NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
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JON E. KINZENBAW and KINZE MANUFACTURING, INC.,
Plaintiff/Counterclaim Defendants-
Appellants,
and
JAMES J. HILL and EMRICH & DITHMAR,
Counterclaim Defendants,
v.
CASE LLC (formerly known as Case Corporation,
now known as CNH America LLC) and NEW HOLLAND NORTH AMERICA, INC.
(now known as CNH America LLC),
Defendants / Counterclaimants-
Cross Appellants.
__________________________
DECIDED: April 26, 2006
__________________________
Before SCHALL, BRYSON, and DYK, Circuit Judges.
SCHALL, Circuit Judge.
DECISION
Jon E. Kinzenbaw and Kinze Manufacturing, Inc. (collectively “Kinze”) appeal the
judgment of the United States District Court for the Northern District of Iowa in
Kinzenbaw v. Case, LLC, No. 01-CV-133, slip. op. (N.D. Iowa Feb. 4, 2005). Following
a jury trial, the district court entered judgment of non-infringement in favor of Case, LLC
and New Holland North America, Inc. (collectively “Case”) on Kinze’s claim that Case
infringed claims 1, 2, 3, 9, and 22 of U.S. Patent No. 4,721,168 (the “‘168 patent”). For
its part, Case cross-appeals the district court’s denial of its motion for judgment as a
matter of law (“JMOL”) that claims 1 and 22 of the ‘168 patent, the only independent
claims of the patent, are indefinite. We affirm.
DISCUSSION
I.
The ‘168 patent relates to a large agricultural planter. ‘168 patent, col. 1, ll. 7-10.
When in use, it is pulled behind a tractor. To switch the planter from its use to its
transport position, the patent describes the lifting and rotating of the entire lift frame 90
degrees so that the width of the implement is diminished, thereby facilitating transport.
Independent claims 1 and 22 of the ‘168 patent read as follows:
1. An agricultural implement adapted to be pulled by a
tractor with a hitch and convertible between a use position
and a transport position without unhitching from the tractor
hitch, comprising: a carrier frame including a plurality of
ground support wheels; draft tongue means connecting said
carrier frame to the tractor hitch for permitting pivotal
movement between said tractor and said implement about a
first vertical hitch axis; lift frame means including a lift frame
and plurality of work units spaced along said lift frame, said
lift frame including at least an integral center frame section
extending to either side of the centerline of the implement in
the use position; mounting means for mounting said lift
frame such that said center frame section thereof is rotatable
about a second vertical axis of rotation; powered lift linkage
means connecting said lift frame to said carrier frame for
lifting said lift frame and said work units above said carrier
frame to a raised position wherein all of said units are
elevated above said support wheels; and power swing
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means for rotating said lift frame in said raised position about
said second vertical axis between said use position and said
transport position in which said lift frame is elongated in the
direction of travel; and characterized in that the said second
vertical axis of rotation is located such that the weight of said
lift frame means is substantially uniformly distributed to
either side thereof in the direction of elongation of said lift
frame means.
22. An agricultural implement adapted to be pulled by a
tractor with a hitch and convertible between a use position
and a transport position without unhitching from the tractor,
comprising: a carrier frame including a plurality of ground
support wheels; draft tongue means connected to said
carrier frame for connecting said carrier frame to the tractor
hitch for permitting pivotal movement between said tractor
and said implement about a hitch axis; lift frame means
including a laterally elongated integral lift frame and plurality
of ground-engaging work units spaced along said lift frame,
said lift frame being extended in a direction transverse of the
direction of travel of said tractor when said lift frame is in the
use position; powered lift linkage means connecting said lift
frame to said carrier frame for selectively lifting said lift frame
and said work units to a first raised position wherein said
work units are above the ground to permit said implement to
turn and to a second raised position above said first raised
position, wherein all of said work units are above said carrier
frame and above said ground support wheels in said second
raised position; and power swing means for rotating said lift
frame in said second raised position about a vertical axis
between said use position and said transport position in
which said lift frame is elongated in the direction of travel
and characterized in that said vertical axis of rotation of said
lift frame is substantially on the center line of said implement
and proximate the mid-point of said lift frame in its direction
of elongation and is located forwardly of at least two of said
ground support wheels of said carrier frame.
‘168 patent, col. 18, l. 45-col. 19, l. 4; col. 21, l. 41-col. 22, l. 21 (emphasis added).
Case manufactures and sells large agricultural planters. As indicated above,
Kinze sued Case for infringement of claims 1, 2, 3, 9, and 22 of the ‘168 patent. In its
answer, Case counterclaimed for a declaratory judgment of noninfringement and
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invalidity on the ground of indefiniteness with respect to all five claims. After the district
court construed the pertinent limitations of the claims at issue, see Kinzebaw v. Case,
LLC, 318 F. Supp. 2d 778 (N.D. Iowa 2005) (“Claim Construction Order”), the case
proceeded to trial before a jury. After deliberating, the jury returned a verdict of
noninfringement with respect to all five claims. However, the jury did not find the claims
indefinite. In due course, the district court denied the parties’ respective motions for
JMOL and proceeded to enter judgment in favor of Case on Kinze’s infringement claims
and in favor of Kinze on Case’s invalidity claim. Kinze’s appeal and Case’s cross-
appeal followed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a).
II.
We consider Kinze’s appeal first. On appeal, Kinze argues that the district court
erred in construing three limitations of claim 1 of the ‘168 patent. According to Kinze,
the district court’s erroneous claim construction and eventual instructions to the jury
amounted to harmful error, resulting in the jury’s verdict of noninfringement with respect
to the five asserted claims of the patent.1 We note that Kinze does not challenge the
jury’s verdict under the district court’s claim construction. Thus, claim construction is
the only issue before us on the direct appeal.
1
Kinze challenges the jury’s verdict of noninfringement of claim 9 alleging
that the district court erred by construing the claim to be in means-plus-function form.
Case responds that the construction of claim 9 was not at issue in the Markman hearing
and that Kinze made no objection to the jury instruction regarding this claim at trial. In
its reply brief, Kinze was unable to point to anything in the record to dispute Case’s
contentions. Accordingly, we find that Kinze failed to preserve for appeal this challenge
to the construction of claim 9.
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The three limitations of claim 1 that are the focus of Kinze’s appeal are the “draft
tongue means” limitation, the “power lift linkage means” limitation, and the “power swing
means” limitation. Pursuant to 35 U.S.C. § 112 ¶ 6,
[a]n element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material or acts in support
thereof, and such claim shall be construed to cover the
corresponding structure, material or acts described in the
specification and equivalents thereof.
We have stated that “[once] the court has concluded the claim limitation is a
means-plus-function limitation, the court must identify the function of the limitation.”
Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003) (citing Micro
Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999)). Next,
the court “ascertains the corresponding structure in the written description that is
necessary to perform that function.” Id. (citing Micro Chem., 194 F.3d at 1258)
(emphasis added); accord Omega Eng’g. Inc. v. Raytek Corp., 334 F.3d 1314, 1321
(Fed. Cir. 2003) (“[T]he structure must be necessary to perform the claimed function.”).
Lastly, “[s]tructure disclosed in the specification is ‘corresponding’ structure only if the
specification or prosecution history clearly links or associates that structure to the
function recited in the claim.” Altiris, 318 F.3d at 1375 (quoting B. Braun Med. v. Abbott
Labs., 124 F.3d 1419 (Fed. Cir. 1997)). We turn now to the three claim limitations at
issue.
A. draft tongue means
Claim 1 of the ‘168 patent provides: “draft tongue means connecting said carrier
frame to the tractor hitch for permitting pivotal movement between said tractor and said
implement about a first vertical hitch axis . . . .” ‘168 patent, col. 18, ll. 49-53 (emphasis
05-1269, -1270 5
added). The district court held that “the functional language associated with the term
‘means’ in this clause is connecting the carrier frame to the tractor hitch and permitting
pivotal movement between the tractor and the implement about a first vertical hitch
axis.” Claim Construction Order, 318 F. Supp. 2d at 789 (emphasis added). The court
then determined that “the structures disclosed in the specification which are necessary
to perform the connecting function are the telescoping hitch 15, the clevis 16 and the
bifurcated rear section of the telescoping hitch 17.” Id. at 791 (emphasis added). Next,
the court identified the telescoping hitch 15 and the clevis 16, but not the bifurcated rear
section of the telescoping hitch 17, as structures necessary to perform the pivoting
function. Id. The magnified portion of Figure 1 below provides a helpful illustration of
the structure at issue.
‘168 patent, Fig. 1.
Kinze argues that “connecting said carrier frame to the tractor hitch” is a
structural limitation, not a functional limitation. Kinze contends that “the connecting
phrase merely provides a structural orientation for the structure that corresponds to the
05-1269, -1270 6
means for permitting pivotal movement.” Appellant Br. at 33. We agree. The only
function in the claim for 112 ¶ 6 purposes is “permitting pivotal movement between said
tractor and said implement.”2
Case contends that even if “connecting” is not a function, the court’s claim
construction error is harmless because the bifurcated rear section of the telescoping
hitch 17 is necessary to carry out the function of “permitting pivotal movement between
said tractor and said implement.” Case explains that without the connection created by
the bifurcated rear section, the carrier frame would not be coupled to the tractor hitch,
thus preventing such relative pivotal movement. In other words, Case argues that, even
if the district court did err by construing the function of the draft tongue means as
including both connecting and pivoting, the error was harmless because, contrary to the
court’s construction, the bifurcated rear section of the telescoping hitch 17 is structure
necessary for performing the pivoting function. Consequently, as the district court
charged the jury, the bifurcated rear section of the telescoping hitch 17, along with the
hitch 15 and the clevis 16, are structure necessary for performing the function
associated with the draft tongue means limitation. See Claim Construction Order, 318
F. Supp. 2d at 791. Having considered Kinze’s arguments to the contrary, we agree
with Case. We therefore find no error in the district court’s charge to the jury with
respect to the draft tongue means limitation of claim 1.
2
In other words, the claim limitation could be reorganized as follows while
keeping the same meaning: draft tongue means, that connects said carrier frame to the
tractor hitch, for permitting pivotal movement between said tractor and said implement
about a first vertical hitch axis.
05-1269, -1270 7
B. power lift linkage means
Claim 1 of the ‘168 patent further provides: “powered lift linkage means
connecting said lift frame to said carrier frame for lifting said lift frame and said work
units above said carrier frame to a raised position wherein all of said units are elevated
above said support wheels . . . .” ‘168 patent, col. 18, ll. 59-64 (emphasis added). As in
the case of the draft tongue means limitation, the district court construed this limitation
to have two functions: connecting the lift frame to the carrier frame and lifting the lift
frame and work units. Claim Construction Order, 318 F. Supp. 2d at 795. For the same
reason that the district court erred in construing “connecting said carrier frame to the
tractor hitch” to be a function of the draft tongue means, the court erred in construing
“connecting the lift frame to the carrier frame” to be a function of the powered lift linkage
means. Again, however, the error was harmless. The reason is that the structure
determined by the district court to be necessary for performance of the erroneous
“connecting” function was also determined to be necessary for performance of the lifting
function. The structure the district court found necessary for performing both functions
included the forward bracket on the bell housing 147, the center struts 109 of the arched
rear mounting bar of the lift frame, and the horizontal mounting section 111 of the
arched rear mounting bar. Id. at 796.
It is not disputed that the “powered lift linkage means” limitation is in means-plus-
function form and that lifting is a function. Kinze contends that the district court erred
when it found the structure corresponding to the lifting function to include items 109,
111, and 147. See id. Figures 11, 12, and 13 are reproduced below and depict the
structures at issue. Figure 11 is a side view of the lift linkage in the use position, Figure
05-1269, -1270 8
12 is a similar side view with the lift frame in the raised position, while Figure 13 is a
fragmentary top view of the main lift mechanism shown in Figure 12.
‘168 patent, Figs. 11-13. Kinze asserts that the only structures necessary to perform
the lifting function are the four bars of the linkage, consisting of the upper and lower
links 152 and 157, which form two of the bars, and the rigid lift frame (28 on Figure 1)
and rigid carrier frame (24 on Figure 1), which form the other two bars. Kinze argues
that these links can be attached to the lift frame at any point because the lift frame is all
one rigid and integral welded structure, as is the carrier frame. Kinze further argues that
the four-bar linkage is a conventional and well-known mechanical device for performing
a lifting function, which can be connected to any part of the lift frame and to any part of
the carrier frame. Appellant Br. at 36.
Case responds that “[w]ithout the center struts 109, horizontal mounting section
111 and forward bracket 147 of the disclosed four bar linkage, the powered lift linkage
assembly 52 could not possibly connect the lift frame to the carrier frame or lift the lift
frame from a lower position to a raised position.” Cross-appellant Br. at 56. Case
05-1269, -1270 9
continues, “In fact, absent these items 109, 111, and 147, the remaining structure of the
linkage would lose its mechanical integrity and be incapable of performing any function.”
Id.
We agree with Case that items 109, 111, and 147 are necessary corresponding
structure to the lifting function. Kinze is correct that one could weld the linkage bars 152
and 157 directly to the lift frame while maintaining the lifting function and mechanical
integrity. However, this is more of a doctrine of equivalents argument than a claim
construction argument. The specification discloses specific components (structure) that
are essential to the lifting function, and such disclosures must be given due
consideration. Because we find that items 109, 111, and 147 were properly found to be
necessary corresponding structure to the lifting function, the district court’s error in
construing “connecting the lift frame to the carrier frame” to be a functional, rather than
a structural, limitation was harmless. Thus, the instruction ultimately given to the jury
concerning this limitation, see Claim Construction Order, 318 F. Supp. 2d at 796, was
correct.
C. power swing means
Finally, claim 1 of the ‘168 patent provides: “power swing means for rotating said
lift frame in said raised position about said second vertical axis between said use
position and said transport position in which said lift frame is elongated in the direction
of travel . . . .” (emphasis added). ‘168 patent, col. 18, ll. 64-68. The parties agree that
the “power swing means” limitation is in means-plus function form and that the function
recited is “rotating said lift frame in said raised position about said second vertical axis
between said use position and said transport position.” The parties dispute what
05-1269, -1270 10
structure in the specification corresponds to the claimed function. Figure 19 provides a
helpful illustration of the use position while Figure 20 depicts the transportation position
of this structure.
As demonstrated by Figure 19, when the rod of the hydraulic cylinder 225 is fully
extended, the lift frame is perpendicular to the center line of the planter, as depicted in
Figure 1 below. When the hydraulic cylinder 225 retracts the rod to the position shown
in Figure 20, the link 221 rotates clockwise around the pivot 222, which causes the link
218 and crank arm 217 to rotate the circular plate 215 counterclockwise, as shown in
Figure 20. When the plate 215 rotates from the position in Figure 19 to the position in
Figure 20, the lift frame 28 rotates about the center post from the use position
(perpendicular) to the transport position (parallel to the center line), as depicted in
Figure 4 below.
05-1269, -1270 11
The district court found the following structures to be necessary to perform the
claimed function:
the power swing linkage assembly 65 which includes a
circular plate 215, a crank arm 217 welded to the circular
plate 215, a connecting link 218 pivotally connected at one
end 219 to the crank arm 217 and pivotally connected at the
other end 220 to a link 221. Link 221 is pivotally mounted at
222 to the carrier frame. The structure further includes a
hydraulic cylinder 225 with its butt end pivotally connected at
226 to the carrier frame for horizontal movement about a
vertical axis with its rod end pivotally connected at 227 to the
link 221. Accordingly, the court concludes the power swing
means limitation covers each of these structures and their
equivalents.
Claim Construction Order, 318 F. Supp. 2d at 798.
Kinze contends that the district court committed an error of claim construction by
including intermediate links 218 and 221 as structure for the power swing means. Kinze
argues that these linkages perform the over-center and deceleration functions, as
opposed to the function recited in the claim. Kinze states, “The mere fact that they are
activated during the swing mechanism is no [ ] reason to include them in the swinging
function.” Appellant Br. at 38.
05-1269, -1270 12
Case responds that the intermediate links 218 and 221 are integral to the
operation of the swing linkage assembly. Case argues that without these links, the
mechanical connection between the hydraulic cylinder 225 and the plate 215 would be
severed, preventing the cylinder from moving the plate and rotating the lift frame.
Moreover, Case notes that it is unimportant that the intermediate links 218 and 221
perform additional operations of deceleration over-centering, as the relevant inquiry is
whether they are necessary for rotating the lift frame.
We agree with Case. Because the intermediate links 218 and 221 are necessary
to perform the function of “rotating said lift frame in said raised position about said
second vertical axis between said use position and said transport position,” the district
court was correct to construe this limitation to require such intermediate links.
III.
Case cross-appeals the district court’s denial of its motion for JMOL with respect
to its claim of invalidity by reason of indefiniteness. JMOL against a party is appropriate
when “a party has been fully heard on an issue and there is no legally sufficient
evidentiary basis for a reasonable jury to find for that party on that issue.” Fed. R. Civ.
P. Rule 50(a)(1).
“In ruling on a claim of patent indefiniteness, a court must determine whether
those skilled in the art would understand what is claimed when the claim is read in light
of the specification.” Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367,
1371 (Fed. Cir. 2004); Exxon, 265 F.3d at 1375. “A claim is indefinite if its legal scope
is not clear enough that a person of ordinary skill in the art could determine whether a
05-1269, -1270 13
particular composition infringes or not.” Geneva Pharm., Inc. v. Glaxosmithkline PLC,
349 F.3d 1373, 1384 (Fed. Cir. 2003).
Case argues that it met its burden to show by clear and convincing evidence that
claims 1 and 22 of the ‘168 patent are indefinite. Case challenges the final limitation in
claim 1: “characterized in that the said second vertical axis of rotation is located such
that the weight of said lift frame means is substantially uniformly distributed to either
side thereof in the direction of elongation of said lift frame means. ‘168 patent, col. 18, l.
68-col. 19, l. 4 (emphasis added). Case also challenges a limitation in claim 22 relating
to the lift frame means: “characterized in that said vertical axis of rotation of said lift
frame is substantially on the center line of said implement and proximate the mid-point
of said lift frame in its direction of elongation . . . .” ‘168 patent, col. 22, ll. 16-19
(emphasis added). Case urges that use of the words “substantially” and “proximate”
renders claim 22 indefinite.
While construing the term “substantially constant wall thickness,” Verve v. Crane
Cams, Inc., 311 F.3d 1116, 1119-20 (Fed. Cir. 2002), we explained that “[t]he question
is not whether the word ‘substantially’ has a fixed meaning as applied to ‘constant wall
thickness,’ but how the phrase would be understood by persons experienced in this field
of mechanics, upon reading the patent documents.” We wrote that “[e]xpressions such
as ‘substantially’ are used in patent documents when warranted by the nature of the
invention, in order to accommodate the minor variations that may be appropriate to
secure the invention” and “indeed may be necessary in order to provide the inventor
with the benefit of his invention.” Id. at 1120. Likewise, in Ecolab Inc. v. Envirochem,
Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001), the court held that “the use of the term
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‘substantially’ to modify the term ‘uniform’ d[id] not render this phrase so unclear such
that there is no means by which to ascertain the claim scope.”
The district court heard testimony from Mr. Kinzenbaw that substantially equal
weight means that the weight can vary plus or minus 10 to 15 percent right or left. The
court also heard testimony from Mr. Deckler, Kinze’s technical expert who has been in
the agricultural equipment field since 1960, that a 10% variation is not significant and
that most engineers would agree that 10% to 15% would be the outer limit of how far
the pivot could be offset while still conforming to the language of the claim specifying
“substantially uniform” weight distribution and “proximate the centerline.” Also, Kinze
points to sections of the specification showing that an objective of the invention is to
have substantially equal weight distribution about the centerline in both the transport
and use positions and that the claimed planters could be configured in many different
ways with the presence or absence of heavy equipment that would alter the weight
distribution. See, e.g., ‘168 patent, col. 4, ll. 4-16, ll. 45-53, col. 18, ll. 17-21, 32-35.
Case argues that the opinions of Kinzenbaw and Deckler were conclusory and
biased, and that neither witness could identify a single published document supporting
their 10 to 15 percent leeway theories. Case also argues that “substantially” and
“proximate” are words of degree and that no standard for measuring the degrees is
provided in the specification. Finally, Case adds that the words of degree are not as
precise as the subject matter permits in the farm machinery art.
It appears that in addition to reviewing the ‘168 patent and the documentary
evidence, the district court made credibility determinations after hearing live testimony.
Furthermore, considering the case law discussed above, we think Case fell far short of
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proving by clear and convincing evidence that the disputed claim limitations are
indefinite. Accordingly, the district court did not err by denying Case’s motion for JMOL
with respect to indefiniteness of the disputed claim limitations.
For the foregoing reasons, we affirm the district court’s judgments of
noninfringement and non-invalidity.
Each party shall bear its own costs.
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