Innovad v. Microsoft Corp. et al., HEWLETT-PACKARD

• Decision Date: 06 August 2001
• Docket Number: HEWLETT-PACKARD
• Citation: 59 USPQ2d 1676,260 F.3d 1326
• Parties: (Fed. Cir. 2001) INNOVAD INC., Plaintiff-Appellant, v. MICROSOFT CORPORATION, and PSION INCORPORATED, and APPLE COMPUTER, INC., Defendants-Appellees, and THE ERICSSON CORPORATION (doing business as Ericsson Technical Services, Inc.),COMPANY, PHILIPS ELECTRONICS NORTH AMERICA CORPORATION, EVEREX SYSTEMS, INC., SONY ELECTRONICS, INC., LG ELECTRONICS U.S.A. INC., and ODYSSEY COMPUTING INCORPORATED, Defendants. 00-1459 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1326

260 F.3d 1326 (Fed. Cir. 2001)

INNOVAD INC., Plaintiff-Appellant, v. MICROSOFT CORPORATION, and PSION INCORPORATED, and APPLE COMPUTER, INC., Defendants-Appellees and THE ERICSSON CORPORATION (doing business as Ericsson Technical Services, Inc.),HEWLETT-PACKARD COMPANY, PHILIPS ELECTRONICS NORTH AMERICA

CORPORATION, EVEREX SYSTEMS, INC., SONY ELECTRONICS, INC., LG ELECTRONICS U.S.A. INC., and ODYSSEY COMPUTING INCORPORATED, Defendants.

00-1459

United States Court of Appeals for the Federal Circuit

DECIDED: August 6, 2001

Appealed from: The United States District Court for the Northern District of Texas Judge John McBryde

Edward W. Goldstein, Goldstein & Healey, L.L.P., of Houston, TX, argued or plaintiff-appellant. Of counsel were John T. Polasek, Golstein & Healey; and Jonathan T. Suder, Friedman, Young, Suder & Cooke, of Fort Worth, TX.

James P. Bradley, Sidley & Austin, of Dallas, TX, argued for defendant-appellee Psion Incorporated. With him on the brief was William D. McSpadden.

Wayne M. Harding, Brobeck, Phleger & Harrison LLP, of Austin, TX, for defendant- appellee Apple Computer, Inc.

Kristin L. Cleveland, Klarquist Sparkman Campbell Leigh & Whinston, LLP, of Portland, Oregon, argued for defendant-appellee Microsoft Corporation. With her on the brief was John D. Vandenberg. Of counsel was T. Andrew Culbert, Microsoft Corporation, of Redmond, WA.

Before MAYER, Chief Judge, FRIEDMAN, Senior Circuit Judge, and RADER, Circuit Judge.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the Northern District of Texas determined that Microsoft Corp., Psion Incorporated, and Apple Computer, Inc. (among others) did not infringe, either literally or by equivalents, claim 22 of Innovad, Inc.'s U.S. Patent No. 4,882,750 (the '750 patent). Because claim 22 does not cover any dialer units with a keypad and the accused devices include keypads, this court affirms.

I.

The '750 patent claims an automatic telephone dialer system. The claimed system includes: (1) a portable telephone dialer unit, which produces a selected sequence of dialing tones; and (2) a programming means, such as a computer, which preprograms telephone numbers into the memory of the dialer unit. During programming, the dialer unit links to the programming unit. After programming, the dialer unit decouples from the programming unit and functions independently. The portable dialer unit produces tones to automatically dial telephone numbers when held against a telephone mouthpiece. These features made the claimed hand-held dialer units attractive as specialty advertising gift items. Specifically, the units can be preprogrammed with an advertiser's own telephone number and then operate separate from the programming means. Thus, an advertiser can give potential customers a novel way to call its business.

Claim 22 of the '750 patent, the only claim at issue in this case, reads:

A telephone dialer system, comprising:

[a] a case having at least one surface for substantially, enclosing a small volume;

[b] reprogrammable memory means disposed within said case for storing a selected sequence of digits during a programming mode, said digits constituting at least one telephone number;

[c] signal means disposed within said case electrically coupled to said reprogrammable memory means for producing a sequence of dual tone modulated frequency signals corresponding to said at least one telephone number stored in said reprogrammable memory means during a dialing mode;

[d] an audio frequency output means electrically coupled to said signal means for producing a sequence of audio frequency signals corresponding to said sequence of dual tone modulated frequency signals produced by said signal means during said dialing mode;

[e] at least one battery disposed within said case, electrically coupled and providing power to said reprogrammable memory means, said signal means, and said audio frequency output means;

[f] a single, bi-state switch operable from the exterior of said case for activating said signal means to produce said sequence of dual tone modulated frequency signals during said dialing mode corresponding to said digits in said reprogrammable memory means;

[g] programming means for programming said reprogrammable memory means with said at least one telephone number during said programming mode; and

[h] means for releasably electrically coupling said reprogrammable memory means and said programming means only during said programming mode.

'750 patent, col. 14, l. 44-col. 16, l. 5 (emphasis added). For the purposes of discussion and claim construction, the different clauses of claim 22 are designated elements [a]-[h].

On November 30, 1999, Innovad sued Psion, Apple Computers, Ericsson Corp., Hewlett-Packard Co., Phillips Electronics North America Corp., Everex Systems, Inc., Sony Electronics, Inc., and LG Electronics U.S.A., Inc., alleging patent infringement of claim 22 for making, selling, and using palm-sized computers that automatically dial preprogrammed telephone numbers when loaded with appropriate software. In the same action, Innovad also sued Microsoft and Odyssey Computing Inc., alleging patent infringement for manufacturing the software to perform these functions.

Before discovery, Microsoft, Psion, and Apple moved for summary judgment of non-infringement. In its Memorandum Opinion and Order, the district court construed the invention as smaller than prior art dialers units with a 4.4 cubic inch volume. Innovad, Inc. v. Microsoft Corp., 99 F.Supp.2d 767, 773 (N.D. Texas June 6, 2000) (Innovad). The district court also determined that the claimed dialer system has only a "single, bi-state switch" on the outside of the case to activate the signal. Id. at 773. In addition, the district court construed "means for releasably electrically coupling said reprogrammable memory means and said programming means only during said programming mode" to mean that the dialer is linked to the programming means only temporarily during programming. Id.

Based on that claim construction, the district court concluded that the claimed system could not include a keypad. Moreover, because the dialer unit has no keypad, the district court determined that an individual who uses the system as a dialer could not change the preprogrammed telephone numbers within the unit's memory. Next, the district court determined that the accused dialer units each contained an integral numeric keypad to delete, edit, and replace phone numbers. Id. at 773-74. Thus, the district court granted summary judgment of no infringement either literally or under the doctrine of equivalents.

Innovad appeals under 28 U.S.C. § 1295(a)(1) (1994). On appeal, Innovad argues that the district court erred in construing claim 22 to preclude a keypad. In addition, Innovad contends that the district court misconstrued three terms or phrases in the claim: "small volume" in element [a]; "single, bi-state switch" in element [f]; and "means for releasably electrically coupling said reprogrammable memory means and said programming means only during said programming mode" in element [h].

II.

Claim construction is a matter of law, which this court reviews without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc). This court also reviews grants of summary judgment without deference. Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1353, 47 USPQ2d 1705, 1713 (Fed. Cir. 1998). This court must decide for itself "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). In making this determination, this court views the record in a light most favorable to the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 672-73, 15 USPQ2d 1540, 1542-43 (Fed. Cir. 1990).

A.

As an initial matter, this court notes that claim 22 does not expressly recite a "dialer unit" or "portable telephone dialer," as in claims 1-14. Instead, claim 22 recites a "telephone dialer system" without actually using the term "telephone dialer" alone, as in earlier claims. The specification, however, describes the words "dialer" or "dialer unit" (used interchangeably) in terms that identify elements [a]-[f] of claim 22 as the elements of a dialer unit. See, e.g., '750 patent, abstract; col. 2, ll. 9-18; claims 1, 5 and 8. In other words, the "telephone dialer system" of claim 22 comprises: (1) a dialer unit, elements [a]-[f], specifically a case, reprogramming memory means, signal means, an audio frequency output means, at least one battery, and a single, bi- state switch; (2) a programming means, element [g]; and (3) a means for releasably electrically coupling the reprogrammable memory means (i.e., the dialer unit) to the programming means, element [h].

The district court may have confused the terms "telephone dialer system" and "dialer unit." For example, the district court states: "[T]he telephone dialer system does not include a keypad as did existing repertory dialers. Moreover, the dialer unit itself had no mechanism through which the end user could reprogram the telephone number". Innovad, at 773 (emphasis added). The entire claimed system, however, can include a keypad. To be precise, the "programming means" of the claimed telephone dialer system can include a keypad, as seen from the specification and claim 15 (similar to claim 22, except that only a single telephone number is programmed into the reprogramming memory means) and dependent claim 21. See also '750 patent, col. 1, ll. 65-67; col. 5, ll. 33-37. In fact, a keypad on the programming means...