KENNETH A. MARRA, District Judge.
THIS CAUSE is before the Court upon Defendants' Motion for Summary Judgment (DE 320). The motion is fully briefed and ripe for review. The Court has carefully considered the briefs and is fully advised in the premises.
This is a patent infringement case brought by Plaintiff Cobra International, Inc. ("Cobra") against Defendants BCNY
The '858 Patent, filed on October 13, 1998, presents a design for lighted footwear. `858 Patent at Abstract. The Patent acknowledges prior art in the field, but notes certain deficiencies in each of those designs. '858 Patent at col. 1-3. The object of the '858 Patent is to "provid[e] lighted footwear such as a slipper having a lighting assembly including outwardly directed and externally visible lighting elements, means for powering the lighting elements, and means for sequencing the activation of the lighting elements in a repeating cycle." '858 Patent at col. 3. The Patent describes such footwear: (1) as "providing maximum battery life and minimized weight," (2) "which is compact and easily mounted and concealed within the footwear," and (3) "which is durable and inexpensive to manufacture." '858 Patent at col. 3. The Patent attempts to achieve these goals by setting forth ten (10) separate claims. The only claim at issue in this Motion is Claim 9.
Claim 9 reads:
A lighted shoe apparatus comprising:
'858 Patent at col. 9-10.
The application for the '858 Patent was originally filed on May 22, 1997, and contained seven claims. See Original Patent Application, Def. Exh. "E" at Cover Page.
A lighted shoe apparatus comprising:
Original Patent Application at 20.
The Patent Office rejected Claim 7 "under 25 U.S.C. 103(a) as being unpatentable over MacMillan (U.S. Pat. # 5,381,615) in view of Heminover (U.S. Pat. # 4,231,079)." Jan. 9, 1998 Office Action Summary by Patent Office, Def. Exh. "F" at 3 (hereinafter referred to as "1/9/98 Office Action"). The Patent Office noted,
Id. at 4 (internal citations omitted).
In response, the Applicant cancelled claim 7 and added Claims 8, 9, 10, and 11 (which are claims, 7, 8, 9, and 10 in the `858 Patent). Jan. 30, 1998, Amendment, Def. Exh. "G" (hereinafter referred to as "1/30/98 Amendment"). The Amendment provided:
Id. at 9.
The '858 Patent, as articulated in the January 30, 1998, Amendment, was approved by the Patent Office on May 15, 1998. Notice of Allowability at 3, Def. Exh. "H" (hereinafter referred to as "Notice of Allowability"). The Examiner said
On July 11, 2002, the Patent Office granted a request for reexamination of the `858 Patent. Order Granting Request for Reexamination, Def. Exh. "I" (hereinafter referred to as 7/11/02 Order Granting Reexamination"). The Order provided:
Id. at 3.
In response, the Patent Holder made the following argument relevant to this matter:
First Rexamination's Opening Statement of Patent Holder at 4-6, Def. Exh. "J."
The Patent Office ultimately found the `858 Patent to be patentable over the prior art cited by the Requestor of the First Reexamination. First Reexamination's Reason for Patentability, Def. Exh. "K." In so finding, the Examiner found that the prior art lacked an "Or gate having input and output terminals, the voltage rouce connected to said Or gate, a ground wire containing a control switch, a clock connected to the Or gate terminal, and first counter having input and output terminals." Id. With regard to a plurality of AND gates, the Examiner stated "To be fair, the And gates found in Garner are connected to a counter, but there is no evidence that this counter is compatible or linked in any way to the time based counter..." Id.
On March 10, 2009, the Patent Office declared its intent to reject all of the claims associated with the '858 Patent in response to a second request for reexamination by a third party. Second Reexamination's 3/19/09 Ex Parte Reexamination Non-Final Action, Def. Exh. "L" (hereinafter referred to as "3/19/09 Office Action"). The third party seeking reexamination set forth four challenges to the '858 Patent: Issues 1, 2, 3, and 4. Id. The Examiner rejected Issues 1, 3, and 4, but accepted issue 2, which sought rejection of the '858 Patent as being obvious over Garner in view of Ratcliffe (U.S. Pat. # 5,680,718) and a published Student Manual.
In response to the 3/19/09 Office Action, the Patent Holder asserted five independent arguments. April 13, 2009, Amendment in Response to Non-Final Office Action in Ex Parte Reexamination Proceeding, Def. Exh. "O" at 8 (hereinafter referred to as "4/13/09 Amendment"). One of the five arguments advanced by the Patent Holder was that "The Ratcliffe Reference Is Incorrectly Applied." Id. (Argument "V" of "V"). The entire argument advanced in the Amendment was:
Id.
On September 25, 2009, the Patent Office officially rejected the argument that the '858 Patent was obvious in view of Garner, Ratcliffe, and the Student Manual. Second Reexamination's 9/25/09 Ex Parte Reexamination Final Action, Def. Exh. "P" at 4 (hereinafter referred to as "9/19/09 Final Office Action"). The examiner explicitly rejected each of the five arguments raised in the Patent Holder's Amendment. Id. at 5-15. In direct response to the Amendment's assertion that "The Ratcliffe Reference Is Incorrectly Applied," the Examiner stated:
Id. at 15 (emphasis in original).
Based, in part, on the above-stated rationale, the Examiner rejected all 10 of the claims set forth in the '858 Patent. Id. at 16.
After the '858 Patent was rejected, Plaintiff's counsel conducted interviews with the Examiner on September 22, 27, and 28, 2010. Second Reexamination's 10/4/10 Ex Parte Reexamination Interview Summary, Def. Exh. "Q" (hereinafter referred to as "10/4/10 Summary"). The description of that interview, as articulated by the Examiner and written in the 10/4/10 Summary, provided: "Discussed for clarifying the language of the claims to avoid the prior art of record and put case in condition for allowable. Exr. and Att. agreed upon changed. See the attached examiner's amendment." Id. That attached Examiner's amendment provided:
Second Rexamination's 10/4/10 Notice of Intent to Issue a Reexamination Certificate, Def. Exh. "R" at 3 (hereinafter referred to as "10/4/10 Notice") (emphasis in original).
The examiner held that the amendment to independent claim 7 was allowable because:
Id. at 5 (emphasis in original).
With regard to independent claim 9, the Examiner held that it was allowable because:
Id. at 5 (emphasis in original).
The amendments set forth in the 10/4/10 Notice were included in the Ex Parte Reexamination Certificate, issued January 11, 2011.
The parties disagree over whether the schematic diagram relied on by Defendants is representative of the circuitry in the accused products. Defendants rely on three separate diagrams: BCNY0001, BCNY0002, and BCNY0003. BCNY0001 is claimed to be a schematic diagram of a ROM chip allegedly in the BCNY circuit, whereas BCNY0002 and BCNY0003 are claimed to be schematic representations of the circuit itself in the accused products. Joseph McAlexander, an expert witness for the Defendants, testified that BCNY0002-0003 is representative of the circuitry in the accused products. McAlexander Testimony at 34 (DE 322).
Plaintiff disclosed two expert witnesses: John "Jack" Oltman and Michael Anthony. Referring to BCNY0001, the schematic allegedly describing the ROM circuitry depicted in the BCNY0002-0003 circuit, the following dialogue took place in the Oltman deposition:
Oltman Testimony, Plaintiff Exhibit "M" at 223-25. Michael Anthony expressly testified that he did not believe the ROM outlined in BCNY001 was in the accused device. Anthony Testimony, Plaintiff Exhibit "N" at 180-81.
Finally, Defendants also cite to Proffer by Jack O'Neal. O'Neal Proffer, Plaintiff Exhibit "R". Through his testimony, Mr. O'Neal states that a NOR gate is "an integrated combination of an OR gate plus an inverter." Id. at ¶ f
On June 18, 2008, 2008 WL 2477666, this Court entered its Order construing Claim 9 of the '858 Patent after holding a Markman hearing. DE 281. The Court incorporates
Section 252 of Title 35 of the United States Code provides:
The term "identical" as used in section 252 means, at most, "without substantive change." Westvaco Corp. v. International Paper Co., 991 F.2d 735, 741 (Fed. Cir.1993) (citing Seattle Box Co. v. Industrial Crating & Packing, 731 F.2d 818, 827-28 (Fed.Cir.1984)). "[I]t is the scope of the claim that must be identical, not that the identical words must be used." Id. (quoting Slimfold Mfg. Co., Inc. v. Kinkead Indus. Inc., 810 F.2d 1113, 1115 (Fed.Cir.1987)). However, "an amendment that clarifies the text of the claim or makes it more definite without affecting its scope is generally viewed as identical for the purpose of § 252." Bloom Engineering Co., Inc. v. North Am. Mfg. Co., Inc., 129 F.3d 1247, 1250 (Fed.Cir.1997).
A determination of whether the scope of a reissued claim is identical to the scope of the original claim is a question of law reviewed de novo. Westvaco, 991 F.2d at 741 (citing Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 (Fed.Cir.1987)). Such a determination requires "analysis of the scope of the original and reexamined claims in light of the specification, with attention to the references that occasioned the reexamination, as well as the prosecution history and any other relevant information." Bloom, 129 F.3d at 1250. An amendment that results in the allowance of claims that had been rejected in the reexamination proceeding over prior art is "highly influential." Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1348 (Fed.Cir. 1998).
The Court concludes that a plain reading Amended Claim 9 establishes that the Second Reexamination resulted in a substantive change to that claim. Specifically, the addition of the language "logically directly" to Claim 9 narrows the scope of the '858 Patent. Prior to the Second Reexamination, a clock input terminal that was not "logically directly" connected to an OR gate output terminal would have been included within the scope of Claim 9. The addition of the term "logically directly" imposes a new limitation on the type of connection referenced in Claim 9.
This conclusion is supported by the prosecution history of the '858 Patent. When the Patent Office rejected the '858 Patent as being obvious in 2009, the Examiner expressly stated "it is noted that the features upon which applicant relies (i.e., the switch
10/4/10 Notice at 5 (emphasis in original).
Plaintiff asserts that the added language amounts only to clarifying language, relying exclusively on the description of the Interview Summary provided by the Examiner. That description provided: "Discussed for clarifying the language of the claims to avoid the prior art of record and put case in condition for allowable. Exr. and Att. agreed upon changed. See the attached examiner's amendment." 10/4/10 Summary. This Court agrees with the rationale articulated by the United States District Court for the Central District of California in rejecting this identical argument:
Cancaribe Ltd. v. Cobra Int'l, Inc., Case No. 07-CV-041820GAV-E at *11 (C.D.Cal. Feb. 13, 2012) (DE 90).
Accordingly, the Court Defendant's Motion for Summary Judgment (DE 320) is
The Court may grant summary judgment "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The stringent burden of establishing the absence of a genuine issue of material fact lies with the moving party. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The Court should not grant summary judgment unless it is clear that a trial is unnecessary, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), and any doubts in this regard should be resolved against the moving party. Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970).
The movant "bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of [the record] which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp., 477 U.S. at 323, 106 S.Ct. 2548. To discharge this burden, the movant must show the Court that there is an absence of evidence
After the movant has met its burden under Rule 56(c), the burden of production shifts and the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). According to the plain language of Rule 56(e), the non-moving party "may not rest upon the mere allegations or denials of the adverse party's pleadings," but instead must come for/ward with "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); Matsushita, 475 U.S. at 587, 106 S.Ct. 1348.
Essentially, so long as the non-moving party has had an ample opportunity to conduct discovery, it must come forward with affirmative evidence to support its claim. Anderson, 477 U.S. at 257, 106 S.Ct. 2505. "A mere `scintilla' of evidence supporting the opposing party's position will not suffice; there must be enough of a showing that the jury could reasonably find for that party." Walker v. Darby, 911 F.2d 1573, 1577 (11th Cir.1990). If the evidence advanced by the nonmoving party "is merely colorable, or is not significantly probative, then summary judgment may be granted." Anderson, 477 U.S. 242, 249-50, 106 S.Ct. 2505.
With regard to patent claims, the law of the Federal Circuit Court of Appeals governs the proper construction of such claims. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129 (Fed.Cir. 2011).
Defendants asserts that the accused products do not infringe the '858 patent because they lack the required: (1) "OR Gate" and direct connections switch; (2) the "cycle restarting means"; and (3) the plurality of AND gates and required connections to the counter and LEDs. In response, Plaintiff challenges each of Defendants' infringement arguments and also asserts that there is a genuine question of material fact with regard to whether Defendants' alleged circuit is in the accused products.
Preliminarily, the Court finds that there is a question of material fact with regard to whether the circuits relied on by Defendants are in the accused products. Plaintiff relies upon the testimony of Jack Oltman and Michael Anthony as creating a dispute on this question. Mr. Oltman stated that BCNY0001 is not a traditional ROM, and Mr. Anthony stated that he does not believe BCNY0001 is in the accused device. Defendants, on the other hand, relied on the testimony of Joseph McAlexander, who testified that BCNY0002-0003 is representative of the circuitry in the accused products. McAlexander Testimony at 34 (DE 322).
Defendants argue that Mr. Oltman never concluded that the BCNY schematics did not correspond to the BCNY circuit, and that the conclusions of Mr. Anthony are nothing more than unsupported speculation and conjecture that fail to raise a genuine fact issue. The Court agrees with Defendants that Mr. Oltman's testimony does not create a genuine question of material fact as to whether the BCNY circuits are in the accused products. Even if Mr. Oltman is correct that BCNY0001 does not represent a "traditional" ROM, that fact does not create a question as to whether that circuitry is in the accused product.
However, the Court rejects Defendants challenge to Mr. Anthony's testimony. In their Reply Brief, Defendants argue that Mr. Anthony "never looked under the hood
The Court concludes that there is a genuine issue of fact with regard to whether the circuitry relied on by Defendants is representative of the circuits in the accused products. Therefore, there is a genuine question of material fact as to whether the circuitry in the accused product does infringe on the '858 Patent.
Although the Court has determined that summary judgment on the issue of infringement is not appropriate because there is a genuine question of material fact with regard to whether the BCNY circuits are in the accused products, the Court will address the merits of the infringement arguments raised in Defendants' Motion for Summary Judgment to clarify those issues that may proceed to trial.
"An infringement analysis is a two step inquiry. First, the court determines the scope and meaning of the patent claims asserted, and then the properly construed claims are compared to the allegedly infringing device." Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347, 1354 (Fed.Cir.2011) (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc)). Whether an accused product actually infringes a patent is a question of fact. Absolute Software, 659 F.3d at 1129-30.
Even if an accused product is determined not to literally infringe a patent, "the doctrine of equivalents prohibits one from avoiding infringement liability by making only `insubstantial changes and substitutions which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law." Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1280 (Fed.Cir.2011) (quoting Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). "The `essential inquiry' in any determination under the equivalents doctrine is whether `the accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention.'" Id. (citing Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)). Insubstantially can be tested by applying the "function-way-result" test articulated in Union Paper-Bag Mach. Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935 (1877), which asks whether an element of an accused product "performs substantially the same function in substantially the same way to obtain the same result" as an element of the patented invention. Id. (citing TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1376 (Fed.Cir.2008), Abraxis Biosci, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d 1370, 1379 (Fed.Cir.2006)). "Equivalence," however, "is not the prisoner of a formula and is not an absolute to be considered in a vacuum." Id. (citing Warner-Jenkinson, 520 U.S. at 24-25, 117 S.Ct. 1040). Whether a product infringes a patent based on the doctrine of equivalents is also a question of fact. Absolute Software, 659 F.3d at 1129-30.
The doctrine of equivalents is not without limits. "The doctrine of prosecution history estoppel prevents a patent owner from recapturing through the doctrine of equivalents subject matter surrendered to acquire the patent." Duramed
Finally, if during prosecution a patent holder narrows the scope of a patent in response to a prior art rejection, a presumption of prosecution history estoppel applies. Id. (internal citations omitted). This presumption may be rebutted by the patent holder by a showing that the alleged equivalent would have been unforeseeable at the time of the amendment and thus beyond a fair interpretation of what was surrendered. Id. (internal quotations omitted). "An alternative is foreseeable if it is disclosed in the pertinent prior art in the field of the invention. In other words, an alternative is foreseeable if it is known in the field of the invention as reflected in the claim scope before amendment." Id. (internal quotations omitted). "Foreseeability is a question of law based on underlying issues of fact." Id. (internal citations omitted).
Defendants first assert that the accused products do not infringe on the '858 Patent because they lack an OR gate with an input connected to a switch and an output connected to the clock as required by claim 9. "Instead," Defendants argue, "in the BCNY circuit the switch is connected to a NAND gate while the clock enable signal is generated by an entirely separate NOR gate." Motion at 12.
DE 281, Markman Order at 6. The Court stated that it rejects "Plaintiff's contention that the term OR gate in this claim should be construed to mean any logic gate." Id.
Plaintiff responds to Defendants' argument by claiming that "a NOR gate plus an inverter is equal to an OR gate." Response at 13. Essentially, Plaintiff is arguing that Defendants' logical gates are the functional equivalent of Claim 9, but do not argue that the BCNY circuit literally infringes claim 9 by having the same exact "OR" gate. Accordingly, the Court concludes that there is no question of fact with regard to whether there is literal infringement on this issue.
Defendants argue that Plaintiff is "precluded from arguing that either the NOR gate or the NAND gate in the BCNY circuit is equivalent to the claimed OR gate [Plaintiff] repeatedly relied on the expressly claimed `OR gate' to distinguish the claimed invention from the prior art in the First Reexamination." Motion at 12.
The Court rejects this argument. In response to the Patent Office's first reexamination, Plaintiff did distinguish the '858
Defendants also argue that there is no infringement because the required connections are absent. Specifically, Defendants argue that the switches are not directly connected to the logic gate in question. Although the Court has determined that the Second Reexamination narrowed the scope of the '858 Patent by adding the term "logically directly" to Claim 9, Plaintiff properly notes that the Court has not construed that term. The Court cannot grant relief to Defendants as a matter of law over a term that it has not yet construed, and the Court will not construe that term without briefing from the parties on the matter. Accordingly, the Court reserves judgment on this issue as to both literal infringement and infringement under the doctrine of equivalents until the Court construes the term "logically directly."
Defendants next assert that the BCNY circuit does not infringe the '858 Patent because it does not have a "cycle restarting means." In its Markman Order, the Court construed the term "cycle restarting means" by stating:
Markman Order at 10-11.
"[F]or an accused structure to literally meet a section 112, paragraph 6 means-plus-function limitation, the accused structure must either be the same as the disclosed structure or be a section 112, paragraph 6 "equivalent," i.e. (1) perform the identical function and (2) be otherwise insubstantially different with respect to structure." Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1364 (Fed. Cir.2000) (citing Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed.Cir. 1999)). "Under a modified version of the function-way-result methodology described in Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854,
"If an accused structure is not a section 112, paragraph 6 equivalent of the disclosed structure because it does not perform the identical function of that disclosed structure and hence does not literally infringe, it may nevertheless still be an `equivalent' under the doctrine of equivalents." Id. "Thus, if one applies the traditional function-way-result test, the accused structure must perform substantially the same function, in substantially the same way, to achieve substantially the same result, as the disclosed structure." Id. (citing Dawn Equipment Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1016 (Fed.Cir. 1998)). "A key feature that distinguishes `equivalents' under section 112, paragraph 6 and `equivalents' under the doctrine of equivalents is that section 112, paragraph 6 equivalents must perform the identical function of the disclosed structure, while equivalents under the doctrine of equivalents need only perform a substantially similar function." Id. (internal citations omitted).
The Court concludes that Plaintiff has failed to raise a genuine issue of material fact as to whether the circuit contained in the accused products perform an
Although the Court finds, as a matter of law, that there is no literal infringement relative to the cycle restarting means, the Court does conclude that there is a question of material fact with regard to the doctrine of equivalents on this issue. Unlike literal infringement, Plaintiff need only raise a question of fact as to whether the accused products perform a substantially similar, as opposed to identical, function. Kemco, 208 F.3d at 1364. The Court concludes that the testimony of Mr. Oltman meets this threshold. Defendants assert that "[i]nstead of restarting the first counter cycle several times ... the BCNY circuit provides an extended lighting sequence in an entirely different way by using part of the cycle from a single large counter to reference ... up to 128 lighting patterns stored in a ROM." Motion at 15. Mr. Oltman testified that he did not believe the BCNY circuit utilized a traditional ROM, undermining how Defendants assert the BCNY circuit functions. See Oltman Testimony at 223-25. By challenging the structure and function of the BCNY circuit, the Court concludes that Plaintiff has raised a genuine issue of material fact under the doctrine of equivalents.
Finally, Defendants assert that the BCNY circuit does not infringe the
These limitations are also construed according to their ordinary meaning by one skilled in the art. There are at least two AND gates, one of which performs the function of controlling the second counter which is part of the cycle restarting means. An AND gate is a logic gate with an output terminal that is "off" or "false" when any one of its input terminals is "off" or "false." The Court concludes that the patent's inclusion of inverters, described in the patent as "a distinctive nipple configuration," are separate structures from the AND gate and do not alter the manner in which the AND gates operate or function. The inverter alters the condition of the input before it interacts with the AND gates.
Markman Order at 8-9.
The Court finds there are genuine questions of material fact as to both literal infringement and the doctrine of equivalents on this aspect of the patent. Mr. Oltman explicitly stated that he believed the ROM chip in the BCNY circuit, which is connected to the LED lights, is "just wired transistors and AND gates." Oltman Testimony at 223. Accordingly, there is a question as to whether the alleged ROM chip in the BCNY circuit satisfies the definition of a "plurality of AND gates" as defined in the Court's Markman Order. Further, the Court finds that Mr. Oltman's testimony also raises a genuine question of fact under the doctrine of equivalents.
For the foregoing reasons, it is hereby
fact. In their Reply Statement of Facts, Defendants state that "Cobra does not deny that Defendants have quoted the Examiner accurately. Defendants agree that the cited document speaks for itself."
The Court has reviewed the Examiner's Reason for Patentability and notes that, although the Examiner found the AND gates in the Garner patent are connected to a counter, the critical distinction was that "there is no evidence that this counter is compatible or linked in any way to the time base counter."
