15 F.3d 1573 (Fed. Cir. 1993), 93-1018, Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.

Docket Nº:93-1018, 93-1034.
Citation:15 F.3d 1573
Party Name:27 U.S.P.Q.2d 1836 CARROLL TOUCH, INC., Plaintiff-Appellant, v. ELECTRO MECHANICAL SYSTEMS, INC., Defendant/Cross-Appellant.
Case Date:August 24, 1993
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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15 F.3d 1573 (Fed. Cir. 1993)

27 U.S.P.Q.2d 1836

CARROLL TOUCH, INC., Plaintiff-Appellant,


ELECTRO MECHANICAL SYSTEMS, INC., Defendant/Cross-Appellant.

Nos. 93-1018, 93-1034.

United States Court of Appeals, Federal Circuit

August 24, 1993 [*]

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[Copyrighted Material Omitted]

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James B. Blanchard, William Brinks Olds Hofer Gilson & Lione, of Chicago, Illinois, argued for plaintiff-appellant. With him on the brief were Richard A. Kaplan, Harold V. Johnson and Leif R. Sigmond, Jr.

Wayne E. Babler, Jr., Quarles & Brady, Milwaukee, Wisconsin, argued for defendant/cross-appellant. With him on the brief were Jeffrey O. Davis and Keith M. Baxter.

Before NIES, Chief Judge, RICH and LOURIE, Circuit Judges.

LOURIE, Circuit Judge.

Carroll Touch, Inc. appeals from the judgment of the United States District Court for the Central District of Illinois holding that Electro Mechanical Systems, Inc. (EMS) did not infringe claim 24 of U.S. Patent 4,267,443 and that the '443 patent is invalid. Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 24 USPQ2d 1349, 1992 WL 361702 (C.D.Ill.1992) (memorandum opinion). EMS cross appeals from the order of the district court granting summary judgment in favor of Carroll Touch on EMS' counterclaims alleging violations of federal antitrust and state unfair competition laws. Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., No. 87-2272 (C.D.Ill. May 1, 1992). We affirm-in-part and vacate-in-part.


Carroll Touch is the assignee of U.S. Patent 4,267,443 to Arthur B. Carroll, Vladeta D. Lazarevich, and Mark R. Gardner, entitled "Photoelectric Input Apparatus." The claims of the '443 patent are directed to a photoelectric "touch input panel" for use over a computer's display device (e.g., a cathode-ray tube) which enables a user to communicate with the computer by touching a location on the display screen that corresponds to a desired operation. The claimed invention uses a scanning infrared system that consists of a frame containing circuitry that generates a grid of infrared light beams. The grid is defined by two separate arrays of beams: an "X-beam array" composed of a set of parallel beams oriented along the horizontal or X-axis of the frame and a "Y-beam array" composed of a set of parallel beams oriented along the frame's vertical or Y-axis.

Communication with a computer equipped with the claimed invention is achieved by touching a function or command displayed on the screen with an object such as the user's finger. The location of that touch is identified in terms of the grid coordinates defined by the horizontal and vertical beams that are interrupted by the object. Information pertaining to the location of the object is then

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inputted to the computer, which subsequently executes an action responsive to the selected function or command.

In 1975, Arthur Carroll founded Carroll Manufacturing Company, later known as Carroll Touch, Inc., which was engaged in the business of designing and assembling touch input panels. Carroll was joined by Vladeta Lazarevich later that same year. In 1978, a patent application for a photoelectric touch input device was filed in the U.S. Patent and Trademark Office (PTO), ultimately issuing as the '443 patent, which named Carroll and Lazarevich as coinventors. Lazarevich left Carroll Touch in 1979 to start his own company, EMS, which competed against Carroll Touch in the touch input panel market. In 1980, Lazarevich was sued by Carroll Touch in state court for breach of his employment contract. Judgment was rendered in favor of Lazarevich.

On May 11, 1987, Carroll Touch filed a complaint alleging infringement of the '443 patent by EMS. EMS answered by denying infringement and alleging patent invalidity. It also filed counterclaims alleging that Carroll Touch, in bringing its infringement suit, engaged in an anticompetitive scheme to restrain trade and committed acts of unfair competition and abuse of process. 1 Additionally, EMS counterclaimed for a judgment declaring the '443 patent invalid and not infringed.

The district court severed the antitrust counterclaims and a bench trial was conducted on the patent infringement claim in September 1991. Although Carroll Touch originally alleged infringement of claims 1-3, 16, and 20-25 when it filed suit, only dependent claim 24 was asserted at trial. The district court found that claim 24 was not infringed literally or under the doctrine of equivalents because the light beams of the accused EMS devices intersected and thus were not "spaced apart" as was required by claim 1, from which claim 24 depends. Further, the court held that the entire '443 patent was invalid under 35 U.S.C. Secs. 102, 103 (1988). In so concluding, the court rejected Carroll Touch's argument that EMS should be estopped under the doctrine of assignor estoppel from challenging the validity of the '443 patent.


  1. Patent Infringement

    On appeal, Carroll Touch argues that the district court clearly erred in finding that the accused EMS devices did not infringe claim 24 of the '443 patent and that it erred in holding that the patent was invalid. We first address the issue of infringement.

    The law is well established that the determination whether a 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. Read Corp. v. Portec, Inc., 970 F.2d 816, 821, 23 USPQ2d 1426, 1431 (Fed.Cir.1992); ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1578, 6 USPQ2d 1557, 1559 (Fed.Cir.1988). A claim covers an accused device if the device embodies every limitation of the claim, either literally or by an equivalent. Read, 970 F.2d at 822, 23 USPQ2d at 1431.

    Although claim 24 was the only claim asserted at trial, it is dependent on claim 23, which in turn is dependent on claim 16, which in turn is dependent on independent claim 1. Thus, in addressing whether claim 24 was infringed by the accused EMS products, we must consider whether claim 1 was infringed. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553, 10 USPQ2d 1201, 1208 (Fed.Cir.1989) ("It is axiomatic that dependent claims cannot be found infringed unless the claims from which they depend have been found to be infringed[.]").

    The district court's finding of noninfringement turned on its interpretation of the term "spaced apart" found in a means-plus-function limitation 2 of claim 1. That limitation recites

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    means for mounting said light sources and said photosensitive device on said housing to produce said sets of beams in two separate surfaces, spaced apart along the direction normal to the plane of said opening, counting means for each of said sets for counting a number of interrupted beams in each set, and means for producing output signals indicating the number counted by each counter. [Emphasis added.]

    At trial, the court heard expert testimony presented by both parties regarding whether the accused devices met that limitation. The court rejected the testimony of Carroll Touch's witnesses who testified that although the light beams of the accused devices intersected, they were nevertheless "spaced apart" within the meaning of claim 1. The court concluded that "the light beams intersect and therefore are not spaced apart as required by the patent," 24 USPQ2d at 1352, and accordingly found no literal infringement. Similarly, the district court found that the accused devices did not infringe claim 24 under the doctrine of equivalents. 3

    Carroll Touch argues that the court erred in construing the claim limitation to require that the beam surfaces (i.e., the X-beam and Y-beam arrays) be totally spaced apart, with no intersection. It does not dispute that the EMS devices all have beam surfaces which intersect to varying degrees and that the EMS device that uses coplanar beam surfaces having total surface intersection does not infringe the '443 patent. However, Carroll Touch contends that the devices that use curved beam arrays are within the claim limitation because such devices have beam surfaces that are spaced apart for most of their respective surface areas.

    Claim construction is a question of law which we review de novo. See ZMI, 844 F.2d at 1578, 6 USPQ2d at 1559; Johnston v. IVAC Corp., 885 F.2d 1574, 1579, 12 USPQ2d 1382, 1385 (Fed.Cir.1989). "In defining the meaning of key terms in a claim, reference may be had to the specification, the prosecution history, prior art, and other claims." Minnesota Mining and Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1566, 24 USPQ2d 1321, 1327 (Fed.Cir.1992). Moreover, the words of a claim are generally given their ordinary and accustomed meaning, unless it appears from the specification or the file history that they were used differently by the inventor. See Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387, 21 USPQ2d 1383, 1386 (Fed.Cir.1992).

    In particular, Carroll Touch maintains that the claimed invention contemplates use of curved beam surfaces that are positioned as closely as possible to the display surface to eliminate an optical phenomenon known as parallax 4 and that some intersection between the beam surfaces must occur when they are so situated. It thus contends that the term "spaced apart" allows for some intersection of the beam surfaces. In support of that contention, Carroll Touch refers to portions of the specification that purportedly disclose embodiments of the invention having beam surfaces which are curved to conform to the curved display surface and hence intersect.

    We look to the specification for assistance in construing a claim. Although the specification of the '443 patent discloses the use of curved beam surfaces, it does not teach that the space between the beam...

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