Insituform Technologies, Inc. v. Cat Contracting, Inc.

10 F. App'x 871
CourtCourt of Appeals for the Federal Circuit
DecidedMarch 26, 2001
DocketNo. 99-1584, 00-1005
StatusPublished
Cited by4 cases

This text of 10 F. App'x 871 (Insituform Technologies, Inc. v. Cat Contracting, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Insituform Technologies, Inc. v. Cat Contracting, Inc., 10 F. App'x 871 (Fed. Cir. 2001).

Opinion

DECISION

SCHALL, Circuit Judge.

Cat Contracting, Inc., Firstliner U.S.A., Inc.,1 Guilio Catallo, and Michigan Sewer Construction Company (collectively, “Appellants”) appeal the joinder of Insituform (Netherlands) B.V. (“Insituform B.V.”) as a plaintiff and the award of damages for infringement under the doctrine of equivalents of United States Patent No. 4,366,-012 (the “’012 Patent”) by the United States District Court for the Southern [873]*873District of Texas. Insituform, Techs., Inc. v. Cat Contracting, Inc., No. H-90-1690, slip op. at 21-22, 39-40, 57 (S.D.Tex. Aug. 31, 1999) (“Insituform TV”). Cat Contracting, Inc. and Mr. Catallo also appeal the joinder of Mr. Catallo to the suit as a defendant after the liability and damages trials had concluded. Insituform, Techs., Inc. v. Cat Contracting, Inc., No. H-90-1690, slip op. at 8 (Aug. 30, 1999) (order) (“Insituform, III ”). Insituform Technologies, Inc. (“ITI”), Insituform B.V., and Insituform Gulf South, Inc. (“IGS”) (collectively, “Insituform”) cross-appeal the district court’s finding that Kanal Mueller Gruppe International (“KMGI”) is not the alter ego of Kanal Sanierung Hans Mueller GmbH & Co. KG (“KS”). Insituform TV, slip op. at 44-45. After oral argm ment in this appeal, Appellants and KS filed motions asking us to apply our holdings in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558, 56 USPQ2d 1865 (Fed.Cir.2000), to the case and, in light of Festo, vacate the district court’s judgment of infringement under the doctrine of equivalents. We agree with Appellants and KS and conclude that the holdings in Festo must be applied to the earlier finding of infringement, and that, under Festo, prosecution history estoppel bars a finding of infringement under the doctrine of equivalents in this case. Therefore, we reverse-in-part, vacate-in-part, and remand.

DISCUSSION

I.

The '012 patent discloses a process for repairing damaged pipelines and passageways. The patent claims a method for performing such repair without removing the damaged pipe from the ground by installing a liner into the damaged pipe. Claim 1, the only claim still at issue, describes a method for impregnating the flexible tube finer with resin prior to insertion of the finer into the damaged pipe. The claimed method involves a finer that 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 finer 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 finer is impregnated with resin. The vacuum cup is then moved to another section of the finer while the previously used window is sealed. This process for impregnating the finer with resin allows for impregnation at the jobsite, eliminating the need to transport a heavier, already-impregnated finer to the site.

Insituform alleged that two processes practiced by the Appellants infringed the ’012 patent The first process (“Process 1”) involved the use of four to six vacuum cups to draw a vacuum from a corresponding four to six windows in the finer. As each vacuum cup was removed, the corresponding window was sealed while the remaining vacuum cups downstream continued to create a vacuum in the finer. Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 1104-05, 40 USPQ2d 1602, 1607 (Fed.Cir.1996) (“Insituform I”). The second process (“Process 2”) involved the use of multiple needles instead of vacuum cups to create a vacuum, with each needle being inserted through both the outer, impermeable film layer and the inner, resin-absorbent layer. Insituform Techs., Inc. v. Cat Contracting, Inc., 161 F.3d 688, 690-91, 48 USPQ2d 1610, 1612 (Fed.Cir.1998) (“Insi[874]*874tuform II ”).2

Insituform sued Appellants in February of 1990, alleging infringement of the ’012 patent. Insituform I, 99 F.3d at 1101, 40 USPQ2d at 1603. The issues of infringement and damages were bifurcated by order of the district court on March 5, 1991. In June of 1991, after a two-week jury trial, the jury returned a verdict of general infringement and no invalidity. Id. The district court granted, in part, Appellants’ motion for a judgment as a matter of law (“JMOL”), finding no literal infringement. However, the court upheld the jury’s finding of validity. In addition, the court ruled that the issue of infringement under the doctrine of equivalents should be tried. Id. In February of 1995, the issue of infringement by equivalents was retried in a three day bench trial, after which the district court found that the practice of both Process 1 and Process 2 infringed claim 1 of the ’012 patent under the doctrine of equivalents. Id. at 1101, 99 F.3d 1098, 40 USPQ2d at 1603-04. Appellants appealed that finding, while Insituform cross-appealed the district court’s grant of JMOL of no literal infringement.

In Insituform I, we affirmed the district court’s JMOL of no literal infringement. Id. at 1106-07, 99 F.3d 1098, 40 USPQ2d at 1608. We vacated, however, the court’s holding that Process 1 and Process 2 infringed under the doctrine of equivalents. Id. at 1109, 99 F.3d 1098, 40 USPQ2d at 1610. In our decision, we addressed Appellants’ contention that prosecution history estoppel precluded a finding of infringement by equivalents. Id. at 1107-08, 99 F.3d 1098, 40 USPQ2d at 1608-10. We noted that the ’012 patent’s original application contained four claims relevant to Appellants’ prosecution history estoppel argument. Id. at 1108, 99 F.3d 1098, 40 USPQ2d at 1609. We observed that the first two claims “would likely have read on a process using a single cup or a single needle ... [or] multiple cups or multiple needles.” Id. We stated that, in response to the examiner’s rejection of the four claims over the Everson reference, “Insituform canceled the claims and filed new, narrower claims, including what is now claim 1,” which we held was “literally limited to the use of one vacuum cup .... ” Id., 99 F.3d 1098, 40 USPQ2d at 1610. Based on these amendments, we concluded that Insituform “gave up coverage to a process for which a single vacuum source is located at the far end of the tube,” but that it could not be concluded that “Insituform relinquished coverage of processes using either multiple vacuum sources or a continuous vacuum.” Id. at 1108-09, 99 F.3d 1098, 40 USPQ2d at 1610. We held that prosecution history estoppel did not preclude Insituform from asserting that claim 1 of the ’012 patent was infringed by Process 1 or Process 2 under the doctrine of equivalents. Id. at 1109, 99 F.3d 1098, 40 USPQ2d at 1610. We remanded the case to the district court for a determination as to whether, under the correct claim construction—that claim 1 of the ’012 patent required the process to use only one vacuum cup, Process 1 or Process 2 infringed under the doctrine of equivalents. Id.

Upon remand, the district court, on December 31, 1996, issued revised findings of fact and conclusions of law that found that both Process 1 and Process 2 infringed under the doctrine of equivalents. Appellants appealed.

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10 F. App'x 871, Counsel Stack Legal Research, https://law.counselstack.com/opinion/insituform-technologies-inc-v-cat-contracting-inc-cafc-2001.