                     NOTE: This disposition is nonprecedential.


United States Court of Appeals for the Federal Circuit
                                    2008-1415

                                 NORGREN INC.,

                                                   Appellant,

                                         v.

                     INTERNATIONAL TRADE COMMISSION,

                                                   Appellee.

                                        and

          SMC CORPORATION and SMC CORPORATION OF AMERICA,

                                                   Intervenors.


       Carl F. Manthei, The Ollila Law Group LLC, of Boulder, Colorado, argued for
appellant. With him on the brief was Curtis J. Ollila.

       Mark B. Rees, Attorney, Office of the General Counsel, United States
International Trade Commission, of Washington, DC, argued for appellee. With him on
the brief were James M. Lyons, General Counsel, and Andrea C. Casson, Assistant
General Counsel.

       Arthur J. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of
Alexandria, Virginia, argued for intervenors. With him on the brief were Thomas J.
Fisher, Barry J. Herman, and Eric W. Schweibenz.

Appealed from: United States International Trade Commission
                   NOTE: This disposition is nonprecedential.


     United States Court of Appeals for the Federal Circuit
                                     2008-1415

                                  NORGREN INC.,

                                                          Appellant,

                                         v.

                      INTERNATIONAL TRADE COMMISSION,

                                                          Appellee,

                                        and

           SMC CORPORATION and SMC CORPORATION OF AMERICA,

                                                          Intervenors.


On appeal from the United States International Trade Commission in Investigation No.
337-TA-587.

                          ___________________________

                          DECIDED: May 26, 2009
                          ___________________________

Before SCHALL, GAJARSA, and MOORE, Circuit Judges.

MOORE, Circuit Judge.

      Norgren, Inc. (Norgren) appeals from a final determination of the International

Trade Commission (ITC) in a section 337 investigation.      See 19 U.S.C. § 1337.

Norgren is the assignee of U.S. Patent No. 5,372,392 (the ’392 patent).     The ITC

instituted this investigation based on a complaint filed by Norgren that named SMC

Corporation and SMC Corporation of America (collectively, SMC), among others, as

respondents. The administrative law judge (ALJ) concluded in an initial determination

that SMC did not violate section 337 because the accused SMC structures do not
infringe the ’392 patent. The ALJ also determined that the asserted claims of the ’392

patent are nonobvious. The ITC declined to review the ALJ’s initial determination and

terminated the investigation with a finding of no violation. Norgren appeals. For the

following reasons, we reverse-in-part, vacate-in-part, and remand.

                                    BACKGROUND

      The technology at issue concerns structures that connect fluid-conditioning

units—e.g., filters, regulators, and lubricators (FRLs)—in a compressed air pipeline.

Between an air compressor and a point of use, a pipeline can include various

conditioning units connected in series. Problems associated with prior art connecting

structures included high production costs and loose parts requiring assembly by a user.

An object of the invention of the ’392 patent was to permit ready disconnection of FRLs.

These compressed air systems are typically found in assembly-line manufacturing

operations, and ready disconnection of FRLs limits the amount of service time for which

an assembly line might need to be shut down. The ’392 patent claims a connecting

structure wherein one side of the structure can be pivoted in and out of its operating

position. Figures 1 and 4 show the preferred embodiment of the ’392 patent:




2008-1415                                  2
Figure 4 depicts a connecting structure as it connects two FRL units having outlet ports

(27 and 31) and flanges (26 and 30). The parties and the ALJ refer to the vertical

portions of the flanges as projecting rims, and we will do the same. Figure 1 is an

exploded view of the connecting structure. The rectangular spacer (2) slides into the u-

shaped member (1) along channels (5, 6, and 7), with elongated member (3) in the

raised position. The projecting rims of the flanges slide in between the spacer and the

channel walls. The elongated member is then lowered and bolted closed. The primary

issue on appeal—claim construction—focuses on the projecting rims of the flanges.

                                      DISCUSSION

       Norgren filed a complaint with the ITC in which it alleged violations of section 337

in the importation into the United States, the sale for importation, and the sale within the

United States after importation of certain SMC connecting structures that allegedly

infringe claims 1–5, 7, and 9 of the ’392 patent. The ALJ held an administrative trial,

received post-hearing briefing from the parties, and then issued an initial determination



2008-1415                                    3
in which he concluded that there was no violation of section 337. More specifically, the

ALJ found that the accused SMC connecting structures do not infringe the asserted

claims because they do not meet the claim limitation of “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.” The ALJ also determined that

the asserted claims of the ’392 patent are nonobvious. The ITC decided not to review

the initial determination and terminated the investigation with a finding of no violation.

       Norgren appeals, challenging the ALJ’s claim construction. Both the ITC (as

appellee) and SMC (as intervenors) respond that the ALJ’s finding of noninfringement

was correct because the underlying claim construction was correct. SMC also argues

that the ALJ erred in concluding that the asserted claims are not invalid for obviousness.

We have jurisdiction under 28 U.S.C. § 1295(a)(6).

       We review claim construction de novo. Gemstar-TV Guide Int’l, Inc. v. Int’l Trade

Comm’n, 383 F.3d 1352, 1360 (Fed. Cir. 2004); see also Cybor Corp. v. FAS Techs.,

Inc., 138 F.3d 1448, 1455–56 (Fed. Cir. 1998) (en banc). Independent claim 1 of the

’392 patent recites as follows:

       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,




2008-1415                                     4
           sealing means for establishing fluid-tight communication between
              the respective ports formed in said flanges, and

           locking means for releasably locking said one side in said operative
              clamping position, in which position the clamp urges the flanges
              towards one another thereby establishing together with said
              sealing means, said fluid-tight communication between said
              ports.

Because this claim recites a “clamp adapted . . . to engage . . . the pair of ported

flanges,” the parties agree that we must construe “generally rectangular ported flange,”

which appears in the preamble of claim 1, insofar as the flange is configured to permit

engagement by the clamp. The ALJ explained, “whether or not the flange on an FRL

must have two or four . . . rims is the salient issue to be determined.” The ALJ stated:

       the word “flange,” as used in the claims of the ’392 patent, is the structure
       that is received into the claimed clamp, and further that “a generally
       rectangular ported flange” is a flange of rectangular shape with projections
       on all four sides and a hole in the middle that is used as a port.

The ALJ further explained:

       In view of the fact that the clamp must be four-sided, and the clamp is
       specially adapted to engage the generally rectangular ported flanges of
       the FRLs, it is reasonable to conclude that each rectangular flange is
       engaged on all four of its sides by the four-sided clamp. Thus, the clamp
       is adapted to engage flanges with four projecting rims.

Norgren argues that the ALJ’s claim construction is erroneous for requiring that each

flange has projections (or projecting rims) on all four sides. 1 We agree.




       1
               In its briefs, Norgren also maintained that the ALJ’s claim construction
incorrectly requires that the entire flange be received into the clamp. At oral argument,
however, counsel for Norgren and counsel for SMC conceded that for the SMC accused
structures, flanges do not extend beyond the clamp. Oral Argument Tr. 9:07–11:46
(Norgren), 35:08–36:47 (SMC). In other words, the accused SMC connecting structures
permit reception of two flanges entirely into the clamp. Accordingly, we do not address
this issue.



2008-1415                                    5
       Nothing in the claims, written description or prosecution history requires four

projecting rims.    The claims of the ’392 patent do not recite the terms “rim” or

“projection.” Indeed the term “rim” does not appear anywhere in the ’392 patent. The

specification refers to two items as projections—the hook attached to the rectangular

spacer and a ridge in another embodiment of the u-shaped member—neither of which

are present on the flanges or relate to the flanges in any way. See ’392 patent col.2

l.62, col.3 l.1, col.4 l.19. It is true that the figures of the ’392 patent depict a preferred

embodiment that includes two flanges, each with four projecting rims. See id. figs.3 & 4.

But these figures are the full extent to which the patent refers to flanges with four

projecting rims. Thus under the well-established prohibition on importing limitations

from the specification into the claims, see Phillips v. AWH Corp., 415 F.3d 1303, 1320,

1323, the “generally rectangular ported flange” of the asserted claims of the ’392 patent

is not limited to a flange having four projecting rims.

       The “generally rectangular” language pertains to the overall shape of the flange.

The figures below depicting the Norgren and SMC flanges attached to the FRLs show

that each is generally rectangular. The subsequent Figures show just the two flanges.

The dotted lines indicate the projections (rims). The SMC device has two, the Norgren

device four.




2008-1415                                     6
SMC Br. 23–24. The claim limitation “rectangular” is satisfied by the overall shape of

the flange and does necessitate four rims. The “ported” language indicates that the

flange have a port or hole in the center for the passage of fluid. This cannot be the

source of the four rims limitation.   That leaves the word “flange.”     Neither party is

suggesting that one of ordinary skill in the art would understand the word flange alone to

necessitate four rims. Although the word flange necessarily calls to mind a protrusion,



2008-1415                                   7
rim or projection, nothing in the specification of the ‘392 patent suggests that the

claimed flange must always include four rims. A “generally rectangular ported flange” is

a generally rectangular projection with a hole for fluid passage.       Norgren admitted,

however, that the flange must have “sufficient projecting rims for the clamp to function.”

See Initial Determination at 18. But this does not require four rims.

       Although it is possible for a four-sided, generally rectangular clamp to engage

each generally rectangular flange on all four sides, nothing in the claims or the rest of

the specification requires that every side contain a rim. For these reasons, the ALJ’s

construction is erroneous as it reads a limitation into the claims.

       It is undisputed that the accused SMC structures are ported and generally

rectangular. The accused SMC structures have two “mounting ears,” i.e., two projecting

rims. Applying the correct claim construction of “generally rectangular ported flange” to

the undisputed facts, we reverse the noninfringement determination of the ITC.

       Lastly, SMC asserts that we could affirm the ITC determination of no violation by

concluding that the ALJ erred in concluding that the ‘392 patent is nonobvious. We

believe, however, that the ALJ should evaluate obviousness in the first instance under

the correct construction of “generally rectangular ported flange”—i.e., a construction that

does not require a flange having projections on all four sides.

                                      CONCLUSION

       In light of the change to claim construction, we reverse the ITC’s determination of

noninfringement, vacate the ITC’s determination of nonobviousness, and remand.




2008-1415                                    8
