Elbex Video, Ltd. v. Sensormatic Electronics Corp.

• Decision Date: 28 November 2007
• Docket Number: No. 2007-1097.,2007-1097.
• Citation: 508 F.3d 1366
• Parties: ELBEX VIDEO, LTD., Plaintiff-Appellant, v. SENSORMATIC ELECTRONICS CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

508 F.3d 1366

ELBEX VIDEO, LTD., Plaintiff-Appellant, v. SENSORMATIC ELECTRONICS CORPORATION, Defendant-Appellee.

No. 2007-1097.

United States Court of Appeals, Federal Circuit.

November 28, 2007.

Michael I. Rackman, Gottlieb, Rackman & Reisman, P.C., of New York, NY, argued for plaintiff-appellant. With him on the brief was Steven Stern.

Mark L. Levine, Bartlit, Beck, Herman, Palenchar & Scott LLP, of Chicago, IL,

argued for the defendant-appellee. With him on the brief was Alan E. Littmann.

Before DYK and MOORE, Circuit Judges, COTE, District Judge.^*

Opinion for the court filed by Circuit Judge MOORE. Dissenting opinion filed by District Judge COTE.

MOORE, Circuit Judge.

Elbex Video, Ltd. (Elbex) appeals from the grant of summary judgment in favor of Sensormatic Electronics Corp. (Sensormatic) by the United States District Court for the Southern District of New York. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., No. 04-CIV-9530 (RO), 2006 WL 2588139 (S.D.N.Y. Sept. 6, 2006) (SJ Order). The district court determined that Sensormatic's accused closed circuit television (CCTV) systems do not infringe claim 1 of United States Patent No. 4,989,085 (the '085 patent). We affirm-in-part, reverse-in-part, and remand.

I. BACKGROUND

A. The '085 Patent

The '085 patent relates to CCTV systems. CCTV systems include a supervisory station and several remote-controllable television cameras. '085 patent, col.1 ll.13-15. The supervisory station includes a monitor for receiving and displaying video signals received from the remote-controllable television cameras, a device for controlling the operation of the television cameras, and a switching device that permits a user to select a camera to control with the controlling device. Id. at col.1 ll.16-24. In conventional systems, the switching device includes two switches: one for video and one for the control signals. See id. at col.1 ll.29-32. When the switching device is properly configured, the controlling device can control "the operation and coordinates of the television camera, such as up-down (tilting), left-right (panning), far-near (focusing) and wide-tele (zooming)" of the desired camera. Id. at col.1 ll.18-21; see also id. at col.1 ll.25-28; col.6 ll.39-44.

According to the '085 patent, an operator using a conventional system might inadvertently control the wrong camera, sometimes unknowingly. The '085 patent seeks to solve this problem by employing a unique addressing scheme that includes using cameras to generate a first code signal unique to each camera in the system. Id. at col.1 ll.55-59; col.3 l.29-col.4 l.7. That first code signal is sent, along with the video signal, to a receiving device located at the supervising station, where the first code signal is extracted by a decoder. Id. at col.4 ll.8-29. After the receiving device receives a first code signal, that signal can be input into a "controlling means" that generates a "second code signal corresponding to the received [first] [code signal]" and may transmit that second code signal along with control commands to the television camera. Id. at col. 1 ll.61-67; col.2 ll.10-19; col.4 ll.30-41. A second decoder may filter the second code signal from the control signals and a comparison may be performed to determine if the second code signal "coincides with the camera code." Id. at col.2 ll.27-31. Thus, the control signals only control the camera receiving the control signals when the second code signal matches the camera code. Id. at col.2 ll.32-38.

Claim 1, the sole independent claim, provides:

A closed circuit television apparatus comprising:

[1] a plurality of remote-controlled television cameras for generating video signals, each camera including a circuit for generating 1st code signals allotted to a respective television camera;

[2] receiving means for receiving said video signals and said 1st code signals;

[3] switching means for selecting a television camera to be connected to said receiving means;

[4] said receiving means including a monitor for displaying images corresponding to the video signals received in said receiving means; and

[5] controlling means for controlling said television camera;

[6] said controlling means including control and code generator means for generating control signals to control said television camera and 2nd code signals corresponding to the 1st code signals received in said receiving means and for transmitting said control signals and said 2nd code signals to said television camera;

[7] each television camera further including a command circuit receiving said control signals and said 2nd code signals generated in said controlling means and operating said television camera in accordance with said control signals when said 2nd code signals coincide with a code allotted to said television camera.

'085 patent, col.7 l.28-col.8 l.14 (emphases and limitation numbers added).

B. Procedural Background

Elbex filed suit against Sensormatic on December 3, 2004 alleging that Sensormatic's CCTV systems infringed claim 1 of the '085 patent. Almost two years later, the district court granted Sensormatic's motion for summary judgment of noninfringement. SJ Order, 2006 WL 2588139. The district court gave two independent reasons for its decision. First, the district court found that Sensormatic's CCTV systems did not satisfy the addressing limitations (i.e., limitations [1], [6], and [7]) of claim 1 and therefore could not, as a matter of law, infringe any claim of the '085 patent. Id. at 2006 WL 2588139 at *2. The district court found that

None of the methods Sensormatic uses to address commands to cameras relies upon code signals or addresses sent from the camera ("1st code signals") or code signals or addresses that the controller generates based on any information from the camera ("2nd code signals"). Rather, Sensormatic relies on addresses that are generated in the controller itself based on the number of the video input to which the camera being displayed is connected. Sensormatic's products therefore lack the "2nd code signal" that "corresponds" to a "1st code signal," as required by claim 1.

Id. (emphasis in original).

The district court's alternate rationale concerned the claim limitation "receiving means for receiving said video signals and said 1st code signals." The district court found that during prosecution before the United States Patent and Trademark Office (PTO) the inventor had limited the "receiving means" to a "monitor" that receives the video and first code signal. SJ Order, 2006 WL 2588139 at *2. The district court concluded that "whether by mistake or otherwise," the inventor "agreed" to limit the "`receiving means' to a structure through which a video monitor receives the 1st code signal from a camera." Id. at *2 n. 4. This "agreement" appears in a response to an office action:

To ensure a no-error operation the camera generates a code signal, which is received by the monitor, based upon which, a code is sent back to the camera along with the control signal. Only coincidence of the original camera code and the code returned to the camera will allow the control signals to operate the camera. The principle of the present invention is, therefore a transmission of a code from the camera to the monitor of the receiving means and back to the camera.

U.S. Pat.App. Serial No. 07/270,577, Amendment & Remarks, at 5 (filed Jan. 24, 1990) (hereafter Amendment & Remarks) (emphases in original). Although the district court acknowledged that obvious errors in statements made before the PTO are not necessarily binding, it concluded that this statement was binding. SJ Order, 2006 WL 2588139 at *2 n. 4 ("Elbex cannot have it both ways—having received the benefit of its representation in 1990, Elbex cannot be permitted now to argue that the claims were not limited by these statements."). The district court implicitly concluded that the prosecution statements would not have been viewed by one of ordinary skill in the art to be obvious errors. Therefore, the district court held that summary judgment was also appropriate because "[i]n Sensormatic's CCTV systems . . . no data is ever sent from the camera to the monitor."¹ Id. at *2.

Elbex filed a timely appeal. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II. DISCUSSION

We review a district court's grant of summary judgment of noninfringement without deference and draw all reasonable factual inferences in favor of the nonmovant. See Cortland Line Co. v. Orvis Co., 203 F.3d 1351, 1355-56 (Fed.Cir.2000). "This court decides for itself whether `the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue of material fact and that the moving party is entitled to a judgment as a matter of law.'" Invitrogen Corp. v. Biocrest Mfg., Inc., 327 F.3d 1364, 1367 (Fed.Cir.2003) (quoting Fed. R.Civ.P. 56(c)).

A determination of infringement is a two-step inquiry: first, the claims are construed, and second, the properly construed claims are applied to the accused devices. See, e.g., Acumed L.L.C. v. Stryker Corp., 483 F.3d 800, 804 (Fed.Cir.2007). Claim construction is a question of law that we review de novo. See, e.g., Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc).

A. Claim Construction: "Receiving Means"

The claimed CCTV system requires a "receiving means for receiving said video signals and said first code signals." Because this limitation uses "means for" there is a presumption that the claim invokes 35 U.S.C. § 112, ¶ 6. See Biomedino L.L.C. v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed.Cir.2007). Neither party contends that the presumption has been rebutted; we agree that it has not. Our case law provides the appropriate framework for construing a claim limitation expressed in means-plus-function format. "First, the court must determine the claimed function." Applied Med. Res....