The opinion of the court was delivered by: Kenneth M. Karas, District Judge
Plaintiff, Capital Bridge Co., filed this patent infringement suit against Defendants IVL Technologies, Ltd. ("IVL"), Memcorp, Inc., and Craig Electronics, Inc. ("Defendants"), claiming patent infringement under 35 U.S.C. § 271. Defendants move for summary judgment claiming there is no genuine issue of material fact relating to infringement either literally or under the doctrine of equivalents. For the reasons stated herein, the motion is granted.
Plaintiff, which purports to be "organized under the laws of the state of New York," (Compl. ¶ 2) is the owner of U.S. Patent No. 6,025,553 ("the '553 patent") entitled Portable Music Performance Device, which is a wireless, portable, hand-held karaoke device. (Compl. ¶ 8) The invention allows users to select songs and musical accompaniment using a keypad on the device and to wirelessly broadcast their voices along with the music to multiple FM receivers that are tuned to the correct station. See U.S. Patent No. 6,025,553 col.2. l.51-67, col.3 l.1-6 (mailed August 29, 1997) [hereinafter '553 Patent]. In the specification, Plaintiff explains that the device was created to overcome the disadvantages of the typical karaoke system; including the bulkiness and cost of the equipment, the need for wires, the inability to use the systems in cars or outdoors, and the inability to have the performance amplified by multiple receivers in different rooms. See '553 Patent col.1.15 - col.2 l.37.
Defendant IVL manufactures T.V. Star Player and Disney Princess Karaoke and sells them to national retailers and international distributors. (Decl. of Brian Gibson in Supp. of Summ. J. ¶ 4 ("Gibson Decl.")) Defendant Memcorp purchases Disney Princess Karaoke and distributes the product to retailers. (Gibson Decl. ¶ 4) Defendant Craig Electronics manufactures an industrial design of T.V. Star Player, under license from IVL, which is electronically identical to IVL's device and uses custom component parts purchased from IVL. (Gibson Decl. ¶ 4) These devices constitute the accused devices.
The '553 patent consists of forty claims, including independent claims 1 and 22, which are at issue in this case. Claim 1 reads: "a portable, self-contained hand-carried music performance device for wirelessly transmitting musical accompaniment information stored in a storage medium therein and a voice input from a user, for reception and reproduction by an external receiver and speaker unit." '553 Patent col.10 l.27 (emphasis added). Claim 22 reads: "[a] portable, hand-carried music performance device capable of transmitting wirelessly both musical accompaniment information stored therein in a storage medium and reproduction by an external speaker unit." Id. at col.13 l.6 (emphasis added). The dependent claims in the '553 patent do not use the term wirelessly, however multiple claims refer to transmission through an antenna.
The application process for the '553 patent involved multiple amendments to achieve patentability. Of particular concern for the Patent and Trademark Office ("PTO") was the prior art established by the Takao patent, U.S. Patent No. 5,349,480, and the Mankovitz patent, U.S. Patent No. 5,408,686. The Takao patent taught a portable music performance device, but did not disclose the transmission means. (Decl. of Georgia Damoulakis in Supp. of Summ. J. Ex. B 332 ("Damoulakis Decl.")) The PTO examiner believed that when Takao was combined with Mankovitz, which teaches a means for transmitting human voice and musical accompaniment, a person of ordinary skill could achieve Plaintiff's invention. (Damoulakis Decl. Ex. B 333) In response to the PTO's rejection, Plaintiff first amended the claims to add "elements, other than a transmitting means," that Plaintiff believed were not taught or suggested by Takao. (Damoulakis Decl. Ex. B 356) In the first amendment, Plaintiff added details to claim 1 so that where the claim once referred to "a portable music performance device," the claim was changed to "a portable, self-contained hand-carried music performance device." At this time there were only 21 patent claims.
The first amendment was rejected on the same grounds as the original application, and the PTO again referred to additional patents that presented prior art issues. (Damoulakis Decl. Ex. B 361) Plaintiff then filed a second amendment explaining in the remarks that the claims were amended and new claims were added "to more clearly set forth that which [Plaintiff] regards as the invention" and "to more clearly and thoroughly define the subject matter." (Damoulakis Decl. Ex. B 395) It was in this August 29, 1997 amendment that the opening clause of claim 1 was finally amended to read "[a] portable, self-contained hand-carried music performance device for wirelessly transmitting . . . ." (Damoulakis Decl. Ex. B 386) The final clause of claim 1 was also amended to read, a "transmitter disposed in said casing for wirelessly transmitting" instead of just a "means for transmitting." (Damoulakis Decl. Ex. B 387) Similarly, claim 22 was added to the patent application, referring to a device capable of transmitting wirelessly. (Damoulakis Decl. Ex. B 389) The August 29, 1997 amendment was made following an unrecorded conversation in approximately June 1997 between Plaintiff and the PTO, leaving the inference that the addition of "wireless" was a result of those conversations. (Damoulakis Decl. Ex. B 395)
Recently, Plaintiff has requested amendments to the '553 patent that would remove the term "wirelessly" from claim 1. However, the PTO has rejected early amendments and the latest application for amendment is pending with the PTO.*fn1
Defendants' accused devices also serve as hand-held karaoke devices, however the devices do not use wireless transmission. (Gibson Decl. ¶ 9) In order to operate, the devices are connected by wires to a television. (Gibson Decl. ¶ 5) Also, the devices only send signals to a single receiver. (Gibson Decl. ¶ 11)
"Summary judgment shall be granted when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). The determination will be based on the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any." Id. The burden of proof is on the movant to show no genuine dispute of fact and all inferences must be drawn in favor of the non-movant. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). "If the evidence is such that, when viewed in the light most favorable to the nonmoving party, a reasonable fact finder could return a verdict for that party, then a genuine issue of material fact exists." Magan v. Lufthansa German Airlines, 339 F.3d 158, 161 (2d Cir. 2003). The genuine issue of material fact "is not required to be resolved conclusively in favor of the party asserting its existence; rather, all that is required is that sufficient evidence supporting the claimed factual dispute be shown to require a jury or judge to resolve the parties' differing versions of the truth at trial." First Nat'l Bank of Ariz. v. Cities Serv. Co., 391 U.S. 253, 288-89 (1968); see also Magan, 339 F.3d at 161 (citing Green Door Realty Corp. v. TIG Ins. Co., 329 F.3d 282, 286-87 (2d Cir. 2003)); see also Pinto v. Allstate Ins. Co., 221 F.3d 394, 398 (2d Cir. 2000).
Infringement analysis is a two-step process. First, as a question of law, the Court must determine the scope of the patent claims allegedly infringed by analyzing the claim construction through the use of intrinsic and extrinsic evidence. See Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 1105 (Fed. Cir. 2000) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)). Second, the accused device must be compared to the properly construed scope of the claim to determine if the accused device infringes the patent, either literally or through the doctrine of equivalents. Id.
To determine the scope of a claim, the Court must first consider intrinsic evidence, including the actual language of the claim, the specification, and the prosecution history. Markman, 52 F.3d at 979. The analysis should begin with the claims as "the claims of the patent provide the concise formal definition of the invention." E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). In looking to the language of the claims, the words should be given their ordinary and customary meaning, which is the "meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention," unless the patentee clearly indicates some other meaning in the patent specification or application history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). However, the claims are to be interpreted not only in the context of the surrounding words, but also in the context of the entire patent, including the specification and the prosecution history, as they are the resources that an ordinary person skilled in the art would use to determine the scope of the patent. See Phillips, 415 F.3d at 1313.
The specification offers a written description of the invention that can "act as a sort of dictionary, which explains the invention and may define terms used in the claims." Markman, 52 F.3d at 979. The specification can also define terms by implication. See Bell Atlantic Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) ("[T]he meaning [of the claims] may be found in or ascertained by a reading of the patent documents.") (internal citations omitted). Although specifications aid in determining the scope of the claim, they cannot be used to read additional limitations into the claim. E.I. du Pont de Nemours, 849 F.2d at 1433.
The prosecution history can further elucidate the true meaning of the claim as it "provides evidence of how the PTO and the inventor understood the patent" and also "whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317; see also Vitronics, 90 F.3d at 1582; Markman, 52 F.3d at 980. However, because it represents an "ongoing negotiation between the PTO and the applicant . . . it often lacks the clarity of the ...