United States District Court, D. Delaware
G. Connolly III, Ryan P. Newell, and Kyle Evans Gay, CONNOLLY
GALLAGHER LLP, Wilmington, DE; Jeffrey S. Standley, James Lee
Kwak (argued), and F. Michael Speed, Jr. (argued), STANDLEY
LAW GROUP LLP, Dublin, OH, attorneys for Plaintiff.
Shaw (argued), Karen E. Keller, David M. Fry, and Nathan R.
Hoeschen, SHAW KELLER LLP, Wilmington, DE; Douglas J. Kline
(argued), Srikanth K. Reddy (argued), and Molly R. Grammel,
GOODWIN PROCTER LLP, Boston, MA; Naomi L. Birbach, GOODWIN
PROCTER LLP, New York, NY; Yuval H. Marcus, Cameron S.
Reuber, Matthew L. Kaufman, and Lori L. Cooper, LEASON ELLIS
LLP, White Plains, NY, attorneys for Defendants.
ANDREWS, U.S. DISTRICT JUDGE
pending before the Court are Plaintiffs Motion for Summary
Judgment and Daubert Motion (D.I. 207) and Defendants'
Motion for Partial Summary Judgment and Daubert Motion. (D.I.
202). The parties have fully briefed the issues. (D.I. 203,
212, 239, 240, 247, 252). I heard helpful oral argument on
August 22, 2019. (Hr'g Tr.).
Manufacturing Resources International, Inc. filed suit
against Defendants Civiq Holdings, Civiq Smartscapes, Comark
Holdings, and Comark on March 14, 2017 alleging infringement
of seventeen patents. (D.I. 1 ¶ 144). Defendants
counterclaimed. (D.I. 18). Both parties have amended their
claims. (D.I. 84, 101). The parties completed fact discovery
on November 30, 2018 and expert discovery on April 5, 2019.
(D.I. 163). Trial is scheduled to begin on September 9, 2019.
patent claims remaining in the case are claim 1 of U.S.
Patent No. 8, 854, 595 ("the '595 Patent"),
claims 8, 11, and 14-15 of U.S Patent No. 8, 854, 572
("the '572 Patent"), claims 2 and 6 of U.S.
Patent No. 8, 773, 633 ("the '633 patent"),
claim 18 of U.S. Patent No. 9, 629, 287 ("the '287
patent"), and claims 1 and 2 of the U.S. Patent No. 9,
173, 325 ("the '325 patent"). (D.I. 212 at 3;
has now moved for summary judgment of (1) direct infringement
of claim 1 of the '595 patent, claims 2 and 6 of the
'633 patent, and claims 1 and 2 of the '325 patent;
(2) induced infringement of claims 8, 11, and 14-15 of the
'572 patent; (3) no inequitable conduct; and (4) on
Defendants' Lanham Act and Delaware Deceptive Trade
Practice counterclaims. (D.I. 212 at 2- 3). Defendants have
moved for partial summary judgment of (1) noninfringement of
the '325 patent; (2) invalidity for lack of written
description for the '287 patent claims; and (3) no
pre-suit damages for any of the asserted patents. (D.I. 203
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.
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.
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, Ml U.S.
at 247-49. 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.
Infringement of the'325 Patent
parties have both moved for summary judgment on infringement
of claims 1-2 of the '325 patent. (D.I. 203 at 8; D.I.
212 at 24). The parties agree that there is no dispute of
material fact as to how the Accused Link Kiosk operates for
the purposes of determining infringement of claims 1 and 2 of
the '325 patent. (D.I. 203 at 9; D.I. 212 at 26).
However, the parties dispute whether the following claim
limitation is met: "a circulating fan assembly
positioned to force circulating gas through the first gaseous
loop, second gaseous loop, and heat exchanger." (D.I.
212 at 25). The parties' central dispute appears to be
the scope of the claim term "circulating fan
assembly." (D.I. 203 at 8; D.I. 212 at 25; D.I. 239 at
17). The term "circulating fan assembly" was not
identified in the parties' claim construction briefing,
and therefore has not yet been construed. (D.I. 94-1; D.I.
124). Thus, I must construe the claim term before the
question of infringement can be resolved. 02 Micro
Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521
F.3d 1351, 1360 (Fed. Cir. 2008) ("When the parties
raise an actual dispute regarding the proper scope of these
claims, the court, not the jury, must resolve that
is a bedrock principle of patent law that the claims of a
patent define the invention to which the patentee is entitled
the right to exclude." Phillips v. AWE Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal
quotation marks omitted). '"[T]here is no magic
formula or catechism for conducting claim construction.'
Instead, the court is free to attach the appropriate weight
to appropriate sources 'in light of the statutes and
policies that inform patent law.'" SoftView LLC
v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4,
2013) (quoting Phillips, 415 F.3d at 1324)
(alteration in original). When construing patent claims, a
court considers the literal language of the claim, the patent
specification, and the prosecution history. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed.
Cir. 1995) (en banc), aff'd, 517 U.S. 370
(1996). Of these sources, "the specification is always
highly relevant to the claim construction analysis. Usually,
it is dispositive; it is the single best guide to the meaning
of a disputed term." Phillips, 415F.3dat 1315
(internal quotation marks omitted).
words of a claim are generally given their ordinary and
customary meaning. . . . [Which is] the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the
effective filing date of the patent application."
Id. at 1312-13 (citations and internal quotation
marks omitted). "[T]he ordinary meaning of a claim term
is its meaning to [an] ordinary artisan after reading the
entire patent." Id. at 1321 (internal quotation
marks omitted). "In some cases, the ordinary meaning of
claim language as understood by a person of skill in the art
may be readily apparent even to lay judges, and claim
construction in such cases involves little more than the
application of the widely accepted meaning of commonly
understood words." Id. at 1314.
court relies solely upon the intrinsic evidence-the patent
claims, the specification, and the prosecution history-the
court's construction is a determination of law. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831,
841 (2015). The court may also make factual findings based
upon consideration of extrinsic evidence, which
"consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips,
415 F.3d at 1317-19 (internal quotation marks omitted).
Extrinsic evidence may assist the court in understanding the
underlying technology, the meaning of terms to one skilled in
the art, and how the invention works. Id. Extrinsic
evidence, however, is less reliable and less useful in claim
construction than the patent and its prosecution history.
claim construction is persuasive, not because it follows a
certain rule, but because it defines terms in the context of
the whole patent." Renishaw PLC v. Marposs
Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998). It follows that "a claim interpretation that
would exclude the inventor's device is rarely the correct
interpretation." Osram GMBH v. Int'l Trade Comm
'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation
and internal quotation marks omitted).
of the '325 patent reads as follows:
1. An electronic display assembly comprising:
a first and second electronic image assembly where the two
image assemblies are positioned back to back;
a first closed gaseous loop encircling the first image
a second closed gaseous loop encircling the second image
a heat exchanger placed within the path of both the first and
second closed gaseous loops;
a circulating fan assembly positioned to force
circulating gas through the first gaseous loop, second
gaseous loop, and heat exchanger; and
an open loop fan which forces ambient air through the heat
wherein the ambient air is not permitted to mix with the
('325 patent, cl. 1 (disputed term italicized)).
asserts that the plain and ordinary meaning of the claim term
"circulating fan assembly" may read on an apparatus
where one or more "circulating fan assemblies]" are
required to circulate gas through the two loops and the heat
exchanger. (D.I. 212 at 25). Alternatively, Plaintiff argues
that the term "assembly" is sufficiently broad to
cover subassemblies that are electrically connected and
commonly controlled. (Id. at 26). Defendants assert
that the "circulating fan assembly" must force the
gas through a single unitary pathway that is defined by
"the first gaseous loop, second gaseous loop, and heat
exchanger." (D.I. 203 at 8-9; D.I. 239 at 18-20).
Plaintiff is incorrect that the combination of a
"comprising" claim and the use of the indefinite
article "a" or "an" broadens the scope of
the term "circulating fan assembly." Thus, the use of
"comprising" can not abrogate the requirement that
there must be at least one "circulating fan
assembly" that is "positioned to force circulating
gas through" each of "the first gaseous loop, [the]
second gaseous loop, and [the] heat exchanger." See
Spectrum Int'l Inc. v. Sterilite Corp., 164 F.3d
1372, 1380 (Fed. Cir. 1998); Outside the Box Innovations,
LLC v. Travel Caddt, Inc., 695 F.3d 1285, 1305 (Fed.
Plaintiff asserts that "assembly" is sufficiently
broad to encompass subassemblies that are electrically
connected and commonly controlled. (D.I. 212 at 26). The
specification repeatedly uses the term "assembly"
in accordance with its ordinary meaning, "a unit
consisting of components that have been fitted
together." ('325 patent, col. 3-9);
Assembly, Oxford Dictionary Online (August 26,
2019). Thus, the term "circulating fan assembly"
should be interpreted broadly to mean "a collection of
connected fans that are operable together" and meet the
remainder of the claim limitation.
assert that the claim term should be read to require the
"circulating fan assembly" to be positioned to
force gas through a single unitary pathway defined by
"the first gaseous loop, second gaseous loop, and heat
exchanger." To support this claim construction,
Defendants point to the figures in the patent. (Hr'g Tr.
at 75:12-76:21). However, the figures are merely exemplary
embodiments and should not be interpreted to limit the
explicit claim language. The claim language refers to two
closed loop paths. ('325 patent, cl. 1; id. at
col. 4:56-59; col. 7:32-39). Additionally, claim 6 of the
'325 patent claims a singular "closed loop of
circulating gas which encircles both the first and second
electronic image assemblies" (id., cl. 6); this
further indicates that the language of claim 1 requires two
individual closed loops, rather than a single
unitary path. Thus, the "circulating fan assembly"
must circulate gas through the first gaseous loop, second
gaseous loop, and heat exchanger, but the claim language does
not require that the first and second loops be connected, nor
that all of the circulating gas enter all three elements.
Defendants' interpretation also improperly narrows the
meaning of "circulating fan assembly" to
"circulating fan." It is the fan assembly
that must be "positioned to force circulating gas
through the first gaseous loop, second gaseous loop, and heat
exchanger," not each single fan within the assembly. The
specification also makes clear that the positioning and
orientation of the various loops and fan assemblies are
flexible. ('325 patent, col. 3:38-44, col. 5:8-3, 49-54,
col. 8:63-9:5). Defendants' interpretation of the claim
language would constrain the positioning and orientation of
the circulating fan assembly in a way that is contrary to
this broad language in the specification.
will construe the claim limitation "circulating fan
assembly positioned to force circulating gas through the
first gaseous loop, second gaseous loop, and heat
exchanger" consistent with the plain and ordinary
meaning of the claim language, that is "a collection of
connected fans that are operable together, positioned to
circulate gas ...