Opinion
No. 00 Civ. 9399 (LTS)(KNF)
September 13, 2002
MEMORANDUM OPINION AND ORDER
Plaintiff Westvaco Corporation ("Westvaco" or "Plaintiff") brings this action, alleging infringement of its patent for a compact disk/DVD holder, assigned United States Patent No. 5,788,068 (the "`068 Patent"). The defendants include manufacturers and/or distributors of compact disk/DVD holders that Westvaco contends embody the subject matter of the `068 patent. Defendant Viva Magnetics Limited ("Viva") manufactures compact disk/DVD holders, at least one of which has been distributed by Defendant Matrix Associates, Inc. ("Matrix"). Pending before the Court is Matrix's motion for summary adjudication that a certain compact disk holder, which Matrix represents is manufactured by Viva and marketed by Matrix, does not infringe the `068 patent. The parties have provided written submissions and presented oral arguments, all of which the Court has considered carefully, in connection with the pending motion. For the reasons that follow, Matrix's motion for summary judgment is denied.
Matrix contends that it currently markets only one compact disk holder, manufactured by Viva, and seeks a declaration that an exemplar of that product does not infringe the `068 Patent. (Not. of Mot. at 2; 2nd Koeppe Decl. ¶ 2.) Westvaco argues that Matrix's motion for summary judgment is premature because "neither the universe of accused products . . . sold by Matrix nor the claims infringed by those products are yet defined. . . ." (Pl.'s Post-Hearing Mem. in Opp. to Mot. S. J. ("Post-Hrg. Opp. Mem.") at 1.) Westvaco asserts that there is an issue of fact as to whether the exemplar proffered by Matrix is representative of any product actually marketed by Matrix, contending that differences in production methods can be material in an infringement analysis and noting that there has as yet been no discovery as to the products produced by Viva and/or marketed by Matrix. (Pl.'s Mem. of Pts. Auth. in Opp. to Mot. Summ. J. ("Opp. Pts. Auth.") at 1, 4). Westvaco contends further that, even were the case ripe for summary adjudication as to this one product, there are genuine issues of material fact that would preclude a grant of summary judgment in Matrix's favor.
Westvaco contends that "[a]s there has been no discovery whatsoever in this case, the extent to which the sample holder submitted by Matrix with its motion papers is representative of holders now being distributed by Matrix is an issue of fact in dispute." Opp. Pts. Auth. at 1 n. 1.
The Complaint does not identify a specific set of products at issue in the litigation.
It alleges, inter alia, that defendants "have been and are currently directly and indirectly infringing the `068 patent by, among other things, . . . importing, selling, promoting, offering for sale, and distributing in the United States . . . large quantities of compact disk/DVD holders that embody the patented subject matter." (Compl. ¶ 13.) Westvaco argues that identification of particular products as defendants' without discovery is difficult because of lack of identifying markings, but refers to certain America Online packaging in its complaint, alleging that Matrix's "infringing activities have included, but are not limited to, those in connection with America Online, Inc." (Id.; Opp. Pts. Auth. at 2 n. 2.) Westvaco asserts that Matrix has marketed other infringing products in the past, identifies two items as Viva products acquired in the United States since 1998 (see Marsilio Decl. ¶ 5), and argues that further discovery is required to establish the universe of accused products. It is thus uncertain whether Matrix has distributed other products that Westvaco may accuse of infringing the `068 Patent.
DISCUSSION
Summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). In deciding a summary judgment motion, a court should not resolve disputed issues of fact; rather, it simply must decide whether there is any genuine issue to be tried. Gallo v. Prudential Residential Services, 22 F.3d 1219, 1224 (2d Cir. 1994); Eastman Mach. Co. v. United States, 841 F.2d 469, 473 (2d Cir. 1988).
"Determining whether a patent claim has been infringed involves two steps: (1) claim construction to determine the scope of the claims, followed by (2) determination whether the properly construed claim encompasses the accused structure." Bai v. L L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). To infringe a claim, an accused device must embody each claim limitation, literally or equivalently. Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1220 (Fed. Cir. 1996); TM Patents, L.P. v. Int'l Business Machines Corp., 121 F. Supp.2d 349, 376 (S.D.N.Y. 2000); see also Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S.Ct. 1831, 1837 (2002).
"Claim construction is a matter of law, in the first instance for the trial court . . . while infringement is a matter of fact." Suntiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327, 1335 (Fed. Cir. 1999) (internal citation omitted); Markman v. Westview Instruments, 52 F.3d 967 (Fed. Cir. 1995) aff'd, 517 U.S. 370 (1996). District courts have broad discretion in deciding the timing of claim construction. "Markman does not obligate the trial judge to conclusively interpret claims at an early stage in a case." Sofamor Danek Group, Inc. v. Depuy-Motech, Inc., 74 F.3d 1216, 1221 (Fed. Cir. 1996). While a trial court is obligated to interpret claims, therefore, it need not do so simply because a party has made a dispositive motion. The timing of claim construction and the manner in which claims are construed vary from case to case. See Nutrinova Nutrition Specialties Food Ingredients GmbH v. Hangzhou Sanhe Food Co., 224 F.3d 1356, 1360 (Fed. Cir. 2000) (trial courts have discretion to make decisions concerning timing "because the facts of every case are different, and the appropriate time for a trial court to make a decision concerning a procedural matter depends on the circumstances."); see also William F. Lee Anita K. Krug, Still Adjusting to Markman: A Prescription for the Timing of Claim Construction Hearings, 13 Harv. J.L. Tech. 55, 80 (1999); David H. Binney Toussaint L. Myricks, Patent Claim Interpretation After Markman — How Have the Trial Courts Adapted?, 38 IDEA 155, 184 (1997).
The Court stayed discovery in this action by order dated October 12, 2001, in light of the instant motion and other pending motions. As noted above, Plaintiff has yet to identify specifically which of Matrix's products it claims infringe the `068 Patent, and the parties are not agreed that the product submitted by Matrix in connection with the pending motion is representative of one or more accused products. (See Opp. Pts. Auth. at 1 n. 1; 2nd Koeppe Decl., ¶ 2.) Although claim construction focuses on claims rather than accused products, the nature and scope of the parties' disputes with respect to claims may be informed by the number and type(s) of products ultimately accused. The Court construes claims objectively, without reference to the accused product, but only terms that are actually in controversy with respect to infringement are construed. Vivid Technologies, Inc. v. American Science Engineering, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The principle that a court should construe only disputed terms is intended to avoid advisory opinions violative of Article III of the United States Constitution. Centillion Data Sys. v. Am. Mgt. Sys., 138 F. Supp.2d 1117, 1120 (S.D.Ind. 2001) (citing Vivid, 200 F.3d at 803). Furthermore, claim construction at this stage, in relation to a single product allegedly marketed by one defendant, could invite further piecemeal efforts.
In light of the foregoing considerations and under the circumstances of this case, the Court finds it preferable to postpone construction of the claims until sufficient discovery has been conducted to identify the accused product(s), narrow and/or frame with greater certainty the claims in dispute, and focus the litigation.
CONCLUSION
In light of the Court's determination that deferral of claim construction is appropriate under the circumstances of this case, Matrix's motion for summary judgment is denied, without prejudice to later renewal, as premature. The parties shall appear before the Court for a pre-trial conference on October 24, 2002 at 4:30 p.m.