PARADIGM SALES v. WEBER MARKING SYSTEMS

• Decision Date: 27 July 1994
• Docket Number: No. S93-CV-202RM.,S93-CV-202RM.
• Citation: 880 F. Supp. 1237
• Parties: PARADIGM SALES, INC., Plaintiff, v. WEBER MARKING SYSTEMS, INC., Defendant.
• Court: U.S. District Court — Northern District of Indiana

880 F. Supp. 1237

PARADIGM SALES, INC., Plaintiff, v. WEBER MARKING SYSTEMS, INC., Defendant.

No. S93-CV-202RM.

United States District Court, N.D. Indiana, South Bend Division.

July 27, 1994.

Paul B. Hunt, David R. Melton, Barnes and Thornburg, South Bend, IN, for plaintiff.

James H. Pankow, Jones Obenchain Ford Pankow and Lewis, South Bend, IN, Robert E. Wagner, Daniel N. Christus, James J. Jagoda, Wallenstein Wagner and Hattis, Ltd., Chicago, IL, for defendant.

James A. Masters, Nemeth Masters and Leone, South Bend, IN, for Wayne Tool and Die, Inc.

MEMORANDUM AND ORDER

MILLER, District Judge.

This cause is before the court on the motions of defendant Weber Marking Systems, Inc. ("Weber") for partial summary judgment on the issue of literal noninfringement, for oral argument, to amend its reply brief in support of its motion for partial summary judgment, and to strike portions of the plaintiff's reply brief. Also before the court is the motion for partial summary judgment of plaintiff Paradigm Sales, Inc. ("Paradigm"). Because the parties' thorough memoranda sufficiently aid the court, oral argument is unnecessary. For the reasons that follow, the court grants the defendant's motion for partial summary judgment and motion to amend its reply brief, and denies the defendant's motion to strike portions of the plaintiff's reply brief and the plaintiff's motion for partial summary judgment.

Before addressing the merits of the parties' cross-motions for partial summary judgment, the court must address some preliminary matters. First, the court grants Weber's motion to amend its reply brief so that the brief refers to District Rule 56.1 instead of its predecessor, District Rule 11. Second, the court denies Weber's motion to strike matters from Paradigm's reply brief. Third, Weber contends that Paradigm cannot rely solely on the '896 patent and the detailed illustrations of the Weber staple gun to withstand a motion for summary judgment; instead, Weber argues that Paradigm must present some additional evidence such as an affidavit from an expert witness. The court disagrees. The court recalls no valid objections to the staple gun's illustrations or the '896 patent. Although the documents speak for themselves, Paradigm is free to support, or oppose, a motion for partial summary judgment based upon those documents. See Conroy v. Reebok International, Ltd., 14 F.3d 1570, 1578 (Fed.Cir.1994).

The court presumes familiarity with the facts and prior rulings in this case. Weber contends that its staple gun does not literally infringe any of the claims of U.S. Patent No. 5,014,896 (the "'896 patent"), a patent in which Paradigm has acquired all rights, title, and interest. Weber contends that the undisputed facts demonstrate that the Weber Staple gun does not contain the following five limitations in Claim 1 of the '896 patent:¹ (1) a cutting means that is identical to, or the structural equivalent of, the cutting means of the '896 patent; (2) a housing defining a channel for guiding labels; (3) a sliding body; (4) a "slot" having longitudinal extremities; and (5) a sliding body that goes to the longitudinal extremities of the slot.

With the exception of the limitation involving the cutting means, Paradigm agrees that there are no disputed material facts. Paradigm, however, contends that it is entitled to summary judgment on the issue of literal infringement with respect to all of the limitations set forth above, except the cutting means. Paradigm contends that the court's previous ruling — which held that a question of fact exists as to whether the cutting means of the Weber staple gun literally infringes Claim 1 of the '896 patent — precludes summary judgment on that issue.

A party seeking summary judgment must demonstrate that no genuine issue of fact exists for trial and that the movant is entitled to judgment as a matter of law. If that showing is made and the motion's opponent would bear the burden at trial on the matter that forms the basis of the motion, the opponent must come forth with evidence to show what facts are in actual dispute. A genuine factual issue exists only when there is sufficient evidence for a jury to return a verdict for the motion's opponent. Summary judgment should be granted if no reasonable jury could return a verdict for the motion's opponent.

The parties cannot rest on mere allegations in the pleadings, or upon conclusory allegations in affidavits. The court must construe the facts as favorably to the nonmoving party as the record will permit, and draw any permissible inferences from the materials before it in favor of the nonmoving party, as long as the inferences are reasonable. The non-moving party must show that the disputed fact is material, or outcome-determinative, under applicable law.

Conery v. Bath Associates, 803 F.Supp. 1388, 1392-93 (N.D.Ind.1992) (citations omitted).

Although infringement is a question of fact, summary judgment remains appropriate in a patent case where no genuine issue of material fact is present and the movant is entitled to judgment as a matter of law. Townsend Engineering Co. v. Hitec Co., Ltd., 829 F.2d 1086, 1089 (Fed.Cir.1987); Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1571 (Fed.Cir.1984). Summary judgment on the issue of infringement, however, must be approached with great care. Palumbo v. Don-Joy Co., 762 F.2d 969, 974 (Fed.Cir.1985); Rudkin-Wiley Corp. v. Pulse, Inc., 15 U.S.P.Q.2d 1395, 1396, 1990 WL132572 (N.D.Ind.1990).

Patent infringement analysis requires a two-step inquiry: a threshold question of claim interpretation followed by a determination of whether the properly interpreted claim encompasses the accused structure. Texas Instruments, Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed.Cir.1993); Hybritech, Inc. v. Abbott Laboratories, 849 F.2d 1446, 1455 (Fed. Cir.1988). The first inquiry is a question of law for the court; the second is a question of fact. Minnesota Mining and Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1570 (Fed.Cir.1992); C.R. Bard, Inc. v. Advanced Cardiovascular Sys., 911 F.2d 670, 673 (Fed.Cir.1990).

Claim interpretation involves a review of the claim's language, the specifications, the prosecution history, and, if necessary, extrinsic evidence. Texas Instruments v. United States Int'l Trade Comm'n, 988 F.2d at 1171; SRI Int'l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1118 (Fed. Cir.1985) (en banc). The court cannot read into a claim a limitation that appears in the specification, but not in the claim. Minnesota Mining and Mfg. Co. v. Johnson & Johnson Orthopaedics, 976 F.2d at 1566; E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed.Cir.), cert. denied, 488 U.S. 986, 109 S.Ct. 542, 102 L.Ed.2d 572 (1988); see also Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed.Cir.1988) ("the general principle is that limitations from the specification are not to be read into the claims"). Thus, references to a preferred embodiment, such as those in the specifications or drawings, are not claim limitations. Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed.Cir.1988), cert. denied, 490 U.S. 1068, 109 S.Ct. 2069, 104 L.Ed.2d 634 (1989); Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed.Cir.1983), cert. denied, 469 U.S. 835, 105 S.Ct. 127, 83 L.Ed.2d 69 (1984); Transco Products, Inc. v. Performance Contracting, Inc., 813 F.Supp. 613, 617 (N.D.Ill.1993). The claim, not the specification, measures the invention. SRI Int'l v. Matsushita Elec. Corp. of America, 775 F.2d at 1121; Environmental Designs v. Union Oil Co. of Cal., 713 F.2d 693, 699 (Fed.Cir.1983), cert. denied, 464 U.S. 1043, 104 S.Ct. 709, 79 L.Ed.2d 173 (1984).

Words of the claim should be given their ordinary and accustomed meaning, unless it appears that the inventor used them differently. ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1579 (Fed.Cir. 1988); Environtech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed.Cir.1984). Disagreement over a term's meaning does not necessarily create a genuine fact issue. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387 (Fed.Cir.1992); Becton Dickinson and Co. v. C.R. Bard, Inc., 922 F.2d 792, 797 (Fed.Cir.1990). Proper claim interpretation is vital because improper claim interpretation can distort the entire infringement analysis. Key Mfg. Group, Inc. v. Microdot, Inc., 925 F.2d 1444, 1448 (Fed.Cir.1991). Courts must neither narrow nor broaden the scope of a claim to give the patentee something different than what he has set forth. E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d at 1433.

Literal infringement exists only if each and every element of Claim 1 is embodied in the accused device exactly. Johnston v. IVAC Corp., 885 F.2d 1574, 1577 (Fed.Cir. 1989); Mannesman Demag Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279, 1283 (Fed.Cir.1986). All elements of the claim are material and essential, and must be considered, to determine whether a patent has been literally infringed. Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1533 (Fed.Cir.1987).

A.

Weber contends that the Weber staple gun's cutting means is not identical to, nor the structural equivalent of, the cutting means of the '896 patent. The court previously held that "because there remains a question of fact as to whether the cutting means of Weber's staple gun has the equivalent structure of the cutting means on Paradigm's staple gun, summary judgment is inappropriate." March 29, 1994 Memorandum and Order, p. 10. For the reasons stated in the March 29 memorandum, summary judgment remains inappropriate.

B.

Weber contends that its staple gun does not have a "housing defining a channel ... for guiding said continuous sequence of labels."

Paradigm's device includes a groove cut into the housing's outer wall which corresponds to the channel for guiding the labels as described in...