Hutchins v. Zoll Medical Corp.

United States Court of Appeals for the Federal Circuit

2006-1539

DONALD C. HUTCHINS,

Plaintiff-Appellant,

v.

ZOLL MEDICAL CORPORATION,

Defendant-Appellee.

Donald C. Hutchins, of Longmeadow, Massachusetts, pro se.

John C. Englander, Goodwin Procter LLP, of Boston, Massachusetts, for defendant-
appellee. With him on the brief was John T. Bennett.

Appealed From: United States District Court for the District of Massachusetts

Judge Michael A. Ponsor
United States Court of Appeals for the Federal Circuit

2006-1539

DONALD C. HUTCHINS,

Plaintiff-Appellant,

v.

ZOLL MEDICAL CORPORATION,

Defendant-Appellee.

__________________________

DECIDED: July 3, 2007
__________________________

Before MICHEL, Chief Judge, NEWMAN and DYK, Circuit Judges.

NEWMAN, Circuit Judge.

This appeal arises from charges of patent and copyright infringement based on a

computer-assisted system of administering emergency procedures, primarily

cardiopulmonary resuscitation (CPR). Mr. Donald C. Hutchins charged Zoll Medical

Corporation with infringement of Hutchins' United States Patent No. 5,913,685 (the '685

patent) entitled "CPR Computer Aiding." Mr. Hutchins also charged Zoll with copyright

infringement and with breach of a contract between Hutchins and Zoll. The United States
District Court for the District of Massachusetts granted Zoll's motions for summary

judgment of non-infringement on the patent and copyright counts, and that there was no

breach of contract. 1 Hutchins appeals the non-infringement rulings and assigns error to

various procedural rulings; he also seeks to reopen the case based on charges of

fraudulent non-disclosure by Zoll of relevant information.

The grant of summary judgment receives plenary appellate review, reapplying the

standard applied by the district court. Thus we review whether there is a genuine issue of

material fact, or if there can be but one reasonable verdict. Anderson v. Liberty Lobby, Inc.,

477 U.S. 242 (1986). To grant a motion for summary judgment there must be no

reasonable view of material facts, with cognizance of the substantive evidentiary standards,

whereby a reasonable jury could find for the non-movant. Id. at 255; see, e.g., De Jesus-

Rentas v. Baxter Pharm. Servs. Corp., 400 F.3d 72, 73-74 (1st Cir. 2005); Depuy Spine,

Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1013 (Fed. Cir. 2006).

Patent Infringement

Patent infringement requires that every element and limitation in a correctly

construed claim is embodied in the accused system either literally or, if embodied by an

equivalent, in compliance with the rules of equivalency as set forth in Festo Corp. v. SMC

Corp., 535 U.S. 722 (2002) and Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520

U.S. 17 (1997) and implementing rulings.

The '685 patent describes and claims an interactive computer-directed system for

guiding emergency rescue personnel in conducting on-site administration of CPR. The

1 Hutchins v. Zoll Medical Corp., 430 F. Supp.2d 24 (D. Mass. 2006).

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system instructs rescue personnel to input certain characteristics of the victim, such as the

victim's age and state of consciousness; the system then provides detailed step-by-step

procedures to be followed by the rescuer in order to administer CPR and resuscitate the

victim. Features of the system described in the '685 patent include automated voice and

visual signals and instructions, animated images, and audible speech prompts. Claim 1 is

the broadest claim:

1. A general purpose computer system adapted for cardiopulmonary
resuscitation (CPR) aiding to provide guidance to rescue personnel trained in
CPR for resuscitating a victim under an emergency condition, comprising:
a computer terminal, including,
an output comprising a display and an electroacoustical transducer;
and
an input comprising an interactive display input, wherein the interactive
display unit is adapted for selecting from image or text viewed on the display
that is representative at least of characteristics of said victim.

Zoll's accused device, trademarked "AEDPlus7," is a portable computer system and

defibrillator that provides automated voice and visual signals and instructions to guide

rescue personnel through the steps to administer CPR to the victim and to defibrillate if

necessary.

The elements of the '685 patent claims on which the district court relied are "general

purpose computer" and "interactive display input." The district court found that neither of

these elements is present in the Zoll system, and on this basis granted summary judgment

of non-infringement.

A

All of the '685 claims require a "general purpose computer system" that is adapted to

the specified purposes. The definition of "general purpose computer" was agreed by the

parties as

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 a computer capable of running multiple unrelated programs, which are
selected by the user and loaded into the device. It must feature at least: (1) a
central processing unit, (2) one or more input devices that are not specific to
any one program, (3) memory, (4) mass storage devices (such as a disk
drive) for storing large amounts of data, and (5) one or more output devices.

Zoll's device contains a Hitachi SuperH RISC (Reduced Instruction Set Computer)

microprocessor. The district court observed that the '685 specification is specific to a

general purpose computer and that all of the claims were so limited during prosecution.

The court found that it was "implausible" for a RISC microprocessor to be deemed a

general purpose computer, for RISC microprocessors have limited functionality. Thus the

court held that "general purpose computer," as that term is used in the '685 patent, does

not read on a RISC microprocessor and that the Zoll system thereby avoids infringement.

Mr. Hutchins argues that his invention is readily performed using a RISC

microprocessor. He points out that the Zoll system is intended to interface and work in

conjunction with a standard IBM-PC, which is a general purpose computer, and that the Zoll

device includes an interface for connection to a personal computer for purposes of review

and archiving of data associated with a rescue; the Zoll manual states the minimum criteria

for the personal computer as "Windows . . . IBM-compatible 486 (or higher) computer, 64

MB RAM, VGA monitor or better, CD-ROM drive, IrDA port, 2MB disk space."

The district court accepted the definition of "general purpose computer" that had

been agreed by the parties; the court found that a RISC microprocessor does not meet that

definition, and that the potential for connecting to a personal computer did not meet the

claim limitation. We do not discern error in this finding, for the term "general purpose

computer" was added to Hutchins' claims during prosecution in order to distinguish the '685

invention from prior art that showed similar devices with dedicated microprocessor units.

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This produced an estoppel against reading the term "general purpose computer" to include

a dedicated microprocessor such as a RISC, for the claims had been amended in response

to the PTO rejection, thereby estopping recovery of the same subject matter that the claims

had been amended to exclude. See Alloc v. Int’l Trade Comm’n, 342 F.3d 1361, 1371-72

(Fed. Cir. 2003) (statements made during prosecution surrendering subject matter binding

on later interpretation of the claims); see also Festo, 535 U.S. at 725 (estoppel arises upon

amendment to "surrender the particular equivalent in question"); Bayer AG v. Elan Pharm.

Research Corp., 212 F.3d 1241, 1252 (Fed. Cir. 2000) (an aspect expressly disavowed

during prosecution of the patent cannot be reached under the doctrine of equivalents). The

district court's ruling on this aspect is affirmed.

B

Mr. Hutchins also argues that the term "general purpose computer" is not "present in

each claim" of the '685 patent. That is incorrect, for the term is recited in each independent

claim and accordingly is incorporated into every dependent claim. See 35 U.S.C. '112, &4

("A claim in dependent form shall be construed to incorporate by reference all the

limitations of the claim to which it refers.") Independent claim 1 recites a "general purpose

computer system," with dependent claims 2-12. Independent claim 13 recites a "general

purpose computer network system," with dependent claims 14-20. Independent claim 21

recites "an article of manufacture adapted for use in a general purpose computer," with

dependent claims 22-30. Independent claim 31 recites a "computer program" that is

readable by a "general purpose computer," with dependent claims 32-38. Independent

claim 39 recites a method for use in CPR with a "general purpose computer," with

dependent claims 40-43. No claim is free of this limitation.

2006-1539 5
 C

The district court also ruled that the claim term "interactive display input" could not

be found by a reasonable jury to be present in the Zoll apparatus. The parties had agreed

on the following definition for this term:

a device for communicating with a computer which allows a user to respond
to options presented by the computer by selecting from a menu displayed on
a screen.

In the interactive display input described in the '685 patent, rescue personnel select certain

"characteristics of the victim relevant to proper performance of CPR techniques." These

characteristics include factors such as the consciousness of the victim, whether adult or

child or infant, whether the victim is choking, and whether mouth-to-mouth resuscitation is

required. The display responds to this information and provides rescue-aiding guidance

that can include pictorial and animated instructions.

The Zoll device requires no input from the rescuer, who places electrical contacts as

directed by the device; the device then monitors the victim's heart and determines whether

CPR or an electric shock is necessary. The district court observed that although the Zoll

system analyzes characteristics such as heart rhythm, it does not provide for interactive

input by the rescuer. If the Zoll device determines that treatment such as defibrillation is

required, the device instructs the rescuer to push the button that administers the electric

shock; if CPR is required, the device instructs the rescuer how to perform it and monitors its

effectiveness through chest pads placed by the rescuer as instructed; the device verbally

instructs the rescuer if the frequency or depth of the CPR compression is inadequate. The

district court held that since the Zoll system does not analyze characteristics obtained

2006-1539 6
through "interactive display input," a reasonable jury could not find that this claim term is

met by use of the Zoll device.

Mr. Hutchins states that the district court, on this summary disposition, did not

examine the Zoll system and did not compare the patent claims to the Zoll system.

However, the record shows that the systems were explained by both parties at the claim

construction hearing and in connection with the motions for summary judgment. The

district court was provided with the Zoll manual and user guide, which describe the action of

the Zoll system. We agree with the district court that a reasonable jury could not find that

the Zoll system employs an interactive display input as described in the '685 patent, for the

Zoll rescuer provides no input, but simply follows the instructions issued by the system on

monitoring the victim.

The summary judgment of non-infringement of the '685 patent is affirmed.

Copyright Infringement

Mr. Hutchins charged Zoll with infringement of two registered copyrights related to

his system. For copyright causes we look to the interpretive law of the regional circuit, here

the First Circuit. See Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422, 1438-40 (Fed. Cir.

1984) (en banc) (for issues not exclusively assigned to the Federal Circuit, to avoid

inconsistency and forum shopping we apply the law of the regional circuit in which the case

was tried).

A

The Copyright Act provides protection against unauthorized copying of computer

programs, defined in 17 U.S.C. '101 as "a set of statements or instructions to be used

2006-1539 7
directly or indirectly in a computer in order to bring about a certain result." See also 17

U.S.C. '102(b) (copyright protects the mode of expression against copying, but does not

protect the "idea, procedure, process, system, method of operation, concept, principle, or

discovery"); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1249 (3d Cir.

1983) ("a computer program, whether in object code or source code, is a 'literary work' and

is protected from unauthorized copying, whether from its object or source code version").

This definition has been applied to protect computer codes and design and text, as well as

the tangible expressions such as the screen display. However, copyright protection does

not extend to the methods that are performed with program guidance, as discussed by the

First Circuit in Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807, 818

(1st Cir. 1995), aff'd 516 U.S. 233 (1996) ("a text describing how to operate something

would not extend copyright protection to the method of operation itself; other people would

be free to employ that method and to describe it in their own words").

Mr. Hutchins' Copyright No. Txu-213-859 is for the "text of computer program" for his

system. The district court, applying Lotus v. Borland, ruled that Mr. Hutchins' copyright

does not afford the scope of protection he seeks. The court explained that copyright does

not protect the technologic process independent of the program that carries it out; that is,

the copyright covers the way the process is described in the written or electronic form of the

computer program, but does not cover the process independent of the copyrighted

program. The district court held that Mr. Hutchins' copyright for a computer program for

performing CPR in accordance with audio and visual instructions shields the software code

from copying and may cover the specific audio-visual forms and text if original, but it does

2006-1539 8
not cover the standard instructions for performing CPR or their independent placement in

electronic form.

Mr. Hutchins states that his program for performing CPR and the Zoll program for

performing CPR "perform the same task in the same way, that is, by measuring heart

activity and signaling the quantity and timing of CPR compressions to be performed by the

rescuer." He argues that his copyright covers the system of logic whereby CPR

instructions are provided by computerized display, and that the unique logic contained in

software programs is protectable subject matter under 17 U.S.C. '101 ("A 'computer

program' is a set of statements or instructions to be used directly or indirectly in a computer

in order to bring about a certain result.")

The district court correctly distinguished the specific computer program and its

expression, which are the province of copyright law, from the technologic method of treating

victims by using CPR and instructing how to use CPR. The court correctly held that Mr.

Hutchins' copyright is limited to preventing the copying of the specific computer program

that he developed, and does not include coverage of all programs that guide the

performance of CPR derived from information in the public domain. See Lotus v. Borland,

49 F.3d at 818 (methods of operation are not copyrightable, although a specific program

that implements the method can be protected against copying).

It was not established that Mr. Hutchins' specific computer program, or any original

aspects of his display in audio or video, was copied. We affirm the ruling that this copyright

is not infringed.

2006-1539 9
 B

Mr. Hutchins' Copyright No. TXu-210-208 is for a "Script & Word List" of words and

phrases used in his CPR-guidance system. The district court held that the Zoll CPR

guidance system did not infringe this copyright.

Copyright of a list or compilation of public information protects against "copying of

constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv.

Co., 499 U.S. 340, 361 (1991). The application of this law is summarized in CMM Cable

Rep, Inc. v. Ocean Coast Props., 97 F.3d 1504 (1st Cir. 1996):

It is axiomatic that copyright law denies protection to "fragmentary words and
phrases" and to "forms of expression dictated solely at functional
considerations" on the grounds that these materials do not exhibit the
minimal level of creativity necessary to warrant copyright protection.

Id. at 1519 (citing 1 Nimmer on Copyright (1985 ed.) '2.01[B] at 2-13-18; 37 C.F.R.

'202.1(a)).

Mr. Hutchins' charge of infringement relates to Zoll's use of words and phrases that

are included on his copyrighted List. Both the Hutchins and the Zoll systems guide the

rescuer through the CPR process by way of a series of computer-generated instructions

presented in words and phrases. Mr. Hutchins asserts that Zoll's system uses twenty-

seven phrases from the copyrighted list. The district court found that Zoll's instructions

contain two phrases that are identical to those on Hutchins' list, viz., "call for help" and

"check breathing." The court found that three more phrases are similar, viz., Hutchins'

"stay calm" (Zoll's "remain calm"); "if no pulse, start CPR" ("if no pulse, continue"); and

"give two breaths" ("start with two breaths"). However, the court concluded that these

2006-1539 10
phrases are entirely functional, that they are not original with Hutchins but are standard

CPR instructions, and that they are not subject to copyright.

Copyright does not protect individual words and "fragmentary" phrases when

removed from their form of presentation and compilation. Although the compilation of

public information may be subject to copyright in the form in which it is presented, the

copyright does not bar use by others of the information in the compilation. See Feist, 499

U.S. at 348-49 (no matter how much original authorship is embodied, the facts and ideas

are not barred from use by others). The district court found that the words and phrases on

Mr. Hutchins' "Script and Word List" are standard CPR instructions devoid of "creative

expression that somehow transcend the functional core of the directions," the court quoting

National Nonwovens, Inc. v. Consumer Products Enterprises, Inc., 397 F. Supp.2d 245,

256 (D. Mass. 2005).

Mr. Hutchins states that the district court erred in its understanding of "multimedia

packages" as embodied in 17 U.S.C. '101, and that the question is not whether the specific

instructions for conducting CPR are protectable, but whether the same "digital electronic

programming" and "copyrighted digitized phrases" that are used in the Hutchins

copyrighted system are also present in the Zoll system. However, the placing of standard

words and phrases in digital form does not impart copyright exclusivity against all digitized

usages of the words and phrases. We discern no error in the district court's understanding

of '101, for the words and phrases on the Hutchins list are standard CPR instructions, and

the use by Zoll of the same or similar CPR instructions was not shown to have been copied

from any original expression or compilation by Hutchins.

2006-1539 11
 Also weighing against Mr. Hutchins' charge of infringement is the pragmatic doctrine

of "merger" of idea and expression, applying the "scenes à faire" principle that originated

for literary works. As explained in Atari Games Corp. v. Oman, 888 F.2d 878, 886 (D.C.

Cir. 1989), "[t]he term scenes à faire refers to stereotyped expressions, 'incidents,

characters or settings which are as a practical matter indispensable, or at least standard, in

the treatment of a given topic'" (citations omitted). The standard instructions for performing

CPR are indispensable for applying CPR, and remain in the public domain. See John G.

Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 43 (1st Cir. 2003) (when

the terms at issue are the only available forms of expression, these expressions are not

subject to copyright). Summary judgment of no copyright infringement was appropriately

granted.

The Charges of Fraud

Mr. Hutchins seeks vacatur of the summary judgments on application of Fed. R. Civ.

P. 60(b)(3), which provides that "the court may relieve a party or a party's legal

representative from a final judgment, order, or proceeding for . . . fraud (whether heretofore

denominated intrinsic or extrinsic), misrepresentation, or other misconduct of an adverse

party." The First Circuit in Karak v. Bursaw Oil Corp., 288 F.3d 15 (1st Cir. 2002) recites

the criteria for such relief:

First, the movant must demonstrate misconduct -- such as fraud or
misrepresentation -- by clear and convincing evidence. Anderson v. Cryovac,
Inc., 862 F.2d 910, 923 (1st Cir. 1988). Second, the movant must "show that
the misconduct foreclosed full and fair presentation of [his] case." Id.

Id. at 21 (bracket in original). The district court denied Mr. Hutchins' motion; denial of a

Rule 60(b) motion is reviewed for abuse of discretion.

2006-1539 12
 This issue arises because, after discovery was closed and the summary judgment

motions had been filed but before their decision, Mr. Hutchins moved to amend his

complaint to include a new version of the Zoll system in the charges of infringement. The

district court denied the motion as untimely, stating that discovery would have to be

reopened for Zoll to respond adequately, that the delay would result in considerable

prejudice to Zoll, and that Mr. Hutchins failed to explain his "undue delay" in filing the

motion. Mr. Hutchins also moved to compel discovery of the new Zoll system, but the court

denied this motion on the ground, inter alia, that this new system was not part of the

present case. Mr. Hutchins states that Zoll fraudulently failed to disclose that it had a new

version of the accused system and also that its system was the subject of other litigation

involving a party with whom Hutchins has a cross-license.

Although Mr. Hutchins now describes his concerns as raising issues of fraud, we

conclude that the district court acted within the parameters of "a proper balance between

the conflicting principles that litigation must be brought to an end and that justice should be

done." 11 C. Wright & A. Miller, Federal Practice and Procedure '2851, p. 227 (2d ed.

1995). In view of the stage of the litigation, the nature of the subject matter that was

assertedly withheld, the district court's familiarity with the events, and the timing of the

motion, no abuse of discretion in this action has been shown. 2

2 This court granted Mr. Hutchins' motion to take judicial notice of a separate
proceeding before the district court concerning his patent infringement action and the
defendants' refusal to accept a summons. Hutchins v. Zoll Medical Corp., No. 06-1539
(Fed. Cir. Nov. 9, 2006) (Order). Notice has been taken; this decision is not affected.

2006-1539 13
 AFFIRMED

2006-1539 14