Moore v. Standard Register Co.
| Decision Date | 22 September 2000 |
| Parties | (Fed. Cir. 2000) MOORE U.S.A., INC.,Plaintiff-Appellant, v. STANDARD REGISTER COMPANY,Defendant-Cross Appellant. 98-1386, 1387 DECIDED: |
| Court | U.S. Court of Appeals — Federal Circuit |
Robert A. Vanderhye, Nixon & Vanderhye P.C., of Arlington, Virginia, argued for plaintiff-appellant.
William T. Enos, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Arlington, Virginia, argued for defendant-cross appellant. On the brief was Charles L. Gholz, Oblong, Spivak, McClelland, Maier & Neudstadt, P.C., of Arlington, Virginia. Of counsel were Steven E. Lipman and Michael H. Jacobs.
Before NEWMAN, MICHEL, and CLEVENGER, Circuit Judges.
Opinion for the court filed by Circuit Judge MICHEL. Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge NEWMAN.
On December 22, 1997, Moore U.S.A., Inc. ("Moore") filed suit against Standard Register Company ("SRC") in the United States District Court for the Eastern District of Virginia for infringement of U.S. Patent Nos. 5,201,464 ("the '464 patent"), 5,253,798 ("the '798 patent"), and 5,314,110 ("the '110 patent"). 1 On March 4, 1998, SRC counterclaimed for non-infringement and invalidity of the three patents. In three separate orders, the district court granted SRC's motions for summary judgment of non-infringement of the '464, '798, and '110 patents and dismissed the action with prejudice. Moore U.S.A., Inc. v. Standard Register Co., No. 97-2054-A (E.D. Va. Mar. 20, 1998) ("Moore I") (); id. (Apr. 3, 1998) ("Moore II") (granting summary judgment of no literal infringement of the '464 patent); id. (Apr. 17, 1998) ("Moore III") (granting summary judgment of no infringement by equivalents of the '464 patent, and dismissing the action with prejudice).
Moore appeals the district court's grant of summary judgment of no infringement by equivalents with respect to the '464 patent and its grant of summary judgment of non-infringement with respect to the '798 and '110 patents. SRC conditionally cross-appeals the district court's dismissal of its counterclaims as moot. Because the district court correctly held that Moore had failed to raise a genuine issue of material fact as to whether SRC infringed the '464, '798, and '110 patents, we affirm the district court's grant of summary judgment of non-infringement of the '464, '798, and '110 patents and dismiss SRC's cross-appeal.
The '464 patent, entitled "Pressure Seal C-Fold Two-Way Mailer," discloses a C-fold 2 mailer-type business form with an integral return envelope. See '464 patent, col. 1, ll. 2, 23-25. The integral return envelope is created as part of the mailer during the folding and sealing process. See id., col. 1, ll. 26-31. The recipient opens the mailer by removing stubs on the left and right edges. See id., col. 1, ll. 58-60. After reading the information printed on the mailer, the user can remove a remittance stub from the top panel, insert the stub into the integral return envelope, detach the envelope from the rest of the mailer, and then seal and mail the envelope. See id., col. 1, ll. 61-64. Figures 1 and 2 of the '464 patent are illustrative:
[Tabular or Graphical Material Omitted]
The '464 patent has five independent claims. Independent claim 1 recites:
A mailer type business form intermediate, comprising:
a sheet of paper having a first face, adapted to provide the majority of the interior of the mailer when constructed, and a second face, adapted to provide the majority of the exterior of the mailer when constructed;
said sheet having first and second opposite, parallel longitudinal edges extending the entire length thereof, and opposite ends;
first and second longitudinal lines of weakness formed in said sheet parallel to and adjacent, but spaced from, said first and second longitudinal edges, respectively, said lines of weakness defining, with said longitudinal edges, longitudinal marginal portions;
first and second longitudinal strips of adhesive disposed in said first and second longitudinal marginal portions, respectively, of said first face,extending the majority of the lengths of said longitudinal marginal portions, and parallel to said first and second longitudinal edges;
third and fourth longitudinal strips of adhesive disposed parallel to said first and second strips, and disposed adjacent said first and second lines of weakness on the opposite side thereof from said first and second strips, on said first face, said third and fourth longitudinal strips disposed closer to one end of said ends than the other, and extending a distance substantially less than the extent of said first and second strips;
fifth and sixth longitudinal strips of adhesive parallel to said first and second longitudinal edges and disposed in said first and second marginal portions, respectively, on said second face, said fifth and sixth strips located adjacent the same end of said sheet as said third and fourth strips, and having a longitudinal extent at the most equal to said and fourth strips;
means defining a transverse adhesive strip on said first face, perpendicular to said third and fourth strips, longitudinally spaced from said third and fourth strips; and means defining a line of weakness adjacent said transverse strip, on the opposite side thereof from said third and fourth strips, to allow ready separation of the paper at that line.
Id., col. 10, l. 40 - col. 11, l. 18 (emphasis added). Independent claim 9 recites:
A mailer type business form, with integral return envelope, comprising:
a C-fold paper sheet having first and second faces, first and second opposite longitudinal edges extending the entire length thereof, and first and second transverse fold lines defining first, second and third sections of said sheet;
said second and third sections being larger than said first section;
first and second lines of weakness formed in said sheet parallel to and adjacent, but spaced from, said first and second longitudinal edges, respectively, said lines of weakness defining, with said longitudinal edges, longitudinal marginal portions;
first and second longitudinal strips of adhesive disposed in said first and second longitudinal marginal portions, respectively, of said first face, and parallel to said first and second longitudinal edges; said first and second longitudinal strips connecting at least said first and second sections, and said third and first sections, together at said longitudinal marginal portions;
third and fourth longitudinal strips of adhesive disposed parallel to said first and second strips, and disposed adjacent said first and second lines of weakness on the opposite side thereof from said first and second strips, on said first face, said third and fourth longitudinal strips connecting said first section to a part of said second section to form the sides of a return envelope;
means defining a transverse adhesive strip on said first face, perpendicular to said third and fourth strips, in said third section;
means defining a transverse line of weakness adjacent said transverse strip in said third section, on the opposite side thereof from said second section, to allow ready separation of the form at that line;
outgoing address, and outgoing return address, indicia visible from said second face of said third section;
return envelope address indicia printed on said second face in said first section;
and indicia facilitating and suggesting the insertion of return address information on said return envelope, said facilitating and suggesting indicia printed on said second face in both said second and third sections.
Id., col. 11, l. 51 - col. 12, l. 29 (emphasis added). Independent claims 16, 17, and 19 require many of the same limitations as claim 9, including those underlined above. Seeid., col. 13, ll. 2-6, 15-19, 43-47, 56-58; col. 14, ll. 1-2, 30-34, 43-47. Like claim 9, claims 16, 17, and 19 require "outgoing address indicia" (or "outgoing addressee address indicia"), id, col. 13, ll. 22-23; col. 14, ll. 5, 50-51, and claims 16 and 19 require "outgoing return address indicia," id., col. 13, ll. 22-23; col. 14, ll. 50-51. Claim 12 requires "means defining a die cut window in said third section allowing viewing of said outgoing addressee address information therethrough." Id., col. 14, ll. 6-9.
The accused SRC mailer, Form 8140C04, is a C-fold mailer with an integral return envelope, as depicted below (unfolded and with its lower panel folded up) [Tabular or Graphical Material Omitted]
The accused SRC form has first, second, third, and fourth strips of adhesive on its front face, two longitudinal strips of adhesive in the margin portion of its back face, and a transverse adhesive strip and an associated line of weakness in the second (i.e., middle) section of its front face. The first and second (i.e., outermost) longitudinal strips of adhesive extend approximately 6-11/16th inches along the longitudinal margin of the accused SRC form, or 47.8% of the total margin length. The first and second strips cover portions of the longitudinal margins of the second and third (i.e., top) sections, but do not cover any of the margin of the first (i.e., bottom) section. The third and fourth (i.e., innermost) longitudinal strips are inward of the longitudinal perforation lines and extend approximately 6-5/8 inches, or just over 99% of the length of the first and second longitudinal strips. The third and fourth strips, which cover portions of only the first and second sections, seal the sides of the integral return envelope by connecting the two sections.
Although the accused SRC form is somewhat similar to the...
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