Sun Coast Merchandise Corp. v. CCL Products Enterprises Inc. , 179 F. App'x 6 ( 2006 )

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
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SUN COAST MERCHANDISE CORP.
and DILIP BHAVNANI,
Plaintiffs-Cross Appellants,
v.
CCL PRODUCTS ENTERPRISES, INC.,
CCL CREATIVE LTD., CCL PRODUCTS, LTD.,
and C.C.&L COMPANY LTD.,
Defendants-Appellants.
__________________________
DECIDED: April 21, 2006
__________________________
Before MICHEL, Chief Judge, LINN, and PROST, Circuit Judges.
PROST, Circuit Judge.
CCL Products Enterprises, Inc., CCL Creative Ltd., CCL Products, Ltd., and
C.C.&L Co. Ltd. (collectively, “CCL”) appeal from a decision of the United States District
Court for the Central District of California granting summary judgment of non-
infringement of U.S. Patent No. 6,178,085 (the “’085 patent”) in favor of Sun Coast
Merchandise Corp. and Dilip Bhavnani (collectively, “Sun Coast”). Sun Coast Merch.
Corp. v. CCL Prods. Enters., Inc., No. SA CV 03-0991 (C.D. Cal. Nov. 22, 2004). Sun
Coast cross-appeals the district court’s denial of its motion for attorney fees. Sun Coast
Merch. Corp. v. CCL Prods. Enters., Inc., No. SA CV 03-0991 (C.D. Cal. Jan. 12, 2005)
(“Attorney Fees Order”). Because we have clarified the construction of “trunnions” and
“damping means,” and several issues remain to be addressed by the district court, we
vacate the summary judgment findings with respect to literal infringement of two of Sun
Coast’s calculator designs and remand for the district court to determine whether those
two designs literally infringe the asserted claims of the ’085 patent. Additionally, we
affirm the district court’s summary judgment finding of noninfringement with respect to
Sun Coast’s third calculator design, the court’s finding of noninfringement under the
doctrine of equivalents with respect to all of the calculator designs at issue, and the
court’s denial of attorney fees.
I. BACKGROUND
CCL’s ’085 patent discloses a calculator which generally contains a housing and
a “lid mechanism which pivots a flat cover of the calculator in a predetermined
controlled manner between a first position[,]” in which the cover forms a lid overlying the
display, and a second position in which the cover is “pivoted towards the rear of the
calculator so as to form a stand for tilting the calculator into an upwardly inclined
ergonomic position . . . .” ’085 patent, Abstract. The ’085 patent specification discloses
that one object of the invention is to provide a novel calculator lid mechanism that has
been adapted “for controlled pivoting actuation to alternatively form a cover for a display
panel and a stand for the calculator.” Id. at col. 2, ll. 61-65. Figures 4 and 5 show both
positions of the lid mechanism, as a cover and alternatively, a stand.
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After being accused by CCL of infringing the ’085 patent, Sun Coast filed a
declaratory judgment action that the ’085 patent was invalid and/or not infringed by its
accused calculators. In response, CCL filed a counterclaim for infringement of claims 1,
2, 7, 8, and 9 of the ’085 patent.
Claim 1, the only independent claim asserted, is representative of the claims at
issue:
1. A portable hand-held calculator, comprising:
(a) a generally flat rectangular housing containing operating electronics
and an array of calculator actuating buttons; a display panel being located
on a front surface of said housing proximate said array of actuator buttons;
said housing including a pair of flanges extending from opposite side
edges of said housing in parallel spaced relationship; and hinge-forming
trunnions being formed on inwardly facing surfaces of said flanges;
(b) a lid structure connected to said trunnions for pivotal motion relative to
said housing, said lid structure including a flat cover portion and a tubular
portion formed along one edge of said flat cover portion extending
between said trunnions, said tubular portion including cylindrical bores
extending along the longitudinal axis thereof; and
(c) a lid operating mechanism including damping means arranged within at
least one said cylindrical bore, biasing said lid toward a rearwardly pivoted
position, and effectuating a controlled pivotal motion of said lid structure
between the closed position thereof covering said display panel and the
rearwardly pivoted position exposing said display panel and forming a
stand for supporting said calculator in a tilted position on a horizontal
surface.
Id. at col. 7, ll. 2-27 (emphases added).
In its Markman opinion, the district court construed the term “trunnions” as “pin[s]
or pivot[s] usually mounted on bearings for rotating or tilting something.” Sun Coast
Merch. Corp. v. CCL Prods. Enters., Inc., No. CV 01-0772, slip op. at 12-13 (C.D. Cal.
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May 1, 2003) (“Markman Opinion”). Based on the context of the claim language and the
disclosures in the specification, however, the court limited “trunnions” to those “that
project from the inwardly facing surface of the flanges.” Id. at 13.
Sun Coast markets several different models of accused calculators. The district
court separated the accused calculators according to their design into three general
categories. We continue the district court’s practice of referring to the accused devices
in the following manner:
(1) “original design:” including models RC2500 and original RC3000
(2) “modified design:” including models RC2600, RC2500M, RC2700, and
modified RC3000
(3) “double flipper” or the CALC-0050 model
See, e.g., Sun Coast Merch. Corp. v. CCL Prods. Enters., Inc., No. SA CV 03-0991, slip
op. at 2 n.2 (C.D. Cal. Oct. 28, 2004) (“Summary Judgment Order”).
In its opinion granting Sun Coast’s motion for summary judgment of non-
infringement, the district court found that CCL did not provide any admissible evidence
of infringement in response to Sun Coast’s motion. The “evidence” proffered consisted
of: “(1) unauthenticated photographs that purport to compare the Sun Coast products to
the CCL products; and (2) unauthenticated computer generated drawings of Sun
Coast’s products.” Id. at 7. Thus, the district court concluded that “[h]aving submitted
only these questionable exhibits with mere conclusory argument, CCL has provided no
evidence to support its position of infringement. . . . CCL’s unsupported statements are
wholly insufficient to raise a genuine evidentiary dispute requiring the case to go before
a jury.” Id. The district court found that CCL failed to go beyond the pleadings and
provide the court with evidence of either literal infringement or “evidence of the
equivalency of Sun Coast’s products and the limitations in claim 1.” Id. at 8, n.5. That
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failure was sufficient for the district court to find that CCL’s lack of proof entitled Sun
Coast to summary judgment of non-infringement on both literal infringement and
infringement under the doctrine of equivalents. Id.The district court, however, subsequently made clear that its grant of summary
judgment was not based solely on CCL’s failure to present evidence of infringement, but
also on its own observations of the accused devices which the court apparently
disassembled on its own accord: “the Court’s examination of the products at issue,
coupled with CCL’s failure to provide evidence to the contrary, leads to the conclusion
that all elements contained in claim 1 of the ’085 Patent are not present in the Sun
Coast products.” Id. at 9. The district court then proceeded to examine the
disassembled accused products and make findings of fact regarding whether each of
the three categories of accused products literally infringe.
Specifically, the district court’s analysis of infringement consisted of a single
paragraph for each design type, as reproduced here:
The original design does not embody every limitation of claim 1.
The calculators do not have projections on the inner surface of both sides
of the housing about which the lid rotates. In other words, the RC2500 and
RC3000 do not have flanges with hinge forming trunnions (pins or pivots)
that are distinct components. Rather, the lid is attached and rotational
movement about the housing is permitted by an outwardly extended
attachment means on the lid structure. The support portion in the RC2500
and RC3000 rotate about an integral bore and include extensions that are
fitted into the housing. Also, the RC2500 and RC3000 only appear to
have a single flange with an inwardly facing structural element.
...
The modified design does not have flanges with hinge-forming
trunnions as required by claim 1(a); instead there are protruding
extensions on each end of the covering portion’s cylindrical barrel that
insert into recesses in the housing body. In addition to differences in
composition, the Court notes differences between the lid operating
mechanism of the ’085 Patent and the modified design. The modified
design does not have the damping means .arranged within one of the
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cylindrical bores of the lid structure. Rather, the damping means is
primarily located within the housing.
...
Claim 1 requires the lid structure to cover the display panel in the
closed position. Because there are two closing layers in the double flipper,
the lid structure does not cover the display panel in the closed position,
nor does it expose the display panel when opened. Instead, when the lid
structure covering the display is opened, the second portion of the housing
covers the display panel (this second portion of the housing then opens).
Overall, the double flipper opens in a different configuration than that
described by the ’085 Patent. Moreover, the double flipper’s components
are similar to the modified calculator and non-infringing for the same
reasons noted above.
Id. at 10-11.
In its opinion denying Sun Coast’s motion for attorney fees, the district court
found that the case was not “exceptional” because Sun Coast had not established by
“convincing clarity the egregiousness of CCL’s counsel’s conduct or a bad faith and
vexatious multiplication of proceedings.” Attorney Fees Order, slip op. at 2.
Additionally, the court denied sanctions in the form of attorney fees under 28 U.S.C.
§ 927 for essentially the same reasons, finding that “CCL’s counsel did not multiply
proceedings unreasonably and vexatiously.” Id. at 2-3. Lastly, the court declined to
utilize its inherent powers to sanction CCL or its counsel because they did not act “in
bad faith, vexatiously, wantonly, or for oppressive reasons. . . . [even though,] the court .
. . may not have appreciated the zeal or decorum with which CCL and its counsel
litigated this matter . . . .” Id. at 3.
CCL appeals the grant of summary judgment of noninfringement. Sun Coast
cross-appeals the denial of attorney fees. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
II. DISCUSSION
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A. Standard of Review
We review a district court’s grant of summary judgment de novo, reapplying the
standard applicable at the district court. Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1301 (Fed. Cir. 1999). Summary judgment is appropriate when it has been
shown “that there is no genuine issue as to any material fact and that the moving party
is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56(c); Contract Mgmt., Inc.
v. Rumsfeld, 434 F.3d 1145, 1146 (9th Cir. 2006).
Determining infringement generally requires two steps. “First, the claim must be
properly construed to determine its scope and meaning. Second, the claim as properly
construed must be compared to the accused device or process.” Carroll Touch, Inc. v.
Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993).
Claim construction is an issue of law that we review de novo. Cybor Corp. v.
FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc); Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S.
370 (1996). “When interpreting claims, we inquire into how a person of ordinary skill in
the art would have understood claim terms at the time of the invention.” Pfizer, Inc. v.
Teva Pharms., USA, Inc., 429 F.3d 1364, 1372-73 (Fed. Cir. 2005) (citing Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)). “The inquiry into how a
person of ordinary skill in the art understands a claim term provides an objective
baseline from which to begin claim interpretation.” Phillips, 415 F.3d at 1313.
“Importantly, the person of ordinary skill in the art is deemed to read the claim term not
only in the context of the particular claim in which the disputed term appears, but in the
context of the entire patent, including the specification.” Id.
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Infringement, whether literal or under the doctrine of equivalents, is a question of
fact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). The proper inquiry
is whether the evidence is such that a reasonable jury could return a verdict for the non-
movant. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). We must draw
all justifiable inferences in favor of the non-movant. Id.A court may award attorney fees to a party in “exceptional” cases pursuant to 35
U.S.C. § 285. A trial court undertakes a two-step inquiry to adjudicate a request for
attorney fees: the court examines whether there is clear and convincing evidence that
the case is exceptional; and if so, whether an award of attorney fees to the prevailing
party is warranted. Evident Corp. v. Church & Dwight Co., Inc., 399 F.3d 1310, 1315
(Fed. Cir. 2005) (citing Cybor, 138 F.3d at 1460; J.P. Stevens Co. v. Lex Tex Ltd., 822
F.2d 1047, 1050 (Fed. Cir. 1987)). Whether a case is exceptional depends on findings
of fact by the trial court, which we review for clear error. Rolls-Royce, Ltd. v. GTE
Valeron Corp., 800 F.2d 1101, 1111 (Fed. Cir. 1986). Pursuant to 35 U.S.C. § 285, the
decision to award attorney fees is committed to the discretion of the trial court, which we
review for an abuse of discretion. Evident Corp., 399 F.3d at 1315 (citing Molins PLC v.
Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995)).
B. Analysis
1. Claim Construction
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a. “trunnions”
In construing the term “trunnions” in claim 1 of the ’085 patent, the district court
noted that the parties did not dispute the single word “trunnion,” but rather the context in
which the term is used in the claim. The district court, relying on a dictionary definition
of trunnions, construed the term to mean “pins or pivots usually mounted on bearings
for rotating or tilting something.” Markman Opinion, slip op. at 13. Reading the claim
term in the context of the surrounding claim language, “hinge-forming trunnions being
formed on inwardly facing surfaces of said flanges[,]” the court found that because the
claim requires that the trunnions be formed “on” the inwardly facing surfaces of the
flanges, they must project from the inwardly facing surface of the flanges. The court
recognized that several portions of the ’085 patent specification, including the
“Summary of the Invention” and “Detailed Description of a Preferred Embodiment”
sections, refer to the trunnions “as types of projections[,]” thereby reinforcing the
conclusion that some type of projection is required. In reaching its construction, the
court rejected CCL’s argument that the term “trunnion” as used in the claim could be
construed to cover a pure recess or indentation in the surface of the flange because
“[w]hile such recess might be a trunnion, it would be one that is formed in, not on, the
inwardly facing surface of the flanges.” Id. Therefore, the court concluded that “the
trunnions identified in the claim language are ones that project from the inwardly facing
surface of the flanges.” Id.On appeal, CCL argues that the district court erred in construing “trunnions” as
being limited to “projecting” trunnions. Specifically, CCL contends that the court grafted
a limitation from the preferred embodiment onto the trunnion term; that limitation being
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some type of projection. CCL asserts that the claim language “on inwardly facing
surfaces of said flanges,” “simply defines the location of the trunnions ‘on the flange.’”
Alternatively, CCL asserts that if the trunnion term were limited to a projection, there is
no reason to further limit it to a structure that does not contain a recess, especially when
such a construction would exclude the preferred embodiment.
Sun Coast, on the other hand, argues that the district court correctly construed
the term “trunnion” as requiring some type of projection, and thus excluding a pure
recess, based on the context of the term in the claim itself and the disclosures in the
specification. First, Sun Coast echoes the district court’s conclusion that the claim
language states that the trunnions are formed “on” the surfaces of the flanges and not
“in” the surfaces, and therefore the claim language itself does not support CCL’s
argument that a trunnion could be a pure recess. Second, Sun Coast asserts that “[a]
trunnion cannot be a [pure] recess because the specification describes a recess as part
of the projecting trunnion . . . .” (Pls.-Cross Appellants’ Br. 48.) Finally, Sun Coast
argues that as correctly construed, the projecting “trunnions” cannot contain a recess
and if such a construction excludes the preferred embodiment it is because of poor
claim drafting.
“[T]he words of a claim ‘are generally given their ordinary and customary
meaning.’” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996)). That ordinary meaning “is the meaning that the term
would have to a person of ordinary skill in the art in question at the time of the
invention.” Id. at 1313. “[T]he claims themselves provide substantial guidance as to the
meaning of particular claim terms.” Id. at 1314. In particular, “the context in which a
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term is used in the asserted claim” and the “[o]ther claims of the patent in question” are
useful for understanding the ordinary meaning. Id. As we have stated on numerous
occasions, the claims “must be read in view of the specification, of which they are a
part.” Markman, 52 F.3d at 979. “[T]he specification ‘is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.’” Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at
1582).
We can discern no error in the district court’s Markman construction of the term
“trunnions.” First, the claim language itself states “hinge-forming trunnions being
formed on inwardly facing surfaces of said flanges[.]” ’085 patent, col. 7, ll. 9-10
(emphasis added). We do not believe that the term “on” was merely a reference to the
location of the trunnions, but rather a limitation on the types of trunnions which were
being claimed. Thus, we agree that the claim language itself does not support a
construction of the term that would consist of a pure recess as such a trunnion would no
longer be formed “on” the surface of the flanges, but rather “in” the surface. The claim
language, however, supports a construction that the trunnions must be some type of
projection, as that projection would aptly be considered “on” the surface of the flanges.
Second, the specification consistently refers to trunnions as being some type of
projection and the preferred embodiment is described as having “a short inwardly
extending trunnion-like projection 28, 30[.]” This is not, however, a limitation which is
only associated with the preferred embodiment as argued by CCL. ’085 patent, col. 4,
ll. 12-13. The “Summary of Invention” section states that the “trunnions which project
inwardly from upper ends of flanges extend from the side walls of the calculator
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housing, . . . to . . . the opposite open ends of the cylindrical bores and form hinge
connections for the lid structure with the calculator housing.” ’085 patent, col. 2, ll. 45-
50 (emphasis added). Therefore, based on the context of the claim language and the
description of the trunnions in the specification, we agree with the district court that the
term trunnions be construed as “pins or pivots usually mounted on bearings for rotating
or tilting something that project from the inwardly facing surface of the flanges.”1
While we affirm the district court’s Markman construction of “trunnions,” we note
that there is no additional limitation which prevents the trunnion from being some type of
projection which contains a recess.2 First, the context of the claim language does not
exclude a projection containing a recess because such a trunnion would still be “on” the
surface of the flanges. Second, such a projection is specifically disclosed as part of the
preferred embodiment. Figure 9 of the ’085 patent illustrates that, “[o]ne of the
projections 28 is larger in diameter, and projection 28 contains a circular recess 32
including a horizontal rib 34 extending radially from the bottom of the recess 32.” ’085
patent, col. 4, ll. 13-17 (emphasis added).
1
This was essentially the district court’s claim construction embodied in its
Markman opinion, although we have compressed the court’s statements into a one
sentence construction. See Markman Opinion, slip op. at 13.
2
In the district court’s summary judgment order, it appears that the court
may have limited the term “trunnions” to solid projections (i.e., those that do not contain
a recess). While the term as construed in the Markman opinion was limited to some
type of projection, thereby excluding a pure recess, there is no subsequent limitation on
the projection such that it could not itself include a recess.
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As shown in Figure 9, projection 28 is a trunnion which contains a recess. Thus,
a construction of the term “trunnion” that excludes a projection containing a recess
would exclude projection 28 as shown in Figure 9. Third, as Sun Coast admits, “the
specification describes a recess as part of the projecting trunnion . . . .” (Pls.-Cross
Appellants’ Br. 48.) Therefore, there is no apparent reason to limit the term in a way
that would exclude the preferred embodiment. Accordingly, based on the claim
language and the disclosures in the specification, the term trunnion, although required
to contain a projection, is broad enough to include a projection with a recess, an
example of which is shown in Figure 9 of the preferred embodiment, and to the extent
that the district court may have applied a more limited construction of the term in its
summary judgment order, that application was erroneous.
b. “damping means”
Because we find that the district court erred in its infringement analysis of
whether the accused modified design calculator practices the “damping means
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arranged within at least one said cylindrical bore” limitation of claim 1, see infra Part
II.B.2.b., it becomes necessary for us to address the court’s claim construction of the
term “damping means.” The district court correctly determined that “damping means” is
a means-plus-function claim limitation. The district court erred, however, in identifying
the function of the “damping means,” as merely “restrain[ing], in a controlled manner,
the force of the helical spring when it is released.” Markman Opinion, slip op. at 15.
The language of claim 1, “biasing said lid toward a rearwardly pivoted position, and
effectuating a controlled pivotal motion of said lid structure . . . [,]” makes clear that
there are two functions of the “damping means”: (1) biasing the lid toward a rearwardly
pivoted position and (2) effectuating a controlled pivotal motion of the lid. Having
misconstrued the functions of the “damping means,” the district court also erred in
determining which structures are identified in the specification as performing those
functions. In two places, the specification discusses the structures involved with both
biasing and effectuating a controlled pivotal motion of the lid structure. In column 4, the
specification states,
[a]s shown in . . . FIGS. 8(a) through (c), a damping drum 70 . . . in
conjunction with the helical coil spring 62 form the lid mechanism 16 for
effectuating the pivoting movement of the lid structure 14 relative to the
housing 12. The assembly of the components of the lid mechanism 16
into the blind bore 40 so as to effectively facilitate the controlled damped
pivoting of the lid structure comprises inserting the helical coil spring 62
into the blind bore 40 . . . .
’085 patent, col. 4, ll. 48-60 (emphases added). This portion of the specification makes
clear that the damping drum 70 and the helical coil spring 62 bias and effectuate the
pivoting movement of the lid structure and that these structures are the components of
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the lid mechanism which facilitate the controlled damped pivoting of the lid structure. In
addition, the specification states that
[t]he rate of movement or speed in the rearward pivoting of the lid
structure 14 upon the release thereof is controlled by means of the
damping drum 70 and the damping grease 84 arranged thereabout in
contact with the inner surface of the blind bore 40 which, in essence,
forms a damping cylinder.
Id. at col. 5, ll. 44-49 (emphases added). This portion of the specification makes clear
that the damping drum 70 and the damping grease 84 control the rate of movement or
speed of the lid structure as it pivots rearward. Thus, reading these two portions of the
specification together compels the conclusion that the corresponding structures
identified in the specification for performing the functions of biasing the lid toward a
rearwardly pivoted position and effectuating a controlled pivotal motion of the lid are the
damping drum 70, the helical coil spring 62, and the damping grease 84.3
3
We note that the conclusion that the structure includes the helical coil
spring 62 does not violate the doctrine of claim differentiation, even though the district
court determined otherwise. Claim 3 explicitly claims “[a] calculator . . . wherein said
damping means comprises a helical coil spring . . . and a damping drum . . . .” ’085
patent, col. 7, ll. 33-36. Thus, claim 3 explicitly states that the “damping means”
includes a helical coil spring and a damping drum. If including the helical coil spring as
part of the structure for the “damping means” limitation in claim 1 violates the doctrine of
claim differentiation, then including the damping drum as part of that structure would do
so as well because it is also explicitly referenced in claim 3. Regardless, including the
spring and drum as part of the “damping means” structure does not violate the doctrine
of claim differentiation because claim 3 includes several limitations not present in claim
1 pertaining to the orientation and location of the spring and drum in relation to the blind
bore and each other.
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2. Literal Infringement
Because the district court’s summary judgment order separately discusses each
of the accused calculator designs, we have followed suit and continue to discuss each
design separately.
a. Original Design
In its summary judgment opinion, the district court concluded that the original
design calculators were missing at least two limitations of claim 1. First, the court found
that “the calculators do not have projections on the inner surface of both sides of the
housing about which the lid rotates.” Summary Judgment Order, slip op. at 10.
Second, in noting that the calculators do not have projections, the court also stated that
they “do not have flanges with hinge-forming trunnions (pins or pivots) that are distinct
components.” Id. Third, the court concluded by observing that the calculators “only
appear to have a single flange with an inwardly facing structural element.” Id.Literal infringement requires that each and every limitation set forth in a claim
appear in an accused product. Frank’s Casing Crew & Rental Tools, Inc. v.
Weatherford Int’l, Inc., 389 F.3d 1370, 1278 (Fed. Cir. 2004) (citing Becton Dickinson &
Co. v. C.R. Bard, Inc., 922 F.2d 792, 796 (Fed. Cir. 1990)). With regard to the district
court’s first finding, it is not entirely clear to us whether the court’s conclusion that the
original design calculators lacked projections on the inner surface of both sides of the
housing was based on the incorrect understanding that a trunnion could not consist of a
projection containing a recess. Because it appears that the district court’s finding may
have been based on that incorrect understanding, we are unable to discern on this
record whether this issue (i.e., the factual determination of whether the original design
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calculators include “trunnions” as that term has been construed by this panel) is
amenable to summary judgment or whether genuine issues of material fact remain as to
whether the original design calculators practice this claim limitation.
Second, the parties apparently agree that there is no prohibition on the trunnions
and flanges being formed as one integral piece. (See Pls.-Cross Appellants’ Br. 52.) It
appears that the district court’s comment about trunnions and flanges being “distinct
components” was not made in an attempt to further construe the claim terms, but rather
in response to submissions by CCL which purported to label the same structure as both
a flange and a trunnion. While there is no question that the trunnions and flanges must
be distinctly identifiable, it is also clear that they are related. For example, the trunnions
are identified in the specification as being parts of the flanges, “the housing 12 includes
a pair of upwardly extending flange elements 24, 26 at opposite sides thereof, each of
which includes a short inwardly extending trunnion-like projection 28, 30.” ’085 patent,
col. 4, ll. 9-13. Thus, if the district court meant this statement as a comment in response
to CCL’s submissions, namely that the trunnions and flanges be distinctly identifiable,
then we agree. If, on the other hand, the district court meant this statement to be
another limitation of the claim rather than a comment on CCL’s submissions, we find
that there is a genuine issue of material fact as to whether the flanges and trunnions in
the original design are distinctly identifiable so that summary judgment based on this
reason alone is not appropriate. Accordingly, at least some additional clarification is
required.
Third, the court also concluded that the original design “appears” to contain only
a single flange with an inwardly facing structural element or projection, whereas the
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claims require “a pair of flanges[,]” each of which containing a trunnion formed on the
inwardly facing surface. See, e.g., ’085 patent, col. 7, ll. 7-10. Even if we were to
accept the district court’s statement as a definitive finding that the original design
contains only a single flange with a trunnion, we must vacate the district court’s
conclusion as it is unclear whether the court applied an erroneous construction of the
“trunnions” term because the court has failed to set forth what, if any, structure the
original design calculators have on the other side of the housing. Thus, we cannot
determine in the first instance if whatever structure there may be qualifies as a trunnion.
Notably, we express no opinion with respect to whether summary judgment may
ultimately be appropriate in light of the clarified claim construction rulings and their
subsequent effect on the summary judgment order of the district court. We leave that
determination to the district court in the first instance after considering any subsequent
summary judgment briefing or argument by the parties that the court may deem
necessary. If genuine issues of material fact remain as to whether the original design
calculators posses each and every limitation of the claims, then the appropriate
conclusion is to deny summary judgment and let the facts be decided at trial.
b. Modified Design
In its summary judgment opinion, the district court concluded that the modified
design calculators are missing two of the limitations of claim 1. First, the court found
that “[t]he modified design does not have flanges with hinge-forming trunnions as
required by claim 1(a); instead there are protruding extensions on each end of the
covering portion’s cylindrical barrel that insert into recesses in the housing body.”
Summary Judgment Order, slip op. at 11. Second, the court found that the calculators
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do “not have the damping means arranged within one of the cylindrical bores of the lid
structure. Rather, the damping means is primarily located within the housing.” Id.First, because the district court’s conclusion with respect to the trunnion limitation
may be affected by our clarified claim construction, we vacate the court’s finding of
summary judgment of noninfringement with respect to this term. Second, the district
court found that the “damping means” in the modified design calculators was not
arranged within one of the cylindrical bores of the lid structure. Thus, as the parties
have argued, the court was apparently focused on the term “within.” The difficulty we
have in reviewing the district court’s finding regarding this term is not necessarily the
finding itself, but rather the court’s analysis which led to its finding. This is so because
the full term in context is “a lid operating mechanism including damping means arranged
within at least one said cylindrical bore . . . .” ’085 patent, col. 7, ll. 19-20 (emphasis
added). As previously discussed, the “damping means” limitation is a 35 U.S.C. § 112,
¶ 6 limitation, whose functions are to bias the lid toward a rearwardly pivoted position
and effectuate a controlled pivotal motion of the lid. See supra Part II.B.1.b.
Additionally, as we have clarified, the corresponding structures are the damping drum
70, the helical coil spring 62, and the damping grease 84. Id.
“Literal infringement of a § 112, ¶ 6 limitation requires that the relevant structure
in the accused device perform the identical function recited in the claim and be identical
or equivalent to the corresponding structure in the specification.” Frank’s Casing, 389
F.3d at 1378 (quoting Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed.
Cir. 1999)). To determine whether a § 112, ¶ 6 limitation is literally infringed, “the court
must compare the accused structure with the disclosed structure, and must find
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equivalent structure as well as identity of claimed function for the structure.” Id.
(emphasis altered) (citation omitted). Although we recognize that the district court was
not purporting to find that the modified design calculators lacked the “damping means”
itself, the district court did not identify which structure(s) of the modified design
calculators, if any, performs the claimed function of the “damping means.” It is therefore
impossible, on the record before us, to determine whether that yet identified structure is
“arranged within at least one said cylindrical bore” as required by the claim or whether
the district court correctly held on summary judgment that no genuine issue of material
fact exists as to whether the modified design calculators satisfy this claim limitation.
We further note that what appears to be relevant to this inquiry is whether the
structure, yet to be identified in the modified design calculators, performs the biasing
and effectuating a controlled pivotal motion functions “within at least one said cylindrical
bore.” Thus, if the relevant structure in the accused calculators is partially arranged
within the bore, the appropriate inquiry seems to be whether that portion arranged within
the bore is involved in performing the identified functions (i.e., biasing the lid toward a
rearwardly pivoted position and effectuating a controlled pivotal motion of the lid).
Accordingly, the court’s finding of summary judgment of noninfringement with respect to
the modified design calculators must be vacated.
Again, we express no opinion with respect to whether summary judgment may
ultimately be appropriate in light of the clarified claim construction rulings and the court’s
conclusions with respect to the § 112, ¶ 6 issue discussed above. We leave that
determination to the district court in the first instance after considering any subsequent
summary judgment briefing or argument by the parties that the court may deem
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necessary. If genuine issues of material fact remain as to whether the modified design
calculators posses each and every limitation of the claims, then the appropriate
conclusion is to deny summary judgment and let the facts be decided at trial.
c. Double Flipper
In its summary judgment opinion, the district court concluded that the double
flipper was noninfringing for the same reasons it found that the modified design
calculators were noninfringing. Additionally, the court found that
[b]ecause there are two closing layers in the double flipper, the lid
structure does not cover the display panel in the closed position, nor does
it expose the display panel when opened. Instead, when the lid structure
covering the display is opened, the second portion of the housing covers
the display panel (this second portion of the housing then opens.)
Summary Judgment Order, slip op. at 11.
On appeal, CCL argues that the district court impermissibly construed the claim
term to require that the lid “directly” cover and alternatively, “directly” expose the display
panel. CCL asserts that the presence of an intervening structure does not affect the
covering and exposing functions of the lid.
We disagree. The claim language requires that the lid pivot “between the closed
position thereof covering said display panel and the rearwardly pivoted position
exposing said display panel and forming a stand for supporting said calculator in a tilted
position on a horizontal surface.” ’085 patent, col. 7, ll. 22-26 (emphasis added).
Regardless of whether the lid in the double flipper covers the display panel in the closed
position, the district court correctly concluded that when the lid structure opens (i.e.,
moves toward the rearwardly pivoted position), the display panel is not exposed
because a second portion of the housing still covers the display. This finding, that the
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double flipper lacks a lid structure which exposes the display panel in the rearwardly
pivoted position, permits an affirmance of summary judgment of non-infringement
because each and every limitation of the claim (i.e., the covering and exposing
limitations) does not appear in the double-flipper. See Frank’s Casing, 389 F.3d at
1278.
3. Infringement Under the Doctrine of Equivalents
While the district court’s examination of the accused calculators and the court’s
findings of infringement were in the context of literal infringement, the court also found
that CCL failed to
produce evidence of the equivalency of Sun Coast’s products and the
limitations of claim 1. . . . [such that] [t]here is no question of fact here as
there has been no evidence presented to the Court of any infringement by
an equivalent to the cited claim elements. . . . on which a reasonable jury
could base a finding of equivalence.
Summary Judgment Order, slip op. at 8 n.5. The court had no reason to formulate its
own possible theories of infringement under the doctrine of equivalents when CCL had
failed to offer any evidence supporting such a finding. Sun Coast clearly asserted that
CCL failed to offer any evidence on infringement under the doctrine of equivalents in its
motion for partial summary judgment. Thus, the issue was squarely raised before CCL
submitted its opposition brief. Accordingly, there was no obligation for the district court
to provide CCL a further opportunity to supplement the record when it failed to present
evidence of infringement under the doctrine of equivalents in its brief in opposition to
Sun Coast’s summary judgment motion. Further, the district court clarified that it “did
not rely on either . . . [the Ram or Bhavnani] declarations in making its findings[,]”
contrary to CCL’s assertion that the court improperly relied upon statements made in
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declarations attached to Sun Coast’s reply brief. Summary Judgment Order, slip op. at
9 n.6. Therefore, there was no obligation for the court to consider evidence (e.g.,
Chan’s declaration) that CCL only first presented in its response to the court’s minute
order. As such, we do not disturb the court’s findings with respect to infringement under
the doctrine of equivalents.
4. Cross-Appeal
Sun Coast’s cross-appeal challenges the district court’s denial of attorney fees.
Specifically, Sun Coast asserts that the district court committed clear error by not finding
that this case was “exceptional” under 35 U.S.C. § 285; and abused its discretion by (1)
refusing to award fees to Sun Coast under § 285, (2) alternatively not awarding fees
under 28 U.S.C. § 1927, and (3) alternatively not awarding fees under its inherent
powers. CCL asserts in response that the district court’s finding that this case was not
exceptional is not clearly erroneous, and that Sun Coast has failed to show that the
court abused its discretion in failing to award attorney fees.
We detect no clear error or abuse of discretion in the district court’s denial of Sun
Coast’s motion for attorney fees. First, under 35 U.S.C. § 285, the court found that Sun
Coast failed to establish by clear and convincing evidence actual wrongful intent or
gross negligence by CCL. Although the district court acknowledged that CCL
committed numerous violations of the local rules, and an unjustified number of ex parte
applications, its conduct did not rise to the level of gross negligence or bad faith and
vexatious litigation. “Taken in its totality, the record does not demonstrate with
convincing clarity the egregiousness of CCL’s counsel’s conduct or a bad faith and
vexatious multiplication of proceedings.” Attorney Fees Order, slip op. at 2. Second,
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the court similarly rejected Sun Coast’s argument for fees under 28 U.S.C. § 1927because the court found that CCL’s counsel had not multiplied the proceedings
unreasonably and vexatiously, and found that any protracted proceedings were equally
attributable to Sun Coast’s failure to identify all the calculators at issue in its motion for
summary judgment. Lastly, the court rejected Sun Coast’s argument for fees under the
court’s inherent powers because it found that the conduct of CCL and its counsel was
not sufficiently egregious to warrant sanctions.
The district court judge is in the best position, after presiding over the preparation
and trial of the case, to “weigh the relevant considerations, such as the closeness of the
case, the tactics of counsel, the flagrant or good faith character of the parties’ conduct,
and any other factors contributing to imposition of punitive sanctions or to fair allocation
of the burdens of litigation.” Frank’s Casing, 389 F.3d at 1379 (citations omitted);
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1380-81 (Fed. Cir. 2005). The court
fully considered Sun Coast’s arguments but found that CCL and its counsel’s conduct
was not so egregious as to warrant an award of attorney fees. We can discern no clear
error in the district court’s factual findings, nor any abuse of discretion in the court’s
ultimate denial of attorney fees.
III. CONCLUSION
Because we have clarified the construction of “trunnions” and “damping means”,
and several issues remain to be addressed by the district court, we remand for the
district court to determine whether Sun Coast’s original and modified designs literally
infringe the asserted claims of the ’085 patent. These clarifications, however, do not
affect the district court’s ultimate conclusion with respect to Sun Coast’s Calc-0050
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model because the court’s decision relied upon the lack of the “covering” and “exposing”
limitations, which we have not altered in such a way to create genuine issues of material
fact with respect to whether the Calc-0050 infringes claim 1 of the ’085 patent.
Accordingly, we vacate the summary judgment findings with respect to literal
infringement of the original and modified designs, affirm both the summary judgment
findings of noninfringement with respect to literal infringement of the Calc-0050 model
and noninfringement under the doctrine of equivalents of all calculator models at issue,
affirm the district court’s denial of attorney fees, and remand for further proceedings
consistent with this opinion.
Each party shall bear its own costs.
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