Itron, Inc. v. Benghiat
| Decision Date | 31 March 2001 |
| Docket Number | No. CIV 99-501 JRT/FLN.,CIV 99-501 JRT/FLN. |
| Citation | 169 F.Supp.2d 1073 |
| Parties | ITRON, INC., Plaintiff, v. Ralph BENGHIAT, Defendant. |
| Court | U.S. District Court — District of Minnesota |
Randall T. Skaar, James H. Patterson, and Eric H. Chadwick, Patterson, Thuente, Skaar & Christensen, P.A., Minneapolis, MN, for plaintiff.
Edward M. Laine and Cyrus A. Morton, Oppenheimer Wolff & Donnelly, LLP., Minneapolis, MN, for defendant.
Plaintiff Itron Inc. ("Itron") brings this declaratory judgment action against defendant Ralph Benghiat ("Benghiat") seeking a declaration that Itron's hand-held meter reading devices do not infringe Benghiat's patent. Benghiat, the owner of U.S. Patent No. 4,757,456 ("the '456 patent") has asserted a compulsory counterclaim for infringement against Itron.
Itron has filed an unprecedented number of summary judgment motions in this matter. Specifically, Itron moves for: 1) Summary Judgment of Noninfringement; 2) Summary Judgment that the '456 patent is Invalid; 3) Partial Summary Judgment Regarding the Date when Potential Damages Began to Accrue; 4) Partial Summary Judgment Regarding Defendant's Claim for Enhanced Damages Based on Bad Faith; 5) Summary Judgment that the '456 Patent is Not Infringed; and 6) Summary Judgment that the '456 Patent is Invalid.
The '456 patent, entitled "Device and Method for Utility Meter Reading," relates to a hand-held computerized apparatus that utility company employees use to read utility meters. When Benghiat designed his device in the early 1980s, he was not the first person to develop an electronic meter reading device.1 Benghiat's patent claims an improved meter reading device with, among other things, capabilities for randomly accessing accounts for data entry and display, searching for missed accounts, locating a desired account in the record and storing new account data.
In developing his device, Benghiat sought to improve over what he considered weaknesses in other hand-held devices in the meter reading industry. One of the most problematic features in prior art devices was the use of "fixed sequential systems of data in memory, whereby key activation can only step into the next file or account in the sequence." Col.2, ll. 46-49. According to Benghiat, such "fixed sequential systems" were limiting because there was no ability to randomly locate a different account in the program. Instead, the meter reader was forced to step forward manually until reaching the new location. Benghiat thus set out to develop a device that fully capitalized on the benefits of computerized meter reading while retaining the flexibility of the old manual logbooks.
Benghiat also realized that none of the prior art had provisions for "locating alternate streets or buildings," "checking for skipped or missed meter readings" or "storing readings of new account information." Col. 2, ll. 56-68; Col. 3, ll. 1-12. Benghiat thus introduced meter reader input capabilities in his device to perform these functions.
Benghiat also sought to overcome deficiencies caused by limited memory capacity common to all solid state hand-held collection devices at that time. See col. 3, ll. 58-63. To optimize the use of memory and thereby compress more data for a given memory capacity, Benghiat disclosed a novel file format structure for organizing data:
Yet another feature of my invention is the method the various files are organized with optimal duplicate fields in order to minimize memory usage. The objective is to transfer fields containing common data in various files to a higher level file so that the common data field can be shared by all lower level files within that structure.
Col. 6, ll. 61-66.2
After being accused by letter of infringing Benghiat's patent, Itron brought this suit for declaratory judgment of noninfringement. Benghiat asserted his compulsory counterclaim that Itron infringes the '456 patent. Among other motions, Itron moves for summary judgment of noninfringement of the '456 patent.
Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith 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. Only disputes over facts that might affect the outcome of the suit under the governing substantive law will properly preclude the entry of summary judgment. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment is not appropriate if the dispute about a material fact is genuine, that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. See id. Summary judgment is to be granted only where the evidence is such that no reasonable jury could return a verdict for the nonmoving party. See id.
The moving party bears the burden of bringing forward sufficient evidence to establish that there are no genuine issues of material fact and that the movant is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The nonmoving party is entitled to the benefit of all reasonable inferences to be drawn from the underlying facts in the record. See Vette Co. v. Aetna Casualty & Surety Co., 612 F.2d 1076 (8th Cir.1980). However, the nonmoving party may not merely rest upon allegations or denials in its pleadings, but it must set forth specific facts by affidavits or otherwise showing that there is a genuine issue for trial. See Burst v. Adolph Coors Co., 650 F.2d 930, 932 (8th Cir.1981).
Infringement analysis involves a two-step process. The first step is determining the meaning and scope of the patent claims alleged to be infringed. 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) (Markman I). The second step is comparing the properly construed claims to the device accused of infringing. Id.
The construction of patent claims is a legal determination, exclusively within the province of the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 391, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (Markman II). It requires looking first to the intrinsic evidence of record, which includes: 1) the patent itself, including the claims themselves; 2) the specification; and 3) the prosecution history. Burke Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1339 (Fed.Cir.1999). "A court may refer to extrinsic evidence to educate itself about the invention and relevant technology, but the court may not use extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction mandated by the intrinsic evidence." Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971 (Fed.Cir. 1999).
Claim construction begins with the language of the claim itself. Claims are construed as one of ordinary skill would have understood them at the time of the invention. Markman I, 52 F.3d at 986. Where a claim term has an ordinary and customary meaning in the art, that meaning generally controls the construction of the claim, unless the inventor intended that the terms be construed otherwise. Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir. 1999).
A patentee may elect to be his own lexicographer, however, if he does so, he must clearly set forth an explicit definition for a claim term in the patent specification or file history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). As a general rule, the patent specification is "the single best guide to the meaning of a disputed claim term." Id. The prosecution history should be considered in interpreting claims, and "is often of critical significance in determining the meaning of the claims." Id.
Reliance on extrinsic evidence to interpret claims is permitted in only limited situations. Id. at 1583 (). For instance, a court may consider extrinsic evidence only where the claim language remains genuinely ambiguous after consideration of the intrinsic evidence. Bell & Howell Doc. Mgmt. Prods. Co v. Altek Sys., 132 F.3d 701, 706 (Fed.Cir. 1997). Otherwise, if the intrinsic evidence is unambiguous, it is improper for a court to rely on extrinsic evidence such as expert testimony for purposes of claim construction. Id. at 705. A court may also consider extrinsic evidence, such as dictionaries or expert testimony, to ensure that a technical term is construed in a manner consistent with its ordinary meaning to those skilled in the art. Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308-09 (Fed.Cir.1999).
Finally, where a broader and a narrower construction of a claim are equally plausible, the notice function of the claim is best served by adopting the narrower interpretation. Athletic Alternatives, Inc. v. Prince Mfg. Inc., 73 F.3d 1573, 1581 (Fed.Cir.1996).
The parties agree that the disputed claim limitations are written in "means-plus-function" format pursuant to 35 U.S.C. § 112, ¶ 6, which provides:
An element in a claim for a combination may be expressed as a means or step in performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material or acts described in the specification or...
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