United Systems of Arkansas, Inc. v. Laser Substrates, Inc.

Citation: 31 F. App'x 703Docket: No. 01-1224

Court: Court of Appeals for the Federal Circuit; February 18, 2002; Federal Appellate Court

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Laser Substrates, Inc. appeals a summary judgment from the U.S. District Court for the Eastern District of Arkansas, which ruled in favor of United Systems of Arkansas, Inc. and Glenn Petkovsek on the grounds of noninfringement. The appellate court affirms the district court's decision, concluding that there were no genuine issues of material fact and that United was entitled to judgment as a matter of law.

Laser Substrates holds U.S. Patent 5,836,622, which pertains to a postcard assembly designed to display an image on both sides after being folded, allowing for efficient printing of multiple addresses. The patent claims include the assembly's configuration, which consists of a front sheet with an image receiving surface and an adhesive coating, a back sheet with a tear line, and specific folding mechanisms that facilitate the creation of the folded document while ensuring that images are printed on both sides of the fold line. The claims detail the structural components and their interactions, emphasizing the patented assembly's unique ability to produce a folded document with images visible on both sides after a single pass through an image forming device.

United produces the CMF-301b and CMF-088 forms, with the parties agreeing on specific features: the CMF-301b includes the sender’s return address on the back, and the CMF-088 has uniform bonding material. Following the issuance of the ’622 patent on November 17, 1998, United filed a lawsuit against Laser for a declaratory judgment of noninfringement. In response, Laser counterclaimed, asserting that both forms infringed claims 1 and 15 of the patent. The district court ruled in favor of United, granting summary judgment of noninfringement.

The court noted that Laser had previously distinguished claims 1 and 15 from prior art by amending them to require all images on the receiving portion of the form, unlike forms with images on both sides. The court concluded that the plain language of the ’622 patent mandates that images must be on one side, thus determining that the CMF-301b, which contains images on both sides, did not literally infringe the claims. Additionally, the court interpreted claim 1 as necessitating both a permanent and a releasable bond, ruling that the CMF-088 only had a releasable bond and therefore also did not infringe.

Although the court did not assess infringement under the doctrine of equivalents for the CMF-301b or CMF-088, it did evaluate it for other products. Laser appealed the summary judgment decision, which falls under the jurisdiction of 28 U.S.C. 1295(a)(1). Summary judgment is deemed appropriate when there are no genuine issues of material fact, and the court must review the evidence in favor of the nonmovant. On appeal, Laser contends that claims 1 and 15 should only require that images be printed in a single pass through an image-forming device, challenging the district court's interpretation that excludes pre-printing on the back. For the CMF-088, Laser argues that the court erred in its interpretation of claim 1 regarding the requirement for two types of tack, asserting that the CMF-088 infringes based on its design of having both releasable and static bonds.

Laser contends that the district court failed to assess infringement under the doctrine of equivalents for the CMF-301b and CMF-088 forms. United defends the district court's claim construction, asserting that claims 1 and 15 necessitate all images with address information to be printed on the front sheet, a requirement derived from the claims’ plain language and prosecution history. United explains that the CMF-301b form does not infringe since it features two image-receiving surfaces and necessitates two printer passes for printing addresses. Additionally, United argues that the CMF-088 form does not infringe because it possesses a homogeneous bond that is entirely releasable, contrary to the claim's requirement for both a permanent and a releasable bond. United also claims that Laser waived its right to challenge infringement under the doctrine of equivalents. The court agrees with United, affirming the summary judgment that the CMF-301b form does not infringe the ’622 patent. It notes that the district court correctly interpreted claims 1 and 15 to necessitate printing all images on a single side during a single printer pass, although this interpretation may have been overly restrictive as it could encompass forms with pre-printed images. The analysis of patent claims relies primarily on intrinsic evidence, including claims, specifications, and, if applicable, prosecution history. Claim 1 specifically requires that images be produced in a single pass, aligning with Laser's description of its invention as facilitating a folded document with images on both sides after one pass through the printer. The specification underscores the advantages of this single pass feature, contrasting it with the drawbacks of requiring multiple passes, which are not commonly feasible with standard office printers. While the specification allows for pre-printed images, it clarifies that these do not qualify as the 'images' produced in a single pass.

The specification distinguishes between pre-printed images, which provide instructions on handling form 72, and the substantive address information created during a 'single pass' through a printer. This address information is deemed necessary for mailing. The prosecution history indicates that the examiner rejected Laser's claims based on U.S. Patent 4,418,865 (Bowen) due to obviousness under 35 U.S.C. 103. In response, Laser characterized Bowen's multi-part billing document, which requires pre-printed information for return envelopes and only prints unique details (like customer names and addresses) during a single pass. In contrast, Laser's claims, specifically claims 1 and 15, were amended to include the limitation of printing images on both sides of a fold line, which differentiates its invention from Bowen, where all information is printed below the tear line and requires multiple passes through a printer. Laser emphasized that its invention enables all necessary mailing images to be printed in a single pass, unlike Bowen, which necessitates two passes. Consequently, claims 1 and 15 are interpreted to exclude forms that require multiple printing passes for the address information. Intrinsic evidence clarifies the meaning of the claimed 'images,' and, even if ambiguity existed, extrinsic evidence would support this interpretation.

Warren Fabel, president of Laser and inventor of the ’622 patent, defined the 'images' of the invention to include various address-related information. Regarding infringement, Laser admitted that the CMF-301b form requires the return address to be printed on the back, necessitating two printer passes to include all address information. Since the claims require all address information to be printed in a single pass on the front image-receiving surface, it was determined that no reasonable fact-finder could conclude that the CMF-301b infringes claims 1 and 15, leading to the affirmation of the district court’s summary judgment of noninfringement for these claims.

Similarly, the CMF-088 form was found not to infringe claim 1, which explicitly requires both a permanent and a releasable bond. Laser's claim clearly distinguished between these bond types, and the court declined to reinterpret the terms 'permanent' and 'releasable.' Although Laser suggested that 'permanent bond' could mean one that is not released, the precise language of the claim indicated that a bond cannot be both types simultaneously. Laser’s acknowledgment that the bond in the CMF-088 form is releasable eliminated any genuine issue regarding the existence of a permanent bond, confirming noninfringement of claim 1.

The court dismissed Laser's other arguments as unpersuasive or moot and chose not to address potential waiver of infringement claims under the doctrine of equivalents due to lack of specific assertion in lower court proceedings. Ultimately, the district court's conclusion that neither the CMF-301b nor the CMF-088 forms infringed the ’622 patent was upheld, affirming United’s motion for summary judgment of noninfringement.