Masco Corp. v. U.S.
| Decision Date | 28 August 2002 |
| Docket Number | No. 01-5107.,01-5107. |
| Citation | 303 F.3d 1316 |
| Parties | MASCO CORPORATION, Plaintiff-Appellant, v. UNITED STATES, Defendant-Appellee, and Mosler, Inc. and Hamilton Products Group, Inc., Third Party Defendants, and Mas-Hamilton Group, Inc., Third Party Defendants. |
| Court | U.S. Court of Appeals — Federal Circuit |
Michael D. Harris, Oppenheimer Wolff & Donnelly LLP, of Los Angeles, CA, argued for plaintiff-appellant. With him on the brief were Christopher Darrow and Charles Rosenberg.
John J. Fargo, Assistant Director, Commercial Litigation Branch, Civil Division, Department of Justice, of Washington, DC, argued for defendant-appellee. With him on the brief were Robert D. McCallum, Jr., Assistant Attorney General; Vito J. DiPietro, Director, and Robert G. Hilton, Attorney.
Before NEWMAN, CLEVENGER, and LINN, Circuit Judges.
Masco Corporation ("Masco") appeals from the judgment of the Court of Federal Claims holding, on cross-motions for summary judgment, that the United States had not infringed the claims of U.S. Patents Nos. 5,540,068 and 5,778,711, directed to an electronic dial combination lock. Masco Corp. v. United States, 49 Fed. Cl. 337, 59 USPQ2d 1036 (Fed.Cl.2001) ("Masco Corp."). We conclude that the court erred in construing the "transmitting a force applied to the dial to the lever" limitation as a step-plus-function limitation, but did not otherwise err in its claim construction. Moreover, we conclude that the court erred in holding that issue preclusion applied to the issues of whether a lever was pushed in the accused device and whether pushing and pulling actions were equivalent. Accordingly, we affirm-in-part, reverse-in-part, and remand for further proceedings consistent with this opinion.
The litigation that culminated in the present appeal began on March 1, 1999, when Masco sued the United States for reasonable compensation for the alleged use by the United States of the '068 and '711 patents, assigned to LaGard, Inc. ("LaGard"). LaGard merged into Masco prior to the filing of this suit. In its complaint, Masco identified a high security electronic dial combination lock, designated "X-07," as the device that allegedly infringed Claims 1-3 of each patent. This lock was produced by third party defendant Mas-Hamilton Group ("Mas-Hamilton") and was supplied to the General Services Administration, an agency of the Federal government. Third party defendants Mosler, Inc. and Hamilton Products Group, Inc. incorporate the patented lock into products that they sell to the United States.
This case is related to an earlier lawsuit between Mas-Hamilton and LaGard in the Eastern District of Kentucky. Mas-Hamilton Group v. LaGard, Inc., 21 F.Supp.2d 700 (E.D.Ky.1997) ("Mas-Hamilton I"). Mas-Hamilton I concerned U.S. Patent No. 5,307,656, which is the parent of the '068 and '711 patents. In that case, the court determined that the '656 patent was not invalid, and that the accused device, which was the same X-07 lock, did not infringe the apparatus claims of the '656 patent either literally or under the doctrine of equivalents. Mas-Hamilton I at 740. We affirmed the judgment of the district court in Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 48 USPQ2d 1010 (Fed.Cir.1998) ("Mas-Hamilton II").
Claim 1 of each of the '068 and '711 patents sets forth a method of controlling an electronic lock; these are the only independent claims in suit. Claim 1 of the '068 patent is reproduced below.
1. A method of controlling an electronic lock including a dial, a rotatable cam wheel operably connected to the dial and defining a surface, a locking mechanism movable between a locked position and an unlocked position, and a movable lever operably connected to the locking mechanism and having a protrusion adapted to engage the cam wheel, the method comprising the steps of:
holding the lever in a position where the protrusion cannot contact the surface of the cam wheel and in such a manner that the lever and the dial are operably disconnected and the lever will not move in response to rotation of the dial;
electronically determining whether an input combination corresponds to a predetermined combination;
operably connecting the lever and the dial, while maintaining the lever in a position where the provision cannot contact the surface of the cam wheel in response to a determination that the predetermined combination has been input; and
transmitting a force applied to the dial to the lever after the lever and the dial have been operably connected to drive the lever to a position where the protrusion can contact the surface of the cam wheel in such a manner that the lever will be pulled by the cam wheel during rotation of the cam wheel.
(Emphases added.)
Claim 1 of the '711 patent is similar; it is reproduced below.
1. A method of controlling a lock including a knob, a rotatable cam wheel operably connected to the knob and defining a surface, a locking mechanism movable between a locked position and an unlocked position, and a movable lever operably connected to the locking mechanism and having a protrusion adapted to engage the cam wheel, the method comprising the steps of:
holding the lever in a position where the protrusion cannot contact the surface of the cam wheel and in such a manner that the lever and the knob are operably disconnected and the lever will not move in response to rotation of the knob;
receiving an unlock signal;
forming a rigid connection between the lever and the knob with at least one substantially rigid member, while maintaining the lever in a position where the protrusion cannot contact the surface of the cam wheel, in response to a receipt of the unlock signal; and
transmitting a force applied to the knob to the lever through the rigid connection after the lever and the knob have been operably connected to drive the lever to a position where the protrusion can contact the surface of the cam wheel in such a manner that the lever will be pulled by the cam wheel during rotation of the cam wheel.
(Emphases added.)
Masco's patented lock is depicted in Figure 1 of the '068 patent, which is reproduced below.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
In the patented lock, the lever 46 normally does not engage cam wheel 47. The lever 46 has a cantilever arm 52 resting in a notch in solenoid housing 62. When a solenoid within the solenoid housing 62 receives a signal, plunger 98 within the solenoid housing moves and projects a ball 96 upward. Tooth 92 on the periphery of cam wheel 47 engages projected ball 96. Subsequent to this, force is supplied from the rotation of the dial. As the dial is rotated, thus turning cam wheel 47, force from tooth 92 acting on the ball 96 forces the solenoid housing 62 to the right. Cantilever arm 52 integral with and angled with respect to the lever 46 remains in contact with the solenoid housing 62. The solenoid housing 62 thus drives cantilever arm 52 and lever 46 counterclockwise. This force drives lever 46 toward cam wheel 47 until protrusion 48 on the lever 46 engages a slot 88 on the cam wheel 47. Further cam wheel rotation pulls the lever 46 to the left to withdraw the locking bolt 36.
Masco contends, and the government does not dispute, that U.S. Patent No. 5,487,290 describes the accused X-07 lock. Figure 6A of that patent, which depicts the initial locked position of the mechanism, is reproduced below.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
In the X-07 lock, a stepper motor 308 rotates a gear through a small arc. The rotation of this gear meshes a toothed outer portion 306 on one side of the gear with gear teeth 276 on the periphery of a cam wheel. Dial and cam wheel rotation then acts through the gear teeth 276 to rotate the stepper motor gear clockwise. The rotation of the stepper motor gear drives a linkage, which acts on the bottom of sliding element 232 to drive the element downward (compare Figure 6A with Figure 6C, below). The element 232 has a left-facing slot that receives a pin on lever 252. Downward movement of the sliding element moves the pin and the lever 252 downward until a protrusion 256 of the lever 252 engages a slot 400 on the cam wheel. At this point, the position of the mechanism is as shown in Figure 6C below. Continued rotation of the cam wheel pulls the lever 252 to the left to withdraw bolt 212.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
In the present case, the Court of Federal Claims held a Markman hearing to construe several disputed claim limitations, and issued a claim construction ruling. Masco Corp. v. United States, 47 Fed. Cl. 449 (Fed.Cl.2000) ("Claim construction ruling"). Among these, the court construed "to drive" to mean "to push," id. at 456, held that a "dial" must bear divisions that a user can read, id. at 458, and construed "forming a rigid connection between the lever and the knob" of Claim 1 of the '711 patent to require "a rigid connection between all parts in the chain of parts between the lever and the knob during the unlocking procedure," id. at 459. The court held that the "holding the lever in a position" step in each independent claim was not a step-plus-function limitation, because the court determined that "holding" was an act which precluded treatment under 35 U.S.C. § 112, paragraph 6. Id. at 454. Similarly, the court held that the "operably connecting the lever and the dial" step of Claim 1 of the '068 patent was not a step-plus function limitation, because the court determined that "connecting" was an act. Id. at 455. However, the court held that the "transmitting a force" step of each independent claim was a step-plus function limitation, because the court held that "transmitting" was a function, not an act. Id.
After issuing its claim construction ruling, the Court of Federal Claims entertained cross-motions for summary judgment and granted...
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