Summary Judgment for non-infringement is granted and granted-in-part on validity
Intermec Technologies Corp. v. Palm Inc., Civ. No.07-272B-SLR, September 14, 2010.
Robinson, J. Plaintiff’s motion for summary judgment on infringement on the ‘678 patent is denied. Defendant’s motion for summary judgment for non-infringement of the Intermec patents is granted. Plaintiff’s motion for partial summary judgment of validity of the System patents is granted-in-part. Plaintiff’s motion for summary judgment of infringement and validity of the Terminal patents is granted-in part and Defendant’s motion for summary judgment of indefiniteness of certain claims on the ‘678 and 499 patents is granted-in-part.
Plaintiff filed infringement this action on two sets of patents (the “System patents” and the “Terminal patents” collectively the “Intermec patents”). The court considers several cross motions for summary and partial summary judgment on infringement and invalidity. The Intermec patents relate to data capture systems, data capture terminals, and bar code readers. Plaintiff accuses two groups of defendant’s products of infringing the Intermec patents: Palm's Treo 750, Treo 700w, and 700wx products, based on Microsoft's Windows Mobile ™ operating system and Palm's Treo Centro, Treo 680, Treo 700p and Treo 755p products, based on the Palm Operating System ™ The cross motions on infringement are largely premised on differing claim constructions of the key limitations which the court finds to be dispositive. Applying the construed terms, the court finds that there is no evidence of direct infringement. After reviewing the evidence adduced, the court grants in part plaintiff’s motions for partial summary judgment on the validity of both the System and Terminal patents. As to the ‘678 patent, the court finds that the terms are ambiguous and therefore the claims are invalid as indefinite but finds the ‘499 patent not invalid as indefinite. Defendant has asserted that eight prior art references anticipate one or more claims of the System patents. Plaintiff’s motion as to no anticipation of the System patents is granted as to Billings Sojka, Danielson and Rhoades. Plaintiff’s motion is also granted as to no anticipation of certain claims of the ‘678, ‘645 and the ‘499 patents by Delaney and Helferich. Similarly, defendant has asserted six prior art references that anticipate the Terminal patents. Plaintiff argues that given proper claim construction, no question of fact remains and it is entitled to summary judgment of validity. Plaintiff’s motion as to no anticipation of the Terminal Patents is granted-in-part with respect to the Federal Express Tracker, Mizzi, Gombrich ‘716 and Culp and as to certain claims of the ‘971 patent by Crossman. Defendant’s motion that certain claims of the ‘499 patent are invalid for violation of the best mode requirement, lack of enablement or inadequate written description is denied. Next plaintiff moves for partial summary judgment on defendant’s inequitable conduct defense with respect to the System patents. Defendant asserts that two of the inventors of the System patents as well as plaintiff’s attorneys were aware of certain prior art. Defendant has failed to produce sufficient evidence of intent to deceive. Therefore plaintiff’s motion is granted. Plaintiff’s motion for summary judgment as to defendant’s inequitable conduct defense regarding the Terminal patents is also granted.
Finally, plaintiff moves for summary judgment that the Terminal patents are not unenforceable for failure to join inventors. The court is unable to find support for defendant’s proposition that mere failure to name a co-inventor renders a patent unenforceable.
