United States District Court, D. Delaware
before the Court is Defendant's Motion for Partial
Summary Judgment of Non-Infringement (D.I. 417) and related
briefing (D.I. 418, 493, 525). The Court heard oral argument
on April 12, 2017. For the reasons that follow, IT IS HEREBY
ORDERED THAT Defendant's Motion for Summary Judgment
(D.I. 417) is DENIED.
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). When determining whether a genuine issue
of material fact exists, the court must view the evidence in
the light most favorable to the non-moving 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 v. Liberty Lobby, 477 U.S. 242,
patent is infringed when a person "without authority
makes, uses, offers to sell, or sells any patented invention,
within the United States .. . during the term of the patent.
.. ." 35 U.S.C. § 271(a). A two-step analysis is
employed in making an infringement determination.
See Marhnan v. Westview Instruments, Inc.,
52 F.3d 967, 976 (Fed. Cir. 1995) (en banc),
qff'd, 517 U.S. 370 (1996). First, the court
must construe the asserted claims to ascertain their meaning
and scope. See Id. The trier of fact must then
compare the properly construed claims with the accused
infringing product. See Id. at 976. This second step
is a question of fact. See Bai v. L & L Wings,
Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
infringement of a claim exists when every limitation recited
in the claim is found in the accused device." Kahn
v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir.
1998). "If any claim limitation is absent from the
accused device, there is no literal infringement as a matter
of law." Bayer AG v. Elan Pharm. Research
Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). A product
that does not literally infringe a patent claim may still
infringe under the doctrine of equivalents if the differences
between an individual limitation of the claimed invention and
an element of the accused product are insubstantial. See
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.
17, 24 (1997). The patent owner has the burden of proving
infringement and must meet its burden by a preponderance of
the evidence. See SmithKline Diagnostics, Inc. v. Helena
Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988).
accused infringer moves for summary judgment of
non-infringement, such relief may be granted only if at least
one limitation of the claim in question does not read on an
element of the accused product, either literally or under the
doctrine of equivalents. See Chimie v. PPG Indus.,
Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also
TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369
(Fed. Cir. 2002) ("Summary judgment of non infringement
is . . . appropriate where the patent owner's proof is
deficient in meeting an essential part of the legal standard
for infringement, because such failure will render all other
facts immaterial."). Thus, summary judgment of
non-infringement can only be granted if, after viewing the
facts in the light most favorable to the non-movant, there is
no genuine issue as to whether the accused product is covered
by the claims (as construed by the court). See Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304
(Fed. Cir. 1999).
requests summary judgment as to two of Plaintiff s
infringement theories: 1) the Multiple-Stacks infringement
theory; and 2) the Tri-Gate transistor infringement theory.
(D.I. 418 at 5-6).
contends that the Multiple-Stacks infringement theory does
not satisfy at least two claim limitations. (D.I. 418 at 12).
Defendant argues that the "logic block" identified
by Plaintiff in its infringement contentions does not meet
the definition of "logic block" as construed by the
Court. (Id.). The parties offer the conflicting
opinions of their experts as to whether this limitation is
met. (Id. at 13; D.I. 493 at 12). It seems to me
that there is a genuine issue of fact about whether this
limitation is met, so I will deny the motion as to the
"logic block" limitation.
next argues that the accused products do not meet the
"between" limitation under the Multiple-Stacks
infringement theory either literally or under the doctrine of
equivalents. (D.I. 418 at 14). Much of the parties'
briefing on this issue was directed to construction of the
claim limitation "source-to-drain path coupled between
the dynamic logic block output node and the precharge
node." I have construed this term to mean
"positioned such that the only way charge can flow from
the precharge transistor to the logic block is by passing
through the evaluation transistor." (D.I. 636).
Defendant offers testimony from its expert that the accused
products do not literally infringe under this construction
and that the doctrine of equivalents does not apply as it
would "vitiate a claim limitation and expand the scope
of the claims to encompass dynamic logic circuits that
exclude a fundamental feature of the invention." (D.I.
418 at 17). Plaintiff counters with expert testimony that the
accused products infringe this limitation under the doctrine
of equivalents because the accused circuits perform the same
function as the invention in substantially the same way to
achieve substantially the same result. (D.I. 493 at 14-15).
Again, given the competing expert opinions, there appears to
be a genuine dispute of material fact. While I am dubious
about Plaintiffs theory that a circuit having multiple paths
can satisfy the "between" limitation as I have
construed it, even under the doctrine of equivalents, I
cannot say based on the record at this point that a
reasonable fact-finder could not find for Plaintiff on this
further argues that prosecution history estoppel bars the use
of the doctrine of equivalents for the "between"
limitation because the applicant "distinguished the
claimed invention from the prior art based on the positioning
of the evaluation transistor." (D.I. 418 at 19). I am
not persuaded that the statements Defendant cites to in the
prosecution history represent a clear disavowal of the scope
of the claims. For example, Defendant cites to the
applicant's statements made in distinguishing prior art
based on the position of the evaluation transistor relative
to the logic block and precharge transistor. (Id. at
20). The statements cited by Defendant relate only to the
relative positions of theses circuit elements and do not
address the issue of whether the "between"
limitation, i. e., whether the only way charge can
flow is through the evaluation transistor, is met. For these
reasons, I will deny Defendant's motion as to the
Multiple-Stacks infringement theory.
also argues that the accused circuits do not meet the
"plurality of input transistors" limitation under
Plaintiff s Tri-Gate infringement theory. (Id. at
21-22). Under Plaintiffs infringement theory, the single
Tri-Gate transistor found in the accused products is
comprised of "multiple transistors that make up a larger
transistor." (D.I. 493 at 21). Both parties again cite
to statements made by their respective experts to support
their positions. (Id. at 23-25; D.I. 418 at 22-24).
Defendant insists that Plaintiffs expert admitted that the
Tri-Gate transistor is a single transistor. (D.I. 418 at 22).
I do not agree that the expert's statements are so clear.
Plaintiffs expert agreed that the Tri-Gate transistor can be
depicted as a single transistor in circuit diagrams and that
it can be considered to be a single transistor.
(Id.). I do not think this contradicts the
expert's conclusion that the Tri-Gate transistor is made
up of a plurality of ...