The opinion of the court was delivered by: Jensen, District Judge.
Defendant 3Com, Inc. ("3Com") has moved for summary judgment
for literal non-infringement of the '311 patent, owned by
plaintiff E-Pass Technologies, Inc. ("EPass"). The parties filed
cross-motions for summary judgment on the issue of infringement
under the doctrine of equivalents. Having considered the papers
submitted, the record in this case, and the applicable law, the
Court hereby DENIES plaintiffs motion and GRANTS defendant's
A. Factual Background and Procedural History
This is a patent infringement case involving a single patent
covering a system for simplifying the use of various cards, such
as credit cards, check cards, and identity cards. U.S. Patent
No. 5,276,311 (the "'311 patent"), entitled "Method and Device
for Simplifying the Use of a Plurality of Credit Cards, or the
Like," describes a method and device for storing information
from various individual cards in a single electronic
multi-function card (the "EMFC"), allowing the user the
convenience of having to carry only the single multi-function
card on her person. All data stored is protected by a security
code and can only be recalled by the user with the previously
identified personal code when any particular stored card is
required for a transaction.
The '311 patent describes "[p]articular advantages . . .
provided by the simple form of the electronic multi-function
card which has the outer dimensions of usual credit or check
cards. . . ." ('996 patent, col. 3, lns. 17-21). First, the EMFC
serves the purpose of convenience by "simplifying the use of a
plurality of credit cards, check cards, customer cards, or the
like. . . ." (Id., Abstract.) "[T]he user only needs, and is
required to carry about, a single card. . . ." (Id., col. 1,
lns. 64-66.) Thus, the EMFC substitutes for the "plurality of
special or single purpose cards" carried about; data shows that
the average American citizen carries approximately 16 cards.
(Id., col. 1, lns. 31-37.) Second, the EMFC can be easily
converted "into a specific card. . . ." (Id., col. 2, lns.
14-21.) Technologically, it is easily possible to "accommodate
even very extensive electronic storages in a card-like very flat
housing. . . ." (Id., col. 2, lns. 22-25.) Third, the EMFC
incorporates safety features that "guarantee that there will not
exist any risk of abusive use or forgery in case of loss. . . ."
(Id., col. 1, lns. 65-68.)
In the Markman hearing, all parties agreed that the size of
the card was a central issue requiring claim construction by the
Court. See E-Pass Techs., Inc. v. 3Com, Inc., 177 F. Supp.2d 1033,
1039-40 (N.D.Cal. 2001). E-Pass argued that the EMFC's
size should be construed as "pocket sized." E-Pass Techs.
177 F. Supp.2d at 1040. 3Com, on the other hand, construed EMFC to
mean "a flat piece of plastic having the outer dimensions of a
usual credit card. . . ." Id. On
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.
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).
"[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 ...