Bennett Marine, Inc. v. Lenco Marine, Inc. , 549 F. App'x 947 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BENNETT MARINE, INC.,
Plaintiff-Cross-Appellant,
v.
LENCO MARINE, INC., AND
RICHARD DEVITO, JR.,
Defendants-Appellants,
AND
RINKER BOAT COMPANY, AND KIM SLOCUM,
Defendants.
______________________
2012-1336, -1354
______________________
Appeals from the United States District Court for the
Southern District of Florida in No. 04-CV-60326, Judge
Kenneth A. Marra.
____________________________
Decided: September 19, 2013
____________________________
JAMES A. GALE, Feldman Gale, P.A., of Miami, Flori-
da, argued for plaintiff-cross appellant. With him on the
brief was CHRISTINA DEANGELIS.
2 BENNETT MARINE, INC. v. LENCO MARINE, INC.
KARL T. ONDERSMA, Gardner, Linn, Burkhart & Flory,
LLP, of Grand Rapids, Michigan, argued for defendants-
appellants. With him on the brief was TERENCE J. LINN.
Of counsel on the brief were ERIC C. CHRISTU and DANET
RODRIGUEZ FIGG, Shutts & Bowen, LLP, of West Palm
Beach, Florida; and BARRY L. HALEY, Malin, Haley Di-
Maggio, Bowen & Lhota P.A., of Ft. Lauderdale, Florida.
______________________
Before LOURIE, SCHALL, and PROST, Circuit Judges.
SCHALL, Circuit Judge.
Defendants-Appellants Lenco Marine, Inc. and its
president Richard DeVito, Jr. (collectively “Lenco”) appeal
from a final judgment of the United States District Court
for the Southern District of Florida holding (1) that vari-
ous products sold by Lenco infringed a patent owned by
Plaintiff-Cross Appellant Bennett Marine, Inc. (“Ben-
nett”); (2) that Lenco induced infringement of, and willful-
ly infringed, Bennett’s patent; (3) that the asserted claims
are not invalid based on prior art; and (4) that Lenco
breached a settlement agreement. See Bennett Marine,
Inc. v. Lenco Marine, Inc., No. 04-CV-60326 (S.D. Fla.
Sept. 29, 2011) (“Final Decision”). Based on its patent
infringement ruling, the district court awarded damages.
Bennett Marine, Inc. v. Lenco Marine, Inc., No. 04-CV-
60326 (S.D. Fla. Mar. 2, 2012) (“Final Judgment”).
For the reasons set forth below, we (1) reverse the
judgments of infringement, induced infringement, and
willful infringement; (2) affirm the judgment of no inva-
lidity; (3) reverse the judgment of breach of contract; and
(4) vacate the award of damages.
BENNETT MARINE, INC. v. LENCO MARINE, INC. 3
BACKGROUND
I. Bennett and the ’780 Patent
Bennett designs, manufactures, and sells trim tab
systems for use on powerboats. Trim tabs are large plates
connected to actuators at the stern of a boat that, when
extended into the water, adjust the orientation of the boat
for more efficient cruising. Bennett owns the patent at
issue, U.S. Patent No. 5,113,780 (the “’780 patent”), which
discloses a trim tab control system that automatically
returns the trim tabs to a fully retracted position (i.e., out
of the water) upon removal of power to the boat engine.
By automatically retracting the trim tabs, the system
leaves the tabs in a known position for the boat’s next use
and decreases the risk of damage to various system
components. ’780 patent col. 1 ll. 27–36.
Figure 1 from the ’780 patent, reproduced below,
shows an embodiment of the invention with a pair of
hydraulic actuators 24, 26 connected to a pair of trim tabs
12, 14, which are mounted to the stern 20 of a boat hull 22
via a pair of hinges 16, 18. Id., col. 2 ll. 34–40.
4 BENNETT MARINE, INC. v. LENCO MARINE, INC.
Based on the flow of hydraulic fluid from a pair of con-
trol valves 32, 34 and a fluid pump 28, the hydraulic
actuators extend or retract to adjust the position of the
trim tabs relative to the hull. Id., col. 2 ll. 40–44. Using a
switch 40, an operator can selectively adjust the position
of the trim tabs to control the pitch of the boat. Id., col. 2
ll. 47–51. The ’780 patent discloses: “It will be appreciat-
ed, of course, that the principles of the invention apply to
electrical and pneumatic actuators of trim tabs, in addi-
tion to the preferred hydraulic implementation.” Id., col.
3 ll. 53–56.
In addition, the ’780 patent discloses a control circuit
42, which causes the actuators (and thus the connected
trim tabs) to automatically retract upon removal of power
to the engine ignition control 37, via switch 36. Id., col. 2
ll. 55–59. Figure 1 depicts the control circuit as a block
labeled “Automatic Tab Retractor.” Figure 2, reproduced
below, shows a particular embodiment of control circuit
42, in the form of a schematic diagram:
BENNETT MARINE, INC. v. LENCO MARINE, INC. 5
In the ’780 patent, the applicants describe in detail
the various components comprising the particular embod-
iment shown in Figure 2. See ’780 patent col. 2 l. 59 – col.
3 l. 47.
During prosecution, certain claims were rejected as
anticipated by U.S. Patent No. 4,762,079 to Takeuchi
(“Takeuchi”). To overcome the rejection, the applicants
amended the claims and asserted that Takeuchi does not
disclose all the recited limitations.
II. Lenco and the Accused Products
Lenco designs, manufactures, and sells trim tab sys-
tems, known generally as automatic tab retractors
(“ATRs”), in direct competition with Bennett. Rinker Boat
Company (“Rinker”), a defendant in the district court but
not involved in this appeal, manufactures and sells pow-
erboats, some of which include ATRs made by Lenco.
At issue in this appeal are two versions of Lenco’s
ATRs: an initial version (the “Original ATR”) with a
control wire connecting the control circuit to an engine
ignition switch; and a redesigned version (the “Rede-
signed ATR”) with a control wire connecting the control
circuit to the boat’s engine speed sensor (known as a
tachometer). In the Original ATR, trim tab retraction
occurs when power is removed from the control wire. In
the Redesigned ATR, trim tab retraction occurs after the
engine speed drops below a preset level. Both the Origi-
nal and Redesigned ATRs use electrical screw-driven
actuators rather than the hydraulic actuators shown in
Figure 1 of the ’780 patent.
III. Prior Dealings Between the Parties
Lenco began marketing the Original ATR in 2001, in-
cluding with each system instructions to connect the
control wire to the boat’s engine ignition switch. Bennett
sent a cease and desist letter to Lenco in November of
2001, notifying Lenco of the ’780 patent. Counsel for
6 BENNETT MARINE, INC. v. LENCO MARINE, INC.
Lenco responded on April 5, 2002, asserting noninfringe-
ment but also proposing settlement. On February 25,
2003, Bennett and Lenco entered into a settlement
agreement (the “Settlement Agreement”). In the Settle-
ment Agreement, Lenco agreed to pay $70.00 per unit for
371 Original ATRs previously sold with the original
wiring instructions. After entering into the Agreement,
Lenco sent out revised instructions notifying its custom-
ers to stop connecting the control wire of its ATRs to the
engine ignition switch and to instead connect the control
wire (labeled “orange”) to an “on/off switch,” also charac-
terized as a “non-engine switch.” 1 Appendix B to the
Settlement Agreement generally reflects the revised
instructions.
IV. The District Court Proceedings
Bennett filed its initial complaint on March 16, 2004.
After a two-week bench trial in January and February of
2009, the district court issued its findings of fact and
conclusions of law on September 29, 2011. The court
found that, in 2006, Lenco began selling the Redesigned
ATR. Final Decision at 11–12, ¶ 50. The court found that
Lenco redesigned its ATRs in an effort to avoid infringe-
ment of the ’780 patent. Id. In addition, the court found
that, long after signing the Settlement Agreement, Lenco
was aware that Rinker was selling boats with Lenco’s
ATRs wired directly to the engine ignition switch. Id. at
12, ¶ 51. The court also found that, since April of 2007,
Rinker has been wiring Lenco’s ATRs to the tachometer,
not directly to the engine ignition switch. Id. at 15, ¶ 64.
1 Like most cars, boats typically have three posi-
tions for their ignition switches: off (where both engine
and accessories have no power); accessory (where only
accessories have power); and on (where both engine and
accessories have power).
BENNETT MARINE, INC. v. LENCO MARINE, INC. 7
The district court held that Lenco’s ATRs sold by
Rinker infringed claims 1 and 9 of the ’780 patent (both
literally and under the doctrine of equivalents), both
when the ATRs were wired directly to an engine ignition
switch and also when they were wired to a tachometer.
Id. at 31–39. In addition, the court held that Lenco
willfully infringed the ’780 patent and also induced in-
fringement by Rinker. Id. at 47–52. Further, the court
held that the defendants had not proven that the asserted
claims were anticipated or rendered obvious by various
prior art references. Id. at 39–46.
Based on its patent infringement ruling, the district
court determined a royalty rate of $3.00 per unit and
awarded Bennett damages of (1) $339,054.00 jointly and
severally from Lenco Marine, Inc. and DeVito and (2)
$27,680.00 from Rinker. See Final Judgment at 1; see
also Final Decision at 53–54. Notably, the amount from
Lenco Marine, Inc. and DeVito included a doubling of
damages based on the willfulness ruling. See Final
Decision at 53. In the process of awarding damages, the
district court rejected Bennett’s request to modify the
royalty rate from $3.00 per unit to $70.00 per unit.
In addition to the patent issues, the district court also
addressed claims for breach of contract, holding that
Lenco had breached the Settlement Agreement both by
“inducing[,] developing[,] and selling an infringing prod-
uct which was designed to be wired into the tachometer
gauge of the boat” as well as by “inducing Rinker and
others to infringe the ’780 patent.” Id. at 56, ¶ 134. The
district court awarded no additional damages based on
the contract breach, however, finding that “the damages
for patent infringement previously awarded . . . are the
same damages suffered by Bennett for Lenco’s breach of
the contract.” Id., ¶ 135.
Lenco timely appealed various aspects of the district
court’s judgment, while Bennett timely cross-appealed the
8 BENNETT MARINE, INC. v. LENCO MARINE, INC.
denial of its request to increase the royalty rate. 2 We
have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I. Standards of Review
Claim construction is a question of law, which we re-
view without deference. Cybor Corp. v. FAS Techs., Inc.,
138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). Following
a bench trial, we review findings of infringement, both
literal and under the doctrine of equivalents, as a factual
issue subject to the clearly erroneous standard of review.
Roton Barrier, Inc. v. Stanley Works, 79 F.3d 1112, 1125
(Fed. Cir. 1996).
Anticipation is a question of fact, and we review a dis-
trict court’s finding on this issue for clear error. Sanofi-
Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir.
2008). When considering a district court’s ruling on
obviousness, we review the underlying factual findings for
clear error and review without deference the ultimate
legal issue of obviousness. McNeil-PPC, Inc. v. L. Perrigo
Co., 337 F.3d 1362, 1368 (Fed. Cir. 2003).
When reviewing issues not unique to patent law, such
as interpretation of a settlement agreement, we apply the
law of the appropriate regional circuit. See Novamedix,
Ltd. v. NDM Acquisition Corp., 166 F.3d 1177, 1180 (Fed.
Cir. 1999). The Eleventh Circuit reviews without defer-
ence a court’s interpretation of a contract under the
applicable state law—here, the law of the state of Flori-
2 Neither Rinker nor its president Kim Slocum—
both defendants in the district court—appeals the district
court’s judgment.
BENNETT MARINE, INC. v. LENCO MARINE, INC. 9
da. 3 See Bragg v. Bill Heard Chevrolet, Inc., 374 F.3d
1060, 1065 (11th Cir. 2004).
II. Claim Construction
A.
On appeal, the parties dispute various aspects of the
district court’s constructions of the second, fourth, and
fifth limitations of claim 1 of the ’780 patent. 4 To resolve
this appeal, however, we only need to address the parties’
dispute as to the fifth limitation, which recites:
means coupled to said trimming means and to
said engine, and responsive to removal of electri-
cal power from said engine, for automatically mov-
ing said trimming means to a predetermined
position with respect to said hull upon removal of
power at said engine.
’780 patent col. 4 ll. 10–15. 5 The district court construed
this limitation as a means-plus-function limitation under
3 The Settlement Agreement states that Florida law
governs its interpretations.
4 Although the underlying litigation also involved
claim 9, for purposes of this appeal, claims 1 and 9 rise
and fall together.
5 The entirety of claim 1 recites as follows: A
boat trim control system that comprises:
a boat having a hull and an engine for powering
said boat;
means for selectively applying electrical power to
said engine for powering the boat;
means movably mounted to said hull for trimming
attitude of said boat as said hull is propelled
through the water;
10 BENNETT MARINE, INC. v. LENCO MARINE, INC.
former 35 U.S.C. § 112, ¶ 6 (now § 112(f)). 6 In construing
such a limitation, a court must first identify the function
recited and then identify the corresponding structure in
the written description necessary to perform that func-
tion. See Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364,
1369–70 (Fed. Cir. 2001). Here, the district court identi-
fied the function as “to provide a means to respond to the
stimulus of electrical power being removed from the
engine, thus resulting in the trim tabs being automatical-
ly returned to the fully retracted position or other prede-
termined position.” Final Decision at 28–29, ¶ 20. It
identified the structure as “control circuit 42, fig. 1, and
equivalents thereof.” Id.
B.
Challenging the district court’s claim construction,
Lenco first asserts that the court failed to identify all of
the functions required by the fifth limitation. According
to Lenco, the claimed “means” must also physically move
the “trimming means” recited in the third limitation, in
addition to “provid[ing] a means to respond” to the re-
moval of power. Second, according to Lenco, the failure to
means carried by said hull and responsive to a
boat operator for selectively adjusting position of
said trimming means to maintain desired attitude
under varying conditions, and
means coupled to said trimming means and to
said engine, and responsive to removal of electri-
cal power from said engine, for automatically mov-
ing said trimming means to a predetermined
position with respect to said hull upon removal of
power at said engine.
6 The parties do not dispute that the fifth limitation
should be construed as a means-plus-function limitation.
BENNETT MARINE, INC. v. LENCO MARINE, INC. 11
fully identify the functions required by the fifth limitation
led the court to not identify certain corresponding struc-
ture. Lenco asserts that the corresponding structure for
the additional required function includes structures that
are coupled to the trim tabs and engine, are responsive to
the removal of engine power, and are necessary to physi-
cally move the trim tabs. Finally, with regard to the
function identified by the district court, Lenco argues that
the court erred by identifying the corresponding structure
as the generic control circuit in figure 1. Lenco contends
that the court should have limited the corresponding
structure to the specific circuit shown in figure 2.
Bennett does not attempt to rebut Lenco’s first two
arguments. Rather, it maintains that any error on the
district court’s part was harmless because the court
included the proposed additional function and structures
in its construction of the fourth limitation, which recites a
“means carried by said hull and responsive to a boat
operator for selectively adjusting position of said trim-
ming means to maintain desired attitude under varying
conditions.” Bennett focuses on Lenco’s final argument,
which addresses the corresponding structure of the con-
trol circuit. According to Bennett, the general disclosure
in figure 1 sufficiently identifies the corresponding struc-
ture because “[t]he control circuit shown in the preferred
embodiment is a common type of electrical circuit that has
been in use since the 1970’s.” Appellee Br. 33–34. In
other words, Bennett argues that because the particular
circuit shown in figure 2 is allegedly common, the corre-
sponding structure should not be limited to that particu-
lar circuit, but should also include any circuit capable of
performing the required function.
12 BENNETT MARINE, INC. v. LENCO MARINE, INC.
C.
We agree with Lenco’s first two arguments regarding
the fifth limitation. As essentially conceded by Bennett,
the district court erred by failing to fully identify the
function and corresponding structure required. As stated
in the fifth limitation, the recited “means” must “automat-
ically mov[e]” the trim tabs “upon removal of power at
said engine.” We thus revise the required function as
follows: “to respond to the stimulus of electrical power
being removed from the engine by automatically return-
ing the trim tabs to the fully retracted position or other
predetermined position.” See Lockheed Martin Corp. v.
Space Sys./Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir.
2003) (“The function of a means-plus-function claim must
be construed to include the limitations contained in the
claim language.”). The corresponding structure is a
control circuit (discussed in further detail below) as well
as the actuators and related components necessary to
automatically retract the trim tabs upon the removal of
engine power. 7
The primary dispute between the parties regarding
the fifth limitation relates to the scope of the correspond-
ing structure for the control circuit, namely, whether that
structure should be limited to the specific circuit shown in
figure 2 or whether the structure should be construed
broadly as the generic circuit shown in figure 1, i.e., any
circuit fulfilling the required function. Because Lenco’s
argument accords with our precedent, we limit the control
circuit portion of the corresponding structure of the fifth
7 Although the parties dispute whether the corre-
sponding structure for this function can include electrical
actuators, for reasons discussed below, we need not ad-
dress that dispute to resolve this appeal.
BENNETT MARINE, INC. v. LENCO MARINE, INC. 13
limitation to the specific circuit shown in figure 2 and its
equivalents.
The ’780 patent discloses only one specific type of cir-
cuit to perform part of the function required by the fifth
limitation. In such a situation, the corresponding struc-
ture should be limited to that specific structure and its
equivalents, rather than any circuit capable of performing
the required function. See Mettler-Toledo, Inc. v. B-Tek
Scales, LLC, 671 F.3d 1291, 1295–96 (Fed. Cir. 2012)
(affirming a construction limiting a means-plus-function
limitation to the specific disclosed analog-to-digital con-
verter, despite the presence of a generic “analog-to-digital
converter” in a patent figure, because “[i]f a patentee
chooses to disclose a single embodiment, then any means-
plus-function claim limitation will be limited to the single
disclosed structure and equivalents thereof”); see also
J&M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360, 1367
(Fed. Cir. 2001) (“The literal scope of a properly construed
means-plus-function limitation does not extend to all
means for performing a certain function. Rather, the
scope of such claim language is sharply limited to the
structure disclosed in the specification and its equiva-
lents.”).
The decisions relied on by Bennett do not support the
proposition that the inventors disclosed any more than
the specific circuit shown in figure 2. In contrast to the
facts in Serrano v. Telular Corp., 111 F.3d 1578, 1583
(Fed. Cir. 1997), the ’780 patent does not disclose alterna-
tives to the circuit shown in figure 2, such as, for example,
a general class of known switches. Instead, the ’780
patent only discloses one embodiment, that shown in
figure 2. See ’780 patent col. 2 l. 55 – col. 3. l. 47. In
addition, S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1370–71
(Fed. Cir. 2001), and Intel Corp. v. Via Technologies, Inc.,
319 F.3d 1357, 1366–67 (Fed. Cir. 2003), do not support
Bennett’s position on this issue. Rather, they teach that a
patent is not rendered indefinite for failure to fully dis-
14 BENNETT MARINE, INC. v. LENCO MARINE, INC.
close teachings well known in the art. Although the
evidence relied on by Bennett does show that the specific
circuit shown in figure 2 was known at the time of filing,
this does not support Bennett’s conclusion that “numerous
types of control circuits were well-known in the art when
the ’780 patent was filed.” See Appellee Br. 34 (emphasis
added). Bennett has not identified any evidence showing
that any circuit other than the circuit disclosed in figure 2
was known and capable of performing the function re-
quired by the fifth limitation.
For these reasons, the district court erred in its con-
struction of the fifth limitation of claim 1 and the related
sixth limitation of claim 9.
III. Infringement
A.
We turn now to the district court’s findings regarding
infringement. Based on our revised construction for the
fifth limitation of claim 1 of the ’780 patent and the
related sixth limitation of claim 9, we reverse the finding
of infringement.
In the Final Decision, the district court rejected Len-
co’s argument that its ATRs did not literally infringe
claim 1 because they did not include the specific circuit
shown in figure 2. Final Decision at 33, ¶ 35. The court
made similar findings regarding literal infringement of
claim 9. Id. at 36–37. Further, the court found infringe-
ment under the doctrine of equivalents after finding that
the “Lenco control circuit is interchangeable with the
control circuit 42 of the ’780 patent.” Id. at 37–39.
For there to be literal infringement of a claim reciting
a means-plus-function limitation, the accused device must
perform the identical function recited in the claim, and
must use the same structure disclosed in the specification
or equivalent structure. See IMS Tech., Inc. v. Haas
Automation, Inc., 206 F.3d 1422, 1430 (Fed. Cir. 2000).
BENNETT MARINE, INC. v. LENCO MARINE, INC. 15
“Structural equivalence under § 112, ¶ 6 is met only if the
differences are insubstantial . . . that is, if the assertedly
equivalent structure performs the claimed function in
substantially the same way to achieve substantially the
same result as the corresponding structure described in
the specification.” See Odetics, Inc. v. Storage Tech. Corp.,
185 F.3d 1259, 1267 (Fed. Cir. 1999). To find infringe-
ment of a claim reciting a means-plus-function limitation
under the doctrine of equivalents using the traditional
function-way-result test, “the accused structure must
perform substantially the same function, in substantially
the same way, to achieve substantially the same result, as
the disclosed structure.” Kemco Sales, Inc. v. Control
Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000).
B.
As to literal infringement, Lenco argues that the spe-
cific circuits present in both the Original and Redesigned
ATRs are not disclosed in the ’780 patent. Lenco also
argues that those circuits are not structural equivalents
to the circuit shown in figure 2 because that circuit oper-
ates in a different way. Specifically, Lenco asserts that
the circuit in figure 2 operates as a timing circuit (i.e., it
operates for a preset amount of time to retract the trim
tabs regardless of their position), while Lenco’s circuit
counts the rotations of the electrical actuator and ceases
retraction when the actuator has reached the end of its
travel. As to infringement under the doctrine of equiva-
lents, Lenco asserts that the district court erred in finding
that the circuits in the Original and Redesigned ATRs
satisfy the fifth limitation of claim 1 based on a finding
that Lenco’s circuits and control circuit 42 are “inter-
changeable.” Lenco argues that the circuits in the Origi-
nal and Redesigned ATRs do not satisfy the fifth
limitation of claim 1 under the doctrine of equivalents
because they operate in a different way.
16 BENNETT MARINE, INC. v. LENCO MARINE, INC.
In response, Bennett argues that the district court
properly found literal infringement because figure 2 is
only a preferred embodiment and thus the asserted claims
do not require the specific components of figure 2. In
addition, Bennett argues that the district court properly
found infringement under the doctrine of equivalents
because it was “comparing the same structures, namely
Control Circuit 42 as shown in Figure 1 of the ’780 Patent
to Lenco’s control circuit.” Appellee Br. 46. According to
Bennett, because these structure were the same, they
were also interchangeable.
C.
Significantly, Bennett does not assert that the circuits
in Lenco’s Original or Redesigned ATRs literally satisfy
the narrower construction of the fifth limitation of claim
1, as set forth above, as either the disclosed structure or
equivalent structure. Instead, Bennett argues why, in its
view, the narrower construction is incorrect. Bennett
does not address Lenco’s arguments regarding infringe-
ment under the narrower construction, including Lenco’s
arguments that its control circuits operate in a different
“way” and are therefore not structural equivalents to the
circuit shown in figure 2 of the ’780 patent. We conclude
that, despite being fully aware of Lenco’s proposed revised
claim construction, Bennett failed to demonstrate that the
evidence supports the district court’s finding of literal
infringement under the narrower proposed construction of
the fifth limitation of claim 1, adopted above. According-
ly, we reverse the finding of literal infringement because
Bennett has not shown that Lenco’s ATRs include the
specific circuit shown in figure 2 of the ’780 patent or its
structural equivalent.
We also reverse the district court’s finding of in-
fringement under the doctrine of equivalents. The testi-
mony relied on by the district court to find the circuits in
Lenco’s ATRs interchangeable only establishes that pulse
BENNETT MARINE, INC. v. LENCO MARINE, INC. 17
input systems, such as those present in Lenco’s ATRs (1)
existed at the time of the filing of the ’780 patent and (2)
could potentially perform the function required by the
fifth limitation of claim 1. See Final Decision at 38–39.
This, however, is insufficient to demonstrate an accused
structure is equivalent. See Chiuminatta Concrete Con-
cepts v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed.
Cir. 1998) (noting in a discussion of structural equivalents
that “[t]he question of known interchangeability is not
whether both structures serve the same function, but
whether it was known that one structure was an equiva-
lent of another”); see also id. at 1310 (“[A] finding of a lack
of literal infringement for lack of equivalent structure
under a means-plus-function limitation may preclude a
finding of equivalence under the doctrine of equivalents.”).
On appeal, Bennett has failed to demonstrate how the
evidence supports a finding of infringement under the
doctrine of equivalents when analyzed under the proper
construction of the fifth limitation of claim 1 (or the sixth
limitation of claim 9). For this reason, we reverse the
finding of infringement under the doctrine of equivalents.
We turn briefly to the district court’s conclusions as to
induced infringement and willful infringement. Because
a judgment of induced infringement requires an act of
direct infringement, see Dynacore Holdings Corp. v. U.S.
Philips Corp., 363 F.3d 1263, 1277 (Fed. Cir. 2004), based
on our reversal of the infringement judgment, we reverse
as to induced infringement. Similarly, reversing the
district court’s judgment of infringement requires us to
reverse the judgment of willful infringement. See John-
son & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d
1046, 1055 (Fed. Cir. 2002) (en banc). Based on our
reversal as to infringement, we vacate the award of
damages and thus need not address the aspects of Ben-
nett’s cross-appeal relating to the proper royalty rate for
patent infringement damages.
18 BENNETT MARINE, INC. v. LENCO MARINE, INC.
IV. Invalidity
A.
The district court held that the asserted claims were
neither anticipated nor rendered obvious because “none of
the prior art introduced by Defendants at trial, alone or in
combination, disclose automatic trim tabs that retract
upon removal of power from an engine.” Final Decision at
42, ¶ 73. Specifically, the court found that U.S. Patent
No. 4,872,857 to Newman (“Newman”) does not anticipate
the asserted claims of the ’780 patent because (1) it does
not disclose trim tabs and (2) it does not disclose automat-
ic retraction of trim tabs upon removal of power from the
engine. Id. at 43, ¶ 76. The court found that Newman
discloses a system that can, in response to a user’s selec-
tion, return an outboard motor to various predetermined
positions, including a “trailering” position used to avoid
contact between the motor and a boat trailer. Id. at 20–
21. In addition, the court found that, although Newman
did disclose “cavitation plates,” trim tabs and cavitation
plates are not synonymous. 8 Id. at 21, ¶ 91. Regarding
obviousness, the district court held that none of the
references identified by Lenco, alone or in combination,
disclose a system that causes trim tabs to automatically
retract upon removal of power to a boat engine. Id. at 45,
¶ 86.
B.
On appeal, Lenco argues that the court erred in find-
ing the asserted claims not invalid. As to anticipation,
8 According to Bennett’s expert, cited by the district
court, Final Decision at 21, a cavitation plate, located
between the top of a propeller and the surface of the
water, prevents cavitation by limiting the amount of air
pulled in by a propeller.
BENNETT MARINE, INC. v. LENCO MARINE, INC. 19
Lenco admits that Newman does not disclose “traditional
‘trim tabs,’” but instead argues that, based on the prose-
cution history of the ’780 patent, Bennett should be es-
topped from arguing that Newman does not disclose the
trim tabs required by the third limitation of claim 1 (and
the second limitation of claim 9). Lenco notes that, during
prosecution, the examiner cited Takeuchi as anticipating
claims 1 and 9 even though that reference, like Newman,
discloses a system with an outboard motor but no trim
tabs. From this, Lenco concludes that the examiner
“implicitly found [Takeuchi] to satisfy the trimming
limitations.” Appellant Br. 63. Lenco argues that be-
cause the inventors did not overcome that rejection by
arguing that Takeuchi failed to disclose trim tabs (but
instead overcame the rejection on other grounds), Bennett
should be estopped from now arguing that Newman does
not disclose trim tabs. Lenco also cites testimony stating
that trim tabs and cavitation plates perform similar
functions.
Further, Lenco argues that its expert’s testimony
supports a finding of obviousness. Specifically, Lenco
asserts that its expert testified that it would have been
obvious to combine the teachings of Newman with various
patents, including U.S. Patent Nos. 3,695,204 and
3,468,278—which disclose manual control systems for
boat trim tabs—to arrive at the claimed invention.
Regarding anticipation, Bennett responds that New-
man does not disclose trim tabs and cites the district
court’s finding that cavitation plates and trim tabs are not
synonymous. Bennett also argues that Lenco inaccurately
described the system disclosed in Newman. As to obvi-
ousness, Bennett argues that Lenco failed to demonstrate
obviousness by clear and convincing evidence because
Lenco’s expert was not actually one of ordinary skill in the
relevant art.
20 BENNETT MARINE, INC. v. LENCO MARINE, INC.
C.
Regarding anticipation, the district court properly
concluded that Newman does not anticipate the asserted
claims, at least because that reference does not disclose a
system involving trim tabs, as required by the third
limitation of claim 1 and the second limitation of claim 9. 9
Lenco did not appeal the court’s construction of those
limitations. Further, even if cavitation plates and trim
tabs do perform the same function required by the third
limitation of claim 1, Lenco has not demonstrated or
argued that cavitation plates are corresponding structure
or constitute a structural equivalent. For these reasons,
we see no error in the court’s finding that Newman does
not disclose trim tabs and structural equivalents thereof.
See Final Decision at 21.
We are not persuaded by Lenco’s estoppel argument,
which lacks any citation to case law. We know of no
decision supporting the proposition that the failure of an
inventor to distinguish a certain prior art reference on a
specific ground creates an estoppel with respect to an
arguably similar aspect of a different reference. As ap-
plied here, the fact that the inventors distinguished
Takeuchi on alternative grounds (other than the potential
argument that Takeuchi does not disclose trim tabs) does
not mean that the inventors waived an argument distin-
guishing Newman for a failure to disclose trim tabs.
Regarding obviousness, we conclude that the district
court did not err in finding that Lenco failed to carry its
burden of showing the obviousness of the asserted claims
9 The district court construed the third limitation of
claim 1 as a means-plus-function limitation requiring a
structure of “a trim tab or trim tabs and equivalents
thereof.” The second limitation of claim 9 recites: “at least
one trim tab pivotally mounted to said hull at said stern.”
BENNETT MARINE, INC. v. LENCO MARINE, INC. 21
by clear and convincing evidence. Specifically, Lenco has
failed to show that the prior art, alone or in combination,
discloses the trim tabs required by the third limitation of
claim 1 and the second limitation of claim 9. While the
expert testimony arguably demonstrates the presence of
the various components of the claimed system in the prior
art, that, alone, does not demonstrate the obviousness of
the claimed invention. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (“[A] patent composed of several
elements is not proved obvious merely by demonstrating
that each of its elements was, independently, known in
the prior art.”); see also Power-One, Inc. v. Artesyn Techs.,
Inc., 599 F.3d 1343, 1351–52 (Fed. Cir. 2010) (affirming
the nonobviousness of the asserted claims when the
accused infringer’s expert “did not provide a plausible
rationale as to why the prior art references would have
worked together to render the claims . . . obvious”).
For these reasons, we affirm the district court’s con-
clusion that Lenco failed to prove the invalidity of the
asserted claims.
V. Breach of the Settlement Agreement
A.
We now turn to the district court’s breach of contract
ruling. The court found that Lenco breached paragraph
10 of the Settlement Agreement, which states:
Lenco will not advise or counsel any sales repre-
sentative, builder, dealer, retailer, discounter,
mail order or catalog customer, prospective or ac-
tual, supplier, distributor, inquirer, prospect[ive]
or potential customer, or representative to wire
Lenco’s retraction device in any manner other
than as shown in Appendix B . . . .
J.A. 3051–52; see Final Decision at 56. The district court
found that Lenco breached paragraph 10 by (1) “induc-
ing[,] developing[,] and selling an infringing product
22 BENNETT MARINE, INC. v. LENCO MARINE, INC.
which was designed to be wired into the tachometer gauge
of the boat” and (2) “inducing Rinker and others to in-
fringe the ’780 patent.” Final Decision at 56, ¶ 134.
B.
Lenco asserts that Bennett produced no evidence
showing that Lenco “advise[d]” or “counsel[ed]” customers
to ignore the instructions in Appendix B. In addition,
Lenco argues that the court erred by basing its finding of
a breach, in part, on Lenco having indemnified various
customers.
Bennett responds that the evidence shows that Lenco
knowingly and intentionally encouraged its customers to
install their ATRs in an infringing way by giving them
instructions to do so, honoring warranties on boats with
infringing installations, and agreeing to indemnify any
infringers.
C.
Based on the record on appeal, we conclude that the
district court erred in finding a breach of the Settlement
Agreement. Both the reasoning of the district court and
Bennett’s arguments on appeal rely solely on the district
court’s finding of infringement to support the breach of
contract ruling. Based on our reversal as to infringement,
we therefore also reverse the breach of contract ruling.
We need not address the issue of contract damages, as
raised in Bennett’s cross-appeal.
CONCLUSION
For the foregoing reasons, we (1) reverse the district
court’s judgments of infringement, induced infringement,
and willful infringement; (2) affirm the judgment of no
invalidity; (3) reverse the judgment of breach of contract;
and (4) vacate the award of damages.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
VACATED-IN-PART
BENNETT MARINE, INC. v. LENCO MARINE, INC. 23
COSTS
Each party shall bear its own costs.