Petition for Writ of Certiorari — Budde v. Harley-Davidson, Inc.
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(1) Supreme Court, U.S.
FILED
041147 FEB 14 2005
IN THE
Supreme Court of the United States
No.
WILLIAM A. BUDDE, PETITIONER
Vv.
HARLEY-DAVIDSON, INC. AND
HARLEY-DAVIDSON MOTOR COMPANY
PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
; FOR THE FEDERAL CIRCUIT
PETITION FOR WRIT OF CERTIORARI
IRVING S. RAPPAPORT
Counsel of Record
1500 Edgewood Drive
Palo Alto, CA 94303
(650)321-7024
Attorney for Petitioner
CURRY & TAYLOR @ WASH D.C. @ (202) 223-3160 ¢ USSCINFO.COM
et OR tte
i
QUESTIONS PRESENTED
a Does the constitutional right of “due
process” include the right to require that the Court of
Appeals for the Federal Circuit (CAFC) follow its own
final appellate decision in a Markman claim construction
in a later appeal from a Federal District Court
summary judgment Ruling on patent infringement?
2. Does the constitutional right of “due
process” include the right to preclude a Federal District
Court from: 1) ignoring an earlier appellate decision on
a Markman claim construction handed down by the
CAFC, and 2) changing the claim construction
established as the “law of the case” in the prior CAFC
decision in a Ruling ona summary judgment motion?
—
il
PARTIES TO THE PROCEEDING
Pursuant to Rule 14.1(b), the following list
represents all of the parties before the United States
Court of Appeals for the Federal Circuit Circuit.
William A. Budde, hereinafter “Budde” was the
Plaintiff in the United States Court of Appeals for the
Federal Circuit and is the Petitioner in this petition and
is represented by:
Irving S. Rappaport
1500 Edgewood Drive
Palo Alto, CA 943803
(650)321-7024
Harley-Davidson, Inc. and Harley-Davidson Motor
Company, hereinafter collectively “HD” were
Defendants in the United States Court of Appeals for
the Federal Circuit and are respondents in this petition
are represented by:
J. Donald Best
Michael Best & Friedrich LLP
One South Pinckney Street
Suite 700
Madison, WI 53703
(608) 257-3501
TABLE OF CONTENTS
Page
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CONSTITUTIONAL PROVISION INVOLVED .....cececececececscsesescenee 1
SOOT ON TID COREE, ..scccosanssentesenscvanionssnneoussnnsienanenosesenmmuns 2
REASONS FOR GRANTING THE PETITION ........ccececececececscsceceses 6
I. THE FEDERAL CIRCUIT FAILED TO
APPLY THE “LAW OF THE CASE”
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II. THE OCTOBER 5, 2004 FEDERAL CIRCUIT
DECISION VIOLATES BUDDE’S RIGHT TO
SPR ATTEN tictetincniiincilcinsiianitaeaieitihdtia iacndecaeiicia ais 13
III. THE OCTOBER 5, 2004 FEDERAL CIRCUIT
DECISION IGNORES THE DISTRICT
COURT'S EQUIVALENTS FINDING .....0......cccccecceeee 14
REARS NS RS SEO RETO EMER OE EE SR LAA 19
APPENDIX
CIRCUIT COURT ORDER (10/05/04) 2......cccccccccceccececesees la
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DISTRICT: COURT ORDER (05/24/01) ....----sssvsssseeeeessseereee lla
DISTRICT COURT DECISION (06/30/03) ....---ssssssssssssseer 39a
DISTRICT COURT DECISION (01/29/99) .....----sssseseeseeeeeer 8la
ORDER DENYING REHEARING (11/15/04)....---seesevssseee 98a
FINDINGS _ FROM ABA IPL NEWSLETTER,
SUMMER 2003, VOL. 21, NO. 4 -sssssssesssseeeeesssennsnnnssssersenenee 100a
EXCERPT OF WHITE EXPERT REPORT ...--+svsssssssseeeee 125a
TRANSCRIPT OF HEARING OF JUNE 23, 2003 ON
CROSS-MOTIONS FOR SUMMARY JUDGMENT ON
INFRINGEMENT........cecososssssssesssseonensnsenenenenennsnnonsnnseseesere® 131la
ee
V
TABLE OF AUTHORITIES
Page
CASES
AGOSTINI V. FELTON, 512 U.S. 203 | RARE a ee 6
APEX ELECTRICAL MFG. Co. Vv. MAYTAG Co., 122
F.2D 182, 187, 50 U.S.P.Q. (BNA) 90, 94 (7™ CiR.),
CERT. DENIED, 314 U.S. 687, 86 L. ED. 549, 62S. Cr.
BOS CODE) cnsinpstiniiciiiticumabisicgled tee: spidiscanbaalbiaaticidatia: 17
ARIZONA V. CALIFORNIA, 460 U.S. 605, 618, N. 8
COO) asenceeinisioseintiit cana 7
BEMIS MFG. v. DoRNOCH MEDICAL SYSTEMS, INC.,
21 FED. APPx, 930 (FED. CIR. 2001)......ccseccsssssesesoosess.... 14,15
DAVIS V. UNITED STATES, 417 U.S. 383, 342 (1974)........... 7
MAGRATH V. DRAPER CORP., 384 F.2p 672, 674, 155
U.S.P.Q. (BNA) 609, 610 (1°" CIR. 1967) ..inescscssssssssocecosssss.,. 17
MESSENGER V. ANDERSON, 225 U.S. 436, 444 (1912).............. 7
Mosa, B.V. v. DIAMOND AUTOMATION, INC., 325
F.3D 1306, 1812-14 (FED. CIR. i Naibicitignte es 11
NO-JOINT CONCRETE PIPE Co. V. HANSON, 344 F.2p
13, 15, 144 U.S.P.Q. (BNA) 519, 520 (9™ CiR.), CERT.
DENIED, 382 U.S. 843, 15 L.ED. 2p 83, 86 S. CT. 79
TI sornsinsinstanlttcinniigagl ait tec Nie 17
RICHARDS V. CHASE ELEVATOR, 159 U.S. 477, 486,
40 L. ED. 225, 16S. Cr. 53 ( MIB) oancosssircesssscayinsenaitinanin sen 18
ROYAL TYPEWRITER Co. V. REMINGTON RAND,
INC., 168 F.2p 691, 693, 77 U.S.P.Q. (BNA) 517, 519
(2D CIR.), CERT. DENIED, 335 U.S. 825, 98 L. Ep.
OT, COSC: IID isiisisitin ada ee 15
vi
SPECIALTY EQUIPMENT & MACH. CORP. V. ZELL
MOTOR CAR Co., 193 F.2D 515, 518, 92 U.S.P.Q.
(BNA) 84, 87 (4™ CIR. 1952) 17
WHITE V. DUNBAR, 119 U.S. 47, 51 (1886) 12
MISCELLANEOUS
28 U.S.C. § 1254 1
1 -
OPINIONS BELOW
The opinion of the Court of Appeals for the
Federal Circuit (CAFC) dated October 5, 2004, not
designated for publication, appears in the APPENDIX,
pages la through 10a, to this petition. A Combined
Petition for Panel Rehearing and Rehearing En Banc
was filed on October 19, 2004. The Combined Petition
was denied on November 15, 2004 and is found in the
APPENDIX at pages 98a through 99a.
STATEMENT OF JURISDICTION
The jurisdiction of this Court is invoked under 28
U.S.C. § 1254, which states in part:
“Cases in the courts of appeals may be
reviewed by the Supreme Court by the
following methods:
(1) By writ of certiorari granted upon
the petition of any party to any civil or
criminal case, before or after rendition of
judgment or decree; .
CONSTITUTIONAL PROVISION INVOLVED
Amendment V - Trial and Punishment,
Compensation for Takings guarantees that no person
shall be deprived of property without due process of
law:
2
“No person shall be held to answer for a
capital, or otherwise infamous crime,
unless on a presentment or indictment of
a Grand Jury, except in cases arising in
the land or naval forces, or in the Militia,
when in actual service in time of War or
public danger; nor shall any person be
subject for the same offense to be twice
put in jeopardy of life or limb; nor shall be
compelled in any criminal case to be a
witness against himself, nor be deprived
of life, liberty, or property, without due
process of law; nor shall private
property be taken for public use, without
just compensation.” (Bolding added)
STATEMENT OF THE CASE
For William (Billy) Budde, his whole life has
been about riding and customizing motorcycles,
particularly Harley-Davidson (HD) motorcycles. Mr.
Budde started riding at age 12, finished only 9" grade,
was a champion rider by age 18, and until his recent
divorce and loss of his motorcycle shop, invented and
developed customized features for HD motorcycles. He
and co-inventor, Floyd Knapp, made the patented
invention in 1989 and U.S. patent 4,955,348 (348 patent)
issued in 1990, covering electronic fuel injection for
Harley-Davidson V-twin engine motorcycles. In the
early ‘90s Mr. Budde was unsuccessful in his attempts
to get the attention of motorcycle behemoth HD to
license the ‘848 patent. They essentially refused to deal
with him, figuring they could crush him.
3
In January 1995 HD commenced selling V-twin
engine motorcycles which infringed the ‘348 patent. In
June 1997, Mr. Budde commenced a suit for patent
infringement against HD in the Federal District Court
for the Northern District of California. Although the
case was originally brought in Oakland, CA, the case
was transferred to San Jose, CA onto the docket of
District Court Judge Jeremy Fogel. ©
A Markman claim construction was issued by the
District Court on January 29, 1999. (APPENDIX,
pages 81a-97a.) That construction was appealed to the
CAFC, and on appeal the Districts Court’s claim
construction was amended by the CAFC on May 24,
2001. (APPENDIX, pages 11a-38a.) Reconsideration
was requested by HD and denied, and the final .
appellate decision consisting of a complete claim
construction of the single claim in suit was sent back to
the District Court for further proceedings.
In 2003 Cross Motions for Summary Judgment
relating to patent infringement were filed by the
parties. The District Court ruled on those motions in
July 2003 granting HD’s Motion and denying Mr.
Budde’s Motion (APPENDIX, pages 39a-80a). The
District Court, in ruling on the Summary Judgment
Motions, ignored the prior claim construction in the
CAFC 2001 decision and changed and re-construed the
claim. Further, in ruling on infringement, the District
Court took the accused infringing fuel injection systems
into consideration in rewriting the claim, and as to one
element, stated that there was ambiguity on the -
question of equivalence, even though in the original
claim construction affirmed in the first appeal, no
ambiguity was found as to the element in question.
4
On appeal for the second time, without a trial on
the merits, the CAFC on October 5, 2004 affirmed the
District Court’s Ruling on summary judgment on non-
infringement (APPENDIX, pages 1a-10a), finding that
the District Court merely “clarified” its earlier claim
construction, rather than having actually changed and
reversed the claim construction. Mr. Budde filed a
Combined Petition for Panel Rehearing and Rehearing
En Bane on October 19, 2004. The CAFC denied
Budde’s Combined Petition for Rehearing and for
Rehearing En Banc on November 15, 2004
(APPENDIX, pp. 98a-99a).
After almost eight years of litigation, without a
trial on the merits, Mr. Budde’s financial problems are
so severe due to the legal fees he has incurred in this
case, he may have to file for bankruptcy.
The record of Markman appeals in the last
several years shows reversals by the CAFC almost half
the time.! (See APPENDIX., pages 100a-124a) It
! Mark T. Banner, Chair of the Intellectual Property Section of the
ABA states in the IPL Newsletter, Summer 2003, Vol. 21, No. 4:
“Nothing I have written this past year generated as much mail as
the article proposing a review of the Markman process.” Letters,
e-mails, and comments came from members of the user community,
district court judges, individual inventors, and colleagues in the
outside bar. ... Federal Circuit judges, academics, and even clerks
of court had debated and written about the reversal rate, some
suggesting a rate as high as 47 percent ... the reversal rate on
claim construction for the first six months of 2003 is 48 percent ..
A thorough study of this situation cannot be done too soon. The
Markman procedure is broken. The analytical framework is
confusing and the results are confounding. The lack of
predictability is not serving the patent system well. ...Today, the
uncertainty inherent in the manner in which de novo review of
5
seems that the time is ripe for the Supreme Court to
lend some clarity to what the standards are for
Markman claim constructions. This Court needs to
make clear when a claim construction becomes final in a
case, so that the parties do not have to struggle with a
case in which the District Court and CAFC turn claim
construction into a continually moving ping-pong ball
back and forth between them, without the parties
having an opportunity to go to trial. On February 8,
2005 the en Banc Federal Circuit heard oral argument
to consider the proper way to interpret patent claims in
light of the specifications to correctly determine their
limitations. Phillips v. AWH Corp., Fed. Cir., No. 03-
1269. There is disarray as to what constitutes proper
Markman methodology.
The Budde case provides the Supreme Court a
unique opportunity to provide more detailed guidelines
on the requirements, standards and law relating to
Markman claim constructions provided by District
Courts and the appeal of such constructions to the
CAFC. In this case, Mr. Budde was denied due process
because of the continual changing of the Markman claim
construction by both the District Court and the CAFC,
even though it had been finalized in the first decision of
the CAFC in 2001. A District Court claim construction
Markman rulings takes place has created a widely held belief in
the business and user community that the outcome of patent cases
cannot be determined until after the Federal Circuit has ruled on
claim construction. The Federal Circuit, the argument goes has
created a morass of confused and contradictory claim construction
canons. ... We need to find a way to make the Markman process
more predictable. ... need to he law of clai nstruction.”
(Emphasis added) Exhibit A is his findings.
6
followed by a final construction by the CAFC should fix
claim construction for the remainder of the case, with
no prerogative in the District Court or the CAFC to
change the “law of the case” claim construction. The
claim construction handed down by the CAFC should
be final and not subject to change by the District Court
or the CAFC. Claim construction is an issue which the
parties should neither be allowed multiple bites of the
apple nor subjected to multiple constructions. One
claim construction by the District Court, finalized on
appeal by the CAFC, should be sufficient.
Instead of our judicial institutions giving him a
fighting chance, Mr. Budde finds himself harpooned by
two contradictory appellate decisions by the CAFC on
claim construction of his single claim at issue. Surely
this result is not what was contemplated by Markman
and is more than any party can stand or to which he/she
should be subjected. Accordingly Mr. Budde has filed
this Writ of Certiorari.
REASONS FOR GRANTING THE PETITION
I. THE FEDERAL CIRCUIT FAILED TO APPLY
THE “LAW OF THE CASE” DOCTRINE
Budde asserts the facts of this case and his
fundamental constitutional guarantees should have
required both the District Court and the CAFC to
apply the “law of the case” on claim construction as
decided in the first decision by the CAFC in 2001. This
Court in Agostini v. Felton, 512 U.S. 203 (1997), at 236,
discussed the requirements of the “law of the case”
doctrine stating:
7
“Under this doctrine, a court should not
reopen issues decided in earlier stages
of the same litigation. Messenger v.
Anderson, 225 U.S. 486, 444 (1912). The
doctrine does not apply if the court is
‘convinced that [its prior decision] is
clearly erroneous and would work a
manifest injustice.’ Arizona sv.
California, 460 U.S. 605, 618, n. 8 (1983).
In light of our conclusion that Aguilar
would be decided differently under our
current Establishment Clause law, we
think adherence to that decision would
undoubtedly work a ‘manifest injustice,’
such that the law of the case doctrine does
not apply. Accord, Davis v. United States,
417 U.S. 333, 342 (1974) (Court of Appeals
erred in adhering to law of the case
doctrine despite intervening Supreme
Court precedent).” (Emphasis added)
Neither the District Court nor the CAFC
discussed “manifest injustice”. Budde was not advised
that the District Court considered that its prior
Markman decision was clearly erroneous and, therefore,
was working a manifest injustice. HD did not advance
such an argument.
The District Court’s original claim
construction order in 1999 ruled:
“The third disputed term is a ‘pair of fuel
injectors mounted in a fuel injector and
throttle body secured to [the] intake
manifold.’ Budde argues that this
8
language is clear on its face and that it
requires that two fuel injectors be
mounted in a body referred to as a ‘fuel
injector and throttle body. Harley-
Davidson argues that this claim element
requires a throttle body injection system,
as opposed to a port injection system.
However, neither the claims nor the
specification include reference to
‘throttle body injection’ or ‘port
injection.’ Therefore, a proper
interpretation of this term need not
require any particular type of fuel
injection system. Rather, the
language of this claim simply requires
that two fuel injectors be mounted in
a fuel injector and throttle body. The
language of this claim element further
requires that the fuel injector and throttle
body be secured to the intake manifold.”
(APPENDIX, pages 87a and 88a, January
29, 1999 District Court Claim
Construction Order.) (Emphasis added).
Neither HD nor Budde appealed the District
Court’s claim construction on the _ location of the fuel
injectors, and the CAFC in the first appeal made no
change to that construction. In fact, the CAFC said in
its 2001 decision: |
“The parties do not dispute the
district court’s construction of the
following claim limitations: ... (3) pair
of fuel injectors mounted in a fuel
injector and throttle body ...” 250 F.3d
9
1369, 13876 (APPENDIX, page 22a)
(Emphasis added).
\
HD was therefore judicially estopped from even
raising this argument after it had been fully settled by
the 2001 CAFC appellate decision. But on remand, HD
renewed its previous arguments before the District
Court, and the District Court in its 2003 Ruling
improperly found that the “parties disagree as to what
type of body qualifies as a ‘fuel injector and throttle
body.” (APPENDIX, page 55a.) The District Court
then essentially reversed its own earlier 1999 claim
construction, ignoring the 2001 CAFC appellate
decision, and concluded:
“The limitation is ambiguous and
neither of the parties’ positions is entirely
satisfactory.” (APPENDIX, page 56a.)
(Emphasis added).
The District Court found the language perfectly
clear in 1999, but in 2003, four years later, found the
language ambiguous in light of the same rejected
arguments presented by HD that its fuel injectors are
located slightly closer to the cylinders than to the-
throttle butterfly valve. As originally pointed out and
construed by the District Court, nothing in the claim
language or specification referred to any type of fuel
injection system, and under the doctrines of law of the
case and judicial estoppel, the District Court committed
reversible error in finding “ambiguous” that which it
previously found unambiguous. Nor did the District
Court conclude that a “manifest injustice” compelled a
departure from the settled claim construction. Clearly,
both HD’s Original and New EFI Systems satisfy this
10
claim element based on the original 1999 claim
construction by the District Court and affirmed by the
CAFC in 2001.
See APPENDIX, pages 125a and 126a, of White
Expert Report which show images of both Budde’s fuel
injectors mounted in the fuel injector and throttle body
integral with the intake manifold (page 125a) and the
corresponding views of the HD fuel injectors and their
throttle body and intake manifold. The only difference
between HD’s Original EFI System and New EFI
System is that in the New HD EFI system, the throttle
body and intake manifold are two pieces secured
together, as opposed to the one piece construction of
the Original EFI system (page 126a).
The District Court’s 1999 Ruling, upheld by
the CAFC on the first appeal in 2001, found that
the type of fuel injection system was not in issue,
as it was not even mentioned in the ‘348 patent.
The District Court’s so-called clarification is really a
misnomer for what has really occurred here, which is a
complete reversal and reconstruction of the District
Court’s 1999 claim construction Ruling, which Ruling
was upheld by the CAFC in 2001 and became the law of
this case. Based on the 2001 CAFC appellate decision,
the type of fuel injection system was not even in issue.
For the District Court to completely reverse itself in
the summary judgment Rulings on infringement in 2003
by finding that the location of the fuel injectors has
become a critical element in claim 1, violates the “law of
this case” as enunciated by the CAFC in its own 2001 _
appellate decision. Surely the affirmation of this 180-
degree reversal of its own 2001 decision in the CAFC’s
2004 appellate decision is a miscarriage of justice. In
li
essence, Budde has been hit by a “rolling” Markman
claim construction, whereby the District Court and
CAFC change claim construction, denying the parties
their day in court on the settled 2001 CAFC claim
construction. Surely, this is “manifest injustice”!
In addition, the District Court reached its 2003
Ruling on HD’s motion for summary judgment of non-
infringement by reading the language in claim 1
regarding the pair of fuel injectors in light of the
accused HD devices. This practice is clearly not in
concert with long-standing case law that in construing
claims, the accused devices are not to be considered.
The District Court violated the fundamental principle
of claim construction that courts may not interpret
claims with an eye to the infringing device. See, Moba,
B.V.v. Diamond Automation, Inc., 325 F.3d 1306, 1312-
14 (Fed. Cir. 2003). This departure by the District
Court tainted that court’s revisiting of claim
construction and speaks legions why the settled claim
construction following the 2001 CAFC decision should
have been treated as the “law of the case” as Judge
Fogel himself had acknowledged during the June 23,
2003 oral argument on the parties’ Cross-Motions.2 (See
APPENDIX, page 136a.)
* THE COURT: All right. Say again. I lost you there. The claim
construction was - - as I —— = no gE Oo
oe pn was ast the subject of the appeal with the iad
exception of the Court’s conclusion that there was a lack of
structure with respect to the vacuum sensor and that - - and that
aspect of the Court’s construction order was the subject of
reversal.
12
The District Court and CAFC both failed to
heed the admonition given to parties in patent suits in
the case handed down by this Court in White v.
Dunbar, 119 U.S. 47, 51 (1886):
“Some persons seem to suppose that a
claim in a patent is like a nose of wax
which may be turned and twisted in any
direction, by merely referring to the
specification, so as to make it include
something more than, or something
different from, what its words express.”
(Emphasis added).
The District Court and the CAFC failed-to apply
the law of the case doctrine in their 2003 and 2004
decisions, respectively, and treated claim 1 of the ‘348
patent as a “nose of wax” to require that it include a
specific location of the pair of fuel injectors. Nowhere is
such limitation expressed or shown in the specification
of the’348 patent. In essence, the District Court and
the CAFC have rewritten claim 1 of the 848 patent by
incorporating inconsequential differences found in the
HD accused devices as limitations into the claim. For
the courts themselves to engage in this sleight of hand
is unconscionable and should not be allowed to stand.
Therefore, for Mr. Budde to receive “due process”, the
CAFC’s new, decision of October 5, 2004 should be
reversed and the case remanded to the District Court
for a trial on the merits based on the 2001 CAFC claim
construction decision.
That’s where we are. So I don’t know that anything needs to be
modified any further. (Emphasis added.)
13
II. THE OCTOBER 5, 2004 FEDERAL CIRCUIT
DECISION VIOLATES BUDDE’S RIGHT TO
DUE PROCESS
For the CAFC in its October 5, 2004 decision to
now compound the error of the District Court in its
Ruling on the summary judgment motions in J uly 2003
not only violates the “law of the case” doctrine, but
represents a denial of due process to Mr. Budde by the
CAFC. The pair of fuel injectors was no longer an issue
regarding claim interpretation as of the CAFC’s May
24, 2001 decision. (APPENDIX, page 22a.) For the
CAFC to say in October 2004 that: 3
“On remand, the District Court clarified
its claim construction, stating that this
limitation required the fuel injectors be
mounted in the throttle body. Budde III,
slip op. at 12-13”. (APPENDIX, page 7a.)
(Emphasis added)
totally overlooks the reality of what occurred. The
District Court did not clarify its claim construction in
its 2003 Ruling but rather, clearly and unabashedly,
violated this Court’s “nose of wax” admonition by
changing and reversing its earlier 1999 claim
construction on this element. In doing so, the District
Court not only ignored the 2001 mandate of the CAFC
that the pair of fuel injectors was not in dispute, but
chose to ignore its own 1999 Ruling, as affirmed by the
2001 CAFC appellate decision, which established the
law of the case with respect to the fuel injectors. The
CAFC compounded the District Court’s 2003 Ruling
error by supporting this “nose of wax” reconstruction of
the claim in its October 2004 appellate decision. Not
14
only did the CAFC violate the clear “law of the case”
doctrine which it set in its own earlier 2001 decision in
this case, but in doing so denied Budde due process.
Budde should have been provided an
opportunity to submit evidence on the question of
literal infringement and, especially, infringement under
the doctrine of equivalents in view of the District
Court’s “clarification,” and the failure to have afforded
him that opportunity is a violation of Budde’s due
process rights. See Bemis Mfg. v. Dornoch Medical
Systems, Inc., 21 Fed. Appx. 930 (Fed. Cir. 2001). Even
if the law were to allow the law of the case doctrine to
be ignored, at a minimum, Budde should be allowed to
argue the changed claim construction based on further
evidence and expert testimony, which he has never had
the opportunity to do before the District Court or
CAFC.
Plaintiff has unquestionably been denied due
process. This Court should reverse the October 5, 2004
CAFC decision and remand this case for a trial on the
merits, if Mr. Budde is to receive any justice in this
matter, much less his day in court, which he has yet to
receive after over seven and one half years since this
case was filed.
Ill. THE OCTOBER 5, 2004 FEDERAL CIRCUIT
_ COURT’S EQUIVALENTS FINDING
The CAFC’s October 5, 2004 decision states:
“The district court, in the face of
‘conflicting expert opinions’ presented by
15
Budde and Harley-Davidson, found a
‘triable issue of material fact’ concerning
whether the difference in the location of
the fuel injectors was insubstantial, and
thus equivalent, under the doctrine of
equivalents. Id. The district court found
that the possible conclusion that the
placement of the fuel injectors in the
Harley-Davidson systems was equivalent
to the claimed placement would not
vitiate the limitation in question because
‘the fuel injectors clearly are present in
HD’s (Harley-Davidson’s] EFI system.”
(APPENDIX, page 9a.)
Expanding one element into two, or combining
two elements into one, does not preclude application of
the doctrine of equivalents. The solidity of this
precedent was referred to by Judge Learned Hand in
j j 168
F.2d 691, 693, 77 U.S.P.Q. (BNA) 517, 519 (2d Cir.),
cert. denied, 335 U.S. 825, 93 L. Ed. 379, 69 S. Ct. 50
(1948): |
“Although we are chary [sic] of all
objective absolutes in the field of patents,
reliance upon which has done more to
conceal and confuse the subject than
anything else, courts have with curious _
unanimity held that it does not avoid
infringement to combine into one member
that which the patent discloses as two, if
the single member performs the duties of
both in the same way. The decisions are
so numerous that we confine ourselves to
16
citing those which over the last thirty
years we have passed _ ourselves.”
[Citations omitted].
The simple fact is that in the Budde ‘348 patent
and in both the Old and New HD EFI systems there is
an induction module. The induction module in the ‘348
patent consists of a pair of fuel injectors, throttle body
and intake manifold. The Original HD EFI system also
consists of an-induction module made up of a throttle
body and intake manifold with the fuel injectors
mounted therein. Also, the New HD EFI system
consists of an induction module made up of a two-piece
unit having a throttle body and an intake manifold
bolted to the throttle body with fuel injectors mounted
therein. The “fuel injector and throttle body” is part of
a unitary assembly known as the induction module,
which in the ‘348 patent and the Original and New HD
EFI systems also includes the intake manifold, as
stated in the ‘348 patent at col. 4, lines 6 — 18:
“Fuel injectors 11 are mounted in a fuel
injector throttle body 13 for delivering
fuel from the injectors to the engine
cylinders through the intake manifold 15.
Since V-twin engines only have two
cylinders, only two separate injectors are
required. These fuel injectors are
standard units and for the _ present
invention can be the particular injectors
made by Bosch which are utilized in
Volkswagen flat four opposed cylinder air
cooled engines. The throttle body 13 is
secured to the intake manifold 15 which in
turn is secured to the cylinder heads
17
proximate the intake valves of the
engine.” |
There is no requirement in the ‘348 patent as to
the exact location of the pair of fuel injectors as found in
the 1999 District Court Ruling on claim construction
and upheld on appeal in the 2001 decision on claim
construction by the CAFC.
See, also, e.g., Apex Electrical Mfg. Co. v.
Maytag Co., 122 F.2d 182,187, 50 U.S.P.Q. (BNA) 90, 94
(7 Cir.), cert. denied, 314 U.S. 687, 86 L. Ed. 549, 62 S.
‘Ct. 297 (1941) (“Patents are not limited to the structure
described and shown, but the invention may be
embodied in various forms. ... Infringement is not
avoided by combining two elements in a claim into one
part”); Specialty Equipment & Mach. Corp. v. Zell
Motor Car Co., 193 F.2d 515, 518, 92 U.S.P.Q. (BNA) 84,
87 (4" Cir. 1952) (“(OJne using the substance and
essentials of a patented combination does not avoid
infringement by varying nonessential details. Neither
the joinder of different elements of a patented
combination into two or more doing together
substantially what was done by the single element will
evade a charge of infringement”); No-Joint Concrete
Pipe Co. v. Hanson, 344 F.2d 13, 15, 144 U.S.P.Q. (BNA)
519, 520 (9"" Cir.), cert. denied, 382 U.S. 848, 15 L.Ed. 2d
83, 86 S. Ct. 79 (1965) (“A substantial body of law
recognizes that infringement is not avoided by making
into one part that which has been shown as two”);
Magrath v. Draper Corp., 384 F.2d 672, 674, 155
U.S.P.Q. (BNA) 609, 610 (1* Cir. 1967) (“If unification
or combination be regarded as omitting something, it is
not enough to omit an element when the omission ‘is
attended by a corresponding omission of the function
18 _
performed by that element ... if the elements retained
performed the same function as before”) (quoting
Richards v. Chase Elevator, 159 U.S. 477, 486, 40 L. Ed.
225, 16S. Ct. 53 (1895)).
Essentially, the CAFC’s analysis of “fuel injector
and throttle body” (APPENDIX, pages 9a and 10a) of
its October 5, 2004 decision eliminates the language
“fuel injector and,” so that the fuel injectors are
mounted in a “throttle body”, thereby improperly
rewriting the claim. This impermissible rewriting
ignores the facts establishing equivalents under settled _
precedent that neither the joinder of different elements
of a patented combination into one, nor separation of
one integral part into two or more, doing together
substantially what was done by the single element, will
evade a charge of infringement.
Budde’s expert testified that there was
absolutely no difference between locating the fuel
injectors at one end of the induction module or the
other. Why has the CAFC overturned the District
Court’s finding that under the doctrine of equivalents
there is a triable issue of fact on the pair of fuel
injectors? In fact, the District Court’s initial 1999
claim construction with respect to the pair of fuel
injectors is the correct one, i.e., there is nothing in the
‘348 patent requiring any particular kind of fuel
injection system, the prosecution history does not
require location of the fuel injectors in a particular
location, and there is no such limitation in the claim to
restrict the range of equivalents. See page 8 above. At
a minimum, Budde is entitled to have this issue on
equivalents heard before a jury, where all the evidence
and experts can be heard. That is what the law
19
requires, where there is a dispute on a material issue of
fact under the doctrine of equivalents, as was found by
the District Court when considering the parties’ Cross-
Motions.
This case has been pending since 1997 and Mr.
Budde has not yet had the benefit of having his day in
Court, but rather, has been buffeted back and forth
between the District Court and the CAFC for seven
years on a claim construction that was clearly settled
by the District Court in its 1999 claim construction
Ruling and affirmed by the CAFC’s 2001 complete and
final decision on claim construction.
At a minimum, this Court should reverse the
erroneous CAFC decision of October 5, 2004 and
remand this case for a full trial on the merits of
infringement, validity, and damages, based on the
original and full claim construction contained in the
CAFC decision of 2001. Mr. Budde is entitled to
nothing less, if he is to receive due process, which the
Constitution guarantees. If the District Court and
CAFC had not been so anxious to summarily dispose of
this case, Mr. Budde could have had a full trial
(requiring no more than a week) several years ago.
CONCLUSION
The issue raised here is one of fundamental
rights of the parties to have the claim construction
fixed, not treated by the courts themselves as a “nose of
wax”, and not be subjected to a “rolling” Markman
claim construction, particularly when it has already
been appealed once and a final claim construction
ee yo Per eee re.
20
decision has been handed down by the CAFC as
occurred in this case back in 2001. It is fundamentally
unfair and contrary to any notion of justice to be
required to face years of expensive litigation around a
moving target as to the simple construction of a single
element of a single claim in suit, without ever having
the opportunity to have a full and open trial on all the
evidence with all the witnesses. Surely, this is neither
what our system of justice nor the Markman decision
contemplated for litigants in a patent suit. This is not
justice dispensed, or even long delayed, but simply
justice and due process completely denied!
In light of the foregoing, it is respectfully
requested that the United States Supreme Court give
William Budde his day in court by issuing a writ of
certiorari to the Court of Appeals for the Federal
Circuit and consider Petitioner’s argument that his
right to due process has been denied by the courts’
below.
Respectfully submitted,
Irving S. Rappaport
' Counsel of Record
1500 Edgewood Drive
Palo Alto, CA 94303
(650)321-7024
Attorney for Petitioner
la
(Any footnotes trail end of each document)
03-1610, -1641
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
WILLIAM A. BUDDE,
Plaintiff-Appellant,
V.
HARLEY-DAVIDSON, INC. and
HARLEY-DAVIDSON MOTOR COMPANY,
Defendants-Cross Appellants.
October 5, 2004, Decided
NOTICE: THIS DECISION WAS ISSUED AS
UNPUBLISHED OR NONPRECEDENTIAL AND
MAY NOT BE CITED AS PRECEDENT. PLEASE
REFER TO THE RULES OF THE FEDERAL
CIRCUIT COURT OF APPEALS FOR RULES
GOVERNING CITATION TO UNPUBLISHED OR
NONPRECEDENTIAL OPINIONS OR ORDERS.
COUNSEL: J. Donald Best, Michael Best, Madison,
WI, Russell L. Johnson, Skjerven, Morrill, San J ose,
CA, and John C. Scheller, Michael Best, Madison, WI,
for Defendants-Cross Appellants HARLEY-
DAVIDSON MOTOR COMPANY and HARLEY-
DAVIDSON, INC.
SISTINE
2a
Jack Russo and William C. Milks, III, Russo & Hale,
Palo Alto, CA, for Plaintiff-Appellant W'LLIAM A.
BUDDE.
JUDGES: Before RADER, BRYSON, and LINN,
Circuit Judges.
OPINION BY: LINN
OPINION: LINN, Circuit Judge.
William A. Budde (“Budde”) appeals from a final
decision of the U.S. District Court for the Northern
District of California granting a motion for summary
judgment of non-infringement of U.S. Patent No.
4,955,348 (“the ‘848 patent”) filed by Harley-Davidson,
Inc. and Harley-Davidson Motor Co. (collectively
“Harley-Davidson”). Budde v. Harley-Davidson, Inc.,
2003 U.S. Dist. LEXIS 25990, No. C-98-20447-JF (N.D.
Cal. July 29, 2003) (“Budde III”). Harley-Davidson
cross-appeals the denial of its argument in support of
summary judgment that the “fuel injector and throttle
body” limitation was not met under the doctrine of
equivalents. Reversal of the district court’s ruling on
that issue, however, would not alter the judgment in
Harley-Davidson’s favor, so that issue is not properly
presented as a cross-appeal. Bailey v. Dart Container
Corp. of Mich., 292 F.3d 1360, 1362 (Fed. Cir. 2002). A
prevailing party has no right to cross-appeal.
Lindheimer v. Ill. Bell Tel. Co., 292 U.S. 151, 176, 78 L.
Ed. 1182, 54 S. Ct. 658 (1934). Accordingly, we dismiss
the cross-appeal and treat the challenge as the
assertion of an alternative ground for affirming the
summary judgment of non-infringement.
3a
We affirm the district court’s judgment that Harley-
Davidson did not infringe the ‘348 patent, literally or
under the doctrine of equivalents, for the reasons set.
forth below.
I. BACKGROUND
The ‘348 patent issued in 1990 and is directed to an
electronic fuel injection (“EFI”) system for V-twin
motorcycle engines. Budde v. Harley-Davidson, Inc.,
250 F.3d 1369, 1371 (Fed. Cir. 2001) (“Budde II”). Claim
1 of the ‘348 patent is representative, with the disputed
terms highlighted:
1. A fuel injection conversion system for V-twin
motorcycle engines having two cylinders, an ignition
system, and a fuel source, comprising an intake
manifold providing separate ducts for delivering a fuel
and air mixture separately to each cylinder,
a pair of fuel injectors mounted in a fuel injector and
throttle body secured to said intake manifold,
a fuel distributor for delivering an_ individual
pressurized fuel flow to each of said injectors,
a fuel pump for delivering a pressurized fuel flow from
the fuel source to the fuel distributor,
a fuel flow pressure regulator for controlling the
pressure of the fuel flow delivered by the distributor to
said injectors,
an electronic sensing means for determining when the
ignition system of the engine delivers an electronic
PRES ATA ELE BE IAF DS.
4a
pulse to fire each spark plug of the cylinders and
producing an electronic signal in response thereto,
a throttle potentiometer for sensing the position of the
throttle and producing an electronic signal in response
thereto,
a status sensing means for measuring a combination of
air intake and engine temperature, and vacuum in the
intake manifold and producing electronic signals
therefrom, and
a control unit which discriminates which spark plug of
the engine is firing a fuel-air mixture charged cylinder
of the engine from the asymmetrical spark plug firing
order related electronic signal from said electronic
sensing means, said control unit electronically
integrating the electronic signals from the throttle
potentiometer, the electronic sensing means, and the
status sensing means to generate electronic signals
which control the fuel injectors and operate them at the
proper time and for the calculated duration to deliver
the proper amount of fuel to said cylinders for the
engine operating conditions by timed injection.
‘348 patent, col. 12, ll. 26-65 (emphases added).
Budde is a co-inventor and owner of the ‘348 patent. In
1997, Budde sued Harley-Davidson for infringement of
the ‘348 patent, alleging that two of Harley-Davidson’s
electronic fuel injection systems-the “old” and “new”
EFI systems-infringed its patent. Budde III, 2003 U.S.
Dist. LEXIS 25990, *7; see also Budde v. Harley-
Davidson, Inc., No. C-98-20447-JF, slip op. at 2 (N.D.
Cal. Jan. 29, 1999) (“Budde I”); Budde II, 250 F.3d at
5a
1374. The district court held a Markman hearing, then
construed seven of the disputed claim limitations.
Budde II, 250 F.3d at 1374-75. Because Budde
concluded he could not establish infringement under the
district court’s claim constructions, the district court, at
Budde’s request, entered summary judgment of non-
infringement. Id. at 1375.
Budde then appealed to this court, challenging the
constructions of two claim limitations. Id. at 1376. We
construed the two terms, vacated the summary
judgment, and remanded the case for further
proceedings. Id. at 1382.
On remand, Budde alleged that Harley-Davidson
infringed the ‘348 patent, while Harley-Davidson
responded that it did not infringe and that the ‘348
patent was invalid and unenforceable. Budde III, 2003
U.S. Dist. LEXIS 25990, *7. On cross-motions for
summary judgment, the district court granted Harley-
Davidson’s motion for summary judgment that Harley-
Davidson did not infringe the ‘348 patent, either
literally or under the doctrine of equivalents. 2003 U.S.
Dist. LEXIS 25990, *9. In that judgment, the district
court concluded that several limitations of claim 1 were
not met by Harley-Davidson’s systems, literally or
under the doctrine of equivalents, but found that a
“triable issue of material fact” remained as to whether
Harley-Davidson’s systems met the “pair of fuel
injectors” limitation of claim 1 under the doctrine of
equivalents. 2003 U.S. Dist. LEXIS 25990, *11.
Budde again appealed to this court. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
6a
II. DISCUSSION
A. Standard of Review
“We review a district court’s grant of summary
judgment de novo.” ACTYV, Inc. v. Walt Disney Co., 346
F.3d 1082, 1087 (Fed. Cir. 2003). When evaluating a
motion for summary judgment, we view the record
evidence through the same evidentiary standard that
would prevail at trial. Eli Lilly & Co. v. Barr Labs.,
Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). Summary:
judgment is only appropriate if there are no genuine
issues of material fact and the movant is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(c); SRI
Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
1116 (Fed. Cir. 1985) (en banc). On summary judgment,
claim construction is a matter of law that we review de
novo. Comparison of the claims to the accused device
requires a factual determination that every claim
limitation or its equivalent is found in the accused
device. Because infringement is a question of fact,
infringement is properly decided at summary judgment
only when no reasonable jury could find that every
limitation recited in the properly construed claim either
is or is not found in the accused device.
Int’l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 13869
(Fed. Cir. 2004) (internal citations and quotation marks
omitted).
B. Analysis
Budde argues that the district court erred in granting
summary judgment that Harley-Davidson did not meet
Ta
the “conversion system,” “intake manifold,” “pair of fuel
injectors,” “electronic sensing means,” “status sensing
means,” and “control unit” limitations in claim 1 of the
‘348 patent. To prevail on appeal, Budde must show
error as to each claim limitation. Because we conclude
that the district court correctly concluded that neither
of Harley-Davidson’s systems contained the “pair of
fuel injectors” limitation of claim 1 of the ‘348 patent,
and because we hold as a matter of law that no
reasonable jury could find infringement under the
doctrine of equivalents of any Harley-Davidson system
without reading the “pair of fuel injectors” limitation
out of the claim, we affirm. We need not consider the
arguments pertaining to the remaining disputed claim
limitations.
Budde argues that the district court erred in construing
the “pair of fuel injectors mounted in a fuel injector and
throttle body” limitation in claim 1 of the ‘348 patent.
This claim limitation states in pertinent part: “a pair of
fuel injectors mounted in a fuel injector and throttle
body secured to said intake manifold.” ‘348 patent, col.
12, ll. 33-34. The district court initially construed this -
term to require “that two fuel injectors be mounted in a
fuel injector and throttle body.” Budde I, slip op. at 8.
The parties did not appeal the construction of this claim
term, and this court did not decide issues related to this
claim construction in the prior Budde II appeal. On
remand, the district court clarified its claim
construction, stating that this limitation required that
the fuel injectors be mounted in the throttle body.
Budde III, 2003 U.S. Dist. LEXIS 25990, *24.
We discern no error in the district court’s claim
construction. The express language of the claim
i Pot
ELAR RAE eS Rohe ey Pe = z we
Boar essemieninss DP Mi TAE GK ae as ON hg Fitba Lr 4 wee
8a
distinguishes between a “fuel injector and throttle
body” and an “intake manifold” and recites that the fuel
injectors are mounted to the “fuel injector and throttle
body,” which is secured to the “intake manifold.” See
‘348 patent, col. 12, ll. 33-34. Under the ordinary and
customary meaning of the words of the claim, the pair
of fuel injectors must be mounted in the “fuel injector
and throttle body” and not the “intake manifold.” Thus,
the district court was correct in concluding that
mounting the pair of fuel injectors in the intake
manifold does not literally infringe the claim.
The district court found undisputed evidence that in
Harley-Davidson’s “old” EFI system, the parts
corresponding to the throttle body anc intake manifold
claim limitations were combined int» an integral
“induction module.” Budde III, 2003 U.s. Dist. LEXIS
25990, *26. Because the pair of fuel injectors are
mounted in the intake manifold portion of the induction
module rather than the throttle body portion, the “old”
EFI system did not literally meet the claim limitation.
Id. Concerning Harley-Davidson’s “new” EFI system,
the district court found it was undisputed that the
throttle body and intake manifold are separate parts
bolted together and that the fuel injectors are mounted
in the intake manifold. Id. We agree and, thus, concur in
the district court’s conclusion that no reasonable juror
could find that either of Harley-Davidson’s “old” or
“new” EFI systems literally met the “pair of fuel
injectors” limitation of claim 1 of the “348 patent. Claim
1 is therefore not literally infringed by these systems.
Harley-Davidson challenges the district court’s denial
of Harley-Davidson’s motion for summary judgment
that its systems did not meet the “pair of fuel injectors”
. 9a
limitation under the doctrine of equivalents. The
district court, in the face of “conflicting expert
opinions” presented by Budde and Harley-Davidson,
found a “triable issue of material fact” concerning
whether the difference in the location of the fuel
injectors was insubstantial, and thus equivalent, under
the doctrine of equivalents. Id. The district court found
that the possible conclusion that the placement of the
fuel injectors in the Harley-Davidson systems was
equivalent to the claimed placement would not vitiate
the limitation in question because “the fuel injectors
clearly are present in HD’s {Harley-Davidson’s] EFI
system.” Id. 2
The district court correctly notes that Warner-
Jenkinson cautioned that “it is important to ensure that
the application of the doctrine [of equivalents], even as
to an individual element, is not allowed such broad play
as to effectively eliminate that element in its entirety.”
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520
USS. 17, 29, 187 L. Ed. 2d 146, 117 S. Ct. 1040 (1997); see
also Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394,
398 (Fed. Cir. 1994) (“The doctrine of equivalents is not
a license to ignore claim limitations.”). As previously
discussed, the claim limitation in question explicitly
distinguishes between the “fuel injector and throttle
body” and the “intake manifold” and recites that the
fuel injectors are “mounted in [the] fuel injector and
throttle body.” ‘348 patent, col. 12, ll. 33-34 (claim 1)
(emphasis added). To conclude that the placement of
the fuel injectors on the intake manifold (or on the
intake manifold side of the induction module) is
equivalent to the claimed mounting of the injectors in
the “fuel injector and throttle body” ignores the
principal relationship between the three components
10a
recited in the limitation-the “fuel injectors,” the “fuel
injector and throttle body,” and the “intake manifold”-
and makes the relational claim language superfluous.
Thus, a finding of equivalence under the doctrine of
equivalents would read “mounted in a fuel injector and
throttle body” out of the claim and vitiate the claim
limitation. In light of this legal error, and given the
undisputed evidence concerning the combination of
Harley-Davidson’s accused systems, we hold no
reasonable juror could find that Harley-Davidson’s
“new” and “old” EFI systems infringe claim 1 of the
‘348 patent literally or under the doctrine of
equivalents.
III.CONCLUSION __ _
For the foregoing reasons, and on the alternative
ground asserted by Harley-Davidson as to the “pair of
fuel injectors” limitation of claim 1, we affirm the
district court’s judgment that the Harley-Davidson
systems at issue did not infringe the 48 patent, either
literally or under the doctrine of equivalents.
IV. COSTS
No costs.
lla
99-1533, 99-1534
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
WILLIAM A. BUDDE,
Plaintiff- Appellant,
V.
HARLEY-DAVIDSON, INC. and
HARLEY-DAVIDSON MOTOR COMPAN : #
Defendants-Cross Appellants.
May 24, 2001, Decided
COUNSEL: Robert M. Skolnik, of West Long Branch,
New Jersey, argued for plaintiff-appellant. ~
Michael E. Husmann, Michael Best & Friedrich LLP, of
Milwaukee, Wisconsin, argued for defendants-cross
appellants. With him on the brief was J. Donald Best.
JUDGES: Before BRYSON, LIN N, and DYK, Circuit
Judges.
OPINION BY: LINN
OPINION: LINN, Circuit Judge. ‘
William A. Budde appeals the district court’s judgment
of non-infringement. Budde v. Harley-Davidson, Inc.,
C-98-20447-JF (EAI) (N.D. Cal. June 30, 1999). This
judgment was entered at Budde’s request, following
the district court’s claim construction order, which
12a
Budde now challenges. Budde v. Harley-Davidson, Inc.,
C-98-20447-JF (EAI) (N.D. Cal. Jan. 29, 1999) (“Order
Construing Claims”). We hold that the district court
erred in concluding that the claim limitation “electronic
sensing means for determining when the ignition
system of the engine delivers an electronic pulse to fire
each spark plug” requires sensing the electronic pulse
that fires the spark plugs and that the specification
contained no structure corresponding to the function of
the “electronic sensing means.” We also address the
conditional cross-appeal of Harley-Davidson, Inc. and
Harley-Davidson Motor Co. (collectively “Harley-
Davidson”), and hold that the district court did not err
in its construction of the claim limitation “status
sensing means.” We vacate the judgment of non-
infringement and remand the case for further
proceedings consistent with this opinion.
BACKGROUND
I.
A. Overview
U.S. Patent No. 4,955,348 (the “ ‘348 patent”) covers
fuel injection conversion systems for reciprocating
engines generally and V-twin motorcycle engines in
particular. The invention is described as being
particularly well-suited for use with V-twin engines
customarily used on Harley-Davidson motorcycles. 348
patent, col. 1, ll. 7-11.
Such engines have an ignition system, a fuel delivery
system, and two cylinders. Each cylinder includes a
cylinder head, a piston, and a spark plug. The ‘348
13a
patent discloses that Harley-Davidson motorcycle
engines typically use one of three types of ignition
systems: (1) a breaker ignition system; (2) an electronic
ignition system; or (3) a magneto ignition system. Id. at
col. 4, ll. 66-67. In each type of ignition system, a device
or sensor is used to sense crankshaft or camshaft
position. This sensor generates a series of low voltage
timing pulses at shaft positions corresponding to the
top of the power stroke position of each of the two
cylinders. These low voltage pulses feed an ignition coil
that, in turn, supplies high voltage pulses to the spark
plugs. The patented system is compatible with all of
these ignition systems to provide a fuel injection
conversion system that will retrofit any Harley-
Davidson V-twin motorcycle engine. Id. at col. 2, ll. 49-
ys
Fuel injection has long been recognized as an efficient
way to provide a fuel-air mixture to reciprocating
engines. Fuel injection has also been known to be
difficult to implement, because it requires a
sophisticated sensing system to properly time the
delivery of a fuel charge to each successive cylinder in
the firing sequence. Budde asserts that at the time he
and his co-inventor, Floyd Knapp, filed the patent
application that issued as the ‘348 patent, there were
substantial compatibility problems in fitting a fuel
injection system - either in the initial manufacturing
process or in an after-market modification - onto an
engine that was originally designed for carburetion. A
critical compatibility problem was deriving timing
information. Id. at col. 3, ll. 33-36.
Timing information is crucial to proper operation of a
fuel injection system, because it assures that the
l4a
injection system feeds fuel only to the cylinder that is
to be fired. Most fuel injection systems acquire timing
information from the engine’s spark distributor.
However, in a carbureted Harley-Davidson V-twin
engine, the firing system does not use a spark
distributor. In a Harley-Davidson engine, when one
cylinder is on the power stroke, the other is on the
exhaust stroke, and both spark plugs may be fired
simultaneously with no adverse consequences. This
eliminates the need for a distributor or any like
electromechanical device for “steering” spark pulses.
Id. at col. 3, ll. 33-39. Thus, to convert a simultaneously
firing V-twin engine to fuel injection requires adding
some device or arrangement to ascertain which of the
two cylinders needs a fuel charge from the injectors at
any particular time in the cycle.
To add a distributor, a cam and switch, or any other
type of electromechanical device for the purpose of
generating the needed timing information for a fuel
injection conversion system requires making
undesirable and impractical mechanical modifications to
the engine. Id. at col. 3, ll. 44-50. The invention
described in the ‘348 patent overcomes this problem by
deriving the needed timing information electronically
rather than by adding an electromechanical device.
The invention is based on the recognition that while
both spark plugs in a Harley-Davidson V-twin engine
fire simultaneously, the time between successive spark
plug firings is not identical. Instead, the time
separation alternates between 4/9 and 5/9 in each
complete timing cycle to accommodate the
asymmetrical relationship between the cylinders in the
V-twin arrangement. By detecting the low voltage
15a
timing pulses produced in the engine’s existing ignition
System, and by measuring the time between successive
low voltage timing pulses, the system of the ‘348 patent
determines electronically (i.e., using a control unit)
when each respective cylinder is ready for a fuel charge
without having to add a distributor, a cam and switch,
or any other sort of electromechanical device to the
engine. Id. at col. 2, ll. 21-34. This not only eliminates
having to make mechanical alterations to the engine,
but also enables the patented conversion system to be
installed on any simultaneously firing V-twin engine
regardless of which of the three different types of
ignition systems the engine uses.
As stated above, in each type of ignition system
addressed by the present invention, a device or sensor
is used to sense camshaft position and emits a low
voltage spark plug firing pulse (timing pulse) in
response thereto. The invention described in the ‘348
patent feeds the low voltage timing pulses generated
by the ignition system’s existing device or sensor to a
control unit. The control unit then measures the time
between successive low voltage timing pulses. Since the
time between the firing of cylinder 1 and then cylinder
2 is different from the time between the firing of
cylinder 2 and then cylinder 1, the control unit is able to
determine from the stream of low voltage timing pulses
which cylinder needs to be charged with fuel. The
output of the control unit thus provides the needed
timing signals for the fuel injectors without any
mechanical modification of the engine. Cf. ‘348 patent,
col. 3, ll. 44-47.
oo ada an aries tl aia he
- *
QUENCES TORE Sr TF x
16a
B. Detailed Discussion
The ‘348 patent describes the breaker, electronic, and
magneto ignition systems in detail in lines 5 through 56
of column 5. The patent describes how, in each of these
ignition systems, low voltage timing pulses are
provided by various sensing devices. For breaker and
electronic ignition systems, the sensing devices include
mechanical points, solid-state devices, or Hall effect
devices. Mechanical points are typically driven by a
camshaft, which in turn is driven by the engine’s
crankshaft. As the camshaft rotates, it forces the points
apart. When the points are separated, the ignition coil
temporarily loses its ground (ie. the points
temporarily “break” the low voltage current being fed
to the ignition coil) and generates a high voltage pulse
that fires the spark plugs. Thus, spark plug firing is
caused by, and therefore can be determined by, the low
voltage interrupt generated by the points as the
camshaft rotates. This low voltage interrupt is input to
the control unit of the present invention.
A Hall effect device tracks camshaft position using a
metallic timing cup having a pair of windows cut into
the cup’s sides. See ‘348 patent, at col. 5, ll. 37-39. The
metallic timing cup is typically attached to a camshaft,
id., which is driven by the engine’s crankshaft
assembly. The position of the windows on the metallic
timing cup corresponds to the position of the pistons
within the two cylinders, respectively. See id. at col. 5,
ll. 39-41. That is, each window corresponds to a plug
firing and causes a magnetic field that creates a low
voltage pulse that is sent to the ignition coil, id., to
cause the ignition coil to send a high voltage pulse to
fire the spark plugs. Thus, spark plug firing is caused
17a
by, and therefore can be determined by, a Hall effect
device’s tracking of windows on a metallic timing cup.
The low voltage pulse created by the Hall effect device
is input to the control unit of the present invention. Id.
at col. 5, ll. 48-45.
Magneto ignition systems are described as using a
rotating magnet to generate a constantly changing flux
in the core winding of a magneto coil. In the same
manner as in the breaker or electronic systems,
interruption of the control coil current in the magneto
system causes high voltage signals to be generated to
fire the spark plugs. Thus, spark plug firing is caused
by, and therefore can be determined by, the low voltage
interrupt caused by the changing flux. This low voltage
interrupt is input to the control unit of the present
invention.
- The patented system describes the output of the
electronic ignition system sensor (e.g., mechanical
points, solid-state devices, Hall effect devices) as
directly feeding the control unit. Id. at col. 5, ll. 43-45. If
the ignition system uses mechanical points or a Hall
effect device, the output of these sensors is described as
being used to feed the control unit. Id. at col 5, Il. 45-48.
Similarly, the interruption of the control coil current in
the magneto system is described as being used to feed
the control unit. Id. at col. 5, ll. 50-51. Thus, the 348
patent describes the electronic sensors which are
present in the three conventionally used V-twin
motorcycle engine ignition systems and the manner in
which those sensors determine when, in the engine
timing cycle, the ignition system of the engine delivers
a low voltage pulse to fire the spark plugs.
18a
The written description of the ‘348 patent goes on to
describe how the control unit analyzes the low voltage
timing pulses generated by the electronic sensing
devices to determine which cylinder should be charged
with fuel. It does this by measuring the time span
between successive pulses. The relationship of spark
plug firing between cylinders is fixed for any given type
of internal combustion engine based on its structural
configuration. In a V-twin engine, the period between
spark plug firing between the first cylinder (cylinder 1)
and the second cylinder (cylinder 2) is asymmetrical
due to the V-shape formed by (or the angle between)
the cylinders. Id. at col. 5, 1. 57-col. 6, 1. 3. In a Harley-
Davidson V-twin engine utilizing a Hall effect device,
the windows on the camshaft’s metallic timing cup
reflect this asymmetry. That is, the distance, in one
direction, between the window representing cylinder 1
and the window representing cylinder 2 is 4/9 of the
circumference of the timing cup in a typical Harley-
Davidson engine. The distance, moving in the same
direction, between the window representing cylinder 2
and the window representing cylinder 1 is 5/9 of the
circumference of the timing cup.
By measuring the asymmetrical firing of the spark
plugs, the conversion system of the ‘348 patent
electronically determines which cylinder should be
injected with fuel. An engine timer in the control unit
measures the time duration between spark plug firings,
i.e., the time between electronic signals received from
the electronic ignition system sensor. The control unit
stores the times for comparison to determine the longer
and shorter periods. By comparing the differences, the
desired sequence of cylinder charging is determined by
the control unit. The varying distance between the cup
19a
windows can be translated into the time lapse between
the spark plug firing from cylinder 1 to cylinder 2,
which is different than the time lapse between the
spark plug firing from cylinder 2 to cylinder 1. For
example, when the control unit detects a 4/9 spacing (or
time gap) between the windows, cylinder 1 is to be
injected with fuel. Conversely, when the Hall effect
device detects a 5/9 spacing (or time gap) between the
windows, cylinder 2 is to be injected with fuel. Id. at col.
6, ll. 4-10.
The 348 patent’s fuel injection system uses a number of
other sensors to detect various system parameters and
supply further input signals to the control unit. See id.
at col. 2, Il. 4-19. The control unit integrates (or
processes) the input signals, and transmits output
signals to the fuel injectors causing each fuel injector to
charge its associated cylinder with fuel at the proper
time. nl See id. at col. 3, 1. 65 - col. 4, 1. 3.
IT.
Budde filed a complaint for patent infringement against
Harley-Davidson on June 11, 1997 in the Northern
District of California. The district court held a
Markman hearing on January 14, 1999 to construe the
claims of the %48 patent, and issued its Order
Construing Claims on January 29, 1999. Seven claim
limitations were disputed by the parties. Because all
seven of the then-disputed limitations appeared in claim
1 of the ‘%48 patent, the district court’s Order
Construing Claims addressed only claim 1, which
recites (with the disputed terms underlined):
20a
1. A fuel injection conversion system for V-twin
motorcycle engines having two cylinders, an ignition
system, and a fuel source, comprising an intake
manifold providing separate ducts for delivering a fuel
and air mixture separately to each cylinder,
a pair of fuel injectors mounted in a fuel injector and
throttle body secured to said intake manifold,
a fuel distributor for delivering an _ individual
pressurized fuel flow to each of said injectors,
a fuel pump for delivering a pressurized fuel flow from
the fuel source to the fuel distributor,
a fuel flow pressure regulator for controlling the
pressure of the fuel flow delivered by the distributor to
said injectors,
an electronic sensing means for determining when the
ignition system of the engine delivers an electronic
pulse to fire each spark plug of the cylinders and
producing an electronic signal in response thereto,
a throttle potentiometer for sensing the position of the
throttle and producing an electronic signal in response
thereto,
a status sensing means for measuring a combination of
air intake and engine temperature, and vacuum in the
intake manifold and producing electronic signals
therefrom, and
2la
a control unit which discriminates which spark plug of
the engine is firing a fuel-air mixture charged cylinder
of the engine from the asymmetrical spark plug firing
order related electronic signal from said electronic
sensing means, said control unit electronically
integrating the electronic signals from the throttle
potentiometer, the electronic sensing means, and the
status sensing means to generate electronic signals
which control the fuel injectors and operate them at the
proper time and for the calculated duration to deliver
the proper amount of fuel to said cylinders for the
engine operating conditions by timed injection.
Id. at col. 12, ll. 26-64.
As part of its claim construction, the district court
interpreted the claim limitation “electronic sensing
means for determining when the ignition system of the
engine delivers an electronic pulse to fire each spark
plug” and found that the 348 patent specification failed
to disclose structure corresponding to the claimed
function as construed by the court. Budde concluded
that he could not prove infringement based on the
court’s claim construction and motioned the district
court to enter final judgment in favor of Harley-
Davidson to facilitate an early appeal. The district court
granted Budde’s motion and entered a judgment of non-
infringement. We have jurisdiction over Budde’s appeal
from the district court’s judgment pursuant to 28
U.S.C. § 1295(a)(1) (1994).
DISCUSSION
I. Standard of Review
A finding of non-infringement requires a two-step
analytical approach. First, the claims of the patent must
be construed to determine their scope. Carroll Touch,
Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576, 27
U.S.P.Q.2D (BNA) 1836, 1839 (Fed. Cir. 1993). Second,
a determination must be made as to whether the
properly construed claims read on the accused device.
Id. In this ease, Budde has conceded the second part of
the infringement analysis, leaving only the propriety of
the district court’s claim construction in issue. Claim
construction is a matter of law that we review de novo.
Id.
II. Analysis
The parties do not dispute the district court’s
construction of the following claim limitations: (1)
conversion system; (2) fuel and air mixture; (3) pair of
fuel injectors mounted in a fuel injector and throttle
body; (4) individual pressurized fuel flow; and (5)
control unit.
Budde challenges the district court’s construction of the
“electronic sensing means” claim limitation. In its
conditional cross-appeal, Harley-Davidson challenges
the district court’s construction of the “status sensing
means” claim limitation. Harley-Davidson asserts that
the district court erred in concluding that the
specification of the ‘348 patent discloses structure
corresponding to the “status sensing means limitation.”
23a
Our analysis focuses on the construction of these two
disputed claim limitations.
The parties agree that the two disputed claim
limitations are written in means-plus-function form, and
we agree. In construing means-plus-function claim
limitations, a court must first define the particular
function claimed. Thereafter, the court must identify
“the corresponding structure, material, or acts
described in the specification.” It is not until the
structure corresponding to the claimed function in a
means-plus-function limitation is identified and
considered that the scope of coverage of the limitation
can be measured. 35 U.S.C. § 112, para. 6; Sage Prods.,
Ine v. Devon Indus., Inc., 126 F.3d 1420, 1428, 44
U.S.P.Q.2D (BNA) 1103, 1110 (Fed. Cir. 1997); In re
Donaldson Co., 16 F.3d 1189, 1195, 29 U.S.P.Q.2D
(BNA) 1845, 1850 (Fed. Cir. 1994) (“if one employs
means-plus-function language in a claim, one must set
forth in the specification an adequate disclosure
showing what is meant by the language” (emphasis
added)).
Whether or not the specification adequately sets forth
structure corresponding to the claimed function
necessitates consideration of that disclosure from the
viewpoint of one skilled in the art. See 35 U.S.C. § 112,
para. 1; N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7
F.3d 1571, 1579, 28 U.S.P.Q.2D (BNA) 1333, 1339 (Fed.
Cir. 1993); cf. In re Ghiron, 58 C.C.P.A. 1207, 442 F.2d
985, 991, 169 U.S.P.Q. (BNA) 723, 727 (CCPA 1971)
(stating that “if such a selection would be ‘well within
the skill of persons skilled in the art’, such functional-
type block diagrams may be acceptable and, in fact,
preferable if they serve in conjunction with the rest of
24a
the specification to enable a person skilled in the art to
make such a selection and practice the claimed
invention with only a reasonable degree of routine
experimentation”). Moreover, failure to disclose
adequate structure corresponding to the recited
function in accordance with 35 U.S.C. § 112, paragraph
1, results in the claim being of indefinite scope, and thus
invalid, under 35 U.S.C. § 112, paragraph 2. In re
Dossel, 115 F.3d 942, 945, 42 U.S.P.Q.2D (BNA) 1881,
1884 (Fed. Cir. 1997).
For a court to hold that a claim containing a means-
plus-function limitation lacks a disclosure of structure
in the patent specification that performs the claimed
function, necessarily means that the court finds the
claim in question indefinite, and thus invalid. Because
the claims of a patent are afforded a statutory
presumption of validity, overcoming the presumption of
validity requires that any facts supporting a holding of
invalidity must be proved by clear and convincing
evidence. Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem.
Co., 204 F.3d 1360, 1367, 53 U.S.P.Q.2D (BNA) 1892,
1898 (Fed. Cir. 2000); Panduit Corp. v. Dennison Mfg.
Co., 810 F.2d 1561, 1570, 1 U.S.P.Q.2D (BNA) 1593,
1595 (Fed. Cir. 1987) (stating that the presumption
mandated by § 282 is applicable to all of the many
bases for challenging a patent’s validity). Thus, a
challenge to a claim containing a means-plus-function
limitation as lacking structural support requires a
finding, by clear and convincing evidence, that the
specification lacks disclosure of structure sufficient to
be understood by one skilled in the art as being
adequate to perform the recited function.
25a
Electronic Sensing Means
Claim 1 of the 848 patent recites “an electronic sensing
means for determining when the ignition system of the
engine delivers an electronic pulse to fire each spark
plug of the cylinders and producing an electronic signal
in response thereto.” The district court parsed the
claimed function as: “(1) determining when the ignition
system of the engine delivers an electronic pulse to fire
each spark plug of the cylinders; and (2) producing an
electronic signal in response thereto.” Order
Construing Claims, slip op. at 9. Neither party disputes
the district court’s characterization of the claimed
function, and we see no reason to disagree. The district
court then held that the ‘348 patent “fails to disclose
any structure corresponding to the claimed function of
the electronic sensing means.” Order Construing
Claims, slip op. at 11.
Budde disputes the district court’s analysis, asserting
that the process by which the district court consulted
the specification to define the structure corresponding
to the claimed function was improper. Specifically,
Budde asserts that the district court erred in
impermissibly narrowing the term “determining” in the
claimed function to require electronic “sensing.”
Although Budde’s description of the district court’s
error is perhaps oversimplified, the district court in fact
narrowed its own interpretation of the defined function,
based on its incorrect reading of statements contained
in the summary and objects of the invention. Based
upon those portions of the patent disclosure, the district
court erroneously stated that the structure
corresponding to the claimed function could not be
26a
structure that sensed the position of the camshaft. We
discuss the district court’s error in more detail below.
As a quid pro quo for the convenience of employing §
112, paragraph 6, Budde has a duty to clearly link or
associate structure to the claimed function. Kemco
Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360,
54 U.S.P.Q.2D (BNA) 1308, 1313 (Fed. Cir. 2000) (citing
B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419,
1424, 43 U.S.P.Q.2D (BNA) 1896, 1900 (Fed. Cir. 1997)).
Budde asserted to the district court that Figure 3 and
the following passage of the specification defined the
structure capable of performing the claimed function:
In the present invention, sensors are utilized to obtain a
timing signal from the ignition system which is inputted
to the control unit of the fuel injection system for
utilization in controlling the operation ‘of the fuel
injectors. The Electronic ignition systems use sensors
that may be optical (usually infrared), or magnetic
(usually Hall effect devices). These sensors detect the
windows cut in the sides of a metallic “cup” that is
attached to the end of the cam shaft. Each window
corresponds to a plug firing and the angle between the
windows corresponds to the angle between the
cylinders. The position of the lobes of a Breaker ignition
system have a corresponding relationship. The output
of the Electronic ignition system sensor is used directly
by the control unit of the present invention.
Col. 5, ll. 31-45.
The district court held that neither the text nor the
figure cited by Budde discloses structure capable of
determining when the ignition system of the engine
27a
delivers an electronic pulse to fire the spark plugs. The
district court found that the text cited by Budde merely
identifies two types of sensors utilized by ignition
systems in Harley-Davidson carbureted engines that
detect windows in a cup on the camshaft, and that “the
electronic sensing means called for by the claim may
not be a structure that senses the position of the
camshaft.” Order Construing Claims, slip op. at 10-11.
The district court based this assertion on the following
statements in the summary and objects of the ‘348
patent:
“The present invention is designed to acquire the
required timing information for providing the fuel
injectors with their instructions by picking up an
electronic pulse off the ignition system.”
‘348 patent, col. 2, ll. 21-24 (emphasis added).
“An electronic sensing means is provided for
determining when the ignition system of the engine
delivers an electronic pulse to fire the spark plugs of
the cylinders... .”
‘348 patent, col. b, 1. 68 - col. 2, 1.3 (emphasis added).
“It is another object of the invention to provide a fuel
injection conversion system for Harley-Davidson
motorcycle engines which is able to time the fuel
injection sequence from analysis of the spark pulses...
‘348 patent, col. 2, ll. 41-44 (emphasis added).
28a
The district court found that these statements require
the electronic sensing means to pick-up or sense high
voltage pulses fed to the spark plugs from the ignition
coil, rather than sensing camshaft position. Finding no
structure for sensing the high voltage pulses fed to the
spark plugs, the district court concluded that the 48
patent specification failed to disclose structure
corresponding to the claimed function of the electronic
sensing means. We note, however, that the “electronic
sensing means” claim limitation merely recites the
functions of “determining when” pulses are delivered to
fire the spark plugs and “producing an electronic signal
in response thereto,” not the function of sensing the
high voltage pulses sent from the ignition coil to the
spark plugs. Contrary to the view of the district court,
‘determining’ when pulses are delivered to fire the
spark plugs does not require direct detection of those
pulses. Such a determination can be done indirectly, by
detecting a low-voltage electronic signal from a sensor
that determines, from the position of the cam shaft,
when high-voltage pulses are to be delivered to the
spark plugs. That interpretation of the manner in which
the electronic sensing means determines when the
ignition system delivers an electronic pulse to fire each
spark plug is consistent with the statements in the
summary and objects of the invention. These sections of
the specification contrast the conventional system for
obtaining timing information “from the electronic
distributor,” ‘848 patent, col. 2, ll. 25-26, with the
system employed by the invention, i.e., obtaining timing
information “from an analysis of the spark plug firing
pulses,” ‘848 patent, col. 2, Il. 33-34. In context, it
appears that the “spark plug firing pulses” that are
analyzed, and the “electronic pulse” that is “picked up . .
. off the ignition system,” 48 patent, col. 2, ll. 23-24,
29a
refer to the low-voltage signal from the :electronic
sensor, not the high-voltage pulse that is sent to fire the
spark plugs.
The district court, and Harley-Davidson on appeal, rely
heavily on a passage from the objects of the invention,
which describes one of the objects as being to provide a
fuel injection conversion system that is “able to time
the fuel injection sequence from analysis of the spark
pulses rather than from a mechanical electronic reading
of the electro-mechanical or electronic-mechanical
ignition timing unit which fires the spark plugs.” ‘348
patent, col. 2, ll. 41-47. While the district court found
that the “electro-mechanical ignition timing unit”
referred to is a Hall effect device (or other device for
sensing camshaft position), we think the better
interpretation is that the reference to the “electronic-
mechanical ignition timing unit” refers to the
conventional method of acquiring timing information,
which the specification identifies as “acquiring the
timing information from the electronic distributor.” ‘348
patent, col. 2, Il. 25-26. The problem solved by this
invention is determining which plug is being fired (in
order to determine the proper fuel injection sequence)
in the absence of a distributor. Thus, one skilled in the
art would understand that the patent is referring to
determining the proper injection sequence using a
control unit that analyzes: (1) when the ignition system
delivers a low voltage pulse to cause spark plug firing;
and (2) the timing between delivery of the low voltage
pulses. The control unit can perform this analysis based
on the low voltage pulse received from a Hall effect
device (or other optical or magnetic sensor), a solid-
State sensor, or a standard mechanical point setup. Use
a
30a
of the control unit negates the need for a distributor to
determine the proper injection sequence.
In supporting the district court’s opinion, Harley-
Davidson’s attempts to prove a lack of corresponding
structure focus on the disclosure set forth in the
summary and objects of the invention and, in particular,
statements that the claimed function includes an
“analysis of the spark plug firing pulses.” Harley-
Davidson invites us to conclude therefrom that the
claimed function of “determining when the ignition
system . . . delivers an electronic pulse to fire each
spark plug” requires that the electronic sensing means
analyze the firing pulses. To this end, Harley-Davidson
points out that although their expert testified that a
Hall effect device can determine a window within which
spark plug firing occurs, he further testified that the
Hall effect device could not determine the exact time of
ignition coil activation. Harley-Davidson asserts that
because the Hall effect device cannot determine the
exact time of ignition coil activation, it does not analyze
the spark plug firing pulses, and therefore it cannot
perform the claimed function of determining when the
ignition system delivers an electronic pulse to fire each
spark plug. We are not persuaded by Harley-
Davidson’s argument, which fails to recognize that, as
we have discussed, the summary and objects of the
invention can fairly be read to refer to an electronic
sensing means that determines the firing sequence of
the spark plugs by detecting a low-voltage electronic
signal from a sensor within the ignition system.
Moreover, whatever force Harley-Davidson’s argument
might have viewing the summary and objects of the
invention sections of the specification in isolation, it
cannot be squared with the specific passage that
3la
describes in detail the electronic sensing means, see
‘348 patent, col. 5, ll. 31-56.
The specification must be read as a whole to determine
the structure capable of performing the claimed
function. See 35 U.S.C. § 112, para. 6 (1994) (requiring
that a means-plus-function claim limitation “be
construed to cover the corresponding structure,
material, or acts described in the specification and
equivalents thereof’ (emphasis added)); see also
Serrano v. Telular Corp., 111 F.3d 1578, 1588, 42
U.S.P.Q.2D (BNA) 1538, 1542 (Fed. Cir. 1997) (holding
that the proper construction of a claim limitation under
§ 112, paragraph 6 looks to the “disclosed structure
[that] is described in a patent specification, including
any alternative structures identified”). In construing
terms used in patent claims, it is necessary to consider
the specification as a whole, and to read all portions of
the written description, if possible, in a manner that
renders the patent internally consistent. In addition, it
is important to construe claim language through the
“viewing glass” of a person skilled in the art.
Interactive Gift Express, Inc. v. Compuserve Inc., 231
F.3d 859, 866, 56 U.S.P.Q.2D (BNA) 1647, 1653 (Fed.
Cir. 2000).
As discussed previously, the problem solved by the
Budde invention is how to determine which cylinder
needs a charge of fuel in an engine that has no
distributor and fires both plugs simultaneously. This
problem is_ preferably solved without making
impractical and undesired mechanical modifications to
the engine. This is achieved by deriving the needed
timing information’ electronically, rather than
mechanically, by analyzing the asymmetrical pulse train
32a
generated by the engine’s existing ignition system.
Analysis of the pulse train determines when each
cylinder is ready for a fuel-charge. As described in the
‘348 patent specification, the control unit of the
patented system receives as an input the low voltage
timing pulses picked up from the existing ignition
system. These pulses trigger the simultaneous firing of
the spark plugs and, by their asymmetry, impart
information that the control unit uses to determine
electronically, rather than mechanically, which of the
two cylinders is on the power stroke and is thus ready
for a fuel charge.
The summary and objects of the invention are followed
by a description of the preferred embodiment, and must
be read, if possible, in a manner consistent with the rest
of the written description. The rest of the written
description clearly states that “there are three types of
motorcycle ignition systems: Breaker, Electronic, and
Magneto. Any one of these types may be in use on a
Harley engine, and the solution to providing a
conversion system requires the adaptability to
determine fuel injector timing from any one of them.”
‘ - 7348 patent, col. 4, 1. 66 - col. 5, l. 3 (emphasis added). At
column 5, lines 35-51, a number of alternative sensors
are disclosed that determine when the ignition system
delivers a low voltage electronic pulse to fire the spark
plugs. The alternative sensors include: (1) an optical
sensor; (2) a magnetic sensor (e.g., a Hall effect device);
(3) a standard mechanical point setup; and (4) a solid-
state sensor. As we discussed in the background
portion of this opinion, the detailed description
discloses not only each of these sensors, but how the
signals from those sensors are fed as an input to the
control unit which, in turn, analyzes the low voltage
33a
timing pulses to determine electronically when each
cylinder needs a fuel charge. These four sensor types
are listed under the heading of “Electronic Sensing” in
the description of the preferred embodiment, thus
directly linking the disclosed structure to the
“electronic sensing means” limitation in the claims.
Each of these sensors is structure corresponding to the
claimed function of the electronic sensing means. They
each determine when the engine’s ignition system
delivers a timing pulse to fire the spark plugs and
produce electrical signals in response thereto.
Harley-Davidson also relies on a portion of co-inventor
Knapp’s deposition testimony to show that co-inventor
Knapp could not find structure in the specification of
the 848 patent corresponding to the electronic sensing
means. However, the portion of the testimony that
Harley-Davidson cites is not sufficient to render
negligible the written description of the four
embodiments of the electronic sensing means discussed
above.
In addition, we note that the district court’s Order
Construing Claims discussed neither the level of skill in
the art, nor the requirement that a lack of
corresponding structure be proven by clear and
convincing evidence. In fact, the district court never
addressed the validity of claim 1. It merely concluded,
in its Order Construing Claims, that there was no
structure corresponding to the claimed function of the
“electronic sensing means.” Despite the fact that the
district court entered its judgment of non-infringement
without addressing the issue of validity, its decision
necessarily renders claim 1 invalid. Thus, the district
court should have applied the “clear and convincing”
34a
evidentiary standard in assessing Harley-Davidson’s
assertion that the specification of the ‘348 patent fails to
disclose structure corresponding to the “electronic
sensing means.” The district court’s failure to apply the
correct “clear and convincing” standard to Harley-
Davidson’s evidentiary submission on this issue is
another reason why we hold that the district court’s
construction of the “electronic sensing means”
limitation was erroneous. So holding requires us to
consider Harley-Davidson’s conditional cross appeal.
Status Sensing Means
Claim 1 of the ‘348 patent includes “a status sensing
means for measuring a combination of air intake and
engine temperature, and vacuum in the intake manifold
and producing electronic signals therefrom.”
The district court correctly identified the claimed
function as: “(1) measuring a combination of air intake
and engine temperature; (2) measuring vacuum in the
intake manifold; [and] (8) producing electronic signals
from those measurements.” Order Construing Claims,
slip op. at 12. The parties do not dispute that the
specification of the 848 patent discloses a thermistor as
the structure capable of performing the first and third
functions. However, the parties dispute whether the
patent sufficiently discloses structure capable of
performing the second function, i.e., measuring vacuum
in the intake manifold. The district court held that the
corresponding structure was identified in the written
description of the patent as a “commercially available”
vacuum sensor that produces an analog signal. Harley-
Davidson asserts that this generic reference in the
specification of the 848 patent does not adequately
35a
disclose structure for measuring vacuum in the intake
manifold.
The specification states, at column 6, lines 38-40,
“vacuum sensors are commercially available units
which produce analog signals for the control unit.” In
addition, Figure 3 of the ‘348 patent is a block diagram
of the fuel injection controller that includes a box
labeled “VACUUM SENSOR.”
In its claim construction analysis and corresponding
determination of definiteness of the means-plus-
function claims under 35 U.S.C. § 112, paragraph 2, the
district court held that “the box labeled VACUUM
SENSOR and the passage describing ‘commercially
available units’ meet the definiteness requirement of §
112, P 2.” Order Construing Claims, slip op. at 14. The
district court explained,
Vacuum sensors were well known in the art of
motorcycle engine manufacturing at the time the
patent issued. The phrase “commercially available
units” particularly and distinctly pointed out to those
skilled in the art the vacuum sensors [that] the 348
patent claimed. Accordingly, the structure which
corresponds to the [second function] is a vacuum sensor
which produces an analog signal and which was
commercially available at the time the patent was
issued.
Id.
Harley-Davidson asserts that Budde’s use of
“commercially available units” unfairly allows him to
incorporate by reference every commercially available
36a
vacuum sensor, which is not allowable under our
holding in Atmel Corporation v. Information Storage
Devices, Inc., 198 F.3d 1874, 1381, 53 U.S.P.Q.2D
(BNA) 1225, 1229 (Fed. Cir. 1999). We are not
persuaded by this argument because the facts of the
present case are distinguishable from Atmel.
In Atmel, the means-plus-function claim limitation was
“high voltage generating means disposed on said
semiconductor. . . .” 198 F.3d at 1376, 53 U.S.P.Q.2D
(BNA) at 1226. The specification stated, “the present
invention may include high-voltage generator circuit 34.
Known Circuit techniques are used to implement high-
voltage circuit 34. See On-Chip High Voltage
Generation in NMOS Integrated Circuits Using an
Improved Voltage Multiplier Technique, IEEE Journal
of Solid State Circuits, Volume SC-11, No. 3, June
1976.” Id. in addition, the figures of the patent depicted
the high voltage generator circuit 34 as a black box. Id.
at 1377, 53 U.S.P.Q.2D (BNA) at 1226. This court held
that the patentee could not incorporate the disclosure
of the cited article by reference to fulfill the
definiteness requirement of § 112, paragraph 2. Id. at
1382, 53 U.S.P.Q.2D (BNA) at 1230. In other words, the
content of the article could not be used to discern
sufficient structure in the specification that
corresponded to the claimed function.
In the present case, the issue is not whether subject
matter absent from the _ specification can be
incorporated by reference to satisfy the requirement
that corresponding structure be adequately described
in the specification. The issue is whether the
characterization, in the patent specification, of the
vacuum sensor as a “commercially available unit” would
37a
be understood by one skilled in the art as structure
capable of performing the function recited in the claim
limitation. The record reflects, as found by the district
court, that vacuum sensors were well known in the art.
See In re Dossel, 115 F.3d at 946-47, 42 U.S.P.Q.2D
(BNA) at 1885 (“Clearly, a unit which receives digital
data, performs complex mathematical computations and
outputs the results to a display must be implemented
by or on a general or special purpose computer
(although it is not clear why the written description
does not simply state ‘computer’ or some equivalent
phrase.)”).
Harley-Davidson points to its expert’s testimony at the
Markman hearing that the expert “didn’t see any
description in the patent of the vacuum sensor other
than that [the invention] has one and it’s in the
diagram.” Relying on Atmel, Harley-Davidson argues
that testimony from those skilled in the art is
instructive as to whether the specification discloses
structure corresponding to the claimed function.
Atmel, 198 F.3d at 1379, 53 U.S.P.Q.2D (BNA) at 1228.
However, Harley-Davidson’s expert misses the mark in
not shedding any light on the significance to, or
understanding of, one skilled in the art of the described
“commercially available” vacuum sensor. He also
admitted that he was “not very well versed in pressure
sensors.” This is hardly the type of testimony that
amounts to clear and convincing evidence that one
skilled in the art would not understand the scope of
claim 1 when read in light of the specification. In view
of the foregoing, we conclude that the district court did
- not err in holding that the ‘48 patent sufficiently
discloses structure capable of measuring vacuum in the
intake manifold.
38a
CONCLUSION
Because the judgment of non-infringement was entered
based on an erroneous claim construction of “electronic
sensing means,” we vacate the judgment of non-
infringement and remand for further proceedings
consistent herewith.
VACATED AND REMANDED
Footnotes
nl Budde’s brief informs us that the “proper time” is
when the piston of the fuel injector’s associated
cylinder is returning from an exhaust stroke.
39a
Case Number C-98-20447-JF,
[Doc. Nos. 136, 1387, 188, 144, 149, 166, 179, 185, 188]
UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF CALIFORNIA,
SAN JOSE DIVISION
WILLIAM A. BUDDE,
Plaintiff,
V.
HARLEY-DAVIDSON, INC., et al.,
Defendants.
July 29, 2003, Decided -
July 30, 2003, Filed
COUNSEL: For WILLIAM BUDDE, Plaintiff: Jack
Russo, Tim C. Hale, William Milks, Russo & Hale, Palo
Alto, CA.
For HARLEY-DAVIDSON, INC., a _ Wisconsin
corporation, defendant: Russell L. Johnson, Skjerven
Morrill LLP, San Jose, CA; Michael E. Husmann,
Michael Best & Friedrich, Milwaukee, WI; John C.
Scheller, Michael Best & Friedrich, Madison, WI;
Russell L. Johnson, Sidley Austin Brown & Wood,
LLP, San Francisco, CA; J. Donald Best, Richard H.
Marschall, Michael Best & Friedrich LLP, Medison,
WI.
For HARLEY-DAVIDSON MOTOR COMPANY, a
Wisconsin corporation, defendant: Russell L. Johnson,
Skjerven Morrill LLP, San Jose, CA; Michael E.
40a
Husmann, Michael Best & Friedrich, Milwaukee, WI;
John C. Scheller, Michael Best & Friedrich, Madisor,
WI; Russell L. Johnson, Sidley Austin Brown & Wood,
LLP, San Francisco, CA; J. Donald Best, Richard H.
Marschall, Michael Best & Friedrich LLP, Medison,
WI.
JUDGES: JEREMY FOGEL, United States District
Judge.
OPINIONBY: JEREMY FOGEL E
OPINION:
ORDER (1) GRANTING DEFENDANTS’ MOTION
FOR SUMMARY JUDGMENT OF
NONINFRINGEMENT AND DENYING
PLAINTIFF'S MOTIONS FOR SUMMARY
JUDGMENT OF INFRINGEMENT; (2) DENYING
THE PARTIES’ CROSS-MOTIONS WITH
RESPECT TO DEFENDANTS’ AFFIRMATIVE
DEFENSES; AND (3) ADDRESSING THE
PARTIES’ MOTIONS TO STRIKE EVIDENCE
On June 23, 2003, the Court heard the parties’ cross-
motions for summary judgment. The motions fall into
two groups: those addressing the issue of infringement
and those addressing the affirmative defenses of patent
invalidity and unenforceability. The Court also heard
several motions to strike evidence submitted by both
sides. The Court will grant Defendants’ motion for
summary judgment of noninfringement and deny
Plaintiffs motions for summary judgment of
infringement. The Court will deny the parties’ cross-
motions for summary judgment with respect to
4la
Defendants’ affirmative defenses. With respect to the
motions to strike evidence, the Court will address those
motions only as they relate to evidence actually
considered by the Court in analyzing the substantive
motions. None of the evidence actually considered by
the Court is subject to exclusion for the reasons set
forth below.
I. BACKGROUND
United States Patent No. 4,955,348 (“the patent” or
“the 348 patent”) teaches a system for converting
car» ureted V-twin motorcycle engines to fuel injection.
The specification focuses on Harley-Davidson (“HD”)
engines, but states that the conversion system will
work on all V-twin motorcycle engines. A V-twin
engine has two cylinders arranged at an angle to each
other in a “V” configuration. The cylinders alternately
are filled with a mixture of fuel and air. This fuel/air
mixture then is compressed by a piston that moves up
and down inside the cylinder. A spark plug is used to
ignite the compressed fuel/air mixture. The resulting
combustion drives the piston in an up-and-down motion
that is translated into circular motion by other parts of
the engine.
Prior to model year 1995, HD manufactured only
carbureted V-twin motorcycle engines. In a carbureted
engine, a mechanical device -- the carburetor -- mixes
the correct amount of fuel and air so that the engine
runs properly. In simple terms, the carburetor is a tube
that narrows in one portion. Air flowing through the
carburetor creates a vacuum that draws in fuel. The
resulting fuel/air mixture is delivered to the cylinder.
42a
In a fuel injected engine, an electronically controlled
valve -- the fuel injector -- sprays fuel either directly
into the cylinder or into the air flow at the cylinder’s
intake valve. According to the patent specification, fuel
injection is more efficient than carburetion but can be
difficult to implement because of difficulties in
determining when and how much fuel should be
provided for each stroke of each cylinder (“timing
information”). Most fuel injection systems acquire
timing information from the engine’s distributor, a
device that “steers” spark pulses to one cylinder or the
other. At the time of the application that ultimately
issued as the 348 patent, HD V-twin engines were
unusual in that they did not use a distributor. Rather,
the spark plugs associated with both cylinders fired
simultaneously. The patent addresses the problem of
acquiring timing information absent a distributor.
The specification notes that additional hardware such
as a cam and switch arrangement could be added to the
engine in order to provide timing information, but also
notes that such additions “would probably be highly
objectionable to most Harley owners. “848 patent, col.
3, 11. 44-47. The specification further observes that the
differences among motorcycle models, and the ignition
systems used by different models, would make adding a
cam and switch arrangement complicated and
impractical. Id. at col. 3, 11. 47-50. The specification
asserts that the patented conversion system “provides
a solution to these problems.” Id. at col. 3, 11. 58-59.
In its 2001 ruling addressing this Court’s claim
construction, the Federal Circuit described the
patented conversion system as follows:
43a
The invention is based on the recognition that while
both spark plugs in a Harley-Davidson V-twin engine
fire simultaneously, the time between successive spark
plug firings is not identical. Instead, the time
separation alternates between 4/9 and 5/9 in each
complete timing cycle to accommodate the
asymmetrical relationship between the cylinders in the
V-twin arrangement. By detecting the low voltage
timing pulses produced in the engine’s existing ignition
system, and by measuring the time between successive
low voltage timing pulses, the system of the 348 patent
determines electronically (i.e., using a control unit)
when each respective cylinder is ready-for a fuel charge
without having to add a distributor, a cam and switch,
or any other sort of electromechanical device to the
engine.
Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1372
(Fed. Cir. 2001). The Court went on to state as follows:
As discussed previously, the problem solved by the
Budde invention is how to determine which cylinder
needs a charge of fuel in an engine that has no
distributor and fires both plugs simultaneously. This
problem is preferably solved without making
impractical and undesired mechanical modifications to
the engine. This is achieved by deriving the needed
timing information electronically, rather than
mechanically, by analyzing the asymmetrical pulse
train generated by the engine’s existing ignition
system. Analysis of the pulse train determines when
each cylinder is ready for a fuel charge. As described in
the 348 patent specification, the control unit of the
patented system receives as an input the low voltage
timing puises picked up from the existing ignition
ee ee eS ee as
44a
system. These pulses trigger the simultaneous firing of
the spark plugs and, by their asymmetry, impart
information that the control unit uses to determine
electronically, rather than mechanically, which of the
two cylinders is on the power stroke and is thus ready
for a fuel charge.
Id. at 1380.
In model year 1995, HD began manufacturing V-twin
motorcycles with fuel injection. HD first came out with
its “original” electronic fuel injection (“EFI”) system, a
sequential port injection system in which each fuel
injector sprays fuel directly into the intake port of one
of the cylinder heads just prior to the opening of the
intake valve. In model year 2001, HD began marketing
its “new” EFI system, which also is a sequential port
injection system but which differs in some respects
from the original system. The V-twin engines equipped
with the original and new EFI systems differ in several
respects from the older V-twin engines equipped with
carburetors. One significant difference is that the
newer fuel injected engines fire the spark plugs
alternately, rather than simultaneously as in the older
carbureted engines described in the patent.
Plaintiff William Budde (“Budde”), co-inventor and
owner of the 348 patent, asserts that both the original
and new EFI systems infringe the patent. Defendants
Harley-Davidson, Inc. and Harley-Davidson Motor
Company (collectively “HD”) assert that there is no
infringement and that in any event the 348 patent is
invalid and unenforceable on a number of grounds. The
parties have filed cross-motions for summary judgment
on the issues of infringement, invalidity and
45a
unenforceability. The parties also have filed a number
of motions to strike evidence. The Court will address
the mctions to strike evidence as necessary to its
analysis of the motions for summary judgment.
Il. INFRINGEMENT
Budde seeks summary judgment of infringement,
asserting that the patent reads on both the original
EFI system and the new EFI system. HD seeks
summary judgment of noninfringement, asserting that
its EFI systems do not meet several claim limitations.
The determination of infringement of a patent is a two-
step process. Lockheed Martin Corp. v. Space
Systems/Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir.
2003). The Court first construes the claims of the patent
to determine their proper scope. Id. The Court then
compares the properly construed claims to the accused
device. Id. While claim construction is a question of law,
infringement is a question of fact. Id. Accordingly,
summary judgment on the issue of infringement is
appropriate only if no reasonable jury could return a
verdict for the nonmoving party, viewing the facts and
inferences in the light most favorable to that party. Id.
With respect to the first step, this Court previously
construed the disputed terms contained in claim 1. nl
The Federal Circuit reversed with respect to one term,
“electronic sensing means,” and left the remainder of
the claim construction undisturbed. Applying the claim
construction as modified by the Federal Circuit, the
question is whether either party has established that no
reasonable trier of fact could find for the other on the
question of infringement.
46a
To prove infringement, the patentee must show that
the accused device meets each claim limitation either
literally or under the doctrine of equivalents. Catalina
International Marketing, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 812 (Fed. Cir. 2002). Literal infringement
requires that the accused device contain each limitation
of the patent claim. Id. Infringement under the doctrine
of equivalents requires that the accused device contain
an equivalent for each limitation not literally satisfied.
Id. An element in the accused product is equivalent to a
claim limitation if the differences between the two are
“Gnsubstantial” to one of ordinary skill in the art. Id.,
citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
520 U.S. 17, 40, 187 L. Ed. 2d 146, 117 S. Ct. 1040 (1997).
Insubstantiality may be determined by asking whether
the accused device “performs substantially the same
function in substantially the same way to obtain the
same result” as the claim limitation. Id. at 813. This
function-way-result test for insubstantiality may not be
suitable in all cases. Warner-Jenkinson, 520 U.S. at 40.
Whatever formulation is used, equivalence must be
determined on an element-by-element basis, and not as
to the invention as a whole. Id. at 29. Moreover, < is
important to ensure that the application of the doctrine,
even as to an individual element, is not allowed such
broad play as to effectively eliminate that element in its
entirety.” Id.
Claim 1 of the patent is set forth below with the
limitations at issue highlighted in bold. The Court will
address each of the disputed limitations in turn.
47a
1. A fuel injection conversion system for V-twin
motorcycle engines having two cylinders, an ignition
system, and a fuel source, comprising
an intake manifold providing separate ducts for
delivering a fuel and air mixture separately to each
cylinder,
a pair of fuel injectors mounted in a fuel injector and
throttle body secured to said intake manifold,
a fuel distributor for delivering an _ individual
pressurized fuel flow to each of said injectors,
a fuel pump for delivering a pressurized fuel flo 7 from
the fuel source to the fuel distributor,
a fuel flow pressure regulator for controlling the
pressure of the fuel flow delivered by the distributor to
said injectors,
an electronic sensing means for determining when the
ignition system of the engine delivers an electronic
pulse to fire each spark plug of the cylinders and
producing an electronic signal in response thereto,
a throttle potentiometer for sensing the position of the
throttle and producing an electronic signal in response
thereto,
a status sensing means for measuring a combination of
air intake and engine temperature, and vacuum in the
intake manifold and producing electronic signals
therefrom, and
5) De site i ets
:? ee te ey Oe ee ee ee ee LS ae Se ee
48a
a control unit which discriminates which spark plug of
the engine is firing a fuel-air mixture charged cylinder
of the engine from the asymmetrical spark plug firing
order related electronic signal from said electronic
sensing means, said control unit electronically
integrating the electronic signals from the throttle
potentiometer, the electronic sensing means, and the
status sensing means to generate electronic signals
which control the fuel injectors and operate them at the
proper time and for the calculated duration to deliver
the proper amount of fuel to said cylinders for the
engine operating conditions by timed injection.
A. Fuel Injection Conversion System
This Court has construed the term “conversion
system,” which appears in the preamble of claim 1, to be
a limitation on the claim. The Court stated that the
patented conversion system “requires a fuel injection
system suitable for an engine that can be operated as a
carbureted engine, regardless of whether the fuel
injection system was designed as an after-market
product or as original equipment.” Order of January 29,
1999 (“Claim Constr. Order”), 6. This construction was
articulated in the context of determining whether the
term “conversion system” is a limitation at all and, if so,
whether it includes original equipment. The Court
quoted the specification’s statement that an important
object of the invention is to convert V-twin motorcycle
engines from carburetion to fuel injection, but
concluded that “nothing in the specification indicates,
however, that the patent does not cover a fuel injection
system designed by an original manufacturer to fit an
engine it has previously manufactured only with a
carburetor.” Id. The Court’s point was that a
49a
conversion system otherwise covered by the patent
does not fall outside the scope of the patent simply
because it is provided as original equipment rather than
as an after-market conversion kit. Nothing in the
Court’s construction was intended to delete the
requirement that the “conversion system” described by
the patent actually “convert” one type of engine to
another.
For the most part, Budde’s arguments ignore the
“conversion” aspect of the patent and focus on the
Court’s statement that the invention requires a fuel
injection system “suitable for an engine that can be
operated as a carbureted engine.” While this excerpt of
the Court’s construction order appears quite broad
standing on its own, it must be read in the context of
the Court’s construction as a whole and of the patent
itself. As is discussed above, the Court’s construction
did not eliminate the “conversion” aspect of the patent.
Moreover, a reading of the patent makes clear that the
entire purpose of the invention is to convert to fuel
injection an engine originally designed for carburetion.
The abstract of the patent describes the invention as
“{a] conversion kit for V-twin motorcycles to convert
them from carbureted to fuel injection.” The
specification states the objects of the invention as
follows: (1) “to provide a fuel injection conversion
system for V-twin motorcycle engines which converts
them from carburetion to fuel injection”; (2) “to provide
a fuel injection conversion system for Harley-Davidson
motorcycle engines which is able to time the fuel
injection sequence from analysis of the spark pulses
rather than from a mechanical electronic reading of the
electro-mechanical or electronic-mechanical ignition
timing unit which fires the spark plugs”; and (38) “to
50a
provide a fuel injection conversion system for Harley-
Davidson motorcycles which will retrofit any V-twin
motorcycle engine.” 348 patent, col. 2, 11. 37-52. Read in
context then, the Court’s construction requires either
an after-market kit that can convert a V-twin
motorcycle engine with a carburetor to fuel injection or
an original equipment fuel injection system that fits an
engine previously manufactured only with a carburetor
(thus effectively “converting” to fuel injection an engine
previously designed for carburetion). n2
Budde asserts that HD uses the same basic engine in its
carbureted V-twin engine motorcycles and its fuel
injected V-twin motorcycles. According to Budde, this
same basic engine comes in two “flavors,” carbureted
and fuel injected. Therefore, Budde asserts, HD’s
original and new EFI systems fall within the Court’s
construction of “conversion system.”
If Budde were correct in asserting that HD simply puts
its EFI systems on the same basic engine previously
manufactured only with a carburetor, the Court would
conclude that the conversion system limitation reads on
HD’s EFI systems. However, the undisputed evidence
is to the contrary. HD’s original and new EFI systems
will not work with a V-twin engine unless such engine
has specially designed parts that integrate with the
EFI systems. For example, it is undisputed that HD’s
original EFI system utilizes a camshaft position sensor
that relies upon a specially designed rotor cup. It
similarly is undisputed that both the original and new
EFI systems utilize a crankshaft position sensor that
determines the location of the crankshaft based upon
the passage of specially designed teeth on the engine
flywheel. It is undisputed that HD’s carbureted V-twin
5la
engines did not have these specially designed engine
parts prior to model year 1999. HD introduces evidence
that, as a result, HD’s EFI systems would not work
with the pre-1999 carbureted engines absent addition to
the engines of the specially designed rotor cup (original
EFI system, and specially designed teeth on the
flywheel (both original and new EFI systems). Jones
Decl., P 11; Farrell Decl., P 11; Lodise Decl., P 20. n3
The patent specification explicitly scorns such
mechanical alterations as “highly objectionable” and
emphasizes the invention’s ability to convert any V-
twin engine from carburetion to fuel injection absent
mechanical alterations. 348 patent, col. 3, 11. 44-59.
It is undisputed that beginning in model year 1999 HD
incorporated the above-described rotor cup and
flywheel into its carbureted V-twin engines. An
argument could be made, then, that these later
carbureted engines are essentially the same as those
utilizing HD’s EFI systems, the only difference being
the type of fuel delivery system added by HD. HD
introduces evidence, however, that the engines utilizing
the EFI systems have other specially designed parts
such as the fuel pump, regulator and fuel lines that are
necessary to withstand the high fuel pressure
requirements of the EFI systems. Farrell Decl., P 19.
HD introduces evidence that the EFI systems could
not be used without replacement of these parts. Id.
Consequently, this is not the situation posited by the
Court’s claim construction order, in which an original
equipment manufacturer in essence “converted” to fuel
injection an engine previously designed only for
carburetion. To the contrary, the evidence indicates
that the V-twin engines manufactured with HD’s EFT
systems are significantly different from the V-twin
ee ee ee oF,
52a
engines previously manufactured with carburetors, and
that HD’s EFI systems are not suitable for use with
the latter engines absent significant mechanical
alterations to such engines.
Budde introduces the reports of his expert, Robert
White (“White”), in support of his assertion that HD
uses the same basic engine in its carbureted V-twin
engine motorcycles and its fuel injected V-twin engine
motorcycles. White’s conclusory statements to this
effect are unsupported, however, and seem to hinge
upon the fact that both types of engines are V-twin
engines. White Report, PP 20-22; White Supp. Report,
P 15. Under White’s overly broad interpretation of
“engine,” the “conversion system” limitation would
read on any fuel injection system used with a V-twin
engine. Such an interpretation is not consistent with
the Court’s claim construction order, which focuses on
whether an original manufacturer in essence has
“converted” to fuel injection an engine previously made
only with a carburetor. Nor is such an interpretation,
which effectively would eliminate the “conversion”
limitation, consistent with settled precedent. See
Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical
Co., 520 U.S. 17, 29-30, 187 L. Ed. 2d 146, 117 S. Ct.
1040 (1997) (holding that each element contained in a
patent claim is material to defining the scope of the
invention and that it is improper to interpret a patent
so broadly as to effectively eliminate any element in its
entirety).
’ Based upon the record before it, the Court concludes
that no reasonable trier of fact could find that HD’s
EFI systems are conversion systems within the
meaning of the patent.
53a
B. Intake Manifold Providing Separate Ducts
Claim 1 discloses “an intake manifold providing
separate ducts for delivering a fuel and air mixture
separately to each cylinder.” The Court has construed
this limitation to require “an intake manifold with two
ducts, each of which separately delivers a fuel and air
mixture to a cylinder.” Claim Constr. Order at 7. HD
concedes that this limitation reads on its original EFI
system, but asserts that it does not read on its new EFI
system. Budde asserts that the limitation does read on
HD’s new EFI system.
HD interprets the word “duct” to mean a tube running
from one end of the intake manifold to the other. HD
points out that Figure 6 of the patent shows two such
tubes, and that HD’s original EFI system similarly uses
two such tubes. HD distinguishes this configuration
from that of its new EFI system, in which a single tube
runs from one end of the intake manifold to the other
but splits into two outlets, or branches, at one end so
that the fuel/air mixture can be delivered to the two
cylinders. Budde interprets the word “duct” to mean
not the tube running the length of the intake manifold
but rather one of the two outlets or branches
referenced above. Because HD’s new EFI system
utilizes a tube that branches into two outlets, Budde
contends that the two-duct requirement is met.
The dictionary definition of “duct” is “a tube, channel,
or canal through which a gas or liquid moves.”
Webster’s New World Dictionary 419 (8d college ed.
1988). There is no indication in the specification that
Budde intended a different meaning. To the contrary,
the specification emphasizes the use of two separate
54a
tubes to deliver a fuel/air mixture to each cylinder
without any crossover:
The unique configuration of the intake manifold
includes the fact that it has separate intake tubes or
ducts for each injector whereby there is no cross-over
of fuel-air mixture between the two injectors and
whereby accurate timed injection can be accomplished.
‘348 patent, col. 4, 11. 17-22. Because the specification
makes clear that a duct is a tube, the two-duct
requirement cannot be met by a single duct or tube that
contains two outlets or branches at one end. Moreover,
the latter configuration could not deliver the fuel/air
mixture without any crossover, which feature of the
two-duct configuration is touted by the specification.
This analysis is consistent with the Court’s construction
of the limitation, which requires that each duct
referenced in claim 1 “separately” deliver a fuel/air
mixture to one of the cylinders.
Budde’s expert, White, refers to the two outlets at the
end of the single tube in HD’s new EFI system as
“ducts,” but offers no facts in support of this reference,
no explanation for the patent language discussed above
and no evidence that one of ordinary skill in the art
would define “ducts” in this manner. White Report, P
29; White Supp. Report, PP 19, 21.
The Court concludes that no reasonable trier of fact
could find that the single-duct configuration of HD’s
new EF system literally meets the two-duct limitation
set forth in claim 1. The Court further concludes that no
reasonable trier of fact could find that the single-duct
configuration of HD’s new EFI system meets the claim
55a
limitation under the doctrine of equivalents. The
specification emphasizes the differences between the
patented configuration and other fuel injection systems
that have fuel/air crossover. 348 patent, col. 4, 11. 17-30
The specification further explains that, with a two-duct
configuration, a small air communication passage
between the two ducts is provided “to equalize the
pressure in the tubes for balance between the cylinders
and during engine operation without cross-over of the
fuel-air mixture.” Id. at col. 4, 11. 36-41. Given the
specification’s characterization of the two-duct
configuration as “unique,” and the details provided
regarding the differences between this configuration
and those in which there is fuel/air crossover, no
reasonable trier of fact could conclude that the
differences between the patented _ two-duct
configuration and HD’s single-duct configuration are
insubstantial.
C. Pair Of Fuel Injectors Mounted In A Fuel Injector
And Throttle Body
Claim i discloses “a pair of fuel injectors mounted in a
fuel injector and throttle body secured to said intake
manifold.” The Court has construed this limitation to
require that the two fuel injectors be mounted in a body
referred to as a “fuel injector and throttle body” and
that “the fuel injector and throttle body be secured to
the intake manifold.” Claim Constr. Order at 8. The
parties disagree as to what type of body qualifies as a
“fuel injector and throttle body.” HD asserts that this
body is the combination of the fuel injectors and the
throttle body; that is, that the limitation is simply an
awkwardly worded requirement that the fuel injectors
be mounted in the throttle body. Budde asserts that the
56a
fuel injectors need not be mounted in the throttle body,
and that a “fuel injector and throttle body” is made up
of the fuel injector component -- meaning the fuel
injectors and whatever part they are mounted upon --
and the throttle body component.
The limitation is ambiguous and neither of the parties’
positions is entirely satisfactory. However, Budde
admitted in his deposition that under the patent the
fuel injectors must be mounted in the throttle body.
Budde Depo., 469:8-18. He further admitted that the
limitation at issue is not met if the fuel injectors are not
mounted in the throttle body. Id. at 469:14-18. Given
that Budde is the inventor, his testimony is highly
persuasive. The specification supports Budde’s
testimony. Under the section labeled “Basic Elements,”
the specification identifies each of the invention’s
components and provides corresponding references to
Figure 1. Both the “fuel injector throttle body” and the
“throttle body” are identified as component 13 of
Figure 1.
Budde does not provide any factual support for his
position. Budde does argue that the Court’s Claim
Construction Order explicitly rejected HD’s position,
pointing to a portion of the Order in which the Court
declined to construe the limitation as requiring throttle
body injection rather than port injection. Claim Constr.
Order at 7-8. However, the Court declined to construe
the limitation in this manner because neither the claims
nor the specification make reference to “throttle body
injection” or “port injection.” Id. The fact that it
declined to construe the limitation in terms_of a
particular type of injection system did not constitute an
affirmative finding for Budde on the throttle body
57a
injection versus port injection issue 2nd does not
preclude a conclusion that the limitatio. 1s construed,
requires the fuel injectors to be mounted i: the throttle
body.
In HD’s original EFI system, the throttle body and
intake manifold are combined into one _ integral
“{nduction module.” The fuel injectors are mounted in
the intake manifold portion of the induction module
rather than the throttle body portion. As a result, HD
argues, the limitation does not read on the original EFI
system. HD points out that if the entire induction
module is viewed as the throttle body, the intake
manifold portion of the induction module effectively is
eliminated. However, the intake manifold is a separate
required structure under claim 1, in fact, the “fuel
injector and throttle body” must be “secured” to the
intake manifold. Accordingly, the Court concludes that
no reasonable trier of fact could find that in the original
EFI system the fuel injectors are mounted in the
throttle body as required under claim 1. The Court
concludes likewise with respect to HD’s new EFI
system. In that system, the throttle body and the
intake manifold are separate parts bolted to each other
and the fuel injectors are mounted in the intake
manifold, not the throttle body.
Budde asserts that even if the limitation is not literally
met by HD’s EFI systems, the limitation is met under
the doctrine of equivalents. Budde presents the expert
opinion of White in support of this assertion. White
Report, P 36; White Supp. Report, PP 25-26. HD
presents its own expert opinions to the contrary. Jones
Decl., PP 27, 32; Farrell Decl., PP 42, 48; Lodise Deci.,
PP 33, 39. Given these conflicting expert opinions, the
58a
Court concludes that there is a triable issue of material
fact as to whether the differences in ‘he location of the
fuel injectors are “insubstantial” for purposes of the
doctrine of equivalents.
HD contends that reading the limitation broadly
enough to cover HD’s EFI systems would vitiate the
claim limitation that the fuel injectors be mounted in
the throttle body. Warner-Jenkinson provides that “it
is important to ensure that the application of the
doctrine, even as to an individual element, is not
allowed such broad play as to effectively eliminate that
element in its entirety.” Warner-Jenkinson, 520 U.S. at
29. A finding of equivalence as argued by Budde would
not eliminate the fuel injector element in its entirety;
the fuel injectors clearly are present in HD’s EFI
systems. The question is whether the change in their
location from the throttle body to the intake manifold is
insubstantial. The Court disagrees with HD that
answering this question in the affirmative would
entirely eliminate a claim element in violation of
Warner-Jenkinson.
HD contends that the 348 patent discloses, but does not
claim, location of the fuel injectors in the intake
manifold. There can be no infringement under the
doctrine of equivalents if the alleged equivalent was
disclosed but not claimed in the patent, even if the
accused structure otherwise would be equivalent.
Johnson & Johnston Associates, Inc. v. R.E. Service
Co., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en banc).
However, the patent does not clearly disclose location
of the fuel injectors in the intake manifold. HD relies
upon the specification’s discussion of two means for
using fuel injection to provide the necessary fuel/air
59a
mixture, one being injection of the fuel directly into the
cylinder and the other being injection of fuel into the air
flow upstream of the cylinder. 348 patent, col. 1, 11. 24-
31. This discussion does not mention the throttle body
or the intake manifold and appears to be a general
discussion rather than a disclosure of particular
locations of the fuel injectors.
D. Electronic Sensing Means
Claim 1 discloses “an electronic sensing means. for
determining when the ignition system of the engine
delivers an electronic pulse to fire each spark plug of
the cylinders and producing an electronic signal in
response thereto.” This Court determined that this
means-plus-function element performs two functions:
“(1) determining when the ignition system of the engine
delivers an electronic pulse to fire each spark plug of
the cylinders; and (2) producing an electronic signal in
response thereto.” Claim Constr. Order at 9. The
Federal Circuit agreed. Budde, 250 F.3d at 1377.
“In order to establish literal infringement of a means-
plus-function claim, the patentee must establish that
the accused device employs structure identical or
equivalent to the structure disclosed in the patent and
that the accused device performs the identical function
specified in the claim.” WMS Gaming, Inc. v.
International Game Technology, 184 F.3d 1339, 1350
(Fed. Cir. 1999). Structure in an accused device is
equivalent to structure disclosed in the patent if “the
differences between the structure in the accused device
and any disclosed in the specification are insubstantial.”
Id. at 1351. A means-plus-function claim that does not
literally read on an accused device nonetheless may be
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infringed under the doctrine of equivalents if the
differences between the claim and the accused device
are insubstantial. Id. at 1352. Lack of equivalent
structure under a means-plus-function limitation may
preclude a finding of equivalence under the doctrine of
equivalents. Id. at 1353. Such will be the case unless a
variant accused of infringement, but which does not
literally infringe, results from technological advances
developed after the patent was granted and constitutes
so insubstantial a change from what is claimed in the
patent that it should be held to be an infringement. Id.
HD introduces evidence that its EFI systems do not
perform the function of “determining when the ignition
system of the engine delivers an electronic pulse to fire
each spark plug of the cylinders.” Jones Decl., P 34;
Farrell Decl., P 55; Lodise Decl., P 41. This function is
critical to the patented invention, which analyzes the
asymmetrical pulse train generated by the engine’s
ignition system to solve the problem of “how to
determine which cylinder needs a charge of fuel in an
engine that has no distributor and fires both plugs
simultaneously.” See Budde, 250 F.3d at 1380.
However, as HD points out, the engines upon which its
EFI systems are used do not fire both spark plugs
simultaneously and thus do not generate the 4/9 and 5/9
timing separation utilized by the patented invention
and discussed at length by the Federal Circuit. See id.
at 1372, 1874. HD’s EFI systems simply do not rely
upon -- and therefore do not seek to determine -- spark
plug firing information. Jones Decl., PP 35-36; Farrell
Decl., PP 56-57; Lodise Decl., PP 42-43. HD’s EFI
systems instead determine engine phase, i.e., which
_ cylinder is coming up on compression and which one on
the exhaust stroke.
6la
Budde relies upon White’s opinion that there is a
“direct correspondence” between detecting engine
phase and determining when pulses are delivered to
fire the spark plugs. White Report, P 54. More
specifically, White states that “determining when the
engine phase is at approximately the top of the
compression stroke . . . is the same as determining
when the spark plug for that cylinder is fired. Id. Budde
asserts that, as a result, devices in HD’s EFI systems
that determine phase necessarily determine when the _
spark plugs fire. Budde asserts that those devices in
HD’s systems are identical or structurally equivalent to
the devices disclosed by the patent.
kiven assuming that Budde is correct and that there is a
correspondence between the functions of “determining
when the ignition system of the engine delivers an
electronic pulse to fire each spark plug of the cylinders”
(performed by the patented invention) and determining
phase (performed by the accused devices), these
functions are not identical. HD introduces evidence
that, while the spark plug fires at approximately the
time the piston is at the position known as top dead
center (“TDC”), spark plug firing typically is measured
in terms of “advance” before TDC, measured in
crankshaft degrees. Farrell Decl., P 60. Spark advance
can vary from ten to forty degrees before TDC during
operation of the engine. Id. Accordingly, a
determination of engine phase does not provide all the
information necessary to determine spark plug firing.
Id.
Budde does not submit evidence that contradicts the
above description of phase and spark plug advance.
Budde’s expert, White, admitted in his deposition that
62a
spark advance information is not provided by phase
information and that he has no evidence that the
accused devices seek or use spark plug firing
information. White Depo., 225:3 - 227:22. Based upon
this record, it is clear that HD’s EFI systems do not
perform the function recited in the limitation. The fact
that approximate spark plug firing information may be
inferred from phase information does not mean that
HD’s EFI systems perform the function of
“determining” spark plug firing information. If HD’s
EFI systems do not perform the function recited in the
claim, it is irrelevant whether HD’s EFI systems
contain the same or similar structure as the invention.
Accordingly, no reasonable jury could find literal
infringement of the electronic sensing means. Similarly,
no reasonable jury could find infringement under the
doctrine of equivalents because the function performed
by HD’s EFI systems, determining phase information,
is not substantially the same as the function recited in
the patent.
E. Status Sensing Means
Claim 1 discloses “a status sensing means for measuring
a combination of air intake and engine temperature, and
vacuum in the intake manifold and producing electronic
signals therefrom.” The Court has construed the
function claimed by this means-plus-function limitation
to be three-fold: (1) measuring a combination of air
intake and engine temperature; (2) measuring vacuum
in the intake manifold; and (8) producing electronic
signals from those measurements. Claim Constr. Order
at 12. With respect to the second function of measuring
vacuum in the intake manifold, the Court has found that
“the structure which corresponds to the vacuum
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sensing means is a vacuum sensor which produces an
analog signal and which was commercially available at
the time the patent issued.” Id. at 14.
HD introduces evidence that its original EFI system
does not perform the function of measuring vacuum in
the intake manifold; does not produce an electronic
signal from such measurement; and does not use a
commercially available vacuum sensor or its equivalent
to perform these functions. Jones Decl., P 43; Farrell
Decl., P 65; Lodise Decl., P 51. Budde argues that the
original EFI system’s Alpha-N fuel management
system “indirectly” measures vacuum in the intake
manifold. The Alpha-N fuel management system uses
inputs in combination with a lookup table to calculate
fuel needs. Budde’s contention appears to be that the
recited function of measuring vacuum in the intake
manifold is performed during this process because the
data contained in the lookup table includes data on
vacuum in the intake manifold. However, the fact that
such data exists on the lookup table does not mean that
HD’s system “measures” vacuum in the intake
manifold. Moreover, such “measurement” clearly is not
performed by a commercially available vacuum sensor
that produces an analog signal as required under the
Court’s claim construction. The Court concludes that no
reasonable trier of fact could conclude that this indirect
method of measuring vacuum meets the claim limitation
either literally or under the doctrine of equivalents.
Even assuming for purposes of analysis that the
measuring function is performed by the Alpha-N fuel
management system, it is performed in an entirely
different way. There is no evidence that the measuring
of vacuum results in an electronic signal corresponding
to the vacuum measurement.
64a
Budde argues in the alternative that the measuring
function is performed by a barometric pressure sensor
located on the exterior of the engine. However, there is
no evidence that this barometric pre*sure sensor
measures vacuum in the intake manifold. Budde cites to
the deposition of Earnest Metz, an engineering
manager of HD, for the proposition that vacuum in the
intake manifold can be determined from barometric
pressure. However, the cited testimony states exactly
the converse -- that “if the algorithms were correct, you
could get barometric pressure out of intake manifold
pressure.” Metz Depo., 328:21-23. While HD concedes
that a barometric pressure sensor could, in fact, be used
to measure vacuum in the intake manifold, there simply
is no evidence that the barometric pressure sensor in
HD’s original EFI system actually is used for this
purpose.
F. Control Unit
Claim 1 discloses “a control unit which discriminates
which spark plug of the engine is firing a fuel-air
mixture charged cylinder of the engine from the
asymmetrical spark plug firing order related electronic
signal from said electronic sensing means... .” This
Court has construed this limitation to require that “the
control unit must determine which spark plug of the
engine is firing a charged cylinder at any given moment
based on the different time periods between spark
firings.” Claim Constr. Order at 15. The reference to
the “different time periods” refers to the alternating 4/9
and 5/9 time separation between the simultaneous
firings of the plugs that results from the V-twin
arrangement of the cylinders. See Budde, 250 F.3d at
1372, 1374. This Court further has construed the
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limitation to require that “the control unit must control
the fuel injectors based on electronic signals derived
from the signals of the throttle potentiometer, the
electronic sensing means, and the status sensing
means.” Claim Constr. Order at 15-16.
Both the original and new EFI systems utilize a form of
control unit to control the fuel injectors. HD contends
that its control unit, which it refers to as an “electronic
control module” or “ECM,” is so different from the
patented control unit that there is no infringement
either literally or under the doctrine of equivalents.
Budde contends that the control unit limitation does
read on HD’s EFI systems.
It is undisputed that the spark plugs do not fire
simultaneously in the HD motorcycles at issue.
Accordingly, neither of HD’s EFI systems determine
which spark plug is firing a charged cylinder by
comparing the alternating 4/9 and 5/9 separation
between the firings as is done in the patented
invention. As is discussed above, the EFI systems do
not contain the electronic sensing means that, in the
patented invention, determines when the ignition
system delivers an electronic pulse to fire each spark
plug. Also as discussed above, the original EFI system
does not contain the status sensing means that provides
additional input to the control unit. Accordingly, no
reasonable trier of fact could conclude that the control
unit claimed by the patent literally is present in the
accused devices. Moreover, no reasonable trier of fact
could conclude that HD’s ECM, which relies upon
different inputs, performs substantially the same
function in substantially the same way as the patented
control unit.
66a
G. Summary Judgment Of Noninfringement Is
Appropriate
Based upon the foregoing analysis, the Court concludes
that no reasonable trier of fact could conclude that ail of
the limitations set forth in claim 1, or their equivalents,
are present in either of HD’s EFI systems. The Court
therefore will grant HD’s motion for summary
judgment of noninfringement with respect to both the
original and new EFI systems, -- and deny Budde’s
corresponding motions for summary judgment of
infringement.
Ill. INVALIDITY AND UNENFORCEABILITY
HD asserts a number of affirmative defenses based
upon the alleged invalidity and unenforceability of the
348 patent: (1) invalidity under 35 U.S.C. § 102(a) on
the ground that the invention was “known or used” by
others; (2) invalidity under 35 U.S.C. § 102(b) on the
grounds that the invention was in public use and was on
sale prior to the critical date; (3) invalidity under 35
U.S.C. § 102(f) on the ground that the patent
application failed to name all inventors; (4)
unenforceability on the ground that Budde committed
inequitable conduct before the United States Patent
and Trademark Office (“PTO”); (5) invalidity under 35
U.S.C. § 103 on the ground that the invention was
obvious in light of the prior art; (6) invalidity under 35
U.S.C. § 112 on the grounds that Budde failed to
disclose the best mode to the PTO, that the patent is
not enabled without Budde’s instruction manual, that
the claims are indefinite and that the written
description requirement is not met. HD moves for
summary judgment as to its defenses under § 102(b)
67a
and § 102(f) and as to its defense of inequitable
conduct. Budde moves for summary judgment as to all
the affirmative defenses.
Because a patent issued by the PTO is entitled to a
statutory presumption of validity under 35 U.S.C. §
282, HD has the burden on these motions of proving its
defenses by clear and convincing evidence. See Oakley,
Inc. v. Sunglass Hut International, 316 F.3d 1331, 1339
(Fed. Cir. 2003). The defenses are grouped as follows
for convenience of analysis.
A. § 102(b) -- Public Use Or On Sale Prior To The
Critical Date (Cross-Motions)
Under 35 U.S.C. § 102(b), a person is entitled to a
patent unless “the invention was patented or described
in a printed publication in this or a foreign country or in
public use or on sale in this country, more than one year
prior to the date of the application for patent in the
United States.” 35 U.S.C. § 102(b). The patent
application that issued as the 348 patent was filed on
November 8, 1989, making the critical date for § 102(b)
analysis November 8, 1988. The parties have filed cross-
motions for summary judgment with respect to §
102(b). HD asserts that the patented conversion system
was in public use and on sale prior to the critical date.
Budde asserts that the patented conversion system
could not have been in public use or on sale prior to the
critical date, because it was not completed until October
1989, shortly before the patent application was filed.
Public use under § 102(b) “does not necessarily mean
open and visible in the ordinary sense; it includes any
use of the claimed invention by a person other than the
68a
inventor who is under no limitation, restriction, or
obligation of secrecy to the inventor.” New Railhead
Manufacturing, L.L.C. v. Vermeer Manufacturing, 298
F.3d 1290, 1297 (Fed. Cir. 2002). What might otherwise
appear to be public use does not raise the § 102(b) bar
if the inventor was testing claimed features of his or her
invention. Id. However, once an inventor realizes that
the invention as later claimed indeed works for its
intended purpose, further “experimentation” may
constitute a barring public use. Id.
The on sale bar under § 102(b) applies if, prior to the
critical date, the invention is the subject of a
commercial offer for sale and is ready for patenting. In
re Kollar, 286 F.3d 1326, 1829 (Fed. Cir. 2002). The bar
applies only if the device offered for sale embodies all of
the limitations of the patent claim in question or would
have rendered that claim obvious. Allen Engineering
Corp. v. Bartell Industries, 299 F.3d 1336, 1352 (Fed
Cir. 2002).
HD cites numerous instances in which Budde stated
during his deposition that the invention was completed
in 1986. For example, he stated that the invention
claimed in the 348 patent was “essentially complete” in
1986; that he did not pursue a patent in 1986 because he
lacked the money to do so; and that if he had had the
money, he could have obtained the patent in 1986.
Budde Depo., 85:20 - 87:2. He further stated that once
the invention was completed in 1986, it worked for its
intended purpose. Id. at 89:23 - 90:3. When questioned
about a 1986 interview with Hot Bike magazine that
resulted in a February 1987 article, Budde stated that
the article talked about the electronic fuel timed
injection as discussed in his patent. Id. at 90:14-24.
69a
When shown a photograph that was published with the
1987 Hot Bike article, Budde identified the photograph
as being the fuel injection system-covered by his
patent. Id. at 153:7-10.
With respect to public use, HD refers to the 1986
interview with the reporter from Hot Bike, Budde
admitted in his deposition that he let the reporter ride a
motorcycle fitted with the fuel injection system. Budde
Depo., 90:23-24. It is apparent from the article that
Budde discussed his fuel injection conversion system at
length with the reporter. With respect to on sale, HD
presents evidence -- and it does not appear to be
disputed -- that Budde distributed a flyer advertising
his fuel injection conversion system in late 1986 and/or
early 1987. Budde also placed an advertisement for
custom timed injection kits in the February 1987
edition of Motorcycle Product News. At least two
customers were given pricing information in March and
April 1987 in response to inquiries. Id. at 195:3-21;
244:2-6.
Viewed in a vacuum, the evidence presented by HD
appears to be clear and convincing proof that the
invention in question was completed in 1986; that at
least one person other than the inventor and not under
any obligations of secrecy (the Hot Bike reporter), used
the invention prior to the critical date; and that the
invention was offered for sale prior to the critical date.
However, Budde cites to other portions of his
deposition in which he stated that the invention was not
complete until after Floyd Knapp (“Knapp”), listed on
the patent application as co-inventor, made his
contribution. Knapp was the last of a series of
engineers that Budde hired to help develop the
70a
electronic portion of the invention. Earlier engineers
included Bob Lang (“Lang”), Tom Hankins (“Hankins”)
and Dale Hanson (“Hanson”). Knapp did not come onto
the project until 1989. When asked why only he and
Knapp were named as patent inventors, Budde stated
as follows: “I explained to him that I went through
other engineers before that, but they never really had
anything complete. And Floyd was the person that
made this over and refinished it and made the one that
I had that we were patenting.” Budde Depo., 532:11-15.
Budde also testified that, although Tom Hankins
developed an earlier working prototype of the
invention, “it wasn’t the full; because like I explained to
you, Floyd’s the one that basically redid the whole
thing and finished it.” Id. at 576:9-11. With respect to
the alleged offers for sale, Budde testified that he
advertised the system to see if there was market
interest. Id. at 76:7-21; 118:5-22. He also testified that
he did not offer the invention for sale until after he filed
his patent application, stating: “I know it was after I
filed for the patent. I know for sure, because I
remember talking to -- I remember once it was sent in,
the patent applied for and then you could offer it for
sale, or you could make sales.” Id. at 111:21-25. Budde
testified that he did not authorize anyone to quote
customers prices, and speculated that an employee
might have asked him for a ballpark “target price” and
passed it on to a customer. Id. at 110:10-16; 112:1-14;
242:18-243:5.
Budde also submits his own declarations in which he
States unequivocally that the invention ultimately
patented was not completed until Knapp made his
contribution; that the fuel- injection system
demonstrated to the Hot Bike reporter was an earlier
Tla
prototype but was not the patented system; and that he
could not have offered the patented system for sale
prior to the critical date because it did not exist then.
HD moves to strike Budde’s declarations as “sham,”
asserting that they flatly contradict his deposition
testimony and clearly were manufactured solely in an
attempt to avoid summary judgment. “The general rule
in the Ninth Circuit is that a party cannot create an
issue of fact by an affidavit contradicting his prior
deposition testimony.” Kennedy v. Allied Mutual
Insurance Co., 952 F.2d 262, 266 (9th Cir. 1991). This
rule does not, however, dispose of every case in which a
contradictory affidavit is introduced to explain portions
of earlier deposition testimony. Id. at 266-67. Before
striking an affidavit, the Court must make an
affirmative finding that the affidavit is an attempt to
create a “sham issue of fact” rather than the result of an
honest discrepancy, a mistake or newly discovered
evidence. Id. at 267.
The Court is not persuaded that Budde’s declarations
should be stricken as sham. While the declarations
certainly contradict portions of Budde’s_ earlier
deposition testimony, the deposition testimony itself is
contradictory and confusing. The Court is troubled by
the discrepancies in the deposition itself, and the
discrepancies between the deposition and the two
declarations at issue, but is not left with a firm
conviction that the declarations were prepared for the
purpose of creating “sham” issues of fact. The Court
notes that issues of fact exist even without reference to
the declarations, as the deposition as a whole is
anything but clear as to the date the patented invention
was completed. Moreover, the contemporaneous
72a
deposition of Knapp, as well as Knapp’s declaration, n4
indicate that Knapp did not rely upon the work of the
engineers who preceded him but designed the
electronics from scratch. Knapp Depo. at 56:17-25;
Knapp Decl. at PP 14-16. Knapp’s statements give
credence to Budde’s deposition and declaration
statements that Knapp did far more than simply tidy up
the invention, but actually came up with crucial
elements of the invention in 1989.
Based upon this record, the Court concludes that there -
are triable issues of material fact as to whether the
invention that is the subject of the 348 patent was
completed in 1986 or 1989. It follows that there are
triable issues of material fact as to application of the
public use and on sale bars, because if the invention was
not completed until 1989, as asserted by Budde, it could
not have been used or offered for sale prior to the
critical date.
B. § 102(f) -- Failure To Name All Inventors (Cross-
Motions) ,
Under 35 U.S.C. § 102(f), “[a] person shall be entitled
to a patent unless he did not himself invent the subject
matter sought to be patented.” The word “he” refers to
the inventive entity named on the patent. Pannu v.
Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998).
Accordingly, this subsection is deemed to require that a
patent accurately list the correct inventors of a claimed
invention; misjoinder or nonjoinder of the correct
inventors renders the patent invalid. Id. The parties
have filed cross-motions with respect to § 102(f).
73a
HD cites to portions of Budde’s deposition testimony in
which he describes the contributions of the engineers
who predated Knapp, specifically Lang and Hankins;
states that the invention was completed in 1986; states
that he did not name Lang as an inventor because he
-was just paid to do a job; and states that he did not
name Hankins for the same reason and because
Hankins had a drinking problem. Budde Depo., 82:16 -
83:2; 85:24 - 87:2; 99:9 - 101:17; 279:1-15: 281:1-18; 390:1 -
391:2. Budde cites to other portions of his deposition in
which he states that Knapp is the engineer who “redid”
the project. Budde Depo., 576:9-11; 532:11-15. Budde
also cites to his declarations and to Knapp’s deposition
and declaration, discussed above, all of which indicate
that Knapp did not rely upon the work of Lang and
Hankins but designed the electronics from scratch.
Based upon this record, the Court concludes that there
are triable issues of material fact as to whether Lang
and Hankins contributed to the invention that is
covered by the 348 patent. |
C. Inequitable Conduct Before The PTO (Cross-
Motions)
This defense is in essence a restatement of the defenses
discussed above. HD asserts that Budde failed to
disclose to the PTO that the invention was publicly
used and on sale prior to the critical date, and that he
- had failed to name all inventors. The parties have filed
cross-motions with respect to the inequitable conduct
defense. Because there are triable issues with respect
to the public use and on sale bars, and with respect to
the contributions of persons other than the named
inventors, there is a triable issue with respect to the
inequitable conduct defense.
74a
D. § 102(a) -- “Known Or Used By Others” (Budde’s
Motion)
‘
Under 35 U.S.C. § 102(a), a person is entitled to a
patent unless “the invention was known or used by
others in this country, or patented or described in a
printed publication in this or a foreign country, before
the invention thereof by the applicant for patent.” 35
U.S.C. § 102(a). HD asserts that if the invention of
Budde and Knapp was completed in 1989, it is invalid
because substantially the same invention was
completed by the separate team of Budde, Lang and
Hankins in 1986. Only Budde moves for summary
judgment as to this defense. As is discussed above,
there are triable issues as to whether the contributions
of Lang and Hankins are reflected in the invention that
ultimately was patented. Accordingly, judgment is not
appropriate with respect to this defense.
E.§ 103 -- Obviousness (Budde’s Motion)
Under 35 U.S.C. § 108(a), “[a] patent may not be
obtained though the invention is not identically
disclosed or described as set forth in section 102 of this
title, if the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been obvious
at the time the invention was made to a person having
ordinary skill in the art to which said subject matter
pertains.” 35 U.S.C. § 103(a). Obviousness is a
conclusion of law based upon factual determinations.
Environmental Designs, Ltd. v. Union Oil Co. of
California, 713 F.2d 698, 695 (Fed. Cir. 1983). Those
factual determinations involve: (1) the scope and
content of the prior art; (2) the differences between the
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prior art and the claimed invention; (3) the level of
ordinary skill in the pertinent art; and (4) additional
evidence, which may serve as indicia of non-
obviousness. Id.
HD claims that a motorcycle known as the Ducati 851 is
prior art, and that the Ducati 851, combined with other
prior art, renders the 348 patent invalid for
obviousness. Only Budde moves for summary judgment
with respect to the § 103 defense, asserting that the
Ducati 851 is not prior art to the 348 patent because it
was not in public use or on sale in the United States
prior to the critical date. In opposition to the motion,
HD submits documents attached to the declaration of
John Scheller. These documents were obtained from
the American Motorcyclist-Association (“AMA”), from
various publications and from the Internet, and are
sufficient to create a triable issue of material fact as to
whether the Ducati 851 was in public use or on sale in
the United States prior to the critical date.
Budde moves to strike the documents as not properly
authenticated and as hearsay. However, the Court
concludes that the documents are properly
authenticated and are admissible. A number of the
documents are periodical publications admissible under
Fed. R. Evid. 902(6). The documents produced by the
AMA are admissible as business records under Fed. R.
Evid. 803(6). The remaining documents are properly
authenticated under Fed. R. Evid. 901. Based upon
these documents, which describe the Ducati 851 and
other prior art from the relevant time frame, the Court
concludes that there are triable issues of material fact
as to whether the 348 patent is invalid for obviousness
under § 103.
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F. § 112 -- Best Mode, Enablement, Indefiniteness,
Written Description (Budde’s Motion)
HD asserts four defenses under 35 U.S.C. § 112: (1)
Budde failed to provide the best-mode for his invention
to the PTO; (2) the patent is not enabled without
Budde’s instruction manual; (3) the claims of the patent
are indefinite; and (4) the claims of the patent fail the
written description requirement of § 112. Only Budde
moves for summary judgment with respect to the § 112
defenses.
Under § 112, a patent “shall set forth the best mode
contemplated by the inventor of carrying out his
invention.” A best mode analysis has two components.
Chemcast Corp. v. Arco Industries Corp., 913 F.2d 923,
927 (Fed. Cir. 1990). First it must be determined
whether the inventor knew of a mode of practicing the
claimed invention that the inventor considered to be
better than any other at the time the inventor filed the
patent application. Id. at 928. If so, the second part of
the analysis compares what the inventor knew with
what was disclosed. Id. The relevant question is
whether the disclosure was adequate to enable one
skilled in the art to practice the best mode; in other
words, whether the inventor “concealed” the preferred
mode from the public. Id. Compliance with the best
mode requirement is a question of fact. Id. Budde’s
motion asserts that HD cannot prove by clear and
convincing evidence that he failed to satisfy the best
mode requirement. HD’s opposition references an
instruction manual that Budde prepared for his fuel
injection system. The instruction manual contains more
detailed installation instructions than are contained in
the patent. Budde’s reply asserts that this manual
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cannot constitute evidence that he failed to provide the ©
best mode to the PTO, because the manual was
prepared after the patent application was filed.
However, it could be inferred that the manual reflects
knowledge Budde had prior to its preparation, i.e., prior
to the filing of the patent application. It is unclear
whether the contents of the manual reflect-a failure to
disclose the best mode to the PTO. Accordingly, there
is a triable issue of material fact as to this defense.
Section 112 requires that “the specification shall contain
a written description of the invention, and of the
manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same.” HD
asserts that the patent is not enabled without reference
to the manual discussed above. Budde’s motion
characterizes this assertion as “ludicrous.” However,
HD cites to White’s deposition testimony that one of
ordinary skill in the art would need the manual to use
the claimed conversion system. White Depo., 278:16-25;
- 282:8-14. Accordingly, there is a triable issue of
material fact as to whether the invention is enabled
without the manual.
Section 112 requires an adequate written description of
the claimed invention and requires that the claims be So
definite that one skilled in the art would understand
what is claimed when read in light of the specification.
HD asserts that, if the patent can be construed to cover
its EFI systems as argued by Budde, the patent fails
the written description and -the definiteness
requirements because one skilled in the art would not
understand the patent to cover a number of features of
a
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the HD EFI systems. HD relies upon the declarations
of its experts, discussed extensively in connection with
the infringement analysis, for the proposition that the
patent does not clearly claim several elements of HD’s
EFI systems. Budde contends that this asser
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