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HOWES v. ZIRCON CORP.

January 9, 1998

James P. Howes, Riverside Promotions, Inc. and American Home Workshop Products Corporation, Plaintiffs,
v.
Zircon Corporation, Defendant.



The opinion of the court was delivered by: ZAGEL

 James P. Howes ("Howes"), Riverside Promotions, Inc. ("Riverside") American Home Workshop Products Corp. ("American") (collectively "the Plaintiffs") sued the Zircon Corporation ("Zircon") for willfully infringing claims 1, 2, 3, 4, 5, and 16 of United States Patent No. 5,396,578 ("the '578 patent"). The '578 patent's subject matter is a voice-recording tape measure. Zircon sells a voice-recording tape measure called the Repeater.

 Zircon filed for summary judgment for noninfringement on claims 1, 3, and 16 while challenging the standing of Riverside and American. The Plaintiffs cross-filed for summary judgment on Claim 3 of the '578 patent and on their willful infringement claim. I now deny Zircon's motion for summary judgment for noninfringement, grant the Plaintiffs' motion for summary judgment for infringement on Claim 3, deny the Plaintiffs' motion for willful infringement, and find that Riverside and American have standing as licensees of the '578 patent.

 Uncontested Claims

 As a preliminary matter I hold that I have no jurisdiction to address Zircon's motion for summary judgment on claims 1 or 16 of the '578 patent. To be justiciable, there must be a controversy at present and not merely at the time the complaint was filed. Grain Processing Corp. v. American Maize-Products Co., 840 F.2d 902, 905-906 (Fed. Cir. 1988). The Plaintiffs no longer allege infringement of claims 1 and 16 and thus no present case or controversy exists regarding their infringement. Pls. Mot. for Summ. J. of Infringement and Willful Infringement at 1. Therefore I deny Zircon's motion for summary judgment on claims 1 and 16 because I lack jurisdiction over those claims.

 Legal Standard

 Summary judgment should be granted when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). A genuine issue of material fact exists if there is sufficient evidence for a jury to return a verdict in favor of the non-moving party on the particular issue. Methodist Medical Center of Illinois v. American Medical Sec. Inc., 38 F.3d 316, 319 (7th Cir. 1994). The court must draw all justifiable inferences in the light most favorable to the opposing party and must resolve any doubt against the moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).

 Literal Infringement

 The patent infringement analysis requires me to take two steps. First, I must properly construe the claim to determine its scope and meaning. This is a question of law. Then, I must compare the properly construed claim to Zircon's device to determine if a question of material fact exists. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581-82 (Fed. Cir. 1996). Where, as here, the parties do not dispute any relevant facts regarding the accused product but disagree over the scope of a claim, I may decide the question of literal infringement as a matter of law in a motion for summary judgment. Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573 (Fed. Cir. 1996).

 The first step, claim construction, involves ascertaining the true meaning and scope of each claim. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). To determine the proper construction of a claim, I must first look to the intrinsic evidence of record, the patent itself, including the claims, the specifications and, if in evidence, the prosecution history. Vitronics, 90 F.3d at 1582. I am not to rely on extrinsic evidence, such as expert testimony, unless an analysis of the intrinsic evidence alone will not resolve all the ambiguity in a disputed claim term. Id. at 1583.

 This means that, in the first instance, I must look to the words of the claims to define the scope of the Plaintiffs' claims. Id. at 1582. In doing so I note that I am to interpret any technical term in a patent document as having the meaning given by persons experienced in the field of the invention, unless it is apparent from the patent and the prosecution history that the inventor used the term with a different meaning. Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996). Thus, a patentee may choose to use terms in a manner other than their ordinary meaning, so long as the special definition of the term is clearly stated in the patent specification or file history. Vitronics, 90 F.3d at 1582.

 Second, I must review the claim's specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. Id. Specifications act as a dictionary when they expressly define terms used in the claims or when they define terms by implication. Id. Specifications are the single best guide to the meaning of a disputed term. Vitronics, 90 F.3d at 1582.

 As the final source of intrinsic evidence, I may consider the prosecution history. The prosecution history contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims. Id. The prosecution history limits the claim's terms to exclude any interpretation disclaimed during the ...


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