Automotive Technologies v. Bmw of North America

• Decision Date: 06 September 2007
• Docket Number: No. 2006-1037.,No. 2006-1013.,2006-1013.,2006-1037.
• Citation: 501 F.3d 1274
• Parties: AUTOMOTIVE TECHNOLOGIES INTERNATIONAL, INC., Plaintiff/Counterclaim Defendant-Appellant, v. BMW OF NORTH AMERICA, INC., CK Electronics, Incorporated, Conti Temic Microelectronic, GmbH, and Temic Automotive of North America, Incorporated, Defendants, and DaimlerChrysler Corporation, Ford Motor Company, Honda Motor Company Limited, American Honda Motor Company, Incorporated, Hyundai Motor Company, Hyundai Motor America, Mazda Motor of America, Inc., Saab Cars USA, Inc., Siemens Automotive Corporation, and Toyota Motor Sales USA, Inc., Defendants/Counterclaimants-Appellees, and General Motors Corporation, Defendant/Counterclaimant-Appellee, and Volkswagen of America, Inc., Defendant/Counterclaimant, and Nissan North America, Inc., Defendant/Counterclaimant-Cross Appellant, and Calsonic Kansei Corporation, Counterclaimant Defendant-Cross Appellant, and Siemens AG, TK Electronics, Incorporated, and TRW Automotive U.S., LLC, Counterclaimants Defendants-Appellees, and Delphi Automotive Systems, Counterclaimant Defendant-Appellee, and KIA Motors America, Incorporated, and Bosch Automotive Motors System Corporation, Counterclaimants Defendants.
• Court: U.S. Court of Appeals — Federal Circuit

501 F.3d 1274

AUTOMOTIVE TECHNOLOGIES INTERNATIONAL, INC., Plaintiff/Counterclaim Defendant-Appellant, v. BMW OF NORTH AMERICA, INC., CK Electronics, Incorporated, Conti Temic Microelectronic, GmbH, and Temic Automotive of North America, Incorporated, Defendants, and DaimlerChrysler Corporation, Ford Motor Company, Honda Motor Company Limited, American Honda Motor Company, Incorporated, Hyundai Motor Company, Hyundai Motor America, Mazda Motor of America, Inc., Saab Cars USA, Inc., Siemens Automotive Corporation, and Toyota Motor Sales USA, Inc., Defendants/Counterclaimants-Appellees, and General Motors Corporation, Defendant/Counterclaimant-Appellee, and

Volkswagen of America, Inc., Defendant/Counterclaimant, and

Nissan North America, Inc., Defendant/Counterclaimant-Cross Appellant, and

Calsonic Kansei Corporation, Counterclaimant Defendant-Cross Appellant, and

Siemens AG, TK Electronics, Incorporated, and TRW Automotive U.S., LLC, Counterclaimants Defendants-Appellees, and

Delphi Automotive Systems, Counterclaimant Defendant-Appellee, and

KIA Motors America, Incorporated, and Bosch Automotive Motors System Corporation, Counterclaimants Defendants.

No. 2006-1013.

No. 2006-1037.

United States Court of Appeals, Federal Circuit.

September 6, 2007.

Michael H. Baniak, McDonnell Boehnen Hulbert & Berghoff LLP, of Chicago, Illinois, argued for plaintiff/counterclaim defendant-appellant. Of counsel on the brief was Andrew Kochanowski, Sommers Schwartz, P.C., of Southfield, Michigan. Of counsel was Michael D. Gannon.

Kenneth A. Gallo, Paul, Weiss, Rifkind, Wharton & Garrison LLP, of Washington, DC, argued for defendants/counterclaimants-appellees, Daimlerchrysler Corporation, et al., and counterclaimants defendants-appellees Siemens AG, et al. Of counsel on the brief were Drew M. Wintringham III and Mark W. Rueh, Clifford Chance U.S. LLP, of New York, New York.

Charles W. Shifley, Banner & Witcoff, Ltd., of Chicago, Illinois, for counterclaimant defendant-appellee, Delphi Automotive Systems, and defendant/counterclaimant-appellee, General Motors Corporation. With him on the brief were Binal J. Patel and Theodore L. Field.

John J. Feldhaus, Foley & Lardner, LLP, of Washington, DC, argued for defendant/counterclaimant-cross appellant, Nissan North America, and counterclaimant defendant-cross appellant, Calsonic Kansei Corporation. With him on the brief were Pavan K. Agarwal and Mary M. Calkins.

Before LOURIE, RADER, and PROST, Circuit Judges.

LOURIE, Circuit Judge.

Automotive Technologies International, Inc. ("ATI") appeals from the decision of the United States District Court for the Eastern District of Michigan granting summary judgment of invalidity of claims 1-44 of U.S. Patent 5, 231, 253 (the "'253 patent") under 35 U.S.C. § 112, ¶ 1. ATI also appeals from the decision of the district court granting summary judgment of noninfringement in favor of various defendants. Auto. Tech. Int'l v. BMW of N. Am., Inc., 378 F.Supp.2d 780 (E.D.Mich. 2005) (Invalidity Order); Auto. Tech. Int'l v. BMW of N. Am., Inc., No. 01-CV-71700-DT (E.D.Mich. Jan.26, 2005) (Noninfringement Order). Defendants Calsonic Kansei Corporation and Nissan North America, Inc. cross-appeal from the decision of the district court denying their motion for summary judgment of noninfringement. Auto. Tech. Int'l v. BMW of N. Am., Inc., No. 01-CV-71700-DT (E.D.Mich. Oct.27, 2004) (Denial of Noninfringement Order). Because we conclude that the asserted claims of the '253 patent are invalid for lack of enablement, we affirm the decision of the district court granting summary judgment of invalidity. Because of that conclusion, the infringement appeal and cross-appeal are moot.

BACKGROUND

The technology at issue involves crash sensing devices for deployment in an occupant protection apparatus, such as an airbag, during an impact or crash involving the side of a vehicle. ATI is the assignee of the '253 patent, entitled "Side Impact Sensors." The invention is directed to a velocity-type sensor placed in a position within a vehicle in order to sense a side impact. A velocity-type sensor is a sensor that triggers when a velocity change sensed in a crash exceeds a threshold value. Representative claim 1 reads as follows:

A side impact crash sensor for a vehicle having front and rear wheels, said sensor comprising:

(a) a housing;

(b) a mass within said housing movable relative to said housing in response to accelerations of said housing;

(c) means responsive to the motion of said mass upon acceleration of said housing in excess of a predetermined threshold value, for initiating an occupant protection apparatus; and

(d) means for mounting said housing onto at least one of a side door of the vehicle and a side of the vehicle between the centers of the front and rear wheels, in such a position and a direction as to sense an impact into the side of said vehicle.

'253 patent, col. 10 ll.59-col. 11 ll.1-5.

The prior art sensors used for sensing side impacts were crush sensors—devices configured to trigger only when crushed or deformed, thereby closing a circuit. '253 patent, col.3 ll.29-33. Such sensors, however, are deficient in that they will not trigger during a crash in which a side door is not hit directly but the impact is severe enough such that the occupant would need the protection of an airbag. Id. Velocity-type sensors, on the other hand, can be adjusted to a desired sensitivity to detect a side impact and deploy an airbag, even though the side door is not directly hit. Id. at ll.37-42. According to ATI, conventional wisdom was that velocity-type sensors, which had been successfully used for sensing impacts to the front of a vehicle, would activate too slowly to deploy an airbag during a side impact crash. The inventors of the '253 patent discovered that velocity-type sensors when properly designed could successfully and timely operate to deploy an airbag in a side collision. An example of a velocity type sensor according to the invention is illustrated below:

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

When installed on a vehicle, the sensor faces the outside of the side door in the direction of the arrow B. '253 patent, col.6 ll.15-17. When the sensor is subjected to a crash pulse of sufficient magnitude and duration, the flapper 11 moves toward the second contact 18. Id. at ll.18-25. The first contact 17 engages with the second contact 18 and closes an electrical circuit to initiate deployment of an airbag. Id. Because side impact sensors require greater insensitivity for short, impulsive velocity changes, the specification discloses that an inertially damped sensor is the most suitable type of sensor for properly sensing side crashes. Id. at col.3 ll.63-68, col.8 ll.49-51. The specification states, however, that other sensors that are simpler and easier to manufacture, can be used to effectively sense a side impact. Such sensors include spring-mass sensors and viscously-damped sensors. Id. at ll.52-62.

The specification also states that an electronic sensor assembly can be used to sense side impacts. '253 patent, col. 10 ll.1-15. The following figure, Figure 11, depicts such an electronic sensor assembly:

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

The accompanying text states that Figure 11 is a "conceptional view of an electronic sensor assembly 201 built according to the teachings of this invention. This sensor contains a sensing mass 202 which moves relative to housing 203 in response to the acceleration of housing 203 which accompanies a side impact crash." Id. at ll.3-8. The specification further states that the motion of the sensing mass "can be sensed by a variety of technologies using, for example, optics, resistance change, capacitance change or magnetic reluctance change." Id. at ll.9-11. The enablement of this electronic side impact sensor is at issue in this appeal.

In May 2001, ATI filed a complaint against numerous defendants in the automotive industry, alleging infringement of the '253 patent. In September 2003, the district court conducted a Markman hearing, and, in March 2004, the court issued an order construing the relevant claims. Auto. Tech. Int'l v. BMW of N. Am., Inc., No. 01-CV-71700-DT (E.D.Mich. Mar.31, 2004) (Claim Construction Order). Relevant to this appeal, the court construed the phrase, "means responsive to the motion of said mass upon acceleration of said housing in excess of a predetermined threshold value, for initiating an occupant protection apparatus." The parties agreed, and the court found, that the limitation was in means-plus-function format and that the stated function is initiating an occupant protection apparatus. The parties disagreed as to the structure corresponding to the claimed function. ATI contended that the corresponding structure included not only mechanical switch assemblies, but also electronic switch assemblies, as identified in the specification. The defendants countered that the only clearly linked structure identified in the specification is a mechanical switch assembly.

The district court agreed with ATI that the specification contains structure corresponding to the claimed function in the form of mechanical and electronic means. The court noted that the specification includes several descriptions of mechanical switches as preferred embodiments that would perform the intended function of initiating an occupant protection apparatus. The court also observed that Figure 11 and its accompanying textual description in column 10, lines 3-14, describe, albeit in vague detail, an alternative structure for initiating the occupant protection apparatus in the form of an electronic switch. The court concluded:

Corresponding structure includes mechanical switches with two contacts that engage in response to a force of sufficient magnitude and duration, and their equivalents. The specification identifies such mechanical switches in...