Southwest Software v. Harlequin Inc.

• Decision Date: 18 September 2000
• Citation: 226 F.3d 1280
• Parties: (Fed. Cir. 2000) SOUTHWEST SOFTWARE, INC., Plaintiff-Cross Appellant, v. HARLEQUIN INCORPORATED, HARLEQUIN LIMITED, and ECRM TRUST, Defendants-Appellants. 99-1213, -1214 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1280

226 F.3d 1280 (Fed. Cir. 2000)

SOUTHWEST SOFTWARE, INC., Plaintiff-Cross Appellant, v. HARLEQUIN INCORPORATED, HARLEQUIN LIMITED, and ECRM TRUST, Defendants-Appellants.

99-1213, -1214

United States Court of Appeals for the Federal Circuit

DECIDED: September 18, 2000

Appealed from: U.S. District Court for the Western District of Texas

Judge Sam Sparks

[Copyrighted Material Omitted] David D. Bahler, Arnold, White & Durkee, of Austin, Texas, argued for plaintiff-cross appellant. With him on the brief were Amber L. Hatfield and G. Scott Thomas. Of counsel on the brief were Scott R. Kidd, Raymond L. Sturm, and Walter H. Mizell, Brown McCarroll & Oaks Hartline, of Austin, Texas.

Thomas H. Watkins, Hilgers & Watkins, P.C., of Austin, Texas, argued for defendants-appellants. With him on the brief was Albert A. Carrion, Jr. Of counsel on the brief were John J. Regan, Hale and Dorr LLP, of Boston, Massachusetts, and Michael P. Adams, Skjerven, Morrill, MacPherson, Franklin & Friel, L.L.P., of Austin, Texas.

Before MICHEL, Circuit Judge, SKELTON, Senior Circuit Judge, and SCHALL, Circuit Judge.

SCHALL, Circuit Judge.

Harlequin Incorporated and Harlequin Limited (collectively "Harlequin") and ECRM Trust ("ECRM") appeal from the judgment of patent infringement entered against them in the United States District Court for the Western District of Texas. The judgment was entered upon a jury verdict. The jury found that: (1) claim 1 of Southwest Software, Inc.'s ("Southwest's") reexamined U.S. Patent No. B1 5,170,257 (the " '257 patent") is not invalid; (2) claim 1 of the '257 patent was directly infringed by Harlequin and ECRM, both literally and under the doctrine of equivalents; and (3) Harlequin and ECRM had induced infringement of claim 1, had contributorily infringed claim 1, and also had infringed claim 1 by supplying or causing to be supplied components of a patented combination outside the United States, in violation of 35 U.S.C. § 271(f).¹ See Southwest Software, Inc. v. Harlequin, Inc., No. A 95-CA-032 SS (W.D. Tex. Sept. 30, 1998).

The '257 patent is directed to a method and apparatus used in the printing industry to enhance the quality of printed images. The jury found that claim 1 of the '257 patent was infringed by ScriptWorks Version 3.3-Revision 6 ("ScriptWorks Revision 6"), a Harlequin software product, and awarded damages based upon that infringement. See id. The jury, however, did not find infringement of claim 1 of the '257 patent by ScriptWorks Version 3.3-Revision 7 ("ScriptWorks Revision 7"), another Harlequin software product. See id. The district court denied Harlequin's and ECRM's motion for judgment as a matter of law ("JMOL") that they did not infringe claim 1 of the '257 patent and that claim 1 is invalid.

Southwest cross-appeals from the judgment that claim 1 of the '257 patent was not infringed by ScriptWorks Revision 7. In so doing, it challenges the jury's verdict of noninfringement and the district court's denial of a new trial on the infringement issue. Southwest also cross-appeals the district court's grant of Harlequin's and ECRM's motion for JMOL that claim 11 of the '257 patent and claim 10 of Southwest's U.S. Patent No. 5,245,443 (the " '443 patent") were not infringed by either ScriptWorks Revision 6 or 7. The '443 patent is a continuation of the '257 patent.

The judgment of the district court is vacated and the case is remanded for further proceedings. As far as Harlequin's and ECRM's appeal is concerned, we see no error in the district court's denial of Harlequin's and ECRM's motion for JMOL on the issue of infringement of claim 1 of the '257 patent by ScriptWorks Revision 6. We conclude that the denial of JMOL on the issue of the validity of claim 1 of the '257 patent was erroneous, however. Specifically, because we hold that a certificate of correction that was issued under 35 U.S.C. § 254 to add certain material to the '257 patent is not effective for purposes of this action, the district court must determine on remand whether, absent the added material, claim 1 of the '257 patent is invalid for purposes of this action because the patent's specification fails to satisfy the best mode and enablement requirements of 35 U.S.C. § 112, ¶ 1.

As far as Southwest's cross-appeal is concerned, we see no error in the district court's denial of a new trial on the issue of infringement of claim 1 of the '257 patent by ScriptWorks Revision 7. However, because the district court failed to construe the relevant claim limitation, we vacate the court's grant of Harlequin's and ECRM's motion for JMOL that claim 11 of the '257 patent and claim 10 of the '443 patent were not infringed by ScriptWorks Revision 6 or 7 and remand for further proceedings on those issues.

BACKGROUND

I. The Technology Involved

The technology at issue in this case is designed to enhance the quality of printed images. Its primary use is in the printing industry.

Today, computer "desktop publishing" programs allow a user to create an image on a computer screen that represents the image that eventually will be printed. After the image is created on the computer screen, it is sent from the computer to an imagesetter for printing.

The imagesetter receives commands and data from the computer and then produces what is called an "output image" on film or paper. The output image typically is used to make contact printing plates. One desirable feature of an imagesetter is the ability to provide tone reproduction in which the shades of the printed image are the same as the shades called for by the data sent from the computer.

Conventional printing processes cannot reproduce continuous tone tints or images ("contones"). Instead, the process of "halftoning" is used to create the variety of ink shades necessary to print images. In the halftone process, shades of gray are approximated by applying variously sized ink dots of black ink within the area which is to be shaded. This creates an optical illusion in which the area appears as a continuous shade of gray. Small dots render light shades, while large dots render dark shades. "Dot percentage" is the percentage of the paper or film that is blackened by the ink dots. Dot percentage ranges from 0% marking (i.e., white) to 100% marking (i.e., black). Each shade of gray is denoted by a "gray value."

"Calibration" is used to adjust the imagesetter's output so that the gray values requested from a computer application program (for example, desktop publishing software) are the same as those actually produced as output (for example, on film). Without calibration, the imagesetter tends to produce a darker shade of gray than desired--although both 0% and 100% dot areas are always achievable without calibration. For example, if the application program requests a gray value of 48%, the imagesetter might actually produce a gray value of 50%. Therefore, in order to produce a gray value of 50%, the imagesetter must be requested to produce a gray value of 48%.

Calibration involves taking the requested gray values from the computer application program and processing the values by way of a "look-up table" to produce adjusted data. The input to the look-up table is the desired gray shade; the output of the look-up table is the actual value that must be applied to the imagesetter to achieve the desired shade. In the example above, the input to the look-up table would be the desired gray value of 50%, and the output of the look-up table would be the actual value to be supplied to the imagesetter, or 48%. The adjusted data from the look-up table is used by the imagesetter to produce the desired gray shade in the output (for example, on film).

Before it can be used, the look-up table must be created. Part of the calibration process involves finding the correct numbers, or values, to put into the look-up table. The numbers in the look-up table are the "calibration set." To create the calibration set used to perform the calibration process, a test image consisting of several patches of various shades of gray is fed into the system. An output image is then made with no calibration. Next, the uncalibrated gray values that were printed are measured with a tool called a "densitometer." Based on these measurements, a calibration set is calculated using the differences between the desired gray values and the actual gray values printed without calibration. The calibration set then is used to fill in the values in the look-up table.

Thereafter, the look-up table will produce the shades of gray that correspond to the desired shades of gray provided by the input computer data. A separate calibration set is needed for each possible combination of printing parameters--such as image resolution, intensity, and screen frequency. Therefore, a large number of calibration sets may be needed for each imagesetter in order to account for all of the combinations of printing parameters that may be used.

II. The Patents at Issue

The '257 patent

The '257 patent is directed to a method and apparatus for calibrating halftone output images. It "programmably selects" a specific calibration set depending on imagesetter variables such as image resolution, exposure intensity, and screen frequency. The application for the '257 patent was filed on October 2, 1990; the patent issued on December 8, 1992.

Under the invention, halftone test pattern images first are created in a page description language, such as "PostScript."² See '257 patent, col. 8, l. 67 to col. 9, l. 1. The page description language then is sent to an imagesetter, which consists of a raster image processor³ and a recorder. See id. at col. 9, ll. 1-4. The raster image processor converts the page description language into a raster format, which is then sent to the recorder. See id. at col. 9, ll. 3-4. Based upon the raster format provided by the raster image processor, the recorder produces the halftone input image on a selected medium and...