
    SHARPER IMAGE CORPORATION, a Delaware corporation, and Zenion Industries, Inc., a California corporation, Plaintiffs, v. NEOTEC, INC., a Nevada corporation, Indoor Purification Systems, Inc., a Utah corporation, and Asset Marketing Services, Inc. d/b/a Next Ten, Defendants.
    No. C 03-4426 CW.
    United States District Court, N.D. California.
    June 3, 2005.
    
      Gregory S. Cavallo, Esq., Shopoff & Ca-vado LLP, E. Robert (Bob) Wallach, Law Offices of E. Robert (Bob) Wallach, San Francisco, CA, Alan L. Barry, Noelle J. Day, Amy Gast O’Toole, Bell, Boyd & Lloyd, Chicago, IL, for Plaintiffs.
    Christopher J. Carr, Morrison & Foer-ster LLP, Gordon Kelley Reid, Jr., Richard E. Morton, Borton Petrini & Conron LLP, San Francisco, CA, E. Joseph Dean, Stoel Rives LLP, Portland, OR, Marc T. Rasich, Esq., Stoel Rives LLP, Salt Lake City, UT, Brooks F. Poley, Winthrop & Weinstine P.A., Minneapolis, MN, for Defendants.
   ORDER GRANTING DEFENDANT’S MOTION FOR SUMMARY JUDGMENT

WILKEN, District Judge.

Defendant Indoor Purification Systems, Inc. (IPS) moves for summary adjudication of the claims of Plaintiffs Sharper Image Corporation and Zenion Industries, Inc. for patent infringement, and of Defendant’s counter-claim for declaratory judgment of patent invalidity and non-infringement. Plaintiffs oppose the motion. The matter was heard on May 20, 2005. Having considered the parties’ papers, the evidence cited therein and oral argument on the motion, the Court GRANTS Defendant’s motion for summary judgment.

BACKGROUND

On December 6,1988, Zenion was issued U.S. Patent No. 4,789,801 (’801 patent). Claim 24 of the ’801 patent was not issued until January 14, 2008, after the original ’801 patent was reexamined by the United States Patent and Trademark Office. The ’801 patent discloses technology that purports to reduce the amount of ozone and nitrogen oxide produced by elec-tro-kinetic transducers. Electro-kinetic transducers purportedly convert electrical energy into the fluid flow of air by, for example, using a high voltage generator to charge positively one set of electrodes and to charge negatively another set of electrodes. Plaintiffs claim that air molecules become positively charged by interacting with the positively charged electrodes and are subsequently attracted to the negatively charged electrodes, thus creating an electro-kinetic flow of air.

Plaintiffs apply the technology described in the ’801 patent in their Ionic Breeze Air Purifier product line. Plaintiffs filed their original complaint on September 30, 2003, alleging that Defendants IPS, Neotec, Inc. and Asset Marketing Services, Inc. had infringed the ’801 patent as well as U.S. Patent Nos. 6,163,098 (’098 patent) and 6,176,977 (’977 patent) by making and selling the XJ-2000 ionic air purifier. On June 10, 2004, Plaintiffs filed an amended complaint that did not include Neotec as a defendant. Plaintiffs have since settled this action with Asset Marketing Service, Inc., and IPS and Plaintiffs have settled the claims relating to the ’098 and ’977 patents; thus, the only remaining patent-in-suit is the ’801 patent. The only claim that Plaintiffs assert from the ’801 patent is claim 24. The Court issued its claim construction order in this case on March 21, 2005.

LEGAL STANDARD

Summary judgment is properly granted when no genuine and disputed issues of material fact remain, and when, viewing the evidence most favorably to the non-moving party, the movant is clearly entitled to prevail as a matter of law. Fed. R.Civ.P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Eisenberg v. Ins. Co. of N. Am., 815 F.2d 1285, 1288-89 (9th Cir.1987).

The moving party bears the burden of showing that there is no material factual dispute. Therefore, the court must regard as true the opposing party’s evidence, if supported by affidavits or other evidentiary material. Celotex, 477 U.S. at 324, 106 S.Ct. 2548; Eisenberg, 815 F.2d at 1289. The court must draw all reasonable inferences in favor of the party against whom summary judgment is sought. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Intel Corp. v. Hartford Accident & Indem. Co., 952 F.2d 1551, 1558 (9th Cir.1991).

Material facts which would preclude entry of summary judgment are those which, under applicable substantive law, may af-feet the outcome of the case. The substantive law will identify which facts are material. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

Where the moving party does not bear the burden of proof on an issue at trial, the moving party may discharge its burden of showing that no genuine issue of material fact remains by demonstrating that “there is an absence of evidence to support the nonmoving party’s case.” Celotex, 477 U.S. at 325, 106 S.Ct. 2548. The moving party is not required to produce evidence showing the absence of a material fact on such issues, nor must the moving party support its motion with evidence negating the non-moving party’s claim. Id.; see also Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 885, 110 S.Ct. 3177, 111 L.Ed.2d 695 (1990); Bhan v. NME Hosps., Inc., 929 F.2d 1404, 1409 (9th Cir.1991), cert. denied, 502 U.S. 994, 112 S.Ct. 617, 116 L.Ed.2d 639 (1991). If the moving party shows an absence of evidence to support the non-moving party’s ease, the burden then shifts to the opposing party to produce “specific evidence, through affidavits or admissible discovery material, to show that the dispute exists.” Bhan, 929 F.2d at 1409. A complete failure of proof concerning an essential element of the non-moving party’s case necessarily renders all other facts immaterial. Celotex, 477 U.S. at 323, 106 S.Ct. 2548.

Where the moving party bears the burden of proof on an issue at trial, it must, in order to discharge its burden of showing that no genuine issue of material fact remains, make a prima facie showing in support of its position on that issue. See UA Local 343 v. Nor-Cal Plumbing, Inc., 48 F.3d 1465, 1471 (9th Cir.1994). That is, the moving party must present evidence that, if uncontroverted at trial, would entitle it to prevail on that issue. See id.; see also Int’l Shortstop, Inc. v. Rally’s, Inc., 939 F.2d 1257, 1264-65 (5th Cir.1991). Once it has done so, the non-moving party must set forth specific facts controverting the moving party’s prima facie case. See UA Local 343, 48 F.3d at 1471. The non-moving party’s “burden of contradicting [the moving party’s] evidence is not negligible.” Id. This standard does not change merely because resolution of the relevant issue is “highly fact specific.” See id.

DISCUSSION

I. Invalidity

Defendant contends that claim 24 of the ’801 patent, which was added as a result of the patent reexamination process, is invalid because it broadens the original patent. Defendant maintains that terms used in claim 24 are broader than corresponding terms in claim 19; thus, claim 24 encompasses apparatuses that claim 19 does not.

Claim 24 of the ’801 patent reads, in pertinent part, as follows:

A diode-type electrokinetic transducer comprising:
a first array of ion emitting surfaces;
a second array of ion receiving surfaces

The corresponding language of claim 19, the claim of the original patent most similar to claim 24, is:

An apparatus for moving air comprising:

a first array of electrodes;
a second array of electrodes ...

Specifically, Defendant argues that an apparatus in which the first array contains a single electrode with multiple ion emitting surfaces would not infringe claim 19, but would infringe claim 24.

The parties agree on the applicable case law. Under Title 35 U.S.C. section 305, during the reexamination process, patent owners are permitted to add new claims in order to distinguish the invention as claimed from prior art. However, “[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.” 35 U.S.C. § 305. Whether the scope of a claim has been impermissibly broadened on reexamination is a matter of claim construction, Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1580 (Fed.Cir.1995), and thus a question of law for the Court. Under section 305, “a claim of a reissue application is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent.” In re Freeman, 30 F.3d 1459, 1464 (Fed.Cir.1994). “A claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects.” Id. To overcome the presumption that patents are valid, clear and convincing evidence is required. Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1339 (Fed.Cir.2003).

Here, Defendant argues that Plaintiffs, in using the term “surfaces” in claim 24, impermissibly broadened claim 19, which uses the term “electrodes.” Defendant notes that the Court has previously rejected the parties’ attempts to use the terms “electrodes” and “surfaces” interchangeably. See Claim Constr. Order at 10. Defendant contends that claim 19, which uses the phrase “first array of electrodes,” and thus encompasses only a first array consisting of multiple electrodes, would not encompass an array that included only one electrode with multiple ion emitting surfaces. Conversely, Defendants argue, claim 24 would encompass such an apparatus. Thus, Defendant maintains, under Freeman, claim 24 contains within its scope an apparatus not contained within claim 19.

In evidentiary support of its argument, Defendant points to the XJ-202, which is another in its line of ionic air purifiers, and is the subject of separate litigation between these parties. Defendant maintains that the first array in the XJ-202 is a single electrode with multiple points, or surfaces. This apparatus, argues Defendant, would not infringe claim 19, but, in the other litigation, Plaintiffs are claiming that it infringes claim 24.

Plaintiffs rely upon two arguments that claim 24 does not broaden the ’801 patent. First, Plaintiffs contend that claim 24 is narrower than claim 19 because claim 24 describes a “diode-type electrokinetic transducer,” whereas claim 19 describes only a generic “apparatus.” Thus, according to Plaintiffs, claim 24 does not encompass transducers that are not diode-type, whereas claim 19, because of its broader language, does. Second, Plaintiffs argue that the first array in the XJ-202 actually does fall within the scope of claim 19 because the points on the first array “act as separate electrodes.”

Plaintiffs’ arguments are not persuasive. First, as Defendant notes, it is irrelevant whether claim 24 is narrower than the original claims in some respects. See Freeman, 30 F.3d at 1464. The critical inquiry is whether the newly-added claim is broader in any respect than the original patent. As to Plaintiffs’ second argument, the Freeman test is whether there is any conceivable apparatus that is contained within the scope of claim 24, but not within the original claims of the ’801 patent. Here, Plaintiffs offer no argument or evidence to contradict Defendant’s assertion that an apparatus containing a first array with a single electrode would fall within the scope of claim 24, but not claim 19. Defendant submits the XJ-202 as evidence of just such an apparatus. Plaintiffs do argue that the Court should not consider a product not in suit in assessing the scope of claim 24. Critically, however, Plaintiffs do not, and presumably cannot, argue that the Freeman test has not been satisfied here.

For the foregoing reasons, and notwithstanding Defendant’s burden to show invalidity by clear and convincing evidence, there is no dispute of material fact that claim 24 of the ’801 patent is invalid. See Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881 (Fed.Cir.1998). Defendant is entitled to summary judgment on Plaintiffs’ infringement claim, and to declaratory judgment of patent invalidity.

II. Infringement

Defendant also argues that the XJ-2000 does not, as a matter of law, literally infringe claim 24 of the ’801 patent.

A limitation in claim 24 of the ’801 patent reads, in pertinent part, as follows:

the distance between any two adjacent ion emitting surfaces in the first array being substantially equal to the distance between any two adjacent ion receiving surfaces in said second array ...

In the March 21, 2005 claim construction order, the Court held that, “because claim 24 contemplates one particular ‘distance’ that separates adjacent surfaces ... The Court construes ‘the distance’ to mean ‘the length of space.’ ” Claim Constr. Order at 26-27. In addition, the Court construed the term “any” to mean “each and every,” and the term “adjacent” to mean “next to one another.” Claim Constr. Order at 27-28. Thus, claim 24 encompasses only those apparatuses in which the distance between each and every adjacent surface in the ion emitting array is substantially similar to the distance between each and every surface in the ion receiving array, and in which there is one particular distance separating each and every adjacent surface.

Defendant submits evidence that the XJ-2000’s first array consists of adjacent ion emitting surfaces, which are shaped like pins, that are separated by several distinct distances. The sixteen pins in the first array are organized into two rows and eight columns. The distance between adjacent pins in each row is different than the distance between adjacent pins in each column. And, the rows are each divided in half by a single plastic divider such that there are four columns on each side of the divider. Defendant submits additional evidence that, in the XJ-2000’s second array, the ion receiving surfaces are three plates that are not separated by a single distance. The three plates are positioned parallel to one another, but the two outside plates each curve inward at their ends to meet the middle plate. In short, the distance separating adjacent plates in the second array is different at each point in the curve than it is in the middle.

In response, Plaintiffs argue that the XJ-2000 actually has four first arrays of ion emitting surfaces; each array consists of four pins from a row on one side of the plastic divider. Plaintiffs note that each adjacent pin in these groupings of four is separated by a single distance. In them papers, Plaintiffs did not address Defendant’s evidence that the three surfaces in the second array of ion receiving surfaces are separated by different distances.

Plaintiffs offer no persuasive argument as to why the first array in the accused device, the electrode pins which are all connected to the same power source, should be considered four first arrays. Using Plaintiffs’ reasoning, they would be permitted to define an array as any arbitrary collection of ion emitting surfaces in an apparatus, thereby effectively reading out claim 24’s limitation requiring that the distance between any two adjacent ion emitting surfaces in an array be the same. Moreover, as Defendant notes, Plaintiffs’ current argument contradicts its final infringement contention: “The XJ-2000 includes an arrangement of surfaces for giving off ions. The surfaces consist of two physically separate banks of pin electrodes, each bank defining an array.” Even accepting as true Plaintiffs’ final infringement contention, the XJ-2000’s first array of electrode pins cannot be separated into two distinct groups in which each adjacent pin is separated by a single distance. As Defendant notes, in the two-array scenario, either the sixteen pins are divided into two arrays by the plastic divider, in which case the distance between adjacent pins in the same row is different than the distance between adjacent pins in different rows, or each array consists of one row, in which case the distance between adjacent pins on either side of the plastic divider is different than the distance between the two adjacent pins separated by the plastic divider.

In addition, even if all adjacent electrode pins in the XJ-2000’s first array were separated by a single distance, there is not one single distance separating the electrode plates in the second array. The ends of the two outside plates each curve inward toward the middle plate; thus, as the two outside plates curve inward, the distance between those plates and the adjacent middle plate gets increasingly smaller. Plaintiffs argued for the first time at the May 20, 2005 hearing that the end portions of the two outside electrode plates are not part of the second array. However, Plaintiffs have submitted no evidence to support this argument. There is not one distinct distance separating adjacent ion receiving surfaces in the XJ-2000’s second array.

For the foregoing reasons, the Court rules that, as a matter of law, the XJ-2000 does not literally infringe claim. 24 of the ’801 patent.

III. Doctrine of Equivalents

Defendant also asserts that the XJ-2000 does not infringe the ’801 patent under the doctrine of equivalents.

The doctrine of equivalents generally applies where the differences between an element of the accused product and the asserted claim limitation are “insubstantial to one of ordinary skill in the art.” Searfoss v. Pioneer Consol. Corp., 374 F.3d 1142, 1150 (Fed. Cir.2004). However, the doctrine may not be invoked, and summary judgment of non-infringement is appropriate, where the theory of equivalents “would entirely vitiate a particular claim element.” Id. at 1150-51 (internal citations omitted).

Here, Defendant argues that the XJ-2000 is not equivalent to claim 24. That is true, according to Defendant, because the XJ-2000 cannot infringe the ’801 patent where there is not a single distance between the adjacent surfaces in its first and-second arrays. To rule otherwise would, Defendant notes, impermissibly vitiate claim 24’s distance limitation.

Defendant is correct that a theory of equivalents that did not require a single distance between adjacent surfaces in the first and second arrays would read claim 24’s distance limitation out of the claim. Moreover, Plaintiffs have not, in their papers or at the hearing, asserted any theory of equivalents, nor have they disputed Defendant’s argument on this issue. The accused product does not infringe the ’801 patent under the doctrine of equivalents.

For the foregoing reasons, the Court rules that, as a matter of law, the XJ-2000 does not infringe claim 24 of the ’801 patent under the doctrine of equivalents. Defendant is entitled to summary judgment of patent non-infringement and declaratory judgment of non-infringement.

IV. Time Period for Damages

The parties argue about the appropriate time period for which Plaintiffs may seek infringement damages. However, because the Court rules that (1) claim 24 of the ’801 patent is invalid, and (2) the accused product does not, as a matter of law, infringe the ’801 patent, there is no need to consider this issue.

V. Defendant’s Counterclaims

Defendant has asserted counter-claims for declaratory judgment that (1) Defendant has not infringed the ’801 patent, (2) the ’801 patent is invalid, and (3) the ’801 patent is unenforceable due to prosecution laches. Defendant acknowledges that its counterclaim for unenforceability is moot in light of the Court’s ruling on its summary judgment motion. Thus, this counterclaim for declaratory judgment of non-infringement of the ’801 patent is dismissed without prejudice.

VI. Remaining State Law Claims

Although Plaintiffs’ claim for infringement of the ’801 is summarily adjudicated in favor of Defendant, Plaintiffs have also alleged State law causes of action for (1) false advertising, and (2) unfair competition. These claims are not addressed in Defendant’s motion for summary judgment. However, at the May 20, 2005 hearing, Plaintiffs stipulated to dismiss their State law claims without prejudice to refiling in State court in the event the Court granted Defendant’s summary judgment motion. Thus, Plaintiffs’ claims for false advertising and unfair competition are dismissed without prejudice.

VII. Motion to Amend Case Management Order

On May 6, 2005, Plaintiffs filed a motion to amend the Court’s ease management scheduling order. In light of the Court’s order granting Defendant’s motion for summary judgment, Plaintiffs’ motion to amend the case management order is denied as moot.

CONCLUSION

For the foregoing reasons, Defendant’s motion for summary judgment of patent non-infringement (Docket No. 88) is GRANTED. The Court also GRANTS Defendant summary judgment on its counter-claims for declaratory judgment of patent non-infringement and of patent invalidity. Defendant’s remaining counter-claim and Plaintiffs’ State law claims are dismissed without prejudice. Plaintiffs’ motion to amend the case management order (Docket No. 102) is DENIED as moot.

IT IS SO ORDERED.  