The opinion of the court was delivered by: Curtin, District Judge.
Here, the court discusses two of the four motions currently
before the court in this patent infringement action: (1)
defendant Standard Register Company's ("SRC") motion for summary
judgment on the issue of whether it has infringed United States
Patent Number 5,201,464 ("the '464 patent"), Item 177; and (2)
plaintiff Moore North America, Inc.'s ("Moore NA") cross-motion
for summary judgment on the issue of whether SRC has infringed
claim 1 of the '464 patent, Item 124.
In layman's terms, the '464 patent covers a certain kind of
"two-way C-Fold mailer." However, the term "two-way C-Fold
mailer" is generic; not all C-Fold mailers are covered by the
'464 patent. Obviously, Moore NA believes that its twoway
C-Fold mailer — the '464 mailer — is the best two-way C-Fold
mailer available on the market. Two-way C-Fold mailers enable
the sender of mail to combine outgoing mail (e.g., a bill for
services or goods) with a detachable receipt or stub and a
pre-addressed envelope that the recipient conveniently uses to
respond to the mailing. Two-way C-Fold mailers have become
commonplace throughout the business world, with many businesses
using them to bill their customers. See Item 142, pp. 1-2. For
this reason, the court often refers to Moore NA's patented
C-Fold mailer as "the '464 mailer."
Moore NA accuses SRC of infringing the '464 patent by making
and using a twoway C-Fold mailer that this court has referred to
as "Form # 2." See Item 71, p. 2.*fn1 Here, the court
refers to Form # 2 as "the accused form."
I. SRC's Entry into Product Market
In 1993, SRC began to research two-way C-Fold mailers — both
the technology involved and the demand for them in the United
States. See Item 142, p. 3. After some preliminary
investigations, SRC decided to enter the U.S. market for two-way
C-Fold mailers. Soon thereafter, SRC bought a "forms making
machine" from a Swiss company called Hunkeler ("the Hunkeler
machine"). The Hunkeler machine, Which had been made in
Switzerland, was designed to "assemble" two-way C-Fold mailers.
Item 178, Exh. 2, 4 & 5.*fn2 In the fall of 1993,
representatives from SRC traveled to Switzerland to learn how to
use the Hunkeler machine. Id. When it traveled to Switzerland,
the SRC team took the paper, pressure seal adhesive, and the
blueprints that it needed to make the forms that would be used
to test the Hunkeler machine. See Item 192, p. 6. While in
Switzerland, the SRC team manufactured approximately 10,000 of
the accused forms (Form # 2). Id. ¶ 6. The SRC team later
returned to the United States in the fall of 1993 and brought
most of these 10,000 accused forms with them. Id. ¶ 7. SRC
sales representatives then used these accused forms for
demonstration purposes at a 1993 trade show in Denver, Colorado.
Item 178, Exh. 2, ¶ 7; see also Item 142, pp. 3-4.
David Washburn, the Technical Director of Production Equipment
Development for SRC, states: "To the best of my knowledge . . .
none of the [accused] Image Seal forms that [SRC] produced on
the Hunkeler machine prior to the summer of 1994 was sold." Item
178, Exh. 2, ¶ 11. Furthermore, Washburn states that the accused
forms were all "experimental" and "were simply thrown away after
they were evaluated." Id. ¶ 13.
II. Claim 1 of the '464 Patent and the Accused Form
In its motion for partial summary judgment, Moore NA offers a
detailed explanation of how the accused forms "read on," or
literally infringe, the '464 mailer. See Item 142, pp. 7-8 and
Exhs. A-C. Moore NA has also carefully explained what is claimed
in claim 1 of the '464 patent. A review of Moore's explanation
and a careful reading of claim 1 reveal that the '464 mailer is
perforated lines that are parallel to and adjacent to
the "longitudinal" edges of the '464 mailer;
two strips of adhesive, which are placed on the
back-face's margins*fn3 and which extend along the
majority of those margins;
two more strips of adhesive that run parallel to the
first two strips and are also on the mailer's
back-face. However, these third and fourth strips are
placed on the other side of the perforated lines
than the first two strips are. These third and fourth
strips also extend "a distance substantially less
the extent of [the] first and second strips" of
adhesive; and finally
two more strips of adhesive that are placed in the
front-face's "longitudinal" margins.
See Item 142, Exh. A, B, and C.*fn4
Generally speaking, "[a]n infringement analysis entails two
steps. The first step is determining the meaning and scope of
the patent claims asserted to be infringed. The second step is
comparing the properly construed claims to the device accused of
infringing." Markman v. Westview Instruments, Inc.,
52 F.3d 967, 976 (Fed.Cir. 1995). Courts may resolve issues of claim
construction in the context of a summary judgment motion, since
claim construction is a matter of law. See Markman v. Westview
Instruments, Inc., 517 U.S. 370, 376-78, 116 S.Ct. 1384, 134
L.Ed.2d 577 (1996).
In the first step of the infringement analysis, courts may
rely on three sources of evidence in order to construe the claim
"the claims themselves and the ordinary and accustomed meaning
of the words employed, the written description of the
specification (which describes one or more embodiments of the
invention in sufficient detail to enable one of ordinary skill
in the art to make and use the invention), and the patent's
prosecution history." Item 142, p. 6 (citing Markman, 52 F.3d
"In the second step of the infringement analysis, the trier of
fact determines whether the claims as construed by the Court
`read on' (or cover) the accused device. . . ." Item 142, p. 6
(citing Markman, 52 F.3d at 976).
Here, the issue of whether the '464 patent has been infringed
may be resolved as a matter of law since there is no viable
dispute over the claim's language, nor is
there a dispute over the structure of the accused form. See,
e.g., Celotex v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91
L.Ed.2d 265 (1986) (reciting standard of review in motion for
summary judgment). Although SRC does dispute whether the
language of claim 1 is sufficiently explained and defined, the
court finds otherwise. See infra Discussion, Part I. Later,
the court will also take up SRC's defense that it never made
commercial use of the accused form and therefore cannot be found
liable for infringement. See infra Discussion, Part II.
I. Claim 1 of the '464 Patent and the Accused Form
The court's construction of claim 1, see supra Facts Part
II, and its assessment of the accused form reveal that the
accused form reads on claim 1 of the '464 patent. That is, the
accused form's construction and design are virtually
indistinguishable from the "embodiments" that were included
within the '464 patent itself.
More specifically, both the '464 mailer and the accused form
have perforated lines parallel to and adjacent to the mailer's
edges; two strips of adhesive placed on the back face's margins
and extending along the majority of those margins; two more
strips of adhesive running parallel to the first two strips but
on the other side of the perforated lines than the first two
strips and extending "a distance substantially less than the
extent of [the] first and second strips" of adhesive; and
finally two more strips of adhesive placed on the front face's
margins. Compare Item 142, Exh. A Figures 1 and 2 with id.
Put simply, the '464 mailer and the accused form are
essentially identical in every material way-both in how they are
laid out and configured. Thus, "every limitation recited in
. . . the claim appear[s] in the accused [form], i.e., . . .
the properly construed claim reads on the accused device
exactly." Cortland Line Co., Inc. v. Orvis Co., Inc.,
203 F.3d 1351, 1358 (Fed. Cir. 2000).
SRC does not expressly deny that the accused form reads on
claim 1 of the '464 patent. Instead, SRC argues that this court
must first require Moore NA to construe and define claim 1
before granting Moore NA relief. SRC insists that Moore NA has
failed to proffer a construction for many of claim 1's ambiguous
terms. Further, SRC insists that Moore NA must construe and
define claim 1 without referring at all to the accused form.
See Item 171, pp. 5-6 (citing Scripps Clinic & Research
Foundation v. Genentech, Inc., 927 F.2d 1565 (Fed.Cir. 1991)).
The court rejects SRC's argument on this point. Although the
language of claim 1 is somewhat technical and does not make for
light reading, the plain meaning of the claim becomes apparent
after a careful review of the language and the embodiments. See
supra Facts, Part II (construing claim 1 and what kind of
C-Fold mailer it describes). Therefore, no further claim
construction is necessary in the context of Moore's present
motion for partial summary judgment.
For reasons stated supra, then, the accused form reads on
claim 1 of the '464 patent. However, a separate question is
presented regarding whether SRC infringed the '464 patent by
making, using, and testing the accused form ...