*1 thаt we should over PTO’s recent assertions justi precedents. our No such reason
rule change and it is within the bounds of
fies a then, analysis, decisis continue
stare
apply our established standard review. Pa. Planned Parenthood Southeastern
See Casey, v. 505 U.S. S.Ct.
2812, 120L.Ed.2d 674
CONCLUSION reasons, foregoing conclude
For the we clearly Board erred in factual find-
ings that underlie its conclusion of obvious-
ness, the decision of the Board and reverse invention would have been the claimed
obvious.
REVERSED.
MAYER, Judge, Circuit concurs
judgment.
Arthur L. SERRANO and Andrew W.
Holman, Plaintiffs-Appellants,
v. CORPORATION,
TELULAR Defendant-Appellee.
No. 96-1308. Appeals,
United States Court of
Federal Circuit.
April *2 Beach, California, Ending, Long
Michael J. argued plaintiffs-appellants. Of counsel Haymond. Philip H. Cassin, Benn, Stephen Hamman & Chi- J. Illinois, defendant-appellee. cago, argued for Marvin N. Benn him on the brief were With M. Cassie. and Dawn MAYER, LOURIE, Before CLEVENGER, Judges. Circuit system Opinion the court filed Circuit cation wherein the cellular trans- Concurring opinion capable filed . Judge ceiver is of radio communication LOURIE. Judge Circuit MAYER. with a remote cellular radio transmitter- part receiver that is LOURIE, Judge. Circuit network, system comprises: wherein the *3 Arthur L. and Andrew W. Holman Serrano “Serrano”) (collectively appeal from the sum- coupled determination-means with the mary judgment of the United States District telephone digital number means conversion for the Central District of California Court automatically detеrmining digit for the last 4,775,997 4,922,517 and- that U.S. Patents group telephone digits provided infringed by v. Telu- were Serrano. Serrano means; coupling at the transceiver (C.D.Cal. Corp., July lar. No. 94-CV-1272 signal coupled send means with said de- 1995). They appeal also from the court’s providing termination means for a send rulings Corporation’s granting Telular mo- signal to the cellular transceiver in re- tion to strike motion for reconsid- Serrano’s sponse to said determination means’ deter- granting petition eration and Telular’s for digit mination that the last of the tele- attorney Corp., fees. v. Telular No. phone input. number has been (C.D.Cal. 1996) (order 94-CV-1272 Feb. method, The ’997 claims a claim 1 of fees); attorney granting petition Telular’s for patent reading part as follows: Corp.,
Serrano v. Telular No. 94-CV-1272 (C.D.Cal. 1995) (order interfacing telephone 1. A method of granting Nov. Te- strike). communications-type capa- device which is lular’s motion to Because the dis- providing touch-tone/rotary ble of dial- trict court did not err its con- type telephone signal cerning with a radio trans- infringement, and did not abuse its telephone ceiver used in a communication granting discretion the motion to strike system fees, capable wherein the transceiver is and the for we affirm.
of radio communication with a remote ra- system dio transmitter-receiver is BACKGROUND network, part telephone of a said method patents, Telular owns the and ’517 comprising: both of which issued from continuations of application 4,658,- that led to U.S. Patent step coupling comprising said furthеr They essentially contain the same dis- automatically determining at least the last- patents closure. The concern a method and telephone dialed number number apparatus interfacing for a communications telephone dialed on the communications- rotary device such aas standard dial tele- device; type phone, telephone, touch-tone or modem with sending digitally-converted each number a radio transceiver such as a cellular tele- step converting formed said to the phone. The invention receives tone-dial or subsequent transceiver for transmittal. pulse-dial inputs telephone from the standard and converts them into a serial data stream support As for the “determination means” storage in the radio transceiver and for “determining” step, specification and the subsequent apparatus transmission. The au- preferred using digit discloses embodiment tomatically digit determines when the last is analysis, analyzing which involves the first telеphone response dialed from the and in digits telephone few number to deter- provides signal a send to the transceiver. many digits mine how will be dialed. For apparatus, The ’517 claims an claim 1 example, digit if the first is a and the third reading in part as follows: digit typically digit is a 1 or the middle system code,
1. A
interfacing
telephone
an area
assumes that the
communications-type
capa-
device which is
long
call is an out-of-area
distance call and it
providing toueh-tone/rotary
ble оf
dial-type
digits
allows eleven
dialed
initi-
be
before
telephone signals
ating
signal.
with a cellular radio
analyzing
send
After
the first
transceiver
in a
digits
used
communi-
few
many
of the call to determine how
dialed,
digit
literally infringed
system uses a
devices
digits
asserted
will
digit
respect
is
Motorola-config-
when the last
claims. With
to the
to determine
counter
device,
specification
also
dialed.
discloses
ured MiniDial
the court found that
prefixed by
dialing, in a call
specification
in international
indicates thаt the inventors
“Oil,”
that a
one cannot assume
the numbers
contemplated that certain features of the de-
will be
transceiver,
number
predetermined
di-
placed
vice could be
in the
as is
case,
timing
system uses a
In that
aled.
telephone.
with the Motorola
case
digit
is
to determine when
last
operation
Hence, the court concluded that
those de-
generates
a send
particular,
In
dialed.
infringed
patent.
vices
claim of the ’997
gap
a three-second
is detected
whеn
infringement
The court' also found
digit analy-
digit is dialed. Both the
after a
willful,
upon
evidence of Serrano’s
as
time-out feature are disclosed
be-
sis and
having copied
patented
invention
*4
logic circuitry.
ing implemented in discrete
having
opinion
done so without an
of invalidi-
ty
noninfringement.
or
products known as the Dial-
Serrano sold
devices, which used a
Jack and MiniDial
reconsideration, alleg-
Serrano moved for
microprocessor-based
to interface a
ing
patents
in his motion that thе
are invalid
telephone with a radio transceiver.
standard
upon newly
discovered evidence.
In
question.
types
are three
of devices
There
opposition,
a
Telular filed motion to strike
version I and DialJaek devices
The MiniDial
granted
Serrano’s motion. The court
expiration
a
generated
signal
a send
at the
granted
motion to strike and it also
Telular’s
entry
began
timer that
with
four-second
deciding
fees. After
on
any digit.
II devices
The MiniDial version
summary
in favor of Telular on
expirаtion
at
of a
generated a send
liability,
findings
district court
made
condition.
triggered
timer
an off-hook
fact and arrived at conclusions of law con-
Motorola-configured MiniDial device
The
cerning
appeal.
other issues not on
type
digits
particular
to a
transmitted
parties stipulated
damages
to the amount of
Motorola
as the
were dialed
compensation
infringement
for the
and the
as
and converted.
judgment.
court entered final
Serrano now
Telular notified Serranо
believed
appeals to this court.
MiniDial devices in-
the DialJaek and
fringed
patents.
In re-
the ’997 and
DISCUSSION
declaratory judgment
sponse,
Serrano filed
Telular,
against
seeking a determina-
action
Summary judgment
appropriate
is
when
invalidity, noninfringement, and unen-
tion of
any
no
issue as to
there is
forceability
patents.
Telular counter-
judg
moving party
fact and the
is entitled to
infringement.
summary
In a
claimed for
56(c);
Fed.R.Civ.P.
ment as a matter
law.
judgment,
the district court construed the
1574,
Corp.,
F.2d
v. IVAC
885
Johnston
“determination mеans” limitation
include
(Fed.Cir.
1576-77,
1382,
USPQ2d
12
1383
digit analysis
both the use of
and time-out
1989). Thus, summary judgment may be
feature,
specifications
finding that
dis-
granted
jury could re
when no “reasonable
circuitry
performing digit analysis
close
nonmoving party.”
turn a verdict for the
and a timer for a time-out determination.
Inc.,
Liberty Lobby,
477 U.S.
Anderson v.
patentees
did
The court also found
242, 248, 106
2505, 2510,
bok (Fed.Cir.1994). 1373, 1377 USPQ2d function” limitation must not recite definite performing structure for the described func Infringement A. tion); Greenberg see also v. Ethicon Endo- Inc., 1580, 1584, Surgery, 91 F.3d 39 Determining whether (Fed.Cir.1996) 1783, USPQ2d (stating requires two-step infringed claim has been phrase generally that use of the “means for” “First, properly analysis: the claim must be ¶ 6). 112, infringe invokes section “Literal scope to determine its and mean construed containing ment of a claim a means clause Second, ing. properly as construed the clаim requires perform that the accused device or compared must be to the accused device Touch, identical function as that identified process.” Inc. v. Electro Me Carroll Inc., 1573, 1576, means clause and do so with structure which Sys., 15 F.3d chanical (Fed.Cir.1993). equivalent 1836, is the same as or to that disclosed USPQ2d Claim Chem., law, specification.” question of Micro Inc. v. construction is a which we Co., Plains review de Markman v. Westview In Great Chem. 103 F.3d novo. struments, 979, 1238, 1245-46 (Fed.Cir.1997). USPQ2d USPQ2d — (in (Fed.Cir.1995) banc), aff'd, We do not with Serrano that U.S. -, 116 S.Ct. 134 L.Ed.2d the “determination means” of claim 1 refers *5 only digit. to of the last-dialed identification patent Claims 1-4 of the ’997 and claim 1 specification The states that instant “[t]he patent of ’517 now are before us on digit, determines when the last or appeal. argues that Serrano the district numeral, number has been argues court misconstrued the claims. He 10, patent, (empha dialed.” ’517 col. lines 3-4 “determining” that the “determination” and added). sis That statement is consistent limitations of the claims not met are invention, summary with the of thе which accused DialJaek device and the MiniDial “[ajfter dialed, digits states that all the are According I II version and devices. to Ser- system automatically the interface deter rano, the “determination means” “deter- digit mines when the last or numeral has mining” step require identifying limitations 3, (emphasis occurred.” Id. at col. lines 3-5 dialed, digit upon dictionary the last a added). specification It is clear from the “determining.” definition of the word Serra- that the invention determines when last argues no thereforе that the accused devices digit identify is digit. dialed does not that infringe they identify do not because do not proposed dictionary Serrano’s definition thus digit. responds the last-dialed Telular that specification. is inconsistent with the the “determination means” “determin- explanation inventors’ definition and of the ing” step limitations determine when the last meaning “determining,” of the word as evi dialed, digit necessarily identify is but do not specification, denced controls the in digit. that preferred Telular refers to the terpretation of that claim term. See Vitron which, only example, per- embodiment for Corp. 1576, Conceptronic, ics v. 90 F.3d digit analysis forms on the first few dialed 1582, (Fed.Cir. 1573, USPQ2d 1576-77 digits digits and then counts to determine the 1996) (stating patentee may that a choose his digit. last-dialed terms, or her own definition for claim if that definition is clear from the or file We first address claim of the ’517 Therefore, history). the function of the “de patent. The “determination means” limita termination means” is to determine when the tion of that claim recites a means for deter digit last or number is dialed rather than to mining digit reciting last without definite identify digit. the last function, support structure of that that limitation plus argues therefore is a “means Serrano next that the “determina- subject require function” limitation to the tion means” should be limited to structure ¶ 112, § ments of 35 accomplishes digit analysis. U.S.C. See Cole v. that We do not 524, 531, Kimberly-Clark Corp., agree. Although specifications 102 F.3d disclose (Fed.Cir.1996) (stating circuitry performing digit analysis for as digit, they determining scope last-dialed are within structure claim 1 of patent. disclose of a timer to the ’517 they also use determine digit Specifically, is when dialed. We next address method claim 1 specifications “[i]n state that international di- patent. the ’997 determining It includes a aling, predetermined one cannot assume step means, rather than a determination but timing operation number and thus it is not “step plus drafted in function” form. upon.” patent, has be relied col. That is because it not does recite a function. proposed 35-37. lines Serranо’s construction ¶ Rather, See 35 U.S.C. requiring of the “determination means” as recites, only of determining the act a last- digit analysis performing structure for is Therefore, digit. dialed we simply ap must overly limiting contrary is thus to the ply the claim language to the accused devices multiple statement structures disclosed limiting requirements free from the of sec specification. Corp. Data Line See v. ¶ tion 6. It from specification is clear Techs., Inc., Micro step that the determining determines when (Fed.Cir.1987) USPQ2d 2052, (stating dialed, digit explained last is as above. The that means clause must be construed to accused Dial Jack device and MiniDial ver equivalents the disclosed structure and cover perform sion I and II step, devices thereof)- Disclosed includes structure only arguably which is the limitation ques specification, which is described in a tion. dispute Serrano also does not that the including any alternative structures identi- accused devices contain the limitations of the fied. dependent asserted patent. claims the ’997 There is thus no issue of material argues also the struc concerning fact whether Dial accused implementing ture “determination Jack device and MiniDial version I and II should means” be limited use of discrete scope devices any are within the logic circuitry, which is used the embodi *6 patent. asserted claims of the ’997 specification. disclosed in ment the We do agree. specification Although not the dis Finally, argues Serrano that the Mo circuitry preferred such closes as а embodi torola-configured MiniDial device does not ment, recog it also states should “[i]t that be infringe claim 1 of the ’997 it because to in ordinary nized those of skill the art that “determining” step. lacks a re Telular microprocessor-based system could also be that, sponds even if that device does not logical config wherein the used decisions are claim, directly infringe contributorily it the patent, ured software.” ’517 col. lines infringes it and therefore district court’s Thus, specification clearly 46-50. evi infringement conclusion of direct was harm that dences the invention is not limited to use less error. with Telular that We logic circuitry may discrete alterna Motorola-configured MiniDial device contrib- tively implemented using be microproces utorily 1 infringes patent. claim operating sor under software control. See Accordingly, Liability contributory id. we construe the “determi infringe for to nation means” limitation mean the func ment “sells within includes one who the Unit determining component digit patented tion whеn the last or ed States ... number is permit knowing dialed and to structure machiné ... espe same to be digit analysis cially use especially adapted includes or of a time-out made or for use feature, being implemented infringement patent, an logic discrete such not a microprocessor operating staple commodity or with under article or of commerce control, equivalents noninfringing software suitable for such substantial use.” 271(c) (1994). structures. The Dial accused Jack device U.S.C. Thеre can be no MiniDial II contributory infringement version I and devices undis- without direct in putedly microprocessor-based system fringement. Sys. Corp. use a v. Korners Met-Coil Unlimited, digit that determine when last F.2d is dialed (Fed.Cir.1986). USPQ 474, using a time-out There is feature. thus no The district genuine Motorola-configured issue of fact as to court whether concluded that the MiniDial in combination with the Mo- not contain all device the limitations of claim 1. However, torola Microtac transceiver uses a time-out the accused device combination dialed, determining digit feature the last Microtac with the transceiver does contain all thereby “determining” step. satisfying the the limitations of the asserted claim. More- over, combina- The court also concluded undisputed there is evidence of record “sending” tion of the devices satisfies the Motorola-configured that the MiniDial device step. Serrano has not shown that the dis- designed specifically for use with that finding trict court erred in that there was no staple transcеiver and that it was not a arti- respect issue of material fact with Although cle of commerce. the district court these conclusions. concluding erred in Motorola-config- that the directly ured MiniDial infringes device claim that, argues Serrano also because of 1, we conclude that the device nonetheless prosecution during statements made contributorily infringes the claim. Because patent, interpreted 1 must the ’997 claim the district court’s error did not affect the require generаtion signal. of a send He decision, correctness of its which is that Ser- argues that because the accused device does infringement, rano is liable for that error was generate signal, infringe not such a it cannot harmless. See Fed.R.Civ.P. 61. agree. the claim. We do not The state history ments from the file cited B. Motion Reconsideration appear in an information disclosure state granted The district court submitting prior ment Telu- art to the PTO. In statement, lar’s motion patentee to strike Serrano’s distinguishеd motion for reconsideration prior comply because did not the invention over the submitted art alia, with stating, the court’s Local Rule 7.16. prior inter art We review does not jurisdiction matters not signal disclose an within our exclusive “automatic send means.” applicable under Although regional law of the certain claims of the ’997 cir cuit, in this require generation case the Ninth Circuit. signal, of a “send” claim 1 Cochran USA, Inc., Consulting, Inc. v. Uwatec paten- does not recite such a limitation. The 3, USPQ2d 1161, F.3d 1228 n. concerning prior tee’s statement whether the (Fed.Cir.1996). n. 3 art Local discloses “send” means is Rule 7.16 re rele quired only Serrano to show that require vant to those claims which he could not generation through signal, diligence of a such a reasonable have known of those contrast, question the documents in entry claims are not asserted here. In before the they present and that requires sending claim 1 a material without *7 in fact specifying presented difference from those to use of a “send” for accom plishing prior judgment. court to Although See Hinton act. statements v. Pa (9th 391, history may Enterprises, explain file of course be 5 F.3d 393 n. 2 used cific Cir.1993). potentially ruling and We review a district meaning limit the of claim court’s limitations, on a motion there is no for reconsideration under basis here for the Local Rule 7.16 for interpretation argued by an abuse of Serrano. discretion. Id. at question statements in cannot be used to add entirely an new limitation to the claim. See principal Serrano states in his brief D.M.I., Co., 1570, Inc. v. Deere & 755 F.2d that he received the in question, evidence 2, (Fed.Cir. 236, 1574 n. USPQ 225 n. 2 documents, 30, 1995, certain May Finnish on 1985) (stating that speci limitations from the and that translation of the documents into history fication or file cannot be read into a English completed was not until June so). claim doing where there is no basis for argues significant 1995. He time was
Accordingly, construed, properly claim required to translate the documents in order require generation does not sig of a “send” that, significance to ascertain their ac nal. cordingly, delay submitting his them to the However,
The court did err in its conclu court was not unreasonable. Ser infringement. sion of direct pointed explain As out rano why does not he did not at least by Serrano, product the accused bring indeed does the documents to the district court’s request attention and time to have them exceptional case, In an a court during hearing may attorney translated the court’s on June award fees under 35 U.S.C. concerning Telular’s motion for sum- attorney 285. Whethеr fees should be mary judgment. is, during At least twice awarded the discretion of within the dis hearing parties’ Seal-Flex, the district court asked trict court. See Inc. v. Athletic if “anything Constr., counsel there else.” Serra- Track and 1318, 1325, Court 98 F.3d USPQ2d 1450, (Fed.Cir.1996). no’s counsel did not cite the docu- 40 Finnish We ments. We note that documents with Telular that the district court also did drawings provided contain that must have an not abuse its discretion in granting Telular’s significance indication they of their before attorney fees. The district court were translated. Beсause Serrano has not cited examples several litigation Serrano’s requirement 7.16, met the first of Local Rule conduct that resulted in expense by needless documents; it is “Finis” for the Finnish we Telular. example, For it found that Serra need not requirement address the other of no’s conduct required relitigate Telular to present ease law that the documents already issues case, decided in the DNIC Accordingly, difference fact. it found being that after previously enjoined district court did not abuse its discretion selling in from infringing products, Serrano be granting Telular’s motion to gan selling strike Serrano’s the DialJack and MiniDial devices motion for reconsideration. embodying only minor differences over the
previous products. Serrano has not shown
that the district court’s conclusion to award
Attorney
C.
Fees
fees to Telular amounts to an abuse of discre
argues
that' the district court’s
Sensonics,
tion. See
Inc. v.
Corp.,
Aerosonic
findings
support
do not
the conclusion that
USPQ2d
exceptional
this is an
warranting
case
an
(Fed.Cir.1996) (stating
litigation
miscon
award of Telular’s
fees. Serrano
may
duct
suffice to make a
exceptional
case
essentially
asserts that the award was
285).
under section
on
finding
relitigated
the court’s
that he
is
parties’
We have considered the
other ar-
previous
sues from a
ease which Serrano
guments
they
and find that
unper-
are either
infringing
parent patent.
was accused of
unnecessary
suasive or
for resolution of this
Brokerage
DNIC
Co. v.
Demp
Morrison &
apрeal.
Communications, Inc.,
sey
(C.D.Cal.1989), rev’d,
(Fed.Cir.
viewed this court. where mate disputed,
rial facts are claim construction
requires questions resolution of both of fact — law, Markman, questions U.S. at
-, (classifying at S.Ct. claim “mongrel practice”),
construction as a