200 F.3d 795 (Fed. Cir. 1999), 98-1303, Vivid Tech. v American Science

Docket Nº:98-1303
Citation:200 F.3d 795
Party Name:VIVID TECHNOLOGIES, INC., Plaintiff-Appellee, v. AMERICAN SCIENCE & ENGINEERING, INC., Defendant-Appellant.
Case Date:December 29, 1999
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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200 F.3d 795 (Fed. Cir. 1999)

VIVID TECHNOLOGIES, INC., Plaintiff-Appellee,




United States Court of Appeals, Federal Circuit

December 29, 1999

Appealed from: United States District Court for the District of Massachusetts Judge Robert E. Keeton

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Ivan S. Kavrukov, Cooper & Dunham LLP, of New York, New York; and Kenneth R. Berman, Sherin and Lodgen LLP, of Boston, Massachusetts, argued for plaintiff-appellee. Of counsel on the brief was Wendy E. Miller, Cooper & Dunham LLP.

Gary R. Greenberg, Goldstein & Manello, P.C., of Boston, Massachusetts, argued for defendant-appellant. With him on the brief was Louis J. Scerra, Jr.

Before NEWMAN, LOURIE, and SCHALL, Circuit Judges.

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NEWMAN, Circuit Judge.

In this declaratory judgment action brought by Vivid Technologies, Inc., the United States District Court for the District of Massachusetts held on summary judgment that Vivid's X-ray device did not literally infringe United States Patent No. 5,253,283 (the '283 patent) owned by American Science and Engineering, Inc. (AS&E). AS&E asserts that the district court's claim construction was incorrect, and that the summary judgment of non-infringement, including the denial of all discovery, was based on harmful procedural error as well as incorrect in law.

We affirm the district court's claim construction, vacate the summary judgment, and remand for appropriate further proceedings.


X-ray machines for security purposes, adapted to the detection of threat items such as weapons and explosives, are widely used in airports and other secured places. Such machines operate by way of a source of X-ray radiation, one or more detectors of the radiation response, and a display system. When an item to be examined is placed in the radiation path the contents attenuate (partially block), and scatter (deflect) the radiation, to varying degrees.

Transmitted radiation is radiation that travels in a straight path from the X-ray source to the detector. X-rays that an item scatters at angles of greater than ninety degrees with respect to the original direction of travel are called backscatter, and X-rays that an item scatters at angles of less than ninety degrees with respect to the original direction of travel are called forward scatter. The detectors receive these radiation responses, from which images of the contents are produced, generally with the aid of a computer, and displayed on a screen in patterns of light composed of pixels. Pixels are dot-like components that emit light of varying intensities. Threat materials with high atomic numbers, such as metal weapons, tend to attenuate more radiation than they scatter, while threat materials with low atomic numbers, such as plastic explosives, tend to scatter more radiation than they attenuate. Thus enhanced detection is obtained from X-ray responses to both transmitted radiation and scattered radiation.

As discussed in the '283 patent, it was known to use both transmitted and scattered X-ray radiation in detection devices. However, the images produced by prior art devices were typically presented in grey tones, and often were difficult for an operator to interpret quickly and accurately. To improve detection, the invention described in the '283 patent displays in separate colors those objects that exhibit a suspicious response as measured by backscattered and by transmitted radiation, thus enhancing the speed and accuracy of operator performance. The apparatus is illustrated in patent Figure 1, showing transmission detector 50, backscatter detectors 25A and 25B, and the object to be inspected 40:

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Vivid produces an X-ray security device that uses backscattered and transmitted radiation along with other criteria in detecting suspicious objects, and that marks suspicious objects in color. Vivid brought an action for declaratory judgment that it "neither infringed, induced infringement, nor contributed to the infringement of United States Patent No. 5,313,511, United States Patent No. 4,799,247, or any other patent owned by American Science & Engineering, Inc. covering x-ray backscatter technology." Vivid also asked that any patents found to be infringed be declared invalid. AS&E's response included a counterclaim charging Vivid with infringement of one or more of eight specified patents, including the two patents named by Vivid.

Vivid requested clarification from AS&E as to precisely which claims of which patents were included in the counterclaim. AS&E responded that it could not provide this specificity until it had further information concerning Vivid's machines, stating: "Obviously, after Vivid has disclosed the information and documentation which is solely in Vivid's possession and control, AS&E will be able to identify the precise patents and claims." Vivid moved to strike AS&E's counterclaim on the ground that AS&E had violated Fed. R. Civ. P. 111 by filing the counterclaim without sufficient knowledge of whether Vivid was in fact infringing these eight patents. The district court granted Vivid's motion, and at Vivid's request ordered that discovery be stayed. The court stated

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that AS&E could move for leave to file an amended counterclaim, but that the proposed amendment must have a proper Rule 11 basis. The court cautioned that AS&E could not simply present an infringement counterclaim for which supporting evidence might later be discovered.

AS&E duly moved for leave to file an amended counterclaim, reducing its charge of infringement from eight patents to only the '283 patent, and limited to claims 5 and 8 of that patent. AS&E included a statement of claim construction in its motion, explaining each clause of claims 5 and 8 and stating its reasons for believing that the claims read on the Vivid device. The district court denied leave to file the amended counterclaim "for the same reasons I allowed the motion to strike the original counterclaim."

Vivid then limited its declaratory complaint to the '283 patent, the subject of the rejected counterclaim. The district court held a Markman hearing and construed claims 5 and 8 of the '283 patent.2 At the district court's suggestion Vivid then moved for summary judgment of non-infringement, stating, inter alia, that certain elements of claims 5 and 8 were not present in the Vivid machines. AS&E then requested discovery under Fed. R. Civ. P. 56(f), on the ground that discovery was necessary in order to determine if Vivid's machines indeed omitted these elements. The court denied the request and entered final judgment that Vivid's "x-ray device does not literally infringe on the '283 patent."3 AS&E appeals, challenging the claim construction, the summary judgment, and the adverse procedural rulings. AS&E also states that it is entitled to determination of infringement under the doctrine of equivalents, a subject not decided by the district court.


Fed. R. Civ. P. 13(a) requires that a party plead a counterclaim that "arises out of the transaction or occurrence that is the subject matter of the opposing party's claim," lest the subject of the counterclaim be deemed waived or abandoned. Rule 13(a) recognizes that when disputed issues arise from the same operative facts, fairness as well as efficiency require that the issues be raised for resolution in the same action. See 6 Charles Alan Wright et al., Federal Practice and Procedure '1417, at 129 (2d ed. 1990) ("failure to plead a compulsory counterclaim bars a party from bringing a later independent action on that claim") (citing cases). Professor Wright identifies four tests, any one of which can render a counterclaim compulsory: (1) whether the legal and factual issues raised by the claim and counterclaim are largely the same; (2) whether, absent the compulsory counterclaim rule, res judicata would bar a subsequent suit on the counterclaim; (3) whether substantially the same evidence supports or refutes both the claim and counterclaim; or (4) whether there is a logical relation between the claim and counterclaim. See id. '1410, at 52-58 (citing cases).

A counterclaim for patent infringement, in an action for declaration of non-infringement of the same patent, readily meets all four of these criteria. See id. at 73 ("Any counterclaim involving the same patent as is involved in the original action usually is considered to arise from the same transaction as the main claim.") (citing cases). Of the cases compiled in the treatises and that we have found, every court that has discussed the issue has recognized that an infringement counterclaim is compulsory in an action for declaration of non-infringement. See, e.g., Genentech,

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Inc. v. Eli Lilly and Co., 998 F.2d 931, 947, 27 USPQ2d 1241, 1253 (Fed. Cir. 1993) (in a declaratory action for non-infringement, the defendant had to bring a counterclaim for patent infringement "or be forever barred from doing so"); International Video Corp. v. Ampex Corp., 484 F.2d 634, 179 USPQ 260 (9th Cir. 1973) (recognizing compulsory nature of counterclaim for patent infringement and holding that dismissal of declaratory complaint for lack of jurisdiction required dismissal of counterclaim on same ground); Akzona, Inc. v. E.I. DuPont de Nemours & Co., 662 F.Supp. 603, 618, 4 USPQ2d 1113, 1123 (D. Del. 1987) (in a declaratory action for non-infringement of several patents, a counterclaim for infringement of the same patents "is clearly within the mandate of Rule 13(a)").

In denying AS&E's motion for leave to file the amended counterclaim, the district court commented that AS&E offered...

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