Fuel Pump Patent Not Infringed
June 30, 2004
Last Month at the Federal Circuit - June/July 2004
Judges: Linn, Newman, Bryson
In TI Group Automotive Systems (North America), Inc. v. VDO North America, LLC, No. 02- 1630 (Fed. Cir. June 30, 2004), the Federal Circuit affirmed and reversed certain portions of the district court’s claim construction, which led to an affirmance of a judgment of noninfringement, but a reversal and remand on validity issues.
TI Group Automotive Systems (North America), Inc. (“TI Group”) owns U.S. Patent No. 4,860,714 (“the ‘714 patent”), which is directed to fuel pump assembly technology. TI Group is an automotive supplier and has licensed the ‘714 patent to other suppliers, including Delphi, a former subsidiary of General Motors. When Delphi began to have labor difficulties, General Motors sought a second source of pump assemblies and awarded the contracts to VDO North America, LLC, and several other related companies (collectively “VDO”) rather than TI Group. The ‘714 patent is directed to an in-tank fuel assembly for fuel-injected engines that provides a constant and reliable fuel even when the fuel tank is low or its contents are sloshing. Based on the district court’s claim construction, a jury returned a verdict finding that VDO infringed three claims literally and under the DOE, that the same claims were not invalid, and that VDO’s infringement was willful. The jury also awarded damages in the form of a reasonable royalty of 5%, totaling about $11 million. After the post-trial briefing, however, the district court determined as a matter of law that VDO did not infringe, but declined to address VDO’s motion for JMOL that the ‘714 patent was invalid. Because the district court left that issue open, the Federal Circuit initially rejected the appeal for lack of jurisdiction. The district court then denied VDO’s JMOL motion on invalidity, and the parties reinitiated their appeals.
The Court first construed the phrase “fuel reservoir,” which the district court had construed to mean “the portion of the apparatus for pumping fuel in which fuel is connected and retained apart from fuel in the fuel tank.” TI Group urged the Federal Circuit to adopt the broadest dictionary definition—“any receptacles for fluids.” The Federal Circuit concluded that even ordinary dictionary definitions, however, connoted that the fuel in the reservoir be contained, or held apart, from the fuel in the fuel tank. Such connotation was fully supported by the written description, according to the Court.
The Federal Circuit then construed the phrase “pumping means” and concluded that because this phrase also defines structure, including a nozzle and a venturi tube in alignment with the nozzle, any presumption that this phrase was a means-plus-function limitation was overcome by the recitation of such structure.
The Federal Circuit also construed the word “within,” which the district court construed to mean that the pumping-means components are located inside of the reservoir. Because the dictionaries offered competing definitions, the Federal Circuit again looked to the written description to point away from the improper meaning and toward the proper meanings. In the end, the Federal Circuit affirmed the district court’s construction of the term “within” as meaning “inside.”
After construing several additional claim limitations, the Federal Circuit turned to the JMOL of noninfringement. It concluded that based on the proper claim construction, the claims required that the pumping means must be on the reservoir side of the opening that divides the fuel tank from the reservoir. The pumping means in VDO’s accused device, however, is on the fuel-tank side of the opening that divides the fuel tank from the reservoir and, therefore, is not located within the reservoir as the term had been construed. Accordingly, the Federal Circuit affirmed the JMOL of no infringement.
With regard to invalidity, however, the Federal Circuit found that although it had determined the proper interpretation of the claims, the jury could only have compared the prior art to the erroneously construed claims, and, therefore, the Court remanded the invalidity question for further proceedings.