HeadNotes:

Patent holder brought infringement action against corporation owned by joint inventor, and corporation counterclaimed and alleged antitrust violations. The United States District Court, Central District of Illinois, Harold Albert Baker, J., entered judgment for defendant on infringement claim and against defendant on counterclaims, and cross appeals were taken. The Court of Appeals, Lourie, Circuit Judge, held that: (1) patent was not infringed; (2) joint investor was estopped from contesting validity of patent; (3) patent holder was immune from antitrust claims; and (4) defendant was not entitled to award of attorney fees.
Affirmed in part; reversed in part.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[1] KeyCite this headnote
291 PATENTS
291XII Infringement
291XII(A) What Constitutes Infringement
291k226.5 Substantial Identity of Subject Matter

291k226.6 k. Comparison with claims of patent.
C.A.Fed. (Ill.),1993.
In determining whether patent has been infringed, underlying claim first must be properly construed to determine its scope and meaning and, next, claim as properly construed must be compared to the accused device or process; claim covers accused device if device embodies every limitation of the claim, either literally or by an equivalent.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[2] KeyCite this headnote
291 PATENTS
291XII Infringement
291XII(A) What Constitutes Infringement
291k233 Patents for Machines or Manufactures
291k235 Identity of Principle or Mode of Operation

291k235(2) k. Particular patents or devices.
C.A.Fed. (Ill.),1993.
Accused computer touch interface device with intersecting light beams did not, either literally or under doctrine of equivalents, infringe patent covering claimed invention which called for light beams to be "spaced apart," where claimed invention could not operate as intended if its beam surfaces were not spaced apart for entirety of their surface areas.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[2] KeyCite this headnote
291 PATENTS
291XII Infringement
291XII(A) What Constitutes Infringement
291k233 Patents for Machines or Manufactures

291k237 k. Substitution of equivalents.
C.A.Fed. (Ill.),1993.
Accused computer touch interface device with intersecting light beams did not, either literally or under doctrine of equivalents, infringe patent covering claimed invention which called for light beams to be "spaced apart," where claimed invention could not operate as intended if its beam surfaces were not spaced apart for entirety of their surface areas.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[3] KeyCite this headnote
291 PATENTS
291XII Infringement
291XII(C) Suits in Equity
291k324 Appeal

291k324.5 k. Scope and extent of review in general.
C.A.Fed. (Ill.),1993.
Claim construction is question of law which court reviews de novo.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[4] KeyCite this headnote
291 PATENTS
291IV Applications and Proceedings Thereon
291k101 Claims

291k101(4) k. Specifications and drawings, construction with.
C.A.Fed. (Ill.),1993.
In defining meaning of key terms in claim underlying patent, reference may be had to specification, prosecution history, prior art, and other claims; moreover, words of claim are generally given their ordinary and accustomed meaning, unless it appears from the specification or file history that they were used differently by the inventor.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[4] KeyCite this headnote
291 PATENTS
291IX Construction and Operation of Letters Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims in General

291k165(5) k. Construction of particular claims as affected by other claims.
C.A.Fed. (Ill.),1993.
In defining meaning of key terms in claim underlying patent, reference may be had to specification, prosecution history, prior art, and other claims; moreover, words of claim are generally given their ordinary and accustomed meaning, unless it appears from the specification or file history that they were used differently by the inventor.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[4] KeyCite this headnote
291 PATENTS
291IX Construction and Operation of Letters Patent
291IX(B) Limitation of Claims
291k168 Proceedings in Patent Office in General
291k168(2) Rejection and Amendment of Claims

291k168(2.1) k. In general.
C.A.Fed. (Ill.),1993.
In defining meaning of key terms in claim underlying patent, reference may be had to specification, prosecution history, prior art, and other claims; moreover, words of claim are generally given their ordinary and accustomed meaning, unless it appears from the specification or file history that they were used differently by the inventor.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[5] KeyCite this headnote
291 PATENTS
291IV Applications and Proceedings Thereon
291k101 Claims

291k101(1) k. In general.
C.A.Fed. (Ill.),1993.
Term "spaced apart" as used in patent claim for invention contemplating use of spaced apart light beams did not encompass use of curved beam surfaces.
See publication Words and Phrases for other judicial constructions and definitions.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[6] KeyCite this headnote
291 PATENTS
291XII Infringement
291XII(C) Suits in Equity
291k312 Evidence
291k312(1) Presumptions and Burden of Proof

291k312(1.1) k. In general.
C.A.Fed. (Ill.),1993.
Burden is on patent owner to prove infringement by preponderance of the evidence.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[7] KeyCite this headnote
291 PATENTS
291XII Infringement
291XII(A) What Constitutes Infringement
291k226.5 Substantial Identity of Subject Matter

291k226.7 k. Function, means, operation, and result.
C.A.Fed. (Ill.),1993.
In order to meet means-plus-function limitation test for patent infringement, accused device must perform identical function recited in means limitation underlying patent and must perform that function using structure disclosed in specification or using an equivalent structure.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[8] KeyCite this headnote
291 PATENTS
291XII Infringement
291XII(C) Suits in Equity
291k324 Appeal
291k324.55 Questions of Fact, Verdicts, and Findings

291k324.55(2) k. Clearly erroneous findings.
C.A.Fed. (Ill.),1993.
Factual determination regarding patent infringement is reviewed for clear error.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[9] KeyCite this headnote
291 PATENTS
291XII Infringement
291XII(A) What Constitutes Infringement
291k226.5 Substantial Identity of Subject Matter

291k226.6 k. Comparison with claims of patent.
C.A.Fed. (Ill.),1993.
Patent infringement cannot be established unless every limitation of claim is satisfied either exactly or by an equivalent in the accused device.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[10] KeyCite this headnote
291 PATENTS
291X Title, Conveyances, and Contracts
291X(B) Assignments and Other Transfers
291k202 Construction and Operation of Assignments and Grants

291k202(2) k. Effect as estoppel.
C.A.Fed. (Ill.),1993.
Assignor estoppel is an equitable doctrine that prevents one who has assigned rights to patent, or patent application, from later contending that what was assigned is a nullity; estoppel also operates to bar other parties in privity with the assignor, such as a corporation founded by assignor. 35 U.S.C.A. §§ 102, 103.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[11] KeyCite this headnote
291 PATENTS
291X Title, Conveyances, and Contracts
291X(B) Assignments and Other Transfers
291k202 Construction and Operation of Assignments and Grants

291k202(2) k. Effect as estoppel.
C.A.Fed. (Ill.),1993.
Determination whether assignor estoppel applies in particular patent case requires balancing of equities between the parties, and that determination is matter committed to sound discretion of the trial court. 35 U.S.C.A. §§ 102, 103.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[12] KeyCite this headnote
291 PATENTS
291X Title, Conveyances, and Contracts
291X(B) Assignments and Other Transfers
291k202 Construction and Operation of Assignments and Grants

291k202(2) k. Effect as estoppel.
C.A.Fed. (Ill.),1993.
Joint inventor was barred, under doctrine of assignor estoppel, from contesting validity of patent on computer interface device, even though he claimed to have played only minimal role in development of device and that he did not realize what he was doing when he executed assignment agreement; if joint inventor was indeed mistaken as to what he was assigning, that mistake was attributable solely to his own imprudence, and claim that he played only a minimal role in development of device was directly contradicted by testimony which he gave during previous lawsuit in which he was sued by patent holder for breach of his employment contract. 35 U.S.C.A. §§ 102, 103.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[13] KeyCite this headnote
150 EQUITY
150I Jurisdiction, Principles, and Maxims
150I(C) Principles and Maxims of Equity
150k65 He Who Comes Into Equity Must Come with Clean Hands

150k65(2) k. Nature of unconscionable conduct.
C.A.Fed. (Ill.),1993.
Equity cannot aid the violator of an oath.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[14] KeyCite this headnote
265 MONOPOLIES
265II Trusts and Other Combinations in Restraint of Trade
265k11 Combinations Prohibited
265k12 In General
265k12(15.5) State or Governmental Action

265k12(16.5) k. Efforts to influence governmental action; litigation.
C.A.Fed. (Ill.),1993.
Patent holder was immune from competitor's antitrust claims arising from institution of infringement action against competitor, absent proof that infringement action was so baseless that no reasonable litigant could have realistically expected to secure favorable relief.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[15] KeyCite this headnote
265 MONOPOLIES
265II Trusts and Other Combinations in Restraint of Trade
265k11 Combinations Prohibited
265k12 In General
265k12(15.5) State or Governmental Action

265k12(16.5) k. Efforts to influence governmental action; litigation.
C.A.Fed. (Ill.),1993.
Sham exception to immunity from antitrust claims arising from filing of patent infringement action has objective as well as subjective elements.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[16] KeyCite this headnote
106 COURTS
106II Establishment, Organization, and Procedure
106II(G) Rules of Decision
106k88 Previous Decisions as Controlling or as Precedents
106k96 Decisions of United States Courts as Authority in Other United States Courts

106k96(5) k. Decisions in other circuits.
C.A.Fed. (Ill.),1993.
Court of Appeals for federal circuit must approach federal antitrust counterclaim asserted against patent holder in infringement action as would Court of Appeals in circuit of district court whose judgment is under review.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
[17] KeyCite this headnote
291 PATENTS
291XII Infringement
291XII(C) Suits in Equity
291k325 Costs
291k325.11 Disbursements in General

291k325.11(1) k. In general.
C.A.Fed. (Ill.),1993.
District court was not required, in order to deny motion for attorney fees in patent case, to issue factual findings as to whether case before it was exceptional; rather, moving party had burden to establish exceptional nature of case by clear and convincing evidence. 35 U.S.C.A. § 285.
Carroll Touch, Inc. v. Electro Mechanical Systems, Inc.
KeyCite this headnote
291 PATENTS
291XIII Decisions on the Validity, Construction, and Infringement of Particular Patents
291k328 Patents Enumerated

291k328(2) k. Original.
C.A.Fed. (Ill.),1993.
4,267,443. Not infringed.

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