Texas Instruments, Inc. v. U.S. Intern. Trade Com'n

• Decision Date: 19 November 1986
• Docket Number: No. 85-2776,85-2776
• Citation: 231 USPQ 833,805 F.2d 1558
• Parties: , 55 USLW 2315, 231 U.S.P.Q. 833, 5 Fed. Cir. (T) 32 TEXAS INSTRUMENTS, INC., Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1558

805 F.2d 1558

8 ITRD 1492, 55 USLW 2315, 231

U.S.P.Q. 833, 5 Fed. Cir. (T) 32

TEXAS INSTRUMENTS, INC., Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee.

Appeal No. 85-2776.

United States Court of Appeals Federal Circuit.

Nov. 19, 1986.

James F. Davis, Howrey and Simon, Washington, D.C., argued for appellant. With him on the brief was Kenneth E. Krosin. Also on the brief were Melvin Sharp, Richard L. Donaldson and David V. Carlson, Texas Instruments, Inc., of Dallas, Tex.

Wayne W. Herrington, Office of the Gen. Counsel, of U.S. Intern. Trade Com'n, Washington, D.C., argued for appellee. With him on the brief were Lyn N. Schlitt, Gen. Counsel and Michael P. Mabile, Asst. Gen. Counsel.

Before DAVIS, Circuit Judge, COWEN, Senior Circuit Judge, and NEWMAN, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

In this action brought under section 337 of the Tariff Act of 1930 as amended, 19 U.S.C. Sec. 1337, Texas Instruments, Inc. ("TI") appeals the final decision of the United States International Trade Commission. The Commission held that there was no statutory violation in that TI's U.S. Patent No. 3,819,921 (" '921 patent") was not infringed by certain imported calculators, and that there was no industry in the United States practicing an invention covered by any claim of the '921 patent. ¹ We affirm the decision of non-infringement, and thus do not reach the issue of whether there was injury to a domestic industry.

Commission Proceedings

Texas Instruments alleged unfair methods of competition and unfair acts in the importation and sale of certain portable electronic calculators, based on the infringement of claims 1, 2, 6, 7, 30, 37, 41 and 53 of the '921 patent, and that the effect or tendency of the unfair methods and acts was to destroy or substantially injure an efficiently and economically operated industry in the United States. The Commission ordered an investigation. 49 Fed.Reg. 29,162 (1984). Twenty-one respondents were named. For details as to the parties and the proceedings, reference is made to the Commission's decision, familiarity with which is presumed. Three respondents settled with TI during the course of the proceedings, and respondents Nam Tai Electronics Co. Ltd., International Merchandising Associates Hong Kong, and Enterprex appeared at the hearing. Nam Tai subsequently settled with TI, taking worldwide licenses to all of TI's calculator patents including the '921 patent.

In the initial determination of April 18, 1985, the administrative law judge ("ALJ") considered first the defense of patent invalidity under 35 U.S.C. Secs. 103 and 112, and held that the claims at issue had not been proven invalid, stating: "The presumption of validity afforded those claims under 35 U.S.C. Sec. 282 remains unrebutted and in full effect." The Commission affirmed, and this aspect of the decision has not been appealed.

The ALJ held that TI had not sustained its burden of proving that any of the patent claims was infringed by any of the imported calculators, and that because "complainant does not produce calculators in accordance with the claims in issue of the '921 patent, no domestic industry exists." The Commission adopted these determinations. None of the respondents participated in this appeal. The Commission is the sole appellee, and appears to defend the merits of its decision.

A.

The '921 patent entitled "Miniature Electronic Calculator" was issued on June 25, 1974 to inventors Jack S. Kilby, Jerry D. Merryman and James H. Van Tassel, assignors to Texas Instruments. The '921 patent derives, through a series of continuation applications, from application Serial No. 671,777 filed September 29, 1967. It represents a pioneering invention, for which the inventors and TI have been recognized. The prototype calculator was accepted for the permanent collection of the Smithsonian's Museum of History and Technology. Patent claim 1 is representative:

1. A miniature, portable, battery operated electronic calculator comprising:

a. input means including a keyboard for entering digits of numbers and arithmetic commands into said calculator and generating signals corresponding to said digits and said commands, the keyboard including only one set of decimal number keys for entering plural digits of decimal numbers in sequence and including a plurality of command keys;

b. electronic means responsive to said signals for performing arithmetic calculations on the numbers entered into the calculator and for generating control signals, said electronic means comprising an integrated semiconductor circuit array located in substantially one plane, the area occupied by the integrated semiconductor array being no greater than that of the keyboard, said integrated semiconductor circuit array comprising:

i. memory means for storing digits of the numbers entered into the calculator,

ii. arithmetic means coupled to said memory means for adding, subtracting, multiplying and dividing said numbers and storing the resulting answers in the memory means, and

iii. means for selectively transferring numbers from the memory means through the arithmetic means and back to the memory means in a manner dependent upon the commands to effect the desired arithmetic operation;

c. means for providing a visual display coupled to said integrated semiconductor circuit array and responsive to said control signals for indicating said answer; and

d. the entire calculator including keyboard, electronic means, means for providing a visual display, and battery being contained within a "pocket sized" housing.

The specification contains a detailed description of the then preferred means of performing each step of the claims. In the seventeen years between the first filing of the patent application and filing of the complaint with the Commission, each such means has undergone technological advance. TI asserts that the means used in the accused calculators perform the functions that are specifically set forth in the '921 claims, and that by correct claim interpretation these claims are infringed because the means used in the accused calculators are substantially the same as, or equivalent to, the means illustrated in the specification.

The Commission adopted the ALJ's extensive findings and conclusions, wherein the ALJ construed the claims in light of the specification and found no claim infringed, either literally or in terms of the doctrine of equivalents.

TI argues that substantial evidence does not support the finding of non-infringement, in that the invention as embodied in the accused calculators is fundamentally the same as that of the '921 claims, that the '921 patent represents the giant step in the development of semiconductor technology and integrated circuitry on which is based the entire industry of hand-held calculators, and that the claims are not restricted to the preferred embodiments as they existed at the time the patent application was filed.

TI points to the established law that it is not necessary that the specification have described or that the inventors have foreseen each specific means now used to perform each of the functions of the claims. TI emphasizes that this basic patent on a pioneering invention is entitled to be interpreted broadly, and indeed this proposition is long-established, see, e.g., Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 415, 28 S.Ct. 748, 749-50, 52 L.Ed. 1122 (1908).

Analysis of patent infringement entails two inquiries: determination of the scope of the claims, as a matter of law; and the factual finding of whether properly construed claims encompass the accused structure. ² Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1282, 230 USPQ 45, 46 (Fed.Cir.1986); Caterpillar Tractor Co. v. Berco, S.P.A., 714 F.2d 1110, 1114, 219 USPQ 185, 187 (Fed.Cir.1983). This analytical framework applies whether claims are asserted to be infringed literally or by application of the doctrine of equivalents.

Literal infringement requires that the accused device embody every element of the claim as properly interpreted. Mannesmann, 793 F.2d at 1282, 230 USPQ at 46; Stewart-Warner Corp. v. City of Pontiac, 767 F.2d 1563, 1570, 226 USPQ 676, 681 (Fed.Cir.1985). If the claim describes a combination of functions, and each function is performed by a means described in the specification or an equivalent of such means, then literal infringement holds. See D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1575, 225 USPQ 236, 239 (Fed.Cir.1985). This prescription derives from 35 U.S.C. Sec. 112 paragraph 6:

An 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.

The statute thus provides, and extensive judicial analysis has reinforced, that when the claimed invention is a novel combination of steps, all possible methods of carrying out each step of the combination are not required to be described in the specification. Correctly construed claims cover "equivalents of the described embodiments". King Instrument Corp. v. Otari Corp., 767 F.2d 853, 862, 226 USPQ 402, 408 (Fed.Cir.1985), cert. denied, --- U.S ----, 106 S.Ct. 1197, 89 L.Ed.2d 312 (1986); see also Palumbo v. Don-Joy Co., 762 F.2d 969, 974, 226 USPQ 5, 8 (Fed.Cir.1985); D.M.I., 755 F.2d at 1579, 225 USPQ at 238.

The purpose is to grant the inventor of a combination invention a fair scope that is not dependent on a catalogue of alternative embodiments in the specification. This court has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification. Palumbo, 762 F.2d at 977, 226 USPQ at 10. The details of performing each step need not be included in the claims unless...