Am. Calcar Inc. v. Am. Honda Motor Co. Inc.

• Decision Date: 26 August 2011
• Docket Number: 2009–1567.,Nos. 2009–1503,s. 2009–1503
• Citation: 651 F.3d 1318,99 U.S.P.Q.2d 1137
• Parties: AMERICAN CALCAR, INC., Plaintiff–Appellant,v.AMERICAN HONDA MOTOR CO., INC. and Honda of America Manufacturing, Inc., Defendants–Cross Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

651 F.3d 1318

99 U.S.P.Q.2d 1137

AMERICAN CALCAR, INC., Plaintiff–Appellant,

v.AMERICAN HONDA MOTOR CO., INC. and Honda of America Manufacturing, Inc., Defendants–Cross Appellants.

Nos. 2009–1503

2009–1567.

United States Court of Appeals, Federal Circuit.

June 27, 2011.Rehearing En Banc Denied Aug. 26, 2011.

Gary M. Butter, Baker Botts L.L.P., of New York, NY, argued for plaintiff-appellant. With him on the brief were Paul A. Ragusa, Eliot D. Williams and Jennifer Cozeolino.Robert E. Hillman, Fish & Richardson P.C., of Boston, MA, argued for defendants-cross appellants. With him on the brief was John T. Johnson, of New York, NY. Of counsel were Michael F. Autuoro of New York, NY; Ahmed J. Davis of Washington, DC; John A. Dragseth of Minneapolis, MN; Frank Porcelli and Robert E. Hillman, of Boston, MA; and Michael M. Rosen of San Diego, CA.Before LOURIE, BRYSON, and GAJARSA, Circuit Judges.LOURIE, Circuit Judge.

American Calcar, Inc. (“ACI”) appeals from the final judgment of the United States District Court for the Southern District of California. The court found U.S. Patents 6,330,497 (“the '497 patent”), 6,438,465 (“the ' 465 patent”), and 6,542,795 (“the '795 patent”) unenforceable due to inequitable conduct.¹ The court also granted summary judgment of noninfringement of U.S. Patents 6,754,485 (“the ' 485 patent”), 6,987,964 (“the ' 964 patent”), 6,577,928 (“the ' 928 patent”), 6,524,794 (“the ' 794 patent”), and 6,275,231 (“the ' 231 patent”) in favor of the defendants American Honda Motor Company, Incorporated and Honda of America Manufacturing, Incorporated (collectively, “Honda”).² Further, the court granted summary judgment of infringement of U.S. Patent 6,587,759 (“the '759 patent”).

Following a trial, a jury found the asserted claims of the '497 patent invalid, and the asserted claims of the '465, '795, and '759 patents not invalid.³ The district court denied Honda's renewed motion for judgment as a matter of law (“JMOL”) or new trial on the validity of the ' 759 patent and entered judgment on that patent in favor of ACI.⁴ ACI appeals the court's finding of inequitable conduct and the summary judgment of noninfringement. Honda cross-appeals from the court's JMOL decision. We affirm the court's summary judgment decisions on noninfringement, reverse the court's denial of JMOL on the validity of the ' 759 patent, vacate the district court's decision on inequitable conduct, and remand to the district court to decide the inequitable conduct issue under the guidelines of our recent en banc decision. See Therasense v. Becton, Dickinson & Co., 2011 WL 2028255, 649 F.3d 1276 (Fed.Cir.2011).

Background

ACI asserted fifteen patents against Honda in this case, of which nine patents are at issue in this appeal. The patents relate to various aspects of vehicle computer systems. Figure 10 of the '465 patent illustrates the “Main Menu” screen of one such system.

Image 1 (4.55" X 3.52") Available for Offline Print

The screen allows the user to select, obtain information, and control various features of the vehicle by touching the appropriate option on the screen.

A. Car–Mail Patents

The '485 and '964 patents (the “Car–Mail patents”) relate to notifying drivers about a “faulty condition,” such as a condition for which the manufacturer issues a recall. The inventions attempt to solve the problem of misdelivering messages when the owner of the vehicle has changed. In doing so, the patented system sends the message to a vehicle specific address using electronic car-mail, also referred to as “C-mail,” instead of to the e-mail address of the owner. Asserted claim 1 of the '485 patent is representative of the invention:

1. A method for facilitating maintenance of vehicles, comprising:

electronically sending, to vehicles, messages about a faulty condition of the vehicles, the messages including identifiers of the vehicles, respectively;

searching a database for data concerning correction of the faulty condition of the vehicles based on the identifiers, the data being contributed by one or more vehicle service providers;

determining, based on the data, identifiers of a subset of the vehicles which has not had the faulty condition corrected; and

performing one or more actions based on the identifiers of the vehicles in the subset.

'485 patent, claim 1 (emphases added). Dependent claim 2 recites that “the messages comprise addresses containing the respective identifiers of the vehicles to which the messages are electronically sent.” Id. claim 2.B. Radio Patent

The '231 patent (the “Radio patent”) is directed to a centralized entertainment system for use in vehicles to facilitate a user's control and management of entertainment program selection. Claim 21, from which asserted claims 25 and 26 depend, is reproduced below:

21. A system for use in a vehicle comprising: a receiver for receiving signals from a plurality of sources, the plurality of sources providing a plurality of entertainment programs, respectively, the entertainment programs being classified in a plurality of categories based on contents of the entertainment programs, the receiver deriving, from the received signals, information identifying at least respective categories of entertainment programs provided by the sources; and

an interface for presenting indicators representing respective ones of the plurality of sources, each indicator being selectable to receive entertainment programs from the source represented by the indicator, the indicators being arranged according to the respective categories of entertainment programs provided by the sources represented thereby.

'231 patent, claim 21 (emphasis added).

C. Service Provider Patents

The '928 and '794 patents (the “Service Provider patents”) are directed to identifying a service provider when it is determined that a vehicle needs service, and providing the user with information about the service provider when the vehicle is within a predetermined distance of the service provider. The invention employs a processor built into a vehicle to detect whether the vehicle requires maintenance. Asserted claim 1 of the '928 patent is representative of the invention:

1. A system for use in a vehicle comprising:

a memory for storing information concerning a plurality of providers for servicing the vehicle;

a device connected to one or more components of the vehicle for providing at least one measure concerning the vehicle;

a processing element for determining based on the at least one measure a vehicle condition for which a selected service of the vehicle is needed, the processing element identifying one of the plurality of providers in response to the vehicle condition; and

an interface for providing information concerning the identified provider from the memory when a location of the identified provider is within a pre-determined distance from a current location of the vehicle.

'928 patent, claim 1 (emphases added). The related '794 patent claims selecting a service provider, monitoring the distance to that service provider and alerting the user. Claim 1 of the '794 patent includes a limitation reciting “a processor for selecting at least one service provider for servicing the vehicle when the vehicle needs a service.” (emphasis added).D. Notable Condition Patent

The '759 patent (the “Notable Condition patent”) is also directed toward a system that alerts the driver when a problem arises in the vehicle. The invention terms the problem, such as an overheated engine, as a “notable condition.” Upon alert, the user can select an option that will display information on solving the problem (“coping information”). Figure 13 from the '759 patent illustrates a warning screen that a user may be presented with when a notable condition occurs.

Image 2 (3.63" X 2.96") Available for Offline Print

As shown, the TIP option (1303) appears on the upper-right corner of the screen when a notable condition arises. Clicking on the TIP option brings up information that will help the user address whatever notable condition has occurred. Asserted claim 1 is representative of the invention claimed by the ' 759 patent:

1. A system for use in a vehicle comprising: a display element; an output element for providing information concerning at least one device in the vehicle;

a processor for identifying a notable condition of the vehicle;

a mechanism for providing an alert indicating the notable condition,

a provision of the information concerning the at least one device being interrupted by the alert; and an interface for selecting an option, which is provided on the display element in response to the notable condition, thereby prompting a user to select the option to obtain selected information to cope with the notable condition.

'759 patent, claim 1 (emphases added).

The prior art asserted by Honda against the '759 patent includes two Japanese publications that were not before the United States Patent and Trademark Office (“PTO”). Japanese Patent JP–H05–260605 (“Nihei”) discloses a system for detecting a problem in a vehicle and helping the driver cope with it as shown in the Figure 4, reproduced below:

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Figure 4

J.A. 1471. When a vehicle problem is detected, the system display flashes back-and-forth between the “normal” screen and the “warning” screen, which announces the problem and provides some information on the solution. J.A. 1461–63. At the bottom of the screen are buttons 6 and 7 that enable the user to either accept or decline the option of obtaining additional information on solving the problem (e.g., “Handling Method”). Id. The flashing screens are accompanied by an audible alarm. Id.

Japanese patent JP–H04–87839 (“Mitsubishi”) claims a similar system wherein the user is alerted to the problem by displaying warning on a portion of the screen, as shown in Figure 6 of that patent:

Image 4 (3.59" X 2.49") Available for Offline Print

J.A. 1495. Pressing that portion of the...