title
35 United States Code.
2. A patent has one or more claims. The claims measure
the invention. Each claim defines a separate, independent
invention. Continental Paper Bag Co. v. Eastern Paper Bag
Co.. 210 U.S. 405, 419, 52 L. Ed. 1112, 28 S. Ct. 748 (1908);
Ballantyne Inst. & Electronics, Inc. v. Wagner, 345 F.2d, 671
(6th Cir. 1965)
3. Because the patent is presumed valid, to exercise the
rights granted by the ’012 patent, what the patent owner must
do is prove that his patented invention is being used without
his permission. This is called infringement. Plaintiff must prove
4la
Appendix B
infringement by a preponderance of the evidence. Once that is
proved, the patent owner is then entitled to prevent further
unauthorized use of the invention by means of an injunction,
and to compensation for past unauthorized use. 35 U.S.C. 271,
283, 284; Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1054 (Fed. Cir. 1988) cert. denied 57 U.S.L.W 3281 (1988)
Infringement Generally
4. Whoever without authority makes, uses, or sells any
patented invention within the United States during the term of
the patent therefor, infringes the patent. 35 U.S.C. § 271. The
party who asserts infringement has the burden of proving
infringement by a preponderance of the evidence. Braun, Jn
v. Dynamics Corp., 975 F.2d 815, 819 (Fed. Cir. 1992)
5. Infringement can be proved in either one of two ways
One way is by showing literal infringement. If Defendant’s
method falls clearly within the language of the claims, litera!
infringement is made out and that is the end of it. Graver Tank
& Mfg. Co. v. Linde Air Products, Co., 339 U.S. 605, 607, 94
L. Ed. 1097, 70 S. Ct. 854 (1950).
6. One may avoid literal infringement by using the essence
of an invention, but not duplicating it exactly. To overcome
this problem, and preserve to inventors what is rightfully theirs,
it is weil settled that even if there is no literal infringement,
one can infringe if one employs a step or steps which are
equivalent to those steps in the patent claim which are not met
exactly. This rule, called the “doctrine of equivalents” prevents
infringers from beating the system by making insignificant
changes in the process to avoid literal infringement. Graver
Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 607,
42a
Appendix B
94 L. Ed. 1097, 70 S. Ct. 854 (1950); Corning Glass Works v.
Sumitomo Elec. USA, Inc., 68 F.2d 1251, 1258 (Fed. Cir. 1989).
Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855,
856-7 (1988).
7. This case involves process claims. Equivalency is made
out if the steps of Defendants’ accused processes are either the
same as the Plaintiff's claim (literal infringement) or the
Defendants’ processes perform substantially the same function
as the corresponding step set forth in the claim in substantially
the same way to obtain substantially the same result. Pennwalt
Corp. v. Durand-Wayland Inc., 833 F.2d 931, 934 (Fed. Cir.
1987). This is known as infringement by equivalents. Something
is “equivalent” if it does not substantially change the way in
which the function of the claimed invention is performed.
Pennwalt, at p. 935. A process may be found to be equivalent
if after considering the substantiality of the claimed differences
in the new process, the fact finder can conclude that the new
process represents an insubstantial change. Hilton Davis
Chemical Co. v. Warner-Jenkinson Co., No. 93-1088, 1995 U.S.
App. LEXIS 21069 (Fed. Cir. August 8, 1995) (per curlam).
8. The issue of equivalency is a question of fact. Durango
Associates Inc. v. Reflange Inc., 843 F.2d 1349, 1357 (Fed.
Cir. 1988); Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1057 (Fed. Cir. 1988); Hartness International Inc. v.
Simplimatic Engineering Co., 819 F.2¢ 1190, 1110 (Fed. Cir.
1987).
9. In accordance with equitable principles, for
infringement to exist under the doctrine of equivalents an
accused method must perform substantially the same function,
in substantially the same way, to achieve substantially the same
43a
Appendix B
result as the invention defined by the claims. Graver Tank &
Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 94 L.Ed.
1097 (1950).
10. To properly apply the Graver Tank “function-
way-result” test, the function, way and result of each accused
process (Process | and Process 2) are compared to the function,
way and result of the method claimed in the ’012 pat=nt. Malta
v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1327 (Fed. Cir.
1991); Lear Siegler, Inc., v. Sealy Mattress Co. of Mich., 873
F.2d 1422, 1425-26 (Fed. Cir. 1989).
11. Ifthe evidence shows that even one of these conditions
is not satisfied, there can be no infringement by equivalents.
London, 946 F.2d at 1539; Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989); Lear Seigler, 873 F.2d at 1581.
12. Each of the three components (function-way-result)
must be separately met. Universal Gym Equip., Inc. v. ERWA
Exercise Equip. Ltd., 827 F.2d 1542, 1548 (Fed. Cir. 1987).
Defendants’ Process | and Process 2 perform substantially the
same function and achieve substantially the same results in
substantially the same way as the method claimed in the ’012
patent.
13. The doctrine of equivalents is subservient to the
doctrine of prosecution history estoppel. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 939 F.2d 1540, 1544 (Fed. Cir.), reh g
denied, (1991). Prosecution history estoppel limits the doctrine
of equivalents. Charles Greiner, 962 F.2d at 1036. Prosecution
history estoppel is an equitable tool for determining the
permissible scope of patent claims. Mannesmann DeMag Corp
v. Engineered Metal Products Co., 793 F.2d 1279, 1284-85
(Fed. Cir. 1986).
44a
Appendix B
14. Although the prior art also limits equivalents,
prosecution history estoppel and the prior art are separate and
distinct concepts. The limits on equivalency imposed by
prosecution history estoppel can be, and frequently are, broader
than those imposed by the prior art. Haynes Intern., Inc. v.
Jessup Steel Co., 8 F.3d 1573, 1579 (Fed. Cir. 1993), modified
on reh’g, 15 F.3d 1275 (Fed. Cir. 1994). In this case, the issue
is whether prosecution history estoppel limits the doctrine of
equivalents.
15. Prosecution history estoppel limits a patentee’s
reliance on the doctrine of equivalents by preventing him from
contending later in an infringement action that his claims should
be interpreted as if limitations added by amendment were not
present. Jonsson v. Stanley Works, 903 F.2d 812, 821 (Fed.
Cir. 1990).
16. Under the doctrine of prosecution history estoppel,
where a patent applicant cancels a claim in the Patent Office to
distinguish his invention from prior art, and replaces that claim
with another claim, the patent owner is deemed to have
surrendered the subject matter covered by the original claim,
and cannot recapture that subject matter through the doctrine
of equivalents. Haynes, 8 F.3d at 1577-78; Wang Laboratories,
Inc. v. Toshiba Corp., 993 F.2d 858, 868 (Fed. Cir. 1993);
Charles Greiner, 962 F.2d at 1036; Diversitech Corp. v. Century
Steps, Inc., 850 F.2d 675, 681 (Fed. Cir. 1988). There is no
surrendered subject matter under the facts of this case.
17. The legal standard for determining what subject matter
was surrendered is an objective one, measured from the vantage
point of what a competitor was reasonably entitled to conclude,
from the prosecution history, that the application gave up to
procure issuance of the patent. Haynes, 8 F.3d at 1577-78.
45a
Appendix B
18. Whether or not estoppel exists is a question of law,
Wang Laboratories Inc. v. Toshiba Corp., 993 F.2d 858, 867
(Fed. Cir. 1993), and is determined in the context of the entire
prosecution history of the patent — the prior art, the Examiner’s
rulings and the patentee’s arguments. In Wang, 993 F.2d at 858.
when the original claims (for a circuit board with memory chips)
were rejected as being unpatentable in view of prior art, the
applicant cancelled those claims, replacing them with new
claims that required the memory chips to be “mounted in a
single row.” Jd. at 867. Those claims eventually issued as part
of the patent. The Defendants’ accused devices (“lateral
memory modules”) had two rows of memory chips and therefore
lacked the very limitation added by amendment (memory chips
“mounted in a single row”). The district court permitted the
jury to find infringement by equivalents. The Federal Circuit
reversed. The court held that “prosecution history estoppel
should have been applied to reach the conclusion that the
accused lateral memory modules were surrendered during
prosecution and therefore do not infringe under the doctrine of
equivalents.” Jd. at 868. Even though the specific accused lateral
memory modules were not cited prior art during prosecution,
the Federal Circuit held that coverage of those devices was
surrendered. /d. at 867-68.
19. The facts of the present case are distinguishable from
the facts in Wang. In Wang, estoppel was found because in that
case the patentee, in arguing to the Examiner, stressed the
significance of mounting chips “only in a single row” and that
limitation was added to the claims. There estoppel was found
excluding multiple row mounting as antiethical to the arguments
presented to the Examiner. Similarly in Charles Greiner & Co.
Inc. Marri-Med Mfg. Inc., 962 F.2d 103] (Fed. Cir. 1992), the
applicant during prosecution of the patent added to the claims
46a
Appendix B
the recitation that certain elements were located “only” at a
particular location. Since in the accused device there was a
different location, estoppel was found. There is nothing
corresponding to that in this case.
20. When originally presented but abandoned claims
contained limitations in dispute with respect to the applicability
of the doctrine of equivalents, as is the case here, that is an
important factor indicating the lack of applicability of the
estoppel doctrine to those limitations. /nsta-Form Products Inc.
v. Universal Foam Systems Inc., 906 F.2d 698, 703 (Fed. Cir.
1990):
For the reason that the allowed claim contains the
same limitation regarding the connection between
the trigger and plunger means as did the abandoned
claim, the patent applicant did not disclaim anything
relating to the manner by which the plunger and
trigger are connected.
See also LaBounty Mfg., Inc. v. U.S. International Trade
Commission, op cit. supra.
21. In view of the facts in this case the doctrine of
prosecution history estoppel is not available to Defendants.
22. Defendants’ single-cup process as described in Finding
of Fact 29 does not infringe claim 1 of the °012 patent, under
the doctrine of equivalents.
23. Defendants’ Process 1 infringes claim | of the °012
patent under the doctrine of equivalents.
47a
Appendix B
24. Defendants’ Process 2 infringes claim 1 of the °012
patent under the doctrine of equivalents.
25. Plaintiffs are entitled to an injunction against the
Carrying out by the Defendants of any of the infringing processes
here dealt with and from Carrying out any other impregnation
process which infringes those claims.
26. The Court’s previous injunction entered on December
1, 1995, Instrument No. 253, will remain in force together with
the subsequently issued order addressing enforcement of that
injunction, Instrument No. 305.
Signed this 27th day of December. 1996.
s/ Vanessa D. Gilmore
VANESSA D. GILMORE
UNITED STATES DISTRICT JUD« iE
48a
APPENDIX C — EXCERPTS OF TESTIMONY
OF MR. SMITH
[commencing at page 165}
SMITH — DIRECT JAMES
ca a *
Q. NOW YOU'VE BEEN INFORMED BEFORE YOU CAME
HERE TODAY AND ALSO WHAT YOU HEARD
YESTERDAY, THAT IN THEIR CURRENT PROCESS,
INLINER USES.NEEDLES RATHER THAN VACUUM
CUPS”
A. YES
QO. WOULD YOU COMPARE THE ACTIONS AND
EFFECTIVENESS OF THE VACUUM CUPS AND PHE
NEEDLES AS USED IN A WET-OUT?
A. YES
MR. GOLDSTEIN: OBJECTION, YOUR HONOR.
THERE’S NO FOUNDATION FOR THIS WITNESS
HAVING ANY KNOWLEDGE, OR EVER SEEING
NEEDLES IN USE, OR ANYTHING LIKE THAT, 50
rHERE’S NO FOUNDATION FOR THAT QUESTION
WHATSOEVER
THE COURT: SUSTAINED
BY MR. JAMES:
QO. DO YOU HAVE AN OPINION, BASED UPON YOUR
KNOWLEDGE IN THE FIELD, AS TO HOW THE NEEDLES
FUNCTION IN A WET-OUT?
A
‘
THE COURT: I’?M GOING
T
x 4
iR. GOLDSTEIN: SAMI
NOR. HE’S NEVER SEEN IT,
QUESTION
66] THE WITNESS: I’M SOF
OBJEC
I DON’
T
i
50a
Appendix C
Q. AND ON THE BASIS OF THAT, WHAT IS YOUR
ANSWER TO MY EARLIER QUESTION?
A. MY EXPERIMENTS SHOWED THAT A NEEDLE WITH
A QUARTER INCH DIAMETER IS ABOUT AS EFFECTIVE
AS A VACUUM CUP AT REMOVING THE AIR. AT LESS
THAN A QUARTER INCH IT IS LESS EFFECTIVE.
* * *
[236] SMITH —- CROSS (GOLDSTEIN)
OQ. NOW, WHEN DID YOU START EXPERIMENTING
WITH NEEDLES, MR. SMITH?
A. IT DEPENDS HOW YOU DEFINE A NEEDLE. I
ACTUALLY DID SOME EXPERIMENTS ABOUT THREE
YEARS AGO IN NORTHAMPTON WITH A HALF-INCH
DIAMETER TUBE, SHARPENED ON ONE END, WHICH
IS VERY SIMILAR TO THE QUARTER-INCH DIAMETER
NEEDLE, BUT THE ACTUAL EXPERIMENTS WITH THE
NEEDLE I DID AFTER WE BECAME AWARE THAT THAT
IS THE WAY THAT YOU APPLY THE VACUUM.
Q. AND HAVE YOU DONE ANY EXPERIMENTAL WORK
WITH NEEDLES THAT YOU ARE WILLING TO REPORT
TO THE COURT?
A. YES.
~Q. DO YOU HAVE ANY PAPERWORK WITH YOU?
A. I HAVEN’T GOT ANYTHING WITH ME.
Sla
Appendix C
MR. JAMES: IHAVE SOMETHING, IF YOU’LL WAIT
JUST A MOMENT.
MR. GOLDSTEIN: YOUR HONOR, I’D CERTAINLY
LIKE THE OPPORTUNITY TO LOOK AT THIS DURING
THE LUNCH BREAK.
THE COURT: WHY DON’T YOU ALL DO THAT.
. * mK
[239] BY MR. GOLDSTEIN:
Q. NOW, JUST BEFORE THE LUNCH BREAK, MR.
SMITH, MR. JAMES GAVE ME A COPY OF A
THREE-PAGE DOCUMENT, WHICH WE HAVE NOW
PHOTO DUPLICATED, WHICH IS ENTITLED, VACUUM
APPLICATION TO THE CUP. IS THIS SOMETHING THAT
YOU DEVELOPED, SIR?
A. YES
Q. AND YOU CONCLUDED HERE THAT THE CUP
AND —
THE COURT: EXCUSE ME. THE WITNESS DOES NOT
HAVE A COPY.
MR. GOLDSTEIN: I’M SORRY.
'HE WITNESS: THANK YOU.
52a
Appendix C
BY MR. GOLDSTEIN:
Q. YOU CONCLUDED THERE THAT THE CUP AND
WHAT YOU CALLED A TUBE EVACUATED A LINER OR
TUBE WITH EQUAL EFFICIENCY, CORRECT?
A. YES.
Q. THIS WAS NOT DONE IN AN IMPREGNATION
PROCESS, WAS IT?
A. NO.
Q. IT WAS JUST A SHORT PIECE OF FELT THAT WAS
CLAMPED AT BOTH ENDS, THAT YOU JUST MEASURED
HOW EFFECTIVE EACH WAS IN WITHDRAWING AIR
FROM THE FELT?
A. THAT'S CORRECT.
Q. DID YOU DO ANY EXPERIMENTAL WORK IN WHICH
YOU USED A [240] NEEDLE OR WHAT YOU CALL A
TUBE IN AN ACTUAL IMPREGNATION?
A. NO.
Q. NEVER DONE THAT?
A. NO.
MR. GOLDSTEIN: YOUR HONOR, I WOULD ASK
THAT THE THREE-PAGE DOCUMENT BE MARKED AS
EXHIBIT 36 AND I OFFER IT INTO EVIDENCE.
53a
Appendix C
THE COURT: ALL RIGHT.
MR. JAMES: NO OBJECTION.
THE COURT: ALL RIGHT. DX 36 WILL BE
ADMITTED.
[251] SMITH - REDIRECT (JAMES)
Q. NOW, I WANT TO REFER YOU TO THE VACUUM
APPLICATION TUBE VERSUS CUP MEMORANDUM —
REPORT, RATHER, THAT YOU DID, DEFENDANT’S
EXHIBIT 36. THE NEXT TO THE LAST SENTENCE OF
THE PORTION ENTITLED “TEST METHOD” READS,
QUOTE, THE POINT OF ENTRY OF THE TUBE THROUGH
THE COATING WAS SEALED WITH PUTTY TO PREVENT
AIR INGRESS.
WHAT DOES THAT REFER TO?
A. WELL, THIS WAS TO GIVE THE TUBE THE
MAXIMUM EFFECT. WHEN YOU PUSH IN A TUBE
THROUGH A COATING YOU MAKE ESSENTIALLY A
SLIT WHICH OPENS AROUND THE NEEDLE AND IT” S
NOT ABSOLUTELY — AN ABSOLUTE SEAL ON THE
EDGES WHERE THAT SLIT IS BEING MADE, AND SO,
BASICALLY, POSTER PUTTY WAS USED TO SEAL THAT
AND PRESS DOWN ON IT SO THAT I COULD MEASURE
THE TRUE EVACUATION RATE FROM THE NEEDLE
WITHOUT ANY AIR LEAKING BACK IN AGAIN.
54a
Appendix (
QO. AND WHAT WOULD HAVE BEEN THE EFFECT ON
YOUR MEASUREMENTS HAD YOU NOT DONE THAT?
A. 1 DON’T KNOW
[556] SMITH —- DIRECT (JAMES)
O. NOW, SIR, WOULD YOU COMPARE THE CONDITION
OF THE LINER IN ADVANCE OF THE RESIN FRONT AS
YOU SAW IT ON THIS INLINER VIDEO TAPE AND AS IT
IS SHOWN ON THE INSITUFORM VIDEO TAPE.
A. THEY BOTH LOOKED SIMILAR IN THAT THEY ARE
SQUASHED FLAT BY HAVING A VACUUM IN.
Q. DO YOU HAVE AN OPINION AS TO THE RELATIVE
EXCELLENCE OF THE IMPREGNATION THAT WAS
CARRIED OUT §N THE INSITUFORM TAPE AND THE
INLINER TAPE?
A. I HAVE NO REASON TO THINK THERE’S ANY
DIFFERENCE.
55a
Appendix C
[DEFENDANT’S TRIAL EXHIBIT 36]
VACUUM APPLICATION - TUBE V. CUP
INTRODUCTION
This report describes a test made to compare the efficiency of
application of a vacuum to a tube in the manner described by
CAT Contracting with the method used for many years by
Insituform® installers. The CAT Contracting method is to
pierce the coating with a “needle” variously described as having
a bore diameter of 1/8th to 1/4 inch and approximately 6 inches
long. The “needle” is connected to a vacuum hose. In US Patent
No. 4,366,012 the traditional method of using a vacuum cup is
described.
TEST METHOD
An Insitutube™ of nominal 10 inch diameter by 7.5 mm. thick
18 feet long was sealed at both ends. Vacuum gauges were
attached at each end to indicate the pressure inside the tube at
those positions. Vacuum was applied at one end by the vacuum
cup method and the pressures were recorded with time. The
cup was removed and air allowed to re-enter the tube until both
gauges indicated atmospheric pressure. The slit in the tube was
sealed and then vacuum was re-applied through a 3/16ths inch
diameter (bore) steel tube, 6 inches long. The point of entry of
the tube through the coating was sealed with putty to prevent
air ingress. Again the pressure variation with time was recorded.
RESULTS
The results of the measurements are tabulated below and are
shown graphically in Figure 1.
Appendix (
TIMI PRESSURE) PRESSURE) PRESSURE) PRESSURE
SECONDS | AT CUP AT FAR Al AT FAR
END END NEEDLE END
millibar millibar END millibar
millhbar
30 . 265 | «635 | «465 +~«'|~+#«2750
60 185 35 285 | 535
90 145 340 210 415
120 125 295 185 340
150 Ws | 275 “160 ~»| ~~ 305,
0 | Ws | 255 | 145 | 290
210 «=| «110. 245 «| ~ #135 ~=«|~=«275
240 110 35 130 260
DISCUSSION
It can be seen that the rate of evacuation of the tube was slightly
slower with the “needle” than with the cup but a shorter “needle”
or one of slightly increased diameter would give flow rates
which would be similar to those obtained with the cup
ONG dno LV
UNG ».adTGUGN., LV
ls WOU! “Last Ly
GaAan., WOW “LI gt Ly
JUNASSMd
SUNSSAUd
FUnASSTUd
TUASSTd
Vy
\
58a
Appendix C
CONCLUSIONS
Provided the “needle” is of sufficient diameter it will achieve
the same evacuation rate as the vacuum cup method. The size
of the hole needed in the coating is similar for both methods.
E. P. SMITH
23 January 1995
59a
APPENDIX D — EXCERPTS OF TESTIMONY
OF MR. CATALLO
[commencing at page 85]
CATALLO — DIRECT (JAMES)
* taal *
Q. WELL, I SHOW YOU THE ‘012 PATENT I ASK YOU
TO LOOK AT THE PART NUMBERED 3 OF CLAIM |
A. I'M SORRY, MR. JAMES. WHAT PART?
Q. THREE.
[86] MR. JAMES: SECTION 3 OF CLAIM l, AND MY
QUESTION WILL BE, ISN’T THAT W HAT YOUR CUPS
DID?
BY MR. JAMES
Q. ISN’T THAT WHAT YOUR CUPS DO?
* * +
[87] NO, SIR, WE DON’T DO WE DIDN’T DO
THAT.
BY MR. JAMES:
Q. WHAT WAS IT THERE THAT YOU DIDN’T DO?
60a
Appendix D
A. WE DIDN’T DO TWO THINGS. IT SAYS, DRAW
THROUGH A WINDOW A VACUUM IN THE INTERIOR
OF THE TUBE. WE DIDN’T HAVE A WINDOW. WE HAD
A SLIT. WE HAD AN X.
AND THEN IT SAYS OF ONE END, BY PLACING
OVER THE WINDOW A CUP CONNECTED BY A
FLEXIBLE HOSE TO A VACUUM SOURCE, WHICH CUP
PREVENTS INGRESS AIR INTO THE INTERIOR OF THE
TUBE WHILE THE TUBE IS BEING EVACUATED, THE
OTHER LAYER OF THE TUBE BEING SUBSTANTIAL,
IMPERMEABLE TO AIR.
OUR OTHER LAYER IS IMPERMEABLE 70 AIR.
OUR OTHER LAYER WAS FELT. AND THE VACUUM CUP
DIDN’*T SEAL COMPLETELY BECAUSE SOME AIR DID
GET THROUGH THE VACUUM CUP, BECAUSE WE HAVE
THE FELT THAT’S BETWEEN THE FILM AND THE
SUCTION CUP. THERE’S FELT THERE. SO IT DIDN'T
COMPLETELY SEAL.
Q. AND THE FACT THAT IT DIDN’T COMPLETELY
SEAL WAS SOMETHING BAD, WASN’T IT?
A. THAT’S CORRECT.
[88] BY MR. JAMES:
Q. NOW, IN YOUR NEEDLE PROCESS, PROCESS 2,
WHAT DOES THE NEEDLE DO?
6la
Appendix D
A. THE NEEDLE PUNCTURES THROUGH THE FEL1
AND DRAWS VACUUM [89] FROM THE MIDDLE OF THE
TUBE.
Q. PUNCHES THROUGH THE FELT?
A. YES.
Q. TELL ME ABOUT THAT.
A. WELL, WE TAKE THE NEEDLE AND WE PUNCTURE
THROUGH THE FIRST LAYER OF FELT. WE PUNCH IT
THROUGH THE FILM AND THEN WER PUNCH IT
THROUGH THE NEXT LAYER OF FELT AND IT GOES
INTO THE CENTER OF THE TUBE IN ORDER TO
EVACUATE THE AIR.
Q. NOW, THE PLASTIC LAYER THAT THIS NEEDLE IS
GOING THROUGH, BEFORE THE NEEDLE GETS TO fF,
THAT PLASTIC LAYER IS IMPERMEABLE, IS IT NOT?
A. YES, SIR, IT IS.
Q. AND AFTER THE NEEDLE GOES THROUGH IT, IS I!
STILL IMPERMEABLE?
A. YES.
Q. AIR DOESN’T GET THROUGH?
A. WELL, IT GETS THROUGH THE NEEDLE.
Q. AND HOW DOES IT MANAGE THAT?
63a
Appendix D
BY MR. JAMES:
Q. NOW, WHEN YOU PUT THE NEEDLE IN, WHAT IS
THE RELATIONSHIP BETWEEN THAT NEEDLE AND
THE IMMEDIATELY SURROUNDING PORTION OF THE
IMPERMEABLE PLASTIC LAYER?
A. I'M SORRY, MR. JAMES. I DON’T UNDE] STAND.
Q. YOU PUT THE NEEDLE THROUGH, YES? YOU
PUNCHED YOUR HOLE?
A. YES, SIR.
Q. WHAT IS THE RELATIONSHIP BETWEEN THE
OUTER SURFACE OF THAT NEEDLE AND THE INNER
SURFACE OF THAT HOLE?
A. THE RELATIONSHIP IS THAT THAT HOLE IS
SQUEEZING DOWN ON THE NEEDLE.
Q. SO NO AIR GETS IN AROUND THE NEEDLE?
A. IT GETS SOME AIR AROUND THE NEEDLE, BUT NOT
A LOT. NO.
Q. AND THE DEGREE TO WHICH AIR DOES COME
AROUND THE NEEDLE, THAT’S BAD, ISN’T IT?
[91] A. YES.
Q. SO WHAT YOU’RE DOING WITH THE NEEDLE IS
DOING THE BEST YOU CAN WITH THE NEEDLE TO
PREVENT AIR FROM GETTING INTO THE FELT, RIGHT?
64a
Appendix D
A. NO. WHAT I’M DOING WITH THE NEEDLE — I MEAN
THE REASON WE’RE DOING WITH THE NEEDLE IS SO
IT DOESN’T FALL OFF THE MATERIAL AND IT
EVACUATES THE AIR BETTER.
Q. BUT IN TERMS OF THE RELATIONSHIP BETWEEN
THE NEEDLE AND THE IMPERMEABLE LAYER, WHAT
YOU’RE DOING IS DOING YOUR BEST TO GET A SEAL
AROUND THE NEEDLE SO NO AIR GETS THROUGH.
RIGHT?
A. I MEAN, IT’S JUST HOW IT WORKS, MR. JAMES. I’M
NOT DOING ANYTHING. IT’S JUST PUNCHING IT
THROUGH THE FILM.
Q. AND WHEN YOU PUNCH IT THROUGH THE FILM —
A. If CREATES A SEAL BETWEEN THE FILM AND THE
NEEDLE. OKAY? YES, SIR.
Q. NOW, LOOK AGAIN AT THIS, AT THIS SECTION 3
OF CLAIM 1, AND TELL ME, PLEASE, WHAT IT IS THAT
YOU DON’T DO, IF ANYTHING, WHEN YOU’RE USING
THE NEEDLES?
A. I DON’T HAVE A WINDOW. IT SAYS DRAWING
THROUGH THE WINDOW. I’M NOT DRAWING
THROUGH THE WINDOW.
Q. YOU’RE DRAWING THROUGH THE HOLE?
A. WELL, I'M DRAWING FROM THE NEEDLE.
65a
Appendix D
Q. WHICH MADE THE HOLE?
A. THE NEEDLE THAT MADE THE HOLE. YES, SIR. BUT
I’M ACTUALLY DRAWING FROM WITHIN THE TUBE.
I’M NOT DRAWING FROM [92] OUTSIDE THE TUBE.
Q. ALL RIGHT.
A. I'M NOT DOING A WINDOW. I’M NOT DEPOSITING
A CUP OVER THE WINDOW. I DON’T HAVE A CUP
PREVENTING THE INGRESS OF AIR INTO THE
INTERIOR.
Q. YOU HAVE A NEEDLE PREVENTING THE INGRESS
OF AIR, DON’T YOU?
A. YES.
Q. OKAY.
A. AND I DON’T HAVE AN IMPERMEABLE OUTER
LAYER.
Q. WHAT DO YOU HAVE OUTER LAYER, JUST OUTSIDE
THE FELT?
A. MR. JAMES, I’M SORRY. COULD YOU REPEAT THE
QUESTION?
Q. WHAT DO YOU HAVE AS AN OUTER LAYER JUST
OUTSIDE THE FELT?
A. THE INTERNAL FELT?
66a
Appendix D
Q. YES.
A. WELL, WE HAVE INTERNAL LAYERS OF FELT. AND
THEN WE HAVE A FILM.
Q. THAT’S WHAT I’M TALKING ABOUT?
A. AND THEN WE HAVE AN EXTERIOR FELT.
Q. AND THE FILM, WHAT YOU CALL A FILM, THAT’S
IMPERMEABLE, ISN’T IT?
A. THAT’S CORRECT.
Q. AND IT’S THAT FILM THAT YOU PUNCH THE
NEEDLE THROUGH THAT’S FORMING A SEAL, MORE
OR LESS, AROUND THE NEEDLE, RIGHT?
A. FIRST IT GOES THROUGH THE TOP LAYER OF THE
FELT. THEN IT [93] GOES THROUGH THE FILM AND
THEN IT GOES THROUGH THE INNER LAYERS OF FELT.
Q. IUNDERSTAND. BUT WHEN IT GOES THROUGH THE
OUTER LAYER —
A. YES, SIR.
Q. — THAT’S THE IMPERMEABLE LAYER, ISN’T IT?
A. THAT’S CORRECT.
Q. DO YOU HAVE TO ANCHOR THE NEEDLE TO THE
LINER IN ANY WAY?
67a
Appendix D
A. NO, SIR.
Q. HOW BIG IS THE NEEDLE?
A. | THINK IT HAS A QUARTER INCH VOID, QUARTER
INCH —
Q. DIAMETER?
A. CANAL, YES.
Q. AND THAT CONNECTS TO A HOSE WHICH GOES TO
YOUR VACUUM PUMP?
A. THAT CCNNECTS TO A T, TO A CAST IRON T —
CAST IRON, TO A STEEL T FIRST.
Q. AND HOW BIG IS THE T?
A. IT’S A HALF-INCH T.
Q. INSIDE THE DIAMETER?
A. I BELIEVE IT’S HALF-INCH.
Q. SO THE NEEDLE IS SMALLER THAN THE — THE
INSIDE OF THE NEEDLE IS SMALLER THAN THE INSIDE
OF THE T?
A. THAT’S RIGHT.
Q. WHEN YOU USED CUPS, CUPS CONNECTED TOA
PIPE TUBE THAT WENT TO THE PIPE, RIGHT?
68a
Appendix D
[94] A. THAT’S CORRECT.
Q. HOW BIG WAS THE TUBE IN TERMS OF DIAMETER?
A. ABOUT THE SAME. ABOUT — I BELIEVE IT’S
ABOUT A HALF-INCH COPPER.
Q. NOW, YOU’VE TALKED TO US ABOUT THAT OUTER
FELT LAYER, OUTERMOST FELT LAYER. HOW THICK
IS IT?
A. PARDON ME?
Q. HOW THICK IS IT?
A. IT’S ABOUT ONE MILLIMETER.
Q. AND YOU’VE TOLD US, I THINK, THAT IT’S A
DISADVANTAGE WITH THE CUPS BECAUSE IT’S HARD
TO GET A SEAL?
A. THAT’S CORRECT.
Q. THAT’S WHY YOU WENT TO THE NEEDLES, RIGHT?
THAT’S WHY YOU WENT TO THE NEEDLES?
A. ONE OF THE REASONS.
Q. ONE OF THE MAIN REASONS?
A. I THINK THE MAIN REASON IS THAT THE NEEDLES
EVACUATE BETTER.
69a
Appendix D
Q. DO ALL OF YOUR INSTALLATIONS HAVE THAT
OUTERMOST FELT LAYER?
A. YES, SIR.
iad * *
[111] Q. NOW, IF WE TURN TO THE NEEDLE PROCESS,
PROCESS 2, HOW DOES THAT PROCESS DIFFER FROM
PROCESS 1 EXCEPT, WITH THE USE OF A NEEDLE
RATHER THAN A VACUUM CUP?
A. WELL, WE REMOVE A STEP. WE DON’T HAVE TO
CUT THE SLITS. WE JUST TAKE THE NEEDLE AND WE
PUT IT INTO THE FELT, INTO THE TUBE. THAT’S
DIFFERENT.
WE EVACUATE THE TUBE FROM WITHIN WITH
AIR. WE DON’T DRAW AIR THROUGH THE MEMBRANE.
WHEN THE NEEDLE — IF YOU COULD IMAGINE A BOX
WITH A NEEDLE STICKING IN THE MIDDLE OF IT, THE
AIR IS MUCH MORE ACCESSIBLE AND IT CAN GO
THROUGH THE NEEDLE EASIER. THAT’S DIFFERENT.
I MEAN, THE NEEDLE DON’T DETERIORATE.
THE NEEDLES PUNCTURE THROUGH THE FIRST FELT,
THROUGH THE MEMBRANE, AND THEY PUNCTURE
THROUGH THE OTHER LAYERS OF FELT IN ORDER TO
GET TO THE MIDDLE TUBE IN ORDER TO EVACUATE.
AND EVACUATION IS MORE EFFICIENT.
Q. WHEN YOU PUT THE NEEDLE IN, DOESN’T THE ACT
OF PUTTING THE NEEDLE IN FORM AN OPENING IN
THE IMPERMEABLE LAYER?
70a
Appendix D
A. IT PUNCTURES IT, YES, SIR.
Q. YOU SAY IT PUNCTURES IT. DOESN’T IT FORM A
HOLE IN IT?
[112] A. YES.
Q. AND YOU THINK THAT’S DIFFERENT FROM A
WINDOW?
A. MUCH DIFFERENT, YES, SIR.
a” x * *
Tla
APPENDIX E — EXCERPTS OF TESTIMONY
OF MR. HARMON
[commencing at page 482]
HARMON - DIRECT (ELLIOTT)
* * *
AND, ANYWAY, TO COMPLETE MY ANSWER
THERE, I CONCLUDED, AND I’VE HEARD TESTIMONY
THROUGHOUT THIS TRIAL THAT CONFIRMS THAT,
THAT NEEDLES ARE IN NO WAY EQUIVALENT TO
CUPS IN THE SENSE OF HOW THEY ACCOMPLISH THE
FUNCTION THAT’S REQUIRED IN THIS METHOD.
Q. AND DID YOU COMPARE NEEDLES WITH MULTIPLE
CUPS OR WITH ONE CUP?
A. I COMPARED, ACTUALLY, BOTH. I COMPARED IT
WITH — FIRST, I COMPARED NEEDLES WITH A SINGLE
CUP PROCESS AS CLEARLY SHOWN IN THE PATENT.
BUT THEN I TOOK IT A STEP FURTHER AND
ASSUMED — WELL, LET’S GIVE PLAINTIFF’S EVERY
BENEFIT OF EVERYTHING THAT THEY’RE ASKING
FOR, AND ASSUME THAT THE PATENT COVERS
MULTIPLE CUPS, WHICH IT DOESN’T, BUT I ASSUMED
THAT, AND I COMPARED MULTIPLE NEEDLES WITH
MULTIPLE CUPS. AND I FOUND IMPORTANT
DIFFERENCES. AT LEAST THEY SEEM IMPORTANT TO
ME AND I’VE HEARD TESTIMONY THAT THEY’RE
IMPORTANT.
Q. DID YOU COMPARE THE FUNCTION OF MULTIPLE
NEEDLE PROCESS W!TH THE FUNCTION —
72a
Appendix E
THE COURT: EXCUSE ME, MR. ELLIOTT. I NEED TO
UNDERSTAND.
[483] TELL ME WHAT THE IMPORTANT
DIFFERENCES WERE.
THE WITNESS: YOUR HONOR, THERE ARE
SEVERAL. AND PERHAPS YOU CAN SEE THIS WHEN
YOU WATCH THE VIDEO.
THE COURT: WELL, WHY DON’T YOU USE THE
CUP AND THE NEEDLE AND SHOW ME WHAT THE
IMPORTANT DIFFERENCES ARE TO CONSIDER.
THE WITNESS: YES. 17M AFRAID OF THAT NEEDLE.
FOR ONE THING, THIS CUP IS RUBBER, AND IT
SIMPLY IS GOING TO DETERIORATE OVER A PERIOD
OF TIME. THE NEEDLE APPARENTLY DOES NOT
DETERIORATE. SO IT HAS A MUCH — IT HAS MUCH
LESS MAINTENANCE REQUIRED.
IN THE SECOND PLACE, YOU HAVE TO
UNDERSTAND PERHAPS — PERHAPS I OUGHT TO
EXPLAIN THIS, FIRST.
THERE IS REALLY A FUNDAMENTAL
DIFFERENCE BETWEEN THE PROCESSES THAT ARE
USED — FOR EXAMPLE, THE PATENTED PROCESS AND
THE INLINER PROCESS — IN THAT THE PATENTED
PROCESS IMPREGNATES AND THEN TAKES THAT
IMPREGNATED TUBE AND INVERTS IT IN THE PIPE.
73a
Appendix E
THE COURT: OKAY. I’M NOT THERE. I WANT TO
DEAL WITH WHAT YOU SAID. YOU KEEP MAKING
CONCLUSIONARY STATEMENTS BUT YOU NEVER SAY
WHY. YOU SAY THAT —
THE WITNESS: I WILL TRY AND GET TO THAT.
THE COURT: OKAY.
THE WITNESS: BUT I’M NOT SURE IT CAN BE
FULLY UNDERSTOOD WITHOUT THIS. I’LL TRY TO DO
[fT SHORTHAND SO YOU [484] CAN SEE.
THE COURT: MY QUESTION IS THIS: YOU SAID
YOU FEEL THAT THE DOCTRINE OF EQUIVALENTS
SHOULD NOT APPLY. THE ONLY THING THAT YOU’ VE
SAID ABOUT THAT SO FAR IS THAT THE NEEDLES ARE
NO WAY EQUIVALENT TO THE CUPS IN TERMS OF
THEIR FUNCTION. MY QUESTION IS WHY AREN’T THE
NEEDLES EQUIVALENT TO THE CUPS?
DON’T TELL ME ABOUT INVERSION AND ALL
THAT OTHER STUFF. THAT’S WAY DOWN THE ROAD.
TELL ME THE ANSWER TO THIS QUESTION. NEEDLES
ARE IN NO WAY EQUIVALENT TO CUPS IN TERMS OF
THEIR FUNCTION.
THE WITNESS: WE’VE DISCUSSED MAINTENANCE,
DETERIORATION. WE’VE — THE NEXT THING IS THAT
A CUP SIMPLY WON’T STAY ON AS WELL AS A
NEEDLE, PARTICULARLY WHERE THE SURFACE THAT
IT HAS TO STAY ON IS FELT. PERHAPS THE PATENTED
METHOD CAN USE CUPS BECAUSE IT USES AN
74a
Appendix E
EXTERIOR FILM. IT’S NOT A SOFT, FUZZY
COMPRESSIBLE LAYER THAT WILL LET AIR LEAK IN.
THAT’S NOT WHAT MR. CATALLO DOES. HE
HAS AN OUTER LAYER OF FELT.
THE COURT: OKAY.
THE WITNESS: AND THIS CUP JUST WON’T STAY
ON THERE.
THE COURT: LET ME ASK YOU THIS: DOES
IMPROVEMENT OF EFFICIENCY ALONE MEAN THAT
YOU’RE NOT INFRINGING ON A PATENT?
THE WITNESS: IMPROVEMENT OF EFFICIENCY
ALONE IS A SIGNIFICANT DIFFERENCE. AND IN THE
PARLANCE OF THE DOCTRINE [485] OF EQUIVALENTS,
THE ANSWER TO YOUR QUESTION IS, YES, YOU'RE
NOT INFRINGING IF IT’S A SIGNIFICANT DIFFERENCE.
THE COURT: SO IMPROVEMENT OF EFFICIENCY IN
AND OF ITSELF, IF THAT’S THE ONLY ISSUE,
IMPROVEMENT OF EFFICIENCY, THAT WOULD TAKE
YOU OUT OF THE REALM OF HAVING INFRINGED; IS
THAT WHAT YOU’RE SAYING?
THE WITNESS: IF IT’S ATTRIBUTABLE TO THE
DIFFERENT WAY IN WHICH IT’S DONE. IF IT’S
ATTRIBUTABLE. I'M NOT SAYING THAT IF YOU ADD
SOMETHING TO YOUR PROCESS THAT MAKES IT
BETTER, YOU DON’T INFRINGE. THAT’S HORN-BOOK
LAW.
75a
Appendix E
BUT IF THE DIFFERENCE BETWEEN THESE TWO
THINGS RESULTS IN THIS HAVING IMPROVED
EFFICIENCY, THEN IT’S A SIGNIFICANT CHANGE AND
THERE’S NO INFRINGEMENT UNDER THE DOCTRINE
OF EQUIVALENTS. THEY’RE NOT EQUIVALENT
BECAUSE OF THAT.
THE COURT: OKAY.
THE WITNESS: THERE ARE OTHER DIFFERENCES.
THE NEEDLE CAN BE IN PLACE AT ANY POINT
AROUND THE PERIPHERY OF THE TUBE, WHEREAS
THE CUP WOULD HAVE TO SIT LEVEL ON TOP,
BECAUSE IT’S PROBABLY NOT GOING TO STICK IF IT
SITS ON THE SIDE AS IT MOVES THROUGH. ANY
LITTLE JOSTLING MIGHT KNOCK IT OFF THAT WAY
THE COURT: OKAY.
MR. ELLIOTT: MAY I APPROACH THE WITNESS.
YOUR HONOR?
THE COURT: SURE.
* - *
[525] HARMON - CROSS (JAMES)
Q. AND INDEED EVEN WITH THE NEEDLE, IT WOULD
SEEM, JUDGING FROM WHAT YOU’VE TOLD US ABOUT
THE VIDEOTAPE, EVEN THEN THEY HAVE A PROBLEM
WITH LEAKAGE AROUND THE NEEDLE AND
SOMETIMES THEY HAVE TO USE TAPE AROUND THE
NEEDLE, RIGHT?
76a
Appendix E
A. THAT’S RIGHT. I'M NOT SURE I FULLY
UNDERSTAND THAT PROBLEM. BUT I DID SEE THAT
AND IT WAS DESCRIBED TO ME THAT WAY. ONCE IN
A WHILE, THEY HAVE TO PUT THE NEEDLE THROUGH
A PIECE OF TAPE.
Q. AND ISN’T THAT ALSO — IF YOU HAVE CLAIM 1 IN
FRONT OF YOU HERE, THE PATENT CLAIM 1 — WELL,
I’LL HOLD IT HERE — WHAT WE WERE JUST TALKING
ABOUT, THE LEAKAGE AROUND THE OUTSIDE OF THE
NEEDLE THAT WE WERE TRYING TO PREVENT, THAT
IS THE KIND OF THING THAT IS REFERRED TO IN
SECTION 3 OF THE PATENT CLAIM 1, PREVENTS
INGRESS OF AIR INTO THE INTERIOR OF THE TUBE
WHILE THE TUBE IS BEING EVACUATED?
A. SEALING AROUND THE NEEDLE WOULD ASSIST IN
THAT, YES.
Q. THAT’S THE PURPOSE OF THE SEALING, TO TRY TO
ACCOMPLISH THAT IN A MORE EFFICIENT MANNER,
RIGHT, MORE EFFECTIVE MANNER?
A. AS FAR AS I KNOW.
* * * *
77a
APPENDIX F — EXCERPTS OF TESTIMONY
OF MR. VADEN
[commencing at page 297]
VADEN - DIRECT (JAMES)
* * *
A. WELL, A LITERAL INFRINGEMENT OF THE CLAIMS
WOULD BE THAT THE CLAIMS WOULD READ
EXACTLY UPON WHAT HE IS DOING. NOW, IT MAY
ALSO BE DIFFERENT FROM THAT WHICH IS SET FORTH
IN THE PREFERRED EMBODIMENT SET FORTH IN THE
PATENT.
BUT THE CLAIMS ARE MORE GENERIC, ARE
BROADER THAN THAT. AND, AS A RESULT, THEY MAY
COVER EXACTLY WHAT HE’S DOING. HOWEVER,
THAT’S NOT THE END OF THE ANALYSIS BECAUSE
UNDER THE DOCTRINE OF EQUIVALENTS, THE
PERSON WHOSE ACTIVITY’S UNDER INVESTIGATION
MAY ALSO BE TAKING ADVANTAGE OF THE PATENT,
SO TO SPEAK; IN OTHER WORDS, PRACTICING THE
INVENTION, BUT FALL OUTSIDE OF THE LITERAL
SCOPE OF THE LANGUAGE.
AND UNDER THOSE CONDITIONS YOU WOULD
HAVE TO INVESTIGATE WHETHER OR NOT HE WAS
PERFORMING SUBSTANTIALLY THE SAME FUNCTION
AND SUBSTANTIALLY THE SAME WAY TO
ACCOMPLISH THE SAME RESULTS, WHICH IS THE
TEST FOR THE DOCTRINE OF EQUIVALENTS.
. WOULD YOU MIND SAYING THAT AGAIN, THE TEST
OF DOCTRINE OF EQUIVALENTS?
78a
Appendix F
A. YES. IF THE ACTIVITY PERFORMS SUBSTANTIALLY
THE SAME FUNCTION IN SUBSTANTIALLY THE SAME
WAY TO ACCOMPLISH SUBSTANTIALLY THE SAME
RESULT, THEN THAT WOULD BE AN INFRINGEMENT.
ae
* * *
[316] Q. NOW, THE PATENT DISCLOSES, DOES IT NOT,
A VACUUM CUP?
A. YES.
Q. AND THE TERM, CUP, IS USED IN THE CLAIM, IS IT
NOT?
A. YES, IT IS.
Q. AND THE TERM, CUP, IS USED IN THE
SPECIFICATION?
A. YES.
Q. WHAT, IF ANYTHING, DOES THE SPECIFICATION
SAY ABOUT THE NECESSITY OF USING A CUP RATHER
THAN SOMETHING ELSE?
A. WELL, AGAIN, THE OBLIGATION TO SET FORTH
SOME MEANS DOESN’T MEAN IT’S THE ONLY MEANS
THAT MAY BE USED. IT SAYS, FOR INSTANCE, IN
COLUMN 2 LINE 30, THE VACUUM MAY BE APPLIED.
IT DOESN’T SAY IT MUST BE APPLIED OR THIS I$ THE
ONLY WAY THAT INVENTION CAN BE PRACTICED.
79a
Appendix F
[317] IT GIVES AN EXAMPLE, A PREFERRED
EXAMPLE AT THE TIME. BUT IT SAYS IT USES A CUP
— MAY BE APPLIED THROUGH A WINDOW IN THE
FILM IN THE WALL OF THE TUBE BY MEANS OF A CUP.
Q. AND LET ME REFER YOU TO COLUMN 6, LINES 1
THROUGH 5, AND ASK YOU WHETHER THEY CAST
ANY LIGHT ON WHAT THE PATENTEE SAID THE
FUNCTION OF THE CUP WAS?
A. WELL, THE VACUUM THAT IS BEING APPLIED HAS
TO BE APPLIED TO THE INTERIOR OF THE LINING
TUBE, AND THE CUP ALLOWS THAT TO HAPPEN. IT
SAYS THAT THE VACUUM APPLIED TO THE INTERIOR
OF THE CUP CAN BE APPLIED TO THE INTERIOR OF
THE LINING TUBE.
AND THEN IT SAYS A LITTLE BIT MORE ABOUT
HOW THAT’S DONE, WHEREBY AIR IS DRAWN FROM
THE INSIDE OF THE TUBE TO PERMIT THE EFFECTIVE
AND EFFICIENT IMPREGNATION OF THE ABSORBENT
MATERIAL WITH THE RESIN.
Q. WHAT, IF ANYTHING, DOES THE CLAIMS SAY
ABOUT THE FUNCTION OF THE CUP?
A. WELL, AGAIN, IN ELEMENT 3 OR PART 3 OF THAT
CLAIM 1 IT SAID, DRAWING THROUGH THE WINDOW
A VACUUM IN THE INTERIOR OF THE TUBE,
DOWNSTREAM OF THE SAID ONE END, BY DISPOSING
OVER THE WINDOW A CUP CONNECTED BY A
FLEXIBLE HOSE TO A VACUUM SOURCE.
80a
Appendix F
THEN IT GOES ON, WHICH CUP PREVENTS
INGRESS OF AIR INTO THE INTERIOR OF THE TUBE
WHILE THE TUBE IS BEING EVACUATED.
* - *
[342] Q. WOULD YOU COMPARE THE FUNCTION OF
THAT NEEDLE WITH THE FUNCTION OF A SUCTION
CUP?
A. WELL, THE FUNCTION OF THE SUCTION CUP
ALLOWS THE SOURCE OF THE VACUUM TO BE
APPLIED THROUGH THE OPENING, THROUGH THE
WINDOW, TO THE INTERIOR LAYER OF THE TUBE,
AND THE NEEDLE, SO-CALLED NEEDLE, ALLOWS THE
SOURCE OF THE VACUUM TO BE APPLIED THROUGH
A WINDOW IN THE TUBE, TO THE INNER LAYER OF
THE TUBE. AND THEREFORE I THINK THE FUNCTIONS
ARE THE SAME.
Q. WOULD YOU COMPARE THE WAY IN WHICH THE
NEEDLE ACHIEVES THAT FUNCTION WITH THE WAY
IN WHICH A SUCTION CUP ACHIEVES THAT
FUNCTION?
A. WELL, THE WAY THAT IS IMPORTANT TO THE
CLAIM IS THE LOCATION, AND THE LOCATION IS
NEAR THE FRONT END OF THE RESIN MASS.
~——WHEN THE CUP IS PLACED THERE TO FORM A
VACUUM, IT DRAWS AIR OUT OF THE FRONT END,
AND IN THE SAME WAY WHEN THE NEEDLE IS PLACED
IN THAT LOCATION, IT ALSO DOES THE SAME. IT
PERFORMS IN THE SAME WAY.
Sila
Appendix F
Q. AND WOULD YOU COMPARE, PLEASE, THE RESULT
OF USING THE NEEDLE IN THE PROCESS WITH THE
RESULT OF USING A SUCTION CUP?
A. WELL, THE RESULT IS THE COMPLETION OF GOOD
IMPREGNATION AND APPARENTLY THE RESULTS ARE
SATISFACTORY, WHETHER OR NOT YOU USE THE CUP
OR THE NEEDLE, AND THEREFORE THEY’RE THE
SAME [343] COMPLETE IMPREGNATION OF THE RESIN.
Q. NOW, DO YOU HAVE AN OPINION AS TO WHETHER
THE INLINER 2 PROCESS AS A WHOLE PRODUCES
SUBSTANTIALLY THE SAME FUNCTION AS THE ‘012
PATENT PROCESS?
A. YES. THE FUNCTION IS TO DRAW THE AIR OUT OF
THE REGION NEAR THE FRONT END OF THE RESIN
MASS, AND IT DOES THAT IN SUBSTANTIALLY THE
SAME WAY FOR THE NEEDLE PROCESS.
od . =
[344] Q. AND DO YOU HAVE AN OPINION AS TO
WHETHER INLINER 2 INFRINGES CLAIM I OF THE ‘012
PATENT UNDER THE DOCTRINE OF EQUIVALENTS?
A. I THOUGHT THAT WAS WHAT YOU ASKED
PREVIOUSLY.
Q. PERFORMED AS TO INLINER 1.
A. INLINER 1 DOES ACCOMPLISH THE — OR IS AN
INFRINGEMENT UNDER THE DOCTRINE OF
82a
Appendix F
EQUIVALENTS. INLINER 2 IS ALSO AN INFRINGEMENT
UNDER THE DOCTRINE OF EQUIVALENTS.
Q. BECAUSE OF THE ANALYSIS THAT YOU’VE MADE
PREVIOUSLY
A. YES.
Q. — WITH RESPECT TO THE THREE ASPECTS OF THAT
DOCUMENT?
A. THAT’S CORRECT.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.