Sextant Avionique, S.A. v. Analog Devices, Inc.

• Decision Date: 26 February 1999
• Docket Number: 98-1077,Nos. 98-1063,s. 98-1063
• Citation: 49 USPQ2d 1865,172 F.3d 817
• Parties: SEXTANT AVIONIQUE, S.A., Plaintiff-Appellant, v. ANALOG DEVICES, INC., Defendant-Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 817

172 F.3d 817

49 U.S.P.Q.2d 1865

SEXTANT AVIONIQUE, S.A., Plaintiff-Appellant, v. ANALOG DEVICES, INC., Defendant-Cross-Appellant.

Nos. 98-1063, 98-1077.

United States Court of Appeals, Federal Circuit.

Feb. 26, 1999.

Elliot E. Polebaum, Fried, Frank, Harris, Shriver & Jacobson, of Washington, DC, argued for plaintiff-appellant. Of counsel on the brief was Maxim H. Waldbaum, Fried, Frank, Harris, Shriver & Jacobson, of New York, New York.

William F. Lee, Hale and Dorr, LLP, of Boston, Massachusetts, argued for defendant cross-appellant. With him on the brief were Donald R. Steinberg, and William G. McElwain, of Washington, DC.

Before LOURIE, Circuit Judge, SMITH, Senior Circuit Judge, and GAJARSA, Circuit Judge.

Opinion for the court filed by Circuit Judge LOURIE. Senior Circuit Judge SMITH joins as to Part I. and Part II. A, B, and C.1, but dissents as to Part II. C.2 and files a separate opinion.

LOURIE, Circuit Judge.

Sextant Avionique, S.A. appeals from the decision of the United States District Court for the Northern District of California granting summary judgment that Analog Devices, Inc. did not literally infringe any claim of Sextant's patents and granting judgment as a matter of law that Analog did not infringe under the doctrine of equivalents. ¹ We affirm.

I. BACKGROUND

A. Sextant's "Marcillat" and "Boura" Patents

Sextant's patents pertain generally to accelerometers, which are small devices capable of detecting acceleration and which find utility in avionic and automotive applications. The first of Sextant's patents at issue in this appeal, U.S. Patent

                4,663,972, was issued to inventor Gerard Marcillat on March 6, 1985.  One embodiment disclosed in the Marcillat patent shows a "test body" 6 connected to and supported by two "flexible blades" 4 and 5. The flexible blades are anchored at their "lower ends" to a "fixed part."   The test body further comprises "lateral edges" 16 and 17 having metallized edges 18 and 19.  The fixed part comprises two "wings" 20 and 21 having metallized edges 22 and 23.  This configuration thus produces two capacitors, the first formed by plates 19 and 22, the second by plates 18 and 23, with air gaps in between the capacitor plates.  This embodiment is shown in Figure 2 of Marcillat
                

FIG. 2

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The accelerometer operates as follows: when the device is subject to an accelerative force in the "sensitive axis" (i.e., from left to right in Fig. 2), the test body sways like a pendulum within the fixed part and thus varies the distance between the capacitor plates. This variation corresponds electrically to a change in the capacitance of the capacitors, which can be detected by circuitry residing elsewhere on the fixed part. Specifically, the specification discloses that signals can travel from the metallized edges 18 and 19 of the test body to the detection circuitry by metallizing the edges of the flexible blades 4 and 5.

The specification also discloses that the accelerometer can be manufactured using semiconductor processing techniques. For example, the specification discloses that the claimed "pendular structure" can be "formed i[n] a single piece by micro-machining a crystalline silicon or quartz wafer which may further serve as [a] substrate for an integrated electronic circuit." Marcillat patent, col. 3, ll. 10-13.

Claim 2 of Marcillat, which is representative of the claims at issue, reads as follows:

2. An accelerometer sensor comprising

a flat pendular structure made from one and the same crystalline wafer, said structure having in a same plane[ ] a flat fixed part, two parallel blades flexible in the said plane and delimiting therebetween a space, each of said blades having a first end portion fixedly connected to said fixed part, and a second end portion, said structure further comprising a flat test body connected to the second end portions of said blades so as to be suspended from the fixed part and to be able to move in translation in the said plane along a sensitive axis, said flat test body extending at least partially into said space,

wherein electrical connections between the test body and the fixed part of the pendular structure are Marcillat patent, col. 8, ll. 33-47 (paragraphing added).

formed by metallizations formed on the thin faces of said flexible blades.

The second of Sextant's patents, U.S. Patent 4,711,128, was issued to inventor Andre Boura on April 14, 1986. The Boura patent is not formally related to the Marcillat patent; it is not, for example, derived from any application related to Marcillat by continuation or division. However, Boura's written description makes clear that his invention constituted an improvement over Marcillat's invention. In fact, the "Field of the Invention" is described by Boura as "an accelerometer using an accelerometric sensor with flat pendular structure of the type described in U.S. Pat. 4,663,927 [i.e., Marcillat]." Boura patent, col. 1, ll. 8-10. This statement is followed by Boura's "Description of the Prior Art," which focuses on Marcillat's disclosure of a magnetic circuit capable of returning the test body to a proper rest position. The "aim" of Boura's invention is summarized as "to provide ... an accelerometric sensor of a type similar to the one described above [i.e., Marcillat's sensor]," id. at ll. 49-50, but which has an improved return mechanism. Specifically, Boura's mechanism involved applying certain optimal mathematically-derived voltages to the various capacitor plates of the sensor structure.

Claim 1, the only independent claim in the Boura patent, reads as follows:

1. An accelerometer sensor comprising

a flat pendular structure made from one and the same crystalline wafer, said structure having in a same plane[ ] a flat fixed part, at least two parallel blades flexible in the same plane and delimiting therebetween a space, each of said blades having a first end portion fixedly connected to said fixed part, and a second end portion, said structure further comprising a flat test body connected to the second end portions of said blades so as to be suspended from the flat fixed part and to be able to move in translation in the same plane along a sensitive axis under the effect of an acceleration with a position which varies in relation with said acceleration, said flat test body extending at least partially into said space,

wherein said flat test body comprises at least a first edge which carries a first metallization having first and second opposite faces and said flat fixed part comprises at least a second and third edge carrying respectively a second and third metallizations, said second and third metallizations respectively facing said first and second opposite faces, so as to form capacitors whose capacities vary depending on the position of said test body, said first metallization being brought to a first voltage V sub0 , whereas the second and the third metallizations are respectively brought to a second and third voltages V sub1 and V sub2 which are capable of generating an electrostatic return force on the flat test body.

Id., col. 5, ll. 15-42 (paragraphing added).

B. The Prosecution Histories of Marcillat and Boura

The salient portions of the prosecution history of the Marcillat patent are easily summarized. Original application claim 7 generically claimed "capacitor plates." This claim was rejected under 35 U.S.C. § 103 over a prior art patent issued to Rudolf in light of other references. Rudolf discloses an accelerometer formed by semiconductor processing techniques in which the test body (a pivotable flap) is formed in monocrystalline silicon that has been doped with impurities to make it conductive. Similar to the Marcillat disclosure, the test body of Rudolf constitutes one of the capacitor plates of the sensor. In distinguishing over this art, Marcillat canceled claim 7 and substituted claim 26 As originally filed, the Boura application contained one independent claim, claim 1, which read as follows:

                in its place.  Claim 26 was more explicit as to the nature of the capacitor plates, claiming the plates as "metallizations."   Marcillat's amendment was accompanied by the following statement:  "In Rudolf, the flap and attachment means comprise monocrystalline silicon heavily doped with boron and form a capacitor plate without metallizations...."  Joint App. at A2224.  Application claim 26 eventually issued as claim 14 in the Marcillat patent.  The term "metallization" also appears in other claims of Marcillat to describe the composition of structures other than capacitor plates, such as the electrical connections claimed in Marcillat's claim 2, quoted above.  In addition to the "metallization" limitation, the parties do not dispute that the claim limitations "made from one and the same crystalline wafer" and "flat fixed part" were added to the claims of Marcillat to distinguish them over the prior art
                

In an accelerometer using at least one accelerometric sensor with a flat pendular structure formed by micromachining a substrate formed of a fine monocrystal wafer and comprising a flat mobile mass suspended from the rest of the structure by means of two thin parallel strips situated on each said of said mass, said mobile mass comprises at least one mobile capacitor plate and the fixed part of the pendular element comprises at least two fixed capacitor plates disposed on each side of the mobile plate and the mobile plate is brought to a first voltage V sub0 , whereas the fixed plates are respectively brought to [ ] second and third voltages V sub1 and V sub2 which are capable of generating an electrostatic recall force F subR on the mobile mass.

Id. at 2281. This claim was rejected under 35 U.S.C. § 112, p 2 for indefiniteness and under 35 U.S.C. § 103 in light of a prior art patent issued to Deval (U.S. Patent 4,345,474). The statement accompanying the examiner's rejection read: ...