Federal Circuit Puts the Brakes on District Court’s Claim ConstructionApril 19, 2007

The Federal Circuit today issued a fairly routine claim construction decision, vacating part of the district court's claim construction and remanding. The Court also affirmed the district court's decision to deny Rule 11 sanctions (applying Ninth Circuit law).

More details of the case after the jump.

Intamin Ltd. sued Magnetar Technologies Corp. for infringement of its patent relating to braking systems used on various amusement park rides, such as roller coasters and drop towers. Claim 1 of the patent was asserted, and two claim terms were disputed on appeal (highlighted in bold):

1. A braking device for use with an amusement apparatus having a fixed device part, at least one running rail secured to the fixed device part, and a movable device part including at least one traveling gear configured for movement along the at least one running rail, the braking device comprising: an eddy current brake assembly including: a conducting part having at least one conductive rail configured for attachment to the fixed device part, said at least one conductive rail being adapted to extend the length of the fixed device part; an energizing portion having at least one yoke aligned in correspondence with each said at least one conductive rails, each said yokes including a pair of yoke arms for receiving said at least one conductive rail therebetween; at least one pair of carrying rails extending a predetermined distance along the direction of said at least one conductive rail, each said carrying rails being mounted on corresponding yoke arms of said plurality of yokes; a plurality of magnet elements mounted on each of said carrying rails with alternating polarities, said plurality of magnet elements being further arranged such that the poles of magnet elements mounted on one carrying rail have opposite polarities from the poles of magnet elements mounted on a corresponding carrying rail of said at least one pair of carrying rails; and an intermediary disposed between adjacent pairs of said plurality of magnet elements; wherein: an interferric gap is defined between each said yoke arms and the at least one conductive rail, and movement of the movable device part, relative to the fixed device part, induces eddy currents that create a magnetic brake force between said conducting part and said energizing part.

Figures 7 and 8 from the patent illustrate the "intermediaries" as gaps between the magnetic elements of the braking system, as shown below:

In one embodiment disclosed in the specification, the intermediary is non-magnetic, however claim 1, as shown above, is not limited to non-magnetic intermediaries. Magnetar's product uses magnets arranged in a Halbach array, which uses no non-magnetic sections, and therefore Magnetar argued that its product does not have an "intermediary" as required by the patent. The district court construed "intermediary" to require a non-magnetic intermediary, which was not present in the Magnetar device. The district court construed "conductive rail being adapted to extend the length of the fixed device part" to require the conductive rail to run the end length of the track to which it was attached. In the context of a roller coaster, this means that the conductive rail would have to run the entire length of the roller coaster. However, because the district court granted summary judgment of noninfringement based on its construction of "intermediary," it did not reach the question of infringement of the other disputed limitation, the conductive rail "adapted to extend the length of the fixed device part," but opined that the Magnetar product may infringe under the doctrine of equivalents.

Magnetar also moved for attorney's fees and sanctions under Rule 11(b), arguing that the complaint had been filed for an improper purpose and that the complaint was frivolous based on an inadequate prefiling investigation by Intamin. The district court initially granted the motion, but upon reconsideration, vacated that decision, because under Ninth Circuit law, Rule 11 sanctions are appropriate based on the filing of a complaint only if that complaint is frivolous, which was not the case here. Both parties appealed.

The Federal Circuit turned first to the interpretation of "intermediary." The court noted that claim 2 of the patent claims: "The braking device of claim 1 wherein said intermediary is non-magnetic." Thus, under the doctrine of claim differentiation, the "intermediary" claimed in claim 1 must be broader than the specifically non-magnetic intermediary in claim 2. As a result, the court held that the term "intermediary" was not limited to non-magnetic materials, However it left to the district court whether a magentic intermediare would work in the context of the patent, which will require the district court to construe the term "adjacent magnets of alternating polarity," as the intermediary can only be magnetic if the adjacent pairs of magents have opposite polarities.

The court then reviewed the district court's construction of "conductive rail being adapted to extend the length of the fixed device part." Here, the Federal Circuit agreed with the district court. Specifically, the court noted that the specification of the patent uses "length" in the context of distance, not direction, such as to describe braking distance. As a result, the intrinsic evidence supported the district court's claim construction that the rail must run the end length of the track, and that construction was affirmed. However, because the district court noted that infringement of this limitation was possible under the doctrine of equivalents, it noted that the district court should consider this issue in light of the remand on the "intermediary" limitation.

As for the Rule 11 issue, the Federal Circuit affirmed the district court's determination that the plaintiff's pre-filing inquiry was reasonable under the circumstances and, thus, there was no abuse of discretion in the district court's determination to vacate its previous finding of Rule 11 sanctions. Under Ninth Circuit law, sanctions are imposed if either "a) the paper is filed for an improper purpose, or b) the paper is 'frivolous.'" However, in the context of complaints, in the Ninth Circuit, "complaints are not filed for an improper purpose if they are not frivolous." Magnetar alleged that the complaint was not based on an adequate prefiling investigation because Intamin did not obtain one of Magnetar's brake systems and physically cut open and examine the magnets to determine their alignment. The magnets were enclosed in metal tubes, making it impossible to determine the magnets' orientation upon visual inspection. An earlier Federal Circuit case, Judin v. United States, found an abuse of discretion in not granting sanctions when the patentee did not obtain a sample of the product as part of its pre-filing investigation. The court distinguished Judin on the grounds that Judin involved an easily-obtainable device (a bar code scanner), whereas here, the system is embodied in amusement park rides. As a result, a reasonable investigation in this case would not necessarily include obtaining a sample of the product. Intamin did analyze the patent's validity, determine the scope of the claims, and perform an infringement analysis, as well as reviewing publicly-available documents on Magnetar's system and reviewing those documents, along with photos of the installed systems, with experts. As a result, the inquiry was reasonable un