Odetics, Inc. v. Storage Technology Corporation

185 F.3d 1259 (1999)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

The invention is a robotic tape storage system used to store, organize, and retrieve videotapes or computer data tapes. Acting on commands to retrieve certain tapes, the robotic arm can selectively grip the desired tape, removing it from its storage shelf and placing it on another shelf or in a tape player/recorder. At issue are claims 9 and 14 of the '151 patent owned by P. The critical 'rotary means' claim element is in means-plus-function form, requiring that it 'be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.' The structure corresponding to the 'rotary means' element, as depicted in Fig. 3 of the '151 patent, is a set of tape holders or bins, a rod providing the axis of rotation, and a gear capable of receiving a force sufficient to cause the structure to accomplish the claimed 'rotary' function. D manufactures and sells Library Storage Modules that require large quantities of automated data storage. Their library systems are scalable. When libraries are added, D uses a device known as a 'pass-thru port' to link the libraries, allowing data tapes to be passed from library to library. P sued D, claiming that D infringed claims 8, 9, and 14 of its '151 patent. The district court found as a matter of law that the claims were not literally infringed, and partially granted D's motion for summary judgment on the issue of laches. A jury considering the issues of validity and infringement under the doctrine of equivalents found the asserted claims of the '151 patent not invalid and not infringed. P appealed. The Appeals court held that the district court's claim construction was erroneous, and therefore vacated the judgment and remanded the case for further proceedings in light of the correct claim interpretation. A second jury trial commenced on March 23, 1998, resulting in a verdict of willful infringement on March 27, and an award of $70.6 million in damages. At first, the district court denied D's motion for JMOL and a new trial but after learning of Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., the district court granted D's motion for JMOL. Both P and D appealed.