Signtech USA, Ltd. v. Vutek, Inc.

• Decision Date: 08 April 1999
• Docket Number: No. 98-1171,98-1171
• Citation: 50 USPQ2d 1372,174 F.3d 1352
• Parties: SIGNTECH USA, LTD., Plaintiff-Appellant, v. VUTEK, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1352

174 F.3d 1352

50 U.S.P.Q.2d 1372

SIGNTECH USA, LTD., Plaintiff-Appellant, v. VUTEK, INC., Defendant-Appellee.

No. 98-1171.

United States Court of Appeals Federal Circuit.

April 8, 1999.

David G. Wille, Baker & Botts, L.L.P., of Dallas, Texas, argued for plaintiff-appellant. With him on the brief were William D. Harris, Jr. and Michael W. Piper, Locke Purnell Rain Harrell, P.C., of Dallas, Texas.

John M. Skenyon, Fish & Richardson P.C., of Boston, Massachusetts, argued for defendant-appellee. With him on the brief was Jolynn M. Lussier. Of counsel was Francis X. Gindhart, of Washington, D.C.

Before MAYER, Chief Judge, NEWMAN, and RADER, Circuit Judges.

RADER, Circuit Judge.

Signtech USA, Ltd. (Signtech) sued Vutek, Inc. (Vutek) for infringement of its U.S. Patent No. 5,376,957 (the '957 patent) involving ink jet printers for printing large signs. Vutek counterclaimed for infringement of its U.S. Patent No. 4,914,522 (the '522 patent). These claims were tried by consent before a United States magistrate judge in the United States District Court for the Western District of Texas. The magistrate denied Signtech's claims for infringement of the '957 patent. On Vutek's counterclaim, Signtech stipulated to infringement of the '522 patent if valid. The magistrate found the '522 patent valid and, in addition, found Signtech's infringement of the '522 patent willful. Signtech and Vutek stipulated to basic damages of $140,000 which the magistrate trebled for willful infringement under 35 U.S.C. § 284. The magistrate awarded $420,000 in enhanced damages plus $28,818 in prejudgment interest and attorney fees. The judgment, however, added the $420,000 enhanced damages to the stipulated $140,000 basic damages award. The magistrate also entered an injunction prohibiting Signtech from "any further infringement of the '522 patent."

Signtech appeals the finding of non-infringement of the '957 patent, the amount of damages awarded for infringement of the '522 patent, and the vagueness of the injunction. Because the magistrate correctly found that Vutek did not infringe the '957 patent, this court affirms. However, because 35 U.S.C. § 284 (1994) allows a maximum damage award of three times the amount of the basic damage award, the $420,000 enhanced damages award for infringement of the '522 patent must include the $140,000 basic damages award. Finally, because, based on this record, the terms of the permanent injunction do not violate the specificity requirements of Fed.R.Civ.P. 65(d), this court affirms.

I.

The '957 patent discloses an ink jet printer with an improved ink sprayhead design. The improved sprayhead prints an image and its mirror image on opposite sides of a substrate. This dual-sided mirror image technique facilitates the printing of backlit signs and billboards. With ink applied to both sides of a substrate, backlit signs do not appear washed out when illuminated.

The claimed ink sprayhead design features one pressurized air source to control ink delivery onto the substrate and a second low-volume, high pressure air source to continuously clean the ink nozzle during printing. The prior art ink sprayheads, including those of the '522 patent, contain only a single, pulse-width modulated air source for delivery of the ink to the substrate and lack a second, high pressure air source for cleaning the nozzles.

According to the '957 patent, the second air source facilitates continuous printing of large signs without color variations or clogging of the nozzles. The '957 patent states that the prior art (specifically the '522 patent) "is incapable of producing an enlarged image having the desired color scheme" because it lacks this second, high pressure air source. Col. 2, ll. 33-36. See also, col. 2, ll. 10-22. Both the dual-sided mirror image printing technique and the dual air source ink sprayhead are novel features of the '957 patent. Claim 1, the only independent claim in the '957 patent, claims:

1. An apparatus for reproducing an image on a first side of a substrate and a mirror image on a second side of said substrate, comprising a frame;

means for generating control signals representative of said image;

ink delivery means positioned on opposite sides of said substrate, said ink delivery means fluidly communicating with an ink source;

means mounted on said frame for supporting said ink delivery means;

means mounted on said frame for driving said ink delivery means relative to said substrate; and

means, responsive to said control signals, for controlling said ink delivery means to produce said image on said first side of said substrate and said mirror image on said second side of said substrate.

(emphasis added).

As required by statute, the magistrate interpreted these means-plus-function elements by referring to the structure described in the patent specification for performing the recited functions. See 35 U.S.C. § 112, p 6 (1994). Specifically, the magistrate limited "ink delivery means" to an ink sprayhead containing a "second, high pressure air source." The magistrate primarily based this limitation on the background and summary of the invention sections of the '957 patent which distinguished the invention from the prior art, including the '522 patent. The '957 patent describes its improvement over the prior art by emphasizing its use of two air sources - one for applying the ink and one for removing excess ink from the nozzles. In particular, the '957 patent states explicitly that the ink delivery system of the '522 patent is "incapable of producing an enlarged image having the desired color scheme" because of its lack of a second air source for cleaning the nozzles. Col. 2, ll. 33-36. The magistrate therefore concluded:

By consistently describing its invention - in the Abstract, Background of Invention, Summary of Invention, and Detailed Description sections of the specifications - as one that solves the ink accumulation problem inherent in the prior art, the ink delivery means cannot be interpreted apart from the essential, cleaning, high-pressure air source.

Vutek's allegedly infringing printers use ink sprayheads identical to those embodied in the '522 patent and therefore contain only a single, pulse-width modulated air source. Consequently, based on the foregoing interpretation, the magistrate determined that Vutek's device did not literally infringe the '957 patent because it lacked the second, high-pressure air source required by the "ink delivery means" of claim 1.

Having found one element of the claim missing from the accused device, the magistrate could have concluded the literal infringement analysis. However, the magistrate proceeded to address the "means for generating control signals" and "means for controlling the ink delivery means." Because, as set forth below, this court agrees with the magistrate's finding concerning the lack of "ink delivery means" in the accused device, as required by claim 1 of the '957 patent, this court need not address the other means-plus-function claim limitations.

On Vutek's counterclaim against Signtech for infringement of its '522 patent, Signtech stipulated to infringement of the '522 patent, if valid. Signtech also stipulated to basic damages of $140,000 as part of the Pretrial Order. The magistrate determined that the '522 patent was valid and also found that Signtech had willfully infringed. The magistrate therefore trebled the damage award to $420,000 and added pre-judgment interest as well as costs and attorney fees. Those findings are not before this court on appeal. In its judgment, however, the magistrate's wording apparently awarded $420,000 enhanced damages in addition to the basic $140,000 damage award, stating that Vutek "is entitled to a basic damage award of $140,000 for infringement of the '522 patent, prejudgment interest ... plus enhanced damages of $420,000 for [Signtech's] willful infringement." The parties have resolved this issue by agreeing that the $420,000 enhanced damages should include the $140,000 basic damage award, in accordance with the statutory requirements of 35 U.S.C. § 284 as interpreted by this court's case law.

The magistrate also entered a permanent injunction against Signtech "for any further infringement of the '522 patent." Signtech complains that the terms of this injunction violate Fed.R.Civ.P. 65(d) which provides specificity requirements for injunctions.

II.

This court reviews the magistrate's construction of the patent claims without deference. See Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1454-56, 46 USPQ2d 1169, 1172-75 (Fed.Cir.1998) (en banc); Markman v. Westview Instruments, Inc. 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Although the standard of review for the issuance and scope of an injunction is abuse of discretion, see Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 772, 28 USPQ2d 1378, 1380 (Fed.Cir.1993), whether the terms of the injunction fulfill the mandates of Fed.R.Civ.P. 65(d) is a question of law that this court reviews de novo. See Additive Controls & Measurement Sys. Inc. v. Flowdata Inc., 986 F.2d 476, 479-80, 25 USPQ2d 1798, 1801 (Fed.Cir.1993).

The magistrate correctly interpreted the "ink delivery means" limitation of claim 1 of the '957 patent. Title 35 of the United States Code, section 112, p 6, states that

[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Typically, if the word "means" appears in a claim element in combination with a function, it is presumed to be a means-plus-function element to which § 112, p 6 applies. See Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d...