December 5, 2000, this Court construed "electronic
multi-function card" to mean "[a] device having the width and
outer dimensions of a standard credit card with an embedded
electronic circuit allowing for the conversion of the card to
the form and function of at least two different single-purpose
cards." Id. at 1043. The Court arrived at its construction in
part by reviewing all the intrinsic evidence as well as some
extrinsic evidence, including existing protocols establishing a
standardized size for credit cards and check cards, as well as
the patentee's deposition testimony and his application for a
German patent. Id. at 1041-43. The Court concluded that the
EMFC must be the size of a standard credit card if it is to
serve as a substitute for a plurality of cards that includes
check cards and credit cards, a purpose repeatedly alluded to
throughout the '311 patent. See id. at 1040-41.
The accused devices, the Palm VII and Palm VIIx, "are used
primarily for storing and organizing personal information,"
which may include information contained on items such as credit
cards, customer cards, identity cards, documents, etc. (Def.
Mot. at 2-3.) Palm's devices have a width of 3.25 inches, a
height of 5.25 inches, and a thickness of 0.75 inches. Id. at
6-7. A standard credit card has "a length of 3.375 inches, a
height of 2.2125 inches, and a thickness of 0.030 inches." See
E-Pass Techs., 177 F. Supp.2d at 1042.
B. Legal Standard
The Federal Rules of Civil Procedure provide for summary
judgment 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 party is entitled to a judgment
as a matter of law." Fed.R.Civ.P. 56(e).
Summary judgment is a procedural matter not unique to patent
law, and must therefore be decided by applying the law of the
relevant regional circuit. See Transmatic, Inc. v. Gulton
Indus., Inc., 53 F.3d 1270, 1278 (Fed.Cir. 1995). Once "the
party moving for summary judgment meets its initial burden of
identifying for the court those portions of the materials on
file that it believes demonstrate the absence of any genuine
issues of material fact," the burden of production then shifts
so that "the nonmoving party must set forth, by affidavit or as
otherwise provided in Rule 56, `specific facts showing that
there is a genuine issue for trial.'" T.W. Elec. Service, Inc.
v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir.
1987) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 106
S.Ct. 2548, 91 L.Ed.2d 265 (1986)).
In judging evidence at the summary judgment stage, the Court
does not make credibility determinations or weigh conflicting
evidence, and draws all inferences in the light most favorable
to the nonmoving party. T.W. Elec. Service, 809 F.2d at 630-31
(citing Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio
Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986));
see also Ting v. United States, 927 F.2d 1504, 1509 (9th Cir.
1991). The party who will have the burden of proof must persuade
the Court that it will have sufficient admissible evidence to
justify going to trial. The standard for judging a motion for
summary judgment is the same standard used to judge a motion for
a directed verdict: "whether the evidence presents a sufficient
disagreement to require submission to a jury or whether it is so
one-sided that one party must prevail as a matter of law."
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106
S.Ct. 2505, 91 L.Ed.2d 202 (1986).
Patent infringement analysis consists of a two-step process.
See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454
In the first step, the court determines the appropriate scope
and meaning of the patent in a process known as claim
construction. Markman v. Westview Instruments Inc.,
517 U.S. 370, 371-73, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The second
step involves comparing the properly interpreted claim to the
accused's device to determine whether infringement exists. See
Markman v. Westview Instruments Inc., 52 F.3d 967 (Fed.Cir.
"[W]hether the properly construed claims read on the accused
device — is a question of fact." Pitney Bowes, Inc. v.
Hewlett-Packard Company, 182 F.3d 1298, 1304 (Fed.Cir. 1999)
(citing Mannesmann Demag Corp. v. Engineered Metal Prods.,
Co., 793 F.2d 1279, 1282 (Fed.Cir. 1986)). "[S]ummary judgment
of non-infringement can only be granted if, after viewing the
alleged facts in the light most favorable to the non-movant,
there is no genuine issue whether the accused device is
encompassed by the claims." Id. (citing Anderson, 477 U.S.
at 255, 106 S.Ct. 2505). Where "the parties do not dispute any
relevant facts regarding the accused product but disagree over
which of two possible meanings of [a claim] is the proper one,
the question of literal infringement collapses to one of claim
construction and is thus amenable to summary judgment."
Athletic Alternatives, Inc. v. Prince Mfg., Inc.,
73 F.3d 1573, 1578 (Fed.Cir. 1996).
"Although whether the properly construed claims cover the
accused device, either literally or under the doctrine of
equivalents, is a question of fact, summary judgment of
noninfringement is appropriate when, drawing all reasonable
inferences in favor of the patentee, no reasonable jury could
find that every limitation of the construed claim exists in the
accused device." GTE Wireless, Inc. v. Qualcomm, Inc.,
188 F. Supp.2d 1201, 1213 (S.D.Cal. 2002) (citing Anderson, 477
U.S. at 248, 106 S.Ct. 2505).
3Com argues that this Court's "credit card size" construction
of the term "multi-function card" renders it impossible for any
reasonable jury to find that 3Com's Palm devices infringe the
'311 patent, either literally or under the doctrine of
equivalents. (Def. Mot. at 14.) E-Pass, too, has moved for
summary judgment, contending that "no jury can conclude that the
Palm devices are not equivalents of the EMFC." (Pl. Mot. at 4.)
E-Pass argues that 3Com's "wallet sized" device "perform[s] the
same function as the EMFC, in the same way as the EMFC, to
achieve the same result as the EMFC." (Pl. Mot. at 4.)
As an initial matter, inasmuch as the accused devises were not
included in the previously filed infringement claims for this
case, E-Pass asserts a right to "amend its infringement chart to
include the Palm V and other Palm devices." (Pl. Mot. at 3).
E-Pass may not reserve a right that it does not have. Local
Rule 37 allows amendment or modification of the disclosed asserted
contentions listed in the claim chart only by order of the
court. This Court will not allow amendment of the claim chart at
this late stage. See Atmel Corp. v. Information Storage Devices
Inc., 1998 WL 775115 (N.D.Cal. 1998) (stating that "the
philosophy behind amending claim charts is decidedly
conservative, and designed to prevent the `shifting sands'
approach to claim construction.") In any event, even if E-Pass
were permitted to add other Palm devices to its claim chart, for
the reasons articulated in Sections II A & B of this Order,
there would still be no infringement.
A. Literal Infringement of the '311 Patent.
Literal infringement of a claim requires that "every
limitation recited in the
claim appear in the accused device," Amhil Enters., Ltd. v.
Wawa, Inc., 81 F.3d 1554, 1562 (Fed.Cir. 1996). "If even one
limitation is missing or not met as claimed, there is no literal
infringement." Mas-Hamilton Group v. LaGard, Inc.,
156 F.3d 1206, 1211 (Fed.Cir. 1998).
In the December 5, 2001 claim construction order, this Court
construed the EMFC in the '311 patent as "a device having the
width and outer dimensions of a standard credit card." E-Pass
Techs., Inc., 177 F. Supp.2d at 1043. In order for 3Com to have
literally infringed E-Pass' patent, all the patent
specifications, including the credit card size structural
limitation, must read "exactly" on 3Com's devices. See
Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579
(Fed. Cir. 1995) (citing Becton Dickinson & Co. v. C.R. Bard,
Inc., 922 F.2d 792, 796 (Fed.Cir. 1990)).
There is no question that the Court's "size" limitation does
not literally read onto 3Com's Palm devices. In fact, E-Pass
unequivocally concedes that the EMFC and the accused Palm
devices differ in size. (Pl. Mot. at 3.) Palm's accused devices
have a width of 3.25 inches, a height of 5.25 inches, and a
thickness of 0.75 inches. (Def. Mot. at 6-7.) Standard credit
cards, on the other hand, have "a length of 3.375 inches, a
height of 2.2125 inches, and a thickness of 0.030 inches (with
tolerances of -0.003 inches)." E-Pass Techs., 177 F. Supp.2d
at 1042. The accused devices have "a volume 58 times larger, and
a thickness 25 times greater than a credit card." (Def. Mot. at
The Court finds that because the accused devices do not meet
the credit card size limitation, there is no genuine issue of
material fact remaining, and no reasonable jury could find that
3Com's devices literally infringe the '311 patent.
B. Infringement of the 311 Patent Under the Doctrine of
"An accused product that does not literally infringe may
infringe under the doctrine of equivalents if `it performs
substantially the same function in substantially the same way to
obtain the same result.'" Southwall Techs., 54 F.3d at 1579
(quoting Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,