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Beloit Corp. v. JM Voith, GmbH
Citations: 626 F. Supp. 991; 228 U.S.P.Q. (BNA) 785; 1986 U.S. Dist. LEXIS 30381Docket: Civ. A. 84-0846-R
Court: District Court, E.D. Virginia; January 16, 1986; Federal District Court
Defendant J.M. Voith, GmbH sold a papermaking machine (PM3) to Chesapeake Corporation, allegedly infringing Beloit Corporation's U.S. Patents 3,889,334, Re. 30,268, and Re. 31,923. Beloit, based in Delaware, is engaged in manufacturing and developing papermaking machinery, and holds all rights to the cited patents. Voith, a German company, also operates in the U.S. market. The Justus reissue patent, U.S. Re. 30,268, pertains to a shoe type press in papermaking machines, designed to enhance dewatering efficiency. The patent development involved a study by Beloit’s Applied Physics Group in the 1960s, utilizing computer simulations to understand the pressing process better, highlighting the significance of nip time in dewatering. The contract with Chesapeake included an option for an extended nip press, exercised around October 19, 1984. Beloit Research initiated a project in early 1969 to explore the potential of increased residence time in the press nip for enhanced water removal during wet pressing. Various alternatives were evaluated based on ideas from the Applied Physics Working Group, ultimately leading to the development of a tensioned belt design that wrapped around a press roll. This design involved a four-roll setup for effective tensioning and guiding, and extensive data was collected on its performance with different configurations. The Research Group concluded that extending nip length could significantly improve water removal efficiency, although they identified limitations with belt materials under high pressure. Between 1968 and 1976, Beloit considered seven alternative structures, eventually focusing on a hydrostatic shoe design that utilized water lubrication, while also exploring oil lubrication options in 1975. Following a K-T analysis of design alternatives, the X-8 configuration was selected, leading to the development of the Experimental X-8 extended nip press in 1977. The X-1 experimental press, built shortly thereafter, featured a single shoe compared to the X-8's double shoe. Both machines were tested concurrently, and technology from the X-1 was transferred to a commercial unit, resulting in the Springfield No. 1 extended nip press for Weyerhauser, which started up in December 1980 without any operational issues. Research and development efforts from 1968 to 1977 totaled 18 man-years and incurred costs of $720,000. An additional $330,000 was spent on the X-1 pilot machine, and $582,000 on the X-8 experimental pilot machine from 1977 to 1980. The commercial extended nip press achieved significant market success, being selected by Weyerhauser after a thorough global search for new paper-making technology. Beloit has manufactured and sold 15 extended nip presses since 1981, which are priced significantly higher than two-roll presses. Beloit claims that Voith's Flexonip Press infringes multiple claims of its patent, specifically claims 1, 3, 10, 11, 12, and 18, with claims 1 and 10 being independent. To interpret these claims, the prosecution history of the reissue patent, U.S. Patent Re. 30,268, must be analyzed, particularly in light of East German Patent 79,919, which relates to a shoe-type press designed for improved water removal in papermaking. The East German patent features a concave shoe that works against a driven roll, incorporating a layered assembly for water removal. Beloit differentiated its invention from the East German patent by emphasizing its unique pressure profile, where dewatering pressure is built up at the leading edge of its shoe and maintained along its length, allowing for extended time under pressure to facilitate water removal from the web into the felt. In contrast, the East German patent focuses on a point of maximum pressure within the nip, with pressure release occurring at the trailing edge. Beloit asserted that the East German design shifts the point of maximum pressure toward the nip's end, while its own design maintains maximum pressure along the entire length of the shoe. This emphasis on prolonged pressure time led to the critical addition in Claim 10 that the shoe must have a radius substantially the same as the roll, a limitation pivotal for the claim's allowance. Claim 10 of the reissue patent was initially rejected by the Patent Examiner due to its similarity to an East German Patent disclosing a shoe with a concave surface pressed against a rotating roll. Beloit contended that their claim specified the concave surface as being "substantially the radius of the roll," arguing that this distinction contradicted the East German Patent and was essential for achieving a point of maximum pressure. The Examiner rejected the claim again, stating that "substantially" was not adequately defined, allowing for the radius of curvature to be larger than the roll while still achieving maximum pressure. In response, Beloit amended Claim 10 to specify that the concave surface extends along the full length of the shoe to ensure that dewatering pressure is uniformly distributed. Claim 1 already contained similar language regarding the shoe surface. Beloit asserted that maximizing the time under pressure was central to the Justus application and that any alternative interpretations of the claims would be meaningless. The Examiner clarified that "dewatering pressure" could not refer to just any pressure, as other shoes already operated under similar principles. The claims specifically describe a pressure arrangement producing a roughly quadrangular pressure curve, as opposed to a triangular one. The court noted that it did not need to settle the translation dispute regarding the East German patent, as the limitations in claims 1 and 10 were sufficiently supported by both interpretations. The court highlighted ambiguity in Beloit's interpretation of the term "compression zone," which could refer to either the entire press nip or only a portion of it. Voith's translation, referring to the "effective zone," was deemed more accurate, but the court found no evidence that Beloit misled the Examiner. Finally, the East German patent emphasized the importance of maximizing time spent in the nip, and Beloit’s commercial extended nip press did not achieve maximum pressure across the entire length of the shoe. The Justus Reissue patent specifies the necessity of a pivot or equivalent mechanism that allows a shoe to rotate around a single axis, as outlined in independent claims 1 and 10. Claim 1 details "means for pivotally supporting the shoe about a pivotal axis extending transversely of the direction of the belt travel," a phrase requested by Beloit during the patent application process. Claim 10 includes "means supporting said shoe accommodating movement of the shoe about an axis parallel to the axis of the roll," which was added following a request from the Examiner. Dr. Steiner of Voith identified the advantages of long nip presses for heavier paper grades by studying Wahlstrom articles and initiated research on extended nip presses in 1977. His work involved literature review and discussions on various long nip designs. In the late 1970s, Mr. Henseler became the executive in charge of paper-making machinery at Voith and emphasized the importance of developing brown paper machines, leading to the formation of a working group in 1979 focused on creating a wide nip press. This group explored various press types but ultimately favored the Flexonip concept. Christian Schiel, an experienced mechanical engineer, was the chief designer of the Voith Flexonip long nip shoe press and the Profilroll counter roll for the Chesapeake PM3 machine. He incorporated concepts disclosed in an East German patent while also making pioneering innovations. Although Voith gained insights into the Beloit extended nip press during its development process, it did so as part of standard competitive practices, similar to Beloit's own acquisition of information about Voith's Flexonip installations. The Voith Flexonip press features a shoe with a radius significantly larger than that of its roll, with the counter roll having a diameter of 1144 mm (radius of 572 mm) and the shoe exhibiting an internal curvature radius of 620 mm, exceeding the Profil roll's radius by 48 mm. A long nip press typically consists of a belt, tube or sleeve, oil film, two felts, and a web, totaling approximately 8 mm in thickness. The Voith Flexonip press demonstrates a distinct pressure profile characterized by a gradual rise and a rapid descent, differing from the pressure profile associated with the Justus reissue patent by Beloit, and more closely resembling that of an East German prior art press. In the Flexonip press for the Chesapeake PM3 machine, Voith implements a triangular pressure distribution curve with a hump on top. The press shoe is designed as a free-floating unit rather than one that pivots, with the shoe and piston combined into an integral structure that moves together without relative motion. This unit operates within a hydraulic cylinder, which is pressurized to maintain contact with the roll. The seals around the piston allow for flexibility, enabling the shoe to achieve equilibrium orientation relative to the roll. In contrast, the Beloit shoe operates with a vertically guided piston and pivots on a rod, resulting in a fixed positioning mechanism influenced by both the top roll and the pivot rod. The Voith shoe, however, floats against the roll and can move in multiple directions without being constrained by a pivot. Additionally, the Voith design incorporates a clearance space of up to 4 mm around the shoe to accommodate thermal distortion and facilitate unrestricted movement, essential for achieving the desired pressure profile. The shoe can move freely in three-dimensional space (X, Y, Z planes) and does not pivot around a fixed center of mass; instead, its movement axis varies based on the balance of forces, which are impacted by thermal conditions, web irregularities, and hydraulic pressure levels. The level of ordinary skill for a worker in the relevant field during the invention of the Justus Reissue Patent (Re. 30,268) is characterized as that of a graduate engineer or mechanic with mechanical experience, particularly in papermaking and pressing methods. Voith's primary argument against the patent's validity is based on prior art, specifically the combination of the Stenberg patent (U.S. Patent 3,556,939) and an East German patent, which allegedly teaches a pivotally mounted shoe in a hydrodynamic extended nip press. However, neither patent demonstrates the ability to achieve maximum pressure throughout the nip, a critical limitation of the Justus Reissue patent, thus failing to establish obviousness. If the prior art were to cover all claims of the Reissue except for the pivot, the Court would likely consider the pivot's use obvious. The Stenberg patent does show a hydrodynamic shoe press with a pivotally mounted shoe that can pivot to an equilibrium position. Additionally, a similar pivotally mounted shoe is referenced in the Handbook of Fluid Dynamics and in Beloit's Controlled Crown Roll Shoes. The guide patent (U.S. Reissue Patent Re. 31,923), issued to Edgar J. Justus and Arnold Roerig, aims to improve the support and guidance of the belt in an extended nip press to prevent deviation at high speeds. Previous methods involved tightly stretching belts over support rolls, but the extended nip press introduced challenges requiring a belt to be driven through a long nip with specific configurations. The guide patent reduces the number of parts required for this arrangement, ensuring the belt runs freely by maintaining a small gap between the guide surface and the belt. Beloit claims it has not manufactured any products based on the guide patent. The guide patent describes a mechanism for controlling flutter and maintaining initial tension on an open-ended belt that runs over a shoe, featuring an internal guide. Figure 1 illustrates an "apple shaped" structure that facilitates continuous movement of the belt in a closed loop, ensuring the belt is self-aligning due to a free space between the belt and the shell. Beloit claims Voith infringes on claims 1, 2, 3, 4, and 6, all dependent on claim 1, which specifies a guide means for supporting the belt with a smooth, curved surface slightly smaller than the belt's circumference, allowing for self-alignment along the guide’s circumference. The term "continual smooth sliding surface" refers to a repeated surface that does not damage the belt, while "self-aligning" indicates alignment in the machine or circumferential direction without implying cross-machine alignment. The guide patent aims to prevent belt flutter when the machine is not operating, ensuring contact with the guide under unstable conditions. An equivalent guide may be a continuous piece or sections arranged to form a slightly smaller circumference than the belt’s natural path. In contrast, the Voith Flexonip press does not utilize a belt but a tube that maintains its shape through circular heads and is held under tension by springs. These springs ensure the tube retains a circular form without contacting the rails inside, which do not fulfill the criteria of the smooth, continual surface defined in the guide patent. The Flexonip press for the Chesapeake PM3 papermaking machine features an I-shaped cross-section beam that houses a hydraulic cylinder and supports a shoe-piston unit. Four elongate rails, located within the upper half of the tube, allow for the initial installation of the tube by enabling it to slide in the cross machine direction and provide uplift to prevent sagging when the machine is not in use. The Voith tube has a minimum clearance of 3 mm before inflation, which increases upon inflation, further distancing the tube from the rails. Voith's original long nip press utilized adjustable radial rails for stabilization during operation, although adjustments were rarely needed. In contrast, the Chesapeake Flexonip press does not include adjustable rails. The four rails in the Flexonip press do not constitute a continuous sliding surface, as they occupy less than ten percent of the tube's circumference and are not in contact with the tube during operation, preventing unwanted drag that could reduce efficiency. The Flexonip tube operates under a distinct principle compared to the Beloit guide means, being closed at both ends and inflated before operation, raising it off the installation rails. Oil collects at the bottom of the tube in both the Voith laboratory and Nettingsdorf presses, and it is anticipated to do the same in the Chesapeake press. Initially, the oil pulls the center of the tube down, but once the press starts, pneumatic pressure inflates the tube, enabling siphons to remove the oil. After the press is operational, lower air pressure maintains the tube's round shape, as no oil sump exists within the tube during running conditions. When the Flexonip press tube is inflated, it does not contact any internal rail, even during operation. This lack of contact is evidenced by the absence of resistance to rotation, as noted in a related incident concerning oil pressure. The absence of contact is attributed to several factors: the circumferential speed of the tube creating centrifugal force, internal air pressure, and spring tension on the tube's end rings. The Beloit Drive Patent (U.S. Patent 3,889,334), issued on June 17, 1975, pertains to a controlled deflection roll drive for a paper-making machine. It details a roll shell driven by a ring gear that meshes with a drive pinion located radially outward. As the roll shell deflects during use, the ring gear tilts, necessitating that the pinion remains aligned with it for proper function. A flexible coupling is employed between the drive shaft and the pinion to accommodate this tilting, ensuring that the pinion's axis can adjust while maintaining gear alignment. Additionally, the operability of the Beloit Drive Patent hinges on the meshing teeth of the ring gear and pinion, which are responsible for maintaining alignment. When the ring gear tilts, this causes the pinion to tilt as well, but the spline connection generates moments of force that affect the pinion's alignment, complicating the drive's operation. The axis of the pinion in the described drive system intersects the axis of the ring gear, resulting in partial inward turning of the pinion toward the ring gear. The drive patent identifies the only aligning force as the drive aligning force from the meshing of the pinion and ring gear, but tooth forces in the spline coupling are greater, preventing proper alignment when the ring gear is deflected. Voith failed to demonstrate the extent of misalignment in such cases. Although the Beloit drive patent seems operable, minor misalignments could lead to gear wear. Beloit denies having designed or constructed a drive per the patent claims, despite preparing a working drawing. Voith cites various prior art patents, including the Andriola, Whittum, and Danielsson patents, as references against the Beloit drive patent. While these patents have similar structural elements, they differ as systems, making the Beloit invention non-obvious. The Voith Flexonip drive operates under a different principle and does not infringe on the Beloit patent, being more novel. The Beloit drive allows the roll shell in an extended nip press to deflect without misaligning the gears, contrasting with earlier methods that used flexible connections to accommodate deflection, as seen in the Andriola patent. The Andriola patent, with similar elements to the Beloit drive, employs a spline to couple the ring gear to the roll shell. The Beloit invention deviates from traditional construction methods, and the distinctions between the claims and the Andriola patent render the inventions non-obvious to a skilled worker in the field. U.S. Patent 3,855,681, issued to Andriola on December 24, 1974, was involved in an interference proceeding with the drive patent application, which was granted on June 17, 1975. The Whittum patent (U.S. Patent 2,965,920), assigned to Farrel Birmingham, shares fundamental elements with the Beloit drive patent, such as splines, gears, and a herringbone design but operates as a distinct system involving a standard calendar stack with one driven roll. The differences between the inventions in the claims at issue and the Whittum patent, as well as with U.S. Patent 3,678,775 (Danielsson), render the inventions nonobvious to someone skilled in the relevant field. The PTO considered the best prior art during the drive patent's prosecution. Beloit claims infringement of claims 1, 2, 3, 5, 6, 7, and 9 of the drive patent, with claim 1 being independent and the others dependent. Claim 1 stipulates that the pinion and ring gear must have drive aligning teeth, which are crucial for maintaining alignment. This alignment must occur around all axes due to the meshing of the gear teeth. In contrast, the Voith drive functions on a different principle, where a tilting force misaligns the gears before realigning them through restraining elements, deviating from the Beloit design that relies on meshing teeth for alignment. The Voith drive's design includes an eccentric jack shaft that is double spline connected to the pinion and slightly offset from the ring gear's axis. This connection allows the jack shaft to swing the pinion eccentrically, creating initial misalignment before attempting to realign it. Therefore, the operational principles and mechanisms of the Voith drive significantly differ from those outlined in the Beloit drive patent. The pinion and ring gear are equipped with coaxial disks or pitch cylinders that facilitate initial alignment by coming into contact when the pinion is driven toward misalignment. This process ensures that alignment is achieved not through the direct meshing of their teeth, but through the pitch cylinders. If the roll shell causes the ring gear to tilt, misalignment occurs, creating a gap between the pitch cylinders. The eccentric double splined jack shaft then tilts the pinion until the pitch cylinders make contact again, restoring alignment and improving load distribution, thereby reducing wear and friction on the gear teeth. The tilting of the Voith pinion is influenced by the crank effect of the inclined stub shaft and the friction from the spline connection. Without the pitch cylinders, the Voith press drive would face misalignment issues, as the gear teeth alone do not maintain alignment; instead, it is the combination of the eccentric jack shaft and the pitch cylinders that ensure proper alignment. In terms of legal considerations, this action falls under U.S. patent laws, granting the court jurisdiction. Voith, as an alien corporation, is subject to appropriate venue rules. The case involves allegations of infringement by Voith's Flexonip press regarding specific claims of the Justus reissue patent. Claim construction will involve analyzing the patent's prosecution history, including representations made to the Patent and Trademark Office, which are critical in interpreting the claims and distinguishing the invention from prior art. Beloit invested significantly in developing its extended nip press but later discovered that its invention was preempted by an East German patent, which disclosed a shoe with a concave surface pressed against a rotating roll and emphasized the importance of extended nip time. To differentiate its claims from the East German patent, Beloit had to limit them to a narrow improvement, specifically producing a quadrangular pressure curve rather than a triangular one. The court is required to restrict claims 1 and 10 to this specific operation due to representations made to the Patent Examiner. For infringement to be established, Beloit must demonstrate that Voith's accused press contains every element of the asserted claim (literal infringement) or its substantial equivalent (Doctrine of Equivalents). Literal infringement necessitates that the accused device embody every element of the claim. If literal infringement is not evident, it may still be established if the claimed and accused structures are substantially the same in usage and result. The scope of equivalents is determined by the knowledge of skilled individuals in the art concerning interchangeable elements. The doctrine of equivalents is applied more broadly to pioneering inventions, while improvements over prior art are subject to a narrower interpretation. As Beloit's invention is deemed only an improvement over the East German patent, its claims must be narrowly construed, allowing Voith to utilize variations of the prior art that do not include Beloit's claimed improvements. Regarding the claim of rotation about an axis, the court interprets it narrowly, concluding that a structure is equivalent only if it permits rotation or pivoting about a single axis parallel to the roll's axis. The Voith Flexonip press shoe does not meet this criterion. Voith's Flexonip press is characterized by a free-floating shoe that rotates around multiple axes, differing fundamentally in operation from Beloit's extended nip shoe, thereby indicating no infringement on Beloit's patent claims. Beloit is estopped from invoking the doctrine of equivalents concerning the shoe's curvature, as it previously argued for its invention's superiority over East German prior art for patentability. Consequently, the Flexonip press fails to exhibit a shoe curvature that applies dewatering pressure along its full length. The pressure profile produced by the Flexonip press shows a gradual rise followed by a rapid descent, contrasting with the profile required by Beloit's Justus reissue patent. Therefore, the Flexonip press does not infringe any claims of the Justus reissue patent, including Claims 1 and 10. Regarding validity, a patent is presumed valid, with the onus of proving invalidity resting on the challenger, as established by 35 U.S.C. 282. The presumption does not confer independent evidentiary value but shifts the burden of proof to the party asserting invalidity. The issuance of a patent by the PTO does not bind courts. Anticipation invalidates a patent if all elements of a claim are found in a single prior art reference, but no prior art anticipates the Justus reissue, which claims a unique operational improvement in achieving maximum pressure along the shoe's length. A patent is deemed invalid due to obviousness if the differences between the patented subject matter and prior art suggest that the invention would have been obvious to someone with ordinary skill in the relevant field at the time of invention, as outlined in 35 U.S.C. 103. Determining obviousness involves assessing the prior art's scope and content, the differences from the claimed invention, and the skill level of an ordinary practitioner. Secondary considerations, such as commercial success and long-felt needs, can also inform the obviousness analysis, provided a nexus is established between the invention's merits and the secondary evidence. In this case, no nexus was demonstrated between the commercial success of Beloit's extended nip press and the claimed invention, as success was attributed to an East German patent. The court concludes that, despite the lack of nexus, the differences between the claimed inventions and the prior art indicate nonobviousness to someone skilled in the art. Specifically, no prior art teaches achieving maximum pressure along the full length of the nip, a critical limitation of the Reissue patent. Although prior patents like Stenberg and others reveal pivotally mounted structures, the court questions the operability of the claimed invention, emphasizing that claims must specify a structure capable of performing its intended function. The Court determined that Voith failed to demonstrate that Beloit's patented structure is inoperable, affirming the validity of U.S. re. 30,268. Regarding the GUIDE PATENT (U.S. re. 31,923), Beloit alleges Voith infringes claims 1, 2, 3, 4, and 6, all dependent on claim 1, which describes a guide means for supporting a belt with a smooth outer surface for self-alignment. The Court found that the Voith Flexonip press does not infringe this patent, as it operates on a fundamentally different principle, utilizing an inflated tube rather than a belt. The internal rails of the Flexonip press do not meet the requirements of a guiding means or provide a smooth sliding surface as specified. Additionally, the tube's motion is not guided along its entire circumference due to reliance on internal pressure. Voith did not challenge the validity of the GUIDE patent, and the Court confirmed that the prior art considered by the Patent Examiner justified the patent's issuance, as the differences from prior art render the inventions nonobvious. In relation to the BELOIT DRIVE PATENT, Beloit claims infringement of claims 1, 2, 3, 5, 6, 7, and 9, with claim 1 being independent. This claim specifies that drive aligning teeth are required between the pinion and ring gear to maintain alignment. The Court noted that the Voith drive operates differently, applying a misalignment force before realigning the gears, which is distinct from the meshing gear teeth method employed by Beloit's drive patent. The Voith drive, while sharing some structural elements with the Beloit patent, operates in a significantly different manner, rendering it non-infringing. The limitation in Claim 1 of the drive patent, which requires drive aligning teeth between the pinion and ring gear, is not fulfilled by the Voith Flexonip press's counter roll drive. Consequently, there is no infringement on any claims of the drive patent by Voith. Regarding the validity of the Beloit patent, the court addressed Voith's assertion of inoperability, acknowledging potential gear misalignment but ultimately determining that the Beloit patent is operable. Voith's cited prior art does not render the Beloit invention obvious; the differences between them would not be apparent to someone skilled in the field. The best prior art was reviewed and considered by the patent examiner, confirming the validity of Beloit's U.S. Patent 3,889,334. In the counterclaim of patent misuse, Voith alleged that Beloit misused its patents by suing on patents related only to a hydrostatic shoe press and threatening to introduce additional patents into the case. However, the court, based on the testimony of Beloit’s Patent Counsel, found Beloit's actions to be reasonable and ruled that there was no patent misuse. The findings of fact and conclusions of law will be sent to all counsel of record.