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)

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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 15 16 17 18 19 20 21 22 23 24 25 26 27 28 19

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