Moleculon Research Corp. v. CBS, INC.

Citations: 666 F. Supp. 661; 4 U.S.P.Q. 2d (BNA) 1312; 1987 U.S. Dist. LEXIS 7225Docket: Civ. A. 82-289-WKS

Court: District Court, D. Delaware; July 6, 1987; Federal District Court

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Claims 3 to 5 of U.S. Patent No. 3,655,201 describe a method for restoring a preselected pattern from pieces with exposed and nonexposed surfaces, specifically involving the manipulation of cube pieces. The method includes engaging eight cube pieces as a composite, rotating two sets of four cubes around different axes, and repeating these rotations until the desired pattern is achieved. The court found these claims valid and determined that they were literally infringed by the Rubik's Pocket Cube, while the Rubik's Cube and Rubik's Revenge were not found to infringe directly. The Federal Circuit affirmed the validity of the claims and the infringement by the Pocket Cube but remanded the case to evaluate whether the other two puzzles infringed under the doctrine of equivalents. The court highlighted three key points: (1) the claims focus on a methodology for pattern restoration, (2) the term "engaging pieces as a composite cube" is interpreted broadly and does not restrict the means of engagement, and (3) "cube pieces" include the shape as perceived by users, not limited to true geometric cubes. It was agreed that most elements of the claims, as interpreted by the Court of Appeals, apply to the Rubik's Cube and Rubik's Revenge, with two exceptions.

Moleculon acknowledges that the phrases "engaging eight cube pieces in a composite cube" and "rotating sets of four cubes" do not literally apply to Rubik's Cube and Rubik's Revenge. However, it argues that these puzzles functionally operate similarly to the claimed invention by presenting a composite cube with 27 or 54 constituent pieces, allowing for similar randomizing and restoring patterns through rotation around three axes. CBS disputes this equivalence, but the court agrees with Moleculon, emphasizing that regardless of the cube's size, both configurations present the same puzzle challenge and outcome. Expert testimonies affirm that Rubik's Cube represents another embodiment of the concept in the '201 patent, and CBS's counsel conceded that it would be obvious to substitute larger cubes for smaller ones. While CBS claims that Rubik's engagement methods are materially different and superior to those in the '201 patent, the court finds that this does not negate potential infringement under the doctrine of equivalents. The court recognizes that although Rubik’s designs are more creative and commercially successful, that does not preclude the existence of infringement.

Claims 3 to 5 describe methods for operating a puzzle without addressing the mechanism for holding the puzzle together. CBS argues that the mechanism of engagement is crucial for analysis due to references made by the Court of Appeals to the structural differences of Rubik's puzzles. However, the court emphasized that the '201 patent's method is viewed from the user's perspective, specifically noting Claim 3's description of "eight cube pieces" and acknowledging that the 2x2x2 Rubik's Pocket Cube infringed despite different engagement mechanisms. CBS contends that the phrase "engaging eight cube pieces as a composite cube" necessitates an analysis of how the cubes are engaged, suggesting that the court should assess the mechanisms involved, including potential equivalents to those in the Nichols patent.

The argument implies that the court should apply a more rigorous standard under the doctrine of equivalents compared to literal infringement. However, the excerpt clarifies that the analysis for literal infringement and the doctrine of equivalents is conceptually similar concerning elements where literal infringement is established. The court points out that CBS cannot successfully assert that differences in mechanical engagement are relevant to a literal infringement analysis. Since both Rubik's Cube and Rubik's Revenge literally involve "engaging cube pieces as a composite cube," the only distinction lies in the number of apparent cubes, which CBS argues should prompt a reexamination of the method under more stringent criteria. Acceptance of this argument would lead to inconsistencies in patent law, as illustrated by the hypothetical example of a patented cotton harvesting combination that could not benefit from improvements made to one of its non-claimed elements.

Use of the methods described in Claims 3 through 5 of the '201 patent for composite cube puzzles is barred by the doctrine of literal infringement. CBS's argument suggests that a potential infringer could avoid literal infringement by modifying the number of cubes, but this is unlikely to align with congressional intent. The claims apply to the accused device, and altering the number of apparent cubes does not significantly change how the puzzle is used, as the modified puzzles achieve the same function and result. While the improved means of holding the cube together may affect the calculation of a reasonable royalty, it does not negate CBS's infringement under the doctrine of equivalents. An injunction will be issued, and monetary recovery issues will be referred to a magistrate.

CBS contends that the phrase regarding constantly exposed surfaces does not apply to Rubik's Cube or Rubik's Revenge due to their internal components, but this interpretation is rejected. The relevant pieces are those that form the 'preselected pattern,' which includes exposed and non-exposed surfaces. The court emphasizes that a jigsaw puzzle's complexity increases with more pieces, yet it remains functionally equivalent regardless of piece count. CBS also argues that the '201 patent does not cover 3x3x3 or 4x4x4 puzzles; however, the court believes a tongue-in-groove mechanism could suffice. Although Rubik's engagement method is deemed superior to Nichols's, the reverse doctrine of equivalents does not apply here, as the accused methods do not operate in a substantially different way than the patented method. The court references the Georgia Pacific factors for determining reasonable royalty, specifically emphasizing the need to credit profits to the invention itself rather than non-patented elements or improvements by the infringer. Finally, CBS’s arguments regarding file wrapper estoppel are found unpersuasive.