Metso Minerals, Inc. v. Powerscreen Int'l Distribution, Ltd.

METSO MINERALS, INC., Plaintiff-Appellee,

v. POWERSCREEN INTERNATIONAL DISTRIBUTION, LIMITED (now known as Terex GB Limited),POWERSCREEN NEW YORK, INC. AND EMERALD EQUIPMENT SYSTEMS, INC., Defendants-Appellants,ANDTEREX CORPORATION, Defendant-Appellant.

2011-1572

2012-1168

2012-1169

United States Court of Appeals for the Federal Circuit

Decided: May 14, 2013

NOTE: This disposition is nonprecedential.

Appeals from the United States District Court for the Eastern District of New York in No. 06-CV-1446, Judge Arthur D. Spatt.

MICHAEL C. STUART, Cozen O'Connor, of New York, New York, argued for the plaintiff-appellee. With him on the brief were LISA A. FERRARI and MARILYN NEIMAN.

JON R. TREMBATH, Merchant & Gould, PC, of Denver, Colorado, argued for the defendants-appellants, Powerscreen International Distribution, Limited, et al. With him on the brief were DANA P. JOZEFCZYK; RACHEL C. HUGHEY and DINA GRINSHPUN, of Minneapolis, Minnesota; and JOHN M. WHEALAN, of Chevy Chase, Maryland. Of counsel was NATHAN LANE, III, of Squire Sanders (US) LLP, of San Francisco, California.

VINCENT ALFIERI, Bryan Cave, LLP, of New York, New York, for defendant-appellant, Terex Corporation. With him on the brief were MICHAEL G. BIGGERS and JOSEPH J. RICHETTI.

Before DYK, MAYER, and REYNA, Circuit Judges.

DYK, Circuit Judge.

Appellants Powerscreen International Distribution, Ltd., Powerscreen New York, Inc., and Emerald Equipment Systems, Inc. (collectively "Powerscreen"), and Terex Corporation ("Terex") appeal from a judgment of the United States District Court for the Eastern District of New York. That judgment was based on a jury verdict that Powerscreen had infringed U. S. Patent No. 5,577,618 ("the '618 Patent") owned by appellee Metso Minerals, Inc. ("Metso"), and its finding that the asserted claims would not have been obvious. Because we conclude that the '618 Patent would have been obvious as a matter of law, we reverse.

BACKGROUND

This case concerns industrial machines known as "screeners" that use progressively smaller openings to sort rocks and other forms of aggregate material into piles of similarly-sized material, such as sand or gravel. An illustration of a screener with all of its components is shown below.

Screeners may be mounted on wheels or tracks; each form of mobile mounting offers different advantages and disadvantages relating to the screeners' portability. When the screener is in use, a loader drops raw, unsorted material into the screener's input hopper. The screener contains a central (or internal) conveyor that accepts the material from the input hopper and directs that material to a so-called "screen box" to be sorted and deposited onto the appropriate hoppers and lateral conveyors for distribution. See '618 patent col. 4 ll. 30-48 & fig. 2. The central conveyor extends longitudinally along the screener'schassis. Id. When the screener is used at a worksite, the lateral conveyors are unfolded into an "operative position" to facilitate distribution of sorted material of different sizes (these conveyors are sometimes referred to as "wing conveyors," given that they protrude from the screener like wings, as shown in the diagram above). When screeners are transported along roadways to reach a work site, the lateral conveyors are folded in a "transport position," so that they may travel along roadways in compliance with relevant regulations and permit requirements.

Metso asserted that screeners built and sold by Powerscreen infringed claims 1, 2, 3, 7, and 9 of the '618 patent. Claim 1 of the '618 Patent, the only independent claim in suit, recites:

A mobile, road-hauled aggregate material processing plant comprising:

a wheel mounted chassis extending in a longitudinal direction;

a plant support frame mounted on the chassis;

a raw material input hopper mounted on the plant support frame;

a material processing means mounted on the plant support frame and fed from the input hopper and having an outlet;

processed material outfeed delivery means mounted on the plant support frame and fed from the material processing means;

at least one lateral delivery conveyor incorporated in the outfeed delivery means, said conveyor comprising:

a conveyor frame tail section;

a conveyor frame head section;a tail articulation means connecting the tail section to the support frame in such a way that at least part of the tail section is movable relative to the plant support frame from an operative position extending laterally of the chassis with respect to the longitudinal direction for outfeed of processed material, to a transport position extending substantially upright above the chassis and positioned with respect to the input hopper and material processing means so that it does not project laterally beyond the chassis;

a head articulation means connecting the head section to the tail section in such a way that the head section is movable from an operative position to a transport position with the head section extending longitudinally above the chassis and positioned with respect to the input hopper and material processing means so that it does not project laterally beyond the chassis;

a plurality of rollers mounted on the conveyor frame; and

an endless conveyor belt mounted on the rollers to complete the assembly of a lateral delivery conveyor having tail and head sections, said belt defining a conveyor plane.

'618 patent col. 7 ll. 13-53.

As the claim makes clear, each lateral delivery conveyor claimed in the '618 patent is a single conveyor that comprises its own head and tail section. The head and tail sections are connected by a pivot that allows each conveyor to be folded in a different configuration depending on whether the lateral delivery conveyor is in the operative position or the transport position. In the transport position, the head and tail sections are folded at their pivot such that the tail section is positioned vertically (perpendicularto the screener's chassis) and the head section is folded to the side (extending along the length of the chassis), creating an L-shaped structure. According to the language of representative Claim 1, neither the head nor tail sections of a lateral delivery conveyor may "project laterally beyond the chassis" when the screener is in the transport position. '618 patent col. 7 ll. 39-40, 46-47. Two such conveyors, shown in the transport position, are depicted in Figure 4 of the '618 patent, reproduced below:

At trial, Metso argued that many of Powerscreen's screeners infringed the '618 patent either literally or under the doctrine of equivalents. In addition to arguing that the accused screeners were not covered by the claims, Powerscreen argued that the '618 Patent's claims would have been obvious in light of two prior-art screeners designed by the inventor of the '618 patent, Malachy Rafferty. One of these pieces of prior art, a screener called the Masterskreen Dominator, contained lateral delivery conveyors that folded such that the head section of the conveyor folded over the tail section of the conveyor when the screener was in the transport position (so that the two sections of the lateral conveyors were stored in an I-shaped formation, as opposed to the L-shaped formation claimed in the '618 patent). This vertical fold is depicted below:

The second piece of prior art raised by Powerscreen at trial, the Masterstock 70/80 stand-alone conveyor, was sometimes used in conjunction with screeners to distribute sorted materials. This Masterstock 70/80 conveyor, which was also invented by Mr. Rafferty, contained separate sections that could be folded at various pivot points, as the diagram below illustrates:

Unlike the Dominator, which only taught a vertical, over-the-top I-shaped fold, the Masterstock conveyor also taught a side-folding mechanism. The Masterstock 70/80 conveyor contained two hinges, the first of which allowed one section to fold over a middle section, as illustrated in Step 1—this fold is akin to the over-the-top fold of the Dominator described above. However, another hinge allowed a section of the conveyor to fold sideways (which one can analogize to the "head section" of the '618 patent's lateral conveyor) alongside the other folded components of the conveyor assembly (which one can analogize to the "tail section" of the '618 Patent's lateral conveyor), as shown in Steps 2 and 3. The entirety of the folded Master-stock conveyor is shown in Step 4. One can see clearly from Step 3 that the Masterstock conveyor taught a side fold, and Metso did not dispute this.

At trial, and in its post-trial filings, Metso argued that even though the Masterstock conveyor taught a side fold, it had no "stopping" mechanism to lock a side fold into an L-shaped configuration (such as the configuration shown in Step 3). Metso urged that "even if one of ordinary skill were motivated to combine the [Masterstock conveyor with the Dominator]," Powerscreen "could not establish that there was any reason to keep the conveyor of the Masterstock 80 unfolded at a 90° angle (i.e., in an L configuration) while being transported on a road," or that there was any "disclosure or suggestion to use a physical stopping mechanism to retain the conveyor at that 90° orientation." J.A. 11,829.

Immediately prior to the jury instruction conference, and in light of this prior art, Powerscreen moved for judgment as a matter of law (JMOL) on obviousness, but the court denied the motion and held that it would "reserve decision" on obviousness and "charge obviousness" to the jury. See J.A. 17,648.

The case then was submitted to the jury. On the issue of obviousness, over Powerscreen's objection, the jury was instructed that Powerscreen must "prove by clear and convincing evidence" that any applicable prior art machine "was fully operational and functional" prior to September 7, 1993. J.A. 12,953. The jury determined that "[c]laims 1 to 7 and 9 of [Metso's] '618 patent [we]re not invalid as obvious under 35 U.S.C. § 103 in view of...