Intellectual Prop. Dev. V. Ua-Columbia Cable.

• Decision Date: 21 July 2003
• Docket Number: No. 02-1248.,02-1248.
• Citation: 336 F.3d 1308
• Parties: INTELLECTUAL PROPERTY DEVELOPMENT, INC. and COmmunications Patents, Ltd., Plaintiffs-Appellants, v. UA-COLUMBIA CABLEVISION OF WESTCHESTER, INC. and Tele-Communications, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

336 F.3d 1308

INTELLECTUAL PROPERTY DEVELOPMENT, INC. and COmmunications Patents, Ltd., Plaintiffs-Appellants, v. UA-COLUMBIA CABLEVISION OF WESTCHESTER, INC. and Tele-Communications, Inc., Defendants-Appellees.

No. 02-1248.

United States Court of Appeals, Federal Circuit.

July 21, 2003.

Rehearing Denied August 15, 2003.

Mark C. Hansen, Kellogg, Huber, Hansen, Todd, & Evans, PLLC, of Washington, DC, argued for plaintiffs-appellants. With him on the brief were Richard H. Stern, J.C. Rozendaal, and Eugene M. Paige. Of counsel on the brief were George Pazuniak, Collins J. Seitz, Jr., and James M. Olsen, Connolly Bove Lodge & Hutz LLP, of Wilmington, DE.

Scott F. Partridge, Baker Botts L.L.P., of Houston, TX, argued for defendants-appellees. With him on the brief were Michael Hawes and Nellie A. Fisher. Of counsel on the brief were Neil P. Sirota, Baker Botts, L.L.P., of New York, NY; and David G. Wille, Baker Botts L.L.P., of Dallas, TX.

Before SCHALL, GAJARSA, and DYK, Circuit Judges.

SCHALL, Circuit Judge.

Intellectual Property Development, Inc. and Communications Patents, Ltd. appeal from the decision of the United States District Court for the Southern District of New York that granted summary judgment of non-infringement and invalidity with respect to United States Patent No. 4,135,202 ("the '202 patent") in favor of UA-Columbia Cablevision of Westchester, Inc. and Tele-Communications, Inc. Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., No. 94-CV-6296 (S.D.N.Y. Jan. 3, 2002) (memorandum and order granting summary judgment) ("Summary Judgment Order"). We agree with the district court's grant of summary judgment of non-infringement, but disagree with its grant of summary judgment of invalidity. Accordingly, we affirm-in-part and reverse-in-part.

BACKGROUND

I.

Communications Patents, Ltd. is the owner of the '202 patent, while Intellectual Property Development, Inc. is the exclusive licensee of the patent. We refer to Communications Patents, Ltd. and Intellectual Property Development, Inc. collectively as "IPD."

The '202 patent is directed to "Broadcasting Systems with Fibre Optic Transmission Lines."¹ The patent recognizes that conventional wired broadcasting systems are generally of two types. In the first type of system, television signals are distributed between a central station and each of a plurality of subscribers over a single signal path, usually a coaxial cable. This type of a system commonly employs frequencies between 40-300 megahertz ("MHz"). '202 patent, col. 1, ll. 9-16. In the second type of system, television signals are distributed between a central station and each of a plurality of subscribers over separate signal paths, usually twisted pairs of conductors contained within a common cable. This type of a system commonly employs frequencies between 2 and 20 MHz. '202 patent, col. 1, ll. 16-26. The '202 patent notes that the first type of system suffers from transmission losses and inter-modulation problems, while the second type of system suffers from interference, or crosstalk, as well as maintenance problems. '202 patent, col. 1, ll. 27-38.

To solve the problems with these prior art systems, the '202 patent discloses "a wired broadcasting system in which a signal path between a central station and at least some of a plurality of subscribers includes an optical fibre...." '202 patent, col. 1, ll. 42-45. The patent discloses several different embodiments of such a system. Figure 1 of the patent, which is reproduced below, illustrates one of those embodiments.

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

As shown in this embodiment, a central station (1) is connected to each of a plurality of subscriber stations (2 and 3) by means of an optical fiber (4). The optical fiber extends between an electro-optical transducer (5) located at the central station and a photo-sensitive detector (6 or 7) located at the subscriber station.² '202 patent, col. 2, ll. 28-32.

Claim 1, the only independent claim of the '202 patent and the only claim at issue in this appeal, is as follows:

A broadcasting system conveying signals by a signal path between a central station and a plurality of subscribers, comprising in combination,

a common optical fibre in said signal path carrying signals to said plurality of subscribers from said central station, said fibre extending between an electro-optical transducer at said central station producing a light beam and photo-sensitive detector means at a reception position near the subscribers station,

transmission means at the central station modulating the light beam for transmission through said optical fibre, said transmission means including modulation means producing a light beam modulated by a high frequency carrier which itself is modulated with video broadcast signals conventional television receivers at the subscriber stations responsive to receive said high frequency carrier modulated with video broadcast signals,

light beam demodulation means at said reception position responsive to said photo-sensitive detector means to convert said light beam into demodulated high frequency carrier radio wave signals modulated with video broadcast signals, and

means coupling said demodulated signals from said reception position to said subscriber stations in a form suitable for direct application to said conventional television receivers without further signal processing.

'202 patent, col. 4, ll. 6-31.

UA-Columbia Cablevision of Westchester, Inc. ("UA-Columbia") and Tele-Communications, Inc. ("TCI") own and/or operate cable television systems. UA-Columbia is related to TCI through a series of subsidiaries of TCI. We refer to UA-Columbia and TCI collectively as "Cablevision." Cablevision has systems that operate in the very high frequency ("VHF") range, i.e., 30-300 MHz.

II.

On September 1, 1994, IPD sued Cablevision for infringement of the '202 patent.³ Cablevision answered and counterclaimed for declaratory judgments of invalidity, non-infringement, and unenforceability.

In June 1997, the district court conducted a four-day claim construction hearing. On March 26, 1998, then District Judge Sonya Sotomayor issued an opinion in which she construed claim 1 of the '202 patent, including the claim term "high frequency carrier". Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., No. 94-CV-6296, 1998 WL 142346 (S.D.N.Y. Mar. 26, 1998) ("Claim Construction Ruling"). Judge Sotomayor ruled that "high frequency as used in the '202 [p]atent would have been understood by a person skilled in the art to mean the VHF range, 54 to 216 MHz, received by conventional television receivers of the time." Id. at 10.

On September 14, 1999, the Judicial Panel on Multidistrict Litigation transferred the case to the United States District Court for the Central District of California. On June 19, 2000, however, that court granted IPD's motion for a remand and the case was returned to the Southern District of New York. At this point, the case was assigned to District Judge William H. Pauley, III, Judge Sotomayor having been elevated to the Second Circuit.

On February 9, 2001, Cablevision moved for reconsideration of Judge Sotomayor's construction of the term "high frequency carrier" in claim 1 of the '202 patent and for, inter alia, summary judgment of non-infringement and invalidity. Cablevision argued that Judge Sotomayor should have construed "high frequency" to be limited to 3-30 MHz. IPD opposed, arguing that Judge Sotomayor correctly construed the claim term "high frequency carrier" and that the district court should not reconsider her construction. In addition, IPD argued that Cablevision was not entitled to summary judgment of non-infringement or invalidity.

The district court granted both of Cablevision's motions. Summary Judgment Order at 1. Exercising its discretion to review Judge Sotomayor's construction of the term "high frequency carrier," the court concluded that a person of ordinary skill in the art of wired broadcasting systems would have understood "high frequency" to be limited to 3-30 MHz. Id. at 2. Based on this construction, the court granted summary judgment of non-infringement in favor of Cablevision, noting that since the accused systems operate in the VHF range, i.e., 30-300 MHz, they cannot literally infringe claim 1 of the '202 patent.⁴ Id. The court also granted summary judgment of non-infringement under the doctrine of equivalents in favor of Cablevision on the ground that prosecution history estoppel precluded IPD from arguing that the "transmission means" limitation of claim 1 is infringed under the doctrine of equivalents. Id. At the same time, the court granted Cablevision's motion for summary judgment on its request for a declaratory judgment of invalidity with respect to the '202 patent. It did so on the ground that claim 1 fails to meet the definiteness requirement of 35 U.S.C. § 112, paragraph 2.⁵ Id. at 56. IPD timely appealed both rulings. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

ANALYSIS

I.

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 (Fed.Cir.1989). In determining whether there is a genuine issue of material fact, we view the evidence in the light most favorable to the party opposing the motion and resolve all doubts in favor of the non-movant. Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274 (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 (Fed.Cir.1994).

II.

A. Claim Construction/Infringement

The determination of infringement is a two-step process. First, the court construes the claims at issue to determine their scope. Second, it compares the properly construed claims to...