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THE TIMKEN COMPANY v. SKF U.S.A.

March 22, 2002

THE TIMKEN COMPANY, ET AL., PLAINTIFFS,
V.
SKF U.S.A., INC., D/B/A MBC BEARINGS, AN UNINCORPORATED DIVISION OF SKF U.S.A., INC. DEFENDANT.



The opinion of the court was delivered by: Eduardo C. Robreno, J.

MEMORANDUM

This is a patent infringement action, in which The Timken Company ("Timken") alleges that SKF U.S.A., Inc. ("SKF") has infringed upon its United States Reissue Patent No. Re. 35,860 ("'860 patent"). The '860 patent uses a particular corrosion resistant coating on a standard roller bearing. The focus of this litigation is not the structure of the roller bearing, but the protective coating, or plating, applied to the bearing. Timken argues that the patent protects coatings consisting of all zinc alloys, while SKF contends that the patent is limited to a coating of a zinc-nickel alloy, and thus SKF's bearing with a pure zinc coating does not infringe upon Timken's patent. Before the court is SKF's motion for summary judgment.*fn1 Because the court determines that the patent is limited to a zinc-nickel alloy, the court will grant SKF's motion for summary judgment.

• The history of the '860 patent begins with United States Patent Application S.N. 07/710,656 filed on June 5, 1991, listing Peter Ward as the sole inventor. This application, "Corrosion-Resistant Zinc-Nickel Plated Bearing Races," was rejected over certain pieces of prior art, including U.S. Patent 3,212,834 (Mayer et al.) and U.S. Patent No. 4,756,871 (Hsu '871 patent). Mayer et al. discloses a spherical ball bearing in which the bearing races are plated to provide corrosion resistance. The Hsu '871 patent discloses a zinc-nickel alloy plated layer on an article for providing corrosion resistance. The examiner determined that it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the zinc-nickel of the Hsu '871 patent as the layer disclosed in Mayer et al. The Patent and Trademark Office ("PTO") filed a Notice of Abandonment on November 15, 1992.

On July 31, 1992, Peter Ward filed a Continuation-in-Part application for the "Corrosion Resistant Zinc-Nickel Plated Bearing Races." In this application, Ward adds a description of how most processes for plating steel rely on electrochemical reactions within plating solutions that contain and often release hydrogen. This process infuses hydrogen into the steel, which can result in making the steel brittle. This hydrogen can get trapped in the steel and cannot be driven off by baking. The application notes that "zinc and traditional zinc alloys have exhibited this characteristic when deposited by conventional electro-plating processes." In the "Summary of the Invention" section, Ward notes the advantages of the zinc-nickel plating because it is porous, allowing hydrogen to escape when the plated steel is baked.

This application was rejected by the PTO as unpatentable over the Hsu '871 patent in view of Mayer et al. Wade responded with certain amendments and advanced the argument that the zinc alloy used has pores that allow hydrogen to escape and thus protects against hydrogen embrittlement. Wade contended that while the Hsu '871 patent discloses a porous zinc alloy, it does not recognize that the alloy has any use in a bearing. The PTO issued a Notice of Allowance several weeks later. United States Patent No. 5,532,046 ('046 patent) issued October 4, 1994.

Two years following the issuance of this patent, Timken applied for reissue and added claims 21-23, noting that the claims of the '046 patent did not cover a ball bearing in which only one of two bearing races was plated. Timken surrendered the '046 patent, pursuant to 35 U.S.C. § 251, and the PTO allowed all 23 claims, with the '860 patent issuing on July 28, 1998.

On September 8, 1999, following the commencement of this lawsuit, SKF filed a request for reexamination with the PTO. SKF sought reexamination because it claimed that Timken's broad definition of "zinc alloy," covering any "product containing zinc in combination with one or more other metal elements," would render the patent invalid based on prior art. The PTO initially rejected Timken's claims and noted that the definition of "zinc alloy" must be limited to what is described in the disclosure of the specification of the '860 patent, namely, the Hsu '871 patent, U.S. Patent No. 4,818,632 (Hsu '632 patent), and SAE Paper 830686. The reexaminer stated that the Hsu '871 patent, describing a zinc-nickel alloy comprising about 80-94% by weight zinc, "defines the scope of the zinc alloy of the patent claims."

Timken responded to the reexaminer's action, noting that the Hsu patents and the SAE paper describe but one example of a zinc alloy that is part of the claimed invention, and that the specification discloses other appropriate zinc alloys, including zinc-tin, zinc-cobalt and zinc-iron. The reexaminer filed a Notice of Intent to Issue Reexamination Certificate on October 16, 2000. The reexaminer commented, however, that although no specific composition of the alloy is given in the patent, the composition must be that of the Hsu '871 patent, which was incorporated by reference into the '860 patent. In the Hsu '871 patent the alloy is a zinc-nickel alloy comprising about 80-94% by weight zinc. The reexaminer concluded that "the claims are patentable/confirmable with respect to the scope of the zinc alloy as limited by the patent specification, noted above."

Timken appealed to the Under Secretary of Commerce for Intellectual Property and Acting Director of the PTO to reverse the narrow claim construction of the reexaminer. The appeal was denied, and the Office of Patent Legal Administration determined that Timken's "arguments regarding the definition of `zinc-alloy' have already been presented and considered in the reexamination proceeding, but were not found to be persuasive." It concluded that the reexaminer had not committed plain error, and that its comments, as well as the reexaminer's, are part of the record in the reexamination proceeding.

II.

In a patent infringement action, the court must conduct a two-step analysis. One, the court must "determin[e] the meaning and scope of the patent claims asserted to be infringed." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Two, the court must "compar[e] the properly construed claims to the device accused of infringing." Id. The first step of the infringement analysis is a question of law, with the court discerning the meaning of the claim language. See Pitney-Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).

A.

The court, in interpreting the meaning of an asserted claim, "should look first to the intrinsic evidence of record, i.e. the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). This intrinsic evidence "is the most significant source of legally operative meaning of disputed claim language." Id.

Based on an interpretation of the '860 patent, considering the claim language, the specification and the prosecution history, it appears that the term "zinc alloy" should be interpreted as the zinc-nickel alloy disclosed in the Hsu '871 patent.*fn2 Claim interpretation begins with the actual words of the claims. See Johnson Worldwide Assoc., Inc. v. Zabco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999). "The intrinsic evidence, and, in some cases, the extrinsic evidence, can shed light on the meaning of the terms recited in a claim, either be confirming the ordinary meaning of the claim terms or by providing special meaning for claim terms." Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 12 ...


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