Loral Fairchild Corp. v. Victor Co. of Japan, Ltd.

• Decision Date: 05 January 1996
• Docket Number: Civil A. No. 92-0128-ARR,91-5056-ARR.
• Citation: 911 F. Supp. 76
• Parties: LORAL FAIRCHILD CORPORATION, Plaintiff, v. VICTOR COMPANY OF JAPAN, LTD., et al., Defendants. LORAL FAIRCHILD CORPORATION, Plaintiff, v. MATSUSHITA ELECTRIC INDUSTRIAL COMPANY, LTD., et al., Defendants.
• Court: U.S. District Court — Eastern District of New York

911 F. Supp. 76

LORAL FAIRCHILD CORPORATION, Plaintiff, v. VICTOR COMPANY OF JAPAN, LTD., et al., Defendants.

LORAL FAIRCHILD CORPORATION, Plaintiff, v. MATSUSHITA ELECTRIC INDUSTRIAL COMPANY, LTD., et al., Defendants.

Civil A. Nos. 92-0128-ARR, 91-5056-ARR.

United States District Court, E.D. New York.

January 5, 1996.

James H. Wallace, Jr., John B. Wyss, and Gregory Lyons, of Wiley, Rien & Fielding, Washington, DC; and Anthony W. Karambelas, Newport Beach, California, for plaintiff.

Douglas B. Henderson, Barry W. Graham, Robert E. Converse, John C. Lowe, Steven

M. Anzalone, Jeffrey A. Berkowitz, and Vincent P. Kovalick, of Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, DC, for Sony defendants.

RADER, Circuit Judge (Sitting by Designation).

In this patent case, Loral Fairchild Corporation (Loral) alleges numerous electronics companies willfully infringed certain claims of United States Patents 3,896,485 ("the '485 patent") and 3,931,674 ("the '674 patent"). See Loral Fairchild Corp. v. Victor Co. of Japan, Ltd., 906 F.Supp. 798 (E.D.N.Y.1995). Defendants deny liability and raise several defenses. Loral and Sony Corporation and Sony Electronics Inc. (collectively Sony) will present their case to a jury beginning on January 8, 1996. Loral will have trials with the remaining defendants in successive proceedings beginning in April of 1996.

On December 29, 1995, Sony filed a motion for sanctions or in the alternative for equitable relief. Sony's motion seeks to preclude Loral from asserting that claims 7 and 8 of the '485 patent encompass more than a method of operating the structure of claim 1 of that patent. The court has heard oral argument on Sony's motion. For the following reasons, the court will grant the motion.

BACKGROUND

Loral Fairchild has consistently asserted in this action that claims 7 and 8 of the '485 patent describe methods of operating the structure of claim 1. On November 5, 1991, Sony served an interrogatory on Loral which asked Loral to describe how claim 7 corresponds to each of the accused Sony products and processes. In two separate responses, Loral replied: "See, above discussion corresponding to 1(a)-(d) corresponding to its responses on elements (a) through (d) of claim 1." See Exs. 1 and 2 to Sony's Memorandum in Support of Defendants Sony Corporation and Sony Electronics Inc. Motion for Sanctions Against Loral Fairchild Corporation's Violation of Fed.R.Civ.P. 26(e)(2) hereinafter referred to as Sony's Memorandum (attaching Loral's March 25 and September 22, 1993, responses to Sony's interrogatory No. 1). From the outset of this case, Loral limited the method of claim 7 to operation of the structure of claim 1.

Sony then served various requests for admission on Loral. It sought Loral's admission that the "charge sink region" in claim 7 does not read, either literally or by equivalence, on Sony CCDs having a vertical overflow drain structure. Loral denied the request stating: "Loral refers Sony to its infringement contentions set forth in Loral's Amended Response to Sony Corporation of America's Interrogatory No. 1." This denial referred back to the identified structures corresponding to the elements of claim 1 only. See Ex. 3 to Sony's Memorandum (attaching Loral's April 19, 1993, supplemental responses to Sony's first set of requests for admission).

Apparently dissatisfied with Loral's responses as to claims 7 and 8, various defendants sought assistance from the court. During a May 19, 1993, hearing, Magistrate Judge Carter ordered Loral to provide "detailed infringement contentions" on claims 7 and 8. Counsel for Loral wrote to Sony: "Claims 7 & 8 of the '485 Patent are method claims which delineate a method of operation for the structure of claim 1." The August 27, 1993, letter then refers Sony to Loral's infringement contentions of claim 1. See Exs. 4 and 5 to Sony's Memorandum (attaching August 1993 correspondence between counsel for Sony and counsel for Loral).

On October 7, 1993, Sony filed a motion for a summary judgment of non-infringement of the asserted claims of the '485 patent. Relying on Loral's position throughout the litigation, Sony argued: "The issue of infringement for all four asserted claims need only focus on the portion in issue of the structure of the Sony CCDs." See Memorandum in Support of Defendants Sony Corporation and Sony Electronics Inc. Motion for Partial Summary Judgment of Non-Infringement of the Asserted Claims of the '485 Patent, October 7, 1993, at 26 n. 12. In response, Loral argued:

It is clear that the Sony charge sink means is located beneath and not in contact with the surface so as to be "buried within" the semiconductor material and as discussed in Dr. Barbe's declaration and will be shown at trial, performs the same function stated in the claim language with an equivalent structure in accordance with § 112 para. 6. Accordingly, Sony's CCD literally satisfies element 1(d) of claim 1 of the '485 Patent as well as the corresponding limitation in claims 3, 7, & 8.

See Loral Fairchild's Opposition to Sony's Motion for Partial Summary Judgment of Non-Infringement of the '485 Patent, August 11, 1994, at 27 (internal quotations omitted). In reply, Sony noted "Fairchild and Sony agree that this non-infringement motion can be determined by focusing only on claim 1." See Sony's Reply to Loral Fairchild's Opposition to Sony's Motion for Partial Summary Judgment of Non-Infringement of the '485 Patent, August 31, 1994, at 1 n. 2.

Before resolving summary judgment motions and in advance of its Markman hearing on September 19 and 20, 1995, this court requested additional briefing on the meaning of the claims. In that briefing the parties repeated similar arguments. Loral stated: "The various elements specified for the vertical overflow structure in the preamble of claim 7 have the same meaning as described previously in connection with claim 1." See Loral Fairchild Corp.'s Memorandum Concerning the Proper Claim Construction with Respect to Claims 1, 3, 7 and 8 of U.S. Patent No. 3,896,485, August 21, 1995, at 9. Moreover, one of the defendants argued "Claims 1, 3, 7, and 8 by their plain language exclude all charge sink structures that are not `buried within' the substrate and `beneath the surface,' which means they exclude the substrate itself as a drain." In response to this argument, Loral stated: "This assertion misrepresents the claim language", which says nothing about being buried within "the substrate," but which refers instead to being "buried within said semi-conductor material" and "beneath the surface of said semi-conductor material." See Loral Fairchild Corp.'s Reply Memorandum Concerning the Proper Claim Construction with Respect to Claims 1, 3, 7 and 8 of U.S. Patent No. 3,896,485, September 5, 1995, at 11. Thus, Loral has consistently relied on the structure of claim 1 to describe the methods of claims 7 and 8.

As noted, this court held a two-day Markman hearing on the meaning of the claim terms. At that hearing, Dr. Barbe, one of Loral's expert witnesses, testified: "Claim 7 is just a method of operating the structure of claim 1." See September 19, 1995, Transcript of Proceedings, at 63. On October 18, 1995, the court issued an Opinion and Order construing those portions of the claims upon which the parties then disagreed. Loral Fairchild Corp. v. Victor Co. of Japan, Ltd., 906 F.Supp. 798 (E.D.N.Y.1995). In that Opinion, the court construed claim 1 more narrowly than had been advocated by Loral.

After issuing that Opinion, the court invited the parties to renew previously filed motions for a summary judgment on a number of issues. In the renewed briefing, Loral asserted that claims 7 and 8 do not include the same structural limitations as in claim 1 and therefore describe methods of using structures broader than described in claim 1. This sparked a new dispute among the parties as to the proper scope of claims 7 and 8.

In a letter dated November 27, 1995, Sony hinted at the new dispute by suggesting that the court construe claims 7 and 8 to help streamline matters. In that letter, Sony argued the only reasonable interpretation of claims 7 and 8 limited them to methods of operating the structure of claim 1. By letter dated December 8, 1995, Loral responded to Sony's letter by arguing that claim 7 "does not have the same structural limitations as claim 1" consistent with its arguments in opposition to Sony's renewed summary judgment motion.

The court heard oral argument on the renewed motions for a summary judgment on December 11, 1995. Both sides again presented arguments on their respective positions on claims 7 and 8. Following oral argument, the court issued an order denying in part and granting in part Sony's renewed motion for a summary judgment. See Loral Fairchild Corp. v. Victor Co. of Japan, Ltd., Nos. 92-128 and 91-5056 (E.D.N.Y. Dec. 15, 1995) (order granting in part and denying in part Sony's motion for a summary judgment of non-infringement of the '485 patent and denying Toshiba's motion for a summary judgment of invalidity of the '485 patent). In that order, this court deferred the issue of the meaning of claims 7 and 8 pending an application for relief by Sony.

On December 22, 1995, Loral served a further discovery response on Sony updating its infringement contentions. See Ex. 12 to Sony's Memorandum (attaching Loral's supplemental update to its response to Sony's interrogatories). Loral's response points Sony to certain expert reports. Those reports, in turn, provide analysis only of claims 1 and 3. None of the reports set forth separate infringement contentions for claim 7 or identify how claim 7 could describe the use of a different structure than in claim 1.

On December 29, 1995, Sony filed the current motion and notified all of the parties that the motion would be argued at the January 2, 1996, pretrial conference. During that proceeding, this court heard oral argument on Sony's...