Mas-Hamilton Group v. LaGard, Inc.

• Decision Date: 10 September 1998
• Docket Number: Nos. 97-1530,MAS-HAMILTON,97-1546,s. 97-1530
• Citation: 156 F.3d 1206,48 USPQ2d 1010
• Parties: GROUP, Plaintiff Cross-Appellant, v. LaGARD, INC., (now known as Masco Corporation) Defendant-Appellant, and Hi-Shear Technology Corporation, Defendant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1206

156 F.3d 1206

48 U.S.P.Q.2d 1010

MAS-HAMILTON GROUP, Plaintiff Cross-Appellant, v. LaGARD, INC., (now known as Masco Corporation) Defendant-Appellant, and Hi-Shear Technology Corporation, Defendant.

Nos. 97-1530, 97-1546.

United States Court of Appeals,

Federal Circuit.

Sept. 10, 1998.

David E. Schmit, Frost & Jacobs LLP, Cincinnati, Ohio, argued for plaintiff cross-appellant.

Christopher Darrow, Oppenheimer Wolff & Donnelly LLP, Los Angeles, California, argued for defendant-appellant. With him on the brief were Michael D. Harris and Guy Porter Smith.

Before MICHEL, PLAGER, and GAJARSA, Circuit Judges.

MICHEL, Circuit Judge.

Declaratory judgment defendant-appellant, La Gard, Inc. ("La Gard"), appeals the decision of the United Stated District Court for the Eastern District of Kentucky holding after a bench trial that United States Patent No. 5,307,656 (the " '656 patent") was not shown infringed by declaratory-plaintiff/cross-appellant Mas-Hamilton Group's ("Mas-Hamilton's") X-07 lock. See Mas-Hamilton v. La Gard, Inc., No. 94-349, slip op. at 74, 1997 WL 1042597, 21 F.Supp.2d 700 (E.D.Ky. Mar. 5, 1997). Mas-Hamilton, the purported infringer, cross-appeals the district court's determination that the '656 patent is not invalid. Because we hold that

the district court did not clearly err in determining that the accused X-07 lock does not infringe the asserted claims of the '656 patent and that the district court did not err in determining that the '656 patent is not invalid, we affirm on both the appeal and cross-appeal.

BACKGROUND

The '656 patent is entitled: "High Security Electronic Dial Combination Lock." Figure 1 from the patent has been reproduced below, and description of the disclosed lock will be made with reference to this figure. The electronic combination lock 20 includes a locking mechanism or bolt 36 for operating between a locked condition and an unlocked condition, a rotatable cam wheel 47 having a circumferential surface portion defining a slot 88 such that the rotation of the cam wheel moves the slot, and a movable lever 46 coupled to the locking mechanism for changing the condition between locked and unlocked. The movable lever can be pivoted out of engagement with the cam wheel. When the movable lever engages the cam wheel, rotation of the cam wheel changes the condition of the locking mechanism. A cantilever arm 52 and detent 54 on the lever releasably maintain the lever in a position disengaged from the cam wheel. A solenoid ¹ and projectable detent 96 move the lever from its disengaged position to a position engaging the cam wheel thus changing the locking mechanism from the locked condition to the unlocked condition. '656 pat., col. 7, l. 4--col. 8, l. 24.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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The accused Mas-Hamilton X-07 lock also utilizes, inter alia, a cam wheel including a slot, a movable lever and a cantilever arm. The X-07 lock, however, uses a stepper motor instead of a solenoid to provide power to rotate a partial gear through a complex series of intervening rotatable and pivotable cam members to cause a vertical translation of a slide member to move the lever.

In August 1994, La Gard charged Mas-Hamilton's X-07 lock with infringing the '656 We hold that the district court did not clearly err in its noninfringement determination because the accused X-07 lock lacks the "lever operating means" required in asserted claims 1, 3 and 31, and the "movable link member" required in asserted claims 34 and 43. We therefore affirm the district court's finding of no infringement of the '656 patent. Further, because the district court did not err in determining that none of Mas-Hamilton's invalidity theories was proven meritorious, we also affirm the district court's holding that the '656 patent is not invalid.

patent. In September 1994, Mas-Hamilton sought declaratory judgment that the accused lock does not infringe the '656 patent. La Gard counterclaimed for infringement of the '656 patent in July 1995, and in response, Mas-Hamilton asserted affirmative defenses that the '656 patent is invalid and not infringed. In February 1997, the case was tried to the court, and in a seventy-six page opinion, the district court held the '656 patent not infringed and not invalid. La Gard appeals the determination of no infringement with respect to asserted claims 1, 3, 31, 34, and 43, and Mas-Hamilton cross-appeals the determination that the patent-in-suit is not invalid. This appeal was submitted for our decision following oral argument on July 1, 1998.

DISCUSSION

I. Jurisdiction

Before discussing the merits of this appeal, we must first rule on Mas-Hamilton's pending motion to dismiss the appeal for lack of jurisdiction.

Mas-Hamilton argues that this court lacks jurisdiction over the present appeal because La Gard and Masco Corp. ("Masco") (La Gard's successor-in-interest to the patent-in-suit) each lack sufficient ownership interest in the '656 patent to confer standing. According to Mas-Hamilton, the assignment of title in the '656 patent was silent with respect to the right to sue for past infringement; consequently, only the owner of the patent at the time of the infringement can bring an action for damages resulting from that infringement. Mas-Hamilton asserts, therefore, that La Gard does not have standing to pursue the appeal because it no longer retains an interest in the '656 patent, and Masco lacks standing because, although it currently owns title to the '656 patent, it did not have title at the time the alleged infringement took place because La Gard did.

Mas-Hamilton relies on Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 43 S.Ct. 254, 67 L.Ed. 516 (1923), Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 45 USPQ2d 1368 (Fed.Cir.1998), and Arachnid, Inc. v. Merit Industries, Inc., 939 F.2d 1574, 19 USPQ2d 1513 (Fed.Cir.1991), for the proposition that only the holder of legal title to a patent at the time of the infringement can bring an action for damages resulting from that infringement. Although that proposition is true, it is not at issue in this appeal. Further, in each of the cases relied upon by Mas-Hamilton, the party asserting infringement was a mere licensee at the time the lawsuit was filed, and the patentee was not originally joined. See e.g., Crown Die, 261 U.S. at 39, 43 S.Ct. 254.

In the instant case, when Mas-Hamilton filed its declaratory judgment action against La Gard, La Gard was the owner of the '656 patent. Title to the patent was not transferred until October 21, 1997, after the present appeal was filed. Hence, as required by the above-cited cases, the holder of title to the patent at the time of the infringement brought the action. Further, there is no dispute that Masco is the assignee of the '656 patent and not a mere licensee.

In Arachnid, the court repeated the warnings of Supreme Court cases:

[t]he exception [to the rule that the plaintiff must be the person in whom title to the patent resided at the time of the infringement] is where the assignment of a patent is coupled with an assignment of a right of action for past infringements. The authorities are uniform that the latter assignment must be express, and cannot be inferred from the assignment of the patent itself.

Arachnid, 939 F.2d at 1579 n. 7, 19 USPQ2d at 1519 n. 7. Here, although the original assignment transferred "the entire right, title and interest to" the '656 patent, it did not specify that the right to sue for past infringement While it is true that in Enzo, we held that "nunc pro tunc assignments are not sufficient to confer retroactive standing," 134 F.3d at 1093, 45 USPQ2d at 1371 (emphasis added), that is not the scenario here. In the case at bar, standing was not deficient at the time the suit was filed, nor at the time that the appeal was filed. Hence operation of the supplemental assignment specifying the grant of the right to sue for past infringement is not being used to cure deficient standing.

was also included. However, on June 1, 1998, La Gard executed a supplementary assignment in which it confirmed "nunc pro tunc, that Masco has the right to sue for past infringement since its merger with La Gard."

Further, in Enzo, this court had to determine whether an oral exclusive license in combination with a later nunc pro tunc written license could confer standing without the holder of the title being joined. We held that it could not. See Enzo, 134 F.3d at 1093, 45 USPQ2d at 1370-71. In the instant case, by contrast, the original assignment was written, and La Gard is not a separate entity from Masco because after the trial, La Gard merged with Masco and is now a division of Masco. Hence, we hold that standing was not, and is not, lacking on the part of either La Gard or Masco in this appeal. We, therefore, have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994), and Mas-Hamilton's motion to dismiss for lack of jurisdiction is denied.

II. Infringement

A patent infringement analysis involves two steps. First, the court determines the scope and meaning of the asserted claims. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372-74, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claim construction is a question of law, reviewed non-deferentially on appeal. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed.Cir.1998) (in banc ) (holding "we review claim construction de novo on appeal"). Second, the properly construed claims are compared to the allegedly infringing device. See Read Corp. v. Portec, Inc., 970 F.2d 816, 821, 23 USPQ2d 1426, 1431 (Fed.Cir.1992). This court reviews a trial court's factual infringement determination for clear error. See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 936, 4 USPQ2d 1737, 1740 (Fed.Cir.1987) (in banc ).

Claim limitations drafted pursuant to 35 U.S.C. § 112, p 6 are termed means-plus-function limitations. Section...