              NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not
                    citable as precedent. It is a public record.


 United States Court of Appeals for the Federal Circuit
                                    05-1351,-1352


            PHILIPS ELECTRONICS NORTH AMERICA CORPORATION
                       and U.S. PHILIPS CORPORATION,

                                                          Plaintiffs-Cross Appellants,

                                           v.

        CONTEC CORPORATION, SEOBY ELECTRONICS CO., LTD.,
  REMOTE SOLUTION, CO., LTD. (formerly known as Hango Electronics Co., Ltd.),
                and HANGO REMOTE SOLUTION, INC.,

                                                          Defendants,

                                          and

                            COMPO MICRO TECH, INC.,

                                                          Defendant-Appellant.


                           __________________________

                              DECIDED: April 18, 2006
                           __________________________



Before MICHEL, Chief Judge, FRIEDMAN, Senior Circuit Judge, and GAJARSA, Circuit
Judge.

MICHEL, Chief Judge.

      Compo Micro Tech, Inc. (“CMT”) appeals from the district court’s orders

(1) construing the phrase “signal structure identification data;” (2) granting summary

judgment of infringement of United States Patent No. 4,703,359, which was conceded
based on the aforementioned construction; (3) denying summary judgment on invalidity

as to both patents-in-suit; and (4) denying judgment as a matter of law as to invalidity

and damages.       Philips Electronics North America Corporation and U.S. Philips

Corporation (collectively “Philips”) cross-appeal, challenging the district court’s

constructions of the phrases “entry initiate signal” and “an entry initiate key” as well as

its resulting grant of summary judgment of non-infringement of United States Patent

No. 5,872,562. As described in further detail below, because we agree with the claim

constructions of all three disputed phrases, we affirm the grants of summary judgment

of infringement of the ’359 patent and non-infringement of the ’562 patent. We further

hold that the district court properly denied CMT’s motions for summary judgment and

judgment as a matter of law. We thus affirm the final judgment as to infringement and

damages.

                                 I.     BACKGROUND

       Both patents-in-suit are directed to universal remote controls (“URCs”), which

allow consumers to program a single remote control to operate a variety of appliances

sold by different manufacturers, particularly home entertainment devices – i.e., TVs,

VCRs and DVD players. On February 12, 2002, Philips filed a complaint alleging patent

infringement against Contec Corporation (“Contec”) in the United States District Court

for the District of Delaware. The accused products can be programmed using both the

“scan” method and the “code entry” method, as described in the operating instructions

and on the back of the URC itself. In September 2002, Philips amended its complaint,

joining Contec’s suppliers:    CMT, Seoby Electronics (“Seoby”) as well as Hango

Remote Solution, Inc. and Remote Solution, Ltd. (collectively “Hango”). Philips settled




05-1351,-1352                               2
with Contec and Seoby; a consent judgment was entered against those defendants on

August 28, 2003. The case against Hango was severed for a separate trial. This

appeal concerns only the case against CMT.

      The ’359 patent discloses a “scan” method (and apparatus) whereby the URC is

preprogrammed with the infrared signal patterns corresponding to many different

appliances and learns the correct infrared signal pattern for controlling a particular

appliance by sequentially attempting each format until that appliance responds

appropriately. The ’562 patent, on the other hand, discloses a “code entry” method (and

apparatus) that requires the user to manually enter a code corresponding to the correct

infrared signal pattern for each appliance to be used with the URC.

      For reasons not relevant to this appeal, only method claims of the ’359 patent

were asserted.    Independent Claim 1 reads as follows, with the disputed phrase

underlined for emphasis:

      1.     Method for adapting a remote control unit to generate appliance
      command signals having a required signal structure for controlling a
      selected one of a plurality of appliances of different categories and
      different manufacturers, each appliance being responsive to a different
      signal structure, comprising the steps of:

             generating a selected category signal signifying the category
             of said selected one of said plurality of appliance under user
             control;

             setting said selected appliance to execute a predetermined
             action upon receipt of a response-evoking signal having said
             required signal structure;

             transmitting in sequence a plurality of response command
             signals each commanding said predetermined action in a
             different signal structure until said selected appliance
             executes said predetermined action, whereby the last-
             transmitted one of said response command signals




05-1351,-1352                              3
              constitutes said response-evoking           signal   having   said
              required signal structure;

              storing signal structure identification data corresponding to
              said required signal structure of said response-evoking
              signal, thereby creating stored signal structure identification
              data; and

              generating subsequent appliance command signals at least
              in part under control of said selected category signal and
              said stored signal structure identification data.

All claims of the ’562 patent were asserted. As to the apparatus claims, independent

Claim 1 is representative. It requires, in relevant part:

              keyboard means having a plurality of keys for providing
              respective keyboard output signals upon user activation of
              respective one of said keys, said plurality of keys including a
              predetermined group of keys each representing a different
              one of said different categories of devices, each of said
              memory addresses corresponding to at least one of said
              keyboard output signals, said keyboard output signals further
              comprising an entry initiate signal;

As to the method claims, Claim 9 is representative and reads as follows:

       9. Method for generating device control signals remotely controlling a
       plurality of devices each belonging to a respective category of devices, at
       least two of said devices being of the same category of devices, and at
       least two being of different categories of devices, two of said devices of
       the same or different categories requiring a different signal format, in a
       remote control transmitter having said signal formats permanently stored
       at respective memory addresses, said remote control transmitter further
       having a keyboard having a plurality of keys, said plurality of keys
       including a predetermined group of keys each corresponding to one of
       said different categories of devices, comprising the steps of

              user activation of one key in said predetermined group of
              keys;

              user activation of an entry initiate key;

              user activation of at least one address key, after said entry
              initiate key, said address key signifying the memory address
              storing specific device formatting data for said selected one



05-1351,-1352                                 4
              of said plurality of devices, thereby reading out said specific
              device formatting data; and

              transmitting device control signals in accordance with said
              device formatting data to a selected category of devices and
              said selected one of said plurality of devices in said selected
              category.

       A technology tutorial, Markman hearing and cross-motions for summary

judgment were all heard by Judge Kent A. Jordan on November 25, 2003. During the

hearing, both sides agreed that, with respect to the ’359 patent, if the court adopted the

claim construction proffered by the other side, summary judgment of infringement would

be appropriate.1

       On March 29, 2004, the district court issued a Markman order, construing

(1) ”signal structure identification data” to mean “information (data) that identifies a

signal structure;” (2) ”entry initiate signal” to mean “the keyboard output signal

generated by the entry initiate key;” and (3) ”an entry initiate key” to mean “one entry

initiate key.” On April 5, 2004, the district court issued an order granting Philips’ motion

for summary judgment of infringement (and denying CMT’s cross-motion for summary

       1
               Counsel for Philips framed it this way: “So if the Court construes it in
Philips' favor, the defendants have proffered no reason why summary judgment on
infringement should not be granted. And vice versa. If the Court construes the term to
mean what Compo Micro Tech proposes, then Philips could concede that summary
judgment on the ’359 patent is required. So I don't think with respect to infringement on
the ’359 there is any issue between the parties.” See Joint Appendix 3272.
       Counsel for CMT agreed: “I concede that if Your Honor construed it so broadly
to mean any stored product identification data, as they would submit, of any kind, then
we would fall within and must fall within the construction and we would be liable for
infringement.” Id.
       The district court confirmed that CMT stipulated that the claim construction was
case-dispositive: “The important point for me to know at this junction is, it's not disputed
that at the end of the day, at least in this Court, if it is determined Philips is right,
summary judgment of infringement for Philips is in order.” To this, counsel for CMT
unequivocally responded: “If your Honor adopts their construction as they have
proffered it to the Court, yes, Your Honor.” JA 3274.


05-1351,-1352                                5
judgment of non-infringement) on Claims 1, 3 and 4 of the ’359 patent. It emphasized

that “signal structure identification data” had been the only disputed term in the ’359

patent. Because Philips’ proposed construction was adopted and CMT had conceded

at oral argument that, under that construction, the accused products literally infringed,

summary judgment was appropriate. In the same order, the district court also granted

CMT’s motion for summary judgment of non-infringement of the ’562 patent. It noted

that in the accused URCs, a user must press two keys, (i.e., both a category key and

some other, non-category key), simultaneously in order to initiate the programming

sequence. Because “an entry initiate key” had been construed to mean only one entry

initiate key, the ’562 patent was not literally infringed. The district court further held that

Philips was precluded from asserting the doctrine of equivalents due to prosecution

history estoppel, as Claim 1 had been amended from “user activation of respective ones

of said keys” to “one of said keys.”

       In a separate order, also issued on April 5, 2004, the district court denied CMT’s

motion for summary judgment of invalidity. With respect to the ’359 patent, the motion

was denied because there remained “genuine issues of material fact, due to competing

expert opinions,” as to whether Claims 1, 3 and 4 were anticipated by a particular

Japanese reference.       Summary judgment on obviousness was also inappropriate

because CMT had not “undertaken the analysis, required by Graham, to support its

argument that claims 3 and 4 are obvious in light of the cited prior art references.” As

for the ’562 patent, there remained issues of material fact as to (1) whether a remote

control device called “CORE” and its accompanying reference manual constituted

invalidating prior art; (2) whether the two other remote controls (the UR1 and UR2) were




05-1351,-1352                                 6
adequately disclosed to the PTO; and (3) whether the examiner considered the ’359

patent during prosecution of the ’562 patent.

       A jury trial commenced on April 12, 2004. During the charging conference, the

parties disagreed on the jury instruction concerning damages, with CMT suggesting an

additional sentence. Ultimately, however, the district court declined to deviate from the

standard jury instruction. On April 19, 2004, the jury returned its verdicts, finding (1) the

’359 patent was not proven invalid as anticipated or obvious; (2) where the parties had

agreed to the number of units sold, $1.00/unit was a reasonable royalty; and (3) CMT’s

infringement was not willful.    On July 26, 2004, judgment was entered accordingly.

CMT was required to pay a reasonable royalty of $5,793,879 on sales made from

September 17, 2002 through December 31, 2003 as well as $183,923 in pre-judgment

interest.

       CMT moved for judgment as a matter of law pursuant to FRCP 50(a) at the close

of plaintiffs’ case and again at the close of all the evidence, but these motions were

denied without prejudice. On August 9, 2004, CMT renewed its motion for judgment as

a matter of law pursuant to FRCP 50(b), arguing that (1) the jury’s finding that the ’359

patent was not invalid was not supported by substantial evidence and (2) Philips was

not entitled to recover damages because it had not proven that consumers used the

accused URCs in an infringing way – i.e., programming with the “scan” method rather

than the “code entry” method. This motion was denied on March 8, 2005.

       CMT’s appeal and Philips’ cross-appeal were both filed on April 6, 2005. We

have jurisdiction pursuant to 28 U.S.C. 1295(a)(1).




05-1351,-1352                                7
                                     II.      DISCUSSION

A. Infringement

       In this action, the questions of infringement turned entirely on the claim

constructions adopted by the district court. Claim construction is a question of law

reviewed de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-56 (Fed. Cir.

1998) (en banc). We determine the customary meaning of claim terms as understood

by a person of ordinary skill in the art, using the methodology first set forth in Vitronics

Corp v. Conceptronics, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996), and reaffirmed in

Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005).

       1. The ’359 patent

       With respect to the phrase “signal structure identification data,” the district court

noted that the parties did not dispute that “signal structure” was defined in the

specification to mean “infrared signals having particular characteristics that the

appliance understands, such as frequency, pulse width, and bit timing.” It thus focused

the inquiry on the claim terms “identification” and “data,” adopting their ordinary

meanings as proffered by Philips. The phrase was construed to mean “information

(data) that identifies a signal structure.”

       CMT argues that the district court erred in failing to adopt its own proposed

construction, i.e., “information (data) that constitutes part of an address used to address

one table in a multiplicity of product code tables.” It makes three arguments on this

issue. First, it argues that the specification uses this phrase only in describing the

particularly preferred embodiment, wherein it is made clear that “the stored signal

structure identification data constitutes part of an address, the remainder of the address




05-1351,-1352                                   8
being provided by user selection of the category to which the appliance belongs. . .

[which] is used to address one table in a multiplicity of product code tables.” ’359

Patent col. 2, ll. 35-41. Second, it points out that during prosecution, the claim was

amended from “storing signal structure identification data corresponding to said required

signal structure of said response-evoking signal, thereby creating stored product

identification data” to “thereby creating stored signal structure identification data.” Third,

CMT stresses that the claim language itself requires “generating subsequent appliance

command signals at least in part under control of said selected category signal and said

stored signal structure identification data,” which suggests that the latter is only part of

an address used to look up product codes.

         We agree with the district court that the phrase “signal structure identification

data” is entitled to its plain and ordinary meaning. The district court correctly rejected

CMT’s invitation to read into the phrase a limitation from the preferred embodiment.

See Electro Med. Sys., S.A. v. Cooper Life Sciences, 34 F.3d 1048, 1054 (Fed. Cir.

1994). It also accepted, as do we, Philips’ explanation that the claim amendment was

only made to maintain consistency, as the final phrase of Claim 1 refers to “said stored

signal structure identification data,” which otherwise does not appear earlier in the

claim.

         We review a district court’s grant of summary judgment de novo. IPXL Holdings,

L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1380 (Fed. Cir. 2005). Here, because CMT

stipulated that the accused products would literally infringe the ’359 patent under the

definition of “signal structure identification data” proffered by Philips and adopted by the

district court, we must affirm the summary judgment of infringement.




05-1351,-1352                                 9
       2. The ’562 patent

       As for the phrases “an entry initiate key” and “entry initiate signal,” the district

court acknowledged that an indefinite article normally means “one or more” in

open-ended claims, but found sufficient evidence in the specification of the ’562 patent

and the prosecution history to limit “an” to the singular. We agree that “a” or “an”

normally carries the meaning of “one or more” in claims containing the transitional

phrase “comprising.” KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.

Cir. 2000). Here, however, the patentee clearly intended the use of only one entry

initiate key.

       Looking first to the language of Claim 9 itself, the phrase “user activation of an

entry initiate key” is immediately followed by a reference to “said entry initiate key,”

which reinforces the singular meaning. See Abtox, Inc. v. Exitron Corp., 122 F.3d 1019,

1023-24 (Fed. Cir. 1997). Likewise, Claim 1 refers to a “keyboard means having a

plurality of keys for providing respective keyboard output signals upon user activation of

respective one of said keys . . . said keyboard output signals further comprising an entry

initiate signal.” The patent thus contemplates pressing only one key at a time to provide

keyboard output signals, including the entry initiate signal.        Significantly, during

prosecution, the claim language was amended from “ones of said keys” to “one of said

keys,” a disclaimer of the plural.

       The specification further confirms that the patented invention only uses one entry

initiate key. In describing how a particular embodiment could incorporate the inventions

described by the ’359 patent as well as the ’562 patent, the specification states that

pressing more than one key simultaneously would initiate a routine “which is irrelevant




05-1351,-1352                               10
to an understanding of the present invention,” i.e., the “learn” or “scan” method which is

described in the ’359 patent. ’562 Patent, col. 5, ll. 7-21.

       In any case, if the number of keys pressed exceeds one, the routine is not
       part of the present invention and will not be described in detail herein.
               If the number of keys pressed is equal to one, the microprocessor
       first tests whether this is the record key. If the user has pressed the
       record key (herein also referred to as the enter initiate key), he has taken
       the initial step for implementing the present invention, i.e., for entering the
       necessary data for identifying a particular manufacturer and model
       number directly on the keyboard.

Id. at col. 5, ll. 21-31 (emphasis added). We thus agree with the district court that “an

entry initiate key” means “one entry initiate key” and “entry initiate signal” means “the

keyboard output signal generated by the entry initiate key.”

       Because it is undisputed that the accused device required a user to press two

keys simultaneously to initiate the code entry programming sequence, a routine that

was expressly disclaimed by the ’562 patent, we must affirm the summary judgment of

non-infringement.

B. Invalidity

       Unlike a grant of summary judgment, the denial of summary judgment “is not

properly reviewable on an appeal from the final judgment entered after trial” to the

extent it merely indicates that there are factual disputes to be tried.2 Glaros v. H.H.

Robertson Co., 797 F.2d 1564, 1573 (Fed. Cir. 1986). Here, the denial of summary

judgment as to invalidity rested squarely on genuine issues of material fact. Since there

was subsequently a jury trial, we cannot review this decision.

       2
              In contrast, “[a] denial of a motion for summary judgment may be
appealed, even after a final judgment at trial, if the motion involved a purely legal
question and the factual disputes resolved at trial do not affect the resolution of that
legal question.” United Techs. Corp. v. Chromalloy Gas Turbine Corp., 189 F.3d 1338,
1344 (Fed. Cir. 1999).


05-1351,-1352                                11
       As for the denial of judgment as a matter of law after the trial, we review that

decision by reapplying the same standard used below. In other words, the jury’s verdict

can only be overturned if the “factual findings were not supported by substantial

evidence or . . . the facts were not sufficient to support the conclusions necessarily

drawn by the jury on the way to its verdict.” Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192

F.3d 1353, 1357-58 (Fed. Cir. 1999). The district court found that the jury was entitled

to accept the testimony of either expert as more credible than that of the other and

declined to disturb its findings that CMT had failed to meet its burden of proving

anticipation or obviousness by clear and convincing evidence.              We agree that

substantial evidence, i.e., the testimony of Philips’ expert, supports the jury’s findings

and affirm the final judgment as to the invalidity issues. We also conclude that just as

the jury was legally entitled to believe that expert, his testimony was sufficient to defeat

the evidence of invalidity.

C. Damages

       With respect to damages, CMT contended that the jury verdict could not be

sustained because Philips had presented no evidence on the number of URCs actually

used in an infringing manner. The district court denied judgment as a matter of law,

finding that CMT had “waived its opportunity to raise those arguments” because it did

not include them in the final pretrial order. On procedural issues, we apply the standard

of review of the regional circuit. Sulzer Textil A.G. v. Picanol N. V., 358 F.3d 1356,

1363 (Fed. Cir. 2004). In the Third Circuit, whether to permit a change in the pretrial

order is within the discretion of the trial judge.      “Appellate interference with this




05-1351,-1352                               12
discretion should be kept at a minimum. It should only be exercised where there is a

clear abuse of discretion.” Ely v. Reading Co., 424 F.2d 758, 763-64 (3d Cir. 1970).

       CMT has demonstrated no such abuse of discretion. Both parties set forth their

respective theories on damages in the Joint Pretrial Order, wherein they agreed that the

issue at trial was what a reasonable royalty rate was. CMT’s own experts had prepared

reports calculating damages as a percentage of net sales. In short, the district court

acted within its discretion in rejecting CMT’s last-minute attempt to deviate from what it

had previously argued. We thus affirm the final judgment as to the damages awarded

by the jury.

       To the extent that CMT is also challenging the district court’s refusal to give its

proposed jury instruction limiting damages to the number of products actually used in an

infringing manner by consumers, we find no reversible error.            CMT argues that

damages for indirect infringement must be tied to identified instances of direct

infringement, citing Dynacore v. U.S. Philips Corp., 363 F.3d 1263, 1274 (Fed. Cir.

2004). CMT misreads this opinion. It is true that “[p]laintiffs who identify individual acts

of direct infringement must restrict their theories of vicarious liability – and tie their

claims for damages or injunctive relief – to the identified act.” Id. Yet, the very next

sentence recognizes that plaintiffs, like Philips, “who identify an entire category of

infringers (e.g., the defendant's customers) may cast their theories of vicarious liability

more broadly, and may consequently seek damages or injunctions across the entire

category.” Id.

       Here, Philips argued that the reasonable royalty reached in a hypothetical

negotiation between the parties would have been based on the agreed upon number of




05-1351,-1352                               13
total sales rather than usage by individual customers, since the latter would have been

difficult to predict.   There was substantial evidence in the record, including expert

testimony and Philips’ license agreement with Sony Corporation, to support the jury’s

calculation of damages in this way. In any event, it could be inferred that the jurors did

account for CMT’s contention that not all the units sold were used in an infringing

manner, since they considered $1 per unit to be a reasonable royalty despite the

testimony of Philips’ expert that the reasonable royalty would have been much higher –

i.e., $2 per unit to license both patents-in-suit or $1.50 per unit to license only one of the

patents. Although it is true that no survey evidence or expert testimony was presented

as to the percentage of units sold that were actually used in an infringing manner, the

jurors could have relied on their own personal experiences with URCs and common

sense in discounting the royalty rate.

                                   III.   CONCLUSION

       For the foregoing reasons, we affirm the district court’s judgment in all respects.




05-1351,-1352                                14
