a conventional telephone. For example, plaintiffs invention can be
connected to a home lighting system so that the homeowner can call his
home from a remote location and use the device to turn his lighting
system on or off. To do so, the homeowner calls his home and enters a
three-digit "access code" and then various "control codes." In this
example, the homeowner would enter the access code "*,1" to turn the
lighting system on or "#,1" to turn the lighting system off. When a
control code is entered, the "detecting means" of the device detects
which control code has been entered and sends out a corresponding
"sequence detection signal." The sequence detection signal is received by
a bistable "control means" that then sends a "control signal," which
either turns the appliance on or off depending upon which control code
was entered by the homeowner. Plaintiffs device uses integrated circuit
digital logic to perform these functions.
Defendant's allegedly infringing device, the TC-540 ("the accused
device"), is a combination cordless telephone and answering machine. When
a call is placed to the owner's home, the accused device answers the
phone, plays a message, and then enables the caller to leave a message in
one of three mailboxes by pressing various tones. The accused device can
be used by its owner to retrieve, save, replay and erase messages left by
callers. This can be done by actually touching the machine's various
controls or by accessing the machine remotely using the "touch-tone"
features of a conventional telephone. When accessed remotely, the accused
device requires the owner to enter an "access code." Then, by pressing
various tones, the owner can retrieve, save, replay, and erase messages.
Defendant's device uses a microprocessor to perform its functions.
Plaintiff alleges that the accused device infringes the '900 patent in
the way that it enables the owner to remotely access and play back
messages in selected mailboxes and in the way that it limits remote
access to callers who enter an access code.
SUMMARY JUDGMENT STANDARD
A movant is entitled to summary judgment under Fed.R.Civ.P. 56 when the
moving papers and affidavits show there is no genuine issue of material
fact and the movant is entitled to judgment as a matter of law. See
Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106
S.Ct. 2548, 91 L.Ed.2d 265 (1986); Unterreiner v. Volkswagen of America,
Inc., 8 F.3d 1206, 1209 (7th Cir. 1993). Once a moving party has met its
burden, the non-moving party must go beyond the pleadings and set forth
specific facts showing there is a genuine issue for trial. See
Fed.R.Civ.P. 56(e); Becker v. Tenenbaum-Hill Assoc., Inc., 914 F.2d 107,
110 (7th Cir. 1990). The nonmoving party "must do more than simply show
that there is some metaphysical doubt as to the material facts."
Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574,
586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "The mere existence of a
scintilla of evidence in support of the [nonmoving party's] position will
be insufficient; there must be evidence on which the jury could
reasonably find for the [nonmoving party]." Anderson, 477 U.S. at 252,
106 S.Ct. 2505.
In an action for patent infringement, the plaintiff bears "the burden
of proving infringement by a preponderance of the evidence." Kegel Co.,
Inc. v. AMF Bowling, Inc., 127 F.3d 1420, 1425 (Fed. Cir. 1997). Thus, to
defeat a motion for summary judgment of non-infringement, the plaintiff
must show that "the evidence is such that a reasonable jury could return
a verdict for [the plaintiff]." Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248,
106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Stewart v. McGinnis, 5 F.3d 1031,
1033 (7th Cir. 1993). As always, the court considers the record as a
whole and draws all reasonable inferences in the light most favorable to
the party opposing the motion. See Fisher v. Transco Services-Milwaukee,
Inc., 979 F.2d 1239, 1242 (7th Cir. 1992).
In Jackson I, defendant argued that the accused device lacks a "gating"
means (Claim 1), a "flip-flop" means (Claim 3), a "counter" means (Claim
5), and a "feedback-gate" means (Claim 10).*fn2 The court granted
defendant's motion for summary judgment with respect to Claims 1 and 10
and also as to literal infringement of Claim 3, leaving Claim 5 in its
entirety and infringement of Claim 3 under the doctrine of equivalents.
Defendant's second motion for summary judgment, now before the court,
seeks judgment as a matter of law on these remaining claims. The court
will address each in turn.
I. Claim 3
The court need not address the parties' summary judgment arguments with
respect to Claim 3 because, while defendant's motion was pending, the
Federal Circuit decided Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 234 F.3d 558 (Fed.Cir. 2000). making clear that prosecution estoppel
bars plaintiff from pursuing Claim 3 under the doctrine of equivalents.
*fn3 In Festo, the Federal Circuit held that when the scope of a patent
claim is narrowed by amendment — whether voluntarily or in response
to a rejection by a patent examiner — prosecution estoppel operates
as "a complete bar" to recovery under the doctrine of equivalents unless
the plaintiff can establish that the amendment was not related to
patentability. See Id.
Defendant argues that Festo bars plaintiff from recovering under the
doctrine of equivalents for Claim 3 because the "flip-flop" means of
plaintiffs invention was amended to narrow its scope during the third
re-examination of the '900 patent. To support this, defendant points to
the prior rejection of Claim 3 under 35 U.S.C. § 102 (b) (as
anticipated by prior patents) and under 35 U.S.C. § 103 (as obvious
in view of prior patents). In response to that rejection, defendant
contends, plaintiff amended Claim 3 to recite the "if and only if'
language that the court held precluded literal infringement in Jackson
I. Accordingly, when plaintiff sought re-examination of the '900 patent,
he explained to the examiner that Claim 3 is, "now more clearly
distinguish[ed] over [the prior patents] because [it] now recite[s] that
this flip-flop means is maintained in its present state until if and only
if the flip-flop means responds to a sequence detection signal
selectively associated with the other of said conditions of fewer than
all of the bistable operations." (Emphasis in original.)
Plaintiff fails to rebut this argument, admitting that Festo "limits
the application of the doctrine of equivalents to Claim 3," and asking
the court to "hold" its decision on this claim "in abeyance" until either
the plaintiff in Festo fails to appeal, or the Supreme Court affirms,
that decision. The court will not do so. Festo is binding precedent on
the instant case, and the
court will follow its mandate. Applying Festo, the court concludes that
plaintiff is barred from recovery under the doctrine of equivalents
because he has failed to establish that his amendment of Claim 3 did not
relate to the patentability of the '900 patent. Thus, summary judgment is
granted to defendant with respect to Claim 3.
II. Claim 5
In Jackson I, defendant argued that the accused device does not perform
the functions of the "access limiting circuit means" or the "counter
means" of Claim 5 either literally or equivalently. Plaintiff disagreed,
relying on the testimony of his expert, Dr. LeRoy Silva ("Dr. Silva").
Upon construing the above functions and comparing them to functions
performed by the accused device, the court concluded that genuine issues
of material fact exist as to whether the accused device performs the same
or substantially the same functions as plaintiffs invention.
Fine, defendant says, but it is still entitled to summary judgment.
According to defendant, to survive summary judgment, plaintiff must show
not only that there is a genuine issue of material fact as to whether the
two devices perform the same or substantially the same functions, but
also as to whether the structure of each functional element of the
accused device is identical or equivalent to the corresponding functions
of plaintiffs invention.*fn4 Plaintiff agrees, and so does the court. To
make a finding of literal infringement or infringement under the doctrine
of equivalents for a means-plus-function claim, the court must compare
the '900 patent to the accused device not just in terms of the functions
performed by each claim, but also in terms of the way in which the
embodiment of each claim (i.e., its structure) goes about performing each
function. See Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259,
1267-1268 (Fed.Cir. 1999); Chiuminatta Concrete Concepts, Inc. v.
Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed.Cir. 1998);
35 U.S.C. § 112, ¶ 6. In order to complete this task, the court
must first "construe the function[s] recited in [the '900 patent]," and
then it must "determine what structures have been disclosed in the
specification that correspond to the means for performing [those]
function[s]." Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352,
1361 (Fed.Cir. 2000).
A. Plaintiffs New Evidence
Before the court can undertake that inquiry, however, a dispute has
arisen between the parties that must be settled. Along with plaintiffs
response to the instant motion, plaintiff submitted claim charts that
identify the corresponding structures to the functions of Claim 5.
Plaintiff also submitted a supplemental declaration by his expert, Dr.
Silva, which purports to identify the "software subprogram called
`code reg'" in the accused device that performs the "counter means"
function of that claim. Defendant contends that plaintiffs charts and
Dr. Silva's supplemental declaration should be disregarded by the court
because by filing them
plaintiff violated an agreement he made in open court.
This contention stems from a set of interrogatories defendant served
plaintiff on April 23, 1999. Interrogatory No. 2 in that document
requested that plaintiff: "state in the form of a claim chart a detailed
explanation of how [the accused device] embodies each limitation of each
. . . claim [in the '900 patent that is alleged to be infringed]." On
September 8, 1999, defendant filed a motion to compel a more complete
answer to Interrogatory No. 2, expressing its belief that the initial 90
pages of claim charts submitted by plaintiff were inadequate. In
response, plaintiff argued that his claim charts are adequate since they
"thoroughly explain how [defendant] is infringing [the '900] patent."
Further, plaintiff wrote, "even if the claim charts [are] inadequate, the
177-[p]age Preliminary Expert Report . . . prepared by . . . Dr. Silva
satisfies any remaining obligation."*fn5
Several months later, on February 10, 2000, the following colloquy took
place between counsel and the court:
COURT: . . . [A]s I understand it, the plaintiff here
is satisfied with relying on the claim charts
that he has produced in response to the
question propounded to him, right?
PLAINTIFF'S COUNSEL: Yes, clearly.
COURT: All right. Now, the defendant is saying you
haven't disclosed how the defendant's structure
corresponds to the functions disclosed in your
DEFENDANT'S COUNSEL: That's right, Your Honor.
COURT: If that's true, and [here's] my standing on
that, he thinks it is and you think it isn't[.] [I]f
you're right. that would affect, obviously —
well, depending on who's right here, it would affect
the course of the summary judgment ruling. But I
don't think it would be within my own sound exercise
of discretion to say, well, you've got to answer
more. You've got to go further. He's gone as far as
he wants to go, and [plaintiff] will suffer the
consequences or reap the benefits of that decision.
PLAINTIFF'S COUNSEL: That's correct.