Uraseal, Inc. v . Electric Motion Co. CV-95-517-SD 02/11/98 UNITED STATES DISTRICT COURT FOR THE

DISTRICT OF NEW HAMPSHIRE

Uraseal, Inc.

v. Civil No. 95-517-SD

Electric Motion Company, Inc.

O R D E R

In this patent infringement action, plaintiff Uraseal, Inc.,

alleges that defendent Electric Motion Company, Inc., is

manufacturing and marketing ground clamps (“EMC ground clamps”)

that infringe United States Letters Patent No. 4,842,530 (the

‘530 patent) owned by Uraseal. Before the court is defendant’s

motion for summary judgment, to which plaintiff objects.

Facts

In June 1989, the ‘530 patent issued to three inventors for

an invention entitled “Electrical Floating Bond Assembly.” The

floating bond, as the invention is commonly called in the

telecommunications industry, provides a floating electrical and

mechanical connection between a grounding bolt or stud and the

metallic sheath of a telephone cable or buried service wire.

Uraseal acquired all rights to the ‘530 patent. Defendant began manufacturing and marketing the EMC ground

clamp, which served essentially the same function as the device

described in the ‘530 patent. Nonetheless, the EMC ground clamp

utilized different parts.

Discussion

The determination of whether an accused product or process

infringes a claim in a patent is universally understood to

involve two steps. First, the court construes the claim asserted

to be infringed to determine its meaning and scope. Tanabe

Seiyaku Co. v . U.S. Int’l Trade Comm’n,

, 731 (Fed.

Cir. 1997). Second, the court compares the properly construed

claim to the accused product or process. Id. In order to

establish infringement, every limitation of the patent claim

asserted must be found in the accused product, either literally

or under the doctrine of equivalents, which extends patent

protection beyond the literal terms of the claim to cover

equivalent elements. Sage Products v . Devon Indus.,

(Fed. Cir. 1997). Judge Learned Hand wrote, “[A]fter

all aids to interpretation have been exhausted, and the scope of

the claims has been enlarged as far as the words can be

stretched, on proper occasions courts make them cover more than

their meaning will bear.” Royal Typewriter Co. v . Remington

2 Rand, Inc.,

(2d Cir.), cert. denied,

(1948).

Plaintiff Uraseal must rely on the doctrine of equivalents

to establish infringement because some of the literal limitations

of Uraseal’s patent claim are missing from the EMC ground clamp.

First, the patent claims "an . . . axially slotted externally- threaded bolt which slot is open at one end thereof corresponding

to the threaded end of the bolt." Second, the patent claims "a

nut threadingly engaging said threaded bolt." Instead of an

externally threaded bolt, the EMC ground clamp includes a U-

shaped yoke having a pair of legs with opposed interior thread

surface. Instead of a nut, the EMC clamp has a keeper, which has

a smooth interior surface that fits around the smooth exterior

surface of the yoke and is guided up the yoke by an independently

turning bolt that engages the threads on the interior of the yoke’s legs. In sum, the patented device has a bolt and a nut,

while the accused device has a yoke and a keeper.

Nonetheless, Uraseal argues that the yoke and keeper of the

EMC ground clamp are equivalent to the nut and bolt of the patent

claim. The doctrine of equivalents recognizes that “to permit

imitation of a patented invention which does not copy every

literal detail would be to convert the protection of the patent

grant into a hollow and useless thing.” Graver Tank & Mfg. Co.

v . Linde Air Products Co.,

(1950). The Court

3 said, “Such a limitation would leave room for--indeed encourage--

the unscrupulous copyist to make unimportant and insubstantial

changes and substitutions in the patent which, though adding

nothing, would be enough to take the copied matter outside the

claim, and hence outside the reach of law.” Id.; see also

MERGES, ROBERT PATRICK, PATENT LAW AND POLICY 659 (1992). The test for

equivalents is whether only “insubstantial differences”

distinguish an element of the accused device from the

corresponding element in the patent claim. Hilton Davis Chem.

Co. v . Warner-Jenkinson Co.,

(Fed. Cir. 1995)

(in banc) (“The Supreme Court . . . thus made insubstantial

differences the necessary predicate for infringement under the

doctrine of equivalents.”), rev’d on other grounds, _ _ _ U . S . ___,

117 S . Ct. 1040 (1997). However, the Supreme Court has recently

reminded courts that applying the doctrine of equivalents too

broadly expands the rights of the inventor beyond any reasonable

interpretation of the claim thereby undermining the “definitional

and public-notice functions of the statutory claiming

requirements.” Warner-Jenkinson Co. v . Hilton Davis Chem., ___

U . S . ___, ___, 117 S . Ct. 1040, 1049 (1997). Justice Black in

Graver

fully discussed the unfairness that would

result to the public under too broad a reading of the doctrine of

equivalents. He said,

4 Hereafter a manufacturer cannot rely on what the language of a patent claims. He must be able, at the peril of heavy infringement damages, to forecast how far a court relatively unversed in a particular technological field will expand the claim’s language after considering the testimony of technical experts in that field.

Graver Tank,

. Subsequent to the Court’s opinion

in

a lower court interpreted the Supreme

Court as having “decisively narrowed the scope of the doctrine of

equivalents as understood by many courts . . . .” Mid-America

Building Products Corp. v . Richwood Building Products, Inc.,

(E.D. Mich. 1997). Thus, in applying the

doctrine of equivalents, courts must balance the competing

policies of avoiding fraud on patents on the one hand, and

avoiding undermining the public-notice functions of the statutory claiming requirement on the other.

In this case, holding the yoke and keeper to be equivalent

to the nut and bolt would be unfair to the public. The doctrine

of equivalents is particularly unfair to the public when

stretched to cover foreseeable substitutions for the limitations

of the patent claim. In such a case, the inventor could have

defined the original patent claim in terms broad enough to

include such foreseeable substitutions, but instead chose to

define the claim more narrowly. Thus, “[A]s between the patentee

who had a clear opportunity to negotiate broader claims but did

not do so, and the public at large, it is the patentee who must

5 bear the cost of its failure to seek protection for this

foreseeable alteration of its claimed structure.” Sage Products,

supra,

. For instance, in Tanabe Seiyaku Co.,

supra, 109 F.3d at 732, the inventor defined his invention using

acetone, which is a category of ketone solvents. The accused

invention used butanone, another category of ketone solvents.

The court rejected the inventor’s claim that butanone was

equivalent to acetone, because “[a] person skilled in the art

would know that [the inventor] could have used the term ‘lower

alkyl ketone’ to describe a class of ketone solvents including

[both] butanone and acetone.” Id. Since the inventor chose to

define the claim narrowly as only acetone, it was impermissible

to erase “meaningful limitations of the claim on which the public

is entitled to rely in avoiding infringement.” Id. Likewise,

the court in Sage Products said, The claim at issue defines a relatively simple structural device. A skilled patent drafter would foresee the limiting potential of the [language used in the claim]. No subtlety of language or complexity of the technology, nor any subsequent change in the state of the art, such as later- developed technology, obfuscated the significance of this limitation at the time of its incorporation into the claim.

Sage Products, supra,

. Because the inventor

easily could have drafted his claim more broadly, it was thus

unfair to broaden his patent protection under the doctrine of

equivalents.

6 In this case, substitution of a yoke and keeper for the nut

and bolt was both foreseeable and foreseen by the inventors.

Erickson Affidavit ¶ 15 (attached to plaintiff’s objection to

defendant’s motion for summary judgment). The inventors could

have sought broader patent protection, but they specifically

limited their claim to “an externally threaded bolt” and “a nut.” Uraseal, as opposed to the public, should bear the cost of its

failure to seek broader protection to cover the foreseeable

substitution of a yoke and keeper for a nut and bolt.

In addition, Uraseal’s patent does not represent a pioneer

invention which is “to be given wider ranges of equivalence than

minor improvement patents.” Autogiro Co. of America v . United

States,

(Ct. C l . 1967). A pioneer invention is "a

patent concerning a function never before performed, a wholly

novel device, or one of such novelty and importance as to make a distinct step in the progress in the art." Boyden Power-Brake

Co. v . Westinghouse,

, 569 (1898). The plaintiff

admitted in its patent application that “[t]his is an old and

crowded art. Small changes and new combinations make significant

advances.” Exhibit E at U00042 (attached to plaintiff’s

objection to defendant’s motion for summary judgment). Since the

'530 patent is not a pioneer invention, the broad protection

Uraseal seeks under the doctrine of equivalents is inappropriate.

7 Furthermore, the EMC ground clamp improves upon the ‘530

patent, and the yoke and keeper is not simply an unimportant and

insubstantial substitution for the nut and bolt. In the '530

patent, the bolt and nut perform the function of holding the wire

in place by tightening the nut down on the wire by hand, and

there must be sufficient clearance to allow an operator to insert

his or her hand or a wrench to grasp the nut. The keeper of the

EMC has a slot dimensioned to receive the blade of a screwdriver,

so no clearance is required for tightening the keeper. In

addition, as defendant points out in its memo: The legs of the yoke are constrained within the keeper in a manner that prevents separation of the thread surfaces of the yoke from the thread surface of the keeper when the ground clamp is exposed to external forces or if the keeper is exposed to excessive torque. An external force applied to the legs of the slotted bolt will cause the legs to flex towards each other, resulting in separation of the thread surface of the bolt from the thread surface of the nut.

Defendant’s Memorandum at 1 7 . Thus holding the EMC ground clamp

to be outside the scope of Uraseal’s patent protection would not

be sanctioning a fraud on the patent. Rather, it would be

encouraging the improvement of existing technology.

Given this evidence, the court concludes that the yoke and

keeper are not equivalent to the nut and bolt. The yoke and

keeper add improved functionality to the invention, and such

improvements of prior inventions should be encouraged rather than

8 discouraged under an overbroad reading of the doctrine of

equivalents. Thus Uraseal has not met its burden of proving

infringement.

Conclusion

For the foregoing reasons, defendant’s motion for summary

judgment must be and herewith is granted.

SO ORDERED.

Shane Devine, Senior Judge United States District Court February 1 1 , 1998 cc: Paul C . Remus, Esq. Richard C . Nelson, Esq. Guy D . Yale, Esq.

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