Sds Usa, Inc. v. Ken Specialties, Inc., No. CIV.A. 99-133.

• Decision Date: 03 August 2000
• Docket Number: No. CIV.A. 99-133.
• Citation: 107 F.Supp.2d 574
• Parties: SDS USA, INC., Plaintiff, v. KEN SPECIALTIES, INC., Defendant.
• Court: U.S. District Court — District of New Jersey

Page 574

107 F.Supp.2d 574

SDS USA, INC., Plaintiff, v. KEN SPECIALTIES, INC., Defendant.

No. CIV.A. 99-133.

United States District Court, D. New Jersey.

August 3, 2000.

Keith Gilman, Roy Wepner, Jason Garbell, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, NJ, Frank Chau, Frank DeRosa, F. Chau & Associates, East Meadow, NY, for Plaintiff SDS USA, Inc.

Peter Cobrin, David Denenberg, Orwen Warshavsky, Cobrin & Gittes, New York City, Marvin Gittes, North Bergen, NJ, for Defendant Ken Specialties, Inc.

OPINION

WALLS, District Judge.

INTRODUCTION

U.S. Patent No. 5,870,919 ("'919 patent") issued to plaintiff SDS USA as assignee on February 16, 1999. This patent teaches an "apparatus" (claims 1-7), "method" (claims 8-11) and "system" (claim 12) to aid the mass production of cardboard boxes and similar items. The claimed machine shapes a die from metal rule. The die, later placed in a diecutting machine, is used to stamp out box blanks from sheet material such as cardboard. The '919 patent issued from U.S. Patent Application No. 49,391 ("'391 application"), which had been filed in March 1998. The '391 application was a continuation of U.S. Patent Application No. 668,379 ("'379 application"), filed June 1996, which claimed the priority date of a Korean patent application filed in June 1995. The inventor of the '919 patent is Byung-Jun ("Brian") Song, President of SDS.

Defendant Ken Specialties moves for summary judgment that the '919 patent is invalid for indefiniteness, 35 U.S.C. § 112, ¶ 2, and for failure to satisfy the written description requirement, 35 U.S.C. § 112, ¶ 1. Each party requests that the court make a Markman ruling to construct the '919 patent claims.

The court conducted hearings and heard oral argument on July 21 and July 31, 2000. At the outset, the court denied Ken's motion for leave to file a sur-reply memorandum. Ken had also moved in limine to preclude testimony by plaintiff's expert; after a Daubert hearing, the court concluded that SDS' proffered expert Stephen Tricamo was not skilled in the art of diecutting and diemaking, and granted Ken's motion to preclude his testimony concerning issues unique to that field. However, the court reserved the right to draw upon Dr. Tricamo's expertise in general, reguarding universal principles of engineering.

ANALYSIS

1. Summary Judgment Standard

Summary judgment is appropriate where the moving party establishes that "there is no genuine issue as to any material fact and that [it] is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). A factual dispute between the parties will not defeat a motion for summary judgment unless it is both genuine and material. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A factual dispute is genuine if a reasonable jury could return a verdict for the non-movant and it is material if, under the substantive law, it would affect the outcome of the suit. See Anderson, 477 U.S. at 248, 106 S.Ct. 2505. The moving party must show that if the evidentiary material of record were reduced to admissible evidence in court, it would be insufficient to permit the nonmoving party to carry its burden of proof. See Celotex v. Catrett, 477 U.S. 317, 318, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

Once the moving party has carried its burden under Rule 56, "its opponent must do more than simply show that there is some metaphysical doubt as to the material facts in question." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The opposing party must set forth specific facts showing a genuine issue for trial and may not rest upon the mere allegations or denials of its pleadings. See Sound Ship Building Corp. v. Bethlehem Steel Co., 533 F.2d 96, 99 (3rd Cir.1976), cert. denied, 429 U.S. 860, 97 S.Ct. 161, 50 L.Ed.2d 137 (1976). At the summary judgment stage the court's function is not to weigh the evidence and determine the truth of the matter, but rather to determine whether there is a genuine issue for trial. See Anderson, 477 U.S. at 249, 106 S.Ct. 2505. In doing so, the court must construe the facts and inferences in the light most favorable to the non-moving party. See Wahl v. Rexnord, Inc. 624 F.2d 1169, 1181 (3rd Cir.1980).

2. Indefiniteness

Ken initially proceeds under 35 U.S.C. § 112, ¶ 2: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." The purpose of the definiteness requirement is to notify potential competitors whether their inventions infringe the patent. Morton Int'l, Inc., v. Cardinal Chemical Co., 5 F.3d 1464, 1470 (Fed.Cir.1993). Satisfaction of this requirement is a question of law. Exxon Research and Eng'g Co. v. United States, 46 Fed. Cl. 278, 281 (Fed.Cl.2000). Of course, a patent is presumed valid, see 35 U.S.C. § 282, and any challenger must produce clear and convincing evidence to overcome that presumption.

"The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification.... If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more." Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 874-75 (Fed.Cir.1993) (citations omitted). The degree of precision needed to meet the definiteness requirement varies with the nature of the subject matter. Id. at 875.

Though a court usually seeks the conventional definitions of terms, a patentee is free to act as his or her own lexicographer. Beachcombers v. WildeWood Creative Products, Inc., 31 F.3d 1154, 1158 (Fed. Cir.1994). Accordingly, this court must scrutinize "the way one of skill in the art would interpret the claims in view of the written description portion of the specification" — and usually limit the inquiry to such evidence. Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 2000 WL 867589, at *3-4 and n. 4 (Fed.Cir.2000). As in a Markman analysis, the court first examines the intrinsic evidence (the language in the patent claim and specification), then turns to extrinsic evidence only if the intrinsic evidence "is insufficient to enable the court to construe disputed claim terms." Exxon, 46 Fed. Cl. at 280-84 (citation omitted).

Ken makes indefiniteness arguments based on three phrases found in the '919 patent claims: "ribbon stock," "elongate member" and "transferring unit."

A. Ribbon Stock

Defendant's first argument concerns the term "ribbon stock," found in each of the 12 claims of the '919 patent. See claims 1-7 (describing a "metallic ribbon stock folding apparatus"), claims 8-11 ("method of folding metallic ribbon stock") and claim 12 (a "system for folding metallic ribbon stock"). Ken argues that ribbon stock constitutes a limitation on each patent claim. Ken Br. at 5. Should the court disagree, Ken nevertheless advances in the alternative that the term must be understood to construct the patent claims. It concludes: "The term `ribbon stock' does not have an understandable meaning, and as such, all of the claims of the '919 patent must be held invalid for indefiniteness." Ken Br. at 5 (emphasis in original).

In its related motion for claim construction, SDS remarks that while the apparatus described in the '919 patent is novel, "there is no suggestion that ribbon stock per se is novel. On the contrary, the '919 patent makes clear that at least one form of ribbon stock (i.e., cutting blade) existed in the prior art, as did other devices for folding ribbon stock." SDS Markman Br. at 20. SDS relies on dictionary definitions of the terms "ribbon" and "stock"¹; descriptions of "steel rule stock," "stock," "metal ribbon" and "metal ribbon stock" in purported prior art patents; and the patent examiner's references to "ribbon" in the prosecution history. Plaintiff concludes: "[T]he only reasonable and appropriate construction of `ribbon stock' is to include within its scope a supply of continuous metallic material, such as flat cutting blade or even wire ..." SDS Br. at 27.

Ken counters that the term "ribbon stock" is not defined by the '919 patent claims, and that the '919 specification nowhere uses that phrase. It concludes that the phrase is not defined by the intrinsic evidence. It also insists that SDS' proffered "ordinary meaning" of the phrase is unsupported: Ken claims that "ribbon stock" has no plain meaning within the diecutting and diemaking industry,² referring to testimony of SDS' President Simon Song, a glossary published by the International Association of Diecutting and Diemaking (I.A.D.D.), and its own reading of the purported prior art patents. Ken further objects that, according to the dictionary cited by SDS, "ribbon" is first defined as "[a] narrow strip or band of fine fabric, such as satin or velvet, finished at the edges and used for trimming or tying." Ken Br. at 13.³ "Thus, SDS is apparently implying that the invention could also cover a unit that folds and cuts clothing, gift wrapping, etc. Such a result is absurd ... [and] well beyond what the '919 patent was intended to cover." Id. Next, Ken cites the I.A.D.D. definition of "stock": "Paper or other material to be die cut or printed." Warshavsky Decl. Exh. N. "Thus, when someone in the diecutting and diemaking industry uses the term `stock,' [she is] referring to the product which will eventually be made by the diecutter." Ken Br. at 14. Finally, defendant distinguishes plaintiff's proffered prior art patents as either irrelevant to the precise term "ribbon stock," or describing a field other than diecutting or diemaking. Id. at 15. Defendant concludes that a person with skill in the art could not determine the bounds of the claims using the words "ribbon stock" and that the claims must be invalidated as indefinite.

In reply, SDS submits the declaration of Dr....