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MOORE U.S.A. INC. v. STANDARD REGISTER

January 30, 2001

MOORE U.S.A. INC., AND TOPPAN FORMS CO., LTD., PLAINTIFFS,
V.
THE STANDARD REGISTER COMPANY, DEFENDANT.



The opinion of the court was delivered by: Curtin, District Judge.

INTRODUCTION

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.

BACKGROUND

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."

FACTS

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 characterized by:

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 than 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

DISCUSSION

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 at 979).

"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. Exh. B.

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 ...


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