The opinion of the court was delivered by: RUBEN CASTILLO, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiffs Neopost Industrie B.V., Neopost, Inc., Neopost S.A.,
and Hasler, Inc. (collectively, "Neopost") sued PFE
International, Inc., and PFE International Limited (collectively,
"PFE") alleging that PFE's production and marketing of certain
mail assembly and processing products violate certain of
Neopost's Patents and trademarks. Neopost alleges that two PFE
machines the Minimailer 4 Plus and the Maximailer violate
U.S. Patent numbers 5,339,603 ("the `603 Patent") and 6,481,704
("the `704 Patent"). On September 12, 2005, this Court held a
bench trial at which Neopost presented its case-in-chief on all
issues of liability under its Second Amended Complaint
("Complaint"). At the conclusion of Neopost's case-in-chief, PFE
moved for judgment as a matter of law under Federal Rule of Civil
Procedure 52(e) on Neopost's trademark and patent claims. The
Court gave the parties the opportunity to fully brief the
motions. After carefully considering those briefs and the
evidence presented at trial, the Court makes the following
findings of facts and conclusions of law in accordance with Rule
52(c), granting both of PFE's motions in their entirety, and thus
completely dismissing Neopost's trademark and patent claims.
Pursuant to Rule 52, the Court hereby enters the following
written Findings of Fact and Conclusions of Law which are based upon consideration of all the
admissible evidence as well as this Court's own assessment of the
credibility of the trial witnesses. To the extent, if any, that
Findings of Fact, as stated, may be considered Conclusions of
Law, they shall be deemed Conclusions of Law. Similarly, to the
extent that matters expressed as Conclusions of Law may be
considered Findings of Fact, they shall also be deemed Findings
The Court's Findings of Fact are based on the Court's
independent review of the evidence presented in Neopost's
case-in-chief.*fn1 The Court will not consider extraneous
evidence such as the summary charts Neopost submitted after the
close of its case-in-chief, which are not evidence in this case.
1. The Plaintiffs in this action include: Neopost S.A., a
corporation based in France, (Id. ¶ 5); Neopost Industrie,
B.V., a Netherlands corporation, (Jt. Pretrial Order
("Pretrial"), Sch. A ¶ 4); Neopost, Inc., a Delaware corporation
(Id. ¶ 6); and Hasler, Inc., a Connecticut corporation, (Id.
2. Neopost is a United States licensee of the `603 Patent,
which the United States Patent and Trademark Office ("USPTO")
issued on August 23, 1994, and assigned to Hadewe, B.V., of
Drachten, Netherlands. (`603 Patent; R. 157, Manbeck Decl. ¶ 13.)
The `603 Patent is entitled "Method for Setting a Folding Station
Included in an Apparatus for Preparing Items to be Mailed, and
Apparatus for Preparing Items to be Mailed and Folding Station
Adapted for Carrying out Such Method."
3. On November 19, 2002, the USPTO issued the `704 Patent,
entitled "Setting an Apparatus for Assembling Mail Items."
(Pretrial, Sch. A ¶ 11.) Neopost B.V. is the named assignee of
the `704 Patent, and Neopost, Inc. and Hasler, Inc. are its
exclusive co-licensees. (`704 Patent; R. 157, Manbeck Decl. ¶
4. The Defendants are PFE International, Inc., an Illinois
corporation, and PFE International Limited, a company organized
under the laws of England. (Pretrial, Sch. A ¶¶ 8-9.)
5. PFE has sold and continues to sell a product known as the
"Minimailer 4 Plus" and a product known as the "Maximailer"
within Illinois. (Id. ¶ 12.)
II. Credibility of the Evidence
6. Neopost did not offer any expert testimony at trial on the
issue of patent infringement.
7. Neopost offered as evidence of its patent infringement
claims: (1) a declaration of Jan Remijnse (R. 160, Remijnse
Decl.); (2) portions of the transcripts of deposition testimony
by David Dronsfield, Raymond George, and David Odhams (R. 155,
Dep. Designations); and (3) certain deposition exhibits that were
admitted as trial exhibits by agreement of the parties. (Trial
Transcript ("Tr.") at 154.)
8. Neopost does not identify Dronsfield and Odhams, or provide
any description of the scope of these individuals' roles at
Neopost or their knowledge of the allegedly infringed
9. George was the project leader and mechanical design engineer
for certain unidentified projects "D117" and "D114." (R. 155,
George Dep. at 154.)
10. Remijnse, a witness who testified at trial, has worked for
Neopost for ten years and currently is a mechanical engineer in
Neopost Technologies B.V.'s research and development department.
(R. 160, Remijnse Decl. ¶¶ 2-3.)
11. Remijnse did not read this Court's claim construction in
its entirety, and those portions he did read he reviewed three
months prior to his testimony. (Tr. at 154.)
12. The last time Remijnse read the `704 Patent was "a few
weeks" before his testimony, and he never read its file history.
(Tr. at 154-55.)
13. Remijnse did not know whether he had ever read the `603
Patent in its entirety, and he had not read its complete file history. (Tr. at 155-56.)
A. Facts Common to the Minimailer 4 Plus and the Maximailer
14. The function of the Minimailer 4 Plus and Maximailer "is to
feed forms from a hopper, fold them in either `C', `Z', `V' or
double forward fold and insert them into an envelope which is
then sealed and ejected." (Plaintiffs' Trial Exhibit ("PTX") 179,
Minimailer Plus Launch Guide at PFE 000271; PTX 74, Minimailer
Op. Instr. at LTD 00010; PTX 75, Maximailer Op. Instr. at LTD
0043; Pretrial, Sch. A ¶ 16.)
15. The Minimailer 4 Plus and Maximailer are devices for
assembling mail items from mail components. (PTX 74, Op. Instr.
at LTD 0010; PTX 75, Op. Instr. at LTD 0043.)
16. The accused devices include a number of feeder stations.
(PTX 74, Op. Instr. at LTD 0012, LTD 0021; PTX 75, Op. Instr. at
LTD 0043, 0045, 0046).
17. The Minimailer 4 Plus and the Maximailer require the user
to input the fold type; thus this aspect of the setting is not
"determined by the apparatus." (Dronsfield Dep. Ex. 18, Software
Change Mem. at LTD 0259; Tr. at 175; PTX 179, Launch Guide at PFE
18. Both machines incorporate document hoppers, folding
stations, and envelope hoppers. (Pretrial, Sch. A ¶ 16; PTX 74,
Op. Instr. at LTD 0026, 0031 PTX 75, Op. Instr. at LTD 0045).
19. The Minimailer 4 Plus and Maximailer contain a data
processing means that stores programs which set the folding
machine. (PTX 74, Op. Instr. at LTD 0010; PTX 75, Op. Instr. at
20. The operating instructions for both devices state that the
display screens indicate which hoppers are active. (PTX 74, Op.
Instr. at LTD 0031; PTX 75, Op. Instr. at LTD 0049.)
21. The Minimailer "allows the operator to simply load the
envelopes and documents into the hoppers, select the fold type,
and press start." (PTX 179, Minimailer Plus Series Launch Guide
at PFE 00271.)
22. The Minimailer is available with two, three, or four
station options. (Id. at PFE 00275.)
23. The operator can . . . load short or long forms into
whichever station desired and the machine will automatically
configure that application." (Id. at PFE 000279.)
24. There are two distinct versions of the Minimailer 4 Plus:
the "original" Minimailer 4 Plus and the "modified" Minimailer 4
Plus. 25. The Minimailer 4 Plus's Operating Instructions contain
graphics showing that the machine includes both document supply
hopper and envelope inserter hoppers. (PTX 74, Minimailer Op.
Instr. at LTD 0026.)
26. At or around January 2004, PFE created a modified version
of the software used in the Minimailer 4 Plus which included a
"[n]ew folding algorithm that does not use the envelope length,
the folded length calculation" to determine fold height, but
instead bases the fold height on the length of the paper.
(Dronsfield Dep. Ex. 16, Software Code Desc. at LTD 0322.) After
this change, the fold height determination for folding documents
is based on the length of the paper rather than the length of the
envelope. (R. 155, Dep. Desig., Odhams Dep. at 134.)
27. The modified Minimailer 4 Plus requires the machine's user
to define a fold type before the machine performs its
function.*fn3 (Dronsfield Dep. Ex. 18, Software Change Mem.
at LTD 0259; PTX 179, Launch Guide at PFE 00271.)
28. After selecting the fold type, the user presses a "go"
button, and the machine measures the envelope and the paper in
the hopper on its way into the machine. (R. 155, Odhams Dep. at
29. If the user selects a fold type that is the wrong size for
the height of the envelope being used, the machine indicates that
the user should either use another envelope or select another
type of fold. (Tr. at 198.)
30. If a hopper becomes empty during processing, depending on
the mode of operation, the Minimailer 4 Plus may recognize that
and automatically take documents from one of the other hoppers,
or pause and wait for user input. (R. 155, Odhams Dep. at 136.)
31. There must be something in the first hopper in order for
operations to proceed. (Tr. at 171.)
32. The Maximailer does not measure the height of the envelope;
rather, that data is input by the operator when programming a
job. (Tr. at 174-76.)
33. In response to detecting the presence of a document in at
least one of the feeder stations, the Maximailer determines that
at least one of the feeder stations is in an operating condition.
(Id. at 187.) 34. If a tray is loaded, the Maximailer determines that the
tray is operable. (Id. at 194.)
35. The Operating Instructions for the Maximailer show that it
has insert feeders or feed trays that are separate from the
envelope hopper. (PTX 75, Maximailer Op. Instr. at LTD 0045.)
1. "If during a trial without a jury a party has been fully
heard on an issue and the court finds against the party on that
issue, the court may enter judgment as a matter of law against
that party[.]" Fed.R.Civ.P. 52(c); Fillmore v. Page,
358 F.3d 496, 503 (7th Cir. 2004).
2. Whether to grant judgment as a matter of law is a procedural
issue that is reviewed under the law of the regional circuit in
which an appeal from the district court would typically lie; in
this case, the regional circuit is Seventh Circuit. Summit
Tech., Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed. Cir. 2004).
3. Rule 52(c) "allows the district court to weigh the evidence
to determine whether the plaintiff has proven his case." Ortloff
v. United States, 335 F.3d 652, 660 (7th Cir. 2003). In making a
determination under Rule 52(c), "the court is within its
prerogative `to weigh the evidence, resolve any conflicts in it,
and decide for itself where the preponderance lies.'" Van
Zuckerstein v. Argonne Nat'l Lab., 984 F.2d 1467, 1475 (7th Cir.
1993) (quoting Sanders v. Gen. Serv. Admin., 707 F.2d 969, 971
(7th Cir. 1983)).
4. Whether or not an accused device infringes a patent is a
question of fact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353
(Fed. Cir. 1998).
5. In order to determine whether a patent is infringed, the
Court must first determine "the scope and meaning of the patent
claims asserted," and then compare the claims to the allegedly
infringing device. Golden Blount. Inc. v. Robert II. Peterson
Co., 365 F.3d 1054, 1059 (Fed. Cir. 2004). This Court construed
all of the disputed claim terms in its April 26, 2005 claim
construction ruling. (Apr. 26, 2005 Op. & Order.)
6. In order to establish that a patent has been infringed, a
patentee must demonstrate that every limitation of the allegedly
infringed patent claims exists in the accused device. Oakley,
Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1339 (Fed. Cir.
2003); Amazon.com. Inc. v. BarnesandNoble.com. Inc.,
239 F.3d 1343, 1350 (Fed. Cir. 2001). The failure to meet even a single
limitation of an allegedly infringed patent claim defeats a claim
of infringement. Rohm & Hass Co. v. Brotech Corp.,
127 F.3d 1089, 1092 (Fed. Cir. 1997); Laitram Corp. v. Rexnord, Inc.,
939 F.2d 1533, 1535 (Fed. Cir. 1991).
7. Neopost had the burden to prove at trial, by a preponderance
of the evidence, that PFE's Minimailer 4 Plus and Maximailer infringe the `603 and `704
Patents. Centricut, LLC v. Esab Group. Inc., 390 F.3d 1361,
1367 (Fed. Cir. 2004); Rohm & Hass Co. v. Brotech Corp.,
127 F.3d 1089, 1092 (Fed. Cir. 1997). Under the preponderance of the
evidence standard, Neopost was required to establish that
infringement "was more likely than not to have occurred."
Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326,
1341 n. 15 (Fed. Cir. 2005). Neopost was required to meet this
burden by presenting "more than a mere scintilla of evidence."
Summit Tech., Inc. v. Nidek Co., Ltd., 363 F.3d 1219, 1223
(Fed. Cir. 2004); see also James v. Milw. County, 956 F.2d 696,
698 (7th Cir. 1992).
8. A plaintiff in a patent infringement case cannot meet its
burden of proof by resting on a witness's summary testimony.
Thus, a witness' general opinion that an accused device infringes
a patent, standing alone, is insufficient to establish
infringement. Rohm & Hass, 127 F.3d at 1092 (noting that a
district court is not required to accept the unsupported
assertions of a witness); see also Techsearch, LLC v. Intel
Corp., 286 F.3d 1360, 1372 (Fed. Cir. 2002) (stating that
"general assertions of facts, general denials, and conclusory
statements are insufficient" to support a showing of patent
infringement on summary judgment).
9. In this case, the direct testimony of Remijnse, Neopost's
main witness on its patent infringement claims, is almost
entirely conclusory in nature. (R. 187, Remijnse Decl.) Instead
of describing how the accused devices infringe each claim of
PFE's patents. Remijnse simply recites the patent claim language
and states that the accused devices incorporate those claim
criteria, without explaining how, why, or in what way. (Id.)
These general and conclusory statements, standing alone, do not
establish patent infringement by a preponderance of the evidence.
Given Remijnse's limited exposure to the patents in dispute and
his conclusory testimony, his testimony on the meaning or scope
and infringement of the patents is entitled to limited weight.
10. At trial, the Court sustained PFE's objection to Remijnse's
reference to his September 6 and 7, 2005 inspection of the
Minimailer 4 Plus and Maximailer because that testimony was ...