Brilliant Instruments, Inc. v. GuideTech, Inc.
Filing
137
ORDER on Claim Construction, Granting Brilliant's 108 MOTION for Summary Judgment of Non-Infringement and Denying As Moot Guidetech's 119 MOTION for Summary Adjudication on the Issue of Assignor Estoppel. Signed by Judge Claudia Wilken on 8/11/2011. (ndr, COURT STAFF) (Filed on 8/11/2011)
1
IN THE UNITED STATES DISTRICT COURT
2
FOR THE NORTHERN DISTRICT OF CALIFORNIA
3
4
No. C 09-5517 CW
BRILLIANT INSTRUMENTS, INC.,
5
ORDER ON CLAIM
CONSTRUCTION,
GRANTING BRILLIANT’S
MOTION FOR SUMMARY
JUDGMENT OF NONINFRINGEMENT AND
DENYING AS MOOT
GUIDETECH’S MOTION
FOR SUMMARY
ADJUDICATION ON THE
ISSUE OF ASSIGNOR
ESTOPPEL
(Docket Nos. 108 and
119)
Plaintiff,
6
v.
7
GUIDETECH, INC., and RONEN SIGURA,
8
Defendants.
9
United States District Court
For the Northern District of California
10
/
AND ALL RELATED COUNTERCLAIMS
/
11
12
13
Plaintiff and Counterclaim-Defendant Brilliant Instruments,
14
Inc., and Defendant and Counter-Claimant GuideTech, Inc., seek
15
construction of terms and phrases used in GuideTech’s U.S. Patent
16
Nos. 6,091,671 (’671 patent); 6,181,649 (’649 patent); and
17
6,226,231 (’231 patent) (collectively, Asserted Patents).
18
addition, Brilliant moves for summary judgment of non-infringement
19
of the Asserted Patents and GuideTech’s United States Patent Nos.
20
6,456,959 (’959 patent); 6,621,767 (’767 patent); 6,999,382 (’382
21
patent); and 7,203,610 (’610 patent).
22
Brilliant’s motion in part and cross-moves for summary adjudication
23
that Brilliant is precluded, based on the doctrine of assignor
24
estoppel, from asserting that the Asserted Patents are invalid.
25
The matters were heard on June 2, 2011.
26
argument and the papers submitted by the parties, the Court
27
construes the terms and phrases as set forth below.
28
the Court GRANTS Brilliant’s motion for summary judgment of non-
In
GuideTech opposes
Having considered oral
In addition,
1
infringement.
2
infringe the Asserted Patents, Brilliant lacks standing to bring
3
invalidity counterclaims and they are dismissed for lack of subject
4
matter jurisdiction.
5
adjudication on the issue of assignor estoppel is DENIED as moot.
Because the products at issue in this case do not
GuideTech’s cross-motion for summary
6
7
BACKGROUND
According to their specifications, the patents-in-suit concern
8
time interval analyzers (TIAs), which are testing instruments used
9
in the semiconductor industry to detect timing errors in integrated
United States District Court
For the Northern District of California
10
circuits.
11
amplitude, phase or pulsewidth of signals produced by the
12
integrated circuit.
13
oscilloscopes, only detect timing errors.
14
monitor frequency changes and frequency deviation over time.”
15
e.g., ’671 patent, 2:17-18.
16
detecting a timing error and determining its source.
17
These timing errors can present as anomalies in the
Some testing instruments, such as counters or
TIAs, however, “can
See,
In this way, TIAs can assist a user in
In 1998, Shalom Kattan founded Guide Technology, Inc., which
18
is not the same entity as GuideTech.
19
claimed by the patents-in-suit, which he assigned to Guide.
20
2004, Kattan left his employment with Guide, but remained on its
21
board of directors.
22
In 2005, Kattan left his position on Guide’s board.
23
2008, Guide sold its assets, which included the patents-in-suit, to
24
Ronen Sigura, who allegedly founded GuideTech.
25
He invented the technology
In
That same year, Kattan established Brilliant.
On May 23,
Brilliant initiated this lawsuit on November 20, 2009, seeking
26
declarations that its products (hereinafter, Accused Products),
27
such as the BI200 and BI220, do not infringe the Asserted Patents
28
or the ’671, ’699 and ’231 patents.
2
GuideTech counterclaimed,
1
asserting that Brilliant’s products infringe the Asserted Patents.
2
In response, Brilliant counterclaimed for a judgment that the
3
Asserted Patents are invalid.
4
its complaint to add Sigura as a Defendant, charging him with
5
intentional interference with prospective economic advantage,
6
intentional interference with contractual relations and violation
7
of California’s Unfair Competition Law (UCL), Cal. Bus. Code
8
§§ 17200, et seq.
9
United States District Court
For the Northern District of California
10
On June 3, 2010, Brilliant amended
DISCUSSION
I.
Claim Construction
11
A.
12
The construction of a patent is a matter of law for the Court.
Legal Standard
13
Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996).
14
“It is a ‘bedrock principle’ of patent law that ‘the claims of a
15
patent define the invention to which the patentee is entitled the
16
right to exclude.’”
17
(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v.
18
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
19
2004)).
20
looks to the words of the claims.
21
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
22
ascribes the words of a claim their ordinary and customary meaning.
23
Id.
24
meaning of a claim term is the meaning that the term would have to
25
a person of ordinary skill in the art in question at the time of
26
the invention, i.e., as of the effective filing date of the patent
27
application.”
28
patent in question can also assist in determining the meaning of a
Phillips v. AWH Corp., 415 F.3d 1303, 1312
Accordingly, in construing disputed terms, the Court first
Vitronics Corp. v. Conceptronic,
Generally, the Court
The Federal Circuit instructs that “the ordinary and customary
Phillips, 415 F.3d at 1313.
3
Other claims of the
1
claim term.
2
consistently throughout the patent, the usage of a term in one
3
claim can often illuminate the meaning of the same term in other
4
claims.”
5
Id. at 1314.
“Because claim terms are normally used
Id.
The Federal Circuit also instructs that claims “must be read
in view of the specification, of which they are a part.”
7
1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967,
8
979 (Fed. Cir. 1995) (en banc)).
9
description of the invention that is clear and complete enough to
10
United States District Court
For the Northern District of California
6
enable those of ordinary skill in the art to make and use it, and
11
thus the specification is “always highly relevant” to the Court’s
12
claim construction analysis.
13
“Usually, [the specification] is dispositive; it is the single best
14
guide to the meaning of a disputed term.”
15
specification may reveal that the patentee has given a special
16
definition to a claim term that differs from its ordinary meaning;
17
in such cases, “the inventor’s lexicography controls.”
18
415 F.3d at 1316.
19
intentional disclaimer or disavowal of claim scope.
20
instance as well, the inventor has dictated the correct claim
21
scope, and the inventor's intention, as expressed in the
22
specification, is regarded as dispositive.”
23
are not limited to the preferred embodiment described in the
24
specification.
25
F.2d 1107, 1121 (Fed. Cir. 1985) (en banc, plurality opinion).
26
While emphasizing the importance of intrinsic evidence in
Id. at
The specification must contain a
Vitronics, 90 F.3d at 1582.
Id.
In some cases, the
Phillips,
The specification also may reveal the patentee’s
Id.
“In that
However, claims
See SRI Int’l v. Matsushita Elec. Corp. of Am., 775
27
claim construction, the Federal Circuit has authorized courts to
28
rely on extrinsic evidence, which consists of “all evidence
4
1
external to the patent and prosecution history, including expert
2
and inventor testimony, dictionaries, and learned treatises.”
3
Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980).
4
While extrinsic evidence may be useful to the Court, it is less
5
significant than intrinsic evidence in determining the legally
6
operative meaning of claim language.
7
18; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858,
8
862 (Fed. Cir. 2004).
9
to lead to a reliable interpretation of claim language unless
Phillips, 415 F.3d at 1317-
Furthermore, extrinsic evidence is unlikely
United States District Court
For the Northern District of California
10
considered in the context of the intrinsic evidence.
11
F.3d at 1319.
12
B.
13
Brilliant and GuideTech agree that certain terms should be
Phillips, 415
Analysis
14
construed as follows: “current boost circuit” as “a circuit that
15
increases current flow to or from an electrical component,”
16
“measurement circuit” as “a circuit that performs a measurement,”
17
“processor circuit” as “a circuit that can perform logical
18
arithmetic operations,” “shunt” as “a current switch,” and “current
19
sink” as “a current source that draws an electrical current.”1
20
Brilliant and GuideTech also agree that “time interval analyzer” is
21
not a claim limitation.
22
adopts Brilliant and GuideTech’s proposed constructions.
23
24
Based on the parties’ agreement, the Court
Brilliant and GuideTech dispute the meaning of five terms and
phrases.
25
26
27
28
1
Brilliant and GuideTech initially disputed the meaning of
“current sink.” However, in its claim construction brief,
GuideTech agreed with Brilliant’s proposed construction.
5
1
1.
“signal channel”
2
The term “signal channel” appears in the ’231 patent.
3
in claim 1, the term is used in the following context: “A time
4
interval analyzer for measuring time intervals between signal
5
events, said analyzer comprising: a signal channel that receives an
6
input signal; . . . .”
7
does not appear in the ’671 or ’649 patents, Brilliant and
8
GuideTech agree that elements 12 and 14 in Figure 1 of both of
9
these patents are signal channels.
United States District Court
For the Northern District of California
10
’231 patent, 16:30-33.
There,
Although the term
Brilliant defines a signal channel to be “a physical
11
collection of related components capable of acting independently to
12
perform a useful function on a signal.”
13
“an electrical circuit that includes a signal path for transmitting
14
electrical signals and includes one or more parallel measurement
15
circuits.”
16
GuideTech defines it to be
Based on the parties’ representations and concessions at the
17
claim construction hearing, the Court construes a signal channel to
18
be “an electrical circuit that includes a signal path for
19
transmitting electrical signals.”
20
21
2.
“defined within a signal channel”
The phrase “defined within a signal channel” does not appear
22
in any of the Asserted Patents.
23
patent states, “A time interval analyzer includes a signal channel
24
that receives an input signal.
25
are defined within the signal channel in parallel with each other.”
26
’231 patent, Abstract.
27
time interval analyzer for measuring time intervals between signal
28
events, said analyzer comprising: a signal channel that receives an
However, the abstract of the ’231
A plurality of measurement circuits
Claim 1 of the ’231 patent discloses, “A
6
1
input signal; a plurality of measurement circuits defined within
2
said signal channel in parallel with each other . . . .”
3
16:30-35.
4
Id.
Brilliant proposes the following construction: “a component of
5
only one signal channel.”
GuideTech contends that the Court need
6
not construe this phrase.
In the alternative, GuideTech argues,
7
the phrase should be defined to mean “present in a signal channel.”
8
The Court finds that the phrase must be construed and that
Brilliant’s construction is more accurate because it captures the
10
United States District Court
For the Northern District of California
9
notion that measurement circuits are contained within a particular
11
signal channel.
12
language and Figure 1, which shows that measurement circuits,
13
comprised of a comparator, multiplexer and interpolator, are
14
located within a given signal channel.
15
This understanding is supported by the claim
GuideTech contends that Brilliant’s construction contradicts
16
the specification, which describes certain embodiments that have a
17
measurement circuit that relies on a continuous time counter and a
18
continuous event counter used by other measurement circuits.
19
’231 patent, 3:54-59.
20
on common counters does not mean that the circuit is not contained
21
within a particular signal channel.
22
embodiment in which signals might cross channels so that certain
23
measurements can be made.
24
not inconsistent with a measurement circuit being contained within
25
a particular signal channel.
26
See
However, that a measurement circuit may rely
GuideTech also points to one
This cross-channel function, however, is
GuideTech’s definition is too broad and reads out the “defined
27
within” limitation.
28
that has a measurement circuit that is present in more than one
The phrase “present in” captures an embodiment
7
1
channel, which is not supported by the claim language, the
2
specification or Figure 1.
3
Brilliant’s proposed construction is not an adjectival phrase,
4
like the phrase at issue.
5
phrase to mean “contained within a signal channel.”
6
7
3.
Accordingly, the Court construes this
“current source”
The term “current source” appears in the context of the
interpolator element claimed by the Asserted Patents.
9
contends that a current source should be defined to be “an active
10
United States District Court
For the Northern District of California
8
circuit that provides an electrical current that is independent of
11
the voltage across the circuit.”
12
definition: “an electrical component that provides electrical
13
current.”
14
Brilliant
GuideTech proposes the following
Brilliant offers no evidence to support the additional
15
limitation of voltage independence.
16
evidence indicates that current sources are not voltage sources and
17
that theoretical, “perfect” current sources provide a constant
18
current, irrespective of the voltage across a circuit.
19
Behiel Decl., Ex. O, at 9 (“A perfect current source is a two-
20
terminal black box that maintains a constant current through the
21
external circuit, regardless of load resistance or applied
22
voltage.”).
23
“current sources . . . have a limit to the voltage they can provide
24
. . . , and in addition they do not provide absolutely constant
25
output current.”
26
current, regardless of the voltage across the circuit, the current
27
may be affected by the voltage, contrary to what Brilliant’s
28
construction suggests.
It is true that extrinsic
See, e.g.,
However, the same evidence states that, in practice,
Id.
Thus, while a current source will provide
Nothing in the Asserted Patents indicates
8
1
that a current source provides current at a constant rate.
2
Brilliant contends that GuideTech’s proposed definition is
3
inaccurate because it permits a battery, which is a voltage source,
4
to be regarded as a current source.
5
GuideTech’s construction, a current source provides current.
6
battery provides voltage, which produces current.
7
current and producing current are not the same concepts.
8
9
United States District Court
For the Northern District of California
10
Under
A
Providing
Accordingly, the Court adopts GuideTech’s definition and
construes “current source” to refer to “an electrical component
that provides electrical current.”
11
12
This is incorrect.
4.
“operatively disposed in parallel”
Like “current source,” the phrase “operatively disposed in
13
parallel” is used in the context of the interpolators claimed by
14
the Asserted Patents.
15
interpolator that is comprised of, among other things, “a
16
capacitor; a shunt; wherein said shunt and said capacitor are
17
operatively disposed in parallel with respect to said first current
18
circuit.”
19
The pertinent claim language discloses an
’231 patent, 18:41-45.
Brilliant and GuideTech agree that the phrase discloses
20
alternative paths for current.
21
phrase requires a common destination and whether a change in
22
voltage affects voltage in the various paths.
23
the following construction: “forming alternative signal paths
24
between the same source and destination, wherein the same voltage
25
change occurs across both paths.”
26
meaning of “parallel” in the field of the Asserted Patents, which
27
is “an arrangement of the components, as resistances, of a circuit
28
in such a way that all positive terminals are connected to one
They dispute, however, whether the
Brilliant advances
Brilliant points to the ordinary
9
1
point and all negative terminals are connected to a second point,
2
the same voltage being applied to each component.”
3
Encyclopedic Unabridged Dictionary 1407 (2001).
4
proposal omits any discussion of a common destination or voltage,
5
arguing that the phrase should be construed to mean “arranged in a
6
manner capable of forming alternative paths of current such that
7
current can flow across one or the other path.”
8
that the modifier “operatively” indicates that the shunt and
9
capacitor are not actually “disposed in parallel,” but rather
Webster’s
GuideTech’s
GuideTech notes
United States District Court
For the Northern District of California
10
“operate as though they are parallel.”
11
at 12:10.
12
of modifiers, general descriptive terms are typically construed as
13
having their full meaning.”).
14
GuideTech’s Cl. Constr. Br.
See Innova/Pure Water, 381 F.3d at 1118 (“In the absence
Figure 4 and the specification do not support Brilliant’s
15
additional limitation that requires the paths to terminate at the
16
same destination.
17
that the “same voltage change occurs across both paths.”
18
shows the shunt and capacitor to be on alternate paths of current.
19
However, these alternate paths do not terminate at the same
20
destination, nor do they have the same voltage running across them.
21
See Kaliski Decl., Ex. B ¶ 103 (Brilliant’s infringement expert
22
stating that “the voltage across the shunt is not necessarily the
23
same as the voltage across capacitor”).
24
insists that any “change in voltage across one path will be
25
experienced by each element.”
26
13:17.
27
language in the specification indicating that, as the capacitor
28
discharges, “the voltage level at pin 2 of diode bridge 124 drops.”
Nor do Figure 4 and the specification indicate
Figure 4
Nevertheless, Brilliant
Brilliant’s Cl. Constr. Br. at
No evidence supports this view.
10
Brilliant points to
1
’649 patent, 9:51-52.
2
the diode bridge is “operatively disposed in parallel” in the same
3
manner as the shunt and capacitor.2
4
However, there is no evidence that pin 2 of
Brilliant contends that GuideTech’s construction, which does
5
not mention voltage level changes, fails to account for the
6
“parallel” limitation in the claim language.
7
GuideTech’s proposal accounts for “parallel” by disclosing
8
alternative paths for current and indicating the location of the
9
shunt and capacitor.
This is incorrect.
United States District Court
For the Northern District of California
10
Accordingly, the Court construes the phrase “operatively
11
disposed in parallel” as “arranged in a manner capable of forming
12
alternative paths of current such that current can flow across one
13
or the other path.”
14
15
5.
“parallel outputs”
Brilliant and GuideTech’s dispute over defining this term
16
arises from their disagreement over how to construe “parallel.”
17
Brilliant argues that this term should be defined to mean
18
“alternative output signal paths to a common destination, wherein
19
the same voltage changes occur across both paths.”
20
proposes the following definition: “outputs that are arranged such
21
that a current path divides between the outputs.”
22
GuideTech
For the reasons stated above, the Court adopts GuideTech’s
23
definition.
24
“outputs that are arranged such that a current path divides between
25
the outputs.”
Accordingly, “parallel outputs” is construed to mean
26
27
2
28
Indeed, Figure 4 shows that pin 2 is located before the
alternate paths leading to the shunt and capacitor branch off.
11
1
II.
Motions for Summary Judgment and Summary Adjudication
2
A.
3
Summary judgment is properly granted when no genuine and
Legal Standard
4
disputed issues of material fact remain, and when, viewing the
5
evidence most favorably to the non-moving party, the movant is
6
clearly entitled to prevail as a matter of law.
7
P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986);
8
Eisenberg v. Ins. Co. of N. Am., 815 F.2d 1285, 1288-89 (9th Cir.
9
1987).
United States District Court
For the Northern District of California
10
Fed. R. Civ.
The moving party bears the burden of showing that there is no
11
material factual dispute.
12
the opposing party’s evidence, if supported by affidavits or other
13
evidentiary material.
14
F.2d at 1289.
15
favor of the party against whom summary judgment is sought.
16
Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
17
587 (1986); Intel Corp. v. Hartford Accident & Indem. Co., 952 F.2d
18
1551, 1558 (9th Cir. 1991).
19
Therefore, the court must regard as true
Celotex, 477 U.S. at 324; Eisenberg, 815
The court must draw all reasonable inferences in
Material facts which would preclude entry of summary judgment
20
are those which, under applicable substantive law, may affect the
21
outcome of the case.
22
are material.
23
(1986).
24
The substantive law will identify which facts
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
Where the moving party does not bear the burden of proof on an
25
issue at trial, the moving party may discharge its burden of
26
production by either of two methods.
27
Co., Ltd., v. Fritz Cos., Inc., 210 F.3d 1099, 1106 (9th Cir.
28
2000).
12
Nissan Fire & Marine Ins.
1
The moving party may produce evidence negating an
essential element of the nonmoving party’s case, or,
after suitable discovery, the moving party may show that
the nonmoving party does not have enough evidence of an
essential element of its claim or defense to carry its
ultimate burden of persuasion at trial.
2
3
4
Id.
5
If the moving party discharges its burden by showing an
6
absence of evidence to support an essential element of a claim or
7
defense, it is not required to produce evidence showing the absence
8
of a material fact on such issues, or to support its motion with
9
evidence negating the non-moving party’s claim.
Id.; see also
United States District Court
For the Northern District of California
10
Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 885 (1990); Bhan v.
11
NME Hosps., Inc., 929 F.2d 1404, 1409 (9th Cir. 1991).
If the
12
moving party shows an absence of evidence to support the non-moving
13
party’s case, the burden then shifts to the non-moving party to
14
produce “specific evidence, through affidavits or admissible
15
discovery material, to show that the dispute exists.”
Bhan, 929
16
F.2d at 1409.
17
If the moving party discharges its burden by negating an
18
essential element of the non-moving party’s claim or defense, it
19
must produce affirmative evidence of such negation.
Nissan, 210
20
F.3d at 1105.
If the moving party produces such evidence, the
21
burden then shifts to the non-moving party to produce specific
22
evidence to show that a dispute of material fact exists.
Id.
23
If the moving party does not meet its initial burden of
24
production by either method, the non-moving party is under no
25
obligation to offer any evidence in support of its opposition.
Id.
26
This is true even though the non-moving party bears the ultimate
27
burden of persuasion at trial.
Id. at 1107.
28
13
1
Where the moving party bears the burden of proof on an issue
2
at trial, it must, in order to discharge its burden of showing that
3
no genuine issue of material fact remains, make a prima facie
4
showing in support of its position on that issue.
5
Nor-Cal Plumbing, Inc., 48 F.3d 1465, 1471 (9th Cir. 1994).
6
is, the moving party must present evidence that, if uncontroverted
7
at trial, would entitle it to prevail on that issue.
8
Int’l Shortstop, Inc. v. Rally’s, Inc., 939 F.2d 1257, 1264-65 (5th
9
Cir. 1991).
UA Local 343 v.
That
Id.; see also
Once it has done so, the non-moving party must set
United States District Court
For the Northern District of California
10
forth specific facts controverting the moving party’s prima facie
11
case.
12
“burden of contradicting [the moving party’s] evidence is not
13
negligible.”
14
resolution of the relevant issue is “highly fact specific.”
15
UA Local 343, 48 F.3d at 1471.
B.
Id.
The non-moving party’s
This standard does not change merely because
Id.
Brilliant’s Motion for Summary Judgment of NonInfringement
16
Brilliant seeks summary judgment that the Accused Products do
17
not infringe the patents-in-suit.
GuideTech opposes Brilliant’s
18
motion only insofar as it concerns the Asserted Patents.
GuideTech
19
does not oppose Brilliant’s motion to the extent it is directed at
20
the ’959, ’767, ’382 and ’610 patents.
Accordingly, Brilliant’s
21
motion is granted as to these patents.
22
With respect to the Asserted Patents, Brilliant asserts that
23
GuideTech cannot prove literal infringement or infringement under
24
the doctrine of equivalents.
“To establish literal infringement,
25
‘every limitation set forth in a claim must be found in an accused
26
product, exactly.’”
Becton, Dickinson & Co. v. Tyco Healthcare
27
Group, LP, 616 F.3d 1249, 1253 (Fed. Cir. 2010) (quoting Southwall
28
14
1
Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir.
2
1995)).
3
device, there is no literal infringement as a matter of law.”
4
Becton, 616 F.3d at 1253 (citation and editing and internal
5
quotation marks omitted).
6
“Thus, if any claim limitation is absent from the accused
An accused product may also infringe under the doctrine of
7
equivalents.
8
U.S. 605, 608 (1950).
9
differences between an element of the accused product and the
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339
The doctrine generally applies where the
United States District Court
For the Northern District of California
10
asserted claim limitation are “insubstantial to one of ordinary
11
skill in the art.”
12
1142, 1150 (Fed. Cir. 2004) (citation and internal quotation marks
13
omitted).
14
judgment of non-infringement is appropriate, where the theory of
15
equivalents “would entirely vitiate a particular claim element.”
16
Id. at 1150-51 (internal citations omitted).
17
18
Searfoss v. Pioneer Consol. Corp., 374 F.3d
However, the doctrine may not be invoked, and summary
1.
’231 Patent
Brilliant contends that the Accused Products cannot infringe
19
the ’231 patent because they are not TIAs with “a plurality of
20
measurement circuits defined within [a] signal channel,” ’231
21
patent, 16:33-34, or with “a processor circuit . . . configured to
22
receive and compare . . . time signals from said measurement
23
circuits to each other to determine a time interval,”
24
Because Brilliant’s first argument is dispositive, the Court need
25
not consider its second.
26
id., 40-48.
Brilliant proffers evidence that the Accused Products have
27
only one measurement circuit contained within each signal channel
28
and, as a result, do not satisfy this limitation.
15
See, e.g.,
1
Kaliski Reply Decl., Ex. A ¶ 18.
2
GuideTech does not offer evidence that each signal channel
3
contains more than one measurement circuit.
4
notes that the Accused Products can perform a “one-channel-two-
5
edge” function, which requires use of two “timetagging” circuits.
6
GuideTech considers these circuits to be measurement circuits.
7
Chin Decl., Ex. 10, at BI000858.
8
channel with only one measurement circuit would be useless because
9
two measurements are required to determine an interval.
Instead, GuideTech
GuideTech insists that a signal
West Decl.
United States District Court
For the Northern District of California
10
¶ 10.
11
two-edge function requires use of the Accused Products’ two
12
measurement circuits, it does not follow that both measurement
13
circuits are contained within a single channel.
14
Burnell G. West, GuideTech’s infringement expert, states that the
15
BI200 has “at least two measurement circuits,” which “are within
16
either signal channel A or signal channel B as shown in Figure 2”
17
of the BI200 Datasheet.3
18
does not contend that the measurement circuits are contained within
19
a given channel.
20
fact as to whether the Accused Products literally meet this
21
limitation.
22
These arguments are unavailing.
Although the one-channel-
Indeed, Dr.
West Decl., Ex. 1, App’x D, at A2.
He
Thus, there is not a genuine issue of material
Nor is there a triable issue concerning infringement under the
23
doctrine of equivalents.
24
placement of accused measurement circuits is equivalent to being of
25
only one signal channel because such placement performs
26
substantially the same function . . . in substantially the same way
West contends that the “physical
27
3
28
West represents that the BI220 has a “substantially similar”
configuration. West Decl., Ex. 1, App’x D, at A2.
16
1
. . . to achieve the same result.”
2
Although this might be true, accepting this theory of equivalency
3
would vitiate entirely the limitation that measurement circuits be
4
contained within a single channel.
5
West Decl., Ex. 2 ¶ 13.
Accordingly, as a matter of law, the Accused Products do not
6
infringe the ’231 patent, either literally or under the doctrine of
7
equivalents.
8
infringement as to the ’231 patent.
9
United States District Court
For the Northern District of California
10
2.
Brilliant is entitled to summary judgment of non-
’671 Patent
Brilliant maintains that the Accused Products do not infringe
11
the ’671 patent because they do not practice a “first current
12
circuit having a constant current source,” ’671 patent, 16:53, or a
13
shunt and capacitor “operatively disposed in parallel with respect
14
to said first current circuit,” id., 16:62-63.
15
second argument is dispositive, the Court need not consider the
16
first.
17
Because Brilliant’s
Brilliant points to a schematic of the BI200 that West
18
annotated during his deposition, which Brilliant contends shows the
19
accused capacitor to be a part of the first current circuit.
20
Brilliant argues, the capacitor cannot be “operatively disposed in
21
parallel with respect to the first current circuit” because it is a
22
part of that circuit.
23
indicated that, in the BI200, the capacitor is part of the first
24
current circuit.
25
Thus,
GuideTech does not dispute that West
As explained above, the Court construes “operatively disposed
26
in parallel” to mean “arranged in a manner capable of forming
27
alternative paths of current such that current can flow across one
28
or the other path.”
West’s representation that the capacitor is
17
1
part of the first current circuit indicates that the capacitor is
2
not on an alternative path on which current flows from the first
3
current circuit.
4
invalidity contentions, Sassan Tabatabaei, confirms that the
5
capacitor that the ’671 patent claims is not part of the first
6
current circuit, but rather on an “alternative path[] of current
7
from the first current circuit.”
8
9
Indeed, GuideTech’s expert on Brilliant’s
Tabatabaei Decl. ¶ 18.
West’s testimony that the capacitor is part of the first
current circuit precludes a finding of infringement, either
United States District Court
For the Northern District of California
10
literally or under the doctrine of equivalents.
11
Brilliant is entitled to summary judgment of non-infringement of
12
the ’671 patent.
13
14
3.
Accordingly,
’649 Patent
Like the ’671 patent, the ’649 patent discloses an
15
interpolator with a shunt and capacitor “operatively disposed in
16
parallel with respect to said first current circuit.”
17
the reasons stated above, Brilliant is entitled to summary judgment
18
of non-infringement of the ’649 patent.
19
CONCLUSION
20
Thus, for
For the foregoing reasons, the Court construes the disputed
21
claim language in the manner explained above and GRANTS Brilliant’s
22
motion for summary judgment of non-infringement (Docket No. 108).
23
Because Brilliant’s Accused Products do not infringe the Asserted
24
Patents, it lacks standing to bring invalidity counterclaims and
25
they are therefore dismissed for lack of subject matter
26
jurisdiction.
27
adjudication on the issue of assignor estoppel is DENIED as moot
28
(Docket No. 119).
Accordingly, GuideTech’s motion for summary
Brilliant’s evidentiary objections are OVERRULED
18
1
2
as moot.
In their June 29, 2011 stipulation, the parties agreed that,
3
if the Court were to grant Brilliant’s motion for summary judgment
4
of non-infringement, Brilliant would seek leave to dismiss its
5
state law claims in this action so that they could be consolidated
6
with GuideTech’s claims in state court.
7
agreement, within three days of the date of this Order, the parties
8
shall file a stipulation seeking the dismissal without prejudice of
9
Brilliant’s remaining state law claims.
In accordance with their
See Fed. R. Civ. P.
United States District Court
For the Northern District of California
10
41(a)(1)(A)(ii).
11
the Clerk will be directed to close the file.
12
Thereafter, judgment will enter accordingly, and
IT IS SO ORDERED.
13
14
Dated: 8/11/2011
CLAUDIA WILKEN
United States District Judge
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