Golight, Inc. v. Wal-Mart Stores, Inc.

• Decision Date: 20 January 2004
• Docket Number: No. 02-1608.,02-1608.
• Citation: 355 F.3d 1327
• Parties: GOLIGHT, INC., Plaintiff-Appellee, v. WAL-MART STORES, INC., Defendant/Third Party Plaintiff-Appellant, and North Arkansas Wholesale Company, Inc., Defendant, v. Innovative International (H.K.) Ltd., Third Party Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1327

355 F.3d 1327

GOLIGHT, INC., Plaintiff-Appellee, v. WAL-MART STORES, INC., Defendant/Third Party Plaintiff-Appellant, and North Arkansas Wholesale Company, Inc., Defendant, v. Innovative International (H.K.) Ltd., Third Party Defendant-Appellee.

No. 02-1608.

United States Court of Appeals, Federal Circuit.

January 20, 2004.

COPYRIGHT MATERIAL OMITTED

David L. DeBruin, Michael Best & Friedrich LLP, of Milwaukee, WI, argued for plaintiff-appellee. With him on the brief was Matthew S. MacLean.

William D. Coston, Venable, Baetjer, Howard & Civiletti, LLP, of Washington, DC, argued for defendant/third party plaintiff-appellant. With him on the brief was Kevin B. Collins.

Before SCHALL, Circuit Judge, ARCHER, Senior Circuit Judge, and PROST, Circuit Judge.

PROST, Circuit Judge.

Wal-Mart Stores, Inc. ("Wal-Mart") appeals the decision of the United States District Court for the District of Colorado after a bench trial entering a final judgment against Wal-Mart for infringement of United States Patent No. 5,673,989 ("the '989 patent") owned by Golight, Inc. ("Golight"). Golight, Inc. v. Wal-Mart Stores, Inc., 216 F.Supp.2d 1175 (D.Colo.2002).

Because we find no errors of law by the district court or any clearly erroneous findings of fact, we affirm.

BACKGROUND

The '989 patent is for a wireless, remote-controlled, portable search light invented by Gerald Gohl and Al Gebhardt. The idea for this invention originated from Gohl's experiences cattle ranching in Nebraska, where he used hand-held search lights to locate and assist calving animals in harsh blizzard conditions. Gohl determined that it would be advantageous under such conditions to have a portable search light that could be mounted on the outside of a vehicle and remotely controlled from either inside or outside the vehicle. Together, Gohl and Gebhardt developed and patented the Golight, which is generally the subject of U.S. Patent No. 5,490,046 ("the '046 patent"), and then the wireless, remote-controlled Radio Ray, which is generally the subject of the '989 patent.

In 1997, Wal-Mart, through its Sam's Club stores, began selling a portable, wireless, remote-controlled search light. This search light was allegedly a low-end copy of the Radio Ray, being virtually identical in all relevant respects but for the "apparently arbitrary, and rather suspicious, placement of a plastic `stop' piece which prevented" the search light from rotating through 360°. Id. at 1180. This stop piece restricted the Wal-Mart search light to rotating somewhere between 340° and 351°. Counsel for Golight sent Wal-Mart a cease and desist letter on December 11, 1998, indicating Golight's belief that Wal-Mart's device infringed the '989 patent. Golight then filed this lawsuit on February 14, 2000. After holding a three-day bench trial, the district court found that Wal-Mart infringed claim 11 of the '989 patent by importing portable search lights literally meeting each limitation of the claim, the claim was not invalid, Wal-Mart's infringement was willful, and Golight was entitled to damages of $464,280 plus its attorney fees.

On appeal, Wal-Mart challenges the district court's claim construction and argues that it is entitled to judgment of noninfringement, should we adopt its proposed claim construction. Should we affirm the district court's claim construction, Wal-Mart concedes infringement but argues that the district court should have found claim 11 invalid as obvious. Wal-Mart also challenges the district court's ruling that any infringement was willful, arguing that such a finding is based on clearly erroneous facts and was an abuse of the district court's discretion. With respect to damages, Wal-Mart argues that the district court's selected royalty rate is unreasonable as a matter of law and is based on factual findings that are clearly erroneous.

We have jurisdiction to consider Wal-Mart's appeal under 28 U.S.C. § 1295(a)(1).

DISCUSSION

Following a bench trial, we review the district court's judgment for clearly erroneous findings of fact and its conclusions of law de novo. Allen Eng'g Corp. v. Bartell Indus., 299 F.3d 1336, 1343-44 (Fed.Cir. 2002). "A finding is clearly erroneous when, despite some supporting evidence, `the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.'" Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1328 (Fed.Cir.2003) (quoting United States v. U.S. Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 92 L.Ed. 746 (1948)).

I. CLAIM CONSTRUCTION

Claim 11, the only claim of the '989 patent at issue, states as follows:

In a searchlight apparatus wherein a lamp unit is mounted in a housing having vertical drive means for tilting said lamp unit in a vertical direction and horizontal drive means for rotating said lamp unit in a horizontal direction, the improvement comprising:

a base support member on said housing;

attaching means on said base support member for releasably attaching said base support member to a substantially flat surface, said attaching means including a rubber boot on said base support member, and actuating means engageable with said boot for drawing said boot into vacuum-tight relation to said surface; and

wireless remote control means for controlling vertical and horizontal movement of said searchlight apparatus, said remote control means including a self-contained transmitter adapted to be carried by an operator of a motor vehicle wherein said drive means can be operated by wireless transmission both from within said vehicle and at remote distances from said vehicle without electrical connection between said drive means and said remote control means, and having an on/off switch and a four-way directional control switch, and a receiver mounted within said housing.

'989 patent, col. 8, ll. 33-55 (emphasis added). The only claim construction dispute in this case is whether the emphasized claim language implicitly requires the search light to be capable of rotating through 360°. Claim 11 has no such explicit limitation, unlike the other independent claims of the '989 patent, which recite "horizontal drive means for rotating said lamp unit in a horizontal direction through at least 360°." See, e.g., '989 patent, col. 7, ll. 13-14. The district court concluded that "[c]laim 11 does not contain a 360 degree limitation." Golight, Inc. v. Wal-Mart Stores, Inc., No. 00-Z-331 (MJW) (D.Colo. Oct. 24, 2000). Wal-Mart disagrees, arguing that the written description and prosecution history compel us to construe the claim as having an implicit 360° limitation.

Claim construction is a matter of law that we review de novo. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

A

Wal-Mart first argues that the written description of the '989 patent requires that claim 11 be construed to include a limitation of rotation through 360°. Acknowledging that such a limitation does not expressly appear in claim 11, Wal-Mart nevertheless contends that the scope of the claims cannot exceed what is supported by the written description of the patent; because the patentees only described a search light capable of rotation through 360°, the claims must be so limited. Wal-Mart also argues that the written description includes specific statements limiting the claimed invention to a device that rotates through 360°. In particular, Wal-Mart relies on the statement that

[a] searchlight apparatus in accordance with the present invention includes a lamp unit mounted in a housing which has a motor-driven vertical drive mechanism for tilting the lamp unit in a vertical direction and a motor-driven horizontal drive mechanism for rotating the lamp unit in a horizontal direction through at least 360°.

'989 patent, col. 2, ll. 3-8.

"In construing claims, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use `to particularly point[] out and distinctly claim[] the subject matter which the patentee regards as his invention.'" Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.Cir.2001) (quoting 35 U.S.C. § 112, ¶ 2). While claims must be construed in light of the specification, Markman, 52 F.3d at 979, limitations from the specification are not to be read into the claims, Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir.1998), for "[i]t is the claims that measure the invention," SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir.1985). The written description may, however, restrict the scope of the claims if "the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002).

We see no clear definition or disavowal of claim scope in the written description of the '989 patent that would limit claim 11 to horizontal rotation through 360°. While it is true that the patentees describe their invention as having the ability to rotate through 360°, this particular advantage is but one feature of the invented search light. The written description describes other significant features as well, such as the use of a particular wireless remote control and differing mechanisms for attaching the search light to the roof of a vehicle. The patentees were not required to include within each of their claims all of these advantages or features described as significant or important in the written description. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed.Cir. 2003) ("An invention may possess a number of advantages or purposes, and there...