Schumer v. Laboratory Computer Systems, Inc.

• Decision Date: 22 October 2002
• Docket Number: No. 02-1100.,02-1100.
• Citation: 308 F.3d 1304
• Parties: Alfred J. SCHUMER (doing business as Digitizer Technology Company), Plaintiff/Counterclaim Defendant-Appellant, v. LABORATORY COMPUTER SYSTEMS, INC., Defendant-Appellee, and Wacom Technology Corporation, Counterclaimant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1304

308 F.3d 1304

Alfred J. SCHUMER (doing business as Digitizer Technology Company), Plaintiff/Counterclaim Defendant-Appellant, v. LABORATORY COMPUTER SYSTEMS, INC., Defendant-Appellee, and Wacom Technology Corporation, Counterclaimant-Appellee.

No. 02-1100.

United States Court of Appeals, Federal Circuit.

Decided October 22, 2002.

Jerry A. Riedinger, Perkins Coie LLP, of Seattle, WA, argued for plaintiff/counterclaim defendant-appellant.

Joseph W. Berenato, III, Liniak Berenato Longacre & White, of Bethesda, MD, argued for defendant-appellee and counterclaimant-appellee. With him on the brief was Maurice U. Cahn, Cahn & Samuels, LLP, of Washington, DC.

Before NEWMAN, MICHEL, and DYK, Circuit Judges.

DYK, Circuit Judge.

Alfred L. Schumer ("Schumer") appeals a judgment of the United States District Court for the Western District of Washington granting summary judgment in favor of Laboratory Computer Systems, Inc. ("LCS") and Wacom Technology Corporation ("Wacom"). The court held that LCS and Wacom did not infringe claims 1-10 of U.S. Patent No. 5,768,492 ("the `492 patent") Schumer v. Lab. Computer Sys., Inc., No. C99-0474L (W.D.Wash. Oct. 16, 2001) (order granting partial summary judgment of noninfringement of claims 1-10) ("Noninfringement Order"), and that claims 13 and 14 of the `492 patent were invalid and not infringed, Schumer v. Lab. Computer Sys., Inc., No. C99-474L (W.D.Wash. Oct. 16, 2001) (order granting partial summary judgment of invalidity of claims 13 and 14) ("Invalidity Order"). Because the district court erred in construing claims 1-10 of the `492 patent, erred in finding clear and convincing evidence that claim 13 was anticipated, and failed to separately analyze claim 14, we vacate and remand.

BACKGROUND

The `492 patent relates to digitizing tablets, or "digitizers," which are computer peripherals that translate a user's hand motions or instructions into digital coordinates suitable for use by a computer system. A digitizing tablet contains a grid of electrical leads, and when a pointer is placed over the grid, a current is induced in the electrical leads by the pointer, and the current from the various electrical leads is processed and communicated to the computer. The invention disclosed in the `492 patent involves methods implemented through hardware or software that add additional capabilities to conventional digitizing tablets. Schumer first filed the application leading to the `492 patent on June 17, 1991. The `492 patent issued on June 16, 1998.

LCS creates and distributes software drivers¹ to be used with various brands of digitizers distributed by third parties. Wacom is a distributor of digitizers sold throughout the United States. Wacom was a licensee of LCS software drivers.

At issue on appeal are method claims 1-10 and 13-14 of the `492 patent. Independent claims 1, 6, and 9 are representative of claims 1-10. The disputed claim language is emphasized. Claim 1 provides:

A method implemented by a first computer program running on a computer for transferring information from a digitizer connected to the computer to a second program running on the computer, the digitizer having a surface and a pointer and outputting the position of the pointer on the surface in a coordinate system of the digitizer which coordinate system has a point of origin and has an angle of rotation 1 with respect to the digitizer and has a scale, comprising:

(a) receiving a definition of a second coordinate system for the digitizer, which second coordinate system allows specification of points specified in the digitizer's coordinate system but is not congruent with the digitizer's coordinate system because one of the following elements is different from the digitizer's coordinate system: location of the point of origin, or angle of rotation, or scale;

(b) receiving a specification of a point reported by the digitizer to the computer specifying, in the digitizer's coordinate system, the location of the pointer;

(c) translating the coordinates of the digitizer's coordinate system into coordinates of the second coordinate system for the point; and

(d) providing the coordinates of the second coordinate system for the point to the second program `492 patent, col. 49, l. 47 — col. 50, l. 2 (emphases added).

Claim 6 provides:

A method implemented by a first computer program running on a computer for transferring information from a digitizer connected to the computer to a second program running on the computer, the digitizer having a surface and a pointer and outputting the position of the pointer on the surface in a coordinate system of the digitizer which coordinate system has a point of origin and has an angle of rotation with respect to the digitizer and has a scale, comprising:

(a) receiving a first and a second definition of boundaries of a first and a second region within the range of movement of the pointer;

(b) receiving a definition of a first and a second regional coordinate system for each of the first and the second regions, which first and second regional coordinate systems each allow specification of points specified in the digitizer's coordinate system but are not congruent with the digitizer's coordinate system because one of the following elements is different from the digitizer's coordinate system: location of the point of origin, scale, or angle of rotation;

(c) receiving coordinates of a point reported by the digitizer to the computer specifying, in the digitizer's coordinate system, the location of the pointer;

(d) if the location of the pointer is within the boundaries of the first region, translating the coordinates of the point in the digitizer's coordinate system into coordinates of the first regional coordinate system for that point; and

(e) if the location of the pointer is within the boundaries of the second region, translating the coordinates of the point in the digitizer's coordinate system into coordinates of the second regional coordinate system for that point; and

(f) providing the set of coordinates of the regional coordinate system to the second program.

`492 patent, col. 50, l. 33 — col. 51, l. 2 (emphases added). Claim 9 provides:

A method implemented by a first computer program running on a computer for executing a control command from a second program running on the computer directed to any one of a plurality of regions, comprising:

(a) receiving a command to partition the active area of the digitizer into a plurality of regions, each of which has a coordinate system which coordinate system has a point of origin and has an angle of rotation with respect to the digitizer and has a scale wherein the coordinate system of a first region is not congruent with the coordinate system of another region because one of the following elements is different from the other coordinate system: location of the point of origin, angle of rotation, or scale

(b) storing the partition information in a memory;

(c) receiving from the second program a command directed to one of the regions; and

(d) executing the command with respect to the appropriate region.

`492 patent, col. 51, ll. 12-31 (emphases added). Claim 13 provides:

A method implemented by a first computer program running on a computer for transferring from a second program running on the computer to any one of a plurality of digitizers each with a different command format for commanding the digitizer to perform a function, a command to perform said function comprising:

(a) receiving the command directed by the second program to one of the plurality of digitizers in a format which is inconsistent with a command format for the digitizer;

(b) translating the command to the command format for the digitizer; and

(c) providing the translated command to the digitizer.

`492 patent, col. 52, ll. 16-29 (emphasis added). Claim 14 provides:

A computer readable medium containing a computer program which program causes a computer to perform the method of claim 13.

`492 patent, col. 52, ll. 30-32.

PROCEDURAL HISTORY

Schumer filed a complaint on March 31, 1999, alleging that LCS had infringed the `492 patent. Wacom, an LCS customer, then filed suit against Schumer seeking a declaratory judgment that Wacom's products did not infringe the claims of the `492 patent and that the asserted claims of the `492 patent were invalid. The two actions were consolidated on October 2, 2000. Wacom and LCS each filed a motion for partial summary judgment. The first motion, filed by Wacom, sought summary judgment of noninfringement of claims 110. The second motion, filed by LCS, sought summary judgment of invalidity of claims 13 and 14 on the basis of anticipation under 35 U.S.C. § 102(b). LCS and Wacom subsequently joined each other's motions. The district court granted both motions on October 16, 2001.

A. Summary judgment of noninfringement of claims 1-10

The district court construed claims 1-10 to require that a device performing the claimed methods must both (1) have a "point of origin," an "angle of rotation with respect to the digitizer," and a "scale"; and (2) be capable of translating all three elements. The district court first determined that the preamble of claim 1 "gives life and meaning to the invention" and was therefore a claim limitation. Noninfringement Order at 4. The district court construed the preamble, which states that the device simply "has a point of origin and has an angle of rotation with respect to the digitizer and has a scale," as requiring that the device have these three attributes, i.e., a point of origin, angle of rotation, and scale. Id. at 4-5.

The district court additionally construed the following language in the body of claim 1:

receiving a definition of a second coordinate system for the digitizer, which second coordinate system ... is not congruent with the digitizer's coordinate system because one of the following elements is different from the digitizer's coordinate system:...