Odetics, Inc. v. Storage Technology Corp.

Odetics, Inc. (Odetics) (plaintiff) owned a patent disclosing a robotic tape storage system comprised of a robotic arm for moving tapes. The patent claimed a “rotary means” with holding bins for retrieving cassettes, and included figures illustrating holding bins, a rod upon which the rotary means rotates, and a gear capable of accomplishing the rotary function upon application of sufficient force. Odetics sued Storage Technology Corporation, Visa International Service Association, Inc., Visa USA, Inc., and Crestar Bank, Inc. (collectively, STK) (defendants), claiming infringement of the patent by STK’s automated Library Storage Module. STK’s module employed “bin arrays” that rotated to allow retrieval of tapes. “Cam followers” attached to the arrays, along with cams exerting force against the followers, caused rotation of the bin arrays around an axis rod. To establish the structural equivalence of STK’s module to Odetics’ patented system, Odetics introduced the testimony of robotics expert Dr. John McCarthy. McCarthy testified that the cam followers of STK’s module operated equivalently to the gear teeth of Odetics’ system, to accomplish the same rotary function. As a result, McCarthy determined that the rotary means structure was equivalent to STK’s bin array structure. Based upon the evidence presented, a jury found STK liable for literal infringement. STK moved for judgment as a matter of law (JMOL). The district court denied the motion. Thereafter, the district court reconsidered the motion sua sponte and granted JMOL in STK’s favor. Odetics appealed.