Mhl Tek Llc v. Nissan Motor Co.

• Decision Date: 10 August 2011
• Docket Number: 2010–1318.,2010–1317,Nos. 2010–1287,s. 2010–1287
• Citation: 655 F.3d 1266,99 U.S.P.Q.2d 1681
• Parties: MHL TEK, LLC, Plaintiff–Appellant,v.NISSAN MOTOR CO. and Nissan North America, Inc., Defendants–Cross Appellants,andHyundai Motor Co., Hyundai Motor America, Hyundai Motor Manufacturing Alabama LLC, Kia Motors Corporation, and Kia Motors America, Inc., Defendants–Cross Appellants,andDr. Ing. h.c.F. Porsche AG, Porsche Cars North America, Inc., Defendants–Cross Appellants,andSubaru of America, Inc., and Subaru of Indiana Automotive, Inc., Defendants–Cross Appellants,andAudi AG, Volkswagen AG, and Volkswagen Group of America, Inc. (doing business as Audi of America, Inc.), Defendants–Cross Appellants,andBMW AG (also known as Bayerische Motoren Werke AG), BMW of North America LLC, and BMW Manufacturing Co. LLC, Defendants–Cross Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

655 F.3d 1266

99 U.S.P.Q.2d 1681

MHL TEK, LLC, Plaintiff–Appellant,

v.NISSAN MOTOR CO. and Nissan North America, Inc., Defendants–Cross Appellants,andHyundai Motor Co., Hyundai Motor America, Hyundai Motor Manufacturing Alabama LLC, Kia Motors Corporation, and Kia Motors America, Inc., Defendants–Cross Appellants,andDr. Ing. h.c.F. Porsche AG, Porsche Cars North America, Inc., Defendants–Cross Appellants,andSubaru of America, Inc., and Subaru of Indiana Automotive, Inc., Defendants–Cross Appellants,andAudi AG, Volkswagen AG, and Volkswagen Group of America, Inc. (doing business as Audi of America, Inc.), Defendants–Cross Appellants,andBMW AG (also known as Bayerische Motoren Werke AG), BMW of North America LLC, and BMW Manufacturing Co. LLC, Defendants–Cross Appellants.

Nos. 2010–1287

2010–1317

2010–1318.

United States Court of Appeals, Federal Circuit.

Aug. 10, 2011.

Deanne E. Maynard, Morrison & Foerster, LLP, of Washington, DC, argued for plaintiff-appellant. With her on the brief were Jason A. Crotty, of San Francisco, CA; and David C. Doyle, Richard C. Kim and Stephen D. Keane, of San Diego, CA.Kurt L. Glitzenstein, Fish & Richardson, P.C., of Boston, MA, argued for all defendants-cross appellants. Of counsel for Dr. Ing. h.c.F. Porsche AG, et al., were J. Nicholas Bunch, of Dallas, TX, and John A. Dragseth, of Minneapolis, MN. On the brief for defendants-cross appellants Nissan Motor Co. et al. was Jeffrey S. Patterson, Hartline, Dacus, Barger, Dreyer & Kern LLP, of Dallas, TX. Of counsel were Jeffrey J. Cox and Brett C. Martin. On the brief for defendants-cross appellants Hyundai Motor Co., et al. were Barry W. Graham, Edward J. Naidich, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. of Washington, DC, and Andrew C. Sonu, of Reston, VA. Of counsel was John T. Battaglia, of Washington, DC. On the brief for defendants-cross appellants Subaru of America, Inc., et al. was John A. Dragseth, Fish & Richardson P.C., of Minneapolis, MN, and J. Nicholas Bunch, of Dallas, TX. Of counsel was Kurt L. Glitzenstein, of Boston, MA. On the brief for defendants-cross appellants, BMW AG (also known as Bayerische Motoren Werke AG), et al. was Joseph P. Lavelle, Dewey & LeBoeuf LLP, of Washington, DC. Of counsel were Jeff E. Schwartz; and Vivian S. Kuo, Howrey LLP, of Washington, DC.Michael J. Lennon, Kenyon & Kenyon, LLP, of New York, NY, for defendants-cross appellants Audi AG, et al. Of counsel on the brief was Susan A. Smith, of Washington, DC. Of counsel was Mark A. Hannemann, of New, York, NY.Before RADER, Chief Judge, GAJARSA ^* and PROST, Circuit Judges.GAJARSA, Circuit Judge.

At issue in this appeal is whether MHL Tek, LLC (“MHL Tek”) has standing to assert any of the patents-in-suit and if so, whether the district court properly granted summary judgment of non-infringement of U.S. Patent No. 5,731,516 (“the '516 patent”).

MHL Tek filed suit against numerous automobile manufacturers ¹ for infringement of U.S. Patent Nos. 5,663,496 (“the '496 patent”), 5,741,966 (“the '966 patent”), and the ' 516 patent (collectively, “patents-in-suit”). MHL Tek's claim for infringement proceeded only with respect to the ' 516 patent because the district court dismissed MHL Tek's claim for infringement of the '496 and ' 966 patents for lack of standing. MHL Tek, LLC v. Gen. Motors Corp., 622 F.Supp.2d 400, 402 (E.D.Tex.2009) ( “ Standing Op. II ”). The district court later granted defendants' motion for summary judgment of noninfringement of the ' 516 patent. MHL Tek, LLC v. Nissan Motor Co., 691 F.Supp.2d 698 (E.D.Tex.2010) (“ Infringement Op.”). For the reasons discussed below, we affirm the district court's decision as to the '496 and ' 966 patents and reverse the district court's decision as to MHL Tek's standing to assert the ' 516 patent. As a result, we vacate the district court's grant of summary judgment of non-infringement.

Background

I.

The patents-in-suit relate to a tire pressure monitoring system (“TPMS”) and have the same inventors, Michael Handfield and Helen Laliberte. As the name suggests, a TPMS monitors a tire's pressure and then transmits this information to the vehicle's operator. The '496 and the '966 patents are divisionals of U.S. Patent Application No. 08/101,379 (“Parent Application”), and were both filed on June 6, 1995. The '516 patent is not related to the '496 and '966 patents. It was filed on May 2, 1996 and is a divisional of U.S. Patent Application Ser. No. 476,613, which itself is a divisional of U.S. Patent Application Ser. No. 332,200.

A.

When the Parent Application was filed on August 3, 1993, its claims were very similar to those that eventually issued in the '496 and '966 patents. Below are claims 1 and 7 from the '496 patent—a method and a system claim, respectively. Any limitations not appearing in the corresponding claims of the Parent Application are underlined:

1. A method for monitoring a parameter of a tire for a vehicle having a plurality of conductive components which form an electromagnetic path with first and second ends, the method comprising the steps of:

generating a signal indicative of a parameter of the tire using a sensor disposed within the tire;

transmitting the generated signal along the electromagnetic path by introducing the generated signal to the electromagnetic path first end wherein the electromagnetic path includes a ground plane of the vehicle;

receiving a path signal at the electromagnetic path second end, the path signal being responsive to the generated signal; and

monitoring the tire parameter by monitoring the path signal.

'496 patent col.17 ll.18–33 (emphasis added).

7. A system for monitoring a parameter of a tire for a vehicle, the system comprising:

a sensor, disposed within the tire, for generating a signal indicative of the parameter of the tire;

an electromagnetic path being formed of a plurality of conductive components of the vehicle including a ground plane of the vehicle, the electromagnetic path having first and second ends;

a transmitter, in electrical communication with the sensor and with the electromagnetic path first end, for transmitting the generated signal along the electromagnetic path;

a receiver, in electrical communication with the electromagnetic path second end, for receiving a path signal at the electromagnetic path second end, the path signal being responsive to the generating signal; and

a monitor, in electrical communication with the receiver, for monitoring the tire parameter by monitoring the path signal.

Id. col.17 ll.45–63 (emphasis added).

Thus, in the claimed invention of the '496 patent, a sensor inside the tire generates a signal related to the parameter of the tire. That signal is transmitted from the sensor along an electromagnetic path, or communications link, to a receiver. Id. col.6 ll.36–43, col.7 ll.57–61. The communications link allows the pressure signal to travel from the sensor to the transmitter and then to the receiver by using the conductive components of the car, i.e. the “metallic wheel on which a tire is mounted, the wheel bearings and axle, ... the axle supports and vehicle frame.” Id. col.8 ll.1–4. The receiver, in turn, communicates the signal to a device that monitors the tire pressure. In a preferred embodiment of the invention, the sensor and the transmitter have a piezo-resistive power source, allowing them to reduce energy expenditure when the tires are stationary. Id. col.2 ll.34–39.

The '966 patent also claims a system for monitoring tire pressure. Claim 1 is representative; any limitations not appearing in the corresponding claims of the Parent Application are underlined:

1. A system for monitoring a status of a parameter of a tire for a vehicle, the system comprising:

a sensor, disposed within the tire, for generating a signal indicative of the parameter of the tire independently of magnitude of the parameter;

a programmable processor, in electrical communication with the sensor for determining status of the tire parameter by comparing the tire parameter to a selected threshold;

a transmitter, in electrical communication with the processor for transmitting a status signal indicative of the status of the tire parameter along a first communications link;

a monitor, in communication with the first communications link, for monitoring the status of the tire parameter;

a communication unit in electrical communication with the processor having a first receiver for receiving a processor control command; and

a remote controller, positionable for electrical communication with the communication unit via a second communications link, for initiating the processor control command.

'966 patent col.17 ll.19–42 (emphases added). This claimed system is similar to the one claimed in the '496 patent, with the addition of the “processor control command.” This element allows remote-controlled command entry. Id. col.14 l.4–col.15 l.5. For example, with the remote controller, the user can request a report of all tire pressure alarms for a particular period. Id.

B.

The '516 patent claims an apparatus used to measure tire pressure. What is claimed is:

1. Apparatus for monitoring inflation pressure of a pneumatic tire mounted on a conductive wheel, the apparatus comprising:

a cylindraceous housing having a passage to allow air ingress and egress to and from the pneumatic tire, the housing including an elongate portion adapted for extension through an aperture of the wheel, the housing also including a conductive portion, the elongate portion being sized to allow the conductive portion of the housing to contact the conductive wheel to allow transmission of the signal using the conductive wheel;

a pressure transducer disposed within the housing in fluid communication with the pneumatic tire for providing a signal indicative of the inflation pressure;

an electronic circuit for monitoring the signal and conditioning the signal for transmission to a remote receiver; and

a needle and spring...