28
Apr
By Barry Herman
On May 4, 2009, the Federal Circuit is scheduled to hear oral argument in Norgren Inc. v. ITC (2008-1415).  Please note that Oblon Spivak represents SMC Corporation and SMC Corporation of America (“SMC”) in this matter.

By way of background, on October 6, 2006, Norgren Inc. (“Norgren”) filed a complaint with the ITC against SMC alleging violation of Section 337 by SMC’s importation and sale of certain connecting devices or clamps that connect together modular filters, regulators and lubricators (“FRLs”) used for conditioning compressed air in pneumatic systems.  After the Commission instituted an investigation (337-TA-587) and an evidentiary hearing was held, ALJ Carl C. Charneski issued an initial determination (“ID”) on February 13, 2008 in which he found no violation of Section 337 because SMC’s accused connectors do not receive generally rectangular ported flanges of the FRLs as required by the patent-in-suit.  Norgren petitioned for review, and the Commission rendered a final decision on April 14, 2008 adopting the ALJ’s ID.  Norgren appealed the Commission’s decision.

According to Norgren’s opening and reply briefs, the issues on appeal are:  (1) whether the ALJ improperly construed the term “generally rectangular ported flange” of the asserted claims by imposing the limitation that the flange must have four projecting rims; (2) whether the ALJ improperly limited the scope of claim 9 by excluding the FRLs to which the clamp is connected; (3) whether the ALJ erred in finding no literal infringement; and (4) whether the ALJ erred in finding non-infringement under the doctrine of equivalents.  Specifically, Norgren argues that the Commission incorrectly construed the terms “generally rectangular ported flange” and “adapted to engage the pair of ported flanges” to require the flanges to have four projecting rims because the patent specification teaches that the flange is the entire feature formed on the bodies of the FRLs and not just the part enclosed in the clamp, and that four projecting rims are not necessary for the proper function of the clamp.

According to the Commission’s brief, the issues on appeal are:  (1) whether the ALJ properly construed the term “generally rectangular ported flange;” (2) whether Norgren waived challenges to the finding of no literal infringement based on the construction of the term “generally rectangular ported flange” because of its failure to raise such challenges in its petition for review to the Commission; and (3) whether the Commission’s finding of non-infringement under the doctrine of equivalents should be affirmed because Norgren has not challenged the finding of estoppel under Festo.  Specifically, the Commission argues that:  (1) the ALJ’s claim construction is supported by the intrinsic evidence as well as the extrinsic evidence; (2) the ALJ properly applied the correctly construed claims and the facts in record to find no literal infringement; (3) the only literal infringement issue raised by Norgren in its petition for review concerned the proper construction of “generally rectangular ported flange” and, therefore, its arguments raised for the first time on appeal that the ALJ erred in finding that the scope of claim 9 does not cover FRLs or larger pneumatic systems that incorporate FRLs, and in attributing no weight to an “altered” exhibit, are not properly before the Court, and (4) the Commission’s finding of non-infringement under the doctrine of equivalents should be affirmed because Norgren makes no argument that the Commission erred in the application of Festo.

In SMC’s (intervenor) brief, SMC argues that:  (1) the Commission’s construction of “generally rectangular ported flange” is correct and its determination that SMC’s connector is not adapted to receive a generally rectangular ported flange as required by the asserted claims is supported by substantial evidence; (2) the “pivotally mounted” limitation should be construed to require a hinged connection with no loose parts; (3) the asserted claims would have been obvious under KSR because there is no dispute that the claims are directed to a combination of old elements with no new or unpredictable result and that the prior art discloses a hinged connector with no loose parts; and (4) Norgren’s new arguments raised on appeal for the first time should be deemed waived.
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