United States District Court, D. Delaware
ST. CLAIR INTELLECTUAL PROPERTY CONSULTANTS, INC., Plaintiff,
TOSHIBA CORPORATION, et al., Defendants.
LEONARD P. STARK, District Judge.
Pending before the Court are Defendants' Toshiba Corporation, Toshiba America Information Systems, Inc., and Toshiba America, Inc.'s (collectively, "Toshiba") (1) Motion for Summary Judgment of Non-Infringement of U.S. Patent Nos. 5, 630, 163 and 5, 613, 130 (D.I. 631), and (2) Motion for Spoliation Sanctions against St. Clair Intellectual Property Consultants, Inc. ("St. Clair") (D.I. 641). For the reasons discussed below, the Court will deny the motions.
This is a patent infringement action originally brought by St. Clair against Toshiba and several other defendants in 2009. Of the original seven patents-in-suit, St. Clair now asserts infringement of only two: U.S. Patent Nos. 5, 613, 130 (the "'130 patent") and 5, 630, 163 (the '"163 patent"). Fact discovery closed on December 16, 2011 and expert discovery closed on April 27, 2012. The Court construed the claims on August 7, 2012. (D.I. 747) The Court heard oral argument on pending motions on March 27, 2013 and August 6, 2014 (D.I. 882, 918), and has ruled on multiple summary judgment and Daubert motions (D.I. 873, 874, 875, 876, 877).
Toshiba and several other defendants filed the motion for summary judgment of non-infringement on May 25, 2012 (D.I. 631), and the motion for spoliation sanctions on May 30, 2012 (D.I. 641). With the exception of Toshiba, all other defendants originally moving for summary judgment and spoliation sanctions against St. Clair have been dismissed. (D.I. 897, 904, 905; see also C.A. 10-282, D.I. 550)
MOTION FOR SUMMARY JUDGMENT
I. Legal Standards
A grant of summary judgment is appropriate only where "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)(2). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 n.10 (1986). If the moving party has carried its burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial.'" Id. at 587 (quoting Fed.R.Civ.P. 56(e)). The Court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). If the Court is able to determine that "there is no genuine issue as to any material fact" and that the movant is entitled to judgment as a matter of law, summary judgment is appropriate. Hill v. City of Scranton, 411 F.3d 118, 125 (3d Cir. 2005); see also Fed.R.Civ.P. 56(c).
To defeat a motion for summary judgment, the nonmoving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586; see also Podobnikv. US. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (stating that party opposing summary judgment "must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue") (internal quotation marks omitted). Moreover, the "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment;" a factual dispute is genuine only where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (entry of summary judgment is mandated "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial").
Toshiba moves for summary judgment of non-infringement of the '130 and '163 patents. For the reasons discussed below, Toshiba's motion for summary judgment is denied.
A. '130 Patent
Toshiba contends that the accused products do not infringe the '130 patent because they are not sold with pluggable cards inserted into the systems. (D.1. 632 at 9) Toshiba further argues that even if pluggable cards were sold in the system, the accused products use ExpressCards, which are fundamentally different from the claimed use of the PCMCIA standard. ( Id. at 9-10) For example, ExpressCards use different voltages, whereas the PCMCIA standard selects a card's voltage. ( Id. at 10-11) Therefore, Toshiba argues, the accused products do not meet the pluggable claim limitations, nor do they meet the power switching means associated with the PCMCIA standard claim limitation.
St. Clair counters with the opinion of Edmund Ku in support of its position that the claimed pluggable card element is met in the accused products. (D.I. 777 at 9) Mr. Ku testified in his deposition that it is possible that a system infringes even if it does not have a card, as long as it is able to receive a card. (D.I. 777 ex. 1 at 82-83) Mr. Ku also stated that a person of ordinary skill in the art would understand that the '130 patent requires that a ...