Pulse Medical Instruments, Inc. v. Drug Impairment Detection Services, LLC

Filing 110

MEMORANDUM OPINION. Signed by Chief Judge Deborah K. Chasanow on 9/23/10. (sat, Chambers)

Pulse Medical Instruments, Inc. v. Drug Impairment Detection Services, LLC

Doc. 110

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND PULSE MEDICAL INSTRUMENTS, INC. v. DRUG IMPAIRMENT DETECTION SERVICES, INC. : : : : : Civil Action No. DKC 07-1388

MEMORANDUM OPINION Presently pending and ready for resolution in this patent infringement case is Plaintiff's motion for partial summary A

judgment and preliminary injunctive relief. hearing was held on the summary judgment

(Paper 104). and

preliminary

injunction issues on November 24, 2009 and Plaintiff's request for a preliminary hearing is injunction deemed was subsequently For the denied. reasons No that

further

necessary.

follow, Plaintiff's motion for partial summary judgment will be granted. I. Background Plaintiff Pulse Medical Instruments, Inc. ("PMI") was

organized in 1988 to develop and commercialize technology for measuring human eye responses to screen subjects for drug,

alcohol, and sleep deprivation-related impairments. 1995, Plaintiff became the exclusive holder of

On June 6, U.S. Patent

Dockets.Justia.com

5,422,690 ("the `690 Patent"), known as a Fitness Impairment Tester. The `690 Patent implements: a self-administered screening test to determine whether a subject is physically impaired. . . . By superposing two different colored lights as viewed through an eyepiece, the subject aligns his or her pupil on the optical axis of the pupil imaging optics, which focuses an image of the subject's pupil on an image plane. . . . Light stimuli are provided to cause the pupil to change size and the eye to move. Pupil diameter measurements are made of the image of the subject's pupil in response to on axis light stimuli. (Abstract, `690 Patent). The `690 Patent has been used in a

variety of safety related industries, such as in coal mining to screen workers operating heavy equipment and in the criminal justice system to screen subjects for drug and alcohol use. On or about June 18, 2004, Plaintiff and Defendant, Drug Impairment agreement impairment Detection whereby Services, Plaintiff systems, Inc. agreed known ("DIDS") to as entered into an

custom FIT

build

drug

detection

2000

Screeners

("Screeners").

Defendant agreed to distribute these Screeners

under the name "PassPoint." Under the terms of the agreement, Defendant retained

ownership of the Screeners and leased them to its customers, with charges made on a pay-for-service basis. required to pay Plaintiff a fixed purchase Defendant was price for each

Screener, plus a 10% royalty for service fees that Defendant 2

charged to its customers.

Defendant purchased its last Screener

from Plaintiff on or about October 2004. On or about December 2005, Defendant began distributing its own substance abuse screener under the modified name

PassPoint.net.

On January 27, 2006, Plaintiff sent a letter to On May 25,

Defendant that it was terminating their agreement.

2007, Plaintiff filed a complaint against Defendant for patent infringement, alleging that Plaintiff's `690 Patent is infringed by Defendant's PassPoint.net product line. (Paper 1).

Defendant filed an answer and counterclaims on October 15, 2008. (Paper summary Patent. 8). On May for 12, the 2008, Defendant of filed Claim a 9 a motion of the for `690 claim

judgment (Paper

invalidity The court

46).

held

Markman

construction hearing for Claim 9 on October 27, 2008. 20, 2009, the of court Claim issued 9 and a memorandum opinion

On March on the for

construction

denied

Defendant's

motion

summary judgment.

(Paper 87).

After a period of additional discovery, Plaintiff filed a motion for partial the summary judgment version and 10 on of of September the the 4, 2009,

alleging machine

that

"original" Claims 9

Passpoint.net `690 Patent.

infringes

(Paper 104). the machine

Plaintiff argues that the "original" version of infringes Claim 9 because the machine allegedly

performs step (a) of Claim 9 by illuminating a subject's pupil 3

and focusing an image of the subject's pupil on an image plane. Plaintiff alleges that the "original" machine infringes Claim 10 because Claim 9 is incorporated into Claim 10. Claim 9 of the `690 Patent provides: 9. A method of testing fitness impairment of a subject comprising the steps of: (a) illuminating a subject's pupil and focusing an image of the subject's pupil on an image plane; (b) tracking movements of the subject's eye in response to moving light stimuli; (c) generating measures of one or more parameters Pi of the subject's eye as a function of time; (d) storing baseline data for the subject in a database; (e) controlling light stimulus means (f) and receiving parameters Pi; (g) accessing subject; and said said measures data of for said the

baseline

(h) providing an output indicative of a deviation of current measurements of said parameters Pi from said baseline data.1 Claim 10 of the `690 Patent states: 10. The method of measuring fitness impairment of a subject as recited in claim 9 wherein the step of providing an output

The original language of Claim 9 does not label the steps a-h, as seen above. The court has assigned each step with a corresponding letter in order easily to identify the relevant step in question. 4

1

indicative of a deviation of said current measurements from said baseline data comprises the steps of: computing a mean µi for each measured parameter Pi; computing a standard deviation of ai for each measured parameter Pi; and computing an Index as: Index =

i =1

n

Pi - µ i i

,

2

where n is the number of parameters Pi, a large value of Index indicating that measured parameter values are very different than those of the baseline. (Paper 1, Attach. 1, at col. 17-18). After a Markman hearing, the court made the following

construction of Claim 9, step (a), "illuminating a subject's pupil and focusing an image of the subject's pupil on an image plane": causing light to reach the pupil portion of the eye of a person tested and using equipment such as a lens to provide an image of the pupil to an image plane such as the image plane of a camera, for use in later steps of Claim 9. (Paper 87, at 13, 18). The court noted, "illuminating means

causing light to shine on something, here the pupil of the eye." (Id. at 16).

5

II.

Summary Judgment A. Standard of Review

Plaintiff has moved for partial summary judgment pursuant to Federal Rules of Civil Procedure 56 and 65. It is well

established that a motion for summary judgment will be granted only if there exists no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P 56(f); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Emmett v. Johnson, 532 F.3d 291, 297 (4th Cir. 2008). In other words, if there clearly exists factual issues "that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party," summary judgment is inappropriate. Anderson v. Liberty Lobby, Inc., 477

U.S. 242, 250 (1986); JKC Holding Co. LLC v. Washington Sports Ventures, Inc., 264 F.3d 459, 465 (4th Cir. 2001). The grant of

summary judgment "should be employed with great caution and is not ordinarily appropriate for the disposition of a patent

case."

Technitrol, Inc. v. Control Data Corp., 550 F.2d 992,

996 (4th Cir. 1977)(citing Morpul, Inc. v. Glen Raven, 357 F.2d 732, 736 (4th Cir. 1966)); Long v. Arkansas Foundry Co., 247 F.2d 366, 369 (8th Cir. 1957). "A district court should approach a

motion for summary judgment on the fact issue of infringement with great care." Amhil Enter. Ltd. v. Wawa, Inc., 81 F.3d Summary judgment is appropriate in 6

1554, 1557 (Fed. Cir. 1996).

patent cases as in other civil actions as long as there is no genuine issue of material fact. Amhil, 81 F.3d at 1557-558.

When ruling on a motion for summary judgment, the court must construe the facts alleged in the light most favorable to the party opposing the motion. See Scott v. Harris, 550 U.S. A party who bears the

372, 378 (2007); Emmett, 532 F.3d at 297.

burden of proof on a particular claim must factually support each element of his or her claim. 323. Celotex Corp., 477 U.S. at

"[A] complete failure of proof concerning an essential

element . . . necessarily renders all other facts immaterial." Id. Thus, on those issues on which the nonmoving party will

have the burden of proof, it is his or her responsibility to confront the motion for summary judgment with an affidavit or other similar evidence in order to show the existence of a

genuine issue for trial. Corp., 477 U.S. at 324. will not suffice F.3d to 307,

See Anderson, 477 U.S. at 254; Celotex "A mere scintilla of proof, however, summary Cir. judgment." 2003). Peters must v. be

prevent 314

Jenney,

327

(4th

There

"sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Anderson, 477 U.S. at 249.

"If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." (citations omitted). Id. at 249-50

7

B.

Analysis

A party is liable for patent infringement if a single claim is found to be infringed. College Net, Inc. v. Apply Yourself, Independent claims

Inc., 418 F.3d 1225, 1236 (Fed. Cir. 2005).

are those which do not depend on, or incorporate by reference any part of, another are claim. defined See by 35 U.S.C. 35: § 113 (2009). in

Dependent

claims

Title

"[A]

claim

dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to

incorporate by reference all limitations of the claim to which it refers." 35 U.S.C. § 112 (2009). To infringe a dependent

claim, all of the steps of the dependent claim must be performed in addition to the steps of the independent claim on which it depends. F.2d See, e.g., Wahpeton Canvas Co. v. Frontier Inc., 870 1552 (Fed. Cir. 1989)("One may infringe an

1546,

independent claim and not infringe a claim dependent on that claim."). Therefore, to establish direct infringement of a

patent, a patentee must prove that every limitation set forth in the independent claim is found in the accused product. See

e.g., Johnston v. IVAC Corp., 885 F.2d 1574, 1577 (Fed. Cir. 1989). To determine whether a patent is infringed, courts use a two-step analysis. Vivid Techs., Inc. v. Am. Sci. & Eng'g, 8

Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).

First, the court must

construe the claims and determine the meaning and scope of the patent claims that are alleged to be infringed and their key terms. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 The construction of claims is a Markman v. Westview (Fed. Cir. 1995)(en

(Fed. Cir. 1998)(en banc).

question of law and is decided by a judge. Instruments, banc), Inc., 52 F.3d 967, 970-71

aff'd, 517 U.S. 370 (1996).

After construction, the

claims, as interpreted, are compared to the accused infringing device. of fact. Vivid, 200 F.3d at 803. Id. contends that the "original" version of This comparison is a question

Plaintiff

Defendant's PassPoint.net drug abuse screening system infringes Claims 9 and 10 of the `690 Patent and that the court should grant partial summary judgment on that issue. As stated by

Plaintiff: "the question of infringement turns on whether the `original' version of the PassPoint.net product does or does not perform Claim 9's step of `illuminating a subject's pupil and focusing an image of the subject's pupil on an image plane.'" (Paper 104, Attach. "original" 1, at 24). Plaintiff all of alleges the that of

Defendant's Claim 9.

machine

performs

steps

Defendant admitted that the machine performs all of

the steps in Claim 9 apart from step (a), which is "illuminating a subject's pupil and focusing an image of the subject's pupil 9

on an image plane." Additionally,

(Paper 107, at 8 and Attach. 3 ¶¶ 2-7). admitted that the "original" machine

Defendant

performs all of the steps of the dependent Claim 10, apart from Claim 10's incorporation of Claim 9. ¶¶ 8-10). Plaintiff argues that Defendant's "original" and (Paper 107, Attach. 3

"redesigned" PassPoint.net machines illuminate a subject's pupil for the following reasons: 51. The eye imaging equipment being supplied to Defendant by ISCAN for the PassPoint.net product has an IR [infra-red] Illuminator that provides an ambient infrared light source to generally illuminate the eye area. 52. The eye imaging equipment being supplied to Defendant by ISCAN for the PassPoint.net product has an infra-red illumination source. 53. The eye imaging equipment being supplied to Defendant by ISCAN for the PassPoint.net product has an eye imaging video camera that is sensitive to the nonvisible infra-red illumination used by the equipment to illuminate the eye. 54. The pupil is among the parts of the eye illuminated by the eye imaging equipment being supplied to Defendant by ISCAN for the PassPoint.net product. 55. The PassPoint.net product brightly illuminates the part of the eye of which the pupil is the center and produces an image in which the pupil appears as a dark area. (Paper 104, Attach. 2 ¶¶ 51-55)(citing Attach. 6, Kielar Dep. ¶¶ 46:13-47:3, 52:19-21; Paper 46, Attach. 5, Kielar Aff. ¶¶ 8, 10

10; Paper 76, Attach. 1 ¶¶ 7-8; Paper 86, Attach. 5; Paper 87, at 17). Additionally, Plaintiff asserts that Defendant's "original" PassPoint.net machine focuses an image of the subject's pupil on an image plane for the following reasons: 53. The eye imaging equipment being supplied to Defendant by ISCAN for the PassPoint.net product has an eye imaging video camera that is sensitive to the nonvisible infra-red illumination used by the equipment to illuminate the eye. 55. The PassPoint.net product brightly illuminates the part of the eye of which the pupil is the center and produces an image in which the pupil appears as a dark area. 59. The eye imaging equipment being supplied to Defendant by ISCAN for the PassPoint.net product has eye imaging optics in which optical components (e.g., like a lens) are used with the eye imaging video camera to obtain the infra-red eye illuminator images of the subject's eye over a wide focusing range of seven and one-half inches (7.5") to thirty-eight inches (38"). 60. Use of a camera accomplishes focusing on an image plane. (Paper 104, Attach. 2 ¶¶ 53, 55, 59-60)(citing Paper 46, Attach. 5, Kielar Aff. ¶ 10-11; Paper 76, at 13-14, Attach. 1 ¶ 7; Paper 86, Attach. 5; Paper 87, at 14, 18).

11

Plaintiff concludes: Applying this court's construction of the terms "illuminating" and "focusing" as used in Claim 9 to the undisputed facts concerning the operation of Defendant's PassPoint.net products, it is established as a matter of law that both the "original" and the "redesigned" versions of the PassPoint product perform Claim 9's step of illuminating a subject's pupil on an image plane. (Paper 104, at 24)(internal citation omitted). Therefore,

Plaintiff asserts that it is entitled to summary judgment on the issue of infringement as to Claims 9 and 10. Defendant counters that summary judgment on the issue of infringement of Claims 9 and 10 is inappropriate at this stage because there is a genuine issue of material fact as to whether Defendant's "original" PassPoint.net system provides an "image of the pupil on an image plane." (Paper 107, at 1). Defendant

argues that the "original" machine does not provide an image of the pupil because it does not use an "illuminated pupil

technique."

(Id. at 10).

Defendant asserts that its machine

causes light to reach a subject's eye but that the machine only records an image of the "lighted iris, cornea, and eye-lashes of the subject's eye on an image plane." (Id. at 11).

Defendant contends that the genuine issue of material fact in dispute is whether area" an "image" on of the the pupil of or the a "dark, camera.

unilluminated

appears

lens

12

(Paper 107, at 12). stating,

Defendant likens a pupil to a black hole,

since the pupil of the subject's eye is a hole, the pupil, by itself, cannot reflect light . . . [t]his means that . . . the light reaching the pupil is not able to be used to light up the pupil and therefore, since the pupil is not illuminated by this light, equipment such as a lens, cannot record or provide an image of the pupil on an image plane. (Id.)(citing Paper 76, Attach. 1, Kielar Rep. ¶¶ 7-8).

Defendant concludes that the machine does not provide an image of the pupil but rather causes a "`dark, unilluminated' area to appear in the resulting subject's eye where the pupil would be located since there was no image that the lens could generate there." (Paper 107, at 12). "original" extension, PassPoint.net Claim 10. machine infringes machine

Defendant's Claim 9, and by

Defendant's

performs a method of fitness testing that includes "illuminating a subject's pupil and focusing an image of the subject's pupil on an image plane." (Paper 1, Attach. 1, at col. 17). To

repeat, the court construed Claim 9, step (a) as: causing light to reach the pupil portion of the eye of a person tested and using equipment such as a lens to provide an image of the pupil to an image plane such as the image plane of a camera, for use in later steps of Claim 9.

13

(Paper

87,

at

13,

18).

Furthermore,

the

court

stated,

"illuminating means causing light to shine on something, here the pupil of the eye." construction of Claim (Id. at 16). 9, step (a), According to the court's a subject's pupil is

illuminated when light reaches the pupil. that "light reach[es] the pupil."

Defendant, admits 107, at 11).

(Paper

Defendant also admits that an image of a subject's eye appears on the lens of the "original" PassPoint.net system. Defendant argues, however, "because the (Id. at 3). is not

pupil

illuminated, no image of the pupil is captured."

(Id. at 3-4).

Defendant may not reopen the definition of "illuminated" at this point to argue that an image of a whole eye, is captured without by an

Defendant's

"original"

PassPoint.net

machine,

image of a pupil.

Though it may be possible to capture an image

of a pupil by more than one method, Defendant's machine does, according to the court's construction, "provide an image of the pupil to an image plane such as the image plane of a camera." Therefore, there is no genuine issue of material fact as to whether Defendant's "original" PassPoint.net machine performs

Claim 9, step (a). Because Defendant admitted that the "original"

PassPoint.net machine performs the remaining steps of Claims 9 and 10, Defendant's "original" machine infringes Claims 9 and 10

14

and thus infringes the `690 Patent. judgment will be granted to Plaintiff. III. Conclusion

Therefore, partial summary

For the foregoing reasons, Plaintiff's motion for partial summary judgment will be granted. A separate Order will follow.

/s/ DEBORAH K. CHASANOW United States District Judge

15