Opinion
Civil Action No. 00-CV-70272-DT
September 4, 2001
MAGISTRATE JUDGE'S REPORT AND RECOMMENDATION
RECOMMENDATION: Defendant's Motion for Summary Judgment of Non-Infringement should be granted, as Defendant's electronic gloves clearly do not literally infringe Plaintiffs' patent for similar gloves, and Plaintiffs are either precluded from arguing equivalent infringement or have failed to present a genuine issue of material fact regarding the same.
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FACTS AND PROCEEDINGS
Plaintiffs obtained Patent 4,613,139 ('139) in 1986 for video control gloves, which were designed to replace the joystick control for video games. Defendant subsequently developed and marketed its Pinch Glove, which also controls information going to a computer by touching finger and thumb tips to each other, but allows an operator to stand in front of a wall-size, 3-dimensional computer screen and simulate various conditions (e.g. fluid dynamics over an aircraft wing).
Believing that Defendant's Pinch Glove infringed their '139 Patent, Plaintiffs filed suit in Michigan's Wayne County Circuit Court in October 1999. Defendant responded with a suit for non-infringement and invalidity of the '139 Patent in December 1999 in the United States District Court for the Northern District of California. After lengthy and somewhat complicated venue proceedings, Plaintiffs' suit for infringement is now before this Court in the instant case (00-70272) and Defendant's suit is before the Court in CA 00-74996, which has been reassigned to Judge Edmunds as a companion case.
See the undersigned's Report and Recommendation on Defendant's Motion to Dismiss and Judge Edmunds' Opinion and Order partially accepting and partially rejecting that report in this case.
Defendant has filed a Motion for Summary Judgment of Non-Infringement, which was referred to the undersigned. An evidentiary hearing was held on March 7, 2001, which Plaintiffs were unable to attend, but they were provided transcripts of the proceedings and allowed to respond with any pleadings or exhibits. Numerous responses and replies were then filed, the last of which was Plaintiffs' Reply to Defendant's Surrebuttal on July 18, 2001.
DISCUSSION Literal Infringement
In order to prove infringement, Plaintiffs must prove that all of the limitations on Claim 1 (the only claim) are present in Defendant's gloves, because if any one limitation is missing, there is no literal infringement. Southwall Technologies, Inc., v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995). As paraphrased by Defendant (and not challenged by Plaintiffs) the claim requires:
See Exhibit One for the actual claim language and Exhibit Two for the patent schematic drawing of Plaintiffs' gloves, appended hereto.
a) two gloves connected to a single connector;
b) contacts on all the fingers and both thumbs;
c) wires connecting the finger contacts to the single connector;
d) wires connecting the thumbs to a common terminal on the connector;
e) a single resistor;
f) the resistor in line between both thumb contacts and the connector common terminal.
Defendant contends that there is no literal infringement because its gloves are missing at least four of the described limitations of patent '139:
See Exhibit Three, appended hereto, for the schematic drawing of Defendant's gloves. Samples of the actual gloves have also been presented to the Court by Defendant as part of its Surrebuttal to Plaintiffs' Additional Reply.
1) its gloves have no resistor at all (e);
2) a fortiori, there is no resistor in series between the two thumb contacts (i.e., located in line after the two thumb connectors join) (f);
3) its thumb leads do not connect to a common terminal (d);
4) its finger leads do not connect to terminals on a single connector (c).
As can be seen from the drawings and the exhibits, Defendant's gloves do not contain a resistor and they have a separate terminal connector for each glove, which precludes the common thumb connection and the finger connections to a single connector. Plaintiffs do not contend that Defendant's gloves literally infringe their patent and the court should so find.
Equivalent Infringement
Plaintiffs, however, contend that, at least as to the resistor, Defendant's gloves infringe their patent under the doctrine of equivalents. Under that doctrine the accused device must contain each claim element of the patent or its equivalent. Elements are equivalent if the differences between the two are "insubstantial" to one of ordinary skill in the art and the doctrine is applied to individual claim elements, not to the invention as a whole. Warren-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 37, 39-40 (1997). The traditional test to determine "insubstantiality" is whether the element performs substantially the same function in substantially the same way to obtain substantially the same result as the claim limitation. Graver Tank Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950).
Plaintiffs refer the Court to Figure 5 of Defendant's patent for its Pinch Glove, and the accompanying text which states:
Defendant just recently obtained Patent 6,128,004 for its Pinch Glove, but the parties agree this does not by itself resolve the question of whether Defendant's glove infringes Plaintiffs' patent.
The interface between 604 [the micro controller] and the gloves is implemented by the resistors 610 and the connectors 608 and 609. The diodes, 611 and similar, provide the static protection which is necessary as there are exposed contacts on the gloves.
See Exhibit Four, appended hereto, and Exhibit 5 of Plaintiffs' Reply (Docket #32) and Exhibit A of Plaintiffs' Reply (Docket #34).
(Emphasis Added)
They argue that Defendant's resistors in the controller, in line with each finger, serve the same function as Plaintiffs' resistor in the glove (to protect electric shock from the exposed contacts on the gloves), and thus are equivalent. In other words, there is electrical equivalence between one common resistor and several individual resistors. The undersigned is persuaded, however, that this is insufficient to establish infringement for the following reasons.
First, under the current state of the law, Plaintiffs are estopped from arguing equivalence. After Plaintiffs' application was challenged as being obvious in light of prior art, they amended their claim to add the feature that the thumb contacts were connected through a common resistor to the common terminal of the apparatus connector, identifying the resistor as "critical to the invention." In Festo Corporation v. SMC, 234 F.3d 558 (Fed. Cir. 2000), the Court held that any reason for amendment to a patent claim that is related to patentability will give rise to prosecution history estoppel, and that when that occurs there isno range of equivalents for the amended element. The court stated:
We hold that prosecution history estoppel acts as a complete bar to the application of the doctrine of equivalents when an amendment has narrowed the scope of a claim for a reason related to patentability.
P. 574.
With a complete bar, both the public and the patentee know that once an element of a claim is narrowed by amendment for a reason related to patentability, that element's scope of coverage will not extend beyond its literal terms.
P. 577
Thus, under the complete bar approach, technological advances that would have lain in the unknown, undefined zone around the literal terms of a narrowed claim under the flexible bar approach will not go wasted and undeveloped due to fear of litigation. The public will be free to improve on the patented technology and design around it without being inhibited by the threat of a lawsuit because the changes could possibly fall within the scope of equivalents left after a claim element has been narrowed by amendment for a reason related to patentability. This certainly will stimulate investment in improvements and design-arounds because the risk of infringement will be easier to determine.
P. 577
Certiorari has been granted in the Festo case on the question of whether prosecution history estoppel completely bars application of the doctrine of equivalents, Case #00-1543, June 18, 2001, 69 U.S.L.W. 3775. But unless and until the Supreme Court reverses the 8-4 en banc, decision, Festo would bar Plaintiffs' equivalents argument here.
Second, there is no evidence that Defendant's resistors accomplish the same result by performing the same function in the same way as Plaintiffs' resistor. Defendant's resistors are in the controller, two units removed from the gloves themselves; Plaintiffs' resistor is just outside the gloves. Defendant has a resistor in line with each finger and thumb; Plaintiffs have only one resistor, in line only with the two thumbs. Plaintiffs' stated purpose for the resistor is as a safety precaution because there are exposed contacts on the gloves (Docket #32, p. 2), whereas Defendant's patent does not state a purpose for the resistors, but does state that the diodes provide static protection (supra, p. 4). Thus, even if Plaintiffs were allowed to argue equivalents, there does not appear to be sufficient evidence to establish the required common purpose, function and means.
Finally, even if Defendant's resistors were found equivalent to Plaintiffs' resistor, no equivalents are shown for the other specific claim elements. Defendant's resistors are not connected in series with the thumb contacts; Defendant's thumb leads are not connected to a single terminal on a single connector; and Defendant's finger contacts are not connected to terminals on the same connector. Because Plaintiffs have failed to show an equivalent structure on Defendant's gloves for each and every missing limitation, there can be no infringement.
Plaintiffs' allegations of unclean hands, designing around a patent, conspiracy, fraud and perjury all are primarily directed to the obtaining of Defendant's patent, the validity of which is not before the Court. (See fn. 4, supra). This report and recommendation also does not involve the validity of Plaintiffs' patent.
Because this report is based upon the objective (i.e. the schematic and prosecution history) evidence of the two competing products, and the applicable law, there appear to be no genuine issues of material fact relating to infringement and Defendant is entitled to judgment as a matter of law. Rule 56(c), Fed, R. Civ. P., Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-248 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 322-323 (1986). Accordingly, it is recommended that Defendant's Motion for Summary Judgment of Non-Infringement be GRANTED.
The parties are advised that any objections to this Report and Recommendation must be filed with the Court within ten (10) days after they are served with a copy, or further appeal from Judge Edmunds' acceptance thereof is waived,