Cooper Cameron Corporation v. Kvaerner Oilfield Products, Inc., Defendant-Cross-Appellant

Citation: 291 F.3d 1317Docket: 01-1383

Court: Court of Appeals for the Federal Circuit; July 11, 2002; Federal Appellate Court

SummaryOriginalCytator Case TreatmentBackward CitatorAnalysis

EnglishEspañolSimplified EnglishEspañol Fácil

Cooper Cameron Corporation appealed the U.S. District Court for the Southern District of Texas's decision favoring Kvaerner Oilfield Products, Inc., which granted Kvaerner summary judgment of noninfringement regarding claim 10 of Cooper's U.S. Patent 5,544,707 and invalidated the asserted claims of U.S. Patent 6,039,119 for inadequate written description under 35 U.S.C. § 112. Kvaerner cross-appealed the ruling that certain documents were not "printed publications" under 35 U.S.C. § 102. The Federal Circuit affirmed the noninfringement finding based on the doctrine of equivalents, ruling that Kvaerner's device did not infringe the '707 patent. However, it reversed the lower court's invalidation of the '119 patent claims for lack of written description and the determination that relevant references were not "printed publications." The patents in question relate to subsea wellheads designed to maintain well integrity during repair and maintenance, with significant differences in the scope of claims between the two patents. Kvaerner's device features a workover port positioned above the plugs, diverging from the requirement in the '707 patent that it be situated between the plugs. Cooper subsequently added claims of literal infringement of multiple claims from the '119 patent after its issuance.

Kvaerner argued that written reports from Subsea Intervention Systems Ltd. (SISL) anticipated the claims of patents '707 and '119. Cooper sought summary judgment, claiming these reports did not qualify as 'printed publications' under 35 U.S.C. § 102, which the court granted, ruling the reports were not prior art. Kvaerner also moved for summary judgment of noninfringement of the '707 patent, which was granted. The court found Cooper could not claim infringement under the doctrine of equivalents due to amendments made to claim 10 during prosecution, in line with Festo Corp. v. Shoketsu Kinzoku Kogyo. Additionally, the court ruled that Kvaerner's accused device did not meet the 'all-elements' rule, as its workover port's position did not legally fit the claim's description.

Kvaerner further sought partial summary judgment to invalidate the asserted claims of the '119 patent for failing to meet the written description requirement of 35 U.S.C. § 112. The court agreed, stating the claims were unsupported by the European patent application filed on June 1, 1992, as the original disclosure only described the workover port as located between two plugs. Cooper conceded that if the claims did not relate back to the 1992 filing date, they would be invalid, leading the court to invalidate claims 1, 3, 6, 7, 14, 16, 24, 29, and 31 of the '119 patent. Cooper appealed the decision, asserting jurisdiction under 28 U.S.C. § 1295(a)(1).

Summary judgment is warranted when there are no genuine issues of material fact, and the moving party is entitled to judgment. The evidence from the nonmovant must be accepted, and all reasonable inferences drawn in their favor. The appellate court reviews summary judgment grants de novo. Infringement, whether literal or under the doctrine of equivalents, is a factual matter, influenced by prosecution history estoppel and the all-limitations rule. Questions regarding the support of claims by written descriptions and the qualification of documents as 'printed publications' are also fact-based or legal conclusions influenced by factual determinations.

Cooper contends that the doctrine of equivalents should apply to the '707 patent despite Festo's implications, arguing that the 'workover port' limitation in claim 10 was not amended during prosecution. He claims the court misapplied the all-limitations rule, asserting that Kvaerner's device includes a workover port. Regarding the '119 patent, Cooper maintains that the original drawings depict a workover port located below the BOP bore and above the tubing hanger, arguing that the 'between the two plugs' limitation is not essential based on the precedent set in Gentry Gallery, Inc. v. Berkline Corp.

Kvaerner counters that Festo does apply, as Cooper added limitations to claim 10 for patentability reasons. Kvaerner asserts that the all-limitations rule was correctly applied, excluding infringement by equivalents due to the specific wording of 'between.' Additionally, Kvaerner argues that the '119 patent only describes the workover port as positioned between the plugs. In the event of an unfavorable ruling on infringement or validity, Kvaerner cross-appeals the district court's ruling that SISL documents are not prior art, claiming they were publicly available during the relevant period.

The court agrees with Kvaerner, stating that the district court rightly granted summary judgment of noninfringement for claim 10 of the '707 patent under the doctrine of equivalents. It emphasizes that each claim element is vital for defining the patent's scope and must be applied individually, reinforcing that the workover port in Kvaerner's device, which connects 'above' the plugs, cannot be equivalent to the claimed connection 'between' them. Ignoring the specific claim would vitiate the limitation, violating the all-limitations rule. Thus, the court concludes that the district court’s decision for noninfringement was appropriate.

The court declined to review the district court's alternative ruling regarding prosecution history estoppel and instead focused on the invalidity claim under 35 U.S.C. § 112. It agreed with Cooper that the district court incorrectly granted summary judgment declaring the '119 patent claims invalid for lack of written description. Citing the Vas-Cath case, the court reiterated that drawings can satisfy the written description requirement if they clearly represent what is claimed and demonstrate that the patentee invented it. The court emphasized that the drawings in the '119 patent, which depict a wellhead assembly with a workover port located as claimed, adequately describe the invention. The specification allows for multiple claims of an invention, and a particular arrangement is not necessary for validity. The court rejected Kvaerner's argument that the workover port's location must be strictly 'between the two plugs' to be valid, contrasting it with the Gentry case, where the inventor limited the controls' location, leading to invalidation. Here, the court found that the claims in the '119 patent were sufficiently described, and no reasonable fact-finder could conclude otherwise.

A new 'essential element' test was not established, as the decision in Gentry merely clarified that a broad claim is invalid if the specification indicates a narrower scope. Claims cannot exceed the supporting disclosure, which was limited in the Gentry patent regarding control placement. In contrast, Cooper's '119 patent claims are adequately supported by figures demonstrating the workover port's location. Kvaerner's challenge of invalidity due to inadequate description failed, as the drawing supports both the workover port's placement above the tubing hanger and its position between plugs. The court's summary judgment favoring Cooper was reversed, affirming that the claims are valid.

Regarding printed publications, the court incorrectly ruled that four SISL reports were not prior art under § 102. Kvaerner provided sufficient evidence that these reports were publicly accessible before the '707 and '119 patents' priority dates. The SISL reports had been shared with members and participants, and confidentiality claims did not preclude them as prior art. The district court also erred by concluding that a March 1992 report was not available until after June 29, 1992, as its earlier date suggested otherwise. On remand, the court must consider that reports need only be accessible to the interested public, which included those involved in the SISL joint venture.

Finally, while affirming the noninfringement of claim 10 of the '707 patent due to the all-limitations rule, the court reversed the summary judgment on Kvaerner's motion regarding the '119 claims' invalidity and on Cooper's motion concerning the SISL reports' status as prior art. The decision resulted in an affirmation in part and a reversal in part.