299 F.3d 1313 (Fed. Cir. 2002), 01-1372, Teleflex, Inc. v. Ficosa North America Corp.

Docket Nº:01-1372
Citation:299 F.3d 1313
Party Name:Teleflex, Inc. v. Ficosa North America Corp.
Case Date:June 21, 2002
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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299 F.3d 1313 (Fed. Cir. 2002)

63 U.S.P.Q.2d 1374

TELEFLEX, INC., Plaintiff-Appellee,

v.

FICOSA NORTH AMERICA CORP., Fico Cables, S.A., and Ficosa North America S.A. De C.V., Defendants-Appellants.

No. 01-1372.

United States Court of Appeals, Federal Circuit

June 21, 2002

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Kenneth R. Adamo, Jones, Day, Reavis & Pogue, of Cleveland, Ohio, argued for defendants-appellants. With him on the brief were Joseph D. Pollack and David M. Maiorana, of Cleveland, Ohio; and Gregory A. Castanias, of Washington, DC.

Steven Susser, Young & Susser, P.C., of Southfield, Michigan, argued for plaintiff-appellee. With him on the brief was Rodger D. Young. Of counsel on the brief

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were John E. Carlson and Anthony P. Cho, Carlson, Gaskey & Olds, P.C., of Birmingham, Michigan; and Darrel C. Karl, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC.

Before RADER, GAJARSA, and LINN, Circuit Judges.

LINN, Circuit Judge.

Ficosa North America Corporation, Fico Cables, S.A., and Ficosa North America S.A. de C.V. ("Ficosa") appeal the final judgment of the U.S. District Court for the Eastern District of Michigan entered in favor of Teleflex, Inc. ("Teleflex"). The district court entered judgment following a jury verdict that Ficosa infringed Teleflex's U.S. Patent No. 5,632,182 ("the '182 patent"), and that Teleflex's U.S. Patent No. 4,581,953 ("the '953 patent") and the '182 patent were not invalid. Ficosa appeals the denial of its motion for judgment as a matter of law ("JMOL") of non-infringement of claim 1 of the '182 patent, the grant of summary judgment of no best mode violation in the '182 patent, the denial of its JMOL motion of invalidity of the '182 patent, and the denial of its JMOL motion of invalidity of the '953 patent. Because the district court correctly granted summary judgment of no best mode violation and substantial evidence supports the jury verdict of infringement and validity, we affirm the district court's decision on appeal.

BACKGROUND

Teleflex is the assignee of the '182 patent and the '953 patent. The '182 patent is directed to a "Serviceable Clip Core Coupling," which is a component of a two-piece shift cable installed by General Motors ("GM") in certain sport utility vehicles. The two-piece shift cable connects the shift knob with the automatic transmission of the sport utility vehicle so that when a driver moves the shift knob, e.g., from "Park" to "Drive," the transmission is engaged. The two-piece cable allows GM to wait until an advanced stage of the manufacturing process before putting the two pieces together and permits the cable to be taken apart later for servicing.

Claim 1 of the '182 patent recites:

1. A motion transmitting remote control assembly (10) comprising:

a first core element section (12) for transmitting motion;

a first guide length for movably supporting said first core element section (12);

a second core element section (14) for transmitting motion;

a second guide length for movably supporting said second core element section (14);

connection means for locking said first (12) and second (14) core element sections together in a locked position mechanically prevented from moving relative to one another axially in either direction; and

characterized by said connection means including a clip (28) manually insertable into and manually removable from said locked position mechanically interlocking said core element sections together while moving axially within said guide lengths,

said connection means including a female member (24) attached to an end of said first core element section (12) and a male member (26) defining an end of said second core element section (14), said male member (26) presenting a male groove (30), said female member (24) having at least one slot (32) extending tangentially therethrough, said clip (28) being disposed about said female member (24) and extending through said slot (32) and into said male groove

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(30) for mechanically interlocking said core element sections together in said locked position.

'182 Patent, col. 3, ll. 45-66, col. 4, ll. 1-10 (emphases added).

The parties disputed at trial the interpretation of the claim term "clip (28)." The district court construed the term in the jury instructions as follows:

In claim 1 of the '182 patent, the term "clip" means a structure that has a single pair of legs which provide the dual functions of disposing the clip around and holding the female member through the slots in the female member and extending through the slots into the groove in the male member to lock the members together.

Figure 1 of the '182 patent is reproduced below:

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The '953 patent is directed to a "Molded Terminal with Vibration Dampener Pocket." The '953 patent describes an invention that allows for attachment of the shift cable to the shift knob and the transmission in a manner that minimizes noise and vibration transmitted from the transmission to the shift knob.

Claim 1 of the '953 patent recites:

1. A motion transmitting remote control assemly [sic] (10) for transmitting motion in a curved path, said assembly (10) comprising: guide means (12); core means (18) movably supported by said guide means (12) and extending therefrom to provide a variable extending length of said core means (18) between said guide means (12) and one end (20) therefor to define a line of force; and an integral terminal member (22) for operatively interconnecting said extending length of said core means (18) and a control member (24) through a ball pin (32) and having an opening (36) therethrough defining an axis being perpendicular relative to said line of force, said terminal member (22) including a resilient integral vibration dampening member (38) totally encapsulated therein and defining a portion of said opening (36) and including a retaining pocket for retaining the ball pin (32) of the control member (24) therein, said retaining pocket including a resilient cylindrical wall (40) and an annular integral flexible flange (42) extending into said opening (36) from said wall (40) for engaging and retaining the ball pin (32) extending from the control member (24) within

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said cylindrical wall (40), said vibration dampening member (38) further including a resilient substantially cylindrical containing pocket extending from said flexible flange (42) and away from said retaining pocket.

'953 Patent, col. 4, ll. 57-68, col. 5, ll. 1-14 (emphases added).

Claim 6 of the '953 patent recites:

6. An assembly as set forth in claim 1 further characterized by said terminal member (22) including a plurality of slots (56) therethrough extending radially from said axis defined by said opening (36) about said retaining pocket of said opening (36).

'953 Patent, col. 6, ll. 8-12.

Figure 3 of the '953 patent shows a side view and is reproduced below:

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Both Teleflex and Ficosa manufacture shift cables for automobiles. Teleflex has traditionally focused on the North American market and Ficosa on the European market. In 1990, they entered a joint venture to sell cables in Europe, but the venture was dissolved in 1997.

Teleflex supplied GM with two-piece shift cables from the inception of the "GMT-800 program" for use in GM manufactured sport utility vehicles. In 1997, Teleflex learned of Ficosa's efforts to supply GM with cables for the GMT-800 program, and the parties exchanged letters concerning possible infringement by Ficosa of Teleflex's patents. Ficosa retained European patent counsel for an opinion concerning infringement of the European equivalent of the '182 patent.

Ficosa had its own design for the two-piece shift cable. An illustration of the Ficosa counterpart to the "clip (28)" recited in claim 1 of the '182 patent is reproduced below:

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On August 3, 1998, Teleflex sued Ficosa for infringement of four patents, including the '182 and '953 patents. Ficosa counterclaimed for declaratory judgment of non-infringement and invalidity of all of the asserted patents. Teleflex voluntarily withdrew its claim based on one of the four patents, and the district court granted Ficosa's motion for partial summary judgment of non-infringement of another patent. These two patents were removed from the case, and the present appeal concerns only the remaining '182 and '953 patents.

On August 30, 1999, Teleflex moved for partial summary judgment of literal infringement of claim 1 of the '182 patent, which the district court granted on December 15, 1999. Six days prior to trial, Ficosa filed a motion to vacate the ruling of literal infringement of claim 1 in light of new evidence: the September 19, 2000 issuance of a patent to Ficosa. The district court granted Ficosa's motion and vacated its partial summary judgment ruling regarding claim 1 of the '182 patent.

The parties filed cross-motions for summary judgment concerning violation of the best mode requirement in the '182 patent. Ficosa argued that the inventor admitted during his deposition that he knew of a best mode for practicing the claimed invention in the following colloquy:

Q: Now, that change in the clip metal and the matching of the male member metal to the clip metal, was that the best way that you had to make this cable join at the time you did this work in 1995?

A: Yeah. Yep, yep. Yes.

Teleflex...

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