K–TEC, Inc. v. Vita–Mix Corp.

• Decision Date: 06 September 2012
• Docket Number: 2011–1484,Nos. 2011–1244,2011–1512.,s. 2011–1244
• Citation: 696 F.3d 1364
• Parties: K–TEC, INC., Plaintiff–Appellee, v. VITA–MIX CORPORATION, Defendant–Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

696 F.3d 1364

K–TEC, INC., Plaintiff–Appellee,

v.VITA–MIX CORPORATION, Defendant–Appellant.

Nos. 2011–1244, 2011–1484, 2011–1512.

United States Court of Appeals,Federal Circuit.

Sept. 6, 2012.

Brett L. Foster, Holland & Hart LLP, of Salt Lake City, UT, argued for plaintiff-appellee. With him on the brief were L. Grant Foster and Mark A. Miller. Of counsel was Marcy G. Glenn, of Denver, CO.

Alan L. Briggs, Squire, Sanders & Dempsey, LLP, of Washington, DC, argued for defendant-appellant. With him on the brief were Jeremy W. Dutra, and Rachael A. Harris. Of counsel was Brad Yee Chin, of Vienna, VA.

Before NEWMAN, LOURIE, and PROST, Circuit Judges.

LOURIE, Circuit Judge.

Vita–Mix Corporation (“Vita–Mix”) appeals from the district court's final judgment in which the court concluded that Vita–Mix infringed the asserted claims of two United States patents, K–TEC, Inc. v. Vita–Mix Corp., Case No. 2:06–CV–0108, 2010 WL 1417862 (D.Utah Apr. 6, 2010) (“Infringement Order ”), that two prior art references were not analogous art for the purposes of an obviousness analysis, K–TEC, Inc. v. Vita–Mix Corp., 729 F.Supp.2d 1312 (D.Utah 2010) (“Analogous Art Order ”), that substantial evidence supported the jury's findings that the asserted claims were not proved invalid, that Vita–Mix's infringement was willful, and that K–TEC, Inc. (“K–TEC”) was entitled to approximately $11 million in reasonable royalty and lost profits damages, K–TEC, Corp. v. Vita–Mix Corp., 765 F.Supp.2d 1304 (D.Utah 2011) (“JMOL Opinion ”). On appeal, Vita–Mix challenges those conclusions in addition to other rulings made by the district court during trial. Because the district court did not err in any respect and the jury's findings were properly supported, we affirm.

Background

I.

This patent case relates to commercial blenders that are used to make blended beverages. K–TEC, a company that manufactures and sells commercial blending equipment, owns U.S. Patents 6,979,117 (“the '117 patent”) and 7,281,842 (“the '842 patent”), which generally disclose and claim a blending system that contains a blending jar with a specific geometry. The benefit of the claimed geometry is that it alters the flow pattern of the liquid during blending in a way that reduces cavitation, which occurs when a pocket of air envelops the area surrounding the blender blade during blending. '842 patent, col.2 ll.11–15, col.7 ll.4–14.

The two patents are related—the '117 patent is the parent of the '842 patent. Claim 1 of the '842 patent is representative for the purposes of this appeal. It claims a “blending jar” that comprises “four side walls” and a “fifth truncated wall” arranged in a specific geometry:

1. A blending jar apparatus, comprising:

a blending jar having a blending element which rotates on a central axis, the jar to hold at least one foodstuff to be blended, the blending jar comprising:

a bottom wall;

four side walls extending from the bottom wall, the four side walls defining an opening having a generally rectangular shape, the opening being configured to receive the at least one foodstuff;

a fifth truncated wall disposed between two of the four side walls;

a handle secured to the blending jar adjacent to the fifth truncated wall;

wherein the fifth truncated wall is positioned closer to the central axis than corners formed by the four side walls.

Id. col.8 ll.17–31 (emphases added). The written description details the claimed geometry. In particular, Figure 11, reproduced below, depicts the claimed jar, with four side walls, labeled 132, 134, 136, and 138, and a fifth truncated wall, labeled 135.

Image 1 (4.36" X 4.02") Available for Offline Print

In the above figure, the fifth truncated wall is disposed between side walls 138 and 132 and is positioned closer to the blending jar's central axis 144 than the corners formed by the four side walls. See id. col.6 l.58–col.7 l.14. The written description explains that the fifth wall “truncates, in essence, the typical corner that would otherwise be formed between wall 132 and 138.” Id. col.6 ll.62–64. Similarly, K–TEC explained to the U.S. Patent & Trademark Office (“PTO”) that the truncated wall “may be planar or curved, as long as it truncates a typical corner that would otherwise be formed if the truncated wall were not present.” K–TEC, Inc. v. Vita–Mix Corp., No. 2:06–CV–0108, 2009 WL 3568623, at *2 (D.Utah Oct. 23, 2009) (“Claim Construction Opinion ”). The corners created by the sidewalls “may be formed at generally right angles,” '117 patent, col.6 ll.60–62, although the specification depicts them also as rounded.

As a result of this geometry, the vortex created when blending liquid inside the container moves away from the central axis and toward the truncated wall. '842 patent, col.7 ll.4–14. The shifted vortex creates a flow pattern in which, during blending, the liquid will climb up the corner opposite the truncated wall and will be lower at the truncated wall. Id. col.7 ll.9–12. That flow pattern reduces cavitation in the container, increasing the speed and efficiency with which smoothies and other beverages can be made. Id. col. 7 ll.12–14.

K–TEC and Vita–Mix compete in the market for commercial blenders. In 2001, K–TEC began selling a five-sided blending jar that was an embodiment of the '117 and '842 patents' claims. After K–TEC acquired a number of customers in 2001 and 2002, Vita–Mix began to consider upgrading its existing four-sided container. In that process, its “example” design was K–TEC's five-sided container. J.A. 16507, 16511. Although Vita–Mix attempted different design changes, it introduced its new MP container in May 2003, a design that Vita–Mix personnel admitted was a copy of K–TEC's five-sided container. J.A. 25455–46.

After Vita–Mix released the MP container, K–TEC notified Vita–Mix in March 2005 that the container infringed the parent patent of the '117 and '842 patents. In late 2005, one of K–TEC's employees notified Vita–Mix personnel that the '117 patent would soon issue and that Vita–Mix's MP container would infringe that patent. The day after the patent issued, the record shows that Vita–Mix's CEO knew that “the K–Tec patent for the MP container” had issued, J.A. 16619.

During that period, Vita–Mix began attempting to design around the '117 patent. In that process, Vita–Mix's executives sought a change that would be “as invisible as possible” to Vita–Mix's customers. J.A. 25439–40. Vita–Mix considered over a dozen noninfringing designs, including an equidistant design that it believed did not infringe because it lacked a “truncated corner.” J.A. 25445–46. Ultimately, however, Vita–Mix opted for a design, referred to as the XP container, in which the planar fifth wall was no longer “flat” but became curved, i.e., it had a “radius.” J.A. 25437; see also J.A. 25418 (explaining that Vita–Mix's XP container differed from the MP container in that “[t]he one corner was rounded”). Below is a photograph of a cross-section of the XP container that Vita–Mix submitted to the district court during the proceedings, with the annotations provided by Vita–Mix.

Image 2 (3.61" X 3.56") Available for Offline Print

Although Vita–Mix altered the design to include a curved portion, it maintained the same item numbers for the XP container that it used for the MP container. As a result, Vita–Mix concluded that it had created a container that was “equal to our old design in blending performance” and that most of its customers would “never even notice the change.” J.A. 16594.1. After the XP product was launched, Vita–Mix decided to halt sales of the MP container. See id.

II.

Shortly after the '117 patent issued, K–TEC sued Vita–Mix in the United States District Court for the District of Utah, alleging that the MP container infringed a number of claims of the '117 patent. Thereafter, K–TEC amended its complaint to include the '842 patent and the XP container. Ultimately, K–TEC pursued damages only for sales of the XP container.

During the proceedings, the district court arrived at a number of conclusions that serve as the basis for Vita–Mix's appeal. First, the district court, after rejecting Vita–Mix's claim construction arguments, construed the “fifth truncated wall” limitation to mean “a wall (planar or nonplanar) that truncates, in essence, the typical corner that would otherwise be formed between two side walls.” Claim Construction Opinion, 2009 WL 3568623, at *1, *3.

Second, prior to trial, the court granted K–TEC's motion for summary judgment that the XP container infringed the asserted claims and partially granted K–TEC's motion that the asserted claims are not invalid. Regarding infringement, the court concluded based on a “visual inspection” of the XP container that there was no genuine issue that the container had “four side walls that form intersecting corners and a fifth nonplanar wall between two of the side walls that truncates the typical corner that would be formed between the two side walls.” Infringement Order, 2010 WL 1417862, at *2. In partially granting K–TEC's motion upholding the validity of the '117 and '842 patents, the court concluded that Vita–Mix had failed to raise a genuine issue of material fact that two nonblender designs that depict five-sided containers, U.S. Design Patents 163,117 (“Hobbs”) and 227,535 (“Grimes”), would have been reasonably pertinent to solving the cavitation problem that the '117 and '842 patents' inventor faced when he conceived those inventions. Analogous Art Order, 729 F.Supp.2d at 1323–24.

At the same time, Vita–Mix moved for summary judgment that the “fifth truncated wall” limitation rendered the claims invalid for indefiniteness because the district court's construction included the word “typical.” In denying Vita–Mix's motion, the court clarified its earlier construction, explaining that “the term ‘typical corner’ refers to a corner that, but for the addition of the truncated wall, would otherwise be typical—or in other words identical—to...