Kelly E. Farnan, Esq. (argued), Richards, Layton & Finger, Wilmington, DE; Chad M. Shandler, Esq., Richards, Layton & Finger, Wilmington, DE; Jason J. Rawnsley, Esq., Richards, Layton & Finger, Wilmington, DE, attorneys for Plaintiff.
Pilar G. Kraman, Esq., Young Conaway Stargatt & Taylor, LLP, Wilmington, DE; John P. Moy, Esq. (argued), Smith, Gambrell & Russell, LLP, Washington, DC, attorneys for Defendant.
RICHARD G. ANDREWS, District Judge.
Presently before the Court are motions for summary judgment submitted by Plaintiff TASER International, Inc. (D.I. 132) and related briefing (D.I. 133, 139, 162), and by Defendant Karbon Arms, LLC (D.I. 130) and related briefing (D.I. 131, 137, 163). The Court has heard helpful oral argument on both motions. (D.I. 171).
This is a patent infringement action. Plaintiff TASER International, Inc. ("TASER") alleges that Defendant Karbon Arms, LLC ("Karbon" or "Karbon Arms") infringes U.S. Patent No. 6, 999, 295 ("the '295 patent"), U.S. Patent No. 7, 782, 592 ("the '592 patent"), and U.S. Patent No. 7, 800, 885 ("the '885 patent"). (D.I. 5, 28). Currently, TASER is asserting claim 2 of the '295 patent, claims 1, 9-11, and 40-41 of the '592 patent, and claims 7-10, 12, 15, and 18-37 of the '885 patent. (D.I. 131-5 Ex. D). Karbon alleges that the pending claims are invalid. (D.I. 8).
II. LEGAL STANDARD
"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED.R.CIV.P. 56(a). The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317, 330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a dispute about a material fact is genuine' if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323.
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986); Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence... of a genuine dispute...." FED. R. CIV. P. 56(c)(1).
When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49; see Matsushita Elec. Indus. Co., 475 U.S. at 586-87 ("Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no genuine issue for trial.'"). If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp., 477 U.S. at 322.
There are numerous infringement and non-infringement arguments contained in the briefs. They can be broken down into the following. First, TASER asserts that the Karbon Arms MPID infringes the '295 and '592 patents. (D.I. 133 at 5-7). Karbon replies that these claims cannot be infringed because the MPID is a single mode device. (D.I. 139 at 2). Second, TASER asserts that the Karbon Arms MPID infringes the '885 patent. (D.I. 133 at 8-12). Karbon replies that TASER cannot prove infringement because TASER has not met its evidentiary burden. (D.I. 139 at 9). Third, TASER asserts that Karbon is estopped from challenging the validity of the '295 patent because Stinger, a predecessor of Karbon Arms, agreed to a stipulated judgment of infringement which included a finding that claim 2 of the '295 patent is valid and enforceable. (D.I. 133 at 14). Lastly, TASER asserts that Karbon Arms has failed to make a prima facie case of obviousness because the Frus reference is not analogous art. (D.I. 133 at 15).
A. Whether the Karbon MPID Infringes Claim 2 of the '295 Patent and Claims 1, 9-11, and 40-41 of the '592 Patent is a Question for the Jury.
Karbon has two primary arguments in support of its non-infringement position. The first is that the Karbon MPID is a single mode device, and therefore cannot infringe. (D.I. 131 at 5-9). The second argument is that TASER is estopped from asserting that flyback pulses, such as those used by the Karbon MPID, can constitute two different modes. (D.I. 131 at 9-12).
Before delving into the merits of these arguments, a bit of background is in order. TASER and Karbon both manufacture electronic control devices ("ECDs"), which are designed to incapacitate a subject for a period of time by delivering a sequence of high voltage pulses in order to stun the subject or cause involuntary muscle contractions. ECDs deliver current through electrodes on the weapon or through darts fired from the weapon that remain tethered via wire. A common problem that projectile ECDs encounter is that most subjects wear clothing. When the darts strike the subject, they may lodge in the subject's clothing, which creates an air gap in the electrical circuit created by the darts and the subject's skin. Because air is not a good conductor, a very high voltage is required to bridge the air gap.
When the air gap is bridged by the initial application of current, the air itself becomes ionized. Because ionized air, also referred to as plasma, is a much better conductor than air, current can flow across the gap at a reduced voltage. This phenomenon of voltage drop after ionization is referred to as flyback. The problem with air gaps and the associated ionization and flyback is that high voltages are necessary to ionize the air gap, but such high voltages are unnecessary, and indeed a waste of limited power during subsequent application of current.
In order to overcome this problem, the '295 patent discloses generating a first high voltage in order to ionize the air gap and subsequently generating a second lower voltage to maintain the current flow. (3:35-45 of '295). A preferred embodiment accomplishes this by using two capacitors, one of which is connected to a voltage multiplier. (Fig. 2 of '295). During flyback operation, the first capacitor, which is connected to the voltage multiplier, discharges the high voltage output, which ionizes the air gap. Subsequently, the device switches to the second capacitor, which directly connects to the electrodes. (6:5-15 of '295). This second type of operation is referred to as direct drive.
In the previous litigation between TASER and Stinger, Karbon's predecessor, the device at issue operated in both flyback and direct drive manners. (D.I. 131 at 7). The Arizona Court held that flyback and direct drive constituted separate modes so as to infringe claim 2 of the '295 patent. Taser ...