Storer v. Hayes Microcomputer Products, Inc.

960 F.Supp. 498

James A. STORER, Refac International, Ltd., Plaintiffs, v. HAYES MICROCOMPUTER PRODUCTS, INC. Zoom Telephonics, Inc. Defendants.

Civil Action No. 96-10602-WGY.

United States District Court, D. Massachusetts.

March 25, 1997.

Ronald J. Schultz, Kevin D. Conneely, Robins, Kaplan, Miller & Ciresi, Minneapolis, MN, John N. Love, Robins, Kaplan, Miller & Ciresi, Boston, MA, for James A. Storer, Refac Intern., Ltd.

Bruce E. Falby, Hill & Barlow, Boston, MA, Kirk W. Watkins, Sonya Y. Ragland, Parker, Johnson, Cook & Dunlevie, Atlanta, GA, for Hayes Microcomputer Products, Inc. Thomas J. Sartory, David S. Weiss, Julie A. Frohlich, Goulston & Storrs, Marshall D. Stein, Cherwin & Glickman, Boston, MA, John F. Lynch, Arnold, White & Durkee, Houston, TX, Philip D. Segrest, Jr., Hartwell P. Morse, III, Daniel R. Cherry, Welsh & Katz, Ltd., Chicago, IL, for Defendant Zoom Telephonics, Inc.

Marshall D. Stein, Cherwin & Glickman, Boston, MA, John F. Lynch, Arnold, White & Durkee, Houston, TX, for Counter-Claimant Zoom Telephonics, Inc.

MEMORANDUM AND ORDER

YOUNG, District Judge.

James A. Storer and Refac International, Ltd. (collectively the "Plaintiffs") are the owners of United States Patent 4,876,541 (the "Storer Patent"). The Storer Patent describes a "data compression system," embodied in a computer program, that dynamically compresses and then decompresses streams of electronic data. The most widespread practical application of the invention is the speedy and efficient transmission of electronic data (in compressed form) from one computer to another via modem.

The Plaintiffs commenced this action alleging that computer modems manufactured and sold by Hayes Microcomputer Products, Inc. ("Hayes") and Zoom Telephonics, Inc. ("Zoom," collectively the "Defendants"), infringe upon one or more of the claims of the Storer Patent. Both Hayes and Zoom advertise that their modems compress and decompress data according to an international standard adopted after the Storer Patent issued, entitled Recommendation V.42 bis ("V.42 bis").¹ The Plaintiffs contend that all modems which follow the V.42 bis standard infringe upon the Storer Patent.

The Defendants now come before this Court having each filed a pre-discovery motion for summary judgment of non-infringement. For purposes of these motions: 1) the Defendants stipulate that their respective modems operate according to the exact specifications set forth in the V.42 bis standard, and 2) the Plaintiffs concede the absence of literal infringement, but assert that a genuine issue of material fact exists as to whether the accused modems infringe upon the Storer Patent under the doctrine of equivalents.

I. RELEVANT LEGAL STANDARDS

Summary judgment is appropriate where no genuine issue of material fact exists and the moving party is entitled to judgment as matter of law. Fed.R.Civ.P. 56; London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1537 (Fed.Cir.1991). A "genuine" issue of fact is one that a reasonable jury, on the record before the court, could resolve in favor of the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). In making this determination, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in its favor. Eastman Kodak Co. v. Image Technical Servs., Inc., 504 U.S. 451, 456, 112 S.Ct. 2072, 2076, 119 L.Ed.2d 265 (1992) (citing Anderson, 477 U.S. at 255, 106 S.Ct. at 2513).

Resolving a claim of patent infringement is a two-step process. The court must first determine the meaning and scope of the patent claims at issue, a question of law, before the factfinder may resolve whether the accused device infringes the patent claims as construed by the court, a question of fact. Markman v. Westview Instruments, Inc., ___ U.S. ___, ___ - ___, 116 S.Ct. 1384, 1393-96, 134 L.Ed.2d 577 (1996). Although Markman involved literal infringement, the same analytical framework applies — at least for now — to claims brought under the doctrine of equivalents. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., ___ U.S. ___, ___, 117 S.Ct. 1040, 1053, 137 L.Ed.2d 146 (1997) (declining to reach the issue of whether infringement under the doctrine of equivalents is a question for the jury rather than the judge, but noting that "there is ample support in our prior cases" for the Federal Circuit's holding that it is question for the jury).

A. Claim Interpretation

"It is well-settled that, in interpreting an asserted [patent] claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification, and if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.1996) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 [Fed.Cir. 1995]). The terms used in the patent to describe an invention are given their ordinary and customary meaning "unless another meaning is specified or evident from the patent history." Johansson v. Rose Displays, Ltd., 924 F.Supp. 328, 330 (D.Mass. 1996) (citing Transmatic Inc. v. Gulton Indus., 53 F.3d 1270, 1277 [Fed. Cir.1995]; Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1577 [Fed.Cir. 1993]). A court may look to extrinsic evidence to aid its interpretation of a patent claim only if the intrinsic evidence is ambiguous. Vitronics, 90 F.3d at 1583.

B. Infringement Under the Doctrine of Equivalents

In its recent opinion in Warner-Jenkinson Co. v. Hilton Davis Chem. Co., ___ U.S. ____, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997), the Supreme Court attempted to clarify the applicable standard for claims of infringement under the doctrine of equivalents. Historically, courts have applied a "triple identity" test, see id. at ____, 117 S.Ct. at 1054, which looks to whether the accused device "performs substantially the same overall function or work, in substantially the same way, to produce substantially the same overall result as the claimed invention." Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 397 (Fed.Cir.1994) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 [1950]). In Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512 (Fed.Cir. 1995), however, the Federal Circuit held that "evaluation of function, way, and result does not necessarily end the inquiry," id. at 1518, and announced the circular and somewhat amorphous standard that "infringement under the doctrine of equivalents requires proof of insubstantial differences between the claimed and accused products or processes," id. at 1521-22, from the vantage point of a person of ordinary skill in the relevant art, id. at 1519.

The Supreme Court, in reversing the Federal Circuit, held that the "particular linguistic framework used is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?" Warner-Jenkinson, ___ U.S. at ____, 117 S.Ct. at 1054, (emphasis added). In applying this standard, the Supreme Court cautioned, it is important to maintain the focus on the individual elements of the claim, rather than the invention as a whole. Id. at ____, 117 S.Ct. at 1049.

A focus on individual elements and a special vigilance against allowing the concept of equivalence to eliminate completely any such elements should reduce considerably the imprecision of whatever language is used. An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether the substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element.

Id. at ____, 117 S.Ct. at 1054.

II. FACTUAL BACKGROUND

Data compression is the process of reducing the size of the representation of a string of electronic data in order to permit it to be transmitted or stored more efficiently and later to be reconstructed without error. In the context of data communications (e.g., transmissions between modems), data compression saves time and money by reducing the amount of data that needs to be transmitted in order to convey the same amount of information.

A modem is a telecommunications device that permits one computer to transmit data, via a (transmitting) modem and a telephone line, to another computer equipped with a (receiving) modem. Many modems have the capability of compressing data by using shorthand codes to represent longer strings of the data input stream. The transmitting modem (the encoder) sends only the shorthand codes, and the receiving modem (the decoder) then decompresses the data by translating the codes back into their original form (the output stream).

A. Dynamic Dictionary Method of Data Compression

The Storer Patent and the V.42 bis standard both use a "dynamic" or "adaptive" dictionary method of data compression. Under this general approach, which was well-established in the prior art at the time the Storer Patent was awarded,² the transmitting and receiving modems maintain their own internal dictionaries, with each dictionary entry consisting of a string of data and the corresponding shorthand code. The dictionaries are initialized to contain codes only for each single character of the input alphabet (e.g., the letters of the alphabet, the digits from 0 to 9, and other single-character symbols).³ The modems then build up their dictionaries in real time as the data is transmitted. Because the dictionaries are constructed on the fly, they do not waste space on shorthand codes for characters that are not actually transmitted.

To illustrate how this process operates, suppose that the input data stream consists of the characters "THE-DOG-CHASED-THE CAT."...