The opinion of the court was delivered by: Walls, District Judge
Plaintiff SDS USA, Inc. moves for summary judgment for patent infringement. Defendant Ken Specialties filed an Opposition, a cross-motion for summary judgment for non-infringement, and asserted the affirmative defenses of "obviousness" and "best mode." The defendant also filed a "Supplemental and Reply Brief" for a summary judgment that its new "split-pin" machine does not infringe SDS EasyBender machine. Plaintiff's motion is granted and the motions of the defendant are denied.
U.S. Patent No. 5,870,919 ("919 patent") was issued to SDS as assignee on February 16, 1999. This patent teaches an "apparatus" (claims 1-7), "method" (claims 8-11) and "system" (claim 12) to aid the mass production of cardboard boxes and similar items. The claimed machine shapes a die from metal rule. The die, later placed in a diecutting machine, is used to stamp out box blanks from sheet material such as cardboard. The `919 patent issued from U.S. Patent No. 49,391 ("`391 application"), filed in March 1998 which was a continuation of U.S. Patent Application No. 668,379 ("`379 application"), filed in June 1996. The `379 application claimed the priority date of a Korean patent application filed in June 1995. The inventor of the `919 patent is Byung-Jun ("Brian") Song, President of Plaintiff. On August 3, 2000, this court issued a "Markman" ruling, which found that the patent was not invalid for indefiniteness and satisfied the written description requirement. Then the Court construed the various claims of the `919 patent that are the subject of the present motions of summary judgment.
1. Summary Judgment Standard
Summary judgment is appropriate where the moving party establishes that "there is no genuine issue as to any material fact and that [it] is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). A factual dispute between the parties will not defeat a motion for summary judgment unless it is both genuine and material. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). A factual dispute is genuine if a reasonable jury could return a verdict for the non-movant and it is material if, under the substantive law, it would affect the outcome of the suit. See Anderson, 477 U.S. at 248. The moving party must show that if the evidentiary material of record were reduced to admissible evidence in court, it would be insufficient to permit the nonmoving party to carry its burden of proof. See Celotex v. Catrett, 477 U.S. 317, 318 (1986).
Once the moving party has carried its burden under Rule 56, "its opponent must do more than simply show that there is some metaphysical doubt as to the material facts in question." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The opposing party must set forth specific facts showing a genuine issue for trial and may not rest upon the mere allegations or denials of its pleadings. See Sound Ship Building Co. v. Bethlehem Steel Co., 533 F.2d 96, 99 (3rd Cir. 1976), cert. denied, 429 U.S. 860 (1976). At the summary judgment stage the court's function is not to weigh the evidence and determine the truth of the matter, but rather to determine whether there is a genuine issue for trial. See Anderson, 477 U.S. at 249. In doing so, the court must construe the facts and inferences in the light most favorable to the nonmoving party. See Wahl v. Rexnord, Inc. 624 F.2d 1169, 1181 (3rd Cir. 1980).
In a patent-infringement case, a district court should approach a motion for summary judgment on the fact issue of infringement with great care. Palumbo v. Don-Joy Co., 762 F.2d 969, 974 (Fed. Cir. 1985), overruled on other grounds Markman v. Westview Instruments, Inc., 52 F.3d 967, 976-79 (Fed Cir. 1995) (en banc). Summary judgment may, however, properly be decided as a matter of law when no genuine issue of material fact exists, and no expert testimony is required to explain the nature of the patented invention or the accused product or to assist in their comparison. See, e.g., Sanitary Refrigerator Co v. Winters, 280 U.S. 30, 36 (1929); Singer Mfg. Co. v. Cramer, 192 U.S. 265, 275 (1904).
2. Patent Infringement Analysis of the `919 Patent
"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). A patent infringement analysis involves two steps. The first one -- claim construction -- is a question of law. Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998). This court's recent opinion, SDS, USA, Inc. v. Ken Specialties, 107 F.Supp.2d 574 (D.N.J. 2000) has construed the claims that are the subject of the present dispute. The second one -- comparison of the properly construed claims to the accused infringing product, is a question of fact. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996). The claim language is illuminated by the written description and the prosecution history. See Pitney-Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999). Although the question of infringement is generally one for a jury, summary judgment of infringement may be granted when a rational jury could only conclude that infringement has occurred. See Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 974-75 (Fed. Cir. 1999) (reversing summary judgment of non-infringement and granting judgment of infringement because no reasonable jury could determine that any claim limitation was absent from the accused device).
The plaintiff has claimed that defendant's products "literally infringe" its `919 patent. Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device, that is, when the properly construed claim reads on the accused device exactly. Amhil Enterprises v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996). It is necessary to examine the limitations in each claim to determine if defendant's "Multi-Bender" machine literally infringes plaintiff's "EasyBender" machine: First, a discussion of the general concepts of "ribbon stock" and a "cutter" which appear in several of the claims. Afterwards, each claim of the `919 patent will be examined to determine if there is literal infringement.
A. Preliminary Definitions
It is useful to define some basic terms such as "ribbon stock" and "cutter" that guide the analysis. At the Markman hearing, defendant asserted that ribbon stock could only be precut steel rule. (Ken Non-Infr. Br. at 20-21). However, the Markman opinion concluded that ribbon stock is not limited to precut steel rule, and instead, "refers to the material from which the preferred-embodiment `cutting blade' is constructed." Plaintiff v. Ken Specialties, 107 F.Supp. at 579. Because ribbon stock is not limited to precut steel rule, Ken's non-infringement arguments as to ribbon stock are rejected.
The cutter is another limitation which appears throughout several of the claims. This court has adopted as the definition of "cutter" (an element which appears in claim 12 of the `919 patent) the meaning found in the "Glossary of Terms" of the International Association of Diecutting and Diemaking ("I.A.D.D.") SDS, 107 F.Supp.2d at 594 as simply "a term used to describe a bench tool used to cut steel rule stock in the manufacture of steel rule dies." Id. The defendant's effort to limit the "cutter" under §112 ¶6 to correspond only to the particular cutter shown in Korean Patent No. 80607 has been rejected.
Defendant argues that because the patent teaches a machine that "cuts, miters and notches," and that its machine only cuts, there is no infringement. (Ken Non-Infr. Br. at 14, citing Kengott Decl. ¶31.) However, the claim has been construed to require only the cutting of steel rule, without mentioning mitering or notching. Defendant freely admits that its cutter is simply a "sheer cutter" (Id. at 18). Because defendant's machine has a cutter like the one described in the IADD Glossary, non-infringement argument regarding this limitation cannot be accepted.
B. The "Transferring Unit"
Claim 1 begins by describing a transferring unit. The Markman opinion found that the transferring unit (or transfer roller) was a mechanism that moves the ribbon stock from a roller at the beginning of the assembly line through a longitudinal passage formed by a guide. Plaintiff contends that defendant's products meet this limitation.
The transferring unit of the accused product "is an opposing pair of rollers spaced apart from each other to define a separation through which said steel rule is fed." (Ken Non-Infr. Br. 2) Ken's president, Dale Kengott, admitted as such. (See Kengott Non-Infr. Decl. ¶ 13).
Plaintiff argues that defendant's products infringe method claims 8-11. These method claims do not require a "transferring unit," but only a step of "transferring of the ribbon stock through a passage formed by a guide, said passage defining a longitudinal axis . . ." (Plaintiff Br. 4). According to Plaintiff, the use of Ken's accused product involves such a step. Id. Ken has not refuted this assertion.
There is a dispute whether Ken's product infringes upon "the guide." Claim 1 also calls for "a transfer unit for transfer of ribbon stock through a passage formed by a guide . . . " Plaintiff asserts that the steel rule in Ken's accused product travels through a guide in exactly the same manner as shown in the `919 specification. (See Plaintiff Infr. Br. at 7-8). According to Plaintiff, there is no genuine issue as to whether in Ken's accused product, the ribbon stock is transferred through a passage formed by a guide. Ken has confirmed the accuracy of Document Plaintiff-0002 (Gilman Infr. Decl. Exh. 13) and Defendant's Document Numbers 8-87 (Gilman Infr. Exh. 12) which show the offending method.
In the `919 patent, the roller urges the blank material into and through a guide. As shown in Ken's document 8-87, the blade material goes through an "intermediate guide" and "auxiliary guide" before it goes through the "main guide." (See Plaintiff Infr. Br. 5-6). Ken does not refute that its product works exactly like Plaintiff's product, but merely offers that the ribbon stock in the accused product passes through not one, but three guides. However, one cannot avoid infringement by adding elements if each element in the claims is found in the accused device. In other words, if an accused device contains all of the elements of the patented device, it cannot escape an infringement claim merely by adding a few elements. Temco Elec. Motor Co. v. Apco Mfg. Co., 275 U.S. 319, 328 (1928); A.B. Dick Co. v. Burroughs Corp. 713 F.2d 700, 703 (Fed. Cir. 1983).
D. The "Longitudinal Axis"
Claim 1 of the `919 patent also describes a longitudinal axis. Defendant argues that even though its device has a guide, there is no longitudinal axis. However, as pointed out by Plaintiff, claim 1 refers to a transferring unit for transfer of ribbon stock through a passage formed by a guide. If there is a passage, it "necessarily" defines a longitudinal axis. Ken admits as much in its brief: "The passage [in the `919 patent] defines a longitudinal axis . . . Thus, the guide [in the `919 patent] is a hollow structure in which a longitudinal axis is defined by a passage." (Ken Non-Infr. Br. 10). Since Ken's product has a guide, it necessarily defines a longitudinal axis.
Ken tries to avoid infringement by arguing that the opposing pair of rollers which correspond to the "transferring unit" limitation do not themselves have a hollow structure, necessary to define a longitudinal axis. (See Ken Non-Infr. Br. 10). According to Plaintiff, Ken confuses "transferring unit" and "guide." The transferring unit transfers ribbon stock through a passage formed by a guide, and that passage defines a longitudinal axis. Plaintiff argues that defendant Ken's device is within this requirement. The Court agrees.
E. Rotary Assembly Limitation
Claim 1 also calls for "a rotary assembly having first and second rotary bodies spaced to receive ribbon stock there between . . . " In response to requests for admission, the defendant admits that the Multi-Bender (MB 900-B or MB 710-B) includes two rotary bodies which are spaced from one another. (Gilman Infr. Decl. Exh. 11, Resp. to Req. for Admis. Nos. 7, 7A; see also Resp. to Req. for Admis. No. 56, admitting that "Documents Plaintiff-00002 shows two rotary members at 43.") The Plaintiff-00002 drawing clearly depicts how the pulleys 43 are spaced apart and how the metal ribbon stock travels between them. According to Plaintiff, Ken's product literally infringes the `919 patent based on the rotary assembly. The Court agrees with the plaintiff.
F. The "At Least One Retractable Elongate Member" Limitation
Claim 1 requires, "at least one retractable elongate member, said elongate member mounted for movement between a retracted position where said elongate member is disengaged from at least one of said rotary bodies and an extended position where said elongate member engages both said first and second rotary bodies . . . "
At the Markman hearing, Ken adamantly argued that `elongate member' referred to two or more folding members. The Court did not accept that definition and held that "at least one" meant one or more. Id. at 589-90. The Court also rejected Ken's contention that this was a means-plus-function limitation under 35 U.S.C. §112 ¶6. Because Ken's Multi-Bender has one retractable elongate member, it literally infringes the `919 patent.
One of the defendant's present arguments against plaintiff's motion is that the bending pins in the accused product only bends "uncut" steel rule. In answer to plaintiff's Rule 56.1 Statement ¶¶ 8-9, defendant asserts "the bending pins of the accused product only bend uncut steel rule." However, this court has already refused Ken's argument that "ribbon stock" is limited to precut steel rule. Id. at 579.
Finally, Ken's assertions of non-infringement that compare its product to plaintiff's commercial product and brochures relating thereto are irrelevant. (See Ken Non-Infr. Br. at 12). It is improper to compare the defendant's accused device to a commercial embodiment of the patentee's invention. See, e.g., Glaxo, Inc. v. TorPharm, Inc., 153 F.3d 1366 (Fed. Cir. 1998); Zenith Lab, Inc v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1423 (Fed. Cir. 1994); Martin v. Barber, 755 F.2d 1564, 1567 (Fed. Cir. 1985). The Court finds that defendant's accused device plainly meets the "at least one retractable elongate member" limitation.
G. The "Arcuate Motion" Limitation
The final limitation of claim 1 calls for, "said rotary assembly configured for arcuate motion relative to said guide from a first position toward at least one second position to fold a portion of said ribbon stock by said elongate member." Ken admits that the upper and lower pulleys of its Multi-Bender are rotatable (Gilman Decl. Infr. Exh. 11), and that the bending pin moves with the "gears" (i.e., pulleys) in an arcuate motion. (Gilman Decl. Infr. Exh. 15, Kengott Dep. at 177:14-18.) It is clear that Ken's two pulleys rotate, that is, go through "arcuate motion" relative to the guide from one ...