Cybor Corp. v. FAS Technologies, Inc., Nos. 96-1286

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Writing for the Court: Before MAYER; ARCHER; PLAGER; BRYSON; MAYER, Chief Judge, with whom PAULINE NEWMAN; RADER
• Citation: 138 F.3d 1448,46 USPQ2d 1169
• Parties: CYBOR CORPORATION, Plaintiff-Appellant, v. FAS TECHNOLOGIES, INC., and Fastar Ltd., Defendants-Cross Appellants.
• Docket Number: Nos. 96-1286,96-1287
• Decision Date: 25 March 1998

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138 F.3d 1448 46 U.S.P.Q.2d 1169 CYBOR CORPORATION, Plaintiff-Appellant,
v.
FAS TECHNOLOGIES, INC., and Fastar Ltd., Defendants-Cross Appellants. Nos. 96-1286, 96-1287. United States Court of Appeals,
Federal Circuit. March 25, 1998.

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Tod L. Gamlen, Baker & McKenzie, of Palo Alto, CA, argued for plaintiff-appellant. With him on brief was David I. Roche, of Chicago, IL.

Douglas A. Cawley, Hughes & Luce, L.L.P., of Dallas, TX, argued for defendants-cross appellants. With him on brief was Aubrey Nick Pittman.

Before MAYER, Chief Judge, ^* RICH, NEWMAN, Circuit Judges, ARCHER, Senior Circuit Judge, ^** MICHEL, PLAGER, LOURIE, CLEVENGER, RADER, SCHALL, BRYSON, and GAJARSA, Circuit Judges.

Opinion for the court filed by Senior Circuit Judge ARCHER, in which Circuit Judges RICH, MICHEL, PLAGER, LOURIE, CLEVENGER, SCHALL, BRYSON, and GAJARSA join; Circuit Judge RADER joins as to part IV. Concurring opinions filed by Circuit Judges PLAGER and BRYSON. Opinions

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concurring in the judgment filed by Chief Judge MAYER, which Circuit Judge NEWMAN joins, and Circuit Judge RADER. Additional views filed by Circuit Judge NEWMAN, which Chief Judge MAYER joins.

ARCHER, Senior Circuit Judge.

Cybor Corporation (Cybor) appeals from the judgment of the United States District Court for the Northern District of California, 93-CV-20712 (Oct. 31, 1995), that Cybor pump, Model 5226, infringes the claims of U.S. Patent No. 5,167,837 (the '837 patent), currently owned by FAStar, Ltd. and exclusively licensed to FAS Technologies, Inc. (collectively FAS). FAS cross-appeals the judgment as to the damages calculation, the denial of enhanced damages, and the refusal to declare the case exceptional and to award attorney fees. A panel heard oral argument on January 29, 1997. Before its opinion issued, however, this court sua sponte on September 5, 1997 ordered that this case be decided in banc.

We affirm the district court's judgment in its entirety. In so doing, we conclude that the Supreme Court's unanimous affirmance in Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (Markman II ), of our in banc judgment in that case fully supports our conclusion that claim construction, as a purely legal issue, is subject to de novo review on appeal. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir.1995) (in banc) (Markman I ).

BACKGROUND

The '837 patent discloses a device and method for accurately dispensing industrial liquids. The primary use of the patented inventions is to dispense small volumes of liquid onto semiconductor wafers. Claim 1 is representative and reads: ¹

1. In a device for filtering and dispensing fluid in a precisely controlled manner, the combination of:

first pumping means;

second pumping means in fluid communication with said first pumping means; and

filtering means between said first and second pumping means, whereby said first pumping means pumps the fluid through said filtering means to said second pumping means;

in which each of said first and second pumping means includes surfaces that contact the fluid, said surfaces being of materials that are non-contaminating to industrial fluids which are viscous and/or high purity and/or sensitive to molecular shear; and

comprising means to enable said second pumping means to collect and/or dispense the fluid, or both, at rates or during periods of operation, or both, which are independent of rates or periods of operation, or both, respectively, of said first pumping means.

Figure 2 of the patent illustrates a preferred embodiment of the invention:

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In the preferred embodiment, the fluid to be filtered enters the system through tubing 14 and travels through the ball valve 24 to the first pumping means 30 via tubing 41. The pumping means 30 then pumps the liquid back through the ball valve 24, which rotates to close tubing 14 and open tubing 102. The liquid then flows to the filter means 100 in which it is filtered. The filtered liquid (filtrate) then flows through tubing 116 and into the second pumping means 120. The filtrate can then be immediately dispensed, accumulated in the upper compartment 131 of the pumping means 120, or simultaneously accumulated and dispensed. The filtrate is dispensed in precise measurements by the second pumping means 120 through tubing 16 at rates and during periods of operation that are independent of the first pumping means 30.

The dual stage pump manufactured by Cybor is used for the same purpose as that of the patented invention--application of liquid in precise, small volumes onto semiconductor wafers. It is illustrated below:

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In the accused device, pump 1 draws the liquid from a source bottle through a feed line and through a three-way solenoid valve. The solenoid valve then closes the passage to the source bottle and opens the line to the filter, allowing pump 1 to deliver the liquid to the filter. After the liquid passes through the filter, the filtrate flows to a reservoir external to pump 2, where it accumulates until dispensed by pump 2. It is uncontested that the external reservoir, coupled with the second pump, allows the system to accumulate, dispense, or simultaneously accumulate and dispense filtrate. The filtrate leaves the reservoir through another three-way solenoid connector, or valve, and enters the second pump. The solenoid valve then closes the passage to the reservoir and opens the dispense port, through which the second pump dispenses the filtrate back through the solenoid valve and on through the dispensing port and line.

On September 23, 1993, Cybor sued FAS for a declaratory judgment of non-infringement, invalidity, and unenforceability of the '837 patent. FAS counterclaimed ² for infringement of all twenty claims and sought damages and injunctive relief. The case proceeded to trial, and the jury found by special verdict that the claims were not invalid, that Cybor literally infringed all the claims except 11, 12, and 16, and that these three remaining claims were infringed under the doctrine of equivalents. The jury determined the infringement to be willful for all claims except claim 16.

After the jury rendered its liability verdict, the district court denied Cybor's renewed motion for Judgment as a Matter of Law (JMOL) that it did not infringe the '837 patent, and also denied FAS's motion for an exceptional case award of attorney fees pursuant to 35 U.S.C. § 285 (1994). Prior to the entry of final judgment, however, this court decided Markman I, which held that claim construction is a matter of law to be determined exclusively by the judge. Cybor then filed a motion for reconsideration of its JMOL motion in light of that decision, but the district court denied reconsideration. After further proceedings on damages, the district court on October 11, 1995, filed its Findings of Fact and Conclusions of Law permanently enjoining Cybor from making, using, or selling its system, awarding FAS $130,912 in damages, and denying FAS's motion for enhanced damages under 35 U.S.C. § 284 (1994). The district court entered its

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final judgment on October 31, 1995, and these appeals followed. DISCUSSION

I.

A. This court reviews a denial of a motion for JMOL de novo by reapplying the JMOL standard. See Read Corp. v. Portec, Inc., 970 F.2d 816, 821, 23 USPQ2d 1426, 1431 (Fed.Cir.1992). Under this standard, we can reverse a denial of a motion for JMOL only if the jury's factual findings are not supported by substantial evidence or if the legal conclusions implied from the jury's verdict cannot in law be supported by those findings. See Kearns v. Chrysler Corp., 32 F.3d 1541, 1547-48, 31 USPQ2d 1746, 1751 (Fed.Cir.1994).

An infringement analysis involves two steps. First, the court determines the scope and meaning of the patent claims asserted, see Markman II, 517 U.S. at 371-73, 116 S.Ct. at 1387-88, and then the properly construed claims are compared to the allegedly infringing device, see Read Corp., 970 F.2d at 821, 23 USPQ2d at 1431. Although the law is clear that the judge, and not the jury, is to construe the claims, this case presents the issue of the proper role of this court in reviewing the district court's claim construction.

In Markman I, we held that, because claim construction is purely a matter of law, this court reviews the district court's claim construction de novo on appeal. See Markman I, 52 F.3d at 979, 981, 34 USPQ2d at 1329, 1331. In reaching this conclusion, we recognized that

[t]hrough this process of construing claims by, among other things, using certain extrinsic evidence that the court finds helpful and rejecting other evidence as unhelpful, and resolving disputes en route to pronouncing the meaning of claim language as a matter of law based on the patent documents themselves, the court is not crediting certain evidence over other evidence or making factual evidentiary findings. Rather, the court is looking to the extrinsic evidence to assist in its construction of the written document, a task it is required to perform. The district court's claim construction, enlightened by such extrinsic evidence as may be helpful, is still based upon the patent and prosecution history. It is therefore still construction, and is a matter of law subject to de novo review.

Id. at 981, 52 F.3d 967, 34 USPQ2d at 1331 (emphasis in original and footnote omitted).

After the Supreme Court's decision in Markman II, panels of this court have generally followed the review standard of Markman I. See Serrano v. Telular Corp., 111 F.3d 1578, 42 USPQ2d 1538 (Fed.Cir.1997); Alpex Computer Corp. v. Nintendo Co., 102 F.3d 1214, 40 USPQ2d 1667 (Fed.Cir.1996); Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 40 USPQ2d...