Bailey v. Dart Container Corp. of Mich.

• Decision Date: 29 August 1997
• Docket Number: No. CIV. A. 94-10758-RCL.,CIV. A. 94-10758-RCL.
• Citation: 980 F.Supp. 560
• Parties: John A. BAILEY, Plaintiff, v. DART CONTAINER CORPORATION OF MICHIGAN, Defendant.
• Court: U.S. District Court — District of Massachusetts

980 F.Supp. 560

John A. BAILEY, Plaintiff, v. DART CONTAINER CORPORATION OF MICHIGAN, Defendant.

No. CIV. A. 94-10758-RCL.

United States District Court, D. Massachusetts.

August 29, 1997.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Erik P. Belt, Lee Carl Bromberg, Lisa M. Tittemore, Bromberg & Sunstein, Boston, MA, for Plaintiff.

Kenneth M. Reiss, R. Edward Brake, Robert A. Auchter, Julie Y. Patterson, Howrey & Simon, Washington, DC, Michael H. Shanahan, Banner & Allegretti, Ltd., Boston, MA, Dale A. Malone, Banner & Whitcoff, Boston, MA, Scott L. Robertson, Thomas J. Scott, Thomas Scott, Jr., Hunton & Williams, Washington, DC, for Defendant.

ORDER

LINDSAY, District Judge.

Report and Recommendation accepted, except as to matter reconsidered in Report and Recommendation of March 12, 1997.

REPORT AND RECOMMENDATION RE: DEFENDANT DART CONTAINER CORPORATION OF MICHIGAN'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 4,322,015 (DOCKET ENTRY # 5); DEFENDANT DART CONTAINER CORPORATION OF MICHIGAN'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 4,473,167 (DOCKET ENTRY # 7); PLAINTIFF BAILEY'S CROSS MOTION FOR PARTIAL SUMMARY JUDGMENT OF INFRINGEMENT OF U.S. PATENT NOS. 4,322,015 AND 4,473,167 (DOCKET ENTRY # 28)

ORDER RE: PLAINTIFF BAILEY'S MOTION TO STRIKE PORTIONS OF THE FOX DECLARATION (DOCKET ENTRY # 76); PLAINTIFF BAILEY'S MOTION TO STRIKE PORTIONS OF THE MACKENZIE DECLARATION (DOCKET ENTRY # 30); PLAINTIFF BAILEY'S MOTION TO STRIKE SECOND MACKENZIE DECLARATION (DOCKET ENTRY # 55); DEFENDANT DART CONTAINER CORPORATION OF MICHIGAN'S MOTION FOR PROTECTIVE ORDER (DOCKET ENTRY # 20); PLAINTIFF'S CROSS-MOTION FOR ENTRY OF A PROTECTIVE ORDER (DOCKET ENTRY # 23)

April 24, 1996

BOWLER, United States Magistrate Judge.

Plaintiff John A. Bailey ("Bailey"), owner of U.S. Patent Nos. 4,322,015 ("the '015 patent") and 4,473,167 ("the '167 patent"), filed this patent infringement action against defendant Dart Container Corporation of Michigan ("Dart"). Bailey contends that Dart's plastic container lids for its Lift n' Lock lids ("Dart's lids") infringe the '015 and '167 patents.¹ Pending before this court are three motions for partial summary judgment (Docket Entry # # 5, 7 & 28), three motions to strike (Docket Entry # # 30, 55 & 76) and two motions for protective orders (Docket Entry # # 20 & 23). After conducting a hearing, this court took the aforementioned motions under advisement.

I. DEFENDANT DART CONTAINER CORPORATION OF MICHIGAN'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 4,322,015 (DOCKET ENTRY # 5)

Dart moves for partial summary judgment on the basis that Dart's lids do not infringe the '015 patent literally or under the doctrine of equivalents. (Docket Entry # 5). In reply, Bailey filed an opposition and moved for partial summary judgment on the basis that Dart's lids infringe the '015 and '167 patents literally and under the doctrine of equivalents. (Docket Entry # # 28, 57 & 78).

In moving for partial summary judgment, Dart submits that Dart's lids lack the following features claimed in the '015 patent: (1) tear impressions extending inwardly from the edge of the container lid; (2) a retainer means; and (3) at least one protrusion opposite the access strip.

A. Background

The '015 patent, entitled "Container Lid," issued to Bailey on March 30, 1982. Thereafter, on September 29, 1982, Bailey filed another, related patent application which issued as the '167 patent on September 25, 1984. The '167 patent, entitled "Container Lid Construction," is a continuation in part of the '015 patent. As such, the '167 patent claims certain matter already claimed in the '015 patent and adds other new matter.

Both patents relate to plastic container lids with rimengaging means and tear impressions extending inwardly from the edge of the container lid or the rim-engaging means. While the '015 patent claims a retainer means, the '167 patent claims new matter consisting of a self-forming hinge element for the access strip comprising a molded-in depression and a vertical depending straight wall bridging the interior ends of the tear impressions.

Claim 1 of the '015 patent and the description of the preferred embodiment of the invention in the specification describe a container lid consisting of a flat central portion adapted to nest within and below the rim of a container. The container lid also includes a "rim-engaging means around the periphery of the edge" of the container which secures the "lid to the container rim in [a] semilocking, manually releasable" arrangement. ('015 patent, col. 2, 1. 51-56; col. 5, 1. 15-20).

As previously noted, the primary areas of dispute for purposes of Dart's partial summary judgment motion with respect to the '015 patent concern the claimed tear impressions, the retainer means and the structure described therein of "at least one protrusion molded into the surface of the central portion of the lid opposite said access strip." Dart moves for partial summary judgment on the basis that these features do not exist in Dart's lids and, accordingly, there is neither literal infringement nor infringement through the doctrine of equivalents.

B. Infringement Analysis: Literal and Equivalent

Summary judgment is proper "in a patent case where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law." Johnston v. IVAC Corporation, 885 F.2d 1574, 1576 (Fed.Cir. 1989). The inquiry is "`whether the evidence presents a sufficient disagreement to require submission to a jury [or this court as the fact finder] or whether it is so one-sided that one party must prevail as a matter of law.'" Paragon Podiatry Laboratory, Inc. v. KLM Laboratories, Inc., 984 F.2d 1182, 1185 (Fed.Cir.1993).

For example, to prevail on summary judgment of noninfringement, Dart must "point out the absence of evidence in the record directed to proof of a matter on which [Bailey] bore the burden of proof and which was necessary to establish [his] case." Becton Dickinson and Company v. C.R. Bard, Inc., 922 F.2d 792, 798 (Fed.Cir.1990) (depicting summary judgment standard for alleged infringer under doctrine of equivalents analysis). Once Dart sets "forth facts upon which its motion is premised, [Bailey] must come forward with specific facts showing that a genuine issue for trial exists." Sears, Roebuck and Company v. Sears Realty Company, Inc., 1993 WL 260677 at * 3 (N.D.N.Y. July 8, 1993).

Claim construction, for purposes of an infringement analysis, is an issue which this court may and should resolve as a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, ___ - ___, 116 S.Ct. 1384, 1393-1396, 134 L.Ed.2d 577 (1996). "A literal infringement analysis requires two separate steps." Southwall Technologies, Inc. v. Cardinal IG Company, 54 F.3d 1570, 1575 (Fed.Cir.), cert. denied, ___ U.S. ___, 116 S.Ct. 515, 133 L.Ed.2d 424 (1995). The first step is claim construction, Morton International, Inc. v. Cardinal Chemical Co., 5 F.3d 1464, 1468 (Fed.Cir. 1993), which this court determines as a matter of law. Southwall Technologies, Inc. v. Cardinal IG Company, 54 F.3d at 1575. As emphatically set forth by the Federal Circuit, the interpretation and the construction of the claims in a patent, "which define the scope of the patentee's rights under the patent, is a matter of law exclusively for the court." Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-971 (Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

Having determined what is patented, the second step is to compare the accused device to the properly construed claim. Read Corporation v. Portec, Inc., 970 F.2d 816, 821 (Fed.Cir.1992); accord Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1196 (Fed.Cir.1994) ("[s]econd, the claim as properly construed must be compared to the accused device"). In other words, "[t]he second step is to decide whether each limitation in the properly construed claim is found, either literally or equivalently, in the allegedly infringing" device. Morton International, Inc. v. Cardinal Chemical Co., 5 F.3d at 1468. It is in the second step where material issues of fact often arise inasmuch as it is "the trier of fact [who] determines whether the claims as thus construed read on the accused product." Southwall Technologies, Inc. v. Cardinal IG Company, 54 F.3d at 1575.

Under the initial step of claim construction, the first inquiry is to examine the language of the claim which defines the scope of protection. Bell Communications Research, Inc. v. Vitalink Communications Corporation, 55 F.3d 615, 619 (Fed.Cir.1995). In reviewing the words of the claim, this court "ascribe[s] [to them] their ordinary meaning unless it appears the inventor used them otherwise." Bell Communications Research, Inc. v. Vitalink Communications Corporation, 55 F.3d at 620; accord Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d at 1196 (unless specification or "file history indicate that the inventor intended otherwise, a claim term will be accorded its ordinary and accustomed meaning"). The focus of the inquiry into the meaning of one or more terms in a claim is not on what the inventor subjectively intended the term to mean. Rather, the court examines "what one of ordinary skill in the art at the time of the invention would have understood the term to mean." Markman v. Westview Instruments, Inc., 52 F.3d at 986.

Although the words used in a claim are important to interpret the meaning and the scope of the claim, the court must also consider the specification. Markman v. Westview Instruments, Inc., 52 F.3d at 979 (court examines three sources for claim interpretation: the claims, specification and prosecution history). As cogently explained in Markman, the specification, which contains a description of the invention, operates "as a sort of dictionary, which explains the...