Novo Industries, L.P. v. Micro Molds Corp.
| Decision Date | 05 December 2003 |
| Docket Number | No. 03-1230.,No. 03-1249.,03-1230.,03-1249. |
| Parties | NOVO INDUSTRIES, L.P., Plaintiff-Cross Appellant, v. MICRO MOLDS CORPORATION, Defendant-Appellant, and Oscar Helver, Defendant. |
| Court | U.S. Court of Appeals — Federal Circuit |
James H. Riley II, Sonnenschein Nath & Rosenthal LLP, of Kansas City, Missouri, argued for plaintiff-cross appellant.
Michael C. Cesarano, Akerman, Senterfitt, of Miami, Florida, argued for defendant-appellant.
Before CLEVENGER, GAJARSA, and DYK, Circuit Judges.
Micro Molds Corporation ("Micro Molds") appeals the decision of the United States District Court for the Southern District of Florida holding that Micro Molds infringed U.S. Patent No. 5,056,578 ("the '578 patent"), entitled "Carrier Structure for a Vertical Blind Assembly," and awarding enhanced damages to the patent's assignee, Novo Industries L.P. ("Novo"). Novo Indus., L.P. v. Micro Molds Corp., 239 F.Supp.2d 1282 (S.D.Fla.2002). Because the district court lacked authority to "correct" claim 13 of the '578 patent by construing the word "a" to mean "and," we reverse the district court's decision as to infringement. In addition, we hold claim 13 of the request for sanctions against Novo.
Novo is the assignee of the '578 patent, which is directed to a carrier assembly that holds one of a plurality of vertical slats (or blinds) that cover the interior of a window. Figure 1 of the patent is reproduced below:
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Typically, the slats have a large width relative to their thickness. In use, a plurality of the carrier assemblies are supported on a horizontal "tilt rod" 18 that runs across the top of the window. Each carrier assembly contains a gearing mechanism that causes a support finger 20 holding the slat 22 to rotate about the support finger's vertical axis when the tilt rod is rotated. The rotation of the support finger causes the slat to rotate about its own vertical axis, permitting more or less light to pass the slat as its angle relative to the window is changed.
Because each carrier assembly is typically linked to a single tilt rod, rotation of the tilt rod causes all of the slats to rotate simultaneously. Generally, all of the slats are aligned at the same angle with respect to the window. When a chain is pulled or a similar drive mechanism is engaged, the tilt rod rotates, opening or closing all of the slats in unison. Occasionally, however, one or more of the slats becomes misaligned from the other slats, causing one of the adjacent slats to come into contact with the misaligned slat, which can inhibit further rotation of the slat as the tilt rod is rotated. The '578 patent is directed to a carrier assembly that permits realignment (or "self-alignment") of misaligned slats in such a situation. The carrier assembly includes stop mechanisms that physically prevent further rotation of the support finger when the slat reaches an extreme rotational position. Thus, when a misaligned slat reaches the extreme rotational position (e.g., when the slat is parallel to the window), it will stop rotating, even as the tilt rod continues to rotate. Because the misaligned slat cannot rotate, its gears skip as the tilt rod rotates, until the remaining properly aligned slats reach the extreme rotational position. Thus, the misaligned slat will be forced into alignment at the extreme rotational position with the other slats. All of the slats can then be adjusted in unison to any desired angle.
The original patent application that matured into the '578 patent included seventeen claims. Claims 15-17 read:
15. A carrier assembly for movably supporting one of a plurality of vertical oriented slats in a vertical blind assembly, said carrier assembly comprising:
e) said first gear and said second gear fixedly connected to one another and movable with one another upon rotation of the tilt rod, and
f) said first and second gear forced into continued longitudinal movement relative to said drive gear upon forced rotation of said tilt rod and fixed positioning of said drive gear relative to said frame.
16. An assembly as in claim 15 further comprising stop means formed on said support finger and extending outwardly therefrom into engaging relation with one of two spaced apart stop members formed on said frame.
17. An assembly as in claim 16 wherein said stop means comprises one outwardly extending protrusion disposed to engage each of said stop members on said frame on rotation through an arc of 180 degrees.
(App. at A222-23 (emphasis added).) Claim 15 was rejected under 35 U.S.C. § 102(b) as anticipated by U.S. Patent No. 4,848,435 to Helver ("Helver"), and claims 16 and 17 were rejected under 35 U.S.C. § 103 as being unpatentable over Helver in view of U.S. Patent No. 4,834,163 to Dickstein ("Dickstein"). The examiner stated that Helver disclosed all of the limitations of claim 15 and that, "while Helver does not disclose a stop means disposed on the support finger, Dickstein discloses a stop means 52 on a support finger 28, wherein, to incorporate this teaching into the support finger of Helver for the purpose of limiting the rotational movement of the slats would have been obvious to one of ordinary skill in the art." (App. at A226-27.)
In response to the rejection, the applicant cancelled claims 15-17 and substituted claim 19, which read:
19. A carrier assembly for movably supporting one of a plurality of vertical oriented slats in a vertical blind assembly, said carrier assembly comprising:
h) said stop means comprising one outwardly extending protrusion disposed to engage each of said stop members on said frame upon rotation through an arc of substantially 180 degrees, and
i) said drive gear including a substantially round configuration and a plurality of gear teeth formed thereon in spaced relation to one another along an outer periphery of said drive gear to define a circular configuration thereof; said second gear comprising a plurality of gear teeth linearly arranged in spaced relation along the length of said base; said gear teeth of said second gear forced into successive engagement and displacement relative to said gear teeth of said drive gear upon said continued longitudinal movement of said base and said first and second gears relative to said fixed positioning of said drive gear.
(App. at A232-33 (emphasis added).)
Claim 19 thus incorporated the limitations of cancelled claims 15 and 17 as paragraphs (a)-(f) and (h), respectively, and it included new paragraph (i). However, the language of paragraph (g) of claim 19 was not identical to that of cancelled claim 16. Rather, it included the additional words "a rotatable with" that did not appear in claim 16 of the original application. The examiner allowed claim 19, which became claim 13 of the issued patent. Although the parties now agree that claim 13 included an error, Novo never sought or obtained a certificate of correction pursuant to 35 U.S.C. § 255 from the United States Patent and Trademark Office ("PTO").
In 1999, Novo commenced this action against Micro Molds, asserting infringement of claim 13 of the '578 patent. The parties disputed the meaning of the words "a rotatable with" in claim 13. Novo argued that the claim included an obvious typographical error that could be corrected by construction in one of two ways. First, Novo argued that the claim could be "corrected by deleting three superfluous words (a rotatable with)" from the claim to make it read: "stop means formed on said support finger." (App. at A180.) Alternatively, Novo argued that "the error could be corrected by...
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