SRI Intern., Inc. v. Advanced Technology Laboratories, Inc., 93-1074
| Decision Date | 21 December 1994 |
| Docket Number | No. 93-1074,93-1074 |
| Parties | NOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. SRI INTERNATIONAL, INC., Plaintiff-Appellee, v. ADVANCED TECHNOLOGY LABORATORIES, INC., Defendant-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Before: NIES *, NEWMAN, and PLAGER, Circuit Judges.
By its Order entered on November 3, 1992, (Civil Action No. 91-CV-2191), the United States District Court for the Northern District of California granted SRI International, Inc.'s ("SRI") motion for partial summary judgment, concluding that: (1) United States Reexamination Certificate No. B1-4,016,750 ("the '750 patent") was not procured by inequitable conduct, (2) asserted claims 1, 9, and 20 were infringed and not invalid, and (3) Advanced Technology Laboratories, Inc. ("ATL") did not have a license and was not promised a license. ATL appealed the Order on the grounds that the court improperly granted summary judgment due to the presence of genuine issues of material fact.
For the reasons set forth below, we affirm.
SRI contends that this court does not have jurisdiction to hear this appeal on the grounds that the appeal is not from an order "final except for an accounting", as required by 28 U.S.C. Sec. 1292(c)(2) (1992). 1 The crux of SRI's argument is that because the district court did not consider whether ATL's infringement was willful, opting instead to defer that determination until the damages phase, we do not have jurisdiction. We disagree.
In McCullough v. Kammerer Corporation, 331 U.S. 96 (1947), the Court, considering the appealability of a district court order under Sec. 1292(c)(2)'s predecessor, 28 U.S.C. Sec. 277a, 2 stated that
the object of [Sec. 227a] was to make sure that parties could take appeals in patent equity infringement suits without being compelled to await a final accounting. The reports of Congressional committees on the measure called attention to the large expenses frequently involved in such accountings and the losses incurred where recoveries where ultimately denied by reversal of decrees on the merits.
The purpose and rationale of Sec. 1292(c)(2)--to permit a district court to stay a damages trial pending the outcome of an appeal on the merits--has been clearly stated by both Congress and the Supreme Court. This court has heard those clear statements. See In re Calmar, Inc., 854 F.2d 461, 463-64, 7 USPQ2d 1713, 1714 (Fed.Cir.1988) (Markey, C.J.) ("[T]he policy underlying Sec. 1292(c)(2) was to allow a district court to stay a damages trial pending appeal."); and Majorette Toys (U.S.) Inc. v. Darda, Inc., 798 F.2d 1390, 1391-92, 230 USPQ 541, 542 (Fed.Cir.1986) (). 3
The district court's failure to make a willfulness determination does not render its judgment respecting liability non-appealable. Willfulness is a finding related only to the amount of damages, not to the existence of liability. Liability for infringement is governed by 35 U.S.C. Sec. 271, which states that "whoever without authority makes, uses or sells any patented invention ... infringes the patent." Thus, an innocent infringer is no less liable for patent infringement than a willful infringer.
The culpability of the infringer comes into play, if at all, in determining the amount of damages owed the patentee. Indeed, a finding of willfulness does not require a court to increase damages. Read Corp. v. Portec, Inc. 970 F.2d 816, 826, 23 USPQ2d 1426, 1435 (Fed.Cir.1992) (). The word "willful," or variations thereof, does not even appear in Title 35. Rather, Sec. 284 states only that "the court may increase the damages up to three times the amount found or assessed." Thus, enhancement of damages is discretionary. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 866, 226 USPQ 402, 411 (Fed.Cir.1985), cert. denied, 475 U.S. 106 (1986). Accordingly, the absence of a willfulness determination does not preclude appeal under Sec. 1292(c)(2).
It is well-settled that a district court's decision to grant summary judgment is reviewed de novo. Parents of Student W v. Puyallup School District No. 3, 31 F.3d 1489, 1494 (9th Cir.1994); Meyers v. Asics Corp., 974 F.2d 1304, 1306, 24 USPQ2d 1036, 1037 (Fed.Cir.1992). According to Rule 56 of the Federal Rules of Civil Procedure, summary judgment is appropriate where (1) there is no genuine issue as to any material fact, and (2) the moving party is entitled to a judgment as a matter of law. Although a detailed analysis by the district court would be helpful, we find no abuse of discretion in the trial court's making only a summary ruling in this case. The issues raised below are readily discernable from the motion papers and have been refined in the appellate briefs. Thus, we proceed with our review. See Devices For Medicine Inc. v. Boehl, 822 F.2d 1062, 1067-68, 3 USPQ2d 1288, 1293 (Fed.Cir.1987); Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1020, 226 USPQ 881, 883 (Fed.Cir.1985); and Petersen Manufacturing Co. v. Central Purchasing, Inc., 740 F.2d 1541, 1546, 222 USPQ 562, 566 (Fed.Cir.1984).
ATL contends that the claims in issue (i.e. claims 1, 9, and 20) 4 are either anticipated or rendered obvious by United States Patent No. 2,590,822 to Minton. Indeed, ATL asks for judgment in its favor if we do not discern a genuine issue of material fact.
The principal issue respecting the Minton patent is whether the reference is analogous art. That is, the teachings of Minton must not be "too remote to be treated as prior art." In re Sovish, 769 F.2d 738, 741, 226 USPQ 771, 773 (Fed.Cir.1985). In making an analogous art determination, the first question to ask focuses on whether or not a reference is from the same field of endeavor. If the reference is not from the same field of endeavor, a second question is asked: whether the reference is reasonably pertinent to the particular problem with which the inventor is involved. Clay, 966 F.2d at 659, 23 USPQ2d at 1060 (Fed.Cir.1992) ().
The claims in issue are directed to the ultrasonic imaging of the interior of body parts, such as for the purposes of medical diagnosis. Seismic prospecting, Minton's field of endeavor, is not the same. ATL argues that acoustic engineers in all fields attend the same symposia and publish in the same journals. It makes much of a book edited in 1975 by Green (the inventor of the '750 patent) to show that the "problem" addressed by Minton was the same. The Green book discusses acoustic visualization applications in connection with, inter alia, medical diagnosis and seismic mapping. However, the "problem" cannot be so generalized. The problem Green solved was how to compensate for changes in the spectral distribution of the return ultrasonic signal, with time or depth of penetration into a living organ, for enhanced image resolution and/or signal to noise ratio. The Minton reference, which relates to seismic prospecting circa 1946, almost thirty years prior to Green's filing date, would not have logically commended itself to Green's attention in considering how to compensate for changes in the spectral distribution of a received ultrasonic signal in an object such as a body part. There is no genuine issue of material fact as to whether or not Minton is analogous art. 5 We need not consider ATL's argument respecting Minton combined with other art.
ATL argues that even if Minton is non-analogous art, Minton can be an anticipatory reference and that claims 9 and 20 are anticipated. We disagree. Minton fails to teach "insonifying at least a portion of the body part with a beam of broadband acoustic energy to produce echo signals from within the body", the first recited step in claims 9 and 20. Instead, Minton discloses detonating an explosive charge to create seismic waves. Therefore, Minton is simply incapable of invalidating claims 9 and 20 for lack of novelty.
ATL advances the argument that claims 1 and 9 (but not 20) of the '750 patent are invalid under Sec. 103 in view of Weighart, U.S. Patent No. 3,309,914. Weighart is directed to ultrasonic inspection of objects, such as turbine rotors, for flaws or defects using multiple frequencies simultaneously.
As an initial matter, we note that the entire focus of the reexamination of the '750 patent was the Weighart reference. It was the only patent considered by the Patent Office during reexamination. By issuing the reexamination certificate, the Patent Office concluded that the asserted claims would not have been obvious in view of Weighart. Accordingly, "[d]eference is due the Patent Office decision to issue the patent with respect to evidence bearing on validity which it considered." American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360, 220 USPQ 763, 771 (Fed.Cir.), cert. denied, 469 U.S. 821 (1984). See also Polaroid Corp. v. Eastman Kodak Co., 789 F.2d 1556, 1560, 229 USPQ 561, 564 (Fed.Cir.), cert. denied, 479 U.S. 850 (1986) (...
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