Opinion
No. C 01-01192 CRB
October 1, 2003
MEMORANDUM AND ORDER
This is a patent infringement lawsuit. The Court has previously construed five claims of the patents in suit. Now pending before the Court is plaintiffs' motion for summary judgment. After carefully considering the papers filed by the parties, and having had the benefit of oral argument, the Court concludes that defendants' devices infringe certain claims as a matter of law.
BACKGROUND
This suit involves the alleged infringement of a family of patents (the `035, `584, `983 and `064) that relate to electrical connectors that can be soldered onto a substrate. The patents disclose electrical connectors having an insulative housing with electrical contacts extending from one side of the housing to the other side through a slot. The contacts extend into recesses on the side of the housing that is to face the substrate. The recesses are filled with conductive paste and formed solder balls. Upon heating, the solder balls are fused to the contacts. The contacts are adapted to mate with other contacts on the opposite side of the housing. The devices are used in computer notebooks, desktops, and servers that use ball grid aray ("bga") technology.
After plaintiffs filed this action the parties initially disputed dozens of claim terms or phrases. The Court limited its initial Markman hearing, however, to five terms or phrases as chosen by the parties and issued its Claim Construction Order on those five terms and phrases in February of this year.
Plaintiffs have now moved for summary judgment of infringement on the following claims: (1) claims 1, 2, 4, 33-35, 40, 42 and 50 of the 1983, (2) claims 3 and 5 of the `644, and (3) claims 1-3, 5, 8, 13 and 25 of the 1035.
STANDARD OF REVIEW FOR SUMMARY JUDGMENT
Summary judgment is appropriate when 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). An issue is "genuine" only if there is sufficient evidence for a reasonable fact finder to find for the non-moving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). A fact is "material" if the fact may affect the outcome of the case. See id at 248. "In considering a motion for summary judgment, the court may not weigh the evidence or make credibility determinations, and is required to draw all inferences in a light most favorable to the non-moving party." Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir. 1997). A principal purpose of the summary judgment procedure is to identify and dispose of factually unsupported claims. See Celotex Corp, v. Cattrett 477 U.S. 317, 323-24(1986).
The party moving for summary judgment bears the initial burden of identifying those portions of the pleadings, discovery, and affidavits which demonstrate the absence of a genuine issue of material fact.See id. at 323. Where the moving party will have the burden of proof on an issue at trial, it must affirmatively demonstrate that no reasonable trier of fact could find other than for the moving party.See id. Once the moving party meets this initial burden, the non-moving party must go beyond the pleadings and by its own evidence "set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). The non-moving party must "identify with reasonable particularity the evidence that precludes summary judgment." Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir. 1996) (quoting Richards v. Combined Ins. Co., 55 F.3d 247, 251 (7th Cir. 1995), and noting that it is not a district court's task to "scour the record in search of a genuine issue of triable fact"). If the non-moving party fails to make this showing, the moving party is entitled to judgment as a matter of law. See Celotex, 477 U.S. at 323.
DISCUSSION
A patentee may show infringement either by showing that an accused product literally infringes a claim in the patent or that the product infringes under the doctrine of equivalents. See Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir.) (noting that an "accused product that does not literally infringe a claim may infringe under the doctrine of equivalents . . ."), cert. denied, 516 U.S. 987 (1995). Whether an accused product infringes is ordinarily an issue of fact for the jury. See id at 1575 (noting that both literal infringement and infringement under the doctrine of equivalents are factual issues).
Plaintiff argues that the undisputed facts establish that defendants' devices literally infringe the above claims. To determine whether an accused device literally infringes a patent right, the Court must perform a two-step analysis: first, it must construe the claims to determine their meaning and scope; and second, it must compare the claims as construed to the accused device. See id. ("In the second step, the trier of fact determines whether the claims as thus construed read on the accused product."). The Court completed the first step in its Claim Construction Order, at least as to some of the disputed terms, and now must compare the claims as interpreted to defendants' accused products. To establish literal infringement, "every limitation set forth in a claim must be found in an accused product, exactly." Id.: see also Mas-Hamilton Group v. LaGard Inc., 156 F.3d `206, 1211 (Fed. Cir. 1998) ("If even one limitation is missing or not met as claimed, there is no literal infringement.").
Defendants argue that plaintiffs' motion should be denied because (1) plaintiffs have not properly supported their motion with admissible evidence, and (2) based on a proper construction of claim terms the Court has not yet addressed, defendants' devices do not infringe the claims at issue on this motion. As the Court limited the Markman hearing to only five terms or phrases, the Court will consider defendants' claim construction arguments made in opposition to plaintiffs' motion for summary judgment. The Court incorporates the legal standard for claim construction set forth in its Markman order into this Memorandum and Order.
I. Plaintiffs' Motion Is Properly Supported
In support of their motion for summary judgment plaintiffs relied on the patents at issue as well as documents produced by defendants in discovery to show that each element of each claim is infringed. Defendants contend that the motion fails because plaintiffs have not properly authenticated the documents and/or many of the documents are hearsay. At oral argument defendants withdrew their objection to documents produced from an Intel website.
The Court concludes that the documents produced by defendants themselves provide a sufficient foundation for plaintiffs' claims. Defendants do not contest the authenticity of the documents; indeed, many of the same documents are submitted by defendants in support of their opposition. See Maljack Prods., Inc. v. Goodtimes Home Video Corp., 81 F.3d 881. 889 n. 12 (9th Cir. 1996). Nor do defendants claim that their product specifications do not accurately reflect the design and operation of their products.
II The `983
Plaintiffs move for an order that defendants' products infringe claims 1, 2, 4, 33-35, 40, 42 and 50 as a matter of law.
A. Claims 1, 2, 4
Defendants do not dispute that given the Court's previous construction of the phrase "extending substantially to the exterior side of the housing" the accused devices infringe the above claims. See Defendants' Opposition ("Opp") at 23 ("[D]efendants have affirmatively shown that with respect to all but three of the claims that are the subject of the motion, " their products do not infringe) (emphasis added).
B. Claims 33, 34, 35, 40, 41 50
Claims 34, 35, 40, 41 and 50 are all dependent on claim 33. Plaintiffs' motion identifies all the limitations in claim 33, and the additional limitations in the dependent claims, and explains how the limitations are met by defendants' devices. Plaintiffs have thus met their burden of showing that the accused devices infringe these claims.
Defendants respond by disputing that their devices meet two of the limitations. They do not claim there is a factual dispute precluding summary judgment; instead, they argue that their devices do not infringe if the claims are construed in accordance with their plain and ordinary meaning.
1. a terminal portion extending toward the mounting surface
Claim 33 recites "an electrically conductive member insertable into the opening in the body, the conductive member including a terminal portion extending toward the mounting surface and adapted to be positioned adjacent the major surface of the circuit substrate." `983, col. 20, 11. 8-12 (emphasis added). Defendants contend that their contacts do not extend "toward" the mounting surface because they are in fact "flush" with the mounting surface; in other words, the contact does not extend toward the mounting surface if it extends so far as to touch the mounting surface.
Defendants' construction of "towards" is not based on its plain and ordinary meaning. "Extending toward" is a directional term, it does not connote a distance. Under defendants' interpretation, the contact would be extending toward the mounting surface until the moment it touches the surface; then suddenly it is no longer extending toward but is extending "to." This construction makes no sense.
Defendants also argue that since the Court previously construed "extending substantially to the exterior side" in Claim 1 to mean a contact that extends to the exterior side as well as one that extends "largely but not wholly" to that side, "toward" must mean something different: "extending toward" must be different from "substantially to." There is no rule, however, that requires a patentee to use the exact same language in every claim. As is explained above, "extending toward" is a directional term and a contact that extends to the mounting surface also extends toward the mounting surface.
Moreover, dependent claims 38 and 39 describe a body with an end residing within the recess, or, in the case of claim 39, residing entirely in the recess. If the Court were to limit claim 33 to contacts which are not flush with the surface there would be no difference between claim 33 and claim 38. In addition, as the Court noted in its Claim Construction Order, figures 24 and 25 of the specification disclose embodiments in which the terminal portion of the contact reaches the mounting surface.
2. extending from the terminal . . . to the mounting surface of the housing
Claim 33 includes an additional limitation which defendants claim is not met: "a mass of heat fusible material extending from the terminal portion to the mounting surface for establishing electrical continuity between the circuit substrate and the conductive member and adapted to secure to the major surface of the circuit substrate." `983, col. 20, 11. 13-17 (emphasis added). Defendants argue that in their devices the heat fusible material (the solder mass) does not extend from the terminal portion to the mounting surface because they are coincident: there is no distance between them.
Plaintiffs respond that as is evident from defendants' own declaration there is a dimple on the terminal portion of the contact that creates a (minuscule) distance between the terminal end and the mounting surface.See Defendants' Opp. at 10 (admitting that "minuscule" amounts "extend" from the terminal portion to the mounting surface). There is nothing in the language of the claim that limits it to only those devices in which "more than a minuscule amount" extends from the terminal portion to the mounting surface.
Defendants nonetheless contend that plaintiffs' straight-forward construction of the term is inconsistent with the prosecution history. In particular, they argue that the patent examiner considered as prior art the Sinclair `606 patent and that Sinclair is, for relevant purposes, identical to defendants' devices. Since the examiner allowed the `983, defendants argue, the examiner must have concluded that a minuscule distance does not amount to "extending from." The prosecution history, however, demonstrates that the examiner considered Sinclair and Dozier (another prior art patent) for a different purpose. There is no evidence that the examiner concluded that claim 33 does not cover minuscule amounts of the contact extending to the mounting surface.
C. Claim 35
Defendants also claim that their devices do not infringe dependent claim 35. In light of defendants' evidence, plaintiffs have withdrawn their motion for summary judgment in connection with this claim.
III. The `644
Plaintiffs also contend that defendants' devices infringe claims 3 and 5 of the `644 and have offered evidence that defendants' devices do so. Both claims recite "mounting a contact terminal on one surface of an insulative member with a portion of the terminal extending into the insulative member toward a second surface of the insulative member." `644, col. 18, 11. 24-33 and 11. 44-53 (emphasis added). As with the `983, defendants contend that "extending . . . toward" means that the terminal cannot extend all the way to the second surface, in other words, the terminal cannot extend so far toward the second surface so as to meet the second surface. For the same reasons their construction was not persuasive with respect to the `983, it is not persuasive here. "Extending toward" is a directional term; a contact terminal which extends toward the second surface and meets the second surface still extends toward the second surface. Moreover, as is stated above, figures 24 and 25 of the specification disclose embodiments in which the contact is flush with the housing.
Accordingly, no reasonable jury could find that defendants have not infringed claims 3 and 5 of the'644.
III. The `035
Plaintiffs also contend that defendants' devices infringe claims 1-3, 5, 8, 13 and 25 of the `035.
A. Claims 1-3, 5, 8 and 13
Claims 2, 3, 5, 8 and 13 are all dependent on Claim 1. Plaintiffs have offered evidence-engineering drawings and Intel specifications-that establish that defendants' BGA sockets infringe these claims.
Claim 1 recites, among other things, "a solder terminal portion extending from the medial portion in a direction away from said contact engaging portion." `035, col. 18, 11. 5-7 (emphasis added). Defendants argue that "in a direction away" means "completely opposite to, " that is, it must be limited to "linear" contacts. "[T]he two sections [of the contact] must be on the same line or plane in order for the solder terminal portion to extend `in a direction away' from the contact engaging portion." Defendants' Opp. at 15. Defendants then argue that because their contacts are "angled, " the solder terminal portion is not on the same plane as the contact engaging portion and therefore not "in a direction away."
The plain and ordinary meaning of "in a direction away" does not support defendants' narrow construction. Again, figures 24, 24a and 25 of the specification include "angled contacts" so defendants are seeking to exclude from the plain and ordinary meaning of the claim language a preferred embodiment. The Court declines to adopt their construction or their interpretation of the prosecution history and the "Seidler" prior art patent. Nothing in the prosecution history suggests that the examiner allowed claim 1 because he believed "in a direction away" was limited to "in a straight line away." There is thus no dispute that defendants' devices meet all the limitations of claim 1 as well as the dependent claims, except as discussed below.
B. Claim 5
Claim 5 includes the limitation: "wherein the solder terminal portion comprises a plating of a solder wettable material." Defendants assert that the specification clarifies that nickel plating is not a solder wettable material. Defendants' contacts are "comprised of a base material coated with a nickel layer over the entire reach of each device, then the mounting portion is covered with nickel." Defendants' Opp. at 18. Defendants contend that their devices do not infringe claim 5 because the solder terminal portions are covered with a non-solder wettable material.
While the solder terminal portions may be covered with a non-solder wettable material, it is undisputed that they are also covered with a solder wettable material, namely, gold. The devices have a layer of nickel underplating beneath the gold plating. Nothing in the language of claim 5 limits the claim to solder terminal portions that comprise only of a solder-wettable material. Indeed, the specification provides that "preferably the entire contact will be plated with nickel." `035, col. 10, 11. 56-57.
C. Claim 25
Claim 25 recites, among other things, "a mounting portion extending from said edge [of the carrier strip] and having a layer of solderable material substantially thereon, said mounting portion adapted to receive a fusible element." Defendants argue that "extending from said edge" means the mounting portion must be "attached" to the edge. In defendants' devices the mounting portion is attached to the medial portion which is then attached to the edge; they therefore claim their mounting portion does not "extend from the edge."
The Court agrees with plaintiffs that the plain and ordinary meaning of "extending from" does not also mean "attached to." Just as "extending toward" is a directional term, so too is "extending from." As it is undisputed that the mounting portion of the contact in defendants' devices extends away from the edge of the carrier strip, defendants' devices meet this limitation.
Defendants also argue that their devices do not infringe claim 25 because none of defendants' carrier strips possess a "mounting portion . . . having a layer of solderable material substantially thereon." They again point out that their carrier strips have a non-solderable nickel coating and therefore do not infringe. It is undisputed, however, that the mounting portion on defendants' devices are plated with a layer of solderable material. The fact that it also has a layer of non-solderable material does not mean that defendants' devices do not satisfy this limitation.