## Facts

- Beloit Corporation owned U.S. patents covering components of papermaking machines, including headboxes and forming sections used to deliver and form a slurry (“stock”) into a paper web.
- One patent at issue was Reissue Patent No. RE28,269 (the “’269 patent”), a reissue of U.S. Patent No. 3,607,625, naming Hill, Parker, and Hergert as inventors and assigned to Beloit.
- The ’269 patent claimed, among other things, a papermaking-machine headbox using a self-positionable “trailing element” (a vane-like structure) extending across the full width of the machine.
- From the application lineage associated with the ’269 patent, a divisional application issued as U.S. Patent No. 3,802,037 (the “’037 patent”) naming Hill as sole inventor and assigned to Beloit. The ’037 patent claimed a headbox with a self-positionable trailing element, but its claims did not require a full-width trailing element; the full-width approach was described in the ’037 disclosure as a best mode.
- A second Beloit patent at issue was U.S. Patent No. 3,923,593 (the “’593 patent”) to Verseput, also assigned to Beloit, directed to aspects of papermaking machine forming sections.
- Aktiebolaget Karlstads Mekaniska Werkstad (KMW), a foreign manufacturer of papermaking machinery, and KMW-Johnson, Inc., its U.S. affiliate/licensee, imported equipment accused of infringing Beloit’s patents.
- The United States International Trade Commission (ITC) conducted a § 337 investigation (Investigation No. 337-TA-82) and found a violation, issuing a broad exclusion order; the President later disapproved the remedy as too broad while indicating some remedy could be appropriate.
- After the disapproval, the ITC instituted Investigation No. 337-TA-82A, largely using the record from the earlier investigation and limiting relitigation to matters supported by new evidence and good cause.
- In Investigation No. 82A, the ITC again found a § 337 violation based on infringement of valid claims of the ’269 and ’593 patents and issued a new exclusion order and cease and desist orders.
- KMW and KMW-Johnson appealed, challenging (among other things) validity, including KMW’s argument that Hill’s earlier ’037 patent anticipated the ’269 patent’s full-width claims, and challenging aspects of the ITC’s remedy and related determinations.

## Issues

1. Whether Hill’s ’037 divisional patent constituted prior art that anticipated the ’269 reissue patent’s claims requiring a full-width, self-positionable trailing element.
2. Whether the ITC correctly determined validity and infringement issues relating to asserted claims of Beloit’s ’593 (Verseput) patent.
3. Whether, after presidential disapproval of the earlier remedy, the ITC properly proceeded in Investigation No. 82A (including reliance on the prior record and limits on relitigation) and whether its exclusion and cease and desist orders were properly tailored to the findings that survived appellate review.

## Decision

- The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded.
- The court agreed with the ITC that the ’037 patent did not anticipate the ’269 patent’s full-width trailing-element claims.
- The court sustained the ITC’s § 337 violation determination to the extent it rested on valid, infringed claims that the court upheld, including significant aspects of the ’269 patent rulings.
- The court reversed and/or vacated portions of the ITC’s determinations concerning the ’593 patent and portions of the remedial orders that depended on claims or findings the court did not sustain.
- The case was remanded for further ITC proceedings and for the Commission to revise relief so it matched the scope of the surviving valid and infringed claims.

## Legal Principles

- Anticipation requires that a single prior-art reference disclose every limitation of the challenged claim as arranged in the claim; a reference that lacks a required claim feature does not anticipate.
- Claim scope controls anticipation; disclosure of a feature in a specification (including a best-mode description) does not substitute for an omitted claim limitation.
- An earlier related patent arising from a shared application history (including a divisional) is not treated as automatically defeating later claims; the analysis turns on what the earlier patent actually claims and discloses relative to the later claims.
- In § 337 cases, patent-law determinations (validity, claim scope, and infringement) are reviewed because they control whether importation constitutes an “unfair act” under 19 U.S.C. § 1337.
- Following presidential disapproval of an ITC remedy, the Commission may institute further proceedings and craft a narrower remedy; any exclusion order and cease and desist relief must track the products and conduct shown to infringe valid claims that remain after judicial review.
- The ITC may rely on a prior investigation record and limit relitigation when parties do not show new evidence and good cause to reopen settled matters.

## Conclusion

The Federal Circuit upheld the ITC’s rejection of KMW’s anticipation attack based on Hill’s ’037 divisional because the ’037 claims did not include the ’269 patent’s required full-width trailing element and mere best-mode discussion could not supply that limitation, while also partially rejecting other ITC determinations (including aspects of the ’593 patent and remedy) and remanding for the Commission to revise its orders to fit only the claims and findings that remained valid, infringed, and supported.


Aktiebolaget Karlstads Mekaniska Werkstad v. United States International Trade Commission, 705 F.2d 1565, 217 U.S.P.Q. 865 (1983)