IMS Technology Inc. v. HAAS Automation Inc. & Haas

• Decision Date: 27 March 2000
• Citation: 54 USPQ2d 1129,206 F.3d 1422
• Parties: (Fed. Cir. 2000) IMS TECHNOLOGY, INC., Plaintiff-Appellant, v. HAAS AUTOMATION, INC. and GENE FRANCIS HAAS, Defendants-Cross Appellants. 99-1019,-1067 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1422

206 F.3d 1422 (Fed. Cir. 2000)

IMS TECHNOLOGY, INC., Plaintiff-Appellant, v. HAAS AUTOMATION, INC. and GENE FRANCIS HAAS, Defendants-Cross Appellants.

99-1019,-1067

United States Court of Appeals for the Federal Circuit

DECIDED: March 27, 2000

Appealed from: United States District Court for the Eastern District of Virginia, Judge Leonie M. Brinkema

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

Robert P. Greenspoon, Niro, Scavone, Haller & Niro, of Chicago, Illinois, argued for plaintiff-appellant. With him on the brief were Raymond P. Niro, Robert A. Vitale, Jr., and John C. Janka. Of counsel was Arthur A. Gasey.

Theodore A. Pianko, Christie, Parker & Hale, LLP, of Pasadena, California, argued for defendants-cross appellants. With him on the brief was Syed A. Hasan.

Before MAYER, Chief Judge, MICHEL and PLAGER, Circuit Judges.

PLAGER, Circuit Judge.

IMS Technology, Inc. ("IMS") appeals from the decision of the United States District Court for the Eastern District of Virginia. The district court granted summary judgment of noninfringement of U.S. Patent No. 4,477,754 ("the '754 patent") against IMS and in favor of Haas Automation, Inc. and Gene Francis Haas (collectively "Haas"). See IMS Tech., Inc. v. Haas Automation, Inc., No. 98-143-A (E.D. Va. Oct. 2, 1998) (order). IMS argues on appeal that the district court erred in its claim construction and in its infringement analysis. Haas cross-appeals the district court's construction of certain claim limitations. Because the district court erred in its claim construction and infringement analysis and because, under a proper claim construction, there remain genuine issues of material fact concerning infringement with respect to some of the accused devices, we affirm-in-part, vacate-in-part, and remand.

BACKGROUND

IMS is the assignee of the '754 patent, which was originally assigned to Hurco Companies, Inc. ("Hurco"), a manufacturer of machine tools and machine tool controls. IMS is a wholly owned subsidiary of Hurco, formed to license the '754 patent. Hurco assigned its rights in the '754 patent to IMS in 1995.

The '754 patent, which contains both apparatus and method claims, originally issued on October 16, 1984. After discovering prior art during prosecution of Japanese patent applications corresponding to the '754 patent, Hurco initiated a reexamination proceeding before the United States Patent and Trademark Office ("PTO"). In the reexamination, claim 1, an apparatus claim, and claim 11, a method claim, both at issue in the instant case, were allowed without amendment. One limitation of claim 7, an apparatus claim also at issue in this case, was substantively amended. The PTO issued a reexamination certificate on March 21, 1995.

The '754 patent relates generally to a control for a machine tool, such as a milling machine, which is used to cut or remove material from an object, referred to as a workpiece, through a machining operation. The type of control at issue is a numerical control ("NC"), which runs a program containing a series of numerical instructions and converts the instructions to electrical control signals. These control signals are applied to, for example, servo motors that control the movement of the machine tool along x, y, and z axes. Typically, a table holding the workpiece moves in the x (left and right) and y (fore and aft) directions, and a spindle holding a tool moves in the z (up and down) direction.

Before invention of the control claimed in the '754 patent, a programmer created a control program using a standard part programming language such as EIA Standard RS-274-D, which comprises a series of standard codes commonly referred to as G-codes and M-codes. The programmer, usually not the operator of the machine tool, typically worked in a location remote from the machine tool. The programmer created a program by looking at a blueprint of the object to be machined, determining the series of machine tool operations (e.g., movements and cuts) required to make the object, and consulting a handbook of G- and M-codes corresponding to the operations. The completed code was reproduced on a punched paper tape. The machine tool operator fed the punch tape into the machine tool, which executed the program by converting the G- and M-codes into binary code, which was translated into electrical control signals. The coding process was cumbersome and time-consuming.

The invention claimed in the '754 patent permits interactive programming of the machine tool on the machine shop floor. The machine tool operator himself creates a program by using a keyboard to respond to nested inquiries displayed on a CRT screen. See '754 patent, col. 5, ll. 52-55; col. 6, ll. 4-10. In general, the program contains data blocks, each of which corresponds to one operational step of the machine tool. When the machine tool operator selects an operation, the control system may prompt him for additional parameters to be included in the data block for that operational step. For example, if the operator selects a "mill" operation, the system will prompt him for the selection of dimensional parameters, e.g., the coordinates for the start and end positions of the operation.

While the operator is creating a program, the program is stored in alterable memory (e.g., random access memory ("RAM")). In the embodiment disclosed in the written description of the '754 patent, a program may be stored permanently on a tape cassette by means of a tape cassette transport included in the control. See id. at col. 6, ll. 49-52. The written description of the '754 patent does not specify that programs are stored in any particular storage format. A program previously stored on a tape cassette can be read into alterable memory. See id. at col. 6, ll. 54-58. A microprocessor executes the program by using the information in the data blocks to produce control signals for directing the operation of the machine tool. See id. at col. 11, l. 16 - col. 12, l. 7.

Haas is a corporation which manufactures and sells machine tools with numerical controls. The accused Haas controls also provide interactive programming capability of machine tools on the machine shop floor. Some Haas controls have a floppy disk drive for storing programs. Others have only an RS-232 data port which can be connected to a storage device, such as a personal computer, for storing programs in ASCII format. Haas controls use programming systems known as Quickcode and Conversational Quickcode that assist the machine tool operator in creating a G- and M-code program. In Quickcode, the operator views a split screen. On the right side of the screen, the operator sees a group window that includes a compressed list of short descriptions of G-code operations. By rotating a jog handle clockwise, the operator navigates through the groups. When the operator finds the desired group, he turns the jog handle counterclockwise to see additional operations, called items. The operator selects an item, and the corresponding G-code appears on the left side of the window. The operator can then edit the G-code to change parameter values.

In Conversational Quickcode, the operator can program questions to solicit values corresponding to G-code. After the answers to such questions are placed in the G-code on the screen, the operator can edit the G-code as described above with respect to Quickcode.

The Haas controls store programs in G- and M-code format. During execution of programs, the Haas controls translate G-code into a binary format, which is converted into electrical signals delivered to the machine tool for directing its operation.

IMS filed suit against Haas alleging that Haas infringes at least apparatus claims 1 and 7 of the '754 patent and induces infringement and contributes to infringement of at least apparatus claims 1 and 7 and method claim 11 of the '754 patent. Those claims read as follows:

1. A programmable microcomputer control apparatus for controlling the relative motion between a tool and a workpiece comprising:

indicator means for providing at an output digital signals indicative of the relative position between the tool and the workpiece;

an alterable memory operable to retain a control program and control parameters;

a microprocessor unit coupled to the output of the indicator means and to the memory and operable to produce control signals dependent upon said indicator means output and said control parameters according to said control program;

control means for directing said control signals from the microprocessor unit to appropriate motion-providing means;

interface means for transferring a control program and control parameters from an external medium into said alterable memory and for recording the control parameter contents of said memory onto an external medium;

data entry means for loading control parameters into said memory through externally accessible data inputs independently of said interface means; and

display means for displaying control parameters, said control program being operable to display control parameter inquiries on the display means, whereby an operator may load control parameters into said memory through said data entry means in response to the inquiries, said apparatus including means to sequentially display data block inquiries and to display, in response to the loading of certain control parameters into said memory relating to the data block inquiries, separate displays of additional control parameter inquiries relating to information used in the data block which was the subject of the previous inquiry, whereby the sequential display of inquiries and direct loading of control parameters as to an operation can be used to make the use of the device simpler and more responsive to the operator.

7. A programmable microcomputer control apparatus for controlling the relative motion between a tool and a workpiece comprising:

indicator means for providing at...