United States Court of Appeals for the Federal Circuit
04-1069
PANDROL USA, LP and PANDROL LIMITED,
Plaintiffs-Appellees,
v.
AIRBOSS RAILWAY PRODUCTS, INC.,
AIRBOSS OF AMERICA CORP., ROBERT M. MAGNUSON,
and JOSE R. MEDIAVILLA,
Defendants-Appellants.
Allen I. Rubenstein, Gottlieb, Rackman & Reisman, P.C., of New York, New York,
argued for plaintiffs-appellees. With him on the brief was Raymond B. Churchill, Jr.
Richard R. Johnson, Shook, Hardy & Bacon, L.L.P., of Kansas City, Missouri,
argued for defendants-appellants.
Appealed from: United States District Court for the Western District of Missouri
Senior Judge Scott O. Wright
United States Court of Appeals for the Federal Circuit
04-1069
PANDROL USA, LP and PANDROL LIMITED,
Plaintiffs-Appellees,
v.
AIRBOSS RAILWAY PRODUCTS, INC.,
AIRBOSS OF AMERICA CORP., ROBERT M. MAGNUSON,
and JOSE R. MEDIAVILLA,
Defendants-Appellants.
___________________________
DECIDED: September 19, 2005
___________________________
Before CLEVENGER, RADER, and DYK, Circuit Judges.
RADER, Circuit Judge.
The United States District Court for the Western District of Missouri granted
summary judgment to Pandrol USA, LP and Pandrol Ltd. (Pandrol) because Airboss
Railway Products, Inc., Airboss of America Corp., Robert M. Magnuson, and Jose R.
Mediavilla (Airboss) did not produce clear and convincing evidence that U.S. Patent No.
5,110,046 (the ’046 patent) is invalid. Pandrol USA, LP v. Airboss Ry. Prods., Inc., No.
99-0182-CV-W-SOW (W.D. Mo. Oct. 15, 2003) (Opinion). The district court determined
that no reasonable juror could find that the ’046 patent fails to satisfy the written
description requirement of 35 U.S.C. § 112. Because the district court’s ultimate
determinations were correct, this court affirms.
I.
The ’046 patent claims a railroad track fastening system. ’046 patent, col. 2, ll.
45-66. Specifically, the patent claims a rail seat assembly that resists erosion of the
concrete rail tie by interposing an abrasion-resistant plate and a layer of adhering
material between the rail pad and the rail. Id. Figure 1 from the patent specification
shows the invention:
The patent specification describes the preferred embodiment, in part, as follows:
The improvement of this invention is to provide an abrasion plate 10
between the pad 4 and the tie 1. The plate 10 is smooth edged and
incorporates recesses 11 to fit around the clamp supports or shoulder 5.
The plate 10 may be bonded by layer 12 of adhesive (epoxy resin
adhesives are preferred) to the tie 1 or an HDPE closed cell foam of 1.5
mm thickness of the same size and shape as plate 10 fitted between plate
10 and tie 1.
Id. at col. 2, ll. 33-41.
04-1069 2
The district court determined on summary judgment that there was no genuine
issue regarding whether the ’046 patent’s original specification satisfies the written
description requirement of 35 U.S.C. § 112. Opinion at 7. Specifically, the district court
declined to invalidate claims because the specification includes sufficient disclosure to
support the claim limitations that include the terms “adhering material” and “sole
means,” id., both of which were added by amendment during prosecution. Those terms
appear in claims 1 and 3. Claim 1 recites:
An abrasion resistant rail seat for securing a rail to a concrete rail tie of the
type in which the rail has a flange and is secured to a concrete rail tie by
elastic rail clamps and an elastomeric rail pad insulates the rail from the
rail tie, the improvement comprising interposing an abrasion resistant plate
between said rail pad and said rail tie, said abrasion resistant plate
forming a water tight seal with said rail tie, said abrasion resistant plate
being wider than said rail and extending beyond the flange of said rail, and
a layer of adhering material between said abrasion resistant rail plate and
said rail tie for adhering said plate to said tie, said material being the sole
means for adhering said plate to said tie so that the replacement of said
abrasion resistant rail plate is facilitated.
’046 patent, col. 2, ll. 46-60 (emphases added). Claim 3 recites: “A rail seat as claimed
in claim 2, wherein said adhering material is a closed cell foam pad of one to two
millimetres [sic] in thickness and of similar shape to said plate.” Id. at col. 2, ll. 63-66
(emphasis added).
This case has already been before this court twice. In the first appeal, this court
affirmed the district court’s grant of summary judgment of noninfringement of U.S.
Patent No. 4,463,898 (the ’898 patent), but vacated the grant of summary judgment of
noninfringement of the ’046 patent and remanded the case for further proceedings.
Pandrol USA, LP v. Airboss Ry. Prods., Inc., 10 Fed. Appx. 837, 840-841 (Fed. Cir.
Mar. 27, 2001) (Pandrol I). On remand, Pandrol prevailed, securing a judgment
04-1069 3
awarding it damages and an injunction based on a finding of infringement of claim 3 of
the ’046 patent. Pandrol USA, LP v. Airboss Ry. Prods., Inc., No. 99-0182 (W.D. Mo.
Mar. 28, 2002). In the second appeal, this court affirmed the determination of
infringement, but vacated the district court’s ultimate judgment awarding damages and
an injunction pending resolution of the issue of invalidity. Pandrol USA, LP v. Airboss
Ry. Prods., Inc., 320 F.3d 1354 (Fed. Cir. 2003) (Pandrol II). This appeal follows from
that remand.
II.
This court reviews a district court’s grant of summary judgment without
deference. Kemco Sales Inc. v. Control Papers Co., 208 F.3d 1352, 1359 (Fed. Cir.
2000). Summary judgment is appropriate when the record shows that no issues of fact
remain and that the moving party deserves judgment as a matter of law. See Fed. R.
Civ. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Gen. Mills Inc.
v. Hunt-Wesson, Inc., 103 F.2d 978, 980 (Fed. Cir. 1997). This court reviews
compliance with the written description requirement as a question of fact. Purdue
Pharma LP v. Faulding, Inc., 230 F.3d 1320, 1329 (Fed. Cir. 2000). This court reviews
the issue of assignor estoppel under an abuse of discretion standard. Carroll Touch,
Inc. v. Eletro Mech. Sys., Inc., 15 F.3d 1573, 1579 (Fed. Cir. 1993). Obviousness is a
question of law premised on underlying findings of fact. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966).
Written Description
The district court observed that the “statements in the ’046 patent are more than
adequate to satisfy the written description requirement of 35 U.S.C. § 112.” Opinion at
04-1069 4
7. A patent specification must contain an adequate written description. 35 U.S.C.
§ 112, ¶ 1 (1994).
In 1967, this court’s predecessor inaugurated use of § 112 to prevent the addition
of new matter to claims. In re Ruschig, 379 F.2d 990 (CCPA 1967). Thus, in a recent
application of the written description doctrine, this court noted: “The purpose of the
written description requirement is to prevent an applicant from later asserting that he
invented that which he did not; the applicant for a patent is therefore required ‘to recount
his invention in such detail that his future claims can be determined to be encompassed
within his original creation.’” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561
(Fed. Cir. 1991)).
Compliance with § 112 requires sufficient information in the specification to show
that the inventor possessed the invention at the time of that original disclosure. See
Vas-Cath, 935 F.2d at 1561 (“Adequate description of the invention guards against the
inventor’s overreaching by insisting that he recount his invention in such detail that his
future claims can be determined to be encompassed within his original creation.”). The
possession test requires assessment from the viewpoint of one of skill in the art. Id. at
1563-64 (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, he or she was in possession of the invention.”
(emphasis in original)); Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 997
(Fed. Cir. 2000) (“The written description requirement does not require the applicant ‘to
describe exactly the subject matter claimed, [instead] the description must clearly allow
04-1069 5
persons of ordinary skill in the art to recognize that [the inventor] invented what is
claimed.’” (citation omitted)).
With respect to the “adhering material” claim limitation, the original written
description of the ’046 patent describes a closed cell foam pad. During prosecution,
amendments were made to both the claims and the specification. Thus, for the
purposes of the written description analysis, this court’s focus is on the original
disclosure. In its Pandrol I claim construction, this court determined that “a closed cell
foam pad is an ‘adhering material.’” 10 Fed. Appx. at 842. In Pandrol II, this court
restated: “Both the abstract and the preferred embodiment make clear that a gasket
between the rail plate and rail tie, in and of itself, constitutes an ‘adhering material.’”
320 F.3d at 1363. In its summary judgment determination, the district court properly
reached the same conclusion. Opinion at 7. The written description of the ’046 patent
discloses an “adhering material,” as claimed, in sufficient detail to show possession of
the full scope of the invention.
The specification discloses that the invention provides an effective adhesive seal
between the plate and concrete rail tie. ’046 patent, col. 2, ll. 6-10. The original
specification states:
Preferably the abrasion plate may be adhered to the surface of the
concrete tie to ensure that ingress of abrasive particles and water onto the
surface of the rail tie is avoided.
Id. at col. 2, ll. 7-10. At another point, the specification describes an effective seal as
“essential.” Id. at col. 2, l. 6. The ’046 patent then discloses two alternatives for
achieving this feature: either with epoxy or with an HDPE closed cell foam gasket. The
original abstract states:
04-1069 6
The plate may be bonded to the rail tie or a resilient gasket can be
interposed between the rail tie and the plate.
’046 patent, abstract. The original specification also states:
The plate 10 may be bonded by adhesive (epoxy resin adhesives are
preferred) to the tie 1 or an HDPE closed cell foam of 1.5 mm thickness of
the same size and shape as plate 10 is fitted between plate 10 and tie 1.
Specification of the ’046 patent at 4 (as originally filed). Thus, these passages show
that one way of providing an effective adhesive seal between the plate and concrete rail
tie is a closed cell foam pad.
With respect to the “sole means” limitation, claim 1 says that the adhering
material is the “sole means” for adhering the abrasion resistant plate to the rail ties.
’046 patent, col. 2, ll. 57-58. The ’046 patent describes and shows “a rail 2 which . . .
sits on a rail pad 4 interposed between rail 2 and the concrete tie 1.” Id. at col. 2, ll. 26-
28. “The rail is held in place by rail clamp 6 which is held in clamp support 5” and has a
toe portion that “bears down on rail flange 3 through the insulator 7.” Id. at col. 2, ll. 29-
32. Those passages, however, do not establish that the mechanical clamping system
also performs the adhering function. The patent shows that the clamping system
secures or clamps some parts mechanically but does not adhere. See id. at col. 1, ll.
66-67 (“However, once in this position [the plate] should not move significantly due to
the clamping force of the rail clips.”). The record does not show that the pressure
exerted by the railed clips causes or contributes to the adhering performed by the HDPE
foam. Thus, the disclosed adherents remain the “sole means” for that function.
In addition, the sole means limitation refers to the specific bonding of the rail tie
to the rail pad to prevent erosion of the concrete rail tie with a watertight seal. Thus, the
foam gasket primarily prevents erosion. In contrast, the primary purpose of the clamps
04-1069 7
is to lock or hold the system in place. The district court correctly discerned that the
specification provides adequate distinctions between clamping and adhering to show
possession of the “sole means” aspect of the claimed invention.
Inventor’s Testimony
Invoking the doctrine of assignor estoppel, the district court excluded Mr. Young’s
testimony. “Assignor estoppel is an equitable doctrine that prevents one who has
assigned the rights to a patent (or patent application) from later contending that what
was assigned is a nullity.” Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1224
(Fed. Cir. 1988). Thus, an assignor and parties in privity with the assignor are estopped
or barred from asserting invalidity defenses. Id. In this case, the district court invoked
that doctrine to bar an assignor from testifying against the validity of its own patent.
Courts frequently mention four justifications for the doctrine of assignor estoppel:
“(1) to prevent unfairness and injustice; (2) to prevent one [from] benefiting from his own
wrong; (3) [to adopt the] analogy [of]. . . estoppel by deed in real estate; and (4) [to
adopt the] analogy to a landlord-tenant relationship.” Id. (quoting Hal Cooper, Estoppel
to Challenge Patent Validity: The Case of Private Good Faith vs. Public Policy, 18 Case
W. Res. 1122, 1128 (1967)).
This case relies primarily on the “unfairness and injustice” justification. “[A]n
assignor should not be permitted to sell something and later assert that what was sold is
worthless, all to the detriment of the assignee.” Diamond, 848 F.2d at 1224. “The
principle of fair dealing as between assignor and assignee of a patent whereby the
assignor will not be allowed to say that what he has sold as a patent was not a patent
has been part of the fabric of our law throughout the life of this nation.” Id. (quoting
04-1069 8
Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 260 (Frankfurter, J., dissenting)).
Thus, assignor estoppel prevents an assignor from asserting that its own patent, for
which it may have received value upon assignment, is invalid and worthless. The
district court properly excluded Mr. Young’s testimony on this basis.
The district court also correctly excluded Mr. Young’s testimony because Airboss
did not produce his expert report before trial. Under Federal Rule of Civil Procedure
(FRCP) 26(a)(2), testimony offered as expert opinion requires the offer of an expert
report prior to trial. Mr. Young’s declaration contains expert opinion because he opines
on claim construction and interpretation of the original application. Thus, without an
expert report proffered for the record at any time, the district court correctly excluded
this testimony on the basis of FRCP 26(a)(2).
Obviousness
The district court excluded some prior art allegedly relevant to the validity of the
’046 patent under 35 U.S.C. § 103 because Airboss did not disclose it until the filing of a
cross-motion for summary judgment. Opinion at 6. The district court noted that Airboss
did not disclose this prior art when other prior art came forth in advance of trial. Id. In
addition, Airboss did not propose any jury instructions on obviousness. Rather, the
record shows that Airboss explicitly opposed any jury instructions on that subject. Id.
Finally, Airboss informed the district court that it was not asserting invalidity based on
obviousness. Id. Airboss asserts that the district court abused its discretion in refusing
to entertain Airboss’s obviousness challenge. The factors cited by the district court
support its conclusion that Airboss had waived invalidity based on obviousness. The
district court acted within its discretion.
04-1069 9
III.
In sum, this court affirms the district court’s decision that the ’046 patent’s
specification satisfies the written description requirement of § 112. In addition, this court
affirms the district court’s decision to exclude Mr. Young’s testimony in light of the
doctrine of assignor estoppel and because Airboss did not produce a timely expert
report under FRCP 26(a)(2). Finally, the district court did not abuse its discretion in
refusing to entertain Airboss’s obviousness challenge.
COSTS
Each party shall bear its own costs.
AFFIRMED
04-1069 10