Opinion
CIVIL ACTION NO. 99-12468-GAO.
March 31, 2003.
MEMORANDUM AND ORDER
The plaintiff, Khyber Technologies Corporation ("Khyber"), holds United States Patent No. 5,696,496 ("'496 Patent") entitled, "Portable Messaging and Scheduling Device with Homebase Station." Khyber originally alleged that the defendant, Casio, Inc. ("Casio"), infringed Claims One, Two, Three, Four, Five, Nine, Ten, and Eleven of the '496 Patent through its Cassiopeia line of personal digital assistants. See 35 U.S.C. § 271. Casio counterclaimed for a declaration that Claims One, Two, Three, Nine, and Ten of the '496 Patent are invalid because they were anticipated in Japanese Publication 125367 ("'367 Publication") and that Casio's devices do not infringe Claims Four, Five, and Eleven of the '496 Patent. Casio has moved for summary judgment on its counterclaim.
On January 7, 2002, Khyber notified the Court that in the course of on-going reexamination proceedings before the Patent and Trademark Office, it voluntarily cancelled Claims One, Nine, Ten, and Eleven of the '496 Patent. See Notice of Cancellation of Certain Claims in Reexamination (docket no. 156). This cancellation does not affect Casio's motion for summary judgment as to Claims Two through Five. See 35 U.S.C. § 282 ("Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims. . . ."). Casio has also moved for sanctions against Khyber for failure to comply with a discovery request. For the reasons discussed below, Casio's motion for summary judgment is denied as to the anticipation ground, but is granted as to the non-infringement ground. Its motion for sanctions is denied.
A. Patent Claim Analysis
The analysis of patent invalidity and of patent infringement proceeds in two steps. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362 (Fed. Cir. 1999). First, the Court construes the language of the relevant patent claims to determine their proper meaning and scope. This first step, commonly referred to as claim construction, is a legal issue to be resolved by the court. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996). After that has been done, the fact-finder compares the properly construed claims to the prior art to determine whether the claims were anticipated, see Oakley v. Sunglass Hut Int'l, 316 F.3d 1331, 1339 (Fed. Cir. 2003), or to the accused device to determine whether the claims were infringed, Minnesota Mining and Mfg. Co. v. Johnson Johnson Orthopaedics, Inc., 976 F.2d 1559, 1570 (Fed. Cir. 1992). Applying this two-step framework to the present case, the first task is to resolve the parties' disputes regarding the proper understanding of the terms used in Claims One through Five of the '496 Patent. The properly construed terms then can be compared with the '367 Publication and with Casio's devices to determine anticipation and infringement.
B. Claim Construction
Claim construction begins with an examination of the language of the claims themselves. See Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1357 (Fed. Cir. 1999). The words in a claim "are generally given their ordinary and accustomed meaning, unless it appears from the specification or the file history that they were used differently by the inventor." In re Paulson, 30 F.3d 1475, 1480 (Fed. Cir. 1994). When defining a claim's terms, a court must give the disputed claim term "the full range of its ordinary meaning as understood by persons skilled in the relevant art." Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002). If the claim language is unambiguous on its face, the court need not consider any additional evidence. See Smiths Indus. Med. Sys., 183 F.3d at 1357.
When the meaning of a term is not clear from the claim alone, the court must look first to the intrinsic evidence to aid its understanding of the term. The Federal Circuit has emphasized that the specification "is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (1st Cir. 1996). Additionally, "it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." Id. at 1582. However, the specification may not serve to place unnecessary constraints on the scope of a claim. See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir. 2002) (holding that "interpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper" (citations and quotations omitted, emphasis in original)).
When patent claims recite a specific "means" for performing a specific "function," the specification may be particularly important in determining the proper scope of the claim. Congress has established that:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.35 U.S.C. § 112 ¶ 6. When a court determines that a patent claim is presented in "means-plus-function" format, it must look to the specification to determine what kinds of devices are covered by the claim. See Kemco Sales. Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1360-61 (Fed. Cir. 2000). Only devices which are described in the specification, and devices which are "equivalent" to those described will fall under the claim. Id. at 1364. A device is an "equivalent" under 35 U.S.C. § 112 if it "performs the identical function" as the device described in the specification, and "is otherwise insubstantially different with respect to structure" from the described device. Kemco Sales, 208 F.3d at 1346.
If the patent by itself does not adequately settle the meaning of a term, extrinsic evidence, such as expert testimony, may be considered. See Markman 52 F.3d 967, 980 (1995) (a court may "receive extrinsic evidence in order to aid the court in coming to a correct conclusion as to the true meaning of the language employed in the patent") (citations and internal quotations omitted), aff'd, 517 U.S. 370 (1996). A court may also use extrinsic evidence "to ensure that the claim construction it is tending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999). However, if a court finds it necessary to examine extrinsic evidence, it must take care not to use such evidence "to contradict the meaning of claims discernible from thoughtful examination of the claims, the written description, and the prosecution history — the intrinsic evidence." Id. at 1308 (emphasis in original). In sum, while extrinsic evidence may educate and inform the court about what is clear in the claim language to a person of ordinary skill in the relevant art, it may not be used to vary or to supersede the plain meaning of the claim as apparent from the intrinsic evidence.
1. Claim One
Because Claim One of the '496 Patent is an independent claim, from which all of the other claims at issue depend, it is crucial to construe its terms first. See also 35 U.S.C. § 112, ¶ 4 ("A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers."). Claim One discloses:
A personal organizer and messaging device, comprising a handheld unit dimensioned for handheld grasping and carrying substantially within a shirt pocket including:
audio input means for receiving and recording an audio message and generating a representative audio message signal; memory means for storing said audio message signal; processor means for controlling the receipt of said audio message signal, storing said audio message signal, and non-sequentially selectively recalling said audio message signal; audio output means for receiving said non-sequentially selectively recalled audio message signal, and for playing back said non-sequentially selectively recalled audio message; and a handheld housing for carrying the audio input means, the memory means, the processor means and the audio output means.See '496 Patent, 9:1-18. The following three terms in Claim One must be construed to permit analysis of Casio's invalidity arguments: (1) "substantially within a shirt pocket," (2) "memory means," and (3) "audio output means."
The proper construction of these terms in Claim One makes it unnecessary to construe the terms "touch panel" and "stylus means selectively detachably mounted," used in Claim Three for the reasons that are explained, infra.
a. "substantially within a shirt pocket"
The plain and ordinary meaning of the "substantially within a shirt pocket" limitation is that the device claimed in the '496 Patent must fit in the pocket found on the chest of an average size man's dress shirt. That is evident from the plain meaning of the non-technical words of the limitation. The small size requirement of the claimed device is confirmed at other points in Claim One. The claim states that the handheld unit is "dimensioned for handheld grasping," and it states that all of the device's components must fit in "a handheld housing." '496 Patent, 8:63, 9:10. The specification further supports this construction, stating that the preferred embodiment of the housing "should be about what may be comfortably grasped in a human operator's hand and fit within a conventional shirt pocket for ease of use carrying, e.g. about 1.8 inches (4.6 cm) wide, 6.25 inches (15.9 cm) long and 0.8 inches (2.0 cm) thick with rounded edges." Id., 4:1-5. See also id., 8:44-45 (stating that the device's housing "is portable, handheld and adapted for convenient carry in a shirt-pocket"). The specific dimensions mentioned in the specification are not part of the limitation, but they confirm the plain meaning of the language.
Casio argues that "shirt pocket" should be construed to include all possible shirt pocket sizes, including pockets that are much larger than those of a standard dress shirt. However, to determine the meaning of a term, it is not appropriate to rely on rare or unusual uses of that term, since such versions cannot be described as embodying the term's "ordinary meaning."See Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195 (Fed. Cir. 1999) (patent term given its "plain and ordinary meaning" unless something in the patent or prosecution history compels otherwise). Since the claims themselves and the specification all indicate that the phrase "fits substantially within a shirt pocket" refers to a small device which can be grasped in one hand, Casio's argument that "shirt pocket" should be construed to include the pockets of unusually large shirts is not persuasive.
b. "memory means"
The phrase, "memory means for storing said audio message signal," refers to solid state digital memory that is integrated into the device. This understanding of the term "memory means" would be clear to one skilled in the relevant art upon reading the patent. The claim itself states that the memory means must be contained within the handheld housing of the device, strongly suggesting that the memory is physically incorporated into the handheld organizer. See '496 Patent, 9:10. In addition, the term "memory means" is presented in "means-plus-function" language, so the court "must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof. . . ." Kegel Co. v. AMF Bowling. Inc., 127 F.3d 1420, 1427 (Fed. Cir. 1997) (citation omitted). The specification states that the memory means "may be any suitable digital memory of sufficient capacity to store any extent of program not onboard microcontroller 23 and the desired number and length of voice messages discussed below. 512K Bytes of CMOS static RAM has been found adequate to retain over 200 scanned or written messages, over 30 four-second long verbal messages or a mix thereof." '496 Patent, 4:40-46. Gary Barrett, an expert in handheld organizer technology, explains that "CMOS static RAM" is a form of solid state memory (or memory in chip form). See Barrett Aff. ¶¶ 18-19. The specification also lists the memory means as one of the devices which may be mounted directly on the main printed circuit board inside the device. '496 Patent, 4:7-14.
The memory means does not include memory in the form of writable optical disks that are independent of the device. Nothing in the claim or the specification appears to contemplate that the memory means would be independent or removable from the handheld organizer. Instead, the figures and the specification all refer to memory which is integrated into the device. It is also unlikely that a person of ordinary skill in the art would understand that the memory means could be independent of the handheld organizer. Barrett states that at the time the '496 Patent was developed and granted, solid state memory was the only memory means available that would allow miniaturization of the disclosed device to a size capable of fitting "substantially within a shirt pocket." Barrett Aff. ¶ 20. He also states that for the claimed device to be used in the "on-the-run" fashion described in the specification, it would have to utilize solid state memory because solid state memory consumes little energy and could operate on standard AA batteries and because it could function regardless of minor jolts or changes in the angle of the device. Barrett Aff. 22, 23. Memory in the form of writable optical disks is not energy efficient enough to operate well with AA batteries, and optical discs do not perform reliably if they are not placed on a stable, flat surface. Id. Casio does not offer any expert testimony that would compete with or contradict Barrett's testimony regarding the capacity of the memory means necessary for the claimed device to function.
c. "audio output means"
Claim One states that the handheld device must include an "audio output means" which functions to receive and play back audio message signals. '496 Patent, 9:6-9. Like the memory means, Claim One contemplates that the audio output means will be housed inside the handheld device. Id., 9:10-12. Both parties acknowledge that in the specification this audio output means is referred to as "a speaker for audio output receiving the output from audio amplifier. . . ." '496 Patent, 5:3-4 (numerical reference refers to Figures 3 and 8). Since the "audio output means" is set forth in means-plus-function language, this description of the output means in the specification delimits the scope of the term. The audio output means covers any speaker-like structure which is housed inside the handheld device and which is capable of receiving and audibly playing back audio message signals.
2. Claims Four and Five
Claims Four and Five can be construed together because Claim Five depends from Claim Four and because the disputed term, "homebase station," is used in both. Claims Four and Five disclose:
4. A device as set forth in claim 1, further including a homebase station for transmitting messages to and receiving messages from said handheld housing, said handheld housing means and said homebase station means in selective operative communication.
5. A device as set forth in claim 4, in which said homebase station further includes a communication circuit for transmitting messages to and receiving messages from external sources.See '496 Patent, 9:24-32. The parties dispute whether the homebase station disclosed in Claims Four and Five must be "intelligent," which is to say whether it must do more than passively allow transfer of energy and data to and from the handheld device. The meaning of the term "homebase station" is not clear from the claims alone, and can only be properly understood from the lengthy discussion of its structure and function in the rest of the patent. See id., 5:61-6:37. Claims Four and Five also rely on the "means-plus-function" style of claiming by referring to the "homebase station means" rather than detailing the structure of the homebase station in the body of the claim itself.
The specification offers several important insights into the meaning of the term "homebase station." When the homebase station is introduced, the specification explains that it "may include a variety of features for supporting and in addition to those of [the] handheld unit." Id., 5:63-65. Figure 1 of the patent illustrates how the smaller, portable handheld device could be inserted into the larger homebase device. Although the specification describes many features which "may" be included in the homebase station, it is notable that some features are not treated as optional. The specification states that the homebase station "allows supplemental key input to portable unit 11, supplemental message storage, communications with external devices, and charging of batteries 31 in portable unit 11."Id. 6:16-19. While the Court is mindful that it cannot read unnecessary restrictions into a term's scope from the specification, the specification strongly suggests that the homebase station is not merely a conduit through which information and power pass to and from the handheld device. At a minimum, the homebase station offers the user one or more ways to enter data (as through a keyboard) directly into the memory of the homebase station or into the memory of the handheld device.
This understanding of the term "homebase station" is also the only one which gives independent meaning to Claims Four and Five. Claim Four discloses a homebase station that is capable of transmitting messages to and receiving messages from the handheld device. Claim Five discloses that the homebase station, in addition to being able to exchange messages with the handheld device, shall include a "communication circuit" so that it can also transmit messages to and receive messages from an external source. Accordingly, the claims themselves dictate that the homebase station must be capable of transmitting and receiving messages without the participation of an external source (Claim Four) and that it may be capable of transmitting and receiving messages with an external source, such as a personal computer (Claim Five).
C. Anticipation
Casio argues that Claims Two and Three of the '496 Patent are invalid because they were anticipated in the Japanese Publication. Invalidity analysis must begin from the established principle that a patent is presumed valid, and the party challenging it bears the burden of proving the invalidity claim by clear and convincing evidence. See 35 U.S.C. § 282; Ryko Mfg. Co. v. NuStar Inc. 950 F.2d 714, 715-16 (Fed. Cir. 1991). However, a patent claim is invalid if "the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States." 35 U.S.C. § 102(b). A finding of "[i]nvalidity for anticipation requires that all of the elements and limitations of the claim are found within a single prior art reference. There must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention." Scripps Clinic Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) (internal citations omitted).
Whether a prior publication anticipated a patent's claims is a question of fact. See Hoover Group, Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302 (Fed. Cir. 1995). Accordingly, Casio can only prevail on its motion for summary judgment if, on the present record, no reasonable fact finder could fail to conclude that Claims Two and Three of the '496 Patent were anticipated. See Hazani v. United States Int'l Trade Comm'n, 126 F.3d 1473, 1477 (Fed. Cir. 1997) (Summary judgment on an anticipation claim is appropriate if there is "no genuine dispute whether the limitations of the claimed invention are disclosed, either explicitly or inherently, by an allegedly anticipating prior art reference"). Since Casio has not sufficiently established that all of the elements in Claim One are anticipated in the '367 Publication, its motion for summary judgment on the invalidity of Claims Two and Three fails.
1. Shirt Pocket Size of Khyber's Handheld Device
Casio has not adequately shown that the '367 Publication discloses a device that is shirt pocket sized. The '367 Publication, entitled, "Portable Information Search Apparatus," states that one of the objects of the device it describes is to provide "high portability." See Yampolsky Aff. Ex. B at 504, lower right block (Khyber's translation of the '367 Publication). However, a device can be considerably larger than a shirt pocket and still be described as portable.
The parties dispute the proper translation of the publication at several key points. However, Casio has conceded that for the purposes of the summary judgment motion, it will rely on Khyber's translation of the publication. See Reply of Def. Casio in Supp. of its Mot. for Summ. J. at 7.
The description of the Japanese device in the "Embodiment" section of the '367 Publication also does not conclusively establish that the device is shirt pocket sized. The Embodiment section states that a "portable audio CD player . . . is an example of a technologically similar small reproducing device for magnetooptical disks" and that it is "possible to decrease the size of the [claimed] reproducing device to that of the CD player." Yampolsky Aff. Ex. B at 505, lower left block. Casio has not demonstrated that a standard portable CD player could fit substantially within a shirt pocket as that element is construed above. The "substantially within a shirt pocket" element in Claim Two of the '496 Patent is a size limitation that was not anticipated in the '367 Publication.
2. Memory Means of Khyber's Handheld Device
The '367 Publication also does not anticipate the memory means claimed in the '496 Patent. The memory means claimed in the '367 Publication consists of "a writable optical disk drive provided with a slot for inserting an optical disk." Yampolsky Aff. Ex. B at 503, lower left block. Since the Court had determined that the "memory means" element in the '367 Publication refers to solid state digital memory that is permanently integrated into the core of the device, the memory means of the two devices is not the same.
Casio's argument that the '367 Publication discloses solid state memory is unconvincing. Casio argues that the '367 Publication discloses a solid state memory means and then disparages it, constituting anticipation under Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). But in Celeritas, the prior reference disclosed a device and showed it "to be less than optimal." Id. In contrast, the '367 Publication presents its use of optical disk memory as a solution to the perceived problem that a portable device that can perform a wide variety of tasks cannot be made with solid state memory (also known as semiconductor memory). For example, in a section entitled "Background Technology," the '367 Publication states that the then-existing:
ordinary portable terminals using a semiconductor memory as a storage medium have a limited storage capacity. Presently they are used only for storing text and numerical data and are not suitable for storing large volumes of data, for example, audio data and images. . . .
Modern small personal computers and word processors are referred to as laptop devices. Actually, they can hardly be considered handy devices. Furthermore, floppy disks are currently the main storage medium, but their capacity is insufficient for multimedia storage. Optical file systems are also used as high-capacity storage media, but they are usually in the form of desk-side systems and are not portable. Moreover, they are mainly postscript-type devices and are not suitable for free editing.
Thus, in the conventional portable data terminals, there were problems associated with storage capacity and operability. In particular, a small storage capacity was a crucial drawback from the standpoint of developing a portable device with a data storage and search function, which employs multimedia.Yampolsky Aff. Ex. B at 504, upper right block — 504 lower left block. The '367 Publication goes on to assert that one of the goals of the disclosed invention is to "resolve the problem of insufficient storage capacity and to improve operability of the conventional portable terminals . . ." Id. at 504, lower right block. The publication claims that the "most important feature of the invention described in Claim 1 is the fact that the utilization of a writable optical disk as a storage medium and the formation of an integrated input-display device make it possible to employ multimedia and improve operability." Id. at 504, lower right block. The invention disclosed in the '367 Publication was intended to solve a perceived storage and functionality problem through the use of optical disks. The publication's reference to solid state memory states that semiconductor memory is "not suitable for storing large volumes of data" and therefore, unlike in Celeritas, the inventors believe that their device could not operate using semiconductor memory. A technological advancement seems to have enabled the memory means claimed in the '496 Patent to surmount the hurdle noted in the '367 Publication.
3. The Audio Output Means of the '496 Patent
The '367 Publication also differs from the '496 Patent because it does not anticipate the inclusion of a speaker in the device. In the Embodiments section, the '367 Publication states that the device could include a microphone and earphone jack. See Yampolsky Aff. Ex. B at 504, lower left block. The '367 Publication envisions that the device's user will plug earphones into the device's jack to output sound. The '496 Patent's use of a speaker that is housed within the device itself is sufficiently distinct that it is not anticipated in the '367 Publication. See also Trintec Indus. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) (under the "strict identity" test applied to determine the novelty of an invention, even "minimal" differences that would be "obvious" substitutions to someone skilled in the relevant art will defeat an anticipation claim).
Because Casio has not established that the '367 Publication anticipates every element of Claims Two and Three, the motion for summary judgment must be denied. However, since the correct understanding of the '367 Publication depends on its proper translation, these issues may be revisited at trial when the accuracy of Khyber's translation can be tested.
D. Infringement
Casio also seeks summary judgment on its claim that its Cassiopeia line of handheld organizers does not infringe Claims Four and Five of the '496 Patent. An accused product infringes a patent if it "contains each limitation of the asserted claim, or an equivalent of each limitation." Electro Scientific Indus., Inc. v. Dynamic Details Inc., 307 F.3d 1343, 1350 (Fed. Cir. 2002). In other words, "each element of a claim is material and essential, and . . . in order for a court to find infringement, the plaintiff must show the presence of every element or its substantial equivalent in the accused device. . . ." Wolverine World Wide. Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994) (internal quotations omitted). Since infringement is a question of fact, summary judgment on this issue is only appropriate if "no reasonable fact finder could conclude that the accused device meets each and every limitation of the properly construed claims." MacNeill Eng'g Co. v. Trisport, Ltd., 126 F. Supp.2d 51, 57-58 (Mass. 2001) (citing IMS Tech., Inc. v. Haas Automation. Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000)). In this case, summary judgment on the infringement claim is appropriate because the focus of the parties' dispute is the proper understanding of Claim Four's and Five's reference to a "homebase station" that is in "selective operative communication" with the handheld device, and not about the operation of the Cassiopeia. See Athletic Alternatives. Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578 (Fed. Cir. 1996) (if "the parties do not dispute any relevant facts regarding the accused product but disagree over" the meaning of the language in the claims, "the question of literal infringement collapses to one of claim construction and is thus amenable to summary judgment.")
The Cassiopeia does not infringe Claims Four or Five because the Cassiopeia's cradle is not the same as or equivalent to the homebase station. As construed above, Claim Four requires the homebase station to be capable of independently generating messages which then can be sent to the claimed device. The Cassiopeia's cradle cannot perform this function. Instead, the cradle simply holds the device while it charges the device's batteries and it acts as a data conduit between the device and a personal computer. The cradle cannot be the end point for a message transmitted from the device and it cannot, without input from an external source, transmit a message to the device. Since these facts are undisputed, Casio's motion for a declaration of non-infringement as to Claims Four and Five is granted.
E. Casio's Motion for Sanctions
Casio asks the Court to sanction Khyber for its failure to create transcripts of its ex parte interviews with the Patent and Trademark Office ("PTO") re-examiner, and for its failure to produce the Casio IF 8000 as relevant prior art. As a basis for its motion, Casio cites Federal Rule of Civil Procedure 37(d)(3) which authorizes a Court to sanction a party for failure "to serve a written response to a request for inspection submitted under Rule 34. . . ." Rule 34(a)(1), in turn, provides that a party may request any other party "to produce and permit the party making the request . . . to inspect and copy, any designated documents (including writings, drawings, graphs, charts . . .), or to inspect and copy, test, or sample any tangible things. . . ." However, these Rules do not provide a basis for Casio's claim that it is entitled to a transcript of the interviews that took place or will take place as part of Khyber's request for a re-examination of the patent by the PT. Rule 34 only allows parties to request and inspect documents that already exist and does not require parties to create documents. See Alexander v. F.B.I., 194 F.R.D. 305, 310 (D.C. 2000) (denying a motion to compel the production of a list where there was no evidence that such a list existed).
The Court was never presented with a motion to compel the requested discovery. Casio claims that it did not file a motion to compel because Khyber never filed a formal opposition.
Khyber's failure to produce the Casio IF-8000 also is not sanctionable under Rule 37(d). The Casio IF-8000 was in the possession of the inventor of the '496 Patent, Kumar. Kumar discovered that the device was in his possession when he happened upon it while moving, and realizing that it could be relevant to the pending lawsuit, he gave it to his lawyers. The attorneys assert that the device was apparently stolen from their office. They provided the manual and all of the other documents that were not stolen. Casio does not allege that the representations of Khyber's lawyers are untrue or made in bad faith. Sanctions are not warranted.
F. Conclusion
For the foregoing reasons, Casio's motion for summary judgment (docket no. 92) is DENIED as to its challenge to the validity of Khyber's patent, but is GRANTED as to its request for a finding of non-infringement with respect to Claims Four and Five.
The motion for sanctions (docket no. 144) is DENIED.
It is SO ORDERED.