Componex Corporation v. Electronics For Imaging, Inc.

Filing 195

OPINION & ORDER: Defendant EFI's motion for summary judgment on Componex's claims of non-infringement and willful infringement (dkt. # 41 ) is GRANTED in part with respect to claims 1-4 of the '059 patent and is otherwise DENIED. P laintiff's cross-motion on the same issues is DENIED. Defendant EFI's motion for damages (notice) (dkt. # 41 ) is GRANTED in part with respect to claims 1-4 of the '059 patent. On or before 11/14/2014 the parties are DIRECTED to file updated charts listing claims and products that remain in issue consistent with the court's claim constructions and summary judgment opinions. To the extent the parties are unable to agree, the parties may also file a trial brief on or before 11 /18/2014 addressing what, if any, dispute remains with respect to the facts and law of those individual claims and products, particularly with respect to any assertion of an implied license. Signed by District Judge William M. Conley on 11/4/14. (jat)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

COMPONEX CORPORATION,
Plaintiff,

OPINION & ORDER

v.
13-cv-384-wmc
ELECTRONICS FOR IMAGING, INC.,
Defendant.

Plaintiff Componex Corporation alleges that defendant Electronics For Imaging,
Inc. (“EFI”), infringes two of its patents for printing technology. The court has already
addressed Componex’s infringement claims on summary judgment with respect to U.S.
Patent No. 6,685,076 (“the ‘076 patent”).

(Dkt. #152.)

This opinion addresses

Componex’s claims of infringement of U.S. Patent No. 6,113,059 (“the ‘059 patent”)
and follows the court’s earlier claim construction with respect to that patent issued on
July 18, 2014. (Dkt. #119.) The parties have also cross-moved for summary judgment
on infringement of the ‘059 patent. For the reasons that follow, the court will partially
grant EFI’s motion for summary judgment because most of its products do not use lugs
for balancing the roller. Because EFI concedes that there are disputed issues of fact with
respect to its use of lugs to balance at least two of its products, however, the case must
proceed to trial. For that reason, this opinion will also address lingering issues related to
allegedly infringing products that survived summary judgment.

BACKGROUND
I. The Parties
Plaintiff Componex is a company located in Edgerton, Wisconsin, that
manufactures printing rollers, also known as “idler rollers.” As described in more detail
below, Componex manufactures and sells “dead shaft” idler rollers encompassed by one
or more claims of the ‘059 patent under the trademark “WINertia.”
Defendant EFI is a publicly-traded company that sells digital printers and printing
technology, including software. (Declaration of Peter Benoit (“Benoit Decl.”) (dkt.# 51)
¶ 3.)

Among the products EFI offers are several different models of its VUTEk

Superwide-format printers. (Id.) VUTEk printers are used by specialty print shops to
create high-quality, large-format banners, posters and displays.

II. Printing Roller Technology
Printing rollers are routinely used for what is known as “web handling,” i.e., the
transportation, shaping, and/or storage of thin materials -- such as paper, foil, or rolled
metal -- in a continuous and flexible form. (Declaration of Tim Walker (“Walker Decl.”)
(dkt.# 56) at ¶ 5.) Central to the ‘059 patent are what are known as “idler rollers.” An
idler roller is a roller that rotates by traction, typically created by the moving web as it is
pulled or pushed under the roller itself. (Id. ¶ 6d.) Idler rollers can be employed in web
handling to, among other things, change web direction, prevent droop or flutter, monitor
average web tension and provide an applied force to bend the web for guiding. Idler
rollers are referred to as “live shaft” or “dead shaft.” A live shaft roller is one where the

2

shaft is fixed to and rotates with the roller, whereas a dead shaft roller is one where the
shaft (also known as the axis) does not rotate with the roller. (Id. ¶ 6b.)
Rollers can also be balanced or unbalanced. Ordinarily, rollers are balanced only
in applications requiring high speed printing. (Id. ¶ 15.) When balancing is needed, it
can be done either by the addition of mass to the rotor, by the removal of material, or in
some cases by relocating the shaft axis (“mass centering”).

Removal of mass can be

accomplished by, among other things, drilling, milling, or grinding. (Id. ¶ 20.)

III. The Material Claims of the ‘059 Patent
The ‘059 patent describes a dead shaft idler roller (i.e., a roller that rotates around
a nonmoving shaft or axle) composed in a single piece of two concentrically disposed
tubes connected with radial spokes instead of using a thicker single tube. (See, e.g., ‘059
patent, 2:15-27.)

Figure 1: An Embodiment of Invention from the ‘059 patent: Idler (54), Balancing Pins
(72) & Balancing Lug (32)
As illustrated above, the ‘059 patent teaches the inclusion of built-in “balancing
lugs” (32) and “balancing pins” (72). These features can be removed or inserted after
3

manufacture in order to balance the roller and “eliminate the problem of weights rolling
around loose inside the idler” itself. (Id. 2:26-27.) Each of the independent claims in the
‘059 patent require “balancing lugs”; many of the independent claims also require
“balancing pins.” (See, e.g., id. claims 1-4, 12-22.)

Componex asserts infringement of

claims 1-4 and 12-22 of the ‘059 patent. (Pl.’s Br. for Summ. J. (dkt.# 37) 8-9.)
Claim 1 is illustrative of the patented invention:
[A] A member suitable for an idler, comprising:
[B] a one-piece unitarily formed tube, wherein said tube comprises, an
outer elongate tube having a first outside surface and a first inside surface;
[C] an inner elongate tube having a second outside surface and a second
inside surface, wherein said inner elongate tube is concentrically disposed
within said outer elongate tube;
[D] a plurality of radially disposed and spaced apart spokes rigidly
interconnecting said inner elongate tube to said outer elongate tube;
[E] and a plurality of spaced apart balancing lugs having holding members
for receiving balancing pins, wherein said lugs are radially disposed about
said member between said outer elongate tube and said inner elongate tube;
and
[F] wherein no balancing lugs are disposed on said second inside surface of
said inner elongate tube.
‘059 patent, at 8:1-10 (emphasis added).

OPINION
An analysis of patent infringement requires a two-step process: “first, the scope of
the claims are determined as a matter of law, and second, the properly construed claims
are compared to the allegedly infringing device to determine, as a matter of fact, whether
all of the limitations of at least one claim are present, either literally or by a substantial
4

equivalent, in the accused device.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
1323 (Fed. Cir. 2002); Split Pivot, Inc. v. Trek Bicycle Corp., 12-CV-639-WMC, 2013 WL
6564640, at *2-3 (W.D. Wis. Dec. 13, 2013). Since the court previously construed the
claims in question, this opinion will focus solely on a comparison of claims to the
allegedly infringing products.
In its earlier claim construction opinion, this court granted EFI’s motion for
summary judgment with respect to claims 5-22 based upon Componex’s concession that
there was no evidence of balancing pins in EFI’s products. (Dkt # 119 at 19.)
While the court has adopted EFI’s construction, it will only grant EFI’s motion for
summary judgment of non-infringement with respect to claims 5-22 based both
on: (1) the absence in the factual record of use of balancing pins by EFI, except
for idlers sold to it by Componex; and (2) as confirmed at the hearing held on July
16, 2014, the fact that balancing pins are required for each of those claims. At
this juncture, the court will reserve judgment with respect to claims 1-4 until after
the filing of the parties’ charts listing the claims and products that remain at issue.
(Id.) Accordingly, what the court now decides is whether EFI’s products infringe claims
1-4. Relatedly, the court will also address which products may proceed to trial. EFI
Products, and the corresponding Part Numbers, found in Componex’s “Chart Listing
Claims and Products at Issue,” will be used for reference purposes in this opinion. (Dkt
#124.)
Componex bears the burden of proving infringement by a preponderance of the
evidence. See Laitram Corp. v. Rexnord Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).
Accordingly, Componex must come forward with evidence of infringement when put in
dispute on summary judgment. See Fed. R. Civ. Proc. 56; Celotex Corp. v. Catrett, 477

5

U.S. 317, 322–23 (1986). With respect to most of the allegedly infringing products,
Componex has not met its burden.
I. EFI Products
To determine whether EFI’s remaining products infringe, the court begins with its
construction of the term “balancing lugs,” a term central to claims 1-4.1 EFI’s preferred
construction was that balancing lugs meant “structures which are intended to balance the
idler,” arguing that the patent should be construed from the perspective of its purpose or
intended use. (Dkt # 119 at 5.) Componex’s preferred construction was “structures
dimensioned and configured to retain a balancing pin.” (Id.)
In this way, EFI obviously sought to import a functional limitation into the claims,
while Componex’s construction was solely structural. (Id. at 5.) This functional/structural
debate was addressed in the court’s claim construction opinion, particularly in Section
I.E. Ultimately, the court rejected Componex’s preferred construction based on (1) claim
language, (2) the specification, (3) the prosecution history and (4) extrinsic evidence.
Support for EFI’s construction, which the court adopted, was best depicted in
Componex’s own representations to the Patent Office, made to avoid a rejection on
invalidity grounds.2 The following representation is illustrative:

The term “balancing pin” was also disputed, but Componex conceded there was no evidence of
balancing pins being used in any of the allegedly infringing products.
1

Of course, this would have led to the question whether the claims were valid in light of similar
prior art. Though, Componex managed to avoid this question in prosecuting the ‘059 patent
before the Patent Office by adding functional limitations. Indeed, on the court’s review of the
Lilja and Skegin references, these references are not just similar but near, structurally identical.
2

6

As noted in the subject specification, the balancing lugs are used for holding balancing pins
so that the tubing material can be balanced without the problem of weights rolling around
loose inside the idler. [Neither] Lilja et al. nor Skegin make any reference to using balancing
lugs to balance an idler. The forks of Lilja et al. enable outer portions to be
removably attached to the pipe [including end caps]. Certainly, the forks of Lilja
et al. cannot be considered the same as the claimed balancing lugs because the
forks could not hold balancing pins as taught by the subject application. With
reference to Skegin, the channel sections and plates interlock by means of mating
longitudinal bosses. Certainly, the bosses projecting from the inside surface near
cannot be considered the same as the claimed balancing lugs . . . as taught by the
application.
(Walker Decl. Ex. B (dkt.#56-2) 116) (emphasis in the original).
Based on this and other representations to the Patent Office, this court went on to
find that:
The patentee . . . states that the Lilja and Skegin references do not use balancing
lugs and balancing pins to balance an idler. In Catalina’s3 language, these
statements are “clearly and unmistakably” relied upon to distinguish the “uses or
benefits” of these features [in the ‘059 patent] over the prior art. 289 F.3d at
808.
(Dkt #119 at 16.)
Since detailed responses to the Patent Office reveal specific boundaries Componex
voluntarily carved out from the prior art to obtain the ‘059 patent, these same boundaries
provide the framework to determine the infringement question here.

Indeed, the

functionality limitation supplies meaning to a tortured prosecution history that included
three Patent Office rejections. Thus, the functional limitation is critical to understanding
the parameters of the patent based on the prosecution history. See Funai Elec. Co. v.
Daewoo Elecs. Corp., 616 F.3d 1357, 1366 (Fed. Cir. 2010) (“The use of comparative and
See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); see also
Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009) (“absent an express
limitation to the contrary, any use of a device that meets all of the limitations of an apparatus
claim written in structural terms infringes that apparatus claim”).
3

7

functional language to construe and explain a claim term is not improper. A description
of what a component does may add clarity and understanding to the meaning and scope
of the claim.”); Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 1111 (Fed. Cir.
2000) (“We note that there is nothing wrong with defining the dimensions of a device in
terms of the environment in which it is to be used.”).
EFI contends that a substantial number of its products do not infringe because
their lugs do not balance the idlers as claimed by the ‘059 patent. In support, EFI relies
on a declaration from Paul Duncanson, Manager of Mechanical Architecture at EFI, who
avers:
It is my understanding that Componex has asserted that the rollers depicted in
drawings for part numbers 45059073, 45066280, 45073176, 45073177,
45073453, 45078972, 45079680, 45081334, 45086866, A60525-A, A76213-A,
and/or 45074570 allegedly infringe on U.S. Patent No. 6,113,059 ("the '059
Patent"). I am familiar with the part numbers in question and know that EFI does
not balance the rollers depicted in the drawings for those part numbers.
I understand that Componex has referred to what it calls “balancing lugs” to
identify certain C-shaped features on its rollers. To the extent these C-shaped
features are contained in rollers corresponding to the part numbers identified
above in Paragraph 3, EFI uses these C-shaped features to screw end caps onto the
rollers. EFI does not use these C-shaped features to hold balancing pins or otherwise to
balance the rollers.
(Declaration of Paul Duncanson (“Duncanson Decl.”) (dkt. #52) 1) (emphasis added).)
Componex supplies no evidence to controvert Duncanson’s declaration with
respect to any of these part numbers.4 In particular, there is no evidence that EFI uses the

The only evidence that Componex did proffer on infringement as to these Part Numbers was a
report by Jerald Brown. (Brown Expert Report. (dkt.# 70) 12-22.) But that report was not based
upon the court’s construction of the claims. Instead, it was based on Componex’s structural
construction, which the court rejected. There are, however, two Part Numbers in dispute and not
noted in Duncanson’s declaration -- Part Number 45071308 and Part Number 45071323. EFI
4

8

C-shaped balancing lugs in these products to hold balancing pins or otherwise balance the
rollers.
On the contrary, in its opposition (dkt. #75 at 24) and reply (dkt. #105 at 11)
briefing, Componex does not challenge any of the asserted facts in Duncanson’s
declaration. Instead, Componex argues that its claims were apparatus claims and that
“apparatus claims cover what the device is” (its structure), “not what the device does” (its
function). Paragon, 566 F.3d at 1090.

Accordingly, Componex argued that because

EFI’s products infringed apparatus claims, any “utilization” argument made by EFI was
“irrelevant.” (Dkt. #105 at 10) (“whether EFI uses lugs on its accused roller to balance
the roller is irrelevant”). In so arguing, Componex sought to analogize the balancing lugs
to a toaster: “if you use a toaster as a doorstop, [i]t’s still a toaster [regardless of its many
uses].” Id.
The court rejected this very argument in its previous claims construction opinion,
finding Componex’s reliance on the general rule in Paragon unpersuasive. Instead, the
court found an express exception applied. In Paragon, the Federal Circuit explained that:
“absent an express limitation to the contrary, any use of a device that meets all of the
limitations of an apparatus claim written in structural terms infringes that apparatus
claim.” Paragon, 566 F.3d at 1090. Because there was an express (functional) limitation
in the prosecution history of the ‘059 patent (limiting the claims), this court found that

concedes that there are disputed issues of fact regarding whether lugs are used for balancing in
these products.

9

the general rule did not apply.

Rather, the claims were limited to uses of lugs for

balancing the idler.
Moreover, to the person skilled in the art, the lack of evidence that the use of
EFI’s lugs are used to balance EFI’s rollers would indicate that the ‘059 patent does not
read on those products.5

Indeed, a review of the specification and the prosecution

history, relative to the evidence in suit, establishes as much. See Application of Barr, 58
C.C.P.A. 1388, 444 F.2d 588, 595, 170 U.S.P.Q. 330 (1971) (“The real issue ... is
whether the recital sets definite boundaries on the patent protection sought -- that is,
whether those skilled in the relevant art can determine what the claim does or does not
read on.”).
As foreshadowed in the claim construction opinion, the present case is also
analogous to DeSena v. Beekley Corp., 729 F. Supp. 2d 375 (D. Me. 2010). In DeSena, the
functional limitation at issue related to X-ray markers “used” for podiatry purposes. The
district court held that because of efforts by the patentee to distinguish the patent from
the prior art in both its specification and prosecution history, the Patent Office adopted a
functional construction, upon which the accused infringer subsequently relied.

Id. at

381-84. Like the ‘059 patent, the patent at issue in DeSena suffered a tortured
prosecution history before issuance of the claims. Ultimately, the patentee could not
prove literal infringement because there was no evidence that the defendant used the
markers for podiatry purposes. Id. at 381-84.

Those Part Numbers are: 45059073, 45066280, 45073176, 45073177, 45073453, 45078972,
45079680, 45081334, 45086866, A60525-A, A76213-A, and/or 45074570. (Declaration of Paul
Duncanson (“Duncanson Decl.”)(dkt # 52) at 1).
5

10

Admittedly, DeSena is relatively unusual in finding functional limitations in what
are typically known as apparatus claims. This also makes the infringement question here
relatively unusual in that the patent does not follow a typical means-plus-function format
under 35 U.S.C. § 112, ¶6.

Indeed, DeSena is one of the few cases finding no

infringement because the defendant was using a device for a purpose not covered by the
patent, or in other words, the accused device did not literally follow the functional
limitation expressed in the claims. See DeSena, 729 F. Supp. 2d at 384-85 (“The public
record of the prosecution history, therefore -- the official record that is created in the
knowledge that its audience is not only the patent examining officials and the applicant,
but the interested public -- demonstrates that [the patentee] consistently and repeatedly
distinguished the prior art by limiting use of its ′106 patent to foot markers and podiatry
... Because [the defendant] sells its markers only for mammography, not for foot x-rays,
there is no infringement as I construe the claims.”).6
Notwithstanding the functional limitation placed on the ‘059 patent, Componex
apparently continues to contend that each of the Part Numbers listed above literally

In all the other cases found, courts considered whether functional limitations in apparatus claims
were valid, not whether they have been infringed. Nevertheless, these cases do support the
proposition that defining claims by their function, outside the 35 U.S.C. § 112, ¶ 6 context, is
proper. See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1374-75 (Fed. Cir. 2014)
(“defining a particular claim term by its function is not improper” and “is not sufficient to convert
a claim element containing that term into a ‘means for performing a specified function’ within the
meaning of [35 U.S.C. § 112(6) ]”); Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520
F.3d 1367, 1375 (Fed. Cir. 2008) (“claims are not necessarily indefinite for using functional
language . . . [and such language] may be used to limit the claims without having the means-plusfunction format”); In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“a patent applicant is
free to recite features of an apparatus either structurally or functionally”); In re Swinehart, 58
C.C.P.A. 1027, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971) (“there is nothing
intrinsically wrong with defining something by what it does rather than what it is in drafting
patent claims”).
6

11

infringe the ‘059 patent. See Componex’s Chart Listing Claims and Products at Issue.

(Dkt # 124.) But Componex does not explain how this can be so.7
Certainly, this is at least arguably true for two Part Numbers that purportedly use
lugs for the purposes of balancing the rollers, but Componex’s literal infringement theory
with respect to the other Part Numbers was predicated on a structural likeness between
EFI’s products and the patent -- not a functional likeness -- just as EFI’s defense
depended on the court finding a functional limitation.8 Put another way, other than
EFI’s concessions with regard to these few products, Componex offers no proof that EFI’s
products contain “balancing lugs” (i.e., “structures which are intended to balance the
idler”).9

Componex’s claim construction charts comparing the products with limitations in the patent do
not include the court-construed functional limitations. (Dkt # 37 at 14-15). Any noninfringement opinion that depends upon a rejected claim construction is obviously inadequate as
a response to a motion for summary judgment for infringement based on the adopted claim
construction. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009); cf.
Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1224, n.2 (Fed. Cir. 2006) (affirming
exclusion of testimony of expert based on incorrect claim construction); Personalized User Model,
L.L.P. v. Google Inc., No. CV 09-525-LPS, 2014 WL 807736, at *1 (D. Del. Feb. 27, 2014)
(“expert testimony inconsistent with the Court’s claim construction is unreliable and unhelpful to
the finder of fact”).
7

Now looking at the infringement issues here through the “viewing glass” of a functional
perspective, Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005), Componex’s fortune
fails for all but a few remaining products. Indeed, because of the way in which each party argued
its case on summary judgment, each must have realized that their fortune on infringement was
always going to rise and fall on whether their preferred claim construction position was adopted.
8

The fact that EFI has conceded that some of its products are used for balancing purposes goes to
show that a line can be drawn between those products that infringe and those that do not. But in
ascertaining that line, a plaintiff (here, Componex) must proffer proof of products that fall on the
infringing side.
9

12

This case could well have been different had Componex submitted proof of an
infringing use. For example, the case may have been different if there were advertisement
stating either explicitly or implicitly that EFI’s lugs permitted balancing.

Perhaps

infringement may have also been proven with evidence of inducement by EFI to its
customers to use the lugs for balancing purposes. But Componex does not offer proof to
support either of these theories with respect to any of the alleged infringing products. On
the contrary, Componex has been steadfast in advocating its structural interpretation
with the exception of two Part Numbers.

Having already lost that debate at claims

construction, Componex cannot meet its burden on infringement as to those Part
Numbers referred to in the Duncanson declaration.
Accordingly, the court will grant partial summary judgment to EFI on Componex’s
claim that EFI allegedly infringed the ‘059 patent with respect to all but two part
numbers: Part Number 45071308 and Part Number 45071323.10 See Teleflex, 299 F.3d
at 1323 (patentee must prove that “all of the limitations of at least one claim are present,
either literally or by a substantial equivalent, in the accused device.”).
II. Implied License
EFI raised a separate, albeit poorly developed, issue on summary judgment by
asserting that certain number of its allegedly infringing products were purportedly
covered by an implied license from Componex.

In light of the court having now

substantially narrowed the products still at issue under both patents, it is at best unclear
To be clear, with respect to the Part Numbers in Duncanson’s declaration, EFI’s motion is
granted as to both literal infringement and infringement under the doctrine of equivalents. See
Claims Construction Opinion (dkt. #119), p. 19, n7.
10

13

whether EFI still maintains that to be the case. This uncertainty is further complicated
by EFI’s statements that it has “primarily” purchased products from Componex.

See

McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 921 (Fed. Cir. 1995) (“[A]n authorized
sale of a patented product places that product beyond the reach of the patent.”). Before
the court reconciles this issue, the parties will be directed to file fresh charts listing claims
and products at issue, similar to those the parties have filed at Dkt. #123-124. Given
the overlap in several Product Numbers that may no longer be at issue in this case (either
because of the infringement findings in this opinion or the invalidity findings in the ‘076
opinion), these tables would assist the court to ascertain those products that remain at
issue in this case. While Componex goes some way to explaining which products might
not arguably be subject to an implied license (dkt. #105 at 6-7), the parties should
further indicate in their claim charts whether an implied license would apply to some or
all of the product(s) manufactured. In both regards, before finalizing their claim charts,
the parties will be expected to discuss the implications of this opinion and the remaining
products in dispute, as well as what facts are disputed and undisputed with respect to the
sourcing of idler rollers.11
III. Notice Requirement and Damages
EFI also moves for partial summary judgment as to damages. EFI argues that any
damages awarded must be reduced because of Componex’s failure to comply with the
Componex’s Motion to Supplement the Summary Judgment Record with the Supplemental
Declaration of Cal Couillard by Plaintiff Componex Corporation (Dkt #125) will be addressed
once the fresh claim charts have been filed. For ease of reference, the Product Numbers referred
to in this Couillard declaration should also be noted in the claim charts as being sourced from this
declaration.
11

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notice requirements of 35 U.S.C. § 287(a). That statute mandates that actual notice
must be given before damages can be awarded. 35 U.S.C. § 287; Amsted Indus., Inc. v.
Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994).

More specifically, to

recover damages for patent infringement, a patentee must establish that the alleged
infringer had actual notice of the infringed patent and the product alleged to infringe. 35
U.S.C. § 287(a). Moreover, pursuant to section 287(a), “a party that does not mark a
patented article is not entitled to damages for infringement prior to actual notice” to the
alleged infringing party that its actions infringe the patent. Crown Packaging Tech., Inc. v.
Rexam Beverage Can Co., 559 F.3d 1308, 1316 (Fed. Cir. 2009).
Here, Componex concedes that it did not properly mark its products as patented.
Instead, Componex asserts that EFI was afforded actual notice by way of oral
communication and contemporaneous emails. Specifically, Componex argues that EFI
received actual notice of infringement of the ‘059 patent in late 2009 by virtue of an oral
communication between Darcy Perona, an employee at Componex, and Roberta Berecz,
an employee at EFI. In her declaration, Ms. Perona states:
I recall that, in 2009, I had communications, including a phone conversation, with
Roberta Berecz, who was at the time a buyer for EFI. Ms. Berecz informed me that
EFI was attempting to purchase 10-inch cantilever rolls from another vendor.
In response to that information, I informed Ms. Berecz that Componex held
patents on both the tubing incorporated into the cantilevered rolls -- which
Componex refers to as Winertia tubing -- and the cantilevered roller design. I told
Ms. Berecz that, because of the patents, it seemed to me that EFI could not
purchase from other vendors.
(Perona Decl. (dkt # 83) ¶¶ 4-5.) As further evidence of this conversation, Componex
points to an internal EFI email in which Ms. Berecz wrote to another EFI employee

15

(Peter Benoit) that Componex is “claiming patent protection on the cantilever design.”
(Dkt # 86-12.).
Even though the court fully credits both pieces of evidence for summary judgment
purposes, they are not enough to satisfy the notice requirements of § 287(a). In Amsted
the Federal Circuit held that actual notice requires an “affirmative communication of a
specific charge of infringement by a specific accused product or device.” 24 F.3d at 187.
“Under this standard, general letters referring to the patent and including an
admonishment not to infringe do not constitute actual notice.” Minks v. Polaris Indus.,
Inc., 546 F.3d 1364, 1376 (Fed. Cir. 2008) (emphasis added); see also Apple, Inc. v.
Samsung Elecs. Co., Ltd., 926 F. Supp. 2d 1100, 1113-1114 (N.D. Cal. 2013) (actual
notice requires identification of specific patents and the infringement of them by a
specific product).12
Here, Componex’s only pieces of evidence (whether considered in combination or
in isolation) fall well short of the actual notice requirements. First, even when Perona’s
statement and Berecz’s email are taken together, nowhere is there evidence of a specific
reference to the patent number, much less to the specific infringing product or claim.
The kind of general notice Componex offers has already been rejected by the Federal

Componex cites one case that finds actual notice does not require identification of the specific
patent at issue. See Ceeco Mach. Mfg., Ltd. v. Intercole, Inc., 817 F. Supp. 979, 986 (D. Mass. 1992).
However, the persuasive value of the Ceeco decision has been substantially diluted. As an initial
matter, Ceeco predates the Federal Circuit’s controlling authority in Amsted by two years. Ceeco’s
suggestion that identification of a specific patent is not required for actual notice has also been
criticized by courts since Amsted. See Samsung Elecs. Co., Ltd., 926 F. Supp. 2d at 1114 (finding
that Ceeco’s “reasoning is unpersuasive, and has never been adopted by the Federal Circuit.”).
Finally, whether or not the notice requires explicit identification of the specific patent at issue, it
certainly requires “a specific charge of infringement by a specific accused product” after Amsted.
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Circuit. See Minks, 546 F.3d at 1376 (general letters referring to the patent and including
an admonishment not to infringe do not constitute actual notice); Amsted, 24 F.3d at
186-87 (patentee did not identify accused product but rather urged recipient to not copy
or make a competing product).
Second, the oral statement by Perona -- “because of the patents, it seemed to me
that EFI could not purchase from other vendors” -- is self-serving and indefinite. This,
too, amounts to an admonishment not to infringe, rather than actual notice of
infringement, which similarly fails to trigger the statute. Minks, 546 F.3d at 1376. At
most, the statement poses a question not only for Berecz (the EFI recipient), but Perona
herself. As such, it is not even a definitive statement, much less a specific charge of
infringement of the ‘059 patent by a specific product.
Because Componex has failed to come forward with evidence that it provided EFI
with actual notice of a specific charge of infringement of the ‘059 Patent by a specific
product, the court will grant EFI’s summary judgment motion as to damages incurred
before the date on which this lawsuit commenced.
IV. Willful Infringement
Finally, EFI argues that summary judgment should be granted on Componex’s
claim for willful infringement and enhanced damages pursuant to 35 U.S.C. § 284. More
specifically, EFI argues that a claim of willful infringement cannot survive in light of its
objectively reasonable infringement defenses.
A finding of willful infringement requires more than a showing of mere negligence.
See In re Seagate Tech., LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007). To establish willful
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infringement, “a patentee must show by clear and convincing evidence that the infringer
acted despite an objectively high likelihood that its actions constituted infringement of a
valid patent.” Id. at 1371. “If this threshold objective standard is satisfied, the patentee
must also demonstrate that this objectively-defined risk ... was either known or so
obvious that it should have been known to the accused infringer.”

Id.; see also Bard

Peripheral Vascular, Inc. v. W.L. Gore & Assocs., 682 F.3d 1003, 1005 (Fed. Cir. 2012).
Importantly, “the ultimate legal question of whether a reasonable person would have
considered there to be a high likelihood of infringement of a valid patent should always
be decided as a matter of law.” Bard 682 F.3d at 1008. Thus, “[a] defendant may get off
the hook under In re Seagate by identifying an objectively reasonable defense, even if the
court ultimately disagrees with the defense.”

Riddell, Inc. v. Schutt Sports, Inc., 724

F.Supp.2d 981, 999–1000 (W.D.Wis. 2010).
Here, a substantial number of EFI’s products -- identified in Duncanson’s
declaration -- will not proceed to trial in light of functional limitations in the patent’s
claims. For those products where EFI has conceded disputed issues of fact with respect
to infringement, the question is obviously a closer one. First, on this record, the court is
unable to assess the strength of plaintiff’s infringement claims and whether defendant’s
other defenses may be viable.
Second, even if otherwise infringing, a finding of willful infringement may depend
on the strength of the implied license defense. See Bard, 682 F.3d at 1008; Fujitsu Ltd. v.
Belkin Int'l, Inc., Case No. 10–cv–03972–LHK, 2012 WL 4497966, at *39 (N.D. Cal.
Sept. 28, 2012) (“Where fact-finding is necessary, trial courts generally reserve
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willfulness until after a full presentation of the evidence on the record to the jury.”).
Accordingly, the court will reserve on whether a willfulness claim may proceed to trial
until it has received the parties’ claims charts and considered the merits of their motions
in limine.
ORDER
IT IS ORDERED that:
1. Defendant EFI’s motion for summary judgment on Componex’s claims
of non-infringement and willful infringement (dkt. #41) is GRANTED
in part with respect to claims 1-4 of the ‘059 patent consistent with the
opinion above and is otherwise DENIED. Plaintiff’s cross-motion on
the same issues is DENIED.
2. Defendant EFI’s motion for damages (notice) (dkt. #41) is GRANTED
in part with respect to claims 1-4 of the ‘059 patent consistent with the
opinion above.
3. On or before Friday, November 14, 2014, the parties are DIRECTED to
file updated charts listing claims and products that remain in issue
consistent with the court’s claim constructions and summary judgment
opinions. To the extent the parties are unable to agree, the parties may
also file a trial brief on or before Tuesday, November 18, 2014,
addressing what, if any, dispute remains with respect to the facts and
law of those individual claims and products, particularly with respect to
any assertion of an implied license.
Entered this 4th day of November, 2014.
BY THE COURT:
/s/
________________________________________
WILLIAM M. CONLEY
District Judge

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