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Total Containment, Inc. v. Intelpro Corp.

U.S. Court of Appeals, Federal Circuit


September 15, 1999

TOTAL CONTAINMENT, INC., PLAINTIFF,
v.
INTELPRO CORPORATION, PLAINTIFF-APPELLANT,
v.
ENVIRON PRODUCTS, INC., DEFENDANT-APPELLEE.

Before Michel, Clevenger, and Schall, Circuit Judges.

The opinion of the court was delivered by: Michel, Circuit Judge.

Plaintiff-Appellant Intelpro Corporation ("Intelpro") appeals from the September 29, 1998 declaratory judgment of the United States District Court for the Eastern District of Pennsylvania granting Defendant-Appellee Environ Products, Inc.'s ("Environ's") motion for summary judgment and declaring the claims of United States Patent Nos. 5,553,971 ("the '971 patent"), 5,567,083 ("the '083 patent"), and 5,590,981 ("the '981 patent) (collectively the "Osborne patents," or "patents-in-suit") invalid either as anticipated under 35 U.S.C. § 102, or as obvious under 35 U.S.C. § 103. Summary declaratory judgment of invalidity of the claims of the '981 patent was also based on an insufficient written description. See 35 U.S.C. § 112, ¶ 1. Finally, the trial court also granted summary judgment of noninfringement of the `981 patent, the only patent on which summary judgment was moved for, by Environ's GeoFlex product, pursuant to Environ's declaratory judgment action. See Environ Products, Inc. v. Intelpro Corp., No. 97-707 (E.D. Pa. Sept. 29, 1998) consolidated with Total Containment, Inc. v. Environ Products, Inc., No. 97-1020 (E.D. Pa. Sept. 29, 1998).

In the trial court Environ filed for declaratory judgment of invalidity of the three patents-in-suit in Civil Action No. 97-707 and plaintiff-appellee Total Containment, Inc. ("TCI") filed for injunctive relief and damages due to infringement by Environ of all three patents-in-suit in Civil Action No. 97-1020. The actions were consolidated below and this consolidated appeal arises from the cross-motions for summary judgment filed by the parties of infringement by Environ of the '981 patent only and from Environ's motion for summary judgment of invalidity of the patents-in-suit.

Keith Osborne is the owner of Intelpro. Osborne applied for, and was issued, the three patents-in-suit. The patents-in-suit were assigned to Intelpro. Intelpro granted TCI a license to the patents-in-suit. Intelpro, however, retained the right to practice the invention and to sell the retained rights and the patents.

At the time of the filing of the instant case, Intelpro was the assignee of the patents-in-suit. After the filing, and before judgment was issued, Intelpro assigned them to OPW/Buffalo Acquisition, Inc., now known as Pisces by OPW ("OPW"). OPW was not joined in the district court action, and has not joined the appeal to this court. TCI is the exclusive licensee under the patents-in-suit, as first assigned to Intelpro and now assigned to OPW, and was Intelpro's co-party in the district court actions. TCI, however, did not file a brief in this appeal, nor appear for oral argument.

The appeal was submitted for our decision following oral argument on August 6, 1999. We hold Intelpro has standing to maintain this appeal. We further hold that the district court erred in granting each of the summary judgments and, therefore, we vacate and remand for trial or for further fact-finding as the district court sees fit.

BACKGROUND

The three patents-in-suit are directed to secondarily-contained flexible piping systems that include a flexible inner supply pipe and an outer secondary containment pipe. Such piping systems have particular applicability to gasoline filling stations, allowing them to transport gasoline safely from an underground storage tank to an above ground gasoline dispenser. These systems use flexible piping to greatly reduce the required number of pipe joints, potential sources of leaks in prior art rigid piping systems. Furthermore, the systems house the remaining joints in fluid-tight chambers to protect them, facilitate their inspection and repair, and to contain any leaks.

TCI and Intelpro are the exclusive licensee and original assignee, respectively, of the Osborne Patents. TCI and Environ *fn1 sell secondarily-contained flexible piping systems suitable for underground transportation of hazardous fluids like gasoline. At the time the applications for the patents-in-suit were filed, the underground piping industry was using rigid piping sections, such as steel and fiberglass sections, joined together with fittings and connectors. Those systems were prone to leaks, particularly at the joints formed by the fittings and connectors joining the sections.

Osborne filed a patent application in the United States Patent and Trademark Office ("PTO") on December 20, 1988. This application disclosed an underground secondarily-contained, flexible piping system designed to prevent release of the fluid into the environment should there be a leak from the flexible inner supply pipe. Osborne's invention eliminated pipe fittings and connectors normally required at the various bends, turns and section joints of rigid piping systems, thereby reducing these sources of leaks. Further, Osborne's invention housed all primary pipe fittings and connectors in chambers to enable ready access and to capture any leakage resulting from a defect in the system.

Two days after Osborne filed his 1988 application, another group of inventors, including Michael Webb, then of TCI, and Thomas Wilson, of Exxon Company, filed a patent application for a removable double containment flexible piping system, resulting in U.S. Patent No. 4,971,477 ("the '477 patent"). An interference resulted which Osborne eventually won. However, to avoid a possible appeal by TCI, TCI and Osborne entered into a settlement agreement in December 1994 through which TCI became the exclusive licensee of the inventions disclosed in Osborne's 1988 application and Osborne retained the right to practice the inventions. These inventions included two disclosed in continuation applications filed by Osborne before the 1988 application issued as the '971 patent. These continuation applications issued as the '083 and '981 patents. These three patents are the patents-in-suit.

Environ once had a license to use the patented technology. When Osborne later made TCI the exclusive licensee of the technology, Environ's license was revoked. Environ sued TCI and Intelpro to set aside their settlement agreement, and in 1996, a jury ruled in favor of TCI and Intelpro, upholding the settlement agreement and TCI's exclusive license.

Intelpro was the assignee of the Osborne patents when this action began. Shortly before the litigation began in January 1997, however, Intelpro entered into a litigation agreement with TCI which assigned to TCI the right to initiate and maintain an action against Environ for infringement of the Osborne Patents.

On January 17, 1997, TCI, in its name alone, filed a complaint against Environ in the United States District Court for the Eastern District of Virginia for infringement of the Osborne Patents. Environ moved to dismiss the complaint for lack of standing, for failure to join Intelpro, an indispensable party.

On January 31, 1997, Environ filed in the United States District Court for the Eastern District of Pennsylvania a declaratory judgment action against Intelpro and TCI seeking to invalidate the Osborne patents. Environ then moved to transfer TCI's Virginia action to the Pennsylvania district court. The actions were consolidated in Pennsylvania, and Environ withdrew its motion to dismiss.

In May 1997, during the pendency of these actions, Osborne sold the business assets of Buffalo Environmental Products Corporation (Osborne's operating company) and of Intelpro (Osborne's intellectual property company) to OPW. Under the terms of the Asset Purchase Agreement, OPW is required, among other things, to remit to Intelpro the royalty payments made by TCI under the interference settlement agreement license.

On September 29, 1998, the district court Judge issued a Memorandum and Order which granted summary judgment to Environ and declared: the claims of the '083, '981, and '971 patents invalid pursuant to 35 U.S.C. §§ 102 and 103; the claims of the '981 patent further invalid pursuant to 35 U.S.C. §112, ¶ 1; and that Environ's GeoFlex product does not infringe any claim of the '981 patent. From that judgment, Intelpro now appeals.

We have jurisdiction under 28 U.S.C. § 1295(a)(1) (1994).

DISCUSSION

I. Standing

The first issue we must decide in this appeal is whether or not Intelpro, having sold all interest in the patents-in-suit, still has standing to file and prosecute this appeal. We note that Intelpro did retain a reversionary interest in the patents-in-suit, but do not base our decision on that. Instead, we rely on Rule 25 of the Federal Rules of Civil Procedure, which provides, in relevant part, that: "In case of any transfer of interest, the action may be continued by or against the original party." Fed. R. Civ. P. 25(c) (1999). In Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1582, 230 USPQ 81, 92 (Fed. Cir. 1986) we held that a company, Kloster, created after Conclusion of the trial, but before judgment was issued, which had purchased the factories at issue from the party against whom the original action was brought, "must be deemed a successor in interest or an assign, . . . and may for that reason appeal the refusal to modify [the injunction]." We went on to state in a footnote that since Kloster had "neither intervened before the trial court nor argued that [the original party was] . . . incapable of contesting the merits on appeal, Kloster is without standing to appeal from the judgment on the merits." 793 F.2d at 1582 n.14, 230 USPQ at 92 n. 14 (discussing Fed. R. Civ. P. 25(c)). In this case, as in Kloster, the original party had standing to appeal from the district court judgment. Intelpro is clearly the original party here, and Environ itself admits that it continued the actions below against Intelpro because of Fed. R. Civ. P. 25(c). See Def.-Appellee's Br. at xvii. Both sides concede that Fed. R. Civ. P. 25(c) applies to the instant action. We therefore find that, as the original party, Intelpro still has standing to continue the action. Therefore, Intelpro, we hold, may bring an appeal here, despite no longer owing any interest in the patents-in-suit. We note that while for the most part the Federal Rules of Civil Procedure govern district court proceedings, several Rules, including Rule 52(a), apply on appeal. Moreover, there is no direct provision on this subject in the Federal Rules of Appellate Procedure.

II. Invalidity

Having held that Intelpro has standing to appeal the judgment, we now turn to the merits of its appeal. The district court granted summary judgment declaring all of the claims of all of the patents-in-suit invalid, as either anticipated or obvious. The district court further granted summary judgment declaring all claims of the '981 patent invalid under 35 U.S.C. § 112 as well, based on an insufficient written description.

A. Invalidity for Anticipation by the Maeshiba Reference

The district court Judge found Japanese Kokai Utility Model NO. SHO 62-23000 (the "Maeshiba reference") to anticipate the entire '083 patent, all elements of claims 1-3 and 6 of the '981 patent, and all elements of claims 8-9, 13, 15, 17-22, 24, 26-27 and 36 of the '971 patent. Intelpro's expert, William H. Murray, however, stated in his declaration that he disagreed with statements made by Environ's experts, John F. McNulty and Michael X. Plick, "including, for example, the unsupported statement that `[t]he Maeshiba reference is a full and complete anticipation of each of the features of claims 1 and 2 (all claims) of the '083 patent, each of the features of claims 1 and 2 of the '981 patent, and each of the features of at least claims 8, 9, 13, 15, 17, 18, 19, 20, 21, 22, 24, 26, 27 and 36 of the '971 patent, rendering all such claims clearly invalid under 35 U.S.C. § 102." There follows this statement an extended Discussion by Mr. Murray of why, exactly, he disagrees with the assertion that Maeshiba anticipates the patents-in-suit. *fn2 Dr. Wolf H. Koch, another expert witness hired by Intelpro, stated in his declaration that "it is [his] opinion that none of the claims of the Osborne patents are anticipated by the Maeshiba Application." At the very least, anticipation remains a genuine issue of material fact with specific, plausible and detailed testimony by dueling expert witnesses and, therefore, summary judgment is inappropriate. We vacate and remand the summary judgments of anticipation, with regard to all three patents.

B. Invalidity for Obviousness

We note, first, that our biggest concern here is the complete lack of findings or Discussion of combinability by the district court Judge. When obviousness is based on multiple references, there must be a showing of some "teaching, suggestion, or reason" to combine the references. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579, 42 USPQ2d 1378, 1383 (Fed. Cir. 1997) (also noting that the "absence of such a suggestion to combine is dispositive in an obviousness determination"). The district court Judge's entire Discussion of suggestion to combine is:

The essence of Osborne's invention is fully present in the Maeshiba reference, with the exception of some peripheral and well-known elements and design choices (e.g. compression fittings, an integral annular cuff, leak sensors, etc.); the suggestion to combine Maeshiba with one or more other references is implicit in the prior art, given the system's intended purpose.

Environ, slip op. at 8.

Suggestion to combine is a question of fact. See In re Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[P]articular factual findings regarding the suggestion, teaching, or motivation to combine serve a number of important purposes . . . ." (emphasis added)). "The suggestion to combine may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved." WMS Gaming, Inc. v. International Game Tech., -- F.3d --, 51 USPQ2d 1385, 1397 (Fed. Cir. 1999); see also Dembiczak, 175 F.3d at 994, 50 USPQ2d at 1617. Neither the district court's opinion nor Environ's brief points to any suggestion in Maeshiba or any of the other cited art to combine the various elements as combined by the district court. Furthermore, there is no suggestion that one of ordinary skill in the art would know to combine these references. To fill the vacuum created by the absence of a suggestion, the district court Judge obliquely refers to the system's "intended purpose" as suggesting the combination of references used in his anticipation finding but provides us with no specific Discussion of what the problem faced by Osborne was or why "a skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed." In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). *fn3

Intelpro disputes the district court Judge's determination that any skilled artisan faced with the problem Osborne was faced with would have known how to solve it given the Maeshiba reference, and argues that the only way to find a suggestion to combine these elements is to engage in hindsight, *fn4 and to look for missing elements in, one supposes, the entire "pipe art". Intelpro has produced expert testimony to support its argument that there is no suggestion to combine the elements of the prior art. Mr. Murray, an expert for Intelpro, declared that he disagreed with the statement of Mr. McNulty, an Environ expert, that "the suggestions to combine references is [sic] present in view of the problem that Osborne was trying to solve and are explicitly and implicitly present in the prior art". Mr. Murray details his concerns with specificity, stating, for instance, "[s]ince there is no teaching or suggestion of a coupling [in Maeshiba], disposed within an access chamber, connecting the gasoline suction pipe to a fluid or fuel source, there is no need for fittings in accordance with claims 3 and 6 of the '981 patent and thus no suggestion to lead one skilled in the art to employ fittings of the type disclosed in [prior art references] . . . or any other types of fittings which existed in the prior art". We hold that there is a genuine issue of material fact here as to the proof by clear and convincing evidence of any suggestion to combine. We therefore vacate summary judgment on every claim where a suggestion to combine was found to render the claim invalid as obvious. *fn5

With that in mind, we focus on the remaining claims, which the district court Judge invalidated as obvious, finding the elements missing from Maeshiba not in prior art references, but rather as well known in the art. *fn6 We note, once again, that Intelpro's witness declarations dispute the desirability of adding these missing elements to Maeshiba. Dr. Koch, an expert for Intelpro, declared that "while different components of Osborne's invention were known, to some degree, in the petroleum industry prior to 1987, none of these components were combined or modified in the way envisioned by Osborne." Dr. Koch went on to declare that he could "think of no basis on which one of ordinary skill in the art would have thought to combine these elements." His declaration, and that of Mr. Murray, examine the issue of invalidity thoroughly and credibly enough that we believe a reasonable juror could agree with the Intelpro experts in their obviousness evaluation. Given these declarations, the presence of a suggestion to combine is a genuine issue of material fact and, therefore, summary judgment is inappropriate.

The district court Judge further found several claims *fn7 to be invalid as not "patentably distinct" *fn8 and we do not know whether the district court Judge meant that the claims were obvious, anticipated, or invalid for some other reason altogether. An invention claimed in a patent application may be found to be "not patentably distinct" over another application or patent, see In re Berg, 140 F.3d 1428, 1431 (Fed. Cir. 1998), but the term is not ordinarily applied to claims in an issued patent. Insofar as the district court Judge found that these claims invalid as obvious or anticipated, or as otherwise "not patentably distinct" from the claims upon which they depend and which he found invalid, we vacate and remand due to the genuine issues of material fact discussed above. If the district court Judge is finding these claims invalid for some other reason we vacate for findings that we can actually review as opposed to merely conclusory statements.

C. Invalidity for Insufficient Written Description

The district court also granted summary judgment declaring all claims of the '981 patent invalid under 35 U.S.C. § 112, ¶ 1 for an insufficient written description. The first paragraph of 35 U.S.C. § 112 requires that:

[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

We note that in In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), our predecessor court held that "[t]he primary consideration is factual [in determining the sufficiency of the written description] and depends on the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure."

Since its inception, the Court of Appeals for the Federal Circuit has frequently addressed the "written description" requirement of § 112. A fairly uniform standard for determining compliance with the "written description" requirement has been maintained throughout: "Although [the applicant] does not have to describe exactly the subject matter claimed, . . . the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." In re Gosteli, 872 F.2d 1008, 11-12, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (citations omitted). . . . The purpose of the "written description" requirement is broader than to merely explain how to "make and use"; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the "written description" inquiry, whatever is now claimed.

Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (footnote omitted) (emphasis in original).

The district court Judge held that the claim language was not restricted to removable pipe systems, covering non-removable and removable pipe systems, while the "written description" only proved that the applicant had been in possession of a removable pipe system invention at the filing date. The district court Judge, therefore, found the '981 patent to be invalid pursuant to 35 U.S.C. § 112, ¶ 1 for insufficient written description. Environ, slip op. at 10. The issue of whether the written description requirement has been satisfied is a question of fact. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158, 47 USPQ2d 1829, 1832 (Fed. Cir. 1998). Intelpro argues that in view of their originally-filed claim 1, their written description proves that the applicant was in possession of both removable and non-removable pipe systems at the date of filing of the application for the '981 patent. Clearly there is a genuine issue of material fact here and hence summary judgment is inappropriate. We, therefore, vacate and remand the district court's declaration of invalidity under § 112, ¶ 1.

III. Infringement

Despite his granting summary judgment of invalidity of the three patents-in-suit in the declaratory judgment action, the district court Judge still reviewed the issue of infringement, and granted summary declaratory judgment of non-infringement by Environ's GeoFlex of the '981 patent. The district court Judge found the GeoFlex product to have a non-removable flexible inner pipe which fits snugly within an outer secondary pipe. In order to preserve validity, the district court Judge construed the claims of the '981 patent to require the flexible inner pipe to be removable. He, therefore, found no infringement.

The precise language of the relevant claims says nothing about removability. *fn9 The district court Judge looked to the drawings in the '981 patent, and the prosecution history of a related patent (U.S. Patent No. 5,098,221, or the '221 patent, which matured from a continuation-in-part ("CIP") of the original patent application which issued as the '981 patent). According to the district court Judge, "the patent drawings depict an inner pipe which is not attached to the secondary containment pipe, and is therefore plainly removable." Environ, slip op. at 9. However, also according to the district court Judge, "[i]n the GeoFlex product . . . the inner pipe fits snugly within the outer pipe . . . the inner pipe has, on its exterior surface, a series of small ribs or projections which create a very small space between the inner and outer pipes." Id. Analyzing these two statements, we come to the Conclusion that the flexible inner pipe is not connected to the outer secondary pipe in either the GeoFlex product or the '981 patent. It is undisputed that the GeoFlex contains a flexible inner pipe that is not removable. Therefore, the drawings that the district court Judge points to as clearly proving that the invention claimed is one with only a removable inner pipe do not so prove. At the very least, the district court Judge needs to look elsewhere for a basis for concluding the '981 patent claims cover only removable inner pipes, so he is not reading limitations from the specification into the claims.

The district court Judge, for a further basis, relied on the prosecution history of the '221 patent. During prosecution of the '221 patent, Osborne "argued that his invention was patentable over the prior art because of the removability/replaceability feature of his invention." Environ, slip op. at 9. The district court Judge goes on to state that "[it] is appropriate to construe the patent claim in light of the prosecution history. There can be no doubt that the ability to repair or replace the inner pipe which carries the liquid, without having to excavate, has always been stressed as the principal accomplishment of the '981 invention." Id. at 10. A continuation-in-part application is defined by the Manual of Patent Examining Procedure ("MPEP") as "an application filed during the lifetime of an earlier nonprovisional application by the same applicant, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application." MPEP § 201.08. By definition, the invention of a CIP may be less than the invention of the parent application. We cannot, therefore, limit the claims of the parent application based solely on what is described by the inventor as the "invention" of the CIP. Furthermore, the main invention of the CIP cannot be relied upon to determine what "has always been stressed as the principal accomplishment of the '981 patent." Environ, slip op. at 10.

Environ principally argues that the '981 specification describes the invention as having a removable inner pipe and that even if the claim does not specify the removability of the inner pipe, each and every embodiment provided in the specification requires the inner pipe to be removable. We have held that "when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment." Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1551, 37 USPQ2d 1609, 1612 (Fed. Cir. 1996) (citing Autogiro Co. of America v. U.S., 384 F.2d. 391, 398, 181 Ct. Cl. 55, 155 USPQ 697, 703 (1967)). We agree with Environ that if the specification only described the invention as having a removable inner pipe, then we would have to analyze this case under Modine. However, we do not agree with Environ that the '981 specification is limited to removable inner pipe systems. The Summary of the Invention states that "[t]he present invention provides a piping system for conveying fluid from the outlet port of a pump to the inlet port of a fluid dispenser." '981 Pat., Col 1, ll. 30-32. The system is further described in the specification as having a "primary pipe of flexible material" and a "secondary pipe of flexible material generally surrounding the primary pipe." '981 Pat., Col. 1, ll. 32-24. We note that the specification does state that an advantage of the invention is that "the piping can be replaced without excavating or breaking ground at the installed tank site." We will not, however, in the absence of any other support, read a limitation into a claim, particularly when the claim has no verbal hook upon which to hang the limitation, simply because the inventor stated that it was an advantage.

We have found nothing in either the district court's opinion or the parties' arguments to persuade us that the claims of the '981 patent cover only inner pipes that are removable. We therefore vacate the district court's judgment of no infringement and remand for a decision concerning infringement based on the proper claim construction, as discussed above, which indicates that the '981 patent claims cover flexible inner pipes, whether or not they are removable.

CONCLUSION

The judgment, therefore, is in all respects,

VACATED AND REMANDED.

COSTS

Each party shall bear its own costs.


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