Odetics Inc. v. Storage Technology Corp.

• Decision Date: 06 July 1999
• Citation: 185 F.3d 1259,51 USPQ2d 1225
• Parties: (Fed. Cir. 1999) ODETICS, INC., Plaintiff-Appellant, v. STORAGE TECHNOLOGY CORPORATION, VISA INTERNATIONAL SERVICE ASSOCIATION, INC., VISA USA, INC. and CRESTAR BANK, INC., Defendants-Cross Appellants. 98-1533, -1585 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1259

185 F.3d 1259 (Fed. Cir. 1999)

ODETICS, INC., Plaintiff-Appellant, v. STORAGE TECHNOLOGY CORPORATION, VISA INTERNATIONAL SERVICE ASSOCIATION, INC., VISA USA, INC. and CRESTAR BANK, INC., Defendants-Cross Appellants.

98-1533, -1585

United States Court of Appeals for the Federal Circuit

DECIDED: July 6, 1999

Rehearing Denied and Suggestion for Rehearing En Banc Declined: August 27, 1999

Appealed from: United States District Court for the Eastern District of Virginia

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

Judge Thomas Selby Ellis, III

Vincent J. Belusko, Graham & James LLP, of Los Angeles, California, argued for plaintiff-appellant. With him on the brief was David L. Fehrman.

Herbert F. Schwartz, Fish & Neave, of New York, New York, argued for defendants-cross appellants. With him on the brief were Mark H. Bloomberg and Russell W. Faegenburg.

Before LOURIE, CLEVENGER, and SCHALL, Circuit Judges.

Opinion for the court filed by Circuit Judge CLEVENGER. Dissenting opinion filed by Circuit Judge LOURIE.

CLEVENGER, Circuit Judge.

On March 27, 1998, a jury impaneled in the United States District Court for the Eastern District of Virginia concluded that automated storage library systems manufactured and sold by Storage Technology Corporation, and used by Visa International Service Association, Inc., Visa USA, Inc., and Crestar Bank, Inc. (collectively, "STK") literally infringed United States Patent No. 4,779,151 ("the '151 patent") owned by the plaintiff, Odetics, Inc. ("Odetics"). Finding willful infringement, the jury awarded $70.6 million in damages. After initially denying STK's renewed motion for Judgment as a Matter of Law ("JMOL"), the district court sua sponte reconsidered, granting the JMOL and ordering that judgment be entered in favor of STK. The district court deemed its reconsidered decision to be "mandat[ed]" by "the analytical framework established" by this court's opinion in Chiuminatta Concrete Concepts, 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 partially denying its request for a permanent injunction, see Odetics, Inc. v. Storage Tech. Corp., 14 F. Supp. 2d. 785, 47 USPQ2d 1573 (E.D. Va. June 5, 1998) ("Odetics V"), excluding certain time periods from the willful infringement verdict, see Odetics, Inc. v. Storage Tech. Corp., No. 95-881-A, slip op. at 2 (E.D. Va. Feb. 12, 1998) ("Odetics IV"), and denying its request for enhanced damages, see Odetics, Inc. v. Storage Tech. Corp., 14 F. Supp. 2d 800 (E.D. Va. July 17, 1998) ("Odetics VI").

STK cross-appeals the district court's holding that its validity defense, based on 35 U.S.C. 102(g), was barred as within the scope of this court's mandate in an earlier appeal of this case, Odetics, Inc. v. Storage Tech. Corp., 116 F.3d 1497, 1997 WL 357598 (Fed. Cir. 1997) (Table) ("Odetics II"). See Odetics, Inc. v. Storage Tech. Corp., No. 95-881-A, slip op. at 1 (E.D. Va. Dec. 3, 1997), as clarified by No. 95-881-A, slip op. at 3-4 (Jan. 8, 1998) ("Odetics III"). STK also appeals the district court's decision to exclude certain evidence from the jury. See id., slip op. at 1.

Because Chiuminatta did not mark a change in the proper infringement analysis under 112, 6, and the jury's verdict is supported by substantial evidence, we reverse the grant of JMOL and order the jury's verdict reinstated. We affirm, however, the district court's other judgments on appeal.

I

This patent infringement action, making its second appearance before this court, see Odetics II, 116 F.3d 1497, 1997 WL 357598 (vacating judgment of noninfringement), concerns robotic tape storage systems, which are typically used to store, organize, and retrieve videotapes or computer data tapes. The storage systems generally consist of a large, generally cylindrical housing with a pivoting retrieval mechanism, such as a robotic arm, located in the center of the housing. Acting on commands to retrieve certain tapes, the robotic arm can selectively grip the desired tape, removing it from its storage shelf and placing it on another shelf or in a tape player/recorder. These systems are highly automated and are especially useful in situations where large quantities of data must be easily and quickly retrieved from storage.

A

At issue are claims 9 and 14 of the '151 patent. (Although claim 8 was also asserted the district court granted summary judgment of noninfringement with respect to that claim--a judgment that, in light of our overall disposition, is now moot.) Claim 9 reads as follows (emphasis supplied to highlight disputed limitation):

9. A tape cassette handling system comprising:

a plurality of tape transports;

a housing including a cassette storage library having a plurality of storage bins and at least one cassette access opening for receiving cassettes to be moved to the storage bins or to the tape transports, or for receiving cassettes to be removed from the library or from the tape transports;

a rotary means rotatably mounted within the library adjacent the access opening for providing access to the storage library, the rotary means having

one or more holding bins each having an opening for receiving a cassette, wherein the rotary means is rotatable from a first position in which the opening of at least one holding bin is accessible from outside of the housing to a second position in which the opening of at least one holding bin is accessible from inside of the housing; and

cassette manipulator means located within the housing for selectively moving cassettes between the rotary means, said storage bins and said tape transports.

Claim 14 is identical in all relevant aspects.

The critical "rotary means" claim element is in means-plus-function form, requiring that it "be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. 112, 6 (1994). In Odetics II, this court held that the structure corresponding to the "rotary means" element was "the components that receive the force and rotate as a result of that force (i.e., the rod, gear, and rotary loading and loading mechanisms)." 1997 WL 357598, at *6. This court noted that this structure could be seen in Fig. 3 of the '151 patent, except that the structure did not include the motor (52) or its gear (54). [Tabular or Graphical Material Omitted]

Fig. 3, U.S. Patent No. 4,779,151

Thus, the structure corresponding to the "rotary means" element, as depicted in Fig. 3 of the '151 patent, is a set of tape holders or bins, a rod providing the axis of rotation, and a gear capable of receiving a force sufficient to cause the structure to accomplish the claimed "rotary" function.

STK manufactures and sells Library Storage Modules ("libraries") to companies, such as Visa and Crestar, that require large quantities of automated data storage. Library systems sold by STK are scaleable: that is, additional libraries may be added to increase the amount of storage space. When libraries are added, STK uses a device known as a "pass-thru port" to link the libraries, allowing data tapes to be passed from library to library. The pass-thru ports bridge the gaps between the libraries using a "bin array"--a box-like set of tape slots or holders--that slides linearly along a short track. As the bin arrays move from library to library, they rotate to allow tapes to be manipulated from within the library housings. This rotation is accomplished by the use of "cam followers," or pins, that are affixed to the bottom of the bin array. As a bin array moves along its track, the pins come into contact with angled structures, or "cams," that exert force against the pins, causing the bin array to rotate about a rod that forms its axis. The "bin array" in the accused devices, then, comprises a set of tape holders or bins, a rod, and pins.

B

In 1995, Odetics sued STK, claiming that three of STK's commercial storage library offerings (known as the ACS 4400, the PowderHorn, and the WolfCreek) infringed claims 8, 9, and 14 of its '151 patent. On cross-motions for summary judgment, the district court found as a matter of law that the claims were not literally infringed, and partially granted STK's motion for summary judgment on the issue of laches. See Odetics, Inc. v. Storage Tech., 919 F. Supp. 911, 38 USPQ2d 1873 (E.D. Va. 1996) ("Odetics I"). After receiving instructions from the district court regarding the meaning of disputed terms, a jury considering the issues of validity and infringement under the doctrine of equivalents found the asserted claims of the '151 patent not invalid and not infringed.

In late 1996, Odetics appealed. We held that the district court's claim construction was erroneous, and therefore vacated the judgment entered by the district court, remanding the case for further proceedings in light of the correct claim interpretation. See Odetics II, 1997 WL 357598, at *7. The case returned to the district court, where a second jury trial commenced on March 23, 1998, resulting in a verdict of willful infringement on March 27, and an award of $70.6 million in damages.

In post-trial motions, the district court, on May 1, 1998, denied STK's motion for JMOL and alternative motion for a new trial. See Odetics, No. 95-881-A (E.D. Va. order filed May 1, 1998). Sometime in May or June 1998, the district court, "[a]fter denying the motions [for JMOL and a new trial] . . . learned of the Federal Circuit's decision in Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, (Fed. Cir. 1998)." Odetics VII, 14 F. Supp. 2d at 810, 47 USPQ2d at 1925. The district court, concluding that Chiuminatta "potentially counseled a contrary result in the disposition of[ ] the JMOL motion" ordered ...