Serrano v. Telular Corp.

• Decision Date: 25 April 1997
• Docket Number: No. 96-1308,96-1308
• Citation: 42 USPQ2d 1538,111 F.3d 1578
• Parties: Arthur L. SERRANO and Andrew W. Holman, Plaintiffs-Appellants, v. TELULAR CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1578

111 F.3d 1578

42 U.S.P.Q.2d 1538

Arthur L. SERRANO and Andrew W. Holman, Plaintiffs-Appellants, v. TELULAR CORPORATION, Defendant-Appellee.

No. 96-1308.

United States Court of Appeals Federal Circuit.

April 25, 1997.

Michael J. Emling, Long Beach, California, argued for plaintiffs-appellants. Of counsel was Philip H. Haymond.

Stephen J. Cassin, Hamman & Benn, Chicago, Illinois, argued for defendant-appellee. With him on the brief were Marvin N. Benn and Dawn M. Cassie.

Before MAYER, LOURIE, and CLEVENGER, Circuit Judges.

Opinion for the court filed by Circuit Judge LOURIE. Concurring opinion filed by Circuit Judge MAYER.

LOURIE, Circuit Judge.

Arthur L. Serrano and Andrew W. Holman (collectively "Serrano") appeal from the summary judgment of the United States District Court for the Central District of California that U.S. Patents 4,775,997 and 4,922,517 were infringed by Serrano. Serrano v. Telular Corp., No. 94-CV-1272 (C.D.Cal. July 17, 1995). They also appeal from the court's rulings granting Telular Corporation's motion to strike Serrano's motion for reconsideration and granting Telular's petition for attorney fees. Serrano v. Telular Corp., No. 94-CV-1272 (C.D.Cal. Feb. 9, 1996) (order granting Telular's petition for attorney fees); Serrano v. Telular Corp., No. 94-CV-1272 (C.D.Cal. Nov. 17, 1995) (order granting Telular's motion to strike). Because the district court did not err in its judgment concerning infringement, and did not abuse its discretion by granting the motion to strike and the petition for attorney fees, we affirm.

BACKGROUND

Telular owns the '997 and '517 patents, both of which issued from continuations of the application that led to U.S. Patent 4,658,096. They contain essentially the same disclosure. The patents concern a method and apparatus for interfacing a communications device such as a standard rotary dial telephone, touch-tone telephone, or modem with a radio transceiver such as a cellular telephone. The invention receives tone-dial or pulse-dial inputs from the standard telephone and converts them into a serial data stream for storage in the radio transceiver and for subsequent transmission. The apparatus automatically determines when the last digit is dialed from the telephone and in response provides a send signal to the transceiver. The '517 patent claims an apparatus, claim 1 reading in part as follows:

1. A system for interfacing a telephone communications-type device which is capable of providing touch-tone/rotary dial-type telephone signals with a cellular radio transceiver used in a telephone communication system wherein the cellular transceiver is capable of radio communication with a remote cellular radio transmitter-receiver system that is part of a telephone network, wherein the system comprises:

. . . . .

determination-means coupled with the telephone number digital conversion means for automatically determining the last digit of the group of telephone digits provided at the transceiver coupling means; and

send signal means coupled with said determination means for providing a send signal to the cellular transceiver in response to said determination means' determination that the last digit of the telephone number has been input.

The '997 patent claims a method, claim 1 of that patent reading in part as follows:

1. A method of interfacing a telephone communications-type device which is capable of providing a touch-tone/rotary dial-type telephone signal with a radio transceiver used in a telephone communication system wherein the transceiver is capable of radio communication with a remote radio transmitter-receiver system that is part of a telephone network, said method comprising:

. . . . .

said step of coupling further comprising automatically determining at least the last-dialed number of the telephone number dialed on the telephone communications-type device; and

sending each digitally-converted number formed by said step of converting to the transceiver for subsequent transmittal.

As support for the "determination means" and the "determining" step, the specification discloses a preferred embodiment using digit analysis, which involves analyzing the first few digits of a telephone number to determine how many digits will be dialed. For example, if the first digit is a 1 and the third digit is a 1 or 0, typically the middle digit of an area code, the system assumes that the call is an out-of-area long distance call and it allows eleven digits to be dialed before initiating a send signal. After analyzing the first few digits of the call to determine how many Serrano sold products known as the DialJack and MiniDial devices, which used a microprocessor-based system to interface a standard telephone with a radio transceiver. There are three types of devices in question. The MiniDial version I and DialJack devices generated a send signal at the expiration of a four-second timer that began with the entry of any digit. The MiniDial version II devices generated a send signal at the expiration of a timer triggered by an off-hook condition. The Motorola-configured MiniDial device transmitted digits to a particular type of Motorola telephone as the digits were dialed and converted.

digits will be dialed, the system uses a digit counter to determine when the last digit is dialed. The specification also discloses that in international dialing, in a call prefixed by the numbers "011," one cannot assume that a predetermined number of digits will be dialed. In that case, the system uses a timing operation to determine when the last digit is dialed. In particular, it generates a send signal when a three-second gap is detected after a digit is dialed. Both the digit analysis and time-out feature are disclosed as being implemented in discrete logic circuitry.

Telular notified Serrano that it believed that the DialJack and MiniDial devices infringed the '997 and '517 patents. In response, Serrano filed a declaratory judgment action against Telular, seeking a determination of invalidity, noninfringement, and unenforceability of the patents. Telular counterclaimed for infringement. In a summary judgment, the district court construed the "determination means" limitation to include both the use of digit analysis and a time-out feature, finding that the specifications disclose circuitry for performing digit analysis and a timer for a time-out determination. The court also found that the patentees did not limit the claimed invention during prosecution of the patent applications to exclude the use of a time-out feature to determine the end of dialing. In addition, the court found that the specification encompasses use of a microprocessor in addition to the disclosed discrete logic circuitry.

The court thus concluded that the DialJack device and the MiniDial version I and II devices literally infringed the asserted claims. With respect to the Motorola-configured MiniDial device, the court found that the specification indicates that the inventors contemplated that certain features of the device could be placed in the transceiver, as is the case with the Motorola telephone. Hence, the court concluded that those devices infringed claim 1 of the '997 patent. The court also found that the infringement was willful, based upon evidence of Serrano's having copied the patented invention and having done so without an opinion of invalidity or noninfringement.

Serrano moved for reconsideration, alleging in his motion that the patents are invalid based upon newly discovered evidence. In opposition, Telular filed a motion to strike Serrano's motion. The court granted the motion to strike and it also granted Telular's petition for attorney fees. After deciding on summary judgment in favor of Telular on liability, the district court made findings of fact and arrived at conclusions of law concerning other issues not on appeal. The parties stipulated to the amount of damages as compensation for the infringement and the court entered final judgment. Serrano now appeals to this court.

DISCUSSION

Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77, 12 USPQ2d 1382, 1383 (Fed.Cir.1989). Thus, summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the nonmovant. Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274, 35 USPQ2d 1035, 1038 (Fed.Cir.1995). We review de novo a district court's grant of summary judgment. Conroy v. Reebok

Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994).

A. Infringement

Determining whether a patent claim has been infringed requires a two-step analysis: "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 Mechanical Sys., Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839 (Fed.Cir.1993). Claim construction is a question of law, which we review de novo. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir.1995) (in banc), aff'd, --- U.S. ----, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996).

Claims 1-4 of the '997 patent and claim 1 of the '517 patent are now before us on appeal. Serrano argues that the district court misconstrued the claims. He argues that the "determination" and "determining" limitations of the claims are not met by the accused DialJack device and the MiniDial version I and II devices. According to Serrano, the "determination...