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Grober v. Mako Products

June 4, 2009


The opinion of the court was delivered by: Stephen G. Larson United States District Judge


This is a patent infringement case concerning a movie camera stabilization device known as the Perfect Horizon. The Perfect Horizon is used for filming on a unstable surface like water while either on the move or stationary. David Grober invented the device and received both an Academy Award in technical achievement and also a United States patent, U.S. Patent No. 6,611,662 ("the '662 patent"), the latter being at issue in this case. Drawings of some of the preferred embodiments of the '662 patent are depicted below:

As was made clear during the pre-Markman tutorial in this matter, the Perfect Horizon is a two-axis gimbal-based device utilizing motion sensors to feed information to motor(s) to maintain the stability of an attached device (here, a motion picture camera) while in motion. Gimbals, whose origins can be traced to ancient times, use a pivoted support to allow rotation of an object about an axis; with a set of two gimbals, as contained within the Perfect Horizon, one is mounted on the other with pivot axes orthogonal (meaning having a set of mutually perpendicular axis) so as to allow an object mounted on the innermost gimbal to remain vertical regardless of the motion of its support.

Defendant Mako Productions Inc. subsequently began to manufacturer a similar two-axis gimbal-based movie camera stabilization device known as the MakoHead. The parties have been mired in litigation ever since, with the present patent infringement case now in its fifth year. Most of that time has been spent before the Patent and Trademark Office ("PTO") in a re-examination proceeding instituted by defendant, arguing principally, that the claims set forth in the '662 patent are not valid as they were anticipated or rendered obvious by the prior art in the form of other gimbal-based devices, notably the Actively Stabilized Platform System invented by Raymond Welch in 1999 (Patent No. 5,922,039 ("the Welch patent")), and the Stabilized Platform invented by George Duckworth in 1979 (Patent No. 4,143,312 ("the Duckworth patent")), embodiments of which are depicted below:



The initial PTO re-examiner issued a preliminary finding that rejected 22 of the 38 claims in the '662 patent based upon the prior art cited by defendants, including the Welch and Duckworth devices . Before these initial determinations were finalized, the PTO transferred the reexamination of the '662 patent to a new examiner. Early last year, on March 4, 2008, the new re-examiner, relying on certain representations made by Grober during the re-examination proceedings, distinguishing the '662 patent from the cited prior art, rejected the findings of the initial examiner, affirmed many of the claims that had been previously rejected, and sent a communique closing the Office's prosecution of the reexamination of the '662 patent. That communique was followed by a second one in the summer of 2008 that reaffirmed many of the claims in the patent and the closure of the reexamination's prosecution upon consideration of certain responses sent by the parties (the contents of both communiques and responses filed by the parties thereto are discussed more fully below). (See Defs' Op. Br., Ex. B & Pl's Reply, Ex. 2).

Before this Court is the task of determining the meaning of various claim terms contained in the '662 patent, an exercise the Court ultimately finds to be largely shaped by what occurred during the PTO re-examination proceedings. As defendants' correctly observe, "[t]he prosecution history of the '662 patent is critical to this Court's claim interpretation due to the narrowing of the claims that was conceded by Grober [during the re-examination proceedings] in order to avoid a significant body of prior art." (Defs' Opening Br. at 11).


Construction of Claim Language In Claims to '662

Patent Claim one to the '662 patent serves as the foundation upon which much of the other claims in the patent are built; accordingly, the Court will focus on it in construing much of the language at issue in this case. Claim one in the '662 patent provides in full:

A stabilized platform comprising: a payload platform for supporting an article to be stabilized; a base; a stabilizing system connected between the payload platform and the base, the stabilizing system including means for moving the payload platform with respect to the base about two different axes for providing the payload platform with stabilization in two dimensions; a first sensor package for determining, in two transverse directions, motion of a moving object on which the stabilized platform is mounted; a second sensor package comprising sensor means for sensing a position of the payload platform and for providing information based on the position of the payload platform relative to a predetermined position; and a control system connected to the means for moving for stabilizing the platform in response to information provided by the first sensor package and the second sensor package, wherein the second sensor package is fixed to the payload platform, and the first sensor package is fixed with respect to the base.

Out of this lengthy description, the parties spar over the meaning of many phrases, the most critical one being "payload platform."*fn1 Defendants attempt to narrowly interpret the phrase (avoiding infringement), while plaintiff seeks to give the term as broad a reading as possible (triggering infringement).

Because nearly all the other terms in the patent's claims are dependent upon the question of what exactly is meant by the term "payload platform," the Court has confined its focus on that term for purposes of its Markman decision. Construing the meaning of the other disputed claim terms is unnecessary given the conclusion the Court reaches in regard to the meaning of the claim term "payload platform" and the fact that the parties did not dispute during oral argument that, with such a construction of the term, the accused device would not infringe the '662 patent.*fn2 See 5A DONALD S. CHISUM, CHISUM ON PATENTS § 18.03[1][b] at 18-96.5 to 18-96.8 (2007) ("Often a patent owner and an accused infringer dispute the meaning of more than one word or phrase. Resolution of any one of the disputed words or phrases may be sufficient to resolve an infringement claim against a patent owner. Decisions vary whether a district court . . . should address all disputed words or phrases (as a form of alternative findings or holdings) or only such as necessary to resolve an issue of infringement or validity. Of course to confine the focus on a dispositive claim word or phrase, the court must be aware of the nature of the accused product or process or have the benefit of a concession from the parties that resolution of one or more disputed words or phrases is dispositive").

Payload Platform

Each parties' claim construction of the relevant term in the '662 patent is listed as follows: Disputed Term Defendants' Proposed Const. Plaintiffs' Proposed Const. Payload Platform The platform on which the Of rigid construction, either as payload (e.g., a camera) is a solid manufactured piece or as directly mounted and not any a rigid construction of pieces which other element of the device together form the payload platform, and to which payloads can be attached. It comprises the structure of the '662 device that is stabilized from the motion imparted by the vehicle or moving object upon which the '662 device is mounted, and it is the structure that is moved by the 'means of moving.'

Neither parties' formulation is very illuminating, but for different reasons: Defendants' construction is not specific or precise, but is all too self-referential (a payload platform is the platform where the payload is affixed); plaintiff's formulation is simply indecipherable and unintelligible as it gives no meaning to the term (a payload platform is something which forms a "payload platform structure"). That said, it does seem apparent from the parties' accompanying arguments that defendants' seek to limit the payload platform to the horizontal surface or plate upon which the device in question is directly mounted or affixed, while plaintiff seeks to include within the term not only the horizontal surface or plate but also the supporting structure thereto, namely struts, legs, etc., that is then attached to and moves in conjunction with the motors or other means of moving. (Compare Defs' Reply at 8 ("the definition proposed by Defendants . . . limits the structure to the horizontal piece that holds the camera") with Pls' Reply Br. at 6 ("the payload platform . . . is the entirety of the platform that is stabilized by the device" or stated another way "a single machined element ...

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