54 F.3d 756 (Fed. Cir. 1995), 94-1295, Checkpoint Systems, Inc. v. United States Intern. Trade Com'n
|Citation:||54 F.3d 756|
|Party Name:||35 U.S.P.Q.2d 1042 CHECKPOINT SYSTEMS, INC., Appellant, v. The UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and ADT Limited, Actron AG, and Tokai Denshi Co., Ltd., Intervenors, and All-Tag Security AG and Toyo Aluminum K.K., Intervenors.|
|Case Date:||May 17, 1995|
|Court:||United States Courts of Appeals, Court of Appeals for the Federal Circuit|
Paul J. Hayes, Weingarten, Schurgin, Gagnebin & Hayes, Boston, MA, argued for appellant. With him on the brief was Dean G. Bostock.
Andrea C. Casson, Atty., Office of the Gen. Counsel, U.S. Intern. Trade Commission, of Washington, DC, argued for appellee. With her on the brief were Jean H. Jackson, Lyn M. Schlitt, Gen. Counsel, and Stephen A. McLaughlin, Acting Asst. Gen. Counsel. Of counsel was James A. Toupin.
Laurence R. Brown, Laurence Brown & Associates, P.C., of Arlington, VA, argued for intervenors, All-Tag Security AG and Toyo Aluminum, K.K. With him on the brief were Theodore A. Breiner, Breiner & Breiner, Alexandria, VA and Donald W. Marks, Arlington, VA.
Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, DC, argued for intervenors ADT Ltd. Actron
AG, and Tokai Denshi Co., Ltd. Robert J. Gaybrick, Albert J. Santorelli, Roger D. Taylor, Kenneth J. Nunnenkamp, Michael K. Kirschner and R. Bruce Bower, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, DC, were on the brief for intervenors ADT Ltd. Actron AG, and Tokai Denshi Co., Ltd. Of counsel was Herbert H. Mintz.
Before ARCHER, Chief Judge, LOURIE and CLEVENGER, Circuit Judges.
LOURIE, Circuit Judge.
Checkpoint Systems, Inc. appeals from the March 10, 1994 Final Determination by the United States International Trade Commission (ITC) in Investigation No. 337-TA-347. In its decision, the ITC concluded that there was no violation of subsection (a) of section 337 of the Tariff Act of 1930, as amended, see 19 U.S.C. Sec. 1337(a)(1)(B)(i), by the importation into the United States, the sale for importation, or the sale within the United States after importation, of certain anti-theft deactivatable resonant tags and components thereof by Intervenors in this appeal. In particular, the ITC determined that there was no violation of section 337 because the asserted claims of United States Patents 4,498,076 and 4,567,473 were not infringed and were invalid under 35 U.S.C. Sec. 102(g) (1988). Because Checkpoint did not raise in its petition for review of the ITC's Initial Determination the issue of claim interpretation it now raises in this appeal, we will not consider that portion of Checkpoint's appeal. Because the ITC did not err in holding the asserted claims invalid under Sec. 102(g), we affirm.
Checkpoint develops and manufactures deactivatable resonant tags for use in electronic security systems that are used by retailers to deter shoplifting. Checkpoint is the exclusive sublicensee of the '076 and '473 patents, which name George J. Lichtblau as inventor. Both patents are entitled "Resonant Tag and Deactivator for use in an Electronic Security System," and contain substantially identical specifications. Claim 1 of the '076 patent reads:
For use in an electronic security system which includes means for providing in a controlled area an electromagnetic field of a frequency which is swept within a predetermined range and means for detecting the presence of a resonant tag circuit having a resonant frequency within said range, a resonant tag circuit comprising:
a planar substrate of dielectric material;
a tuned circuit on said substrate in planar circuit configuration and resonant at said frequency;
said tuned circuit having a pair of conductive areas in alignment on respective opposite surfaces of the substrate to define a capacitor of the tuned circuit;
means within the conductive areas defining a path between the conductive areas and through the substrate at which an arc discharge will preferentially occur in response to an electromagnetic field at said frequency of sufficient energy, and operative to destroy the resonant properties of the tuned circuit.
The claim covers a deactivatable tag intended to be affixed to a retail item. The tag has "resonant" characteristics, such that when the tag passes through a detector, normally comprising an electronic gate that generates an electromagnetic field of a certain frequency and which is located at a building or store exit, it will resonate. The resonating tag interrupts the electromagnetic field, triggering an alarm. When a retail item is purchased, authorized personnel deactivate the affixed tag using a deactivator, which applies energy to the tag to destroy its resonant characteristics. Unless the tag affixed to a particular item is deactivated, an attempt to remove the item through the detector will sound an alarm.
Lichtblau, the named inventor, had been working for Checkpoint in research and development since at least the 1970s. On May 10, 1982, he filed a first patent application for the invention in suit, which issued as the '076 patent on February 5, 1985. On November 20, 1984, Lichtblau filed a continuation application, which issued as the '473 patent on
January 28, 1986. 1 Both patents were exclusively licensed to Arthur D. Little, Inc. and exclusively sublicensed to Checkpoint. 2
In September of 1981, Checkpoint hired George Kaltner as a design engineer to work on its deactivation technologies. Independently of Lichtblau, in November 1981, Kaltner reduced to practice a deactivatable tag within the scope of the claims in suit. 3 Kaltner was under no obligation to assign to Checkpoint patents to any invention he made before January 1984. Nevertheless, in 1982, Kaltner's supervisor approached an officer of Checkpoint about obtaining a patent on the deactivatable tags and was told that "it was being taken care of." In fact, however, Checkpoint did not file a patent application in Kaltner's name. Kaltner continued to work at Checkpoint, perfecting his tag and developing a commercial electronic security system, which included deactivatable tags, a deactivator, and a detector. In late 1985, Checkpoint marketed its security system, which included tags within the scope of the claims in suit.
On March 10, 1993, the ITC instituted an investigation following a complaint filed by Checkpoint under section 337 of the Tariff Act of 1930. The complaint, as amended, alleged that six respondents 4 imported, sold for importation, or sold in the United States after...
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