Court: District Court, W.D. Wisconsin; November 3, 2014; Federal District Court
Componex Corporation accuses Electronics For Imaging, Inc. (EFI) of infringing two patents related to printing technology. The court has previously ruled on Componex's claims regarding U.S. Patent No. 6,685,076. This opinion focuses on U.S. Patent No. 6,113,059, following an earlier claim construction from July 2014. Both parties have filed for summary judgment concerning the '059 patent. The court partially grants EFI's motion, noting that most of its products do not utilize lugs for roller balancing. However, because EFI acknowledges disputed factual issues regarding at least two products using lugs, the case will proceed to trial. The opinion also addresses remaining issues related to potentially infringing products that survived previous summary judgment.
Componex, based in Edgerton, Wisconsin, produces 'dead shaft' idler rollers under the trademark ‘WINertia.’ EFI, a publicly traded company, manufactures digital printers, including various models of VUTEk Superwide-format printers used for high-quality, large-format printing. Idler rollers, central to the '059 patent, are integral to 'web handling' processes, which involve the manipulation of thin materials like paper in a continuous form. Idler rollers can be categorized as 'live shaft' or 'dead shaft,' with the latter having a non-rotating shaft. Balancing of rollers is typically only necessary in high-speed printing applications, which may involve mass addition, material removal, or shaft axis relocation.
The '059 patent pertains to a dead shaft idler roller featuring a one-piece construction of two concentrically arranged tubes linked by radial spokes, as opposed to a thicker single tube. Key elements of the design include removable 'balancing lugs' and 'balancing pins' for adjusting roller balance, preventing loose weights inside the idler. Independent claims of the patent mandate the inclusion of balancing lugs, some also requiring balancing pins. Componex claims infringement of claims 1-4 and 12-22, with claim 1 outlining specific structural features, including the arrangement of tubes, spokes, and lugs.
Patent infringement analysis involves a two-step process: determining the legal scope of claims and comparing these claims to the allegedly infringing products. The court previously ruled on claims 5-22, granting summary judgment to EFI due to a lack of evidence for balancing pins in their products. The court will now focus on claims 1-4, reserving judgment until further evidence is submitted. Componex has the burden of proof to demonstrate infringement by a preponderance of the evidence, but has not met this burden for most products in question.
The court examined the term "balancing lugs," crucial to claims 1-4, to assess potential infringement of EFI’s products. EFI defined "balancing lugs" as structures intended to balance the idler, emphasizing a functional perspective, while Componex defined it as structures designed to hold a balancing pin, focusing purely on structural aspects. The court favored EFI's construction, rejecting Componex’s based on claim language, specification, prosecution history, and extrinsic evidence. Notably, Componex's own statements to the Patent Office illustrated EFI's construction, highlighting that the balancing lugs are necessary to hold balancing pins without loose weights in the idler. The court found that prior art references, Lilja and Skegin, did not utilize balancing lugs for balancing an idler, reinforcing the distinctiveness of the claimed invention. The prosecution history, marked by rejections and specific distinctions made by Componex, defined the patent's boundaries, establishing a critical functional limitation for determining infringement. The court acknowledged that using comparative and functional language to clarify claim terms is acceptable, as it enhances understanding of the claim's scope without improper limitation.
EFI asserts that many of its products do not infringe U.S. Patent No. 6,113,059 ('059 patent) because the lugs in question do not serve to balance the idlers as claimed. Paul Duncanson, EFI's Manager of Mechanical Architecture, provided a declaration stating that EFI does not use the C-shaped features referred to as 'balancing lugs' to balance the rollers for specific part numbers identified by Componex. Instead, these features are utilized solely for attaching end caps. Componex failed to provide any evidence to contradict Duncanson's assertions, nor did it challenge the facts presented in his declaration. In its arguments, Componex claimed that its infringement allegations pertain to apparatus claims, which focus on the structure of a device rather than its function, citing the analogy of a toaster being used as a doorstop. However, the court previously rejected this reasoning, emphasizing that an express functional limitation exists in the '059 patent. This limitation restricts the claims to instances where lugs are used for balancing. Consequently, the lack of evidence supporting that EFI's lugs are used for balancing indicates that the '059 patent does not apply to EFI's products. The court concluded that the patent's claims are defined by specific boundaries, allowing those skilled in the art to ascertain the scope of the protection sought.
The case draws a parallel to DeSena v. Beekley Corp., where the court found that the patentee's efforts to differentiate their patent from prior art led to a functional construction adopted by the Patent Office. In DeSena, the patentee could not prove literal infringement because the accused devices were not used for the specified podiatry purpose. Similarly, the '059 patent's prosecution history shows the patentee limited its claims to specific uses related to foot markers, thereby precluding infringement by the defendant's mammography markers. Although Componex argues that certain Part Numbers infringe the '059 patent, it fails to provide evidence supporting a functional infringement theory, relying instead on structural similarities. Componex only has a plausible claim for two Part Numbers, as it hasn't demonstrated that EFI's products contain the necessary functional elements or that there was any inducement to use the products in an infringing manner. Consequently, the court will grant partial summary judgment to EFI, dismissing Componex's infringement claims for all but the two specified Part Numbers, 45071308 and 45071323.
EFI claims that some of its allegedly infringing products may be protected by an implied license from Componex, though this assertion lacks clarity, especially following the court's narrowing of the products at issue. EFI has indicated it primarily purchases products from Componex, which raises questions about the applicability of an implied license, as authorized sales generally remove products from patent reach. The court has instructed both parties to submit updated charts detailing the claims and products still in dispute, considering the overlap in product numbers that may no longer be relevant due to infringement or invalidity findings. The parties must clarify whether an implied license applies to any of the manufactured products and discuss disputed and undisputed facts regarding the sourcing of idler rollers before finalizing these charts.
Additionally, EFI seeks partial summary judgment on damages, arguing that Componex's failure to meet the notice requirements under 35 U.S.C. 287(a) warrants a reduction in any potential damages awarded. Under this statute, a patentee must provide actual notice of infringement before recovering damages, and failure to mark a patented product precludes recovery prior to providing such notice. Componex acknowledges it did not mark its products but contends that EFI received actual notice through oral communications and emails. Specifically, Componex cites a 2009 conversation between its employee, Darcy Perona, and EFI's Roberta Berecz, where Perona allegedly informed Berecz about Componex's patent rights concerning certain products, along with supporting internal EFI email evidence referencing Componex's patent claims.
The court found that Componex's evidence did not meet the actual notice requirements under 287(a) for the '059 patent, as established by the Federal Circuit. Actual notice necessitates an affirmative communication detailing a specific charge of infringement related to a specific accused product, which Componex failed to provide. The evidence presented, including statements from Perona and an email from Berecz, lacked specific references to the patent number or the infringing product, thereby constituting general notice—which is insufficient. Perona's vague statement did not qualify as a definitive charge of infringement. Consequently, the court granted summary judgment in favor of EFI for damages incurred before the lawsuit commenced.
Regarding the claim for willful infringement and enhanced damages under 35 U.S.C. § 284, EFI asserted that it should also receive summary judgment based on its objectively reasonable defenses. To prove willful infringement, a patentee must demonstrate, with clear and convincing evidence, that the infringer acted despite an objectively high likelihood of infringing a valid patent. If this threshold is met, the patentee must show that the risk was known or should have been known to the infringer. The determination of whether a reasonable person would recognize a high likelihood of infringement is a legal question for the court to decide.
A defendant can successfully defend against claims if they present an objectively reasonable defense, even if the court disagrees, as seen in *In re Seagate* and *Riddell, Inc. v. Schutt Sports, Inc.*. In the current case, many of EFI’s products identified by Duncanson will not go to trial due to functional limitations in patent claims. For products where EFI has admitted factual disputes regarding infringement, the court cannot yet evaluate the strength of the plaintiffs' claims or the viability of EFI's defenses. A finding of willful infringement may hinge on the strength of an implied license defense. Trial courts typically defer willfulness determinations until all evidence is presented. The court has partially granted EFI’s summary judgment on Componex’s claims of non-infringement and willful infringement for claims 1-4 of the '059 patent while denying the plaintiffs' cross-motion on these issues. EFI's motion for damages has also been partially granted concerning claims 1-4. Both parties must submit updated charts of claims and products in dispute by November 14, 2014, and if necessary, a trial brief by November 18, 2014, particularly regarding the implied license assertion. There was a dispute over the term 'balancing pin', but Componex conceded a lack of evidence for its use in the allegedly infringing products, avoiding the validity question despite similar prior art issues. The court noted the structural similarity of referenced prior art. For the disputed Part Numbers 45071308 and 45071323, EFI acknowledged factual disputes about the use of lugs for balancing. Other disputed Part Numbers were also identified in Duncanson's declaration.
Courts have analyzed functional limitations in apparatus claims, affirming that defining claims by their function, outside the context of 35 U.S.C. 112(6), is valid. Such functional definitions do not automatically convert a claim element into a 'means for performing a specified function.' Claims can use functional language without being indefinite, allowing patent applicants to describe features either structurally or functionally. Componex’s claim construction charts lack the court-construed functional limitations, making any non-infringement opinion based on a rejected claim construction insufficient for summary judgment. Expert testimony inconsistent with the court's claim construction is deemed unreliable. In reviewing infringement issues through a functional lens, Componex's chances of success hinge on the adopted claim construction, with some EFI products acknowledged to be used for balancing. Componex must provide evidence to substantiate claims of infringement. The court grants EFI's motion regarding literal infringement and the doctrine of equivalents for specific Part Numbers. The admissibility of Componex’s supplemental declaration will be evaluated after new claim charts are submitted. Componex cites a case suggesting actual notice does not require patent identification; however, this view has been undermined by subsequent rulings, emphasizing the necessity of a specific infringement charge against an accused product post-Amsted.
