Gart v. Logitech Inc

• Decision Date: 26 June 2001
• Citation: 59 USPQ2d 1290,254 F.3d 1334
• Parties: (Fed. Cir. 2001) SAMUEL GART, Plaintiff-Appellant, v. LOGITECH, INC., Defendant-Appellee. 00-1088 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1334

254 F.3d 1334 (Fed. Cir. 2001)

SAMUEL GART, Plaintiff-Appellant, v. LOGITECH, INC., Defendant-Appellee.

00-1088

United States Court of Appeals for the Federal Circuit

DECIDED: June 26, 2001

Appealed from: United States District Court for the Central District of California

[Copyrighted Material Omitted]

Judge Consuelo B. Marshall

Joseph R. Re, Knobbe, Martens, Olson & Bear, LLP, of Newport Beach, California, argued for plaintiff-appellant. With him on the brief was William R. Zimmerman.

William L. Anthony, Orrick Herrington & Sutcliffe, LLP, of Menlo Park, California, argued for defendant-appellee. With him on the brief was Terrence P. McMahon, Eric L. Wesenberg, and Rowena Y. Young.

Before LOURIE, RADER, and LINN, Circuit Judges.

LINN, Circuit Judge.

On cross motions for summary judgment, the United States District Court for the Central District of California (the "district court") determined that Logitech, Inc. ("Logitech") does not infringe claim 7 of Samuel Gart's ("Gart") U.S. Patent No. 4,862,165 (the "'165 patent") either literally or under the doctrine of equivalents. Gart v. Logitech, Inc., No. CV 98-5957 CBM (C.D. Cal. Aug. 16, 1999) ("Gart I") (claim construction and literal infringement analysis); Gart v. Logitech, Inc., No. CV 98-5957 CBM (C.D. Cal. Oct. 23, 1999) ("Gart II") (infringement under the doctrine of equivalents analysis). The district court also determined on a motion for summary judgment that Gart's accrual of damages under 35 U.S.C. § 287(a), if any, for Logitech's TRACKMAN VISTA, TRACKMAN MARBLE, TRACKMAN MARBLE +, and TRACKMAN MARBLE FX products begins from January 30 1997, and for Logitech's MOUSEMAN, and MOUSEMAN + products begins from July 23, 1998. Gart v. Logitech, Inc., No. CV 98-5957 CBM (C.D. Cal. Aug. 18, 1999) ("Gart III"). Gart appeals these decisions.

We conclude that the district court erred in construing the "angular medial surface" of claim 7 to include a "ledge." Moreover, we cannot determine with certainty based on the factual record before us whether there are any genuine issues of material fact regarding infringement, either literally or under the doctrine of equivalents, by the accused products in light of our revised claim construction. Accordingly, we vacate the court's grant of summary judgment of no infringement, either literally or under the doctrine of equivalents, and remand for further proceedings.

In addition, we conclude that the district court erred in its determination of when Gart complied with the statutory notice requirement of § 287(a) as to the TRACKMAN VISTA and MARBLE products. Thus, we reverse-in-part the district court's grant of summary judgment on this issue.

BACKGROUND

The '165 patent was issued to Gart on August 29, 1989. The technology involved relates to ergonomically shaped computer mouses for reducing muscle fatigue. Claim 7, the only claim at issue, reads as follows:

7. A computer input accessory apparatus of the type upon which a hand rests for selectively activating sensors generating signals for affecting operation of the computer to which the apparatus is electrically connected, the apparatus being ergonomically shaped to minimize hand fatigue; the apparatus comprising: a housing configured to receive the anterior surface of the hand and means for supporting said housing on an underlying surface;

said housing having an arched metacarpal-phalangeal support surface, a concave thenar pad support surface, a distal phalange support surface for the forefinger, a distal phalange support surface for the thumb and an angular medial surface for supporting the three remaining ulnar fingers in a wrapped configuration with flexion of the distal, middle and proximal phalanges of said ulnar fingers.

'165 patent, col. 8, ll. 31-47.

In 1989, prior to the issuance of the '165 patent, Gart approached Logitech to discuss licensing the then-pending application. However, Logitech opted to forego this opportunity.

In July of 1993, Moustrak, Inc. took out a royalty-bearing license from Gart on the '165 patent. Moustrak, Inc. manufactured and sold the Colani Mouse, paying royalties to Gart under the license. Moustrak, Inc. did not mark the Colani Mouse with the '165 patent number.

On April 5, 1995, Gart, through his patent attorney, sent a letter accompanied by the '165 patent to Logitech. The letter stated that Gart was "the holder of U.S. Patent No. 4,862,165." The letter also noted that Logitech was "selling a trackball product under the trademark TRACKMAN VISTA" and that Logitech may "wish to have [its] patent counsel examine the enclosed ['165] patent (particularly claims 7 and 8) to determine whether a non-exclusive license is needed under that patent." On May 15, 1995, Logitech's patent counsel replied to the April 5 letter noting that it had just begun a review of the patent, and that "it [would] take some time to evaluate Logitech's interest, if any, in a license under the ['165] patent."

On September 4, 1996, as a follow-up to a phone conference with Logitech, Gart, through a new patent attorney, forwarded another letter and another copy of the '165 patent to Logitech. This letter indicated that Logitech "may find the ['165] patent particularly interesting relative to [its] trackball product . . . being sold under the trademark TRACKMEN [sic- TRACKMAN] VISTA and TRACKMEN [sic-TRACKMAN] MARBLE." Logitech, through new patent counsel, responded to this letter on September 25, 1996 noting that the '165 patent "does not cover any of the Logitech trackball products . . . [because they do not have] a concave surface (14 of Fig. 1) in combination with a flat surface (16) for resting the hypo-thenar portion of the hand . . . [or] a medial ledge surface 18 around which the fingers can be wrapped."

On January 30, 1997, Gart, through yet another patent attorney, replied to Logitech's September 25 letter. In the reply, Gart stated that he was investigating "the Logitech Vista and Marble Trackballs [sic] infringement of [the '165 patent]." The letter also asked for Logitech's explanation of how the September 25 letter "is applicable to Claim 7 . . . [which] does not recite a 'medial ledge surface 18 around which the fingers can be wrapped,' [but] rather . . . recites 'an angular medial surface for supporting the three remaining ulnar fingers in a wrapped configuration.'" On March 5, 1997, Logitech again denied that claim 7 of the '165 patent covered the VISTA and MARBLE designs, noting in particular that they did not include "an angular medial surface for supporting the three remaining fingers in a wrapped configuration with flexion of the distal, middle and proximal phalanges of the ulnar fingers (Fig. 8, items 18, 26 and 24)." (emphasis in original)

On July 23, 1998, Gart filed a complaint against Logitech alleging that Logitech's MOUSEMAN, MOUSEMAN +, TRACKMAN VISTA, TRACKMAN MARBLE, TRACKMAN MARBLE +, and TRACKMAN MARBLE FX products infringe claim 7 of the '165 patent. On May 10, 1999, Gart filed a motion for partial summary judgment of literal infringement of claim 7 of the '165 patent. On that same day, Logitech filed a motion for summary judgment seeking limitation of damages pursuant to 35 U.S.C. § 287(a). Logitech's motion asserted that Gart failed to give notice of Logitech's alleged infringement for the TRACKMAN products until January 30, 1997 and for the MOUSEMAN products until the complaint was filed. Logitech filed a separate motion for summary judgment of non-infringement by any of its mouse products on May 17, 1999. The court denied Gart's motion and granted both of Logitech's motions for summary judgment.

Gart timely appealed the denial of its motion regarding infringement and the granting of both Logitech's limitation of damages motion and its non-infringement motion. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

I. Standard of Review

We review the district court's grant of summary judgment de novo. See Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315, 47 USPQ2d 1272, 1275 (Fed. Cir. 1998). However, in reviewing a denial of a motion for summary judgment, we give deference to the district court, and "will not disturb [that] court's denial of summary judgment unless we find that the court has indeed abused its discretion." Suntiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327, 1333, 51 USPQ2d 1811, 1815 (Fed. Cir. 1999). When both parties move for summary judgment, the court must evaluate each motion on its own merits, resolving all reasonable inferences against the party whose motion is under consideration. McKay v. United States, 199 F.3d 1376, 1380 (Fed. Cir. 1999).

In considering the respective motions for summary judgment, we must decide "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). "In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the opponent." Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307, 46 USPQ2d 1752, 1755 (Fed. Cir. 1998). If there are no material facts in dispute precluding summary judgment, our task is to determine whether the judgment granted is correct as a matter of law. Prochorenko v. United States, 243 F.3d 1359, 1362 (Fed. Cir. Mar. 23, 2001).

A determination of infringement requires a two-step analysis. "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839 (Fed....