*1 facts actual allege creating it failed “to parties,” gave
controversy between but
appellants leave amend. Appellants complaint, court
amended their but it,
again dismissed this time with prejudice, ease controversy.
for want of a or judgment
court entered for the defendants
and the took this We appeal. Sullivans
affirm. grant
A district court can declara if
tory relief there is “a substantial and re
controversy immediacy sufficient
ality parties having legal between adverse Thaler, v.
interests.” Wolfer (5th denied, cert. Cir.1976), 425 U.S. L.Ed.2d In
addition, conduct “enjoin court
which is neither threatened nor imminent.”
Congress of Racial v. Equality Douglas, (5th Cir.1963).
F.2d care We have
fully allegations appel examined
lants’ complaint argu amended and the
ments on appeal, cannot discern how
there is any case here as to controversy 106.23(2).
the validity of §
AFFIRMED. EQUIPMENT S.A., Appellant,
UNITED STATES INTERNATIONAL
TRADE COMMISSION and Stewart- Corporation, Appellees.
Warner
Appeal No. 82-2.
United States Court of Appeals,
Federal Circuit.
July *2 Kahan, and Jonathan S. Joyce
Kevin E. D.C., argued appellant. for Washington, George M. the brief were With them on A. Sirilla, and Mark Ster- Gowdey Peter W. D.C., Mandel- Gerard Washington, ling, York New Schweiger, C. baum and Sandor of counsel. City, Junker, D.C., Washington, argued competition Joel unfair in the impor- methods tation of into the appellee. With him on brief were articles United States. Stein, Counsel, Michael H. Gen. Wash- determined there ington, D.C., and R. Catherine Field. was a violation 337 because SSIH had imported and installed stadium scoreboard 111., Goldenberg, Chicago, Melvin M. ar- *3 for Club, the Milwaukee Brewers Baseball gued on for intervenor. With him the brief Inc., infringed which certain United States Scott, Elliott, were R. Theodore Thomas C. patents by owned Stewart-Warner. USITC Douvas, 111., Jr. and Augustus Chicago, G. Pub. No. An of counsel. currently importation exclusion order bars of which RICH, infringe only scoreboards one of DAVIS, KASHIWA, Before 3,594,762. these Patent NIES, patents, U.S. No. Judges. SMITH and Circuit Our over jurisdiction appeal this found NIES, Judge. Circuit in the Federal Courts Act Improvement of (SSIH) SSIH Equipment appeals S.A. 1982. 28 We 1295(a)(6). U.S.C. reverse § from the in part, order, final determinations United the and vacate remand. States International Trade Commission I
(Commission) in No. Investigation 337-TA- Large Certain Matrix Display Video subject investigation was instituted Systems Components Thereof, and under on by December the Commission section 337 the Tariff of of Act as complaint the of a by basis filed Stew- (19 amended (1976 U.S.C. and Supp. Corporation (S-W). § art-Warner The com- IV. 1980)) (hereafter 337), prohibits plaint which alleged SSIH violated 3371 by § § 1. 19 provides, partments propriate. under from, importer, sult under provided in addition to are declared lize trade and commerce in the United eral Trade Commission and such other de- Services, alleged the Commission to exist shall be dealt (c) Determinations; such an and States, (b) Investigation sion; time limits effect or acts in United substantially injure (a) § unlawful (1) (2) During Unfair methods of 1337. Unfair U.S.C. Unfair methods of with, economically operated, The Commission shall [******] [******] oath States, violation of this section on in toor industry, in tendency Department consignee, § pertinent part: section, and seek advice and information this importation the course of each Department unlawful, any upon prevent or in their sale agencies practices section. of violations (1976 other or to the Commission shall con- of its initiative. review or competition which of Health and Human the establishment of competition and provisions restrain and agent industry, efficiently of as it considers in articles into the Justice, import when is to investigate any Supp. in the United by of investigation or and unfair either, destroy complaint found IV Commis- monopo- trade the Fed- declared law, owner, States, 1980) with, ap- as or there is violation of this of an like or the amount that the articles person violating tions priate with and Commission determinations under subsec- respect United States States, unless, the United and Commission under subsection ance with (d) nation under this under (f) adversely affected of title 5. All shall be made on the opportunity violation of this spect If Exclusion excluded provisions foregoing Patent welfare, competitive be chapter this section (d), (e), to each remedy investigation Commission to the subsection States, to its directly competitive presented section section, Appeals for United 7 of title 5. provisions shall findings and United States after investigation of and economy, legal nature section. Each determination concerned, imported by any hearing articles from subchapter 706 of may appeal by (d) in whether or shall be reviewable (f) provision under this considering States entry and determines, a final determination of record after all cases. or review accordance on the section, it of this section with title determine, in bond, (e) of this equitable conditions Court into Notwithstanding conformity conducted of this II articles in the 5. of this entry production in such public or the section, of the effect of Any consumers, subsection, as a shall direct notice (d), (e), there is a chapter Customs defenses determi- with section, accord- section person United appro- health result by with and re- or it and, as assert- claims were valid claims in the above of certain infringement virtue of imported ed, infringed were SSIH’s 3,495,762; 3,941,926; and Patent Nos. entered an The Commission scoreboard. re- ’926, patents, and ’335 4,009,335 (’762, order, accordance exclusion alleged S-W Specifically, spectively).2 forwarded on June 337(d),3 § infring- being were following 25 claims President, under required ed: importation This order barred 337(g).4 10, 12 patent The ’762 —Claims or more infringed which “one products through patent The ’926 —Claims patents. of the three claims” through The ’335 —Claims 17,1981, and ’335 16 and the ’926 July On through 21 and 27 through infringe- in an were held invalid patents party. was not a unanimously determined ment action to which SSIH The Commission Pontiac, *4 Corp. City of Stewart-Wamer in that a violation of that there was § beginning violation, it shall— have no force or effect. that such articles should not be excluded the action taken under subsection he receives a President, refuse this subsection investigation except under bond with upon which such determination is based. welfare, eral there is reason to believe that there is such a there is a violation of this purposes from date of such such determination and notifies the Commis- (e) Exclusion of articles from sion of his (g) Referral to President such determination and the action taken un- der (f) entry, (f) such (2), eral poses effective directly competitive articles in the United respect in such States, Secretary States Secretary subsection violation of orders (1) If the (B) (A) publish such determination in the Fed- (2) If, (3) Subject of this section with Cease subsection such determination Register, respect Register, entry. The exclusion transmit of subsection such and and United economy, thereto shall be effective as before subsections, except competitive upon publication and desist of subsection of the on the shall, disapproval, (d), (e), for upon receipt entry. thereto, copy notice, Commission determines and the action taken under (d), (e), directing such exclusion from to the President a policy upon through Treasury Commission day of such States close of the provisions conditions in the United orders; together such determination and (c) after the (f) production reasons, or then, shall, respect of this (e) of of this section, consumers, thereof in the Fed- of its action public (f) determination, such civil that articles of this effective on the with the proper of this except shall day 60-day period entry during thereto shall section, disapproves penalty section, health and or notice, of like or (d), paragraph notify on which provided that, copy section, section, officers it finds record (e), under pur- for for di- or 2. 4. See n. 3. See n. filed Customs virtue of the changes ent March tion. leged, 25, application 19 U.S.C. tion such determination shall paragraph which led to such exclusion or order under this section shall This court was substituted for the Court bond determined the close day which the President notifies the Com- mission of his retary (g) order no such rected to effect (h) Period of effectiveness nation such determination od, scribed cease and desist case of exclusion section 1982, issued Except (4) August of this day or if he notifies the Commission on ’762 but was later section shall be entitled (1982). A fourth If determination, until the [*] 1, supra. 1, supra. becomes final. Pub.L. No. of and Patent (d) after the close of such the President does not February longer exist. patent § filed be excluded from of such section, (3) Federal the above. of this section or [*] provided in subsections on 1973. The ’926 and subsection Treasury, March patent (No. approval, Secretary order under subsection issued from (Supp. 97-164, [*] withdrawn on S-W’s mo- any period Courts within such Appeals in application 27, then, entry July exclusion Commission as [*] 1967. The ’335 V until 4*148,073) that he § Improvement on an the case entry under sub- for finds, 20, notifies 1981) become final on 163(a), 96 Stat. the conditions (c) from [*] such determi- period or the filed subject purposes of 1971, 60-day peri- § entry continue in of this sec- application from disapprove 337(c) by made no approves entry and the Sec- April was al- [*] (f) issued before on under entry (f) to a pat- pre- and Act be. an or of (E.D.Mich.1981).5 That deci- and that interest factors public S-W sion is currently appeal on to the Sixth statutorily required for a determination of Circuit. remedy 337(d) preclude under issuance August while the exclusion On of the order. President, order was before the the Com- argues S-W the original June mission was made aware of the district 1981 order is the final only appealable order court decision and modified its exclusion and asks that we affirm the conclusions of suspend portion order to “that of the order validity, infringement, and enforceability referring to the ’926 ’335 patents, pend- all three patents and all other conclusions ing resolution of the [question of their] supporting that order. validity ... on appeal.” Fed.Reg. 42217 position endorses the The Government as modified is the order only SSIH The General Counsel United States reviewable, opposes but on all other SSIH Representative Trade notified the Commis- respect issues with to the correctness on of the President’s August sion patent. order based on the ’762 exclusion modified, decision the exclusion order as both maintain and the Government stating that: ’335 remain in the patents that the ’926 and We have notice that the Presi- received evaluating purpose case for the regard- has decided to take no action dent guilty inequitable whether was con- S-W ing the Commission’sdetermination in In- duct. *5 337-TA-75, Certain, vestigation No. Large Video Matrix Display Systems II Components Thereof. question The initial is what issues are properly urges before us. S-W that the Pres- for provided day period sixty 19, 1981, order of June is the exclusion only deter- of the Commission review idential order sent to the President and that after since not extended mination was 60 days, president since the did not disap did by the Commission made amendment it, prove findings all of the and conclusions of the determination the nature not alter underlying that order became final for pur The exclusion materially. or the order poses appeal view, In by SSIH. S-W’s following the Commission issued order August the order of not did affect fi- therefore becomes investigation, that 19, order; finality of the June 1981 19, 1981. August automatically on nal rather merely stayed the later order appeal filed a notice of from both SSIH date operative. when first will become 19,1981, the order of June and the order of SSIH the Government argue that the 10, asserts, however, August 1981.6 SSIH August 10, 1981 order in part nullified the that the order as modified is reviewa- 19, order of 1981, June and only the find- ble, limit- appeal and that the issues on are ings and conclusions which support findings ed to the related to the modified more limited exclusion order are subject to urges order. SSIH review by this court at erred in the ’762 was this time. We holding patent agree. valid and was infringed by and enforceable It further imported scoreboard. SSIH In reaching our conclusion, we have first to any injury that it has not caused
argues
considered the authority of the Commission
patent
5. The
separate
’762
was not in
appeal
issue in the Ponti-
6. SSIH filed a
from the denial
during
reopen proceedings
ac case. S-W’s counsel conceded
oral
of a motion to
to consider
newly
argument
Equip.
discovered
appeal
evidence. See SSIH
instant
the score-
USITC,
1387,
S.A. v.
673 F.2d
213
529
Sign
board constructed
American
& Indica-
(CCPA 1982) (Petition for writ of mandamus
Co.,
infringe
tor
which was claimed to
denied).
subsequently
amended its no-
patents
claims of the ’926 and ’335
in the Ponti-
appeal
tice of
to include the denial of that
case,
embody
ac
did not
the invention claimed
appeal.
disposi-
motion in this
In view of our
patent.
in the ’762
appeal,
tion of this
the denial of that motion
need not be considered.
370
Blonder-Tongue Laboratories,
Inc. v. Uni-
Presi-
exclusion order before
modify
Foundation,
313,
of Illinois
versity
U.S.
day period pro-
the 60
during
dential action
(1971).
[the
obligation
Commission’s
to be
[T]he
[is]
Commission thus
found that the
necessarily
always
impact
concerned with the
of its
leading
conditions
to a determination to
orders on the United
and
economy
States
exclude imports on the basis of infringe-
consumers as well
its obligation
as
to
ment of claims of the ’926 and ’335 patents
terminate orders.
“no longer exist”.
conclude
we
foregoing,
In view of
in issu-
properly
acted
be
finding
properly
a
could
that the Commission
Such
order,8
10,
the Pontiac case.
holding
August
premised
on
its
may
thought
separate
order
of as
on
orders
1, supra.
n.
7. See
claim, only
termi
each
two of which were not
August
nated on
10. While the Commission’
order
not assert
that an exclusion
8. S-W does
s
part.
posi
August
phrased
Such
was
in terms
could not be terminated
order of
formalistic,
not substan
“suspension”
portion
tion would raise
earlier or
tive, objection. By practice,
der,
partial
the Commission
We are
was
termination.
its effect
covering
anything
several
inde
exclusion orders
because
issues
it
less
not bound to consider
goods rather
pendent
for exclusion of
bases
Rohm & Haas Co.
used. Cf.
of the words
693,
463,
USITC,
462,
separate
orders for each.
exclusion
than
USPQ
granting
multiple
approach
1977) (Commission
mo
(CCPA
here in that
order
based
was taken
prejudice
any
held
goods infringing
were
dismiss without
one of the claims
tion to
Thus,
effect,
prejudice).
practical
excluded.
the June 19
1980,
view,
1,
vember
under SSIH’s
appealable
limited
determi-
such action
this
amendment does not affect
case.
337(d)
validity
nation under
§
actions,
Civil
as that
on claims 10
term is
solely
exclusion order
com
based
monly understood, refers to proceedings
SSIH,
patent.
12 of the ’762
whose
court.
It
been held,
has
for example, that
goods
specifically
were
held
be barred
“a civil action is an adversary proceeding
order,
clearly adversely
affected
law;
before a court of
judicial review of a
challenge
findings
and conclusions
decision of an administrative agency is a
on
it
which was based.
action;
civil
a proceeding before the Com
mission is not a civil action.” Unnamed
Ill
Physician v. Commission on Medical Disci
addressing
Before
the merits
pline,
1,
Md.
400 A.2d
appeal, it is necessary to clarify
stan
We believe “civil action” is intended to be
dard of review.
so construed here and does not embrace the
proceedings before the
Commission,
Commission. The
relying on
337(c), as
§
burden of proof borne by
during
SSIH
amended
by the Customs Courts Act of
investigation was not affected by the Cus
1980, Pub.L.
96-417,
No.
94 Stat.
§
toms Courts Act. We cannot accept that a
1727, 1744 (1980) (hereafter
“Customs
party
put
would not
forward its best case in
Act”),
Courts
and General Motors Corp. v.
anticipation of an easier road to reversal in
USITC,
F.2d
(CCPA
the event
it lost. Nor does SSIH assert
1982), cert. denied,-U.S.-,
103 S.Ct.
right
had a
particular
that a
review
729, 74
(1983),
L.Ed.2d 953
contends that all
standard be maintained. The question is
of the Commission’s factual
findings are
merely one of statutory interpretation and
reviewable under the “substantial evidence
Congress.
intent of
From the language
standard.”
argues
for review under
of the amendment we conclude that we are
the less stringent “clearly erroneous” stan
directed to apply the same
standard
re
dard which was previously applicable
ap
view to all appeals from Commission deter
pellate review of Commission decisions.9
minations after a certain
Congress
date.
337(c),
amended,
Section
applies
has chosen that date and we are
swayed
“civil actions commenced
after [No-
from the conclusion
all appeals
filed
vember
1980]”,
96-417,
Pub.L. No.
after
November
are thus governed
701(b)(2),
§
94 Stat.
3209 (1980). by
337(c),
See,
as amended.
e.g.,
General
SSIH asks us
interpret
“civil action” to
USITC,
Motors v.
supra. Accordingly, we
include a
investigation.
Since will apply the substantial evidence test to
investigation
instant
began before No-
factual findings
appeal.10
on this
We are
*7
have, therefore,
“clearly
substituted
erroneous”
litigation
The dissent’s view
the Pontiac
argument.
in its
only
brought
af-
could
be
into the case as an
estoppel by
firmative defense of collateral
SSIH
appreciate
proceedings
to
fails
under
Comm’n, 383
In Consolo v. Federal Maritime
investigations
are in
the nature of
§
only
1026-27,
619-20,
S.Ct.
aspects
partes
limited
of inter
Fur-
cases.
provid-
(1966),
Supreme
Court
L.Ed.2d
ther,
issue of
the Commission had
whether
following exposition of the “substantial
ed
modify
Blonder-Tongue
to
its order under
test:
evidence”
Labs.,
Foundation,
University
Inc. v.
of Illinois
as
have
“substantial
evidence”
We
defined
402 U.S.
91 S.Ct.
displayed. Claims displays issue, to successive are directed IV move- create an illusion stick-figures (animation). ment A. comprised scoreboard matrix is large in the ’762 patent invention disclosed elements, of which rows each contains information and system displaying
is a light An element the let- displaying bulbs. scoreboards. images, especially on stadium “T” appear ter would thus:11 lamps large A number of incandescent until state is maintained ticular on-off the overall dis- relationship to An element’s is, the “addressed,” that can be illustrated play again element thus:_ element that particular unit selects control Once in its on-off change pattern. for a turn off. addressed, element all bulbs presented in the control unit If there is data *8 element, display for another bulbs will appropriate turn on to form prescribed pattern. Each the elements ' in the is unit scoreboard controlled A control determines on-off state above Thus, cheerleader, to simulate a manner. light par- bulbs in each element. A representative displays through drawings. on, appears 11. The shown Where the bulb is it really display. opposite out are of the appears the reverse actual black. true effect is seen when off, display eye. Where the bulb white is viewed the human result example, appropriate sary elements data to in the following (Picture provided be addressed and neces- would A) portion on a of the scoreboard: To achieve the appearance of animated mo- be made change so that the picture next tion, position of the legs and (Picture arms can B) would look like this:
nnnnnn
ODGQDQGO n ODOSOIDQDDQOO QGQGQniBQGGOGQ
n oaaQaiBQaaaaa
aODOOaaOODDGGQ
n OGOGOSISOGDGGO
GGDDGOaDDDDaaa
DaDGDaaaaaDDaa By alternating between Picture A and Pic- example, For the animated cheerleader B, ture the cheerleader appears to move. .. . displayed by programming By increasing the number of pictures the figures each of the ... in individual animation can be made complex. more frames after one the other properly timed sequence.
Because each The indicator address element can be addressed separately, display character system is data for the com- characterized as having plete figure “random first ... accessing” programmed feature in ... its preferred mode operation. by using proper As stated in codes for the individ- the specification with regard characters, to a series of ual indicator spaces where in- pictures like the cheerleader examples blank dicators are and carriage returns *9 above: for sequencing each row. A predeter- The dis- tape. specification tape paper or time for after the interval mined [the and one other storage system to programmed is closes a mass ... data figure
first] tempo- The figure prepa memory. the storage temporary cause the erasure fig storing display capable is storage memory for the rary next] ration [the erased ad may be that associ- figure A time than ure .... at one no more data indicators followed necessary dressing display matrix element of ated with one next .... space for a by the data mass between the acts as a buffer for the second figure programmed ... is display. storage system blanking in frame, again followed system where the In the embodiment figure ... for the third preparation for access” in a “random not function does cartoon. complete automatically mode, will system the control need not display the whole If desired display every element through cycle frame, rather only but for each be erased necessary par- for lights and activate individually ad- indicators the desired it can cycle the next and on display ticular the desired indica- actuating dressing and embodiment, In this display. change the Thus, the arms only tors. if [first data for does not hold memory the mass appropriate indic- figure] are to move au- system The internal purposes. address and the remain- only ators are addressed of what element keeps track tomatically lit stay during will ing indicators type This embodiment is being altered. [Emphasis sequence. added.] picture the entire which turns off display A, Thus, Picture there are two go to from changing only than rather redisplays (not access) is to The first random options. individual elements. and to transmit the display erase the entire B. necessary display to Picture information B. transmit information The second is to necessary elements which are to to those by the of certain statements Because Picture A to Picture B. change from statutory effect of the on the employed, Whichever the above- method 28212) (35 validity U.S.C. presumption § all description makes clear that quoted 12, we will first with claim in connection Picture A is necessary display the data to that claim 12 is contention address SSIH’s pic- contained in a “frame” for the entire the invention argues invalid.13 ture, necessary while whatever data have been obvious therein would claimed A to Picture B is also con- change Picture 10314in meaning within the of 35 U.S.C. § tained in a “frame.” 3,021,387 Rajeh No. view of Patent dispute There is no (Rajehman). refers a “data frame” man a “frame” Such art, nor does Rajchman prior is available as storage system, magnetic in a mass such as respon- provides part: display pertinent means devices and 12. 35 U.S.C. dressed § memory display for data from said sive to the patent presumed A shall be valid.... display actuating devices establishing invalidity patent the addressed burden of of a any party patterns of each frame. thereof shall rest on the form the invalidity. asserting such provides: 14. 35 U.S.C. 12 reads: Claim though A not be obtained system displaying A animated char- for identically de- disclosed or invention is not sequence up of a of visual acterization made display title, in section 102 of this scribed as set forth comprising display board frames subject matter if the differences between having display arranged in devices addressa- prior sought patented art are and the to be locations, memory storing coded ble for subject matter as a whole such that display per- address and data in data frames the time the been obvious at would have taining pattern of said to a desired for each having person ordi- was made to a invention frames, display reading for visual means subject nary in the art to which said skill display coded address and data in said data Patentability pertains. shall not be matter memory sequence, frames from said negatived by inven- manner in which the responsive means to the coded address data tion was made. memory preparing the ad- said
375
In
view that
the time.
Id. 62-63.
the absence
dispute
S-W
the Commission’s
of
Rajchman is
relevant
than the art
convincing
more
clear
evidence of
invalidi-
during the
by
prosecu-
cited
the examiner
ty, doubt
resolved in favor
must be
application.
tion of
patent
the ’762
patentee.
find
We therefore
claim 12 of
patent
’762
valid.
legal
The distinction between
conclusions
respect
and factual
to evalu-
findings
added).
213 USPQ
(emphasis
at 480
ating assertions of obviousness was set
to the Commission’s
Contrary
state
States,
forth in
General Motors
United
ment,
validity
of
was
presumption
not
480,
USPQ
Moreover, respect With to claim 12 which SSIH asks respondents adduced little or no invalid, evidence us to hold is no evidence that claim would there have been obvious to skilled in one the art at record on which to base that conclusion. *11 to correctly refused the ingly, incor- Commission to a scoreboard 12 is directed Claim 12 is invalid. that claim conclude capable feature random access porating the The element. only particular a changing of concen- parties which the
limitation around C. to the mem- pertains arguments trate their the infringement, to respect With m ory: thing patented” is the question of “what storing coded address memory a that law, “has question one while the of to pertaining in frames display data data [made], used thing been constructed each of said visual pattern for a desired is a factual infringer the by alleged sold” [Emphasis display frames .... added.] Denmead, (15 issue, Winans (1853), amended to be patentee How.) the 14 L.Ed. During prosecution, the evidence. to be a of proved by preponderance 12 to that the data specify claim States, 544 F.2d address data to deter- Decca Ltd. v. United stored must be both The USPQ (Ct.C1.1976). is to be display of the part mine what literal- element, that claim 12 was affected, i.e., well as the found as following infringed by pattern ly to be dis- data which controls terms: parts or all to picture for the entire played Moreover, specif- changed. patentee
be The SSIH invention nonetheless stores both address ically urged storage of address data. Its memory constitutes distinguish- data was a basis for display board, map of the display storing data at by origi- over art cited the examiner corresponding locations to the locations at Thus, rejecting claim 12. claim is nally they Thus, which are displayed. there is randomly display directed to a accessible literal infringement patent. of the ’762 both the system memory wherein stores reject We file wrapper estoppel SSIH’s corresponding address data to the location argument because we find literal in- display of the element to be affected in a fringement; infringement under the doc- what must be change and the data for trine of equivalent is not at issue. [sic] made. USPQ at 484. From a review of the ca- Rajchman memory discloses neither record, entire we find this conclusion unsup pable storing part of more than of a total ported by substantial evidence. Not picture any storing nor manner of address has the Commission erroneously ignored Rajchman simply part data. stores a of a prosecution history which is signal memory video whose contents always relevant to a proper interpretation continually to to changed correspond claim, USITC, of a see Astra-Sjuco A.B. v. portion picture displayed. to be USPQ (CCPA operation Rajchman rapid is so 1980); Autogiro ofCo. America v. United picture though entire is viewed even States, 391, 395-99,155 F.2d picture whole is not stored at one time. any 701-04 (Ct.Cl.1967), but also there is no Further, the selection of portion which evidence whatsoever to suggest “coded to picture display is automatic and is address data” is actually stored in the SSIH sequenced correspond to with the normal system. Commission, As intimated camera, scanning operation of a television and as testified all experts, for example. simply Address data is irrele- is, such most, address storage implicit. at vant in this context. claim 12 explicitly Since requires coded ad No prior having art been introduced to dress data storage, a conclusion of literal memory capable storing show both a infringement Hence, must fail. the Com frames, whole anything nor whatsoever mission stating erred in that the doctrine of devices, suggest accessing” “random display equivalents need not be considered. Since it has not been shown that the invention in infringement cannot be found in the ab claim 12 would have been Accord- sence of a finding equivalence, obvious. we re analysis From the of the invention set infringement re forth finding verse the A, IV, equivalence.15 part supra, mand for consideration of it is manifest that the memory required by claim 10 is one D. capable storing frames at one several of claim 10 validity issue and, thus, time to a storage refers mass turns on whether claimed invention system opposed temporary memo- therein16 “was described” the disclosure ry. This appears interpretation *12 3,384,888 in U.S. Patent No. to Harnden et given by the Commission. (Harnden) al. within the 35 meaning of a Harnden discloses travelling message 102(e).17 U.S.C. § sign, but which be one can made to appear reference, be an anticipating To Harnden stationary to be be and can used for anima- must disclose each the every and element of tion. Harnden states: claimed invention. Straussler United States, 443, USPQ F.2d effect as optical by viewed an ob- [T]he (Ct.Cl.1964). Arkley, 443-44 also re See In server presentation is that a sudden 586, USPQ F.2d (GGPA 1972); a complete which message may occupy States, Eastern Corp. Rotorcraft v. United the length entire of the display sign ... (Ct.Cl. by followed presentation another aof 1967). Thus, it required was that the Com complete message which may be identical (1) mission determine what is the scope or changed first a therefrom in claim, i.e., what all are elements predetermined manner. invention; and, (2) claimed what does the reference disclose.18 Only one column of information can be fed into the at question display
The crucial Harnden a time. respecting claim around which the After the for arguments parties data a column is fed into center, is whether following limitation sign, data is “shifted” to the next in found claim 10 temporary refers to the column and new data is fed into the first (one-element) storage within the device animations, column. To display Harnden storage system: the mass requires A that Picture be “shifted” into
a for memory storing display by shifting multibit followed in coded data Picture in data frames pertaining to B. If the patterns shifting rapid enough, for all forming said animated to light characterizations bulbs are forced remain in
the off being state while the data is shifted urges provides, 15. SSIH 102(e) pertinent also that claim 12 is unenforcea- 17. 35 U.S.C. in attorneys ble because S-W’s part: failed cite patent during prose- Harnden to the examiner person patent A shall be entitled to a un- art, cution. As Harnden is more relevant less— infra, discussed this issue should also have by been addressed the Commission. patent the invention was described 16. Claim 10 reads: granted patent application an for an- system displaying A for other animated char- filed the United States before the comprising display applicant acterization up board made invention thereof for devices, plurality display memory of a storing for pertaining multibit coded data in data frames filing dispute S-W does not that Hamden’s patterns forming said ani- date of December is before the mid- characterization, reading mated means for 1975 date asserted S-W as earliest date memory said data frames from said in se- by which the invention claimed was first con- quence including signal electric conductor is, thus, a ceived and that Harnden valid refer- having means a sufficient number of conduc- ence. tors to transmit said multibit coded data but substantially display less than the number Recommended Determinations of the making up board, display devices said Judge (ALJ) Administrative Law and of the receipt signals means in of the data on said adequate. not clear or It is operating display conductor means for said wholly simply insufficient lan- restate the sequenced devices in accordance with said findings. guage of the claims as data frames. we alter cannot what be much like will in, display the resultant claim as his inven has chosen to patentee display. the claimed America v. Autogiro tion. Co. of United memory 42 in discloses a Harnden also USPQ at States, F.2d at information columns of which several cited at n. 5.20 and cases stored. The Commission temporarily is not a “mass memory found memory of a mass disclosure Harnden’s no more than memory,” but rather holds by the Commission. totally ignored was of data for one element equivalent said element memory Since not question While we do display.19 S-W’s disclosure, Harnden to be from the missing we finding, of this do the correctness 10 is that claim the Commission’s conclusion dispositive. it is agree that valid is reversed. (and ALJ) wholly The Commission into that Harnden
failed
take
account
V
system
a mass
which
storage
also describes
*13
or
the
that one more of
asserts
SSIH
alia,
utilizes,
or
magnetic tape
paper
inter
originally
by
asserted
S-W
patents
other
tape:
con
through inequitable
“procured
were
supplied
is
on a
input
The
information
activity
taints
duct”
that such
also
and
recording medium and
in-
may
suitable
wholly
unen
patent
the ’762
and renders
types
tapes
clude
includ-
various
coded
forceable,
v.
citing
Driller Co.
Keystone
ing printed,
punched,
or magnetic
Co., 290
245-
Excavator
U.S.
General
cards,
punched
printed
magnetic
core
146,147-48,
(1933).
rate on
[90
J.,
(1970) (Harlan,
concur-
and re-
L.Ed.2d
evidence in administrative
368]
allocate
tribunals,
It suf-
serves to
respectively.30
ring).
standard
viewing
litigants
recall
purposes simply to
the risk of error between
present
fices for
preponderance
importance
American law a
and to indicate the relative
that in
fact-
the evidence is rock bottom at the
ultimate decisions.
attached to the
finding
litigation.31
level of civil
No-
evolution of
Generally speaking,
jurisprudence
where in our
have we dis-
across a
produced
this area of the law has
acceptance
proof
cerned
of a standard of
or levels of
continuum three standards
tolerating
“something less
than the
At
types
different
of cases.
proof for
weight of the evidence.”
spectrum
typical
one end of the
is
monetary dispute
involving
civil case
Davis,
generally
See
4 K.
Administrative
Law
29.01-29.11
society
§§
private parties.
between
Since
31See, e.g., the numerous cases collected in
the outcome
has a minimal concern with
Evidence,
Wigmore,
9 J.
2498 at 325-326 n.
§
suits,
burden of
private
plaintiff’s
of such
(3d
1940), Supp.1975
at
n.
ed.
118-119
preponderance
is a mere
proof
expressed
Sometimes the standard
in some-
varying phraseology,
meaning
what
but
thus share the
litigants
evidence. The
substantially equivalent.
remains
Id.
roughly equal
error in
fashion.
risk of
at 325-327.
hand,
case, on the other
In a criminal
(footnotes
Id. at 906-07
24-29
32 omit-
of the defendant are of such
interests
ted).
historically
and without
magnitude'
INS,
Woodby
In
385 U.S.
87 S.Ct.
requirement
constitutional
any explicit
(1966),
The function
quasi-
of a standard of
fraud or some other
proof,
allegations
that concept is embodied in the
wrongdoing by
Due Proc-
criminal
the defendant.
ess Clause and in
the realm of factfind-
The interests at stake in those cases
ing, is to “instruct the factfinder concern-
to be more substantial than mere
deemed
ing the degree
jurisdictions
of confidence
some
ac-
society
money
our
loss of
thinks he should have in the
reduce the risk to the defend-
cordingly
correctness
of factual
particular
conclusions for a
ant
tarnished
having
reputation
his
type
adjudication.”
In re Winship,
erroneously by increasing
plaintiff’s
weight
Court
proof. Similarly,
burden of
as a trial
The court
court.
however,
“clear,
not,
ignore
required
and con-
the deci-
unequivocal
has used the
sion below.
Nulf
See
v. International Pa-
proof
par-
vincing”
protect
standard
Co.,
(10th
per
Cir.1981),
F.2d
in
ticularly important individual interests
and cases cited. United
v. First City
States
See,
v.
e.g., Woodby
various civil cases.
Bank,
361, 368-69,
National
386 U.S.
INS,
(de-
at
supra, at
S.Ct.
[87
487]
1088, 1093-94,
(S.D.
S.Ct.
Appellate Court But judgment, sive. it is the court’s Comptroller’s, finally determines appellate standards review fac- *16 the merger legal. whether is determinations, tual in to contrast the quantum required level, of proof at the trial erroneous,” respect With to the “clearly are usually statutorily imposed. stan- next level in the this hierarchy, standard is dards most commonly specified in are “de defined United v. United States States novo,” erroneous,” “clearly Co., 395, “supported by Gypsum 364, 525, 333 68 U.S. S.Ct. 542, substantial evidence” and or ca- 92 746 “arbitrary (1948): L.Ed. pricious,” I which translate roughly into finding A is “clearly erroneous” when questions of increasingly narrow is focus: a although it, there support is evidence to
finding of right; fact is it wrong; it is reviewing the the court on entire evi- unreasonable; it is irrational? is left dence with the definite firm ” conviction that a has been mistake com- A “de novo provides standard the wid- mitted. est latitude for review of facts. The court ” in “de novo review must exercise its inde- The standard commonly associated pendent judgment on the evidence of record with an court appellate agency review 382 (footnote omit- Id. at S.Ct. at “supported by substantial determinations
.
rejected
ted).
unequivocally
The Court
because
(perhaps
This standard
evidence.”
interpretation:
the least
name)
to be
appears
inept
of its
must
substantiality
ev-
of evidence
take
To
a “substantial
begin,
comprehended.
record fairly
account whatever in the
into
appellate
standard restricts
idence”
its
This is
weight.
clearly
detracts from
erro-
degree
“clearly
than
greater
to a
court
requirement
the
significance
Court,
The Supreme
review.
neous”
consider the
both statutes
that courts
NLRB,
v.
340 U.S.
Corp.
Camera
Universal
and the
reports
whole record. Committee
456,95
(1951),
under-
L.Ed.
S.Ct.
in the
Procedure
adoption
Administrative
and various
development
took to set out
Attorney
views of the
minority
Act of
to
given
which had been
interpretations
Committee demonstrate that to
General’s
re-
a standard of
“substantial evidence” as
duty
reviewing
a
court
enjoin such
on the
view.
purposes
one of the
important
was
defined
previously
its
Beginning
which
in that en-
movement
eventuated
standard:
actment.
than a
evidence is more
“[substantial
sure,
requirement
can-
To be
It
relevant
mere scintilla.
means such
“the
record” in order to
vassing
whole
might
a
mind
ac-
evidence as
reasonable
not furnish a
substantiality
ascertain
does
adequate
to
a conclusion.”
cept
support
which
reviewing
calculus of value
Board,
Edison Co. v. Labor
Consolidated
was
assess
evidence. Nor
it
court can
S.Ct.
U.S.
[59
negative
the function
intended
it “must do
Accordingly,
L.Ed. 126].
agencies
Board as
of those
Labor
one
create a
of the exist-
suspicion
more than
or informed
ex-
presumably equipped
fact to
....
it
ence of the
be established
field
specialized
to deal with a
perience
trial
enough
justify,
must be
if the
within that
knowledge,
findings
whose
a
a
jury,
were to a
refusal
to direct
expertness
of an
carry
authority
field
sought
verdict when
conclusion
to be
which courts do
and therefore
possess
not
jury.”
drawn from it is one of fact for the
it mean
respect.
must
Nor does
Enameling
&
Labor Board
Columbian
exper-
requiring
even as to matters not
Co.,
Stamping
S.Ct.
court
the Board’s
may displace
tise a
501, 505,
Nonetheless, manner, agree belying I the same majority stantially with the the same in- literally infringed, they claim 12 is not conclusion that describe system meaning does not store vention within the of 35 U.S.C. address data in the form required by 102(e). the claim— § States, Corp. (Fed.Cir.1982). 2. South United
385
however,
is,
approach
sup-
prior
patents
The court’s
on
art
and a report disclos-
a
ported by
body
precedent.
substantial
navigation
system
known as LF
majority
go
A
of courts have declined to
developed
Loran which was
subsequent
* * *
beyond
language
of the claim to the
system.
the Loran-A
claim
specification
order to save the
from
1, 2,
We must note
initially
claims
invalidity.3
court
follows that
today
broad,
patent
by
and 3 of
’980
are so
recognition
“majority” approach without
themselves,
encompass
as to
any device
binding precedents
several
Court of
they
accomplishing
general operation
Claims,
precedents
compel
which
appear
fact,
In
read
describe.
claims would
a different result.
an apparatus
on
of an
precisely
consisting
The Court of Claims has
em-
generally
Loran,
LF
with its
sta-
master and slave
braced the
“minority” approach
claim
tions,
transmitting pulse-modulated sig-
interpretation.
That court has read the
nals, coupled
pat-
to the British O’Brien
in conjunction
specification
with the
ent,
employing
phase discriminator-
to preserve
in order
of a claim.4
validity
phase regulator.
clearly
Since these are
“minority” approach
at
garners
Such
least
“old”,
plaintiff
insists it
produced
has
degree
some
of support
Supreme
novel, it is evident
more
something
that a
precedent
Court
on the construction of an
description is necessary
detailed
to enable
ambiguous claim.5 The
articulation
distinguish
a reader to
oth-
’980 from
Claims,
“minority”
rule
Court
er
which might
devices
be covered
however, goes beyond the
where
situation
they
broadly
the ’980 claims if
are read
ambiguous.
the claim is
literally.
[Emphasis
original.]
States,
Decca Ltd.
In
v. United
the Court
prevent
pat-
To
such
invalidity
Claims, affirming
per curiam recom-
ent for overbreadth and clear anticipation
mended decision
then Commissioner
(35
(1964);
112
Hailes
Van
U.S.C.
v.
§
(later
Lane
a judge of the
Court Customs
353, 372,
Wormer, 20 Wall.
22
241
L.Ed.
Appeals),
and Patent
clearly articulated its
(1873); see also Graver Tank
Co.
Mfg.
&
approach in
relying
specification
Co.,
271,
v. Linde Air Products
336 U.S.
additional
supply
found in
limitations not
535, 538-39,
276-277
S.Ct.
93 L.Ed.
the claims:6
[69
451,
USPQ
(1949);
672
Special
1, 2,
[80
453]
Defendant contends that claims
Coe,
Equipment
370,
Co. v.
324
385—
3 of the
U.S.
’980
are invalid under
741, 748,
Title 35
386
U.S.C.
102 or
In
S.Ct.
89 L.Ed.
sup-
103.
§
[65
1006] [64
port
contentions,
525,
of its
USPQ
(1945) (dissent);
defendant
relies
General
532]
See, e.g., Jamesbury
Corp.
316,
3.
v. Litton Indus.
(Ct.C1.1970),
cert.
423
165
F.2d
88
USPQ
Prods., Inc.,
917,
denied,
(2d
951,
242,
586 F.2d
199
641
U.S.
400
91 S.Ct.
27 L.Ed.2d
USPQ
denied,
Cir.1978),
961,
cert.
258,
440
U.S.
99 S.Ct
See also Dominion
167
705
USPQ
1503,
774,
(1979);
59 L.Ed.2d
201
Magnesium
States,
960
Ltd. v. United
USPQ
162 Ct.Cl.
Indus.,
Philips
Co.,
Mfg.
Inc. v. State
&
Stove
240,
388, 394,
306,
320 F.2d
138
310
USPQ
1137,
(6th Cir.1975);
F.2d
522
186
458
States,
Corp.
USPQ
(Ct.C1.1963);
Leesona
v. United
Mfg.
Assocs.,
Wilcox
Co. v. Eastern Gas Fuel&
aff'd,
156,
(Ct.Cl.1975),
185
164
208
USPQ
960,
(4th Cir.1968),
400 F.2d
158
510
USPQ
871,
896,
(Ct.Cl.
530 F.2d
Ct.Cl.
192
672
USPQ
denied,
1051,
691,
cert.
393 U.S.
S.Ct.
21
89
States,
1976).
see
But
Chesterfield v. United
693,
(1969); Beatty
Saf
L.Ed.2d
160
832
USPQ
838,
371,
F.Supp.
141
159
445
Ct.Cl.
116 USPQ
way
Inc.,
Up-Right,
Scaffold Co. v.
306 F.2d
(Ct.Cl.1958).
626,
(9th Cir.1962).
134
379
USPQ
Adams,
39, 49,
5. United
States
383 U.S.
86
Dairy
States,
4. Roberts
Co. v. United
182 USPQ
479,
572,
15 L.Ed.2d
S.Ct.
148 USPQ
(Ct.C1.1974), aff’d,
218,
830,
223-24
208 Ct.Cl.
(“it
(1966)
482
is fundamental
claims
.
1342,
(Ct.C1.1976);
530 F.2d
198
383
USPQ
light
specification
to be
construed
States,
454,
Decca Ltd. v. United
420
Ct.Cl.
to be
as-
and both are
read with a view to
348,
(Ct.Cl.
F.2d
USPQ
invention”).
certaining the
denied,
1970),
102,
cert.
400 U.S.
91 S.Ct.
(1970);
Palmer
27 L.Ed.2d
USPQ
States,
v. United
States,
6. Decca Ltd.
420 F.2d at
v. United
191 Ct.Cl.
320-21,
aff’d,
at
(Ct.C1.1969),
USPQ
18 L.Ed.2d
Appliance Corp.,
Wabash
Electric Co. v.
1000]
[87
*20
USPQ
(1967).
899,
364,
901-
368-372
S.Ct.
888]
304 U.S.
[153
[58
USPQ
903,
466,468-70]
the court referred to the the inven- adequate description of provides provide additional limitations to the claim the reference safely tion to conclude thus, preserve validity: and its operate substantially and the invention in a thus reflect different different manner and
In
Picture Patents
Motion
Co. v. Uni
inventions.
502, 510,
Co.,
Film
243
37
Mfg.
versal
(1917),
S.Ct.
L.Ed.
extremely
an
specification
The
discloses
Supreme
scope
Court stated that “The
system
display
control
for a data
flexible
every patent
is limited to the invention
Data is stored in “frames” corre-
device.
it,
described in the claims contained in
sponding
display
to the visual
frames.
read in the light
specification.”
of the
accessing
system
capable
randomly
is
recently,
More
reiter
Supreme
although
Court
memory
display,
both the
and the
position
ated that
v.
specification
United States
neither claim 10 nor the
Adams,
of either
operation
383 U.S.
limited to that mode of
[86
flexibility
of the
USPQ
display
memory.
L.Ed.2d
572] [148
482]
(1966),
processed
control
enables data to be
system
when it
“it
stated:
is fundamental
in the se-
memory
display
into the
that claims
are to be construed in the
contrast, the
In
quence
displayed.
light
specifications
of the
both
display
sequencing
processing
of data
be read with a view
ascertaining
flexible.
disclosed
Harnden is far less
also,
invention.”
Tate Engineering,
See
States,
Inc. v. United
Ct.Cl.
[193
1088]
circuits consist
logic
Harnden’s
transfer
USPQ
F.2d
1340 [178
365]
regis
exclusively
serially
connected shift
Thus,
patentee
specifi
is bound
his
physically incapable
ters. This structure is
cation in interpreting
his
claims
is the
flexibility
of data transfer that
even when
specification
his
requires a
key feature of the invention embodied
narrower
interpretation
of the claims
can
patent.
register logic
the ’762
The shift
than
patentee
desires. Texsteam
from one
only sequentially
transfer data
Corp.
Blanchard,
register.
F.2d
the next consecutive
register
USPQ
(5th Cir.1965),
denied,
does, however,
anima-
cert.
387 Harnden
disclose an
Dairy
States,
7. Roberts
Co. v. United
USPQ
223-24, affd,
at
tion technique sage being obtained on the sign, decoder- set, flushing through data that data encoder 41 speed instructs switch 50 in registers, presentation next data clock circuit 25 to switch to the stop processes set. Harnden the data as follows: position, thereby stopping the movement message sign The traveling herein- display characters on the sign, and above described also be utilized as a lamp intensity control 26 is simultaneous- is, changing sign, sign wherein the ly controlled to obtain the desired bril- characters do not move thereacross but liance of lamp intensity sign. on the are fixed in and can position changed. Thus, the optical effect viewed *21 Examples of type the latter of sign are * * * observer is that of sudden presentation and various scoreboards associated of a complete message which may occupy with sporting events such as baseball and the entire length of display sign, then horse racing. message is encoded on the tape goes through proc- same short time interval no message, fol- ess information circuit and is thence lowed presentation another of a com- however, transferred to the display sign, plete message which be identical to lamp intensity control is controlled the first or changed therefrom in a prede- . in synchronism transfer of the termined [Emphasis manner. supplied.] message from information circuit 24 to illustrate, To a display assume of five the remote display sign such that all of registers and data flow from left right the lamps sign on the are maintained in a through registers, dark consecutive as shown during condition interval of mes- sage transfer. Upon complete figure 1. mes- *22 bear the burden logic patentee invalidity data of the invention processing
The hand, is ’762 on the not overbreadth of a claim. patent, resulting of the other the in- The control system so limited. a significant body There is of precedent, “T” fol- produce can display vention however, which accommodates the more by chang- immediately by lowed “I” either “minority” in- subjective approach to claim array deleting only the entire by and the terpretation former Court operation arms of the The horizontal “T.” of those Claims is one courts that artic- has or without performed can either with subjective more ulated approach. randomly accessing memory as well as silently Rather than allow issue to slip display. necessary process It is not law, into the backwaters I write through additional a se- unneeded data issue of ventilate the claim interpretation of registers, ries as does The Harnden. precedents. these does raised court mode specification clearly establishes the not this issue today. Despite address of the that mode operation invention in a problems subjective inherent approach, mode of significantly different from the the claim provided given a consistent in view operation Harnden. Construed any case, fair interpretation particular specification, anticipa- claim 10 is and consistent result can be achieved. 102(e). Harnden ted under 35 U.S.C. subjective be more analysis than under order to validity In establish the of claim the and bounds” how- approach; “metes 10, it has been the literal necessary to limit ever, precedents grow this court of the claim language by reference number, uniformity and predictability Thus, specification. unfair to would be sought the Federal Improvement Courts grant Stewart-Warner the full breadth of may yet Act of 1982 obtain because of broad language pur- jurisdiction court’s exclusive over *23 poses infringement. I would hold claim appeals. The “metes and bounds” rule 10 valid and remand the case the Com- greater ensure even uniformity predict- mission for reconsideration of the issue of court’s ability. reject, failure to infringement specific direction to con- with, even to grapple “minority” rule sider the effect of the reverse doctrine of however, case, this leaves two rules sets of equivalents finding Commission’s interpretation governing body infringement. precedent Federal Circuit —a situ- damaging
ation far more predictability III. than more application the consistent subjective rule. dissent I because principles of claim interpretation set out in and Roberts Decca Dairy would produce a different result KASHIWA, Judge, joins Circuit in Parts reached the majority. There dissent, I and II.A of but not in Parts persuasive policy arguments for limit- II.B and III. definition of the invention
language of the claims considering when
the issue of validity. approach has Such an
considerable logical power. reduces the It
subjectivity of validity resulting in analysis,
increased consistency predictability.
Admittedly, of validity, determination opposed infringement, not vary should on the equities
based of any particular case.
Yet, that may be the result equity where to step
allowed into specification
supply additional limitations to the claims.
The better rule may well be to force the