United States District Court, N.D. California, San Jose Division
September 1, 2004.
Regal Electronics, Inc., Plaintiff(s),
Pulse Engineering, Inc., et al., Defendant(s).
The opinion of the court was delivered by: JAMES WARE, District Judge
ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT BEL FUSE
INC.'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT
This is a patent infringement suit brought by Regal
Electronics, Inc. ("Regal") against Bel Fuse, Inc. ("Bel Fuse")
and others. Regal claims that Bel Fuse's MagJack Series of
Modular Connectors ("MagJack Connectors") infringe U.S. Patent
No. 6,171,152 ("'152 Patent"), which Regal owns. Presently before
this Court is Bel Fuse's Motion for Partial Summary Judgment of
Non-Infringement. This Court held a hearing on August 30, 2004.
Based upon all papers filed to date and the comments of counsel,
this Court GRANTS in part and DENIES in part Bel Fuse's Motion
for Partial Summary Judgment of Non-Infringement.
The technologies at issue in this case are RJ-45 modular
connectors used to transmit data over local area networks
("LANs"). Physically, these connectors resemble the
click-together connectors used to set up telephones. One difference is that RJ-45 modular
connectors are wider, in part, because they contain eight
adjoining wires whereas telephone connectors contain less
adjoining wires. Typically, RJ-45 connectors are mounted near the
outer edge of a computer's motherboard so that they can receive
matching, external RJ-45 plugs.
The '152 Patent contains twelve claims: two independent claims
and ten dependent claims. Claims 1 and 6, the two independent
claims, both claim, inter alia, an RJ-45 style modular
a contact spring assembly of a plurality of wires in
separate circuits that pass forward through said open
back end into the back of said open front end of the
housing, wherein the contact spring assembly includes
a plastic block that supports the plurality of wires
by a right angle turn and is vertically oriented
with respect to the plurality of wires, and wherein
the plastic block inserts and locks into said open
back end of the housing . . .
'152 Patent, Col. 6, ll. 32-40, Col. 7, ll. 15-23 (emphasis
added). The emphasized language is at issue here. Bel Fuse argues
that its MagJack Connectors do not include "a plastic block that
supports the plurality of wires by a right angle turn." Thus, Bel
Fuse argues, it is entitled to a judgment of noninfringement as a
matter of law.
On May 12, 2004, this Court issued its Order Following Claims
Construction Hearing. (Order Following Claims Construction
Hearing ("Claims Construction Order"), Docket No. 90.) In it,
this Court construed the language at issue. This Court found that
the language means: a "plastic block that holds the plurality of
wires by a ninety degree change in direction of the wires."
(Claims Construction Order 19.) For the reasons stated below,
this Court finds that Bel Fuse's MagJack Connectors do not fall
within the literal scope of this meaning. Accordingly, it grants
Bel Fuse partial summary judgment of non-infringement with
respect to literal infringement.
A. Summary Judgment
Summary judgment is proper when there is no genuine issue as to
any material fact and the moving party is entitled to judgment as
a matter of law. FED R. CIV. P. 56(c). The purpose of summary
judgment "is to isolate and dispose of factually unsupported
claims or defenses." Celotex v. Catrett, 477 U.S. 317, 323-24 (1986).
1. No Genuine Issue of Material Fact
The moving party always "bears the initial responsibility of
informing the district court of the basis for its motion, and
identifying those portions of `the pleadings, depositions, answer
to interrogatories, and admissions on file, together with the
affidavits, if any' which it believes demonstrate the absence of
a genuine issue of material fact." Id. at 323. If the moving
party meets this burden, the burden then shifts to the non-moving
party to "designate `specific facts showing that there is a
genuine issue for trial.'" Id. at 324. The non-moving party
cannot defeat the moving party's properly supported motion for
summary judgment simply by alleging some factual dispute between
the parties. To preclude the entry of summary judgment, the
non-moving party must bring forth material facts, i.e., "facts
that might affect the outcome of the suit under the governing
law. . . . Factual disputes that are irrelevant or unnecessary
will not be counted." Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 247-48 (1986). The opposing party "must do more than simply
show that there is some metaphysical doubt as to the material
facts." Matsushita Elec. Indus. Co. v. Zenith Radio,
475 U.S. 574, 586 (1986).
2. Judgment as a Matter of Law
When a movant moves for summary judgment on a matter on which
her opponent bears the burden of persuasion at trial, the movant
may carry its burden by negating an essential element of her
opponent's claim or by showing that her opponent does not have
enough evidence to carry its ultimate burden of persuasion at
trial. Adickes v. S.H. Dress & Co., 398 U.S. 144, 158-60
(1970); Celotex, 477 U.S. at 325. It is the court's
responsibility "to determine whether the . . . facts . . . are
such that a rational or reasonable jury might return a verdict in
its favor based on that evidence." T.W. Elec. Serv. v. Pac.
Elec. Contractors, 809 F.2d 626, 631 (9th Cir. 1997). "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, 475 U.S. at 587. In conducting its
analysis, the court must draw all reasonable inferences in favor
of the non-moving party. Masson v. New Yorker Magazine, Inc.,
501 U.S. 496, 520 (1991) (citing Anderson, 477 U.S. at 255). B. Patent Infringement
Patent infringement analysis involves two steps. First, the
claims must be interpreted to determine their meaning and scope.
Markman v. Westview Instruments, Inc., 52 F.2d 967, 976 (Fed.
Cir. 1995) (en banc). Second, the accused product must be
compared to the properly construed claims. Id. If the accused
product contains every element of a patent claim, or its
substantial equivalent, there is infringement. Lemelson v.
U.S., 752 F.2d 1538, 1551 (Fed. Cir. 1985). Whether a product
infringes the properly construed claim of a patent, literally or
under the doctrine of equivalents, is a question of fact. Tanabe
Seiyaku Co. v. United States Int'l Trade Comm'n, 109 F.3d 726,
731 (Fed. Cir. 1997). Thus, in order to grant summary judgment of
non-infringement, the court must conclude, after resolving
reasonable factual inferences in favor of the patentee, that "no
reasonable jury could find infringement." IMS Tech., Inc. v.
Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000).
A. Bel Fuse's MagJack Connectors Do Not Literally Infringe The
1. There is No Genuine Issue of Material Fact
There is no genuine issue of material fact here. Regal and Bel
Fuse do not dispute the physical structure of Bel Fuse's MagJack
Connectors. In fact, both Regal and Bel Fuse have independently
submitted actual MagJack Connectors, as physical exhibits, to
this Court. They are practically if not completely identical
to each other. (Compare, e.g., Martin & Hess Decl. Ex. 4
with Kunz Decl. Ex. C.) Thus, there is no factual dispute as to
MagJack Connectors' physical structure.
2. Bel Fuse Is Entitled to Judgment as a Matter of Law
The real issue here is whether Bel Fuse is entitled to judgment
as a matter of law. Specifically, the issue is whether Bel Fuse's
MagJack Connectors contain "a plastic block that supports the
plurality of wires by a right angle turn" as claimed by Regal's
'152 Patent. This Court specifically construed this phrase in its
Claims Construction Order. This Court found the phrase to mean:
"a plastic block that holds the plurality of wires by a ninety
degree change in direction of the wires." (Claims Construction Order 19, 21.) Comparing the MagJack
Connector to the '152 Patent's properly construed claims, this
Court can and does find that the MagJack Connectors do not
infringe the '152 Patent as a matter of law. See D.M.I., Inc.
v. Deere & Co., 755 F.2d 1570, 1573 (Fed. Cir. 1985) ("It is . . .
conceivable that comparison of a properly interpreted claim
with a stipulated or uncontested description of an accused device
or process would reflect such an absence of material fact issue
as to warrant summary judgment of . . . noninfringement").
a. A "Plastic Block" that "Supports" the "Plurality of Wires"
The '152 Patent specifically claims an RJ-45 style modular
connector that contains "a plastic block that supports the
plurality of wires. . . ." This Court construed the term "block"
to mean "a firm piece of material having one or more flat sides."
(Claims Construction Order 11.) This Court noted that "a person
of ordinary skill of the art would understand that a `block'
refers to a molded or an unmolded insert body which contains the
signaling conditioning entirely within its body." (Claims
Construction Order 12.) When looking at a MagJack Connector, it
is readily apparent that the black, plastic, roughly L-shaped
casing, which contains the signal conditioning components, is the
"block." (See Raskin & Hess Decl. Ex. 3 (Parts labeled 1 and
11) and Defendant Bel Fuse Inc.'s Motion for Partial Summary
Judgment of Non-Infringement and Memorandum in Support ("Bel
Fuse's Motion") 7 (noting that the Part labeled 11 in Raskin &
Hess Decl. Ex. 3 are "[t]he windings of signal conditioning
components.") Furthermore, when looking at the MagJack
Connector's "plastic block," it is readily apparent that the
"plurality of wires" that it "supports" are the eight wires
labeled as Part 4 in Raskin & Hess Decl. Ex. 3.
However, Regal argues that the phrase "plurality of wires"
encompasses all wires contained within a MagJack Connector.
When one closely examines a MagJack Connector, one notices that,
in addition to the plurality of eight wires (horizontally
oriented), it also contains thinner wires (roughly vertically
oriented) which are part of the signal conditioning components.
These two sets of wires are soldered together. According to
Regal, the phrase "plurality of wires" encompasses the plurality
of eight wires and the thinner wires of the signal conditioning
components. This Court disagrees. Regal's very own Disclosure of Asserted Claims and Preliminary
Infringement Contentions and Documents ("P.I.C.") belies the
argument it now makes. That document betrays Regal's
understanding of the "plurality of wires." In particular, Exhibit
C correlates specific elements of the '152 Patent's claims to
specific parts of the MagJack Connector. Regal clearly
understands the "plurality of wires" to be synonymous with the
"contact spring assembly" because it labels them both as Part "D"
on an accompanying exhibit. (P.I.C. Ex. C) (". . . wherein the
contact spring assembly (D) includes a plastic block (E) that
supports the plurality of wires (D) by a right angle turn and
is vertically oriented with respect to the plurality of wires
(D), . . .") (emphasis added). Exhibits 3, 4, and 5, which
accompany Exhibit C, contain close-up photographs of the MagJack
Connector; on Exhibits 3, 4, and 5, Regal clearly labels as "D"
the same plurality of eight wires labeled as Part 4 in Raskin &
Hess Decl. Ex. 3.
b. "By a Ninety Degree Change in Direction" ("By a Right Angle
Related to the meaning of "plurality of wires" is whether the
MagJack Connector's plastic block holds the plurality of wires
"by a ninety degree change in direction of the wires." (Claims
Construction Order 19, 21.) Or, to use the language of the '152
Patent itself, the issue is whether the MagJack Connector's
plastic block "supports the plurality of wires by a right angle
turn." '152 Patent, col. 6, ll. 36-37, col. 7, ll. 19-20. It does
Plainly, the plurality of eight wires in the MagJack Connector
does not make a ninety degree change in direction. The MagJack
Connector's plurality of wires extends horizontally beyond a
vertical plane and terminates there. The wires do not bend or
turn in any way, shape, or form let alone in a ninety degree
direction. Regal does not dispute this.
Instead, Regal argues that, if one looks closely enough, one
will discover that the MagJack Connector's plurality of eight
wires does, in fact, make a ninety degree turn. Allegedly, the
ninety degree turn is formed between the plurality of eight wires
(horizontally oriented) and the thinner wires of the signal
conditioning components (roughly vertically oriented and soldered
to the plurality of eight wires). (Kunz Decl. 8) ("there would
still be a true right angle at the exact point where the wires change direction" because the "right angle is formed between the
contact portions of the wires and the solder joints that connect
[them]"). However, Regal's argument rests upon a premise that
this Court rejects namely, that the phrase "plurality of wires"
includes the plurality of eight wires and the thinner wires of
the signal conditioning components.*fn1
Moreover, the '152 Patent itself contradicts Regal's theory.
The '152 Patent's claims clearly presume wires that have their
own distinct physical independence. For example, the '152 Patent
claims an RJ-45 connector comprising "a plastic block that
supports the plurality of wires by a right angle turn." '152
Patent, col. 6, ll. 36-37, col. 7, ll. 19-20 (emphasis added).
Under plain and ordinary language, an object "turns" when that
object itself changes direction not when a separate object is
appended to it. This Court's very own claims construction also
presumes physically distinct wires that themselves turn. This
Court construed the disputed claims language to mean: "a plastic
block that holds the plurality of wires by a ninety degree
change in direction of the wires." (Claims Construction Order
19, 21) (emphasis added). In reaching this construction, this
Court observed that "Figures 1-3 [of the '152 Patent] show a
plastic block holding a plurality of wires making a 90 degree
turn towards the circuit board." (Claims Construction Order 20)
(emphasis added). Figures 1, 2, and 3 of the '152 Patent each
depict the plurality of eight wires itself making a 90 degree
turn to connect to the signal conditioning components.*fn2
In this sense, Regal's street analogy is inapt. When
individuals use the word "turn" with respect to streets, it is
usually with respect to persons or objects traveling on those
streets. For example, "the car turned right from Second Street onto San Carlos
Street," or "the pedestrian turned left from Second Street onto
San Carlos Street," or "turn left at the stop light." In all of
these examples, the verb "turn" refers to an object that itself
changes (or is commanded to change) directions. During oral
arguments, Regal suggested that the verb "turn" can be used to
describe an intersection between two streets. After all, Regal
suggested, a street "turns" at an intersection. "Turn" is indeed
an awkward verb to describe a street's action at an intersection
at least under plain and ordinary language. First, the verbs
"intersect" or "cross" are more commonly (and precisely) used to
describe intersections between streets. Second, when the verb
"turn" is used in the context of streets, it is usually used to
describe a change in direction in the street itself. For
example, "Panoramic Way makes a hairpin turn," or "be careful
up ahead because the street makes a sharp turn." Third, to the
extent the verb "turn" can be used to describe a street's action
at an intersection, it is only because the streets appear to be
uniformly constructed. That is, they are all made of black
asphalt and have white and/or yellow lines painted on them. To
the naked eye, there appears to be physical uniformity between
one street and an intersecting street. One could hardly say that
a street "turns" at an intersection where one street is an
asphalt-paved boulevard and the other street is a cobble-stoned
Thus, even if Regal is correct, as a matter of physics, that
right angles are formed between the plurality of eight wires and
the thinner, roughly vertical wires of the signal conditioning
components, as a matter of law, no reasonable jury could find
that either set of wires "turned." In the final analysis, two
wires soldered together is not the same as one wire that turns.
Therefore, Bel Fuse's MagJack Connectors do not literally
infringe the '152 Patent.
B. Bel Fuse Has Failed to Satisfy its Burden for Summary
Judgment of Non-Infringement on Regal's Claim of Infringement
Under the Doctrine of Equivalents
Because the parties' briefs on this motion devote considerable
space to Regal's literal infringement claim, they give relatively
short shrift to Regal's infringement claim under the doctrine of
equivalents. Moreover, there appears to be a dispute over the
legal and procedural standards this Court should use in reviewing
such a motion. Since this is Bel Fuse's motion for partial
summary judgment, Bel Fuse bears the burden of persuading this Court that
there is no genuine issue of material fact and that it is
entitled to judgment as a matter of law. See FED. R. CIV. P.
56(c) and Nissan Fire & Marine Ins. Co., Ltd. v. Fritz Cos.,
Inc., 210 F.3d 1099, 1102 (9th Cir. 2000) ("A moving party
without the ultimate burden of persuasion at trial . . . has both
the initial burden of production and the ultimate burden of
persuasion on a motion for summary judgment"). Based upon the
inadequate briefing, this Court finds that Bel Fuse fails to
satisfy its burden as the movant for summary judgment.
Accordingly, it denies Bel Fuse's Motion for Partial Summary
Judgment of Non-Infringement on Regal's infringement claim under
the doctrine of equivalents. However, the parties are free to
file a separate motion on this issue in order to brief it more
directly and fully.
For the reasons stated above, Bel Fuse's Motion for Partial
Summary Judgment of Non-Infringement is GRANTED with respect to
Regal's claim of literal infringement and DENIED with respect to
Regal's claim of infringement under the doctrine of equivalents.