MiiCs & Partners America Inc. et al v. Toshiba Corporation et al

Filing 575

MEMORANDUM ORDER re (423 in 14-cv-803-RGA) MOTION for Partial Summary Judgment. Signed by Judge Richard G. Andrews on 10/23/2017. Associated Cases: 1:14-cv-00803-RGA, 1:14-cv-00804-RGA(nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MiiCs & PARTNERS AMERICA, INC., et al.,
Plaintiffs,

v.
TOSHIBA CORPORATION, et al.,

Civil Action No. 14-803-RGA

Defendants.
SAMSUNG DISPLAY CO., LTD.,
Intervenor.

MiiCs & PARTNERS AMERICA, INC., et al.,
Plaintiffs,
v.

FUNAI ELECTRIC CO., LTD., et al.,

Civil Action No. 14-804-RGA

Defendants.
SAMSUNG DISPLAY CO., LTD.,
Intervenor.

MEMORANDUM ORDER
Presently before the Court is Defendant Toshiba Co. 'sand Toshiba America Information
Systems, Inc. 's 1 Motion for Partial Summary Judgment (D.I. 423) and related briefing. (D.I.
424, 479, 512). 2 The Court held oral argument on October 18, 2017. (D.1. 573). For the reasons

1

Toshiba Corporation and Toshiba America Information Systems, Inc. will be referred to hereinafter as
"Defendants."
2
All docket references refer to I: 14-cv-00803-RGA unless otherwise noted.

that follow, Defendants' motion is denied in part as to anticipation of asserted claims 1 and 5 of
U.S. Patent No. 6,734,927.
Defendants moved for summary judgment (D.I. 423) on the basis that Hasegawa, which
is prior art to the '927 patent, anticipates asserted claims 1 and 5 of that patent. (D.I. 424 at 16).
The dispute between the parties is over the construction of the word "depression." (See
id. at 17). Specifically, at issue is whether a "hole" qualifies as a "depression." Claim 1 of the

'927 patent provides for a structure where "an intermediate frame comprises a depression formed
in the vicinity of its end, the depression to be fitted to said stepped protrusion." '927 Patent, col.
7 11. 4-6. Hasegawa, on the other hand, refers to "holes," not "depressions." (See D.I. 429, Exh.
38 at 166:0010 (referring to "square engagement hole[s]")). The parties do not dispute that if
"holes" qualify as "depressions," then Hasegawa anticipates asserted claims 1 and 5 of the '927
patent. (See D.I. 424 at 16; D.I. 479 at 16).
Defendants argue, pointing to Figure 7, that the '927 patent "indicates that holes could be
depressions, ending the inquiry - [it] describes an embodiment that contemplates the stepped
protrusions fitting into holes to fix the frames." (D.1. 424 at 17). Defendants assert that their
position is further supported by the testimony of Defendants' expert, Mr. Smith-Gillespie, who
"opined that a person of ordinary skill in the art would have understood 'depression,' as used in
the '927 Patent, to include a hole." (Id.). Finally, Defendants fault Plaintiffs for basing their
proposed construction of "depression" on a definition from Merriam-Webster's Dictionary. (Id.
at 18). Defendants, however, offer no evidence that "depression" is ordinarily understood to
include a "hole." (DJ. 529 at 8).
Plaintiffs counter that as their expert, Dr. Fontecchio, has opined, a "depression is
something that is lower or 'depressed,' not something that is carved out and missing entirely,

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such as a 'hole."' (D.I. 479 at 17). Plaintiffs argue Defendants have failed to identify any
intrinsic or extrinsic evidence "that equates a section missing from a structure (carved all the way
through it), such as the hole disclosed in Hasegawa, with a depression." (Id). Plaintiffs note that
Figure 7, which Defendants contend indicates that "holes" could be "depressions," is a modified
example of the first embodiment of the invention, and, in contrast to the claimed invention, does
not include depressions in the intermediate frame. (Id. at 18).
I am not persuaded by Defendants' argument that the proper construction of "depression"
includes "holes." Nothing in the '927 patent suggests that "depression" and "hole" are used
interchangeably and thus have the same meaning. See Bid for Position, LLC v. AOL, LLC, 601
F.3d 113, 1317-18 (Fed. Cir. 2010) (finding "bid" and "value of the bid" to have the same
meaning where the claims and specification used the terms interchangeably). To the contrary,
whereas a "depression" in claim 1 is "to be fitted to said stepped protrusion," the "holes" in the
description of Figure 7 are not "to be fitted" to any "protrusion." Rather, the "holes" in the
intermediate frame allow for the protrusions to pass through the intermediate frame so that the
upper and lower frames can be secured to each other. See '927 Patent, col. 5 11. 45-48 ("[H]oles
may be formed in the intermediate frame 10 so that the intermediate frame 10 is coupled between
the upper and lower frames IA and IB folded to each other."). It is therefore clear that the
"holes" referred to in the description of Figure 7 are not "depressions." This construction is
consistent with the "general presumption that different terms have different meanings." Chicago

Bd Options Exch., Inc. v. Int'! Secs. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012).
Accordingly, since nothing in the '927 patent suggests that a "hole" is a type of "depression,"
Defendants' motion for summary judgment (D.I. 423) is denied in part as to anticipation of
asserted claims 1 and 5 of the '927 patent.

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IT IS SO ORDERED

this~ day of October 2017.

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