The opinion of the court was delivered by: SUSAN ILLSTON, District Judge
ORDER DENYING CROSS-MOTIONS FOR SUMMARY JUDGMENT
On September 9, 2005, the Court heard argument on plaintiff's
motion for summary adjudication of infringement of U.S. Patent
No. 6,553,794 and on defendants' motion for summary judgment of
inequitable conduct and unenforceability. Having carefully
considered the parties' arguments, and for good cause appearing,
the Court hereby DENIES defendants' motion for summary judgment.
The Court further DENIES plaintiff's motion for summary
adjudication without prejudice to reconsideration after claim
construction occurs.
Plaintiff, ACCO Brands, Inc. d/b/a Kensington Technology Group
("Kensington"), is the owner of two patents U.S. Patent Nos.
6,553,794 ("the '794 patent") and 5,502,989 ("the '989 patent")
both of which cover devices for attaching a lock to a portable
computer. These patents are very closely related; both patents
derive from the same application, U.S. App. Ser. No. 138,634
(filed October 15, 1993). The '989 patent claims a device,
however, while the '794 patent claims a method, albeit in
different terms from the '989 patent.
Defendants, PC Guardian Anti-Theft Products, Inc., and
Fellowes, Inc. (collectively, "PC Guardian"), are the makers of the Notebook Guardian line of locks for laptop
computers. In 2000, Kensington brought suit against PC Guardian,
claiming that the Notebook Guardian infringed the '989 patent.
Kensington ultimately lost on summary judgment. See ACCO Brands,
Inc. v. Micro Security Devices, Inc., No. C 00-2296 SI (N.D.
Cal. Jul. 23, 2002), aff'd 346 F.3d 1075 (Fed. Cir. 2003).
Kensington now claims that PC Guardian's product infringes the
'794 patent. PC Guardian denies infringement and claims that the
'794 patent is unenforceable because Kensington committed
inequitable conduct before the Patent & Trademark Office ("PTO").
1. The '794 patent and the accused product
The operation of the accused product is not disputed. See
Dec. of Brian Smith in Support of Plaintiff's Mot. for Summary
Adjudication ("Smith Dec."), Exh. B (attaching declaration of PC
Guardian designer from prior litigation, which describes the
operation of Notebook Guardian). The product consists of a cable
attached to a lock. At the end of the lock is a rectangular metal
protrusion, referred to as a "flanged tab structure," as well as
a metal "hook arm." In the unlocked position, this hook arm sits
inside the protrusion. When the key is turned, however, a cam
inside the lock rotates, causing the hook arm to raise out of the
protrusion. The hook arm, in its raised position, coupled with
the rest of the protrusion, is larger than the security slot on
the side of a laptop. Thus, when the protrusion is inserted into
a security slot on the side of a computer and the lock is turned,
the raised hook arm catches the inside of the security slot,
preventing its release.
Kensington claims that the accused device infringes claims 1,
4, 5, 7, and 9 of the '794 patent. These claims read as follows:
1. A locking method for a portable electronic device,
comprising the steps of:
engaging a generally rectangular security slot,
having dimensions of about 3 mm × 7 mm, defined in a
wall of the portable electronic device with a
moveable locking member;
moving said locking member to a locked position
relative to said security slot to configure said
locking member in a locked configuration; and
maintaining said locked configuration by use of a pin
proximate said locking member; wherein said pin
extends into said security slot.
4. The locking method of claim 1 wherein said locking
member is coupled to a housing and further comprising
the step of localizing said housing to an object
other than to the portable electronic device. 5. The locking method of claim 4 wherein said
localizing step includes the step of associating a
cable, coupled to said housing, to said object.
7. The locking method of claim 1 wherein a lock
secures said locking member into said locking
position.
9. The locking method of claim 7 wherein said lock is
a keyed tumbler lock.
2. Prosecution of the '794 patent
PC Guardian's claims of inequitable conduct stem from
Kensington's failure to disclose U.S. Patent No. 2,530,560 ("the
Young patent") in prosecuting the '794 patent. PC Guardian bases
this argument on the important role that the Young patent played
in a reexamination of the '989 patent.*fn1
After the prosecution of the '989 patent, the primary examiner,
Darnell Boucher,*fn2 conducted a reexamination of a number
of claims of the patent. She rejected several of these claims
because they were anticipated by the Young patent. Examiner
Boucher later reconsidered this rejection, allowing the claims
because Young "fails to teach a pin coupled through the house
which extends into the security slot after the slot engagement
member is in the locked position." Defendants' Mot. for Summary
Judgment, Exh. C, at 16 (emphasis added). Examiner Boucher later
reiterated this basis for distinguishing Young: "[T]he prior art
fails to teach or make obvious a computer locking assembly having a
locking member which is rotatable to a locked position after
being placed through an opening in a computer . . . and
subsequently a pin being place [sic] into the opening after the
locking member is rotated to the locked position. . . ."
Defendants' Mot. for Summary Judgment, Exh. D (emphasis added).
This determination by Examiner Boucher would later play a key
role in the patent infringement action that Kensington brought
against PC Guardian (then named Micro Security Devices) for
infringement of the '989 patent. In affirming this Court's Order
granting summary judgment to PC Guardian on the issue of
infringement, the Federal Circuit relied on Examiner Boucher's
determination: "the examiner and the applicant understood that
the pin extends (actively) into the slot after rotation." ACCO
Brands, Inc. v. Micro Security Devices, Inc., 346 F.3d 1075,
1079 (Fed. Cir. 2003) (emphasis added).
Despite the fact that the Young patent was playing such a
fundamental role in litigation over the '989 patent throughout
the time that the '794 patent was being prosecuted, it is
undisputed that Kensington never revealed the Young patent to the
PTO in its prosecution of the '794 patent. Neither party
presented any evidence concerning why Young was not disclosed to
the PTO.
Federal Rule of Civil Procedure 56 states that summary judgment
may be granted if "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 judgment
as a matter of law." Fed.R.Civ.P. 56(c). "Summary judgment is
appropriate in a patent case, as in other cases, when there is no
genuine issue as to any material fact and the moving party is
entitled to judgment as a matter of law." Nike Inc. v. Wolverine
World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994). The moving
party bears the initial burden of demonstrating the absence of a
genuine issue of material fact. See Celotex Corp. v. Catrett,
477 U.S. 317, 323, 106 S. Ct. 2548, 2553 (1986). The moving
party, however, has no burden to negate or disprove matters on
which the non-moving party will have the burden of proof at
trial. Id. The moving party need only point out to the Court
that there is an absence of evidence to support the non-moving
party's case. Id. at 325, 106 S. Ct. at 2554. The burden then shifts to the non-moving party to "designate
`specific facts showing there is a genuine issue for trial.'"
Id. at 324, 106 S. Ct. at 2553 (quoting Rule 56(e)). To carry
this burden, the non-moving party must "do more than simply show
that there is some metaphysical doubt as to the material facts."
Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp.,
475 U.S. 574, 586, 106 S. Ct. 1348, 1356 (1986). "The mere existence
of a scintilla of evidence . . . will be insufficient; there must
be evidence on which the jury could reasonably find for the
[non-moving party]." Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 252, 106 S. Ct. 2505, 2512 (1986).
Summary judgment can be used to determine infringement. Avia
Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1560
(Fed. Cir. 1988). The moving party bears the burden of proving
infringement by a preponderance of the evidence. Mannesmann
Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279,
1282 (Fed Cir. 1986). To establish infringement, every limitation
in a claim as construed by the Court must be in the accused
product, either exactly or by substantial equivalent. Carroll
Touch, Inc., v. Electro Mechanical Systems, Inc., 15 F.3d 1573,
1576 (Fed. Cir. 1993). A claim is literally infringed if the
accused product is exactly the same as each element of the
asserted claim. Hi-Life Products, Inc. v. American Nat'l
Water-Mattress Corp., 842 F.2d 323, 325 (Fed. Cir. 1986). Even
if a product does not literally infringe it may infringe under
the doctrine of equivalents. Warner-Jenkinson Co. v. Hilton
Davis Chemical Co., 520 U.S. 17, 21, 117 S. Ct. 1040, 1045
(1997). Doctrine of equivalents infringement is found where ...