Inventio Ag v. Thyssenkrupp Elevator Americas Corp..

• Decision Date: 16 September 2011
• Docket Number: No. 2010–1525.,2010–1525.
• Citation: 649 F.3d 1350,99 U.S.P.Q.2d 1112
• Parties: INVENTIO AG, Plaintiff–Appellant,v.THYSSENKRUPP ELEVATOR AMERICAS CORPORATION, ThyssenKrupp Elevator Corporation, and ThyssenKrupp Elevator Manufacturing Incorporated, Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

649 F.3d 1350

99 U.S.P.Q.2d 1112

INVENTIO AG, Plaintiff–Appellant,

v.THYSSENKRUPP ELEVATOR AMERICAS CORPORATION, ThyssenKrupp Elevator Corporation, and ThyssenKrupp Elevator Manufacturing Incorporated, Defendants–Appellees.

No. 2010–1525.

United States Court of Appeals, Federal Circuit.

June 15, 2011.Rehearing En Banc Denied Sept. 16, 2011.*

Pierre R. Yanney, Stroock & Stroock & Lavan LLP, of New York, NY, argued for plaintiff-appellant.David E. Schmit, Frost Brown Todd LLC, of Cincinnati, OH, argued for defendants-appellees.Before LOURIE, PROST, and MOORE, Circuit Judges.LOURIE, Circuit Judge.

Inventio AG (“Inventio”) appeals from the final judgment of the United States District Court for the District of Delaware in favor of ThyssenKrupp Elevator Americas Corporation, ThyssenKrupp Elevator Corporation, and ThyssenKrupp Elevator Manufacturing Incorporated (collectively, “ThyssenKrupp”). See Inventio AG v. ThyssenKrupp Elevator Americas Corp., No. 1:08–CV–874, Judgment (ECF No. 164) (D.Del. Aug. 4, 2010) (“ Final Judgment ”). The judgment follows the district court's granting of ThyssenKrupp's motion for summary judgment that the asserted claims of U.S. Patents 6,892,861 (“the '861 patent”) and 6,935,465 (“the '465 patent”) are invalid for failure to meet the definiteness requirement of 35 U.S.C. § 112, ¶ 2. See Inventio AG v. ThyssenKrupp Elevator Americas Corp., No. 1:08–CV–874, Order (ECF No. 163) (D.Del. Aug. 4, 2010) (“ SJ Order ”). The district court entered summary judgment after concluding that the claimed “modernizing device” and “computing unit” limitations were means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6 and that the written descriptions failed to disclose any corresponding structure. See Inventio AG v. ThyssenKrupp Elevator Americas Corp., No. 1:08–CV–874, Order (ECF No. 162) (D.Del. Aug. 4, 2010) (“ Order on Motion for Reargument ”); Inventio AG v. ThyssenKrupp Elevator Americas Corp., 718 F.Supp.2d 529, 542–556, 558–561 (D.Del.2010) ( “ Claim Construction Opinion ”). Because the district court erred when it concluded that the “modernizing device” and “computing unit” terms were means-plus-function limitations subject to § 112, ¶ 6, we reverse and remand for further proceedings.

Order on motion to strike

Before we discuss the merits of Inventio's appeal, we address ThyssenKrupp's motion to strike. After the parties submitted their briefs, ThyssenKrupp filed a motion to strike portions of Inventio's reply brief, arguing that it contained new and seriously misleading arguments about the disclosure of the ' 861 and '465 patents, mischaracterized legal precedent, misrepresented ThyssenKrupp's responsive brief, and misrepresented the record in this case.

ThyssenKrupp's motion lacks merit. It reargues the merits of the case. ThyssenKrupp simply disagrees with Inventio's legal arguments, and its motion seems to us to be an improper attempt to obtain the final word in the appeal, a practice that we strongly discourage. See Aventis Pharma S.A. v. Hospira, Inc., 637 F.3d 1341, 1343–44 (Fed.Cir.2011). Its nasty tone is exemplified by use of the word “blatantly” or “blatant” at least four times. Thus, ThyssenKrupp's filing of this motion borders on the type of frivolous and wasteful litigation tactics that we have previously frowned upon. See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 943–44 (Fed.Cir.1990). We accordingly deny ThyssenKrupp's motion and turn to the merits of Inventio's appeal.

Background

This patent case relates to elevator systems. In general terms, the asserted patents involve “modernizing” a conventional elevator system. '861 patent col.1 ll.6–7.¹ In a conventional elevator system, a passenger, at the boarding floor, presses the “up/down” buttons on a floor call transmitter, which causes a signal, referred to as a “call report,” to be sent to the elevator control. Id. col.4 ll.64–67. The elevator control is the hardware that drives the elevator system to transport elevator cars between floors. Id. col.4 ll.16–37. The call report, which is generally an analog voltage signal, indicates to the elevator control the passenger's boarding floor and may also indicate in which direction the passenger desires to travel (up or down). Id. col.4 ll.64–67, col.5 ll.37–40. After receiving this signal, the elevator control dispatches an elevator car to the passenger's floor. Id. col.5 ll.43–49. Once inside the elevator car, the passenger selects a floor, which sends a second call report to the elevator control and causes the elevator system to transport the passenger to the destination floor. Id. col.5 ll.51–58.

The asserted patents disclose a modernized elevator system and a process for modernization. The modernized elevator system allows a passenger, at the boarding floor, to enter the passenger's desired destination. Id. col.2 ll.4–18. As part of the modernization process, new floor terminals replace the original floor call transmitters ( i.e., the “up/down” buttons), and the new floor terminals allow a passenger, at the boarding floor, to input a desired destination floor when requesting an elevator. Id. col.6 ll.3–19.

The patents also disclose the back-end technology that interfaces with the new floor terminals and the conventional elevator control to operate the modernized elevator system, and this appeal focuses on those aspects of the modernized elevator system. In particular, the patents disclose a “modernizing device” and a “computing unit” that interface with the new floor terminals and the elevator control to operate the elevator system. Id. col.2 ll.28–53. Claim 1 of the '465 patent, reproduced below, is representative of the claims on appeal and claims the method of installing these components to modernize a conventional elevator system:

1. A method of modernizing an elevator installation having at least one elevator controlled by at least one elevator control by way of at least one call report, comprising:

a. installing at least one floor terminal at each floor served by an elevator controlled by an elevator control for at least one of the input of destination call reports and for recognition of identification codes of users;

b. installing at least one computing unit and connecting the at least one computing unit to said floor terminals for at least one of evaluating the destination call reports and association of destination floors with recognized ones of the identification codes, and for the output of at least one destination signal; and c. installing at least one modernizing device and connecting the at least one modernizing device to said floor terminals and said at least one computing unit for reading the destination signal, for converting the destination signal into at least one call report and for controlling the elevator control by way of the call report.

'465 patent, col.11 ll.6–25 (emphases added). The written descriptions of both patents also show how the “computing unit” and the internal components of the “modernizing device” are connected to each other and the elevator control:

Image 1 (4.54" X 3.15") Available for Offline Print

As shown in the above figure, the modernizing device may communicate with both the computing unit and the elevator control. The modernizing device may receive digital transmissions from the computing unit and convert them into call reports issued to the elevator control. Id. col.7 ll.49–60. In addition to converting the digital signal into a call report, the modernizing device is also capable of receiving call reports and converting them into a digital form for processing, either by the modernizing device or the computing unit. Id. col.8, ll.54–65, col.9, ll.34–67.

The written descriptions explain how the modernized elevator system functions during operation. First, a passenger at the boarding floor inputs a destination floor to the new floor terminals by manually entering information or providing an identification code to a recognition device. Id. col.8 ll.8–14. The computing unit, which is connected to the terminals, receives the boarding floor and destination floor information and executes a “computer program product” to determine, based on that information and other data, the optimal use of the elevator cars to transport the passenger to the desired floor. Id. col.6 l.27–col.7 l.25, col.8 ll.15–23. The computer program product performs the calculation by executing a “destination dispatch algorithm.” Id. col.6 l.27–col.7 l.25.

The computing unit then generates a control signal, which includes a series of destination signals, as a result of the optimization calculation. Id. col.8 ll.21–24. The modernizing device receives the first destination signal, converts this digital signal into an analog call report, and transmits the call report to the elevator control. Id. col.8 ll.21–40. The elevator control subsequently processes the call report and controls the elevator machinery to move the elevator car to the boarding floor. Id. col.8 ll.37–40.

After the passenger has boarded the elevator car, the modernizing device receives a second destination signal from the computing unit. Id. col.8 ll.41–45. The modernizing device, after receiving this signal, converts the signal into an analog call report, and transmits the call report to the elevator control. Id. col.8 ll.42–51. In accordance with the second call report, the elevator control causes the elevator car to move from the boarding floor to the destination floor. Id.

In 2008, Inventio sued ThyssenKrupp in the District of Delaware, alleging infringement of various claims of the '465 and '861 patents. After holding a Markman hearing, the district court construed numerous claim terms. During the claim construction process, the district court concluded that the terms “modernizing device” and “computing unit” were indefinite.

In reaching this conclusion, the district court first concluded that both terms lacked sufficiently definite structure...