Federal Circuit “Derails” Infringement on Railway Device Patent
March 27, 2001
Last Month at the Federal Circuit - April 2001
Judges: Clevenger (author), Smith, and Dyk
In Pandrol USA, LP v. Airboss Railway Products, Inc., No. 00-1161 (Fed. Cir. Mar. 27, 2001) (nonprecedential decision), the Federal Circuit affirmed a district court’s SJ of noninfringement for the first of two patents, but vacated the district court’s SJ of noninfringement for the second.
Pandrol USA, LP and Pandrol Limited (collectively “Pandrol”), the largest supplier of restraint systems for holding railroad track in place on railroad ties, is the exclusive licensee of both patentsin- suit, U.S. Patent Nos. 4,463,898 (“the ‘898 patent”) and 5,110,046 (“the ‘046 patent”). The patents relate to two parts of a railroad track restraint system—rail fasteners and seat assemblies. Rail fasteners typically keep rails in place on railroad ties by exerting a downward force on the flange of a rail. Seat assemblies are inserted between the rail and the tie for various purposes, including electrical insulation, noise and vibration reduction, and abrasion resistance.
Claim 1 of the ‘898 patent recites a rail fastening system comprising two components that are “complementary” in shape to provide a wedgelike interfitting. The “complementary” shape is claimed in the form of a U wherein the corners of the U have a radius of curvature sufficient to provide a wedging action.
The claims at issue in the ‘046 patent recite an abrasion-resistant rail seat comprising, in part, an abrasion-resistant plate that is “wider than a rail and extending beyond the flange of the rail,” and a layer of “adhering material” between the abrasionresistant plate and a rail tie for adhering the plate to the tie.
Airboss Railway Products, Inc., Airboss of America Corp., Robert M. Magnuson, and Jose R. Mediavilla (collectively “Airboss”) manufactures a three-piece seat assembly, similar in type to the one disclosed in the ‘898 patent, and a locking element used in rail fastening systems, such as the one disclosed in the ‘046 patent.
The district court construed the term “complementary” in the ‘898 patent to require that both the components be in “the shape of a U with curved corners.” With respect to the ‘046 patent, the district court construed “wider than said rail” to mean that the abrasion-resistant plate must be wider than the rail along its entire length, including within any cutout portions. It also construed “adhering material” to be “a layer of adhesive, such as a glue or epoxy, that bonds the plate to the tie.” Based on these constructions, the district court granted Airboss’s motion for SJ of noninfringement.
Pandrol urged the Federal Circuit to adopt a construction of the term “complementary” that would mean “a shape that accomplishes the function specified in the claim.” The Federal Circuit held that this construction was too broad because the patentee chose to include the term “complementary” in the claim language. As noted by the district court in its claim construction order, this language indicated that a “complementary” locking element would at least have a shape that is rounded to fit the clip holder. Hence, the Federal Circuit affirmed the district court’s claim construction. Because Pandrol had conceded that the accused locking element does not have curved corners, the accused device did not fulfill the requirement that the locking element be “complementary” with the clip holder in the manner recited in the claim.
The Federal Circuit then addressed the district court’s construction with regard to the two phrases in the ‘046 patent. The prosecution history of the ‘046 patent revealed that the “wider than said rail” language was introduced as part of a broader limitation that was added by amendment to distinguish a prior art patent having an abrasion plate that was “substantially the same width as said rail flange.” It further revealed that the “extension” related only to the corner “extensions” of the plate, as opposed to the cutout portions. Based on this evidence, the Federal Circuit concluded that the limitation “being wider than said rail and extending beyond the flange of said rail” only applied to the corner portions of the plate, and not along the rail’s entire length.
With regard to the district court’s construction of the “adhering material” limitation, Airboss argued that “adhering” essentially means “bonding.” Although “bonding” was used in the specification, the passage in which it appears could be read so that the term refers to the epoxy resin adhesives that comprised the first of two preferred embodiments of the invention. The second preferred embodiment contemplates the use of “an HDPE closed cell foam” in lieu of the epoxy resin adhesives. Furthermore, the dictionary definition of “adhere” indicates that bonding is not the only way to get two objects to “adhere” to one another. Even during prosecution, the Examiner used the word “adhere” broadly to include a plate being fastened down by nails or spikes. The Federal Circuit concluded that the district court had unduly restricted the limitation of “adhering material” to “a layer of adhesive, such as a glue or epoxy, which bonds the plate to the tie.”
Thus, the Federal Circuit affirmed the district court’s judgment with respect to the ‘898 patent because the accused components did not satisfy the “complementary” limitation. However, because the district court had incorrectly construed “wider than said rail” and “adhering material,” the Court vacated the judgment with respect to the ‘046 patent and remanded for further proceedings consistent with the opinion.