Opinion
No. IP 93-1092-C.
August 2, 1995.
Donald E. Knebel, Barnes Thornburg, Indianapolis, IN, for plaintiff.
Daniel L. Boots, Willian Brinks Hofer Gilson Lione, Indianapolis, IN, for defendant.
MEMORANDUM OPINION
BACKGROUND
This case was submitted in February 1995 on plaintiff's complaint for infringement and defendant's counter-complaint for declaratory judgment alleging that plaintiff's patents, both utility and design, are invalid and uninfringed. Specifically, the litigation concerns United States Patent No. 5,136,869, entitled High Security Key and Cylinder Lock Assembly, and United States Design Patent No. D327,636, entitled Portion of a Key Blank. Walter E. Best of the Best Lock Corporation is the named inventor in both patents. Plaintiff's view is that defendant is infringing both patents, utility and design. Defendant, while resisting the notion that it is infringing plaintiff's utility patent, is alleging that neither the utility patent nor the design patent is valid. Defendant's position is that both patents are invalid for anticipation and/or obviousness under 35 U.S.C. § 102 and 35 U.S.C. § 103.
This Court has jurisdiction over plaintiff's claims of infringement and defendant's claims of patent invalidity pursuant to 28 U.S.C. ¶¶ 1331, 1338(a), 1400(b), and 2201-2. A patent issued by the patent office is, of course, presumed valid. 35 U.S.C. § 282. It goes without necessity of citation that a party seeking to have a patent declared invalid bears the burden of establishing invalidity by clear and convincing evidence.
THE UTILITY PATENT
Looking first at the '869 patent, a claimed invention is obvious and not patentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the claimed subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the claimed subject matter pertains. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545 (1966). Prior to any analysis of either infringement or any of the defenses to infringement, such as obviousness, the claim or the claims of the patent must be interpreted to determine their scope and meaning. ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1578 (Fed. Cir. 1988).
There are, of course, several tenets that apply in the interpretation of claims. The claim is construed in light of the claim language, the other claims, the prior art, the prosecution history, and the specifications, but not in light of the accused device. SRI International v. Matsushita Electric Corp. of America, 775 F.2d 1107, 1118 (Fed. Cir. 1985). It is also true that the patent claims must be construed the same for purposes of validity and infringement. Tandon Corp. v. U.S.I.T.C., 831 F.2d 1017, 1021 (Fed. Cir. 1987). In addition, the terms of the claim are to be given their ordinary meaning to one of skill in the art unless it appears from the patent and the file history that the terms were used differently by the inventor. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387 (Fed. Cir. 1992).
There is no real controversy in this matter concerning the scope and content of the prior art or the level of ordinary skill in the pertinent art. The art is the design of the key ends and lock faces in the security industry. The scope of that art embraces security systems using locks and keys. A person of ordinary skill in the art is a person who designs keys and locks. The industry contains both engineers and non-engineers.
Because the resolution of this matter turns on anticipation by prior patents, the Court has not focused on the principles of obviousness delineated in Graham v. John Deere Co., 383 U.S. 1, 17, 18, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545 (1966). Even so, it is instructive to note the absence of commercial success as there had been only one buyer at the time of trial. In addition, there is no long-felt but unresolved need in the lock and key industry that is met by the patented key.
The concept of key control is not a new concern. There are many ways to control key duplication. Making a key thicker than a standard blank may provide key control for awhile since most non-locksmith key-making establishments would not be able to make the key. Key control is a part of a security system. Testimony from members of the lock and key industry expresses some level of indignation about the suggestion that the use of a larger key makes, by itself, a significant contribution to security. In any event, the analysis of this case is better served by focusing on claim language in order to determine if this patent describes a unique key.
The interpretation of Claim 13 of the '869 patent is crucial to the determination both of validity and infringement in this action. What is claimed, generally, is a cylinder lock assembly comprising a core and a key plug and a key having a bow. More specifically, Claim 13 reads as follows:
For use with a cylinder lock assembly, including an interchangeable core, a key plug rotatable in the core, the key plug being formed to include a keyway and a roll of tumbler pin bores opening downwardly into the keyway, tumbler pins reciprocally mounted in said pin bores from a position inhibiting relative rotation between the key plug and the core to a position allowing relative rotation between the key plug and the core, a key comprising a bow, a blade appended to the bow, means formed on the blade for lifting said tumbler pins reciprocally mounted in the tumbler pin bores, and drive means for providing the primary driving force for rotating the key plug to actuate the interchangeable core, said drive means including a drive shoulder located vertically above the lifting means and between the lifting means and the bow, the blade including a top edge formed to include the lifting means, a bottom edge forming a portion of the drive means, and a thin walled offset portion extending between the top and bottom edges along the length of the blade, each of the bottom edge and the drive shoulder having a cross-sectional width greater than the cross-sectional width of the thin walled offset portion, the blade and keyway being proportioned and configured to provide a clearance gap between the top edge of the blade and the key plug upon insertion of the blade into the keyway so that only the bottom edge of the blade and the drive shoulder mate with the key plug to provide a substantial driving engagement between the key and key plug in response to the turning of the key in the keyway.
The initial dilemma in the interpretation of this claim is the underlined portion. That is, in order to determine whether this patent has either been anticipated by the prior art or would have been obvious from the prior art to a person of ordinary skill in the manufacture of keys, this language must be examined.
At issue is whether the key designed and patented under Patent No. 5,136,869 represents a new invention. If the language above underlined does not describe a new invention, then the patent is invalid, having been anticipated by the prior art. The inventor and plaintiff's attorneys have urged upon the Court that this invention is both unique and non-obvious. One of plaintiff's positions is that this key-end configuration is unique in that it is one-third wider than other keys, in other words, the average width of the keys currently on the market is two-thirds of the width of this key. That unique feature, plaintiff urges, allows the purchaser of this key and lock a unique security benefit unavailable to the purchasers of locks and keys prior to this invention. No one can duplicate this key on a key duplication machine that is configured for the ordinary standard width key. The average hardware store and other places where average consumers go to have keys duplicated simply will not be able to duplicate this key. The problem sought to be solved by this invention, according to plaintiff, is key control, an element of security in the key and lock industry.
Plaintiff explains that the patented key calls for a milling that itself is wider than the standard key, so that if anyone attempted to make a duplicate of the patented key on a blank of standard width, the attempt would be foiled by the key being cut in half. Defendant finds nothing unique in this concept that providing a thicker stock key blank to commercial outlets would not cure. Defendant's evidence is that a thicker stock is readily available from many sources. Defendant's view is that key control is a small part of an overall security system. The question, in any event, is not what the subjective intent of the inventor was, the question is what do the claims say this invention is.
Plaintiff's main argument for uniqueness has changed course during this litigation, but plaintiff's final position prior to trial was that it is the uniqueness of the "thin walled offset portion" language of the claim that makes this key valuable, unique, and thus patentable. There was some controversy early in this case as to whether the language in Claim 13 describing a clearance gap was the language that made this key unique. That position has been abandoned.
Plaintiff takes the position that "thin walled offset portion" means that portion of the key blade that extends beyond the width of the standard key. Plaintiff then urges that since no such configuration of a key blade end has heretofore existed or been suggested, its key is unique and patentable. Looking at the patent itself, the section referred to as the thin walled offset portion is referred to continually throughout the patent as offset portion 26. Figure 10 of the patent clearly shows that portion. Plaintiff does not argue that the thinness of the wall is unique. It concedes that others of its patents have a thin portion in the middle of the key that is thinner than the bitted portion and bottom of the key.
Defendant's position is that the offset portion of the key blade is that portion of the key blade that is offset, that is, set apart from or jutting apart from the bitted portion and the bottom edge of the blade. Defendant urges that nothing in the patent claim requires that the "thin walled offset portion" extend beyond the thickness of a standard key blade. Thus, it is essential to determine from the claim language and file history what the term "thin walled offset portion" means.
The thin walled offset portion is mentioned several times in the patent. In the background and summary of the invention section, in column 2, line 63, the following statement is made: "Thus, the key blade of a key made in accordance with the present invention can be made to have a middle or offset portion characterized by a very thin width in cross-section . . ." In column 3, line 2, that portion of the key is said to have "a relatively thin width in cross-section in the middle of the blade . . ." In column 3, line 23, the statement is made that figure 1 is meant "to illustrate the thin cross-section width and offset configuration of a middle portion of the key blade." Column 5 and 6 of the patent contain many references to the offset portion. Line 8 of column 5 assists in the description of the blade that begins in line 6 of that column: "Blade 14 is appended to a bow 12 at a base 27 of bow 12. As shown best in figs. 1 and 2, blade 14 includes a bitted portion 22, the bottom portion 24, and a laterally projecting offset portion 26 extending vertically between the upper bitted portion 22 and the lower bottom portion 24." (Emphasis added). Line 26 refers to "this thin walled configuration of offset portion 26 . . ."
Again, in column 5, line 53, "the lateral cross-section thickness 156 of each wall 40, 42, and 44 of offset portion 26 is much less than the lateral cross-section thickness 152 of the bitted portion 22, as shown best in fig. 8a." Column 7, lines 24 through 40, refer to the width of this offset portion being very thin, comparing it to "relative thicker conventional key blades," the point here being that the thin walled offset portion will be thinner than the conventional key blade. Line 48 of column 7 refers to the conventional key blade as being .097 inch or 2.46 millimeters in thickness. The concern being expressed in column 7 is that the thinness of this thin walled offset portion will weaken the key so that a drive shoulder will be necessary to eliminate any potential breakage of the key at the thinnest portion. No one in this case has suggested that the notion of a drive shoulder is unique.
In column 8 the inventor begins to tout the advantage of the invention by pointing out that figure 8a represents a key blade defined by the dimension 160 of .1177 inch (2.99 mm) and pointing out that "advantageously, this depth 160 is greater than the .097 inch (2.46 mm) thickness of a conventional key" and having pointed out that figure 8a shows this thickness the inventor in column 8, lines 19 and 20, indicates that "the dimensions can be varied within the scope of this invention." Thus, the inventor tells us that the key does not have to be as thick as the key represented by figure 8a. The scope of this invention is determined by the language of the patent and, therefore, is not limited by the specifications of measurement in figure 8a.
The term "thin walled offset portion" has been defined by the language of the patent as being the relatively thin width in cross-section in the middle of the blade that is offset as "a laterally projecting offset portion." It is also described as being thinner than a conventional key blade, which, according to the patent, would be thinner than .097 inch (2.46 mm). Thus, within those tolerations, it can be said that the thin walled offset portion is the middle of the key blade which is thinner than the remaining portions of the key, that is, the bitted portion and the bottom end, and laterally projects from the rest of the key. It is true that the dimensions of the projection and the width of the key described can be varied within the scope of the invention. Nothing in the language of the claim requires a thick key.
Claim 13, the claim at issue, does not attempt to refine further what is meant by "thin walled offset portion," although at line 49 of column 10 of the patent, the word offset is used meaning spaced apart. So, again, it is fair to conclude that in the patent, thin walled offset portion means that the wall is thinner than the bitted and bottom portion of the key and that it is set off laterally apart from the bitted portion and bottom of the key.
Plaintiff wishes the Court to conclude that this language clearly means that the thin walled offset portion must jut out beyond the thickness of the bitted portion and the bottom portion, so that it is not coplanar with the bitted portion and the bottom of the key. There is nothing in the language of this patent that requires that interpretation.
The Court next looks for purposes of definition to the prosecution history. At page 18 of the patent applicant's response under 37 C.F.R. § 1.116 Expedited Procedure Examining Group at 358 filed on February 11, 1992, the attorney for the patent applicant makes the following statement:
As discussed during the interview, although Best '093 discloses a key having an offset portion, nowhere does Best '158 or Best '093 disclose or suggest provision of a key as recited in Claim 48 including a blade having a thin walled offset portion and a bottom edge and a drive shoulder, each having cross-sectional widths greater than the cross-sectional width of the thin walled offset portion accordingly applicant submits that an amended independent Claim 48 is patentable over Best '158 in view of Best '093.
Thus, the term `offset portion' is not a term recognized by the patent applicant as being unique to the '869 patent. It was not the degree to which the middle portion was offset from the rest of the key that was emphasized. The emphasis was the thinness of the offset portion. Again, it was not the distance that the middle portion was offset from the rest of the key, but the thinness of the wall of the offset portion that was urged as being unique. The only place that the extent to which the thin walled portion is offset from the rest of the key is even mentioned is in the patent itself where it describes one of the embodiments of the patent as being thicker than the conventional key. This is in column 8, lines 3 through 20, which also conclude with the caution that "the dimensions can be varied within the scope of the invention."
The language of the patent itself and the file history regarding the reference to thin walled offset portion reinforce defendant's position that thin walled offset portion does not carry within it a definition of the distance that this portion is offset from the bitted portion and the bottom of the key. Neither is the thinness of the offset portion unique. Page 6 of Paper 14 illustrates the examiner's understanding that the thickness or the thinness of the offset portion is not what was unique. In fact, he indicates on page 6 that he thought that thinness was obvious under Best '093 as an anti-picking device.
The uniqueness of this invention that was recognized by the examiner was the "clearance gap" rather than the thin walled offset portion or the distance such portion was offset. In the remarks portion of the amendment filed on February 11, 1992, the applicant asserted that Claim 49(13) was allowable over Best `158 and Best `510 because the "clearance shown in figure 2 of Best `510 is not the keyway as alleged [by the examiner] but rather in the tumbler in the bore or barrel. No clearance is provided in the keyway." The applicant asserted that the examiner's contention that Best `510 disclosed a "clearance gap" as claimed was "not accurate." Again, there was no assertion by the applicant that this claim was distinguished from the prior art because of the "thin walled offset portion." At this point in the prosecution of the patent it was the representations regarding the clearance gap and not the thin walled offset portion that were the basis for the examiner's allowance of the claim. The examiner found nothing unique in a thin walled offset portion of a key.
Best has admitted for the purposes of this trial that the representation made to the examiner regarding the state of the art concerning the clearance gap in the keyway was inaccurate. Best has abandoned the clearance gap as a focus for patentability.
In his rejection of Claim 48, on March 19, 1992, the examiner said "Best et al (`093) teaches a thin walled offset used with an interchangeable core and a bottom blade edge thicker than the offset. . . . it would have been obvious to one of ordinary skill in the art to provide a thin walled offset, on the key of Best (`158), in view of the teaching of Best et al (`093), as an anti-picking measure." Thus, the "thin walled offset portion" limitation of the claim did not provide any basis for the examiner's allowance of the claim. The only basis for allowance was the examiner's acceptance of the now abandoned representation concerning the clearance gap in this patent.
On April 14, 1992, the applicant filed its amendment and reply after final action under 37 C.F.R. § 1.116 cancelling the prior Claim 48 and others. The applicant did not challenge the examiner's rejection of claim 48 on the basis that the thin walled offset portion was disclosed by Best `093 and Best `158. In the official action mailed September 2, 1992, the examiner continued to reject claims containing the thin walled offset portion language over Best '158, which disclosed the drive shoulder in view of Best '093, which disclosed the thin walled offset. At no time during the prosecution of this patent did the applicant or the examiner refer to the distance of the offset as unique. The only argument asserted in the final amendment before the allowance of the claim was the now admittedly inaccurate "clearance gap" argument discussed above. Plaintiff has admitted:
1. It has been the standard practice of Best Lock to provide a gap between the key and the keyway.
2. It is true of those Best Lock keys, the blades of which may have a middle portion that is somewhat thinner than other portions of the blades.
3. This practice has been followed by Best Lock for many years prior to the earliest claimed invention date relevant to the '869 patent.
4. Best Lock keys (other than PKS keys), when turned in a keyway, will make initial contact at the top and bottom opposite corners or edges of the key blade.
5. This is true of those Best Lock keys, the blades of which may have a middle portion that is somewhat thinner than other portions of the blades.
6. This fact has been true for many years prior to the earliest claimed invention dates relevant to the `869 patent.
INVALIDATION
Looking at Claim 13 of `869 which, by stipulation, is the main claim in this patent, that is, if Claim 13 is invalid, the entire patent is invalid, this Court has concluded that the term "thin walled offset portion" is not limited by the distance between the thin walled portion and the bitted portion from which it is offset. With that interpretation of the language of Claim 13 comes the necessary finding that this patent is invalidated by prior art. The Court has gone through the file history of this patent and has pointed out the concerns of the primary examiner with Best's `093 and `510 patents. The `093 and `510 patents teach all of the elements of Claim 13. Again, the only real controversy in this action has been the interpretation by the plaintiff that the fact that the thin walled offset portion is offset to a greater distance than the width of the standard key blank available on the market today is what makes this key unique.United States Patent No. 1,866,342 is another piece of prior art that contains all of the elements and all of the limitations of the patent at issue. Defendant's Exhibit 1085 sets out figures 1, 2, and 12 from Best's `342 and illustrates the similarity of the two patents. Specifically, the thin walled offset portion that extends between the top and the bottom edges along the length of the blade of the `342 key is obviously thinner than its bottom edge and drive shoulder. So, the notion that the thin walled offset portion is unique in the `869 patent, because it is thinner than the other portions of the key, was anticipated and taught by the `342 patent. The notion that the drive shoulder and the bottom take the torque from the turning of the key so that the key doesn't break along the thin walled portion is also taught in `342 and not unique in `869. It appears to this Court that Best's U.S. Patent No. `342 anticipates and teaches all the claims of `869 and that `869 is thus INVALID as anticipated by prior art.
The `869 patent describes a key that can be one-third wider than a standard key. While testimony has been that there isn't any such thing accepted in the industry as a standard key, there is no question that the `869 can be a thick key. Nonetheless, the fact that, when followed, the patent at issue can dictate a thick key, does not save the day for plaintiff. That is, even considering plaintiff's position that the thin walled offset portion mentioned in `869 is unique, that is, the thin walled offset portion must be interpreted as extending outside the rectangle created by drawing lines across the top and the bottom of the key blank blade and vertically down both edges of the bitted portion and the bottom, the resulting configuration is not new. That is the CISSA key. That concept was taught by a key available for sale in the United States prior to the August 11, 1992,-`869 patent date. There was such a key that illustrated a thin walled offset portion that was offset outside the thickness of the blade. Thus, the `869 is anticipated by the CISSA key.
INFRINGEMENT
Defendant asserts that the key blank that it manufactured does not infringe the patent at issue in this matter. The salient language of the claim is as follows: "A key comprising of a bow, a blade appended to the bow, means formed on the blade for lifting said tumbler pins, reciprocally mounted in the tumbler pin bores . . ." Defendant's view is that there is no means formed on the blade for lifting said tumbler pins. In fact, defendant has not milled the blade of the allegedly infringing key at all along the top. It is true, however, that even the unbitted key blade, that is, the key blade that is flat all along the top, when inserted into the core, can, in fact, lift tumbler pins reciprocally mounted in the tumbler pin bores. The fact that the sheer line is combinated to accommodate a flat key does not mean that the tumbler pins are not lifted. They are lifted. Thus, even though the security provided by a core combinated to be accommodated by a flat unbitted key blade is less than the security provided by the addition of a bitted configuration to the key, the literal meaning of the claim includes a flat blade. The means formed on the blade for lifting the tumbler pins is simply a flat means.
Another limitation of Claim 13 is that the key have "the blade including a top edge formed to include the lifting means . . ." Exhibit 40, which is the key blank, has a top edge formed to include the lifting means. The lifting means in this case because of the combinated sheer line in Exhibit 68 does lift the tumbler pins reciprocally mounted in the pin bores from a position inhibiting relative rotation between the key plug and the core to a position allowing relative rotation between the key plug and the core. In other words, when the key blank is inserted into this lock (Exhibit 68) and turned, the door will unlock. The view of this Court is that the accused key blank infringes patent `869.
THE DESIGN PATENT
Plaintiff is the holder of several design patents. The `636 patent at issue in this matter is representative of the total number of design patents and the parties have agreed that the issue of all the design patents will be resolved by the `636 patent tried. There are several general principles involved in the analysis of a design patent. A design patent is not valid if it is functional or if the function dictates the design. In re Carletti, 328 F.2d 1020, 1022 (C.C.P.A. 1964). "The design of a useful article is deemed to be functional when the appearance of the claimed design is `dictated by' the use or purpose of the article. If the particular design is essential to the use of the article, it cannot be the subject of a design patent." L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir.), cert. denied, ___ U.S. ___, 114 S.Ct. 291, 126 L.Ed.2d 240 (1993). The issue becomes one of whether the design is ornamental or non-ornamental, and whether or not a design is ornamental is determined by whether or not the design is a matter of concern to a purchaser, that is, whether there is an aesthetic quality to the design which is a matter of concern to a purchaser. Keystone Retaining Wall Systems, Inc. v. Westrock, Inc., 997 F.2d 1444, 1451 (Fed. Cir. 1993). A design patent is limited to the ornamentation of the article in question. Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988). "To qualify for protection [under 35 U.S.C. § 171], a design must present an aesthetically pleasing appearance that is not dictated by function alone, and must satisfy the other criteria of patentability." Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 109 S.Ct. 971, 976, 103 L.Ed.2d 118 (1989).
The design patent at issue, the `636 patent, is a patent on a portion of a key blade blank. That key blade blank is of the same shape as Exhibit 40 and other key blanks introduced in this case as infringing and is of the shape that contains the thin walled offset portion as described in the `869 patent. The key shape is the same as the shape of the key of the utility patent '869. The function of the key is to open the lock. The design of the key is not motivated by ornamentation, it is primarily motivated by function. The key must open the lock and the lock must represent some level of security. The utility patent pertains to the level of security that is sought.
The shape of the key end is dictated by the need to make the lock pick proof and by the need to provide methods of key control. Several witnesses from the lock and key industry testified that customers do not buy keys and locks based on whether they like the looks of the end of the key. This Court finds there is no evidence in the record that the shape of the end of the key or the keyway is a matter of concern to the purchaser. Ornamentation, or the aesthetic quality of this design, is not a matter of concern during either the use of the product or at the time the key or lock is purchased.
The assertion that the key end or the keyway might be attractive to the designer or might even be attractive to the casual observer does not overcome the testimony that the design is not a matter of concern during the purchase and use of this product. The evidence shows that this product was developed because of plaintiff's perceived need to reassert itself in the security lock market. There is no evidence that at any time in the commercial process the appearance of the cross-section of the key or keyway represented a matter of ornamental concern to the purchaser or the user.
Mr. Best and Mr. Bergman both confirmed that security concerns would dictate the purchase selection. The fact that they found the resultant shape aesthetically pleasing is of no moment. It was concern for the security market that motivated the design of this key. There is no evidence that customers buy a keyway to decorate their front door or any other edifice. The design of this keyway and key do not serve any artistic, ornamental, or decorative purpose. The `636 patent is a functional design.
The design patents are thus INVALID.
IT IS SO ORDERED.