Norgren Can’t Connect With Infringement Claim

Posted on | June 18, 2008 | No Comments

Norgren Inc. v. ITC
ITC 337-TA-587

Norgren, Inc. has appealed the ITC’s ruling that SMC Corporation of Tokyo and SMC Corporation of America do not infringe its patent for connecting devices used in modular compressed air conditioning units. 

Norgren filed its complaint in 2006, alleging infringement of its 5,372,392 patent.  The connecting device at issue–essentially a flange/clamp assembly–is used to connect filters, regulators, and lubricators ("FRLs") in compressed air systems.  SMC did not contest that it manufactured the accused devices in Japan and China and imported them into the United States. 

On February 13, 2008, ALJ Carl Charneski issued his initial determination after a two-day hearing finding Norgren’s patent valid but not infringed. The ITC declined to revisit the ALJ’s initial determination.

Claim Construction

Norgren’s case hinged on the construction of the highlighted terms
in the portion of claim 1 shown below (as corrected by Norgren):

1. Connecting structure for contiguously connecting together a pair of fluid-flow elements, each fluid flow element including a generally rectangular ported flange so as to define a pair of ported flanges associated with the fluid-flow elements, said connecting structure comprising:
 

a four-sided, generally rectangular clamp adapted, in its operative clamping position, to engage, in parallel relationship with one another, the pair of ported flanges, one of said sides of the clamp being pivotally mounted
so that said one side can be pivoted out of said operative clamping
position in order to permit reception of said flanges into the clamp
and then pivoted back into said operative clamping position . . .

The Flange

While Norgren argued that the term "generally rectangular ported flange" is not a claim limitation because it appears in the preamble, it conceded that the term required construction to understand other disputed claim terms.  The core issue was whether the term "flange" includes the four "rims" projecting from the flange.  The ALJ concluded it does, reasoning that the claimed clamp engaging the flange has four sides so the flange must include the four rims.  This two-versus-four issue was critical as SMC’s accused products had two projections–not four–surrounding the port on its flange. 

Four-Sided Rectangular Clamp

Conversely, the ALJ determined that the claimed clamp must be able to accommodate (read: fit over) the four rims required by the term "flange."  Norgren argued that no such limitation exists in the claims, and urged the ALJ to find that its clamp could be used with a two-rimmed flange or possibly one with no rims.  The ALJ noted that nothing in the claim language, specification, or prosecution history suggests that Norgren intended the claimed clamp to fit over "only part of the flange"–i.e., less than four sides. 

Pivotally Mounted

The ALJ, however, sided with Norgren on its construction of pivotally mounted, finding that the term meant only "placed or fastened in a way that allows an object to move about a point."  SMC had argued that the claim required a hinge-like structure.

Infringement

SMC’s connectors have two ear-like projections rather than the claimed rectangular flange.  As the ALJ wrote, that "distinction is fatal to Norgren’s infringement case."  Attempting to persuade the ALJ otherwise, Norgren argued that SMC’s connectors are adapted for use with various flanges, including Norgren’s.  The problem: Norgren had to modify its own FRL unit to work with the SMC flange–not exactly a compelling demonstration in the eyes of the ALJ.

Turning to doctrine of equivalents, the ALJ ruled that Norgren’s claim was barred by prosecution history estoppel.  Claim 1 was initially rejected under section 112 and later amended to include the limitation requiring a "pair of ported flanges"–the  rectangular configuration that plagued Norgren’s claims throughout the ALJ’s opinion. 

ALJ 2, Expert 0

A subtle undercurrent in the initial determination is the ALJ’s dissatisfaction with Norgren’s expert.  In fact, the ALJ made the effort to reproduce two key snippets of testimony in his opinion that apparently did not help Norgren’s case.  First, Norgren’s expert admitted that he had never reviewed the prosecution history in rendering his opinion.  The same expert also admitted that he did not understand the difference between literal infringement and doctrine of equivalents infringement.  The ALJ noted that "Norgren would have been hampered in any attempt to put on a case of infringement under the doctrine of equivalents given the damaging testimony of its own expert." 

More Reading

ALJ Charneski’s Initial Determination (Public Version)

Counsel

For Norgren:  Ollila Law Group LLC, Boulder, Colorado (Carl Manthei, Curtis Ollila, and Craig Neugeboren)

For SMC: Oblon, Spivak, Alexandra, Virgina (Arthur Neustadt, Thomas Fisher, Barry Herman, and Eric Schweibenz)

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