NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not
citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
05-1201
MINEBEA CO., LTD.,
Plaintiff-Appellant,
v.
THINK OUTSIDE, INC.,
Defendant-Appellee,
and
PERIPHERAL TECHNOLOGY, INC.,
Defendant-Appellee.
________________________
DECIDED: January 25, 2006
________________________
Before NEWMAN, LOURIE, and SCHALL, Circuit Judges.
LOURIE, Circuit Judge.
Minebea Co., Ltd. appeals from the decision of the United States District Court
for the Southern District of California granting summary judgment of noninfringement of
U.S. Patent 4,433,225 in favor of Think Outside, Inc. and Peripheral Technology, Inc.
Minebea Co., Ltd. v. Think Outside, Inc., No. 01-CV-771 (S.D. Cal. Sept. 29, 2003)
(“Decision”). Because the district court properly construed the claim term “pivot” and
properly determined that the accused product did not meet that limitation, either literally
or under the doctrine of equivalents, we affirm.
BACKGROUND
The ’225 patent, assigned to Minebea, discloses a mechanism for preventing an
“oddly-shaped” keytop, such as an L-shaped keytop, on a computer keyboard or an
electric typewriter from tilting and binding when it is pressed down on an area of the
keytop surface that is not directly above the keyswitch. The keytop is the exterior part
of the keyboard that a typist presses down on in order to input information into a
computer or to type on a typewriter. A keyswitch lies above a circuit board and
translates the mechanical force imparted on the keytop into an electrical signal.
Keytops are commonly square or rectangular in shape, but can also be “oddly-shaped,”
such as the L-shaped keytop shown below in figure 1. ’225 patent, col. 1, ll. 23-25. The
L-shaped keytop consists of a main portion (14) that is directly above the keyswitch
(18), and a stem portion (16), which is cantilevered from the main portion. According to
the specification, “oddly-shaped” keytops may be advantageous over square and
rectangular keytops for certain machine functions because they increase “the useable
keytop area . . . without upsetting the esthetics of the keyboard.” Id., col. 1, ll. 27-31. A
shortcoming of “oddly-shaped” keytops, however, is that they are prone to tilting and
binding when the typist presses down on the stem portion instead of the main portion.
The patented invention addresses this shortcoming by placing a leveling mechanism
underneath the stem portion of the “oddly-shaped” keytop. Id., col. 1, l. 64 to col. 2, l. 5.
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The leveling mechanism disclosed in the patent specification consists of a pair of
lever arms (24, 26) that are joined by a central pivot. The central pivot is formed by a
shaft that extends from the middle of one of the two lever arms (24) and locks into a
collar in the other lever arm (26). At the ends of both lever arms are studs (34, 36, 38,
32) that protrude into a slot or a U-shaped opening (52, 54, 56, 58, respectively). As
shown in figure 3, when the keytop is in its non-actuated position, the studs are in an
intermediate position in their slots. As shown in figure 4, when the keytop is pressed
down, the central pivot rotates and the studs at the ends of the lever arms rotate and
slide outwardly towards the ends of their slots. According to the patent specification:
“Pressing on any side of the keytop will cause one side of the scissors-like linkage
formed from lever arms 24 and 26 to close. Closing one side will naturally close the
other, pulling the keytop down parallel to circuit board 70.” Id., col. 4, ll. 19-25.
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On May 3, 2001, Minebea filed suit against Think Outside and Peripheral
Technology in the United States District Court for the Southern District of California for
infringement of the ’225 patent. The product accused of infringement is the Stowaway
Portable Keyboard (“SPK”), which is sold by Think Outside and manufactured by
Peripheral Technology. The SPK’s leveling mechanism consists of a rectangular outer
linking frame that fits over the perimeter of a rectangular inner linking frame. The SPK’s
outer and inner linking frames are comparable to the lever arms disclosed in the ’225
patent’s leveling mechanism. The outer and inner linking frames are connected to each
other by a central pin in an intermediate portion of the inner frame that fits into a slot in
an intermediate portion of the outer frame. The SPK’s pin and slot structure is
comparable to the central pivot disclosed in the ’225 patent. According to Think Outside
and Peripheral Technology (hereinafter, collectively “Think Outside”), the SPK’s central
slot is elongated and allows the aforementioned pin to rotate and slide when the keytop
is pressed down. The linking frames also have studs at their ends. The two upper
studs fit into clamps molded on the underside of the keytop. The two lower studs fit into
protrusions extending upward from a base plate. The SPK’s studs are comparable to
joints at the ends of the lever arms disclosed in the patent. According to Think Outside,
the studs rotate when the keytop is pressed down, but they are prevented from sliding
due to their attachment to the keytop or base plate.
On January 7, 2003, Think Outside filed a motion for summary judgment of
noninfringement with respect to the SPK. Decision, slip op. at 1. On September 29,
2003, the court granted the motion. Id. The only independent claim asserted by
Minebea is claim 1. Claim 1, in pertinent part, reads as follows:
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A keytop levelling [sic] mechanism for use in conjunction with:
***
said levelling [sic] mechanism comprising:
a pair of lever arms joined at intermediate portions thereof by
a pivot to form a scissors-like linkage having first, second,
third, and fourth ends;
means for pivotally mounting said first and second ends to
longitudinally opposed ends of said cantilevered portion;
means for pivotally mounting said third and fourth ends to
separate joints adjacent said circuit board under said
cantilevered portion; and
means for enabling at least two of said first, second, third,
and fourth ends to slide in addition to pivot.
’225 Patent, col. 4, l. 61 to col. 5, l. 11.
Prior to granting Think Outside’s motion for summary judgment of
noninfringement, the district court issued an order construing various limitations of claim
1, including “a pair of lever arms joined at intermediate portions thereof by a pivot to
form a scissors-like linkage.” Minebea Co. LTD. v. Think Outside, Inc., No. 01-CV-771
(S.D. Cal. Aug. 19, 2002) (“Claim Construction”). The term “pivot” in claim 1 was
construed to mean “a structure about which something turns or rotates that is fixed
relative to the two arms.” Decision, slip op. at 7. To arrive at its construction of the term
“pivot,” the court consulted various dictionaries, none of which, according to the court,
expressly defined “pivot” as allowing for sliding motion. Claim Construction, slip op. at
12. Upon reviewing the specification, the court also noted that when both pivoting and
sliding motion were envisioned for a particular structure of the leveling mechanism, viz.,
the articulating joints at the ends of the lever arms, the claims and the written
description expressly provided for such motion. Id.
Relying on its earlier claim constructions, the district court granted Think
Outside’s motion for summary judgment of noninfringement with respect to the SPK. In
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doing so, the court concluded that the SPK did not meet either the “pivot” limitation or
the two “means for pivotally mounting” limitations. With respect to the “pivot” limitation,
the court determined that the SPK did not literally meet that limitation because its pin
and slot structure allowed for sliding motion, and thus was not a fixed pivot as the
court’s construction of that term required. According to the court, “if the tops of the
scissor arms of the SPK are fixed to the keytop, there must be sliding motion at least at
the center connection of the arms in order for the mechanism to move up or down.”
Decision, slip op. at 8. The court also concluded that the SPK did not meet the “pivot”
limitation for purposes of the doctrine of equivalents. According to the court, “it is clear
that the ‘way’ the SPK functions is fundamentally different from the ’225 patent,” viz., if
the SPK contained a fixed central pivot instead of a pin and slot structure, it could not
function. Id., slip op. at 9.
The district court entered final judgment on November 24, 2004. Minebea timely
appealed, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review a district court’s grant of summary judgment de novo, reapplying the
same standard used by the district court. Ethicon Endo-Surgery, Inc. v. U.S. Surgical
Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). Summary judgment is appropriate if there
is no genuine issue as to any material fact and the moving party is entitled to a
judgment as a matter of law. Fed. R. Civ. P. 56(c). “The evidence of the non-movant is
to be believed, and all justifiable inferences are to be drawn in his favor.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Claim construction is an issue of law,
Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en
05-1201 6
banc), that we also review de novo, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1456 (Fed. Cir. 1998) (en banc).
I.
On appeal, Minebea argues that the district court’s decision of noninfringement
was based on an erroneous construction of the claim term “pivot.”1 According to
Minebea, by construing the term “pivot” to exclude sliding motion, the court did not give
the term its ordinary meaning. Minebea contends that the ordinary meaning of “pivot”
does not preclude sliding motion. Minebea also asserts that the patentee did not
disclaim sliding motion in its central pivot in either the patent specification or the
prosecution history. Although the specification expressly provides that other articulating
joints in the claimed invention can have both pivoting and sliding motion, Minebea
argues that the specification does not suggest that those two types of motion are
otherwise mutually exclusive.
Think Outside contests Minebea’s argument that the district court improperly
construed the claim term “pivot.” According to Think Outside, claim 1 differentiates
between the motion allowed at the central pivot and the motion allowed at the
articulating joints at the ends of the lever arms in its description of each. Specifically,
Think Outside cites the portion of claim 1 that requires the central pivot to form a
“scissors-like linkage,” whereas the joints at the ends of the lever arms must “slide in
addition to pivot.” Think Outside also points to portions of the patent specification to
1
Minebea also appeals from the district court’s holding that the SPK does not
meet either the “means for pivotally mounting said first and second ends” or the “means
for pivotally mounting said third and fourth ends” claim limitations. Given our affirmance
of the district court’s judgment of noninfringement based on the “pivot” limitation, it is not
necessary for us to decide whether the SPK meets the two “means for pivotally
mounting” limitations.
05-1201 7
support its position. Think Outside asserts that the only type of central pivot disclosed
in the specification is a structure that is fixed in position relative to the lever arms. Think
Outside further notes that the written description, like claim 1, expressly states that the
joints at the ends of the lever arms both rotate and slide, but conspicuously fails to
mention that there is any sliding motion at the central pivot.
We agree with Think Outside that the district court did not err in its construction of
the claim term “pivot.” As an initial matter, we note that the parties do not dispute the
portion of the district court’s construction of “pivot” defining it as “a structure about which
something turns or rotates.” The parties, however, do disagree as to whether the “pivot”
of claim 1 must be “fixed relative to the two arms.”
In Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005), we noted that it
is “entirely appropriate for a court, when conducting claim construction, to rely heavily
on the written description for guidance as to the meaning of the claims.” Although the
dictionary definition of the term “pivot” does not appear to exclude sliding motion, the
district court properly determined that the written description limits the scope of the
claim term “pivot” to a structure that is fixed in position relative to the lever arms, and
thus excludes sliding motion. As the written description provides, “the levelling [sic]
mechanism of the present invention utilizes a scissors-like linkage” fixed at an
intermediate position relative to the lever arms. See ’225 Patent, col. 4, ll. 8-11.
Because the linkage in a pair of scissors is fixed in position relative to the scissors, it
necessarily follows that the central pivot of the written description must also be in a fixed
position, as the district court’s claim construction requires. Moreover, a sliding central
pivot would be inconsistent with the engineering principles behind the leveling
05-1201 8
mechanism disclosed by the specification. Applying basic mechanics, because the
joints at the ends of the lever arms in the specification’s disclosed embodiment are
capable of sliding in their respective slots, the leveling mechanism would not also need
a sliding central pivot in order to allow the keytop to travel downward when it is pressed
down.
In Phillips, we also stated that “[q]uite apart from the written description and the
prosecution history, the claims themselves provide substantial guidance as to the
meaning of particular claim terms.” 415 F.3d at 1314. There is no question in this
patent that sliding and pivoting are different motions. Indeed, claim 1 provides that
certain structures will “slide in addition to pivot.” Such language would be superfluous if
sliding motion were subsumed in pivoting motion. See id. at 1317 (explaining that the
term “steel baffles” strongly implies that the term “baffles” does not inherently mean
objects made of steel). Moreover, claim 1, like the written description, requires the
“pivot” to “form a scissors-like linkage.” Inherent in this language is the requirement that
the “pivot” of claim 1 must have structural characteristics that allow it to “form a
scissors-like linkage.” As explained above, a structural characteristic of a pivot with “a
scissors-like linkage” is to be fixed in position relative to the lever arms. Lastly, we find
unavailing Minebea’s argument that because the district court did not construe the term
“scissors-like,” we too should not consider that term in our review of the court’s
construction of “pivot.” Such a request is tantamount to construing claim limitations in a
vacuum, and is plainly inconsistent with Phillips, which compels us to construe claim
limitations in the context of the claim in which they appear. Id. at 1314.
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II.
Even if we were to affirm the district court’s construction of “pivot,” Minebea
contends that the court erred in concluding, as a matter of law, that the SPK does not
literally meet the limitation. According to Minebea, it submitted sufficient evidence
demonstrating that a person of ordinary skill in the art may consider the pin in SPK’s pin
and slot structure to be fixed in position relative to the lever arms, as required by the
district court’s construction. Specifically, Minebea relies on testimony from Think
Outside’s expert that, although the SPK’s pin and slot structure contains some
clearance between the pin and the slot, which allows for some non-rotational
movement, there is a question whether this clearance is great enough to allow for
sliding motion. Minebea contends that this question raises an issue of material fact that
would preclude summary judgment, contrary to the district court’s correct determination
that there was no genuine issue of material fact.
Minebea also assigns error to the district court’s determination that the SPK does
not meet the “pivot” limitation under the doctrine of equivalents. To support its position,
Minebea argues that the doctrine of equivalents inquiry is highly fact-intensive, and that
the court did not properly consider its expert’s declaration, which concluded that the
SPK’s pin and slot structure is equivalent to the “pivot” of claim 1. According to
Minebea, its expert opined that the decision whether to have a sliding connection at the
joints at the ends of the lever arms, as shown in the patent, or to have a sliding central
pivot, as in the SPK, is nothing more than an insubstantial design choice. Minebea also
points to testimony from Think Outside’s expert that the sliding central pivot of the SPK
performed the identical function of the fixed pivot of the patent. At a minimum, Minebea
05-1201 10
contends that its expert’s declaration and Think Outside’s expert testimony sufficiently
create a genuine issue of material fact that precludes the grant of summary judgment.
Think Outside responds by arguing that, as a matter of basic mechanics,
because the studs at the SPK’s lever ends are clamped so that they only rotate, the pin
and slot structure must necessarily allow for sliding motion in order for the SPK to
operate. Think Outside also cites measurements by Minebea’s expert, who purportedly
measured a clearance at the SPK’s central pin and slot structure that was two and a
half times greater than the clearance at the studs at the ends of the SPK’s lever arms.
Think Outside contends that there would not have been a need for such a vast
difference in clearance between the two structures if the sole purpose for the clearance
in the pin and slot structure was to facilitate rotating motion only, and not to allow for
sliding motion.
Think Outside also asserts that the district court did not err in concluding that the
SPK’s pin and slot structure does not meet claim 1’s “pivot” limitation under the doctrine
of equivalents. Think Outside reiterates the district court’s determination that no
reasonable jury could find that the sliding central pivot of the SPK functions in an
insubstantially different way than the fixed “pivot” of claim 1. Think Outside also
contends that the meaning of the term “pivot” should not be extended to cover sliding
pivots under the doctrine of equivalents because the inventor had the opportunity to
expressly claim a central pivot with sliding motion, but chose not to do so. According to
Think Outside, the patent is replete with claim language requiring both rotating and
sliding motion at the joints at the ends of the lever arms, i.e., claims 1-3 and 5. Thus,
Think Outside argues that if the patentee intended to include a central pivot with both
05-1201 11
rotating and sliding motion within the scope of the claims, he would have expressly
provided for such coverage. Because he has not, the patentee has effectively
disclaimed coverage for such types of linkages.
We agree with the district court that the SPK does not meet the “pivot” limitation,
either literally or under the doctrine of equivalents. With respect to whether the SPK’s
central pin and slot structure literally meets the “pivot” limitation, we first note that
Minebea has not disputed the district court’s characterization that the studs at the ends
of the SPK’s lever arms are fixed so that they do not slide. This undisputed
characterization of the SPK is critical because it follows from principles of basic
mechanics that the only mechanism by which the SPK keytop can travel downwardly
when pressed down upon is through a sliding central pivot.2 Because sliding motion at
the central pivot is precluded by the district court’s construction of “pivot,” with which we
agree, we conclude that the SPK cannot literally meet that limitation. Furthermore, we
are not persuaded by Minebea’s attempt to manufacture an issue of material fact by
simply questioning whether the clearance in the SPK’s pin and slot structure is sufficient
to allow for sliding. It is clear to us from the pictures of the SPK relied upon by
Minebea’s expert and the difference in the amount of clearance measured in the SPK’s
pin and slot structure compared to the studs at the ends of the lever ends that the SPK’s
pin and slot structure functions by sliding motion.
Finally, we turn to the question whether the SPK’s pin and slot structure meets
the “pivot” limitation under the doctrine of equivalents. As explained above, the ’225
2
This reasoning supposes that the SPK’s lever arms are rigid, a structural
characteristic of the SPK’s lever arms that the district court observed, and which
Minebea does not challenge on appeal. Decision, slip op. at 9.
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patent’s written description discloses a leveling mechanism that operates by having the
central pivot rotate only, but allows the studs at the ends of the lever arms to rotate and
slide in their slots. ’225 Patent, Col. 4, ll. 25-31. The SPK, on the other hand, has fixed
joints at its lever ends and a sliding central pin and slot structure. The SPK’s leveling
mechanism operates by allowing the ends of the lever arms rotate only, but allows the
central pin to rotate and slide in the central slot. For the SPK to utilize a fixed central
pivot, as required by claim 1, other structures of the SPK’s leveling mechanism, e.g., the
ends of the lever arms, would have to be modified or replaced. That is the epitome of a
substantial difference. Moreover, as the district court aptly recognized, the SPK’s pin
and slot structure and the ’225 patent’s fixed central pivot are not interchangeable; i.e.,
if one were to only replace the central pin and slot structure with a fixed central pivot,
the SPK would not function.3 Thus, we agree with the district court that no reasonable
trier of fact could find that that the SPK infringes claim 1 under the doctrine of
equivalents.
We have considered Minebea’s remaining arguments on appeal, including those
supporting its appeal of the district court’s denial of Minebea’s motion for discovery
under Federal Rule of Civil Procedure 56(f), and we find them to be unpersuasive.
3
We discern no error in the district court’s conclusion that the results of the
experiment by Minebea’s expert purportedly demonstrating that the SPK could function
with a fixed central pivot were unreliable.
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