Opinion
CASE NO.: CV 99-10522 ABC (CTx)
April 24, 2001
ORDER RE: MOTIONS FOR SUMMARY JUDGMENT FILED BY DEFENDANT GOLDEN SOURCE ELECTRONICS, LTD.
This case involves the manufacture and sale of cordless telephone and caller identification products, and Plaintiff's patents thereon.
Presently before the Court are two Motions for Summary Judgment filed by Defendant Golden Source, one filed pursuant to 35 U.S.C. § 287(a) alleging insufficient notice of Plaintiff's patents, and one pursuant to 35 U.S.C. § 271 claiming lack of infringement in the United States.
These Motions, as well as the arguments and evidence presented both in support and opposition, are nearly identical to two summary judgment motions by Defendant Smoothline granted on February 12, 2001. For the same reasons as were articulated in the Court's prior order, the Court hereby GRANTS both of Defendant's Motions for Summary Judgment.
I. PROCEDURAL HISTORY
On October 12, 1999, Plaintiff CYBIOTRONICS, LTD. ("Plaintiff," or "Cybiotronics") commenced this civil action by filing a Complaint naming Defendants GOLDEN SOURCE ELECTRONICS, LTD. ("Golden Source") and SMOOTHLINE, LTD. ("Smoothline"). The Complaint alleges ownership by the Plaintiff of three patents related to telephone and caller identification ("caller ID") technology, and states that Plaintiff has developed, manufactured and sold products embodying inventions claimed by the patents. It further alleges the manufacture, use, importation, distribution, offer, and sale of products embodying inventions in the patents by the named Defendants. The Complaint accuses each Defendant of direct infringement, inducement of infringement, and contributory infringement that is allegedly continuing. See Complaint ¶¶ 6-17.
The Complaint alleges that Plaintiff has "placed the required statutory notice on all of its telephone and caller identification products manufactured and sold by Cybiotronics" under the patents. Id. ¶ 18. Plaintiff's prayer for relief seeks judgment against all Defendants, preliminary injunctive relief during the pendency of the action, permanent injunctive relief thereafter, compensatory damages, trebling thereof, reasonable attorneys' fees, costs, and interest, and an order forcing Defendants to deliver to Plaintiff all infringing products for destruction at Plaintiff's option. See Complaint at 4.
Both of the named Defendants subsequently filed a separate Answer and Counterclaim. A contentious discovery relationship followed. After many trips back and forth to Magistrate Judge Turchin by both sides of the case to compel discovery from the other, finally on December 15, 2000 Defendant Golden Source filed a motion for summary adjudication of non-infringement as to U.S. Patent No. 5,265,145 ("the `145 patent") and U.S. Patent No. 5,742,669 ("the `669 patent"). On December 22, 2000, the Court signed a Stipulation and Order submitted by Plaintiff and Golden Source continuing the hearing from January 8, 2001 to January 22, 2001, thereby giving Plaintiff two more weeks to file an opposition (by January 8, 2001). Nonetheless, on December 28, 2000, Plaintiff filed an Ex Parte Application seeking denial of the motion filed by Golden Source to allow Plaintiff more time to conduct discovery (pursuant to Federal Rule of Civil Procedure 56(f)). This Application was denied by the Court on January 4, 2001. Five days later, on January 9, 2001, rather than an opposition to the Golden Source motion, the Court received and signed a Stipulation and Order submitted by Plaintiff and Golden Source dismissing Plaintiff's claims against Golden Source regarding the `145 patent and the `669 patent.
Defendant Smoothline filed its Answer and Counterclaim February 11, 2000; Defendant Golden Source filed its Answer March 8, 2000, an Amended Answer and Counterclaim April 27, 2000 and (after a Motion to Strike), a First Amended Answer and Counterclaim June 21, 2000.
In the meantime, on January 5, 2001, Defendant Smoothline filed two motions for summary judgment. One (the "prior marking motion") sought a limitation on the period during which Plaintiff could seek damages for alleged infringement, on the ground that Plaintiff failed to mark products Plaintiff produced pursuant to the `145 patent, the `669 patent, and U.S. Patent No. 5,883,942 ("the `942 patent") as required to give constructive notice ( 35 U.S.C. § 287(a)), and also failed to give actual notice. The second motion for summary judgment (the "prior infringement motion") argued that Plaintiff had not and could not produce any evidence that Defendant Smoothline had performed any allegedly infringing activities within the United States.
After consideration of Plaintiff's oppositions to the two prior motions, along with the supporting evidence produced by both parties, and after issuing a tentative order which was the guideline for oral argument by the parties at the hearing on February 12, 2001, on that date the Court issued an order (the "Smoothline Order") granting both of the motions for summary judgment filed by Defendant Smoothline.
In particular, the Smoothline Order concluded: (1) that Plaintiff had produced no evidence of actual or constructive notice to Defendant Smoothline of its patents prior to the filing date of the Complaint (October 12, 1999), such that Plaintiff could collect no damages for activities prior to that date ( 35 U.S.C. § 287(a)) — see Smoothline Order at 21; (2) that Plaintiff had produced no proof of Smoothline's actual knowledge of Plaintiff's patents and its infringement prior to being served with the Complaint on December 22, 1999, such that there was no possibility of inducement or contributory infringement prior to that date ( 35 U.S.C. § 271(b) and (c)) — see Smoothline Order at 27; (3) that Plaintiff had produced no evidence of any "making," "using" or "selling" of infringing products by Defendant Smoothline within the United States, such that these bases for direct infringement were not available ( 35 U.S.C. § 271(a)) — see Smoothline Order at 28; and (4) that Plaintiff had not produced evidence sufficient to raise a triable issue of material fact as to whether Defendant Smoothline had made any "offers to sell" within, or "imports" into, the United States during this period, such that there was no direct infringement liability by these terms ( 35 U.S.C. § 271(a)) — see Smoothline Order at 41, 48. On February 5, 2001, Defendant Golden Source filed two Motions for Summary Judgment, on the same grounds ("Marking Motion II," and "Infringement Motion II"). Plaintiff has opposed these Motions.
II. LEGAL STANDARD ON A MOTION FOR SUMMARY JUDGMENT
The party moving for summary judgment has the initial burden of establishing that there is "no genuine issue as to any material fact and that [it] is entitled to a judgment as a matter of law." Fed.R.Civ.Pro. 56(c); see British Airways Bd. v. Boeing Co., 585 F.2d 946, 951 (9th Cir. 1978); Fremont Indemnity Co. v. California Nat'l Physician's Insurance Co., 954 F. Supp. 1399, 1402 (C.D.Cal. 1997).
If the moving party has the burden of proof at trial (e.g., a plaintiff on a claim for relief, or a defendant on an affirmative defense), the moving party must make a "showing sufficient for the court to hold that no reasonable trier of fact could find other than for the moving party." Calderone v. United States, 799 F.2d 254, 259 (6th Cir. 1986) (quoting from Schwarzer, Summary Judgment Under the Federal Rules: Defining Genuine Issues of Material Fact, 99 F.R.D. 465, 487-88 (1984)). Thus, if the moving party has the burden of proof at trial, that party "must establish beyond peradventure all of the essential elements of the claim or defense to warrant judgment in [its] favor." Fontenot v. Upjohn Co., 780 F.2d 1190, 1194 (5th Cir. 1986) (emphasis in original); see Calderone, 799 F.2d at 259.
If the opponent has the burden of proof at trial, the moving party has no burden to negate the opponent's claim. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The moving party does not have the burden to produce any evidence showing the absence of a genuine issue of material fact. Id. at 325. "Instead, . . . the burden on the moving party may be discharged by `showing' — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party's case." Id. (citations omitted).
Once the moving party satisfies this initial burden, "an adverse party may not rest upon the mere allegations or denials of the adverse party's pleadings . . . [T]he adverse party's response . . . must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.Pro. 56(e) (emphasis added). A "genuine issue" of material fact exists only when the nonmoving party makes a sufficient showing to establish the essential elements to that party's case, and on which that party would bear the burden of proof at trial. Celotex, 477 U.S. at 322-23. "The mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient; there must be evidence on which a reasonable jury could reasonably find for plaintiff." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). The evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in favor of the nonmovant. Id. at 248. However, the court must view the evidence presented "through the prism of the substantive evidentiary burden." Id. at 252.
If the nonmovant is unable to create triable issues of material fact, Federal Rule of Civil Procedure 56(f) permits summary judgment to be denied or delayed to allow the nonmovant further discovery. The party seeking protection under subdivision (f) must state by affidavit the reasons why he or she is unable to present the necessary opposing material. Further, "Rule 56(f) requires the nonmoving party to show that additional discovery would uncover specific facts which would preclude summary judgment." Maljack Productions, Inc. v. Goodtimes Home Video Corp., 81 F.3d 881, 888 (9th Cir. 1996). The Rule 56(f) "movant" must set forth specific needed facts, and must also specify "how [those facts] would preclude summary judgment." Garrett v. City County of San Francisco, 818 F.2d 1515, 1518 (9th Cir. 1987).
III. FACTUAL BACKGROUND
The Court provided a detailed summary of the factual background in this case in the prior Smoothline Order. These facts are also well known to the parties, and need not be repeated in detail here. Thus, the Court provides only a brief summary, and indicates where there are apparent differences regarding Defendant Golden Source.
Furthermore, the papers filed in support of the instant Motions give far less factual background and detail than was presented by the papers filed in conjunction with the prior Smoothline motions.
All three of the original parties to this matter, Cybiotronics (Plaintiff), Golden Source, and Smoothline, are apparently businesses incorporated under the laws of Hong Kong, with their principal places of business in Hong Kong as well. It appears that all three are also, inter alia, manufacturers who have produced telephone products for BellSouth, either directly or through intermediaries.
Plaintiff is apparently the owner, directly or by assignment, of the rights granted under the patents-in-suit (the `145 patent, the `669 patent, and the `942 patent), all of which relate to telephone and caller identification technology. Following the Stipulation and Order that was signed by the Court on January 9, 2001, only the `942 patent is asserted against Golden Source. Plaintiff has identified several models of telephones produced by Golden Source that allegedly infringe the `942 patent. These include at least Golden Source model numbers 2020x, 2025, 8801, 8802, 8816, 8823, 8843, and CI-30. It appears that these models (the "accused products") were produced by Golden Source during the period from sometime in 1997 to sometime in 2000. For purposes of these Motions, Defendant Smoothline does not directly argue that its products did not infringe the `942 patent. Plaintiff has also apparently manufactured telephones covered by the claims of the patents-in-suit, presumably during this same period; the parties dispute whether Plaintiff complied with statutory marking requirements for all or any part of this time period. The other primary factual disputes relate to the nature of the relationship, if any, between Golden Source and the American market. As was true in the prior motions, Defendant Golden Source is firmly of the opinion that it is a Hong Kong corporation, that it has done business only in Hong Kong or in China, that it has never sold or offered to sell the accused products within the United States, and that it therefore is not subject to the reach of U.S. patent laws for direct, contributory, or inducement of infringement. Plaintiff again argues that regardless of where Golden Source is located, it has had sufficient contacts with U.S. companies and markets to incur patent infringement liability.
The term "requirements" is used in the sense that notice in one form or another is a necessary precursor to recovery of damages; there is no "requirement", per se, that goods produced pursuant to a patent be marked as such; however, the patentee may not recover damages for infringement until the alleged infringer has received either actual notice of the patent and the alleged infringement, or may be imputed with constructive notice based on product marking(s) (or the Complaint alleging infringement of the particular patent(s) has been filed).
Unlike the voluminous evidence that accompanied the prior motions by Defendant Smoothline, Defendant Golden Source has provided almost no background facts (or evidence thereof), regarding, for instance, the genesis and development of its relationship with North American Foreign Trading Corporation ("NAFT"), Robert Schweitzer ("Schweitzer") or BellSouth, and/or the genesis and development of the design and manufacture of its accused products. Golden Source apparently prefers simply to point out Plaintiff's inability to produce any evidence.
Plaintiff apparently does not dispute that the accused products (telephones) at issue were manufactured at facilities in China. Nor does Plaintiff apparently dispute that these products were primarily if not exclusively manufactured at the behest of NAFT/Schweitzer, on behalf of or as an intermediary to BellSouth. Instead, Plaintiff once again relies on alleged communications between Golden Source and NAFT in New York as evidence of "offers to sell," on the alleged shipment by Golden Source of accused products into the U.S. as samples for NAFT and for testing by Wyle Laboratories as evidence of "imports," and on Golden Source's Bills of Lading and Invoices as evidence that it was the "importer" of accused products. Plaintiff also claims that Golden Source's production of user manuals in English evidences "inducement." See Statement of Genuine Issues (Infringement) ("IGI") ¶¶ G-R.
The Court presumes that the same basic factual framework applies to the instant Motions as was evidenced on the prior motions. For instance, for purposes of these Motions Plaintiff does not dispute that the accused products manufactured by Golden Source were made in "the Orient" for NAFT on behalf of BellSouth, with BellSouth labels, that NAFT purchased these products "in the Orient" and then resold them to BellSouth "FOB" their country of origin (presumably China or Hong Kong) in "the Orient," and that title passed to BellSouth "in the Orient" pursuant to BellSouth's specific request. See Statement of Undisputed Facts (Infringement) ("IUF") ¶¶ 6-8; IGI ¶¶ 6-8. The Court presumes that the relationship so described mirrored that detailed in the Court's Smoothline Order, where goods manufactured in China were transported to Hong Kong, and then twice changed hands. The Court also presumes (and the evidence indicates) that Golden Source was also paid through letters of credit drawn on Swiss bank accounts.
IV. DISCUSSION A. Summary Adjudication on Notice ("Marking Motion II")
There are two Motions for Summary Judgment currently before the Court, each filed by Defendant Golden Source. The first of these, Marking Motion II, is nearly identical to that previously filed by Defendant Smoothline (the prior marking motion) and granted by the Court on February 12, 2001. Perhaps more importantly, the Opposition filed by Plaintiff (and the evidence in support thereof) does not deviate in any significant respect from that filed in response to the prior marking motion. Therefore, for the same reasons that the Court granted the prior marking motion, the Court hereby GRANTS Defendant Golden Source's Motion for Summary Judgment on the Issues of Marking and the Damages period. See Smoothline Order at 13-21. Defendant Golden Source cannot be liable in damages for any alleged infringement prior to the filing date of the Complaint: October 12, 1999.
B. Summary Judgment on Infringement ("Infringement Motion II")
Defendant Golden Source's second Motion, Infringement Motion II, is also nearly identical to the prior infringement motion filed by Defendant Smoothline. Once again, Defendant Golden Source argues that Plaintiff can produce no evidence of infringing activities by Golden within the United States, within the reach of U.S. patent laws. The opposing papers filed by Plaintiff are also substantially similar to the arguments and evidence submitted in opposition to the Smoothline motion. The marginal differences do not alter the ultimate outcome of the Motion, which is once again decided in Defendant's favor. These marginal differences are discussed in the following brief review of the facts and law underpinning the Court's decisions on these issues.
1. Plaintiff's Rule 56(f) "Motion"
In the final section of its Opposition, presumably hastily added after the Court issued the prior Smoothline Order granting the two prior motions for summary judgment on February 12, 2001, Plaintiff belatedly asks that the Court continue its decision on the instant Motion until such time as Plaintiff has had "the opportunity to take the 30(b)(6) deposition of Golden Source and provide supplemental briefing concerning the evidence obtained." Opposition at 21-22.
Plaintiff's (current) Opposition was filed later that same day.
Plaintiff claims that through this deposition testimony, it hopes to uncover further (or initial) evidence of, inter alia, Golden Source's offers to sell and sales to NAFT and/or BellSouth within the United States, its importation and/or distribution of accused products within the United States, its offers to sell and sales to other United States companies, and/or the date on which Golden Source became aware of the `942 patent, allegedly prior to the date that Plaintiff filed/served this lawsuit. See Exhibit 32 to Opposition ("Gyarfas Decl.") ¶ 5.
As Plaintiff notes, a "major objective" of Rule 56(f) has been "to ensure" that any "diligent" party has been given a "reasonable" opportunity for discovery prior to entry of summary judgment. See 10B Wright, Miller Kane, Federal Practice and Procedure, Civil 3d § 2741 at 412 (1998). Therefore, a prerequisite to Rule 56(f) relief is a showing that a Rule 56(f) movant has been diligent in discovery but has nonetheless been unable to secure operative evidence. See, e.g., Nidds v. Schindler Elevator Corp., 113 F.3d 912, 921 (9th Cir. 1996) ("the district court does not abuse its discretion by denying further discovery if the movant has failed diligently to pursue discovery.").
In this case, Plaintiff has insufficiently explained why it has failed to take the Golden Source deposition in the over seven months that have elapsed since it was first noticed on July 6, 2000. Other than a vague reference to Golden Source's "refusal" to make a witness available for deposition, Plaintiff offers no explanation for why it has presented no evidence of active pursuit of the deposition, why it has apparently filed no motion to compel the deposition, or why there is no other evidence of its diligent pursuit of this allegedly crucial discovery. Nor has Plaintiff explained (a) why it waited until July 6, 2000 to seek the deposition in the first place (nine months after the Complaint was filed) or (b) what has happened in the intervening seven month period between July, 2000 and the present.
Indeed, Plaintiff's counsel only specifically alleges that the "refusal" by Golden Source was "to present a witness in connection with the 30(b)(6) deposition notice before Cybiotronics's Opposition . . . was due." Gyarfas Decl. ¶ 3. This could very easily indicate that Plaintiff only recently renewed its request for the deposition, and provides no extensive history of obstinate refusal by Defendant.
This is not the first time that Plaintiff has presented this same argument regarding this deposition to the Court. On December 28, 2000 Plaintiff filed an Ex Parte Application to continue Golden Source's prior summary judgment motion (as to the `669 and `145 patents), also claiming that it had been unable to take this noticed deposition. At that time, evidence was presented suggesting that it was Plaintiff who postponed the initially-scheduled date for this deposition, and the Court concluded that there was no evidence that Plaintiff had made any real effort to pursue the deposition in the period since it was first postponed. The Court therefore denied the Ex Parte Application, on January 4, 2001. Within five days, Plaintiff dismissed these claims.
Even in light of the Court's previous denial, Plaintiff provides no evidence that it has made any effort to pursue taking the noticed deposition in the six weeks that have since elapsed. It is now over sixteen months since the Complaint in this case was filed, over seven months since Plaintiff noticed the deposition, and over six weeks past the Court's denial of Plaintiff's previous Ex Parte Application. Yet Plaintiff has still not taken the noticed deposition, filed a motion to compel the deposition, or provided any evidence that Defendant is evading production of a witness or taking of the deposition. While presenting no evidence of its own "diligence," Plaintiff may not also seek this Court's indulgence, and further delay summary judgment.
Under these circumstances, Plaintiff's lack of diligence is on its own a sufficient basis to deny its Rule 56(f) motion. See, e.g., Hauser v. Farrell, 14 F.3d 1338, 1340-41 (9th Cir. 1994); California Union Ins. Co. v. American Diversified Savings Bank, 914 F.2d 1271, 1278 (9th Cir. 1990) Landmark Development Corporation, 752 F.2d 369, 372 (9th Cir. 1985). Moreover, Plaintiff has not convincingly shown that the information to be gleaned from deposition of a Cybiotronics employee would differ in any significant way from the evidence already presented both in response to the prior motions and in response to the instant Motions for Summary Judgment. Though what the deposition might reveal is obviously an unknown, Plaintiff has been afforded a sufficient "opportunity" to pursue discovery, and has not taken full advantage of that opportunity in the sixteen months that have elapsed since the case was filed. In light of Plaintiff's lack of diligence in pursuing the discovery which it now seeks by motion, the Court hereby DENIES its Rule 56(f) request to continue the present Motion.
2. Inducement and Contributory Infringement
There are only insignificant differences between this Motion and Opposition and the prior moving papers with regard to the issues of inducement and contributory infringement. Therefore, the Court finds, as it did in the Smoothline Order, that Defendant Golden Source may not be liable for inducement of infringement ( 35 U.S.C. § 271(b)) or contributory infringement ( 35 U.S.C. § 271(c)) until such date as it can be imputed with actual knowledge of both the `145 patent and its alleged infringement of that patent. See Smoothline Order at 25-27. It is apparently undisputed that Defendant Golden Source was first served with the Complaint in this action on February 22, 2000; this date represents the first date that actual knowledge may be imputed.
As it did in the Smoothline Order, the Court does not reach the additional issues alluded to but insufficiently argued by the instant Motion, such as whether Golden Source may be liable for inducement or contributory infringement for activities conducted exclusively outside of the U.S., whether there is any linkage between any "inducement" or "contributory" infringement and any direct infringement by "another," and/or whether Golden Source has in fact engaged in any activity that would be captured by the language of 35 U.S.C. § 271(c).
Accordingly, the Court hereby GRANTS Defendant Golden Source's Motion with regard to inducement and contributory infringement, and concludes that no liability may be based on activity prior to February 22, 2000.
3. Direct Infringement
The differences on the issue of direct infringement between the instant Motion and Opposition, and the prior moving papers, are again mostly cosmetic and of little consequence to the Court's conclusions. Plaintiff has again failed to raise triable issues as to direct patent infringement activity by Golden Source within the United States.
As was true for the prior motion(s), Plaintiff has presented no evidence of any direct "making," "using" or "selling" by Defendant Golden Source that took place during the operative period within the United States. See Smoothline Order at 28. Indeed, Plaintiff once again focuses almost exclusively on arguing that Golden Source made "offers to sell" of accused products within the United States, and that it "imported" the accused products into the United States. See Opposition at 3-5, 13-18. Its arguments with regard to these two bases for direct infringement liability mirror those previously made. Plaintiff relies on the same authority and exposition of that authority on which it relied to oppose the prior infringement motion.
Therefore, nothing in the current papers gives the Court cause to depart from its previous conclusion that a patentee/plaintiff may not premise direct infringement liability solely on "offers to sell" in the United States, where the contemplated "sales" are not consummated within the United States, or that direct infringement liability for "imports" into the United States extends only to that party which is the actual "importer" of the goods, and not to third parties which play some role in the shipment of goods, but are not the "importer." See Smoothline Order at 29-48. The patent laws are limited to the geographical confines of the United States, and the Court is limited by the clear and obvious terms defining the scope of the statutes.
With regard to the instant Motion, there is even less evidence to support possible direct infringement liability for Golden Source than there was for Smoothline. For instance, as Golden Source points out, none of the documents provided by Plaintiff evidencing communications between NAFT (in New York) and Golden Source (in Hong Kong) come as close to constituting "offers to sell." See Exhibits 7-9.
Therefore, whereas with regard to the Smoothline motion there was at least an arguable basis for finding that an "offer to sell" had been made "within the United States," here Plaintiff has not given the Court even the documents evidencing "negotiations" and/or "price quotes" that were produced in opposition to the prior motion. Instead Plaintiff merely provides purchase orders transmitted from NAFT to Golden Source (Exhibit 7), invoices transmitted from Golden Source to NAFT along with goods that were being shipped (Exhibit 8), and a few scant examples of correspondence back and forth discussing features of the telephones being manufactured (Exhibit 9). None of these would seem to constitute an "offer" in the contractual sense of the term, nor would the letters of credit provided by Plaintiff (Exhibits 14 through 17) seem to indicate that Golden Source made any such "offer."
These letters of credit also do not, as Plaintiff claims, prove that Golden Source was the "importer" of the accused products into the United States. As has often been the case, Plaintiff reads from this "evidence" rather selectively, and focuses on the fact that all of these letters of credit state that the goods covered thereby would be transported "TO ANY U.S.A. PORT/AIRPORT." See, e.g. Exhibit 14 at NF 000400. Plaintiff deduces from this that Golden Source, beneficiary of the letters of credit, was the "importer" of the goods identified.
However, Plaintiff again "overlooks" two additional notations on each letter of credit. First, the letters of credit specify that the goods are taken "on board" at "ANY CHINA/HONGKONG PORT/AIRPORT," consistent with all of the evidence suggesting that NAFT and/or BellSouth took the goods "FOB" Hong Kong. See id. Further, the letters of credit indicate that invoices and packing lists accompanying shipments for customs purposes were made out to NAFT. See, e.g., id. at NF 000401.
Finally, Plaintiff again relies on alleged "evidence" that there were accused products sent by Golden Source to Wyle Laboratories for FCC testing as support for its claim that Golden Source "imported" at least some of the accused products into the United States. However, the alleged "evidence" of this does not even show that it was Golden Source that sent/submitted these products to Wyle Laboratories. In fact, each of the "Pre-Acceptance Test Reports" from Wyle Laboratories submitted by Plaintiff (Exhibits 10 through 13) specifically states that it was NAFT which "provided" units tested by Wyle. See, e.g., Exhibit 10 at GS-3480. The products listed as "BellSouth products" on these reports were apparently submitted by NAFT, and there is nothing in what Plaintiff has provided to indicate that these products were shipped to Wyle, or otherwise "imported," by Defendant Golden Source.
An identical claim was made in opposition to the prior motion. There, Smoothline did not dispute that it sent products for testing.
As the Court previously concluded, this would not in any case be an "import" into the United States. See Smoothline Order at 44.
Therefore, the Court concludes that there is even less basis for finding direct infringement liability as to Defendant Golden Source than there was as to Defendant Smoothline, in that there is even less evidence of "offers to sell" within the United States (not to mention the lack of any evidence of contemplated sales therein), and even less evidence of any "importing" activity by Defendant Golden Source. The Court finds that Plaintiff has failed to raise a triable issue of fact as to Defendant Golden Source's direct infringement liability. Thus, the Court hereby GRANTS Defendant's Motion as to this issue.
V. CONCLUSION
For the foregoing reasons, the Court concludes that there are no triable issues of material fact on the following questions: whether Plaintiff may seek damages for allegedly infringing activities prior to October 12, 1999; whether Golden Source is liable for inducement or contributory infringement for any period prior to February 22, 2000; and whether Smoothline is liable for direct infringement at any time.
On each of these questions, Plaintiff has failed to raise genuine issues of material fact, and its claims are subject to dismissal. Accordingly, the Court GRANTS Defendant Smoothline's Motion for Summary Judgment on issues of notice and marking ( 35 U.S.C. § 287(a)), and STRIKES Plaintiff's prayer for damages to the extent that it is premised on any conduct prior to October 12, 1999. The Court also GRANTS Defendant Smoothline's Motion for Summary Judgment on issues of direct and indirect infringement ( 35 U.S.C. § 271(a), (b), and (c)), DISMISSES Plaintiff's claims of direct infringement entirely, and its claims for inducement of infringement and contributory infringement to the extent they are premised on conduct prior to February 22, 2000.