TurboCare v. General Elec. Co. (901422128)

Read for 4/11/11

Reading Notes

• Decided by the CAFC in 2001
• TurboCare owns a patent for a shaft sealing system for fluid turbines
  • Two-position labyrinth-type seal to resolve the rubbing damage problem
• District Court granted summary judgment of noninfringement
  • CAFC affirms for claim 2 and affirms/vacate claims 1,5,6 and 7
• Device uses springs to control how much space is between the ring segments based on air flow and pressure
  • GE's apply a radial force while TurboCare's are circumferential but they work the same
• Claim 2 invalid for lack of written description
  • It did not clarify what was already disclosed but added new matter
• District Court granted no literal infringement and no doctrine because Turbo distinguished his from prior art based on differences his now had with GE's
• Claims 2 is unsupported by claim 1 because of the type of spring and the location
  • Issue of fact as to whether the amendment added new matter - no summary judgment
• Added disclose was no inherent according to below standard
• Affirm claim 2 is invalid for failure to meet written description requirement
• Means-plus-function format is not present here so S112P6 is not applicable
• GE claims Turbo disclaimed all embodiments using flat springs in the prosecution history
  • CAFC decided that his claims did include flat springs so this is not true
• Have to be careful not to read a limitation from the preferred embodiment into the language of the claims
  • Especially when another claim restricts the invention as the court's narrow construction
• Have to analyze all four infringing devices
  • Two do not infringe because of the location of the drilled holes which were disclaimed in prosecution
  • Other two do not literally infringe claim 1
• 1992 Diaphragm Version
  • GE claims it does not meet the small clearance position limitation
• GE claims doctrine is invalid because of estoppel
  • Claim was narrowed in amendment so no range of equivalents is available
    • CAFC determines nothing was actually narrowed
• Remand with regard to the 1992 Diaphragm Version and the 1995 Version devices

New Matter

• New matter requirement serves to ensure the patent applicant was in full possession of the claimed subject matter on the application of the filing date
  • Any added claims must find support in the original specifications
• For a disclosure to be inherent the missing descriptive matter must be present in the original application's specifications such that one skilled in the art would recognize such a disclosure