King Instruments Corp. v. Perego, s. 91-1125

Page 941

65 F.3d 941

36 U.S.P.Q.2d 1129

KING INSTRUMENTS CORPORATION, Plaintiff-Appellant, v. Luciano PEREGO and Tapematic, Defendant/Cross-Appellants.

Nos. 91-1125, 91-1132.

United States Court of Appeals Federal Circuit.

Sept. 19, 1995.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Dec. 5, 1995.

David J. Brezner, Richard F. Trecartin and Richard P. Doyle, Jr., Flehr, Hohbach, Test, Albritton & Herbert, of San Francisco, CA, were on the brief for plaintiff-appellant. Also on the brief was Nicholas A. Pandiscio, Schiller, Pandiscio & Kusmer, of Cambridge, MA, of counsel.

Edgar H. Haug, Adam L. Brookman and Mary Ann G. Mullen, Curtis, Morris & Safford, P.C., of New York City, were on the brief for defendant/cross-appellants.

Before NIES, NEWMAN, and RADER, Circuit Judges.

Opinion of the court filed by Circuit Judge RADER. Dissenting-in-part opinion filed by Circuit Judge NIES.

RADER, Circuit Judge.

King Instrument Corporation (King) sued Luciano Perego and Tapematic SrL (Tapematic) for infringement of U.S. Patents Nos. 3,637,153 (the '153 patent), 3,825,461 (the '461 patent), and 3,997,123 (the '123 patent). The United States District Court for the District of Massachusetts awarded King damages for Tapematic's infringement of the '461 patent. King Instrument Corp. v. Perego, 737 F.Supp. 1227, 1242, 16 USPQ2d 1994, 2007 (D.Mass.1990) (King ). The district court found that Tapematic did not infringe the '153 patent or the '123 patent. Id. at 1242-43. Finding no clear error in the district court's infringement analysis, and no abuse of discretion in the district court's assessment of the amount of damages, this court affirms. ¹

BACKGROUND

King's three patents relate to loading magnetic audio or video tape into closed cassettes. A fully loaded cassette contains two types of tape: the magnetic audio or video tape and a non-magnetic leader tape. The magnetic tape--also called "use" tape--functions to permit customers to record or play back recordings. The non-magnetic leader tape--a short length of plastic, often clear, tape--leads both ends of the magnetic tape. One end of the leader tape attaches to the winding hub of the cassette; the other end attaches to the magnetic tape.

The manufacturer produces closed tape cassettes without any magnetic tape. Each closed cassette contains only a leader tape connected to its two winding hubs. The manufacturer adds magnetic tape later by splicing magnetic tape into the middle of the leader tape and winding it into the cassette. King and Tapematic market competing machines that automatically splice and wind magnetic tape into otherwise completed video cassettes.

The '153 Patent

The '153 patent discloses a partially automated machine for loading magnetic tape into a cassette. The '153 patent claims a mechanical splicing block whose arms swing to bring the magnetic tape into contact with the leader tape.

The invention of the '153 patent manually extracts the leader tape from the cassette and places it over a splicing head. A vacuum holds the leader tape in place while a knife cuts it into two sections. At this point, the moveable track swings out of alignment with the stationary track. A second moveable track holding the magnetic tape then swings into alignment with the leader tape. The invention applies a splice between the leader tape and the magnetic tape which are held in place by a vacuum. The vacuum then releases the tape and the machine turns the hub to load magnetic tape into the cassette. When the cassette is full, the vacuum again grabs and a knife cuts the magnetic tape. The swinging arm brings the end of the magnetic tape back in contact with the other end of the leader tape and applies a splice. The hubs tighten the tape in the cassette to complete the loading.

The '123 Patent

The '123 patent claims a winding machine which more fully automates the invention disclosed in the '153 patent. Instead of loading cassettes one at a time, the invention of the '123 patent enables an operator to load a stack of cassettes (e.g., 20 to 30) into a cassette magazine. The magazine advances each cassette in sequential order for loading by the '153 patent device. The '123 patent also claims a mechanism for automatically extracting the leader tape from the cassette and positioning it on the splicing blocks. The '123 patent's invention thus automates the '153 patent's manual extraction and positioning functions.

The '461 Patent

The '461 patent claims a splicing assembly for connecting the magnetic and leader tapes. The splicing assembly includes three splicing blocks. Two of the three blocks shift to align the magnetic tape with the leader tape; the third is a stationary splicing block.

The District Court

The district court found that Tapematic infringed the '461 patent and awarded King damages. King, 737 F.Supp. at 1242. The district court did not find willful infringement. Id. at 1241. The district court also upheld the validity of the '153 patent, id. at 1230, but found that Tapematic did not infringe, literally or under the doctrine of equivalents, either the '153 or the '123 patent. Id. at 1234, 1239, 1241.

King appeals the district court's findings of noninfringement of the '153 and '123 patents and seeks enhanced damages for willful infringement of the '153 patent. Tapematic cross-appeals the trial court's infringement finding on the '461 patent and challenges the damages award. Tapematic does not appeal the trial court's validity findings on the '153 patent.

Appellate History

This panel heard oral argument on the cross-appeals on August 5, 1991. More than two years later, on January 13, 1994, the court decided sua sponte to consider this appeal en banc. The court then deferred action on this appeal pending en banc resolution of Rite-Hite Corp. v. Kelley Co., an appeal brought in 1992 involving damages issues overlapping with those raised by Tapematic. On June 15, 1995, the court issued its opinion in Rite-Hite resolving the damages issues. Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 35 USPQ2d 1065 (Fed.Cir.1995) (en banc ). On July 10, 1995, the court returned the present appeal to this panel for disposition in accordance with Rite-Hite.

DISCUSSION

This court reviews the district court's findings of fact under Fed.R.Civ.P. 52(a):

Findings of fact, whether based on oral or documentary evidence, shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses.

See Heisig v. United States, 719 F.2d 1153, 1158 (Fed.Cir.1983). Legal conclusions of the district court stand unless incorrect as a matter of law. Id.

This court does not review de novo proceedings of the district court. Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 904, 229 USPQ 664, 666 (Fed.Cir.), cert. denied, 479 U.S. 931, 107 S.Ct. 402, 93 L.Ed.2d 355 (1986). The party seeking reversal of a district court decision bears the burden of showing reversible legal error or clear factual errors in light of the trial record. Carl Schenck, A.G. v. Nortron Corp., 713 F.2d 782, 785, 218 USPQ 698, 700 (Fed.Cir.1983). Where the record viewed in its entirety renders the district court's account of the evidence plausible or discloses two permissible readings of the evidence, the fact-finder has committed no clear error. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375, 231 USPQ 81, 87 (Fed.Cir.1986), cert. denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987).

I. Infringement

The district court assessed infringement using the standard tests. See King, 737 F.Supp. at 1231 (citing Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293, 295-96 (Fed.Cir.1985); Martin v. Barber, 755 F.2d 1564, 1567, 225 USPQ 233, 234 (Fed.Cir.1985)). All three King patents contain "means-plus-function" language. King, 737 F.Supp. at 1231. This court construes means-plus-function claim language "to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. Sec. 112 (1988); Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d 1451, 1454 (Fed.Cir.1993); Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386 (Fed.Cir.1989). Thus, for a means-plus-function limitation to read on an accused device, the accused device must employ means identical or equivalent to the structures, material, or acts described in the patent specification. The accused device must also perform the identical function as specified in the claims. Valmont, 983 F.2d at 1042.

A. The '153 Patent

The district court held that Tapematic did not infringe the '153 patent. King, 737 F.Supp. at 1242-43. The district court found that the accused device aligns and splices tape differently than the claimed structure. Id. at 1233. Tapematic's accused machines used a horizontal shift block assembly to align and splice. The trial court found that this shift block device did not literally infringe the '153 patent's swing arm claims. Id. at 1234. Moreover the accused device operates in such a different "way" that the district court found no infringement under the doctrine of equivalents. Id. at 1239.

Specifically, the district court noted several differences between the '153 claims and the accused device. For instance, the '153 patent claims a swing arm assembly which pivots in a single plane; the accused Tapematic device's shift block assembly slides in two planes. The '153 patent discloses three separate splicing blocks, one fixed and two pivoting; the accused device uses only two splicing blocks, one fixed and the other sliding. Finally, the trial court cited testimony by E. Blanco (Tapematic's expert), W. Isom (King's expert), and J. King (inventor of the '153 patent), who all agreed that the accused product worked differently than the claimed device. Id. at 1234. In performing its infringement analysis, the trial court...