MARGARET M. MORROW, District Judge.
This is a patent dispute between B-K Lighting, Inc. ("B-K") and Fresno Valves & Castings, Inc. ("FVC"). On May 23, 2008, the court granted FVC's motion for summary judgment of invalidity, finding the patent-in-suit invalid on grounds of obviousness.
The court's prior order on invalidity and the Federal Circuit's opinion on appeal detail the history of the patent-in-suit, the claims of the patent, and the history of this litigation.
This case concerns U.S. Patent No. RE39,084 ("the '084 patent"), issued on May 2, 2006. The patent names Douglas Hagen as the sole inventor and B-K as the assignee. The patent has 19 claims, protecting "an adjustable mount for use with light fixtures that provides an easy to use mechanism for adjusting and setting the desired lighting angle for light emanating from the light fixture" while maintaining "the integrity of the sealed light system."
Patent claims 3, 12, 15, 18, 19, 21 and 22 include the element of a "first resistance means for limiting free pivotal movement of [the] base member relative to [the] support member wherein said first resistance means comprises a tapered opening in said support member and a tapered post in said base member, said tapered opening sized and configured to receive said tapered post and allow frictional pivoting of said tapered post therein."
On February 11, 2008, the court held a Markman hearing to construe disputed terms in 13 of the 19 claims of the '084 patent.
As stated, Douglas Hagen is the sole inventor named in the '084 patent. Hagen testified at his deposition that at the time the original patent application was filed, he had not decided on a particular angle for the taper of the post/opening element of the invention.
David Counts is a B-K engineer who worked on development of the patented invention. He testified that the taper angle was the result of experimentation to find a self-releasing taper.
Patrick Case is a B-K engineer who helped commercialize the patented invention. He testified at his deposition that the angle of the taper was chosen "arbitrarily" at the beginning of the process, and that B-K "never deviated" from it thereafter.
Hagen testified that the tapered post/opening interaction claimed in the '084 patent "was [his] idea."
At his deposition, Gillespie agreed that it was proper to describe Hagen as a "conceptual guy [who] would come up with product concepts.
Gillespie testified that he could not definitely identify the "first one to actually say the word `taper,'" although he said that "the word `taper' [might] have come from [Hagen]."
Case testified that Hagen did not conceive the taper, and that he and Gillespie developed the concept for that element.
FVC has identified seven prior art references, and argues that, in different combinations, they render each claim of the '084 patent obvious. The references are: U.S. Patent No. 4,143,413 ("Kelly"), which describes a "fitter for mounting a luminaire, such as an outdoor floodlight, on a mounting member such as a pole [comprised of] three castings";
B-K asserts that a knuckle included in FVC's Vision 3 FL series ("FL series") of architectural flood lighting products ("the K2 knuckle") infringes the '084 patent. FVC has obtained two patents for the K2 knuckle design: U.S. Patent No. 6,966,679, issued on November 22, 2005 to Monte
B-K commenced this action on May 10, 2006. In its answer to B-K's first amended complaint, FVC asserted ten affirmative defenses, including (1) non-infringement; (2) invalidity under 35 U.S.C. §§ 102, 103, and 112; and (3) invalidity for failure to name the correct inventor.
On March 24, 2008, B-K filed a motion for partial summary judgment of validity of the patent-in-suit.
In its prior order on invalidity, the court assessed FVC's contention that the '084 patent was invalid as obvious in light of the prior art references it identified. The parties did not dispute that most of the elements of the '084 patent were obvious in light of the prior art.
The court determined that FVC had demonstrated by clear and convincing evidence that each of the four disputed elements was obvious in light of the prior art. With regard to the "first resistance means," the court found that Hydrel taught the "frictional pivoting" described in claims 3, 12, 15, 18, 19, and 22.
The court then addressed whether it would have been obvious to one skilled in the art to combine the elements of the prior art with the 360SL to create the '084 patent.
Because the court found that all of the asserted claims of the '084 patent were obvious in light of the prior art, it concluded that the patent as a whole was invalid under 35 U.S.C. § 103(a).
B-K appealed the district court's summary judgment of invalidity to the Court of Appeals for the Federal Circuit.
The court of appeals affirmed the court's conclusion respecting claims of the '084 patent that do not include the limitation of frictional pivoting (claims 5, 7, 8, and 23-31), finding them "invalid because the claim breadth does not distinguish their scope from the prior art."
On remand from the Federal Circuit, the court conducted a case management conference and directed the parties to file supplemental briefing.
The Federal Circuit vacated judgment as to claims 3, 12, 15, 18, 19, 21, and 22 because it found that there were factual disputes as to whether the Hydrel reference disclosed the first resistance means claimed in the '084 patent. It issued a general mandate directing the court to conduct further proceedings consistent with its opinion. The Federal Circuit's opinion discussed only the combination of BK-Lighting's model 360SL and the Hydrel reference; it did not address the other prior art references identified by FVC. The opinion also did not address whether there were triable issues of fact as to whether a person of ordinary skill in the art would have turned to the well-known concept of tapers to create the "first resistance means" claimed in the '084 patent.
B-K argues that the rule of mandate precludes the court from considering FVC's other obviousness arguments. It asserts that the Federal Circuit already considered whether prior art other than Hydrel disclosed the frictional pivoting element of the '084 patent and impliedly decided that it did not. B-K contends that the Federal Circuit's consideration of additional prior art was implicit in its ruling because the parties submitted extensive
The mandate rule provides that a district court is foreclosed from considering further issues actually decided on appeal. Amado v. Microsoft Corp., 517 F.3d 1353, 1360 (Fed.Cir.2008) ("The mandate rule provides that `issues actually decided [on appeal] — those within the scope of the judgment appealed from, minus those explicitly reserved or remanded by the court — are foreclosed from further consideration' "); Engel Industries, Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed.Cir. 1999) ("Unless remanded, all issues within the scope of the appealed judgment are deemed incorporated within the mandate and thus are precluded from further adjudication"); Laitram Corp. v. NEC Corp., 115 F.3d 947, 951 (Fed.Cir.1997) (issues that the court of appeals has decided explicitly or by necessary implication may not be reexamined by the district court). The district court is free on remand, however, to consider issues outside the scope of the mandate. Engel Industries, 166 F.3d at 1383 (citing Sprague v. Ticonic Nat'l Bank, 307 U.S. 161, 168, 59 S.Ct. 777, 83 L.Ed. 1184 (1939)); see also Clark v. United States, 656 F.3d 1317, 1321 (Fed. Cir.2011) ("Because the government's ... argument was not decided by this court in the earlier appeal, the mandate rule did not preclude the trial court's consideration of this argument on remand"). "Following appellate disposition, a district court is free to take any action that is consistent with the appellate mandate, as informed by both the formal judgment issued by the court and the court's written opinion." Exxon Chemical Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475, 1484 (Fed.Cir.1998); see also Laitram, 115 F.3d at 951 ("the district court cannot give relief beyond the scope of th[e] mandate, but it may act on matters left open by the mandate").
The scope of the issues presented to and decided by the court of appeals is measured by the scope of the judgment that is appealed. Engel Industries, 166 F.3d at 1382; see also Laitram, 115 F.3d at 952 ("The scope of our review, and our power to review, was limited to the sole order that was appealed"). Issues not reached by the trial court are not within the scope of the judgment from which appeal is taken. Tronzo v. Biomet, Inc., 236 F.3d 1342, 1348 (Fed.Cir.2001) (citing Laitram, 115 F.3d at 951-52; Exxon, 137 F.3d at 1478-79).
As noted, the Federal Circuit did not explicitly decide whether or not the court could grant summary judgment on the basis of Dornfeld's uncontroverted testimony that a person of ordinary skill in the art would have turned to the wellknown concept of tapers to create the "first resistance means" claimed in the '084 patent. By vacating the court's order granting summary judgment as to claims 3, 12, 15, 18, 19, 21, and 22, however, the court impliedly and necessarily decided that summary judgment could not be granted on the alternative basis identified by the court. Because the court concluded that there were two distinct and independent bases upon which it was appropriate to grant summary judgment as to those claims of the patent, the Federal Circuit had to overrule both bases to vacate the judgment.
The Federal Circuit did not, however, reject by necessary implication FVC's other obviousness arguments, which the court did not address in its order granting summary judgment. Because the court did not reach FVC's obviousness arguments concerning other prior art references, they fell outside the scope of appeal and could not have been decided by the Federal Circuit. Tronzo, 236 F.3d at 1348-49; Laitram, 115 F.3d at 952. Consequently, the court is not precluded from considering those arguments on remand. Id. ("It is incorrect to conclude that we decided issues not only undecided on the merits by the trial court ..., and thus on appeal unripe, but also neither ... discussed in our opinion, nor necessary to our disposition of the appeal," citing Conway v. Chemical Leaman Tank Lines, Inc., 644 F.2d 1059, 1062 (5th Cir.1981) (the district court may consider on remand a "meritorious issue never previously passed upon by [it] and never submitted to or decided by the appellate court in the previous appeal")).
The general mandate issued by the Federal Court is broad and does not foreclose the court from considering previously undecided questions of obviousness or other invalidity arguments advanced by FVC. The Federal Circuit could have limited the scope of the remand — e.g., by specifically remanding for trial on the issue of invalidity/obviousness — but it did not do so. Compare Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 576 F.3d 1348, 1353-54 (Fed.Cir.2009) (holding that the district court exceeded the scope of the mandate when it considered new invalidity and unenforceability defenses that had not been raised on appeal, where the mandate "reinstate[d] the jury verdict of validity, and remand[ed] for a new trial on infringement and reassessment of damages"). The court concludes, therefore, that the Federal Circuit's decision and mandate do not preclude it from evaluating FVC's additional obviousness arguments.
The parties do not dispute, moreover, that the court can consider FVC's other defenses, which it found unnecessary to address in its prior order. The court will therefore consider whether the '084 patent is invalid for anticipation or failure to enable. For reasons discussed infra, neither party is entitled to summary judgment on the validity of the remaining '084 patent claims. Consequently, the court will also consider whether the patent is unenforceable due to inequitable conduct or failure to name the correct inventor. Finally, the court will consider FVC's argument that it has not infringed the '084 patent.
A motion for summary judgment must be granted when "the pleadings, depositions,
In judging evidence at the summary judgment stage, the court does not make credibility determinations or weigh conflicting evidence. Rather, it draws all inferences in the light most favorable to the nonmoving party. See T.W. Electric Service, Inc. v. Pacific Electric Contractors Ass'n, 809 F.2d 626, 630-31 (9th Cir.1987). The evidence presented by the parties must be admissible. FED.R.CIV.PROC. 56(e). Conclusory, speculative testimony in affidavits and moving papers is insufficient to raise genuine issues of fact and defeat summary judgment. See Falls Riverway Realty, Inc. v. Niagara Falls, 754 F.2d 49, 56 (2d Cir.1985); Thornhill Pub. Co., Inc. v. GTE Corp., 594 F.2d 730, 738 (9th Cir.1979).
FVC contends the patent is invalid as anticipated, as obvious, for lack of enablement, for failure to identify the best mode, as indefinite, for failure to state the correct inventorship, and because of inequitable conduct. B-K seeks summary judgment on all of these defenses other than obviousness. FVC seeks summary judgment of invalidity on the basis of anticipation, obviousness, enablement, best mode, indefiniteness, and inventorship.
A duly issued patent is presumed valid, and the party claiming otherwise bears the burden of proving invalidity by clear and convincing evidence. See, e.g., 35 U.S.C. § 282 ("A patent shall be presumed valid"); University of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir.2004) ("[A] party `seeking to invalidate a patent at summary judgment must submit... clear and convincing evidence of invalidity'"); Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1377 (Fed.Cir.2003) ("This court gives due weight to a patent's presumed validity under 35 U.S.C. § 282 (2000), and an accused infringer must show by clear and convincing evidence that a patent is invalid"); Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed.Cir.2000) ("[T]he party asserting invalidity of a patent must prove the disputed facts by clear and convincing evidence"); Mas-Hamilton Group v. La-Gard, Inc., 156 F.3d 1206, 1216 (Fed.Cir. 1998) ("Under 35 U.S.C. § 282, a patent is presumed valid and one challenging its validity bears the burden of proving invalidity by clear and convincing evidence"). "[A] patentee has the burden of going forward with rebuttal evidence once a challenger
A patent claim is invalid as obvious "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. § 103. "Obviousness is a question of law based on underlying factual findings: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective considerations of nonobviousness." Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed.Cir.2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)); see also Eli Lilly & Co. v. Teva Pharm., USA, Inc., 619 F.3d 1329, 1336 (Fed.Cir.2010).
A party seeking to invalidate a patent as obvious must "demonstrate `by clear and convincing evidence that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.'" In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1069 (Fed.Cir.2012) (citing Procter & Gamble Co. v. Teva Pharms. USA Inc., 566 F.3d 989, 994 (Fed.Cir.2009) (quoting Pfizer, Inc. v. Apotex. Inc., 480 F.3d 1348, 1361 (Fed.Cir. 2007))); see also Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167, 1187 (Fed.Cir.2002) ("[A] party seeking a judgment that a patent is obvious bears the burden of demonstrating by clear and convincing evidence that the teachings of the prior art would have suggested the claimed subject matter to one of ordinary skill in the art").
FVC contends that the remaining claims (claims 3, 12, 15, 18, 19, 21, and 22) are obvious in light of Heldreth as a substitute for Hydrel. As FVC recognizes, the court already held that there is a factual dispute as to whether Heldreth is analogous art. It nonetheless argues that the court should find Heldreth analogous in light of two Federal Circuit decisions issued after the court's prior summary judgment order: Wyers v. Master Lock, 616 F.3d 1231 (Fed.Cir.2010), and Innovention Toys v. MGA Entertainment, Inc., 637 F.3d 1314 (Fed.Cir.2011).
FVC's characterization of Wyers and Innovention, however, suggests that both cases simply apply pre-existing law concerning the definition of analogous art.
The court previously concluded that the parties' experts offered conflicting opinions as to whether Heldreth involves analogous subject matter.
In its supplemental brief, FVC argues that the remaining claims are invalid as obvious in light of prior art combinations the court did not consider in its previous order on invalidity.
Claims Prior Art In Light Of Reason 18,19, 21, and 22 Kelly (Pike or Pike and Hydrel disclose a first Hydrel) and resistance means; (Roche and/or 360SL) Roche and 360SL disclose a rotational limiting means; 360SL discloses a slot 3, 5, 12, 15, 18, 19, Coronado Hydrel Hydrel discloses a first locking means, 21, and 22 first seal/second seaUng means, first
resistance means, and rotational limiting means
FVC has not argued that either Coronado or Roche discloses the first resistance means. As respects Roche, it has asserted rather that Roche discloses a rotational limiting means, such that Kelly, in light of Roche, and other prior art that discloses a first resistance means (Pike or Hydrel), renders claims 18, 19, 21, and 22 obvious.
FVC did not and has not adduced evidence that either Coronado or Roche discloses the first resistance means; to the contrary, its expert's declaration clearly states that neither prior art reference discloses that element of the remaining claims.
Although the court's earlier order addressed whether the knowledge of a person of ordinary skill in the art combined with Kelly rendered the first resistance means obvious,
B-K argues that Kelly does not teach key elements of the first resistance means.
Because the parties have presented conflicting expert testimony as to whether Hydrel and/or Kelly disclose the first resistance means, because there are factual disputes as to whether Heldreth constitutes analogous art, because FVC has not adduced sufficient evidence to show that Pike teaches frictional pivoting, and because FVC has adduced no evidence that Coronado and Roche disclose the first resistance means, the court concludes that material issues of fact preclude summary judgment on the question of the obviousness of the remaining claims. The court therefore denies FVC's motion for summary judgment of invalidity and B-K's motion for summary judgment of validity to the extent that those motions address obviousness.
A patent claim is invalid as anticipated under 35 U.S.C. § 102 if a single prior art reference contains, either explicitly or implicitly, all of the elements of the claim. See Oakley, Inc. v. Sunglass Hut International, 316 F.3d 1331, 1339 (Fed.Cir.2003) ("A determination that a claim is invalid as being anticipated or lacking novelty under 35 U.S.C. § 102 requires a finding that `each and every limitation is found either expressly or inherently in a single prior art reference,'" quoting Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed.Cir. 1998)). Whether or not a single reference contains all of the elements of a claim is a question of fact. See Beckson Marine,
Although anticipation is a question of fact, where there are no "genuine factual disputes underlying the anticipation inquiry, the issue is ripe for judgment as a matter of law." SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed.Cir.2005), cert. denied, 547 U.S. 1218, 126 S.Ct. 2887, 165 L.Ed.2d 938 (2006). Evidence of anticipation, like all questions of invalidity, "must be clear as well as convincing." Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed.Cir.2002); see Semiconductor Energy Lab. Co. Ltd. v. Chi Mei Optoelectronics Corp., 531 F.Supp.2d 1084, 1105 (N.D.Cal. 2007) ("The burden of proof in all instances falls upon the party seeking to establish the invalidity of a patent claim, who `must overcome the presumption of validity in 35 U.S.C. § 282 by clear and convincing evidence,' " quoting State Contracting & Eng'g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1067 (Fed.Cir.2003)).
"Anticipation is typically established by one skilled in the art who must `identify each claim element, state the witness['] interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference.'" Lucent Technologies, Inc. v. Microsoft Corp., 544 F.Supp.2d 1080, 1091 (S.D.Cal.2008) (quoting Schumer, 308 F.3d at 1315). "The testimony is insufficient if it is merely conclusory." Schumer, 308 F.3d at 1315-16. Moreover, it must be clear. It is not "the task of the district court, to attempt to interpret confusing or general testimony to determine whether a case of invalidity has been made out, particularly at the summary judgment stage." Id. at 1316.
FVC argues that claims 3, 12, and 15 are anticipated by Kelly. FVC argues that claims 3, 12, and 15 are anticipated by Kelly. It contends that the Federal Circuit has affirmed that all but one element of these claims — the first resistance means — is disclosed by Kelly. FVC asserts that Kelly also discloses the first resistance means, and thus contains all of the elements of claims 3, 12, and 15.
FVC's fails to demonstrate that it is entitled to summary judgment on its anticipation claim for two reasons. First, its reading of the Federal Circuit's opinion is inaccurate. The Federal Circuit affirmed the court's conclusion in its prior invalidity order that the first locking means and stud member were obvious in light of Hydrel and 360SL, respectively — not Kelly.
Second, there are triable issues of fact as to whether Kelly discloses the first resistance means and first locking means. As the court noted in its earlier discussion of obviousness, whether Kelly discloses a first resistance means turns on a factual dispute that cannot be resolved on summary judgment, because the parties have adduced conflicting expert testimony as to whether the trunnion and opening in Kelly disclose or teach away from frictional pivoting.
Finally, FVC's anticipation argument fails because Kelly does not disclose the "stud member" specified in claims 3, 12, and 15. In its claim construction order, the court construed the term "stud member" as a "part for structurally coupling the claimed apparatus to a power source. such as a junction box."
FVC contends that Kelly discloses the "stud member" described in claims 3, 12, and 15 because it claims a "pole" that is "centered and seated" in a "base portion."
B-K also argues, however, that Kelly does not disclose that the upper end of the pole is configured to allow frictional rotation relative to the base member and that it discloses rather fixed mounting of the pole to the base portion.
Because the uncontroverted evidence demonstrates that Kelly does not disclose rotation of the "stud member" in the base member, the court finds that Kelly does not anticipate claims 3, 12, and 15.
Under 35 U.S.C. § 112(a), a patent claim is invalid if it is not stated in such "exact terms as to enable any person skilled in the art to which it pertains ... to make and use the same...." 35 U.S.C. § 112(a). "The `enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.'" Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed.Cir.2008) (quoting AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed.Cir.2003)). "Whether a claim satisfies the enablement requirement... is a question of law." Id. The critical question is what constitutes "undue experimentation." The Federal Circuit
Although FVC acknowledges that these are the relevant factors,
The testimony of the engineers that is cited by FVC demonstrates that substantial experimentation was required to produce the patented invention. "The fact that some experimentation may be necessary to produce the invention[, however,] does not render [a] patent invalid for lack of enablement." Monsanto Co. v. Scruggs, 459 F.3d 1328, 1338 (Fed.Cir.2006); see Chiron Corp. v. Genentech, Inc., 268 F.Supp.2d 1148, 1161 (E.D.Cal.2002) ("That some experimentation would have been necessary to [practice the patent] does not mean that the parent applications are not enabling"). Indeed, the Federal Circuit has held that "`patents are not production documents,'" and that "`the law requires that patents disclose inventions, not mass-production data.'" CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1339 (Fed.Cir.2003).
The parties' experts dispute the extent to which experimentation would be required to practice the patent. Dornfeld states that "one of ordinary skill in the art could not have constructed the claimed invention without an undue amount of experimentation and research" because the patent does "not disclose the angle of taper or the relative length of the post and opening."
While it is true that "the ultimate determination of whether one skilled in the art could make and use the claimed invention without undue experimentation is a legal one, it is based on underlying findings of fact." Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1337 (Fed.Cir.2005). Where the parties'"conflicting expert reports and/or testimony demonstrate the existence of genuine issues of material fact as to whether [the claims of the patent] are enabled[, s]ummary judgment on this issue [must be] denied." Snaptrack, Inc. v. Zoltar Satellite Alarm Systems, Inc., No. C 01-20291 JW, 2006 WL 1911918, *10 (N.D.Cal. July 11, 2006). Given the conflicting evidence, the court concludes that triable issues of fact as to enablement remain, and that it is not appropriate to enter summary judgment for either party on this issue. See MEMC Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp., 248 Fed. Appx. 199, 204 (Fed.Cir.2007) (Unpub. Disp.) ("In this case, the declarations of the MEMC witnesses create genuine issues of material fact as to whether undue experimentation would be required to design a hot zone to achieve the crystal growth conditions described in the patent and whether such conditions would result in silicon wafers covered by the patent claims").
The disputed patent claims may also be invalid if they fail to "set forth the best mode contemplated by the inventor for carrying out his invention." In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent, 676 F.3d 1063, 1084 (Fed.Cir.2012) (citing 35 U.S.C. § 112, ¶ 1 (2006)).
The first prong of the test turns on a subjective inquiry as to whether the inventor had a best mode of practicing the invention at the time the patent application was filed. See Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1364 (Fed.Cir.2008) ("The first prong is subjective and focuses on the inventor's state of mind at the time the application is filed"). FVC asserts that, for the same reason the patent is not enabled, it does not meet the best mode requirement. Essentially, FVC contends that B-K knew the angle of the taper that made it possible to practice the invention and failed to disclose it. FVC has not, however, adduced clear and convincing evidence supporting this assertion.
FVC concedes that Hagen stated he did not know the angle of the taper, and was not personally responsible for determining it.
Moreover, even if the court were to consider Gillespie and Case co-inventors, FVC has not shown that they knew of a best
FVC has adduced no evidence that Hagen, the named inventor at the time of the patent application, or Case and Gillepsie, the purported co-inventors, were subjectively aware of a best mode of practicing the tapered post/opening interaction.
A patent claim may also be invalid under 35 U.S.C. § 112(2) for indefiniteness when the scope of the claims are not "sufficiently definite to inform the public of the bounds of the protected invention." Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed.Cir.2008). In its original motion for summary judgment, FVC asserted that claims 5 and 24 of the '084 patent were invalid for indefiniteness. The court's prior order found claims 5 and 24 invalid for obviousness, and the Federal Circuit affirmed.
FVC argues that the court should enter judgment of unenforceability of the patent-in-suit based on incorrect naming of the inventors.'
"A patent is invalid if more or fewer than the true inventors are named." Gemstar-TV Guide Intern., Inc. v. Int'l Trade Commission, 383 F.3d 1352, 1381 (Fed.Cir.2004). Because patents are presumed valid, "there follows a presumption that the named inventors on a patent are the true and only inventors." Id. (citing Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed.Cir.1997)). On a motion for summary judgment, the party challenging a patent must prove by clear and convincing evidence that the invention was made by another inventor. Fox Group, Inc. v. Cree, Inc., 700 F.3d 1300,
The Federal Circuit has held that "`[i]ncorrect inventorship is a technical defect in a patent that may be easily curable.'" Winbond Electronics Corp. v. Int'l Trade Comm'n, 262 F.3d 1363, 1371 (Fed. Cir.2001). The Federal Circuit has thus disapproved of determinations that a patent is invalid for failure to join co-inventors. "[I]f a patentee can demonstrate that inventorship can be corrected as provided by [35 U.S.C. § 256], a district court must order correction of the patent, thus
In its original summary judgment briefing, FVC argued that at a minimum, Gillespie and Case were co-inventors of the '084 patent. FVC contends it has adduced "clear and convincing evidence" of their coinventor status, including Gillespie's testimony that it was fair to say Hagen did not provide any input with respect to the actual design of the tapered element; his testimony that he was familiar with tapers from his days as a machinist; and his testimony that he developed the details of the taper design.
FVC's evidence strongly suggests that Gillespie and Case, rather than Hagen, were primarily responsible for discovering a functional angle and length for the taper. Inventorship, however, is linked specifically to the claims of the patent. In other words, "the legal scope of a claim must be known before the contributions of an alleged co-inventor can be compared to that claim to determine whether the correct inventors were named." Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1360 (Fed.Cir.2004). It follows that, where the innovations and design claimed by a coinventor are not disclosed by any of the claims in the patent, there can be no claim for co-inventorship. See Board of Educ. ex rel. Bd. of Trustees of Florida State University v. American Bioscience, Inc., 333 F.3d 1330, 1342 (Fed.Cir.2003) (finding that innovations outside the claims of a patent did not give rise to co-inventorship). Here, the angle and length of the taper are not disclosed in either the '084 patent's claims or the patent specification. Any patentable innovation performed by Case and Gillespie regarding the angle or length of the taper therefore falls outside the patent claims and does not bear on inventorship as a consequence. Id.
FVC's evidence also suggests that Gillespie and Case, rather than Hagen, were responsible for reducing the taper to practice. Courts have recognized, however, that those who work to reduce a patent to practice are not necessarily co-inventors. "[D]epending on the scope of a patent's claims, one of ordinary skill in the art who simply reduced the inventor's idea to practice is not necessarily a joint inventor." Ethicon, 135 F.3d at 1460. This
B-K has adduced evidence that Hagen was the individual who conceived of the taper. Gillespie testified that Hagen was the "conceptual guy" who developed the product concepts.
FVC, for its part, has adduced some evidence suggesting that the idea of using a taper did not originate with Hagen. Case testified that he and/or Gillepsie came up with the idea for the taper, not Hagen.
B-K argues that Gillespie's testimony as to who conceived of the tapered post/tapered opening concept is also "equivocal at best." It notes that Gillespie testified the word "taper" may have come from Hagen, and that Gillespie never affirmatively testified that the idea of the tapered opening/post originated with someone other than Hagen (i.e., him or Case).
In sum, although FVC has adduced evidence suggestive of the fact that there inventors other than Hagen, it has not adduced sufficient evidence of a clear and convincing nature to raise triable issues regarding that fact. See Anderson, 477 U.S. at 252, 106 S.Ct. 2505 ("[W]e are convinced that the inquiry involved in a ruling on a motion for summary judgment or for a directed verdict necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits"); id. at 254, 106 S.Ct. 2505 ("[I]n ruling on a motion for summary judgment, the judge must view the evidence presented through the prism of the substantive evidentiary burden.... The question ... is whether a jury could reasonably find either that the plaintiff proved his case by the quality and quantity of evidence required by the governing law or that he did not. Whether a jury could reasonably find for either party, however, cannot be defined except by the criteria governing what evidence would enable the jury to find for either the plaintiff or the defendant: It makes no sense to say that a jury could reasonably find for either party without some benchmark as to what standards govern its deliberations and within what boundaries its ultimate decision must fall, and these standards and boundaries are in fact provided by the applicable evidentiary standards"). Consequently, FVC has failed to satisfy its burden on summary judgment, Hess, 106 F.3d at 980; Fox Group, 700 F.3d at 1303-04, and the court grants B-K's motion for summary judgment on FVC's false inventorship claim.
"[I]nequitable conduct includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive." Pharmacia Corp. v. Par Pharm., Inc., 417 F.3d 1369, 1373 (Fed.Cir.2005). "In cases where the omission or misrepresentation is highly material, `less evidence of intent will be required in order to find that inequitable conduct has occurred.'" eSpeed, Inc. v. BrokerTec USA, L.L.C. 480 F.3d 1129, 1135 (Fed.Cir.2007) (quoting PerSeptive, 225 F.3d at 1319). "Once a district court has found a threshold level of both materiality and intent to deceive, the district court must balance the evidence to determine
"As with [fraud] claims, the inequitable conduct affirmative defense falls within the strictures of Rule 9(b)." Multimedia Patent Trust v. Microsoft Corp., 525 F.Supp.2d 1200, 1211 (S.D.Cal.2007); see Central Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347, 1356 (Fed.Cir.2007) ("We have held that `inequitable conduct, while a broader concept than fraud, must be pled with particularity,'" quoting Ferguson Beauregard/Logic Controls, Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1344 (Fed.Cir. 2003)); see also Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326-27 (Fed.Cir.2009) (inequitable conduct counterclaim and defense must be pled with particularity under Rule 9(b)). Where not pled with adequate particularity, an inequitable conduct counterclaim must be dismissed, and an inequitable conduct defense stricken, see Multimedia Patent Trust, 525 F.Supp.2d at 1211 ("Therefore, an inequitable conduct defense to a patent infringement claim may be stricken pursuant to Rule 12(f) for failure to plead with particularity"), and a counterclaim dismissed, FED.R. CIV.PROC. 12(b)(6).
B-K argues that FVC has not adequately pled a defense or counterclaim for inequitable conduct. A review of FVC's answer, affirmative defenses and counterclaims does not reveal any defense or counterclaim that is specifically identified as based on "inequitable conduct.
Accordingly, the court grants summary judgment in favor of B-K to the extent that FVC seeks to assert an inequitable conduct defense or counterclaim.
FVC also moves for summary judgment of non-infringement. Because the court finds that there are triable issues of fact concerning the validity of the remaining patent claims — claims 3, 12, 15, 18, 19, 21 and 22 — it must evaluate whether FVC is entitled to summary judgment of non-infringement of those claims.
As a preliminary matter, the court considers whether it should strike any or all of B-K's expert's report concerning infringement. FVC seeks such relief, asserting that B-K's expert discusses new infringement claims that were not included in B-K's preliminary infringement contentions or its responses to FVC's contention interrogatories.
B-K counters that it has not violated the scheduling order or any local rule.
B-K is correct that the local patent rules of the Northern District of California do not apply in this district. The Northern District's local patent rules are only relevant to the parties' obligations in this case to the extent they were incorporated in the court's October 9 order. To the extent B-K's conduct in this litigation has been non-compliant with the court's order(s), the court has the inherent authority
Rule 37 provides that "[i]f a party ... fails to obey an order to provide or permit discovery ... the court where the action is pending may issue further just orders ... prohibiting the disobedient party from supporting or opposing designated claims or defenses, or from introducing designated matters as evidence." FED. R.CIV.PROC. 37(b)(2); In re Vehicle Tracking and Sec. Sys. ('844) Patent Litig., MDL No. 11-2249 (DWF/SER), 2012 WL 3776463, *2 (D.Minn. Aug. 30, 2012) (a court can, pursuant to Rule 37, strike subsequent contentions not included in earlier infringement disclosures).
In its October 9 order, the court directed B-K to disclose the patent claims it asserted and its preliminary infringement contentions "in order to assist the parties in narrowing the focus of their dispute." The order referenced the local patent rules of the Northern District of California and the Eastern District of Texas. The court's order cited Townshend Intellectual Prop., LLC v. Broadcom Corp., No. C 06-05118 JF (RS), 2007 WL 1994158, *1 (N.D.Cal. July 5, 2007), noting that in that case, the court directed the party claiming infringement to tie the asserted patent claims to infringing products prior to claim construction "to forestall the prospect that infringement theories transform dramatically" through the course of litigation. The court thus made it clear that the purpose of the October 9 order was the same as the purpose of the local patent rules of the Northern District of California and the Eastern District of Texas — "to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed," to "ensure that litigants put all their cards on the table up front," and "to allow the defendant to pin down the plaintiffs theories of liability ... thus confining discovery and trial preparation to information that is pertinent to the theories of the case." CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 203 (N.D.Cal. 2009) (quoting 02 Micro, 467 F.3d at 1365); see also Motorola, Inc. v. Analog Devices, Inc., No. 1:03-CV-131, 2004 WL 5633736, *1 (E.D.Tex. Apr. 20, 2004) ("The requirement in issue in this case, that a party state it[s] preliminary infringement contentions shortly after the initial case management conference[,] is specifically designed to require parties to crystalize their theories of the case, and to prevent a `shifting sands' approach to patent litigation.... Allowance of continuous amendments to infringement contentions and claim constructions would encourage ... vexatious shuffling of positions ...,'" quoting LG Elecs. Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367 (N.D.Cal. 2002)).
As recognized by another court in this district, the purpose of ordering a party to provide preliminary infringement contentions is to require that "the patentee ... fish or cut bait with respect to its specific theory of infringement, ... [and] to ... clearly identify and explain how the ... accused product infringes upon specific claims for the patent-in-suit." Diagnostic
B-K argues that its infringement contentions have remained unchanged since it submitted its preliminary contentions. It asserts that it has always identified the mating, tapered annular structures on the accused products as the structures that infringe the first resistance means limitation of the '084 patent. B-K's expert report and brief in opposition to summary judgment, however, identify two different pairs of tapered post/opening structures that purportedly infringe the first resistance means, while B-K's preliminary contentions identified only one.
B-K's preliminary contentions identified the purportedly infringing "tapered opening" as an "annular groove" in the "lower member," and the infringing "tapered post" as "a pair of concentric ridges (or either one of them), that project from the upper member."
The second post/opening pair described in B-K's opposition to the motion to strike, as well as in its expert's report and summary judgment brief is not the allegedly infringing opening and post identified in B-K's preliminary contentions. The second "opening" identified by B-K is not an "annular groove in the lower member (`base member')"; it is located in the support member.'
In its October 9 order, the court directed B-K to submit preliminary infringement contentions "identifying specifically where each element of each asserted claim is found within each of FVC's accused product(s) or device(s) including for each element that B-K contends is governed by 35 U.S.C. § 112, the identity of the structure, act or material in the product that performs the claimed function."
Courts accord parties a "modest degree of flexibility, at least near the outset," to amend their contentions. Tessera, Inc. v. Adv. Micro. Devices, Inc., No. C 05-4063 CW, 2007 WL 1288199, *2 (N.D.Cal. Apr. 30, 2007). Thus, a court may allow a party to amend its preliminary contentions upon a showing of good cause. Id. B-K, however, did not move to amend or supplement its preliminary contentions to encompass an infringement claim based on the second post/opening pair it now cites as evidence of infringement.
FVC argues that B-K also did not disclose the second post/opening pair in its answers to contention interrogatories. Under Rule 26(e)(1), a party must "supplement or correct its [initial] disclosure[s] or [discovery] response[s] ... in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing." FED.R.CIV.PROC. 26(e)(1). A party's failure to supplement answers to interrogatories in a timely fashion can be grounds for exclusion of the undisclosed information. See Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1280 (Fed.Cir.2012) ("Rule 26 imposes an obligation on parties to conduct a reasonable inquiry into the factual basis of their discovery responses and requires that a party who responded to an interrogatory ... supplement or correct its disclosure or response... in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect.... Indeed, the district court has discretion, when circumstances warrant, to exclude evidence not produced in compliance with a proper discovery request"). Thus, if B-K failed to disclose the second post/opening pair in its answers to contention interrogatories, and failed to supplement those answers under Rule 26(e), the court can in its discretion strike those portions of B-K's expert report on infringement that reference the second pair. See Hancock v. Hobbs, 967 F.2d 462, 468 (11th Cir.1992) (district court properly struck expert's affidavit filed in support of opposition to motion for summary judgment under to Rule 26(e), where plaintiff failed to provide a timely supplement to answers to interrogatories with the expert's identity).
FVC served contention interrogatories on B-K on November 22, 2006, pursuant to Rule 33.
Both because B-K did not disclose the second post/opening pair in its preliminary infringement contentions and because it did not disclose the second pair in its answers to contention interrogatories or any Rule 26(e) supplement to those answers, the court grants FVC's motion to strike those portions of Pratt's expert report that discuss the second post/opening pair.
FVC also argues that the court should strike the portions of B-K's expert report discussing literal infringement of the first resistance means, because B-K failed to assert literal infringement of this element in its preliminary infringement contentions. In its October 9 order, the court directed B-K to identify whether it contended that each element of each asserted claim was infringed literally or under the doctrine of equivalents.
"To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly." Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed.Cir.1995). Thus, "[i]f any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Amgen Inc. v. F. Hoffman-LA Roche, Ltd., 580 F.3d 1340, 1374 (Fed.Cir.2009). FVC contends that its lighting devices do not literally infringe the first resistance means described in the remaining claims.
FVC argues that its devices do not literally infringe the first resistance means because they do not include the limitations of "a tapered opening in the support member" and a "tapered post in the base member." FVC contends that its devices employ a tapered opening in the upper base member, and a tapered post in the lower support member. B-K does not dispute this.
B-K argues, however, that the reversed opening and taper are "equivalent structures" that perform the same function as the structures claimed in the '084 patent, so they literally infringe the first resistance element under § 112, 116. Under § 112, ¶ 6, a patent claim can be expressed in "means-plus-function" format: "as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof." 35 U.S.C. § 112, ¶ 6. In such a case, the claim "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Id. (emphasis added). "Under § 112, 116, an accused device with structure not identical to the structure described in the patent will literally infringe the patent if the device performs the identical function required by the claim with a structure equivalent to that described in the patent." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1457 (Fed.Cir.1998). A structure is equivalent to the corresponding structure described in the patent "only if it is insubstantially different[.]" Ishida Co. v. Taylor, 221 F.3d 1310, 1317 (Fed.Cir.2000).
Claims 3, 12, 18, 19, and 21 not only use the term "first resistance structure," but also identify that structure; they specify that the "first resistance means" "comprises a tapered opening in [the] support member and a tapered post in [the] base member, said tapered opening sized and configured to receive said tapered post and allow frictional pivoting of said tapered post therein."
B-K concedes that the "tapered opening" identified in its preliminary contentions is on the base member, and the post is on the support member — "the opposite of the embodiment disclosed in the '084 patent."
Claims 15 and 22, however, claim the first resistance means in means-plusfunction format because they do not disclose a specific structure associated with the first resistance means. Rather, they claim a "first resistance means for limiting free pivotal movement of said base member relative to said support member when said base member is not locked in place to said support member."
Because the factors relevant to a finding of equivalence or non-equivalence under § 112, 116 are substantially similar to the factors considered when applying the "doctrine of equivalents," the court considers the two questions together below. See Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1099 (Fed.Cir.2008) (the question of structural equivalents under § 112 ¶ 6 and the doctrine of equivalents are "closely related" "in the sense that both § 112 ¶ 6 and the doctrine of equivalents apply `similar analyses of insubstantiality of the differences' between a disclosed structure and an accused infringing structure," citing Chinminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed.Cir.1998)); Searfoss v. Pioneer Consol. Corp., 374 F.3d 1142, 1148 (Fed. Cir.2004) (the question whether an indirect connection was equivalent to a direct connection was the same "whether equivalency is judged under section 112(6) or under the doctrine of equivalents"); Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1364 (Fed.Cir.2000) (noting that the analysis for determining whether an accused structure performs a claimed function in substantially the same way and achieves substantially the same result as the structure disclosed in the patent is "the same under both the section 112, paragraph 6 and [the] doctrine of equivalents tests").
B-K argues that even if the reversed post/opening structures in the FVC devices do not literally infringe the '084
Where the evidence is such that no reasonable jury could determine that two elements are equivalent, district courts are obliged to grant partial or complete summary judgment for the accused party. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n. 8, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) (citing Fed.R.Civ.Proc. 56; Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548). "The court must also determine the various legal limitations on the application of the doctrine of equivalents on a motion for summary judgment." Id. "Thus, under the particular facts of a case, if prosecution history estoppel would apply or if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court, as there would be no further material issue for the jury to resolve." Id.
FVC argues that the "specific exclusion" corollary to the "all limitations rule" precludes a finding of equivalency in this case. The "specific exclusion" rule provides that when "the scope of the claim [i]s limited in a way that plainly and necessarily exclude[s] a structural feature that [i]s the opposite of the one recited in the claim, that different structure c[an] not be brought within the scope of patent protection through the doctrine of equivalents." SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1346 (Fed.Cir.2001) (citing Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425 (Fed.Cir.1997)). "In other words, in a binary choice situation where there are only two structural options, the patentee's claiming of one structural option implicitly and necessarily precludes the capture of the other structural option through the doctrine of equivalents." Senior Techs., Inc. v. R.F. Techs., Inc., 76 Fed.Appx. 318, 321 (Fed.Cir.2003) (Unpub. Disp.); see also Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d 394, 400 (Fed.Cir.1994) ("equivalency cannot embrace a structure that is specifically excluded from the scope of the claims"). Otherwise, a finding of equivalency would wholly vitiate a claim limitation. SciMed, 242 F.3d at 1347. Relying on this body of law, FVC contends that the structural specifications set forth in the patent are binary in nature; it asserts that the patent specifically describes a "tapered post in [the] support member,"
Corning Glass does not support B-K's argument. As the Federal Circuit clearly stated in DeMarini Sports, Inc. v. Worth, Inc., "Corning Glass does not authorize rearrangement of structural claim limitations." 239 F.3d 1314, 1333 (Fed.Cir. 2001). The DeMarini court rejected the characterization of Corning Glass as "a reversal of parts case involving the reciprocal change of coacting elements," stating: "We disagree that the reciprocal change was a reversal of structure" and emphasizing that in Corning Glass, "no structural claim limitations were rearranged[.]" Id.; see also Dolly, 16 F.3d at 400 ("In Corning Glass, the accused device retained both a core and cladding layer and the relationship of their respective refractive indices").
The Federal Circuit has held that a patent that "claims a precise arrangement of structural elements that cooperate in a particular way to achieve a certain result" is not infringed by an accused product that achieves the same result "by a different arrangement of elements." Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425 (Fed.Cir.1997). In Sage, the Federal Circuit held that a patent for a container used for safe disposal of medical instruments, which claimed an elongated slot on the top of the container body, was not literally infringed by an accused device that had an elongated slot within the container body. Id. at 1423. Focusing on the fact that the patent claimed "an elongated slot at the top of the container body," id. at 1422, the court noted that the slot on the accused device was "not `at the top of the container body.'" Id. at 1423. It stated: "If Sage desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural encumbrances." Id. at 1425. Because Sage had not done so, the court reasoned.
Here, similarly, the '084 patent specifies a structural arrangement in which the tapered opening is in the support member, and the tapered post is on the base member.
The prosecution history of the '084 patent supports this conclusion.
Given this, FVC contends that B-K is precluded by the doctrine of prosecution history estoppel ("PHE") from relying on the DOE to assert that its devices infringe the first resistance means described in the remaining claims. The doctrine of PHE provides that "[w]here the original [patent] application once embraced the purported equivalent but the patentee narrowed his claims to obtain the patent or to protect its validity," the patentee cannot later assert that the "surrendered territory" comprises
Amendment of a patent application is not an absolute bar to subsequent claims of infringement under the DOE, however. Id. at 737, 122 S.Ct. 1831. Instead, it establishes a presumption that the surrendered territory cannot be claimed under the DOE, shifting the burden to the patentee to show that the amendment does not surrender the particular equivalent in question. Id. at 740, 122 S.Ct. 1831. To make such a showing, the patentee must demonstrate that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent. Id.
The evidence adduced by FVC establishes that the original patent embraced the purported equivalent of a tapered opening in the base member and a tapered post in the support member, given that it claimed the first resistance means in means-plus-function format. It also establishes, however, that B-K surrendered that broad claiming in prosecuting the reissue application by amending its claims to recite a specific structure comprising the first resistance means.
FVC has also adduced evidence that B-K sought the amendment to avoid prior art. Hagen submitted a declaration to the patent office stating that the application for a reissue patent had been filed because the applicant might originally have claimed too much in light of the Coronado 720 reference, of which it was not aware during prosecution of the original patent.
Consequently, B-K must adduce evidence that, at the time of the reissue application, one skilled in the art could not reasonably have been expected to have drafted a claim that would have literally encompassed the use of a tapered opening in the base member combined with a tapered post in the support member. B-K adduces no evidence that this is true. In fact, its opposition to the motion for summary judgment on infringement does not address FVC's PHE argument. B-K has thus failed to meet its burden of rebutting the presumption that PHE applies and that the equivalents at issue have been surrendered. As a result, it has failed to raise triable issues of fact as to whether the accused devices infringe the first resistance means claimed in the remaining claims under the DOE. Festo, 535 U.S. at 740, 122 S.Ct. 1831.
For substantially the same reasons, a finding of equivalence under § 112, ¶ 6 is precluded by the prosecution history of the '084 patent.
For the reasons stated, the court concludes that the rearranged structures in the accused products do not literally infringe claims 15 and 22 under § 112, ¶ 6 "in light of the disclosure of the invention in the specification, as a whole, as well as the prosecution history." J & M Corp., 269 F.3d at 1368 ("The literal scope of a properly construed means-plus-function limitation does not extend to all means for performing a certain function. Rather, the scope of such claim language is sharply limited to the structure disclosed in the specification and its equivalents. Moreover, the extent of equivalents must be interpreted in light of the disclosure of the invention in the specification, as a whole, as well as the prosecution history"); see also Kristar Enters., Inc. v. Revel Envtl. Mktg., Inc., No. C 98-3094 CRB, 1998 WL 886623, *4-5 (N.D.Cal. Dec. 16, 1998) ("[I]t is at least arguable that the ... patent sets forth a `precise arrangement of structural elements' which [defendant's product] now deviates from — indeed, the prosecution history for the ... patent suggests that the Patent Office may have required this degree of specificity from plaintiff in order to distinguish its invention from prior art.... [T]he Court finds that significant doubt exists as to whether the [product]... infringes the ... patent in light of the Sage Products decision. Therefore..., the need for a preliminary injunction against this defendant is obviated"). The court concludes, moreover, that the "all limitations rule" and prosecution history estoppel bar a finding that FVC's devices infringe the remaining claims under the DOE. Because B-K has failed to show that the remaining claims infringe the first resistance means either literally or under the DOE, the court grants FVC's motion for summary judgment of non-infringement.
The court grants B-K's motion for summary judgment on the defenses of anticipation, best mode, false inventorship, and inequitable conduct. It denies the balance of the parties' motions for summary judgment on the validity of the remaining claims. The court grants FVC's motion for summary judgment of non-infringement of the remaining claims.
On March 11, 2013, the court issued an order addressing the parties' cross-motions for summary judgment. The court granted defendants' motion for summary judgment of noninfringement. Accordingly,
IT IS ORDERED AND ADJUDGED
