*1 HQ7 unjustified by Accordingly, evidence. tutes an refusal. supported substantial not Indeed, only conclusion to precluded reasonable we conclude Teter is not Teter is recovering this record is that disability be from benefits on drawn this by pain. ground. disabled his completely judgment of the district court the Secre must next address
We to reversed and case is remanded is not appeal on that Teter tary’s argument Secretary with directions to award Teter he disability benefits because eligible for disability August benefits as of 1981. pertinent undergone surgery. The has not Heckler, Knipe de v. 755 F.2d be See & states benefits will regulation (10th Cir.1985). good n. 18 who fails without nied a claimant by prescribed to follow treatment reason Reversed remanded. ability to if it can his phyician restore his 20 C.F.R. 404.1530 work. See § fail reviewing claimant’s
Courts whether a preclude undertake treatment will
ure to have con recovery disability benefits elements, must four each which
sidered (1) evidence: supported substantial expected at issue treatment should be work; ability to the claimant’s INTERNATIONAL, restore Appellant, SRI (2) pre the treatment must been v. (3) scribed; the treatment must have been MATSUSHITA ELECTRIC CORPORA- refused; (4) the refusal must have been TION OF AMERICA and Matsushita See, e.g., Jones justifiable without excuse. Co., Ltd., Appellees. Electric Industrial Heckler, (11th 702 F.2d Cir. v. Schweiker, 1983); 663 F.2d Cassiday Appeal No. 84-1637. Cir.1981); (7th v. Secre Schena Appeals, United States Court of (1st Cir.1980). 635 F.2d tary, Federal Circuit. In this case the evidence reflects Oct. thirty forty
that Teter would remain Moreover, percent after surgery. disabled advisability
Dr. cautioned that the Grover depend the recom surgery upon would Teter’s psychologist
mendation of because play mental condition would a role
Teter’s recovery. and Dr. his Both Dr. Glover
Bronitsky Teter under recommended that testing
go prior to a further evaluation most, surgery. At the record
decision finding recom
supports surgery
mended, prescribed. not but Recommenda
tions, opinions suggestions, and abstract enough. F.2d at Cassiday, See Jones,
749; at 953-54. also see that, although Tet- also reveals
The record had initially opposed surgery, he
er was the time receptive to idea
become hearing but could not afford
his 1982 $8,000 $10,000 cost. it would
estimated to under not believe Teter’s failure
We do
go consti- surgery these circumstances
HQ9 *4 Gregg, Gregg, Caplan Hig- Edward B. & Park, Cal., gins, argued appel- Menlo for lant. Ebenstein, Amster,
Daniel Rothstein & Engelberg, City, argued ap- New York for pellees. him on With brief were Morton LoCicero, Anthony Amster and F. New City. York MARKEY, Judge, Before Chief FRIED MAN, RICH, DAVIS, BALDWIN, KASHI WA, BENNETT, SMITH, NIES, NEW BISSELL, Judges.* MAN and Circuit * argued consisting prompted panel This this case was before a law has court to consider this MARKEY, Judge, of MAN, KASHIWA and NEW- case in banc. Chief Judges. clarity Circuit for in the The need
HH MARKEY, Judge. “apparatus generating rep- Chief color signals required resentative electrical for a (SRI) appeals from a International SRI reproduce color television receiver to District judgment final of the United States color,” scene and include the filter of District of Califor- for the Northern Court claim 1. granting summary judgment of non-in- nia Corpo- fringement to Matshushita Electric charged Claim 3 was not to have been (MEI). F.Supp. ration infringed. It is set forth because it affects We reverse. interpretation: of claim In a type camera of the wherein BACKGROUND light being photographed from a scene white, focused a lens on black and Familiarity opin- court’s with the district film, assumed, monochromatic sensitive the im- being only those factors nec- ion provement affording recording essary understanding an of this court’s the color being discussed here. information the scene decision will be photographed on said film in a manner so opinion The district court’s contains said color information be elec- explication technology in- excellent tronically derived comprising therefrom volved, reflecting recognition of the a clear film, adjacent a filter said said filter hav- the filter and camera undisputed fact that ing grid spaced first of vertical lines specification embodiment described in the cyan, superim- which are colored *5 3,378,633 Patent No. of SRI’s United States posed grid over all of said first a second (the assignee patent) ’633 issued to SRI as grid having its angle lines at a 45° to the on of the inventor Dr. Albert Macovski grid, grid lines of the first said second 16, 1968, April operate somewhat different- color, being yellow lines both said MEI ly from the filter and camera accused grids having density. the same line [Em- infringement. phasis added.] The Claims Operation charged infring-
Each claim to have been ed is drawn to a structure. Because of its Opin- The district court’s Memorandum broadest, central role as the claim is set illustrations, helpful that of ion included forth: being Figure on 1 of filter based SRI’s spatial affording 1. A filter for patent drawings. Figure 1 shows the ’633 recording upon monochrome from which forth in an embodiment of the invention set subsequent scanning, information for re- grid superimposed claim in which one is producing image object an in color of the grid, equi-width all of the other the over derived, photographed may filter said stripes of one are vertical and those of comprising grid parallel spaced a first angled In the other are to the vertical. having the lines color a subtractive embodiment, operation of that the horizon- angu- primary, grid relatively a second scanning tal distance travelled beam larly superimposed over all of the said (“scan line”) single pass across and grid, grid having paral- first said second stripes angularly disposed between spaced having lel lines the color of anoth- verti- greater than that across and between having primary, grid er each subtractive Thus, stripes. frequency range cal density. the same line single pass generated by interruptions angular grid is than that adding across the lower depends from claim
Claim grid, basically the vertical and two only angle between the first across “the relative blue) (red frequency and carrier grids is 45°.” Claim 7 and discrete and second point. ranges generated at that a camera in dependent claim 8 are drawn to by low and frequencies are then decoded the filter of claim combination with pass filters. dependent claim 10 are drawn band Claim and filter, cases”, grid superim- i.e., “In non-jury filing In the MEI one ble of a grid posed over all of the other and both written narrative statement pro- equi-width stripes, posed grids testimony but direct of each witness. stripes grids equal are at and of the two The October required order also opposite angles opera- In vertical. filing objections testimony or ex- tion, the horizontal distance travelled hibits, ground with the for objection.2 each single pass in a scanning beam across Pursuant to another order of the same grids stripes and between of both is the date, parties required prepare were same, frequen- and blue carrier and the red party statements of fact which each con- generated cy ranges thereby are the same jury tends should be submitted to a However, point. phase differ- at that determination. successive, scanning timed ence between response, 20,1984, January counsel passes red and produces a concentration of court, for SRI listing among wrote components alternating, over- blue jury issues for the of whether lapping, frequencies. To de- interleaved changed MEI’s filter is “so far principle” lay passes successive and decode the inter- that SRI’s and MEI’s filters are different frequencies, employs leaved MEI a 1-Hertz (MEI’s position) inventions or different ver- (1-H) delay comb line filter.1 (SRI’s position), sions the same invention quoting Westinghouse Boyden Power Proceedings
District Court
537, 568,
Brake
170 U.S.
(a) Preliminaries
The the come of the counsel October 1983 order MEI’s said lists, filing exhibits, they originally objecting witness summaries had considered on proposed all testimony, ground subject statements of the that matters “[t]he [sic] experts’ going testify and theories with conclusions bas- as to which Dr. Macovski to therefor, vitae, es experts’ anyone’s curriculum is so far outside of real world reports prepared testimony. experience impossible it’s almost to for The order appropriate requirement applica- form also contained a evaluate without technical maintained, objections. consistently ap- 1. SRI has and it is 2. Each side filed numerous The parently undisputed, there must be two record does not reflect that the court ruled on frequencies separated point; at some otherwise objections. all of those no filter will work.
1H3 credentials,” coin, and was But there another side of the background go to a appropriate “to the other side the coin is not this: therefore objection invention, made. The That if if That the whatever the jury.”3 respect objection has, the with if his utterly court overruled device is so defendant ground on that SRI interest the principle to financial from the device different if denied its witness prejudiced be would patent, is described in then which trial. the eve of claims, regardless wording of the validly claims have not covered it. purpose court then turned to The respect And that is the to issue with conference, i.e., determining “whether infringement, principle issue as [sic] involving con- any issues here there are or not system to whether which is papers Having facts.” read the flicts of by the used defendants in this case is so file, court concluded: then on principle altogeth- different that it’s an me, particular under the It seems apple; invention. er different One is an Federal Cir- decisions under the recent orange. other is an question deriving ulti- cuit, pure it’s a mainly And that seems to me to undisputed evidence mate facts determination, fact of and so on down judge. Mr. properly done which is the line. your careful- papers I read Gregg, issues any I don’t see factual ly, but responded: To that statement the court for proper jury. would be so____ Well, I don’t think [I]f if then “That there counsel said: SRI’s thing in this case issue is whether dispute, this is a evidentiary facts in are no orange, peel is colored has [a] ripe summary judgment. that is case eighth-inch thick, ... and once about suggest circum- under those And I would sectioned, peeled, it’s it’s those facts are consent, your and with Honor’s stances The undisputed. is whether the bring a motion the defendants fact be derived from that ultimate judge summary judgment.” When orange. that it is an evidence bring whether SRI wished also asked That doesn’t strike me as a issue. motion, summary judgment counsel SRI’s appro- strikes me as an issue that is That believed it did not because counsel said decide, judge particularly for a priate disputes present. factual there were kind oranges are rather obscure if [sic] identify disputes, experience SRI’s in the of a things
Asked to common responded: dispute is no it has certain jury. counsel There seeds There is no con- kinds of inside. infringe- dispute respect with flict, words, in other in the evidence. There largely evolves around this: ment *7 interpreta- in only is conflict the the There question but the words of is no what on,” cover, of the evidence. claim, say, de- tion as we “read fine, in only the the structure appropriate that for a strikes me It here, the is in but patent, which suit to decide. Whether it should be judge used. which defendants structure summary judgment or not is decided on keep any- I Supreme question. wouldn’t another And in accordance with summary Linde, making a for you body from motion in vs. decision Graver Court’s in this claim, it useful judgment, and do but would be the words of the look to testimony the court to hear the they cover case for whether or not you determine court is; experts I think the if it because and the accused device what rath- out, enlightenment on some some does, and needs infringement made questions. er technical of it. is the end witness, though no entirely, judgment", heard Seeking MEI's court to bar witness narrative evaluated the written say read and court had but did not whether the counsel "appropriate affi- Dr. Macovski’s background of witnesses and and creden- statements technical end, "summary accepted davit. In the MEI tials.” priate summary judgment just After some discussion of evidence of ob- for be- viousness, the court stated: I cause would want the live witnesses. here, But I ques- do think we can resolve any dispute see and it these just
I don’t legal fairly these are all tions and in intelligently seems to me a reason- issues, is, they are of ultimate issues way, able fashion this and also I think concerning application princi- fact economically more expeditiously. and obviousness, ples anticipation, such as Usually when trials are conducted in infringement, undisputed facts.4 fashion, they this long don’t take as course, Gregg, Of Mr. the two sides people anticipate. evidence, present different will but February 1984 conference ended any mean there is conflict in the doesn’t setting with the of March 30 for submis- And in the absence of an evi- evidence. pretrial sion of April briefs and for conflict, dentiary I don’t see a issue bench trial.6 in a case. 23, 1984, February On the court issued a point MEI’s counsel at that said he would Third for Preparation Order Pretrial and summary judgment move for “if it were Trial in it request denied SRI’s for I done a manner which think would be jury trial and ordered the bench trial dis- rules, permitted where on the mo- foregoing cussed in the quote: evidentiary tion the court could hold an appearing It disputed that there are no hearing permit which would the court to requiring issues of fact determination least, experts hear the and in a live jury; hereby it is develop situation an education as to the ORDERED, ADJUDGED, AND DE- subject matter.”5 liability phase CREED that the of this procedure The court then described its case shall be tried to the Court accord- trials, which, preclude under bench sur- following ance with the schedule ... prise trial, preparation and facilitate repeated The order then the bench-trial testimony written narrative statements of requirement filing narrative statements exchanged, and the record after trial exhibits, testimony, objections. would become those narrative statements plus testimony adduced at trial. The court (c) IS, April Pretrial added: Conference way
And that April record will proved On at what to be combination of the narrative statement pretrial the last conference and last court- testimony, plus testimony event, adduced room the court conducted an extend- Now, here. summary judg- that is not dialogue counsel, ed with SRI’s beginning ment, trial, but it is a bench antic- with the court’s demand that counsel state ipates testimony provides every- “essence” of the ’633 and “the body complete with a statement of testi- novel on the element basis of which that mony and exhibits advance. patent was issued.” The court asked SRI’s
Now, my way proceed- that will be counsel whether the assertions in MEI’s ing (claims appro- this case. I don’t think it’s brief operat- are limited to filters so validity appropriate summary judgment 4. The district court did not reach the motions. Nothing ¶56. issue. Nor do we. here said should be See 6 MOORE’S FEDERAL PRACTICE *8 affecting any taken as manner the determina- 11[8] Similarly, express tion of that issue. we no infringe- on whether there has been view ment, an February 6. After the court stated at the a fact this determinable on conference, trial, that it would conduct a bench text, appeal. As indicated in the sole issue orally right SRI’s counsel did not insist on SRI’s propriety summary judg- before us is the here, to a trial. On the record all con- ment. appear expected point cerned to have at this that there would be bench trial. hearings Evidentiary to determine whether a genuine present issue of fact are material
1H5 angle stripes paper by employee, Nakabe, ed that the difference of the MEI’s would frequencies) different stated “the creates at trial show the correctness present of his patent”. essence of the statement. began by correctly Counsel for SRI stat- pointed When the court out that “tenth ing limitations the structural claims. grade geometry” shows no difference in the court said the “essence” When spacing across and stripes, between MEI’s angles “the difference in the of the two agreed, saying that, SRI’s counsel “[tjhere stripes frequencies sets of creates different frequency is no given difference on a scan color,” for the transmission of red and blue line,” but that delay produced “MEI’s 1-H “stripes angle an counsel said at to one frequency differences.” creating frequencies” and different another When the court asked whether the real was old and that the “novel feature” was issue was whether the patent “pro- ’633 equal spacing stripes. width and system” tects a generates color dif- by Pressed the court on whether “the by ferences delay time in rate of scan- patent basis on which the was issued” was ning lines, between different counsel an- being angle stripes “two sets of at an swered, “Yes.” The court then asked purpose gen- and one another” “for whether the or file wrapper said erating frequencies,” different SRI’s coun- anywhere that “an essence or novel idea in said, finally, inexplicably, “[tjhat’s sel this protected to be genera- is the correct.”7 frequency tion of through differences time then The court said MEI’s filter does not delays.” Counsel sought for SRI to an- generate frequency differences. When by citing swer specifica- references in the did, counsel said it SRI’s court demand- tion to frequency overlap. explanation. Pleading ed an that inventor comment, Invited to MEI’s counsel sim- better, explain Macovski could counsel ply agreed, sentences, in three with what delay 1-H frequency said MEI’s resulted in saying, i.e., the court had been that use of differences without which no camera would “phase” and “frequency” was mere “se- work. nothing mantics” and that pat- the ’633 Pointing to a statement a brief filed a suggests “technique”, ent MEI’s at which year 29, 1983) (April earlier SRI’s coun- point said, “Well, the court I why don’t see (that sel “phase” system), MEI’s was a grant I summary judgment shouldn’t court deemed counsel’s statement this case.” April (that sys- 1984 conference MEI’s generated frequencies, tem two albeit in a Referring repeatedly to the statement way) improper possibly different an “phase” in year-old about brief SRI’s punishable change position.8 counsel, rejected the court prom- counsel’s during Counsel said he ise of Dr. had learned more what Macovski would show at year, expert and that his witnesses and trial and counsel’s assertions that those element”, finding 7. Reliance on a that a "novel have influenced the district court. Counsel for (or "gist", "key”) of a structural or "essence” or point SRI did not out to the court that claim operation specification- lies invention in the of a example, says nothing for whatever about described embodiment of the claimed structure "phase” "frequency”, only or but calls for "af- meaningless statutory require- would render fording recording a monochrome from which claiming, statutory ment for § 35 U.S.C. upon subsequent scanning, pro- information requirement treating individually, claims ducing image object photo- in color of the system U.S.C. and the entire examination § added.) graphed may (Emphasis be derived.” centering rejection on the allowance those Whether skilled in the art would immedi- Inexplicably, claims. SRI’s counsel did not ately recognize equally ap- that "information” is present statutory firmly these considerations plicable "phase” "frequency” is a contest- April pretrial the district court (see Ball, App. ed issue Narrative Statement of conference. II, 527-28) Vol. resolvable live witnesses at appeal. It is not trial. resolvable this “frequency” differing 8. "Phase” and electri- phenomena. appears cal That difference *9 1116 fact, of all immediately genuine on issues of material in the art would
skilled
Coo
recognize
Co.,
677,
patent
per
679,
’633
the avail-
v.
Motor
748 F.2d
reading the
Ford
1286,
(Fed.Cir.1984),
USPQ
called the minor 223
ability of what counsel
1287-88
made MEI.
must
changes
district court
view the evidence in a
light most favorable to the nonmovant and
asked MEI’s counsel
court
then
The
favor,
draw
all reasonable inferences
its
summary
he desired a trial or
whether
Diebold, Inc.,
v.
369
United States
U.S.
responded by
MEI’s
of-
judgment.
counsel
654,
993,
655,
994,
H17 error, If reversal be that error will mani- there dispute was no on the structure of at close of the camera, fest itself non-movant’s MEI’s filter and dispute and no case, may the district court when direct the manner which that oper- structure is judgment accordingly. ated, enter verdict or dispute, but there awas as discussed infra, operation on whether that manner of case, present In the the and admirable meant that MEI’s structure was so far pretrial preparation system extensive de- changed principle performed that it the signed vigorously managed by and dis- the same or similar function as the claimed court, preparation trict moved from for a invention in a substantially way. different trial, through jury determination of wheth- discussed, infra, disputed As that question granted, er the demand should to genuine raises a issue of material fact and trial, preparation for a bench to the court’s the answer to question that controls the counsel, examination of unsworn infringement issue of in this case. study nar- court’s of exhibits and unsworn statements, grant finally rative and to a Focusing exclusively way on the the sup- summary judgment. Counsel did not Figure structure of the 1 embodiment clear, candid, ply uncompromising the specification operates, the the district court required protect explication of the law to allowed that focus to control its claim inter- system in in- pretrial preparation the this pretation grant summary and its judg- stance from error. doing, ment. it so erred. Electric Prod- Cable As stated in (2) The Claims Read on Genmark, Inc.,
ucts, Inc. v.
present record would a determina- (3) Interpretation Claim correspondence with claim tion that literal or interpretation Claim construc 1, example, composite is avoided legal subject is a to review free tion matter grids equi- filter structure formed with applica the clearly erroneous standard stripes superimposed in their entire- width findings. Raytheon Rop to fact Co. ble equal opposite angles to the ties at USPQ 592, Corp., 724 er F.2d repro- information for vertical to derive Fromson, (Fed.Cir.1983); supra, color, i.e., image in the MEI ducing an USPQ at 1140. F.2d at con filter. claims, history struing prosecution is a language of the them claims tool, Co., Zink useful Inc. v. John McGill clear, definite, unambiguous. selves (Fed. USPQ unequivocally, It and word- directly, reads Cir.1984), specification, as is MEI’s structure. As above for-word Fromson, at 720 F.2d at correctly and as the district court indicated 1140. noted, dispute concern there is no factual ing of MEI’s filter. It is the structure in the light A construed claim is employs filter “rela undisputed that MEI’s claims, other language, of the claim angularly superimposed” grids. The tively art, history, and prior prosecution claims, ap as the district court asserted light of the accused specification, not sense, peared literally are therefore met. MEI’s Contrary to what counsel device. correspondence language If with literal court, are not claims con the district wrote consideration, claims were the sole “not to cover” the “to strued cover” present record entitled SRI would on the procedure That would accused device. is no summary judgment, because there judicial a matter make genuine material fact that could issue of It the claims have only whim. after affect that consideration. been construed without reference claims, so as con that the infringement is accused device of actual
Determination strued, device to however, applied to the accused case, every limited to liter- not in here, infringement. Palumbo v. determine See infringer, An accused as alism. Don-Joy F.2d at language, properly claim as argue that the actually his interpreted, does not read on
1H9 (i) History12 whole. And in connection Prosecution with claim one, filter; it is the in connection with initial re- Responding to the examiner’s seven, example, claim it is the entire Kell, claims in jection of certain view camera, with filter it. 2,733,291, entered ex- U.S. Patent No. SRI distinguished tended Remarks which The district court in its Memorandum Kell on a number of different bases. Opinion quoted the middle sentence of the Among those Remarks were these: paragraph applicant it read aloud: “[T]his amended, distinguishes
Claim modulating frequen- insures two different *12 calling spatial in over Kell filter by placing grid cies virtue of one at an grid comprised which is of a first angle grid,” to another and held that the parallel spaced having lines the color of a claims must therefore interpreted as grid and a second primary, subtractive composite limited to filters angled with relatively superim- angularly which is stripes generate that themselves “two dif- grid, said posed over all said modulating frequencies” ferent first when having parallel spaced lines grid second pass. 470, in F.Supp. scanned one 591 at are the color of another subtrac- USPQ 224 at 75. Because it found that 1 further primary____ Claim dis- tive angled stripes generate MEI’s themselves tinguishes calling Kell in for each over modulating frequency the same in one grid density. to have the same line Ev- pass, thought the court there could be no Kell, specifi- in the ery teaching both infringement of the structural claims in drawings, in the ... is that cation and suit. density grid. the line is different for each patentees in Prodyne Unlike the Enter original.] [Emphasis in Pomerantz, Inc., prises, Inc. v. Julie 743 why The reason Kell makes his line 1581, (Fed.Cir.1984) 223 477 grid density different for each is that and Builders Concrete Inc. v. Bremerton way generates is the that he his two Concrete Prods. 757 F.2d modulating frequencies. different This (Fed.Cir.1985), USPQ 240 SRI did not applicant insures two different modulat- prior amend claim to avoid art refer ing frequencies by placing virtue of one ence insertion of a structural limitation. grid angle grid. at an to another aAs rely incorporation by SRI did not refer result, scanning beam, which travers- ence, patentee in as did the Envirotech grids parallel the line in successive es Inc., 753, 760, 730 F.2d Corp. George, v. Al lines, interrupted fre- at two different USPQ 473, (Fed. Cir.1984). Nor, as disposed quencies by angularly the two patentee Equipment did SSIH S.A. grids. lines of the two Com’n, v. Intern. Trade 718 F.2d U.S. conference, April At the (Fed.Cir.1983), did counsel, intensively examined court SRI’s escape prior amend a claim to art SRI focusing reading on and aloud the second inserting language which could be under paragraphs quoted. of the two above Con- only by prosecution reference to the stood tinuing, the court said: only not did amend to history. SRI you accept Do that statement? art, prior “relatively it escape did not insert MR. GREGG: That’s correct. so, angularly superimposed” to do and at THE And that’s the essence language COURT: into either no time did it insert patent, the ’633 is it not? specification the claims or the that would (set limit the “information” forth claim part MR. GREGG: That’s of the es- grids) to that sence, produced by its crossed bearing in the statute mind what frequen consisting of two rather than one say, has to ... ... 35 U.S.C. § cy- you must look at the invention as a claims, including difficulty as- a lot of and an interview. Some
12. The court said SRI "had pat- after one getting serted claims 9 and were allowed the Patent Office to issue the [sic] Actions Office Action. ent.” The issued after two Office any any stripes generate frequencies. two claim themselves insert Nor did SRI opera- manner of particular limitation to a Cf Co. Hughes United Aircraft . in its structure. Nor tion claimed of its States, USPQ 473, Kell distinguish on the basis Remarks did (Fed.Cir.1983). explanation SRI’s only frequency one generating of Kell Kell and used different structures to SRI contrary, pass. On SRI single his scan illustrated the get frequencies two claimed above-quoted in the recognized expressly partial between vs. structural distinction (“that is generated Kell two Remarks that superimposition entire different vs. his different generates two way he widths; stripe it did not same convert modulating frequencies”). claims to method claims. suit prosecution history in the Nowhere composite of a filter any there discussion determining that SRI “ar had modulating frequency. generates one gued to the Patent Office narrow con above-quoted paragraph indi- As first claims,” and was “preclud struction of the cates, angularly that Kell recognized SRI arguing ed from a broader construction for striped grids and parts of superimposed purposes infringement,” F.Supp. *13 frequencies single in a got that Kell two 470, USPQ 75, 224 at the district court that Kell so pass, pointed out did with but misconstrued the nature effect of the grids of superimposed partially different prosecution history. Nothing appearing in properly not could have density. line SRI history required that in relation to Kell over Kell patentability relied on admit- limiting “narrow struc construction” the tedly old features. operat tural to a method of claims suit structural, quoted being The the claims necessary ion.13 It therefore not Kell, distinguished them over as Remarks argue “a construction” to SRI broader do, required on the those were Remarks prove infringement. i.e., structure, grids angularly su- of basis district court’s We review the construc- (Kell) grids angular- part vs. perimposed in light prosecu- of of the tion the claims (SRI) ly in their entireties superimposed widths) question of law (stripe history line densities tion as a and we and different (Kell) (SRI). line densities The vs. same in error. hold it to have been necessarily allowed on the ba- claims were
sis of structural differences. SRI’s those (%%) Specification The read, therefore, as cannot be Remarks court also focused on The district (actually limiting rewriting) strictly saying, F.Supp. 591 specification, though they were to a claims as drawn 470, USPQ angled 224 at 74: operation method of course, patentability, say, appli- it relied on for as that an cause was not 13. We do not when Concrete, Builders Inc. v. was the insertion in distinguishes prior art and allow- cant obtains Co., 757 Products F.2d Bremerton Concrete claim on of the ance of a structural the basis (Fed.Cir.1985), USPQ that sentence did 240 oper- the claimed manner in which structure history estoppel. ates, prosecution A not constitute a thereby may his not so limited he pointing SRI’s out how different struc- sentence happens, will When that examiner claim. operated ture can to achieve same result be normally require to the insertion limitations solely Kell the claim to struc- did not limit argued say operation. do we that Nor here operated Figure 1 embodiment of tures as the by prior may limited art not claim 1 not be operated. MEI does invention is claimed say appeal. Nor do we before us on this not, course, employ Kell's claim to structure interpreted prod- be cover all claims must anything thereto. similar literally infringe, no how ucts matter far changed Further, may principle holding products present those limited our way summary judg- operate substantially grant present different in a record by way operates. the introduction the claimed invention ment. It does not foreclose in which evidence, any including single parties only We sentence on which at trial of that the hold not, history, prosecution on in the focused did in view of reflected district court claimed, question raised the reverse argued which the fact distinctions structural infra, be resolved. equivalents, doctrine of 1. Be- the basis for allowance claim form
H21 specifications of the ’633 pointing distinctly out and claiming the allegedly make clear that the claims in- subject matter applicant which the regards fringed grids super- envision a filter with as his invention.” 35 U.S.C. 112. It is the § imposed angles at different from the ver- claims that measure the invention. Aro generate frequency tical to variations for Mfg. Inc. v. Convertible Top Replace- primary signals. the two color Co., Inc., 336, 339, ment 365 U.S. 599, 600-01, USPQ 354, L.Ed.2d
Quoting
specification’s description
of a
(1961);
356-57
composite
Bandag,
filter
Inc.
comprised
structure
v. Al
two
Bolser’s
Stores, Inc.,
Tire
grids having
angles
lines at “relative
such
USPQ 982,
adequate
(Fed.Cir.1984);
separation
...
is obtained
Jones v.
Hardy,
1524, 1528,
between carrier
USPQ
sidebands derived from
scanning,”
(Fed.Cir.1984).14
said
the district court said “the
Here the
claims,
specifications
grids
assume one of the
which must
whole,
two
be read as a
set
vertically
to be oriented
forth
distinguished
with the other
structures
pri-
from the
diagonally imposed
to form a 45° or art and were allowed on the basis of
angle.”
Id. at
at 74. The
structural
(e.g.,
differences
claim l’s limita-
correctly
speci-
district court
described the
superimposition
tion to
grids,
entire
each
fication,
difficulty
but the
is this: claims having equi-width stripes).
infringed,
specifications.
Infringement,
by equiva
literal or
When claim construction is re
lence, is
determined
comparing an ac
construable,
quired, claims are
as above
product
cused
preferred
not with a
embodi
indicated,
light
specification,
Unit ment
specification,
described in the
or with
Adams,
39, 49,
ed States v.
383 U.S.
86 a commercialized
pat
embodiment of the
S.Ct.
15 L.Ed.2d
*14
entee, but with the properly and previously
479,
(1966),yet
482
claims are inter
“[t]hat
construed claims in suit.
Hospi
See ACS
preted
light
specification
in
of the
does not
Systems,
tal
Inc.
Hospital,
v. Montefiore
mean
everything expressed
that
in the
1572, 1578,
929,
732 F.2d
USPQ
221
933
specification must
read
be
into all the
(Fed.Cir.1984);
Teledyne McCormick
Raytheon
claims.”
Roper Corp.,
Co. v.
Selph
States,
1000,
v. United
558 F.2d
957,
USPQ
Snow, 294 U.S. grid stripes (1935): grid stripes and a second set of USPQ 26, 721, 30 24 L.Ed. angle to the disposed at a relative vertical that, as the statute may take it We however, specification, ex- of 45°. The just detailed specifications requires, the Figure “by way 1 pressly states meth using the inventor’s way of show a example” a version of the claimed shows particular that he conceived od and has vertical invention filter But he the best one. way described was stripes stripes angled at 45° to the mode of particular to that is not confined vertical. patent, not its claims of the use since the the invention. specifications, measure language of no asserted claim re- 405, Case, 210 U.S. Paper Bag Patent quires any stripes be vertical. Claim 2 751, 1122]; 748, L.Ed. 52 S.Ct. 1 in expressly more narrow than claim [28 ” Co., 160 Lehigh Valley R. McCarty specifies angle v. as the that it “45° relative 242-43, 240, 110, S.Ct. stripes grids.16 of the two U.S. between [16 Denmead, 3, however, 358]; v. supra, L.Ed. Non-asserted claim does Winans 330, 330, 14 L.Ed. requiring U.S. contain a limitation that one set How. [56 patent may grid stripes claims of a “vertical”. be While 717]. or draw incorporate specifications read, The district court thus via reference, v. ings by see Snow Lake specification, the “45°” limitation 617, S.Ct. 121 U.S.
shore R.
[7
2,
claim and the “vertical” limita
narrower
1351,
1343,
L.Ed.
and thus limit
1004]
3,
narrower claim into broader claim
tion of
described
to the form
It is set
1 and the other asserted claims.
em
specification,
necessary
it is not
that when a
claim does not
tled law
claims or describe
brace
contain a certain limitation and another
specifications
possible
all
forms which
does,
cannot
read
claim
that limitation
be
reduced to
principle
the claimed
determining
the former claim in
either
into
practice.
Fromson,
infringement.
validity
supra,
USPQ 1141;
720 F.2d at
Envi
predecessor
of our
courts stated
As one
Designs,
ronmental
Ltd. Union Oil Co.
Autogiro
America v. United
Co. of
California, 713
States,
181 Ct.Cl.
(Fed.Cir.1983);
v. Don-
Palumbo
(1967):
*15
USPQ
155
703
Co.,
USPQ
F.2d at
226
at 10.
Joy
762
specification
forth the best
The
“set[s]
contemplated by the inventor of
mode
The reason for the rule is well illustrated
specifically
claim 3 is
carrying
his invention.” 35 U.S.C. here. Non-asserted
out
Figure
structure of
1. To
of the in drawn to the
112. This one embodiment
§
though
interpret
the asserted claims as
the claims.
vention does not restrict
(or
they
drawn to that structure
were also
use
interpretation must not make
Claim
operation)
of
would be
to its manner
mode” terms inasmuch as
of “best
superfluous.
asserted claims
render the
infrin
patentee
guard against
need not
possible in
gemment by listing every
in
interpreting
the asserted claims
specification. Ad
fringing device in the
specification, the district court
light of the
States, 330 F.2d
ams v. United
into them from other
limitations
read
(1964),
H23 principle MEI’s filter is “so different in Infringement is defined in 35 invention,” altogether that it’s an different 271(a) U.S.C. as the making, unlicensed § apparent attempt paraphrase judi- using, selling patentee’s of a claimed cially equiva- doctrine of stated reverse Recognizing invention. frailties of lan grant lents.17 As a basis for its of summa- guage and foresight, limitations on human ry judgment, the district court found non- acknowledges may law that one appro infringement under that doctrine. Because priate patented another’s contribution not genuine in this case there is a issue of only product precisely with a described respecting material fact whether MEI’s fil- (literal infringement) claim but also changed ter and camera structure is so far product with a quite is not so de principle performs that it the same or a scribed but is in “substantially the fact substantially similar function in a different thing, same used in substantially the same way, required. a trial of that issue is way, substantially to achieve the same re Availability (doctrine of the reverse doctrine of sult” equivalents). The law equivalents Supreme set forth acknowledges also that one only ap Mfg. Court Graver Tank & Inc. v. pear appropriated to have patented con Co., Inc., Linde Air Prods. 339 U.S. tribution, product when a precisely de 608-09, 854, 856-57, 94 L.Ed. scribed in a claim is in “so fact far USPQ (1950): changed principle” performs that it in a The wholesome realism doctrine “substantially way” [the and is not different equivalents] always not applied'in (reverse appropriation therefore an doc patentee favor of a but is sometimes equivalents). trine of One who takes a Thus, against used him. where a device claimed merely structure and uses it in a changed principle is so far from a way that differs from that in speci which a patented performs article that it, fication-described embodiment uses does a similar same or function a substan- thereby escape infringment. Smith v.
tially way, different but nevertheless Snow, supra. claim, falls within the literal words of the equivalents may
the doctrine of be used patentee bears the burden to restrict the claim and de- [in reverse] proving infringement by preponder patentee’s infringe- feat the action for ance Corp. of the evidence. Envirotech ment.18 Inc., Al George, (Fed.Cir.1984); Equipment SSIH S.A. Tank, As made clear in in which Graver v. United States International Trade upheld finding infringement the Court Commission, equivalents “sup- under the doctrine of (Fed.Cir.1983). Initially that burden is car ported by clearly the record” and “not erro- ried neous”, when literal has finding been infringe- the ultimate Tank, ment, proved.19 infringement,” may or “actual See Graver U.S. at de- 855-56, USPQ pend unique on facts and circumstances 70 S.Ct. at at 330. *16 patentee the case. When a establishes literal in- was, points, infringement, At 17. various SRI’s counsel how- literal under the ever, unhelpful to the district court. Under equivalents, noninfringement doctrine of and court, questioning by extended sponded affirmatively the counsel re- equivalents. under the reverse doctrine of See question to a of whether Westinghouse Boyden also Power Brake specification patent the of the ’633 contained 707, 722, 170 U.S. 42 L.Ed. describing operation, material MEI’s filter lead- (1898). ing requirement, the court to state a nonexistent anywhere “I don’t think in the '633 do products 19. Because on which claims are you picture find a of filters that are identical to in readable word for word often are fact the the MEI." same, perform same function in the the same result, way, achieve the same as the and claimed Surprisingly, party neither cited Graver invention, a defense based on the reverse doc- Tank, supra, appeal. The case sets the classi- equivalents rarely is offered. trine of governing cal considerations determination of however, documentary and testi- infringer may un- to adduce fringement, the accused in at trial an effort to going to monial evidence of forward dertake the burden finder that the MEI filter un- convince the fact non-infringement the fact of establish changed principle” in equivalents. If is or is not “so of the doctrine der reverse far performs prima substantially that it “in a differ- makes a infringer the accused facie way.” ent case, retains the who burden patentee, the infringement, must rebut persuasion on of in The mandated Graver Tank test prima case. facie application room the fact finder’s leaves varying Words like “so circumstances. equivalents raises of The doctrine far”, “substantially” are “principle” and inquiry upon a fact determinable question subject rigid pre-definition; nor will substantially is the product into whether a “principle” the of a structural invention be substantially the same thing same used immediately always apparent. It is and substantially same re the way achieve apply precisely the role of a trial the test Tank, 339 U.S. at sult. Graver testimony light physi- in live and all the USPQ (“A 856-57, at find S.Ct. at cal adduced. evidence is a determination of ing equivalence fact.”). Autogiro Co. v. United also See trial, MEI can At and cross-examine SRI States, Ct.Cl. each on their narrative other’s witnesses indicated, As above the statements, may sustain all or some of and equivalents also raises reverse doctrine objections pursuant to the their filed Octo- inquiry question, a fact determinable on (Those objections ber 1983 order. as- has so far product into whether a been serted conflict with witnesses’ other state- performs that it the changed principle The MEI writings.) ments and SRI and substantially in a function same or similar may and be demonstrated. filters cameras Though inquiry the way. different second invention, claimed and principle of the infringement being present) (literal differs degree and the product, that of MEI’s it directed to fact issue. is nonetheless latter, change, if any, in the be deter- evidence, may light mined of all as court here addressed The district performs question the latter of whether inquiries Autogiro, listed but factual sum, way. in a different substantially doing it so “as a of law” said matter i.e., key infringement question, whether suit, because, it construed claims changed principle so has been “gist patent is the creation of the ... far different, way substantially depends is frequencies to encode color of two carrier on the evidence. ig But a court’s election to information.” claims, nore and to substi the structural guidance supplied The Supreme Court operation of a “gist” tute a drawn from Tank, 339 useful here in U.S. Graver embodiment, cannot convert the disclosed 856-57, at 330 70 S.Ct. at question by the doctrine fact raised reverse prisoner (e.g., equivalence is not the legal question claim equivalents into a formula, to be an considered nor absolute simple That fact construction. vacuum; require identity in does not it product so far Is the accused direct: every purpose respect; it is determined changed performs principle patent, prior against the context claimed invention in a sub function of the art, circumstances of the particular way? stantially different case; one accused factor whether independent re- product resulted as the court question, no district There is search; per- admitted, factor is whether important found and as SRI from outset *17 in the art would reasonably sons skilled operat- camera so that MEI’s filter and are interchangeability of an known way have of the their functions in a perform ed as to in the with ingredient not contained way in that differs from the was). major dispute factual that A Figure performs 1 those one structure of SRI’s case, par- is whether the example, right, this for and MEI had the functions. SRI H25 Kalman, employ substantially ways different of must ties be and is hereby over- (MEI’s readily or encoding position) color ruled.21
interchangeable ways long to those known question It is settled that patents the art for whom of
skilled (SRI’s position). (literal Thomas & infringement written See by equivalents) or is Inc., Corp. 720 Systems, v. Litton Betts Tank, supra. factual. Graver It would 1572, 1580, (Fed.Cir. USPQ 1, 6 220 question be anomalous hold that the of (known 1983) interchangeability of ele (literal noninfringement or the reverse equivalence). is evidence of ments equivalents) doctrine of is not factual. Equivalence non-equivalence, and as (5) Reason In Banc Action indicate, opposite terms are but sides of phrase single relies on one in a MEI determining each, same In coin. a court case,20 Kimberly-Clark Corp., Kalman v. must say oper whether accused device 760, (Fed.Cir.1983), USPQ 218 713 F.2d 781 substantially ates in way the same (equiva proposition non-infringement for the lence) in a substantially way or different equivalents the reverse doctrine of under (non-equivalence). The equiva doctrine of question. Kalman, In this court legal a may employed, lents as was said determined that the district court’s fact Graver, expand or restrict a claim.22 (reached identity finding of of invention Indeed, Supreme trial) day a four bench not clear- Court after Graver erroneous, by Tank, ly stipulation supra, that “the and one predecessor of our parties, coupled [Kimberly with States, courts in Limited Decca v. United failure to counter Kalman’s affida- Clark’s] 454, 420 F.2d 190 Ct.Cl. 459- evidence in his motion vits and submitted 463, 348, USPQ 351, denied, cert. summary judgment” finding dictated U.S. L.Ed.2d infringement. undisputed of On (1970), “the equivalents said doctrine of record, judgment this court affirmed the may claim,” (empha be used restrict the finding. response to an based added), Kalman, sis this court in argument appellant, question of 771, in rejecting appellant’s argu F.2d at equivalents—in doctrine of a case reverse reverse equiva ment on the doctrine of involving particular stipula- of record lents, employed the classic statement unchallenged tion affidavits—was equivalence, saying: Berlyn “the devices legal “a question”. termed Id. work, in substantially do the same USPQ at way, accomplish substantially same respecting Because the statement the re- same result.” i.e., equivalents, verse doctrine of that it question non-infringement under legal question, may raises be considered equivalents, doctrine of the reverse holding effect, to that has sua court indicated, genu- above raises in this case a taken this sponte case under consideration ine issue of material fact which renders the v. Corp. in banc. See South United summary judgment inappropriate. issued States, 690 F.2d 1370 n. Barber, (Fed.Cir.1982). n. 2 See Martin To the extent holding (Fed.Cir.1985). that the statement constituted a indicating grant summary judg- have found that the to its 20. We no case have contributed non-infringe- fact ment termination the reverse doctrine of or ment. To the extent the district court legal question” misled, becomes "a the de- necessity when regrets this court been disputed application rests on a appearing correcting statement Kalman. equivalents. instances, dealing one with 22. In both wheth- text, indicated in the cited the 21. As counsel product range particular er a falls within court. statement in Kalman to the district patentee products which the entitles the Though appear the statement in the does not selling. making, using, to exclude others Opinion, it could district court’s Memorandum *18 “technique” and MEI’s were as different as (6) Conclusion oranges: apples and and material fact genuine The jury That doesn’t strike me as a issue. filter and cam MEI’s question of whether appro- That strikes me as an issue that is changed principle” in that “so far era are decide, priate judge particularly for a to similar func the same or a they “perform things oranges if are rather obscure in way” being substantially tion in a different experience jury. the common a [Em- court disputed, the district present and phasis added.] judgment.23 granting summary erred in court, deciding in that The district REVERSED. place in point to conduct a bench trial trial, jury the demanded referred to uniden- MARKEY, Judge, with whom Chief (which tified “decisions” of this court hears NEWMAN, Judge, joins, Circuit PAULINE pat- in appeals judgments of district court additional views. cases) indicating dichotomy ent be- jury appropriate tween factual issues for a court, banc, sitting in has declined appropriate judge: and factual issues for a jury the denial of the to decide whether me, particular It seems to under the case, improper in this consid- demand was recent under the Federal decisions [sic] adhering step unnecessary and ering that Circuit, pure question deriving it’s a not, should unless to the rule that courts evidence, undisputed ultimate facts from questions. compelled, decide constitutional properly by judge. done this court’s mandate to con- Because of your I Gregg, papers Mr. have read in guidance to uniform the national tribute carefully, any but I don’t see factual (as patents governing as in that law of well proper jury. issues that would be for contracts, government personnel, federal [Emphasis added.]1 trade, against the international and claims point, appeared At another the court government), and of what is seen because distinguish specifically jury demands for as the mistaken belief some members patent in other trials cases those courts, including and some district bar types of cases: case, district court in this this course, Gregg, Of Mr. the two sides creating or is a dichoto- court has created evidence, present will different but that right my governing the rules between any doesn’t mean there is conflict damages jury patent trials in suits for evidence. And in the of an evi- absence right jury governing and the rules conflict, dentiary jury I don’t see a issue damages, these trials in other suits for [Emphasis in a case. added.] additional views are offered. the district court’s To the extent The district court here abandoned the jury and decision denial of the trial demand trial, pretrial preparation jury initial (two proceed with a bench trial months converting preparation it into for a bench the court’s indication of intent to before denying presence trial. “factu- summary judgment) consider rested on an jury” proper al issue that would be for a understanding decisions this court’s court, quoted, re- the district as above distinguished considerations between sponded metaphorical reference governing right jury to a trial opera- position damages and the SRI’s counsel to MEI’s cases for cases, types Figure right jury to a trial other tion of the shown embodiment dealing being genuine The court was not here with the deci- fact 23. A issue material summary governing present, required. rules motions for trial Pre- sional on that issue verdict, JNOV, judgment, sumably, jury pre- or for directed or for here on the trial was denied present. with the sole of whether the "liabil- no If SRI but mise that such issue trial, ity phase” request jury of the case would be tried before a the district renews its order, judge, supra, request light or before the as its court will consider that foregoing opinion. stated.
H27
unequivocally
Proponents
appropriate
“complexity exception”
to affirm
of a
it is
litigants
entitled to neither
patent
say
that
legally
factually complex matters,
or
right
a lesser
to the same
greater
a
nor
but
antitrust,
e.g.,
appearing
those
in some
se-
trial,
governing
jury
a
under the same
to
curities,
cases,
or
complex”
are “too
considerations,
litigants.2
other
as are all
juries
comprehend,
for
to
and those cases
should therefore
single
be tried
a
(a) Complexity
judge.3
argument
One line of
looks to the
create a
for dis-
Those who would
basis
in England
distinction made
in 1791 be-
right
jury
to
trial of
tinguishing the
“pro-
tween “suits at common law” and
litigants
right
from the same
of other liti-
ceedings
equity”.4
at
Professor Arnold’s
“complexity” present in
gants point to the
research
acceptance
would undermine the
patent cases.
some
of the historical
position.
basis for that
Arnold,
Despite
directive of the Seventh See
A
the clear
Historical
Inquiry Into
right
jury
“the
to
trial
Right
Amendment—that
The
By Jury
To Trial
Complex
”
added)
(emphasis
preserved
be
shall
Litigation,
Civil
1 28 U.Pa.L.Rev. 829
—one
appellate court and three federal
federal
(1980).
promptly
Arnold was
challenged.
district courts have remanded or struck
Campbell
See
Poidevin,
and Le
Complex
cases,
“complex”
rely
jury demands in
civil
Cases and Jury
Reply
Trials: A
to Pro-
ing
judge-created “complexity excep
aon
Arnold,
128 U.Pa.L.Rev. 965
fessor
Japanese
tion”. See In re
Elec. Prods.
(1980); see also
Peripherals,
ILC
supra,
(3d
just process. a complex civil cases are jury of a demand not process. It is constitutionally required Congress or clearly to submissible result.6 a support proposal a under of the States Constitution; they are not commentator, recogniz- Article Y of apparently One judges to sworn appropriately submissible inevitably more judges not all ing that fair, “Telephone Case; Battle in Antitrust Titans Resume trials be requirement is that 6. The text, Against AT & T in Law Suit MCI Pitted in the numerous perfect. As discussed Damages”, Seeking clearly Record Award for against "erroneous safeguards a exist 14, Post, D1, D24, April sup- Washington 1985. It is following jury trial. Much of the a result" experiential back exception appears doubtful that complexity bot- at least port for a any judge this ground could match that of assumption cost that time and on an tomed "Jurors, properly jury. instructed jury particular if trappings of the might if all the be saved bring wheels, respect, collec scheduling, impanelling, and treated with deserved system (jury wisdom, intelligence, juries, and dedication to “hung" tive duty, inter- excuses from risk tasks, trial, etc.) rarely equalled in other long is juror’s their lives in a ference with service____ accept public We do not some civil cases. areas of in at least were eliminated COURTS; brighter single judge POSNER, a is than 'that view] CRISIS [the See THE FEDERAL functioning together.'" jurors, collectively (1985). assump- n. 1 That AND REFORM 130 411, Litigation, Sec. U.S.Financial reasons In re with one of the tion be contrasted 929, denied, Cir.1979), (9th 446 U.S. cert. re-emergence jury trials in of demands for 1866, (1980). See also L.Ed.2d 281 cases, i.e., 100 S.Ct. may be obtained that a verdict Corporation Matsushita Elec. Radio hours, Zenith obtaining decision a court whereas (E.D.Pa.1979), Co., F.Supp. Indus. patent case has often a bench trial of a after Japanese Prods. In re Elec. sub nom. vacated years. required Higginbothom, Litigation, supra; Con Antitrust juries most been eliminated from That Dialogue; tinuing Juries and the Alloca Civil any litigation is of little if in Great Britain civil Power, Tex.L.Rev. Judicial tion of train- present discussion. The relevance to the (1977). country judges ing and recruitment own, substantially our and there differs Judge state- to Gilmore’s can be added 8. Little requirement no Seventh Amendment case of Kian v. Mirro related ment in right jury preserved. trial 88 F.R.D. Aluminum (E.D.Mich.1980): jury impanelled press reports that the 7. The involving approach to ex- "elitest" damages, a case who wold seek an determine Those larg- jury undermine one trial would tremely complex factors and the use of the economic rights. engi- our There history, potential includes an of the most fundamental est neer, award in accountant, jury complexity exception to a trial designer, hearing system is no a mechanic, jury it is of a when the denial agent, a would purchasing an aircraft authorize a chemist, officer, the Seventh secretary, available under otherwise a bank loan clerk, housewife, college employee. Amendment. and a
H29
factors,
first,
permit
requiring
To
uphold that Constitution.
these
exten-
a constitutional
interpretation
possibly
abstruse
in-
judicial
sive and
historical
destroys
constitu-
another
provision
quiry,
obviously
the most difficult to
risk the
place
is to
entire
provision
James,
tional
apply.
Right
Jury
Trial in
See
v. United
Constitution.
See Ullman
Actions,
(1963).
72 Yale L.J. 655
Civil
422, 428-29,
States,
350 U.S.
at 538 n.
H3J when, evidence, totality plex” judge for what the assumes will be and experience.” “One of jury’s “common drawing after inferences credibility all and objections to the draft of the principal non-movant, determinations in favor guarantee its failure to Constitution was jury no reasonable could have reached that jealously the colonists jury trials ... 50(b), verdict. Rule Lastly, Fed.R.Civ.P. guarded rights powers juries, and judges exercise substantial control over judges juries being and more or less with jury choosing require trials in general co-equals judicial process.” in the Schwar verdict, 49(a), special Fed.R.Civ.P., or Rule zer, Communicating Prob with Juries: admitting evidence, excluding and in in Remedies, 69 Cal.L.Rev. lems and law, structing jury choosing on the employ interrogatories, 49(b), Rule Fed. bar, In the the district court case R.Civ.P., trials, granting and in new Rule distinguished indicated that this court had 59, Fed.R.Civ.P. generally Ropski, See “appropriate” between fact issues for a Aspects Constitutional and Procedural jury “appropriate” judge. and those for a Litigation Use Juries in Patent is, however, no such distinction in There (Part II-Conclusion), 58 J.Pat.Off.Soc’y 673 Amendment. Fact issues are the Seventh they “complex” such no less because court, “ultimate”. The district in announc- Reassurance resides also in the role of ing deny jury trial and its decision judge managing, simplify- and counsel in trial, employ ques- said “these bench ing, assuring presentation complex way tions” resolved in that “more could clarity evidence with to the fact-finder. economically expeditiously.” But management That effective trial is the judicial economy expedition whether “complex” route to fair resolution of mat- might be served is irrelevant. The Seventh unchallenged ters in trials is a truism “economy” excep- Amendment contains no empirical extant evidence. tion.13 *23 they degrees As in varying for al- (b) Management years, judges daily require, most 200 trial jury compe- For those whose concern here, pretrial proce- as did the district court deny patent litigants tence would the same identify dures in an effort to and focus the others, right jury to to trial available reas- They discourage unnecessary issues. begin, gov- surance To the same abounds. pleadings encourage stipulation and of un- First, genuine if erning apply. Rules mate- disputed They precharge jury matters. the absent, jury may rial fact issues are trial explain legal and and technical terms to be summary judgment granted denied and be irrelevant, They jury used. shield as a matter of law. Rule Fed.R.Civ.P. non-probative evidence and from unneces- Second, may a court remove a case from sarily lengthy complicated “foundation” verdict, jury on motion for a directed charts, laying. They encourage use of being presented point the facts at that un- graphs, and other visual devices to focus by failing in disputed the movant and law clarify Following and the evidence. sum- support any possible for the non- verdict mations, judges greatly trial facilitate the 50(a), Third, Rule Fed.R.Civ.P. af- mover. clear-cut, jury’s they give function when verdict, jury ter the has returned its comprehensible jury plain in instructions court set it aside on motion for JNOV Rubber, removing MEI cites Structural Rubber Products Co. v. same as issues. In Structural Co., suggest exists the court did not that a basis Park Rubber (Fed.Cir.1984), distinguishing genuine saying propriety fact is- "the dis- between material [the genuine clarifying jury emphasis the issues to sues for the and material fact is- trict on court's] recently judge considering party’s presented jury a con- a acknowl- sues for the in be stitutionally right Clarifying protected edged issues is an under the Seventh this Court.” function; important is not Amendment. and needed it simple respect and English. prosecution history to the questions See generally Schwarzer, supra.14 Palumbo, 976-77, in supra, F.2d at USPQ 10, TRW,Inc., demanded, and in Lemelson v. be if further reassurance And (Fed.Cir. 760 F.2d availability of the found in the it can be 1985). view, In my meaning im and appellate process. pact prosecution in this case cited DAVIS, Judge, concurring in Circuit history sufficiently uncertain that ex result. planatory testimony and fuller ventilation (1) application I believe that of the re- could well helpful. be equivalents presents verse doctrine of issue; (not (2) legal) (a) factual I explicitly there is a add I believe that device literally whether MEI’s in- dispensed jury trial court with a trial here fringes suit; (3) and claims the re- for no wrongly other reason than that it equivalents prosecu- verse doctrine of and concluded were disputed that there no fac- history estoppel having tion been raised as (b) needing any trial, tual issues type of infringement, a defense to literal there is case, there never has been this and not sufficient doubt about relevant facts now, any question relating to the so-called and circumstances to call for a full trial “complexity exception” right ato grant and make erroneous of sum- trial, (c) “complexity exception” mary judgment comparable In a below. issue was neither raised nor briefed nor case, recent there was similar case, argued by (d) either side this and bearing doubt as to the relevant facts gratuitous, unnecessary, would wholly equivalents, we overturned a summary and inappropriate to decide that issue judgment and directed a trial be had. this case. Palumbo v. Don-Joy 973-77, USPQ 5, (Fed.Cir.1985). 7-10 I KASHIWA, Judge, Circuit with whom majority concur with the of the court that BALDWIN, BENNETT, NIES, BIS- here, we should do the especially same SELL, Judges, join, dissenting. Circuit since the District seems Court to have application equivalents treated as essen- I disagree opinion with the lead re- tially legal issue. grant summary verse the district court’s judgment noninfringement.
But I The claims agree do not this court should SRI, interpreted asserted appeal prosecu- decide on this the issue of view of ‘633 estoppel against appellee specification, history tion file as matter art, Rather, too, question, prior infringed by law. should the MEI trial, as separate independent be remitted for was done with device.1 As a *24 judiciary Burger, Agenda Change, 14. The See For modern federal has not been 54 Judicature 232, (1971). lacking steps designed in innovative not to avoid but to facilitate the constitutional command correspondence,” opinion 1. “Literal as the lead right jury preserved." that "the trial shall be term, quite coins the different from literal steps improving op- Those are directed toward infringement precedent the under of this Court. understanding. portunities Jurors have precedent, Under our literal can notes, Schwarzer, permitted been see take determining not be without first determined 757, supra, In a 69 Cal.L.Rev. at recent light specification, what a claim in of the means trial, periodic employed, libel were summations history, prosecution prior the and the art. Envi CBS, Inc., see Westmoreland v. No. 82-C-7913 753, Inc., George, Corp. rotech Al 730 F.2d v. (S.D.N.Y.1985), jury sepa- and in another the 473, (Fed.Cir.1984); USPQ SSIH rately separate determined the issues seriatim of USITC, Equipment 718 F.2d S.A. v. truth, malice, Time, injury. See and Sharon v. 1983); (Fed.Cir. Astra-Sjuco, A.B. Inc., (S.D.N.Y.1985). No. 83-C-4660 Jurors USITC, (CCPA 1980); v. 629 F.2d Auto questions through be allowed to submit the States, giro Co. United America of Report parties. bench to the See the Commit- 391, 396-97, of 181 Ct.Cl. tee on Juries the Judicial Council the Sec- contrast, opinion, of The uses the lead 1984). (August ond Circuit The need to consid- correspondence" term to mean the “literal possible changes vacuum, er other has been made clear. to be read in a words of a claim are
H33 finding noninfringement, Background I believe “1. basis equiva- doctrine of under the reverse “Single operate tube television cameras lents, infringe the MEI device does not focusing image by the to be televised onto claims. SRI’s asserted image photosensitive part a area a of the opinion page pick-up pick-up on the first camera called a tube. The The lead starts image with the into a section this tube converts series of in its BACKGROUND signals by sequence electrical means a statement: (or ‘raster’) of horizontal lines across the opinion contains an The district court’s image amplitude area. The of the electri- technology- explication of the excellent signals according intensity cal varies involved, recognition reflecting a clear light any given point image the undisputed the filter and the fact signals area. These are then transmitted embodiment described in the camera reproduce, to a receiver and used to States Pat- specification of SRI’s United original image on a television screen. 3,378,633(the patent) ’633 issued ent No. generated directly pick-up When from the 16, 1968, operate somewhat April ... tube, signals intensity can record the MEI filter and cam- differently from the image but not its color. infringement. (Emphasis era accused of opinion). in lead as image in up “An color is made of various light components: general brightness disagreement in this case Since there is ‘luminance,’ component compo- called and dispute, are in in- material facts whether primary of each referring to the district court nents of the three colors: just stead of red, blue, green. merely stating reproduce that it contains To an opinion and color, technology image pick-up of a explication “excellent of the tube tele- involved,” undisputed quote image I choose to vision camera must subdivide primary found the district court. It is into facts as area three color areas so that opinion open- lead in its significant signals corresponding that the to each of electrical recognizes “undisputed ing paragraph generated these colors can be simulta- the filter and camera embodiment fact that neously by single pick- raster scan of the of SRI’s Unit- specification described image up area. (the 3,378,633 ed Patent No. ’633 States systems “Both at issue this action April operate patent) issued ... by placing accomplish color subdivision the MEI filter differently” somewhat pick-up of the composite filter front infringement. camera accused of The composite The filter consists of tube. two undisputed find the judge trial chose to grid super-imposed filters each with a material facts to be as follows: stripes. stripes different colored “FACTS passes grid yellow, are a color that all one (and referred to light except blue “The ’633 describes method blue’), stripes and the other’s ‘subtractive single color television cameras tube light cyan, passes a color that all ex- images. perceive transmit color can (and cept is referred to as ‘subtractive technology red Although the detailed red’). scanning As moves across complex, beam patented and accused devices is image composite filter only and its over which the gist of the ’633 signal generat- way placed, output teaching at issue in this action is the in has been components repre- signal special light employs geome- filter ed includes two which a *25 senting portions of the color of an the red blue principles register tric the are image. yellow stripes If the dif- being To understand how object televised. transmission, cyan stripes, the the ferent width than facilitates color the filter light moving speed at a constant however, briefly note the beam of helpful it is signals of different generate output itself. will functioning of the camera infringement argued history was no literal irrespective specification, prosecution that there interpreted prior properly conceded literal claims. or art. MEI has never Rather, MEI has in this case. (i.e. colors) frequency light passing for the 2,733,291, reference to U.S. Patent No. is- yellow stripes passing than for that sued in Ray 1956 to Kell for a color tele- cyan stripes. output signals, These which (‘the Patent’), vision camera Kell are said to ‘encoded’ the have color infor- parties both concede to be the most anal- image, are then from the ‘decoded’ mation ogous prior art. by a series of electrical filters and ultimate- “Kell teaches composite the use of a ly reproduce image used to on a tele- consisting filter grids stripes, of two one vision screen. cyan colored yellow and the other as shown “2. Prior Art: The Kell Patent in Figure # 1: way striped “The in which filters ‘encode’ explained color information is further by stripes grids vary the two in width At the same time the generates filter so all yellow stripes, of uniform signal representing the red content of the width, are either wider or narrower than image at a frequency corresponding to the cyan stripes, also of uniform width. As (subtractive frequency cyan red) stripes. scanning image beam moves across the patent, “Under the Kell because cyan filter, area covered composite yellow width, stripes vary the fre- light component blue image peri- of the quency of signals the red and blue differ odically interrupted passes when the beam from each other and frequency from the yellow over each stripe. periodic This in- general brightness luminance or compo-
terruption generates an signal electrical nent. Thus if yellow the filter has more rerpresenting the blue image content of the stripes cyan stripes, than frequency frequency at a corresponding to the fre- quency (subtractive light components the three yellow diag- with which can be blue) appears in image front of the appears area. rammed as # Figure where the represents horizontal axis fre- nent has the frequency range lowest while quency (MHz) megahertz measured in and the components higher red and blue represents amplitude the vertical axis frequency ranges depending spacing on the intensity light. of the Each color is said to grids. subtractive color frequency’ have a ‘carrier central output signals generated “The thus hump of frequency range its and ‘side then ‘decoded’ three electrical filters bands’ on either side of frequen- the carrier pass’ pass’ called ‘low and ‘band filters cy. seen, As can *26 compo- be the luminance
H35 luminance, patent striped 4D the Kell out ure shows separate are able by of the varia- red, signals virtue grids angled, specification and blue so and the ex- frequencies: pro- In a carrier tions their plains that: action, green relevant to this cess not negative of the different the orientation subtracting component is obtained color grids respect scanning di- with from the components red the blue and out Figure 4D rection as shown decreases sig- separated component. The luminance might otherwise any moire effects that through differ- then funnelled out nals are produced. be ultimately re- and are output channels ent image reproduce the colored combined scanning a second beam
by means of “3. The ’633Patent the television screen. projected on basically “Plaintiff’s ’633 teaches patent suggests a number “The Kell except system the same as Kell that the scheme, one to this basic minor variations equal grids stripes two width. action. Kell is relevant to this of which another, placed angle to one grids are superimposition of one recognized that the however, scanning so that as the beam possi- creates the grid on another vertical filter, horizontally across the moves ‘moire’ interference bility of ‘beats’ frequency ranges of the red and blue com- light and dark the form of which takes Fig- ponents still differ. As shown in will The Kell across the filter. bands scanning ure # beam moves across a can re- moire interference teaches that stripes yellow grid of 1 centimeter-wide angle, stripes placed at an if the duced vertically pick-up tube. Fig- placed on the another. parallel, than to one rather over each traveled the beam cyan grid distance across a Figure # it moves is, Pythagorean cyan stripe as a matter placed 1 centimeter wide but stripes also centimeters. vertical; resulting geomety, 1.4 angle to the at a 45° *27 by striped grids equally spaced stripes with frequency range generated sec- The component signal for the red grid ond signals single pick-up color off a encode frequency lower than the would thus be filter, grids of the MEI how- tube. The grid for the range generated by the first ever, placed equal opposite an- frequency dia- signal component. The blue result, gles As a the dis- vertical. patent is thus identical to gram for the ’633 scanning by tance travelled beam over Figure # system of the Kell stripes grids is the same and no of both signals are decoded low- and band- range frequency is created be- variation just in Kell. pass filters as components. and red tween the blue System “4. The MEI frequency diagram is appearance of the employs MEI camera also a com- “The Figure # shown 5: angled cyan yellow posite filter of delay 1-H line filter which gener- called a comb the MEI filter does not “Because components separates the red and blue frequency range variation between ate the manipu- complicated on means of a series signal components red and blue based scanning As the beam lations as follows. stripe vary widths that in relation line over the movement, across the first scan taught by the Kell moves scanning image, signals of alter- filtered it creates patents, camera cannot decode and ’633 nating zones as shown red and blue components by means of band- the color Figure # Instead, 6: employs what pass filters.
H37 *28 Figura #6 regard operation manner phase’ ‘out of of of its signals
These
are said to be
loss, however,
components alter-
device. I am at a
the red and
deter-
because
blue
opinion,
lead
overlap. As the beam mine from the
an issue of
nate rather
than
line, however,
fact, supported by
it material
the record
the next
be-
moves across
low,
containing
precludes
grant
zones
neither
the court’s
signal
creates a
containing
summary judgment.
alternating
Barmag
with zones
See
Barmer
color
compo-
red and blue
v. Murata
colors. Here the
AG
Machin-
both
Maschinenfabrik
831, 836,
561,
they overlap
221
phase’
ery,
‘in
because
Ltd. 731 F.2d
nents are
(Fed.Cir.1984)
delay
(party opposing
1-H
than alternate. The
line 564
motion
rather
delay
summary judgment
point
the scan line
must
to evi-
operates
filter
comb
record;
long enough
dentiary
for the filter to
conflict created on the
signal just
conclusory
line and then
align it with the next scan
mere
statements are insuffi-
cient).
signals
Suggestions by
opinion
Where the red
lead
combine the two.
aligned zones from
scan
given pair
developed
two
that evidence
at trial is
phase
once the scan lines have
speculation
inappropriate
lines are
mere
and
in rul-
combined, and the blue
shifted and
ing
been
on a Rule 56 motion. First National
signals
signals
phase,
253, 289,
are out of
the blue
Service,
Bank v.
391 U.S.
Cities
only
the red will remain.
1575, 1592-93,
will cancel out
tion of the red and blue resolution, district court should resolve separate out or decode the ing scan lines to case, issue, it did in this as a such as green two colors. The luminance and com- Corp. Jamesbury matter of law. v. See way ponents separated out in the same Inc., Products, 756 F.2d Litton Industrial patents, and the the Kell and ’633 (Fed.Cir. 1556, 1560, USPQ 253, 257 reproduce signals recombined to various 431, 1985); Butler, 746 F.2d v. Williams screen.” image the full color on a television (8th Cir.1984); X. v. Trace Chemical opinion dispute any The lead does 261, Industries, 738 F.2d Canadian judge’s facts recited in the above trial — denied, U.S.-, (8th Cir.1984), cert. fact, agrees they were findings. 911, 925; B.D. 83 L.Ed.2d Click it, then, major I the facts. As see 748, States, Co., 614 F.2d Inc. v. United opinion lies in its of the lead weakness 290, (1980); 755, Admiral 222 Ct.Cl. point, convincing or useful failure to with Douglas Theatre Corp. Theatre v. dispute. specificity, any material facts Cir.1978), (8th Simmonds States, Products, Inc. v. United summary judg- Precision recognizing that While 212 Ct.Cl. genuine 546 F.2d granted when there is no ment is (1976), Hydrotex v. fact, Diary, Inc. Gillette of material Fed.R.Civ.P. issue (8th Inc., Industries, 440 F.2d carry that MEI did not opinion lead asserts U.S., Cir.1971), required by the rule to establish Sherwin the burden issue in 193 Ct.Cl. a material fact the absence of agree I that, with district court that the history essence, cution if SRI attempt to characterize the MEI camera as had relied for patentability over the Kell “frequency” “phase” device than a rather generation on the basis of the device, hardly rises to the level of an evi- frequencies two in a single pass of the dentiary oper- conflict as to the nature and scanning light passing beam across product ation of the accused sufficient to through composite grid filter, the ex- preclude grant summary judgment. aminer necessarily rejected would frequency phase While it is true that claims as admittedly based on an old fea- *29 terms, synonymous are not the court below support, ture. opinion the lead states quite right in is its conclusion that the that SRI never in discussed its Remarks to application of one label rather than another PTO, the composite filter generated does not detract from the fundamental dis- only modulating one frequency and that single tinction between MEI’s use of a fre- acknowledged generated SRI that Kell two. quency in operation modulated carrier its it, As I during prosecution view the frequency and SRI’s use of a two modulat- of patent, principal argument '633 the in patent.2 ed carrier the ’633 distinguish made to the claimed invention dispute Since there was no as to the patent, art, from the Kell prior the closest manner in which the accused operat- device was SRI’s contention that the Macovski ed, the district correctly court concluded filter two modulating “insures different that the of reduced frequencies by placing grid virtue of one at scope to a construction of the of the claims angle grid,” an to another gener- while Kell This, by course, asserted SRI. is a modulating frequencies ated two different question of law. Equipment, SSIH S.A. by making density “his line different for Commission, U.S. International Trade grid.” point perhaps each This is best il- USPQ (Fed.Cir.1983). 718 F.2d by quoting, lustrated opin- as does the lead particularly The district court considered ion, by from Remarks filed in response SRI history the prosecution of SRI’s ’633 to the rejection examiner’s initial of certain patent before the Patent and Trademark claims in view of Kell: (PTO) Office properly concluded that amended, distinguishes Claim as SRI, having argued a construction of the calling spatial over Kell in for a filter claims emphasized generation comprised which is grid of a first frequency by angle variation differentia- parallel spaced having lines the color of a tion, precluded arguing a con- primary, grid subtractive and a second essentially struction which involves no fre- relatively which is angularly superim- quency variation purposes for the of in- posed over grid, all said said first fringement. grid having parallel second spaced lines opinion point The lead on this takes the which are the color of another subtrac- position that the district court primary____ miscon- tive Claim further dis- strued the prose- nature and effect of tinguishes calling in over Kell for each I have considered the "frequency”, Ball affidavit but fail to tem". The mere use of the term experiments however, understand how the of Mr. Ball compel does not the result that the when, raise an issue of material fact on the system operates "frequency" MEI as a so-called record, undisputed the SRI and MEI cameras do system. contrary, judge On the as trial operate substantially way. not in the same realized, "single carrier-frequency the term divi- Manufacturing Graver Tank & Co. v. Linde Air system” simply system sion means that the MEI 339 U.S. 94 L.Ed. only “single” modulates a carrier wave with one paper, The Nakabe referred modulating frequency. The term “two carrier opinion page in to convincing the lead 12 is even less frequency system” applied division as the '633 dispute. to show material facts in that, patent only system means in the disclosed context, SRI asserts in this that Nakabe de- by patent, a carrier wave is modulated with "single scribes the MEI camera as a carrier-fre- modulating frequencies. findings "two” quency system” describing division while a cam- judge trial de- are in accord with Nakabe’s system era such as that described in the '633 scriptions. patent, carrier-frequency sys- as a “two division
H39
density.
opinion
or
same line
Ev- made and whether
lead
grid to have the
classify
Kell,
specifi-
arguments
chooses to
such
ery teaching in
both
“operational”
drawings,
is
“structural”
...
nature.
and in
cation
Industries,
grid.
is
for each
Coleco
Inc. v.
density
line
different
U.S. Interna-
Commission,
original.]
tional Trade
[Emphasis
(CCPA 1978).
As stated
why
makes his line
Kell
The reason
Appeals
the Court of Customs and Patent
grid
for each
density different
in Coleco:
his
generates
that he
two
way
that is the
response
A
to an examiner’s office action
modulating frequencies. This
different
accompanied
may include an amendment
different modulat-
applicant insures two
only
or it
remarks
include
re-
frequencies by
placing
virtue of
one
ing
applicant’s
marks. Because
ultimate
grid
angle
grid.
As a
at
another
goal
submitting
amendments and of-
result,
beam,
scanning
which travers-
fering arguments
support
thereof is
parallel
grids
line
es the
successive
securing
patent,
find no
we
lines,
interrupted
two different fre-
extend the
reason not to
traditional es-
disposed
quencies by
angularly
two
*30
toppel
beyond estoppel by
doctrine
grids.
the
lines of
two
estoppel
to
amendment
admission.
noting
opinion is
in
that
lead
correct
1258,
USPQ
produce
image
should not
obscure
that,
exceptional circumstances,
ed
fact
accomplishes
of how each
this result
right
trial
denied
be
due to the
since numerous devices which could never
suit,
“complexity” see In
Japa
re
argued
reasonably
equivalents
be
be
Litigation,
nese Elec. Prod. Antitrust
produce images.
also
Under
circum
these
(3rd Cir.1980),
F.2d 1069
while the Ninth
stances, according to the
doctrine
reverse
rejected
has
“complexity”
Circuit
such a
equivalents,
the MEI device
cannot
exception
In re
found to
U.S. Financial Securi
infringe. Westinghouse
Boy
v.
Cir.1979),
(9th
Litigation,
den Power
ties
Brake
U.S.
denied,
S.Ct.
ion of Con- complicated is a It
views. by the law, in this case mooted
stitutional suggest.
disposition I OF CHAMBER
ILLINOIS STATE Petitioner,
COMMERCE,
v. ENVIRONMENTAL
UNITED STATES AGENCY, Respondent.
PROTECTION ENVIRONMENTAL
ILLINOIS AGENCY,
PROTECTION
Petitioner, ENVIRONMENTAL STATES
UNITED AGENCY, Respondent. PROTECTION 84-2364, 84-2365.
Nos. Appeals,
United States Court
Seventh Circuit.
Argued June 1985. 4,
Decided Nov.
Jeffrey Fort, Martin, Craig, C. Chester & Sonnenschein, Chicago, 111., Robert C. Sharpe, E.P.A., 111., Springfield, Illinois petitioners. Wyckoff,
Peter H. U.S. Environmental Sec., Defense Land & Natural Resources Div., Justice, Dept, D.C., Washington, respondent. COFFEY, Before CUDAHY Circuit PELL, Judges, Judge. Senior Circuit CUDAHY, Judge. Circuit