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EPOS Technologies Ltd. v. Pegasus Technologies Ltd.

United States District Court, District of Columbia

January 9, 2013


Page 89

[Copyrighted Material Omitted]

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Anthony L. Press, Hector G. Gallegos, Monica L. Scheetz, Morrison & Foerster, LLP, Los Angeles, CA, G. Brian Busey, John Leonard Kolakowski, Morrison & Foerster, LLP, Joseph O. Click, Peter S. Weissman, Blank Rome, LLP, Washington, DC, Christian G. Andreu-Von Euw, Morrison & Foerster, LLP, San Diego, CA, for Epos Technologies Ltd., et al.

William Paul Atkins, Christopher K. Dorsey, Pillsbury Winthrop, Shaw Pittman, LLP, McLean, VA, Anthony John Demarco, Pillsbury Winthrop, Shaw Pittman, LLP, Washington, DC, Jeffrey E. Faucette, Skaggs Faucette LLP, Stephen McG. Bundy, Taylor & Company Law Offices LLP, San Francisco, CA, for Pegasus Technologies Ltd., et al.


WILLIAM M. NICKERSON, Senior District Judge.

The central question in this long-running litigation is whether digital pens manufactured by Plaintiff, EPOS Technologies Ltd., infringe six patents held by Defendants, Pegasus Technologies Ltd., and Luidia, Inc. The parties have filed cross motions for summary judgment, ECF Nos. 167 (Pegasus & Luidia) & 169 (EPOS), and after considering the parties' briefing, as well as the pleadings, facts and applicable law, the Court determines that the EPOS pens do not infringe any of the claims asserted by Pegasus.[1] The Court will, therefore, grant EPOS's motion for summary judgment in part, and deny Pegasus's motion for partial summary judgment as moot.[2]


Both EPOS and Pegasus develop and market digital pens. In 2007, after Pegasus sent letters to EPOS as well as EPOS's investors and business partners claiming that EPOS's products infringed four patents, EPOS filed suit seeking a declaration of noninfringement or a determination of invalidity on the same four

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patents. See ECF No. 1 (Complaint). After unsuccessfully moving to dismiss EPOS's Complaint, see ECF Nos. 25 & 26 (Mem. & Order), Pegasus answered and asserted counterclaims. ECF No. 31 (Answer & Counterclaims). In addition to the four patents identified in EPOS's Complaint, Pegasus sought damages and injunctive relief for infringement based on two other patents. Pegasus's counterclaims also added Luidia, Inc. (Luidia) as counterclaim plaintiff and Dane-Elec S.A., Dane-Elec Memory S.A., and Dane-Elec Corporation USA (collectively Dane-Elec),[3] as counterclaim defendants.

In total, there are six patents-in-suit: U.S. Patent Nos. 6,724,371 entitled " Presentation Board Digitizers" , 6,841,742 entitled " Presentation Board Digitizer Systems," 6,326,565 entitled " Marking Device for Electronic Presentation Board," 6,392,330 entitled " Cylindrical Ultrasound Receivers and Transceivers Formed from Piezoelectric Film," 6,501,461 entitled " Retrofittable Apparatus for Converting a Substantially Planar Surface into an Electronic Data Capture Device," and 6,266,051, which shares the same title as the '461 patent. In addition, there are three EPOS products at issue, the Zpen, which has been sold in the United States by Dane-Elec, the Gpen300, and the Intellipen. Collectively, the Zpen, Gpen300, and Intellipen are referred to as " the EPOS Products."

In 2011, the Court held a Markman hearing to construe numerous terms appearing in the patents-in-suit that were either allegedly indefinite, or the meaning of which was disputed by the parties. The Court issued a Markman Order construing 14 such terms. ECF No. 91.


Summary judgment is available, and appropriate, in a patent infringement case just as it is in any other type of civil litigation. See SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed.Cir.1985). There must, however, be no genuine dispute of material fact and the moving party must establish that it is entitled to judgment as a matter of law. Id.; Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

Here, Pegasus has the burden of proving infringement at trial. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1573 (Fed.Cir.1994) (" patentee must prove that the accused device embodies every limitation in the claim, either literally or by a substantial equivalent" by a preponderance of the evidence). Therefore, EPOS is entitled to summary judgment if it can show that (1) there is no dispute as to any material fact, and (2) Pegasus " has failed to make a sufficient showing on an essential element of [its] case with respect to which [it] has

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the burden of proof." Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

Establishing infringement is a two-step process which involves (1) claim construction, and (2) comparing the accused instrument to the construed claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995)(en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The first inquiry, claim construction, is a matter of law and summary judgment is particularly appropriate where the " determination of infringement turns solely on the legal question of the proper construction of the claims." Mantech Envtl. Corp. v. Hudson Envtl. Servs, Inc., 152 F.3d 1368, 1371 (Fed.Cir.1998).

The second step requires the patentee to establish that the accused product meets every limitation of the patents' claims, literally or by their substantial equivalent. Conroy, 14 F.3d at 1573; PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed.Cir.2005). If even a single limitation is not met by the accused device, there is, as a matter of law, no infringement. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed.Cir.1998).

Literal infringement exists when each limitation of the claim is found in the accused device. Amhil Enters., Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed.Cir.1996). By contrast, " infringement under the doctrine of equivalents occurs when a claimed limitation and the accused product perform substantially the same function in substantially the same way to obtain substantially the same result." V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1313 (Fed.Cir.2005) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)). Findings of infringement under the doctrine of equivalents is, however, the exception and not the rule. London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed.Cir.1991). As the court in London explained, this is because if " the doctrine of equivalents is simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims, then claims will cease to serve their intended purpose." Id.


A. The EPOS Products Do Not Infringe The '565 ...

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