The party moving for summary judgment bears the initial burden of
identifying those portions of the pleadings, discovery, and affidavits
which demonstrate the absence of a genuine issue of material fact. See
id. at 323, 106 S.Ct. 2548. Where the moving party will have the burden
of proof on an issue at trial, it must affirmatively demonstrate that no
reasonable trier of fact could find other than for the moving party. See
id. Once the moving party meets this initial burden, the non-moving party
must go beyond the pleadings and by its own evidence "set forth specific
facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56
(e). The non-moving party must "identify with reasonable particularity
the evidence that precludes summary judgment." Keenan v. Allan,
91 F.3d 1275, 1279 (9th Cir. 1996) (quoting Richards v. Combined Ins.
Co., 55 F.3d 247, 251 (7th Cir. 1995), and noting that it is not a
district court's task to "scour the record in search of a genuine issue
of triable fact"). If the non-moving party fails to make this showing,
the moving party is entitled to judgment as a matter of law. See
Celotex, 477 U.S. at 323, 106 S.Ct. 2548.
II. INFRINGEMENT ANALYSIS
A patentee may show infringement either by showing that an accused
product literally infringes a claim in the patent or that the product
infringes under the doctrine of equivalents. See Southwall Techs., Inc.
v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed.Cir. 1995) (noting that an
"accused product that does not literally infringe a claim may infringe
under the doctrine of equivalents . . . "). Whether an accused product
infringes is ordinarily an issue of fact for the jury. See id. at 1575
(noting that both literal infringement and infringement under the
doctrine of equivalents are factual issues).
A. Literal Infringement
To determine whether an accused device literally infringes a patent
right, the Court must perform a two-step analysis: first it must construe
the claims to determine their meaning and scope, and second, it must
compare the claims as construed to the accused device. See id. ("In the
second step, the trier of fact determines whether the claims as thus
construed read on the accused product."). The Court completed the first
step in its Claims Construction Order, and now must compare the claims as
interpreted to defendants' dongles. To establish literal infringement,
"every limitation set forth in a claim must be found in an accused
product, exactly." Id.; see also Mas-Hamilton Group v. LaGard, Inc.,
156 F.3d 1206, 1211 (Fed.Cir. 1998) ("If even one limitation is missing
or not met as claimed, there is no literal infringement").
Defendants contend that its products do not infringe as a matter of law
because they do not include a "pseudorandom number generator device
located in the computer," a limitation of the '353. A "pseudorandom
number generator" ("PRN") is hardware that generates, in a deterministic
fashion, a sequence of numbers that appear to be random. Order at 16.
Assuming defendants' dongles include a PRN, they nonetheless contend that
their devices do not infringe because the dongles (and thus the PRN) are
indisputably not "located in the computer" as is required by the '353.
The Court agrees. Defendants' devices are attached to input/output
ports which in turn are attached to a computer, just like a printer,
monitor or other peripheral. Thus, to the extent defendants' dongles each
contain a PEN, that PEN is not "located in the computer," as the Court
has construed that term. Rather, the dongles, and thus the PEN in the
dongles, are electronically connected to the computer, that is,
electronically connected to the "the CPU and main memory on the CPU's
circuit board, which, taken together, form a part of a dedicated
microcomputer system capable of executing instructions on data."
Plaintiff's expert's conclusion that the dongles are located "on the
CPU circuit board" because the CPU, main memory,
and the dongles are all rigidly affixed to sockets that are "rigidly
affixed to the CPU circuit board" does not create a genuine dispute of
material fact. Plaintiff is simply rearguing his unsuccessful claim
construction position. The Court specifically construed the term
"computer" to exclude peripherals such as the dongles. Order at 16. The
Court also excluded from the term "computer" everything that is
electronically attached to the computer. Id. at 6.
Plaintiff's repeated assertion that the Court construed "located in the
computer" to mean "electronically connected to the computer" grossly
mischaracterizes the Court's Order. Plaintiff's assertion is based on a
phrase found in the following paragraph:
[T]he claim also repeatedly uses the term "located in
the computer," for example, the pseudorandom number
("PRN") generator device is "located in the computer."
If "computer" is interpreted as broadly as plaintiff
urges, "located in the computer" is unnecessary; the
PRN device must be located in the computer, that is,
it has to be connected electronically to the
controller and main memory. Thus, computer as used in
claim 1 cannot simply mean connected electronically to
the controller and main memory.
Order at 5-6 (emphasis added). The Order was unequivocal; computer does
not mean connected electronically to the controller. The purpose of the
paragraph was to explain that if "computer" is interpreted so broadly as
to include everything electronically connected to the microprocessing
system, the phrase "located in the computer" is mere surplusage since the
PRN device must be electronically connected to the microprocessing system
in order for the device to work. Thus, "located in the computer" must
mean something more than simply electronically connected to the
In sum, defendants' dongles, which attach to a computer through
input/output channels, are not "located in the computer" as a matter of
law. Accordingly, defendants' motion for summary judgment of literal
non-infringement must be granted and plaintiff's cross-motion must be
III. THE DOCTRINE OF EQUIVALENTS
Defendants have also moved for summary judgment that their products do
not infringe under the doctrine of equivalents. Under that doctrine, a
product that does not literally infringe a patent claim may still infringe
if each and every limitation of the claim is literally or equivalently
present in the accused device. See Warner-Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) ("In
our view, the particular linguistic framework used is less important than
whether the test is probative of the essential inquiry: Does the accused
product or process contain elements identical or equivalent to each
claimed element of the patented invention?").
Whether an element of an accused product (or the product itself in its
entirety) infringes under the doctrine of equivalents depends in part on
whether that component (and the device overall) performs substantially
the same function as the claimed limitation in substantially the same way
to achieve substantially the same result. See Ethicon Endo-Surgery, Inc.
v. United States Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir. 1998);
Penuwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934-35 (Fed.Cir.
1987) (en banc) ("Under the doctrine of equivalents, infringement may be
found (but not necessarily) if an accused device performs substantially
the same overall function or work, in substantially the same way, to
obtain substantially the same overall result as the claimed
invention."), cert. denied, 485 U.S. 961, 108 S.Ct. 1226, 99 L.Ed.2d 426
(1988). If the differences between a claim and an accused device are
"insubstantial" to one with ordinary skill in the art, the product
may infringe under the doctrine of equivalents. See Ethicon, 149 F.3d at
1315; Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423
(Fed.Cir. 1997). The doctrine prevents an accused infringer from avoiding
infringement by changing minor details of a claimed invention while
retaining its essential functionality. See id. at 1424.
As with literal infringement, infringement under the doctrine of
equivalents is a question of fact for the jury, so summary judgment is
only appropriate where no reasonable jury could determine that two
elements are equivalent. See Sage, 126 F.3d at 1424-26. Also, defendants
need only show that the accused devices do not contain one of the
limitations in the '353 patent; if the dongles lack an equivalent to the
'353's limitation that the PRN device be located in the computer,
defendants' devices do not infringe.
Defendants contend that no reasonable jury could find that its devices
contain the equivalent to a "PRN device located in the computer." They
also argue that plaintiff is barred from asserting infringement under the
doctrine of equivalents based on prosecution history estoppel and the
Federal Circuit's recent opinion in Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., Ltd., 234 F.3d 558 (Fed.Cir. 2000) (en banc). While Festo
was decided after plaintiff filed his opposition to defendants' motion
for summary judgment and his own cross-motion for summary judgment, he
had an opportunity to address its applicability to his case in his reply
memorandum in support of his cross-motion for summary judgment.
A. The Festo Test
In Festo, the Federal Circuit created a new test for when an amendment
to a patent application bars a patentee from asserting infringement under
the doctrine of equivalents for the amended claim limitations. Festo
establishes a four-part inquiry. Id. at 570. First, a district court must
determine which claim limitations are alleged to be met by equivalents.
Id. Second, the court must ascertain whether those limitations were
amended during prosecution of the patent. If some of the relevant
limitations were not amended, the patentee may assert infringement under
the doctrine of equivalents for those unaltered limitations. Id.
Third, for the claim limitations that were amended, the court must
consider whether the amendments "narrowed the literal scope of the
claim." Id. If an amendment did not narrow the literal scope of a
limitation, the patentee may still assert infringement under the doctrine
of equivalents for that limitation. Fourth, if an amendment did narrow
the literal scope of a claim, then the patentee bears the burden of
establishing — through the prosecution history itself and not
through extrinsic evidence — that the amendment was unrelated to
one of the statutory requirements for patentability. Id. at 564, 570. If
the patentee can demonstrate that the amendment was unrelated to
patentability, the amendment does not create prosecution history estoppel
and the patentee may still assert infringement under the doctrine of
equivalents. Id. at 586. However, if the amendment was related to
patentability or the patentee is unable to explain the reason for the
amendment by citing the prosecution history alone, then amendment-based
estoppel applies and application of the doctrine of equivalents is
completely barred. As a result, no range of equivalents is available for
the amended claim limitation, and the patentee can only establish
infringement if the literal terms of the limitation read on the accused
device. Id. at 570.
B. The Prosecution History of The '353
Plaintiff's original application, filed in 1981, did not include the
limitation "located in the computer." On August 16, 1984, the PTO
examiner for the third time rejected plaintiff's claims as obvious in
light of the prior art. For the first time the PTO examiner referenced as
prior art the
"Thomas patent." In particular, the PTO examiner stated that the Thomas
patent is "all but identical" to plaintiff's claimed invention. The
Thomas patent in fact described a "`security device which must be
operatively connected to the purchaser's computer.'"
In response to the examiner's rejection, plaintiff significantly
narrowed his claims to include spatial limitations, including the
limitation that the PRN be "located in the computer." In a written
response, plaintiff specifically distinguished his patent from the Thomas
patent on the ground that the Thomas patent "does not have . . . a
pseudorandom number generator device located in the computer." Id. at 3.
The PTO examiner subsequently renewed his objection based upon the
Thomas patent. Plaintiff reasserted his claims and asked for allowance of
his claims based on the arguments he had previously made, including his
argument that the Thomas patent does not have a PRN located in the
computer. The PTO examiner subsequently allowed the claims as plaintiff
had amended them.
C. Festo Bars Plaintiff's Equivalence Argument
Applying Festo's four-part inquiry to the prosecution history of the
'353 demonstrates that prosecution history estoppel bars plaintiff's
contention that defendants' devices contain an equivalent to the PRN
being located in the computer.
First, the Court must identify the claim limitation alleged to be met
by equivalents; here, it is having the PRN "located in the computer."
Second, the Court must determine whether the limitation was amended. It
is undisputed that the limitation that the PRN is "located in the
computer" was added by amendment; indeed, the limitation did not exist
until after the PTO examiner rejected plaintiff's application in light of
the Thomas patent.
Third, the Court must determine whether the amendment narrowed the
scope of the literal claim. Prior to the amendment, plaintiff's
application included six claims. Four of the six claims described an
invention with a PRN without any limitation as to where the PRN was
located. One claim referred to a PRN "at the data processing center."
After the PTO examiner rejected all six of plaintiff's claims as obvious
in light of Thomas, plaintiff canceled his six claims and submitted, as
an amendment to his application, a new claim which for the first time
referred to a PRN located in the computer. The amendment thus narrowed
the scope of plaintiff's claim. Accordingly, the burden is on plaintiff
to show — based on prosecution history and not on extrinsic
evidence — that his amendment was unrelated to patentability.
Fourth, plaintiff has not and cannot meet his heavy burden. His
response to the PTO examiner's rejection of his application was to
distinguish Thomas on the ground that Thomas does not include a PRN
located in the computer. It is hard to imagine a more clear statement of
an amendment based on patentability.
Plaintiff submits the declaration of the attorney who prosecuted his
patent as evidence that the amendment was unrelated to patentability. The
attorney attests that he added the phrase "located in the computer" to
"clarify" the distinctions between plaintiff's patent and the prior art.
He explains further that the statement — pseudorandom number
generator device located in the computer — "distinguishes the prior
art from the Pickholtz patent."
The attorney's declaration does not create a genuine dispute for
several reasons. First, it is inadmissible under Festo. Under Festo, the
plaintiff must prove that the amendment was made for reasons unrelated to
patentability based on prosecution history, that is, the information
available to the public. Plaintiff's attorney's declaration, made more
than 15 years after plaintiff amended his claims, is not part of the
Second, the attorney attests that he was merely clarifying that the
terms as originally
drafted were intended to mean PRN located in the computer. This is an
admission that the claims as originally drafted did not limit the PRN to
being located in the computer; if it did there would be no need for a
clarification. Moreover, it is also an admission that the amendment was
related to patentability since the second paragraph of section 112
requires that the claims distinctively define the invention. In other
words, the amendment narrowed the claim as originally drafted, even if
plaintiff subjectively believed that the original claim was identical to
the amended claim.
Third, the attorney admits that the clarification was necessary to
distinguish the prior art. Thus, the amendment — what the attorney
refers to as a clarification — was, according to plaintiff's own
witness, done for reasons of patentability. Thus, under Festo (and,
indeed, under the prior law) the amendment is a complete bar to the
assertion of the doctrine of equivalence.
Plaintiff also points to the prosecution history as evidence that the
real distinction he was making between Thomas and his invention was that
his invention has a PRN in a sealed casing and Thomas did not; the
location of the PRN was irrelevant. This argument is contradicted by the
prosecution history. Plaintiff distinguished his invention from Thomas on
the ground that his invention describes a device with a PRN located in a
computer. He also separately distinguished his invention on the ground
that it has a PRN in a sealed casing. Thus, the prosecution history does
not support plaintiff's assertion that he did not distinguish his patent
on the ground it describes a device with a PRN located in the computer.
Moreover, if plaintiff's amendment of the "located in the computer"
language was meaningless, there is nothing in the prosecution history
that explains why the language was included. Under Festo, this lack of an
explanation operates as a complete bar to application of the doctrine of
equivalents. Id. at 569. of course, plaintiff's inadmissible extrinsic
evidence gives an explanation; the amendment was for reasons of
No rational jury could find that the accused products infringe the '353
literally or under the doctrine of equivalents. Accordingly, defendants'
motion for summary judgment is GRANTED and plaintiff's cross-motion for
summary judgment is DENIED.
IT IS SO ORDERED.
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