Sds Usa, Inc. v. Ken Specialties, Inc.

• Decision Date: 28 November 2000
• Docket Number: No. CIV. 99-133.,CIV. 99-133.
• Citation: 122 F.Supp.2d 533
• Parties: SDS USA, INC., Plaintiff, v. KEN SPECIALTIES, INCORPORATED, Defendant.
• Court: U.S. District Court — District of New Jersey

122 F.Supp.2d 533

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

No. CIV. 99-133.

United States District Court, D. New Jersey.

November 28, 2000.

COPYRIGHT MATERIAL OMITTED

Keith E. Gliman, Lerner, David, Littenberg, Krumholz & Metlik, Westfield, NJ, for SDS USA, Inc.

Marvin S. Gittes, North Bergen, NJ, David W. Denenberg, Cobrin & Gittes, New York, NY, for Ken Specialties, Inc.

OPINION

WALLS, District Judge.

Plaintiff SDS USA, Inc. moves for summary judgment for patent infringement. Defendant Ken Specialties filed an Opposition, a cross-motion for summary judgment for non-infringement, and asserted the affirmative defenses of "obviousness" and "best mode." The defendant also filed a "Supplemental and Reply Brief" for a summary judgment that its new "split-pin" machine does not infringe SDS EasyBender machine. Plaintiff's motion is granted and the motions of the defendant are denied.

BACKGROUND

U.S. Patent No. 5,870,919 ("919 patent") was issued to SDS 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"), filed in March 1998 which was a continuation of U.S. Patent Application No. 668,379 ("'379 application"), filed in June 1996. The '379 application 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 Plaintiff. On August 3, 2000, this court issued a "Markman" ruling, which found that the patent was not invalid for indefiniteness and satisfied the written description requirement. Then the Court construed the various claims of the '919 patent that are the subject of the present motions of summary judgment.

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 non-moving 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 nonmoving party. See Wahl v. Rexnord, Inc. 624 F.2d 1169, 1181 (3rd Cir.1980).

In a patent-infringement case, a district court should approach a motion for summary judgment on the fact issue of infringement with great care. Palumbo v. Don-Joy Co., 762 F.2d 969, 974 (Fed.Cir. 1985), overruled on other grounds Markman v. Westview Instruments, Inc., 52 F.3d 967, 976-79 (Fed.Cir.1995) (en banc). Summary judgment may, however, properly be decided as a matter of law when no genuine issue of material fact exists, and no expert testimony is required to explain the nature of the patented invention or the accused product or to assist in their comparison. See, e.g., Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 36, 50 S.Ct. 9, 74 L.Ed. 147 (1929); Singer Mfg. Co. v. Cramer, 192 U.S. 265, 275, 24 S.Ct. 291, 48 L.Ed. 437 (1904).

2. Patent Infringement Analysis of the '919 Patent

"To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly." Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed.Cir.1995). A patent infringement analysis involves two steps. The first one — claim construction — is a question of law. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996); Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1454 (Fed. Cir.1998). This court's recent opinion, SDS, USA, Inc. v. Ken Specialties, 107 F.Supp.2d 574 (D.N.J.2000) has construed the claims that are the subject of the present dispute. The second one — comparison of the properly construed claims to the accused infringing product, is a question of fact. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The claim language is illuminated by the written description and the prosecution history. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed.Cir. 1999). Although the question of infringement is generally one for a jury, summary judgment of infringement may be granted when a rational jury could only conclude that infringement has occurred. See Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 974-75 (Fed.Cir.1999) (reversing summary judgment of non-infringement and granting judgment of infringement because no reasonable jury could determine that any claim limitation was absent from the accused device).

The plaintiff has claimed that defendant's products "literally infringe" its '919 patent. Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device, that is, when the properly construed claim reads on the accused device exactly. Amhil Enterprises v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed.Cir.1996). It is necessary to examine the limitations in each claim to determine if defendant's "Multi-Bender" machine literally infringes plaintiff's "EasyBender" machine: First, a discussion of the general concepts of "ribbon stock" and a "cutter" which appear in several of the claims. Afterwards, each claim of the '919 patent will be examined to determine if there is literal infringement.

A. Preliminary Definitions

1. "Ribbon Stock"

It is useful to define some basic terms such as "ribbon stock" and "cutter" that guide the analysis. At the Markman hearing, defendant asserted that ribbon stock could only be precut steel rule. (Ken Non-Infr. Br. at 20-21). However, the Markman opinion concluded that ribbon stock is not limited to precut steel rule, and instead, "refers to the material from which the preferred-embodiment `cutting blade' is constructed." Plaintiff v. Ken Specialties, 107 F.Supp.2d at 579. Because ribbon stock is not limited to precut steel rule, Ken's non-infringement arguments as to ribbon stock are rejected.

2. The "Cutter"

The cutter is another limitation which appears throughout several of the claims. This court has adopted as the definition of "cutter" (an element which appears in claim 12 of the '919 patent) the meaning found in the "Glossary of Terms" of the International Association of Diecutting and Diemaking ("I.A.D.D.") SDS, 107 F.Supp.2d at 594 as simply "a term used to describe a bench tool used to cut steel rule stock in the manufacture of steel rule dies." Id. The defendant's effort to limit the "cutter" under § 112 ¶ 6 to correspond only to the particular cutter shown in Korean Patent No. 80607 has been rejected.

Defendant argues that because the patent teaches a machine that "cuts, miters and notches," and that its machine only cuts, there is no infringement. (Ken Non-Infr. Br. at 14, citing Kengott Decl. ¶ 31.) However, the claim has been construed to require only the cutting of steel rule, without mentioning mitering or notching. Defendant freely admits that its cutter is simply a "sheer cutter" (Id. at 18). Because defendant's machine has a cutter like the one described in the IADD Glossary, non-infringement argument regarding this limitation cannot be accepted.

B. The "Transferring Unit"

Claim 1 begins by describing a transferring unit. The Markman opinion found that the transferring unit (or transfer roller) was a mechanism that moves the ribbon stock from a roller at the beginning of the assembly line through a longitudinal passage formed by a guide. Plaintiff contends that defendant's products meet this limitation.

The transferring unit of the accused product "is an opposing pair of rollers spaced apart from each other to define a separation through which said steel rule is fed." (Ken Non-Infr. Br. 2) Ken's president, Dale Kengott, admitted as such. (See Kengott Non-Infr. Decl. ¶ 13).

Plaintiff argues that defendant's products infringe method claims 8-11. These method claims do not require a "transferring unit," but only a step of "transferring of the ribbon stock through a passage formed by a guide, said passage defining a longitudinal axis ..." (Plaintiff Br. 4). According to Plaintiff, the use of Ken's accused product involves such a step. Id. Ken has not refuted this assertion.

C. "The Guide"

There is a...