United States Court of Appeals for the Federal Circuit - PDF document

United States Court of Appeals for the Federal Circuit __________________________ DAVID GROBER, Plaintiff-Appellant, AND VOICE INTERNATIONAL, INC., Plaintiff-Appellant, v. MAKO PRODUCTS, INC., AIR SEA LAND PRODUCTIONS, INC., CINEVIDEOTECH, INC., SPECTRUM EFFECTS, INC., AND BLUE SKY AERIALS, INC., Defendants-Cross Appellants, AND DOES 1-10, JORDAN KLEIN, SR., JORDAN KLEIN, JR., AND OPPENHEIMER CINE RENTAL, LLC, Defendants. __________________________ 2010-1519, -1527 __________________________ Appeal from the United States District Court for the Central District of California in Case No. 04-CV-8604, Judge Jack Zouhary.

GROBER v. MAKO PRODUCTS 2 _________________________ Decided: July 30, 2012 _________________________ J ON E. H OKANSON , Lewis, Brisbos, Bisgaad & Smith LLP, of Los Angeles, California, argued for all plaintiffs- appellants. On the brief was D AVID G ROBER , of Marina Del Rey, California. Of counsel was E DWIN P. T ARVER Lauson & Tarver, LLP, of El Segundo, California. B RIAN W. W ARWICK , Varnell & Warwick. P.A., of The Villages, Florida, argued for defendants-cross appellants. __________________________ Before R ADER , Chief Judge , P ROST and M OORE , Circuit Judges . R ADER , Chief Judge . The United States District Court for the Central Dis- trict of California granted summary judgment of non- infringement to the defendants (Mako Products, Inc.; Air Sea Land Productions, Inc.; CineVideoTech, Inc.; Spec- trum Effects, Inc.; Blue Sky Aerials, Inc.; Jordan Klein’s, Sr.; Jordan Klein’s, Jr.; and Oppenheimer Cine Rental, LLC) on the patent owned by David Grober and Voice International, Inc. (“Appellants”). Several defendants cross-appeal the district court’s denial of attorney’s fees. For the reasons recited below, this court affirms-in-part, vacates-in-part, and remands to the district court. I. Appellant David Grober invented a platform that sta- bilizes a camera for filming motion pictures from moving vehicles. This technology, known in the entertainment industry as the Perfect Horizon, won Grober an Academy

3 GROBER v. MAKO PRODUCTS Award in technical achievement. He also received U.S. Patent No. 6,611,662 (“’662 patent”), entitled “Autono- mous Self Leveling, Self Correcting Stabilized Platform,” for this technical advance. The invention “compensate[s] for motion caused by waves, currents, wind, and other motion during land, air, and sea operations of a camera.” ’662 patent Abstract. For the purposes of this appeal, claim 1 is representa- tive: 1. A stabilized platform comprising: a payload platform for supporting an article to be stabilized; a base; a stabilizing system connected between the payload platform and the base, the stabilizing system in- cluding means for moving the payload platform with respect to the base about two different axes for providing the payload platform with stabilization in two dimensions; a first sensor package for determining, in two trans- verse directions, motion of a moving object on which the stabilized platform is mounted; a second sensor package comprising sensor means for sensing a position of the payload platform and for providing information based on the position of the payload platform relative to a predetermined po- sition; and a control system connected to the means for moving for stabilizing the platform in response to informa- tion provided by the first sensor package and the second sensor package, wherein the second sen- sor package is fixed to the payload platform , and the first sensor package is fixed with respect to the base.

GROBER v. MAKO PRODUCTS 4 ’662 patent col. 7 ll. 50-col. 8 ll. 6 (emphasis added). Fig. 2 illustrates the side view of the platform 100 with its stabilizing technology along two axes. ’662 patent col. 3 ll. 6-8. On one axis, the stabilized platform 100 compensates for unwanted movement. This compensation occurs with the assistance of a first drive mechanism 10, which is mounted on a fixed side plate 8. The drive mechanism 10 includes a motor and, potentially, a gear box. The preferred embodiments teach an encoder at- tached to the motor to give feedback based on the position of the bottom platform 2. This mechanism provides one of the two stabilized axes. A protective housing 16 encloses the drive mechanism 10 (including the motor, gear box, encoder, and associated wiring). Id. at col. 3 ll. 14-31. The second stabilizing mechanism involves platform 22 which holds the camera. A second drive mechanism 30 attaches to this mounting platform and stabilizes the platform along another axis. Figs. 2 and 3 show that the second drive mechanism 30—fixed to the bottom platform

5 GROBER v. MAKO PRODUCTS 2—mounts orthogonally (i.e., perpendicularly) to the first drive mechanism 10. In sum, the second drive shaft 24 is orthogonal to the first drive shaft 4 to permit two- dimensional stabilization of the camera platform 22. Id. at col. 3 ll. 31-65. Fig. 2 shows the stabilized platform 100 in an upright orientation with the ability to compensate for pitch and roll of the vehicle 64. Id. at col. 4 ll. 6-11. The ’662 patent further teaches a method to achieve a third axis of stabilization along the azimuth axis. Fig. 3 compensates for azimuth motion by adding a third set of orthogonally positioned drive components to the stabilized platform 100. This third drive mechanism stabilizes the platform with input from sensor packages A and B. Sensor package A appears on the housing 82, or other disclosed areas; package B on the camera platform 22. Id. at col. 5 ll. 26-39; col. 4 ll. 25-27.

GROBER v. MAKO PRODUCTS 6 David Grober and Voice International, Inc. sued Cross-Appellants in October 2004 alleging that their manufacture, sale, and lease of a movie stabilization device known as the MakoHead infringed the ’662 patent. Cross-Appellants then commenced an inter partes reex- amination of the ’662 patent before the U.S. Patent and Trademark Office (“PTO”). The district court stayed the infringement suit. In 2006, the trial court lifted the stay and authorized commencement of discovery. The district court held a Markman hearing and construed the claim term “payload platform.” Based on this interpretation, the district court sua sponte concluded that the MakoHead did not infringe the ’662 patent. Appellants filed a motion to vacate the district court’s summary judgment order, which was denied. Cross-Appellants sought attorneys fees as sanctions under Rule 11 and attorney fees under 35 U.S.C. § 285. The district court declined to award attorneys fees under either rationale. The district court issued its final judg- ment of non-infringement and the Appellants timely appealed to this court, which has jurisdiction under 28 U.S.C. §§ 1292(c)(1) and 1295(a)(1). The PTO completed the reexamination of the ’662 patent after Appellants’ notice of appeal and confirmed patentability of independent claims 1 and 38 as well as several dependent claims. II. This court reviews a district court’s claim construction without deference. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). In this case, the district court erred in construing the claim term “payload platform” to mean “the horizontal plate, piece of

7 GROBER v. MAKO PRODUCTS surface upon which the device (e.g., a camera) is directly mounted upon or affixed to.” Grober v. Mako Prods., Inc. , No. 2:04-CV-04-8604, 2009 WL 1587158, at *12 (C.D. Cal. June 4, 2009) (“ Markman Order ”). Before the Markman hearing, the parties proposed competing constructions of the term “payload platform.” The district court found significant differences in those proposals. Id. at *3. Most notably, Cross-Appellants limited the disputed term to a “horizontal surface or plate” upon which the device is mounted or affixed. Appellants, on the other hand, included the three- dimensional “supporting structure” of said “horizontal surface or plate.” Id. The district court relied heavily on the reexamination history of the ’662 patent where Grober narrowed the claims “in order to avoid a significant body of prior art.” Id. at *2. The prior art was U.S. Patent No. 5,922,039 to Welch et al. (“Welch patent”) and U.S. Patent No. 4,143,312 to Duckworth et al. (“Duckworth patent”). The trial court explained: “an understanding of . . . [the] specific structural aspect of the prior art . . . in relation to the ‘payload platform’ provides meaningful insight into what part of the ’662 patent is sought to be captured through use of that term . . . .” Id. at *5. In view of the Welch and Duckworth patents, the district court found “the defining characteristic of the ’662 patent . . . was the fact that the ’662 patent ‘requires the second sensor package [be] fixed to the payload platform.’” Id. The district court construed the claim term “payload platform” to mean “the horizontal plate, piece of surface upon which the device (e.g., a camera) is directly mounted upon or affixed to.” Id. at *12. This court generally gives claim language its “ordi- nary and customary meaning.” Phillips v. AWH Corp. , 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d