Odetics, Inc. v. Storage Technology Corp.
| Decision Date | 31 July 1998 |
| Docket Number | No. Civ.A. 95-881-A.,Civ.A. 95-881-A. |
| Citation | 14 F.Supp.2d 807 |
| Court | U.S. District Court — Eastern District of Virginia |
| Parties | ODETICS, INC., Plaintiff, v. STORAGE TECHNOLOGY CORP., et al., Defendants. |
Richard A. Simpson, Ross, Dixon & Masback, Washington, DC, Vincent J. Belusko, Graham & James LLP, Los Angeles, CA, for plaintiff.
Craig C. Reilly, Richards McGettigan Reilly & West, PC, Alexandria, VA, (Nanda K. Alapati, E. Bradley Gould, Pennie & Edmonds LLP, Washington, DC, Jon R. Stark, Mark R. Scadini, Pennie & Edmonds LLP, Pala Alto, CA, George C. Summerfield, Rader Fishman & Grauer, PLLC, Bloomfield Hills, MI, Herbert F. Schwartz, Mark H. Bloomberg, Fish & Neave, New York City, of counsel), for Storage Technology, defendant.
Craig C. Reilly, Richards McGettigan Reilly & West, PC, Alexandria, VA, (Ron E. Shulman, Nina F. Locker, Roger J. Chin, Wilson Sonsini Goodrich & Rosati, PC, Pala Alto, CA, of counsel), for Visa International, defendant.
Thomas J. Scott, Jr., Scott L. Robertson, Hunton & Williams, Washington, DC, for Crestar Bank, defendant.
This patent infringement action is yet again before the Court following a jury verdict finding wilful literal infringement and awarding $70.6 million in damages.1 Following the verdict, defendants filed a motion for judgment as a matter of law on the issue of infringement; this motion was denied. Since then, the Federal Circuit issued its decision in Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303 (Fed.Cir.1998), reh'g en banc denied (Fed. Cir. July 2, 1998), which counsels reconsideration of that ruling, and indeed mandates entry of judgment as a matter of law in favor of defendants.
Plaintiff Odetics, Inc. is the owner of United States Letters Patent No. 4,779,151, issued on October 18, 1988. The '151 patent teaches a system for transporting cassette tapes from a storage library to a tape player. By way of example, the preferred embodiment contains an octagonal housing (often referred to as a silo) inside of which are seven columns of tapes and one column of tape drives, or tape players. Within this housing is a robotic arm that retrieves the tapes from their storage bins and places them into the tape drives. Claims 9 and 14 of the '151 patent, the claims-in-suit, describe a "rotary means" that (i) allows a cassette to be loaded from outside the library, for example by a human operator, and (ii) then rotates to allow the cassette to be accessed by the robotic manipulator located inside the silo. Specifically, the rotary means, as depicted in Figure 3 of the '151 patent, consists of a set of bins to hold the cassettes, a rod around which these bins pivot,2 and a gear that enables the bins to rotate. These rotary means components make up the bin array.
Storage Technology Corp. ("STK") manufactures and sells certain library systems that Odetics alleged infringed the '151 patent. STK's systems are used to store and play computer data tapes. The accused STK systems contain "pass-thru ports," devices that connect multiple libraries or silos to each other so that tapes can be passed from one silo to another. In STK systems that include a pass-thru port, the tapes are placed in the pass-thru port in one library, and the pass-thru port then translates and rotates to deliver the tape to a second, adjacent library. The pass-thru port consists of several bins, a stem on which the bins are mounted, cam followers (or "pins"), a cam, a ball slide, and a lead screw. Odetics's expert, Dr. McCarthy, testified that the bins, the stem, and the cam followers in the pass-thru port comprised the "bin array" in that device.
Odetics filed this patent infringement action against STK and two STK customers who use systems equipped with the pass-thru ports, Visa International and Crestar Bank.3 The crux of Odetics's infringement allegation was that the rotary means element of claims 9 and 14, both of which are § 112, ¶ 6 means-plus-function claims,4 read on STK's pass-thru ports. Specifically, Odetics alleged that the bin array of the pass-thru port (as defined by its expert) performed an identical function and was structurally equivalent to the bin array of the rotary means. As to structural equivalence, Odetics's expert, Dr. McCarthy, testified that the bin array in the accused device — comprised of the bins, the stem, and the cam followers — was structurally equivalent to the bin array disclosed in the '151 patent — comprised of the bins, the rod, and the gear. Thus, the structural analysis reduced to a comparison between the gear of the rotary means and the cam followers in the pass-thru port.5 The jury found that these components were indeed structurally equivalent. Accordingly, it concluded that STK, Visa, and Crestar literally infringed the patent, determined that a 4% running royalty rate was reasonable, and awarded Odetics $70.6 million in damages for STK's manufacture and sale of the infringing products since June 29, 1995. The jury awarded no damages for Visa's and Crestar's use of the infringing devices. Finally, it found that STK, but not Visa and Crestar, wilfully infringed the patent.
Following the jury's verdict, defendants6 filed a motion for judgment as a matter of law ("JMOL") and an alternative motion for a new trial on the issue of infringement. See Rules 50 and 59, Fed.R.Civ.P. These motions were originally denied. See Order, Odetics v. Storage Tech. Corp., No. 95-881 . After denying the motions, the Court learned of the Federal Circuit's decision in Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303 (Fed.Cir.1998), reh'g en banc denied (Fed. Cir. July 2, 1998). Because it appeared that Chiuminatta shed additional light on, and potentially counseled a contrary result in the disposition of, the JMOL motion, the Court ordered the parties to file supplemental memoranda discussing the effect of Chiuminatta on the JMOL motion. See Order, Odetics v. Storage Tech. Corp., No. 95-881 (E.D.Va. June 8, 1998). Because the parties have submitted these memoranda, and further because the issue has been argued orally, the matter is now ripe for disposition.
At the threshold, Odetics asserts that the JMOL motion is procedurally barred for two reasons. First, it claims that although STK moved for JMOL at the close of Odetics's case, it did not renew that motion at the close of all the evidence. The general rule is that "if a motion for judgment as a matter of law was made at the end of one party's case but not renewed at the close of all evidence, the movant is precluded from renewing that motion after the verdict is rendered." 9 James Wm. Moore, Moore's Federal Practice § 50.05[1], at 50-21 (3rd ed.1997). There is an exception, however, to the usual rule: A party need not renew its JMOL motion at the close of all the evidence if the Court states that renewal is unnecessary. See Singer v. Dungan, 45 F.3d 823, 829 (4th Cir.1995). In this regard, the Court stated to STK's counsel in ruling on defendants' JMOL motion at the close of Odetics's case, "[Y]ou will have an opportunity to renew that motion in the event of an adverse verdict, and you'll have an opportunity to argue it orally and in writing as well at that time." March 25, 1998, Tr. at 139 (emphases added). Thus, it was unnecessary for STK to renew its JMOL motion at the close of all the evidence. Any doubt on this question is laid to rest by the Court's further statement, when the JMOL was renewed after the jury returned its verdict, that "I will deem that you've made your motion in a timely fashion." March 27, 1998, Tr. at 143.
Odetics next asserts that STK's original JMOL motion addressed only functional equivalence, and therefore that arguments here about structural equivalence are not proper. Again, this argument is unpersuasive. STK did move for JMOL of noninfringement as to structural equivalence in its supplemental JMOL motion, which the Court deemed timely. Moreover, even were this not the case, STK's initial motion regarding infringement in general was sufficient to preserve the specific structural equivalence argument that it later raised in its supplemental motion, and that it argues again here. See Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1324-25 (Fed.Cir.1991). Finally, because there are no disputed facts, the structural equivalence can be decided by the Court as a matter of law. See Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed.Cir.1995).
Chiuminatta involved, inter alia, an apparatus patent for a rotary saw designed to cut concrete before the concrete hardens.7 Claim 11 of the '499 patent generally describes a support surface that applies downward pressure at the point where the saw blade emerges from the concrete, thus preventing the blade from harming the concrete as it cuts. See 145 F.3d 1303, 1305. Specifically, the claim recites a "means connected to the saw for supporting the surface of the concrete adjacent to the leading edge of the cutting blade to inhibit chipping, spalling, or cracking of the concrete surface during cutting." Id. (quoting claim 11). Significantly, "the only structure disclosed [in the specification of the '499] for supporting the surface of the concrete is a skid plate." Id. Cardinal, the accused infringer, also sold a rotary saw that had a support structure to prevent chipping, spalling, and cracking. In the accused device, this support structure consisted not of a skid plate, but of "two small wheels mounted adjacent to the leading edge of the saw blade." Id. 145 F.3d at 1306. Chiuminatta alleged that the wheels in the accused device were structurally equivalent to the skid plate in the claimed invention, and therefore that Cardinal infringed claim 11. Upon the parties' cross-motions for summary judgment, the district court ruled that Cardinal infringed the '499 patent. See id. ...
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Odetics Inc. v. Storage Technology Corp.
...Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 46 USPQ2d 1752 (Fed. Cir. 1998). See Odetics, Inc. v. Storage Tech. Corp., 14 F. Supp. 2d 807, 809, 47 USPQ2d 1923, 1924 (E.D. Va. July 31, 1998) ("Odetics VII"). Odetics appeals the reconsideration judgment, as well as earlier judgments partial......