Claim Construction

Magnetic brakes create "eddy currents" when a conductor passes through a gap between two sets of magnets. These eddy currents, in turn, create a magnetic friction that slows and stops the car attached to the conductor. The '350 patent describes specific arrangements for the conductor and the magnets. Figure 6 of the '350 patent illustrates a configuration with the adjacent magnets of opposite polarity in direct contact. The '350 specification states that ''[a]ccording to Fig. 6, the polarity of the magnet elements (8) are reversed along the direction of the carrying rail." '350 patent col.4 ll.22-23.

Figures 7 and 8 of the '350 patent show gaps between magnet elements that are filled with spacers or "intermediaries."

Claim 1 was asserted.

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.

The disputed claim terms that got infringement thrown off track -

Seeking summary judgment of non-infringement, Magnetar asserted that its brakes did not infringe this claim because they did not include an "intermediary," because they were not "attached to the fixed device part," and because they did not include a "conductive rail" "adapted to extend the length of the fixed device part." The district court agreed that Magnetar's brakes did not contain an intermediary. Intamin, Ltd. v. Magnetar Techs. Corp., SA CV 04-511-GLT, slip op. at 7 (C.D. Cal. Jan. 25, 2005) (Initial Decision). The district court further found that Magnetar's brakes could not infringe, either literally or under the doctrine of equivalents, the limitation requiring attachment to the fixed device part. Id. at 8-10. Finally, the district court also determined that Magnetar's Soft Stop brakes did not infringe literally a limitation requiring the conductive rail to "extend the length of the fixed device part." Id. at 10-12.

The claim term "intermediary" held particular charge of contention. Magnetar contended an intermediary was a non-magnetic spacer, whereas Intamin claimed an intermediary could be a magnet between magnets.

The district court adopted Magnetar's proposed claim construction: "In short, ordinary meaning supports Defendant's construction, and neither the specification nor the prosecution history changes the ordinary meaning." Initial Decision, slip op. at 4. On its face, the district court construed the term "intermediary" to mean "a member between others." Id. at 3-4. In reaching that conclusion, the district court dismissed Intamin's proposed claim construction that the intermediary can be a magnet between two other magnets. Id. In fact, the trial court specifically points to language in the patent that the intermediary is non-magnetic. Id. Thus, the district court apparently construed the term "intermediary" to mean something non-magnetic between the adjacent magnets.

A brief refresher of CAFC claim construction method -

The first step in an infringement analysis is the determination of the scope of the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). This court construes claims according to the principles set forth by this court in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). As such, the court consults primarily the claims themselves in context, with much of that context supplied by the specification and the prosecution history. Id. at 1312.

The appeals court came to the conclusion that an "intermediary" does not have to be non-magnetic (in other words, may be a magnet), as the specification did not limit claim breadth. -

In this case, the claim language itself does not require a non-magnetic "intermediary." Just as in the Phillips case itself, the claim uses a broad term with an understandable meaning. As the district court noted, the term "intermediary" standing alone means a "member between others." Initial Decision, slip op. 4. This term takes on additional meaning, however, in the context of magnetized members. The context of the rest of the patent helps show that additional meaning, namely whether the intermediary may be magnetic.

In Phillips, this court noted that dependent claims can supply additional context for construing the scope of the independent claims associated with those dependent claims. 415 F.3d at 1314. An independent claim impliedly embraces more subject matter than its narrower dependent claim. In this case, dependent claim 2 modifies the term "intermediary." Claim 2 of the '350 patent discloses "[t]he braking device of claim 1 wherein said intermediary is non-magnetic." This dependent claim shows both that the claim drafter perceived a distinction between magnetic and non-magnetic intermediaries and that independent claim 1 impliedly embraced non-magnetic intermediaries. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1123 (Fed. Cir. 2004).

The district court initially did not consider the context supplied by claim differentiation because Intamin did not raise this argument until reconsideration. Reconsideration Decision, slip op. at 2. Even without the enlightenment supplied by claim differentiation, however, the overall context of claim 1 does not limit the broad language to non-magnetic intermediaries. At one point, the '350 patent describes an embodiment of the invention with a "non-magnetic" intermediary. '350 patent col.4 ll.16-18. The district court seized on this disclosure to limit the term "intermediary" to non-magnetic substances only. Initial Decision, slip op. at 4. As this court has repeatedly noted, see SRI Int'l v. Matsushita Electric Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (plurality opinion), a narrow disclosure in the specification does not necessarily limit broader claim language. Phillips, 415 F.3d at 1323. The overall context of the patent, in this case, does not specifically disavow magnetic intermediaries. See e.g., SciMed Life Sys. Inc. v. Advanced Cardiovascular Systems Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). The single reference does not expressly limit the entire invention but only describes a single embodiment. Moreover, the term "intermediary," like the term "baffle" in Phillips, embraces more than the limited specification disclosure.

The CAFC agreed with the district court on claim construction otherwise, but with "intermediary" construed more broadly, Magnetar was back on the rail for possible infringement. Remanded.

A tidbit on claim drafting with regard to scope -

[A] claim need not cover all embodiments... A patentee may draft different claims to cover different embodiments.

Rule 11(b) - Pre-filing Infringement Analysis

Magnetar had sought legal costs, under Rule 11(b), because Intamin's complaint was frivolous, not based upon a "good faith investigation" of the accused infringing product.

Rule 11 of the Federal Rules of Civil Procedure imposes a duty on attorneys to certify by their signature that the pleading or motion is well-grounded in fact, has a basis in law, and is not filed for an improper purpose. View Eng'g, Inc. v. Robotic Vision Sys., 208 F.3d 981, 984 (Fed. Cir. 2000).

Appeals court review is limited to district court abuse of discretion.

The standard for infringement analysis before filing a complaint is rather low, requiring only suspicion, but not determination of infringement; mocking the requirement: "well-grounded in fact." So, a bit of due diligence leading to suspicion is all one needs to launch a lawsuit that will cost the defending company hundreds of thousands to millions of dollars. This nonchalance cries out for legislative reform for relief from spurious lawsuits.

Magnetar argues on appeal that Intamin's pre-filing investigation was insufficient because it did not obtain and physically cut open the metal casing on the magnets in Magnetar's brake system. The record shows that Magnetar's system encased the magnets in metal tubes. Accordingly, a visual inspection would not disclose the orientation of the magnets within the tubes. In Judin v. United States, 110 F.3d 780, 784 (Fed. Cir. 1997), this court held that the district court abused its discretion in not granting Rule 11 sanctions against a patentee who failed to obtain a sample of the product as part of its pre-filing investigation. However, Judin did not create a blanket rule that a patentee must obtain and thoroughly deconstruct a sample of a defendant's product to avoid violating Rule 11. Rather, in Judin, the patentee could have easily obtained a sample of the accused device (a bar code scanner) for a nominal price from the post office. In this case, the technology presented the patentee with unreasonable obstacles to any effort to obtain a sample of Magnetar's amusement ride brake system, let alone the difficulty of opening the casing.

In lieu of cutting open the casing, Intamin might have tested a Magnetar device for magnetic polarities. In Q-Pharma, however, this court did not impose on a patentee a Rule 11 obligation to perform a simple chemical test on a sample to determine its composition. 360 F.3d at 1302. Instead, this court found that the patentee satisfied its Rule 11 obligations with other reasonable pre-filing inquiries. Id. Here, the district court determined: "In light of the other information [Intamin] had at the time of filing . . . [its] pre-filing inquiry was reasonable." Reconsideration Decision, slip op. at 7. In particular, the district court noted that Intamin "evaluated the patent portfolio, analyzed the patent's validity, determined the scope of the patent's claims, and performed an infringement analysis." Id. The district court further determined that Intamin "reviewed publicly available documents on [Magnetar's] brakes, inspected [Magnetar's] brakes as installed on a roller coaster, took photos of the brakes, and reviewed the brakes with experts." Id. Thus the district court determined that Intamin's pre-filing inquiry was reasonable under the circumstances. Id. This court discerns no abuse of discretion in the district court’s determination.