908 F.2d 931 (Fed. Cir. 1990), 89-1034, Northern Telecom, Inc. v. Datapoint Corp.

Docket Nº89-1034, 89-1035.
Citation908 F.2d 931
Party Name15 U.S.P.Q.2d 1321 NORTHERN TELECOM, INC., Plaintiff-Appellant, v. DATAPOINT CORPORATION, Defendant/Cross-Appellant.
Case DateJune 29, 1990
CourtUnited States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 931

908 F.2d 931 (Fed. Cir. 1990)

15 U.S.P.Q.2d 1321

NORTHERN TELECOM, INC., Plaintiff-Appellant,

v.

DATAPOINT CORPORATION, Defendant/Cross-Appellant.

Nos. 89-1034, 89-1035.

United States Court of Appeals, Federal Circuit

June 29, 1990

Suggestion for Rehearing In Banc

Declined Aug. 27, 1990.

Page 932

[Copyrighted Material Omitted]

Page 933

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued, for plaintiff-appellant. With him on the brief, was J. Michael Jakes. Also on the brief, were George W. Whitney, Henry Y.S. Tang and Richard S. Clark, Brumbaugh, Graves, Donohue & Raymond, New York City, of counsel.

Jerry R. Selinger, Baker, Mills & Glast, Dallas, Tex., argued, for defendant/cross-appellant. With him on the brief, were Andrew S. Viger and Martha E. Waters.

Before MARKEY, [*] NEWMAN and ARCHER, Circuit Judges.

PER CURIAM.

Northern Telecom, Inc., successor-in-interest to Sycor, Inc. (together herein "Sycor"), appeals the decision of the United States District Court for the Northern District of Texas. Northern Telecom, Inc. v. Datapoint Corp., No. CA3-82-1039-D, 1988 WL 156280 (N.D.Tex. Aug. 31, 1988). Datapoint Corporation has filed a cross-appeal. At issue are the validity and enforceability of United States Patent No. 3,760,375 ("the '375 patent"), and infringement by Datapoint.

We affirm the district court's holding that certain claims had not been proved invalid under 35 U.S.C. Secs. 102 and 103, that certain claims are infringed, and that certain claims are invalid for failure to comply with the best mode requirement of 35 U.S.C. Sec. 112. We reverse the district court's holdings of invalidity for failure to comply with the enablement requirement of 35 U.S.C. Sec. 112. We reverse the equitable determination of unenforceability based on inequitable conduct.

The Invention

The '375 patent, entitled "Source Data Entry Terminal", inventors Samuel N. Irwin and Michael R. Levine, relates to a mode of "batch processing" of data. In batch processing, data are entered by the operator and stored, off-line, 1 the operator not interacting with the computer but simply with the batch data entry device.

Batch data preparation and entry were not new. Systems in common use at the time this invention was made included the IBM punch card, the paper tape punch, and the key-to-magnetic tape recorder. The invention of the '375 patent, a programmable processor-based batch data entry terminal, provided an improved way of entering, verifying, and storing data. Entry and verification of data at the source by persons who understand the data removes a source of error in data processing. The inventors built a major business on the invention of the '375 patent.

In accordance with the '375 invention, the data are keyed into a form that is displayed on the screen; the operator is guided by names and instructions on the screen; and certain entries are subject to automatic as well as visual checks and edits. A storage area, or buffer, holds the data as it is entered and, when the buffer holds a complete and correct record, the data are transferred to a magnetic tape cassette.

Page 934

Sycor filed suit charging Datapoint with infringement of the '375 patent. Datapoint raised numerous defenses and counterclaims. The cause was vigorously litigated, the trial taking seventy days over a six-month period. The district court issued extensive findings of fact and conclusions of law, in a 219 page opinion. Each side appeals certain of the issues that were decided adversely to it.

I

Obviousness--35 U.S.C. Sec. 103

Datapoint appeals the district court's determination that Datapoint did not prove by clear and convincing evidence facts requiring a holding that claims 35-37, 40-42, and 44 are invalid under Sec. 103. Datapoint also raises the issue of invalidity under Sec. 103 of claims 19, 20, and 25-28.

Datapoint relies as prior art on the Lincoln Laboratory Instrument Computer (LINC), developed in 1962 by expert witness Professor Clark, running the Patient Interview program, written by a Dr. Slack. The LINC is described as a stored program computer designed for laboratory use, consisting of a keyboard for data entry and commands to the computer, an electronics cabinet, an oscilloscope information display, and reel-to-reel digital magnetic tape units for storing data and programs.

Claims 40-42 and 44

Claim 40 is as follows:

40. A method of implementing a source data entry terminal device, comprising the steps:

connecting selected input/output peripheral components including at least a keyboard data entry means and a visual data display means to a buffer memory and to a central processor organization, and using said buffer memory for temporary storage of data entered by said keyboard means;

incorporating control logic for all such peripheral components in the central processor and controlling each such component by the central processor, such that said peripheral components need have substantially no local control logic of their own;

and dedicating the terminal to a given operational configuration by incorporating a fixed program in said central processor.

Claims 41, 42, and 44 are dependent upon claim 40, and contain additional limitations.

The district court found that the final step of claim 40, requiring a fixed program, differed from the LINC because the LINC did not employ a fixed program. Datapoint contends on this appeal, as it did at trial, that this difference is a "routine design choice".

Sycor does not dispute that fixed programs are not new: inventor Irwin, in his testimony, gave the example of a calculator. Sycor describes the invention of the '375 patent as a new combination of known steps and elements, that provides a new and commercially successful solution to the problems of batch data entry. Sycor states that this combination was not taught or suggested by the prior art, including the LINC and the LINC as modified by the Patient Interview program.

It is insufficient that the prior art disclosed the components of the patented device, either separately or used in other combinations; there must be some teaching, suggestion, or incentive to make the combination made by the inventor. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.Cir.1985) (insufficient to select from the prior art the separate components of the inventor's combination, using the blueprint supplied by the inventor); Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 1546, 221 USPQ 1, 7 (Fed.Cir.1984) ("As this court has held, 'a combination may be patentable whether it be composed of elements all new, partly new or all old' ") (citations omitted); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 220 USPQ 303, 312 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984) (individual references can not be "employed as a mosaic to recreate a facsimile of the claimed invention.") The district court found that the technology

Page 935

for the invention claimed in the '375 patent existed at the time the invention was made, but correctly declined to engage in hindsight reconstruction of the claimed invention.

Datapoint argues that the differences between the LINC and the '375 invention are "trivial". The district court observed that the prior art failed to teach the combination and its use as set forth in the '375 patent, and stated that the invention's "commercial success, although not determinative of the issue, is some indication that the '375 patent was not [sic: invention would not have been] obvious", the court referring to Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966).

The prior art does not suggest the Irwin/Levine solution of the '375 invention to the batch data entry problem. As discussed in In re Rothermel, 276 F.2d 393, 397, 125 USPQ 328, 332, 47 CCPA 866 (1960), the nature of the problem "which persisted in the art", and the inventor's solution, are factors to be considered in determining whether the invention would have been obvious to a person of ordinary skill in that art. See also, e.g., Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1556, 225 USPQ 26, 31 (Fed.Cir.1985) (the prior art must suggest to one of ordinary skill in the art the desirability of the claimed combination). Whether the changes from the prior art are "minor", as Datapoint argues, the changes must be evaluated in terms of the whole invention, including whether the prior art provides any teaching or suggestion to one of ordinary skill in the art to make the changes that would produce the patentee's method and device. Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed.Cir.1984).

We affirm the district court's holding that claims 40-42 and 44 had not been proved invalid on the grounds raised.

Claims 35-37

Claims 35-37 are dependent on claims 29 and 30, and include their limitations, as follows:

29. A method of source data capture, comprising the steps:

generating coded signals representative of alpha-numeric source data desired to be captured;

visually displaying the data of which said signals are representative by use of such signals;

using a buffer memory to temporarily store the data being displayed;

and recording the data on magnetic tape after the data has been visually displayed.

30. The method of claim 29, including the step of using a program format to generate said data-representative signals in a predetermined relative sequence, and visually displaying said data in such sequence.

35. The method of claim 30, wherein said format is used by recording it on...

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184 practice notes
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    • Federal Register February 14, 2013
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    ...that indexing is a relevant factor, but not a prerequisite, to public availability). \16\ See Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 936 (Fed. Cir. \17\ See In re Lister, 583 F.3d 1307, 1313 (Fed. Cir. 2009) (explaining the distinction between access to materials being rest......
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    ...sufficient to support an inference of culpable intent is required.' " Id. at 1181 (quoting Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 939 (Fed.Cir.), cert. denied, 498 U.S. 920, 111 S.Ct. 296, 112 L.Ed.2d 250 (1990)). The conduct must be viewed in light of all the evidenc......
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    ...122 F.3d at 1466 (holding that information that did not amount to an offer for sale was immaterial); N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 940 (Fed.Cir.1990) (affirming no inequitable conduct because "[t]he district court found that the Viatron 21 device was not available ......
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    • Federal Cases United States District Courts 3th Circuit District of New Jersey
    • March 20, 2007
    ...can envision. In such circumstances, the reference cannot be considered material. See, e.g., Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 940 (Fed.Cir.1990) ("Since the Viatron 21 device was not prior art, it was not material to patentability."); Environmental Designs,......
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178 cases
  • 279 F.Supp.2d 489 (D.Del. 2003), 01-487, Isco Intern., Inc. v. Conductus, Inc.
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    • Federal Cases United States District Courts 3th Circuit District of Delaware
    • August 21, 2003
    ...sufficient to support an inference of culpable intent is required.' " Id. at 1181 (quoting Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 939 (Fed.Cir.), cert. denied, 498 U.S. 920, 111 S.Ct. 296, 112 L.Ed.2d 250 (1990)). The conduct must be viewed in light of all the evidenc......
  • 390 F.Supp.2d 63 (D.Mass. 2005), Civ. A. 00-12234, Freedom Wireless, Inc. v. Boston Communications Group, Inc.
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    • Federal Cases United States District Courts 1st Circuit District of Massachusetts
    • September 1, 2005
    ...122 F.3d at 1466 (holding that information that did not amount to an offer for sale was immaterial); N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 940 (Fed.Cir.1990) (affirming no inequitable conduct because "[t]he district court found that the Viatron 21 device was not available ......
  • 482 F.Supp.2d 390 (D.N.J. 2007), Civ. A. 04-754, Pfizer Inc. v. Teva Pharmaceuticals USA, Inc.
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    • Federal Cases United States District Courts 3th Circuit District of New Jersey
    • March 20, 2007
    ...can envision. In such circumstances, the reference cannot be considered material. See, e.g., Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 940 (Fed.Cir.1990) ("Since the Viatron 21 device was not prior art, it was not material to patentability."); Environmental Designs,......
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    • November 22, 1999
    ...Druckmaschinen AG v. Hantscho Comm'l Prods., Inc., 21 F.3d 1068, 1072 (Fed.Cir. 1994); Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 934 (Fed.Cir.), cert. denied, 498 U.S. 920, 111 S.Ct. 296, 112 L.Ed.2d 250 (1990) (insufficient that prior art discloses components of patented dev......
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5 books & journal articles
  • Patent law's unpredictability doctrine and the software arts.
    • United States
    • Missouri Law Review Vol. 76 Nbr. 3, June 2011
    • June 22, 2011
    ...are niches or subfields where patent law should give unpredictability greater consideration than the doctrine has generally allowed. (1.) 908 F.2d 931 (Fed. Cir. 1990). (2.) U.S. Patent No. 3,760,375 (filed July 1, 1971). (3.) N. Telecom, 908 F.2d at 941-43. (4.) See Christine E. Reinhard, ......
  • Reinvention.
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    • Notre Dame Law Review Vol. 92 Nbr. 3, January 2017
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    ...that include hypothetical compounds in order to prevent competitors from developing them). (175) See N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941 (Fed. Cir. 1990) ("It is not fatal if some experimentation is needed, for the patent document is not intended to be a production s......
  • Patent Disclosure
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    • Iowa Law Review Nbr. 94-2, February 2009
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    ...Biotechnology in the Federal Circuit: A Clockwork Lemon, 46 Ariz. L. Rev. 441, 450 (2004) (citing N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941 (Fed. Cir. 1990)). [273] This would also have the beneficial effect, in the eyes of many, of decreasing the ever-increasing numbers of pat......
  • The teaching function of patents.
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    • Notre Dame Law Review Vol. 85 Nbr. 2, February 2010
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    ...of what the invention really is." In re Gay, 309 F.2d 769, 774 (C.C.P.A. 1962); see also N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941 (Fed. Cir. 1990)("It is not fatal if some experimentation is needed, for the patent document is not intended to be a production specifica......
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