Spectra Corp. v. Lutz, No. 87-1461
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
| Writing for the Court | Before MARKEY, Chief Judge, BALDWIN, Senior Circuit Judge, and NIES; MARKEY |
| Citation | 839 F.2d 1579,5 USPQ2d 1867 |
| Parties | SPECTRA CORPORATION and Subligraphics, S.A., Plaintiffs-Appellants, v. Charles J. LUTZ, dba Nova Chrome and Lutz Enterprises, Inc., Defendants-Appellees. |
| Docket Number | No. 87-1461 |
| Decision Date | 24 February 1988 |
Page 1579
v.
Charles J. LUTZ, dba Nova Chrome and Lutz Enterprises, Inc.,
Defendants-Appellees.
Federal Circuit.
Page 1580
Hugh D. Finley, Phillips, Moore, Lempio & Finley, San Francisco, Cal., argued for defendants-appellees. With him on the brief was Carlisle M. Moore.
Before MARKEY, Chief Judge, BALDWIN, Senior Circuit Judge, and NIES, Circuit Judge.
MARKEY, Chief Judge.
Spectra Corporation and Subligraphics, S.A. ("Spectra") appeal from summary judgment of the United States District Court for the Northern District of California, # C-86-4447 EFL, that Charles J. Lutz, dba Nova Chrome and Lutz Enterprises, Inc. ("Lutz") do not infringe Spectra's U.S. Patent No. 4,145,300 (the '300 patent) by the use or sale of Coates Reprographic's toner ("Coates toner"). We affirm.
I. Background
Sublimation dye toners ("toners") are powders which can be used in conjunction with photocopy machines and heat presses to form individualized color images on fabric and metal. Generally, a toner consists of sublimable dyestuff, magnetic particles, and a polymer which binds the dye to the particles.
Spectra's '300 patent discloses and claims a sublimation dye toner consisting of magnetic particles, sublimable dyestuff, a polymer, and wax. The specification states that prior art toners were "limited to [polymers] which [had] a weak affinity for the dyestuffs which they contain, so that the said dyestuffs, under the action of heat, transfer easily from the developer to the surfaces with which they are kept in contact while a copy may be produced." (Specification, column 1, lines 13-18). Spectra discovered that excellent results could be obtained "whatever affinity the polymers may have for the dyestuffs which they contain, provided a certain amount of a plasticiser or of a wax is added to the coating polymer composition." 1 (Id., column 1, lines 19-23). "Accordingly the present invention relates to developers containing a polymer and at least one sublimable or vaporisable dyestuff ... and characterised in that they consist of particles containing a mixture of at least one polymer with a plasticiser or a wax." (Id., column 1, lines 24-30).
Claim 1, the only independent claim, reads:
A developer in the form of a dry free-flowing powder containing magnetic particles embedded in a mixture of a polymer and between 2.5 and 25% of at least one sublimable or vaporisable dyestuff which, at atmospheric pressure, passes into the vapour state at between 100? and 200? C., and consisting of particles of magnetic material in a mixture of at least one polymer with a wax, which release the vapors of said dyestuff if heated at the sublimation or vaporisation temperature of said dyestuff.
On July 31, 1986 Spectra filed suit against Lutz for patent infringement. Spectra's amended complaint alleged that Lutz had "manufactured and/or used and/or sold" a variety of infringing toners. 2 In March of 1987 Lutz moved for partial summary judgment that the Coates toner does not infringe Spectra's '300 patent. On May 15 and June 5 the district court held hearings on Lutz's motion. Spectra and Lutz agreed that to prove literal infringement Spectra would have to show that the Coates toners contained four components: magnetic particles, sublimation dye, wax, and polymer. The only evidence before the district court on that question was that the Coates toner did not contain a polymer.
On June 19 the district court granted summary judgment of noninfringement
Page 1581
and dismissed without prejudice all claims pertaining to toners other than the Coates toner. 3 Spectra appeals from the summary judgment of noninfringement.II. Issue
Whether the district court erred in granting summary judgment of noninfringement.
III. Opinion
Spectra says the district court erred because: (1) Spectra was denied reasonable discovery which might have provided evidence of polymer in the Coates toners, i.e., evidence of literal infringement; (2) there was a genuine issue of material fact as to infringement under the doctrine of equivalents.
(1) Discovery
Unlike the situation in Zell v. InterCapital Income Sec., Inc., 675 F.2d 1041 (9th Cir.1982) (summary judgment premature where discovery cut off by erroneous ruling), Spectra had already conducted 11 months of discovery, and its expert, Dr. Gutknecht, analyzed a sample of the Coates toner, finding no polymer in it. Further, far from curtailing discovery, the district court stated that "[d]iscovery can proceed in the normal fashion" in the two months during which Lutz's summary judgment motion...
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B & G Plastics v. Eastern Creative Industries, No. 98 Civ. 0884 (RMB)(JCF).
...case as in any other." Avia Group Int'l, Inc. v. LA. Gear Cal., Inc., 853 F.2d 1557, 1561 (Fed.Cir.1988); see also Spectra Corp. v. Lutz, 839 F.2d 1579, 1581 n. 6 (Fed.Cir. 1988). When cross-motions for summary judgment are made, the standard is the same as that for individual motions for s......
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Avia Group Intern., Inc. v. L.A. Gear California, Inc., No. 87-1505
...has repeatedly emphasized that "summary judgment is as appropriate in a patent case as in any other." See, e.g., Spectra Corp. v. Lutz, 839 F.2d 1579, 1581 n. 6, 5 USPQ2d 1867, 1869 n. 6 (Fed.Cir.1988); Brenner v. United States, 773 F.2d 306, 307, 227 USPQ 159, 160 (Fed.Cir.1985); Petersen ......
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United Sweetener USA, Inc. v. Nutrasweet Co., Civ. A. No. 89-245-JRR.
...third factor of the doctrine of equivalents, defendant fails in its effort to demonstrate infringement. See Spectra Corp. v. Lutz, 839 F.2d 1579, 1582 (Fed.Cir. 1988). Defendant has the burden of proving that aspartame (a naturally occurring amino acid) and the plaintiffs' product (a combin......
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Semmler v. American Honda Motor Co., Inc., No. C2-95-316.
...where no genuine issue of material fact is present and the movant is entitled to judgment as a matter of law." Spectra Corp. v. Lutz, 839 F.2d 1579, 1581 n. 6 (Fed.Cir.1988). However, "it must be employed carefully, `for an improvident grant may deny a party a chance to prove a worthy case.......
-
B & G Plastics v. Eastern Creative Industries, No. 98 Civ. 0884 (RMB)(JCF).
...case as in any other." Avia Group Int'l, Inc. v. LA. Gear Cal., Inc., 853 F.2d 1557, 1561 (Fed.Cir.1988); see also Spectra Corp. v. Lutz, 839 F.2d 1579, 1581 n. 6 (Fed.Cir. 1988). When cross-motions for summary judgment are made, the standard is the same as that for individual motions for s......
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Avia Group Intern., Inc. v. L.A. Gear California, Inc., No. 87-1505
...has repeatedly emphasized that "summary judgment is as appropriate in a patent case as in any other." See, e.g., Spectra Corp. v. Lutz, 839 F.2d 1579, 1581 n. 6, 5 USPQ2d 1867, 1869 n. 6 (Fed.Cir.1988); Brenner v. United States, 773 F.2d 306, 307, 227 USPQ 159, 160 (Fed.Cir.1985); Petersen ......
-
United Sweetener USA, Inc. v. Nutrasweet Co., Civ. A. No. 89-245-JRR.
...third factor of the doctrine of equivalents, defendant fails in its effort to demonstrate infringement. See Spectra Corp. v. Lutz, 839 F.2d 1579, 1582 (Fed.Cir. 1988). Defendant has the burden of proving that aspartame (a naturally occurring amino acid) and the plaintiffs' product (a combin......
-
Semmler v. American Honda Motor Co., Inc., No. C2-95-316.
...where no genuine issue of material fact is present and the movant is entitled to judgment as a matter of law." Spectra Corp. v. Lutz, 839 F.2d 1579, 1581 n. 6 (Fed.Cir.1988). However, "it must be employed carefully, `for an improvident grant may deny a party a chance to prove a worthy case.......