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Communication Systems, Inc. v. Kostelnik: US District Court : PATENT - declatory judgment of non-infringement; prosecution history estoppel regarding equivalents

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
COMMUNICATIONS SYSTEMS,
INC.,
Plaintiff,
vs. MEMORANDUM OPINION AND ORDER
Civil File No. 06-2831 (MJD/SRN)
BRADLEY KOSTELNIK,
Defendant.
J. Thomas Vitt and Bart B. Torvik, Dorsey and Whitney LLP, Counsel for
Plaintiff
Anthony J. Kane and Megan D. Hafner, Terhaar, Archibald, Pfefferle &
Griebel, LLP, and Michael S. Sherrill and Kathryn K. Smith, Sherrill Law
Office, Counsel for Defendants
I. INTRODUCTION
This matter comes before the Court on Plaintiffs Motion for Partial
Summary Judgment of Noninfringement [Docket No. 32]. On October 4,
2007, Defendant filed a brief in opposition to Plaintiffs motion [Docket No.
43]. Plaintiff, in turn, filed its reply brief on October 11, 2007. [Docket
No. 46]. The Court heard oral argument regarding this matter on October
24, 2007, at 9 A.M.
2
II. BACKGROUND
A. The Parties
Plaintiff, Communication Systems, Inc. (CSI), is a Minnesota
corporation located in Hector, Minnesota. Defendant Kostelnik is a
Minnesota resident and an inventor who resides in North Saint Paul,
Minnesota. On January 3, 2006, Kostelnik was granted U.S. Patent No.
6,981,892 ( 892 patent) disclosing a combination telephone and cable
service jack interface.
B. The Patent
The 892 patent discloses a mechanism for selectively toggling a
telephony jack connection between a telephony service provider and a cable
service provider. (223 Pat., Abstract.) The device has two female jack
connections: (1) a port that connects to telephone service from the cable
company; and (2) a port that connects to telephone service from the
telephone company. The device uses a jumper cable mechanism to allow a
user to toggle telephone service between the cable and telephone
companies by plugging in or removing the jumper cable from the second
port. Thus, to obtain telephone service from the telephone company, the
user simply connects the jumper cable to the second port. To obtain
telephone service from the cable company, the jumper cable must be
disconnected from the second port.
3
1. The Claims and the Specification
Claim 1, the sole independent claim of the 892 patent, states:
1. A combination phone and cable jack interface, said interface
comprising:
a base member having a substantially planar rear portion and a
plurality of sidewalls integral therewith and extending
orthogonally therefrom, said base member defining a cavity
therein;
a faceplate having substantially planar front and rear portions, said
faceplate further having a perimeter equal to a perimeter of said
base member for enclosing said cavity, said faceplate further
having a plurality of apertures formed therein for receiving
fastening members therethrough so that said faceplate can be
removably secured to said base member; and
means for selectively toggling a telephony jack connection between a
telephony service provider and a cable service provider so that a
user can obtain telephony service from either service provider
without needing to remove said jack from a wall outlet and
internally rewiring the telephony jack connection, said toggling
means comprising
a first port electrically coupled to a cable service provider
network, said first port for interfacing an external telephony
line with the cable network,
a second port electrically coupled to a telephony service provider
network, said second port for interfacing an external telephony
line with a telephony network, and
a jumper cable electrically coupled to said first port and being
removably connectable to said second port wherein the
external telephony line received telecommunication signals
from the telephony network when said jumper cable is
electrically coupled to said second port and received
telecommunication signals from the cable network when said
jumper cable is removed from said second port.
4
(892 Pat., Col. 4:13-47.) Claims 2 and 3, which disclose further limitations
regarding the jumper cable, are dependent on Claim 1 and incorporate its
limitations.
The 892 patents specification is brief and outlines the combination
telephone and cable service jack interface described above. As background
for the invention, the patentee points out that telephone service is now
available from local telephone companies or cable service providers.
Because the wiring for each type of signal is distinct, phone jack
connections must be rewired to accommodate a new provider whenever a
resident switches from a telephone to a cable service provider. Therefore,
the patentee identifies a need for an easy to use combination telephony
and cable jack interface so that a user can convert from one service provider
to another without continually rewiring existing phone jack outlets. (892
Pat., Col. 1:55-58). The inventions sole preferred embodiment is depicted
in Figures 1 and 2 for 892 patent.
2. The Prosecution History and the Prior Art
When originally submitted to the PTO, the 892 patent disclosed nine
claims: three independent (1, 5, and 8) and six dependent (2, 3, 4, 6, 7 and
9) claims. For the purposes of resolving this motion, it is only necessary to
recite the original versions of Claims 1 and 2:
5
1. A combination phone and cable jack interface, said interface
comprising:
a base member having a substantially planar rear portion and a
plurality of sidewalls integral therewith and extending orthogonally
therefrom, said base member defining a cavity therein;
a faceplate having substantially planar front and rear portions, said
faceplate further having a perimeter equal to a perimeter of said base
member for enclosing said cavity, said faceplate further having a plurality
of apertures formed therein for receiving fastening members therethrough
so that said faceplate can be removably secured to said base member; and
means for selectively toggling a telephony jack connection between a
telephony service provider and a cable service provider so that a user can
obtain telephony service from either service provider without needing to
remove said jack from a wall outlet and internally rewiring the telephony
jack connection, said toggling means comprising
2. The interface of claim 1, wherein said toggling means comprises:
a first port electrically coupled to a cable service provider network,
said first port for interfacing an external telephony line with the cable
network,
a second port electrically coupled to a telephony service provider
network, said second port for interfacing an external telephony line with a
telephony network, and
a jumper cable electrically coupled to said first port and being
removably connectable to said second port wherein the external telephony
line received telecommunication signals from the telephony network when
said jumper cable is electrically coupled to said second port and received
telecommunication signals from the cable network when said jumper cable
is removed from said second port.
(U.S. Pat. App. Serial No. 10/855,455; Ex. 2 to Torvik Dec. at 14.)
On March 18, 2005, the Examiner rejected all nine claims of the
application. Application Claim 1 was rejected as anticipated by prior art,
6
specifically United States Patent No. 6,222,125 (the Pritchard patent),
pursuant to 35 U.S.C. 102(b). (March 18, 2005 Office Action, U.S. Pat.
App. Serial No. 10/855,455, 10; Ex. 2 to Torvik Dec. at 32-33.)
Application Claim 2 was rejected for failure to comply with the enablement
requirement of 35 U.S.C. 112. (Id. 8.)
In regard to Application Claim 1s rejection for anticipation, the
Examiner noted that the Pritchard patent disclosed a jack interface for
receiving telecommunication signals from either cable or telephony
networks that included all the elements disclosed by Defendant in
Application Claim 1. (Id. 10.) Specifically, the Examiner noted that:
it is inherent [in the Pritchard patent] that one jack port can be
coupled to the cable network and the other jack port can be
coupled to the telephony network such that a user can
selectively toggle between the cable network and the telephony
network without needing to remove [either jack] from a wall
outlet and internally rewiring the telephony jack connection.
(Id.) In regard to Application Claim 2, because the present specification
does not explain fully how many external telephony lines are being used
and the drawings do not show the external telephony line engaging the
second port, the Examiner was unable to see the purpose of the two
separate ports and the jumper cable. (Id. 8.)
On May 5, 2005, Defendant submitted an amendment in response to
the March 18, 2005 Office Action. With respect to Application Claim 1,
7
Defendant attempted to distinguish the Pritchard patent by noting that it
allowed toggling between the telephone and cable company lines only in
the room in which it is situated, whereas the present invention allows
either cable phone service and telephone service to provided in all rooms
without changing the outlets of each room. (May 5, 2005 Amendment,
U.S Pat. App. Serial No. 10/855,455, Remarks/Arguments; Ex. 2 to Torvik
Dec. at 49-50.) To rescue Claim 2, Defendant argued that it was enabled.
According to Defendant, the first port 21, which is electrically connected to
all the jacks in a residence, is hard wired to the cable network. (Id.) The
second port 24 is hard wired to the telephony network, and when the
jumper cable is coupled to the second port 24, telephony network service
will then extend to all jacks in the house. (Id.)
In an Office Action dated May 27, 2005, the Examiner rejected
Defendants arguments. (May 23, 2007 Office Action, U.S. Pat. App. Serial
No. 10/855,455; Ex. 2 to Torvik Dec at 56 et seq.) With respect to Claim 1,
the Examiner repeated that Claim 1 was anticipated by Pritchard. (Id. 6.)
With respect to Defendants argument that his invention differs from the
Pritchard patent because it provides either cable phone service or phone
company service to all rooms of a residence without changing the outlets in
each room, the Examiner agreed that the Pritchard patent did not teach this
feature. However, the Examiner found that the applicants patent
8
application did not teach that feature either. According to the Examiner,
the claims failed to recite a structure that interfaces with all rooms of a
residence and the specification did not explain this alleged feature. With
respect to Claim 2, the Examiner objected to it as being dependent on a
rejected base claim, but stated it would be patentable if rewritten in
independent form including all of the limitations of the base claim . . . .
(Id. 7).
In response to the examiners final objections, Defendant rewrote
Application Claim 2 in independent form to include all of Application Claim
1s limitations (now Claim 1), retained Application Claims 3 and 4 (now
Claims 2 and 3), and canceled Application Claims 5 through 9. (U.S. Pat.
App. Serial No. 10/855,455, Ex. 2 to Torvik Dec. at 68.) The patent
application was approved by the examiner as amended, resulting in the
issuance of the 892 patent.
B. The Alleged Infringements
In May 2006, Plaintiff received a letter from Defendants attorney
notifying Plaintiff that at least two of Plaintiffs dual provider switch jack
products potentially infringe the 892 patent. (Compl. 16; Ex. A thereto.)
The letter requested that CSI accept a license in exchange for a reasonable
royalty. (Id.) Defendant extended the offer to license the patent for 60
days from the date of the letter. (Id.)
9
Plaintiffs did not respond to the letter, but filed the present action for
declaratory judgment of noninfringement and invalidity against Defendant.
Defendant counterclaims, alleging that Plaintiff has infringed the 892
patent by manufacturing, importing, offering to sell and/or selling twelve
products that are covered by Claim 1 of the patent. (Amd. Ans. and
Countercl. 3.) Defendant claims infringement by the doctrine of
equivalency. Plaintiff argues that prosecution history estoppel precludes
Defendants infringement claims. The Court agrees with Plaintiff for the
reasons stated below.
III. LEGAL STANDARD
The doctrine of equivalents allows a finding of infringement when an
accused product is the substantial equivalent of the patented invention.
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 23, 29
(1997). The doctrine is not applied to the whole of the invention, but to
the individual claimed elements. Id. at 29. Intent is not considered when
applying the doctrine of equivalents. Id. at 36. The test for whether an
element in the accused product is equivalent to a claimed element is
whether the differences between the two are insubstantial to one of
ordinary skill in the art. KCJ Corp. v. Kinetic Concepts, 223 F.3d 1351,
1359 (Fed. Cir. 2000).
10
A patent owner can be prevented from benefiting from the doctrine
of equivalents due to prosecution history estoppelthat is, something an
applicant gave up or amended during the patents prosecution to obtain
allowance of the patent cannot be recaptured by the doctrine of
equivalents. Warner-Jenkinson, 520 U.S. at 30, 41. The Supreme Court
has stated:
When . . . the patentee originally claimed the subject matter
alleged to infringe but then narrowed the claim in response to
a rejection, he may not argue that the surrendered territory
comprised unforeseen subject matter that should be deemed
equivalent to the literal claims of the issued patent.
Festo Corp. v. Shoketsu, 535 U.S. 722, 733-34 (2002) (Festo I). Thus,
the first question the Court must address is whether the amendment in
question narrowed the claim.
If the amendment is a narrowing amendment, then the Court must
undertake a second inquiry. Festo Corp. v. Shoketsu, 344 F.3d 1359, 1366
(Fed. Cir. 2003) (Festo II). Because a narrowing amendment made for
any reason related to the statutory conditions and requirements for
patentability will create prosecution history estoppel as to the amended
claim element, Festo I at 736, the Court must determine whether the
amendment was substantial and related to patentability. Festo II at 1366-
67. If the prosecution history does not provide a reason for the
amendment, it is presumed that the amendment was related to
11
patentability and estoppel will apply. Warner-Jenkinson, 520 U.S. at 33,
41. The patent owner must be allowed an opportunity to rebut the Warner-
Jenkinson presumption that prosecution history estoppel applies. Sextant
Avonique, S.A. v. Analog Devices Inc., 172 F.3d 817, 828 (Fed. Cir. 1999).
The burden falls on the patent owner to show another reason for the
amendment. Warner-Jenkinson, 520 U.S. at 33. The Court decides, as a
matter of law and from the viewpoint of one ordinarily skilled in the art, if
the purported reason can overcome prosecution history estoppel. Bai v. L &
L Wings Inc., 160 F.3d 1350, 1354 (1998); Warner-Jenkinson, 520 U.S. at
33.
If the patent holder overcomes the Warner-Jenkinson presumption,
then the Court moves to a third and final question regarding the scope of
the subject matter surrendered by the narrowing amendment. Festo II,
344 F.3d at 1367. In this respect, the Supreme Court imposed a further
presumption that the patentee has surrendered all territory between the
original claim limitation and the amended claim limitation. Festo I, 535
U.S. at 740. There are three ways in which the patentee may overcome the
Festo presumption. The patentee must show that: (1) the alleged
equivalent would have been unforeseeable at the time of the narrowing
amendment; (2) the rationale underlying the narrowing amendment bore
no more than a tangential relationship to the equivalent in question; or (3)
12
another reason suggests that one skilled in the art could not reasonably
have been expected to draft a claim literally encompassing the alleged
equivalent at the time of the narrowing amendment. Festo II, 344 F.3d at
1368.
The tangential relation exception to prosecution history estoppel is
very narrow. Cross Med. Prods. v. Medtronic, 480 F.3d 1335, 1342 (Fed.
Cir. 2007). This inquiry centers on whether the reason for the narrowing
amendment was peripheral, or not directly relevant, to the alleged
equivalent. Festo II, 344 F.3d at 1369 (citations omitted). The Courts
focus should be on the patentees objectively apparent reason for the
narrowing amendment, which the Court must be able to discern from the
prosecution history record. Id.
IV. DISCUSSION
Defendant alleges that all twelve of CSIs products infringe the 892
patent. However, none of the accused products include a jumper cable for
toggling between cable and phone company service: all of them use a
switch to accomplish this instead. Thus, Defendant argues for infringement
using the doctrine of equivalents. According to Defendant, the switch in
each of the accused products is substantially equivalent to the jumper cable
recited in his patent.
13
Without conceding this point, but for the sake of arguing their
summary judgment motion, Plaintiffs assume that the switches are
substantial equivalents of the required jumper cables. However, Plaintiffs
allege that the prosecution history estops Defendant from asserting the
doctrine of equivalence. Because the jumper cable element of Application
Claim 2 was added as part of a narrowing amendment, Plaintiffs argue that
Defendant surrendered his infringement claims on any substantially
equivalent structures.
Defendant concedes that the Festo presumption of prosecution
history estoppel applies, because Claim 2 was amended to avoid prior art.
Festo I, 535 U.S. at 735 (citing Warner-Jenkinson, 520 U.S. at 30-32). To
overcome Festos rebuttable presumption, Defendant argues that the
rationale underlying the narrowing amendment was no more than
tangentially related to the jumper cable claim limitation. Thus, to
determine whether the doctrine of equivalents is applicable, the Court must
examine whether the rationale underlying Defendants narrowing
amendment was peripheral to the alleged equivalenthere, the switch
mechanism.
Defendants argues that the Pritchard patent does not teach a
removable electrical connection between Port 1 and Port 2. Therefore,
Defendant claims that the rationale underlying Defendants narrowing
14
amendment was to establish the removable electrical connection between
the first and second port. According to Defendant, the jumper cable is
simply a specific mechanism for making this electrical connection and is
therefore peripheral, or not directly relevant, to the amendments
underlying rationale. In support of this argument, Defendant relies on the
Federal Circuits opinion Insituform Technologies, Inc. v. Cat Contracting,
Inc., 385 F.3d 1360 (Fed. Cir. 2004).
The Insituform patent involved a method for repairing damaged
underground pipe without removing it from the ground. The invention
uses a cup connected to a vacuum source to draw resin toward a series of
windows cut in the impermeable outer layer of a tube liner that is inserted
into the pipe while still underground. As the resin nears each window, the
cup and the vacuum source are removed and that window is sealed. The
process is repeated until the entire inner layer of the tube liner is
impregnated with resin. Id. at 1362-63.
In Insituform, the first four application claims consisted of an
independent claim, claim 1, and three dependent claims, claims 2-4. Id. at
1368-69. All the claims were rejected by the patent examiner based on
anticipation by prior art. Id. at 1369. The prior art disclosed both the use
of a continuous vacuum and the creation of that vacuum from only a single
vacuum source at the far end of the tube opposite the resin source. Id. To
15
overcome the prior art rejection, the patentee amended Claim 1 to include
the limitations of the original dependent claims 2-4, explaining that the
problem with the prior art was that it required an exceptionally large
suction cup when long tube lengths were involved, while placing the cup
close to the resin permits the use of a smaller compressor. Id. The
patentees original claim 1 covered use of both single and multiple cups.
After amendment, the claim covered only a single cup process. Id. at 1368.
The Insituform plaintiff accused the defendants products of
infringement by equivalent. The accused products utilized multiple cups.
The defendant argued that its multiple cup process fell squarely within the
territory surrendered by the narrowing amendment, id., and thus
precluded the plaintiffs infringement argument under Festo I. The Court
held that the plaintiff overcame the Festo presumption because the
rationale underlying the narrowing amendment was no more than
tangentially related to the equivalent in questionthe issue was placement
of the cups, not the number of cups used. Insituform, 386 F.3d at 1370-71.
Defendant avers that prosecution history estoppel does not apply here, on
the same rationale relied on in Insituform.
Plaintiff argues that the tangential relation exception to the Festo
presumption does not apply, because: (1) no reason for the narrowing
amendment is clear from the prosecution history; (2) the only discernable
16
rationale for the amendment is directly related to the alleged equivalent;
and (3) the switch mechanism for toggling between cable and phone
company service is directly related to even Defendants proffered rationale.
First, Plaintiff argues that Defendant did not specify a reason for
rewriting Amendment Claim 2 to include all of the limitations of
independent Amendment Claim 1. See Festo II, 1369-70 (holding that
whether the patentee has overcome the presumption of surrender on the
ground of tangential relation is determined by the court on the basis of the
public record); Biagro W. Sales, Inc. v. Grow More, Inc., 423 F.3d 1296,
1306 (Fed. Cir. 2005) (holding that since the prosecution history shows no
reason for adding [the amendment], [the patentee] cannot claim that the
rationale for the amendment was merely tangential. While, as Plaintiff
notes, it is true that Defendants Remarks/Arguments that accompanied
the amendment in question provide no indication of Defendants rationale,
the Court may consider the entire prosecution history to discern the
rationale for the amendment.
Plaintiff argues, then, that the only discernable rationale for the
amendment, based on the entire series of communications between the
PTO and Defendant, is that Defendant narrowed the patent to describe with
particularity the means for selective toggling in light of the prior art.
Plaintiff asserts that the switch mechanism present on its accused
17
productsthe alleged equivalent to their jumper cable mechanismis
directly relevant to even Defendants proposed rationale for the narrowing
amendment. In addition, Plaintiff points out that the Federal Circuit has
limited Insituform to circumstances where: (1) the applicant made a clear
statement during prosecution explaining the rationale for the amendment;
and (2) the alleged equivalent can be categorically distinguished from that
rationale. See Cross Med. Prods. v. Medtronic, 480 F.3d at 1342, 1346-47
(Rader, J., concurring).
Defendant concedes that the reason for the amendment was to
establish the removable electrical connection between the first port and
second port. (Def. Memo. in Opp. at 15.). Defendant further
acknowledges that the jumper cable IS the specific mechanism for making
that electrical connection, but then argues that the specific mechanism used
to achieve the removable electrical connection is a tangential issue. In
other words, the existence of a removable electrical connection was enough
to distinguish the patent from the prior art. In Defendants view, the
specific nature of the connection is irrelevant.
Defendants arguments are insufficient to overcome the Festo
presumption that he surrendered all means for selective toggling when he
narrowed Claim 2. First, neither parties rationale is objectively apparent
18
from the prosecution history, Festo II, 344 F.3d at 1369, and the Court
could find for Plaintiff on this basis alone.
Second, even if the controlling case law allowed the Court to attempt
to divine a rationale for the amendment from a largely silent record, the
result would be the same. It appears the examiner determined that Claim 1
would be distinguishable from the prior art if it explicitly incorporated the
additional limitations of Application Claim 2a first port, a second port,
and a jumper cable. The amendment distinguishes the Pritchard reference
by narrowing the mechanismthe removable electrical connectionused
for selective toggling between phone service providers to a device
consisting of two ports and a jumper cable. The jumper cable and its
alleged equivalent (the switch) can hardly be considered a tangential
matter.
Defendant bears the burden of rebutting the presumption that he has
not surrendered the particular equivalent in question. Festo II, 344 F.3d at
1368 (citing Festo I, 535 U.S. at 741). Defendant has not met this burden;
therefore, the principle of prosecution history estoppel bars Defendant from
claiming infringement by equivalency in regard to the twelve accused
products.
19
Accordingly, based upon the files, records, and proceedings herein, IT
IS HEREBY ORDERED THAT:
1. Plaintiffs Motion for Partial Summary Judgment of
Noninfringement [Docket No. 32] is GRANTED.
Dated: November 20, 2007 BY THE COURT:
S / Michael J. Davis
The Honorable Michael J. Davis
United States District Court Judge
 

 
 
 

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