Ti Group Automotive Systems v. Vdo North America

• Decision Date: 30 June 2004
• Docket Number: No. 03-1482.,No. 02-1630.,02-1630.,03-1482.
• Citation: 375 F.3d 1126
• Parties: TI GROUP AUTOMOTIVE SYSTEMS (NORTH AMERICA), INC. (now known as TI Group Automotive Systems, L.L.C.) Plaintiff-Appellant, v. VDO NORTH AMERICA, L.L.C., Mannesmann VDO AG, Siemens VDO Automotive Corp., and Siemens VDO Automotive AG, Defendants-Cross Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

375 F.3d 1126

TI GROUP AUTOMOTIVE SYSTEMS (NORTH AMERICA), INC. (now known as TI Group Automotive Systems, L.L.C.) Plaintiff-Appellant, v. VDO NORTH AMERICA, L.L.C., Mannesmann VDO AG, Siemens VDO Automotive Corp., and Siemens VDO Automotive AG, Defendants-Cross Appellants.

No. 02-1630.

No. 03-1482.

United States Court of Appeals, Federal Circuit.

DECIDED: June 30, 2004.

Rehearing and Rehearing En Banc Denied August 24, 2004.

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William J. Schramm, Reising, Ethington, Barnes, Kisselle, PC, of Troy, Michigan, argued for plaintiff-appellant. With him on the brief were Andrew M. Grove, Matthew J. Schmidt, and William H. Francis. Of counsel on the brief was Douglas E. Whitney, Morris, Nichols, Arsht & Tunnell, of Wilmington, Delaware.

Eric J. Lobenfeld, Clifford Chance US, LLP, of New York, New York, argued for defendants-cross appellants. With him on the brief were Drew M. Wintringham, III and Mark W. Rueh.

Before NEWMAN, BRYSON, and LINN, Circuit Judges.

LINN, Circuit Judge.

TI Group Automotive Systems, L.L.C. ("TI Group"), appeals from a post-trial decision of the United States District Court for the District of Delaware, granting a motion for judgment as a matter of law ("JMOL") that VDO North America, L.L.C., Mannesmann VDO AG, Siemens VDO Automotive Corp., and Siemens VDO Automotive AG (collectively "VDO" or "defendants") do not infringe U.S. Patent No. 4,860,714 ("the '714 patent"). TI Group Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C., No. 00-432-GMS, 2002 WL 31051602 (D.Del. Sept. 4, 2002) ("JMOL Infringement Opinion"). The defendants cross-appeal the district court's denial of their motion for JMOL of invalidity of the '714 patent. TI Group Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C., No. 00-432-GMS, 2003 WL 21302951 (D.Del. June 6, 2003) ("JMOL Invalidity Opinion"). Because we affirm the district court's claim constructions of the disputed terms "reservoir" and "within," and further, because we conclude that the facts presented at trial are sufficient to support the district court's grant of judgment of non-infringement in VDO's favor, we affirm the district court's JMOL Infringement Opinion. However, because we reverse some of the district court's claim constructions, we vacate the district court's JMOL Invalidity Opinion and remand the invalidity issues to the district court for further proceedings in light of the claim constructions set forth in this opinion.

BACKGROUND

TI Group is an automotive supplier that makes fuel tanks, fuel pump assemblies, and complete fuel tank systems. TI Group has sold over thirty million fuel pump assemblies that embody the '714 patent, and has licensed the technology to other suppliers, including Delphi, a former subsidiary of General Motors. Beginning in the late 1990s, General Motors sought a second source for its "supply-side" pump assemblies because Delphi was having labor difficulties. Although TI Group submitted bids, General Motors awarded the contracts to VDO. The fuel pump assemblies supplied to General Motors by VDO were essentially drop-in replacements for the licensed Delphi assemblies.

A. The '714 Patent

TI Group owns the '714 patent which is directed to fuel pump assembly technology. The '714 patent is directed to an intank fuel assembly for fuel-injected engines. The assembly provides a constant and reliable supply of fuel even when the fuel in the fuel tank is low, or when the vehicle is navigating a sharp turn, traveling over a steep incline, or after the vehicle has been parked on an incline for an extended period of time. '714 patent, Abstract; id. at col. 1, II. 26-34. This constant supply prevents engine fuel starvation, a problem that can cause the engine to rattle, lurch, or stall.

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Figure 1 of the '714 patent illustrates an embodiment of the invention. Although Figure 1 illustrates a dual fuel tank arrangement, single tank arrangements are more common and offer the advantages of compactness and ease of repair or replacement. Id. at col. 4, II. 21-26; id. at col. 6, II. 11-38. The assembly includes a reservoir 10 having top and bottom openings 12 and 14. A high pressure pump 26 sits in reservoir 10 and pumps fuel to the engine's fuel injectors 116 by way of line 106. Jet pump 30, including nozzle 54 and venturi tube 58, supplies the reservoir with fuel by drawing fuel from the fuel tank via opening 14. Even when the fuel in the tank is low, the action of jet pump 30 will maintain a comparatively high level of fuel in reservoir 10 and around inlet 42 to the high pressure pump 26. Preferred embodiments include check valve 22 that prevents fuel above the valve from leaking out when the unit is not operating. Check valve 22 does not retain fuel in the reservoir while the unit is operating, because it moves away from opening 14 by the action of jet pump 30, and further is not a necessary component for operation. Id. at col. 4, I. 39-col. 5, I. 35.

Prior art fuel starvation prevention systems sent all of the output of a high pressure pump to the engine and used fuel returning from the engine to drive a jet pump that pumped fuel into a reservoir. These systems are known as "return-side" systems. Because the amount of fuel returning from the engine varied in such return-side systems, they were inefficient and unreliable. Id. at col. 1, II. 25-29. The invention of the '714 patent is a "supply-side" system and provides advantages over return-side systems by supplying fuel to the jet pump directly from the high pressure pump. In the system described in the '714 patent, only part of the output from the high pressure pump is routed to the engine, while the other part is routed directly to the jet pump for an essentially constant supply of fuel to the jet pump that does not vary with engine demand. Id. at col. 2, II. 3-8.

Independent claim 2 is at issue in this appeal, and recites:

2. Apparatus for pumping fuel from a fuel tank to an engine comprising:

(a) a supply port for carrying fuel from the apparatus to the engine;

(b) a fuel reservoir which includes an opening for connecting the interior of the reservoir to the interior of the fuel tank;

(c) means for mounting the reservoir in the fuel tank so as to locate the opening of the reservoir in the region of the bottom of the fuel tank;

(d) pumping means for pumping fuel into the reservoir, said means being located within the reservoir in the region of the opening and including a nozzle and a venturi tube in alignment with the nozzle, the passage of fuel out of the nozzle and through the venturi tube causing fuel to be entrained through the opening into the interior of the reservoir;

(e) a high pressure pump having an inlet connected to the interior of the reservoir and an output of high pressure fuel; and

(f) means for routing a first portion of the output of high pressure fuel to the supply port and a second portion of the output of high pressure fuel to the pumping means whereby fuel is delivered to the engine from the reservoir through the supply port and fuel is entrained into the reservoir by means of the fuel passing through the pumping means.

Claims 7 and 8, dependent from claim 2, are also at issue. Claim 7 adds a baffle that separates the pumping means outlet from the inlet to the high pressure pump. Claim 8 requires the opening to be located at the bottom of the reservoir, and further, recites an arrangement where the flow of fuel in the reservoir exceeds the flow of fuel to the engine, creating a net flow of fuel from the bottom to the top of the reservoir.

B. The VDO Device

The accused VDO device is a single unit, supply-side jet pump assembly. During operation, fuel travels from an output on one side of the electric pump, through a jet tube, and to a jet pump comprising a nozzle and a mixing tube. Fuel from a second output on the other side of the electric pump travels to the engine. The mixing tube mixes fuel entrained from the fuel tank with the fuel being sprayed out of the nozzle. Fuel traveling through the mixing tube forces a valve open so that fuel from the jet pump is pushed into the reservoir and keeps fuel above it from leaking out of the reservoir and back into the fuel tank where it would not be available to be pumped to the engine.

C. Procedural History

TI Group sent written notice of suspected infringement of the '714 patent to both VDO and General Motors. On April 25, 2000, VDO filed a declaratory judgment action against TI Group concerning VDO's alleged infringement of the '714 patent, seeking findings of both non-infringement and invalidity. The parties were subsequently realigned, and TI Group asserted independent claim 2 and dependent claims 7 and 8 against the defendants. TI Group also alleged that VDO's infringement was willful. Upon realignment, VDO's invalidity assertions became essentially a counterclaim.

The district court held a Markman hearing on November 6, 2001, and rendered its claim construction opinion on December 3, 2001. VDO N. Am., L.L.C. v. TI Group Auto. Sys. (N. Am.), Inc., No. 00-432-GMS, 2001 WL 1530363 (D.Del. Dec. 3, 2001) ("Markman Order"). TI Group timely filed for reconsideration of the claim constructions, but the request was denied.

A jury trial was held between June 3 and June 11, 2002. During the course of trial, VDO moved for judgment as a matter of law, at the appropriate times, on both non-infringement and invalidity grounds under Rule 50 of the Federal Rules of Civil Procedure. The court reserved judgment on these motions. On June 12, 2002, the jury returned a verdict finding that: (1) VDO infringed each of claims 2, 7, and 8, both literally and under the doctrine of equivalents; (2) claims 2, 7, and 8 were not invalid; (3) VDO's infringement was willful; (4) certain accused fuel pump assemblies were not covered by license; (5) TI Group is not entitled to lost profit damages; and (6) TI Group...