Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306 (2003)
`66 U.S.P.Q.2d 1429
`
`
`
`KeyCite Yellow Flag - Negative Treatment
` Distinguished by Apple, Inc. v. Samsung Electronics Co., Ltd.,
`N.D.Cal., September 8, 2014
`325 F.3d 1306
`United States Court of Appeals,
`Federal Circuit.
`
`MOBA, B.V., Staalkat, B.V., and
`FPS Food Processing Systems,
`Inc., Plaintiffs–Cross Appellants,
`v.
`DIAMOND AUTOMATION,
`INC., Defendant–Appellant.
`
`Nos. 01–1063, 01–1083.
`|
`DECIDED: April 1, 2003.
`|
`Rehearing Denied April 25, 2003.
`
`Competitor brought declaratory action against patent
`holder alleging that patents on high-speed egg processing
`machines were invalid and not infringed. Patent holder
`brought declaratory counterclaim alleging infringement.
`The United States District Court for the Eastern
`District of Pennsylvania, Bruce W. Kauffman, J., granted
`judgment of validity for patent holder and judgment
`of non-infringement for competitor, 2000 WL 1521621,
`and an appeal was taken. The Court of Appeals
`held that: (1) competitor infringed upon guiding steps
`limitation in patent; (2) patent holder did not waive
`its argument that elements in guiding steps limitation
`could be performed simultaneously; (3) phrase, “holding
`station,” meant first location in space to which egg
`was moved, and at which egg could maintain position
`until egg was lifted simultaneously with egg at spaced-
`apart location, and phrase did not require that egg cease
`motion before it was lifted to overhead conveyor; (4)
`substantial evidence supported jury's finding that accused
`product's method did not satisfy “downwardly and away”
`limitation; (5) remand was warranted for further inquiry
`into whether competitor indirectly infringed particular
`claim; (6) substantial evidence supported jury's finding
`that particular claim was not invalid for lack of adequate
`written description; and (7) competitor failed to show that
`particular claim was invalid for lack of enablement.
`
`Affirmed in part, reversed in part, and remanded.
`
`Rader, Circuit Judge, filed a concurring opinion.
`
`Bryson, Circuit Judge, filed a concurring opinion.
`
`Attorneys and Law Firms
`
`*1309 Jon A. Baughman, Pepper Hamilton LLP, of
`Philadelphia, PA, argued for plaintiffs-cross appellants.
`With him on the brief were Erik N. Videlock and Nicole
`D. Galli. Of counsel on the brief were Marvin Petry and
`Linda R. Poteate, Larson & Taylor, of Alexandria, VA.
`
`Albert J. Breneisen, Kenyon & Kenyon, of New York,
`NY, argued for defendant-appellant. With him on the
`brief were John W. Bateman and Sheila Mortazavi.
`
`Before RADER, SCHALL, and BRYSON, Circuit
`Judges.
`
`Opinion
`
`Opinion for the court filed PER CURIAM. Concurring
`opinion filed by Circuit Judges RADER, and BRYSON.
`
`PER CURIAM.
`
`At trial, a jury in the United States District Court for
`the Eastern District of Pennsylvania found that Moba,
`B.V., Staalkat, B.V., and FPS Food Processing Systems,
`Inc. (collectively FPS) did not infringe patents assigned
`to Diamond Automation, Inc. (Diamond). See Moba,
`B.V. v. Diamond Automation, Inc., No. 95–CV–2631,
`2000 U.S. Dist. LEXIS 15483, at *43, 2000 WL 1521621
`(E.D.Pa. Sept. 29, 2000). In response to a motion for
`judgment as a matter of law (JMOL), the district court
`correctly discerned that substantial evidence supports
`the jury's verdict that machines sold by FPS and used
`by its customers do not practice the method of United
`States Patent No. 4,519,494 ('494 patent). However, no
`reasonable jury could find that machines sold by FPS
`and used by its customers do not practice the method of
`United States Patent No. 4,519,505 ('505 patent). Thus,
`this court affirms-in-part, reverses-in-part, and remands
`for a determination of damages.
`
`I.
`
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`Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306 (2003)
`66 U.S.P.Q.2d 1429
`
`Diamond is a Michigan corporation that manufactures
`and sells high-speed egg processing machines to sort
`batches of eggs into different categories by weight and
`quality. Diamond developed these machines during the
`early 1980s with technology that significantly increased
`the processing speed for eggs. Diamond obtained various
`patents covering aspects of that technology, including the
`′ 494 and ′505 patents, and United States Patent Nos.
`4,569,444 ('444 patent) and 4,505,373 ('373 patent). While
`Diamond asserted all of these patents at trial, only the
`′505 and ′494 patents appear in this appeal. The ′505
`patent relates generally to “front end” processing of eggs,
`while the ′494 patent relates generally to “back end”
`processing of eggs.
`
`The “front end” process first washes the eggs, then
`introduces them into a candling station where a high
`intensity light source checks the eggs for defects such as
`blood spots or cracks. The process then weighs the eggs.
`A computer stores this information for use in sorting the
`eggs at a later point. Figure 2 of the ′505 patent illustrates
`an embodiment of the invention designed to weigh eggs
`and to lift them to an overhead conveyor.
`
`Claim 24 of the ′505 patent corresponds generally to the
`subject matter of Fig. 2:
`
`24. A method for advancing a plurality of rows of eggs
`from a candling station through a plurality of weighing
`stations in an egg grading apparatus, comprising,
`
`conveying eggs from said candling station to elongated
`guide means disposed adjacent to said candling station,
`
`continuously advancing said eggs on said guide means
`through said weighing stations,
`
`simultaneously with said step of advancing, weighing
`said eggs at said weighing stations,
`
`guiding said eggs from said weighing stations first to a
`plurality of egg holding stations located downstream of
`said guide means and then to a plurality of locations
`longitudinally spaced-apart from and substantially
`horizontally co-planar with said holding stations,
`
`guiding further eggs to said plurality of holding stations,
`and lifting said eggs simultaneously from said holding
`stations and said plurality of longitudinally spaced-
`apart locations.
`
`*1310 Fig. 2
`
`′505 patent, col. 13, ll. 33–54 (emphasis added).
`
`The “back end” process receives eggs from “front end”
`processing and transfers them to an overhead conveyor.
`This conveyor carries the eggs in rows until dropping
`off each individual egg at a different receiving station
`based on the information *1311 in the computer. At
`each station, the eggs are either packaged or discarded.
`Figure 8 of the ′494 patent illustrates an embodiment of
`the invention designed to receive eggs from an overhead
`conveyor for transport to a packer:
`
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`Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306 (2003)
`66 U.S.P.Q.2d 1429
`
`conveying said eggs away from said receiving means on
`second conveyor means,
`
`said step of releasing comprising releasing said
`eggs successively from said first conveyor means
`at said receiving station along the length of said
`receiving means, and said step of conveying comprising
`conveying said eggs individually *1312 in rows away
`from said receiving means on said second conveyor
`means.
`
`′F494 patent, col. 12, ll. 9–40 (emphasis added).
`
`Moba, B.V., and Staalkat, B.V., are Dutch companies
`that also manufacture and sell high-speed egg processing
`machines,
`such as
`the Moba Omnia and
`the
`Staalkat Selecta. FPS Food Processing, a Pennsylvania
`corporation, sells Moba's and Staalkat's egg processing
`machines in the United States. In the United States
`market, FPS and Diamond are the only significant
`competitors in the manufacture and sale of high-speed egg
`processing machines.
`
`In 1994, Diamond filed a patent infringement suit in
`the United States District Court for the Eastern District
`of Michigan against FPS. The district court dismissed
`that case for lack of personal jurisdiction. In 1995, FPS
`filed suit in the United States District Court for the
`Eastern District of Pennsylvania seeking a declaratory
`judgment that the ′444, ′494, ′373, and ′ 505 patents
`are invalid and not infringed by the Moba Omnia and the
`Staalkat Selecta. Diamond filed a declaratory judgment
`counterclaim that the patents are valid and infringed.
`After discovery, the district court construed the patent
`claims. Then a jury heard the case from January 28,
`2000 to February 25, 2000. On February 22, 2000, before
`the jury retired to consider its verdict, Diamond moved
`for entry of JMOL under Rule 50(a) of the Federal
`Rules of Civil Procedure that FPS infringed and induced
`infringement of the four patents. In its February 25,
`2000 verdict, the jury found that those patents were
`not invalid and not infringed. On March 6, 2000, the
`district court denied Diamond's February 22, 2000 JMOL
`motion, and entered judgment in favor of Diamond on
`the validity issues and in favor of FPS on the infringement
`issues. Diamond renewed its motion for JMOL regarding
`infringement, which the district court again denied.
`
`Claim 28 of the ′494 patent corresponds generally to the
`subject matter of Fig. 8:
`
`28. A method of transferring eggs delivered in spaced-
`apart aligned relationship by a first conveyor means to
`a receiving station, comprising the steps of,
`
`delivering eggs to said receiving station in parallel
`spaced apart rows on said first conveyor means,
`
`releasing eggs from said first conveyor means at the
`receiving station in accordance with a predetermined
`requirement,
`
`positioning a receiving means below the first conveyor
`means so as to receive therein and deliver to a common
`member the eggs released from the parallel spaced-apart
`rows of the first conveyor means,
`
`receiving said eggs in the receiving means disposed at
`said receiving station whereby the released eggs from
`both said parallel spaced apart rows of eggs fall on and
`are received by said receiving means,
`
`rotating the receiving means downwardly and away from
`said first conveyor means to urge the received eggs
`downwardly,
`
`guiding said eggs received in said receiving means
`downwardly and away from said receiving means, and
`
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`Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306 (2003)
`66 U.S.P.Q.2d 1429
`
`Diamond argues that claim 24 of the ′505 patent and
`claim 28 of the ′ 494 patent cover methods used in
`both the Moba Omnia and the Staalkat Selecta. Diamond
`also contends that FPS has induced its customers to
`infringe those claims by selling them the Moba Omnia
`and the Staalkat Selecta and by training them to use
`those machines. Diamond appeals, therefore, the district
`court's denial of JMOL on these issues. FPS cross-appeals
`the jury's determination that claim 24 of the ′505 patent
`and claim 28 of the ′494 patent are not invalid. Because
`Diamond no longer pursues any claims arising from the
`′444 or ′373 patents, or claim 34 of the ′494 patent,
`this court need not address those questions. This court
`has jurisdiction over the present appeal under 28 U.S.C. §
`1295(a)(1) (2000).
`
`II.
`
`[1]
` This court reviews claim construction without
`deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
`1454, 46 USPQ2d 1169, 1172 (Fed.Cir.1998) (en banc).
`This court accords substantial deference to a jury's factual
`application of a claim construction to the accused device
`in an infringement determination. Embrex, Inc. v. Serv.
`Eng'g Corp., 216 F.3d 1343, 1348–49, 55 USPQ2d 1161,
`1164 (Fed.Cir.2000).
`
`This court reviews a district court's denial of JMOL
`without deference, reversing only if substantial evidence
`does not support a jury's factual findings or if the law
`cannot support the legal conclusions underpinning the
`jury's factual findings. Cybor Corp., 138 F.3d at 1454. “A
`district court may overturn a jury's verdict only if upon
`the record before the jury, reasonable jurors could not
`have reached that verdict.” LNP Eng'g Plastics, Inc. v.
`Miller *1313 Waste Mills, Inc., 275 F.3d 1347, 1353, 61
`USPQ2d 1193, 1197 (Fed.Cir.2001).
`
`language defines claim scope. SRI Int'l v.
`Claim
`Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227 USPQ
`577, 586 (Fed.Cir.1985) (en banc). As a general rule, claim
`language is given the ordinary meaning of the words in
`the normal usage of the field of the invention. Toro Co.
`v. White Consol. Indus., 199 F.3d 1295, 1299, 53 USPQ2d
`1065, 1067 (Fed.Cir.1999). Nevertheless, the inventor may
`act as his own lexicographer and use the specification
`to supply new meanings for terms either explicitly or by
`implication. Markman v. Westview Instruments, Inc., 52
`
`F.3d 967, 979, 34 USPQ2d 1321, 1330 (Fed.Cir.1995) (en
`banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d
`577, 38 USPQ2d 1461 (1996). Thus, to help determine the
`proper construction of a patent claim, a construing court
`consults the written description, and, if in evidence, the
`prosecution history. Id. at 979–80.
`
`[2]
` After claim construction, the fact finder compares
`the properly construed claim with the allegedly infringing
`devices. Kemco Sales, Inc. v. Control Papers Co., 208
`F.3d 1352, 1360, 54 USPQ2d 1308, 1312 (Fed.Cir.2000).
`Infringement requires the patentee to show that the
`accused device contains or performs each limitation of
`the asserted claim, Mas–Hamilton Group v. LaGard,
`Inc., 156 F.3d 1206, 1211, 48 USPQ2d 1010, 1014–15
`(Fed.Cir.1998), or an equivalent of each limitation not
`satisfied literally, Warner–Jenkinson Co. v. Hilton Davis
`Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d
`146 (1997). The sale or manufacture of equipment to
`perform a claimed method is not direct infringement
`within the meaning of 35 U.S.C. § 271(a). Mendenhall v.
`Cedarapids, Inc., 5 F.3d 1557, 1579, 28 USPQ2d 1081,
`1100 (Fed.Cir.1993).
`
`In this case, the record shows that FPS's customers use the
`method of the Moba Omnia to process eggs in the United
`States. Hence, to show infringement Diamond needs only
`to prove that the Moba Omnia performs the method of
`claim 24 when it processes eggs.
`
`“guiding steps”
`
` [4]
`[3]
` Based upon its claim construction, the district
`court instructed the jury, in relevant part, that the guiding
`steps of claim 24 “are defined as follows: (1) Carrying eggs
`to holding stations; (2) Carrying eggs from the holding
`stations to the spaced apart location; and (3) Carrying
`more eggs to the holding stations.” At trial, Diamond
`did not object to either the district court's construction
`of “guiding steps” or to the jury instructions about that
`term. Following the jury verdict of non-infringement,
`the district court denied Diamond's JMOL motion.
`In its denial, the district court acknowledged that its
`interpretation of guiding steps left undetermined whether
`the claim requires sequential performance of the steps.
`Then the trial court reasoned that the jury reasonably
`could have determined from the testimony presented that
`sequential performance is a necessary characteristic of the
`
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`Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306 (2003)
`66 U.S.P.Q.2d 1429
`
`“guiding steps.” The district court's instructions to the
`jury did not require sequential performance. In essence,
`the district court allowed the jury to add an additional
`limitation to the district court's construction of “guiding
`steps.” In this, the district court erred. Claim construction
`is a question of law and is not the province of the jury.
`Markman, 52 F.3d at 979.
`
`This error takes on significance in this appeal because the
`jury found that the Moba Omnia does not infringe. The
`record before us discloses no alternative basis upon which
`a reasonable jury could find *1314 that the Moba Omnia
`does not infringe, other than that the Moba Omnia does
`not satisfy the guiding steps limitation. Thus, by allowing
`the jury to import an additional limitation into the claims,
`the district court fundamentally altered the verdict.
`
` [6]
`[5]
` Because Diamond did not object to the district
`court's claim construction or instructions to the jury,
`FPS contends that Diamond has waived its right to
`argue the interpretation of “guiding steps” on appeal.
`The doctrine of waiver as applied to claim construction
`prevents a party from offering a new claim construction
`on appeal. Interactive Gift Express v. Compuserve Inc., 256
`F.3d 1323, 1346, 59 USPQ2d 1401, 1418 (Fed.Cir.2001).
`Moreover, a party's objection to a jury instruction is
`waived unless that party objects to the instruction before
`the jury retires to consider the verdict. Fed.R.Civ.P. 51.
`In this case, however, waiver does not bar Diamond's
`argument. Diamond does not now contest the district
`court's instruction to the jury on the meaning of “guiding
`steps.” Essentially Diamond does not wish to alter the
`district court's claim construction on appeal, but seeks
`enforcement of the trial court's claim construction.
`
`Diamond has argued consistently, in its JMOL motions
`and in its argument on appeal here, that “[n]either the
`language of the claim itself nor the Court's order defining
`this language requires that the ‘guiding steps' occur
`separately.” Thus, Diamond has consistently protested
`the error that this court currently reviews on appeal.
`Thus, this court will not apply waiver to prevent Diamond
`from protecting the original breadth of the binding claim
`construction presented by the district court to the jury
`from post facto imposition of an additional limitation.
`Interactive Gift Express, 256 F.3d at 1346. Application of
`waiver in this case would essentially render unreviewable
`the district court's error. In sum, Diamond has not waived
`
`its argument that the guiding steps may be performed
`simultaneously.
`
`language of claim 24
`the plain
`Nowhere does
`require separate and consecutive performance of the
`various guiding steps. Rather, such a construction
`is contrary to the teachings of the ′505 patent.
`For example, the specification explicitly describes
`simultaneous performance of guiding steps two and
`three. ′505 patent, col. 5, l. 54 to col. 6, l. 3.
`Moreover, simultaneous performance of the guiding steps
`is consistent with operating at a significant rate of speed, a
`stated object of the invention. ′505 patent, col. 2, ll. 3–7.
`The prosecution history is also consistent with this claim
`construction. Hence, this court, like the district court as
`well, construes the guiding steps to include simultaneous
`performance.
`
`FPS argues that, irrespective of whether claim 24
`allows simultaneity, the method practiced by the Moba
`Omnia cannot infringe literally because it does not
`perform entirely at least one of the required guiding
`steps. This argument simply repackages FPS's argument
`for sequential performance of the guiding steps. FPS's
`argument focuses on distinctions between the Moba
`Omnia and the patentee's preferred embodiment for
`the claim 24 method. This court has discredited an
`infringement analysis for method claims that examines
`distinctions between implementing apparatuses. Amstar
`Corp. v. Envirotech Corp., 730 F.2d 1476, 1482, 221
`USPQ 649, 653 (Fed.Cir.1984) (“[T]he law recognizes
`the irrelevance of apparatus distinctions in determining
`infringement of process claims.”).
`
`Like the device of Fig. 2, the Moba Omnia lifts eggs to an
`overhead conveyor for transport. To position the eggs for
`lifting, the Moba Omnia employs a continuously moving
`transport conveyor that slows without stopping as each
`egg passes under the overhead conveyor. In these *1315
`actions, the Moba Omnia practices all three guiding steps.
`With a focus on the movement of the eggs (the subject
`matter of the method claim) in the Moba Omnia, rather
`than the movement of the Moba Omnia itself, each of
`these steps is evident. As required by the first guiding
`step of claim 24, the Moba Omnia moves a first egg to
`a holding station. The Moba Omnia then moves the first
`egg to a spaced-apart location, the second guiding step.
`Simultaneously, the Moba Omnia moves a second egg
`to the holding station to perform the third guiding step.
`
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`Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306 (2003)
`66 U.S.P.Q.2d 1429
`
`The first and second eggs are then ready for simultaneous
`lifting. In sum, the record evidence provides no basis upon
`which a reasonable jury could find that the Moba Omnia
`does not perform the three guiding steps of the ′505
`patent's claim 24.
`
`“holding station”
`
`[7]
` The district court correctly construed the “holding
`station” of claim 24 of the ′505 patent as “a first location
`in space to which an egg is moved and at which the egg may
`maintain position until the egg is lifted simultaneously
`with an egg at a ‘spaced-apart location.’ ” Nonetheless,
`FPS argues that the district court's construction requires
`that an egg cease motion before the lift to the overhead
`conveyor. The claims simply do not require a specific
`temporal limitation associated with the term “holding.”
`Indeed the specification states that the holding station
`positions an egg relative to the overhead conveyor for
`pick-up to the overhead conveyor. See, e.g., ′505 patent,
`col. 2, ll. 44–58, col. 6, ll. 4–8. The specification actually
`speaks of eggs that are “held” as they move. Id. at col. 5,
`ll. 2–6 (“The disks each include a plurality of peripheral
`recesses which are disposed in horizontal alignment so
`as to receive and hold eggs advanced along the guide
`bars as they are transferred to the holding stations.”).
`Moreover, the ordinary meaning of “to hold” is “to
`keep in position, guide, control, or manage.” The Oxford
`English Dictionary (2d ed. 1989). This meaning also
`imposes no requirement that an object remain stationary.
`
`Moreover, as this court has repeatedly counseled, the
`best indicator of claim meaning is its usage in context
`as understood by one of skill in the art at the time of
`invention. Markman, 52 F.3d at 986. In this instance,
`the context is the swift and safe movement of eggs. As
`indicated by the specification, the process holds the egg
`at the same time it moves the egg, thus achieving the
`dual goals of precision and speed. The process may hold
`and move an egg at the same time. In sum, the district
`court correctly construed the term “holding.” The term
`“holding station” also does not require lack of motion.
`
`To show that the Moba Omnia does not include a holding
`station, FPS relies entirely upon evidence that eggs in the
`Moba Omnia do not stop before they are picked up. As
`described above, however, the claim does not require a
`stationary holding station. To satisfy the holding station
`
`requirement, the Moba Omnia needs only employ “a
`first location in space to which an egg is moved and at
`which the egg may maintain position until the egg is lifted
`simultaneously with an egg at a ‘spaced-apart location,’ ”
`whether or not eggs stop before the pick up. The record
`shows that the Moba Omnia employs such a first location.
`In view of the undisputed record evidence, no reasonable
`jury could find that the Moba Omnia does not move an
`egg to a holding station as claimed.
`
`In sum, the evidence of record consistent with the correct
`claim construction shows that the method performed by
`the Moba Omnia includes all three “guiding steps” and
`that the Omnia moves eggs to a “holding station.” Because
`no reasonable jury could find on the record evidence that
`*1316 the method performed by the Moba Omnia does
`not infringe literally and directly claim 24 of the ′505
`patent, the district court erred in not granting JMOL on
`that issue.
`
`B.
`
`[8]
` Turning to claim 28 of the ′494 patent, the parties
`dispute the district court's construction of the limitation
`“predetermined sequence” and two limitations containing
`the phrase “downwardly and away.” Because construction
`of the first “downwardly and away” limitation disposes of
`the question of infringement, this court need not address
`the other limitations.
`
`The first “downwardly and away” limitation recites:
`“rotating the receiving means downwardly and away from
`said first conveyor means to urge the received eggs
`downwardly.” The district court construed this claim
`language: “[T]he receiving means * must be rotated
`downwardly (i.e. toward the ground) and be rotated away
`from the main egg-carrying conveyor from which the
`eggs are released.” With some slight clarification, the
`district court construed this claim limitation correctly. The
`slight clarification notes that the limitation constrains the
`motion of the received eggs as well as the motion of the
`receiving means. Specifically, the first “downwardly and
`away” limitation also requires that the receiving means
`move the eggs downwardly.
`
`*
`
`The district court determined that the language
`“receiving means” does not invoke § 112, ¶ 6. As the
`district court's failure to construe this limitation as
`
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`66 U.S.P.Q.2d 1429
`
`means-plus-function is not disputed by the parties,
`this court offers no judgment on the correctness of
`that determination.
`
`The claim recites that the receiving means “urge[s] the
`received eggs downwardly.” The patent does not explicitly
`define “urge.” In one sense, “to urge” means simply to
`press or to push. See, e.g., The Oxford English Dictionary
`(2d ed. 1989). This meaning of “urge,” however, would
`place the preferred embodiment outside the claim scope.
`Vitronics, at 1583 (a claim interpretation that puts the
`preferred embodiment outside the claim is “rarely, if ever,
`correct and would require a highly persuasive evidentiary
`support.”). Moreover this definition of “urge” makes
`infringement depend on the downward force exerted on
`the eggs by the rotating receiving means. A receiving
`means, such as that shown in Fig. 4 of the ′494
`patent, may rotate downward slowly and support the
`received eggs against the force of gravity. In doing so,
`the downward rotation would exert an upward force on
`the received eggs, i.e., it would “urge” the received eggs
`upward rather than downward as claim 28 requires. The
`patent does not show, however, that the downward force
`is a defining limitation.
`
`Another ordinary meaning of “to urge” avoids exclusion
`of the preferred embodiment from the claims. Specifically,
`“to urge” may mean “[t]o cause to move, hasten, or gather
`speed.” The Oxford English Dictionary (2d ed.1989). This
`definition receives support from the patent specification.
`The specification clarifies that “to urge” means broadly
`to move or to carry and that the receiving means may
`slow the motion of the eggs. For example, the patent
`specification notes that the receiving means “reduce[s]
`the speed at which the eggs fall and gently move[s]
`the eggs downwardly and outwardly away from carriage
`assemblies.” ′494 patent, col. 5, ll. 55–57 (emphases
`added); see also Id. col. 6, ll. 64–64, col. 7, ll. 1–3. Thus, in
`the context of this patent, this court employs *1317 the
`broader meaning of “to urge,” namely, to cause to move.
`
`The Staalkat Selecta employs a brush belt to receive eggs,
`as shown below. Once the brush belt receives the eggs,
`it transports the eggs horizontally to a comb mechanism
`that lifts the eggs from within the bristles of the brush
`belt. The comb then guides the eggs downward to a second
`transport conveyor.
`
`At trial, FPS presented substantial evidence that the
`brush belt of the Staalkat Selecta does not move the
`eggs downwardly as required by the literal language of
`claim 28. FPS also presented substantial evidence to
`support that the Staalkat Selecta does not infringe claim
`28 under the doctrine of equivalents. For example, Dr.
`Kirk, an expert witness for FPS, testified that the Selecta's
`brush belt does not guide eggs downwardly. Rather,
`the brush guides eggs over a linear path rather than a
`curved path. As a result, the eggs moved upward rather
`than downward relative to their initial position upon
`receipt in the brush belt. This evidence supports the jury's
`verdict of no infringement. Even applying the doctrine
`of equivalents, the Staalkat Selecta performs a different
`function in a different way to obtain a different result from
`the language of the claim limitation. Thus, substantial
`evidence supports the jury's finding that the Staalkat
`Selecta's method does not satisfy the first “downwardly
`and away” limitation of claim 28, either literally or under
`the doctrine of equivalents. Hence, this court affirms the
`district court's denial of JMOL. Because the Staalkat
`Selecta does not satisfy the first “downwardly and away”
`limitation, this court need not reach other potential
`grounds to support the jury's verdict.
`
`*1318 III.
`
`[9]
` [10]
` The Patent Act imposes indirect infringement
`liability on a party who actively induces others to directly
`infringe a patent. 35 U.S.C. § 271(b) (1994). Diamond
`appeals the district court's denial of its motion for
`JMOL that FPS indirectly infringes claim 24 of the ′505
`patent and claim 28 of the ′494 patent. In reviewing
`the district court's denial of Diamond's JMOL motion,
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
`
`7
`
`

`

`Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306 (2003)
`66 U.S.P.Q.2d 1429
`
`this court presumes that the jury resolved all factual
`disputes in favor of the prevailing party and leaves
`those findings undisturbed as long as substantial evidence
`supports them. SIBIA Neurosciences, Inc. v. Cadus Pharm.
`Corp., 225 F.3d 1349, 1354, 55 USPQ2d 1927, 1930
`(Fed.Cir.2000).
`
`The district court denied Diamond's JMOL on
`inducement because the jury determined that “none of the
`machines sold by FPS infringe any of the patents in suit.”
`Moba, No. 95–CV–2631, 2000 U.S. Dist. LEXIS 15483, at
`*43. Because this court upholds the verdict that claim 28
`of the ′494 patent is not directly infringed, the trial court
`correctly determined that FPS does not indirectly infringe
`that claim. Met–Coil Sys. Corp. v. Korners Unlimited, Inc.,
`803 F.2d 684, 687, 231 USPQ 474, 477 (Fed.Cir.1986)
`(“[T]here can be no inducement of infringement without
`direct infringement by some party.”). However, this court
`has held that the Moba Omnia method directly infringed
`claim 24 of the ′505 patent. Therefore, the issue of
`infringement by FPS depends on whether FPS “actively
`induce[d] infringement” within the meaning of 35 U.S.C.
`§ 271(b).
`
`Although § 271(b) does not use the word “knowingly,” this
`court has uniformly imposed a knowledge requirement.
`Water Tech. Corp. v. Calco, Ltd., 850 F.2d 660, 7 USPQ2d
`1097 (Fed.Cir.1988); C.R. Bard, Inc. v. Advanced Card.
`Sys., Inc. 911 F.2d 670, 15 USPQ2d 1540 (Fed.Cir.1990).
`This court defined the generally applicable intent standard
`in Hewlett–Packard Co. v. Bausch & Lomb, Inc., 909 F.2d
`1464, 1468–69, 15 USPQ2d 1525, 1528–29 (Fed.Cir.1990).
`In Hewlett–Packard, this court held that “proof of actual
`intent to cause the acts which constitute the infringement
`is a necessary prerequisite to finding active inducement”
`under § 271(b). Hewlett–Packard, 909 F.2d at 1469.
`Hewlett–Packard Co. (HP), was the assignee of the
`LaBarre patent on aspects of X–Y plotter technology.
`Bausch & Lomb, Inc. (B & L), manufactured and sold
`X–Y plotters and a variety of other electronic equipment
`through a division that it sold to Ametek, Inc. HP alleged
`that B & L induced infringement of the LaBarre patent
`by its sale to Ametek. This court found, however, that the
`sale did not evince an intent to induce infringement but,
`rather, merely an intent to sell at the highest price. This
`court particularly noted that B & L had no interest in,
`nor control over, Ametek's use of the purchased division.
`Implicit in this court's determination was that Ametek
`could have employed the purchased division in a wide
`
`range of non-infringing activity. Moreover, this court
`noted that the agreement to develop a non-infringing
`plotter established, if anything, B & L's intent to avoid any
`inducement of infringement.
`
`In this case, the only intent required of FPS is the intent
`to cause the acts that constitute infringement. Hewlett–
`Packard, 909 F.2d at 1469. Although Diamond argues
`that the record shows that FPS sold its customers the
`Moba Omnia and trained them to use the infringing
`method, active inducement is nonetheless a factual
`inquiry. Accordingly, this court declines to make a
`determination that no reasonable jury could conclude that
`FPS did not intend that its customers perform acts that
`constitute infringement. Therefore, this court remands
`for further inquiry into *1319 whether FPS indirectly
`infringes claim 24 of the ′505 patent.
`
`IV.
`
`The Patent Act erects a presumption of validity for an
`issued patent. 35 U.S.C. § 282 (1994). Therefore, invalidity
`requires clear and convincing evidence. Id.; Advanced
`Display Sys., Inc. v. Kent State