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April 17, 2001


The opinion of the court was delivered by: Gettleman, District Judge.


Plaintiff Philip Jackson has filed a complaint against defendants Casio PhoneMate, Inc., Asahi Corp., and Casio Computer Co., Ltd., alleging patent infringement. Defendant Casio PhoneMate ("defendant") has filed a second motion for summary judgment pursuant to Fed. R.Civ.P. 56.*fn1 For the following reasons, defendant's motion is granted.


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.


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 ...

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