Renishaw v. Marposs Societa' Per Azioni
| Decision Date | 13 August 1997 |
| Docket Number | Civil Action No. 94-40542. |
| Citation | 974 F.Supp. 1056 |
| Parties | RENISHAW plc, Plaintiff, v. MARPOSS SOCIETA' PER AZIONI and Marposs Corporation, Defendants. |
| Court | U.S. District Court — Eastern District of Michigan |
James A. Samborn, Dickinson, Wright, Moon, Vandusen & Freeman, Bloomfield Hills, MI, James A. Oliff, Oliff & Berridge, Edward P. Walker, Alexandria, VA, for plaintiff.
Charles W. Saber, Thomas J. D'Amico, James W. Brady, Jr., Gabrielle, S. Roth, Dickstein, Shapiro, Morin & Oshinsky, Washington, DC, J. Michael Huget, Butzel Long, Detroit, MI, for defendants.
This is a patent infringement action in which the liability and damages issues have been bifurcated. Beginning on March 10, 1997 and continuing through March 27, 1997, this Court held a bench trial on the matter of liability. During the course of the trial, this Court received testimony and documentary evidence as well as dozens of physical exhibits. Post trial briefing was completed on May 30, 1997.
This Opinion represents the Court's findings of fact and conclusions of law with respect to all issues. These findings of fact and conclusions of law result from a careful consideration of all of the evidence and the documentary and physical exhibits in light of the pertinent law and the Court's observation of the witnesses and its evaluation of their demeanor, qualifications and credibility. Every finding of fact that may be construed to incorporate a conclusion of law is hereby adopted as a conclusion of law. Every conclusion of law that may be construed to incorporate a finding of fact is hereby adopted as a finding of fact. The sub-headings used herein are for convenience only. If a finding of fact or conclusion of law is pertinent to any determination other than that indicated by the heading under which it appears, it is deemed adopted as a finding of fact or conclusion of law applicable to such other determination or determinations as may be appropriate.
1. This is a patent infringement action with federal jurisdiction based upon 28 U.S.C. § 1338(a).
2. Plaintiff, Renishaw plc ("Renishaw"), is an English corporation with its principal place of business in New Mills, Wotton-under-Edge, Gloucestershire, England. PO 13.1 corporation with its principal place of business in Via Saliceto, Bentivoglio, Italy. PO 13.
3. Defendant Marposs Societa' Per Azioni is an Italian corporation with its principal place of business in Via Saliceto, Bentivoglio, Italy. PO 13.
4. Defendant Marposs Corporation is a New York corporation with its principal place of business in Auburn Hills, Michigan. PO 13. Marposs Corporation is the U.S. subsidiary of Marposs Societa' Per Azioni and acts as a distributor of Marposs products in the United States. Tr 1022-23.
5. Marposs Societa' Per Azioni and Marposs Corporation are collectively referred to herein as "Marposs."
6. Renishaw filed suit against Marposs on July 21, 1994, alleging willful infringement of three Renishaw patents by Marposs' MIDA touch probes. The initial patents asserted were U.S. Patent No. 4,153,998 (the "'998 patent"), U.S. Patent No. 4,270,275 (the "'275 patent"), and U.S. Patent No. 5,253,428 (the "`428 patent").
7. Renishaw, with Marposs' consent, filed a Stipulated Amended Complaint on November 30, 1994, further alleging the infringement by Marposs of U.S. Patent No. 5,353,514 (the "`514 patent").
8. On December 8, 1994, on the parties' joint motion, the Court issued an order bifurcating liability and damages issues.
9. Renishaw sought and was granted leave to file a Second Amended Complaint on August 12, 1996, further alleging infringement by Marposs of U.S. Patent No. 5,491,904 (the "'904 patent").
10. Marposs, of course, denied all of Renishaw's allegations of infringement and has asserted that Renishaw's suit is in bad faith and seeks an award of attorneys' fees pursuant to 35 U.S.C. § 285. PO 7-13.
11. The '998, '275, '428, '514 and '904 patents are wholly owned by Renishaw. PO 11, 19. Tr 340, 368.
12. It is uncontested that the accused MIDA probes were made, and sold in the United States, after the applicable patent issue dates. Tr 1199-1200, 1203-04; PX 87, PX 575, pp. 64-65.
13. Renishaw claimed that the Marposs MIDA probes infringed claim 12 of the '998 patent, claims 1-5 of the '275 patent, claims 1-28 of the '428 patent, claims 1-28, 38-49 and 51-55 of the '514 patent, and claims 1-6 of the '904 patent in this action. PO 1.
14. Prior to trial, Renishaw designated as representative claims 1 and 4 of the '275 patent, claims 3, 6 and 55 of the '514 patent, and claim 2 of the '904 patent. Renishaw did not choose any representative claims from the '998 or '428 patents. PO 1. Pursuant to a stipulation between the parties, claims 3 and 6 of the '514 were subsequently dropped from consideration.
15. Thus, by agreement, the case was tried on the basis of representative claims 1 and 4 of the '275 patent, claim 55 of the '514 patent, and claim 2 of the '904 patent. Both parties agreed that the resolution of these claims will constitute a final resolution of all the asserted patents as if the case had been tried without representative claims. PO 1.
16. Touch probes are mechanical devices that have been used for many years for very accurately checking dimensions on coordinate measuring machines ("CMMs") and on lathes, mills, machining centers, and other machining tools (collectively, "machining centers"). In the typical touch probe application, the touch probe is mounted on an arm that is part of the CMM or machining center. To measure, the arm is moved in order to bring the stylus of the touch probe into contact with the object to be measured. '904, col. 1, 1.21-27.
17. Touch probes do not measure objects by themselves. In general, a touch probe is simply a sophisticated switch that generates a repeatable signal. The repeatability of a probe is the ability of that probe to signal or trigger at the same point each time. All viable touch probes produce such repeatable trigger signals. The microprocessors and software within the CMM or machining center use the repeatable trigger signal of the touch probe to produce an accurate measurement. Tr 521, 1632; DX 245, Bates No. 112341; '904, col. 1, 1. 15-28.
18. Modern touch probes produce trigger signals that are repeatable to the level of a single micron or less. A micron is one-millionth of a meter; a typical human hair has a thickness of 50 to 100 microns. Tr 156, 847, 850, 1094, 1308.
19. The patents in suit do not involve the microprocessors or software of the CMM or machining centers or what use these machines make of the repeatable trigger signal from the touch probe. Rather, it is the structure of the mechanical parts of the touch probe, and the way these parts function and interact together to produce such a highly repeatable signal, that are at issue. Tr 521; DX 987, Bates No. 011340; Stiftung v. Renishaw PLC, 945 F.2d 1173, 1177-78 (Fed.Cir.1991) (hereinafter "Zeiss" litigation).
20. CMMs generally operate in laboratory-like environments that are dry, clean, quiet, and vibration free. Tr 1064. Machining center environments, on the other hand, are generally harsh, dirty, and wet. The touch probe may be exposed to vibration and shocks, streams of liquid coolant, and chips of metal generated by cutting operations. Tr 204-05, 1026-27, 1064-65.
21. Prior to Mr. McMurtry's invention of the omnidirectional touch trigger probe, the metrology and machine tool industries utilized either hard probes, relatively complicated analog probes that were used for tracing operations, or probes that permitted stylus deflection in only a limited number of directions. Tr 117-19, 341, 343-45.
22. Hard probes are simply rigid styli mounted on the end of a movable arm of a CMM. An operator would manually move the arm holding the stylus until the stylus contacted a workpiece. Then, while the stylus was held against the workpiece, the operator would instruct the machine to take a reading of the position of the movable arm, thus determining the position of the surface of the workpiece. These hard probes required constant operator control to accomplish measurement, thus effectively eliminating the possibility of automation. In addition, damage to the probe or the workpiece could result if the probe collided with the workpiece with sufficient force. Moreover, because hard probes could deflect the part being measured, the measurements taken with hard probes were prone to errors. Tr 117-19, 341.
23. Analog probes were also designed to be mounted on the end of a movable arm of a CMM. Analog probes have a stylus that is movable relative to the probe housing. An analog probe outputs an electrical signal that is proportional to the amount of displacement of the stylus relative to the probe housing. Such probes were slow, complex, expensive, unreliable, and many were operable in only a single deflection direction. Tr 118, 341.
24. None of the devices that existed prior to Mr. McMurtry's invention allowed costeffective, rapid omni-directional position measurements to be taken. Many prior art devices did not permit the stylus to deflect large amounts after contacting the workpiece (known as "overtravel"). Overtravel is essential for automated systems because such systems cannot immediately stop movement of the probe (or workpiece) upon output of the trigger signal. Tr 113-15, 536.
25. In 1972, David McMurtry was a design engineer working at Rolls-Royce on the development of the Concorde jet engine. Mr. McMurtry was using a CMM equipped with a hard probe to measure delicate fuel system pipes used in the jet engine. Mr. McMurtry was experiencing a problem with use of the hard probe because contact between the hard probe...
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