NIES, Circuit Judge.
SSIH Equipment S.A. (SSIH) appeals from the final determinations of the United States International Trade Commission (Commission) in Investigation No. 337-TA-75, Certain Large Video Matrix Display Systems and Components Thereof, under section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337 (1976 and Supp. IV. 1980)) (hereafter § 337), which prohibits unfair methods of competition in the importation of articles into the United States.
The Commission determined that there was a violation of § 337 because SSIH had imported and installed a stadium scoreboard for the Milwaukee Brewers Baseball Club, Inc., which infringed certain United States patents owned by Stewart-Warner. USITC Pub. No. 1158, 213 USPQ 475 (1981). An exclusion order currently bars importation of scoreboards which infringe only one of these patents, U.S. Patent No. 3,594,762.
Our jurisdiction over this appeal is found in the Federal Courts Improvement Act of 1982. 28 U.S.C. § 1295(a)(6). We reverse in part, vacate the order, and remand.
The subject investigation was instituted on December 17, 1979, by the Commission on the basis of a complaint filed by Stewart-Warner Corporation (S-W). The complaint alleged that SSIH violated § 337
The Commission unanimously determined that there was a violation of § 337 in that the above claims were valid and, as asserted, were infringed by SSIH's imported scoreboard. The Commission entered an exclusion order, in accordance with § 337(d),
On July 16 and 17, 1981, the '926 and '335 patents were held invalid in an infringement action to which SSIH was not a party. Stewart-Warner Corp. v. City of Pontiac,
On August 10, 1981, while the exclusion order was before the President, the Commission was made aware of the district court decision and modified its exclusion order to suspend "that portion of the order referring to the '926 and '335 patents, pending resolution of the [question of their] validity ... on appeal." 44 Fed.Reg. 42217 (1981).
The General Counsel of the United States Trade Representative notified the Commission on August 19, 1981, of the President's decision on the exclusion order as modified, stating that:
SSIH filed a notice of appeal from both the order of June 19, 1981, and the order of August 10, 1981.
S-W argues that the original June 19, 1981 order is the only final appealable order and asks that we affirm the conclusions of validity, infringement, and enforceability of all three patents and all other conclusions supporting that order.
The Government endorses the position of SSIH that only the order as modified is reviewable, but opposes SSIH on all other issues with respect to the correctness of the exclusion order based on the '762 patent.
SSIH and the Government both maintain that the '926 and '335 patents remain in the case only for the purpose of evaluating whether S-W was guilty of inequitable conduct.
The initial question is what issues are properly before us. S-W urges that the order of June 19, 1981, is the only exclusion order sent to the President and that after 60 days, since the president did not disapprove it, all of the findings and conclusions underlying that order became final for purposes of appeal by SSIH. In S-W's view, the order of August 10, 1981, did not affect the finality of the June 19, 1981 order; rather the later order merely stayed the date when the first will become operative.
SSIH and the Government argue that the August 10, 1981 order in part nullified the order of June 19, 1981, and only the findings and conclusions which support the more limited exclusion order are subject to review by this court at this time. We agree.
In reaching our conclusion, we have first considered the authority of the Commission
Under the statute, § 337(h),
We also conclude that the requisite findings for nullifying the order with respect to the '926 and '335 patents were made. In its August 10, 1981 order, the Commission stated that it had reviewed the "transcript of the decision [in the Pontiac case]" and "determined ... that ... the exclusion order ... should ... operate only with respect to [the '762 patent]." (Emphasis added.) The Commission thus necessarily found that the conditions leading to a determination to exclude imports on the basis of infringement of claims of the '926 and '335 patents "no longer exist".
Such a finding could properly be premised on the holding of the Pontiac case. Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971). Moreover, the law is well settled that the pendency of an appeal has no affect on the finality or binding effect of a trial court's holding. Deposit Bank v. Frankfort, 191 U.S. 499, 24 S.Ct. 154, 48 L.Ed. 276 (1903). See also 18 C. Wright, A. Miller & E. Cooper, Federal Practice and Procedure § 4433 (1981). That rule is applicable to holdings of patent invalidity as well. Alamance Industries, Inc. v. Gold Medal Hosiery Co., 194 F.Supp. 538, 540, 129 USPQ 219, 220 (S.D.N.Y.1961). See also, H. Kaye, R. Lupo, and S. Lipman, The Jurisdictional Paradigm Between the United States International Trade Commission and the Federal Courts, 64 JPOS 118, 132-33 (1982).
The Commission took the action of modifying its exclusion order on its own motion. We agree that such action was appropriate, given the nature of a § 337 investigation, which results in an order operative against goods and which is equally effective against those who participate as those who do not participate in the proceeding. Sealed Air Corp. v. USITC, 645 F.2d 976, 985-86, 209 USPQ 469, 477-78 (CCPA 1981). The Commission cannot assume a passive role once an exclusion order is issued. As stated in SSIH Equipment S.A. v. USTIC, 673 F.2d 1387, 1390, 213 USPQ 529, 531 n. 8 (CCPA 1982):
In view of the foregoing, we conclude that the Commission acted properly in issuing its August 10, 1981 order,
Before addressing the merits of this appeal, it is necessary to clarify the standard of review.
The Commission, relying on § 337(c), as amended by the Customs Courts Act of 1980, Pub.L. No. 96-417, § 604, 94 Stat. 1727, 1744 (1980) (hereafter "Customs Courts Act"), and General Motors Corp. v. USITC, 687 F.2d 476, 215 USPQ 484 (CCPA 1982), cert. denied, 459 U.S. 1105, 103 S.Ct. 729, 74 L.Ed.2d 953 (1983), contends that all of the Commission's factual findings are reviewable under the "substantial evidence standard." SSIH argues for review under the less stringent "clearly erroneous" standard which was previously applicable to appellate review of Commission decisions.
Section 337(c), as amended, applies to "civil actions commenced on or after [November 1, 1980]", Pub.L. No. 96-417, § 701(b)(2), 94 Stat. 1747, 3209 (1980). SSIH asks us to interpret "civil action" to include a Commission investigation. Since the instant investigation began before November 1, 1980, under SSIH's view, the amendment does not affect this case.
Civil actions, as that term is commonly understood, refers to proceedings in court. It has been held, for example, that "a civil action is an adversary proceeding before a court of law; judicial review of a decision of an administrative agency is a civil action; a proceeding before the Commission is not a civil action." Unnamed Physician v. Commission on Medical Discipline, 285 Md. 1, 400 A.2d 396, 401 (1979). We believe "civil action" is intended to be so construed here and does not embrace the proceedings before the Commission. The burden of proof borne by SSIH during the investigation was not affected by the Customs Courts Act. We cannot accept that a party would not put forward its best case in anticipation of an easier road to reversal in the event it lost. Nor does SSIH assert that it had a right that a particular review standard be maintained. The question is merely one of statutory interpretation and the intent of Congress. From the language of the amendment we conclude that we are directed to apply the same standard of review to all appeals from Commission determinations after a certain date. Congress has chosen that date and we are not swayed from the conclusion that all appeals filed after November 1, 1980, are thus governed by § 337(c), as amended. See, e.g., General Motors v. USITC, supra. Accordingly, we will apply the substantial evidence test to factual findings on this appeal.
The invention disclosed in the '762 patent is a system for displaying information and images, especially on stadium scoreboards. A large number of incandescent lamps ("display devices") are arranged in rows and columns to form a matrix. By activating different light bulbs to form patterns, information such as team names and scores and black-and-white stick-figures can be displayed. Claims 10 and 12, the claims in issue, are directed to successive displays of stick-figures to create an illusion of movement (animation).
The large scoreboard matrix is comprised of elements, each of which contains rows of light bulbs. An element displaying the letter "T" would appear thus:
An element's relationship to the overall display can be illustrated thus:
A control unit determines the on-off state of the light bulbs in each element. A particular on-off state is maintained until that element is again "addressed," that is, the control unit selects that particular element for a change in its on-off pattern. Once addressed, all bulbs in the element turn off. If there is data in the control unit presented for another display in that element, the appropriate bulbs will turn on to form the prescribed pattern. Each of the elements in the scoreboard is controlled in the above manner. Thus, to simulate a cheerleader,
To achieve the appearance of animated motion, the position of the legs and arms can be made to change so that the next picture (Picture B) would look like this:
By alternating between Picture A and Picture B, the cheerleader appears to move. By increasing the number of pictures the animation can be made more complex.
Because each element can be addressed separately, the system is characterized as having a "random accessing" feature in its preferred mode of operation. As stated in the specification with regard to a series of pictures like the cheerleader examples above:
Thus, to go from Picture A, there are two options. The first (not random access) is to erase the entire display and to transmit the information necessary to display Picture B. The second is to transmit information only to those elements which are necessary to change from Picture A to Picture B. Whichever method is employed, the above-quoted description makes clear that all of the data necessary to display Picture A is contained in a "frame" for the entire picture, while whatever data necessary to change Picture A to Picture B is also contained in a "frame."
Such a "frame" refers to a "data frame" in a mass storage system, such as magnetic tape or paper tape. The specification discloses a mass storage system and one other temporary storage memory. The temporary storage memory is capable of storing no more data at one time than that associated with one element of the display matrix and acts as a buffer between the mass storage system and the display.
In the embodiment where the system does not function in a "random access" mode, the control system will automatically cycle through every element of the display and activate the lights necessary for a particular display and on the next cycle it can change the display. In this embodiment, the mass memory does not hold data for address purposes. The internal system automatically keeps track of what element is being altered. This embodiment is the type of display which turns off the entire picture and redisplays rather than changing only individual elements.
Because of certain statements by the Commission on the effect of the statutory presumption of validity (35 U.S.C. § 282
The distinction between legal conclusions and factual findings with respect to evaluating assertions of obviousness was set forth in General Motors v. United States, 687 F.2d at 480, 215 USPQ at 487-88:
The Commission stated in adopting the recommended determinations of the ALJ:
213 USPQ at 480 (emphasis added).
Contrary to the Commission's statement, the presumption of validity was not altered by introduction of Rajchman, even though it was more relevant prior art. The presumption of validity afforded by 35 U.S.C. § 282 does not have independent evidentiary value. Rather the presumption places the burden of going forward, as well as the burden of persuasion, upon the party asserting invalidity. Solder Removal Co. v. USITC, 582 F.2d 628, 199 USPQ 129, 133 (CCPA 1978). We do not agree that the presumption is affected where prior art more relevant than that considered by the examiner is introduced. Rather the offering party is more likely to carry its burden of persuasion with such evidence. Solder Removal Co. v. USITC, 582 F.2d at 632-33, 199 USPQ at 133.
With respect to the Commission's statement that there must be "clear and convincing evidence of invalidity" (our emphasis), we find it inappropriate to speak in terms of a particular standard of proof being necessary to reach a legal conclusion. Standard of proof relates to specific factual questions. While undoubtedly certain facts in patent litigation must be proved by clear and convincing evidence, Radio Corp. v. Radio Laboratories, 293 U.S. 1, 54 S.Ct. 752, 78 L.Ed. 1453 (1934), the formulation of a legal conclusion on validity from the established facts is a matter reserved for the court. As a reviewing court, this court must determine not only that the facts on which a judgment of validity or invalidity was based were satisfactorily established, but also whether those facts form an adequate predicate for the legal conclusion ultimately made.
With respect to claim 12 which SSIH asks us to hold invalid, there is no evidence of record on which to base that conclusion.
During prosecution, the patentee amended claim 12 to specify that the data to be stored must be both address data to determine what part of the display is to be affected, i.e., the element, as well as the data which controls the pattern to be displayed for the entire picture or all parts to be changed. Moreover, the patentee specifically urged that storage of both address and display data was a basis for distinguishing over art cited by the examiner in originally rejecting claim 12. Thus, claim 12 is directed to a randomly accessible display system wherein the memory stores both the address data corresponding to the location of the element to be affected in a display and the data for what change must be made.
Rajchman discloses neither a memory capable of storing more than part of a total picture nor any manner of storing address data. Rajchman simply stores a part of a video signal in a memory whose contents are continually changed to correspond to the portion of the picture to be displayed. The operation of Rajchman is so rapid that an entire picture is viewed even though the whole picture is not stored at any one time. Further, the selection of which portion of the picture to display is automatic and is sequenced to correspond with the normal scanning operation of a television camera, for example. Address data is simply irrelevant in this context.
No prior art having been introduced to show both a memory capable of storing whole frames, nor anything whatsoever to suggest "random accessing" display devices, it has not been shown that the invention in claim 12 would have been obvious. Accordingly, the Commission correctly refused to conclude that claim 12 is invalid.
With respect to infringement, the question of "what is the thing patented" is one of law, while the question "has that thing been constructed [made], used or sold" by the alleged infringer is a factual issue, Winans v. Denmead, 56 U.S. (15 How.) 329, 337, 14 L.Ed. 717 (1853), to be proved by a preponderance of the evidence. Decca Ltd. v. United States, 544 F.2d 1070, 1081, 191 USPQ 439, 448 (Ct.Cl.1976). The Commission found that claim 12 was literally infringed by SSIH in the following terms:
213 USPQ at 484. From a review of the entire record, we find this conclusion unsupported by substantial evidence. Not only has the Commission erroneously ignored the prosecution history of claim 12, which is always relevant to a proper interpretation of a claim, see Astra-Sjuco A.B. v. USITC, 629 F.2d 682, 686, 207 USPQ 1, 5 (CCPA 1980); Autogiro Co. of America v. United States, 384 F.2d 391, 395-99, 155 USPQ 697, 701-04 (Ct.Cl.1967), but also there is no evidence whatsoever to suggest that "coded address data" is actually stored in the SSIH system. As intimated by the Commission, and as testified to by all of the experts, such address storage is, at most, implicit. Since claim 12 explicitly requires coded address data storage, a conclusion of literal infringement must fail. Hence, the Commission erred in stating that the doctrine of equivalents need not be considered. Since infringement cannot be found in the absence of a finding of equivalence, we reverse
The issue of the validity of claim 10 turns on whether the invention claimed therein
To be an anticipating reference, Harnden must disclose each and every element of the claimed invention. Straussler v. United States, 339 F.2d 670, 671, 143 USPQ 443, 443-44 (Ct.Cl.1964). See also In re Arkley, 455 F.2d 586, 172 USPQ 524 (CCPA 1972); Eastern Rotorcraft Corp. v. United States, 397 F.2d 978, 979, 154 USPQ 43, 44 (Ct.Cl.1967). Thus, it was required that the Commission determine (1) what is the scope of the claim, i.e., what are all the elements of the claimed invention; and, (2) what does the reference disclose.
The crucial question respecting claim 10, around which the arguments of the parties center, is whether the following limitation found in claim 10 refers to the temporary (one-element) storage within the device or the mass storage system:
From the analysis of the invention set forth in part IV, A, supra, it is manifest that the memory required by claim 10 is one that is capable of storing several frames at one time and, thus, refers to a mass storage system as opposed to the temporary memory. This appears to be the interpretation given by the Commission.
Harnden discloses a travelling message sign, but one which can be made to appear to be stationary and can be used for animation. Harnden states:
Only one column of information can be fed into the Harnden display at a time. After the data for a column is fed into the sign, that data is "shifted" to the next column and new data is fed into the first column. To display animations, Harnden requires that Picture A be "shifted" into the display followed by shifting in Picture B. If the shifting is rapid enough, and all of the light bulbs are forced to remain in the off state while the data is being shifted
Harnden also discloses a memory 42 in which several columns of information may be temporarily stored. The Commission found that this memory is not a "mass memory," but rather holds no more than the equivalent of data for one element in S-W's display.
The Commission (and the ALJ) wholly failed to take into account that Harnden also describes a mass storage system which utilizes, inter alia, magnetic tape or paper tape:
Since the limitation quoted from claim 10 requires only that the mass memory hold information necessary to display a series of several pictures (i.e., successive data frames), the conclusion is inescapable that Harnden's mass storage system also holds the data necessary for a series of several pictures to result in animation in the manner above described. Further, S-W does not argue that claim 10 does not otherwise read on Harnden's disclosure, nor do we think such an argument could be made. The major difference between the disclosures of Harnden and the '762 patent resides in the manner by which the information is directed to the elements of the display (random vs. non-random access). That difference, however, does not appear in claim 10, and we cannot alter what the patentee has chosen to claim as his invention. Autogiro Co. of America v. United States, 384 F.2d at 396, 155 USPQ at 701, and cases cited at n. 5.
Harnden's disclosure of a mass memory was totally ignored by the Commission. Since that memory is the only element said to be missing from the Harnden disclosure, the Commission's conclusion that claim 10 is valid is reversed.
SSIH asserts that one or more of the other patents originally asserted by S-W were "procured through inequitable conduct" and that such activity also taints the '762 patent and renders it wholly unenforceable, citing Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 245-47, 54 S.Ct. 146, 147-48, 78 L.Ed. 293 (1933).
The "inequitable conduct" is said to arise from a failure on the part of S-W to inform the patent examiner of certain acts alleged to constitute a possible on-sale bar under 35 U.S.C. § 102(b)
The acts which are alleged to have taken place all occurred after the '762 patent issued and do not deal with the invention claimed in the '762 patent. Moreover, the '762 patent issued almost three years
Keystone Driller and its progeny would deny enforcement of the '762 patent only if S-W were to have committed a fraud on the Commission itself. See, e.g., Pfizer, Inc. v. International Rectifier Corp., 538 F.2d 180, 195, 190 USPQ 273, 286 (8th Cir.1976), cert. denied, 429 U.S. 1040, 97 S.Ct. 738, 50 L.Ed.2d 751 (1977). Such a situation does not exist here. Therefore, the enforceability of the '762 patent is unaffected.
The final issues raised by SSIH relate to injury to a domestic industry and the public interest.
The Commission's findings in those areas relied heavily on the '335 and '926 patents and the technology contained therein. The video patents, as the parties refer to them, were the primary focus of the Commission's inquiry. Such an inquiry is of no aid to us now where the only possible remaining basis for exclusion is the one claim (claim 12) which the SSIH and other competing scoreboards may not infringe, see n. 5, supra. Hence, upon remand the Commission is directed to reevaluate the public interest and injury factors.
In view of the foregoing, the June 19, 1981 order as modified by the August 10, 1981 order is vacated and the case is remanded for further proceedings in accordance herewith.
REVERSED IN PART, VACATED, AND REMANDED.
KASHIWA, Circuit Judge, joins parts III, IVA, IVC, IVD, V and VI.
These additional comments are added because this author perceives a recurring confusion, as in this case, between standards of proof at the trial level and standards of review at the appellate level with respect to the facts in the case.
The importance of the distinction is well illustrated by the opinion in Charlton v. Federal Trade Commission, 543 F.2d 903 (D.C.Cir.1976), in which the FTC attempted to rely upon "substantial evidence" to determine facts. In reversing the FTC's decision, the court provided the following analysis:
Id. at 906-07 (footnotes 24-29 and 32 omitted).
In Woodby v. INS, 385 U.S. 276, 87 S.Ct. 483, 17 L.Ed.2d 362 (1966), the Court similarly reversed because of the misapplication of an appellate standard to the trial level.
Standards of Proof of Facts at the Trial Level
A particular quantum or burden of proof at the trial level (standard of proof) is generally a judge-made requirement shaped in accordance with considerations of due process and/or the importance of certain facts. Herman & MacLean v. Huddleston, 459 U.S. 375, 103 S.Ct. 683, 691, 74 L.Ed.2d 548 (1983). As explicated in Addington v. Texas, 441 U.S. 418, 423-25, 99 S.Ct. 1804, 1808-09, 60 L.Ed.2d 323 (1979), three levels of proof are generally recognized: preponderance (or weight) of the evidence, clear and convincing proof, and beyond a reasonable doubt. The analysis is as follows:
Standards of Review of Facts by Appellate Court
The standards of appellate review of factual determinations, in contrast to the quantum of proof required at the trial level, are usually statutorily imposed. The standards most commonly specified are "de novo," "clearly erroneous," "supported by substantial evidence" and "arbitrary or capricious," which I translate roughly into questions of increasingly narrow focus: is a finding of fact right; is it wrong; it is unreasonable; is it irrational?
A "de novo" standard provides the widest latitude for review of facts. The court in "de novo" review must exercise its independent judgment on the evidence of record and weight it as a trial court. The court is not, however, required to ignore the decision below. See Nulf v. International Paper Co., 656 F.2d 553, 563 (10th Cir.1981), and cases cited. United States v. First City National Bank, 386 U.S. 361, 368-69, 87 S.Ct. 1088, 1093-94, 18 L.Ed.2d 151 (S.D.Tex.1966) provides the following guidance:
With respect to "clearly erroneous," the next level in the hierarchy, this standard is defined in United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948):
The standard commonly associated with review by an appellate court of agency
Beginning with its previously defined standard:
Id. 340 U.S. at 477, 71 S.Ct. at 459, the Court noted that some courts had interpreted the standard to require a myopic view of the record, stating:
Id. at 481, 71 S.Ct. at 460 (footnote omitted). The Court unequivocally rejected this interpretation:
Id. at 488, 71 S.Ct. at 464.
The Court's ultimate conclusion was as follows (Id. at 490, 71 S.Ct. at 465):
The narrowest latitude to a reviewing court is where the court can reverse a decision only by finding it "arbitrary or capricious." Citizens to Protect Overton Park v. Volpe, 401 U.S. 402, 91 S.Ct. 814, 28 L.Ed.2d 136 (1971), is the seminal case discussing this standard. Suffice for purposes here to say that the standard is
Id. at 416, 91 S.Ct. at 823.
Interrelationship of Trial and Appellate Standards
While the standard of review and the standard of proof are distinct concepts, nevertheless, the degree of proof below affects the appellate decision whether to affirm or reverse, regardless of what standard of review is applicable. For example, in reviewing whether the evidence supports a finding of fact on a "clearly erroneous" standard, the decision might be affirmed if the standard of proof below were "weight of evidence" and might be reversed on the same record if the standard of proof were "clear and convincing" evidence. Thus, the appellate court must first focus on what support is needed for the trial court determination and then review, in accordance with the standard of review permitted in the type of case, whether that finding is properly supported. For example, in applying the substantial evidence standard of review (i.e., the reasonableness of the lower decision), the appellate court in Whitney v. SEC, 604 F.2d 676, 681 (D.C.Cir.1979), correctly, in my view, stated its function to be: "We review the Commission's findings only to ascertain whether ... there is evidence which a reasonable person might find clear and convincing."
EDWARD S. SMITH, Circuit Judge, concurring in part and dissenting in part.
I concur in the decision to remand the case to the U.S. International Trade Commission (Commission), but I respectfully decline to join certain portions of the majority opinion, as set forth below.
I concur in the result reached by the majority that only the '762 patent is before the court in this appeal in that the '926 and '335 patents are not appealable by SSIH at this time. I also agree that claim 12 of the '762 patent is valid, although I feel that the majority unduly limits the scope of claim 12. I respectfully dissent, however, from the majority's conclusion that claim 10 of the '762 patent is invalid. I feel that the court has failed to consider an important question of claim interpretation posed by several precedents of the U.S. Court of Claims.
I agree that the issue of the collateral estoppel effect, if any, of the district court judgment of invalidity in the Pontiac case should be reserved. Collateral estoppel is an affirmative defense
THE '762 PATENT
With respect to the validity of claim 12 of the '762 patent, I concur in the result reached by the majority. I am unable, however, to join the majority's conclusion that claim 10 is anticipated by Harnden under 35 U.S.C. § 102(e) (1976). My review of claim 10 has revealed a potential problem of claim interpretation with respect to the precedents of the former U.S. Court of Claims, binding on this court under South Corp. v. United States,
I agree with the majority that claim 12 is valid. The majority's reasoning, however, appears unnecessarily to limit the scope of that claim. The reference Rajchman lacks a memory system as is called for in claim 12 and is, instead, supplied with input data through a photoelectric scanning circuit rather than from a memory. That difference alone is sufficient to ground the conclusion of validity over the reference. Yet, the majority proceeds to read into claim 12 the additional limitation of randomly accessing the display. While claim 12 clearly provides a system capable of random access display operation, the invention set forth in claim 12 is not so limited. Claim 12 merely provides a system by which the display could be randomly accessed. It is not limited to that mode of operation, but rather, fully in accordance with the limitations of claim 12, an entire subsequent data frame could be read onto the display in a non-random access mode of operation. This departure might be critically importance under the doctrine of equivalents on remand.
Nonetheless, I agree with the majority that claim 12 is not literally infringed, as the SSIH system does not store address data in the form required by the claim — multibit coded address data. While a finding of equivalence is implicit in the Commission's decision, the Commission did not undertake the requisite analysis. Thus, the case must be remanded for consideration of whether SSIH's hardwired mode of address data storage infringes claim 12 under the doctrine of equivalents.
Claim 10 poses a potential problem of claim interpretation. The parties and the majority focus primarily on the memory limitation of claim 10, and I agree that that element is taught by the reference. The critical limitations of claim 10, however, would appear to be those relating to the sequence of processing and displaying the data.
The standard test of anticipation is whether the claim reads on the reference — an "infringement" test. The "majority rule" heretofore has been that the language of the claim defines the metes and bounds of the invention for purposes of determining its validity. A minority of courts have, however, referred to the specification to provide additional limitations to the claim in order to save the claim from invalidity. The court in the instant case appears to analyze the invention as defined exclusively by the limitations of claim 10, without reference to any additional limitations of the specification. It is clear that under such an approach, claim 10 is invalid.
Claim 10 is quite broad. The reference expressly discloses the key element of contention between the parties — the memory element. Additionally, the limitations on the manner of operation and on the sequencing and display of the data are so general and so broad as to read on the reference. If recourse is made to the specification, however, it is clear that the invention and reference do not function in substantially the same manner, belying the conclusion that they describe the same invention within the meaning of 35 U.S.C. § 102(e).
The Court of Claims has generally embraced the "minority" approach to claim interpretation. That court has read the claim in conjunction with the specification in order to preserve the validity of a claim.
In Decca Ltd. v. United States, the Court of Claims, affirming per curiam a recommended decision by then Commissioner Lane (later a judge of the Court of Customs and Patent Appeals), clearly articulated its approach in relying on the specification to supply additional limitations not found in the claims:
Again in Roberts Dairy v. United States,
It is clear that there is adequate Court of Claims precedent to support reference to the specification in order to save a claim.
These two analytic approaches (majority and minority) would reach different results on the facts of the instant case. As in Decca, despite the breadth of the language of claim 10 standing alone, the specification provides adequate description of the invention to safely conclude that the reference and the invention operate in a substantially different manner and thus reflect different inventions.
The specification discloses an extremely flexible control system for a data display device. Data is stored in "frames" corresponding to the visual display frames. The system is capable of randomly accessing both the memory and the display, although neither claim 10 nor the specification is limited to that mode of operation of either display or memory. The flexibility of the control system enables data to be processed from memory into the display in the sequence that it is displayed. In contrast, the sequencing of data processing and display disclosed by Harnden is far less flexible.
Harnden's logic transfer circuits consist exclusively of serially connected shift registers. This structure is physically incapable of the flexibility of data transfer that is the key feature of the invention embodied in the '762 patent. The shift register logic can transfer data only sequentially from one register to the next consecutive register. Harnden does, however, disclose an animation
To illustrate, assume a display of five registers and data flow from left to right through consecutive registers, as shown in figure 1.
In order to establish the validity of claim 10, it has been necessary to limit the literal language of the claim by reference to the specification. Thus, it would be unfair to grant Stewart-Warner the full breadth of the broad language of the claim for purposes of infringement. I would hold claim 10 valid and remand the case to the Commission for reconsideration of the issue of infringement with specific direction to consider the effect of the reverse doctrine of equivalents on the Commission's finding of infringement.
I dissent because the principles of claim interpretation set out in Decca and Roberts Dairy would produce a result different from that reached by the majority. There are persuasive policy arguments for limiting the definition of the invention to the language of the claims when considering the issue of validity. Such an approach has considerable logical power. It reduces the subjectivity of validity analysis, resulting in increased consistency and predictability. Admittedly, the determination of validity, as opposed to infringement, should not vary based on the equities of any particular case. Yet, that may be the result where equity is allowed to step into the specification and supply additional limitations to the claims. The better rule may well be to force the patentee to bear the burden of invalidity resulting from the overbreadth of a claim.
There is a significant body of precedent, however, which accommodates the more subjective "minority" approach to claim interpretation and the former Court of Claims is one of those courts that has articulated that more subjective approach. Rather than allow the issue to slip silently into the backwaters of the law, I write to ventilate the issue of claim interpretation raised by these precedents. The court does not address this issue today. Despite the problems inherent in a subjective approach, provided that the claim is given a consistent interpretation in any particular case, a fair and consistent result can be achieved. The analysis may be more subjective than under the "metes and bounds" approach; however, as the precedents of this court grow in number, the uniformity and predictability sought by the Federal Courts Improvement Act of 1982 may yet obtain because of the court's exclusive jurisdiction over patent appeals. The "metes and bounds" rule may ensure even greater uniformity and predictability. The court's failure to reject, or even to grapple with, the "minority" rule in this case, however, leaves two sets of rules governing claim interpretation in the body of precedent of the Federal Circuit — a situation far more damaging to predictability than the consistent application of the more subjective rule.
KASHIWA, Circuit Judge, joins in Parts I and II.A of this dissent, but not in Parts II.B and III.
19 U.S.C. § 1337 (Supp. V 1981) made no changes from the above.
This court was substituted for the Court of Customs and Patent Appeals in § 337(c) by virtue of the Federal Courts Improvement Act of 1982, Pub.L. No. 97-164, § 163(a), 96 Stat. 25, 49 (1982).
The dissent's view that the Pontiac litigation could only be brought into the case as an affirmative defense of collateral estoppel by SSIH fails to appreciate that proceedings under § 337 are in the nature of investigations with only limited aspects of inter partes cases. Further, the issue of whether the Commission had to modify its order under Blonder-Tongue Labs., Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), is reserved. We hold only that there was a justifiable basis for the modification here.
S-W does not dispute that Harnden's filing date of December 30, 1974, is before the mid-1975 date asserted by S-W as the earliest date by which the invention claimed was first conceived and that Harnden is, thus, a valid reference.