Pactool International Ltd v. Dewalt Industrial Tool Co et al

Filing 265

ORDER denying 243 Motion for Summary Judgment by Judge Benjamin H Settle.(TG)

1
2
3
4
5

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT TACOMA

6
7
8

PACTOOL INTERNATIONAL LTD.,
Plaintiff,

9
10
11

CASE NO. C06-5367BHS

v.
KETT TOOL COMPANY, INC., et al.,
Defendants.

12

ORDER DENYING PACTOOL’S
MOTION FOR SUMMARY
JUDGMENT OF LITERAL
INFRINGEMENT

13
14
15
16
17

This matter comes before the Court on Plaintiff PacTool International Ltd.’s
(“PacTool”) motion for summary judgment of literal infringement (Dkt. 243). The Court
has reviewed the briefs filed in support of and in opposition to the motion and the
remainder of the file and hereby denies the motion for the reasons stated herein.
I. PROCEDURAL HISTORY

18
19

On June 29, 2006, PacTool filed a complaint against Kett alleging patent

20

infringement. Dkt. 1. On April 8, 2010, PacTool filed a First Amended Complaint

21

(“FAC”) against Defendants Kett and H. Rowe Hoffman alleging patent infringement.

22

Dkt. 63.

23

On March 25, 2010, Pactool filed a motion for partial summary judgment of literal

24

infringement. Dkt. 58. On April 12, 2010, Kett replied. Dkt. 66. On April 16, 2010,

25

Pactool replied. Dkt. 71. On January 31, 2011, the Court granted in part and denied in

26

part PacTool’s motion. Dkt. 148.

27
28
ORDER - 1

On September 13, 2011, Pactool filed another motion for summary judgment of

1
2

literal infringement. Dkt. 243. On October 3, 2011, Kett responded. Dkt. 249. On

3

October 7, 2011, Pactool replied. Dkt. 253.

4
5
6
7
8

II. DISCUSSION
A.

Standard
Summary judgment is proper only if the pleadings, the discovery and disclosure

materials on file, and any affidavits show that there is no genuine issue as to any material
fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).

9

The moving party is entitled to judgment as a matter of law when the nonmoving party
10
11
12
13

fails to make a sufficient showing on an essential element of a claim in the case on which
the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). There is no genuine issue of fact for trial where the record, taken as a whole,

14

could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec.

15

Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must

16

present specific, significant probative evidence, not simply “some metaphysical doubt”).

17

See also Fed. R. Civ. P. 56(e). Conversely, a genuine dispute over a material fact exists if

18

there is sufficient evidence supporting the claimed factual dispute, requiring a judge or

19

jury to resolve the differing versions of the truth. Anderson v. Liberty Lobby, Inc., 477

20

U.S. 242, 253 (1986); T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d

21

626, 630 (9th Cir. 1987).

22
23
24
25
26

The determination of the existence of a material fact is often a close question. The
Court must consider the substantive evidentiary burden that the nonmoving party must
meet at trial – e.g., a preponderance of the evidence in most civil cases. Anderson, 477
U.S. at 254; T.W. Elec. Serv., Inc., 809 F.2d at 630. The Court must resolve any factual
issues of controversy in favor of the nonmoving party only when the facts specifically

27

attested by that party contradict facts specifically attested by the moving party. The
28
ORDER - 2

1

nonmoving party may not merely state that it will discredit the moving party’s evidence at

2

trial, in the hopes that evidence can be developed at trial to support the claim. T.W. Elec.

3

Serv., Inc., 809 F.2d at 630 (relying on Anderson, 477 U.S. at 255). Conclusory,

4

nonspecific statements in affidavits are not sufficient, and missing facts will not be

5

presumed. Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888-89 (1990).

6

B.

7
8

Pactool’s Motion
To establish literal infringement, a patentee must show by the preponderance of

the evidence that the accused device contains each limitation of an asserted claim. Amgen

9

Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1374 (Fed. Cir. 2009).
10

In this case, Pactool moves for entry of summary judgment on literal infringement

11
12
13

because it argues that there are no questions of material fact as to whether Kett’s first
design tools meet every limitation of the Pactool’s asserted claims. Dkt. 243 at 9. Kett

14

contends that there are numerous questions of material fact that preclude entry of

15

summary judgment, including whether Kett’s tools contain limitations that are defined by

16

words of degree. See Dkt. 249 at 8-12. As more fully discussed in the Claim

17

Construction Order, words of degree require an objective standard for measuring that

18

particular degree. With regard to the instant motion, Pactool has failed to meet either

19

element for entry of summary judgment.

20

First, Pactool has failed to show that it is entitled to judgment as a matter of law.

21

There is no evidence in the record regarding either the failure rate of the prior art or

22

objective evidence of a clean or even edge cut. Without providing evidence on these

23

elements of their claims of infringement, Pactool has failed to meet its initial burden of

24
25

proving that Kett’s devices either provide clean edge cuts or inhibit premature failure or
wear.

26
27
28
ORDER - 3

1

Second, Pactool has failed to show an absence of material questions of fact as to

2

every element of their infringement claims. Even if Pactool had submitted objective data

3

or opinion as to the words of degree limitations, Pactool has failed to submit evidence that

4

Kett’s tools contain the disclosed functional limitations. Pactool, however, argues that

5

evidence is not necessary because the functional limitations are inherently shown if

6

Pactool shows that Kett’s tools include the structural limitations. This argument is not

7

only unsupported by binding patent and summary judgment case law, but also ignores

8

pertinent questions of material fact. For example, there exist questions of fact regarding

9

the motors that Kett actually uses, or used, and whether those motors experienced

10
11

premature wear or failure without the spacings disclosed in the patents. Kett is the only
party to submit any evidence on these issues and the evidence shows that it is difficult to

12

(1) obtain an objective standard and (2) determine whether a tool fails to experience
13

premature wear or failure. See Dkt. 191, Declaration of Nicholas C. Tarkany.
14
15
16

With regard to the clean or smooth edge cut limitation, Pactool has provided at
least some evidence that Kett’s tools read on this limitation. See Dkt. 172-1, Exhs. 1-7

17

(Kett’s marketing literature). This evidence, however, does not overcome Pactool’s other

18

failures on the instant motion.
III. ORDER

19
20
21
22

Therefore, it is hereby ORDERED that PacTool’s motion for summary judgment
of literal infringement (Dkt. 243) is DENIED.
DATED this 28th day of October, 2011.

23
24

A

BENJAMIN H. SETTLE
United States District Judge

25
26
27
28
ORDER - 4