The opinion of the court was delivered by: Hon. Dana M. Sabraw United States District Judge
ORDER: (1) GRANTING DEFENDANT'S JUDGMENT; AND (2) DENYING PLAINTIFF'S CROSS-MOTION FOR SUMMARY JUDGMENT AND MOTION TO STRIKE AS MOOT MOTION FOR SUMMARY [Docs. 102, 110 & 145] AND ALL RELATED COUNTERCLAIMS.
Pending before the Court is Defendant's motion for summary judgment of non-infringement, and Plaintiff's cross-motion for partial summary judgment of validity and infringement regarding United States Patent No. 7,374,373 ('373 Patent). Plaintiff also moved to strike testimony and exhibits submitted by Defendant in opposition to Plaintiff's cross-motion. The motions came on for hearing on December 18, 2009. Paul Adams appeared and argued on behalf of Plaintiff Joon Park. Frank Farrell and John Haller appeared and argued on behalf of Defendant CAS Enterprises, Inc., dba Kreg Tool Company. For the reasons set forth below, Defendant's motion is granted and Plaintiff's motions are denied as moot.
Three patents are at issue in this case: United States Patent Nos. 6,637,988 ('988 Patent), 7,134,814 ('814 Patent) and 7,374,373 ('373 Patent). All three patents are part of a family of patents, covering woodworking tools for drilling pocket holes. On February 29, 2008, Plaintiff filed the initial complaint in this matter, alleging infringement of the '988 and '814 Patents. Defendant filed an Answer and Counterclaim on June 18, 2008. Defendant filed First and Second Amended Answers and Counterclaims on July 10, 2008 and July 17, 2008, respectively, adding the '373 Patent. Plaintiff filed a motion to dismiss, arguing that Defendant lacked standing to counterclaim on the '373 Patent. The Court denied the motion, and Plaintiff filed a First Amended Complaint, in which Plaintiff alleges that Defendant infringes: (1) '988 Patent claims 1, 12, and 20; (2) '814 Patent claims 1, 2, 4, 5, 6, 9, 10, and 11; and (3) '373 Patent claim 14.
On April 14, 2009, the Court held a Markman hearing, and on June 9, 2009, the Court issued its Order construing the disputed claim terms. (Doc. 63., hereinafter "Markman Order".) On June 12, 2009, the Court denied Defendant's motion for summary judgment based on invalidity of the three patents. (Doc. 64.) On July 27, 2009, the Court denied Plaintiff's motion for reconsideration of the Markman Order.
Defendant filed the present motion on September 25, 2009 (Doc. 102). Plaintiff filed an opposition (Doc. 108), and Defendant filed a reply (Doc. 112). Plaintiff filed his cross-motion on October 14, 2009 (Doc. 110). Defendant filed an opposition (Doc. 136), and Plaintiff filed a reply (Doc. 146). Plaintiff filed the motion to strike on November 13, 2009 (Doc. 145). Defendant filed an opposition (Doc. 167) and Plaintiff filed a reply (Doc. 173.).
"Summary judgment is appropriate when no genuine issue of material fact exists and the moving party is entitled to judgment as a matter of law." IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1380 (Fed. Cir. 2005) (citing Fed. R. Civ. P. 56(c)). "A material issue of fact is one that affects the outcome of the litigation and requires a trial to resolve the parties' differing versions of the truth." S.E.C. v. Seaboard Corp., 677 F.2d 1301, 1306 (9th Cir. 1982). The moving party carries the initial burden of demonstrating that summary judgment is proper. Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970). To meet this burden, the moving party must identify the pleadings, depositions, affidavits, or other evidence that it "believes demonstrates the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving party satisfies this initial burden, then the burden shifts to the opposing party to show that summary judgment is not appropriate. Id. at 324. The opposing party's evidence is to be believed, and all justifiable inferences are to be drawn in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). To avoid summary judgment, the opposing party cannot rest solely on conclusory allegations. Berg v. Kincheloe, 794 F.2d 457, 459 (9th Cir. 1986). Instead, it must designate specific facts showing there is a genuine issue for trial. Id. More than a "metaphysical doubt" is required to establish a genuine issue of material fact." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).
The instant motion addresses the '373 Patent, which covers a high-production, automated pocket hole drilling machine. The accused products are Defendant's DB55 and DB110 pocket hole drilling machines. Plaintiff alleges Defendant's products infringe Claim 14 of the '373 Patent. Claim 14 is dependent on claims 5 and 13.The disputed claim for purposes of this motion is Claim 13 which provides:
The apparatus as claimed in claim 5, further comprising a clamp which is movable to secure the workpiece, wherein said actuator provides a first point, a second point and a third point, wherein the movement of said actuator from said first point to second point causes clamping the workpiece by said clamp and the movement of said actuator from said second point to third point causes said drilling module to move to cut the pocket-hole in the workpiece by said first motor.
During claim construction, the parties disputed the scope of movement of the actuator between the first, second, and third points. The Court noted that "one of the invention's stated objectives is to "improve clamping" over the prior art. (Id., col. 1, lines 40-41.) 'Improved clamping' suggests that attention be paid to clamping the workpiece before other features of the invention are activated." The Court rejected Plaintiff's claim that the drilling module could move when the actuator moves between the first point and second point. Thus, the Court construed the limitation to mean "movement of the actuator from the first to the second point causes the clamp to engage the workpiece without movement of the drilling module, while movement of the actuator from the second to the third point causes movement of the drilling module." (Markman Order at 24-25.)
In the accused product, the clamp and drilling module move simultaneously. It is clear from viewing the product lodged with the Court that the clamp and drilling module move together. This conclusion is also supported by Defendant's expert. (Witt Decl.) Thus, as Plaintiff concedes, Defendant's product does not literally infringe the '373 Patent. The issue, therefore, is whether the accused product infringes under the doctrine of equivalents.
A determination of infringement, or in this case non-infringement, "requires a two-step analysis. 'First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process.'" Terlep v. Brinkmann Corp., 418 F.3d 1379, 1381 (Fed. Cir. 2005) (quoting Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993)). The first step is a question of law, and the second step is ordinarily a question of fact. Nystrom v. Trex Co., Inc., 424 F.3d 1136, 1141 (Fed. Cir. 2005). Infringement will not be shown unless the plaintiff demonstrates "'the presence of every element or its substantial equivalent in the accused device.'" Terlep, 418 F.3d at 1384-85 (quoting Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994)). Infringement can be found under the doctrine of equivalents where the accused product performs substantially the same function, in substantially the same way, to reach the same result. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 308 (1950). Equivalence is assessed on a limitation-by-limitation basis, not from the ...