May 15, 1996 Trial Tr. at 250 (Higgins direct).
Grapha's expert witness on engineering, Gary Gabriele, outlined an approach suggesting how the figure 1 embodiment illustrated in the Weber patent could be made to work provided a number of modifications are made. However, even if, with these modifications, a functional machine could be realized, it would take a skilled engineer in the bindery industry four to six years to carry out Dr. Gabriele's approach. May 16, 1996 Trial Tr. at 256 (Higgins direct). The years of effort required to discover how to make and use the alleged Weber invention constitutes more than routine or ordinary effort. See White Consol. Indus., Inc. v. Vega Servo-Control, Inc., 713 F.2d 788, 791 (Fed. Cir. 1983) (finding 11/2 to 2 man years to develop the invention unreasonable). Given the lack of guidance and direction provided by the specification and the quantity of experimentation required, the Weber patent requires "undue experimentation" to practice the invention and therefore is nonenabling under 35 U.S.C. § 112.
The fact that defendant has not made a machine covered by any claim of the Weber patent corroborates this finding. If the patent did disclose an enabling device, and if, as defendant contends, there currently exists a market for the high-speed rotary drum gatherer-stitcher, defendant's failure to make such a machine leads to the reasonable inference that the patent does not disclose, in "full, clear, concise, and exact terms," the information as "to enable any person skilled in the art ... to make and use the same."
As the Federal Circuit has noted, "when presented with patent validity and infringement issues, trial courts should ... decide both." Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983). Therefore, although as a matter of law there can be no infringement of an invalid claim and Section III of this Memorandum holds that claim 1 of Grapha's Weber patent is invalid, the infringement issue must be addressed. The difference between the two issues may be stated succinctly: resolving invalidity on the basis of obviousness requires comparing the Weber patent with the prior art; whereas resolving infringement requires comparing the Weber patent with subsequent developments. Treating the Weber patent as valid for purposes of infringement analysis only, I find and conclude that Ferag's IPEX machine does not infringe the patent.
As the patentee, Grapha has the burden of proving by a preponderance of the evidence that the accused devices embodies every element of the claim as properly construed, either literally or by operation of the doctrine of equivalents. Absence of any "element" or "limitation" (the terms are essentially synonymous) requires a finding of non-infringement. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1389 (Fed. Cir. 1992) ("As this court has repeatedly stated, infringement requires that every limitation of a claim be met literally or by a substantial equivalent.") (emphasis in original). Under the doctrine of equivalents, "infringement may be found ... if an accused device performs substantially the same overall function or work. in substantially the same way, to obtain substantially the same overall result as the claimed invention." Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 607-08, 94 L. Ed. 1097, 70 S. Ct. 854 (1950). However, an accused device's performance of the same function "will not make [it] an infringement under the doctrine of equivalents where it performs the function and achieves the result in a substantially different way." Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1531 n.6 (Fed. Cir. 1987) (emphasis added). As the Federal Circuit recently observed, "the doctrine of equivalents is the exception, however, not the rule, for if the public comes to believe (or fear) that the language of patent claims can never be relied on, and that the doctrine of equivalents is simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims, then claims will cease to serve their intended purpose." London v. Carson Pirie Scott & Co. 946 F.2d 1534, 1538 (Fed. Cir. 1991).
Analysis of a patent infringement claim entails two inquiries: first, the legal interpretation of the scope of the claims; and second, the factual finding of whether the properly construed claims encompass the accused structure. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996). The issue of infringement in this case centers on claim 1, which is the Weber patent's only independent claim. To avoid infringement Ferag need show only the noninfringement of independent claim 1 because a dependent claim cannot be infringed unless the accused device is also covered by the related independent claim. See Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994). Weber's claim 1 describes as an invention:
A machine for accumulating folded sheets into brochures and like products, comprising: a sheet transporting device arranged to advance sheets having folded backs in a predetermined direction along a predetermined path and including at least two elongated parallel carriers and discrete conveyor means for each of said carriers, each of said conveyor means having means for advancing sheets along the respective carrier; and means for feeding sheets to said carriers so that the backs of the sheets straddle the respective carriers, comprising a first feeding unit having means for depositing first sheets onto successive carriers in a first portion of said path and at least one additional feeding unit having means for depositing second sheets over successive first sheets in a second portion of said path downstream of the first portion so that the backs of the second sheets straddle the backs of the respective first sheets and form therewith accumulations of the first and second sheets wherein the backs of the second sheets are accessible. Col. 9, ll. 31-49.