Accentra, Inc. v. Staples, Inc.
500 F. App'x 922
Fed. Cir.2013Background
- Accentra owns and licenses stapler patents, including the ’768, ’692, and ’709 patents.
- Suit against Staples involves Staples’ ONE-TOUCH staplers and alleged infringement of Accentra’s patents.
- Claim 20 of the ’768 patent restricts automatic track opening as the stapler opens; the district court construed it to cover both automatic and manual release.
- The ’692 patent relates to a safety locking mechanism for the striker; claims 6, 7, and 9 are at issue under means-plus-function interpretation.
- The ’709 patent covers a compact spring-energized stapler with pressing-area travel; district court found indefiniteness for the pressing-area distance, then later ruled otherwise; trial jury found all three patents valid and infringed with willfulness, and awarded $2.2 million in damages.
- On appeal, the Federal Circuit vacates/affirms/remands on multiple issues, including claim construction for the ’768 patent, equivalence for the ’692 patent, indefiniteness/error in construction for the ’709 patent, remand on obviousness, and damages reassessment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim 20 of the ’768 patent scope | Accentra argues automatic opening is required | Staples contends broader, includes manual | Claim 20 limited to automatic opening when open position reached |
| Infringement of the ’692 patent | Claims read on accused devices | Means-plus-function equivalence governs infringement | Evidence supports structural equivalence; no lack of infringement when stapler is unloaded |
| Indefiniteness of the ’709 patent | Claim term and distance measurements were definite | District court found indefinite | Indefiniteness ruling vacated; remanded for obviousness under correct construction |
| Damages after liability changes | Damages should reflect all three patents as valid | Damages premised on all three patents | Damages vacated; remand for recomputation based on revised liability findings |
Key Cases Cited
- Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) (definiteness standard; not indefinite unless insolubly ambiguous)
- Honeywell Int’l, Inc. v. ITC, 341 F.3d 1332 (Fed. Cir. 2003) (measurement method can be relative to context in claim construction)
- Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343 (Fed. Cir. 2010) (nearDeferred meaning contextual; indefiniteness not per se)
- Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) (definiteness requires skilled understanding; not absolute precision)
- Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir. 2007) (descriptions can limit the scope of the invention)