Deering Precision Instr. v. Vector Distrib. Sys.
| Decision Date | 17 October 2003 |
| Docket Number | No. 02-1197.,No. 02-1013.,02-1013.,02-1197. |
| Citation | 347 F.3d 1314 |
| Parties | DEERING PRECISION INSTRUMENTS, L.L.C., Plaintiff-Appellant, v. VECTOR DISTRIBUTION SYSTEMS, INC. and Gram Precision Scales, Inc., Defendants-Cross-Appellants, and Mohan Thadani, Defendant, and Bonso Electronics International, Inc., Defendant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Lynn H. Murray, Grippo & Elden, of Chicago, Illinois, argued for plaintiff-appellant. With her on the brief was R. David Donoghue. Of counsel was Laura K. McNally.
Michael J. Fink, Greenblum & Bernstein, P.L.C., of Reston, Virginia, argued for defendants-cross appellants.
Before BRYSON, GAJARSA, and PROST, Circuit Judges.
Deering Precision Instruments, L.L.C. ("Deering") appeals from the judgment issued by the United States District Court for the Northern District of Illinois granting summary judgment to Vector Distribution Systems, Inc., Gram Precision Scales, Inc., Bonso Electronics International, Inc., and Mohan Thadani (collectively "Vector") of noninfringement of United States Patent No. 4,744,428 (the "'428 patent"). Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc., No. 01-C-1118, 2001 WL 1035713 (N.D.Ill. Sept. 4, 2001). Vector cross-appeals the district court's denial of its motion for attorney fees. We affirm the district court's grant of summary judgment of no literal infringement. We vacate the district court's grant of summary judgment of no infringement under the doctrine of equivalents and remand for further proceedings consistent with this opinion. We affirm the district court's denial of Vector's motion for attorney fees.
The '428 patent, issued to David Knotter, Donald Levin, and Jody Numbers, and assigned to Deering, is directed to a compact, light-weight, pocket-type scale capable of accurately weighing substances up to ten grams. The '428 patent issued on May 17, 1988 and has five claims, claims 1, 3, and 4 being in independent form. Claims 1, 2, 4, and 5 are at issue in the present action. Representative claim 1 recites as follows:
1. A lightweight portable scale comprising a base, a beam having a substance holder at one end thereof and a scale extending toward the opposite end thereof, a sliding weight movably carried by said beam for movement along said scale, a pair of metallic fulcrum posts projecting upwardly from said base, and a pair of metallic bearing inserts in said beam for cooperation with said fulcrum posts, one pair of the pair of posts or the pair of inserts having pointed projections thereon receivable in tapered recesses in the other pair for positioning and pivotally supporting said beam, said sliding weight being movable from a zero position to a position near the said opposite end of the beam and said sliding weight when in its zero position having a portion thereof disposed substantially in an imaginary plane containing the fulcrum of the beam, whereby to minimize the weight of the substance holder required to balance the beam when the sliding weight is in its zero position.
'428 patent, col. 6, ll. 12-30 (emphasis added).
Generally, the scale of the '428 patent functions as any normal balance-type scale. As shown in Figure 2 of the '428 patent below, the scale has a bottom portion 14 that serves as a base for a weighing mechanism 17. Id. at col. 2, ll. 64-65. The weighing mechanism comprises a balance beam 18 mounted for pivotal movement on a pair of fulcrum posts 21. Id. at col. 3, ll. 3-8. The fulcrum posts are adapted to cooperate with bearing inserts 24 in the balance beam. The balance beam has a material holder 32, or tray, on one side of the fulcrum and adjustable sliding weights 34 and 35 on the opposite side of the fulcrum. Id. at col. 3, ll. 46-57. In operation, the weights are moved to balance the beam.
An important aspect of the invention is the minimization of the overall size and weight of the scale while maintaining the ability to weigh materials up to 10 grams. To accomplish this, the inventors designed sliding weight 35 to minimize the overall weight of the scale by moving the center of mass of the sliding weight closer to the plane created by the fulcrums of the scale. Figure 5 of the '428 patent above shows the sliding weight 35 in its zero position, i.e., the position where the beam balances without any material in the holder.
The written description provides that the sliding weight 35 be constructed in such a manner that:
the heavy metallic insert 44 therein is offset from the pointer 37 of the weight in the direction of the fulcrum 19 for the balance beam 18. Indeed, the metallic insert 44 is offset to an extent that when the coarse sliding weight 35 is in its zero position, adjacent the cross-bar portion 27 of balance beam 18, the metallic insert is disposed substantially in the plane of the fulcrum 19, i.e. the imaginary vertical plane containing the center lines of the fulcrum posts 21 and 22. With the center of insert 44 aligned precisely in the plane of fulcrum 19 the insert becomes essentially neutral so far as balance of the balance beam 18 and the holder 28 are concerned when the weight 35 is in its zero position and the holder 28 is empty. This greatly minimizes the amount of mass that must be incorporated into the holder 28 portion of the weighing mechanism 17.
Id. at col. 5, ll. 12-29 (emphases added).
The application filed with the United States Patent and Trademark Office ("PTO") that matured as the '428 patent initially contained ten claims, claims 1 and 9 being in independent form. Original independent claim 1 defined a light-weight portable scale having a base, a beam with a substance holder at one end and a scale extending in an opposite direction, a sliding weight movably carried by the beam for movement along the scale, a pair of metallic fulcrum posts projecting upwardly from the base, and a pair of metallic bearing inserts in the beam for cooperation with the fulcrum posts.
Original independent claim 9 was similar to original independent claim 1, with the additional limitation that when the sliding weight is in the zero position, a portion of the sliding weight was "disposed substantially in an imaginary plane containing the fulcrum of the beam." The parties refer to this limitation as the "Zero Position Limitation."
Original claim 3, dependent on claim 1, similarly included the Zero Position Limitation:
3. The portable scale of Claim 1 further characterized in that said sliding weight is movable from a zero position to a position near the said opposite end of the beam and said sliding weight when in its zero position has a portion thereof disposed substantially in an imaginary plane containing the fulcrum of the beam, whereby to minimize the weight of the substance holder required to balance the beam when the sliding weight is in its zero position.
(emphasis added.) The Zero Position Limitation was thus the only additional limitation in dependent claim 3.
After review of the application, the PTO rejected claims 1, 2, and 5-7 under 35 U.S.C. § 103(a) as being obvious over U.S. Patent No. 4,050,531 in view of U.S. Patent No. 3,082,833. The PTO objected to claims 3, 4, and 8-10, but indicated that they would be allowable if rewritten in independent form.
The applicants filed a response to the rejection deleting original claims 1 and 3. They submitted new claim 11, which was original claim 3 rewritten in independent form. With respect to original claim 9, which had not been rejected, the applicants stated:
It is believed that the Examiner must have overlooked the fact that Claim 9 is an independent base claim and that Claim 10 is dependent only from Claim 9. Claim 9 calls for a "sliding weight when in its zero position having a portion thereof disposed substantially in an imaginary plane containing the fulcrum of the beam." This feature is not disclosed in the references. It is therefore believed that Claims 9 and 10 are allowable as written.
(emphasis added.)
The PTO subsequently issued the patent on May 17, 1998. Claim 11 issued as independent claim 1 and original claim 9 issued as claim 4.
Vector manufactures and sells the accused device, its own version of a pocket-size scale, the VX-10. The VX-10 is shown in Figures 1 and 2 below.
The VX-10 has two slidable weights 10 and 20, each of which is movable along the balance beam 30 of the scale. The metallic insert of the sliding weight 20 is positioned directly beneath the pointer. The sliding weights of the VX-10, when in their respective "zero positions" have no portion extending into the imaginary plane containing the fulcrum 40. At its "zero position," the sliding weights 10 and 20 of the VX-10 are no closer than 0.10 inches from the imaginary plane 60 containing the fulcrum 40. The VX-10 has an additional stationary counterweight 70 affixed to the substance holder support member 55. This additional counterweight balances the scale in the zero position as opposed to the '428 patent, which places the majority of the center of mass of the weight substantially in the plane of the fulcrum. The additional counterweight 70 coupled with the placement of the sliding weights 10 and 20 outside the plane containing the fulcrum are the decisive design differences between the VX-10 and the '428 patent for the purposes of this action.
In 2001, Deering discovered Vector was selling a pocket-size scale and sued Vector for infringement. In its action, Deering sought an injunction and damages for the sale of the VX-10, alleging that the VX-10 infringed claims 1, 2, 4, and 5 of the '428 patent. Vector...
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