Opinion
Case No. 04cv0614 DMS (CAB).
March 23, 2006
ORDER GRANTING BMW OF NORTH AMERICA'S MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NUMBERS 6,459,961 AND 6,587,759 [Doc. No. 58]
This matter comes before the Court on BMW of North America's motion for summary judgment of non-infringement of United States Patent Numbers 6,459,961 ("the '961 Patent") and 6,587,759 ("the '759 Patent"). American Calcar, Inc. ("ACI") has filed an opposition to the motion, and BMW of North America ("BMW") has filed a reply. The motion came on for hearing on March 10, 2006. Joseph P. Lavelle, Thomas M. Dunham, Russell B. Hill and Scott R. Maynard appeared on behalf of BMW, and Frederick S. Berretta and John G. Rickenbrode appeared on behalf of ACI. For the reasons set out below, the Court grants BMW's motion.
I. PROCEDURAL BACKGROUND
ACI filed its Complaint for patent infringement on March 24, 2004. On May 28, 2004, BMW filed an Answer and Counterclaim for noninfringement and invalidity.After receiving briefing from the parties, the Court held a claim construction hearing on May 6, 2005. The Court subsequently construed the disputed claim terms in an Order dated June 1, 2005.
BMW filed the present motions on January 23, 2006, ACI filed its oppositions on February 15, 2006, and BMW filed its replies on February 23, 2006.
II. FACTUAL BACKGROUND
A. The '961 Patent
The '961 Patent issued on October 1, 2002. (BMW's Compendium of Exhibits, Ex. 13 at 1841.) It is directed to a system for use in automobiles that allows the user to access information about automobile functions through an interface. ( Id.) The preferred embodiment of the system is a display screen that lists the automobile functions, and allows the user to select one of those functions to obtain further information. ( Id. at 1859.)
ACI alleges BMW is infringing Claims 12, 15, 18, 19 and 22 of the '961 Patent. Independent Claim 12 provides:
A method for use in a system in a vehicle, the system being responsive to a notable condition, the system including a display element, the method comprising:
providing information concerning at least one device in the vehicle;
in response to the notable condition, interrupting a provision of the information concerning the at least one device with a provision of information concerning the notable condition, and providing an option for selection on the display element, thereby prompting a user to select the option;
receiving a selection of the option; and
in response to the selection of the option, providing selected information for coping with the notable condition.
( Id. at 1868.)
B. The '795 Patent
The '795 Patent is a direct continuation of the '961 Patent. It issued on July 1, 2003. (BMW's Compendium of Exhibits, Ex. 21 at 2794.) Like the '961 Patent, the '795 Patent is directed to a system for use in automobiles that allows the user to access information about automobile functions through an interface. ( Id.)
ACI alleges BMW is infringing Claims 15, 16, 17, 20, 23, 24 and 27 of the '795 Patent. Independent Claim 15 provides:
A method for use in a system in a vehicle, the system including a display element, the method comprising:
providing information concerning at least one device in the vehicle;
identifying a notable condition of the vehicle;
providing an alert indicating the notable condition, a provision of the information concerning the at least one device being interrupted by the alert; and
providing an option on the display element in response to the notable condition, thereby prompting a user to select the option to obtain information to cope with the notable condition.
( Id. at 2821.)
C. The Accused Product
ACI alleges BMW's iDrive infringes the asserted claims of the '961 and the '759 Patents. The iDrive is a computer system that is installed in certain BMW vehicles that allows the user to access and control vehicle functions through the use of a control knob and a display screen.
The iDrive is programmed to respond to malfunctions in the vehicle. ( See BMW's Compendium of Exhibits, Ex. 38 at 3603.) This program is referred to as the "Check Control" feature. ( Id.) In the event of a malfunction, a flashing car symbol appears in the upper right hand corner of the Control Display, and a symbol of the malfunctioning feature and brief message about the malfunction are provided on the Info Display. ( Id. at 3544.) In the case of a Priority 1 malfunction, the flashing car symbol is red, and supplemental information about the malfunction is shown on the Control Display. ( Id. at 3544, 3604.) In the case of a Priority 2 malfunction, the flashing car symbol is yellow. ( Id. at 3544.) No other symbols or information are provided on the Control Display in the case of a Priority 2 malfunction.
The Control Display is a screen located in the upper-middle of the dashboard. ( See id. at 3535-36.)
The Info Display is the area immediately behind the steering wheel. ( See id. at 3531-32.)
In addition to this Check Control feature, the iDrive stores information on the reported vehicle malfunctions. ( Id. at 3604.) The user can access that information by selecting the "Car Data" menu on the Control Display, and then selecting a car symbol on the left side of the Display. ( Id.)
III. DISCUSSION
BMW moves for summary judgment of non-infringement of the '961 Patent and the '759 Patent. BMW argues the iDrive does not infringe either of these Patents because it does not literally provide "an option for selection on the display element, thereby prompting a user to select the option." BMW also asserts ACI is not entitled to a range of equivalents for these Patents, and even if it is, the iDrive is not equivalent.
A. Summary Judgment
"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 has 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). See also IPXL, 430 F.3d at 1380 (quoting Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., 145 F.3d 1303, 1307 (Fed. Cir. 1998)) (stating "`evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the opponent.'") However, 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).
B. Non-Infringement
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)). See also Biagro Western Sales, Inc. v. Grow More Inc., 423 F.3d 1296, 1301 (Fed. Cir. 2005) (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998)); Research Plastics, Inc. v. Federal Packaging Corp., 421 F.3d 1290, 1295 (Fed. Cir. 2005); Aquatex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374, 1379 (Fed. Cir. 2005) (quoting Ranbaxy Pharms., Inc. v. Apotex, Inc., 350 F.3d 1235, 1239-40 (Fed. Cir. 2003)) (same). The first step is a question of law, and the second step is a question of fact. Nystrom v. Trex Co., Inc., 424 F.3d 1136, 1141 (Fed. Cir. 2005), pet. for cert. filed, 74 U.S.L.W. 3443 (Jan. 30, 2006). 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)).
The element at issue in this case is the requirement that the system "provid[e] an option for selection on the display element, thereby prompting a user to select the option." BMW argues the iDrive does not meet this requirement, either literally or by equivalents, and ACI disagrees.
BMW asserts the flashing car symbol provided in the Check Control feature does not constitute an option as required by the Claim because it is not selectable. There is no dispute the flashing car symbol is not selectable, and thus, it cannot constitute an option.
Nevertheless, ACI asserts the iDrive satisfies this requirement because the user can select the car symbol from the "Car Data" menu. The problem with ACI's argument, however, is twofold. First, the car symbol on the "Car Data" menu is not provided on the display in response to a notable condition. The car symbol is only provided if the user proceeds to the "Car Data" menu. ( See BMW's Compendium of Exhibits, Ex. 38 at 3604.) Second, the car symbol on the "Car Data" menu does nothing to prompt the user to select it. ACI argues the flashing car symbol in the Check Control feature prompts the user to select the car symbol on the "Car Data" menu, but that argument fails because the Claim requires that the option prompt the user to select that particular option, not a different option. ( See BMW's Compendium of Exhibits, Ex. 13 at 1865) ("When TIP option 1303 appears on screen 209, it indicates that helpful hints or reminders are available upon selection thereof.") (emphasis added).
Although the Court previously declined to impose a temporal sequence on this Claim, upon further review and consideration of the Patent and the prosecution history, the Court finds the phrase "in response" requires that the option be provided after the occurrence of a notable condition.
In light of the above, BMW is entitled to judgment that the iDrive does not literally infringe Claim 12 of the '961 Patent or Claim 15 of the '759 Patent. Because the remaining asserted claims are dependent on these Claims, BMW is entitled to judgment of no literal infringement of those claims as well. See Wolverine World Wide, 38 F.3d at 1199 (stating absent infringement of independent claim, there can be no infringement of dependent claim).
In addition to arguing the iDrive does not literally infringe either the '961 or the '759 Patent, BMW asserts ACI is not entitled to a range of equivalents for these Patents due to prosecution history estoppel. "`The doctrine of prosecution history estoppel limits the doctrine of equivalents when an applicant makes a narrowing amendment for purposes of patentability, or clearly and unmistakably surrenders subject matter by arguments made to an examiner.'" Aquatex, 419 F.3d at 1382 (quoting Salazar v. Procter Gamble Co., 414 F.3d 1342, 1344 (Fed. Cir. 2005)). In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 733 (2002), the Supreme Court held that when a patent applicant makes such a narrowing amendment, there arises "a presumption that the patentee surrendered the territory between the original claims and the amended claims." Terpel, 418 F.3d at 1385 (citing Festo, 535 U.S. at 741). The patentee bears the burden of rebutting this presumption, and may do so "by showing that the alleged equivalent (1) could not reasonably have been described at the time the amendment was made, (2) was tangential to the purpose of the amendment, or (3) was not foreseeable (and thus not claimable) at the time of the amendment." Research Plastics, 421 F.3d at 1298 (citing Festo, 535 U.S. at 740-41).
Here, BMW asserts ACI made a narrowing amendment for purposes of patentability when it added the prompting limitation to the Claim. The prosecution history of the '961 Patent reveals that Claim 12 (originally, Claim 26) was amended to overcome the examiner's rejection of the Claim as anticipated by the Murata and Knoll Patents. ( See BMW's Compendium of Exhibits, Ex. 14 at 2005-06.) The examiner described Murata and Knoll as disclosing a device for use in a vehicle that provides emergency information on a display and provides capability to select an option. ( Id. at 2005-08.) In response to that rejection, ACI amended Claim 12 to include the prompting limitation. ( Id. at 2015-19.) This was a narrowing amendment, and it was made for purposes of patentability. Therefore, the presumption of prosecution history estoppel applies.
ACI does not attempt to rebut this presumption despite its burden to do so. That failure precludes ACI from asserting a range of equivalents for these Patents. Accordingly, BMW is entitled to summary judgment of non-infringement by equivalents, as well.
IV. CONCLUSION AND ORDER
For all the foregoing reasons, the Court GRANTS BMW's motion for summary judgment of non-infringement of the '961 Patent and the '759 Patent.
IT IS SO ORDERED.