EB: TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001)

Situation

• TurboCare has a patent for a "shaft sealing system for fluid turbines," sues GE for infringement
  • At high loads, a spring is compressed and a seal is made at small clearance position, but when the load is small (not in operation) the spring depresses and the device shifts to a large clearance position, eliminating any rubbing damage problem

• District court granted summary judgement of noninfringement of the claims 1, 5, 6, and 7. They also ruled claim 2 invalid for failing to meet written description criteria.
• Appellate court affirms invalidity of claim 2, but remands decisions regarding infringement of other claims. They also ruled that 2 of the 4 allegedly infringing devices were not infringing, but that the others could be infringing based on doctrine of equivalents (remanded in regards to those devices)

Issue

• TurboCare originally claimed "flat, s-shaped springs" but stated that "a considerable variety of springs can be employed" - he amends this during prosecution to say that "flat springs and others can be employed," because GE's machines used flat springs.
  • Is this new matter, or simply a clarification of original claims?
  • Appellate court says that there is an "issue of fact" as to whether new matter was added - so they remand back to the trial court

• Next issue of case is "between" v. "adjacent to" location of the spring
  • Patent was "lacking in any description of an embodiment in which the spring is located between the casing shoulders" - his disclose of "spring located...adjacent to said springs" is way to vague to constitute sufficient disclosure.
  • Thus, claim 2 was rejected based on failing to meet requirements of Section 112.
  • Note: patent was written in vague terms so as to avoid conflict with Warth prior art patent.

• Claim 2 - type of spring AND location of those springs
  • Disclosure says spring are at the end of the segment only (originally the claims had said adjacent to)
  • When claims were altered they eliminated position details - TurboCare argues that placement would be obvious to someone of ordinary skill in the art (obvious placement is at #17)

Concept: Means, Function Claim Language

• Section 112 - you can express claims "as a means or step for performing a specified function without the recital of structure, material or acts in support thereof.."
  • These claims will be construed "to cover the corresponding structure, material or acts described in the specification and the equivalents thereof"