The opinion of the court was delivered by: Michael P. McCUSKEY Chief U.S. District Judge
This case is before the court for ruling on the Motion for Summary Judgment (#60) filed by Defendant, Horizon Hobby, Inc. This court has carefully reviewed Defendants' Motion and supporting exhibits, the Response (#68) and supporting exhibits filed by Plaintiff, Ripmax, Ltd., and Defendant's Reply (#83) and supporting exhibits. Following this careful and thorough review, Defendant's Motion for Summary Judgment (#60) is GRANTED in part and DENIED in part.
On March 12, 2007, Plaintiff filed its Complaint (#1) against Defendant in the United States District Court for the District of Connecticut. Plaintiff alleged that it is a United Kingdom company having a principal place of business at 241 Green Street, Enfield, United Kingdom. Plaintiff alleged that Defendant is an Illinois corporation with its principal place of business at 4105 Fieldstone Road, Champaign, Illinois. Plaintiff alleged that it is the owner of United States Patent No. 6,983,128 (the '128 patent), entitled "Radio Control Transmitter and Receiver," which was issued by the United States Patent and Trademark Office (PTO) on January 3, 2006 and assigned to Plaintiff. Plaintiff alleged that Defendant has been and still is infringing one or more claims of the '128 patent by making, using, offering for sale and selling Spektrum DSM products. Plaintiff sought a permanent injunction, damages and attorney's fees. On May 14, 2007, Defendant filed its Answer, Affirmative Defenses, and Counterclaim (#17). In its Counterclaim, Defendant sought a declaratory judgment that the claims of the '128 patent are invalid and are not infringed by Defendant. Defendant also asked that Plaintiff be enjoined from further charges of infringement or acts of enforcement based on the '128 patent against Defendant or its actual or prospective customers, suppliers, and anyone in privity with Defendant. In addition, Defendant asked this court to award it its attorney fees in defending this action. Plaintiff filed its Answer to Counterclaim (#19) on June 4, 2007. On July 9, 2007, the district court in Connecticut granted Defendant's Motion to Transfer Venue. On July 16, 2007, the case was transferred to this court.
On August 24, 2007, Magistrate Judge David G. Bernthal entered a lengthy Stipulated Protective Order (#39) for the protection of confidential information in this case. On September 12, 2007, Judge Bernthal entered a Discovery Order (#48). The Order set deadlines for completing discovery and set the case for a final pretrial conference for January 23, 2009, and a jury trial on February 2, 2009.
On June 10, 2008, Defendant filed a Motion for Summary Judgment (#60) and supporting exhibits. Defendant argued that it is entitled to summary judgment because: (1) it did not infringe the '128 patent; and (2) the '128 patent is invalid. On August 1, 2008, Plaintiff filed a Memorandum in Opposition to Defendant's Motion for Summary Judgment (#68) and supporting exhibits. Because of the Protective Order, some of the exhibits were filed under seal (#69, #70, #71, #72). On August 15, 2008, Defendant filed its Reply to Plaintiff's Response to the Motion for Summary Judgment (#83) and supporting exhibits (#84), which were filed under seal because of the Protective Order.
On September 23, 2008, Judge Bernthal entered an Order (#99) which granted Defendant's Motion for Leave to File a First Amended Answer and Counterclaim. On September 26, 2008, Defendant filed a First Amended Answer, Defenses and Counterclaim (#100). Defendant added, as a defense, an allegation that the "claims of the '128 patent are unenforceable due to inequitable conduct by the inventor(s), the assignee, the prosecuting attorney(s) and/or some combination of them and others substantively involved in prosecution of the application leading to the '128 patent" before the PTO. Defendant alleged that, but for Plaintiff's intentional omissions of information, the PTO would never have issued the '128 patent. Defendant also added a Counterclaim for Declaratory Judgment seeking a declaration that the '128 patent is unenforceable due to Plaintiff's inequitable conduct.
On September 29, 2008, Defendant filed a Second Motion for Summary Judgment (#101). Defendant argued that it is entitled to summary judgment on the issue of non-infringement based on its contention that the '128 patent requires continuous control data and excludes burst mode control data. Defendant stated that this is a second and completely separate basis for requesting summary judgment of non-infringement and noted that this motion "in no way weakens or contradicts the compelling basis" of its first Motion for Summary Judgment. Defendant filed numerous lengthy exhibits in support of its Second Motion, some filed under seal (#102). Defendant also filed, under seal, a Motion for Summary Judgment on the issue of inequitable conduct, with attached exhibits (#103). Plaintiff has not responded to Defendant's newly filed Motions for Summary Judgment. This court will limit its consideration to the original Motion for Summary Judgment (#60).
This court notes that Judge Bernthal has been required to deal with ongoing discovery problems in this case. On September 30, 2008, Judge Bernthal entered an Order (#104) which denied Defendant's Motion to compel and motion for sanctions (#75). Judge Bernthal did, however, direct Plaintiff to complete its discovery responses. Defendant's Motion for Sanctions and Fees (#79) remains pending.
I. MOTION TO FILE SURREPLY
On September 15, 2008, Plaintiff filed a Motion for Leave to File a Surreply to Defendant's Motion for Summary Judgment (#95). Plaintiff argued that it took the deposition of Defendant's retained technical expert, Dr. Thomas Fuja, on August 13, 2008. Plaintiff argued that, during this deposition, Dr. Fuja gave testimony that undermines Defendant's arguments regarding its Motion for Summary Judgment. Plaintiff filed, under seal, a proposed Surreply and excerpts from the deposition of Dr. Fuja (#96).
On September 16, 2008, Defendant filed its Opposition to Plaintiff's Motion for Leave to File a Surreply (#97). Defendant argued that Plaintiff has no basis for filing a surreply because the issues discussed during Dr. Fuja's deposition were previously discussed in Dr. Fuja's reports, which were provided to Plaintiff long before the August 1, 2008, due date for Plaintiff's Response to the Motion for Summary Judgment. Defendant attached, under seal, excerpts from Dr. Fuja's Expert Witness Report and Rebuttal Expert Witness Report (#98).
This court has carefully considered Plaintiff's Motion, Defendant's Opposition and the attached exhibits. Plaintiff has not convinced this court that Dr. Fuja's deposition testimony provides an adequate basis for allowing Plaintiff another opportunity to provide argument to this court. This court notes that Rule 7.1(D) of the Local Rules of the Central District of Illinois does not provide for the filing of a surreply brief. Moreover, "at some point, briefing must end." Archdiocese of Milwaukee v. Underwriters at Lloyd's, London, 955 F. Supp. 1066, 1070 (E.D. Wis. 1997); see also Brunker v. Schwan's Home Serv., Inc., 2006 WL 3827046, at *3 (N.D. Ind. 2006). Accordingly, Plaintiff's Motion for Leave to File a Surreply (#95) is DENIED.
II. SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). In ruling on a motion for summary judgment, a district court has one task and one task only: to decide, based upon the evidence of record, whether there is any material dispute of fact that requires a trial. Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 920 (7th Cir. 1994). In making this determination, the court must construe the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in favor of that party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); Burwell v. Pekin Cmty. High Sch. Dist. 303, 213 F. Supp. 2d 917, 929 (C.D. Ill. 2002). A question of infringement that turns on a claim construction dispute may be resolved as a matter of law and on summary judgment. Johnston v. IVAC Corp., 885 F.2d 1574, 1579-80 (Fed. Cir. 1989). However, the court can resolve the issue on summary judgment only if "no reasonable jury could find that every limitation recited in the properly construed claim is or is not in the accused device." Frank's Casing Crew & Rental Tools, Inc. v. Weatherford Int'l, Inc., 389 F.3d 1370, 1376 (Fed. Cir. 2004). "Stated another way, the absence from the accused product of one limitation in the claim means there is no literal infringement of that claim." Quickie Mfg. Corp. v. Libman Co., 2008 WL 630633, at *2 (C.D. Ill. 2008).
The parties agree that the '128 patent relates to radio control transmitters and receivers for use in model airplanes, cars, boats, and the like by hobbyists. Hobby-based airplanes are remotely operated by an individual on the ground using a radio transmitter to control the plane's operation. The transmitted signals control the various functions of the airplane, including the engine, wing position, and tail flaps, allowing for the remotely controlled flight of the plane. The parties also agree that, in practice, hobbyists often gather in groups at airfields where each individual operates a remotely controlled airplane using radio system equipment that is similar to that being used by other hobbyists. A risk therefore exists that transmitted control signals may be received by a receiver on another, unintended, plane and possibly trigger a crash of the plane, which can cause damage to the plane and also result in injury to individuals. Therefore, it is imperative that each radio control model be operated on a separate frequency so as not to interfere with each other. The '128 patent provides a solution to the problem of interference between two or more radio control systems being used simultaneously in relative proximity.
The Abstract of the '128 patent explains that, in the patented invention, a "radio control receiver is disclosed having data storage containing code unique to the receiver." According to the Abstract, the receiver will scan through multiple channels, looking for a signal containing the correct receiver identifying code. Upon identifying a signal containing the correct code, the receiver will lock onto that channel. By preventing the transmitted signals from controlling more than one receiver, the approach taught by the '128 patent could reduce possible mishaps when more than one airplane is in operation.
The '128 patent has 15 claims, of which only claim 1 is independent. All of the claims of the '128 patent require "a receiver having data storage containing a code unique to the receiver." Claim 1 states:
1. A radio control receiver for receiving, on one of a plurality of radio channels, receiver identifying code and control data in a periodically repeated time frame for operating a plurality of devices in a model in accordance with respective control data on each of a plurality of device channels included within said one radio channel, the receiver having data storage containing a code unique to the receiver, a tuner arranged to scan a plurality of radio channels, and a processor for processing receiver identifying code received on a scanned radio channel with the unique code to determine whether transmissions on the scanned radio channel are intended for the receiver, and said tuner being responsive to an output from the processor indicating either that transmissions on the scanned radio channel are intended for the receiver, for thus causing the tuner to lock onto said scanned radio channel, or that the transmissions on said scanned channel are not intended for the receiver, for thus causing the tuner to tune to another of the plurality of radio channels.
Defendant markets "Spektrum" products which have receivers that incorporate what Defendant refers to as "DSM" and "DSM2" technology. Defendant markets this technology on its webpage as "immune to all types of interference." The webpage also states that "[c]ollision avoidance eliminates the possibility of more than one . . . system from transmitting on the same frequency." The Spektrum products accomplish this by encoding their signals with their "own Globally Unique Identification number (called GUID) such that the receiver only recognizes the information from its specific transmitter." Defendant's product manual describes the manner in which a Spektrum receiver is programmed to recognize the GUID of a single specific transmitter. The manual states: "[b]inding is the process of programming the receiver to recognize the GUID of a single specific transmitter. Binding teaches the receiver the specific GUID of that transmitter, so that the receiver will only listen to the information from its previously bound transmitter and ignores everything else." It is undisputed that, in the Spektrum system, receivers not programmed with the unique transmitter ID do not (and in fact cannot) respond to control signals from that transmitter. Christopher Huhn, Category Manager for all of the radio products at Defendant, testified at his deposition that, in Defendant's products, a receiver cannot function without being bound to a transmitter. In his Declaration, dated June 5, 2008, Huhn stated that "no two transmitters have the same 'GUID'--i.e., each is uniquely identified." Huhn also stated:
The Spektrum receivers, however, do not have a code unique to the receiver. The receivers are initially free of any coding. Before use, a receiver is programmed to operate with a specific transmitter--a process known as "binding." In accordance with this programming arrangement, multiple Spektrum receivers can be "binded" to one Spektrum transmitter. The ...