was critical for his machine to operate on separate sheets." Plaintiffs' Memorandum in Response to Defendant's Post-Hearing Memorandum and Proposed Findings of Fact at 2, 8. Plaintiffs' arguments are unpersuasive.
Defendant did not need to state either that "sheets" means only sheets in individual form or that it is critical for the Weber device to operate on single sheets for the simple reasons that, first, "sheets" and "web" are not synonymous in common usage, and in fact, their meanings are distinct from each other; and second, the usual industry practice was and is to bind paper in individual sheet form. Hence, it was unnecessary for defendant to state that it was "critical for the machine to operate on separate sheets" because it was already presumed -- which is precisely why the Meier '755 patent makes clear it was departing from this practice by referring repeatedly and exclusively to "webs." Plaintiffs challenge Webster's Third by noting that "webs comprise 'sheets', nevertheless, and folded 'sheets' at that, as Meier '755 points out"; but the fact that many sheets connected together make a web does not mean that a "sheet" is a "web." Plaintiffs' Memorandum of Law Including Proposed Findings of Fact and Conclusions of Law in Support of its Motion for Summary Judgment at 24.
Under 35 U.S.C. § 102, anticipation "requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim." Connell, 722 F.2d at 1548. Plaintiffs fail to meet this requirement: the Meier '755 does not disclose the use of "sheets," an element of the Weber patent. Accordingly, plaintiffs' motion for summary judgment of the invalidity of the Weber patent is denied.
Defendant has not moved for summary judgment. Defendant has, in fact, filed "Defendant's Statement of Genuine Issues of Material Fact and Counterstatement of Controverted Facts." Nevertheless, summary judgment may be rendered in favor of the opposing party even though he has made no formal cross-motion under rule 56. Accordingly, for reasons stated below, an accompanying Order will grant summary judgment to defendant on the invalidity issue. See 10A Wright, Miller, and Kane, Federal Practice and Procedure § 2720, fn. 20 (1983); Leahy v. District of Columbia, 266 U.S. App. D.C. 142, 833 F.2d 1046, 1047 (D.C. Cir. 1987) (noting with approval district court's sua sponte granting of summary judgment to non-movant).
Summary judgment is appropriate when no genuine triable issues of material fact exist and the party is entitled to a judgment as a matter of law. See Fed. R. Civ. P. 56(c); Edwards v. Aguillard, 482 U.S. 578, 595, 96 L. Ed. 2d 510, 107 S. Ct. 2573 (1987). The construction or interpretation of a patent claim is a matter of law. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987). Upon consideration of the claim language, it is clear that "sheets" is an important, if not crucial, limitation to the Weber patent. Unless plaintiffs allege that the Meier '755 patent anticipates this limitation, summary judgment is appropriately rendered for defendant as there would be no triable material facts at issue. Plaintiffs have not alleged that the Meier '755 patent anticipates this limitation, and in fact, enthusiastically concede that the Meier '755 patent is not able to operate on individual sheets: "Grapha also argues that the Meier '755 patent does not show a machine which is operating on discrete sheets, either explicitly or inherently. This argument is irrelevant since Ferag admits it is the case! " Plaintiffs' Memorandum in Response to Defendant's Post-Hearing Memorandum and Proposed Findings of Fact at 4 (emphasis added). (Of course, the Meier '755 patent itself, as noted above, requires paper in web form in order to "implement" the object of the invention.)
This concession is considerable. The concept of "inherent anticipation" is intended to provide "'modest flexibility' in the rule that 'anticipation' requires that every element of the claim appear in a single reference." Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). As plaintiffs concede that even under the relaxed rule of "inherent anticipation," the Meier '755 does not anticipate "sheets," there is no point in reserving this issue for trial. Summary judgment as to plaintiffs' invalidity action on the grounds of anticipation by Meier '755 under 35 U.S.C. § 102(b) is rendered for defendant.
Plaintiffs also seek a declaratory judgment that their Print '91 machine and their IPEX machine do not infringe the Weber patent. Plaintiffs have filed a motion for summary judgment of non-infringement of Claims 4, 12-16 and 21-25 with respect to the two machines.
Whether a declaratory judgment in a patent case shall issue depends on the following:
First, the defendant's conduct must have created on the part of plaintiff a reasonable apprehension that the defendant will initiate suit if the plaintiff continues the allegedly infringing activity. Second, the plaintiff must have either produced the device or have prepared to produce that device. . . . The test, however stated, is objective and is applied to the facts existing when the complaint is filed.
Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 736 (Fed. Cir. 1988) (quoting Goodyear Tire & Rubber Co. v. Releasomers, Inc., 824 F.2d 953, 955 (Fed. Cir. 1987)) (emphasis added).
This test looks both to defendant's conduct and to plaintiff's conduct. Respecting defendant's conduct, "it must be such as to indicate defendant's intent to enforce its patent." Arrowhead Indus., 846 F.2d at 736. Respecting plaintiff's conduct, "plaintiff must be engaged in an actual making, selling, or using activity subject to an infringement charge or must have made meaningful preparation for such activity." Id.
Defendant claims that plaintiffs have failed to pass their part of the test: specifically, that the activities undertaken by plaintiffs with respect to the IPEX machine (first shown in 1993) at the time of the complaint (filed in August 1991) do not constitute "meaningful preparation" to make, sell, or use the machine. Alternatively, defendant argues that, at the very least, there is a material factual dispute as to plaintiffs' activities regarding the IPEX machine which precludes summary judgment.
It is clear that defendant has raised a material factual dispute as to whether the IPEX machine was properly before the Court when the complaint was filed. Plaintiffs have not introduced any evidence that they had produced or prepared to produce the IPEX machine in August 1991. Nor have they introduced evidence of "a reasonable apprehension" that defendant intended to initiate suit for infringement by the IPEX machine in August 1991.
Because much time has passed since plaintiffs filed their motion through no fault of their own and because plaintiffs may have engaged in further activities relating to the IPEX machine in that intervening period, an accompanying Order denies without prejudice plaintiffs' motion with respect to the IPEX machine. If necessary, plaintiffs may move for leave to amend their complaint. See Fed. R. Civ. Pro. 15(a).
Plaintiffs have moved for summary judgment of non-infringement of Weber Claims 4, 12-16, and 21-25 by the Print '91 machine. Defendant concedes that there has been no infringement of Claims 12-16, 21, and 25. Accordingly, only Claims 4 and 22-24 are at issue in the instant motion.
To determine patent infringement, first, a claim must be interpreted to determine its proper scope and meaning; and second, it must be determined whether the accused device (here, the Print '91 machine) is within the scope of the properly interpreted claim. The burden is on the patentee to show infringement, either literal or by equivalents, by a preponderance of the evidence. Smithkline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988). In order to find infringement, the patent claims must be "read on" the accused device, i.e., the allegedly infringing device is examined to see if it is substantially described by the claims.
The Patent Act permits the patenting of a "means-plus-function" limitation and provides that:
an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112, P 6. Read broadly, this language "could encompass any conceivable means for performing the function." Valmont Indus., Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed. Cir. 1993). Consequently, the second clause of section 112 is read as confining the breadth of protection otherwise permitted by the first clause. The claim is to be interpreted only as covering the "corresponding structure, material, or acts described in the specification and equivalents thereof" and no more. See id. Therefore, "the accused device must employ means identical to or the equivalent of the structures, material, or acts described in the patent specification. The accused device must also perform the identical function as specified in the claims." Id.
Claim 4 is a means-plus-function limitation on the Weber patent and defines the connecting means as "including means for simultaneously stapling the backs of sheets of a plurality of accumulations to each other." The parties agree that the question of infringement as to Claim 4 turns upon how "simultaneously stapling" is defined. Plaintiffs argue that "simultaneously stapling" means stapling which is "exactly coincident" (citing Webster's Ninth New Collegiate Dictionary). Defendant responds that the phrase does not require the two stapling operations to be "exactly coincident" and argues for a looser construction of "simultaneously stapling," a construction by which "there is simultaneous stapling present if two or more stapling mechanisms are involved in some stage of the stapling operation during a set period of time." Defendant's Opposition to Plaintiffs' Motion for Summary Judgment at 33.
Because the statutory mandate of section 112 requires that the claim language be construed to "cover the corresponding structure," the phrase "simultaneously stapling" may mean only what is indicated by the corresponding structure, the Weber patent. Defendant states that "Weber shows two staple applicators simultaneously applying staples to two different accumulations at the exact same instant in time," and states also that "the Print '91 machine shows two staple applicators which apply staples to two discrete accumulations almost at the same instant in time." Defendants' Memorandum in Opposition to Plaintiffs' Motion for Summary Judgment at 35.
From this, it can be fairly stated that "simultaneously" does, indeed, mean "exactly" same or coincident because the Weber stapling process is described as occurring at the "exact same" time. It can also be fairly stated -- because defendant admits it -- that the Print '91 mechanism does not staple at the "exact same" instant in time, but "almost at the same instant in time." Defendant notes this difference, but complains that it is "insubstantial": only 1/10 of a second separates "exact" from "almost." Defendants' Memorandum in Opposition to Plaintiffs' Motion for Summary Judgment at 35. Nevertheless, in the binding industry, even 1/10 of a second may be significant. Given that the purpose of the new inventions is to increase the rate of binding production, the 1/10 of a second difference may be a significant advance in the art.
Defendant does not explain why or why not 1/10 of a second is unimportant. Because the patentee has the burden of proof in an infringement action, defendant's failure to explain why the difference is negligible leads to the conclusion that the Print '91 device does not "employ means identical to or the equivalent of the structures, material, or acts described in the patent specification" and therefore does not infringe the Weber patent under section 112. See Valmont Indus., 983 F.2d at 1042.
For this reason, defendant argues that the doctrine of equivalents applies if the "Court were to adopt Ferag's position that 'simultaneous stapling' means two stapling operations which are exactly coincident." Defendant's Post-Hearing Reply Memorandum In Opposition to Plaintiffs' Motion for Summary Judgment at 40. The doctrine of equivalents is designed to do equity in those situations in which "there is no literal infringement but liability is nevertheless appropriate to prevent what is in essence a pirating of the patentee's invention." Hormone Research Foundation v. Genentech, Inc. 904 F.2d 1558, 1564 (Fed. Cir. 1990). Under this doctrine, "infringement may be found (but not necessarily) if an accused device performs substantially the same overall function or work, in substantially the same way, to obtain substantially the same overall result as the claimed invention." Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934 (Fed. Cir. 1987) (citation and footnote omitted) (emphasis added).
A comparison of the stapling mechanisms of the Print '91 and Weber devices indicates that the stapling devices do not perform "in substantially the same way." The Print '91 machine uses a rotating ring of concentric staplers, whereas the Weber patent uses a yoke that rocks back and forth in pendulum fashion. See Defendant's Post-Hearing Memorandum in Opposition to Plaintiffs' Summary Judgment Motion at 39-40. The Print '91 machine staples in a serial fashion as the stapling head rotates past the cam; in the Weber patent, it does not. And as to the results obtained: the Print '91 machine staples over many cycles on each carrier; Weber staples over one machine cycle or less on each of several carriers.
Even under the doctrine of equivalents, then, the Print '91 machine does not infringe Claim 4 of the Weber patent. Accordingly, an accompanying Order grants plaintiffs' motion for summary judgment on their claim of non-infringement as to Claim 4 of the Weber patent.
Claim 22 of the Weber patent discloses "the machine of claim 1, wherein each of said feeding units comprises means for delivering a stream of partially overlapping sheets wherein each preceding sheet overlies the next following sheet." To understand this claim, it is necessary to refer to the entire patent disclosure and the prosecution history of the patent. See Smithkline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878 (Fed. Cir. 1980). Claim 22 depends on Claim 1 because a "claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers." 35 U.S.C. 112, para. 4.
Read alongside Claim 1, Claim 22 discloses a sheet feeding unit as a "means for delivering a stream of partially overlapping sheets," Claim 22, and as a "means for depositing . . . sheets onto successive carriers in a first portion of said path." Claim 1. As means limitations, then, the Weber sheet feeding units cover only those feeding units performing identical functions of delivering a stream of sheets to the depositing means and depositing those sheets "in a first portion of said path" as disclosed in Claim 1. See Plaintiffs' Reply Memorandum in Support of its Motion for Summary Judgment at 10.
The corresponding sheet feeding units on the Print '91 device are the gripper conveyors referred to as element 5 in defendant's description of the Print '91 machine. See Defendant's Memorandum In Opposition to Plaintiffs' Motion for Summary Judgment at 37. These gripper conveyors do not supply sheets in streams. Rather, individual grippers drop individual sheets onto the drum carriers sequentially without any overlap.
Plaintiffs do admit that at some point in the binding process -- when the paper is first taken from the printing press -- the sheets are in a stream. Plaintiffs' Reply Memorandum in Support of Its Motion for Summary Judgment at 23. In turn, defendant responds that "there is no limitation in the claim as to the location of the stream vis-a-vis the feeding units." Defendant's Post-Hearing Reply Memorandum in Opposition to Plaintiffs' Motion for Summary Judgment at 25. But Claim 22 is expressly limited by Claim 1, which discloses a "means for depositing . . . sheets onto successive carriers in a first portion of said path " (emphasis added). Claim 22 cannot be read as covering any point in the binding process at which sheets are overlapping. Because the corresponding sheet feeding units of the Print '91 machine do not "deliver a stream of partially overlapping sheets," the Print '91 machine does not infringe Claim 22 of the Weber patent.
Claims 23 and 24 are dependent upon and include all the limitations of Claim 22. As Print '91 machine does not infringe claim 22, it does not infringe claims 23 and 24 as a logical matter. Accordingly, an accompanying Order grants plaintiffs' motion for summary judgment on its claim of non-infringement of claims 22-24 of the Weber patent.
* * *
The Complaint contains a prayer for an injunction against defendant and others from asserting any rights of defendant in U.S. Patent No. 4,735,406, the Weber patent. The plaintiff has not produced evidence, or for that matter, made any argument that would justify an injunction at this time. There is no reason to conclude that defendant would fail to obey this Court's Declarations and Judgment in this matter. It will be time enough to consider enforcement when defendant and/or others should engage in such lawless conduct.
Date: September 20, 1995
Louis F. Oberdorfer
UNITED STATES DISTRICT JUDGE
April 5, 1988
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Oct. 11, 1983
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[SEE ILLUSTRATION IN ORIGINAL]
For the reasons stated in the accompanying Memorandum, it is this 20th day of September, 1995 hereby
ORDERED and DECLARED: that Claims 1-3, 5-11, 17-20, 26, and 27 are not invalid under 35 U.S.C. § 102(b) as anticipated by Meier U.S. Patent No. 4,408,755.
ORDERED and DECLARED: that Plaintiffs' Print '91 machine DOES NOT INFRINGE Claims 4 and 22-24 of Defendant's U.S. Patent No. 4,735,406; and it is further
ORDERED: that Plaintiffs' motion for summary judgment that its IPEX machine does not infringe Defendant's U.S. Patent No. 4,735,406 is hereby DENIED WITHOUT PREJUDICE.
Louis F. Oberdorfer
UNITED STATES DISTRICT JUDGE
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