The opinion of the court was delivered by: Lifland, District Judge
FINDINGS OF FACT AND CONCLUSIONS OF LAW RE: COINCO '839 PATENT
This matter comes before the Court upon the counterclaim of Defendant Coin Acceptors, Inc. ("Coinco" or "Defendant") against Plaintiffs Mars, Incorporated and Mars Electronics International, Inc. (collectively, "Mars" or "Plaintiff") regarding Mars' alleged contributory and induced infringement of Claims 13 and 16 of Coinco's U.S. Patent No. 4,034,839 ("the '839 patent").*fn1 For the reasons set forth below, the Court finds that Coinco has failed to establish either contributory or induced infringement of the asserted claims.
The '839 patent, entitled "Simplified Multi-Price Vend Control Circuit," 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. 7, Stipulated Fact No. 134.) Coinco alleges that Mars has contributed to and induced infringement of Claims 13 and 16 of the '839 patent by selling certain 5900-series changers-namely four price, four vend relay changers; four price, one vend relay changers; and ten price changers-for use in "Type I" and "Type II" vending machines.
Detailed descriptions of Mars' 5900 series changers, as well as "Type I" and "Type II" vending machines, are included in this Court's earlier opinion concerning Coinco's U.S. Patent No. 3,828,903. Mars, Inc. v. Coin Acceptors, Inc., Civ. Act. No. 90-49 (JCL), 2007 U.S. Dist. LEXIS 20094 (D.N.J. Mar. 21, 2007). Accordingly, the Court will not revisit those details here. For present purposes it is sufficient to note that many vending machines are 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, and 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. Mars' accused 5900-series coin changers have been advertised and promoted for use in "Type I" and "Type II" vending machines. Coinco alleges that the accused changers, when used in "Type I" or "Type II" vending machines, infringe Claim 13 and Claim 16 of its '839 patent.
Coinco does not assert direct infringement against Mars because each of the asserted claims includes elements of vending machines that are not present in Mars' changers, but are allegedly present only when the changers are used in "Type I" or "Type II" vending machines. Mars denies that its accused changers infringe the '839 patent, even when used in conjunction with such vending machines. For the reasons explained below, the Court agrees with Mars that its accused changers do not infringe Coinco's '839 patent.
II. INFRINGEMENT OF THE '839 PATENT
As explained above, Coinco accuses Mars of contributory infringement and inducement of infringement of Claims 13 and 16 of the '839 patent. Direct infringement by the completed product is a required element of both inducement of infringement under § 271(b) and contributory infringement under § 271(c). Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1319 (Fed. Cir. 2006); Glenayre Elecs., Inc. v. Jackson, 443 F.3d 851, 858 (Fed. Cir. 2006); Novartis Pharm. Corp. v. Eon Labs Mfg., 363 F.3d 1306, 1308 (Fed. Cir. 2004) ("When indirect infringement is at issue, it is well settled that there can be no inducement or contributory infringement absent an underlying direct infringement."); Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004) ("Indirect infringement, whether inducement to infringe or contributory infringement, can only arise in the presence of direct infringement, though the direct infringer is typically someone other than the defendant accused of indirect infringement."). As explained in more detail below, the Court finds that Coinco has failed to establish direct infringement, and accordingly has failed to establish either contributory infringement or inducement of infringement against Mars.
Claim 13 of the '839 patent covers:
A vend control circuit comprising
[a] a coin unit for accepting coins of at least two different denominations,
[b] accumulator means operatively connected to the coin unit including means for entering into the accumulator means amounts representing the value of each different denomination coin deposited during a vend operation,
[c] a price accumulator means having
[c.1] a plurality of input connections for the entry therein of a selected vend price, said ...