Apex Inc. v. Raritan Computer, Inc.
| Decision Date | 02 April 2003 |
| Docket Number | No. 02-1303.,02-1303. |
| Citation | 325 F.3d 1364 |
| Parties | APEX INC., Plaintiff-Appellant, v. RARITAN COMPUTER, INC., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
James D. Berquist, Nixon & Vanderhye P.C., of Arlington, VA, argued for plaintiff-appellant. With him on the brief were J. Scott Davidson and Donald L. Jackson.
John F. Ward, Ward & Olivo, of New York, NY, argued for defendant-appellee. With him on the brief were John W. Olivo, Jr. and David M. Hill.
Before NEWMAN, RADER and GAJARSA, Circuit Judges.
Plaintiff-Appellant, Apex Inc. ("Apex"), seeks review of the final judgment by the United States District Court for the Southern District of New York holding that United States Patent Nos. 5,884,096 ("the '096 patent"), 5,937,176 ("the '176 patent"), and 6,112,264 ("the '264 patent") (collectively "the patents") were not infringed and dismissing all of Defendant-Appellee's, Raritan Computer, Inc. ("Raritan"), counterclaims without prejudice. Apex Inc. v. Raritan Computer, Inc., 187 F.Supp.2d 141 (S.D.N.Y.2002). Because the district court erred as a matter of law in the construction of the disputed claim limitations of the patents, we vacate and remand for further proceedings consistent with this opinion.
Apex markets and sells computer switching systems for connecting computer workstations to remote computers. Apex is the owner, by assignment, of the patents at issue. Raritan also markets and sells computer switching systems for connecting computer workstations to remote computers. Raritan's MasterConsole MX4, SMX, II, and MXU2 products ("the MasterConsole products"), and its Paragon products (collectively "the accused products") are at issue.
The '096, '176, and '264 patents are all continuations of a patent application filed on November 12, 1997 that ultimately issued as United States Patent No. 5,721,842 ("the '842 patent"). The '842 patent is not asserted by Apex in this action.
The patents in this action disclose and claim computerized switching systems, known in the art as keyboard, video, mouse ("KVM") switches, that allow centrally located network administrators to operate multiple server computers without requiring a complicated wiring scheme. '096 patent, col. 1, ll. 49-65. Figure 1 from the '264 patent provides a general overview of the KVM switches disclosed and claimed in the patents.
The computerized switching system allows for a number of server computers 52, 54, 56 to be coupled to a number of workstations 62, 64, 66. Each workstation includes a video monitor 63, a keyboard 65, and a cursor control device such as a mouse 67. Signals from the keyboard 65 and the mouse 67 are received by a signal conditioning circuit or pod 70. The pod transmits the keyboard and mouse signals over a communication link 72 to a programmable, or central crosspoint, switch 60. After being routed through the switch, the keyboard and mouse signals are retransmitted through another communication link 74 to a pod 76, which is coupled to the remotely-located server computer 52. The pod 76 supplies the keyboard and mouse signals through appropriate connectors to keyboard and mouse input ports of the remote computer, just as if the keyboard 65 and mouse 67 were directly coupled to the keyboard and mouse input ports. '096 patent, col. 3, ll. 1-18. An important aspect of the invention relates to the use of an on-screen programming display feature that allows the user to select any particular server from any particular workstation. At the user's request, the switch displays a menu of services on the screen of the user's monitor. The user then can select a particular server from the visual menu using a cursor control device or the keyboard.
Apex asserts Raritan's MasterConsole products and Paragon products infringe claims 1, 6, 7, 10, 11, 20, 26 and 32 of the '096 patent and claims 1-10, 14, m and 16 of the '264 patent. Apex also asserts Raritan's Paragon products infringe claim 1 of the '176 patent. Of the claims asserted, claims 1, 6, 10, 11, 20, 26, and 32, of the '096 patent, claim 1 of the '264 patent, and claim 1 of the '176 patent are independent claims.
Before the district court, the parties disputed fourteen claim limitations within various claims of the patents in this action. Each of the contested limitations from the respective patents and claims is reproduced below.
The '096 patent
a programmable switch for routing keyboard and cursor control signals from the workstation to a selected computer and for routing video signals from the selected computer to the video monitor of the workstation;
a first interface circuit for receiving keyboard and cursor control device signals from the workstation;
an on-screen programming circuit that produces video signals for display on the video monitor;
a second interface circuit disposed between the programmable switch and the selected computer for supplying the keyboard and cursor control device signals routed through the programmable switch to the selected computer
a programmed logic circuit coupled to the first interface that transmits the keyboard and cursor control device signals to the programmable switch and controls the on-screen programming circuit to produce the video signals upon the detection of a predefined input from a user of the workstation, the programmed logic circuit further operating to detect keyboard or cursor control device signals received while the on-screen programming circuit is producing video signals on the video monitor and to control the programmable switch in response to the keyboard or cursor control device signals detected;
producing overlaid video signals for display on the video monitor of the workstation;
The '176 patent
a plurality of first signal conditioning units coupled to the workstations for receiving electronic signals produced by the keyboard and mouse and for creating a serial data packet that includes the electronic signals;
a central crosspoint switch including a number of bidirectional inputs and outputs, said central crosspoint switch receiving the serial data packets from an input and routing the serial data packet to one or more of said outputs;
a plurality of second signal conditioning units coupled to the remote computer systems, for receiving the serial data packets transmitted on one of the plurality of second communication links switch and for supplying the data packets to a keyboard and mouse input of the remote computer, the plurality of second signal conditioning units receiving video signals produced by the remote computer systems and transmitting the video signals to the central switch on one of the plurality of second communication links;
The '264 patent
a computer-side interface for simultaneously physically connecting to independent, dedicated cables of respective keyboard and analog video outputs of plural computers;
a user-side interface for physically connecting to a first set of independent, dedicated cables of a first keyboard and an analog video input of a first monitor; an analog video overlay image generating circuit, disposed between the computer-side interface and the user-side interface, for producing an analog overlay video signals internal to the switching system; and
an analog video overlay circuit, disposed between the computer-side interface and the user-side interface, for combining (1) a portion of the analog video signals received by the analog video receiving circuit and (2) the analog overlay video signals generated internally to the switching system to form a combined analog signal that is output to the first monitor via the user-side interface.
After a seven-day bench trial, the district court construed all fourteen of the disputed limitations as follows.
Means-plus-function limitations
The district court held that the limitations including the terms "first interface circuit," "on-screen programming circuit," "programmed logic circuit," "second interface circuit," "first signal conditioning unit," "second signal conditioning unit," "computer-side interface," "user-side interface," "analog video overlay image generating circuit," and "analog video overlay circuit" were all means-plus-function limitations. Apex, 187 F.Supp.2d at 160. Despite Apex's contentions that the disputed limitations contained additional adjectives that, as a whole, further qualify and describe the particular structure recited, id. at 158, the district court determined that the claim limitations "using the words `circuit,' `interface,' and `units' do not simply by the use of these words connote sufficient structure to perform the relevant functions recited in the element." Id. at 160-63.
"Serial data packet"
The district court interpreted the term "serial data packet" as "one that can, but need not, include both keyboard and mouse signals." Id. at 161. As support for this interpretation, the district court first looked to the language of the claims which stated as follows:
a plurality of first signal conditioning units coupled to the workstations for receiving electronic signals produced by the keyboard and mouse and for creating a serial data packet that includes the electronic signals.
Id. at 154; '176 patent, col. 13, ll. 59-62. The district court then looked to the written description which it contended supported this interpretation with the statement:
The CPU 80 then reads the digitally buffered keyboard and mouse signals from the keyboard mouse interface 82 and converts the signals into a data packet that is transmitted to the remote computer.
Apex, 187 F.Supp.2d at 155. Lastly, the district court looked to the prosecution history relying on the examiner's reasons for allowance which stated:
The prior art of record does not...
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