King Instrument Corp. v. Perego

• Decision Date: 18 June 1990
• Docket Number: Civ. A. No. 84-3227-H.
• Citation: 737 F. Supp. 1227
• Parties: KING INSTRUMENT CORPORATION, Plaintiff, v. Luciano PEREGO and Tapematic SrL, Defendants.
• Court: U.S. District Court — District of Massachusetts

737 F. Supp. 1227

KING INSTRUMENT CORPORATION, Plaintiff, v. Luciano PEREGO and Tapematic SrL, Defendants.

Civ. A. No. 84-3227-H.

United States District Court, D. Massachusetts.

June 18, 1990.

COPYRIGHT MATERIAL OMITTED

Mark J. Pandiscio, Schiller, Pandiscio & Kusmer, Cambridge, Mass., David J. Brezner, Richard F. Trecartin, Flehr, Hohbach, Test, Albritton & Herbert, San Francisco, Cal., for plaintiff.

Katherine E. Perrelli, Charles Donelan, Day, Berry & Howard, Boston, Mass., Edgar H. Haug, Steven M. Amundson, Adam L. Brookman, Curtis, Morris & Safford, P.C., New York City, for defendants.

OPINION

HARRINGTON, District Judge.

Plaintiff King Instrument Corporation ("King") brings this action alleging infringement of three King patents by the Defendants Luciano Perego ("Perego") and Tapematic SrL ("Tapematic").

Plaintiff King is a corporation organized under the laws of Massachusetts and having its principal place of business therein. Defendant Tapematic is a foreign corporation organized under the laws of Italy, with its principal place of business in Milan. Defendant Perego, a citizen of Italy, is the President and owner of Tapematic.

The business of all parties is the manufacture and sale of automated machines for loading magnetic audio or video tape into closed cassettes, from which activity the claims in this suit arise. King contends that Tapematic's distribution in the United States of its tape loading machines infringes upon three King patents:

                1) PAT. NO.:   3,637,153 (the "153 Patent")
                   TITLE:      Machine Splicing and Winding Tape
                               Into a Cassette
                   ISSUED:     January 25, 1972
                2) PAT. NO.:   3,825,461 (the "461 Patent")
                   TITLE:      Splicing Head Assembly
                   ISSUED:     July 23, 1974
                3) PAT. NO.:   3,997,123 (the "123 Patent")
                   TITLE:      Automatic Cassette Loading Machine
                   ISSUED:     December 14, 1976
                

Defendants' machines in issue are Models 900 and 900H/S (the "900 Series"), Model 2,002, and Models 3,001 and 3,002 (the "3,000 Series").¹ King further alleges that this infringement is willful and wanton.

Defendants deny that they have infringed any of the patents in suit, and alternatively assert that the patents are invalid because of prior sale and misuse of the patents. This case was tried before the Court and without a jury.

I. Jurisdiction

This Court has jurisdiction to resolve these disputed patent matters under Title 28, United States Code, Section 1338(a).

II. Background

The method and apparatus claimed by plaintiff concern the loading of closed cassettes within which are mounted two winding hubs with magnetic tape spliced at each end to leader tape which is attached to each of the hubs. To accomplish that result, a sequence of cut-shift-splice-wind-cut-shift-splice is described in the claims. This sequential process involves a means of manipulating the magnetic and leader tapes in such a fashion as to accomplish the cut-shift-splice-wind-cut-shift-splice sequence. In order to manipulate the tape, the magnetic tape must be juxtaposed to the leader tape in such a manner as to permit the splicing of the two and the subsequent winding of the tapes so spliced for a predetermined length of tape and an ultimate further juxtaposition and splicing of magnetic tape to leader tape on the other hub.

The '153 Patent describes and claims a mechanical splicing block configuration which employs swinging arms to manipulate the magnetic tape in and out of juxtaposition with the leader tape. The '123 Patent describes and claims a winding machine which fully automates the machine embodied in the '153 Patent by adding a mechanism for storing a number of cassettes to be loaded and for advancing them one at a time to the loading position. The '123 Patent also embodies a mechanism which extracts automatically the leader tape from the cassette and positions it on splicing blocks for splicing to the magnetic tape. The '461 Patent describes and claims a splicing head assembly for splicing tape by means of a diagonal shift block arrangement.

III. Validity

It is a well established and codified rule that a United States patent is presumed valid, and one attacking the validity has the burden of proving invalidity by clear and convincing evidence. 35 U.S.C. § 282; Roper Corp. v. Litton Systems, Inc., 757 F.2d 1266, 1270, 225 U.S.P.Q. 345 (Fed.Cir. 1985); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1573, 224 U.S.P.Q. 409 (Fed.Cir.1984).

The validity of the '153 Patent has been previously challenged and affirmed by the Federal Circuit. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 226 U.S.P.Q. 402 (Fed.Cir.1985), cert. denied, 475 U.S. 1016, 106 S.Ct. 1197, 89 L.Ed.2d 312 (1986). In Otari, the defendant challenged the validity of the '153 Patent under 35 U.S.C. §§ 102 and 103. After considering all the relevant prior art, the district court found that the invention claimed in the '153 Patent was not anticipated by the prior art, and also ruled that the differences between the prior art and the claimed subject matter as a whole would not have been obvious to one of ordinary skill in the tape winding art in 1969. The Federal Circuit Court affirmed. See Otari, 767 F.2d at 857. This Court declines to reopen the issue of validity of the '153 Patent on the ground of prior art where the Federal Circuit has acted and where additional evidence beyond that examined in Otari was de minimus.²

IV. Infringement

The plaintiff has the burden of proof to establish by a preponderance of the evidence that the accused machines have infringed various claims of the '153 Patent, the '461 Patent and the '123 Patent.

A. Literal

The test for literal infringement has two aspects. First, the language of the claim in issue must be interpreted by the court as a matter of law. Second, the trier of fact must determine whether the language describes, or "reads on," an accused product. See Standard Oil Co. v. American Cyanamid Co. 774 F.2d 448, 452, 227 U.S.P.Q. 293 (Fed.Cir.1985). The accused product is not compared with an embodiment of the patent, but rather with the language of the claims. See Martin v. Barber, 755 F.2d 1564, 1567, 225 U.S.P.Q. 233 (Fed.Cir.1985).

Several of the independent claims in all of the patents utilize "means plus function" language. To interpret such functional claims, one must turn to paragraph 6 of 35 U.S.C. § 112:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Under Section 112, paragraph 6, the patentee is entitled to protection covering equivalents as well as the specified "structure, material or acts." Palumbo v. Don-Joy Co., 762 F.2d 969, 226 U.S.P.Q. 5 (Fed. Cir.1985). With respect to the part of a claim to which Section 112, paragraph 6, pertains, it "does not, in any event, expand the scope of the claim." Johnston v. Ivac Corp., 885 F.2d 1574, 1580, 12 U.S.P.Q.2d 1382 (Fed.Cir.1989) (emphasis in original). An element of a claim described as a means for performing a function, if read literally, would encompass any means for performing the function. Section 112, paragraph 6, operates to cut back on the types of means which could literally satisfy the claim language. Id.

For a means plus function limitation to "read on" an accused device, the accused device must incorporate the means for performing the function disclosed in the specification or a structural equivalent of that means, plus it must perform the identical function. "If the required function is not performed exactly in the accused device, it must be borne in mind that Section 112, paragraph 6, equivalency is not involved. Section 112, paragraph 6, plays no role in determining whether an equivalent function is performed by the accused device under the doctrine of equivalents." Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 U.S.P.Q.2d 1737 (Fed.Cir. 1987), cert. denied, 485 U.S. 961, 108 S.Ct. 1226, 99 L.Ed.2d 426 (1988). "Section 112, paragraph 6, can never provide a basis for finding that a means-plus-function claim element is met literally where the function part of the element is not literally met in an accused device." Johnston v. IVAC Corp., 885 F.2d 1574 (Fed.Cir.1989).

"To determine whether a claim limitation is met literally, where expressed as a means for performing a stated function, the court must compare the accused structure with the disclosed structure, and must find equivalent structure as well as identity of claimed function for that structure." Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d at 934 (Fed.Cir.1987) (emphasis in original), citing Palumbo v. Don-Joy Co., 762 F.2d 969, 975 (Fed.Cir.1985); D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1575, 225 U.S.P.Q. 236 (Fed.Cir.1985), appeal aff'd, 802 F.2d 421, 231 U.S.P.Q. 276 (Fed.Cir.1986); Radio Steel & Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 848 (Fed.Cir.1984), cert. denied, 469 U.S. 831, 105 S.Ct. 119, 83 L.Ed.2d 62 (1984).

Whether an accused device is an equivalent of that claimed in a means plus function claim is a question of fact. The Federal Circuit has recently approved the use of a three-part test for determining means plus function equivalents that has long been applied to analyses under the doctrine of equivalents:³ Does the asserted equivalent perform substantially the same function in substantially the same way to accomplish substantially the same result? Texas Instruments v. U.S. Intern. Trade Com'n, 805 F.2d 1558, 1571, 231 U.S.P.Q. 833 (Fed.Cir.1986), re'hng denied, 846 F.2d 1369 (1988); see also Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950), re'hng denied, 340 U.S. 845, 71 S.Ct. 12, 95 L.Ed. 620 (1950); Palumbo v. Don-Joy Co., 762 F.2d at...