The opinion of the court was delivered by: Breyer, District Judge.
This is an action for infringement of Patent No. 5,602,987 (the
"'987"). Now before the Court is plaintiff's motion for partial
summary judgment of defendant's contributory infringement of
Claim 10 of the '987 and defendant's cross-motion for summary
judgment of non-infringement, as well as defendant's motion for
summary judgment of the invalidity of Claim 10 of the '987. After
carefully considering the papers filed by the parties, and having
had the benefit of oral argument on March 17, 2000, plaintiff's
motion for summary judgment of contributory infringement is
GRANTED and defendant's cross-motion is DENIED. Defendant's
motion for summary judgment of invalidity is also DENIED.
The parties are competitors in the flash memory storage card
market, also referred to as a "PC Card." The memory cards are
long-term non-volatile memory for computer systems, such as
desktop computers, palm pilots, and digital cameras.
The '987 is owned by plaintiff Sandisk Corporation ("Sandisk").
The '987 describes a non-volatile computer memory system.
Sandisk's lawsuit alleges that the PC Cards manufactured by
defendant Lexar Media, Inc. ("Lexar") contributorily infringe the
'987.
By order filed March 4, 1999, the Court construed the disputed
claims of the '987. Sandisk subsequently moved for partial
summary judgment on the ground that Lexar's PC Cards
contributorily infringe Claim 10 of the '987 because when a
consumer operates a digital camera with a Lexar PC card, the
consumer "practices" every element of Claim 10. After the Court
continued Sandisk's motion pursuant to Federal Rule of Civil
Procedure 56(f) at Lexar's request, Lexar filed a counter-motion
for a ruling that it does not infringe Claim 10 as a matter of
law. Lexar also filed a motion for summary judgment of the
invalidity of Claim 10. Those three motions are now before the
Court.
Claim 10 of the '987 patent reads as follows*fn1:
A method of operating a computer system including a
processor and a memory system, wherein the memory
system includes an array of non-volatile floating
gate memory cells partitioned into a plurality of
sectors that individually include a distinct group of
said array memory cells that are erasable together as
a unit, comprising:
(b) partitioning the memory cells within the
individual sectors into at least a user data
portion and an overhead portion,
(c) causing the controller, in response to receipt
from the processor of an address in a format
designating at least one magnetic disk sector, to
designate an address of at least one non-volatile
memory sector that corresponds with said at least
one magnetic disk sector,
(d) either writing user data to, or reading user data
from, the user data portion of said at least one
non-volatile memory sector, and
(e) either writing to, or reading from, said overhead
portion of said at least one non-volatile memory
sector, overhead data related either to said at
least one non-volatile memory sector to data stored
in the user data portions of said at least one
non-volatile memory sector.
I. SUMMARY JUDGMENT STANDARD
Summary judgment is proper when "the pleadings, depositions,
answers to interrogatories, and admissions, on file, together
with the affidavits, if any, show that there is no genuine issue
as to any material fact and that the moving party is entitled to
a judgment as a matter of law." Fed. R.Civ.P. 56(c). An issue is
"genuine" only if there is a sufficient evidentiary basis on
which a reasonable fact finder could find for the nonmoving
party, and a dispute is "material" only if it could affect the
outcome of the suit under governing law. See Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248-49, 106 S.Ct. 2505, 91 L.Ed.2d
202 (1986). A principal purpose of the summary judgment procedure
"is to isolate and dispose of factually unsupported claims."
Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548,
91 L.Ed.2d 265 (1986). "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.'" Matsushita Elec.
Ind. Co. v. Zenith Radio, 475 U.S. 574, 587, 106 S.Ct. 1348, 89
L.Ed.2d 538 (1986).
"In considering a motion for summary judgment, the court may
not weigh the evidence or make credibility determinations, and is
required to draw all reasonable inferences in a light most
favorable to the non-moving party." Freeman v. Arpaio,
125 F.3d 732, 735 (9th Cir. 1997). However, an inference may be drawn in
favor of the non-moving party only if the inference is "rational"
or "reasonable" under the governing substantive law. See
Matsushita, 475 U.S. at 588, 106 S.Ct. 1348.
II. CROSS-MOTIONS RE: CONTRIBUTORY INFRINGEMENT
A determination of patent infringement involves a two-step
inquiry: (1) a determination of the meaning and scope of the
asserted claims, and (2) a comparison of the properly construed
claims to the allegedly infringing devices. See Markman v.
Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir. 1995),
aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). If
the accused device does not contain each and every limitation of
the claim, or its equivalent, there can be no infringement. See
Warner Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17,
29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Absence of a single
limitation of a claim is sufficient to avoid infringement of that
claim. See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535
(Fed.Cir. 1991) ("To establish infringement, every limitation set
forth in a patent claim must be found in an accused product or
process exactly or by a substantial equivalent").
While summary judgment of infringement may be appropriate in
certain circumstances, see, e.g., Hay & Forage Indus. v. New
Holland N. Am., 25 F. Supp.2d 1195, 1200 (D.Kan. 1998), the
Federal Circuit has cautioned trial judges to approach a summary
judgment motion of liability of infringement carefully:
Because, however, infringement is itself a fact
issue, a district court must approach a motion for
summary judgment of infringement or non-infringement
with a care proportioned to the likelihood of its
being inappropriate. Though speedy and inexpensive,
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