Howes v. Zircon Corp.

• Decision Date: 13 January 1998
• Docket Number: No. 97 C 5632.,97 C 5632.
• Citation: 992 F.Supp. 957
• Parties: James P. HOWES, Riverside Promotions, Inc. and American Home Workshop Products Corporation, Plaintiffs, v. ZIRCON CORPORATION, Defendants.
• Court: U.S. District Court — Northern District of Illinois

992 F.Supp. 957

James P. HOWES, Riverside Promotions, Inc. and American Home Workshop Products Corporation, Plaintiffs, v. ZIRCON CORPORATION, Defendants.

No. 97 C 5632.

United States District Court, N.D. Illinois, Eastern Division.

January 13, 1998.

COPYRIGHT MATERIAL OMITTED

James T. Fitzgibbon, David Lesht, Lockwood, Alex, Fitzgibbon & Cummings, Chicago, IL, Ronald Butler, Michael A. Stick, Peter G. Land, Butler, Rubin, Saltarelli & Boyd, Chicago, IL, for Plaintiffs.

Grantland Gilbert Drutchas, McDonnell, Boehnen, Hulbert & Berghoff, Ltd., Chicago, IL, Daniel A. Boehnen, McDonnell, Boehnen, Hulbert & Berghoff, Chicago, IL, Justin T. Beck, Thomas E. Rossmeissl, Skjerven, Morrill, MacPherson, San Jose, CA, for Defendant.

MEMORANDUM OPINION AND ORDER

ZAGEL, District Judge.

James P. Howes ("Howes"), Riverside Promotions, Inc. ("Riverside") American Home Workshop Products Corp. ("American") (collectively "the Plaintiffs") sued the Zircon Corporation ("Zircon") for willfully infringing claims 1, 2, 3, 4, 5, and 16 of United States Patent No. 5,396,578 ("the '578 patent"). The '578 patent's subject matter is a voice-recording tape measure. Zircon sells a voice-recording tape measure called the Repeater.

Zircon filed for summary judgment for noninfringement on claims 1, 3, and 16 while challenging the standing of Riverside and American. The Plaintiffs cross-filed for summary judgment on Claim 3 of the '578 patent and on their willful infringement claim. I now deny Zircon's motion for summary judgment for noninfringement, grant the Plaintiffs' motion for summary judgment for infringement on Claim 3, deny the Plaintiffs' motion for willful infringement, and find that Riverside and American have standing as licensees of the '578 patent.

Uncontested Claims

As a preliminary matter I hold that I have no jurisdiction to address Zircon's motion for summary judgment on claims 1 or 16 of the '578 patent. To be justiciable, there must be a controversy at present and not merely at the time the complaint was filed. Grain Processing Corp. v. American Maize-Products Co., 840 F.2d 902, 905-906 (Fed. Cir.1988). The Plaintiffs no longer allege infringement of claims 1 and 16 and thus no present case or controversy exists regarding their infringement. Pls. Mot. for Summ.J. of Infringement and Willful Infringement at 1. Therefore I deny Zircon's motion for summary judgment on claims 1 and 16 because I lack jurisdiction over those claims.

Legal Standard

Summary judgment should be granted when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A genuine issue of material fact exists if there is sufficient evidence for a jury to return a verdict in favor of the non-moving party on the particular issue. Methodist Medical Center of Illinois v. American Medical Sec. Inc., 38 F.3d 316, 319 (7th Cir.1994). The court must draw all justifiable inferences in the light most favorable to the opposing party and must resolve any doubt against the moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

Literal Infringement

The patent infringement analysis requires me to take two steps. First, I must properly construe the claim to determine its scope and meaning. This is a question of law. Then, I must compare the properly construed claim to Zircon's device to determine if a question of material fact exists. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581-82 (Fed.Cir.1996). Where, as here, the parties do not dispute any relevant facts regarding the accused product but disagree over the scope of a claim, I may decide the question of literal infringement as a matter of law in a motion for summary judgment. Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573 (Fed.Cir.1996).

The first step, claim construction, involves ascertaining the true meaning and scope of each claim. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir. 1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). To determine the proper construction of a claim, I must first look to the intrinsic evidence of record, the patent itself, including the claims, the specifications and, if in evidence, the prosecution history. Vitronics, 90 F.3d at 1582. I am not to rely on extrinsic evidence, such as expert testimony, unless an analysis of the intrinsic evidence alone will not resolve all the ambiguity in a disputed claim term. Id. at 1583.

This means that, in the first instance, I must look to the words of the claims to define the scope of the Plaintiffs' claims. Id. at 1582. In doing so I note that I am to interpret any technical term in a patent document as having the meaning given by persons experienced in the field of the invention, unless it is apparent from the patent and the prosecution history that the inventor used the term with a different meaning. Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed.Cir.1996). Thus, a patentee may choose to use terms in a manner other than their ordinary meaning, so long as the special definition of the term is clearly stated in the patent specification or file history. Vitronics, 90 F.3d at 1582.

Second, I must review the claim's specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. Id. Specifications act as a dictionary when they expressly define terms used in the claims or when they define terms by implication. Id. Specifications are the single best guide to the meaning of a disputed term. Vitronics, 90 F.3d at 1582.

As the final source of intrinsic evidence, I may consider the prosecution history. The prosecution history contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims. Id. The prosecution history limits the claim's terms to exclude any interpretation disclaimed during the patent's prosecution. Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed.Cir.1995).

Construction of Claim 3 of the '578 Patent Literal Infringement

The Mode Selector Switch

Zircon claims that Claim 3¹ of the '578 patent does not read on its Repeater for two reasons. First, Zircon argues that 3(C)(e) requires a sliding mode selector switch movable between a record and a play mode and that the Repeater has neither such a switch nor mode. Second, Zircon maintains that 3(C)(a)'s structure controlling and processing means is not equivalent to the Repeater's controlling and processing structure.

Examining the scope of 3(C)(e) first, I find that its plain language, when read in light of the specifications, is not limited to a sliding mode selector switch. Claim 3(C)(e) reads that the audio recording and tape measuring system comprises:

a mode selector switch connected to the circuit controlling and processing means and movable between a RECORD and a PLAY mode, enabling the circuit controlling and processing means to establish the desired operation of the recording circuit.

Zircon argues that the language, "movable between a record and a play mode," requires a slide switch to be read into Claim 3(C)(e) because Claim 2(e), which also defines the mode selector switch, uses "selecting" instead of "movable between." I find that the specifications do not limit the term "movable between" exclusively to the action of a slide switch.

In making this determination, I have presumed that different language between claims signifies a difference in their meaning and scope and that I may interpret claims in light of the specifications that led to the patent. Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed.Cir.1987). However, I note that I cannot read into a claim a limitation that appears only in a specification since the claim, not the specification, measures the invention. SRI Int'l. v. Matsushita Elec. Corp. of America, 775 F.2d 1107 (Fed.Cir.1985). Furthermore, two claims which read differently may cover the same subject matter. Tandon, 831 F.2d at 1023.

The specifications state that the mode selector's preferred embodiment "comprises a slide switch which is movable ... between a PLAY position and a RECORD position." This differs from the antecedent basis for Claim 2(e) which calls for a mode selector button for mode selection. Despite this difference I refuse to read a slide switch requirement into Claim 3(e) because the specifications also state that "various alternate switch configurations can be employed...." This specification language clearly indicates that Claim 3(C)(e)'s "movable between" language does not necessarily require a slide switch, but allows for other types of switches.

The Activation Switch

I find that the plain language of Claim 3(C)(e) does not require an activation switch that initiates the operation of the recording circuit in the selected mode and is distinct from the mode selector switch. Zircon argues that Claim 3's mode selector switch's primary purpose is to define the operation performed by an activation button. In its preferred embodiment, this dual mode selector and activation switch combination allows one button to perform either record or play function from multiple address locations; a distinct mode selector/activation switch combination requires only one activation button per location. Zircon argues that this differs from the Repeater's design. The Repeater requires both a record and a play button. From a distinct activation switch and mode selector switch requirement, Zircon maintains, it is a short step to find that the Repeater does not infringe on Claim 3(C)(e) because it does not have modes as Claim 3 requires. Unfortunately for Zircon, I find that while the preferred embodiment does have dual mode selector...