Taser International Inc v. Stinger Systems, Inc., No. 2:2007cv00042 - Document 211 (D. Ariz. 2010)

Court Description: ORDER denying in part and granting in part Stinger's Motion 160 for Summary Judgment of Patent Invalidity or Noninfringement. Summary judgment is GRANTED as to claim 3 of the '870 patent, finding it invalid as obvious. Summary judgment is DENIED as to the rest of the grounds for relief set forth in Stinger's motion. Granting TASER's Motion 184 for Partial Summary Judgment of Literal Infringement. Denying as moot Stinger's request 194 for consolidated oral argument. A consolidated oral argument was held on March 23, 2010. FURTHER ORDERED denying TASER's Motion 197 for Leave to File Supplemental Counsel Declaration in Support of TASER's Reply in Support of its Motion for Partial Summary Judgment of L iteral Infringement. FURTHER ORDERED denying TASER's Motion 199 for Leave to File Surreply or in the Alternative to Strike Stinger Systems, Inc.'s Improper and Oversized Reply in Support of Motion for Summary Judgment. IT IS FURTHER ORDERED setting this matter for Status Hearing on April 19, 2010 at 4:30 p.m. Signed by Judge Mary H Murguia on 3/31/10.(KMG)

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Taser International Inc v. Stinger Systems, Inc. 1 Doc. 211 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 TASER INTERNATIONAL, INC., Plaintiff, 10 11 vs. 12 STINGER SYSTEMS, INC., 13 Defendant. 14 ) ) ) ) ) ) ) ) ) ) ) ) No. 07-042-PHX-MHM ORDER 15 Currently before the Court is Defendant Stinger Systems, Inc.’s (“Stinger”) Motion 16 for Summary Judgment of Patent Invalidity or Noninfringement, (Dkt. #160), and Plaintiff 17 TASER International, Inc.’s (“TASER”) Motion for Partial Summary Judgment of Literal 18 Infringement. (Dkt. #184). Having considered all the evidence and heard oral argument on 19 March 23, 2010, the Court issues the following Order: 20 I. Background 21 A. Procedural History 22 On January 5, 2007, TASER filed an action against Stinger alleging infringement of 23 U.S. Patent 7,145,762 (filed Feb. 11, 2003) (“the ‘762 patent”) under 35 U.S.C. § 271, false 24 advertising under 15 U.S.C. § 1051 et seq., and false marketing under 35 U.S.C. § 292. (Dkt. 25 #1). TASER amended its complaint on July 9, 2007 to add infringement claims for two 26 additional patents, U.S. Patent 6,999,295 (filed Feb. 5, 2005) (“the ‘295 patent”) and U.S. 27 Patent 7,102,870 (filed May 29, 2003) (“the ‘870 patent”). (Dkt. #32). Thereafter, on 28 Dockets.Justia.com 1 October 10, 2007, TASER filed a second amended complaint in which TASER dropped all 2 claims related to the ‘762 patent and added claims pertaining to a fourth patent, U.S. Patent 3 7,234,262 (Dec. 2, 2005) (“the ‘262 patent”). 4 On November 6, 2007, Stinger filed an Answer to TASER’s second amended 5 complaint and counterclaim for false advertising under 15 U.S.C. § 1125(a) to TASER’s 6 second amended complaint. (Dkt. #54). Stinger asserts a number of affirmative defenses, 7 including statute of limitations, laches, waiver, estoppel, unclean hands, patent misuse, and 8 inequitable conduct. (Dkt. #54, pp. 4-5). 9 On May 7, 2008, the Court held a hearing in accordance with Markman v. Westview 10 Instruments, Inc., 517 U.S. 370 (1996), to construe disputed claims of the ‘262, ‘295, and 11 ‘870 patents. This Court issued its Markman Order construing the disputed claims on 12 February 2, 2009. (Dkt. #146). In that Order, the Court construed disputed claim language 13 as follows: for the ‘295 patent (1) “to ionize the air within the air gap” refers to the formation 14 of ions within the air gap as a result of the high voltage, short duration output across the first 15 and second electrodes during the first mode/time period; and (2) “to maintain the current 16 flow” is self-explanatory, and refers to the maintenance of the current flow that is driven 17 across the air gap by the low voltage output in the second mode/time period and is not limited 18 to a continuous or uninterrupted current flow to the extent that the current flow is able to 19 maintain a state of low impedance throughout the second mode/time period; for the 870 20 patent a “grounded user of the weapon” refers to a user coupled to a common reference 21 conductor in the weapon; and for the ‘262 patent (1) “track date and time” means the tracking 22 of date and time, in a program, in a microprocessor, through whatever means available to a 23 person of skill in the art at the time of the invention; (2) “period of time” means the 24 predefined period recited in Claim 9. (Id.). 25 On, May 18, 2009, Stinger filed a Motion for Summary judgment of Patent Invalidity 26 or Noninfringement. (Dkt. #160). On August 14, 2009 TASER filed its Motion for Partial 27 28 -2- 1 Summary Judgment of Literal Infringement. (Dkt. #184). The Court held oral argument on 2 these motions on March 23, 2010. 3 B. 4 TASER and Stinger develop, manufacture, and sell electronic control devices 5 (“ECD”), commonly known as “stun guns,” which are used to temporarily incapacitate a 6 single person from a distance. While ECDs are intended to be non-lethal, they are somewhat 7 similar to pistols: handheld devices that are activated by a trigger mechanism. Once 8 activated, two dart electrodes, each of which are tethered to a wire connected to the internal 9 circuitry of the weapon, are ejected out of the end of the weapon. The darts are intended to 10 establish contact points with a living target, enabling a power supply circuit in the weapon 11 to deliver current through the electrodes and the target in order to cause involuntary muscle 12 contractions and temporarily immobilize the target. General Description of the Technology 13 At issue in this case are three of TASER’s patents that relate to technology for 14 reducing the size and weight of ECDs while increasing their efficiency, effectiveness, and 15 traceability in deployment. TASER’s ‘295 patent is entitled “Dual Operating Mode 16 Electronic Disabling Device for Generating a Time-Sequenced, Shaped Voltage Output 17 Waveform.” As the title suggests, the ‘295 patent claims a dual operating mode designed to 18 addresses the challenge of establishing electrical contact with a target and efficiently deliver 19 electric current flow to temporarily immobilize the target. In addition, the ‘870 patent is 20 entitled “Systems and Methods for Managing Battery Power in an Electronic Disabling 21 Device.” Likewise, as the title suggests, the ‘870 patent claims systems and methods for 22 managing battery power. The two patents share a common specification. 23 Apparently, an ECD’s darts may often lodge in a target’s clothing, which results in 24 an air gap between the electrodes and the target, preventing the electrodes from establishing 25 direct contact with the target’s skin. The air gap impedes the flow of electricity due to the 26 high impedance of air, which is generally defined as the absence of charged particles, or the 27 ratio of the voltage of the electrical potential between two points and the current passing 28 -3- 1 there. High impedance exists when there is a large voltage potential and only a small amount 2 of current; low impedance is the opposite. The application of voltage across an air gap, 3 which can be administered by the functioning of ECD capacitors and transformers, 4 accelerates the available electrons in the air and causes them to pick up speed and crash into 5 each other, thus freeing additional electrons and creating ions. This process is known as 6 ionization, which breaks down high impedance and enables a smaller voltage application 7 over a larger current flow. Once voltage is removed, the air gradually returns to its original 8 state and high impedance returns. In addition, during the process of ionization, electrons can 9 recombine with ions to recreate stable molecules, and in doing so they release energy by 10 emitting photons, the particles responsible for light energy. 11 recombination process results in the creation of visible electrical arcs. In some instances, the 12 Importantly, the common specification of the ‘295 and ‘870 patents reveal that 13 although conventional ECDs were designed to have the capability of causing voltage 14 breakdown across a very high impedance air gap by administering a fifty to sixty thousand 15 volt output, once the air gap has been ionized and the impedance reduced to a low level, the 16 stun guns continued to operate in the same mode, resulting in a high power, high voltage stun 17 gun circuit operating relatively inefficiently and yielding low electro-muscular efficiency 18 with high battery power requirements. To overcome this inefficiency, the ‘295 patent 19 provides for the operation of an ECD in a second mode. Once the air gap is ionized and the 20 air impedance is reduced to a low level, current is able to flow across the air gap at a lower 21 voltage level. At that point, a second lower voltage, longer duration output is generated to 22 maintain an immobilizing current flow through the target. In addition, the ‘870 patent makes 23 additional claims for, among other things, safety enhancements with respect to the operation 24 of ECDs. 25 Finally, the ‘262 patent is entitled “Electrical Weapon Having Controller for Timed 26 Current Through Target and Date/Time Recording.” As the title suggests, the patent claims 27 an apparatus that includes a microprocessor programmed to track date and time, to initiate 28 -4- 1 and maintain an electrical current for a period, and to record tracked date and time for each 2 initiation of the current. 3 C. The independent claims currently at issue are as follows1: 4 1. 5 8 The ‘295 Patent. Claim 2: 6 7 The Claims at Issue A dual operating mode electronic disabling device for immobilizing a target comprising: 9 a. first and second electrodes positionable to establish first and second spaced apart 10 contact points on the target wherein a high impedance air gap may exist between at 11 least one of the electrodes and the target; and 12 b. a power supply for operating in a first mode to generate a first high voltage, short 13 duration output across the first and second electrodes during a first time interval to 14 ionize the air within the air gap to thereby reduce the high impedance across the air 15 gap to a lower impedance to enable current flow across the air gap at a lower voltage 16 level and for subsequently operating in a second mode to generate a second lower 17 voltage output across the first and second electrodes during a second time interval to 18 maintain the current flow across the first and second electrodes and between the first 19 and second contact points on the target to enable the current flow through the target 20 to cause involuntary muscle contractions to thereby immobilize the target. Claim 40 21 22 A method for immobilizing the muscles of a target, comprising the steps of: 23 24 25 26 1 27 There are also dependent claims at issue regarding the ‘262 patent. For ease of reference, however, only the independent claims are expressly quoted herein. 28 -5- 1 a. providing first and second electrodes positionable to establish first and second 2 spaced apart contact points on the target wherein a high impedance air gap may exist 3 between al least one of the electrodes and the target; 4 b. applying a first high voltage, short duration output across the first and second 5 electrodes during a first time interval to ionize the air within the air gap to thereby 6 reduce the high impedance across the air gap to a lower impedance to enable current 7 to flow across the air gap at a lower voltage level; and 8 c. subsequently applying a second lower voltage output across the first and second 9 electrodes during a second time interval to maintain the current flow across the first 10 and second electrodes and between the first and second contact points on the target 11 to enable the current flow through the target to cause involuntary muscle contractions 12 to thereby immobilize the target. 13 2. 14 The ‘870 Patent Claim 1 15 An electronic disabling device for imobilzing a target comprising: 16 a. first and second electrodes positionable to establish first and second spaced apart 17 contact points on the target; 18 b. high voltage power supply for generating an output voltage delivered in a series of 19 electrical pulses to the target; 20 c. a battery system including: (I) a battery; (ii) a digital memory device for storing 21 battery capacity data indicating the amount of battery capacity consumed or 22 remaining; (iii) a data interface for communicating between the battery system and 23 the memory device to adjust the battery capacity data stored in the memory device; 24 and 25 d. a display for indicating to a user the battery capacity. 26 27 28 Claim 2 An electronic disabling device for immobilizing a target comprising: -6- 1 a. first and second electrodes positionable to establish first and second spaced apart 2 contact points on the target; 3 b. a high voltage power supply for generating an output voltage delivered in a pre- 4 timed series of electrical pulses to the target; and 5 c. a display for indicating to the user the amount of time remaining in each pulse 6 sequence. 7 Claim 3 8 An electronic disabling device for immobilizing a target comprising: 9 a. first and second electrodes positionable to establish first and second spaced apart 10 contact points on the target; 11 b. a high voltage of power supply for generating an output voltage delivered in a 12 pre-timed series of electrical pulses to the target; 13 c. a trigger mechanism to initiate the pre-timed series of electrical pulse; and 14 d. a mechanism for allowing the user to extend the duration of the pre-timed series of 15 electrical pulses. 16 Claim 4 17 An electronic disabling device for immobilizing target comprising: 18 a. first and second electrodes positionable to establish first and second spaced apart 19 contact points on the target; and 20 b. a high voltage power supply for generating an output voltage delivered across the 21 first and second contact points on the target to generate a positive voltage potential 22 at one electrode and a negative voltage potential at the other electrode, thereby 23 increasing the total voltage drop across a target while deceasing the maximum voltage 24 potential between either electrode and a grounded user of the weapon. 25 26 3. The ‘262 Patent Claim 1 27 28 -7- 1 A dart weapon for interfering with locomotion by a human being or animal target, the 2 weapon for use with each of a plurality of replaceable cartridges, each cartridge having at 3 least one wire-tethered dart and a propellant that propels the dart, the weapon comprising: 4 a receiver that receives a particular cartridge of the plurality of cartridges; 5 a power supply coupled to the receiver for conducting a high voltage pulsed current 6 from the power supply through the wire-tethered dart of the particular cartridge; 7 a microprocessor programmed 8 (1) to track date and time, 9 (2) to activate via the power supply the propellant of the particular cartridge, 10 (3) to maintain for a period the current from the power supply, and 11 (4) to record tracked date and time in accordance with activation of the 12 propellant of the particular cartridge and in accordance with respective 13 activation of each other cartridge of the plurality received by the receiver, 14 wherein the current through the target interferes with use by the target of the 15 skeletal muscles of the target during the period 16 Claim 6 17 A dart weapon for interfering with use by a human being or animal target of skeletal 18 muscles of the target, the weapon operative with a provided cartridge, the device comprising: 19 a trigger that provides a first signal responsive to operation of the trigger; and 20 a circuit, comprising a memory, that 21 (1) keeps track of current time of day, 22 (2) keeps track of current date, 23 (3) receives the first signal to determine a first time, and 24 (4) responds to the first signal by recording current date and current time of day in the 25 memory by applying power to a signal generator, by keeping track of a period of time 26 from the first time, and by disabling the signal generator upon lapse of the period, 27 wherein; 28 -8- 1 2 the signal generator activates the cartridge to propel a wire-tethered dart of the cartridge toward the target: and 3 4 a current from the signal generator via the wire-tethered dart and through the target interferes with use by the target of the skeletal muscles of the target during the period. 5 Claim 9 6 7 A dart weapon for interfering with locomotion by a human being or animal target, the apparatus comprising: 8 9 means for providing a high voltage pulsed current through the target via a provided wire-tethered dart launched from the weapon; 10 11 means for recording date and time of day for each occasion that the weapon was operated to provide the current; and 12 13 means for discontinuing provision of the current in accordance with lapse of a predefined period. 14 Claim 13 15 16 An apparatus for causing involuntary contractions of skeletal muscles of a human or animal target, the apparatus comprising: 17 a circuit having a microprocessor that is 18 (1) programed to track date and time, 19 (2) programmed to initiate a high voltage pulsed current from the circuit, and 20 (3) programmed to record tracked date and time in accordance with each 21 initiation of the current, wherein the current launches a provided wire-tethered 22 dart toward the target to conduct the current through the target and when 23 passing through the target, causes involuntary contractions of skeletal muscles 24 of the target. 25 II. Standard of Review 26 A motion for summary judgment may be granted only if the evidence shows “that 27 there is no genuine issue as to any material fact and that the moving party is entitled to 28 -9- 1 judgment as a matter of law.” FED. R. CIV. P. 56(c). To defeat the motion, the non-moving 2 party must show that there are genuine factual issues “that properly can be resolved only by 3 a finder of fact because they may reasonably be resolved in favor of either party.” Anderson 4 v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). The party opposing summary judgment 5 “may not rest upon the mere allegations or denials of [the party’s] pleadings, but ... must set 6 forth specific facts showing that there is a genuine issue for trial.” Rule 56(e). 7 Matsushita Elec. Indus. Co., v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986). The 8 evidence must be viewed in the light most favorable to the nonmoving party. Devereaux v. 9 Abbey, 263 F.3d 1070, 1074 (9th Cir. 2001) (en banc). 10 III. See STINGER’S Motion for Summary Judgment 11 In its summary judgment motion, Stinger has set forth numerous grounds upon which 12 relief should be granted. It argues that the various claims of the ‘295, ‘262, and ‘870 patents 13 are invalid, either as anticipated, obvious, or both. Stinger also alleges inequitable conduct 14 as to the ‘762, ‘295, and ‘870 patents. Finally, as to almost all of the patent claims at issues, 15 Stinger denies that the S-200 infringes. The Court will consider Stinger’s invalidity 16 arguments before moving onto the question of infringement. 17 18 19 1. Anticipation A. Legal Standard A party seeking to establish that patent claims are invalid must overcome statutory 20 presumption of validity set forth in 35 U.S.C. § 282 by clear and convincing evidence. 21 Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). This 22 presumption of validity exists at every stage of the litigation. Cannon Comp. Sys., Inc. v. 23 Nu-Kote Int’l, Inc., 134 F.3d 1985, 1088 (Fed. Cir. 1998), and “is never annihilated, 24 destroyed or even weakened regardless of what facts are of record.” ACS Hosp. Sys., Inc. 25 v. Montefiore Hosp., 732 F.2d 1472, 1574-75 (Fed. Cir. 1984). Where the Patent and 26 Trademark Office (“PTO”) considered the prior art that is the basis of the validity challenge 27 during patent prosecution, a defendant’s burden concerning proof of invalidity is particularly 28 - 10 - 1 heavy. Id.; Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004) (“This 2 burden is ‘especially difficult’ when, as is the present case, the infringer attempts to rely on 3 prior art that was before the patent examiner during prosecution.”). 4 “A patent is invalid for anticipation if a single prior art reference discloses each and 5 every limitation of the claimed invention.” Schering Corp. v. Geneva Pharm., 339 F.3d 6 1373, 1377 (Fed Cir. 2003). “[A] prior art reference may anticipate without disclosing a 7 feature of the claimed invention if that missing characteristic is necessarily present, or 8 inherent, in the single anticipating reference.” Id. Additionally, such disclosure must be 9 “enabling.” SmithKline v. Beecham Corp v. Apotex Corp., 403 F.3d 1331, 1432 (Fed. Cir. 10 2005). In other words, it must allow a person of ordinary skill in the art to practice or make 11 the invention without resort to undue experimentation. Impax Labs., 545 F.3d at 1314. The 12 enabling component of the anticipation test “presents a question of law based upon 13 underlying factual findings.” Id. at 1315. On the whole, however, anticipation is a question 14 of fact. SmithKline, 403 F.3d at 1343. Where there are no “genuine factual disputes 15 underlying the anticipation inquiry, the issue is ripe for judgment as a matter of law.” Id. 16 17 B. The ‘295 Patent i. Claims 2 & 40 18 For the purposes of its motion, Stinger groups claims 2 and 40 of the ‘295 patent 19 together, making two arguments: (1) two prior art ECDs—the U34000 Air Taser (“U34000") 20 and the Taser Public Defender (“TPD”) embody every element of claims 2 and 40; and (2) 21 TASER’s X26 ECD anticipates claims 2 and 40 because the PTO wrongly granted the ‘295 22 patent a priority date of 2003. 23 a. The U34000 and TPD 24 The U34000 and TPD are prior art ECDs. The Parties do not dispute that the U34000 25 and TPD were sold in the United States before 1995 and 1976 respectively, well before the 26 2003 priority date of the ‘295 patent. (Defendant’s Statement of Facts (“DSOF”) ¶1) In its 27 papers, Stinger argues, that when operated, these two prior art ECDs embody every element 28 - 11 - 1 of claims 2 and 40, an assertion that TASER denies. The Parties disagreement, however, 2 is narrow, focusing only on one element of claims 2 and 40; the so-called dual operating 3 mode, which teaches a power supply for operating in a first mode to generate a high voltage 4 output, then in a second mode to generate a second lower voltage output. 5 In support of its argument, Stinger relies primarily on the conclusions of its expert, 6 Mr. Tachner. 7 oscilloscope, Mr. Tachner found they each demonstrated a damped sinusoid wave form, then 8 concluded that such a wave form demonstrates the utilization of a dual operating mode. (Id. 9 ¶2). TASER contests Mr. Tachner’s conclusions, citing this Court to the Rebuttal Report of 10 its expert, Dr. Rodriguez, who found that a damped sinusoid wave is not indicative of a dual 11 operating mode, as ECDs known to operate in only one mode also produce damped sinusoid 12 waves. (Plaintiff’s Statement of Facts (“PSOF”) ¶2). For instance, TASER cites to evidence 13 showing that the prior art TASER M26 ECD, which operates in only one mode, outputs a 14 damped sinusoid wave. (Id. ¶109). Additionally, TASER has cited to evidence showing 15 that the M34000 utilizes the same single mode blunt-pulse approach as the M26, and points 16 out that the M26 is not alleged to have anticipated claims 2 and 40. Given the dispute over 17 the significance of a damped sinusoid wave form, whether or not the U34000 and TPD 18 operate in two modes is a material fact about which there is clearly a dispute, precluding a 19 finding of anticipation. Having analyzed the wave forms of the U34000 and TPD with an b. 20 The priority date argument 21 Next, Stinger argues that claims 2 and 40 are anticipated by TASER’s X26 ECG2 22 (“X26") because TASER is not entitled to the 2003 priority date currently enjoyed by its ‘295 23 patent. 24 disclosed invention “shall have the same effect, as to such invention, as though filed on the Pursuant to 35 U.S.C. § 120, an application for a patent based on a previously 25 26 2 27 The TASER X26 ECG is the product that embodies the technological innovations represented by the patents at issue in this case. 28 - 12 - 1 date of the prior application” when certain conditions are met. These conditions are as 2 follows: 3 4 5 6 (1) the invention claimed in the application must have been properly disclosed in a prior-filed application; (2) the application must have been filed by inventor(s) named on the prior-filed application; (3) the application must have been “filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application”; and (4) the application must contain or be amended to contain a specific reference to the prior-filed application. 7 Tafas v. Doll, 559 F.3d 1345, 1361 (Fed. Cir. 2009) (quoting 35 U.S.C. § 120). 8 As a preliminary matter, it is undisputed that TASER began selling the X26 in or 9 about May, 2003, and that the ‘295 patent is a continuation of an application U.S. Patent 10 10/447,447 (filed May 29, 2003) (PSOF ¶112). Accordingly, absent a showing by Stinger 11 that the ‘295 patent is not a continuation of the ‘447 patent, the X26 cannot have anticipated 12 the ‘295 patent. 35 U.S.C. § 102(b) (stating that a person shall be entitled to a patent unless 13 the invention was described, in use, or on sale “one year prior to the date of the application 14 for patent in the United States.”). 15 The Court must determine, then, whether Stinger has proven that the ‘295 patent 16 application did not satisfy the four-part test set forth in Tafas. The answer to that question 17 is clearly, no. TASER has introduced evidence showing that the ‘295 patent satisfies all four 18 elements of that test, including the written description requirement, which only requires that 19 the disclosure statement convey “with reasonable clarity to those skilled in the art that, as of 20 the filing date sought, [the inventor] was in possession of the invention.” Revolution 21 Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1366 (Fed. Cir. 2009); (PSOF 22 ¶114–17). Stinger, on the other hand, does not explain how the ‘295 Patent fails to satisfy 23 the Tafas test—i.e. meet the requirements of 35 U.S.C. § 120—let alone explain how it does 24 not satisfy the written description element. Instead, Stinger argues that the prosecution of 25 the ‘762 patent somehow deems the ‘295 patent unworthy of continuation. Although it is 26 somewhat unclear, Stinger appears to contend that the ‘762 patent disclosed the invention 27 28 - 13 - 1 taught in the ‘295 patent and, as a result, the ‘295 patent cannot be a continuation of the ‘447 2 patent. Stinger, however, has cited no authority for its proposition that the file history of a 3 different patent application can cancel an otherwise valid continuation application. This 4 Court, as a result, will not grant summary judgment. c. 5 The Rhoads Patent 6 In its reply brief, Stinger’s anticipation argument relies heavily on the prior art patent, 7 Rhoads, U.S. Patent No. 4,120,305 (filed Sept. 10, 1976) (“Rhoads”). In its initial motion, 8 however, Stinger’s only mentions Rhoads twice. One reference to Rhoads is found in the 9 section of its brief arguing that claims 2 and 40 of the ‘295 patent a law of nature. The other 10 reference is located under the heading “Stinger Practices the Prior Art.” Both citations make 11 reference to Figure 3A of Rhoads, but neither explains its meaning or content. Additionally, 12 neither reference is supported by citation to Stinger’s statement of facts. In fact, Rhoads is 13 not cited in the statement of facts at all. By failing to adequately explain its reliance on 14 Rhoads or cite to it in its statement of facts, Stinger has denied TASER an opportunity to 15 properly respond to the more specific anticipation arguments made in its reply brief. 16 Eberle v. City of Anaheim, 901 F.2d 814, 818 (9th Cir. 1990) (noting that legal arguments 17 raised for the first time in the reply brief are deemed waived). While Stinger’s behavior may 18 fall short of waiver, the Court finds it would be inequitable to rely on Rhoads to invalidate 19 TASER’s ‘295 patent, as doing so would entail relying on arguments to which TASER did 20 not have a proper opportunity to respond3. See United States v. Romm, 455 F.3d 990, 997 21 (noting that even if the argument has merit, this Court cannot appropriately consider it, since 22 Plaintiffs did not have the opportunity to respond.). C. 23 See The ‘870 Patent 24 25 3 27 At oral argument, Stinger explained that it relied so heavily on Rhoads in its reply brief because it was merely responding to arguments concerning Rhoads raised in TASER’s response. The Court is not persuaded by this line of reasoning, as it does not appear that TASER mentioned Rhoads even one time in its response. 28 - 14 - 26 1 i. Claim 1 2 Stinger’s anticipation argument concerning claim 1 of the ‘870 patent is predicated 3 on the prior art patent Kaufman, U.S. Patent No. 5,193,048 (filed April 27, 1990) 4 (“Kaufman”). Kaufman patents an “electronic [stun-gun] device designed to incapacitate a 5 person by means of a non-lethal electric shock.” Stinger contends that Kauffman discloses 6 every limitation of claim 1 of the ‘870 patent. Claim 1 teaches (1) two separate electrodes 7 that allow for two contact points on the target; (2) a high voltage power supply capable of 8 delivering a series of electrical pulses to the target, a battery system including a battery; (3) 9 a digital memory device for storing battery capacity data indicating the amount of battery 10 capacity consumed or remaining, and a data interface that allows the battery system and the 11 digital memory device to communicate; (4) and a display for indicating to the battery 12 capacity. TASER does not appear to dispute that Kaufman embodies the first. second, and 13 fourth elements of claim 1. 14 anticipation by arguing that the third element of claim 1—the digital memory and data 15 interface—is not found in Kaufman. (PSOF ¶144). Instead, TASER’s responds to Stinger’s accusation of 16 As an initial matter, the PTO considered Kaufman when making its determination 17 concerning TASER’s ‘870 patent application. Accordingly, Stinger bares a even heavier 18 burden than would otherwise apply in an anticipation challenge. Impax Labs., 545 F.3d at 19 1314. In support of its position that the Kaufman patent satisfies claim 1's “digital memory” 20 and “data” limitation, Stinger points to Kaufman’s utilization of a “14 stage ripple carry 21 counter.” In explaining the significance of the 14 stage ripple carry counter, however, 22 Stinger merely quotes Kaufman, which states that “anytime the power switch SW1 [of the 23 weapon taught in Kaufman] is held closed, the 14 state ripple carry counter U2 continues to 24 increment its count stored therein.” TASER counters by noting that its expert concluded that 25 the 14 stage ripple carry counter is not, in fact, a digital memory device. TASER also argues 26 that the 14 stage ripple carry counter does not track battery capacity (PSOF ¶144). Instead, 27 it functions as more of a timer, keeping track of how long a battery has been in use and 28 - 15 - 1 triggering a low battery light indicator after the battery has been used for a certain amount 2 of time. (Id. ¶146). When a new battery is inserted, the 14 stage ripple carry counter is 3 “unaware of the quality of the replacement battery” and will begin counting time again from 4 zero, regardless of how much charge is in the replacement battery. (Id.). Accordingly, 5 TASER argues, that the invention taught in Kauffman only monitors the time a battery has 6 been used, not its capacity 7 In light of the Parties disagreement concerning the function of the 14 stage ripple 8 carry counter, summary judgment is inappropriate. There is very clearly a disputed issue of 9 fact concerning whether Kaufman teaches “a digital memory device for storing battery 10 capacity data indicating the amount of battery capacity consumed or remaining, and a data 11 interface that allows the battery system and the digital memory device to communicate.” 12 The Court finds, therefore, that Stinger has not met its heavy burden and its motion is denied. 13 ii. Claim 2 14 As with claim 1 of the ‘870 patent, the Parties only disagree about one element of the 15 patent claim at issue; the element of claim 2 that teaches “a display for indicating to the user 16 the amount of time remaining in each pulse sequence.” Stinger’s argument is predicated on 17 a prior art device, the U34000, but only indirectly, and can only be understood by reference 18 to TASER’s allegation of infringement against Stinger. TASER alleges that the S-200 19 infringes claim 2 of the ‘870 patent because it utilizes a display consisting of four light 20 emitting diodes (“LEDs”), which light or energize sequentially as 25% increments of the 21 pulse charge are consumed. TASER asserts that because each of the S-200's LEDs activate 22 at approximately one second intervals, users are able to measure the time remaining in each 23 pulse sequence. Stinger argues that if the S-200 infringes claim 2, which it denies, then the 24 U34000 must also infringe because it’s battery indicator display can be similarly used to 25 calculate the time remaining in a given pulse sequence. And, if the U34000 infringes, then 26 TASER’s patent is anticipated because the U34000 was in public use prior to 1995, well 27 before the 2003 date of the ‘870 patent. 28 - 16 - 1 Whatever the merit of Stinger’s argument concerning the U34000, this Court cannot 2 accept it to invalidate TASER’s patent. Essentially, Stinger argues that TASER’s patent 3 should be invalidated because the U34000 and the S-200 each allow a user to employ the 4 same method to deduce the time remaining in a given pulse sequence; counting light pulses. 5 To prevail on its argument, then, Stinger must necessarily introduce evidence of how the 6 U34000's battery light indicator operates when the U34000 is fired. Only then can the Court 7 determine if a user can deduce the time remaining in the pulse sequence when operating the 8 U34000. Stinger has provided this Court evidence of the U3400's operation in the form of 9 a declaration of a single witness, Stinger’s CEO, Robert Gruder. (DSOF ¶22–23). This 10 uncorroborated interested-witness testimony is insufficient to invalidate a patent. Finnigan 11 Corp. v. Int’l Trade Comm'n, 180 F.3d 1354, 1369 (Fed Cir. 1999) (“[C]orroboration is 12 required of any witness whose testimony alone is asserted to invalidate a patent, regardless 13 of his or her level of interest.”). Accordingly, Stinger’s motion concerning anticipation as 14 to claim 2 of the 870' patent is denied. 15 iii. Claim 4 16 In support of its anticipation argument concerning claim 4 of the ‘870 patent, Stinger 17 draws this Court’s attention to the Darrell, U.S. Patent No. 4,370,696(filed May 26, 1981) 18 (“Darrell”). Once again, the Parties arguments center around the existence or non-existence 19 of a single claim element in the prior art. In this instance, the Parties disagreement focus on 20 whether claim 4's element of “a high voltage power supply for generating an output voltage 21 delivered across the first and second contact points on the target to generate a positive 22 voltage potential at one electrode and a negative voltage potential at the other electrode,” is 23 taught in Darrell. Stinger, pointing to the Supplemental Statement of its expert, Mr. Tachner, 24 argues that the circuit disclosed in Darrell will produce a positive potential at one electrode 25 and a negative potential at the other, every other half cycle. (DSOF ¶27). 26 The PTO considered Darrell when making its determination concerning TASER’s 27 ‘870 patent application. (PSOF ¶159). Accordingly, Stinger bares a even heavier burden 28 - 17 - 1 than would otherwise apply in an anticipation challenge. Impax Labs., 545 F.3d at 1314. 2 It has not met that burden. In opposition to Stinger’s motion, TASER also relies on Stinger’s 3 expert, Mr. Tachner, pointing to deposition testimony in which Mr. Tachner admitted 4 Darrell’s transistor switch, which connects the transformer center tap to the positive battery 5 terminal, may be open during the half cycle relied upon by Stinger, preventing a positive 6 voltage from appearing at one electrode and a negative voltage at the other, with respect to 7 the ground. (PSOF ¶160). In light of the contradictory nature of Mr. Tachner’s testimony 8 and the heavy presumption in favor of validity, summary judgment cannot be granted. The 9 Court finds there is a genuine issue of material of fact concerning whether or not the 10 contested element of claim 4 is present in Darrell. 11 D. The ‘262 Patent 12 As with the ‘295 patent, Stinger asserts that TASER’s ‘262 patent is not entitled to 13 its 1999 priority date and, therefore, is anticipated by TASER’s own X26 ECD. (See DSOF 14 ¶39). Specifically, Stinger claims that the invention claimed in the ‘262 patent was not 15 disclosed until a December 12, 2005 amendment to the September 17, 1999, application. 16 (DSOF ¶37). 17 amendments made to the 1999 application by the 2005 amendment constitute previously 18 undisclosed “new matter.” See, e.g., Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 19 1362 (Fed. Cir. 2008) (noting that as a general rule “new matter is not entitled to the priority 20 date of the original application.”). “Whether particular technological information is ‘new 21 matter’ depends on the facts of the case: the nature of the disclosure, the state of the art, and 22 the nature of the added matter.” Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 23 1555, 1575 (Fed. Cir. 1992). Additionally, “in the context of a validity challenge based on 24 new matter, the fact that the [PTO] has allowed an amendment without objection is entitled 25 to an especially weighty presumption of correctness in a subsequent validity challenge based 26 on the alleged introduction of new matter.” Commonwealth Scientific and Indus. Research 27 Org. v. Buffalo Tech. (USA), Inc., 542 F.3d 1363, 1380 (Fed. Cir. 2008). 28 As TASER rightly points out, Stinger’s argument, then, is that the - 18 - 1 The 262 patent appears to warrant a heavy presumption of validity. TASER has cited 2 this Court to the Notice of Allowability, dated March 7, 2006, in which the patent examiner 3 concluded the 2005 application was entitled to a September 1999 priority date. (PSOF ¶169). 4 In attempting to satisfy its very heavy burden, Stinger argues that the 2005 amendment is 5 new matter because it includes, for the first time, references to a “circuit,” “signal generator,” 6 “disabling the signal generator,” apparatus that “keeps track of current time of day, keeps 7 track of current date,” or “keeping track of a period of time.” 8 concedes that the 1999 application does not contain these exact phrases, but argues instead 9 that Stinger cannot invalidate its patent merely by pointing out that certain terms and phrases 10 do not appear verbatim in the 1999 application. TASER’s position is accurate, “as the prior 11 application need not describe the claimed subject matter in exactly the same terms as used 12 in the claims; it must simply indicate to persons skilled in the art that as of the earlier date 13 the applicant had invented what is now claimed.” Eiselstein v. Frank, 52 F.3d 1035, 1039 14 (Fed. Cir. 1995). Accordingly, the Court must consider what was disclosed in the 1999 15 patent application. (See DSOF ¶39). TASER 16 It appears that the 1999 application discloses an ECD controlled by a microprocessor 17 that, among other things, “retains a record of the date and time the weapon was fired.” 18 TASER argues that ‘262 merely claims a method to accomplish this task. Stinger makes 19 much of the fact that the ‘262 patent does not detail the specific operation of the 20 microprocessor, such as how the microprocessor is programmed to keep track of date and 21 time. Stinger has not put forth evidence, however, explaining how this lack of information 22 does not disclose to a person reasonably skilled in the art what TASER had invented. On the 23 contrary, in another part of its brief, Stinger cites to the Declaration of Rodriguez, in which 24 Dr. Rodriguez stated that “[o]ne of ordinary skill in the art would know there are many ways 25 to track date and time” and explained many viable methods to accomplish that task (DSOF 26 ¶40). Accordingly, the Court finds that Stinger has not overcome the presumption of validity 27 to which the ‘262 patent is entitled, and a material issue of fact exists concerning whether the 28 - 19 - 1 disclosures made in the 2005 application are new matter and not, therefore, entitled to the 2 1999 priority date. 3 2. Obviousness 4 5 A. Legal Standard 6 As this Court has already explained, a party seeking to establish that patent claims are 7 invalid must overcome statutory presumption of validity set forth in 35 U.S.C. § 282 by clear 8 and convincing evidence. Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 9 (Fed. Cir. 2008). This presumption of validity exists at every stage of the litigation. Cannon 10 Computer Sys., Inc. v. Nu-Kote Int’l, Inc., 134 F.3d 1985, 1088 (Fed. Cir. 1998), and “is 11 never annihilated, destroyed or even weakened regardless of what facts are of record.” ACS 12 Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1472, 1574-75 (Fed. Cir. 1984). Where the 13 Patent and Trademark Office (“PTO”) considered the prior art that is the basis of the validity 14 challenge during patent prosecution, defendant’s burden to prove invalidity is particularly 15 heavy. Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004) (“This 16 burden is ‘especially difficult’ when, as is the present case, the infringer attempts to rely on 17 prior art that was before the patent examiner during prosecution.”). 18 A patent claim is invalid for obviousness if the invention recited in the claim would 19 have been obvious to a person of ordinary skill in the field of the invention at the time it was 20 made. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 21 (Fed Cir. 2004). In this case, the Parties have agreed that a person of ordinary skill in the art 22 is a university educated electronics engineer with a bachelor’s degree in electronic 23 engineering. To determine obviousness, the Court must examine: (1) the scope and content 24 of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level 25 of ordinary skill in the pertinent art; and (4) the objective evidence of nonobviousness. Iron 26 Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1320 (Fed Cir. 2004) (citing 27 Graham v. John Deere Co., 383 U.S. 1 (1966)). Obviousness is a question of law predicated 28 - 20 - 1 on underlying facts. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1349 (Fed. Cir. 2 2001). And, as with anticipation, a defendant must show invalidity due to obviousness by 3 clear and convincing evidence. Id. Ultimately, where “the content of the prior art, the scope 4 of the patent claim, and the level of ordinary skill in the art are not in material dispute, and 5 the obviousness of the claim is apparent in light of these factors, summary judgment is 6 appropriate.” KSR International. Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007) 7 In its papers, Stinger argues that the Supreme Court’s decision in KSR radically 8 altered the obviousness standard. This Court, however, disagrees. Contrary to Stinger’s 9 assertions, the KSR Court did not overturn the Federal Circuit’s teaching, suggestion, or 10 motivation (“TSM”) test, “under which a patent claim is only proved obvious if the prior art, 11 the problem's nature, or the knowledge of a person having ordinary skill in the art reveals 12 some motivation or suggestion to combine the prior art teachings.” Id. at 407. To the 13 contrary, the Court specifically noted that “[t]here is no necessary inconsistency between the 14 [TSM] test and the Graham analysis.” Id. at 419. Instead, it merely held that the TSM test 15 should not be rigidly applied; instead courts should utilize a more “expansive and flexible 16 approach.” Id. at 415. Accordingly, “[i]n determining whether the subject matter of a patent 17 claim is obvious, neither the particular motivation nor the avowed purpose of the patentee 18 controls. What matters is the objective reach of the claim.” Id. at 419. Additionally, KSR, 19 did not, however, alter courts’ duty to consider secondary factors which mitigate against a 20 finding of obviousness. These include: (1) the commercial success of a product due to the 21 merits of the claimed invention; (2) a long felt need for the solution provided by the claimed 22 invention; (3) unsuccessful attempts by others to find the solution provided by the claimed 23 invention; (4) copying of the claimed invention by others; (5) unexpected and superior results 24 from the claimed invention; (6) acceptance by others of the claimed invention as shown by 25 praise from others in the field or from the licensing of the claimed invention; (7) other 26 evidence tending to show nonobviousness; (8) independent invention of the claimed 27 invention by others before or at about the same time as the named inventor thought of it; and 28 - 21 - 1 (9) other evidence tending to show obviousness. Id. at 406 (citing Graham, 383 U.S. at 17- 2 18). 3 Predicated on its beliefs concerning the transformative nature of KSR, Stinger argues 4 this Court should not apply the presumption of validity to TASER’s patents, as the PTO 5 awarded TASER’s patents under the pre-KSR standard for obviousness. This argument, 6 however, is not supported by KSR. As part of its analysis the Supreme Court specifically 7 noted that it did not doubt the Federal Circuit, in many case, had conducted the obviousness 8 inquiry pursuant to the standard it articulated in KSR Id. at 419 (“In the years since the 9 Court of Customs and Patent Appeals set forth the essence of the TSM test, the Court of 10 Appeals no doubt has applied the test in accord with these principles in many cases.”). 11 Likewise, this Court does not doubt that patent examiners have likewise conducted many of 12 their patent examinations in accord with KSR. Accordingly, it does not accept Stinger’s 13 position, that in light of KSR, this Court must not give TASER’s patents the statutory 14 presumption of validity to which they are otherwise entitled. In so doing, this Court notes 15 that its holding comports with the majority of other district courts that have addressed this 16 question. See, e.g., Church & Dwight Co., Inc. v. Abbott Labs., 2008 WL 2566193, at *6 17 (D.N.J., June 24, 2008) (“KSR does not appear to have altered the statutory presumption of 18 validity.”); Power Integrations, Inc. v. Fairchild Semiconductor Int'l, 2007 WL 2893391, at 19 *1 (D. Del. Sept. 20, 2007) (concluding that KSR “does not alter the statutory presumption 20 of validity”). B. 21 The 295' Patent i. 22 Claims 2 & 40 23 Stinger makes three arguments concerning the obviousness of claims 2 and 40 of 24 TASER’s ‘295 patent: (1) claims 2 and 40 impermissibly patent a law of nature; (2) claims 25 2 and 40 are obvious in light of the prior art patent Gowan, U.S. Patent No. 5,471,362 (filed 26 February 26, 1993) (“Gowan”); and (3) the prior art Taser Public Defender ECD uses a two 27 capacitor. 28 - 22 - a. 1 TASER has not patented a law of nature. 2 Stinger argues that claims 2 and 40 of the ‘295 patent should be invalidated because 3 they patent a law of nature.4 The Court agrees with Stinger that patent protection does not 4 extend to “laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 5 U.S. 175, 185 (1981). Stinger, however, presents an incomplete picture of the law, failing 6 to recognize that “an application of a law of nature or mathematical formula to a known 7 structure or process may well be deserving of patent protection.” Id. at 187 (emphasis in 8 original). The question this Court must answer is whether Claims 2 and 40 impermissibly 9 patent a law of nature, as opposed to permissibly patenting a process that applies a law of 10 nature. Stinger argues the former, TASER the latter. 11 In support of its argument, Stinger points out that TASER’s expert admitted that in 12 prior art ECDs—i.e. ECD’s employing a single operating mode—ionization of the air gap 13 will naturally cause the voltage output to decrease, while, at the same time, causing an 14 increase in the output of current, and that this phenomenon is a law of nature. (DSOF ¶3). 15 According to Stinger, this testimony proves that TASER has patented a law of nature, 16 arguing that the natural drop in voltage and commensurate increase in current flow after 17 ionization of the air gap is, in essence, the second operating mode found in claims 2 and 40. 18 TASER, on the other hand, denies that claims 2 and 40 patent a law of nature, explaining that 19 the ‘295 patent acknowledges how single mode ECD’s operate, and that claims 2 and 40 20 teach a process—the dual-operating mode—that utilizes this law of nature. 21 TASER’s description of the dual operating mode comports with its description of 22 claims 2 and 40 as having patented a process, not a law of nature. The alleged novelty of 23 the dual-operating mode patented by claims 2 and 40 is that it allows production of an ECD 24 that uses far less battery power than is used in single-operating mode ECDs. As TASER 25 4 27 The Court agrees with TASER that Stinger’s law of nature argument is not properly considered under an obviousness analysis. It will consider the argument in this section of the Order for organizational purposes. 28 - 23 - 26 1 explained in the ‘295 patent application , after ionization of the air gap, a single-mode ECD 2 must “continue operating in the same mode while delivering current flow or charge across 3 the skin of a now very low impedance target. The resulting high power, high voltage stun gun 4 circuit operates relatively inefficiently yielding low electro-muscular efficiency and with 5 high battery power requirements.” U.S. Patent 6,999,295 (filed Feb. 5, 2005). To address 6 this problem, claims 2 and 40 teach the use of a power supply which operates in a second 7 mode to generate a more efficient low voltage, high current output. (See PSOF ¶89–91). 8 Because the second-mode’s voltage output is not merely the result of the law of nature 9 described by Dr. Rodriguez, TASER denies it has patented a law of nature. Instead, TASER 10 argues it has patented a process that takes advantage of that law of nature to send high 11 amounts of current over the ionized air-gap using very little voltage. 12 In determining whether the moving party has met its burden, the Court views the 13 evidence in the light most favorable to the nonmovant. Allen v. City of Los Angeles, 66 F.3d 14 1052, 1056 (9th Cir. 1995). If the ECD patented by claims 2 and 40 operates as TASER has 15 described, than a reasonable juror could conclude that TASER has patented a process, not 16 a law of nature. Accordingly, summary judgement on this issue is denied. 17 b. Gowan does not render claims 2 and 40 obvious 18 Stinger argues that the dual operating mode taught by claims 2 and 40 apply well 19 understood electrical principles and, as a result, are obvious in light of the Gowan, U.S. 20 Patent No. 5,471,362 (filed February 26, 1993) (“Gowan”). TASER, on the other hand, 21 maintains that the dual-operating mode was not obvious in light of Gowan. At the outset, the 22 Court notes that the patent examiner considered Gowan when evaluating TASER’s 23 application for the ‘295 patent. As this Court has already explained, KSR did not alter the 24 presumption of validity or burden that a party challenging a patent must carry. Accordingly, 25 Stinger bares a particularly heavy burden to demonstrate claims 2 and 40's invalidity. Glaxo 26 Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004). In its motion, Stinger has 27 not attacked the substance of the patent examiner’s reasons for allowance, other than to 28 - 24 - 1 suggest it is wrong in light of KSR. Because Stinger does not argue that the examiner’s 2 decision was incorrect under the pre-KSR standard, this Court need only determine whether 3 Stinger has proven by clear and convincing evidence that KSR dictates a different conclusion 4 than the one reached by the patent examiner. 5 In considering TASER’s patent application, “Gowan . . . teaches an arc generating 6 circuit that has a first transformer 1 to create an arc and a second transformer 21 with a 7 different output voltage to flow current across the arc.” (DSOF, ¶4). In deciding that claims 8 2 and 40 were not obvious, the patent examiner distinguished Gowan, stating: 12 The teachings of Gowan differ from the claims by not using the current flow across the arc to disable a subject (person or other living being). The arc in the Gowan teaching is used to fire a spark plug in an automotive internal combustion engine. The prior art record in this application (which includes Gowan) fails to teach or fairly suggest the use of a stun gun type device that uses a second transformer with a lower output voltage to flow current across an arc to disable a subject. 13 (Id). Because the patent examiner distinguished Gowan from claims 2 and 40 by noting the 14 dissimilarity between the arts, Stinger’s argument for obviousness based on KSR is 15 presumably grounded in KSR’s teaching that “if a technique has been used to improve one 16 device, and a person of ordinary skill in the art would recognize that it would improve similar 17 devices in the same way, using the technique is obvious.” 550 U.S. at 417. 9 10 11 18 TASER does not appear to dispute that claims 2 and 40 use the same or, at least, a 19 similar technique to the one utilized in Gowan. KSR suggests, however, that the mere fact 20 a technique exists in the prior art does not render any subsequent use of that technique 21 obvious. Instead, KSR teaches that the prior art device that employed the technique and the 22 device currently utilizing the technique must be “similar devices.” Id. In awarding claims 23 2 and 40 of the ‘295 patent, the examiner noted that “an arc . . . used to fire a spark plug for 24 an automotive engine . . . is highly unrelated to the stun gun art.” (emphasis added). 25 Additionally, TASER’s expert, Dr. Rodriguez, has testified to other major differences in 26 design, operation, and purpose between Gowan. (See PSOF ¶131–32). Because Stinger has 27 relied solely on KSR as a reason to contravene the patent examiner’s findings concerning 28 - 25 - 1 Gowan with respect to claims 2 and 40, and KSR does not appear to mandate a finding of 2 obviousness in this situation, the Court cannot conclude that Stinger has met its very heavy 3 burden. Whether there is sufficient similarity between the Gowan device and the ECD 4 claimed in the ‘295 patent will be for a jury to decide. 5 6 c. Police Model Taser does not render claims 2 and 40 obvious Stinger also contends that an ECD called the Police Model Taser (“PMT”), which was 7 manufactured by Tasertron, Inc. prior to its purchase by TASER in 2003, renders the ‘295 8 patent obvious. According to Stinger, the PMT employed two capacitors in parallel to 9 discharge an arching shock, with one capacitor discharging after the other, the later of the 10 two at a lower energy level and voltage than the first. (DSOF ¶ 5). Stinger appears, then, 11 to argue the PMT’s two capacitor system makes obvious the dual-mode operating system 12 taught in the ‘295 patent. 13 As an initial matter, Stinger’s claims concerning the workings of the PMT are 14 supported by the uncorroborated declaration of Stinger’s lawyer, Mr. McNulty. (See Id.). 15 Uncorroborated testimony is insufficient to invalidate a patent. Finnigan Corp. v. Int’l Trade 16 Comm'n, 180 F.3d 1354, 1369 (Fed Cir. 1999) (“[C]orroboration is required of any witness 17 whose testimony alone is asserted to invalidate a patent, regardless of his or her level of 18 interest.”). Additionally, TASER has produced evidence contradicting Stinger’s 19 characterization of the prior art PMT’s operation. TASER cites to the deposition of Stinger’s 20 expert, Mr. Tachner, who testified that when two capacitors are connected in parallel, they 21 do not operate separately, but work in tandem as a single larger capacitor, discharging 22 simultaneously. (PSOF ¶ 136). In his deposition, Mr. Tachner also admitted that a circuit 23 using two parallel capacitors could be identical to the prior art circuit shown in Figure 1 of 24 the ‘295 patent. (Id.). In light of the lack of corroboration, the presumption of validity, and 25 the dispute concerning the workings of a parallel circuit—i.e. the scope of the prior art 26 27 28 - 26 - 1 PMT—this Court finds that Stinger has not demonstrated obviousness by clear and 2 convincing evidence. 3 4 C. The ‘870 Patent i. Claim 1 5 Claim 1 of the ‘870 patent teaches (1) two separate electrodes that allow for two 6 contact points on the target; (2) a high voltage power supply capable of delivering a series 7 of electrical pulses to the target, a battery system including a battery; (3) a digital memory 8 device for storing battery capacity data indicating the amount of battery capacity consumed 9 or remaining, and a data interface that allows the battery system and the digital memory 10 device to communicate; (4) and a display for indicating the battery capacity. In arguing that 11 Claim 1 is obvious, Stinger cites this Court to four prior art patents (Kaufman; Poole, U.S. 12 Patent No. 6,237,461 (filed May 28, 1999); Harthcock, U.S. Patent No. 5,303,495 (filed Dec. 13 9, 1992); and Horne, 5,005,307 (filed Dec. 29, 1989)) and two prior art devices (the M26 and 14 the U34000). (DSOF ¶15). Stinger asserts that all elements of claim 1 are present in the 15 prior art devices, except the digital memory device and data interface. As for the fourth 16 element of claim 1—a display for indicating battery capacity—Stinger notes that it accepted 17 TASER’s construction that “a display with any indication of battery capacity is sufficient,” 18 then directs the Court to Kaufman and Poole, each of which teach a low-battery indicator 19 light. (Id.). Finally, Stinger cites to Harthcock and Horne, as teaching the use of a 20 microprocessor to control a firearm, which, presumably, covers claim 1's digital memory 21 device and data interface limitation. 22 Stinger has set forth prior-art patents and devices that are relevant to an obviousness 23 inquiry. What it has not done, however, is explain to this Court why this prior art render’s 24 claim 1 obvious. In the section of its brief pertaining to the alleged obviousness of claim 25 1—which weighs in at a mere seven sentences—Stinger makes only one argumentative 26 statement: “The use of the microprocessor’s memory instead of a separate circuit to monitor 27 the battery is obvious.” Given that it must overcome the presumption of validity and prove 28 - 27 - 1 obviousness by clear and convincing evidence, Stinger’s lack of application of facts to law 2 is puzzling. As the Supreme Court has explained, “a patent composed of several elements 3 is not proved obvious merely by demonstrating that each of its elements was, independently, 4 known in the prior art.” KSR, 550 U.S. at 418. Rather, the question is really whether “a 5 person of ordinary skill can implement a predictable variation.” Id. at 417. Stinger clearly 6 believes a college educated engineer could have implemented claim 1, but does not bother 7 to explain why, let alone support its claim with expert testimony or other evidence.5 In 8 essence, Stinger merely asserts that its obviousness claim is obvious. In so doing, Stinger 9 has not met its burden, and this Court will not invalidate claim 1. ii. 10 Claim 3 11 Stinger’s obviousness argument as to claim 3 of the ‘870 patent focuses on a single 12 limitation of that claim; “a mechanism for allowing the user to extend the duration of the 13 pre-timed series of electrical pulses.”6 The parties do no dispute that the “mechanism” is a 14 trigger. 15 deposition admission by claim 3's inventor, Mr. Nerheim, that both prior art automatic 16 weapons and the prior art M26 ECD will continue to fire if their trigger is held down. 17 (DSOF ¶26). Similarly, Stinger cites to Kaufman and Dunning, U.S. Patent No. 4,872,084 18 (filed Sept. 6, 1988). Kaufman teaches an activator switch used for firing an ECD that when Stinger contends that the use of a trigger in this manner is obvious, citing the 19 20 21 22 23 5 Indeed, the Court notes that Stinger only explained the type of knowledge and skill it believes a college educated engineer possesses in its reply brief. By completely neglecting this important step in its motion, Stinger deprived TASER of a chance to respond and has failed to adequately guide this Court’s consideration of the issue, making it difficult to grant summary judgment. 6 27 The Court understands that “the determination of obviousness is made with respect to the subject matter as a whole, not separate pieces of the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1086 (Fed. Cir. 2008). The disputed element, however, fairly captures the whole of claim 3's subject matter as the other parts of the claim merely teach essential elements of the ECD device to which the purported invention, the trigger mechanism for extending a pre-timed series of electrical pulses, is attached. 28 - 28 - 24 25 26 1 “pressed continually for 15 seconds . . .automatically disable [the ECD] for a predetermined 2 time,” while Dunning teaches an ECD that fires as long as its trigger switch is operated. 3 (DSOF ¶26). 4 In response, TASER notes that both Kaufman and Dunning were before the patent 5 examiner. TASER also argues that Kaufman teaches away from the concept of using a 6 trigger to extend a devices’ output, as the ECD taught in Kaufman stops firing after 15 7 seconds, no matter how long its activator switch is held. See McGinley v. Franklin Sports, 8 Inc. 262 F.3d 1339, 1354 (Fed Cir. 2001)(“[R]eferences that teach away cannot serve to 9 create a prima facie case of obviousness.”). TASER, however, primarily combats Stinger’s 10 allegation of obviousness by distinguishing the prior art devices and weapons relied upon by 11 Stinger, arguing that their firing output continues as long as the trigger is held down, not for 12 a pre-defined period of time. In other words, TASER argues that no one had ever before 13 used a trigger to extend a pre-timed series of electrical pulses. This fact, however, is not 14 determinative under KSR. 15 As this Court has already explained, “if a technique has been used to improve one 16 device, and a person of ordinary skill in the art would recognize that it would improve similar 17 devices in the same way, using the technique is obvious unless its actual application is 18 beyond his or her skill.” KSR, 550 U.S. at 417. There is no question that an ECD that fires 19 a pre-timed series of pulses is similar art to an ECD that fires non-pre-timed pulses. 20 Additionally, TASER does not dispute that the M26 and the device taught in Dunning both 21 use triggers to extend their firing duration. Accordingly, Stinger’s evidence shows that a 22 trigger is a well known option for extending the firing duration of ECDs. The question, then 23 becomes, would a reasonably skilled engineer have recognized that a trigger could be used 24 to extend a pre-timed series of electrical pulses? Without relying on Kaufman, which teaches 25 away from using extending a pre-timed series of electrical pulses with a trigger, this Court 26 answers this question in the affirmative. 27 28 - 29 - 1 “When there is a design need or market pressure to solve a problem and there are a 2 finite number of identified, predictable solutions, a person of ordinary skill has good reason 3 to pursue the known options within his or her technical grasp.” Id. at 421. The use of a 4 trigger to extend the firing duration of an ECD was clearly a known option at the time of 5 claim 3's invention. Given this fact, the Court finds that applying the same technique to an 6 ECD using pre-timed electrical pulses appears to be a predictable solution that a reasonably 7 skilled college educated engineer would have had good reason to pursue. Accordingly, the 8 Court finds that Stinger has met its heavy burden, overcoming the presumption of validity, 9 and summary judgment should be granted as to the invalidity of claim 3 of the ‘870 patent. 10 The Court will not consider secondary factors that might mitigate against a finding of 11 obviousness, as TASER has not argued that they are applicable concerning claim 3. 12 13 iii. Claim 4 Stinger argues that it was obvious to combine the transformer configuration taught in 14 claim 4 of the ‘870 patent with an ECD. In pertinent part, Claim 4 recites: 15 a high voltage power supply for generating an output voltage delivered across the first and second contact points on the target to generate a positive voltage potential at one electrode and a negative voltage potential at the other electrode thereby increasing the total voltage drop across a target while deceasing the maximum voltage potential between either electrode and a grounded user of the weapon In support of its argument, Stinger cites this Court to the Parker, U.S. Patent 5,892,646 (filed 16 17 18 19 20 May 5, 1995) (“Parker”). Parker teaches the use of transformers with grounded secondary 21 wire center taps (“GSWCT”) in gas-discharge display lamps (i.e. neon signs), the purpose 22 of which is to reduce the severity of shock to users of electronic devices that contact the 23 ground and a lead of the secondary transformer. (DSOF ¶31). Stinger claims that the ECD 24 described in claim 4 utilizes the transformer with grounded secondary wire center taps found 25 in Parker, installs it in the same fashion, and uses it for the same purpose. TASER does not 26 appear to contest Stinger’s factual contentions concerning Parker and its relationship to claim 27 28 - 30 - 1 4. In lieu of challenging the factual underpinnings of Stinger’s obviousness argument, 2 TASER asserts legal defenses, arguing that only analogous prior art is relevant to a question 3 of obviousness and that claim 4 cannot be invalidated as obvious without engaging in 4 impermissible hindsight-based analysis. 5 The Federal Circuit has held that non-analogous art has no bearing on an obviousness 6 claim. See Jurgens v. McKasy, 927 F.2d 1552, 1559 (Fed. Cir. 1991) (“And if we presume 7 that the Dacian windsock is not analogous art, it has no bearing on the obviousness of the 8 patent claim.”). As this Court has already explained, KSR does not appear to have 9 completely destroyed this principle. Instead, it appears to have expanded the range of prior 10 art that is relevant to an obviousness inquiry, substituting the word analogous for similar. 11 KSR, 550 U.S. at 417 ( “[I]f a technique has been used to improve one device, and a person 12 of ordinary skill in the art would recognize that it would improve similar devices in the same 13 way, using the technique is obvious.” (emphasis added)). KSR also points out, however, 14 that “[w]hen there is a design need or market pressure to solve a problem and there are a 15 finite number of identified, predictable solutions, a person of ordinary skill has good reason 16 to pursue the known options within his or her technical grasp.” 17 reason, then, that identified and predictable solutions are those which have been employed 18 in similar or analogous arts. Were it otherwise, a reasonably skilled inventor would be 19 responsible for techniques and invention he would have no reason about which to know. 20 Courts, in turn, would be forced to engage in the type of hind-sight based analysis which 21 KSR confirmed is forbidden when evaluating obviousness. Id. (“A factfinder should be 22 aware, of course, of the distortion caused by hindsight bias and must be cautious of 23 arguments reliant upon ex post reasoning.”). Id. at 421. It stands to 24 The question, then, is whether Parker and the claim 4 can be said to practice similar 25 arts or are similar devices. If the answer is yes, then claim 4 is likely invalid as obvious. 26 Id. at 421 (noting that “if [pursuing known options] leads to the anticipated success, it is 27 likely the product not of innovation but of ordinary skill and common sense.”). On the one 28 - 31 - 1 hand, neon signs and stun guns are very different devices. On the other hand, both are within 2 the more general art of electronics and might therefore be considered similar under KSR. 3 Given this ambiguity, the Court finds that there is a material issue of fact concerning whether 4 Parker is sufficiently similar to claim 4 and, therefore, applicable to an obviousness analysis. 5 Therefore, summary judgment on this claim is no appropriate. 6 7 D. The ‘262 Patent i. Independent claims 1,6,9, and 13 8 In its brief Stinger makes a generalized attack on independent claims 1,6,9, and 13 of 9 the ‘262 patent, arguing these claims are obvious because all of their individual claim 10 elements are found in the prior art and are well known applications of microprocessor 11 technoloy. In other words, Stinger claims that it was obvious to combine a dart weapon with 12 technology taught in three prior art patents—Morris, U.S. Patent No. 4,541,191 (filed April 13 6, 1984); O’Dwyer, U.S. Patent No. 6,477,801(filed Dec. 03, 1999); and Poole., (DSOF 14 ¶32)— because doing so was nothing more than combining familiar elements using known 15 methods. See KSR, 550 U.S. at 416. (“The combination of familiar elements according to 16 known methods is likely to be obvious when it does no more than yield predictable results.”). 17 As an initial matter, all three of the prior art patents relied on by Stinger were before 18 the patent examiner when it considered the ‘262 patent. Stinger, therefore, again enjoys an 19 especially heavy burden in proving invalidity. Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 20 1339, 1348 (Fed. Cir. 2004) (“This burden is ‘especially difficult’ when, as is the present 21 case, the infringer attempts to rely on prior art that was before the patent examiner during 22 prosecution.”). Once again, Stinger has not attempted to explain why the patent examiner’s 23 decision to allow the claim it challenges was incorrect. Instead, it relies exclusively on the 24 Supreme Court’s decision in KSR, seemingly believing that it so changed the applicable 25 patent law that invalidation is mandatory. As this Court has already explained, Stinger’s 26 reading of the KSR decision is over broad and tends to exaggerate KSR’s impact on the 27 obviousness standard. 28 - 32 - 1 Having said that, Stinger contends that all four independent claims are obvious 2 because [1]all elements are present in the prior art and [2] are well known applications of 3 microprocessor technology. As to the former claim, assuming, without deciding, that it is 4 true, the fact that all elements of claims 1,6,9, and 13 are present in the prior art is not 5 determinative. KSR, 550 U.S. at 418 (“[A] patent composed of several elements is not 6 proved obvious merely by demonstrating that each of its elements was, independently, 7 known in the prior art.”). Regarding the latter claim, Stinger has not supported its assertion 8 that all elements of the independent claims are well known applications of microprocessor 9 technology with any evidence directed towards specific claim elements. Additionally, this 10 assertion seems to run contrary to Stinger’s own suggestion that accommodating prior art 11 mechanical devices to electronics would be reasonably obvious to a college educated 12 engineer. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed Cir. 13 2007) (“Accommodating a prior art mechanical device that accomplishes that goal to modern 14 electronics would have been reasonably obvious to one of ordinary skill in designing 15 children's learning devices.”). Either claims 1,6,9,13 apply well know applications of 16 microprocessor technology, or they merely accommodated prior mechanical inventions to 17 an electrical device. This ambiguity concerning the nature of the independent claims does 18 not weigh in Stinger’s favor and is indicative of the lack of clarity and over generalized 19 nature of Stinger’s assertions throughout its motion. 20 Stinger also asserts that the independent claims of the ‘262 patent are common sense 21 inventions in light of the prior art its identified. Mere common sense inventions are obvious. 22 Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed Cir. 2007) (“[T]he 23 common sense of those skilled in the art demonstrates why some combinations would have 24 been obvious where others would not.” (citing KSR, 550 U.S. 416 (“The combination of 25 familiar elements according to known methods is likely to be obvious when it does no more 26 than yield predictable results.”))). To determine if the combination of the prior art identified 27 by Stinger was obvious, the Court must first examine that art, which the Court notes, Stinger 28 - 33 - 1 has barely explained. Morris teaches a weapon capable of recording the time it is fired, as 2 well as measuring the elapsed time of the firing sequence. (See DSOF ¶32). Similarly, 3 O’Dwyer teaches a security device which may be installed on weapons so that the weapon 4 can only be activated by the use of a code. More pertinent to the instant case, the device 5 taught in O’Dwyer contains a memory which can record the time, place, date, and direction 6 of a firing of the weapon. (Id.) Finally, Poole teaches a non-lethal personal defense device 7 that can be equipped with a wireless communication system capable of transmitting date and 8 time to a monitoring station. (Id.) 9 microprocessor, but the microprocessor does not appear to be used to either track or store 10 information pertaining to date and time. Additionally, Stinger notes that dart weapons were 11 known in the prior art; TASER does not dispute this claim. Of these devices, only Poole involves the use of a 12 Generally speaking, the Court agrees with Stinger that the prior art in questions 13 teaches similar inventions to the ones found in claims 1,6,9,and 13; methods for tracking 14 when and where a weapon is fired. What distinguishes TASER’s claims from the prior art, 15 however, appears to be the manner in which date and time are tracked; namely, the use of a 16 microprocessor and a circuit. The question, then, is whether it was obvious to combine the 17 date-tracking prior art with the use of a microprocessor or circuit. There is clearly 18 disagreement between the parties concerning the answer to this question. The burden, 19 however, is on Stinger to explain why the patented invention is invalid and it simply has not 20 done so. Stinger has not stated in its papers, let alone cited this Court to expert testimony or 21 other evidence, why the specific inventions set forth in claims 1,6,9, and 13 should have been 22 obvious to a person of reasonable skill. Nor has it explained the scope of the prior art in any 23 sort of detail, such that this Court might more accurately compare it to the challenged claims. 24 Accordingly, this Court is left without guidance concerning whether or not the challenged 25 claims would be obvious to a college educated engineer. In light of the deficiencies in 26 Stinger’s papers, this Court will not overturn the decision of the only expert that considered 27 the contested claims in light of prior art; the patent examiner. Having so decided, the Court 28 - 34 - 1 need not consider Stinger’s arguments regarding the dependent claims of the ‘262 patent. 2 See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious 3 under section 103 if the independent claims from which they depend are nonobvious.”). 4 3. Non-Infringement 5 In addition to their invalidity arguments, Stinger also argues that its S-200 ECD does 6 not infringe many of the claims upon which TASER has rested its lawsuit. Specifically, 7 Stinger asks this Court to grant summary judgment on claims1,2, and 4 of the ‘870 patent and 8 claims 1,6,9, and 13 of the ‘262 patent.7 Infringement is a question of fact. Kemo Sales, 9 Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1359-60 (Fed. Cir. 2000). “Literal 10 infringement requires that each and every claim limitation be present in the accused product.” 11 Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d 1370, 1378 (Fed Cir. 2006). 12 Similarly, “[i]n order to literally infringe a method claim, the accused device must literally 13 meet each and every one of the claim limitations.” Desper Products, Inc. v. QSound Labs, 14 Inc., 157 F.3d 1325, 1337 (Fed. Cir. 1998). In considering Stinger’s request, the Court 15 applies same legal standard it does to all motions for summary judgement. CollegeNet, Inc. 16 v. ApplyYourself, Inc., 418 F.3d 1225, 1230 (Fed Cir. 2005). 17 appropriate if, drawing all factual inferences in favor of the non-movant, there is no genuine 18 issue of material fact and the movant is entitled to judgment as a matter of law.” Combined 19 Sys., Inc. v. Def. Tech. Corp., 350 F.3d 1207, 1209 (Fed. Cir.2003). Accordingly, Stinger 20 must demonstrate the absence of a disputed issue of material fact as to the non-presence in 21 the S-200 of at least one element in any of the patent claims of which TASER has alleged 22 infringement. “Summary judgment is 23 7 27 Stinger argues that the S-200 does not infringe the ‘295 patent because it merely practices the prior art. The Court need not consider this argument, however, as practicing the prior art is not a defense to literal infringement. Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1366 (Fed Cir. 2002) (“This court [has] made unequivocally clear . . . that there is no practicing the prior art defense to literal infringement.”). 28 - 35 - 24 25 26 1 A. 2 The ‘870 Patent i. Claim 1 3 Claim 1 of the ‘870 patent teaches (1) two separate electrodes that allow for two 4 contact points on the target; (2) a high voltage power supply capable of delivering a series 5 of electrical pulses to the target, a battery system including a battery; (3) a digital memory 6 device for storing battery capacity data indicating the amount of battery capacity consumed 7 or remaining, and a data interface that allows the battery system and the digital memory 8 device to communicate; (4) and a display for indicating the battery capacity. Stinger argues 9 that the S-200 does not literally infringe claim 1 because it lacks a “display for indicating to 10 a user the battery capacity.” TASER counters that Stinger agreed during the Markman phase 11 of this lawsuit that “a display with any indication of battery capacity is sufficient” to satisfy 12 the display limitation. This citation would be determinative were Stinger disputing that the 13 S-200 lacks a display which gives users information about battery health; it is not. Stinger 14 instead claims that the battery display on its ECD indicates momentary battery voltage, 15 which it distinguishes from battery capacity. 16 In support of its position, Stinger cites the Court to the Deposition of Robert Gruder, 17 who testified that the S-200 does not store battery capacity, but relies instead on a voltage 18 reading. (DSOF ¶14). It also draws the Court attention to the Statement of its expert, Mr. 19 Tachner, who asserts that the S-200's monitors battery status using an “integration technique” 20 in a fashion similar to the prior art described in the ‘870 patent. (Id.) Finally, Stinger 21 references the deposition testimony of Saliga, in which he describes the battery status display 22 on the S-200 as corresponding to levels of battery voltage. (Id). TASER, on the other hand, 23 cites to the Dr. Rodriguez expert report in support its contention that the S-200 both measures 24 and displays battery capacity data. (PSOF ¶148). In the cited section of the report, however, 25 Dr. Rodriguez describes the S-200 as measuring battery capacity by measuring remaining 26 battery voltage. 27 28 - 36 - 1 Accordingly, it is clear that S-200 display battery voltage. It is less clear whether the 2 phrase battery capacity encompasses a measure of battery life based on voltage. In 3 concluding that the S-200 infringes claim 1 of the ‘870 patent, Dr. Rodriguez’s report clearly 4 treats “battery capacity” as encompassing a measure of battery voltage. On the other, hand, 5 Gruder seems to distinguish between a measure of capacity and a measure of voltage, 6 asserting: “[W]e do not store battery capacity in our gun. We just take a voltage reading to 7 indicate that.” (DSOF ¶14). Still, a reasonable juror could plausibly understand Gruder’s 8 statement as drawing an equivalence between battery capacity and battery voltage, as it 9 suggests that the S-200 measuring voltage is equivalent to measuring battery capacity, a 10 finding which would comport with Dr. Rodriguez’s expert report. And, at oral argument, 11 Stinger’s counsel seemed to concede that battery voltage is a method by which to measure 12 battery capacity. In light of this ambiguity, the Court concludes that there is a disputed issue 13 of material fact concerning whether the S-200's display measures battery capacity which 14 must be decided at trial. 15 Additionally, Stinger appears to argue the S-200 does not infringe because its display 16 is not connected to a memory system which stores battery capacity data. In other words, 17 Stinger argues that the words “battery capacity” found in the “display” element must be read 18 as referring to the battery capacity stored in the “memory” and “data interface” element. 19 First, the Court notes that Stinger agreed to TASER’s construction of “a display with any 20 indication of battery capacity is sufficient.” Yet, Stinger now appears to be extending this 21 construction to read “a display with any indication of battery capacity stored in the memory 22 described in the third claim .” The Court cannot, however, consider Stinger’s proposed 23 construction. At this stage in the proceedings the Court’s task is to determine if any element, 24 as construed during the claim construction phase, is not present in the S-200. See 25 TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1371 (Fed. Cir. 2002) (“To establish literal 26 infringement, all elements of the claim, as correctly construed, must be present in the accused 27 system.”). Because the Court has already determined that a disputed issue of material fact 28 - 37 - 1 exists as to the S-200's infringement of the “display” element as defined by the Parties agreed 2 upon construction, there is nothing else left to decide. Having so decided, the Court notes 3 that even if it were to accept Stinger’s construction, Stinger’s motion does not cite to any 4 evidence supporting its assertion that the S-200's battery display is not connected to its 5 memory. 6 ii. Claim 2 7 Stinger argues that summary judgment is appropriate as to claim 2 of the ‘870 patent 8 because the S-200 does not contain the claim element: “a display for indicating to the user 9 the amount of time remaining in each pulse sequence.” Instead, Stinger asserts that the S-200 10 utilizes four LED lamps which light in sequence as 25% increments of the pulse charge are 11 consumed during operation of the ECD. (DSOF ¶21). In other words, the LED display on 12 the S-200 indicates the amount of charge delivered to the target, not the time remaining in 13 the pulse sequence. TASER, on the other hand, cites to Dr. Rodriguez’s expert report, which 14 concludes that the four LED lights represent one second each of the S-200's four second 15 pulse sequence and, therefore, indicate the amount of time remaining in the pulse sequence. 16 TASER also cites to the S-200's training manual, which describes the LED Lights as 17 measuring time remaining in the pulse sequence. (PSOF ¶155) 18 In support of its position, Stinger points to Mr. Tachner’s expert statement, in which 19 he explains that the discharge rate of the S-200 is not fixed, but varies depending on a 20 number of factors, including “internal body resistance, possible skin resistance, and/or 21 atmospheric impedance.” (DSOF ¶ 14). Stinger also directs this Court to Dr. Rodriguez’s 22 expert report, noting Dr. Rodriguez concludes that the pulse sequence of the S-200 is 23 “approximately” four seconds, that there are several steps of the firing loop (i.e. the entire 24 pulse sequence), and the duration of each step is only “approximately fixed.” (Id.). Based 25 on Dr. Rodriguez’s description of the S-200 pulse sequence as being variable in time, Stinger 26 contends that the LED display does not actually track time remaining in the pulse sequence. 27 It reasons that because different quarters of the sequence vary in time, even if only slightly, 28 - 38 - 1 the LCD light display cannot be used to measure time, just the percentage of the firing 2 sequence completed. 3 Stinger’s characterization of the S-200, however, is disputed by the S-200's training 4 manual, which characterizes the device’s display as a “four red lamp bar-graph display [that] 5 indicates seconds [sic] trigger is pulled.” (PSOF ¶156). At oral argument, Stinger stated that 6 the training manual is incorrect. Still, the court finds that a reasonable juror might conclude 7 such an explanation is self-serving, giving it little weight. In sum, given the stated purpose 8 of the LED display and the differing conclusions that parties draw from the Rodriguez 9 Report, this Court cannot conclude as a matter of law that the S-200 does not, in fact, indicate 10 to a user the amount of time remaining in the pulse sequence. While it may be true that the 11 LED display only offers an approximation of the time remaining, the Court finds that a 12 reasonable juror could include that the display does give an indication of the amount of time 13 remaining, even if that indication is not exact down to the microsecond. 14 iii. Claim 4 15 Stinger’s non-infringement argument focuses on claim 4's element requiring “a high 16 voltage power supply for generating an output voltage delivered across the first and second 17 contact points on the target to generate a positive voltage potential at one electrode and a 18 negative voltage potential at the other electrode.” Stinger claims that the S-200 does not 19 produce the required negative voltage at one electrode and positive voltage at the other. 20 TASER disputes this claim. 21 Before beginning its analysis, the Court notes that only certain early version of the S- 22 200 are accused of infringing claim 4, and both Parties concede that those versions utilize 23 center-tapped transformers. In its papers, Stinger also concedes that the center-tapped 24 transformers in the accused version of the S-200 produced a positive voltage at one winding 25 and a negative voltage at the other. (DSOF ¶27) 26 argument, however, Stinger points to evidence showing that the center-tapped transformer 27 windings are not connected directly to the electrodes, but coupled to them through rectifying 28 - 39 - In support of its non-infringement 1 diodes. In its motion, however, Stinger does not explain to the Court the significance of the 2 rectifying diodes; it merely notes their presence. Instead, Stinger argues only that Dr. 3 Rodriguez’s expert report concluded that the S-200 utilizes a bridge rectifier circuit, which 4 reverses any negative polarity for the transistor windings, causing polarity at the electrodes 5 to remain positive. (Id. ¶30). In support of its position, Stinger also points to Exhibit C of 6 the Rodriguez Report, which demonstrates output wave form tracings from an S-200 showing 7 only positive polarity flowing from the S-200's electrodes. (Id.). 8 TASER responds by noting that the accused versions of the S-200 did not utilize 9 bridge rectifier or coupling diode bridge. (PSOF ¶162). Additionally, TASER claims that 10 Exhibit C is irrelevant, because (1) the data was procured using a newer version of the S-200 11 which is not alleged of infringing claim 4, and (2) the data only shows polarity between two 12 electrodes without any reference to a primary weapon ground, which is significant because 13 claim 4's reference to negative and positive voltages refers to the relationship between an 14 electrode and the ground. (Id. ¶164). Finally, TASER also argues that in his deposition, Mr. 15 Tachner admitted that the configuration of the diodes used in the accused verison of the S- 16 200 produced a positive voltage at one electrode and a negative voltage at the other. (Id. 17 ¶163). 18 In its reply, Stinger did not challenge or deny TASER’s assertions concerning the 19 relevance of exhibit C or the non-presence of a bridge rectifier circuit in the accused S-200 20 ECDs. Instead, it pivots, electing to emphasize the role of previously unexplained rectifying 21 diodes, arguing that a center-tapped transformer was never installed in an S-200 without 22 rectifying diodes and that the use of rectifying diodes would necessarily generate only 23 positive voltage potential at the electrons. In making this argument, Stinger cites the Court 24 to the Declaration of Saliga which it attached only as part of its reply brief. By changing its 25 argument and relying on new evidence, Stinger has deprived TASER of an opportunity to 26 properly respond. Accordingly, the Court will not consider Stinger’s arguments concerning 27 the significance of the rectifier diodes. See Eberle v. City of Anaheim, 901 F.2d 814, 818 28 - 40 - 1 (9th Cir. 1990) (noting that legal arguments raised for the first time in the reply brief are 2 deemed waived). Having so decided, this Court cannot find that Stinger has met its burden 3 of establishing the absence of a genuine issue of material fact concerning claim 4. Celotex 4 Corp. v. Catrett, 477 U.S. 317, 323 (1986) (holding that the moving party bears the initial 5 burden of establishing the absence of any genuine issue of material fact). TASER completely 6 refuted Stinger’s original argument, leaving a disputed issue of material fact concerning the 7 polarity of the electrodes on the accused version of the Stinger S-200. B. 8 The ‘262 Patent i. 9 Claims 1 and 13 10 In pertinent parts, claims 1 and 13 of the ‘262 patent both teach a dart weapon 11 comprising a microprocessor programmed to track date and time of the dart weapon’s firing. 12 Based on the Court’s construction of “track date and time,” Stinger argues that the S-200's 13 microprocessor is not programmed to track date and time. In its Markman order, this Court 14 construed “track date and time” to mean “the tracking of date and time in a program in a 15 microprocessor through whatever means available to a person of skill in the art at the time 16 of the invention.” (Dkt. #146, p. 25). In reaching its conclusion, this Court also noted that 17 it agreed with TASER’s expert that “tracking date and time means that you, through one way 18 or another, have the ability to keep track of the date of the time. And that could be done 19 directly or indirectly.” (Id. at 22–23). Finally, the Markman order also stated, that “the 20 process necessary to ‘track date and time’ must be internal to the microprocessor.” (Id. at 21 23). 22 Stinger admits that the S-200's microprocessor utilizes a seconds counter, which 23 tracks how many seconds the S-200 has been activated, and that this data can be used to 24 derive date and time, but only by using a separate external computer containing a separate 25 tracking program. (DSOF ¶41). Stinger asserts it is entitled to summary judgement because 26 the S-200's microprocessor is not itself programmed to derive a date and time. In other 27 words, Stinger argues that claims 1 and 13 require the microprocessor to operate like a clock 28 - 41 - 1 or calendar, i.e. contain a calendar program or program for tracking to a specific date or day. 2 (Id.). TASER’s disputes this characterization, noting that the claim construction states that 3 date and time can be tracked utilizing “whatever means available to a person of skill in the 4 art at the time of the invention.” (Dkt. #146, p. 25). It also emphasizes this Court’s Markman 5 Order finding that time and date could be tracked directly or indirectly. (Id. at 22–23). 6 It is clear that data from the S-200's microprocessor can be utilized to determine the 7 date and time of its activation. By arguing “track date and time” means that the 8 microprocessor must utilize “a calendar or program for tracking a specific date or time of a 9 specific day,” Stinger appears to disregard the Court decision not to place any such limitation 10 on its construction of “track date and time”. In the Markman Order the Court explained that 11 “[a]lthough there are many ways to track date and time in a microprocessor-based circuit, one 12 of which is to independently track current absolute date and time . . . there is nothing in the 13 claims or specification of the ‘262 patent that lead the Court to impose limitations on the 14 disputed phrase.” (Dkt. #146, p. 22). Stinger has not explained how its current argument 15 concerning “specific” date and time is different than the “absolute” date and time 16 construction already rejected by this Court. (Id.) (“[The Court finds no reason to adopt 17 Stinger’s proposed construction and impose the limitations “absolute” or “current” on the 18 phrase “track date and time,” as used in Claims 1 and 13.”)). At a bare minimum, then, there 19 is a disputed issue of material fact concerning whether the S-200 tracks date and time.8 20 8 27 At oral argument, Stinger, for the first time, drew the Court’s attention to the PTO’s examination of the ‘262 patent. (Dkt. #175, exb. 22). Stinger argued that this document makes clear that “tracks date and time” should have been more narrowly constructed to require that the microprocessor track date and time as, for lack of a better phrase, date and time, not as a form of data—like seconds counter data—that can later be converted to date and time through external means. First, the Court notes that this argument is extremely untimely. Second,, the Court does not agree with Stinger’s analysis of the patent examiner’s report. In the passage in question, the patent examiner stated that “[o]ne having ordinary skill in the art, or even a layperson with no skill in the art, would have interpreted the concept of recording date and time as presented in the '770 and '412 Patents as recording a "current" date and time. Any 28 - 42 - 21 22 23 24 25 26 1 Additionally, the Parties clearly disagree whether the S-200's date tracking capability, 2 assuming one exists, is a process that is internal to the microprocessor. Stinger believes that 3 it is not, arguing that the necessity of using external means to determine date and time 4 necessarily precludes a finding that the process is purely internal to the microprocessor. 5 Conversely, TASER responds that because all the data necessary to track date and time is 6 contained in the microprocessor, the process is purely internal, even if external means are 7 necessary to interpret the information. The Court finds that both explanations are plausible, 8 and a reasonable juror could reach either conclusion. 9 demonstrated the absence of material issues of fact as to claims 1 and 13. 10 ii. Accordingly, Stinger has not Claim 6 11 Claims 6 teaches a circuit, comprising of a memory, that keeps track of the current 12 time of day and current date, and “record[s] current date and current time of day” when the 13 dart weapon is operated. Claims 6' reference to the tracking of date and time varies from that 14 found in claims 1 and 13 by use of the modifier “current.” In its brief, Stinger resorts, once 15 again, to the Merriam Webster dictionary to interpret claim language. After considering the 16 meaning and usage of the words “current,” “day,” “keep,” “specify,” and “track,” Stinger 17 explains that keep track of current time and date means “maintain a record of a specified day 18 or date. It then concludes that S-200 does not preform that function. In support of its 19 position, Stinger cites only to evidence explaining the S-200's use of a seconds timer, which 20 21 22 27 other interpretation would yield an irrelevant recording as the resultant stored values would not have any relative reference point for comparison.” Stinger’s argument confuses the emphasis of the examiner statement, which is focused on the word “current.” He is merely saying that “track date and time” necessarily means “current” date and time, otherwise there would be no reference point from which to convert the stored “values”—the data — to date and time Accordingly, the patent examiner was not saying that the tracked date and time data needed to be in a specific form, merely that it must be pegged to current date and time as a reference point, otherwise it would be useless. The Court, therefore, does not find Stinger’s argument persuasive. 28 - 43 - 23 24 25 26 1 activates upon the activation of the weapon, and from which date and time can only be 2 determined by reference to an external source. (DSOF ¶41). 3 The evidence to which Stinger cites does not specifically address whether the S-200, 4 in any manner, keeps track of current day and time prior to its activation by a user. One 5 might be able to infer from the evidence Stinger adduced that time and date are only tracked 6 after the S-200 is activated. Stinger has not, however, cited to any evidence specifically 7 drawing such a conclusion. And, a reasonable juror might infer that the S-200 must track 8 current date and time in some form or fashion, or else it would have no way to track date and 9 time after activation. Accordingly, to the extent Stinger argues that the S-200 does not track 10 current date and time prior to its activation, it has not met its burden. 11 The Court turns next to the claim limitation that teaches an ECD which “record[s] 12 current date and current time of day” after its activation. Stinger does not dispute that the S- 13 200 records data which can be used, by means of an external computer, to ascertain the date 14 and time the weapon it fired. Accordingly, there does appear to be a dispute concerning the 15 “records” part of the claim limitation. In discussing claims 1 and 13, the Court has already 16 stated that there is a disputed issue of material fact concerning whether the S-200 records 17 date and time upon its activation by a user. In its motion, Stinger has not explained how the 18 word “current” alters the meaning of “track date and time,” other than to offer a definition— 19 “maintain a record of a specified day or date,”— that seems to rehash its argument 20 concerning the meaning of “tracks date and time” made in service of its non-infringement 21 arguments concerning claims 1 and 13; arguments this Court already found insufficient. 22 Accordingly, Stinger has not met its burden and this Court will not grant Stinger summary 23 judgment as to claim 6 on non-infringement grounds. 24 iii. Claim 9 25 Claim 9 teaches a “means for recording date and time of day for each occasion that 26 the weapon was operated to provide the current.” The Parties agree that the “means” in 27 question are a microprocessor and memory, and there is no dispute that the S-200 contains 28 - 44 - 1 a microprocessor and memory for maintaining a record of operation. Stinger argues the S- 2 200 does not infringe because the “means” do not include a second computer and program, 3 something both parties agree is necessary to convert the data recorded by the S-200 into date 4 and time. The question, then, is whether the necessity of utilizing an external computer and 5 program to convert the S-200's data into date and time format means that the S-200 does not 6 have the necessary means for recording the date and time described in claim 9. 7 This Court finds that Stinger’s argument is nothing more than a variation on the other 8 arguments it has made concerning the meaning of track date and time. This Court has 9 already concluded that Stinger has not sufficiently shown that the S-200 does not on its own 10 track date and time through the use of a process internal to the microprocessor. In so doing, 11 the Court found that there is also a disputed issue of material fact concerning whether data 12 in non-date-and-time format constitutes the tracking of date and time. Assuming, without 13 deciding that it does, a juror could reasonably conclude that the microprocessor and memory 14 are the means for tracking date and time, even though an external computer and program are 15 necessary to convert that data into a recognizable form. 16 Additionally, Stinger also argues that it should prevail because the parties have 17 agreed, which TASER does not dispute, that the means for providing a high pulse current 18 requires two transformers. (DSOF ¶43). In support of this claim, Stinger cites to the 19 Statement of Tachner, in which 20 transformer. (Id.). TASER contests Mr. Tachner’s conclusion, citing to Mr. Tachner’s 21 deposition, in which he appears to testify that the S-200 uses two transformers. (PSOF 22 ¶177). The Court will not attempt to resolve the discrepancy between Mr. Tachner’s 23 statement and his deposition; the jury will. The Court, therefore, finds there is a disputed 24 issue of material fact concerning whether or not the S-200 satisfies the disputed limitations 25 of claim 9. 26 iv. Mr. Tachner asserts that the S-200 uses only one Doctrine of Equivalents 27 28 - 45 - 1 Having determined that Stinger has not met its burden concerning literal infringement 2 as to any of TASER’s patent claims, the Court need not consider Stinger’s arguments 3 concerning infringement via the doctrine of equivalents. See Cybor Corp. v. FAS Techs., 4 Inc., 138 F.3d 1448, 1460 (Fed Cir. 1998)(“An accused device that does not literally infringe 5 a claim may still infringe under the doctrine of equivalents if each limitation of the claim is 6 met in the accused device either literally or equivalently.”). 7 4. 8 Stinger argues that the ‘262 is invalid because it is not enabled. Section 112 of the 9 Enablement Defense patent code requires that a patent specification: 12 “shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” 13 35 U.S.C. § 112. “In order to enable the claims of a patent pursuant to § 112, the patent 14 specification must teach those of ordinary skill in the art how to make and use the full scope 15 of the claimed invention without undue experimentation.” Liquid Dynamics Corp. v. 16 Vaughan Co., Inc. 449 F.3d 1209, 1224 (Fed Cir. 2006) (internal quotations omitted). 17 “Some experimentation is permissible although it cannot be unduly excessive.” 18 Invalidity predicated on enablement is a question of law supported by questions of fact and 19 must be proven by clear and convincing evidence. N. Telecom, Inc. v. Datapoint Corp., 908 20 F.2d 931 (Fed. Cir. 1990). Finally, “the grant of the patent by the PTO carries with it the 21 presumption of validity including compliance with § 112.” Id. 10 11 Id. 22 According to Stinger, the ‘262 patent does not enable the disclosed invention because 23 it fails to disclose any mode that would enable another inventor to carry out an invention that 24 tracks date and time. More specifically, Stinger claims ‘262 disclosure is invalid because it 25 does not cite to an internal clock or any other means of “keeping” or “tracking” time. In 26 support of these assertions, Stinger points to the testimony of Dr. Rodriguez, who stated: 27 28 - 46 - 1 4 One of ordinary skill in the art would know that there are many ways to track date and time. Examples include, but are not limited to, a real time clock, a counter, a timer circuit, or even a circuit using capacitive relays. Date and time may be measured and tracked as absolute quantities or, alternatively, they may be measured and tracked relative to a reference date and time. In addition, the date and time can be determined from a running count of seconds instead of tracking date and time separately or independently from one another. 5 (DSOF ¶40). Stinger then goes on to cite Dr. Rodriguez’s admission that “the ‘262 patent 6 never mentions using ‘absolute’ date and time, never mentions a ‘real time clock,’ and never 7 discusses the use of a specific time system such as GMT.” (Id.). 2 3 8 TASER does not dispute any of the testimony on which Stinger relies. Instead it 9 asserts a contrary interpretation, arguing Dr. Rodriguez’s statement that “[o]ne of ordinary 10 skill in the art would know that there are many ways to track date and time” proves that an 11 inventor of ordinary skill could implement the invention of ‘262 without undue 12 experimentation. In other words, Stinger claims that because ‘262 does not require the use 13 of absolute date and time, but merely any method to track date and time, Dr. Rodriguez’s 14 testimony actually weighs towards a finding of enablement. Viewing the facts in the light 15 most favorable to TASER, as it must, the Court finds that a reasonable juror could reach the 16 same conclusion as TASER. Accordingly, summary judgment on enablement is denied. 17 5. Best Mode Defense 18 Stinger also argues that TASER did not disclose the required best mode of the ‘262 19 patent. A patent specification must layout the best mode known to the inventor for the 20 implementation of the claimed invention. High Concrete Structures, Inc. v. New Enter. 21 Stone And Lime Co ., Inc., 377 F.3d 1379, 1382 (Fed. Cir. 2004). “Invalidation for failure 22 to set forth the best mode requires (1) the inventor knew of a better mode than was disclosed, 23 and (2) the inventor concealed that better mode.” Id. The Court agrees with TASER that 24 Stinger has not provided sufficient evidence demonstrating that Patrick Smith, the inventor 25 of the ‘262 patent, either knew of or concealed a better mode than the one disclosed on the 26 ‘262 patent. Stinger’s entire best mode defense motion is predicated on a single reference 27 to a different TASER patent application, U.S. Patent No. 09/398,388 (filed Sep. 17, 1999), 28 - 47 - 1 which it alleges also uses an internal clock. Stinger has not, however asserted that Patrick 2 Smith knew of this patent or concealed the allegedly better mode contained therein. 3 Accordingly, summary judgment is denied. 4 5 6. Inequitable Conduct. A. Legal Standard 6 Stated generally, patent applicants and their patent attorneys have a duty of candor, 7 good faith and honesty in their dealings with the PTO. 37 C.F.R. § 1.56(a) (1989). The duty 8 of candor, good faith and honesty includes the duty to submit truthful information and the 9 duty to disclose to the PTO information known to the patent applicants or their attorneys 10 which is material to the examination of the patent application. Elk Corp. of Dallas v. GAF 11 Bldg. Materials Corp., 168 F.3d 28, 30 (Fed. Cir. 1999); 37 C.F.R. § 1.56(a) (1989). The duty 12 of candor extends throughout the patent's entire prosecution history. Fox Indus. v. Structural 13 Preservation Sys., Inc., 922 F.2d 801, 803 (Fed. Cir. 1991). Breach of the duty of candor, 14 good faith and honesty may constitute inequitable conduct. Id. If it is established that a patent 15 applicant engaged in inequitable conduct before the PTO, the entire patent application so 16 procured is rendered unenforceable. Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 17 F.2d 867, 877 (Fed. Cir. 1988). 18 “To prove that a patent is unenforceable due to inequitable conduct, the [] infringer 19 must provide clear and convincing evidence of (1) affirmative misrepresentations of a 20 material fact, failure to disclose material information, or submission of false material 21 information, and (2) and intent to deceive.” Impax Labs., Inc. v. Aventis Pharms., Inc., 468 22 F.3d 1366, 1374 (Fed. Cir. 2006). Information is deemed material if there is a substantial 23 likelihood that a reasonable examiner would have considered the material important in 24 deciding whether to issue the application as a patent. See Elk Corp., 168 F.3d at 31; 37 25 C.F.R. § 1.56(a). Accordingly, a reference does not have to be prior art to be material 26 information that must be disclosed to the PTO. See 37 C.F.R. § 1.56(a) (1989). “The 27 [information] need only be within a reasonable examiner's realm of consideration.” Merck 28 - 48 - 1 & Co., Inc. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1421 (Fed. Cir. 1989). “An 2 otherwise material reference need not be disclosed if it is merely cumulative of or less 3 material than other references already disclosed.” Elk Corp., 168 F.3d at 31. 4 While “[m]ateriality does not presume intent, which is a separate and essential 5 component of inequitable conduct,” Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 6 1352 (Fed. Cir. 2002) (internal quotes and citation omitted), the materiality of a reference 7 may lead to an inference of intent. Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs., 8 394 F.3d 1348 (Fed. Cir. 2005) (“in the absence of a credible explanation, intent to deceive 9 is generally inferred from the facts and circumstances surrounding a knowing failure to 10 disclose material information”). Intent to deceive is rarely established by direct evidence, 11 and therefore, may be inferred from the facts and circumstances surrounding the applicant's 12 overall conduct. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 (Fed. Cir. 1995) (intent 13 to deceive is most often proven "by a showing of acts, the most natural consequence of which 14 are presumably intended by the actor"). For example, "intent may be inferred where a patent 15 applicant knew, or should have known, that withheld information would be material to the 16 PTO's consideration of the patent application." Critikon, Inc. v. Becton Dickinson Vascular 17 Access, Inc., 120 F.3d 1253, 1256 (Fed. Cir. 1997). 18 “Intent to deceive, however, cannot be 'inferred solely from the fact that information 19 was not disclosed;' there must be a factual basis for a finding of deceptive intent.” Purdue 20 Pharma L.P. v. Endo Pharms., 438 F.3d 1123, 1133-34 (Fed. Cir .2006). Moreover, if the 21 failure to disclose or misrepresentation occurred due to "[s]imple negligence, oversight, or 22 an erroneous judgment made in good faith," the intent element is not satisfied. Specialty 23 Composites v. Cabot Corp., 845 F.2d 981, 982 (Fed. Cir. 1988). A finding of “gross 24 negligence,” likewise, “does not itself justify an inference of intent to deceive.” Kingsdown, 25 863 F.2d at 876. However, a patent applicant cannot “cultivate ignorance, or disregard 26 numerous warnings that material information or prior art may exist, merely to avoid actual 27 knowledge of that information or prior art.” FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 28 - 49 - 1 521, 526 n.6 (Fed. Cir. 1987). In determining whether the applicant's overall conduct 2 evidences an intent to deceive the PTO, the Federal Circuit has emphasized that “the 3 involved conduct, viewed in light of all the evidence, including evidence indicative of good 4 faith, must indicate sufficient culpability to require a finding of intent to deceive.” Paragon 5 Podiatry Lab, Inc. v. KLM Labs, Inc., 984 F.2d 1182, 1189 (Fed. Cir. 1993) (internal 6 quotations and citation omitted). 7 Once materiality and intent have been established, the Court must conduct a balancing 8 test to determine “whether the scales tilt to a conclusion that 'inequitable conduct' occurred.” 9 Critikon, 120 F.3d at 1256. Generally, “when the misrepresentation or withheld information 10 is highly material, a lesser quantum of proof is needed to establish the requisite intent, … In 11 contrast, the less material the information, the greater the proof must be.” Purdue Pharma 12 L.P., 438 F.3d at 1128-29 (internal citations omitted). Ultimately, the question of whether 13 inequitable conduct occurred is equitable in nature. The court must make the “equitable 14 judgment concerning whether the applicant's conduct is so culpable that the patent should not 15 be enforced.” Life Techns., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1324 (Fed. Cir. 16 2000). During this step of the analysis, the court determines “whether the material 17 misrepresentations or omissions in question are sufficiently serious in light of the evidence 18 of intent to deceive, under all the circumstances, to warrant the severe sanction of holding 19 the patent unenforceable.” Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1372 20 (Fed. Cir. 2003). 21 B. Discussion 22 Stinger’s arguments concerning inequitable conduct are directed towards two of 23 TASER’s patents: ‘870 and ‘295. As part of its efforts to invalidate these patents, Stinger 24 also attacks TASER’s ‘762 patent—which is not asserted in this case—because it claims 25 priority to the same patent application as the ‘870 and ‘295 patents, arguing that inequitable 26 conduct with respect to one patent in a family can infect related applications. See Nilssen 27 v. Osram Sylvania, Inc., 504 F.3d 1223, 1230 (Fed. Cir. 2007) (“[I]nequitable conduct with 28 - 50 - 1 respect to one or more patents in a family can infect related applications.”). The Court will 2 consider the materiality of the alleged inequitable conduct before moving on to intent, if 3 necessary. i. 4 The ‘762 Patent 5 In its ‘762 patent application, TASER claimed that it had solved a problem not 6 addressed in the prior art: “switching capacitors without interrupting ionization in the air 7 gap.” (DSOF ¶6). Stinger claims that TASER acted inequitably when it failed to disclose 8 two prior art devices: the Police Special Model (“PSM”)9 and M26. As for the M26, Stinger 9 does not explain the materiality of TASER’s failure to disclose, noting only that TASER did 10 not initially disclose the M26, but did so in a subsequent Response to Office Action, which 11 the PTO received a month before the ‘762 patent was allowed. (Id. ¶45). Given that the 12 M26 was in the PTO’s possession prior to its notification of allowance, the Court cannot find 13 that Stinger has shown substantial likelihood of materiality. 14 As for the PSM, Stinger begins by stating that the patent examiner allowed ‘762 15 because a “second capacitant . . .discharges to provide energy for the current through the 16 established arc.” (Id. ¶6). Stinger also notes that in its response to the PTO’s allowance, 17 TASER acknowledged that “the output signal of the present invention is formed by 18 combining the energy from two sources at different voltages.” (Id.). From this foundation, 19 Stinger alleges TASER’s failure to disclose the PSM was material because the PSM utilized 20 two capacitors in parallel to discharge an arching shock with one of the capacitors operating 21 at a lower voltage. 22 TASER responds that Stinger’s focus on the number of capacitors is misguided, 23 arguing the more pertinent question is the manner in which those capacitors operate. In 24 support of this argument, TASER notes that Stinger has conceded, as was already discussed 25 9 27 Although Stinger refers to it as the Police Special Model Taser in this section of its briefing, it appears to the Court and to TASER that the PSM is the same ECD Stinger has previously referred to as the Police Model Taser. 28 - 51 - 26 1 in this order, that the PSM capacitors are coupled, causing them to function as a single 2 capacitor. (PSOF ¶47, 179). 3 individually configured capacitors, each with their own energy-releasing switch. (See PSOF 4 ¶183). This distinction is enough to preclude summary judgement on materiality in this 5 case, as a reasonable juror could conclude that single capacitor prior art, of which the PSM 6 may be viewed as a functional equivalent, is simply not relevant to a patent application 7 claiming two individual capacitors. Accordingly, Stinger has not shown there is a substantial 8 likelihood that a reasonable examiner would have considered the PSM important in deciding 9 whether to issue the application as a patent. 10 ii. It then points out that the ‘762 patent claims non-coupled, The ‘870 Patent 11 Stinger argues that in its application for the ‘870 patent, TASER claimed to have 12 invented a dual-transformer system—with the first transformer creating an arc, and the 13 second producing a lower voltage to flow current in the arc—but failed to disclose that this 14 invention could be implemented with a single transformer. (DSOF ¶49). This statement is 15 correct; inventor Magne H. Nerheim, admitted in his deposition that the invention claimed 16 in ‘870 could be implemented with one transformer. (Id.). Stinger, however, has neither 17 explained the significance of this admission regarding materiality, nor has it specifically 18 identified the prior art or other reference TASER failed to produce, except for one reference 19 to the PSM. Instead, it only has noted that the claim of the ‘870 patent relating to dual 20 transformers was later withdrawn because it was duplicative of a claim in the ‘295 patent; 21 an assertion TASER does not deny. (DSOF ¶50–51). Stinger cannot expect this Court to 22 find a material non-disclosure without even explaining what material reference was omitted 23 and why it was important. As to the non-disclosure of the PSM, the Court can only assume 24 Stinger brings it up for the same reasons it did concerning the ‘762 patent; reasons this Court 25 has already deemed insufficient. 26 Stinger’s second argument is directed towards the patent’s claimed battery indicator 27 display. Stinger argues that both the M26 and U34000 should have been disclosed, as they 28 - 52 - 1 each embodied a battery indicator display. (DSOF ¶52). TASER responds by noting that 2 the claim in ‘870 is “very different” then the battery light indicators found on the M26 and 3 U34000, pointing to evidence showing the M26 and U34000 utilize single lights to indicate 4 when the batteries are low. (PSOF ¶186–84). Conversely, the ‘870 patent claimed a digital 5 memory to store battery capacity information and an interface that allowed this information 6 to be digitally displayed. Viewing the facts in the light most favorable to TASER, as it must, 7 the difference between these types of battery displays is enough to preclude summary 8 judgement. The Court need not merely rest on that, however, as TASER also notes that the 9 ‘870 patent disclosed Kaufman, which taught a battery light indicator similar to the ones 10 found on the M26 and U34000. (DSOF ¶15). In light of Kaufman, it is possible that a jury 11 could conclude that the addition of the M26 and U34000 patents would have been 12 cumulative, and therefore not material omissions. See Larson Mfg. Co. of S.D., Inc. v. 13 Aluminart Prods. Ltd., 559 F.3d 1317, 1327 (Fed Cir. 2009) (“[A] withheld otherwise 14 material reference is not material if it is merely cumulative to, or less relevant than, 15 information already considered by the examiner.”). 16 iii. The ‘295 Patent 17 Finally, Stinger alleges material non-disclosures of the U34000 and M26 during the 18 prosecution of the ‘295 patent. Stinger argues that these disclosures were material because 19 the ‘295 patent teaches a two transformer system to create ionization within an air gap and 20 allow current to flow at a lower voltage level, and the U34000 and M26 utilize two 21 transformers to achieve the same effect. TASER’s response is two-fold. It first notes that 22 the M26's transformers are connected in a series, whereas the transformers in the ‘295 patent 23 are not, rendering the M26 irrelevant to the TPO’s examination. (PSOF ¶182). Secondly, 24 TASER asserts that including the M26 would have been cumulative, as other prior art 25 reference before the patent examiner utilized the same circuit configuration. As to the latter 26 point, the record shows that TASER disclosed both Cover, U.S. Patent No. 3,803,463 (filed 27 July, 10, 1972), and Kaufman during the prosecution of the ‘295 patent, and that Stinger’s 28 - 53 - 1 expert, Mr. Tachner, admits that Cover and Kaufman include two transformers connected in 2 a series, as does Figure 1 of the ‘295 patent application (PSOF ¶183). Based on this 3 evidence of cumulativeness, this Court cannot find that Stinger has met its burden. See 4 Larson Mfg. Co. of S.D., 559 F.3d at 1327. 5 Having determined that summary judgment is not appropriate as to materiality, this 6 Court need not consider intent. Stinger’s motion for summary judgement concerning 7 inequitable conduct is denied. 8 7. 9 Stinger argues that TASER is not eligible to begin recovering damages on the ‘295, 10 ‘870, and ‘262 patents until the day Stinger received actual notice of the alleged 11 infringement, i.e. the day TASER amended its complaint to include the aforementioned 12 patent claims. This argument is only correct, however, if TASER failed to properly label its 13 ECD products with the word “patent” or “pat.” and the applicable patent numbers. See 35 14 U.S.C. §287(a) (noting that actual notice is only required in the event of a party’s failure to 15 mark properly mark their products). Stinger has not put forth evidence showing that TASER 16 failed to properly mark its products. TASER, on the other hand, has cited to evidence 17 showing that it promptly added markings to its products as each patent issued. (DSOF 18 ¶191–92). Accordingly, the Court will not at this time limit the period of recovery for 19 damages caused by Stinger’s alleged infringement. 20 IV. 21 22 Damages TASER’s MOTION FOR PARTIAL SUMMARY JUDGEMENT TASER has moved for partial summary judgement as to literal infringement on claims 2 and 40 of the ‘295 patent. 23 A. Legal Standard 24 The Court once again notes that infringement is a question of fact. Kemo Sales, Inc. 25 v. Control Papers Co., Inc., 208 F.3d 1352, 1359-60 (Fed. Cir. 2000). “Literal infringement 26 requires that each and every claim limitation be present in the accused product.” Abraxis 27 Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d 1370, 1378 (Fed Cir. 2006). “In 28 - 54 - 1 order to literally infringe a method claim, the accused device must literally meet each and 2 every one of the claim limitations.” Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 3 1325, 1337 (Fed. Cir. 1998). “Summary judgment is appropriate if, drawing all factual 4 inferences in favor of the non-movant, there is no genuine issue of material fact and the 5 movant is entitled to judgment as a matter of law.” Combined Sys., Inc. v. Def. Tech. Corp., 6 350 F.3d 1207, 1209 (Fed. Cir. 2003). Accordingly, TASER must demonstrate the absence 7 of a disputed issue of material fact concerning its allegation that the S-200 satisfies all of 8 claims 2 and 40's limitations. 9 Before beginning its analysis, the Court notes Stinger’s argument that claim 40 is a 10 method claim, TASER did not sue for inducing infringement, and, therefore, Stinger is 11 precluded from being held liable for infringing claim 40. Stinger’s assertion, however, is 12 factually incorrect. TASER’s second amended complaint at ¶35 includes a charge of 13 inducing infringement. (Dkt. #51). A party is liable for inducing infringement on a method 14 claim “if it sells infringing devices to customers who use them in a way that directly infringes 15 the method claim.” AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374, 1380 (Fed 16 Cir. 2005). A finding of inducement is dependent on a finding of direct infringement. Joy 17 Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993) (“Liability for either active 18 inducement of infringement or for contributory infringement is dependent upon the existence 19 of direct infringement.”). In this case, there is no question that Stinger sold the S-200 to 20 customers who, if this Court finds direct infringement, would necessarily have used the S- 21 200 in an infringing matter. Accordingly, a finding of direct infringement as to claim 40 is 22 sufficient to prove inducement. 23 B. Discussion 24 At the outset, the Court notes that the scope of the Parties dispute concerning this 25 motion is really quite narrow. Stinger, in its statement of facts and responsive brief, 26 concedes that the S-200 embodies every elements of claim 2 and 40, with one exception; it 27 disputes that the S-200 utilizes a dual-mode power supply. (DSOF ¶1–6 (stating that the S- 28 - 55 - 1 200 is made and sold in the United states, is an ECD, includes first and second positionable 2 electrodes, in operation may encounter a high impedance air gap, exhibits high or low 3 voltage depending on the impedance of the circuit, and when the air gap is ionized the 4 voltage in the circuit is reduced)). Stinger maintains that the S-200 does not infringe because 5 it operates in only one mode. Returning to the language of the claims themselves, claim 2, 6 in pertinent part, teaches “a power supply for operating in a first mode to generate a first high 7 voltage . . . to ionize the air within the air gap to thereby reduce the high impedance across 8 the air gap to a lower impedance to enable current flow across the air gap at a lower voltage 9 level and for subsequently operating in a second mode to generate a second lower voltage 10 output across the first and second electrodes.” Likewise, Claim 40 teaches a method of “a 11 first high voltage, short duration output across the first and second electrodes during a first 12 time interval to ionize the air within the air gap,” followed by a subsequent “second lower 13 voltage output across the first and second electrodes during a second time interval to 14 maintain the current flow across the first and second electrodes.” The sole issue in the instant 15 motion, then, is whether TASER has proven the absence of a genuine issue of material fact 16 concerning its allegation that the S-200's utilizes a dual-mode power supply. 17 In their papers, the Parties appear to agree that the word “mode” refers to a distinct 18 manner of circuit operation. At oral argument, however, Stinger’s counsel suggested that 19 manner of circuit operation is irrelevant, asserting that claims 2 and 40 require only a first 20 high voltage output, followed by a low voltage output. He then went on to argue that the 21 majority of prior art stun guns operate in this manner—a high initial voltage, followed by 22 a low voltage output—so the S-200 does nothing more than practice the prior art and claims 23 2 and 40 are obvious or anticipated. There is, however, no practicing the prior art defense 24 to infringement. Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 25 1357, 1366 (Fed Cir. 2002) (“This court [has] made unequivocally clear . . . that there is no 26 practicing the prior art defense to literal infringement.”). Additionally, the Federal Circuit 27 has made it perfectly clear that “that patent infringement and patent validity are treated as 28 - 56 - 1 separate issues.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1365 (Fed 2 Cir. 2003); see id. (“Though an invalid claim cannot give rise to liability for infringement, 3 whether it is infringed is an entirely separate question capable of determination without 4 regard to its validity.” (Quoting Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 5 1583 (Fed. Cir. 1983))). Courts routinely enter summary judgment concerning infringement, 6 saving questions of validity for trial. See e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 7 F.3d 1371 (Fed. Cir. 2009). Accordingly, this Court may not consider Stinger’s invalidity 8 or practicing the prior art arguments when deciding TASER’s instant motion. 9 More importantly, Stinger’s position is not supported by the ‘295 patent itself. First, 10 contrary to Stinger’s assertions, the ‘295 patent does not merely teach the output of high 11 voltage followed by a low voltage. Instead, it very explicitly references a power supply 12 capable of operating in two distinct modes, the first generating a high voltage output and the 13 second generating a lower voltage output. Furthermore, the patented modes of operation 14 do not merely describe the rapid voltage drop phenomenon present in single-mode ECDs, 15 whereby voltage drops significantly after the ionization of an air gap. As explained in the 16 patent itself, even after that voltage drop, a single-mode “stun gun, which has by necessity 17 been designed to have the capability of ionizing an air gap, must now continue operating in 18 the same mode while delivering current flow or charge across the skin of a now very low 19 impedance target. The resulting high power, high voltage stun gun circuit operates relatively 20 inefficiently yielding low electro-muscular efficiency and with high battery power 21 requirements.” U.S. Patent 6,999,295 (filed Feb. 5, 2005). The claimed invention is not 22 merely a low voltage output, but a distinct manner of circuit operation which generates the 23 low voltage output more efficiently, thereby alleviating the inefficiencies present during the 24 low voltage output phase of single-mode guns. 25 Stinger does not dispute that it uses a first power-supply mode to generate a voltage 26 sufficient to ionize an air gap. Consequently, Court must determine whether the S-200 27 utilizes a second mode of circuit operation that generates the low-voltage output it produces 28 - 57 - 1 after ionization an air gap. TASER argues that it does. In support of this position, TASER 2 relies on a number of different pieces of evidence. First, it cites to Dr. Rodriguez’s expert 3 report. In his report, Dr. Rodriguez concludes that the S-200's operates in two modes, a first 4 high voltage output mode which generates a voltage sufficient to ionize an air-gap, and a 5 second mode which generates a lower voltage to maintain the flow of current across the 6 ionized gap. (PSOF ¶44). Dr. Rodriguez’ conclusion is supported by his analysis of the S- 7 200's circuitry, which he explains operates differently in each of the two modes he identified. 8 In the first, high-voltage mode: 9 the S-200’s capacitor bank is charged up to approximately 115V. Next, the S-200’s microprocessor causes a signal called pQFSW1 to transition from 0 to 1. That, in turn, causes the S-200’s IGBT switch to turn on. When the IGBT switch turns on, the charge stored on the capacitor bank begins to flow through the primary of the S-200 output transformer, T2. During that time, the T2 secondary voltage reaches several thousand volts (with positive polarity), but not a high enough voltage to ionize the air gap. Next, after approximately 9 microseconds, the S-200’s microprocessor causes the pQFSW1 signal to transition from 1 to 0, which switches the IGBT off. When the IGBT switches off, the current in the primary of T2 rapidly decreases, which induces a voltage on the secondary that is high enough to ionize the air gap. That voltage is not limited to the voltage on the capacitor bank times the transformer turns ratio. This allows the secondary voltage to exceed the primary voltage times the turns ratio. 10 11 12 13 14 15 16 (PSOF ¶44) (internal citations omitted)). Dr. Rodriguez’ report then identifies a second 17 mode which is utilized to flow current at a low voltage through an ionized air gap: 18 After the air gap has been ionized and is in a low impedance state, the microprocessor continues to toggle signal pQFSW1, which switches the IGBT on and off. Each time the IGBT switches on, current flows from the capacitor bank through the primary of T2, causing a corresponding current and voltage to appear on the secondary. The voltage on the secondary is directly related to the voltage on the primary by the turns ratio of the transformer. Each time the IGBT switches off, it induces a negative voltage on the secondary, but, because there is now a conducting load in the circuit (and because the capacitor bank has partially discharged), the induced negative voltage is not as large as it was in the first mode. 19 20 21 22 23 24 (Id.). 25 TASER also cites the Court to Stinger’s patent application for the S-200. In that 26 application, Stinger described the circuitry of the S-200, noting that it “may be recognized 27 as a flyback circuit that, when operated in pulsed mode, provides two drastically different 28 - 58 - 1 sets of output depending on the impedance across the output.” (PSOF ¶45). TASER argues 2 that the patent applications’s description of how these “drastically different sets of outputs” 3 operate indicates the existence of two distinct modes of circuit operation, the second of which 4 generates a significantly lower output voltage than the first. (PSOF ¶45–46). Finally, 5 TASER cites to the deposition testimony of the inventor of the S-200, Mr. Saliga, where Mr. 6 Saliga describes the S-200's transformer as operating in two modes; first as a flyback spark 7 coil, and then, after ionization occurs, as a direct-drive power pulse transformer. In that same 8 testimony, Mr. Saliga also articulates the difference between the flyback spark coil and 9 direct-drive operations, noting that in its direct-drive capacity, the transformer is “not having 10 to kick the voltage up.” 11 In addition to its scientific evidence, TASER draws the Court’s attention to Stinger’s 12 own descriptions of the S-200. In a technical white paper prepared by Mr. Saliga, the S-200 13 is described as operating like a “two-speed gear shift automobile—one gear gets you going 14 from a dead stop and the other does the fast moving. Guns which can “switch gears” is a big 15 factor which separates the men from the boys in effectiveness.” (PSOF ¶27). That same 16 white paper goes on to state: 17 18 19 The design of an effective stun gun electrical waveform requires that the fired darts manage to arc and spark through the target’s outer clothes and then, once an ionized-air and highly conductive plasma arc is established, the gun must somehow automatically shift gears, so to speak, and drive home (to the target body) a much larger electrical current but with lower voltage to cause effective involuntary muscle contraction. 20 (Id.). Similarly, in a presentation to potential investors Stinger explained: 21 22 23 Through the use of Quantum Flyback Technology or QFT™ the electrodes of the S-200 stun gun deliver high-voltage energy in a precisely controlled series of energy packets or “Quanta”. The electronics delivers these energy quanta from a so called “Flyback” transformer circuit. Hence the name, Quantum Flyback Technology. 24 25 26 When in use, each energy packet has a dual personality: if the gun’s electrodes have not yet hit a target, the energy quantum “flies back” to over 56,000 volts creating a commanding electrical spark - one which penetrates clothing easily. Yet once the “target” is contacted, the energy quantum delivers NMIW voltage and current very efficiently. 27 28 - 59 - 2 Series of quantum pulses are delivered first as ionizing spark energy and then as a more immobilizing, lower-voltage, higher-current energy quanta once on target. 3 (PSOF ¶28). Finally, TASER has introduced evidence showing that Stinger’s website 4 describes the S-200 as “the most state of the art stun technology available in the world,” 5 “radically different than any previous versions,” and having achieved the “most radical 6 change to stun gun technology in years.” (Id.) TASER argues that Stinger’s various public 7 proclamations, especially the claims of having invented a radically new ECD, undercut 8 Stinger’s assertion that the S-200 merely practices the prior-art, i.e. operates in one-mode as 9 a blunt pulse weapon. 1 10 Based on the foregoing evidence, this Court concludes that TASER has met its initial 11 burden of establishing the absence of any genuine issue of material fact. See Celotex Corp. 12 v. Catrett, 477 U.S. 317, 323 (1986) (holding that the moving party bears the initial burden 13 of establishing the absence of any genuine issue of material fact; the moving party must 14 present the basis for its summary judgment motion and identify those portions of the record 15 that it believes demonstrate the absence of a genuine issue of material fact). The key question 16 becomes, then, whether Stinger has raised a disputed issue of material fact. This Court finds 17 that it has not. 18 In its response, Stinger makes arguments directed towards the claims of invalidity 19 contained in its summary judgment motion.10 As a result, Stinger spends very little of its 20 seventeen-page response actually contesting the infringement arguments and evidence raised 21 in TASER’s motion. It argues only that there is no evidence in the record that the S-200's 22 circuit generates a second lower voltage and that the S-200's low-voltage output is caused 23 24 10 27 The Court acknowledges TASER’s concern that Stinger has attempted to use the instant motion to buttress the arguments it made concerning invalidity in its summary judgment motion. The Court has not considered those arguments in deciding Stinger’s motions, and will not consider them in the instant motion, except to the extent they concern literal infringement. 28 - 60 - 25 26 1 by external factors, namely the level of impedance. In support of the latter assertion, Stinger 2 cites exclusively to the testimony of TASER’s expert, Dr. Rodriguez, in which Dr. Rodriguez 3 admitted that the S-200 exhibits high voltage or low voltage depending on the impedance of 4 the circuit. (DSOF ¶7). Based on this admission alone, Stinger summarily concludes that, 5 “a reasonable trier of fact could conclude that the S-200 is constantly generating a single 6 mode first high voltage output that is being externally reduced by passage through a load or 7 loads in the circuit.” (Dkt. #192, p.4). Additionally, Stinger relies on Ohm’s law to explain 8 away statements in its literature that appear to suggest the S-200 utilizes dual modes. Ohm’s 9 law is a well known scientific law, which teaches that voltage drop relates to an increase in 10 current flow. Based on Ohm’s law, Stinger describes the boasts made in its advertisements 11 as mere tautologies. In other words, Stinger was using mere puffery to describe the normal 12 operation of an electrical circuit or single- mode ECD. 13 The testimony of Dr. Rodriguez on which Stinger relies, is not enough to raise a 14 disputed issue of material fact concerning a second operating mode. Dr. Rodriguez’s 15 testimony explains what triggers the S-200 ‘s drop in voltage; lack of impedance in the air 16 gap. It does not, however, explain what actually causes that drop in voltage. In single-mode 17 ECDs, the ionization of the air gap is the sole cause of the ECD’s decease in output voltage. 18 The ‘295 patent, however, teaches a system whereby the ionization of the air gap triggers the 19 circuit to generate the lower voltage. In other words, the difference between the prior art and 20 the ‘295 patent is not the triggering event, but how the ECD reacts to that event. Thus, the 21 mere fact that Dr. Rodriguez has identified impedance, or lack thereof, as triggering the S- 22 200's lower voltage output is not determinative, as it does not explain what is actually 23 responsible for the lower voltage output; natural forces or the circuit operation. 24 Additionally, Stinger’s claims that there is no evidence of dual-modes of operation 25 is clearly not true. Dr. Rodriguez’ expert report clearly identifies two distinct modes of 26 circuit operation, the second of which produces a lower voltage than the first. The report 27 explains how in the first mode the S-200's output voltage is quite large and not limited to 28 - 61 - 1 the voltage on the capacitor bank times the transformer turns ratio, whereas in the second 2 mode the output voltage is drastically smaller, directly related to output on the primary by 3 the transformer turns ratio. Additionally, Dr. Rodriguez’ conclusions are supported by the 4 deposition testimony of Mr. Saliga, who not only describes two modes of operation—flyback 5 and direct drive—but distinguishes them by noting that in the direct-drive mode, the 6 transformer does not have to “kick-up” the voltage. Mr. Saliga’s testimony directly refutes 7 Stinger’s claims that the voltage output of the S-200 depends entirely on external factors, as 8 the transformer would not have to “kick-up” the voltage were that the case. 9 If by “no evidence” Stinger meant to imply that TASER’s evidence does not support 10 the conclusions TASER draws, Stinger has failed to explain why that is the case. Other than 11 the Rodriguez’ testimony, which does not directly address the determinative question of fact, 12 Stinger 13 Specifically, Stinger has not directed the Court to evidence contradicting or explaining the 14 Rodriguez report’s description of the operation of the S-200's circuit, the deposition 15 testimony of Mr. Saliga, or the S-200's patent application. Accordingly, Stinger’s blanket 16 denial that the S-200 operates in two modes amounts merely to unsupported opposition to 17 TASER’s factually supported allegations. Such a response is insufficient to prevent the entry 18 of summary judgment. Taylor v. List, 880 F.2d 1040, 1045 (9th Cir. 1989) (stating that 19 conclusory allegations, unsupported by factual material, are insufficient to defeat a motion 20 for summary judgment.). And, if such evidence is in the record, it is Stinger’s job, not this 21 Court’s, to bring it to light. has failed to cite to evidence in the record disputing TASER’s evidence. 22 In light of the uncontroverted scientific evidence put forth by TASER, this Court need 23 not even discuss Stinger’s public statements concerning the S-200 in order to find that no 24 reasonable juror could conclude that the S-200 does not operate in two modes. In so doing, 25 the Court acknowledges Stinger’s argument that the S-200 only has one transformer and, 26 therefore, cannot utilize a dual operating mode. The amount of transformers, however, is 27 besides the point as neither Claim 2 nor Claim 40's teach a particular number of transformers. 28 - 62 - 1 Accordingly, TASER has demonstrated that the S-200 embodies every element of claims 2 2 and 40 and summary judgement concerning infringement of ‘295 patent is warranted. 3 Accordingly, 4 IT IS HEREBY ORDERED denying in part and granting in part Stinger’s Motion 5 for Summary Judgment of Patent Invalidity or Noninfringement. (Dkt. #160). Summary 6 judgment is GRANTED as to claim 3 of the ‘870 patent, finding it invalid as obvious. 7 Summary judgment is DENIED as to the rest of the grounds for relief set forth in Stinger’s 8 motion. 9 10 11 12 IT IS FURTHER ORDERED granting TASER’s Motion for Partial Summary Judgment of Literal Infringement. (Dkt. #184). IT IS FURTHER ORDERED denying as moot Stinger’s request for consolidated oral argument. A consolidated oral argument was held on March 23, 2010. (Dkt. #194). 13 IT IS FURTHER ORDERED denying TASER’s Motion for Leave to File 14 Supplemental Counsel Declaration in Support of TASER’s Reply in Support of its Motion 15 for Partial Summary Judgment of Literal Infringement. (Dkt. #197). 16 IT IS FURTHER ORDERED denying TASER’s Motion for Leave to File Surreply 17 or in the Alternative to Strike Stinger Systems, Inc.’s Improper and Oversized Reply in 18 Support of Motion for Summary Judgment. (Dkt. #199). 19 20 21 IT IS FURTHER ORDERED setting this matter for Status Hearing on April 19, 2010 at 4:30 p.m. DATED this 31st day of March, 2010. 22 23 24 25 26 27 28 - 63 -

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