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United States Court of Appeals for the Federal Circuit

 

99-1584, 00-1005

 

 

INSITUFORM TECHNOLOGIES, INC.,

INSITUFORM (Netherlands) B.V.,

and INSITUFORM GULF SOUTH, INC.,

 

                                                                                                            Plaintiffs-Cross Appellants,

 

v.

 

CAT CONTRACTING, INC.,

FIRSTLINER U.S.A., INC., and GUILIO CATALLO,

 

                                                                                                            Defendants-Appellants,

 

and

 

MICHIGAN SEWER CONSTRUCTION COMPANY,

 

                                                                                                            Defendant-Appellant,

 

and

 

KANAL SANIERUNG HANS MUELLER GmbH & CO. KG,

 

                                                                                                            Defendant-Appellee.

 

 

            Harold James, Epstein Drangel Bazerman & James LLP, of New York, New York, for plaintiffs-cross appellants.

 

            Arnold Anderson Vickery, of Houston, Texas, for CAT Contracting, Inc., et al.

 

            N. Elton Dry, Dry & Tassin, LLP, of Houston, Texas, for defendant-appellant Michigan Sewer Construction Company.

 

            Richard L. Stanley, Howrey Simon Arnold & White, LLP, of Houston, Texas, for defendant-appellee Kanal Sanierung Hans Mueller GmbH & Co., KG.  With him on the brief was Albert B. Deaver, Jr.

 

On remand from the Supreme Court of the United States

 

United States Court of Appeals for the Federal Circuit

 

 

 

99-1584, 00-1005

 

INSITUFORM TECHNOLOGIES, INC.,

INSITUFORM (NETHERLANDS) B.V.,

and INSITUFORM GULF SOUTH, INC.,

 

Plaintiffs-Cross Appellants,

 

v.

 

CAT CONTRACTING, INC.,

FIRSTLINER U.S.A., INC., and GIULIO CATALLO,

 

Defendants-Appellants,

 

and

 

MICHIGAN SEWER CONSTRUCTION COMPANY,

 

                                                                        Defendant-Appellant,

 

and

 

KANAL SANIERUNG HANS MUELLER GmbH & CO. KG,

 

                                                                                                Defendant-Appellee.

 

 

                                                __________________________

 

                                                DECIDED:  October 4, 2004 

                                                __________________________

 

Before MAYER, Chief Judge, MICHEL, and SCHALL, Circuit Judges.

 

SCHALL, Circuit Judge.

 

Defendants Cat Contracting, Inc. (“CAT”), Firstliner U.S.A., Inc. (“Firstliner”), Giulio Catallo (sometimes referred to as “Catallo”), and Michigan Sewer Construction Company (“MSC”) (“defendants”) appeal the judgment of the United States District Court for the Southern District of Texas holding them liable for infringement of United States Patent No. 4,366,012 (“the ‘012 patent”) and awarding plaintiffs Insituform Technologies, Inc. (“Insituform Technologies”), Insituform (Netherlands) B.V. (“Insituform Netherlands”), and Insituform Gulf South, Inc. (“Insituform Gulf”) (“plaintiffs”) damages for that infringement.  Insituform Techs., Inc. v. Cat Contracting, Inc., No. H-90-1690, slip op. (S.D. Tex. Aug. 31, 1999) (“District Court Opinion”).  Defendants also appeal the joinder of Insituform Netherlands as a plaintiff.  Id. at 21-22.  In addition, CAT, Firstliner, and Catallo appeal the district court’s joinder of Catallo as a defendant.  Insituform Techs., Inc. v. Cat Contracting, Inc., No. H-90-1690, slip op. at 9 (Aug. 30, 1999) (“Joinder Order”).  For their part, plaintiffs cross-appeal the ruling of the district court declining to hold defendant Kanal Sanierung Hans Mueller GmbH & Co. KG (“KS”) vicariously liable to plaintiffs under an alter-ego theory of induced infringement.  District Court Opinion, slip op. at 44-45.

We affirm the judgment of infringement with respect to all defendants.  We also affirm the district court’s joinder of Insituform Netherlands as a plaintiff, its joinder of Giulio Catallo as a defendant, and its ruling declining to hold KS vicariously liable for induced infringement.  However, we vacate the judgment that the infringement of CAT and Firstliner was willful and remand for further proceedings on the issue of willful infringement.  We also vacate the district court’s damages award and remand for further proceedings to determine damages based on when defendants ceased selling the pipe repair process that was found to infringe the ‘012 patent.  Accordingly, we affirm-in-part, vacate-in-part, and remand. 

BACKGROUND

I.

Underground pipes, such as sewer pipes, are often subject to great stress.  As a result, over time, the pipes develop cracks and other structural defects, which can result in leakage.  In the past, the only way to rehabilitate a section of underground pipe was to dig up the broken section and replace it.  Eric Wood, the sole inventor named on the ‘012 patent, pioneered a process for rehabilitating underground pipe without digging it up.

The ‘012 patent discloses Wood’s invention.  The patent relates to a method for performing pipe repair without removing the damaged pipe from the ground.  The method involves installing a liner into the pipe.  Claim 1 of the patent, the only claim at issue, claims a process for impregnating a flexible tube liner with resin prior to insertion of the liner into a damaged pipe.  The liner has an impermeable film on the outside and a resin-absorbent, felt layer on the inside.  A vacuum is applied to the inside of the liner by cutting a window into the outer, impermeable film, applying a cup (a “vacuum cup”) to the outside of the window, and connecting the other end of the cup to a vacuum source.  Using the created vacuum, a section of the inside of the liner is impregnated with resin, which is drawn through the liner.  The vacuum cup is then moved to another section of the liner while the previously used window is sealed.  This process for impregnating the liner with resin allows for impregnation at the jobsite, eliminating the need to transport a heavier, already impregnated liner to the site.

II.

This case has a lengthy procedural history.  The issues before us arise from a complex series of trials, appeals, and cross-appeals that now span nearly fourteen years.  We briefly review each significant decision in turn.

A. Plaintiffs’ suit for patent infringement

The original defendants in this action were CAT, Inliner U.S.A., Inc. (“Inliner”), MSC, and KS.  Inliner subsequently changed its name to Firstliner U.S.A., Inc., and we refer to this defendant as Firstliner throughout.  Firstliner and CAT are in the business of rehabilitating and restructuring various types of pipes, including sanitary, storm sewer, water main, conduit, and industrial pipe.  District Court Opinion, slip op. at 5.  Firstliner oversees the marketing of its trenchless procedure for pipe rehabilitation to potential licensees.  Id.  In addition, Firstliner manufactures pipeliners and related materials, which it sells to CAT and its licensees.  Id.  CAT is responsible for marketing, bidding for, and negotiating contracts with customers and managing its pipeline rehabilitation contracts.  Id.  Giulio Catallo, who was subsequently added as a defendant, is the individual principal of both CAT and Firstliner.  MSC is also in the pipe rehabilitation business.  CAT was involved in a joint venture with MSC for performing the accused processes. 

KS is a German sewer rehabilitation company owned by Hans Mueller.  After reading about KS’s proprietary sewer rehabilitation technology in a trade magazine, Giulio Catallo contacted KS to obtain a license for that technology.  Id.  Catallo subsequently acquired the rights to use the accused processes from Kanal Mueller Gruppe International GmbH & Co. (“Gruppe”), a German export licensing company also owned by Hans Mueller.  Although KS stated in a letter written on November 10, 1989, that CAT was a “qualified Licensee for our KM-INLINER sewer relining process for the territories of the USA,” there was no formal license agreement executed by the parties.  Id. at 6.  An actual license agreement, however, was later executed between Gruppe and Firstliner, permitting CAT’s use of the accused process.  Id.  This license agreement stated that “[t]he licensee has been informed of a threat of a possible claim for infringing the INSITUFORM method.”  Id.

The original accused process used by defendants—referred to as the “Multiple Cup Process” or “Process 1”—was a method of tube liner impregnation involving the serial application of vacuum cups.  In Process 1, from four to six cups were used to draw a vacuum from a corresponding number of slits in the tube liner.  As a result, when the cup closest to the advancing resin was removed, and its slit was sealed, the remaining downstream cups continued to draw a vacuum in the tube liner. 

At some point in either 1991 or early 1992, on the advice of counsel, defendants switched to an alternate process.  In the alternate process—referred to as the “Multiple Needle Process” or “Process 2”—the multiple cups were replaced with multiple metal tubes, known as needles.  In Process 2, the needles are inserted through the layers of the impregnated tube liner, rather than merely placed over holes in the wall of the liner.  Defendants did not develop Process 2 until after the first phase of the case had already been tried to a jury.

The original action for infringement of the ‘012 patent was brought in February 1990.  The original plaintiffs were Insituform of North America, Inc.; Insituform Licensees, B.V.; and Insituform Gulf.  Insituform Licensees, B.V. was the owner of the ‘012 patent at the commencement of the suit.  As explained more fully below, Insituform Licensees, B.V. subsequently assigned the ‘012 patent to Insituform Netherlands, along with the right to sue for past infringement.  Insituform Netherlands was thus eventually substituted for Insituform Licensees, B.V. as a plaintiff.  Insituform Technologies, Inc. (“ITI”) is the parent company and administrative headquarters for the Insituform organization, including Insituform Gulf.  Id. at 4.  Insituform Gulf is authorized to do business in Louisiana, Mississippi, and Texas and licensed to perform Insituform technology in designated regions throughout the United States.[1]  Id. at 5.  Insituform of North America, Inc. is no longer a party to the suit. 

Only claim 1 of the ‘012 patent was asserted at trial.  It recites

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 impermeable 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,

(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,

(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.

 

‘012 patent, col. 6, l. 37 – col. 7, l. 6.

The case was first tried to a jury in June 1991.  The jury returned a verdict that the ‘012 patent was not invalid and was infringed, both literally and via equivalents, by Process 1, the only accused process then at issue.  The district court granted defendants’ motion for judgment notwithstanding the verdict (“JNOV”) with respect to literal infringement and ordered a new trial as to infringement under the doctrine of equivalents.  In June 1994, the case was reassigned to a different judge.  A bench trial was held in February 1995, and in November of that year the court held that Process 1 and Process 2 (which had been introduced after the 1991 trial) infringed the ‘012 patent under the doctrine of equivalents.  The court held defendants CAT, Firstliner, and MSC liable for direct infringement.  The court also found CAT and Firstliner liable for induced infringement.  Additionally, the court found that KS also had induced infringement of the ‘012 patent.  Defendants appealed. 

B. Insituform I

On appeal, we ruled that claim 1 of the ‘012 patent, which recites use of a single cup moved to different windows along the tube to draw a vacuum, did not encompass the accused methods of using several cups or several needles attached at different points along the tube, and thus was not literally infringed by either Process 1 or Process 2.  Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 1106-07 (Fed. Cir. 1996) (“Insituform I”).  We also ruled that plaintiffs were not barred by prosecution history estoppel from asserting infringement under the doctrine of equivalents.  Id. at 1107-08.  Finally, we ruled that the district court had erred in construing claim 1.  We therefore vacated the judgment of infringement with respect to both processes under the doctrine of equivalents and remanded the case for new findings regarding infringement under the doctrine of equivalents under the correct claim construction.  Id.  Because we vacated the judgment of direct infringement, we did not reach the issue of whether KS had induced infringement of the ‘012 patent.

C. Insituform II

On remand, the district court again held that claim 1 of the ‘012 patent was infringed by both Process 1 and Process 2 under the doctrine of equivalents.  Insituform Techs., Inc. v. Cat Contracting, Inc., CA No. H-90-1690 (S.D. Tex. Dec. 31, 1996).  The court subsequently enjoined defendants from practicing those processes.  In addition, the court ruled again that KS had induced infringement of the ‘012 patent.  Defendants again appealed. 

On the second appeal to us, we reaffirmed that prosecution history estoppel did not bar plaintiffs from asserting infringement under the doctrine of equivalents.  Insituform Techs., Inc. v. Cat Contracting, Inc., 166 F.3d 688, 692 (Fed. Cir. 1998) (“Insituform II”).  On the infringement issue, insofar as Process 1 was concerned, we affirmed the district court’s holding that the process infringed claim 1 of the ‘012 patent under the doctrine of equivalents.  Id. at 693.  However, with respect to Process 2, we held that there were substantial differences between the claimed single cup process and the accused multiple needle process.  Id. at 694.  Accordingly, we reversed the court’s holding that Process 2 infringed.  Id. 

Turning to the liability of KS[2] for induced infringement, we noted that “a separate corporation related to [KS] licensed the infringing technology to [Firstliner] after [KS] received notice of the ‘012 patent.”  Id. at 695.  That corporation was Gruppe.  Because Gruppe was not a party to the case, and because “there were no findings that this affiliate was [KS]’s alter ego,” we vacated the district court’s holding and remanded for further proceedings on the inducement issue.  Id. 

D. Insituform III

On remand, the district court determined that Gruppe was not the alter ego of KS and that KS, therefore, was not liable for induced infringement.  District Court Opinion, slip op. at 45.  Additionally, the district court joined Giulio Catallo in his personal capacity as a defendant, and held him jointly liable for damages.  Joinder Order, slip op. at 9.  With both the liability and damages trials now concluded, the court awarded damages for infringement of the ‘012 patent by Process 1 under the doctrine of equivalents.  District Court Opinion, slip op. at 62.  Additionally, the court found CAT and Firstliner’s infringement to be willful and thus enhanced the actual damages award by fifty percent, id. at 55, and awarded Insituform attorney fees, id. at 57. 

Defendants appealed, raising a number of different issues.  These included (1) whether Insituform Netherlands, the new assignee of the ‘012 patent, had been improperly joined as a plaintiff; (2) whether Giulio Catallo, as president of CAT, had been improperly joined as an individual defendant jointly and severally liable for damages; (3) whether the district court had properly assessed damages following our decision in Insituform II; (4) whether the district court had erred in holding that the infringement that was found in the case was willful; and (5) whether the district court had erred in determining the extent to which accused infringers CAT and Firstliner instructed, and therefore induced, their licensees to use the infringing process.  For their part, plaintiffs cross-appealed the district court’s ruling that Gruppe was not the alter ego of KS and that KS therefore was not vicariously liable for induced infringement. 

After oral argument in the appeal, defendants filed motions asking us to apply our holding in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000) (en banc) (“Festo I”).  In Festo I, we ruled that a narrowing amendment to a claim limitation made for a substantial reason related to patentability completely bars the application of the doctrine of equivalents to that amended claim limitation.  Id. at 569.  Because our Festo I decision represented an intervening change in controlling authority, we revisited our infringement holdings in Insituform I and II.  Insituform Techs., Inc. v. Cat Contracting, Inc., 10 Fed. Appx. 871, 877 (Fed. Cir. 2001) (unpublished) (“Insituform III”). 

After reexamining the prosecution history of the ‘012 patent, we determined that, under Festo I, Insituform had made a narrowing amendment to claim 1 of the ‘012 patent.  Insituform III, 10 Fed. Appx. at 879-80.  The claim was narrowed, we pointed out, because claim 1 in its original form did not limit the number of cups that could be used to create a vacuum, whereas claim 1 in its amended form was limited to the use of one cup.  Id.  Accordingly, we held that “Insituform cannot assert any range of equivalents for this claim limitation [and] Process 1, which uses multiple cups, cannot infringe under the doctrine of equivalents, the only finding of infringement affirmed by this court.”  Id. at 880.  We therefore reversed the district court’s final judgment of liability and damages, and remanded the case with instructions “(i) to vacate all orders entered after the finding of infringement as moot, including those relating to damages and Catallo’s joinder as defendant; and (ii) to dismiss the case as to all parties.”  Id.  We thus did not address the several remaining issues noted above that originally were on appeal to us in Insituform III.  Plaintiffs petitioned the Supreme Court for a writ of certiorari, as did the plaintiff in Festo I.

E. Remand from the Supreme Court

The Supreme Court vacated and remanded our decision in Festo I.  Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 525 U.S. 722 (2002) (“Festo II”).  In Festo II, the Court overruled the complete bar we established in Festo I, establishing a flexible bar instead.  Id. at 738 (“[W]e have consistently applied the doctrine [of equivalents] in a flexible way, not a rigid one.”).  The Court also held, inter alia, that where the equivalent was “unforeseeable at the time of the amendment” or the rationale underlying the amendment bore “only a peripheral relation” to the equivalent, the patentee could rebut the so-called “Festo-presumption.”  Id. at 740.  That presumption is that a narrowing amendment made for a reason of patentability surrenders the entire territory between the original and the amended claim limitation.  Id.  Accordingly, the Court vacated our decision in Insituform III and remanded the case to us for further proceedings in light of its decision in Festo II.  Insituform Techs., Inc. v. Cat Contracting, Inc., 535 U.S. 1108 (2002).

F. Festo III

After the Supreme Court remanded Festo to us, we rendered our second en banc decision in the case.  Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 344 F.3d 1359 (Fed. Cir. 2003) (“Festo III”).  In Festo III, we summarized the three ways in which the Supreme Court stated that the Festo presumption could be rebutted.  Id. at 1369.  First, the patentee may demonstrate that “the alleged equivalent would have been unforeseeable at the time of the narrowing amendment.”  Id.  Second, the patentee may demonstrate that “the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question.”  Id.  Finally, there may be “‘some other reason’ suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent.”  Id. (citing Festo II, 535 U.S. at 740-41). 

ANALYSIS

The following issues are now before us on direct appeal:  (1) whether plaintiffs are barred from asserting infringement under the doctrine of equivalents by reason of prosecution history estoppel in light of Festo II and Festo III; (2) whether Insituform Netherlands, the new assignee of the ‘012 patent, was improperly joined as a plaintiff; (3) whether Giulio Catallo, president of CAT, was improperly joined as an individual defendant and held jointly and severally liable for damages; (4) whether the district court properly assessed damages following our decision in Insituform II; (5) whether the district court erred in holding that the infringement that was found in this case was willful; and (6) whether the district court erred in determining the extent to which accused infringers CAT and Firstliner instructed their licensees to use the infringing process.  On cross-appeal, we consider whether the district court erred in ruling that Gruppe was not the alter ego of KS, and that KS therefore was not vicariously liable for induced infringement.  We address the parties’ contentions in turn, beginning with the Festo issue.

I.

With the complete bar of Festo I overturned, we asked the parties to give us their views as to how we should decide the case in light of Festo II and Festo III.  In response, both plaintiffs and defendants urged us to decide the Festo issue on the record now before us.  We of course are not bound by the wishes of the parties on a question such as this.  However, because resolution of the issue turns on whether Insituform’s rationale underlying the narrowing amendment bore no more than a tangential relation to accused Process 1, and because the record has been fully developed on this point, we agree that we can decide the issue.  See Festo III, 344 F.3d at 1370 (“[W]hether the patentee has established a merely tangential reason for a narrowing amendment is for the court to determine from the prosecution history record without the introduction of additional evidence, except, when necessary, testimony from those skilled in the art as to the interpretation of that record.”). 

Plaintiffs urge that nothing in either Festo II or Festo III invalidates Insituform II, where we determined that plaintiffs were not barred by prosecution history estoppel from asserting infringement under the doctrine of equivalents.  Plaintiffs contend that any presumption of surrender is rebutted because the rationale underlying the amendment narrowing claim 1 to a single cup process bears at most a tangential relation to the infringing equivalent—the multiple-cup method of Process 1.  Specifically, plaintiffs assert that the reason for the amendment was to overcome the prior art teaching of a single vacuum source at the far end of the tube liner.  As such, plaintiffs argue, the amendment is, at most, only tangentially related to Process 1, which places multiple cups near the resin front.

For their part, defendants note that claim 1, as originally filed, covered a process using single or multiple cups at any location downstream of the resin front.  See Insituform I, 99 F.3d at 1108.  They also note that we construed claim 1, as amended, to cover a single vacuum cup, which inherently creates a discontinuous vacuum.  Id. at 1106.  Defendants thus argue that accused Process 1 falls squarely within the territory surrendered by the narrowing amendment.

For the reasons which follow, we hold that plaintiffs have rebutted the Festo presumption that a narrowing amendment made for a reason of patentability surrenders the entire territory between the original claim limitation and the amended claim limitation.  See Festo II, 535 U.S. at 740-41.  We reach this conclusion because we conclude that the prosecution history establishes that “the rationale underlying” the amendment narrowing the scope of literal claim coverage from multiple cups to a single cup bears “no more than a tangential relation to the equivalent in question,” accused Process 1.  Id.  Therefore, application of the doctrine of equivalents in this case was not barred.  Accordingly, we again affirm the judgment of the district court that Process 1 infringed claim 1 of the ‘012 patent under the doctrine of equivalents.[3] 

In Insituform I, we construed claim 1 of the ‘012 patent as limited to “a process using only one vacuum cup which inherently creates a discontinuous vacuum.”  Id. at 1106.  Based upon that construction, we affirmed the district court’s JNOV that Firstliner’s Process 1, employing multiple cups beyond the resin, did not literally infringe claim 1.  Id.  As noted, we also held, however, that Insituform was not barred by prosecution history estoppel from asserting that Process 1 infringed claim 1 under the doctrine of equivalents.  Id. at 1109.  In so holding, we first looked at the original claims in Insituform’s application.  Of those, only the first four are relevant to this appeal.  Those claims recited:

1. A method of impregnating a flexible tube comprising an inner layer of resin absorbent material and an outer layer in the form of an impermeable film, wherein the resin absorbent layer is impregnated with a curable resin by applying a vacuum to the inside of a flexible tube whilst the resin is brought into impregnation contact with the resin absorbent material, the impermeable film serving as a means to prevent ingress of air into the interior of the tube, whilst the impregnation process is taking place.

 

2. A method according to claim 1, wherein the resin is introduced into one end of the tube in a quantity calculated effectively to impregnate all of the resin absorbent material of the tube, and the vacuum is applied to the interior of the tube, downstream of the resin mass, so that the resin will tend to flow towards the vacuum application region.

 

3. A method according to claim 2, wherein the lining tube containing the mass of resin is fed through a pressure applying nip, such as may be defined by a nip roller, which, together with the movement of the tube, squeezes the resin in a direction towards the region of the application of the vacuum, at the same time flattening the tube and assisting in the even distribution of the resin.

 

4. A method according to claim 2, wherein the vacuum is applied through a window in the film in the wall of the tube by means of a cup applied to said window and connected to a source of vacuum by means of a flexible hose, whereby the cup can move with the tube during its movement relative to said nip, the cup being moved and applied to a position spaced downstream from the previous window, said previous window being sealed by means of a patch or the like, whereby the process is repeated for respective lengths of the tube until the entire tube length has been impregnated.

 

As can be seen, the position and number of vacuum cups were not specified in independent claim 1.  Neither did claim 1 specify the location of the vacuum source.  Dependent claim 2 referred to the vacuum being applied to the interior of the tube, “downstream of the resin mass,” while dependent claim 3 stated that the resin is squeezed “in a direction towards the region of the application of the vacuum.”  It was only in dependent claim 4 that the inventor recited application of the vacuum through a window in the wall of the tube by means of a cup applied to the window, as well as repositioning of the cup.  All four claims were rejected over United States Patent No. 4,182,262 to Everson (“Everson”). 

We stated in Insituform I that the original four claims “were rejected over Everson, which 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.”  Id. at 1108.  The objection was overcome by amending claim 1 to include, in a different form, the limitations of original dependent claims 2-4.  Further examining the prosecution history, we determined that Insituform had stated to the examiner that the problem with Everson was that Everson’s method was ineffective when dealing with a long length of tube because it required an exceedingly large suction compressor.  We pointed out that Insituform solved this problem by placing the suction source closer to the resin front, thus allowing the use of a smaller suction compressor.  Id.  Based on our examination of the prosecution history, we concluded that Insituform was not estopped from asserting that Inliner’s multiple cup process infringed claim 1 of the ‘012 patent under the doctrine of equivalents:

[I]t cannot be said that a reasonable competitor could conclude that Insituform relinquished coverage of processes using either multiple vacuum sources or a continuous vacuum.  At no point did Insituform indicate that the Everson problem could be solved only in the manner used by Insituform, i.e., Insituform never stated that the problem could not be solved by using more than one vacuum source or a continuous vacuum.  Rather, the only express limitation put on the invention by Insituform was the use of a vacuum source close to the resin.

 

Id. at 1109.  We remanded the case to the district court for further proceedings on whether Process 1 infringed claim 1 under the doctrine of equivalents.

On remand, the district court held that Process 1 infringed claim 1 under the doctrine of equivalents, and the case returned to us on appeal in Insituform II.  On appeal, Firstliner argued that Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), issued after Insituform I, limited the doctrine of equivalents so that it could not apply in the case.  Firstliner pointed to Warner-Jenkinson’s 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.  Firstliner asserted that when Insituform amended claim 1 in response to the examiner’s 35 U.S.C. § 103 rejection over Everson, it necessarily gave up coverage of any process in which the vacuum was created at multiple vacuum sources because it provided no explanation for that narrowing amendment.  Insituform II, 161 F.3d at 691. We rejected this argument, pointing out that, during prosecution, Insituform had explained the reason for the amendment of claim 1:

The stated reason . . . for Insituform’s amendment to overcome the Everson reference was to avoid the need to use a large compressor when the vacuum is created a significant distance from the resin source.  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.

 

Id. at 692 (citation omitted, emphasis in original).  Having rejected Inliner’s prosecution history estoppel argument, we went on to affirm the district court’s judgment of infringement under the doctrine of equivalents.  Id. at 692-93.  As noted above, however, we subsequently reversed the judgment of infringement in Insituform III based on our short-lived complete bar rule arising out of Festo I. 

In our view, Insituform has rebutted the Festo presumption.  The prosecution history and our discussion of that history in Insituform I and II compel the conclusion that the amendment limiting the literal scope of claim 1 to a single cup process bears “only a tangential relation,” if that, “to the equivalent in question,” a process using multiple cups.  The question we must address is “whether the reason for the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent.”  Festo III, 344 F.3d at 1365.  As the discussion above indicates, the narrowing amendment in this case was for the purpose of distinguishing the invention over Everson.  Insituform made it clear that the difference between its process and Everson was that its process did not have the disadvantage of the Everson process of a large compressor at the end of the liner.  There is no indication in the prosecution history of any relationship between the narrowing amendment and a multiple cup process, which is the alleged equivalent in this case.  Thus, we hold that plaintiffs have successfully rebutted the Festo presumption by establishing that the amendment narrowing the claimed invention from multiple cups to a single cup was tangential to accused Process 1, which used multiple cups attached at different points along the liner tube.  We therefore affirm the judgment of infringement under the doctrine of equivalents.

Because we have sustained the judgment of infringement, we must consider the several additional issues that were mooted when we reversed the judgment of infringement under the short-lived complete bar rule arising out of Festo I. 

II.

We consider first the issues raised by defendants in their direct appeal.  Defendants appeal (1) the joinder of Insituform Netherlands, (2) the joinder of Catallo in his individual capacity, (3) the damages award for infringement by Process 1, (4) the district court’s willfulness determination, and (5) the extent to which CAT/Firstliner induced infringement by their licensees. 

A. Joinder of Insituform Netherlands

Defendants appeal the joinder of Insituform Netherlands.  According to defendants, the current owner of the ‘012 patent, Insituform Netherlands, never filed suit and was named to this litigation only because of a misrepresentation to the district court in 1994, after the case was reassigned to a new judge.  They assert that the district court’s 1994 decision adding Insituform Netherlands as a party was in error and that no properly named party has standing to sue for damages.  Plaintiffs respond that the district court acted well within its discretion (i) in granting the joint 1994 motion that Insituform Netherlands be added as a party, and (ii) in refusing to alter that decision in 1999. 

The original corporate plaintiff, and owner of the ‘012 patent, was Insituform Licensees B.V.  Insituform Licensees B.V. filed this lawsuit in 1990.  In 1992, the case went to trial.  At that time, the plaintiffs were Insituform Licensees B.V.; Insituform of North America, Inc.; and Insituform Gulf South, Inc.  The defendants were CAT, MSC, KS, and Firstliner. 

Following a jury trial, a verdict, and after a new trial was ordered, Insituform Licensees B.V. assigned the ‘012 patent to Insituform Netherlands.  The assignment included the right to sue for past infringement.  At the time of the assignment, Insituform Netherlands was not a party to the lawsuit, and it did nothing to join the suit for two years.  On November 30, 1994, the parties entered a joint motion asking the court to make Insituform Netherlands a party.  The motion stated that “legal title to the patent in suit has been transferred from Insituform Licensees B.V. to Insituform (Netherlands) BV.”  Plaintiffs also represented to defendants and to the district court that Insituform Licensees B.V. had changed its name to Insituform Netherlands.  This was not technically true.  While ownership of the patent had, indeed, changed hands, Insituform Licensees B.V. was still an existing corporate entity at the time of the motion.  After the motion to join Insituform Netherlands was granted, defendants discovered the alleged misrepresentation and, on that basis, now challenge Insituform Netherlands’ standing. 

Probably to remedy what they perceived to be a potential defective parties problem, plaintiffs, in 1999, sought leave to amend their pleadings to include Insituform North America, Inc.[4] and, if necessary, Insituform Netherlands as parties under Fed. R. Civ. P. 15(a) and 21.  The district court stated that “[Insituform Netherlands] was made a party to this suit by order of this court on November 30, 1994.”  District Court Opinion, slip op. at 21.  The court also stated that “the rights of the legal patent owner have been at issue since the inception of this case and . . . [Insituform Netherlands] has presented evidence of recoverable monetary damages that Defendants have been able to rebut at trial.  Therefore, Defendants would not be prejudiced if [Insituform Netherlands] is recognized as a party plaintiff in this suit.”  Id. at 21-22.  In other words, the district court ruled that it had already joined Insituform Netherlands as a party in November 1994, and it refused to change that decision in 1999, despite the arguments of defendants.

Because the joinder issue is not unique to patent law, we apply the law of the regional circuit.  McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1357 (Fed. Cir. 2001) (“A district court’s decision to grant or deny a motion for leave to join a party involves a procedural question that raises no special issues relating to patent law, and therefore [regional circuit] law applies.”); Datascope Corp. v. SMEC, Inc., 962 F.2d 1043, 1045 (Fed. Cir. 1992) (Regional circuit law determines “the standard for determining whether the district court abused its discretion in denying [the patentee] leave to amend” its complaint to add a new party.).  Rule 15(a) provides that a party may amend its pleadings “only by leave of court or by written consent of the adverse party; and leave shall be freely given when justice so requires.”  Fed. R. Civ. P. 15(a).  Rule 21 states that “parties may be dropped or added by order of the court on motion of any party or of its own initiative at any stage of the action and on such terms as are just.”  Fed. R. Civ. P. 21.  In applying Rule 21, the court is governed by the liberal amendment standards of Rule 15(a).  See McLellan v. Miss. Power & Light, 526 F.2d 870, 873 (5th Cir. 1976).  The decision to grant or deny a motion for leave to amend thus lies within the sound discretion of the trial court.  Jacobsen v. Osborne, 133 F.3d 315, 318 (5th Cir. 1998); Datascope Corp., 962 F.2d at 1045.  The Fifth Circuit has stated that leave should be granted “in the absence of any apparent or declared reason—such as undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party by virtue of allowance of the amendment, [or] futility of amendment.”  Jacobsen, 133 F.3d at 318. 

The district court exercised its discretion in this case fully aware of plaintiffs’ alleged misrepresentation in the 1994 joint motion and determined that defendants would suffer no prejudice were Insituform Netherlands joined as a party.  District Court Opinion, slip op. at 21-22.  We discern no abuse of discretion in this decision, and thus affirm the district court’s ruling.[5]  We have considered the defendant’s other arguments on this point and find them not persuasive.

B. Joinder of Giulio Catallo

Defendants appeal the joinder of Giulio Catallo as a defendant in his individual capacity.  According to defendants, the addition of Catallo as a party to this suit violated due process and was contrary to the Supreme Court’s decision in Nelson v. Adams U.S.A., Inc., 529 U.S. 460 (2000).  For their part, plaintiffs distinguish Nelson and rely on our decision in Fromson v. Citiplate, Inc., 886 F.2d 1300 (Fed. Cir. 1989).  Plaintiffs assert that Catallo is the main executive officer of both CAT and Firstliner and (1) had controlling authority of their day-to-day operations, (2) was directly and actively involved in all aspects of the litigation, and (3) was individually responsible for all of the conduct that led the district court to increase damages and award attorney’s fees.  As explained below, the district court’s ruling on this point is supported by our decision in Fromson, and we see no clear error in the court’s interpretation of the facts.  We accordingly affirm the court’s decision on this point. 

Giulio Catallo is the sole owner of defendants CAT and Firstliner.  He also is president of both corporations.  Plaintiffs first attempted to join Catallo in his individual capacity in January of 1991, before the first infringement trial in the case.  That motion was denied without prejudice and without opinion.  Plaintiffs renewed their motion after the infringement trial (the trial for damages was bifurcated) in July 1991.  This motion also was denied without prejudice and without opinion.  In each case, the reason asserted for the joinder of Catallo was that he was “directly responsible for all of the activities of CAT and INLINER [and] was clearly the moving force behind infringement [and] personally financially benefited from the payments made [under one of the contracts found to be infringing.]”  Additionally, plaintiffs asserted that Catallo was personally a licensee of the accused process because he signed a license agreement twice, on behalf of himself and as President of Firstliner.  

The damages portion of the case was tried in September 1997.  After trial, the court found that defendants’ infringement had been willful.  In July 1999, plaintiffs moved again to add Giulio Catallo as a defendant.  In so doing, they argued that Catallo’s corporations were a “real credit risk.”  They also argued that Catallo was a personal tortfeasor.  Finally, they urged that in the intervening years (1991-1999) many facts had come to light that weighed in favor of making Catallo personally liable as an individual party.  

Defendants acknowledge that a corporate entity may be disregarded if doing so will prevent fraud, illegality, injustice, a contravention of public policy, or prevent the corporation from shielding someone from criminal liability.  See Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 552 (Fed. Cir. 1990).  They argue, however, that none of these reasons were present in this case.  They state that Catallo “was merely acting in accordance [with] the duties and scope of his position” and that he “had a good faith belief and basis that the Firstliner process did not infringe any Insituform patents when the contracts were performed.”  In short, defendants contend that there was no reason to pierce the corporate veil in this case. 

In an August 30, 1999 order, the district court granted plaintiffs’ motion to join Giulio Catallo.  Joinder Order, slip op. at 9.  In granting this third request to add Catallo as a defendant, the district court recognized that it was faced “with the uncommon situation where an individual is sought to be added as a party after the conclusion of trial.”  Id. at 5.  With respect to the propriety of adding Catallo as a defendant, the district court relied on our decision in Ohio Cellular Products Corp. v. Adams, U.S.A., Inc., 175 F.3d 1343 (Fed. Cir. 1999), rev’d sub nom. Nelson v. Adams, U.S.A., Inc., 529 U.S. 460 (2000), which was, at that time, pending before the Supreme Court.  The court also pointed to our decision in Fromson.  With respect to the personal liability of Catallo, the court relied on Walker v. Federal Deposit Insurance Corp., 970 F.2d 114, 122 (5th Cir. 1992), where the Fifth Circuit stated that “[a]n officer is individually liable for any tortious conduct that he committed in connection with his corporate duties . . . .  If a corporate officer knowingly participates in a tortious act, there is no need to pierce the corporate veil in order to impose liability.”  In light of the facts that led to a finding of willful infringement, and because the court believed that Catallo “was personally responsible for many, if not all, of the aggravating facts which led this court to award attorney’s fees and enhanced damages,” Joinder Order, slip op. at 7, it granted the motion to add Catallo as a defendant in his individual capacity, id. at 9. 

As noted above, because the amendment of a pleading to add a party is not unique to patent law, we apply the law of the regional circuit.  McGinley, 262 F.3d at 1357.  We thus review a district court’s decision to add a party pursuant to Rules 15 and 21 of the Federal Rules of Civil Procedure for an abuse of discretion.  Jacobsen, 133 F.3d at 318.  Our decision in Ohio Cellular, upon which the district court relied, was subsequently overturned by the Supreme Court.  Nelson, 529 U.S. at 472.  Resolution of this issue thus turns on whether the facts of this case fall more closely under the Supreme Court’s decision in Nelson, or our decision in Fromson, which the Supreme Court distinguished in Nelson.  If the facts are closer to Nelson, then the district court decision is incorrect as a matter of law, and Catallo was improperly joined.  If the facts are closer to Fromson, then the district court decision should be affirmed.

In Nelson, Ohio Cellular Products Corp. (“OCP”) sued Adams, U.S.A., Inc. (“Adams”) for patent infringement.  Eventually, the action was dismissed and Adams was awarded costs and attorney fees.  Nelson, 529 U.S. at 462.  Adams, fearful that OCP would be unable to pay, moved to amend its pleadings pursuant to Fed. R. Civ. P. 15 to include Nelson, the sole shareholder of OCP, as a party.  Id.  The district court granted the motion and simultaneously subjected Nelson to the judgment, a decision we subsequently affirmed in Ohio Cellular. 

The Supreme Court reversed our decision in Ohio Cellular on due process grounds.  The Court determined that Nelson was never afforded a proper opportunity to respond to the claim against him.  Id. at 467.  He was never served with an amended pleading, nor was any such pleading actually composed and filed in the court.  Id. at 466.  Nor, after the amendment naming him as a party, was Nelson accorded ten days to state his defenses against personal liability for costs and fees.  Id.  Instead, judgment was entered against him the moment permission to amend the pleading was granted.  Id.  The Court stated that “appeal after judgment, in the circumstances this case presents, did not provide an adequate opportunity to defend against the imposition of liability.”  Id.  Finally, the Court noted that Adams never once sought to sue Nelson individually until after judgment was entered against Ohio Cellular.  Id. at 467.

In Fromson, Citiplate, Inc. (“Citiplate”) was sued by Howard A. Fromson (“Fromson”) for patent infringement.  Fromson moved before trial to add the individual owners of Citiplate as parties, because he suspected that the defendant corporation might not be able to pay a judgment against it.  Fromson, 886 F.2d at 1301.  The district court initially denied the motion because of defendant Citiplate’s assurances that its financial condition was sound.  Id.  These assurances turned out to be false.  After judgment had been entered, the court allowed Fromson to amend its original complaint to add the individual owners of Citiplate as parties pursuant to Fed. R. Civ. P. 15(c).  Id. at 1302. 

We affirmed the district court’s decision.  In so doing, we relied upon the test articulated by the Supreme Court in Schiavone v. Fortune, Inc., 477 U.S. 21 (1986), to determine whether the requirements of Rule 15(c) had been met.  In Schiavone, the Court articulated a four-part test: 

Relation back is dependent upon four factors, all of which must be satisfied: (1) the basic claim must have arisen out of the conduct set forth in the original pleading; (2) the party to be brought in must have received such notice that it will not be prejudiced in maintaining its defense; (3) that party must or should have known that, but for a mistake concerning identity, the action would have been brought against it; and (4) the second and third requirements must have been fulfilled within the prescribed limitations period.

 

Schiavone, 477 U.S. at 29.  Based on this test, we determined that the “identity of interests between Citiplate and [its individual owners] is virtually complete and that [the individual owners] should have known all along that joinder was a possibility.”  Fromson, 886 F.2d at 1304.  We concluded that the owners of Citiplate “themselves created the ‘mistake’ respecting the identity of the proper party rightfully to be sued and capable of responding to damages.”  Id. 

The original 1991 motions to add Giulio Catallo presumably were denied because the district court believed defendants’ assertions that Catallo “was merely acting in accordance [with] the duties and scope of his position” and that he “had a good faith belief and basis that the Inliner process did not infringe any Insituform patents when the contracts were performed.”  When all the facts were determined following the 1997 damages trial, the court concluded that these assertions were not true, finding that Catallo “was personally responsible for many, if not all, of the aggravating facts which led this court to award attorney’s fees and enhanced damages.”  Joinder Order, slip op. at 7.  Furthermore, the court found that “Catallo diligently acted to protect his interests at every stage of the proceedings.”  Id.  The court subsequently exercised its discretion and granted the motion requesting that Catallo be added as a defendant.

Applying the Fifth Circuit’s abuse of discretion standard, we cannot say that the district court abused its discretion in adding Catallo as a defendant in his individual capacity.  In our view, the controlling case is Fromson, which the Supreme Court distinguished in Nelson.  As in Fromson, plaintiffs in this case sought from the very beginning to add Catallo as a defendant in his individual capacity on the theory that he was liable as an individual tortfeasor.  We have stated that “it is well settled that corporate officers who actively aid and abet their corporation’s infringement may be personally liable for inducing infringement under § 271(b) regardless of whether the corporation is the alter ego of the corporate officer.”  Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1579 (Fed. Cir. 1986).  The facts of this case are closer to Fromson than to Nelson.  Accordingly, we affirm the decision of the district court.

C. Damages

The overarching issue with respect to damages is the propriety of the district court’s procedure in reassessing damages in light of our decision in Insituform II.  The issues of infringement and damages were bifurcated in the case.  The damages trial concluded while the appealed infringement decision still was pending before us in Insituform II.  The damages trial was conducted under the assumption that Process 1 (using cups) and Process 2 (using needles) both infringed the ‘012 patent.  We determined, however, that only Process 1 infringed and that Process 2 did not.  Insituform II, 161 F.3d at 694.  Not knowing that the damages trial had already concluded, we stated that “the bifurcated damages trial will determine for what amount [defendants are] actually responsible . . . .”  Id. at 695.  

Following our decision in Insituform II, the district court, over the objection of defendants, chose to allow only limited discovery to address the issue of damages, instead of again opening up trial proceedings.  District Court Opinion, slip op. at 3-4.  The primary issue on which the final damages award turned was one of fact.  Specifically, the district court had to determine the date on which defendants stopped using infringing Process 1 and started using the non-infringing Process 2.  Id. at 35-36.  To that end, the court turned to the June 1991 trial testimony of Giulio Catallo, which indicated that defendants switched to Process 2 “sometime after June of 1991.”  Id. at 35.[6]  Defendants urged the court to rely instead on Catallo’s February 1995 trial testimony, where he indicated that defendants had shifted to needles exclusively by March of 1991.  Id.  During the discovery period, defendants presented deposition testimony of two additional witnesses to support their assertion that February 14, 1991, was the actual date by which they had stopped using Process 1.  This testimony was offered to establish a specific date and to buttress Catallo’s February 1995 testimony.  Id. at 35-36. 

Based on Catallo’s previous testimony at the 1991 and 1995 trials, and the new evidence presented during discovery, the district court amended its damages ruling.  The court stated that the deposition testimony of the two additional witnesses “do[es] nothing to persuade the Court that needles were actually being used for production purposes during the first quarter of 1991.”  Id.  In conclusion, the court found that “the totality of the testimony of these witnesses does make it appear credible that Defendants had switched to needles for production by the end of 1991 . . . .  Therefore, for purposes of these damages calculations, the court finds that a preponderance of the evidence necessitates that the Court enter a finding that Defendants had switched to the use of Process 2 for production by the beginning of 1992.”  Id. at 36. 

Defendants argue on appeal that rendition of judgment without a trial specifically focusing on damages relating to Process 1 violated their due process rights and our mandate in Insituform II.  For their part, plaintiffs respond that there was no procedural error in the district court’s damages calculation because, in their view, the district court did not make credibility choices except as to Catallo’s testimony in open court.  Additionally, plaintiffs argue that the due process requirements in a civil case, where only property interests are at stake, are much less stringent than in criminal cases. 

We agree with defendants that “the procedure chosen by the district court in this case was tantamount to a ‘trial by affidavit’ which has long been disapproved in our federal judicial system.”  Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).  Defendants characterize the trial court’s action as a “de facto summary judgment” proceeding because the district court essentially ruled based on deposition and affidavit testimony without the opportunity to observe or assess the credibility of the new witnesses.  We agree with defendants’ characterization and accordingly review the district court’s decision on this point under the summary judgment standard. 

We review summary judgment de novo.  Merck & Co., Inc. v. Mylan Pharms., Inc., 190 F.3d 1335, 1338 (Fed. Cir. 1999).  Summary judgment is appropriate where the record indicates “that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.”  Fed. R. Civ. P. 56(c).  We believe that the deposition testimony of the two additional witnesses, combined with the inconsistent testimony of Catallo at the two trials created a disputed issue of material fact upon which the quantum of damages turns.  The district court should have resolved this issue with trial-type proceedings.  We therefore vacate and remand on this issue so that the trial court may properly weigh the new evidence regarding the quantum of damages attributable to infringing Process 1.

D. Willful Infringement

The district court determined that defendants CAT and Firstliner’s infringement had been willful.  District Court Opinion, slip op. at 55.  One crucial aspect of the district court’s willfulness determination was the failure of CAT and Firstliner to obtain an opinion of counsel.  Id. at 52-54.  The district court stated that “due to a complete absence of competent advice regarding possible infringement of the ‘012 patent and a flagrant display of deliberate misconduct by CAT/[First]liner throughout this proceeding, the Court finds that actions of CAT/[First]liner’s evidenced the degree of willfulness necessary to support the award of enhanced damages.”  Id. at 54 (emphasis added).  In our recent en banc decision in Knorr-Bremse Systeme Fuer Nutzfahrzeuge, Gmbh v. Dana Corp., Nos. 01-1357, -1376, 02-1221, -1256, slip op. at 11 (Fed. Cir. Sept. 13, 2004), we addressed, inter alia, whether the failure of a defendant in a patent infringement suit to obtain an opinion of counsel “will provide an inference or evidentiary presumption that such opinion would have been negative.”  We held in Knorr-Bremse that “the failure to obtain an exculpatory opinion of counsel shall no longer provide an adverse inference or presumption that such an opinion would have been unfavorable.”  Id. at 12.  Such an inference was one factor upon which the district court based its willfulness determination in this case.  A determination of willfulness is made on consideration of the totality of the circumstances.  See Gustafson, Inc. v. Intersystems Indus. Prods., Inc., 897 F.2d 508, 510 (Fed. Cir. 1990).  Because elimination of the adverse inference arising from failure to obtain an opinion of counsel is a material change in the totality of the circumstances in this case, a fresh weighing of the evidence is required.  For this reason, we vacate the district court’s willfulness finding and remand for further proceedings.

E. Inducement of Infringement

The district court determined that CAT and Firstliner were liable for induced infringement under 35 U.S.C. § 271(b) on account of work done by their licensees.  District Court Opinion, slip op. at 45.  CAT and Firstliner raise two issues related to their alleged induced infringement.  First, they contend that there was a lack of proof with regard to the scienter element of induced infringement.  Second, they contend that there was insufficient evidence to sustain the district court’s determination of damages related to the licensees’ use of infringing Process 1.

Section 271(b) provides that “[w]hoever actively induces infringement of a patent shall be liable as an infringer.”  In order to succeed on a claim of inducement, the patentee must show both direct infringement and a certain level of intent on the part of the alleged inducer that the patent be infringed.  Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir. 1988).  However, there is a lack of clarity concerning whether the required intent must be merely to induce the specific acts or additionally to cause an infringement.  See Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 553 (Fed. Cir. 1990) (“The plaintiff has the burden of showing that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringements.”).  But see Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“Proof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement.”).  Nevertheless, we need not resolve any ambiguity in the case law on this point because there is sufficient evidence to support the district court’s finding under either standard. 

The district court relied on Manville and applied the stricter standard for induced infringement, requiring that “the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringement.”  District Court Opinion, slip op. at 40 (citing Manville, 917 F.2d at 553).  In finding the requisite intent, the court noted a response to a questionnaire submitted by one of CAT/Firstliner’s licensees.  Id. at 47.  The licensee claimed to have used infringing Process 1 in 100 percent of its contracts and that, with regard to how it acquired knowledge of the impregnation process, “[w]e expected to get directives from [Firstliner] representatives, and we did.”  Id. at 47-48.  The district court thus concluded that defendants taught their licensees to use Process 1.  Additionally, Firstliner did not begin its licensing program until 1992, which was after the original June 1991 trial.  CAT and Firstliner’s licensing activity thus occurred with full knowledge that Process 1 had been accused of infringing the ‘012 patent.  On this evidence, the court determined that the intent requirement was met. 

Intent is a factual determination particularly within the province of the trier of fact and may be inferred from all of the circumstances.  Water Techs., 850 F.2d at 669.  We review factual determinations by the court for clear error.  Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1345-46 (Fed. Cir. 2001).  “A finding is ‘clearly erroneous’ when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.”  United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948).  There is evidence in the record to support the district court’s finding that CAT/Firstliner induced infringement of the ‘012 patent and we are not left with the definite and firm conviction that a mistake has been committed.

We now turn to the method the district court used to arrive at the quantum of damages.  To assess damages, the court had to make findings as to the percentage of CAT/Firstliner licensees that were instructed to use infringing Process 1.  The issue before us is whether the district court correctly determined the extent to which defendants CAT and Firstliner instructed their licensees to use the infringing Process 1, thereby inducing infringement under 35 U.S.C. § 271(b).  Specifically, the issue is whether the district court’s method for determining the percentage of licensees who were instructed to use infringing Process 1 was flawed.  The parties agreed to resolve this aspect of the lawsuit by licensees’ questionnaire answers, subject to correction by deposition if either party so desired.  District Court Opinion, slip op. at 45-46.  It appears that the district court resolved this issue on the basis selected by the parties, and properly exercised its discretion in so doing.  Accordingly, we affirm the district court’s ruling on this point.

Defendants assert that the district court clearly erred in its methodology in determining the extent to which CAT/Firstliner instructed their licensees to use infringing Process 1.  Primarily, defendants argue that plaintiffs failed to carry their burden of proof with respect to the royalty revenue received by defendants CAT and Firstliner from use of the accused Process 1.  Plaintiffs respond that the parties stipulated to a procedure for establishing the extent to which CAT and Firstliner instructed their licensees to use Process 1.  Plaintiffs argue that the district court, having resolved the issue in the manner selected and stipulated to by the parties, should be given full deference as the factfinder in the case. 

As part of the stipulated procedure for determining the extent of induced infringement, a formal questionnaire was prepared and distributed to CAT/Firstliner’s licensees.  Only two licensees responded.  The first licensee said it was instructed to use Process 1; the second licensee said it was instructed to use Process 2.  The district court noted that the response to the questionnaires was “admittedly less than satisfactory.”  District Court Opinion, slip op. at 46.  However, the court judged that the poor response “was due in no small part to actions of Defendants in publishing statements in trade publications and in disseminating letters which implied that the finding of this Court would be reversed.”  Id. at 46-47.  The court concluded that “[b]ecause this limited statistical sampling was caused by no fault of Insituform, the Court will not, as Defendants have requested, limit Insituform’s damage claim for lack of supporting proof.  Instead, the Court will rely on these questionnaires in making its determination regarding the extent to which the licensees used the infringing methods and were induced to do so by the Defendants.”  Id. at 47.  Accordingly, the district court determined that half of CAT and Firstliner’s licensees were instructed to use infringing Process 1, while half used non-infringing Process 2. 

“[C]ertain subsidiary decisions underlying a damage theory are discretionary with the court, such as . . . [determining] the methodology for arriving at a reasonable royalty [citations omitted].  Such decisions are, of course reviewed under the abuse of discretion standard.”  SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161, 1164 (Fed. Cir. 1991).  “[A court] may . . . adopt in its discretion a reasonable way to determine the number of infringing units.  Such subsidiary choices are left to the court’s sound discretion under our precedent.”  Id. at 1165 n.2.  “Discretion, in this sense, is abused if the record contains no basis on which the district court rationally could have made its decision or if the judicial action is arbitrary, fanciful, or clearly unreasonable.”  Datascope Corp. v. SMEC, Inc., 879 F.2d 820, 827-28 (Fed. Cir. 1989). 

We do not believe that CAT/Firstliner has shown an abuse of discretion in this case.  Accordingly, we will not disturb the district court’s ruling that at least half of defendants’ licensees used Process 1, while the other half used Process 2.  District Court Opinion, slip op. at 48. 

III.

We now address plaintiff’s cross-appeal.  Plaintiffs appeal the district court’s decision declining to hold KS liable for infringement based on an alter-ego theory of induced infringement.  We begin with a brief review of the key entities and the facts surrounding the alleged alter ego relationship.

KS is a German corporation, and is one of the named defendants in the lawsuit.  As noted above, it is a sewer rehabilitation company, owned by Hans Mueller.  KS was (legally) using the Firstliner process in Germany under a patent owned by Mueller, United States Patent No. 4,770,562 (“the ‘562 patent”).  KS is also the entity that initially met with Giulio Catallo and demonstrated to him use of the accused process in Germany.  At that time, KS informed Catallo that it had been involved in patent litigation involving certain European patents held by one of the Insituform entities.  Nevertheless, Catallo remained interested in the KS process, and KS signed a letter of intent to license the process to him.  KS also prepared a “To Whom it May Concern” letter identifying Mr. Catallo as a “qualified licensee” of the process under the ‘562 patent.  It is undisputed that at the time of these activities, KS was not aware of the ‘012 patent.  Insituform II, 161 F.3d at 695. 

The non-party to whom plaintiffs are trying to link to KS via their alter ego argument is Kanal Mueller Gruppe International GmbH & Co, a German corporation also owned by Hans Mueller, which we refer to as “Gruppe.”  Gruppe is an export licensing company that was formed on January 1, 1990.  Gruppe is a separate corporate entity from KS.  According to KS, Gruppe took over responsibility for licensing the accused process and Catallo, from that point forward, dealt with Gruppe.  It appears that, at all times, Hans Mueller himself owned the relevant German patent and rights to license the accused process.  He did not officially transfer those rights to Gruppe until 1995.   

The present lawsuit was filed on February 2, 1990.  At that time, Gruppe, KS, and Catallo first became aware of the ‘012 patent.  Despite the lawsuit and notice of the ‘012 patent, Catallo persisted in pursuing a license for the accused process, which Gruppe granted.  The license agreement was executed in July 1990 and provided that Gruppe was obligated to provide instruction to CAT/Firstliner employees sent to Germany, and to provide CAT/Firstliner with continued technical support.  Plaintiffs assert that KS, the sewer rehabilitation company first contacted by Catallo, and not Gruppe, would have been the entity to provide such instruction and technical support to CAT/Firstliner.  In other words, plaintiffs essentially seek to impute the post-lawsuit licensing activity of non-party Gruppe to KS, who is the current party in the suit.  In doing so, plaintiffs argue that KS is the alter ego of Gruppe. 

The issue before the district court, as directed by this court in Insituform II, was whether Gruppe was the alter ego of KS.  Because the alter ego issue is not unique to patent law, this court applies the law of the regional circuit.  Panduit Corp. v. All States Plastic Mfg. Co, Inc., 744 F.2d 1564, 1574-75 (Fed. Cir. 1984).  In the Fifth Circuit, “resolution of the alter ego issue is heavily fact-specific and, as such, is peculiarly within the province of the trial court.”  United States v. Jon-T Chems., Inc., 768 F.2d 686, 649 (5th Cir. 1985); Bridas Sapic v. Gov. of Turkmenistan, 345 F.3d 347, 360 (5th Cir. 2003) (“Alter ego determinations are highly fact-based and require considering the totality of the circumstances in which the instrumentality functions.”).  The Fifth Circuit reviews alter ego determinations only for clear error.  Bridas Sapic, 345 F.3d at 360.  We will thus reverse only if, after reviewing the evidence as a whole, we are “left with the definite and firm conviction that a mistake has been committed.”  United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948).  “Errors of law, however, are not entitled to deference.”  Bridas Sapic, 345 F.3d at 359.  It is an error of law if a district court fails to take into account all of the aspects of the relationship between the entities alleged to have an alter ego relationship.  Id. at 359-60. 

The district court correctly noted that, “[u]nder Texas law, a finding by the court that [KS] is the alter ego of [Gruppe] permits the Court ‘to disregard the corporate fiction and pierce the corporate veil, thereby attributing [Gruppe’s] infringing conduct to [KS].”  District Court Opinion, slip op. at 42 (citing Gundle Lining Constr. Corp. v. Adams County Asphalt, Inc., 85 F.3d 201, 208 (5th Cir. 1996)).  The court noted that “under the alter ego theory, the court may disregard the corporate form ‘where a corporation is organized and operated as a mere tool or business conduit’ for another entity.”  Id. at 43 (citing Zahra Spiritual Trust v. United States, 910 F.2d 240, 245 (5th Cir. 1990)).  The court went on to list a number of factors typically considered when determining whether an entity is the alter ego of a corporation, noting that resolution of the issue is based on the totality of the circumstances.  Stuart v. Spademan, 772 F.2d 1185, 1197 (5th Cir. 1985). 

The district court then set forth the evidence that plaintiffs presented to show the alter-ego relationship:

(1)       [KS] and [Gruppe] are both 100% owned by Hans Mueller.

(2)       In 1989, [KS] held itself out as the owner and licensor of the ‘562 patent but in July of 1990, [Gruppe] held itself out as the owner and licensor, although legal title remained at all times in Hans Mueller.

(3)       The German defendants actively participated in and were represented by counsel in this litigation throughout its history, and all defendants, German and domestic, used the term “Kanal-Mueller” to identify both the German defendants [KS] and the German licensor [Gruppe].

 

District Court Opinion, slip op. at 44.

The district court concluded that “[t]he evidence does not show that either [KS] or [Gruppe] owned stock in the other at any relevant time.  Nor did Insituform present any proof that [KS] and [Gruppe] failed to follow separate corporate formalities.  In fact, Insituform does not submit any evidence relevant to the [Stuart] factors listed above.  Absent such proof, [KS] cannot be held liable as the alter ego of [Gruppe].”  Id. at 45.  Thus, the district court essentially pointed to a failure of proof on the part of plaintiffs to show that KS was the alter ego of Gruppe. 

The district court accurately stated the law with respect to plaintiffs’ alter ego theory of induced infringement.  Moreover, although plaintiffs attempt to characterize the district court’s ruling as an error of law, they do not tell us exactly what legal error the district court comitted.  For that reason, and because we discern no legal error, we are left to review the district court’s factual findings. 

The district court accurately summarized the totality of plaintiffs’ evidence.  On appeal, plaintiffs appear to merely reargue their version of the facts.  Indeed, plaintiffs praise the district court for “making no reference whatsoever” to allegedly inadmissible submissions by KS.  Given the highly deferential standard of review, we do not disturb either the district court’s finding that plaintiffs essentially failed to carry their burden of proof or its ultimate ruling that KS cannot be held liable as the alter ego of Gruppe.

CONCLUSION

In sum, we decide the issues before us as follows: 

(1)  Because plaintiffs are not barred from asserting infringement under the doctrine of equivalents, we affirm the judgment of infringement with respect to
Process 1. 

(2)  We affirm the ruling of the district court joining Insituform Netherlands as a party plaintiff. 

(3)  We affirm the ruling of the district court joining Giulio Catallo as a party defendant. 

(4)  We affirm the ruling of the district court with respect to CAT’s and Firstliner’s inducement of infringement, as well as its ruling with respect to the extent to which CAT and Firstliner instructed their licensees to use infringing Process 1. 

(5)  We vacate the outstanding award of damages and remand to the district court for (i) a determination of the factual issue of when defendants stopped using Process 1 and began using Process 2, and (ii) a calculation of the quantum of damages based upon that determination. 

(6)  We vacate the district court’s finding of willful infringement and remand for reconsideration in light of our en banc decision in Knorr-Bremse. 

(7)  On plaintiffs’ cross-appeal, we affirm the ruling of the district court declining to hold KS vicariously liable to plaintiffs under an alter-ego theory of induced infringement. 

COSTS

Each party shall bear its own costs.

 

AFFIRMED-IN-PART, VACATED-IN-PART, and REMANDED

United States Court of Appeals for the Federal Circuit

 

99-1584, 00-1005

 

INSITUFORM TECHNOLOGIES, INC.,

INSITUFORM (NETHERLANDS) B.V.,

and INSITUFORM GULF SOUTH, INC.,

 

Plaintiffs-Cross Appellants,

 

v.

 

CAT CONTRACTING, INC.,

FIRSTLINER U.S.A., INC., and GIULIO CATALLO,

 

Defendants-Appellants,

 

and

 

MICHIGAN SEWER CONSTRUCTION COMPANY,

 

                                                                        Defendant-Appellant,

 

and

 

KANAL SANIERUNG HANS MUELLER GmbH & CO. KG,

 

                                                                                                Defendant-Appellee.

 

 

 

Before MAYER, Chief Judge, MICHEL, and SCHALL, Circuit Judges.

 

PER CURIAM

ORDER

The Supreme Court vacated the judgment in this case, Insituform Technologies, Inc. v. CAT Contracting, Inc., 10 Fed. Appx. 871 (Fed. Cir. 2001) (non-precedential decision), and remanded the case to this court on June 3, 2002, “for further consideration in light of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.”  Insituform Techs., Inc. v. CAT Contracting, Inc., 535 U.S. 1108 (2002).  Following the Supreme Court’s decision in Festo, this court issued a second en banc Festo decision.  See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003).  Following that decision, we requested that the parties submit briefs addressing the consequences of both the Supreme Court’s decision in Festo and this court’s subsequent en banc decision for this case. 

After considering the parties’ submissions, we vacated the judgment of the United States District Court for the Southern District of Texas awarding damages to plaintiffs for infringement of United States Patent No. 4,366,012, Insituform Techs., Inc. v. Cat Contracting, Inc., No. H-90-1690, slip op. (S.D. Tex. Aug. 31, 1999), and remanded the case for further proceedings in light of the Festo cases.  Insituform Techs., Inc. v. CAT Contracting, Inc., 87 Fed. Appx. 180 (Fed. Cir. 2004) (nonprecedential order).  After considering the subsequent Petition for Rehearing and Response, we conclude that the case may be decided on the merits based on the record now before us. 

Accordingly,

IT IS ORDERED THAT

(1)  The Petition for Rehearing is granted. 

(2)  The Order vacating the district court’s judgment and remanding for further proceedings is hereby withdrawn and the decision attached to this Order is substituted in its place.

FOR THE COURT

 

_____________________                                                                                                                                                                 _________________________

                 Date                                                                                                                                                                                                                                            Jan Horbaly

                                                                                    Clerk

United States Court of Appeals for the Federal Circuit

 

02-1533

 

 

UNIVERSITY OF WEST VIRGINIA, BOARD OF TRUSTEES,

 

Plaintiff-Appellee,

and

 

WEST VIRGINIA UNIVERSITY RESEARCH CORPORATION,

 

Third Party Defendant-Appellee,

and

 

JAMES EARL SMITH and INTEGRAL CONCEPTS, INC.,

 

Third Party Defendants,

 

v.

 

KURT L. VANVOORHIES,

 

Defendant/Third Party Plaintiff-

Appellant.

 

            David E. Tungate, Eckert Seamans Cherin & Mellott, LLC, of Pittsburgh, Pennsylvania, argued for plaintiff-appellee and third party defendant-appellee, The University of West Virginia, Board of Trustees and West Virginia University Research Corporation.  With him on the brief were Andrew G. Fusco and Jeffrey A. Ray, of Morgantown, West Virginia.

 

                        Robert A. Dunn, Dinnin & Dunn, P.C., of Auburn Hills, Michigan, argued for third party defendant/third party plaintiff-appellant Kurt L. VanVoorhies.  With him on the brief was Michael T. Raggio.  Of counsel on the brief were Kenneth A. Martin, Martin & Associates, of Washington, DC; and William A. Kolibash, of Philips, Gardill, Kaiser & Altmayer, of Wheeling, West Virginia.

 

 

Appealed from: United States District Court for the Northern District of West Virginia

 

Judge W. Craig Broadwater

United States Court of Appeals for the Federal Circuit

                                                           

02-1533

 

 

UNIVERSITY OF WEST VIRGINIA, BOARD OF TRUSTEES,

 

                                                                                                Plaintiff-Appellee,

 

and

 

WEST VIRGINIA UNIVERSITY RESEARCH CORPORATION,

 

                                                                                    Third Party Defendant-Appellee,

 

and

 

JAMES EARL SMITH and INTEGRAL CONCEPTS, INC.,

 

Third Party Defendants,

 

v.

 

KURT L. VANVOORHIES,

 

Defendant/Third Party Plaintiff-Appellant.

                                    ___________________________

 

                                    DECIDED:  September 3, 2003

                                    ___________________________

 

 

Before LOURIE, CLEVENGER, and PROST, Circuit Judges.

 

CLEVENGER, Circuit Judge.

 

 

            Kurt L. VanVoorhies ("VanVoorhies") appeals from the denial of his motion pursuant to Federal Rules of Civil Procedure 59 and 60 for relief from an order requiring the assignment of certain patents to the University of West Virginia

Board of Trustees (the "University").  Because the district court abused its discretion in denying VanVoorhies's motion for relief, we reverse.

I

A

This appeal has its roots in an ownership dispute which was previously before this court.  See Univ. of W. Va. v. VanVoorhies, 278 F.3d 1288 (Fed. Cir. 2002) ("UWV I").  That dispute originated in the early 1990s, when VanVoorhies was a graduate student at the University.  Id. at 1292. 

In 1991, VanVoorhies co-invented a contrawound toroidal helical antenna, which became embodied in U.S. Patent Application 07/992,970 (the "'970 Application") and later issued as U.S. Patent No. 5,442,369 (the "'369 Patent").  Id.  As required by the applicable University patent policy, VanVoorhies and his co-inventor assigned their rights to the '369 patent to the University.  Id. 

In December of 1993, around the time he received his doctoral degree from the University, VanVoorhies invented a half-wave bifilar contrawound toroidal helical antenna (the "second invention").  Id. at 1293.  Initially, VanVoorhies informed the University about the second invention and urged the University to obtain patent coverage for that new matter.  Id.  He subsequently changed his mind, and declined to respond when the University sent him a draft application for the second invention.  Id.  Despite VanVoorhies's lack of response, the University claimed coverage for the second invention through U.S. Patent Application 08/486,340 (the "'340 Application"), which listed VanVoorhies as the inventor and would ultimately issue as U.S. Patent No. 6,028,558 (the "'558 Patent").  While the University sought patent protection for the second invention, VanVoorhies independently submitted a number of patent applications directed to the same second invention: (1) U.S. Patent Application 08/514,609 (the "'609 Application"), which would issue as U.S. Patent No. 5,743,353 (the "'353 Patent"); (2) U.S. Patent Application 08/514,610 (the "'610 Application"), which was filed to provoke an interference with the '340 Application; and (3) a third patent application, which was a continuation of the '609 Application and which would issue as U.S. Patent No. 5,952,978 (the "'978 Patent").  Id. 

Two years later, the University sued VanVoorhies, alleging that the inventor breached his duty to assign the second invention.  Id. at 1294.  VanVoorhies responded by filing extensive counterclaims and third-party complaints.  Id.  The district court disposed of numerous issues in the case on summary judgment and issued a final ruling in favor of the University on May 25, 2000 (the "May 25 Order").

On appeal from that summary judgment, we affirmed all of the district court's determinations.  Id. at 1299-1305.  Most relevant to this instant appeal, we "affirm[ed] the district court's grant of summary judgment that VanVoorhies breached his obligation to assign the '340 and '609 applications to WVU, and we affirm[ed] its order requiring him to execute an assignment of those applications and the issued patents based thereon."  Id. at 1299. 

B

In light of our ruling in UWV I, the University asserted its rights to VanVoorhies's patents and pending patent applications.  This assertion of rights was the genesis of this second appeal.

In March of 2002, the University asked VanVoorhies to assign the '340, '609 and '610 Applications and to disclose any additional applications already filed (or intended to be filed).  On April 29, 2002, VanVoorhies replied to the University's inquiry.  In that reply, VanVoorhies refused to execute the University's proposed assignment forms, but instead enclosed three newly drafted assignments which only conveyed rights to the patent applications referenced in the May 25 Order and to their respective foreign counterparts.  In that reply, VanVoorhies also requested the monetary incentive awards to which he believed he was entitled, and declined to make the requested disclosures.  He further stated that, unless the University reimbursed him for the $33,907 in fees already incurred to prosecute the assigned applications and their foreign counterparts, he would abandon his pending applications.  On May 10, 2002, the University responded that it would not pay the $33,907 in fees, intimated that VanVoorhies's demands constituted an improper attempt to modify the district court's final judgment, and demanded payment of court fees related to that court order.  VanVoorhies retorted in a letter dated May 16, 2002, that he had fully complied with the district court's ruling in submitting the newly drafted assignments enclosed with the letter dated April 29, 2002, and that he refused to pay anything but $370 in court costs.   

On June 4, 2002, the University sought relief from the district court by filing an ex parte motion for an order under Federal Rule of Civil Procedure 70[7] to enforce the May 25 Order.  On that same day, the district court granted the University's motion and entered an order pursuant to Rule 70 (the "Rule 70 Order"), instructing VanVoorhies's attorney to execute the University's proposed assignment forms.  The district court further issued a separate order on that same day setting a status conference for July 2, 2002.   

On June 18, 2002, VanVoorhies moved pursuant to Federal Rules of Civil Procedure 59 and 60 for relief from the Rule 70 Order.  The district court held a status hearing on July 2, 2002, and disposed of VanVoorhies's motion for relief by issuing a short order that same day (the "Order Denying Relief").  In that order, the district court denied VanVoorhies's motion for relief because the court "found that the three assignments at issue included patents that were part of the litigation in this matter . . . . [and] found that the patent assignments should be executed immediately by counsel for the defendant, Kenneth Martin, as ordered by the Court in its June 4, 2002 Order [the Rule 70 Order]."  As directed by the Order Denying Relief, VanVoorhies's attorney executed on behalf of his client the assignments prepared by the University.  The trial court also denied without prejudice VanVoorhies's oral motion for costs made during the status hearing.  

On July 31, 2002, VanVoorhies appealed the Order Denying Relief.  We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).[8] 

II

This appeal requires that we determine whether the district court properly denied VanVoorhies's motion for relief under Rules 59 and 60.  Because the denial of such a motion is a purely procedural question not unique to patent law, we review that denial under the law of the regional circuit, in this case, the Fourth Circuit.  Ajinomoto Co. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1350 (Fed. Cir. 2000) (applying Third Circuit law to review of Rule 59 motion); Marquip, Inc. v. Fosber Am., Inc., 198 F.3d 1363, 1369 (Fed. Cir. 1999) (reviewing denial of a Rule 60(b) motion under Seventh Circuit law).  The Fourth Circuit applies an abuse of discretion standard in reviewing the denial of a Rule 59(e) or 60(b) motion.  NOW v. Operation Rescue, 47 F.3d 667, 669 (4th Cir. 1995) (applying abuse of discretion standard to the review of a Rule 60(b) motion); Temkin v. Frederick Co. Comm'rs, 945 F.2d 716, 724 (4th Cir. 1991) (same in the context of Rule 59).  In the Fourth Circuit, a district court abuses its discretion when the court refuses to exercise its discretion, fails to adequately take into account judicially recognized factors constraining its exercise of discretion, or when the court's exercise of discretion rests on an erroneous factual or legal premise.  James v. Jacobson, 6 F.3d 233, 239 (4th Cir. 1993).

In this appeal, VanVoorhies argues that the trial court incorrectly denied his motion for relief because it erred in determining that the Rule 70 Order was properly granted.  If that is the case, then the court's denial would rest on an erroneous premise and would thus rise to the level of an abuse of discretion.  See Collison v. Int'l Chem. Workers Union, Local 217, 34 F.3d 233, 238-40 (4th Cir. 1994) (reversing denial of Rule 59 motion because the ruling challenged by the Rule 59 motion was legally erroneous).  To decide if an abuse of discretion occurred in this case, we must therefore decide whether the district court correctly issued its Rule 70 Order.

Under Rule 70, the trial court may order the performance of specific acts by a third party on behalf of a disobedient party "[i]f a judgment directs a party . . .  to perform any other specific act and the party fails to comply within the time specified."  Fed. R. Civ. P. 70.  According to VanVoorhies, the district court improperly acted under Rule 70, because he has faithfully complied with the district court's mandate by enclosing with his correspondence dated April 29, 2002, assignments mirroring the language of the May 25 Order.[9]  The University rejoins that the assignments prepared by VanVoorhies violated the May 25 Order by omitting three patents already adjudged to be the University's property: U.S. Patent Nos. 6,218,998, 6,239,760, and 6,320,550 (collectively, "the second generation patents"). 

Thus, the dispositive question for this appeal is whether VanVoorhies was required to assign the second generation patents to the University.  As conceded by the


parties, VanVoorhies's obligation to assign could possibly arise from only three sources: (1) the original assignment of the '970 Application; (2) the University patent policy; and (3) the May 25 Order.  We consider each of those sources in turn.

The original assignment of the '970 Application does not compel the inventor to assign his rights in the second generation patents to the University.  Indeed, the scope of that assignment agreement is limited by its plain language:

The undersigned does (do) hereby sell, assign, transfer and set over unto said assignee, its successors and assigns, the entire right, title and interest in and to said invention or inventions, as described in the aforesaid application, in any form or embodiment thereof, and in and to the aforesaid application; . . . also the entire right, title and interest in and to any and all patents or reissues or extensions thereof to be obtained in this or any foreign country upon said invention or inventions and any divisional, continuation, continuation-in-part or substitute applications which may be filed upon said invention or inventions in this or any foreign country; and the undersigned hereby authorize(s) and request(s) the issuing authority to issue any and all patents on said application or applications to said assignee or its successors and assigns.

 

UWV I, 278 F.3d at 1292-93 (emphases added).  Construing this contract de novo as a matter of law, it is clear that the assignment agreement only covers the exact invention embodied by the '970 Application; its reissues or extensions; and its immediate lineal descendants, including divisionals, continuations, continuations-in-part, or substitute applications.  As conceded by the University,[10] the second generation patents do not fall into any of those covered categories, and are therefore outside of the scope of the assignment agreement.  In other words, the University cannot base its ownership claim over the second generation patents on the assignment agreement related to the '970 Application.

            Similarly, the University patent policy cannot presently form the basis of VanVoorhies's obligation to assign the second generation patents.  That patent policy "applies to any invention conceived or first reduced to practice under terms of contracts, grants or other agreements," UWV I, 278 F.3d at 1292-93, and provides that the University "owns all inventions that are made by University personnel or made with substantial use of University resources."  Id. at 1298.  But whether or not the second generation patents fall within the scope of the patent policy remains to be decided, since they were not part of the original litigation.  Although the applications of those three patents were the subject of a discovery dispute resolved by the district court, the ownership of those three patents was never actually litigated, as evident from the complaint, the Joint Pretrial Order, and the summary judgment memorandum opinion.  The complaint leading to the first appeal did not mention the second generation patents, alleging solely that VanVoorhies's failure to assign the inventions disclosed in the '340, '609, and '610 Applications and patents issuing from those applications constituted a breach of duty.  Even the Joint Pretrial Order, which supersedes the pleadings pursuant to Federal Rule of Civil Procedure 16 and frames the issues remaining for trial, fails to mention the second generation patents.  Indeed, the sole issue for trial, according to the Pretrial Order, was whether the University owned the invention disclosed and claimed in the '609 Application, the '353 Patent, and the '978 Patent.  Furthermore, the summary judgment ruling, which obviated the need for a trial, did not address or even discuss the second generation patents.  The only issues resolved in that opinion were VanVoorhies's numerous counterclaims and the University's ownership claims to the '970, '340, '609, and '610 Applications based on a theory of breach of contractual duty.  As necessarily conceded by the University,[11] its assertion of ownership rights over the second generation patents based on the patent policy has yet to be adjudicated on the merits. 

Without the original assignment and the patent policy as available bases for the Rule 70 Order, the May 25 Order stands as the sole possible support for the conclusion that VanVoorhies had to assign the second generation patents.  And that potential support can arise from only two paragraphs—Paragraphs 6 and 7—which direct VanVoorhies to assign patents and patent applications.  Those two paragraphs provide:

The Court, therefore, ORDERS that

* * * *

6. The defendant, Kurt L. VanVoorhies, assign to the plaintiff all right, title and interest in Patent 6,028,558, Application '340 and any other patent issuing from Application '340, and all worldwide right, title and interest in the invention and technology embodied and disclosed therein, and to execute the declaration for Application '340 for filing on behalf of the plaintiff and in the United States Patent and Trademark Office;

 

7. The defendant, Kurt L. VanVoorhies, assign to the plaintiff all right, title and interest in Patent '353, patent '978, Application '610, and Application '609, and any patent issuing from such applications and all worldwide right, title and interest, in the inventions.

 

It is mainly on these two paragraphs that the University rests its assertion of ownership entitlement to the second generation patents.

On its face, Paragraph 7 does not embrace the second generation patents either explicitly or by implication.  Indeed, the plain language of that paragraph does not even mention those three patents or their respective applications.  Moreover, as the University admitted,[12] the phrase "any patent issuing from such applications" only encompasses immediate lineal descendants of the applications listed in Paragraph 7. Since the second generation patents are not immediate lineal descendants of any listed applications, they fall outside of the ambit of Paragraph 7.  

This leaves Paragraph 6.  Like Paragraph 7, the text of Paragraph 6 makes no explicit mention of the second generation patents or their applications.  And, as with Paragraph 7, the phrase "any other patent issuing from Application '340" only covers an immediate lineal descendant and cannot therefore include the patents at issue.  The University, however, points us to the remaining provision of that paragraph that requires VanVoorhies to assign all right, title and interest "in the invention and technology embodied or disclosed therein [in the '558 patent]."  Arguably, it is possible that the second generation patents may, or may not, be the "invention and technology embodied or disclosed" in the '558 patent and its underlying '340 Application.  To resolve that issue, a court would have to construe the claims as well as scrutinize and compare the disclosures of the second generation patents and the '558 patent.[13]  The district court did not do that in this case. 

Instead, the trial court based its Rule 70 Order on a finding "that the three assignments at issue included [the second generation] patents that were part of the litigation in this matter[,]" and on a determination that those three patents "were emerging from, related to" patents and applications listed in the May 25 Order.    Neither basis withstands scrutiny.  As discussed above, the University's ownership over the patents in suit has not yet been adjudicated on the merits; the finding that the patents in suit "were part of the litigation in this matter" is consequently clearly erroneous.  Similarly, the court's reliance on the "emerging from, related to" test is inappropriate, because that standard is inconsistent with the language in Paragraph 6, which gives the University rights "in the invention and technology embodied or disclosed [in the '558 patent]."  The "emerging from, related to" test is much too broad, and is thus incongruent with the standard of Paragraph 6.  To that extent, the trial court committed a legal error by using a standard inconsistent with the sole available basis for requiring VanVoorhies to assign the second generation patents without a full adjudication on the merits of the University's claims.

Consequently, the trial court legally and factually erred in concluding that VanVoorhies had to assign the patents in suit pursuant to Rule 70.  Because that conclusion cannot be legally sustained nor deemed harmless, we have no choice but to conclude that the district court abused its discretion in denying VanVoorhies's motion for relief from the Rule 70 Order pursuant to Rules 59 and 60.  We therefore reverse the Order Denying Relief and remand for the district court to fully consider the record and apply the correct legal standard.

On remand, the trial court must restore the status quo ante litem motam while it considers again the merits of the University's Rule 70 motion.  As a result of the improper denial of the motion for relief from the improvidently granted Rule 70 Order, the University has obtained ownership of the second generation patents and, on that basis, recorded the assignments with the PTO on July 11, 2002.  However, the University has yet to establish that either the May 25 Order or its patent policy gives it ownership over those patents.  Until it does so, those patents remain VanVoorhies's personal property.  See 35 U.S.C. § 261 (2000).  To avoid any possible prejudice, the district court shall first vacate its Rule 70 Order, and then take all necessary steps to restore the status quo as it was before the grant of the Rule 70 Order.  The status quo should be preserved pendente lite.

III

            VanVoorhies also requests that we address the district court's denial of his oral motion for costs related to the prosecution of certain patent applications.  We decline to do so. 

Such a request is premature, since the district court denied the oral motion without prejudice to VanVoorhies filing a renewed written motion.  In fact, the trial court "informed the defendant that he could file a written motion on the issue for further consideration by the Court."  Because the district court has not had the opportunity to make the factual findings necessary for appellate review and to reach a final conclusion on that issue, we decline to address it on first instance.  See Gearan v. Dep't of Health & Human Servs., 860 F.2d 426, 428 (Fed. Cir. 1988) (declining to address a fee application which was dismissed without prejudice until the agency had the opportunity to resolve factual disputes and reach a final ruling on the merits). 

IV

            Because the district court abused its discretion in denying VanVoorhies's motion for relief pursuant to Rules 59 and 60, we reverse and remand for proceedings consistent with this opinion.

 

REVERSED AND REMANDED

 

United States Court of Appeals for the Federal Circuit

05-1407

HONEYWELL INTERNATIONAL, INC.

and HONEYWELL INTELLECTUAL PROPERTIES, INC.,

Plaintiffs-Appellants,

v.

ITT INDUSTRIES, INC. and ITT AUTOMOTIVE, INC.,

Defendants-Appellees,

and

TG NORTH AMERICA CORPORATION,

TG FLUID SYSTEMS USA CORPORATION, and A. RAYMOND, INC.,

Defendants-Appellees.

Dan L. Bagatell, Perkins Coie Brown & Bain P.A., of Phoenix, Arizona, argued for plaintiffs-appellants. Of counsel on the brief were R. Terrance Rader and Glenn E. Forbis, Rader, Fishman & Grauer PLLC, of Bloomfield Hills, Michigan. Of counsel was Kristin L. Murphy, Rader, Fishman & Grauer PLLC.

Thomas N. Young, Young & Basile, P.C., of Troy, Michigan, argued for defendants-appellees, ITT Industries, Inc., et al.

Stephen L. Sulzer, Connolly Bove Lodge & Hutz LLP, of Washington, DC, argued for defendants-appellees, TG North America Corporation, et al. With him on the brief was James P. Calve.

Appealed from: United States District Court for the Eastern District of Michigan

Senior Judge Avern Cohn 

 

United States Court of Appeals for the Federal Circuit

05-1407

HONEYWELL INTERNATIONAL, INC.

and HONEYWELL INTELLECTUAL PROPERTIES, INC.,

Plaintiffs-Appellants,

v.

ITT INDUSTRIALS, INC. and ITT AUTOMOTIVE, INC.,

Defendants-Appellees,

and

TG NORTH AMERICA CORPORATION,

TG FLUID SYSTEMS USA CORPORATION, and A. RAYMOND, INC.,

Defendants-Appellees.

_____________________

DECIDED: June 22, 2006

_____________________

Before MAYER, LOURIE, and DYK, Circuit Judges.

LOURIE, Circuit Judge.

Honeywell International, Inc. and Honeywell Intellectual Properties, Inc. (collectively “Honeywell”) appeal from the final decision of the United States District Court for the Eastern District of Michigan granting summary judgment of noninfringement of U.S. Patent 5,164,879 in favor of ITT Industrials, Inc., ITT Automotive, Inc., TG North America Corporation, TG Fluid Systems USA Corporation, and A. Raymond, Inc. (collectively “ITT/TG”). Honeywell Int’l, Inc. v. ITT Indus., Inc., Civ. No. 02-73948 (E.D. Mich. April 27, 2005). Because the district court correctly 

 

construed the claim limitation “fuel system component” and determined that the accused products do not meet that limitation, we affirm its grant of summary judgment of noninfringement. We further conclude that under our modified construction of the claim limitation “electrically conductive fibers,” the accused products do not meet that limitation either, thereby providing a separate ground for affirming the district court’s grant of summary judgment of noninfringement.

BACKGROUND

The ’879 patent, entitled “Electrostatically Dissipative Fuel System Component,” discloses a fuel filter that is specially made for use in motor vehicles that have electronic fuel injection (“EFI”) systems. Before motor vehicles began using EFI systems, the housing of a fuel filter was commonly made of metal or a polymer material. ’879 Patent, col.1 ll.10-12 (filed July 1, 1991). Once vehicles began using EFI systems, as the ’879 patent’s written description recognizes, fuel filters with polymer housing began to break down and start leaking. Id., col.1 ll.17-20. It was discovered that the breakdowns were caused by the contact between the fuel, which flows at a high velocity in EFI systems, and the fuel filter’s polymer housing. The resultant friction strips electrons from the hydrocarbon fuel and traps them in the non-conductive polymer housing, which leads to an electrostatic charge buildup within the housing of the fuel filter. Id., col.1 ll.26-30. The charge continues to build up until it finally discharges by “arcing” onto the vehicle’s metal frame and becomes grounded. “Arcing” forms microscopic holes in the fuel filter’s housing. Id., col.2 l.59 to col.3 l.2. When enough microscopic holes are formed, the fuel begins to leak. Fuel filters with metal housing avoid the “arcing” phenomenon because they allow no charge buildup. The conductive nature of metal prevents the 

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electrons from being trapped inside the fuel filter and allows them to pass through to the vehicle’s frame. Fuel filters with housing made of polymer material, however, are more desirable than their metal housing counterparts because of their lower cost and weight. Id., col.1 ll.13-14.

The patented invention addresses the “arcing” problem in fuel filters with polymer housing by providing an electrically conductive pathway between the fuel filter and the vehicle’s metal frame. Id., col.3 ll.41-43. The electrically conductive pathway prevents the electrostatic charge from building up within the housing of the fuel filter. Id., col.3 ll.3-6. According to the written description, the electrically conductive pathway is created by incorporating small amounts of a “conductive filler material” into the polymer housing. Id., col.3 ll.47-51. The written description further discloses that stainless steel is an ideal “conductive filler material” because it has high conductivity, allowing it to be used in fibers with a high aspect ratio. Id., col.3 l.53 to col.4 l.13. The written description also notes that stainless steel fibers are ductile, which allows them to better maintain their integrity during melt-processing. Id. The benefits of stainless steel fibers are contrasted in the written description to electrically conductive carbon fibers, which are said to have less desirable characteristics, e.g., they must be used in fibers with smaller aspect ratios, are more rigid, and act as stress concentrators. Id., col.3 ll.56-60; col.4 ll.1-5.

Turning to the prosecution history of the patent in suit, the ’879 patent issued from a divisional application of U.S. Patent Application 575,260, which issued as U.S. Patent 5,076,920 and was entitled “Electrostatically Dissipative Fuel Filter.” Also issuing from a divisional application of the ’260 application was U.S. Patent 5,164,084, also 

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entitled “Electrostatically Dissipative Fuel Filter.” The drawing and written description sections for the ’879, ’920, and ’084 patents appear to be identical. See Honeywell Int’l, Inc. v. ITT Indus., Inc., 330 F. Supp. 2d 865, 871 (E.D. Mich. 2004). The patent examiner for the ’260 application issued a restriction requirement in that application because it claimed three distinct inventions: (1) a method for preventing breakdown of a fuel filter, (2) the fuel filter itself, and (3) a moldable polymeric material. Id. Faced with this restriction requirement, the patentee chose the first invention for immediate prosecution, a method for preventing breakdown of a fuel filter, and that became the claimed subject matter of what issued as the ’920 patent. The patentee filed divisional applications for the remaining inventions resulting in two other patents, the ’084 patent (for a fuel filter) and the ’879 patent (for a moldable polymeric material), the patent at issue in this case.

The ’879 application, as initially filed, was entitled “Electrostatically Dissipative Fuel Filter” and contained one independent claim directed to a “moldable material for fuel system components.”1 The patent examiner rejected the claim on the ground of, inter alia, indefiniteness under 35 U.S.C. § 112, ¶ 2. According to the examiner, it was “not clear what fuel system components [were] intended to be constructed of the

1 The ’879 application’s independent claim, as originally filed, read as follows:

Moldable material for fuel system components for communicating fuel to the engine of a motor vehicle, said motor vehicle having a common electrical plane maintained at a common electrical potential, said material comprising a polymer material having electrically conductive fibers distributed randomly throughout the material to provide an electrically conductive path through said components between the fuel communicated through said components and said common electrical plane. 

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electrically conductive moldable material.” In addressing the indefiniteness rejection, the patentee deleted the “moldable material for” language so that the claims were directed to a “fuel system component.” The patentee also argued that the independent claim was not indefinite because, although the specification only referred to fuel filters and fuel lines, “it is Applicant’s position that he is entitled to a claim broad enough to cover all fuel system components manufactured of the moldable material disclosed and claimed in the specification.” While the application was pending, the title of the ’879 application was changed to “Electrostatically Dissipative Fuel System Component,” because, the patentee contended, it “more accurately reflect[ed] the scope of the claims.” After an interview between the patentee and examiner, which resulted in the “arcing” limitation being added, the claims were allowed and the patent issued. Following a reexamination proceeding, the sole independent claim was further amended to recite “fuel injection system component” instead of “fuel system component” as the subject matter of the claims.

On October 2, 2002, Honeywell filed suit against ITT/TG for infringement of the ’879 patent. Claim 1 of the ’879 patent, the patent’s only independent claim, provides as follows:

Fuel injection system component for communicating fuel to the engine of a motor vehicle, said motor vehicle having an electrical plane maintained at a predetermined electrical potential, said fuel system component being made of a composite material comprising a polymer having electrically conductive fibers distributed randomly throughout the material to provide an electrically conductive path through said component between the fuel communicated through said component and said electrical plane, so that at least a portion of the electrically conductive path extends through the component to thereby prevent build-up of electrostatic charge in the fuel and the resultant arcing which causes the 

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breakdown of the polymer material comprising the fuel injection system component.

The products accused of infringement are “quick connects” manufactured and sold by ITT/TG. Quick connects are nut-like structures that join the various components of a fuel injection system together, such as a fuel line to a fuel filter. The accused quick connects have polymer housing that is interlaced with carbon fiber. ITT/TG denied the charge of infringement, and the district court subsequently held a Markman hearing to construe various limitations of the ’879 patent, including “fuel injection system component” and “electrically conductive fiber.”

The district court construed the “fuel injection system component” limitation to mean “a fuel filter.” In arriving at its construction, the court recognized that the ordinary meaning of the term “refers to any constituent part of the fuel injection system of a motor vehicle including, for example, fuel filters, fuel lines, and connectors.” Honeywell, 330 F. Supp. 2d at 878. The court also recognized that the patentee made statements during the prosecution of the ’879 and ’084 applications that could be interpreted to mean that the scope of the “fuel injection system component” limitation was broader than only fuel filters, at least in the patentee’s view.

Notwithstanding the ordinary meaning or the prosecution history, the court determined that the written description clearly limited the “fuel injection system component” to a fuel filter, and that the statements in the prosecution history could not be used to enlarge the content of the written description. Id. at 882-83. According to the court, on several occasions in the written description, the “invention” was identified to be only a fuel filter. Id. at 879. Moreover, the court explained, “[t]he entire specification of the ’879 patent, as well as the sole drawing, describe the elements and 

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operation of a fuel filter with electrically conductive fibers. No other parts are described.” Id. Given the written description, the court concluded that “the patentee characterized a fuel filter as the only embodiment of his invention, not merely a ‘preferred’ version of all possible embodiments.” Id. at 880.

The district court also construed the claim term “electrically conductive fibers” to mean “fibers of a material that conducts electricity, including, without limitation, metal and carbon.” Id. at 888. According to the court, that was the ordinary meaning of “electrically conductive fibers.” The court gave the term its ordinary meaning despite a detailed disclosure in the written description why metal fibers were preferable to carbon fibers. Id. at 884. In the court’s view, the disclosure was “not like the clear specification language defining the ‘invention’ as a fuel filter.” Id. The court determined that the disclosure distinguishing metal and non-metal conductive fibers merely reflected the patentee’s preferred embodiment. Id. at 884-85. The court further noted that the written description never stated that carbon fibers could not be used as electrically conductive fibers. Id.

After the court issued its claim construction, ITT/TG filed a motion for summary judgment of noninfringement, which the court granted. In concluding that the accused products did not infringe the ’879 patent, the court determined that quick connects are not fuel filters, and thus they do not literally infringe. Honeywell Int’l, Inc. v. ITT Indus., Inc., Civ. No. 02-73948, slip op. at 9 (E.D. Mich. May 17, 2005). Moreover, the court found that quick connects do not infringe under the doctrine of equivalents because they are not interchangeable with a fuel filter, and they do not compete commercially with fuel filters. Id. The also court determined that Honeywell could not invoke the doctrine 

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of equivalents to encompass the accused quick connects in view of the written description’s identification of a fuel filter as “the present invention.” According to the court, the patentee knew of fuel system components other than fuel filters, and that because he limited the claims to a fuel filter, all other fuel system components were dedicated to the public, and thus outside the reach of the doctrine of equivalents. Id., slip op. at 13-14.

The district court entered final judgment on April 27, 2005. Honeywell timely appealed, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

We review a district court’s grant of summary judgment de novo, reapplying the same standard used by the district court. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998); Stratienko v. Cordis Corp., 429 F.3d 592, 597 (6th Cir. 2005). Summary judgment is appropriate if there is no genuine issue as to any material fact and the moving party is entitled to a judgment as a matter of law. Fed. R. Civ. P. 56(c). “The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Claim construction is an issue of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), that we also review de novo, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).

I.

On appeal, Honeywell argues that the district court erred by limiting the “fuel injection system component” limitation to a fuel filter and including no other component of a fuel injection system. In doing so, Honeywell contends that the court imported a 

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limitation from the specification into the claims and thereby improperly limited the scope of the claims to the specification’s preferred embodiment. According to Honeywell, nothing in the specification explicitly limits the claim term to a “fuel filter.” Honeywell relies on a statement contained in the specification referring to “the metallic components used in prior art systems,” ’879 Patent, col.1 ll.32-33, to argue that the term “component” was meant to be broad. It also cites the patent’s abstract, which summarized the invention using the term “component,” and the title of the patent as amended, to further argue that the specification did not limit the “fuel injection system component” to a fuel filter.

In addition, Honeywell points to the prosecution history in assigning error to the district court’s construction of the “fuel injection system component” limitation. According to Honeywell, the patentee stated during prosecution that the intended scope of the claims was to include “all fuel components manufactured of the moldable material disclosed and claimed in the specification.” Honeywell also notes that the patent examiner issued a restriction requirement during prosecution of the ’084 application (which also included claims to “fuel filters”) because “the fuel system component [claims] do[ ] not specifically require that the component be a fuel filter.”

Mainly reiterating the points made by the district court in its claim construction decision, ITT/TG responds that the claim term “fuel injection system component” was correctly limited to a fuel filter. ITT/TG also argues, however, that the court erred in its construction of the “electrically conductive fibers” limitation. ITT/TG contends that the court should have construed that term to include only metal fibers with a high aspect ratio, not carbon fibers. According to ITT/TG, the written description compared the 

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properties of metal and carbon fibers, and “disparaged” the use of the latter as an electrically conductive fiber. ITT/TG contends that there was a clear disavowal of carbon fibers from the scope of the claims. Moreover, because the accused quick connects are indisputably made with carbon fibers, ITT/TG asserts that there can be no infringement either literally or under the doctrine of equivalents.

We agree with the district court that the claim term “fuel injection system component” is limited to a fuel filter. In Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc), this court recognized that “claims ‘must be read in view of the specification, of which they are a part.’” We further stated that “the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (internal citations omitted). Here, the written description uses language that leads us to the conclusion that a fuel filter is the only “fuel injection system component” that the claims cover, and that a fuel filter was not merely discussed as a preferred embodiment. On at least four occasions, the written description refers to the fuel filter as “this invention” or “the present invention”:

This invention relates to a fuel filter for use in the fuel line that delivers fuel to a motor vehicle engine. ’879 Patent, col.1 ll.8-9.

According to the present invention, a fuel filter for a motor vehicle is made from a moldable material which may be safely used in vehicles equipped with electronic fuel injection system. Id., col.1 ll.40-43.

This and other advantages of the present invention will become apparent from the following descriptions, with reference to the accompanying drawing, the sole Figure of which is a cross-sectional view of a fuel filter made pursuant 

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to the teachings of the present invention. . . . Id., col.1 ll.43-49.

According to the present invention, an electrically conductive path is provided between the fuel within the inlet cavity 42 [of the fuel filter] and the [vehicle] body 38. Id., col.3 ll.41-43.

The public is entitled to take the patentee at his word and the word was that the invention is a fuel filter.

Moreover, the written description does not indicate that a fuel filter is merely a preferred embodiment of the claimed invention. The fuel filter was the only component of an EFI system that the written description disclosed as having a polymer housing with electrically conductive fibers interlaced therein. The only other fuel component specifically mentioned in the written description, the fuel line, was not required by the patentee to be made of an electrically conductive polymer material, as the claims require. See id., col.1 ll.59-60 (stating that the “fuel line may also be made of a non-conductive material”). The written description’s detailed discussion of the prior art problem addressed by the patented invention, viz., leakage of non-metal fuel filters in EFI systems, further supports the conclusion that the fuel filter is not a preferred embodiment, but an only embodiment. Id., col.1 ll.10-25. Given the written description’s disclosure, we conclude that the patentee has limited the scope of the ’879 patent claims to a fuel filter.

Nor are we persuaded by Honeywell’s argument that the patentee confirmed a broader scope of his claims during prosecution. Honeywell relies mainly on the patentee’s response to the examiner’s indefiniteness rejection in which he stated that the claims cover “all fuel components manufactured of the moldable material disclosed and claimed in the specification.” Honeywell places too much weight on that statement, 

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as we find it to be ambiguous and possibly inconsistent with the written description. After all, the only fuel component disclosed and claimed in the patent was a fuel filter. In any event, such a broad and vague statement cannot contradict the clear statements in the specification describing the invention more narrowly.

We also do not assign much weight to the patent examiner’s restriction requirement with respect to claims for a “fuel filter” and a “fuel system component” during prosecution of the ’084 application. In making the restriction requirement, the examiner did not construe the claim term “fuel system component” or determine its meaning in light of the written description. He merely required that the applicant elect one aspect of his invention for prosecution without applying it to the specification.

Nevertheless, even if we were to agree with Honeywell that the patentee clearly expressed his intention during prosecution to have the “fuel injection system component” limitation include components in addition to a fuel filter, it would not change the result in this case. As we determined above, the written description provides only a fuel filter that is made with polymer housing and electrically conductive fibers interlaced therein. No other fuel injection system component with the claimed limitations is disclosed or suggested. Where, as here, the written description clearly identifies what his invention is, an expression by a patentee during prosecution that he intends his claims to cover more than what his specification discloses is entitled to little weight. See Biogen, Inc. v. Berlex Labs., 318 F.3d 1132, 1140 (Fed. Cir. 2003) (stating that “[r]epresentations during prosecution cannot enlarge the content of the specification”).

We disagree, however, with the district court’s construction of the claim term “electrically conductive fibers” to the extent that it encompasses carbon fibers. This 

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court has recognized that “[w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Scimed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1341 (Fed. Cir. 2001). It is true, as the district court noted, that the ’879 patent’s written description did not expressly define “electrically conductive fibers,” as it did for “fuel injection system component.” Nevertheless, based on the disclosure in the written description, which demeaned the properties of carbon fibers, we conclude that the patentee thereby disavowed carbon fibers from the scope of the ’879 patent’s claims.

The written description contains the following disclosure:

Stainless steel also has the advantage of requiring smaller quantities for providing the required conductivity than other conductive fillers, such as carbon black. ’879 Patent, col.3 ll.56-60 (emphasis added).

Other electrically conductive fillers, such as the aforementioned carbon, act as stress concentrators and, at the relatively high filler loadings required to achieve conductivity, restrict the ability of the resin matrix to yield under stress. Id., col.4 ll.1-5 (emphasis added).

Also, stainless steel fibers are ductile and non-rigid unlike straight or metallized carbon fibers. . . . This allows stainless steel fibers to maintain their integrity better during melt-processing. Id., col.4 ll.5-10 (emphasis added).

Unlike the non-metallic fibers, stainless steel fibers also do not increase mechanical strength or stiffness of the base resin significantly. Other metal fibers with high aspect ratios can be satisfactorily substituted for stainless steel. Id., col.4 ll.10-14 (emphasis added). 

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In making the above statements, the patentee informed its readers specifically why carbon fibers would not be suitable as “electrically conductive fibers” in the claimed invention. If the written description could talk, it would say, “Do not use carbon fibers.” There is no other way to interpret the written description’s listing of all the reasons that metal fibers fare better than carbon fibers for use in the claimed invention, even though both materials are electrically conductive, viz., that metal fibers require smaller quantities to achieve the desired conductivity than carbon fibers, create less stress concentration, are more ductile, are less rigid, and increase the mechanical strength of the polymer housing. Contrary to the district court’s understanding, the written description has gone beyond expressing the patentee’s preference for one material over another. Its repeated derogatory statements concerning one type of material are the equivalent of disavowal of that subject matter from the scope of the patent’s claims.

In reaching this decision, we reject Honeywell’s argument in support of the district court’s construction of “electrically conductive fibers.” Honeywell argues that the written description did identify carbon fibers as electrically conductive fibers, and that stainless steel fibers were merely preferred embodiments. Honeywell’s argument misses the point. It is precisely because the written description has identified carbon fibers as electrically conductive, and yet it denigrated carbon fibers’ applicability to the claimed invention, that we find a disavowal of that subject matter. Moreover, it is irrelevant whether stainless steel fibers are a preferred embodiment of the claimed invention. We are not here modifying the district court’s claim construction to limit its scope to stainless steel fibers. We only modify it to exclude carbon fibers from the scope of the ’879 patent claims. 

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II.

Because Honeywell does not appeal the district court’s judgment of lack of literal infringement, we turn to the question whether the accused quick connects infringe under the doctrine of equivalents. Even if the district court correctly construed the “fuel injection system component” limitation, Honeywell argues that the court erred in finding that the accused quick connects do not infringe under the doctrine of equivalents as a matter of law. According to Honeywell, although quick connects do not filter fuel like a fuel filter, the ’879 claims do not require that the “fuel injection system component” perform that function. Honeywell contends that the claims only require that the “fuel injection system component” perform the functions of “communicat[ing] fuel to the engine of a motor vehicle,” and “provid[ing] an electrically conductive path through said component and [the] electrical plane.” Honeywell also asserts that the claims require that the only result needed to be achieved is to “prevent the build-up of electrostatic charge in the fuel and the resultant arcing which causes the breakdown of the polymer material comprising the fuel injection system component.” Because, Honeywell argues, the accused quick connects perform these functions in the same way as the fuel filter to achieve the same result, there is infringement.

We agree with the district court that the fuel filter and quick connects are not equivalent devices. They are substantially different. The accused quick connects do not filter fuel. Once we agree with the district court to construe a fuel system component to be a fuel filter, the fuel filter is not merely a limitation of the ’879 patent claims. It is central to the patented invention. If one utilizes the conventional function/way/result analysis, it is beyond question that the accused quick connects do 

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not perform the function of the fuel filter. Any equivalent of a fuel filter must necessarily perform the function of fuel filter—filtering fuel—in order to be an equivalent. As Honeywell recognizes in its own brief, “a fuel filter inherently filters fuel.” Honeywell Op. Br., at 49.

Having established that any structure equivalent to a fuel filter must substantially perform the function of filtering fuel, we affirm the district court’s judgment of noninfringement. Honeywell concedes in its brief, as it must, that the accused quick connects do not perform the fuel filtering function. Honeywell Op. Br., at 47. Thus, no reasonable trier of fact could find that these two structures are equivalent. Given that quick connects do not perform substantially the same function as a fuel filter, there is no need for us to conduct a further analysis of the way that the accused products perform and the result of that performance.

We also conclude that the accused quick connects do not meet, either literally or under the doctrine of equivalents, the “electrically conductive fibers” limitation as we have construed it. There is of course no literal infringement because, as we have held and Honeywell has admitted, a quick connect is not a fuel filter. There can also be no infringement under the doctrine of equivalents because the accused quick connects use carbon fibers, and such fibers were disavowed from the scope of the “electrically conductive fibers” limitation, as we have discussed above. See J&M Corp. v. Harley–Davidson, Inc., 269 F.3d 1360, 1366 (Fed. Cir. 2001) (“The scope of equivalents may [ ] be limited by statements in the specification that disclaim coverage of certain subject matter.” Dawn Equip. Co. v. Ky Farms, Inc., 140 F.3d 1009, 1016 (Fed. Cir. 1998)). 

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CONCLUSION

Because the accused quick connects do not meet, literally or equivalently, the “fuel injection system component” or “electrically conductive fibers” claim limitations, the district court’s grant of summary judgment of noninfringement of the ’879 patent in favor of ITT/TG is affirmed.

AFFIRMED 

 

 

Additional Cases

 

 


[1]           The district court ruled that neither Insituform Gulf nor ITI had standing to sue.  Plaintiffs do not appeal that ruling.

[2]           In Insituform II, we referred to KS as “KM.” 

[3]           Firstliner’s Process 2 is no longer before us, it having been determined that it does not infringe claim 1 either literally or under the doctrine of equivalents.

[4]           As noted above, Insituform North America, Inc. is no longer a party to the suit.

[5]           Because we affirm the district court’s ruling that Insituform Netherlands was properly joined as a party, we need not address plaintiffs’ additional argument on appeal related to adding Insituform North American, Inc. as a party.   

[6]           At that time, the court made no specific finding regarding the actual date of the switch as both Process 1 and 2 were found to be infringing. 

[7]           Federal Rule of Civil Procedure 70, titled "Judgment for Specific Acts; Vesting Title," provides in relevant part:

 

If a judgment directs a party to execute a conveyance of land or to deliver deeds or other documents or to perform any other specific act and the party fails to comply within the time specified, the court may direct the act to be done at the cost of the disobedient party by some other person appointed by the court and the act when so done has like effect as if done by the party.

[8] We note that, in its response brief, the University has again challenged our jurisdiction over this appeal, arguing that the Rule 70 Order did not constitute a new judgment.  We have already addressed that challenge when we denied the University's motion to dismiss this appeal before oral argument.  Univ. W. Va. v. VanVoorhies, No. 02-1533 (Fed. Cir. Feb. 11, 2003) (nonprecedential order).  In that order, we conclusively decided that the Rule 70 Order was a new judgment from which VanVoorhies may appeal.  Although we have considered the University's renewed jurisdictional challenge, we decline to modify our previous ruling and therefore reaffirm that the Rule 70 Order constitutes an appealable final judgment.  See Conway v. United States, 326 F.3d 1268, 1276-77 (Fed. Cir. 2003) (concluding, based on Supreme Court precedent, that an order that appears to modify an earlier judgment restarts the period within which a party may seek appellate review).

 

[9]           VanVoorhies conceded at oral argument that he does not dispute the University's ownership of the patent applications and patents previously adjudicated in the May 25 Order and addressed in our UWV I opinion.  These undisputed applications and patents are (a) U.S. Patent No. 5,442,369, which issued from the '970 Application; (b) U.S. Patent No. 6,028,558, which issued from the '340 Application; (c) U.S. Patent No. 5,734,353, which issued from the '609 Application; (d) the '610 Application; (e) U.S. Patent No. 6,204,821, which issued from a continuation of the '340 Application; and (f) U.S. Patent No. 5,952,978, which issued as a continuation of the '609 Application.  VanVoorhies has also represented to this court that he has abandoned U.S. Application No. 60/056,610, rendering any ownership dispute over that application moot.  Consequently, these patents and applications are not at issue in this appeal.

[10]         The following is an unofficial transcript of the conversation between the court and Mr. David E. Tungate, counsel for the University, at the August 5, 2003, oral argument before this court:

 

The Court:      Just so that I can understand where we are, because we are running out of time in the argument.  You've said you agreed that the second generation patents are not covered by the original assignment.  That makes life a little easier for us.  You've agreed that whether the second generation patents fall under the University policy has yet to be adjudicated, hasn't been decided yet.  So the only question is whether or not the second generation patents fall within the May 25 Order.  And am I correct in understanding that your sole ground for believing that they fall within the order is because they constitute "technology embodied"?

Mr. Tungate: Yes, your honor.

[11]         See supra note 4.

[12]         Another excerpt from the August 5, 2003, oral argument before this court:

 

The Court:      And so, it looks to me like Paragraph 7 is a lineal descendant provision, right?

Mr. Tungate: Yes.

 

[13]         Because of our limited role as a court of appeals, Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1585 (Fed. Cir. 1995) (emphasizing that "we sit as a court to review claims that a trial judge erred, and not as a court of first instance"), we decline to resolve that question on first instance.  We neither express nor intimate any view on the merits of that issue.