Mad Catz Interactive, Inc. v. Razer USA, Ltd., No. 3:2013cv02371 - Document 73 (S.D. Cal. 2015)
Court Description: ORDER Granting 59 Razer USA, LTD's Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 6,157,370. Signed by Judge Gonzalo P. Curiel on 12/8/15. (dlg) (Main Document 73 replaced on 12/8/2015) (dlg).
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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 MAD CATZ INTERACTIVE, INC., an Ontario corporation, 15 ORDERING GRANTING RAZER USA, LTD'S MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT OF U.S. PATENT NO. 6,157,370 Plaintiff/Counterclaim Defendant, 13 14 Case No.: 3:13-cv-2371-GPC-JLB v. RAZER USA, LTD, a Delaware corporation, 16 [ECF No. 59] Defendant/Counterclaim Plaintiff. 17 18 On September 2, 2015, Defendant Razer USA, Ltd. (“Razer”) filed the instant 19 motion for summary judgment of non-infringement of U.S. Patent No. 6,157,370 (the “’370 20 Patent”). (Mot. Summ. J., ECF No. 59.) Plaintiff Mad Catz Interactive, Inc. (“Mad Catz”) 21 filed an opposition on October 2, 2015 (Opp’n, ECF No. 62) and Razer filed a reply on 22 October 16, 2015 (Reply, ECF No. 64). On December 4, 2015, the Court held a hearing 23 on Defendant’s motion. The Court’s Claim Construction Order (“Order”) issued on 24 June 25, 2015, provides the basis for the non-infringement determinations contained 25 herein. (See Order, ECF No. 58.) Based on the Court’s claim construction, the papers and 26 oral argument submitted by counsel, and for the reasons set for below, the Court GRANTS 27 Defendant’s motion for summary judgment of non-infringement. 28 // 1 3:13-cv-2371-GPC-JLB 1 I. BACKGROUND The ‘370 Patent 2 A. 3 The ’370 patent, entitled “Ergonomic Mouse Extension,” discloses a “computer 4 pointing device.” (’370 Patent Abstract, ECF No. 1-2.) The computer pointing device 5 includes “a conventional computer mouse” and “an ergonomic extension.” (Id.) The 6 ergonomic extension “is attached to the computer mouse for movement therewith and is 7 positioned adjacent to the computer mouse for facilitating the use of the mouse in an 8 ergonomically correct position.” (’370 Patent 2:15-18.) The three independent claims of 9 the ‘370 Patent—Claims 1 and 2 at issue in this litigation—each disclose a different way 10 to move and adjust the ergonomic extension relative to the mouse. (See id. 6:17-8:20.) 11 The application for the ’370 Patent was filed on December 11, 1996, and the patent was 12 issued on December 5, 2000. (Id. at 1.) It is a continuation-in-part of a prior application, 13 which dates back to January 3, 1996. (Id. 1:5-7.) 14 1. Claim 1 15 Claim 1 discloses: 16 “A computer pointing device which comprises: a computer mouse; an ergonomic extension adapted to support a human palm, the ergonomic extension being attached [to the] computer mouse for movement therewith and positioned adjacent to the computer mouse for use thereof by a user in an ergonomically correct position; and means for adjusting the position of the computer mouse relative to the ergonomic extension for enabling use of the computer mouse and ergonomic extension by users having different size hands, wherein the means for adjusting the position of the computer mouse relative to the ergonomic extension comprises: an extension arm fixed to the computer mouse and extending outwardly therefrom; a slot in the ergonomic extension adapted to receive the extension arm for slidable movement of the extension arm therein; and locking means for releasably locking the extension arm in any of a plurality of positions in the slot wherein the locking means comprises: a) a protuberance on the extension arm and a plurality of notches adjacent to the slot, the protuberance engaging with any of the 17 18 19 20 21 22 23 24 25 26 27 28 2 3:13-cv-2371-GPC-JLB 1 plurality of notches; or b) protuberance adjacent to the slot and a plurality of notches on the extension arm, the protuberance engaging with any of the plurality of notches.” 2 3 4 (Id. 6:17-46.) 5 2. Claim 2 6 Claim 2 discloses: 7 22 “A computer pointing device which comprises: a computer mouse; an ergonomic extension adapted to support a human palm, the ergonomic extension being attached [to the] computer mouse for movement therewith and positioned adjacent to the computer mouse for use thereof by a user in an ergonomically correct position; and means for adjusting the position of the computer mouse relative to the ergonomic extension for enabling use of the computer mouse and ergonomic extension by users having different size hands, wherein the means for adjusting the position of the computer mouse relative to the ergonomic extension comprises: an extension arm extending between the computer mouse and the ergonomic extension; a slot in the computer mouse or the ergonomic extension adapted to receive the extension arm for slidable movement therein; and locking means for releasably locking the extension arm in any of a plurality of positions in the slot wherein the locking means comprises: c) a protuberance on the extension arm and a plurality of notches adjacent to the slot, the protuberance engaging with any of the plurality of notches; or d) a protuberance adjacent to the slot and a plurality of notches on the extension arm, the protuberance engaging with any of the plurality of notches.” 23 (Id. 6:47-7:7.) 24 B. 25 The accused products are two versions of Razer’s Ouroborous Elite Ambidextrous 26 Gaming Mouse devices made, used, offered for sale, sold in, or imported into the United 27 States since the ‘370 Patent issued. (Compl. ¶ 14, ECF No. 1; Block Decl., Ex. 2 (Mad 28 Catz Interactive, Inc.’s Amended Disclosure of Asserted Claims and Infringement 8 9 10 11 12 13 14 15 16 17 18 19 20 21 The Accused Products 3 3:13-cv-2371-GPC-JLB 1 Contentions dated July 27, 2015 (“AIC”)), ECF No. 59-4.) 2 As depicted below, both of the accused devices comprise two separate pieces, the 3 smaller of which Razer refers to as the “adjustable palm rest and rear panel.” (Mot. Summ 4 J., Declaration of Alan P. Block (“Block. Decl.”), Ex. 3 (Ouroboros Product Guide) at 2, 5 ECF No. 59-5.) 6 7 8 9 10 11 12 13 FIGURE 11 14 The two accused Ouroboros devices differ in how the two pieces engage with each 15 other. (Mot. Summ J., Declaration of Eric J. Gould Bear (“Bear Decl.”) ¶ 33, ECF No. 59- 16 13.) In Version 1, there are two pins at one end of the smaller piece that engage with one 17 of a plurality of circular holes in the other piece. (Id. ¶ 34.) In Version 2, there are two 18 screws at one end of the smaller pieces that engage with one of a plurality of threaded 19 circular holes on the other piece. (Id.) In both versions, the larger of the two pieces 20 contains the motion-sensing component which controls the cursor’s position on a computer 21 display based on the position or movement of the mouse on a surface. (Id. ¶ 32.) The 22 figures below depict the pins/screws and holes in each version and the motion-sensing 23 component common to both versions: 24 25 26 27 28 Diagrams copied by Razer from Mad Catz’ AIC (AIC, Ex. 2 at 2, 6, ECF No. 59-4), with the label “adjustable palm rest and rear panel” and green arrows added by Razer. (Mot. Summ. J. at 3, ECF No. 59.) 1 4 3:13-cv-2371-GPC-JLB 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 FIGURE 22 19 20 II. PROCEDURAL POSTURE 21 Mad Catz contends that the accused products infringe Claims 1 and 2 of the ‘370 22 Patent. Both Claims 1 and 2 are independent claims. Defendant moves for summary 23 judgment of non-infringement following the Court’s construction of relevant disputed 24 terms. On August 20, 2014, the Court held a claim construction (“Markman”) hearing. (See 25 26 27 Diagrams copied by Razer from Mad Catz’ AIC (AIC, Ex. 2 at 8, 9, ECF No. 59-4), with the labels and green arrows added by Razer. (Mot. Summ. J. at 4, ECF No. 59.) 2 28 5 3:13-cv-2371-GPC-JLB 1 Minute Entry, ECF No. 53; Hr’g Tr., ECF No. 55.) With respect to the ‘370 Patent, the 2 Parties disputed the construction of six claim terms: (1) “a computer mouse”; (2) “an 3 extension arm fixed to the computer mouse and extending outwardly therefrom”; (3) “an 4 extension arm extending between the computer mouse and the ergonomic extension”; (4) 5 “releasably locking the extension in any of a plurality positions in the slot”; (5) 6 “protuberance adjacent to the slot”; and (6) “notches on the extension arm.” (See Order at 7 1-18, ECF No. 58.) 8 9 Specifically, the Court has construed disputed terms as follows: Disputed Term Construction “a computer mouse” “a hand-graspable cursor control device comprising a motion-sensing component such that the position or movement of the mouse on a surface controls the position of a cursor on a display” “an extension arm fixed to the computer mouse and extending outwardly therefrom” “an extension arm fixed to the rear of computer mouse and extending outwardly therefrom” “an extension arm extending between the computer mouse and the ergonomic extension” “an extension arm extending between the rear of the computer mouse and the ergonomic extension” “releasably locking the extension arm in any of a plurality of positions in the slot” Plain and ordinary meaning 22 “protuberance” “an object that protrudes” 23 “adjacent to the slot” Plain and ordinary meaning “notches” “indentations of any shape” 26 “on the extension arm” Plain and ordinary meaning 27 (See Order, ECF No. 58.) 28 // 10 11 12 13 14 15 16 17 18 19 20 21 24 25 6 3:13-cv-2371-GPC-JLB 1 The Court also determined that the claim language indicates that “the ergonomic 2 extension,” which includes the “extension arm,” is separate from the “computer mouse” as 3 both of those objects are listed as separate elements comprising the “computer pointing 4 device” in Claim 1. (Order at 6, ECF No. 58.) The Court further determined that the claim 5 language stating that the “extension arm” is “fixed to the computer mouse and extend[s] 6 outwardly therefrom” and that the “extension arm extend[s] between the computer mouse 7 and ergonomic extension” further indicates that the “computer mouse” does not itself 8 include the “extension arm.” (Id. at 6, 9.) In holding that the term “notches” means 9 “indentations of any shape,” the Court rejected Mad Catz’ “addition of ‘hole’ and ‘concave 10 opening’ because there is no support for those terms in the evidence.” (Id. at 17-18.) 11 III. LEGAL STANDARD 12 A. 13 Summary judgment is appropriate when there is no genuine issue of material fact 14 such that the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); 15 Celotex Corp. v. Catrett, 447 U.S. 317, 322-23 (1986). Where a defendant seeks summary 16 judgment of non-infringement, “nothing more is required than the filing of a . . . motion 17 stating that the patentee had no evidence of infringement and pointing to the specific ways 18 in which accused [products] did not meet the claim limitations.” Exigent Tech. v. Atrana 19 Solutions, Inc., 442 F.3d 1301, 1309 (Fed. Cir. 2006). The burden of production then shifts 20 to the patentee to “identify genuine issues that preclude summary judgment.” Optivus 21 Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 990 (Fed. Cir. 2006). 22 Infringement, both literal and under the doctrine of equivalents, is a question of fact, and 23 thus “is amenable to summary judgment where, inter alia, no reasonable fact finder could 24 find infringement.” Ethicon Endo–Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 25 1315 (Fed. Cir. 1998). If the parties do not dispute any relevant facts regarding the accused 26 product, “but disagree over possible claim interpretations, the question of literal 27 infringement collapses into claim construction and is amenable to summary judgment.” 28 Gen. Mills, Inc. v. Hunt–Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997). Nevertheless, Summary Judgment 7 3:13-cv-2371-GPC-JLB 1 as with all summary judgment motions, the court must view all evidence in the light most 2 favorable to the non-moving party and draw all reasonable inferences in its favor. IMS 3 Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000). 4 B. 5 In order to establish a prima facie case of direct infringement, a plaintiff must show 6 that the moving defendant makes, uses, sells, offers to sell, or imports a product that 7 infringes at least one asserted claim. See 35 U.S.C. § 271(a); Markman v. Westview 8 Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). To 9 determine infringement, the asserted claim must be compared to the allegedly infringing 10 method or device. Id. An infringement analysis entails two steps: (1) determining the 11 meaning and scope of the patent claims; and (2) comparing the construed claims to the 12 devices accused of infringing. Id. To establish literal infringement, every claim limitation, 13 or claim element, must be found in the accused subject matter. Warner-Jenkinson Co. v. 14 Hilton Davis Chemical Co., 520 U.S. 17, 29, 40 (1997). Thus, establishing that the accused 15 method or device does not support one claim limitation would support a finding of non- 16 infringement. Id. The patentee must prove infringement by a preponderance of the 17 evidence. Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). Literal Infringement 18 C. 19 Under the doctrine of equivalents, a product that does not literally infringe a patent 20 claim may still infringe if each and every limitation of the claim is literally or equivalently 21 present in the accused device. See Warner-Jenkinson, 520 U.S. at 40 (“In our view, the 22 particular linguistic framework used is less important than whether the test is probative of 23 the essential inquiry: Does the accused product or process contain elements identical or 24 equivalent to each claimed element of the patented invention?”). Doctrine of Equivalents 25 Whether an element of an accused product infringes under the doctrine of 26 equivalents depends in part on whether that component performs substantially the same 27 function as the claimed limitation in substantially the same way to achieve substantially 28 the same result. See Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 8 3:13-cv-2371-GPC-JLB 1 1309, 1315 (Fed. Cir. 1998); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934- 2 35 (Fed. Cir. 1987) (en banc) (“Under the doctrine of equivalents, infringement may be 3 found (but not necessarily) if an accused device performs substantially the same overall 4 function or work, in substantially the same way, to obtain substantially the same overall 5 result as the claimed invention.”). If the differences between a claim and an accused device 6 are “insubstantial” to one with ordinary skill in the art, the product may infringe under the 7 doctrine of equivalents. See Ethicon, 149 F.3d at 1315; Sage Prods., Inc. v. Devon Indus., 8 Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997). The doctrine prevents an accused infringer 9 from avoiding infringement by changing minor details of a claimed invention while 10 retaining its essential functionality. See Sage, 126 F.3d at 1424. 11 IV. DISCUSSION 12 Razer moves for summary judgment of non-infringement on two grounds. First, 13 Razer contends that no reasonable juror could find that the accused Ouroboros devices, 14 either literally or under the doctrine of equivalents, include the requisite Claim 1 limitation 15 of “an extension arm fixed to the computer mouse and extending outwardly therefrom” or, 16 alternatively, the Claim 2 limitation of an “extension arm extending between the computer 17 mouse and the ergonomic extension.” (Mot. Summ. J. at 9-21, ECF No. 59.) Second, 18 Razer argues that, even assuming that a reasonable juror could find that the Ouroboros 19 devices, either literally or under the doctrine of equivalents, have “extension arms,” no 20 reasonable juror could find that the Ouroboros devices include a “plurality of notches on 21 the extension arm” as required for the locking mechanism claimed in both Claims 1 and 2. 22 (Id. at 22-26.) Mad Catz responds that the accused devices contain—literally and under 23 the doctrine of equivalents—both the “extension arm” and “notches on the extension” arm 24 elements of Claims 1 and 2 and that resolution of this factual dispute cannot be decided on 25 a motion for summary judgment. (Opp’n at 1, 5-7, ECF No. 62.) Lack of “Extension Arm” 26 A. 27 Both Claims 1 and 2 of the ‘370 Patent disclose 28 “A computer pointing device which comprises: 9 3:13-cv-2371-GPC-JLB 1 7 a computer mouse; an ergonomic extension adapted to support a human palm . . .; and means for adjusting the position of the computer mouse relative to the ergonomic extension . . . wherein the means for adjusting the position of the computer mouse relative to the ergonomic extension comprises [either]: an extension arm fixed to the computer mouse and extending outwardly therefrom (Claim 1); . . . . an extension arm extending between the computer mouse and the ergonomic extension (Claim 2); . . . . 8 (’370 Patent Abstract 6:17-7:7, ECF No. 1-2.) 9 Razer contends that based on the Court’s construction that the “ergonomic 10 extension” is separate from the “computer mouse” and that the “computer mouse” does not 11 include the “extension arm,” the accused devices lack the required “extension arm” both 12 literally and under the doctrine of equivalents. (Mot. Summ. J. at 10, ECF No. 59.) 2 3 4 5 6 13 1. Literal Infringement 14 Literal infringement requires that every limitation set forth in a properly interpreted 15 claim be found in an accused product or process. Warner-Jenkinson Co., Ltd., 520 U.S. at 16 17. An infringement analysis entails two steps: (1) determining the meaning and scope of 17 the patent claims; and (2) comparing the construed claims to the devices accused of 18 infringing. Markman, 52 F.3d at 976. Establishing that the accused method or device does 19 not support one claim limitation would support a finding of non-infringement. Warner- 20 Jenkinson Co., 520 U.S. 17 at 29, 40. 21 In this case, Claims 1 and 2 of the ‘370 patent essentially contain three limitations: 22 (1) a computer mouse; (2) an ergonomic extension; and (3) an extension arm which 23 provides the means for the position of the ergonomic extension to be adjusted relative to 24 the computer mouse. There is little dispute as to the presence of the first two limitations. 25 The computer mouse and ergonomic extension are present in the Ouroboros. The disputed 26 limitation relates to the meaning and scope of “extension arm.” Razer argues that the 27 accused devices do not infringe Claims 1 and 2 because they lack the “extension” arm 28 required by Claims 1 and 2. Razer relies on the Court’s construction of a “computer 10 3:13-cv-2371-GPC-JLB 1 mouse” and the position of the “extension arm” relative to the “computer mouse.” 2 Razer maintains that the “computer mouse” is the larger of the two pieces comprising 3 the Ouroboros devices and characterizes the smaller of the two pieces as the “adjustable 4 palm rest and rear panel.” (Id. at 10-11.) 5 6 7 8 9 10 11 FIGURE 3 12 Razer refers to the Court’s construction of a “computer mouse” as “a hand-graspable cursor 13 control device comprising a motion-sensing component such that the position or movement 14 of the mouse on a surface controls the position of a cursor on a display.” (Id.) Razer states 15 that the “motion-sensing component” is a “laser sensor on the bottom surface of the 16 computer mouse.” (Id. at 11-12 (citing Block Decl. Ex. 3 (Ouroboros Product Guide) at 2, 17 ECF No. 59-4).) 18 19 20 21 22 23 24 25 26 27 28 FIGURE 4 11 3:13-cv-2371-GPC-JLB 1 Razer further states that the material of the computer mouse and the rear of the 2 computer mouse is “necessary to the operation of the ‘computer mouse’ as a cursor control 3 device because that is where, among other things, the battery is stored” as shown below. 4 (Mot. Summ. J. at 12-13, ECF No. 59.) 5 6 7 8 9 10 11 12 FIGURE 5 13 Razer argues that, in light of the fact that the Court did not provide constructions for 14 the terms “extension arm,” “extending outwardly thereto,” and “fixed,” the plain and 15 ordinary meaning of these terms applies. (Id. at 13.) Razer relies on Webster’s Third New 16 International Dictionary (unabridged) (1993) (“Webster’s”) definitions of “arm” as “9a: a 17 lateral usu. horizontally extended attachment or device” (Block. Decl., Ex. 4) and 18 “extension” as “7a: a part that is extended from or attached to a main body or section as 19 an addition, supplement, or enlargement . . . a section that forms an additional length (Block 20 Decl., Ex. 5). (Mot. Summ. J. at 13, ECF No. 59.) Razer further argues that the plain and 21 ordinary meaning of “extending outwardly therefrom” in the context of this claim phrase 22 means that “the extension arm extends from the rear from the computer mouse so as to be 23 outside of (or beyond) the rear of the computer mouse.” (Id. at 14.) In reaching that 24 interpretation Razer relies on the ‘370 Patent’s Figure 5a and Webster’s definition of 25 “outwardly” as “1a: on the outside; externally” (Block Decl., Ex. 6) and “therefrom” as 26 “from that: from it” (id., Ex. 7). (Mot. Summ. J. at 14 n. 25, ECF No. 59.) Razer further 27 relies on Webster’s definition of “fix” to mean “1c(1): fasten, attach, affix” (Block Decl., 28 Ex. 8) and Regents of the University of Minnesota v. AGA Medical Corp., 717 F.3d 929, 12 3:13-cv-2371-GPC-JLB 1 938 (Fed. Cir. 2013) and argues that the plain meaning of the term “fixed” connotes that, 2 prior to being “fixed” to the rear of the computer mouse, the “extension arm” and the 3 computer mouse “existed as individual, physically-separate elements.” (Id. at 14.) 4 Razer contends that there is no “extension arm” that literally meets the requirements 5 for the “extension arm” of either claims. Defendant posits that the rear of both version of 6 the accused devices is shown below by green lines: 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 FIGURE 63 23 Razer argues that these photos unequivocally demonstrate that “there are no structures that 24 extend from the rear of the computer mouse as to be outside of (or beyond) the rear of the 25 computer mouse or that extend between the rear of the computer mouse and the ergonomic 26 extension.” (Mot. Summ. J. at 15, ECF No. 59.) As such, “there is literally no ‘extension 27 28 3 (See Mot. Summ. J. at 14-15, ECF No. 59.) 13 3:13-cv-2371-GPC-JLB 1 arm’ present in the accused Ouroboros devices.” (Id.) 2 Mad Catz responds that the “extension arm” of both Claims 1 and 2 is present in the 3 Ouroboros devices and is situated in the area on the underside of the larger component (the 4 computer mouse) of each version of the accused devices, outlined in red below: 5 6 7 8 9 10 11 12 13 FIGURE 74 14 15 Razer replies that the red areas identified by Mad Catz are not the required extension 16 arms of Claims 1 and 2 because both claims require that (1) “the extension arm not be part 17 of the computer mouse” and (2) that the extension arm “extend outwardly from, or be 18 located outside of, the rear of the computer mouse.” (Id. at 15-16.) Defendant contends 19 that the alleged “extension arms” are instead “part of the computer mouse” and “not located 20 outwardly from the mouse” but rather “entirely within a section of the mouse that is 21 between its center section and its rear.” (Id. at 16 (citing Bear Decl. ¶¶ 41-44, ECF No. 22 59-13).) Razer argues that the areas Mad Catz identifies as “extension arms” are between 23 the center and rear of the mouse: 24 25 26 27 Diagrams copied by Razer from Mad Catz’ AIC (AIC, Ex. A at 3-4, 16-17, ECF No. 59-4), with the label and green arrows added by Razer. (Mot. Summ. J. at 15, ECF No. 59.) 4 28 14 3:13-cv-2371-GPC-JLB 1 2 3 4 5 6 7 8 9 10 FIGURE 85 11 Razer argues that no reasonable jury could find literal infringement because Mad Catz has 12 failed to establish that the accused devices have “extension arms” as required by both 13 Claims 1 and 2. 14 Mad Catz responds that a reasonable jury could or would necessarily conclude that 15 the accused devices include “extension arms” based on the Court’s proper construction of 16 certain terms and an instruction that plain and ordinary meaning controls as to others. 17 (Opp’n at 9, ECF No. 62.) 18 The Court finds that the accused devices do not include an “extension arm” that 19 literally meets the requirements for the “extension arm” of either Claim 1 or 2. The areas 20 that Mad Catz identifies as “extension arms” are attached to and form a part of the 21 “computer mouse.” In addition, the areas identified by Mad Catz as “extension arms” do 22 not extend, at all, outwardly from the rear of the computer mouse or between the rear of 23 the computer mouse and the ergonomic extension. 24 The Court’s construction order found that the “ergonomic extension,” which 25 includes the “extension arm,” is separate from the computer mouse as both of those objects 26 are listed as separate elements comprising the “computer pointing device” in Claim 1, and 27 28 5 (See Mot. Summ. J. at 16, ECF No. 59.) 15 3:13-cv-2371-GPC-JLB 1 that the claim language stating that the “extension arm” is ‘fixed to the computer and 2 extend[s] outwardly therefrom further indicates that the “computer mouse” does not itself 3 include the “extension arm.” (Order at 6, ECF No. 58.) With respect to Claim 2, the Court 4 also determined that the claim language stating that the “extension arm” “extend[s] 5 between the computer mouse and the ergonomic extension” further indicates that the 6 “computer mouse” does not itself include the “extension arm.” (Id. at 9.) Both construed 7 claims provide that the “computer mouse” does not itself include the “extension arm.”6 8 Here, the “computer mouse” of the accused device includes the “extension arm”7 and, 9 therefore, the two components are not separate from each other as required. 10 Next, the specification and claim language requires that the ergonomic extension 11 supports the palm and/or wrist, and that the buttons on the computer mouse are positioned 12 at the front. Based upon this language, the Court found that, a person of ordinary skill in 13 the art (“POSITA”) would limit the term language to mean that the extension arm is fixed 14 to the rear of the computer mouse. (Order at 7, 9-10, ECF No. 68.) The Court construed 15 the position of the extension arm in reference to the “rear” of the computer mouse in both 16 claims (“fixed to the rear of [the] computer mouse and extending outwardly therefrom” in 17 Claim 1 and “extending between the rear of the computer mouse and the ergonomic 18 19 The Court adopts the definition of “fixed” to mean “not adjustable,” “permanently and definitively located,” “stationary,” and “immovable” (Block. Decl. ¶ 2; Ex. 8 definition 1a) and agrees with Razer that the plain meaning of the term “fixed” connotes that the extension arm and computer mouse must have at some point “existed as individual, physically-separate elements.” (See Mot. Summ. J. at 14, ECF No. 59.) However, the Court rejects Razer’s contention that the Court’s construction necessarily requires that the “computer mouse,” the “ergonomic extension,” and the “extension arm” have to be three separate pieces, at least with respect to Claim 1. For example, the limitations of Claim 1 allow for the extension arm to be attached to the ergonomic extension and therefore not exist as an “individual, physically-separate element.” Nonetheless, the Court’s interpretation of both claims requires that the “computer mouse” not itself include the “extension arm.” 7 The Court agrees with Razer that a POSITA would understand the plain and ordinary meaning of “extension arm” in the context of this patent to mean a structure that provides additional length to the mouse. That Razer’s proposed definition of “extension” as “a part that is extended from or attached to a main body or section as an addition, supplement, or enlargement . . . a section that forms an additional length” (Block Decl., Ex. 5) is exemplified by an extension “for an electric-light cord” (id.) is not “inappropriate” as urged by Mad Catz as the application is analogous to this context. 6 20 21 22 23 24 25 26 27 28 16 3:13-cv-2371-GPC-JLB 1 extension” in Claim 2). (Id. at 8, 10.) In this case, the alleged extension arms of the accused 2 devices are underneath the computer mouse between the middle and rear of the computer 3 mouse and not at the rear of the computer mouse. 4 Further, Claim 1 requires “an extension arm fixed to the rear of [the] computer 5 mouse and extending outwardly therefrom.” (Order at 8, ECF No. 58.) The two sections 6 outlined in red identified by Mad Catz as being the “extension arm” are plainly located 7 underneath the computer mouse. The Court finds that a POSITA would find the plain and 8 ordinary meaning of “outwardly” to mean “toward the outside: in an outwardly direction” 9 (Block. Decl, Ex. 6 definition 1b) and “therefrom” to mean “from that: from it” (id., Ex. 10 7)—in this context with reference to the “rear of the computer mouse.” The Court’s other 11 constructions and the plain meaning of the phrase “extending outwardly therefrom” 12 connotes an extension arm fixed to the rear of the computer mouse that extends from the 13 rear of the mouse in an outwardly direction from the rear of the mouse. Upon review of 14 the diagrams of the accused devices and expert testimony provided by both parties, the 15 Court concludes that a POSITA would not find any structure fixed to and extending from 16 the rear of the Ouroboros mouse in an outwardly direction. 17 Finally, a review of the specifications and diagrams of the ‘370 Patent provides 18 additional support for the above interpretation of the term “extension arm.” For example, 19 Figure 5 of the patent shows a computer mouse which is separated from an ergonomic 20 extension through an “extension arm” which extends from the rear of the depicted 21 computer mouse to the ergonomic extension or between the rear of the depicted computer 22 mouse and the ergonomic extension. (‘370 Patent 4:28-35, ECF No. 1-2.) Meanwhile, it 23 is clear that the inventor and drafter of the ‘370 Patent knew how to describe a computer 24 mouse that connected to an ergonomic extension using means other than an extension arm. 25 Claim 3 (depicted in Figures 6-10) provides for such a device and utilizes “guide means”— 26 such as “a pair of slots that engage with corresponding extensions on wrist rest so as to 27 guide movement of wrist rest into and out of mouse body” (similar to ones used on the 28 Ouroboros)—in place of an “extension arm” to join the computer mouse and ergonomic 17 3:13-cv-2371-GPC-JLB 1 extension. (See id. 5:30-35; 7:20-23.) 2 In light of the foregoing, the Court finds that Mad Catz has failed to establish that 3 the accused devices literally have an “extension arm” as disclosed in Claims 1 and 2 and 4 thus no reasonable jury could find literal infringement on this basis. Razer’s motion for 5 summary judgment as to literal infringement is GRANTED. 6 2. Doctrine of Equivalents 7 Razer contends that the accused devices do not include the required “extension arm” 8 limitations of Claims 1 and 2 under the doctrine of equivalents. Mad Catz contends that 9 the section of the accused devices outlined in red (see Fig. 7, supra at 14) is the equivalent 10 to the claim limitation of an extension arm “because any differences between the 11 Ouroboros extension arm and that required by Claims 1 and 2 are insubstantial.” (Opp’n 12 at 14-15, ECF No. 62 (citing Hall Decl. ¶ 24, ECF No. 62-1).) Mad Catz argues that “the 13 outlined portion of the accused Ouroboros performs the same function, in substantially the 14 same way to obtain substantially the same result as the extension arm of Claims 1 and 3.” 15 (Id. (citing Hall Decl. ¶ 24, ECF No. 62-1).) 16 Whether an element of an accused product infringes under the doctrine of 17 equivalents depends on whether that component performs substantially the same function 18 as the claimed limitation in substantially the same way to achieve substantially the same 19 result. Ethicon Endo-Surgery, Inc., 149 F.3d at 1315. While the doctrine of equivalents 20 does work to encompass equivalents that are not literally claimed within the patent, the 21 doctrine is not unbounded. K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1366-57 (Fed. Cir. 22 1999). There are limitations, and the limitations are questions of law. Id. at 1367 (citing 23 Warner–Jenkinson, 520 U.S. at 39 n. 8). One of these legal limitations is preclusion of 24 applying the doctrine of equivalents where that application would vitiate a claim element. 25 Id. at 1367. 26 Indeed, while unquestionably retaining vitality, the doctrine of equivalents exists in 27 some tension with other core tenets of the patent law, perhaps most notably the requirement 28 that the patentee “particularly point[] out and distinctly claim [] the subject matter which 18 3:13-cv-2371-GPC-JLB 1 the applicant regards as his invention,” 35 U.S.C. § 112 ¶ 2 (1994), and the function of 2 patent claims to provide notice to competitors regarding the scope of the patent grant, see 3 United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232 (1942) (“The inventor must 4 inform the public . . . of the limits of the monopoly asserted, so that it may be known which 5 features may be safely used or manufactured without a license and which may not.” 6 (internal quotations omitted)). The “all elements rule” provides that the doctrine of 7 equivalents does not apply if applying the doctrine would vitiate an entire claim limitation. 8 Warner-Jenkinson, 520 U.S. at 29. As provided by the Supreme Court, “if a theory of 9 equivalence would entirely vitiate a particular claim element, partial or complete judgment 10 should be rendered by the court, as there would be no further material issue for the jury to 11 decide.” Id. at 39 n. 8. See also Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 12 (Fed. Cir. 2005) (affirming finding of no infringement under the doctrine of equivalents 13 where a claim limitation required a structure to be “mounted” but in the structure in the 14 accused device was “unmounted”). 15 The Court has determined that the “extension arm” is separate from the “computer 16 mouse” in Claim 1 (Order at 6, ECF No. 58) and that the “computer mouse” does not itself 17 include the “extension arm” in Claim 2 (id. at 6, 9.) Thus, the limitation is binary in 18 nature—either the extension arm is separate from the computer mouse or it is not. See 19 Asyst Techs, Inc., 402 F.3d at 1195. If it is not, it is not the extension arm contemplated by 20 Claims 1 and 2. Including a part of the computer mouse as an equivalent to the extension 21 arm of Claims 1 and 2 would vitiate a claim limitation—the requirement that the extension 22 arm be separate from or not a part of the computer mouse. Therefore, Mad Catz cannot 23 assert that what it calls the “extension arms” on the Ouroboros devices infringe as an 24 equivalent to the extension arm disclosed in Claims 1 and 2. Because this limitation 25 precludes the application of the doctrine of equivalents, this Court does not need to reach 26 the issue of whether the areas on the computer mouse Mad Catz calls “extension arms” are 27 substantially similar to the extension arm of the patent. 28 However, even if the “all elements rule” did not apply, Mad Catz has nonetheless 19 3:13-cv-2371-GPC-JLB 1 failed to provide “particularized testimony and linking argument as to the ‘insubstantiality 2 of differences’ between the claimed invention and the accused device . . . on a ‘limitation- 3 by-limitation basis’” required to support a finding of infringement under the doctrine of 4 equivalents. Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 5 (Fed. Cir. 1996) (holding that “generalized testimony as to the overall similarity between 6 the claims and the accused infringer's product or process will not suffice”). 7 Here, Mad Catz devotes less than one page to its argument regarding why the 8 accused devices include an extension arm under the doctrine of equivalents. Far from 9 relying on “particularized testimony and linking argument . . . on a ‘limitation-by-limitation 10 basis,’” see id., Mad Catz relies on one paragraph in its expert’s declaration. Mr. Hall 11 opines that the differences between the accused devices and the “extension arm” 12 requirement of Claims 1 and 2 are insubstantial, a POSITA would conclude that the 13 portions of the accused devices Mad Catz has identified as the “extension arm” are “at a 14 minimum, equivalent to a claim limitation of an extension arm,” and the identified portions 15 “perform[] substantially the same function in substantially the same way to obtain 16 substantially the same result as the extension arm of Claims 1 and 2.” (Hall Decl. ¶ 24, 17 ECF No. 62-1.) The Court finds that such generalized testimony is insufficient to create a 18 genuine issue of material fact on the issue of infringement under the doctrine of 19 equivalents. Nor can Mad Catz rely on its expert’s literal infringement testimony (see, e.g., 20 id. ¶¶ 11, 13, 16-23) to establish a genuine issue of material fact as to infringement under 21 the doctrine of equivalents. See Texas Instruments Inc., 90 F. 3d at 1567 (finding expert 22 testimony solicited for purposes of establishing literal infringement insufficient to establish 23 infringement under the doctrine of equivalents); Lear Siegler, Inc. v. Sealy Mattress Co. of 24 Michigan, 873 F.2d 1422, 1425 (Fed. Cir. 1989) (“The evidence and argument on the 25 doctrine of equivalents cannot merely be subsumed in plaintiff's case of literal 26 27 28 20 3:13-cv-2371-GPC-JLB 1 infringement.”).8 2 In sum, Mad Catz has failed to establish a genuine issue of material fact on the issue 3 of infringement under the doctrine of equivalents with respect to the “extension arm” 4 limitations of Claims 1 and 2. Therefore, Razer’s motion for summary judgment as to 5 infringement by equivalents is GRANTED. Lack “Notches on the Extension Arm” 6 B. 7 Razer argues that, even assuming that a reasonable juror could find that the 8 Ouroboros devices, either literally or under the doctrine of equivalents, have “extension 9 arms,” no reasonable juror could find that the Ouroboros devices include a “plurality of 10 notches on the extension arm” as required for the locking mechanism claimed in both 11 Claims 1 and 2. (Mot. Summ. J. at 22-26, ECF No. 59.) Mad Catz maintains that a 12 reasonable jury could, or would, find that the Ouroboros either literally or under the 13 doctrine of equivalents include “notches on the extension arm.” (Opp’n at 15-19, ECF No. 14 62.) 15 Having concluded that the accused devices do not include the “extension arm” 16 limitations of Claims 1 and 2 and that, therefore, Razer is entitled to summary judgment of 17 non-infringement, the Court need not address Razer’s independent ground for finding of 18 non-infringement based on the “notches on the extension arm” limitations of Claims 1 19 and 2. 20 // 21 // 22 23 Razer also argues that in addition to lacking an “extension arm,” the Ouroboros devices lack three additional elements of Claims 1 and 2 both literally and under the doctrine of equivalents: (1) the “slot in the ergonomic extension adapted to receive the extension arm for slidable movement of the extension arm therein” (’370 Patent Abstract 6:34-26; 6:62-64, ECF No. 1-2); (2) “locking means for releasably locking the extension arm in [at] any of a plurality of positions in the slot” (id. 6:37-39; 6:65-66); and (3) “a plurality of notches on the extension arm” (id. 6:43-44; 7:5-6). (Mot. Summ. J. at 21, ECF No. 59.) Having found that the accused devices lack the required extension arm both literally and under the doctrine of equivalents, the Court need not address Defendant’s additional cursory argument regarding the extension arm. 8 24 25 26 27 28 21 3:13-cv-2371-GPC-JLB 1 CONCLUSION 2 Having found that Razer does not infringe the ‘370 Patent literally or under the 3 doctrine of equivalents, the Court GRANTS Razer’s motion for summary judgment of 4 non-infringement of Claims 1 and 2 of the ‘370 patent. 5 6 IT IS SO ORDERED. Dated: December 8, 2015 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 22 3:13-cv-2371-GPC-JLB
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