Neupak, Inc. v. Ideal Manufacturing & Sales Corp.

41 F. App'x 435
CourtCourt of Appeals for the Federal Circuit
DecidedJune 24, 2002
DocketNo. 01-1368, 01-1389
StatusPublished
Cited by2 cases

This text of 41 F. App'x 435 (Neupak, Inc. v. Ideal Manufacturing & Sales Corp.) 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
Neupak, Inc. v. Ideal Manufacturing & Sales Corp., 41 F. App'x 435 (Fed. Cir. 2002).

Opinion

BRYSON, Circuit Judge.

Ideal Manufacturing and Sales Corporation appeals from a judgment of the United States District Court for the District of Minnesota. The court held that U.S. Patent No. 5,505,233 (“the ’233 patent”), which is assigned to Neupak, Inc., is neither invalid nor unenforceable, and that Ideal is not entitled to attorney fees. Neupak cross-appeals from another portion of the district court’s judgment dismissing Neupak’s patent infringement claims. We affirm.

I

Neupak’s patent relates to a “mobile and flushable container filling unit,” a device used to fill containers, such as paint cans, with fluid. The patent discloses a machine that is movable from the filling position to a position where it can be cleaned or stored in preparation for use.

In 1996, Neupak filed this action, alleging that Ideal had manufactured and sold “lateral transfer fillers” embodying the inventions of the ’233 patent. Ideal then requested that the United States Patent and Trademark Office (“PTO”) reexamine the patent. The PTO conducted a reexamination, during which the lawsuit was suspended. At the conclusion of the reexamination, the PTO issued a reexamination certificate, in which several of the original claims of the patent were canceled, the remainder were amended, and several new claims were added. When the lawsuit resumed, Ideal amended its answer to include a counterclaim for a declaratory judgment that the asserted claims of the reexamined patent were invalid and that the patent was unenforceable because of inequitable conduct on Neupak’s part.

On a motion for partial summary judgment, the district court entered an order holding that the asserted claims of the ’233 patent had been substantively changed during reexamination. The effect of that order was to bar, under 35 U.S.C. § 307(b), Neupak’s claims for damages during the period prior to the issuance of the reexamination certificate. The court then dismissed Neupak’s infringement claims.

Following a bench trial on Ideal’s counterclaim, the court entered an order holding that the claims of the reexamined patent were not invalid and not unenforceable for inequitable conduct. Ideal has appealed from that order, while Neupak has cross-appealed from the district court’s order that claim 7 of the ’233 patent was substantively changed during reexamination.

II

A

Representative claim 8 of the reexamined ’233 patent reads as follows, with emphasis placed on the claim terms disputed in this appeal:

8. Apparatus for filling containers with liquid products, comprising:
means defining a filling position for such containers and comprising means supporting such containers,
[438]*438a source of the liquid product to be supplied into the containers and flow means through which the liquid product is supplied,
sensing means disposed at the filling position for determining the filling of the containers, comprising a plurality of load cells, each for a separate container;
first and second mobile filling units transportable relative to said filling position, to said source of liquid product, and to said sensing means, said mobile filling units comprising movable floor engaging means supporting the filling units, and comprising a plurality of liquid product dispensing heads for filling a plurality of said containers at said plurality of load cells, said mobile filling units being alternately transportable to said filling position and being removable from said filling position and to a cleaning area, said first one of said filling units being in said filling position and having a removable connection to said source of liquid product for dispensing the liquid product into the containers and also having a removable connection to said sensing means to determine the filling of the liquid product into the containers, said second one of said filling units being in said cleaning area and being readied for operation and for transport to said filling position for the next filling of such containers.

Ideal asserts that Neupak’s sale of two swing-arm fillers to the Fuller O’Brien Company in 1992 invalidates claims 7-9, 12, 13, and 15 of the ’233 patent under the on-sale bar of 35 U.S.C. § 102(b). The district court rejected Ideal’s contention, finding that Ideal failed to prove that every element of the ’233 patent is shown in the 1992 swing-arm fillers. In particular, the court found that the 1992 swing-arm fillers do not satisfy the claim limitation requiring “mobile filling units transportable relative to [the] filling position.” We agree with Ideal that the swing-arm fillers may be “mobile” in the sense that they are capable of being moved readily between different positions along the arc defined by the swing arm. We cannot agree, however, that the swing-arm fillers are sufficiently mobile so as to be “transportable,” because they are incapable of being carried over a long distance from one place to another. Rather, they are permanently affixed to the conveyor belt by the swing arm, and their range of motion is limited to positions along the arc defined by the swing arm. We therefore agree with the district court that in light of the different nature of their mobility, the swing arm fillers do not anticipate the claims.

In addition to finding that the 1992 swing-arm fillers do not satisfy the “mobile filling unit transportable” limitation, the district court also found that the swing-arm fillers do not constitute invalidating prior art because they do not satisfy the limitation requiring that the apparatus have a “removable connection” (or that it be “removably connected”) to the sensing means. The district court construed the term “removable” to mean “easily removable,” and Ideal does not take issue with that construction. In the 1992 swing-arm fillers, the record shows that the load cells (the “sensing means”) are an integral part of the filling mechanism on the conveyor. The swing-arm fillers remain permanently affixed to the filling mechanism and load cells at all times via the pivot arms. The swing-arm fillers therefore cannot be considered “removably connected” to the sensing means for purposes of claim 15, because of the permanent structural connection between the swing-arm fillers and the load cells at the filling position.

[439]*439Ideal asserts that the “removable connection” limitation of claims 7-9,12, and 13 is satisfied in the 1992 swing-arm fillers by the “quick-disconnect” fittings located on the individual dispensing heads, which can be used to disconnect the dispensing heads from the pneumatic air lines that control the operation of the dispensing valves in accordance with signals received from the load cells. Although the pneumatic control connections can be broken at the location of the quick-disconnect fittings, the district court did not clearly err in concluding that the pneumatic air lines, which connect the filling units and the load cells, are not easily removable and thus do not qualify as “removably connected.” The record shows that the pneumatic control lines are bundled in a conduit that remains permanently bolted to both the swing arm and the frame of the filling machine.

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41 F. App'x 435, Counsel Stack Legal Research, https://law.counselstack.com/opinion/neupak-inc-v-ideal-manufacturing-sales-corp-cafc-2002.