The opinion of the court was delivered by: Lifland, District Judge
FINDINGS OF FACT AND CONCLUSIONS OF LAW RE: COINCO '903 PATENT
This matter comes before the Court upon the counterclaim of Defendant Coin Acceptors, Inc. ("Coinco" or "Defendant") against Plaintiff Mars, Incorporated ("Mars" or "Plaintiff") regarding Mars' alleged contributory and induced infringement of claims 1, 2, 3, 4, 6, 11, and 12 of Coinco's U.S. Patent No. 3,828,903 (filed Feb. 12, 1973) (issued Aug. 13, 1974). For the reasons set forth below, the Court finds that Mars' 5900-series four-price four-vend relay coin changers, when used within Type 1 or Type 2 vending machines, do not infringe any of the asserted claims of the '903 Patent as construed by the Court. Alternatively, if the Court had accepted all of Coinco's arguments regarding claim construction, all of the asserted claims of the '903 Patent would be invalid for lack of enablement, claims 1, 2, 3, 4, and 11 would be invalid for anticipation, and claim 6 would be invalid for obviousness. The Court does not find the '903 Patent invalid for failure to disclose the best mode, and does not find claim 12 invalid for either anticipation or obviousness.
1. Description of the '903 Patent
The '903 Patent, entitled "Vend Control With Escrow Until Available Product Selection," describes a vending machine control circuit. The patent was originally issued to H.R. Electronics Company, a subsidiary of Coinco, as assignee of the inventor Joseph L. Levasseur. Subsequently, the '903 Patent was assigned to Coinco. (Joint Ex. 6, Stipulated Fact No. 127.)
According to the patent, "[t]he present invention resides to a large extent in the construction and operation of the selection monitor circuit 58 and in the way it is connected into the circuit." '903 Patent col. 5, lines 33-35. The patent describes a vending machine control circuit which uses the same electrical line both to detect the selection of a product and to provide electrical power to the vending device.*fn1
In order to permit this dual use of a line, the configuration of the circuit elements along that line must ensure that the vending device does not vend a product immediately upon a user's selection of that product; instead, the vending device should wait for confirmation that the user has deposited enough money in exchange for the product attached to that vending device. The '903 Patent accomplishes this via an element called the "selection monitor," which is "particularly important to the present invention." '903 Patent col. 3, lines 40-41. The '903 Patent provides four separate embodiments of the selection monitor.
The simplest embodiment, in Figure 2, describes a selection monitor built as a relay. A relay is an electromechanical device, composed of an electromagnetic coil and an associated switch. The switch is composed of ferromagnetic material, which causes the switch to pivot in response to the magnetic field created whenever sufficient current passes through the coil. (Trial Tr. vol. 29, 53.) The relay embodiment in Figure 2 is not at issue in this infringement suit, but an analysis of its operation provides the simplest explanation for how the invention works.
When a user actuates a product selection switch in a control circuit built with the Figure 2 relay embodiment, electrical power flows between the electromagnetic coil within the relay and the vending device chosen by the product selection switch.*fn2 See '903 Patent fig. 1, fig. 2. Although current flows through the vending device at this point in time, "[t]he [relay's electromagnetic] coil 80 is constructed to have a relatively high impedance and is energized at a relatively small current level that is substantially below the current level required to energize the vending devices . . . ."*fn3 '903 Patent col. 5, lines 52-56. However, the current flowing through the relay's coil is sufficient to energize the coil itself and create a magnetic field with enough power to cause the relay's switch to pivot and close. '903 Patent col. 5, lines 57-60. In the Figure 1 embodiment of the control circuit, built with a selection monitor based on the Figure 2 embodiment, the closing of the relay's switch within the selection monitor causes one of the inputs to AND gate 63 to go high.*fn4 The other input to AND gate 63 comes from "change maker or accumulator means." '903 Patent col. 3, lines 14-17. The input to the AND gate from the accumulator goes high after the user has deposited money within the coin changer that is equal to or greater than the amount required to buy an item associated with the selection switch actuated by the user. Id. Therefore, when both inputs to the AND gate go high -- indicating that the selection monitor has sensed that the user has actuated a product selection switch and that the user has deposited enough money for the product associated with that selection switch -- the AND gate's output will apply current, causing movement in elements 40, 42, 44, 45, and 46 which bypasses the high impedance coil in the selection monitor, allowing a stronger current to flow along the same wire that includes the product selection switch and the vending device. With a full current applied, the vending device may now operate to vend the selected product to the user. Thus, the vending control circuit may use the same line to both communicate a product selection by a user via a low current and transmit power to the vending device via a high current.
The selection monitor embodiment at issue in this infringement case is the optical isolator shown in Figure 3. An optical isolator has a light emitting diode (LED) on one side and a photo-transistor on the other side. When sufficient current passes through the LED, the LED transmits light to the photo transistor. (Tr. vol. 29, 17.) Upon sensing light, the photo-transistor allows current to pass through its side of the optical isolator. The LED side of the optical isolator in the Figure 3 embodiment includes a current-limiting resistor so that only a low-power electrical current may pass through the LED, which is connected to the vending device via the product selection switches. In this way, the LED behaves in a manner similar to the electromagnetic coil of the relay in Figure 2, while the photo-transistor behaves like the relay's associated switch in Figure 2. Thus, in a case where the selection monitor in Figure 1 is built using the embodiment of the optical isolator in Figure 3, a user actuating a product selection switch will cause a low-power electrical current to pass through both the vending device and the LED. The LED, in turn, transmits light to the photo-transistor, which causes a current to go high on one of the inputs to AND gate 63, just as with a selection monitor based on the relay of Figure 2. '903 Patent col. 5, line 65 - col. 6 line 24.
The '903 Patent contains two other embodiments of the selection monitor in Figures 4 and 5. Neither of these embodiments is relevant to this case.
The '903 Patent does not describe a four-price embodiment, (Tr. vol. 28, 95.), but the patent does contain a dual-price embodiment, described in Figure 6. Unlike Figure 1, Figure 6 is only a partial diagram which does not show most details of the circuit's construction.
2. Claims of the '903 Patent
The patent claims at issue in this litigation are: Claim 1: A control circuit for vending or other similar devices which have coin units capable of accepting coins of selected denominations, said coin unit including means for producing output signals corresponding to the value of each coin deposited,
[a]*fn5 accumulator means having an input connected to receive the output signals of the coin unit and including means to accumulate the amount of credit entered in the coin unit during each vending operation,
[b] means under control of the accumulator whenever an amount accumulated at least equals the amount of a selected vend price for establishing a condition to enable a vend operation to take place, said last named means including operator actuable vend selection means including switch means and associated vend producing means under control thereof,
[c] a vend enabling circuit having a first portion operatively associated with the operator actuable switch means and a second portion under control of the first portion, said first portion being connected in circuit with the vend producing means when the vend switch means are actuated,
[d] said second portion and said accumulator each having an output where output signals are produced,
[e] means responsive to the simultaneous occurrence of output signals at the outputs of both said second portion and said accumulator to enable a vend operation,
[f] actuation of said switch means at a time when the amount accumulated in the accumulator means at least equals the vend price associated therewith energizing the said first portion of the vend enabling circuit to thereby change the condition of and enable the second portion thereof so that said second portion produces an output signal which in association with an output signal from the accumulator means establishes a circuit condition that initiates a vend operation.
Claim 2 is dependent on claim 1 and states:
The control circuit of claim 1 including means to enable full escrow of an amount accumulated in the accumulator means until a vend operation is initiated.
Claim 3 is dependent on claim 1 and states: The control circuit of claim 1 wherein said first portion of said vend enabling circuit includes relatively high impedance circuit means connected in series with the vend producing means, the impedance of said first portion being selected to be too high to enable sufficient current flow through the associated vend producing means in series therewith for the vend producing means to be able to initiate a vend operation.
Claim 4 is dependent on claim 1 and states: The control circuit of claim 1 wherein said operator actuable switch means include a plurality of switches, one of which is associated with each different product to be vended.
Claim 6 is dependent on claim 1 and states: The control circuit defined in claim 1 wherein said first portion of said vend enabling circuit includes a photo-diode, and said second portion includes means responsive to the light produced when said photo-diode is energized by operation of the switch means in the vend selection means at a time when the accumulator has an amount accumulated therein at least equal to the vend price.
Claim 11: Improvements in a vend circuit
[p.1]*fn6 for a vending machine having a coin unit for receiving coins of at least one denomination,
[p.2] said vending machine having an accumulator operatively connected to the coin unit and responsive to outputs produced thereby when coins are deposited to accumulate the value thereof,
[p.3] said accumulator including means to control the refunding of amounts deposited in excess of the vend price of a selected product and means for producing an accumulator output signal whenever the amount accumulated therein at least equals the price of a selected vend,
[p.4] means including at least one price selection switch actuable by a customer to initiate a vend cycle whenever the amount accumulated in the accumulator at least equals the vend price, the improvement comprising
[a] means to inhibit the accumulator from initiating a vend or refund operation until after the customer has actuated one of the product selection switches at a time when the amount accumulated in the accumulator at least equals the selected vend price,
[b] said accumulator inhibit means including a control monitor circuit having an input control portion connected in circuit with the product selection switch and energized by actuating said product selection switch at a time when the amount accumulated at least equals the selected vend price, energization of the input control portion of the monitor circuit by itself being insufficient to cause a vend operation to take place, an output portion of said control monitor circuit including means for generating a control output signal whenever the input control portion is energized, and
[c] means including a gate circuit and vend control means, said vend control means being energized whenever the gate circuit simultaneously receives input signals from the output of the accumulator and from the output portion of the control monitor, said vend control means including means in circuit with the vend producing means operable to enable vend and refund operations to take place.
The improvements in a vend control circuit defined in claim 11 including
[a] separate escrow means operatively connected to the accumulator, said escrow means including an escrow switch operable by a customer, and means under control of said escrow switch to cause total refund of an amount deposited up to the capacity of the accumulator, and
[b] means to disable the escrow means when said price selection switch is operated at a time when the accumulator has an amount accumulated therein at least equal to the vend price.
3. Lawsuit Against UMC Industries, Inc.
On January 24, 1977, HR Electronics Company, a subsidiary of Coinco, filed suit against UMC Industries, Inc. for infringement of various U.S. patents, including the '903 Patent. On May 21, 1981, a consent decree was entered in the case in which the '903 Patent was found valid and infringed. During the course of the litigation, UMC identified various prior art references. After examining all of the evidence presented regarding the UMC lawsuit, the Court finds that Coinco has not convinced the Court that the UMC lawsuit has any relevance to this case.
B. Mars' 5900-series four-price Coin Changers
1. Relationship Between Coin Changers and Vending Machines
Since well prior to 1984, many vending machines have been designed to operate with a separate coin changer, such as Mars' 5900-series coin changers. These coin changers are capable of providing change to a customer during a vend operation. (Joint Ex. 6, Stipulated Fact No. 13.) A coin changer typically consists of two main components: (1) a coin acceptor and (2) a changer control portion that includes, among other things, change making features, coin storage tubes, and accounting and control circuits. (Joint Ex. 6, Stipulated Fact No. 15.) Mated coin acceptor portions and changer control portions are routinely and typically offered and sold as coin changers. (Joint Ex. 6, Stipulated Fact No. 19.) Mars' 5900-series coin changers employ mated coin acceptor and changer control portions. (Joint Ex. 6, Stipulated Fact No. 20.) The coin changers at issue in this case have both an acceptor board and a control board. The acceptor board handles the validation of coins deposited by a user, and informs the control board that a particular coin has been validated. The control board is in charge of running the vending machine, keeping track of the total value of money deposited, and dispensing change. (Tr. vol. 29, 11-12.)
Mars' 5900-series four-price coin changers with four-vend relays have been advertised and promoted for use in either "Type 1" or "Type 2" vending machines. (Joint Ex. 6, Stipulated Fact No. 132.) Both Type 1 and Type 2 vending machines use an eight-pin plug as an interface with Mars' coin changers. (Tr. vol. 28, 111; Def.'s Ex. 483, A000777.) On the vending machine side, pin 1 connects to AC Hot. Pin 2 connects to AC Neutral. Pins 3, 4, 7, and 8 connect to price lines 1, 2, 3, and 4. Pin 6 connects to a "blocker." (Def.'s Ex. 483, A000777, A000780, A000781.)
In Type 1 vending machines, each of the four price lines may connect to one or more vending motors. (Tr. vol. 28, 126-27; Def.'s Ex. 483, A000780.) If more than one vending motor is connected to a particular price line, all products dispensed by those motors sell for the same price. The schematic diagram of a Type 1 vending machine in Mars' MC5 Coin Changers Installation, Operation & Service Manual shows the motors directly connected to the price lines, and a set of "select switches"directly connected to the motors. A user actuates one of these select switches to select a product.
Type 2 vending machines operate in a similar manner to Type 1 machines. However, Type 2 machines have vend solenoids*fn7 in place of vend motors. (Tr. vol. 29, 78-80; Def's Ex. 483, A000781.) The Type 2 machines have a single vend motor. In order to vend a selected product, the vend solenoid, connected to a select switch actuated by a user, must act in conjunction with the vend motor. (Tr. vol. 29, 81.) Although Type 1 and Type 2 machines have some mechanical differences, these differences are not generally relevant to the way in which these machines interact with Mars' coin changers via the eight-pin Jones plug.
2. Control Circuit of Mars' 5900-series Coin Changers
In order to complete a circuit that energizes a wire or an element along that wire (such as a motor), a path must exist for the current to flow between AC Hot and AC Neutral. (Tr. vol. 28, 131.) In its idle state (i.e. before a user selects a product by actuating a product selection switch), both Type 1 and Type 2 vending machines, used together with Mars' coin changers, sit in a holding state with a path from AC Hot on pin 1 to AC Neutral on pin 2. The path of the current in this idle state avoids energizing the vend motors and solenoids. (Tr. vol. 29, 4, 77-83; Def's Ex. 818A, 818C.) During this time, blocker pin 6 on the vending machine forms a connection between AC Hot on the vending machine and microprocessor U1 on the control board of Mars' coin changers. Through this connection, the control board monitors the state of the blocker switch on the vending machine in order to guide the microprocessor in its deliberations as it controls the vending operation. (Tr. vol. 29, 8; Def's Ex. 818B.)
When a user actuates a product selection switch on the vending machine, the switch connects the motor or solenoid associated with that switch, and a price line connected to that motor or solenoid, to AC Neutral on pin 2. (Tr. vol. 29, 12-16, 83-85; Def's Ex. 819A, 819C.) The vending machine's four price lines connect to Mars' control board via the Jones plug. On the control board, each price line connects through the LED portion of an optical isolator in control board units U11 and U12, through resistors, and finally to AC Hot. Thus, when a user actuates a product selection switch on the vending machine, the vending motor or solenoid associated with that product selection switch becomes energized via a connection between AC Hot and AC Neutral. However, the resistors on the control board create a high impedance circuit without sufficient current to operate the connected motor or solenoid. (Tr. vol. 29, 18.)
Upon energization of an optical isolator's LED in U11 or U12, the transistor side of the optical isolator applies current to one input of AND gate U9. (Tr. vol. 29, 27, 85-86; Def's Ex. 820A.) The other input to AND gate U9 comes from counter U10. Counter U10 has a clock which increments about 5,000 times per second. U10 counts from states zero to nine in sequential order, and then resets back to state zero in a circular fashion. On four of these states, U10 produces an output to one of the U9 AND gates associated with a particular price line. Because U10 counts through ten different states using a clock that pulses 5,000 times per second, U10 runs through a full cycle of possible outputs -- including the four U9 AND gates -- 500 times per second. This action by U10 is known as "polling," since only one AND gate may receive an output from U10 at any given time. If an AND gate receives an input from one of the price line's photo-transistors and from U10's polling activity at the same time, that AND gate produces an output. That output provides feedback which causes U10 to stop polling and hold its output on the same AND gate, thus locking U9's output so long as the photo-transistor side of U10 or U11 continues to supply current to the other input of U9. Through this polling mechanism, the control board prevents a user from causing a high-power electrical current to pass through more than one vend motor or solenoid at a time.
The output current from the selected U9 gate also passes through a price setting switch. Each price line has associated price setting switches which control the selling price of that price line. When current is applied from the output of U9 to the price setting switches, that current becomes an input to various pins of the control board microprocessor U1, which allows the microprocessor to learn (1) that a user has actuated a product selection switch, and (2) the selling price of the item that the user has selected via the product selection switch. (Tr. vol. 29, 33-37, 85-86, 104; Def's Ex. 820A, 820B.)
The third purpose of the U9 AND gate output is as one of the two inputs to NAND gates U6 and U7.*fn8 (Tr. vol. 29, 38; Def's Ex. 820B.) The other input to NAND gates U6 and U7 originates in the control board's microprocessor as a line labeled VEND NOT. Generally, the microprocessor produces a high signal on VEND NOT, which prevents a vending operation from taking place. (Tr. vol. 29, 42.) Before the microprocessor asserts the VEND NOT line as low, which would allow a vending operation to take place, the microprocessor must make the following determinations based on all of its inputs: (1) a user has actuated a product selection switch with an associated price value, (2) the value of money received from the acceptor board either equals or exceeds that price value, and (3) the blocker signal from pin 6 of the vending machine is asserted as high. (Tr. vol. 29, 44, 113-18, 148; Def's Ex. 820A, 820B.) Each of the four NAND gates is associated with a particular product selection switch and its price line via its input from one of the four U9 gates. (Tr. vol. 29, 51.) Thus, when a NAND gate receives appropriate input from both the VEND NOT line and one of the U9 AND gates, the NAND gate's output causes one of four mechanical relays K1-K4 to actuate. (Tr. vol. 29, 49-52, 85-86; Def's Ex. 820A.) Because the VEND NOT output passes through a capacitor*fn9 on its path to the U6 or U7 NAND gates, VEND NOT appears as a pulse that lasts for 2.2 seconds rather than lasting for just an instant in time. (Trial Tr. vol. 30, 14-17.) This pulse, in turn, may continue to supply power to the LEDs at U10 and U11 via the K1-K4 relays even when the user has removed his or her hand from the product selection switch. (Tr. vol. 30, 20-21.)
Each of these mechanical relays are in turn associated with a particular price line. Therefore, when a relay actuates as a result of the output of its NAND gate, that relay connects AC Hot to its associated price line. (Tr. vol. 29, 58-59; Def's Ex. 821A.) The price line connected to AC Hot via the relay had previously been connected to AC Hot via a high impedance resistor network through optical isolators U10 and U11. However, the actuation of one of the K1-K4 relays bypasses the resistors and directly applies a high-power AC Hot to the connected price line. (Tr. vol. 29, 60-62.)
Thus, a high-power current passes from AC Hot on the Mars control board, through one of relays K1-K4 to a price line, through the pin of the Jones plug associated with that price line to the vending machine (Def's Ex. 821A), through the vend motor or solenoid associated with the selected product, through the product selection switch actuated by the user, and to AC Neutral. (Def's Ex. 821B; 821C.) On the vending machine side, this high-power current provides sufficient power to activate the vend motor or solenoid associated with the selected price line. (Tr. vol. 29, 61, 64, 86-88.) As a result of these operations, the pin of the Jones plug associated with a particular price line is used for two purposes: (1) to signal the control board that a user has actuated a product selection switch on the vending machine, and (2) to signal the vending machine that the control board has approved the vending of a product. (Tr. vol. 29, 62.)
In a Type 1 machine, sufficient current to the motor causes the motor to turn and move a hold contact that bypasses the user actuated select switch as a path to AC Neutral on pin 2. (Tr. vol. 29, 66-69; Trial Tr. vol. 33, 101-03; Def's Ex. 822AA.) In a Type 2 machine, the solenoid's mechanical action causes a hold contact to bypass the select switch so that AC Neutral is applied to the solenoid through pin 2 of the vending machine, just as in a Type 1 machine. However, in a Type 2 machine, the movement of the hold contact also results in a full circuit path through the vending machine's vend motor, which causes the vend motor to begin to move. (Tr. vol. 29, 89-91; Def's Ex. 821C, 821D.) In both Type 1 and Type 2 machines, the closing of the hold contact by the motion of the vend motor or solenoid bypasses the user actuated select switch; thus, once mechanical motion has closed the hold contact, the user may remove his or her finger from the product selection switch without affecting the vending process. In addition, the mechanical motion in both types of machines causes the blocker on pin 6 to disconnect from AC Hot, signaling to the control board's U1 microprocessor that mechanical vending activity has begun. (Tr. vol. 29, 69-74, 93-94; Tr. vol. 33, 103-05; Def's Ex. 822AA, 822B, 823AA, 823B.) Eventually, the mechanical action progresses to the point where the machine vends the selected product, and the machine and its electronic logic revert back to their neutral positions, with the blocker again connected to AC Hot. (Tr. vol. 29, 74-75, 95-96.)
Between the time that a user actuates a product selection switch and the time that one of relays K1-K4 applies a high-power current to the vend motor or solenoid, a short period of time passes. If the user were to remove his or her hand from the selection switch during this time, the relay would not be able to complete a full circuit through the vend motor or solenoid. However, because the activity of the control board takes place within tens of milliseconds, it would be difficult for a user to place a finger on the product selection switch and remove that finger fast enough to interrupt the vending machine's operation.*fn10 (Tr. vol. 29, 66-68, 72, 91.)
3. Communication Between Acceptor Board and Control Board
The coin changer handles the accepting and refunding of money via communication between the acceptor board, the control board, and the blocker signal. The acceptor board is responsible for waiting for coins to be deposited by the user, validating those coins, and watching to see if the user has requested a refund of all money deposited by pressing the escrow return button. (Tr. vol. 29, 106, 113; Def's Ex. 483, A000770, A000790.) In contrast, the control board interfaces with the vending machine to control the vending operation, accepts communications from the acceptor board regarding the deposit of coins, and instructs the acceptor board to give money to the user. (Tr. vol. 29, 107, 114.)
When a user deposits a coin, the acceptor board determines whether the coin is valid, in which case the coin changer routes the coin into either a cash box or coin tube, or whether the coin is invalid, in which case the coin changer routes the coin back to the user via the coin return slot. (Tr. vol. 30, 41-44; Def's Ex. 483, A000770, A000771.) During the period of time that the acceptor board attempts to validate an inserted coin, the control board sits in an idle loop*fn11 waiting for some input that will cause it to wake up and perform an action.*fn12 (Tr. vol. 30, 41.) The acceptor board and the control board communicate via the four pins ACCEPT ENABLE NOT,*fn13 SEND NOT, INT NOT, and DATA NOT. (Tr. vol. 30, 51-53;
Def's Ex. 496, A000910, A000913, A000919, A000947.) The control board uses the ACCEPT ENABLE NOT line to inform the acceptor board that the coin acceptor should reject all coins. The control board asserts the ACCEPT ENABLE NOT line during periods when the control board is processing a vending operation initiated by a user. (Tr. vol. 30, 52.) If the acceptor board accepts a valid coin, it asserts the INT NOT line, which indicates to the control board that the acceptor board wishes to send a message. (Tr. vol. 30, 51, 54.) The control board then asserts the SEND NOT line, which informs the acceptor board that the control board is ready to receive information over the DATA NOT line. The information sent allows the control board to know the value of money deposited. (Tr. vol. 30, 55.) The acceptor board does not keep a running total of all money deposited; this information is stored in a memory location on the control board's microprocessor. (Tr. vol. 29, 114; Tr. vol. 30, 38, 58.)
When the control board determines that a customer has actuated a product selection switch, the control board also asserts ACCEPT ENABLE NOT to the acceptor board, which causes the coin changer to temporarily reject all further deposited coins. (Tr. vol. 29, 119; Tr. vol. 30, 34-35.) At that point, if the control board also determines that the customer has inserted enough money for the product selected and that the blocker is connected to AC Hot, the control board will continue instructing the acceptor board to reject deposited coins while asserting VEND NOT, which should result in a high-power current applied to the vend motor or solenoid. (Tr. vol. 29, 119.) If the control board determines that not enough money has been deposited, the vending machine will return to its idle state and permit the deposit of further coins. This logic prevents the coin changer from accepting more money in the middle of a vending operation. During this period and until the blocker reconnects to AC HOT after completion of the vending operation, the acceptor board will not process a user's request for a refund of all money placed into the machine. (Tr. vol. 29, 121-22.) When the acceptor board is not enabled by the control board, the acceptor board does not transmit any messages. (Tr. vol. 29, 120.)
Generally, when a user presses a product selection switch after depositing enough money for the selection, the user's decision is irrevocable, and the user may no longer request a return of all money deposited. (Tr. vol. 30, 30.) However, in the rare case where the vending mechanism begins to operate but fails -- due to mechanical or electrical problems -- prior to the time when the blocker disconnects from AC Hot, the control board and its microprocessor would return to an idle mode, and the machine would honor the user's subsequent request for a full refund of deposited money. (Tr. vol. 30, 30-33; 48-50.) Thus, some unusual circumstances do exist where the machine will permit the user to request a full refund up until the moment that the blocker disconnects from AC Hot, even after the user has deposited the appropriate amount of money for a selected item. (Tr. vol. 30, 40.)
If the control board determines that a user has deposited money in excess of the price of the selected item, the control board calculates the "over price" prior to asserting the VEND NOT line. (Tr. vol. 29, 115-16.) Once the vending operation proceeds to the point where the blocker is no longer connected to AC Hot, the coin tubes return money in excess of the price for the vended item to the user. (Tr. vol. 29, 123-24.) If the user presses the coin return button at a time when the control board is accepting messages, the control board will instruct the coin tubes to return coins equivalent to the value of all coins deposited. (Tr. vol. 29, 127-29; Tr. vol. 30, 27-29.)
4. Parties Do Not Dispute Operation of 5900-series Coin Changers
There appears to be no dispute among the parties regarding the circuitry and operation of Mars' coin changers when placed within a Type 1 or Type 2 vending machine. (See Tr. vol. 29, 26, 79-80, 108-13; Tr. vol. 30, 3-4, 65, 84.) The question of infringement revolves around the parties' different interpretations of claim language in the '903 Patent.
III. Infringement of the '903 Patent
A. Coinco's Allegations of Infringement
Coinco believes that Mars' 5900-series coin changers infringe claims 1, 2, 3, 4, 6, 11, and 12 of the '903 Patent when placed within Type 1 and Type 2 vending machines.
B. Claim Construction and Infringement of the '903 Patent
A patent infringement analysis is a two-step process. Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998). First, the Court must construe the claims of the '903 Patent. Claim construction is a matter of law to be decided by the court. Markman v. Westview Instruments, 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Claim construction must be performed without reference to the allegedly infringing device. Pall Corp. v. Hemasure Inc., 181 F.3d 1305, 1308 (Fed. Cir. 1999). After determining the scope of the claims, the court proceeds to the second step of comparing the properly construed claims to the allegedly infringing device. Cybor Corp., 138 F.3d at 1454. As a result of this analysis, the Court finds that Mars' 5900-series coin changers in combination with Type 1 and Type 2 vending machines do not infringe any of the claims of the '903 Patent. The Court also agrees with Mars that Coinco made little effort to show infringement by the doctrine of equivalents.
1. "means under control of the accumulator . . . including . . . vend selection means" (1[b])
Mars has asked the Court to construe the claim term "accumulator" as a term in means-plus-function format, which would require looking to the specification for a description of the accumulator's structure. According to 35 U.S.C. § 112, paragraph 6, a claim element "may be expressed as a means . . . for performing a specified function without the recital of structure." Where a claim describes a means for a function without stating the structure associated with the means, "such claim shall be construed to cover the corresponding structure . . . in the specification . . . ." Id. This allows a patentee to draft a claim using generic language describing the means to perform a particular function, "provided that [the patentee] discloses specific structure(s) corresponding to that means in the patent specification." Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1360 (Fed. Cir. 2000); Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1361 (Fed. Cir. 2006); Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307-08 (Fed. Cir. 1998) ("the 'means' term in a means-plus-function limitation is essentially a generic reference for the corresponding structure disclosed in the specification."). Without a disclosure of adequate structure in the specification, the claim must be rendered invalid as indefinite. Mass. Inst., 462 F.3d at 1361; Kemco, 208 F.3d at 1360-61.
(a) Use of the word "means" triggers the presumption of a means-plus-function analysis of the term "accumulator" in claim Generally, "[t]he use of the word 'means' 'triggers a presumption that the inventor used this term advisedly to invoke the statutory mandate for means-plus-function clauses.'" Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1347 (Fed. Cir. 2002) (citation omitted); see also Kemco, 208 F.3d at 1361 ("Use of the term 'means' in a claim limitation creates a presumption that 35 U.S.C. section 112, paragraph 6 has been invoked . . . ."). A party may rebut this presumption either by (1) showing that the claim element describing "means" does not recite a function corresponding to the means, or (2) by finding sufficient structure within the claim for performing the function. Allen, 299 F.3d, 1347; Kemco, 208 F.3d at 1361.
(1) The claim term "accumulator" in claim 1 does recite a function Determination of function for a means-plus-function element is a claim construction issue decided as a matter of law. Chiuminatta, 145 F.3d at 1308. In this case, the "accumulator means" and "means to accumulate" of claim 1 recite the function of accumulating "the amount of credit entered in the coin unit during each vending operation," and then producing an output "whenever an amount accumulated at least equals the amount of a selected vend price." '903 Patent col. 8, lines 26-30.*fn14
(2) The language of claim 1 does not give a structure for the claim term "accumulator" Because the function of the accumulator means is well expressed within the claim language, the remaining issue for a determination of whether or not the accumulator means should be construed according to section 112, paragraph 6, is whether these means also recite sufficient definite structure within the language of the claims themselves for producing these functions. Determination of this structure is also a matter of claim construction. Id.
Coinco points to Cole v. Kimberly-Clark Corp., 102 F.3d 524 (Fed. Cir. 1996), as one example of a case where a court held that a claim element describing a "means" itself recited sufficient structure for performing the stated function. Cole discussed a patent with a claim employing "perforation means . . . for tearing." Id. at 531. Because the accused infringing product did not possess true perforations but instead used bonded seams capable of tearing, the plaintiff in Cole desired to have "perforation means" construed by the court as a means-plus-function element in order to claim infringement via additional embodiments described in the patent's specification. Id. The Federal Circuit rejected the plaintiff's arguments because the claim element recited the structure of perforations to perform the tearing function. Id. at 531. In addition, the claim detailed the location and extent of these perforations. Id. Thus, Cole held that the defendant had shown sufficient definite structure to rebut the presumption of applying 35 U.S.C. § 112, paragraph 6 to "perforation means."*fn15
Just as Cole held that a claim with "perforation means" recites sufficient structure so as to avoid the means-plus-function presumption, Coinco asks the Court to also hold that "accumulator means" and "means to accumulate" within the claims of the '903 Patent recite sufficient definite structure to avoid the presumption. Besides the word "accumulator" itself, the only structural descriptions of an accumulator within claim 1 of the patent are that the accumulator has an input and an output, both of which fit within the invention's general structure. The claim language gives no guidance for how the accumulator should keep a record of total money deposited, and how it should compare that total to the "selected vend price." '903 Patent col. 8, lines 20-54. This contrasts with Cole, where the claim language specified the means to perform the tearing function with a detailed structure which included perforations extending from the leg band to the waist band and through an outer impermeable layer. Cole, 102 F.3d at 531. Unlike the "perforations" in Cole, the word "accumulator" by itself describes a function with no associated structure.*fn16
Further evidence that claim 1(b) does not recite a definite structure for the accumulator comes from the trial testimony of Mr. Upchurch regarding infringement. During his testimony, Mr. Upchurch attempted to use the language of claim 1 to show structural similarity with the inputs and outputs of the U1 microprocessor on Mars' control board. (Tr. vol. 30, 97-99.) However, when he compared the accumulation activity described in claim 1 with the U1 microprocessor, Mr Upchurch's testimony referred only to the function of accumulation within the patent, and did not discuss any supporting structure within the claim language itself which allowed the accumulation to take place. (Tr. vol. 30, 99-100.) The Court would have expected Mr. Upchurch to make some comparison to the structure of the accumulator using the language of claim 1, if such a structure existed within the language of the claim. Because Mr. Upchurch, Coinco's expert witness on infringement, did not even attempt to reference the language of claim 1 to find a structure for the accumulator, the Court is further persuaded that no such structure exists within the language of the claim itself.
"What is important is not simply that a [term] is defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood meaning in the art." Greenberg v. Ethicon Endo-Surgery, 91 F.3d 1580, 1583 (Fed. Cir. 1996); see also Watts v. XL Sys., 232 F.3d 877, 880 (Fed. Cir. 2000). Coinco has not convinced the Court that the general term "accumulator" on its own describes sufficient structure for an individual skilled in the art to understand the claim. There was no testimony from Coinco relating the level of ordinary skill to the knowledge required to understand the structure of an accumulator. During his testimony, Mr. Upchurch discussed U.S. Patent No. 3,687,255, which the '903 Patent's specification described as containing an accumulator that could be used in one embodiment of the '903 Patent. (Tr. vol. 34, 138-41.) In the '255 patent, element 14 is labeled "Forward Back Accumulator." '255 Patent Fig.1. Although the '255 Patent appears to refer to this element alone as the accumulator, Mr. Upchurch testified that the accumulator means in claim 1 of the '903 Patent included more than just the Forward Back Accumulator element. (Tr. vol. 34, 138-39.) Because the '903 Patent and the '255 Patent use the word "accumulator" to refer to different types of structures with different purposes, the court must conclude that individuals with ordinary skill in the art at the time of the invention would differ in their understanding of the structure that an "accumulator" requires.*fn17
The Court reaches this conclusion -- that the word "accumulator" does not have a well defined structure -- in contrast to a recent case which construed the word "scanner" as containing limitations even though "the specification [did] not define the term 'scanner' either explicitly or implicitly." Mass. Inst., 462 F.3d at 1351. The Mass. Inst. court did not construe "scanner" as a means-plus-function term, as the Court does for the word "accumulator." Additionally, Coinco has not convinced the Court that an individual of ordinary skill in the art would have understood the meaning of "accumulator" in light of the claims and the specification of the '903 Patent.
(b) The term "accumulator" in claim 11 is also a means-plus-function term despite lack of the word "means"
The accumulator described in claim 11 also satisfies the requirements for a means-plus-function element. Although the language of claim 11 does not use the word "means" in reference to the accumulator, the requirements of 35 U.S.C. § 112, paragraph 6 still apply. "[A]bsence of the word 'means' creates a presumption that 35 U.S.C. section 112, paragraph 6 has not been invoked," but this presumption may "be rebutted if the claim limitation is determined not to recite sufficiently definite structure to perform the claimed function." Kemco, 208 F.3d at 1361. Generally, "the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims." Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001). The accumulator described in claim 11 is quite similar to the accumulator described in claim 1.*fn18 Just as in claim 1, the accumulator must have an input "responsive to outputs produced . . . when coins are deposited to accumulate the value thereof," and must also be capable of "producing an accumulator output signal whenever the amount accumulated therein at least equals the price of a selected vend." '903 Patent col. 9, line 44 - col. 10, line 14. Because claim 11 also does not recite any structure to perform these functions, the term "accumulator" in claim 11 must also be construed as a means-plus-function element.*fn19
(C) The specification of the '903 Patent provides a structure for the term "accumulator"
"After a court establishes that a means-plus-function limitation is at issue, it must then construe the function recited in that claim and determine what structures have been disclosed in the specification that correspond to the means for performing that function." Kemco, 208 F.3d at 1361; Chiuminatta, 145 F.3d at 1308. The "accumulator means" limitation must be "defined by the corresponding structure, material, or acts described in the patent specification, or their equivalents . . . ." WMS Gaming, 184 F.3d at 1348. Figure 1 of the patent describes a single-price embodiment where all products to be vended share the same price. The specification describes the accumulator's structure in the single-price embodiment as follows:
The accumulator 56 can have many different forms including any of those forms shown in Shirley U.S. Pat. Nos. 3,307,671, 3,521,733, 3,508,636, 3,589,492, Johnson U.S. Pat. No. 3,687,255, Levasseur U.S. patent application Ser. No. 267,558, filed June 29, 1972 and Douglass U.S. patent application Ser. No. 204,988, filed Dec. 6, 1971 . . . . '903 Patent col. 3, lines 17-23. In addition, the specification states that
[t]he accumulator-change maker circuit 56 can have many different forms as stated and should be able to accumulate amounts deposited or otherwise entered and should be able to make change for deposits in excess of a selected vend price. The form of circuit selected for the circuit 56 is not part of this invention.*fn20
'903 Patent col. 4, lines 22-27.
Figure 6 describes a dual-price embodiment where each product in the vending machine may have one of two prices. The accumulator in this embodiment is a "dual changer or accumulator circuit" which "may be similar to that shown in Johnson U.S. Pat. No. 3,687,255 and which has one of its inputs connected to a cash or credit acceptor circuit 152." '903 Patent col. 6, lines 59-62. The two different price lines in this dual-price embodiment each have their own selection monitor, and each of those selection monitors has a separate connection to the dual changer or accumulator element. Figure 6 also shows two separate outputs from the dual changer or accumulator, each of which connects to an OR gate connected to the escrow element and also back to the product selection switches, which appear intended to provide the high-power current. '903 Patent col. 6, line 59 - col. 7, line 39.
An examination of the accumulator means requires the Court to decide how broadly to interpret the structures and patents given as examples for an "accumulator" within the specification. "When multiple embodiments in the specification correspond to the claimed function, proper application of § 112, paragraph 6 generally reads the claim element to embrace each of those embodiments." Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999); see also Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325, 1329 (Fed. Cir. 2004). For the single-price embodiment, the specification reveals certain patents as providing the structure for the accumulator means. The specification also advises that the accumulator "is not part of this invention," and that it "can have many different forms." Similarly, the specification broadens the structure of the dual-price (or multi-price) embodiment beyond the '255 Patent by including language that the structure "may be similar" to the accumulator in the '255 Patent. However, "[w]hile the use of means-plus-function language in a claim is clearly permissible by reason of section 112(6), a means clause does not cover every means for performing the specified function." Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1536 (Fed. Cir. 1991) (emphasis in original); see also NOMOS Corp. v. BrainLAB USA, Inc., 357 F.3d 1364, 1368 (Fed. Cir. 2004). A court should not define the structure to include any possible means for performing the designated function, even where the specification lacks disclosure of the structure. WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d at 1348 (refusing to apply a broad definition of structure to "means for assigning" even where the patent was "almost completely devoid of any structure to support this limitation of the claim); see also Source Search Techs., LLC v. Lending Tree, LLC, 2006 U.S. Dist. LEXIS 79651, at *27-*35 (D.N.J. 2006) (unpublished opinion) (quoting WMS Gaming). Thus, regardless of the language in the specification that the accumulator "can have many different forms," the Court construes "accumulator" to include only the structures in those patents disclosed within the specification and equivalents of those structures. NOMOS, 357 F.3d at 1369.
Coinco argues that the court should apply a broad interpretation to the structure of the accumulator. Although the Court believes that it would have been possible to draft the claims to encompass a broader definition of the term "accumulator," the actual language used by the '903 Patent prevents the Court from accepting the broad interpretation urged by Coinco. Instead, the language of the '903 Patent requires the Court to adopt a much narrower construction; therefore, the word "accumulator" includes only the structures in those patents disclosed within the specification and equivalents of those structures.
With the term "accumulator" thus construed, one final issue remains regarding the interpretation of the term. The "structure disclosed in the specification must be clearly linked to and capable of performing the function claimed by the means-plus-function limitation." Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1299 (Fed. Cir. 2005); B. Braun Medical, Inc. v. Abbott Laboratories, 124 F.3d 1419, 1424-25 (Fed. Cir. 1997). The specification does link the stated patents to single-price and dual-price embodiments of the invention by specifically naming the patents as examples of the types of forms that the accumulator could take. The named accumulator patents describe various structures for the functions of accumulating the value of money deposited into a coin unit and comparing the value of money received with a set price before sending an output indicating that the set price had been met.
(ii) Infringement "Literal infringement of a means-plus-function claim limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification." Applied Med. Res. Corp. v. United States Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006). "Once the relevant structure in the accused device has been identified, a party may prove it is equivalent to the disclosed structure by showing that the two perform the identical function in substantially the same way, with substantially the same result." Id. At trial, Mr. Upchurch testified that Mars' U1 microprocessor performs the same function as the '903 Patent's accumulator. However, other evidence regarding the workings of the U1 microprocessor shows that this is not the case. Mars' U1 microprocessor does accumulate money, based on input from a coin unit, but does not necessarily assert an output on VEND NOT "whenever an amount accumulated at least equals the amount of a selected vend price." VEND NOT will only be asserted as low if both the blocker is hot and the amount accumulated at least equals the amount of a selected vend price. Thus, U1 does not perform the same function as the '903 Patent's accumulator.
With regards to structural comparison, the U1 microprocessor does not have an identical or equivalent structure to the single-price accumulator structures described in the '903 Patent. Based on the construction of "accumulator" outlined above, Mars' coin changers cannot literally infringe the patents disclosed for the single-price embodiment. Coinco did not show identical or equivalent structure between any of these single-price accumulators and Mars' accused products, and did not show how the structure of any of these single-price accumulators compared to the multi-price structure of Mars' U1 microprocessor.*fn21 Therefore, Mars' coin changers do not include the structure of any of the patents which describe a single-price accumulator.
For a dual- or multi-price embodiment, the '903 Patent states a structure for the accumulator which "may be similar to that shown in Johnson U.S. Pat. No. 3,687,255." By defining the structure as the '255 Patent and those "similar," the description of a multi-price accumulator appears to exclude other types of structures. The '255 Patent does have the capability to accumulate money and compare prices for differently priced products. However, Coinco has not shown identical or equivalent structure between the U1 microprocessor and the accumulator discussed in the '255 Patent. Indeed, the output of the Forward Back Accumulator (and the Price Control elements) in the '255 Patent does not depend upon whether or not a user has actuated a product selection switch. In contrast, the U1 microprocessor cannot make a comparison between a vend price and the amount accumulated until a user has actuated a product selection switch.*fn22 (Tr. vol. 33, 52-53.) The '255 Patent's accumulator and the U1 microprocessor do not perform identical or substantially the same functions in substantially the same way, with substantially the same result.*fn23
2. "whenever" (1[b], 11[p.3])
Two issues arise regarding interpretation of the word "whenever" in claim 1 and claim 11 of the '903 Patent: (1) whether claim 1 includes the situation where a condition to enable a vend will not be established, even if there is sufficient credit for the selected product, until the selection switch has been actuated for a sufficient time, and (2) whether claim 1 and claim 11 include the situation where the means under control of the accumulator will not establish a condition to enable a vend operation to take place until a product selection switch has been actuated and additional logic is satisfied. Coinco argues that the word "whenever" should be construed to allow for a determination that the selection switch has been actuated for a sufficient time and that the accumulator's logic to establish the condition may also include actuation of the product selection switch and any additional logic. Mars argues that "whenever" must exclude the situation where a ...