The opinion of the court was delivered by: Richard W. Roberts United States District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff Michilin Prosperity Co. ("Michilin") filed a complaint alleging Fellowes Manufacturing Co. ("Fellowes") is infringing United States Patent No. 6,550,701 ("the '701 patent"), which claims a shredding machine capable of shredding both paper and digital media storage discs. Michilin has moved to correct the '701 patent arguing that the patent has a clear error in format. Fellowes has moved for summary judgment arguing that the all-limitations rule and disclosed-but-claimed rule prevent a finding of infringement as a matter of law; for leave to file a first amended answer in order to add a counter claim of inequitable conduct; and for sanctions arguing that Michilin's complaint is baseless.
Michilin's motion to correct the '701 patent will be denied because Michilin essentially asks this court to redraft its claims, a power beyond the scope of this court's authority. Fellowes's motion for summary judgment will be denied because Michilin's theory of infringement under the doctrine of equivalents does not vitiate a claim of the '701 patent and Michilin did not dedicate the one-switch embodiment of its invention to the public. Fellowes's motion for leave to file an amended answer with counterclaims will be granted because it raises claims from conduct occurring after the inception of this suit and states a claim for which relief could be granted. Fellowes's motion for sanctions will be denied because Fellowes has not disproven that Michilin's pleadings are legally sufficient, grounded in fact, and made in good faith.
Michilin Prosperity Company, Ltd. ("Michilin"), a corporation organized under the laws of Taiwan, is the owner of the '701 patent. The '701 patent claims the invention of a shredding machine capable of shredding both paper and digital media storage discs, more commonly known as CDs. Fellowes, Inc., an Illinois corporation, is a distributor of the POWERSHRED PS70-2CD shredder. The POWERSHRED PS70-2CD also has the capability to shred paper and digital media storage discs. On June 22, 2004, Michilin filed a complaint alleging that Fellowes's PS70-2CD model infringed the '701 patent. In briefing, the parties have narrowed the focus of this infringement suit to whether the accused device infringes claim 1 or claim 4 of the '701 patent under the doctrine of equivalents. (See Michilin's Concise Stmt. of Genuine Issues ¶¶ 1-12.)
The '701 patent claims as its invention "a dual-functional medium shredding machine structure, that not only serves as conventional paper shredding machines, but also allows shredding of the commonly known optical discs containing data or expired credit cards or membership cards through a disc inport or a card inport specifically for such media." '701 patent, col. 1:1-9. The '701 patent consists of only four claims. Claim 1 is the sole independent claim and recites (i) a machine body, (ii) two inports (one to receive paper, the other discs), and (iii) a paper touch switch and a disc touch switch, which each activate the shredding function when something is inserted in its corresponding inport. Id. at col. 4:52 -- col. 5:9. Claim 4 of the patent reads:
4. The dual-functional medium shredding machine structure of claim 1, wherein the paper inport and the disc or card inport are both led to the roller blades, a single touch switch is provided between the roller blades such that regardless of the type of substance being fed by a user, the paper, disc, or credit cards can all touch the touch switch so as to activate the roller blades to perform shredding task while the scraps are all dispensed to an identical bin.
Notably, claim 4 refers to a "single touch switch" but is dependent on claim 1, which incorporates a paper touch switch and a disc touch switch.
The specification*fn1 of the '701 patent discloses both a two-switch embodiment and a single-switch embodiment of the claimed invention. The description of the single-switch embodiment reads:
Furthermore, in consideration of reduction of manufacturing cost and in response to the market demands, the number of touch switches in this invention may be reduced to one, and the switch plate as well as the accompanying driving mechanism may also be eliminated. In other words, a single touch switch is provided at an appropriate location beneath the two inports and between the roller blades, such that regardless of the type of substance being fed by the user, the paper or disc can both touch the touch switch so as to activate the roller blades to perform shredding task while the scraps are dispensed to an identical bin. As such, a simplified embodiment of this invention further reduces the number of components thereby reducing the manufacturing cost and enhancing competitiveness.
Fellowes's accused PS70-2CD model, like the '701 patent, consists of two inports for paper and disc shredding respectively. (Fellowes's Mem. in Supp. Summ. J. of Non-Infringement ("Fellowes's Mem. Non-Infringement") at 9-10; Michilin's Mem. in Opp'n to Fellowes's Mem. in Supp. Summ. J. of Non-Infringement ("Michilin's Opp'n Non-Infringement") at 3-4.) However, the PS70-2CD uses only one optical sensor to activate the shredding function. (Id.)
I. MICHILIN'S MOTION TO CORRECT THE ...