• ALJ Rogers Rules On Motion For Summary Determination In Certain Printing And Imaging Devices (337-TA-690)
  • July 6, 2010 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On April 9, 2010, ALJ Robert K. Rogers issued Order No. 21 in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690).  In the Order, ALJ Rogers denied Respondent’s motion for summary determination of non-infringement of claims not asserted in expert reports.

    By way of background, the Complainants in this investigation are Ricoh Co., Ltd., Ricoh Americas Corp., and Ricoh Electronics, Inc. (collectively “Ricoh”); and the Respondents are Oki Data Corp. and Oki Data Americas, Inc (collectively “Oki Data”).  The investigation was instituted on October 20, 2010 based on Ricoh’s complaint of September 18, 2010.

    Oki Data based its request for summary determination on:  1) Ricoh’s alleged failure to proffer any expert analysis to support some claims of literal infringement, and infringement under the doctrine of equivalents; and 2)  alleged insufficiency of Ricoh’s proffered expert witnesses analyses of means-plus-function language and infringement under the doctrine of equivalents to support other claims of infringement.

    According to the Order, Oki Data’s motion for summary determination alleging Ricoh’s failure to offer any analyses in support of alleged literal infringement and infringement under the doctrine of equivalents was rendered moot by Ricoh’s voluntary withdrawal of the relevant claims, as set forth in Order No. 19.

    The Order denied Oki Data’s motion for summary determination of non-infringement of Claims 18¿21 of the ‘343 patent, alleging insufficient analysis of infringement under the doctrine of equivalents, because Oki Data’s motion did not comply with Ground Rule 3.3.   Ground Rule 3.3 requires that motions for summary determination include “specific references to supporting declarations, affidavits or other materials.”  Although Oki Data supported its motion with excerpts from Ricoh’s expert witness testimony, ALJ Rogers reasoned that omission of appendices, further describing the expert witness’s infringement analyses, prevented him from reviewing the expert’s analyses and precluded grant of summary determination on Claims 18¿21 of the ‘343 patent.

    The Order also denied Oki Data’s motion for summary determination of non-infringement of Claims 1, and 3¿6 of the ‘866 patent, alleging that Ricoh’s expert witness analysis failed to map the corresponding structure of means-plus-function language to the allegedly infringing products.  While ALJ Rogers agreed that Ricoh’s expert may not have identified the “necessary structure,” he was not persuaded that Ricoh’s witness failed to identify any corresponding structure, as alleged by Oki Data.  Accordingly, ALJ Rogers denied Oki Data’s motion for determination of non-infringement on Claims 1, and 3¿6 of the ‘866 patent because genuine issues of material fact remained as to whether the accused products infringed the asserted claims.

    Finally, the Order denied Oki Data’s motion for summary determination of non-infringement of Claims 1 and 7 of the ‘771 patent, alleging that Ricoh’s expert failed to map the corresponding structure of means-plus-function language to the allegedly infringing products.  ALJ Rogers ruled that Oki Data was not entitled to summary determination, independent of whether Ricoh’s expert analyses were deficient in the ways alleged by Oki Data, because Ricoh’s expert testimony at trial would  not be limited to that existing before trial.  Further, ALJ Rogers cited Federal Circuit decisions for the proposition that the “particularized testimony” required to prove infringement under the doctrine of equivalents does not necessarily have to be “expert” testimony.  See Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004); see also AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1329 (Fed. Cir. 2002).  Accordingly, ALJ Rogers denied Oki Data’s motion for determination of non-infringement on Claims 1, and 7 of the ‘771 patent because genuine issues of material fact remained as to whether the accused products infringed the asserted claims.