105 F.3d 1409: Valmet Paper Machinery, Inc. and Valmet, Inc., Plaintiffs-appellants, v. Beloit Corporation, Defendant-appellee
United States Court of Appeals, Federal Circuit. - 105 F.3d 1409
Jan. 28, 1997.As Amended on Grant of Rehearing May 1, 1997
Myron Cohen, Cohen, Pontani, Lieberman & Pavane, New York City, argued, for plaintiffs-appellants. With him on the brief were William A. Alper and Michael C. Stuart. Also on the brief were Brian E. Butler, Stafford, Rosenbaum, Rieser & Hansen, Madison, WI, and Michael E. Jaffe, Arent, Fox, Kintner, Plotkin & Kahn, Washington, D.C. Of counsel were Jill R. Newman, Arent Fox, Kintner, Plotkin & Kahn, and Martin B. Pavane, Cohen, Pontani, Lieberman & Pavane.
George P. McAndrews, McAndrews, Held & Malloy, Ltd., Chicago, IL, argued, for defendant-appellee. With him on the brief were Steven J. Hampton and Gregory C. Schodde. Of counsel were D. David Hill and Thomas J. Wimbiscus.
Before RICH, LOURIE, and BRYSON, Circuit Judges.
RICH, Circuit Judge.
Appellants Valmet Paper Machinery, Inc. and Valmet, Inc. (collectively "Valmet") sued Beloit Corporation for infringement of Valmet's patent on a drying machine used in making paper. Beloit counterclaimed for infringement of two patents it holds on drying-machine inventions. The district court granted summary judgment that Valmet's patent was not infringed, and that it did not anticipate Beloit's two patents. Following a jury trial, the court entered judgment that Beloit's patents were valid and infringed, and granted Beloit an injunction against further infringement. Valmet appeals. We reverse.
The patents in suit relate to the final drying portion of paper-making machinery. In the paper-making process, a system of large machines sprays a suspension of fiber and water onto a moving web. The machines then maneuver the wet web through a series of steps to remove the water, beginning with the formation stage where water drains from the web by operation of gravity. The second stage generally involves pressing additional water from the web with rollers. The last stage, the area of the inventions in this appeal, features heated drying cylinders designed to evaporate the remaining moisture as the web comes in contact with them.
The heated-cylinder segment of the drying process presents several challenges. The paper web moves through the drying machines at high speed, and these machines must avoid stretching or tearing the web. At the same time, the machines must dry the paper as evenly as possible, including both the top and bottom surfaces of the web. Conventionally, this stage has employed heated cylinders in a "two tier" setup. In a two-tier arrangement, one row of cylinders lies in an upper plane and a second row of cylinders lies in a lower plane. Looking along the length of a two-tier drying section, the sequence of cylinders applied alternates between the upper and lower planes such that the next cylinder in order is on the opposite plane. The paper web runs beneath a lower-plane cylinder, then over an upper-plane cylinder, then under a lower-plane cylinder, and so on. The lower cylinders apply heat to the top surface of the paper, and the upper cylinders to the bottom surface. This figure depicts a prior art two-tier dryer.1
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In 1981, a German patent application citing Soininen elaborated on the vacuum aspect of the Soininen invention. This Hauser application taught that it is more efficient to place individual suction devices within each of Soininen's perforated guide rolls, instead of using large walls to close off the entire space inside a guide belt. Hauser also emphasized benefits from moving the "suction guide rolls" closer to the heated drying cylinders to keep the web in contact with rolls or cylinders as much as possible. Although no patent issued, the Hauser application was published February 17, 1983. Beloit submitted only the German-language version of the Hauser publication to the patent examiner during prosecution of the two Beloit patents discussed below.
More recently, Beloit obtained patents on features of its "Bel-Champ" drying machine including patents No. 5,144,758 ('758 patent) issued September 8, 1992 from an application filed November 14, 1991, and No. 5,249,372 ('372 patent) issued October 5, 1993 from an application filed April 9, 1992. Basically, Beloit's patents claim a "single tier drying section" comprising "a first plurality of drying cylinders" with its own "dryer felt" and "vacuum rolls ... in close proximity" to their adjacent drying cylinders, for drying one side of the paper web, followed by a second mirror-image section for drying the other side of the web. Beloit argues that 1) the single-tier design, 2) the use of vacuum rolls, and 3) the close proximity of the vacuum rolls to the drying cylinders distinguish its invention from prior art dryer designs including Soininen and Hauser. Below is a figure from one of the Beloit patents.3NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Figure is the dryer portion of Fig. 2 of Goodwillie Patent No. 2,537,129. Small circles indicate guide rolls, large circles represent drying cylinders, and the dotted line shows the path of the paper web
Figure is Fig. 1 of Valmet's Patent No. 3,868,780. The web travels outside guide belt (heavy line) beginning at bottom left moving across to the right
Figure is Fig. 15 of Beloit's Patent No. 5,144,758