Duplan Corporation v. Deering Milliken, Inc.

379 F. Supp. 388, 181 U.S.P.Q. (BNA) 621, 1974 U.S. Dist. LEXIS 12168
CourtDistrict Court, D. South Carolina
DecidedFebruary 21, 1974
DocketCiv. A. 71-306, 70-968, 69-1096, 68-705, 69-777, 70-14, 70-189, 70-250, 70-295, 70-358, 70-385, 70-386, 70-391, 70-493, 70-622, 70-628, 70-677, 70-683, 71-87 to 71-102, 71-115, 71-126, 71-127 and 71-283
StatusPublished
Cited by6 cases

This text of 379 F. Supp. 388 (Duplan Corporation v. Deering Milliken, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. South Carolina primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Duplan Corporation v. Deering Milliken, Inc., 379 F. Supp. 388, 181 U.S.P.Q. (BNA) 621, 1974 U.S. Dist. LEXIS 12168 (D.S.C. 1974).

Opinion

ORDER ON MOTION FOR FURTHER CONSIDERATION OF SUMMARY JUDGMENT MOTION

HEMPHILL, District Judge.

Burlington Industries, Inc. (hereinafter called Burlington) asks further eonsideration of its motion for summary judgment that U. S. Patent No. 3,117,361 is not infringed by the use of “false twist” (hereinafter designated FT) machines, manufactured by Ateliers Roannais de Constructions Textiles (hereinafter called ARCT-France) and sold by ARCT, Inc., Greensboro, North Carolina, a U. S. subsidiary of ARCTFrance.

THE CHARGE OF INFRINGEMENT

The patent under scrutiny, attached as Appendix A of this order, guarantees a patent monopoly on a heat treating machine (hereinafter called the heater), as applied to synthetic (non-man-made) fibers, having two distinct segments or zones in successive portions of a heater tube, each segment being separately heated (1) by a heating coil, and (2) by the passage of current through a portion of the tube, respectively. The patented invention is called a “bilobal” heater because the cross-section configuration of the heater has two lobes. In other words, the cross-section looks like a barbell lifting weight.

Identical construction is not present in the accused heaters in which the whole length of the tube is heated by passage of current through it, and essentially the whole length of the tube is heated also by the coil.

The owners of this patent allege direct infringement 1 under the doctrine of equivalents of claim 1 of the patent by Burlington and others (hereinafter designated as the Throwsters) by use of FT-400, FT-411, and those FT-3 and FTF machines (hereinafter designated as the accused devices) having a heater tube heated by the passage of current through the tube, and by an electrical coil wherein the two heating means are independently regulatable.

*390 The claim which the patent owner * alleges to be infringed is as follows : 2 3

1. Yarn heat treating apparatus comprising an electrical resistance tube; a first terminal for electrical energy being connected to said tube at a location intermediate the entrance and exit ends of said tube; another terminal for electrical energy being connected to said tube at a location at the exit end of said tube, the portion of the tube defined by said terminals defining a compensating heating zone wherein yarn passed through the tube is treated at a temperature level approximating the desired temperature level for yarn treatment; a low thermal inertia electrical resistance heating coil surrounding the tube between the inlet end of the tube and said first terminal located intermediate the inlet and outlet ends of the tube, said heating coil having a heating input capable of effecting a temperature very substantially higher than the desired temperature level for yarn treatment in the compensating zone in order that rapid temperature changes may be effected, but controlled to a level below said desired temperature level for yarn treatment; said heating coil and the compensating heating zone being independently and individually temperature regulated.

WHEN SUMMARY JUDGMENT IS PROPER

Summary judgment of direct infringement or non-infringement may be appropriate under certain circumstances. As stated in this court’s earlier order of November 14, 1973, and restated here for the purpose of emphasis, it appears to this court that a motion for summary judgment of direct infringement or non-infringement may be granted in a patent case in any one of the four following situations provided there is no genuine issue of fact to be resolved:

First, where there is a file wrapper estoppel as to the patent owner’s interpretation of the meaning of terms of art used in the claims, thus removing the accused device as a literal direct infringement ;

Second, where nó file wrapper estoppel exists and where there is no contest as to the meaning of terms of art but the accused device reads literally on the patent claims;

Third, where the file wrapper estops the patent owner from asserting a charge of direct infringement under the doctrine of equivalents against the accused device; and

Fourth, if there is no such file wrapper estoppel, where the doctrine of equivalents’ can be applied by the court without the aid of extrinsic evidence.

To avoid repetition of the analysis of the legal authorities leading to this synopsis, reference to the court’s order of November 14, 1973, 370 F.Supp. 769, is respectfully invited.

THE PRIOR MOTION

Since plaintiff admits that there is no direct infringement by the accused devices by a literal reading on the patent claims, neither the first nor the second situation applies.

The Throwsters’ prior motion for summary judgment proposed that either the third or fourth situation was presented because the file wrapper es-topped plaintiff from asserting a charge of direct infringement under the doctrine of equivalents against the accused devices, or, if there was no file wrapper estoppel, the doctrine of equivalents could be applied by this court without the aid of extrinsic evidence.

In its order of November 20, 1973, 370 F.Supp. 790, on this prior motion, this *391 court made 15 findings of fact as to the file wrapper and, in a one and one-half page analysis, determined that no “classic” file wrapper estoppel existed, as defined by the leading Supreme Court case. This court said, at 13:

That doctrine [of “classic” file wrapper estoppel] applies in those instances where a patent applicant initially files broad claims and, after rejection of those claims by the Patent Office, narrows the claims by amendment to exclude part of the subject matter embraced within the original broad claims. The doctrine provides that if the narrowed claims are granted by the Patent Office, the patentee is estopped to charge direct infringement against devices that fall within the subject matter excluded by amendment. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-37, [62 S.Ct. 513,] 86 L.Ed. 736, 744 (1942); Power Curbers, Inc. v. E. D. Entyre Co., 298 F.2d 484, 494-95 (4th Cir. 1962).
This doctrine is not applicable to the present case. . . . The requirement of the patent claims that the coil surround the inlet end of the tube was not something added by amendment, as the Throwsters assert, but was present in the application and claims as originally filed. (Emphasis in original).

This court then determined that it could not apply the doctrine of equivalents without the aid of extrinsic evidence. This court said, at 18:

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379 F. Supp. 388, 181 U.S.P.Q. (BNA) 621, 1974 U.S. Dist. LEXIS 12168, Counsel Stack Legal Research, https://law.counselstack.com/opinion/duplan-corporation-v-deering-milliken-inc-scd-1974.