INFINITY COMPUTER PRODUCTS, INC. v. OKI DATA AMERICAS, INC., 1:18-cv-00463

Background

Infinity sued Oki Data alleging infringement of four patents (U.S. Pat. Nos. 6,894,811; 7,489,423; 8,040,574; 8,294,915) concerning use of fax machines as printers/scanners.
Oki Data moved for summary judgment that the asserted patents are invalid as anticipated by two Oki Data products (DOC-IT3000 and DOC-IT4000), which were released in 1992 (prior to the patents' 1994 priority date).
Infinity's discovery/infringement contentions listed 104 accused products and (multiple times) identified the DOC-IT models as accused products.
Infinity says listing the DOC-IT models was an inadvertent mistake and has offered expert evidence that the DOC-IT models do not meet all claim limitations.
Oki Data argues those admissions suffice to show anticipation because the DOC-IT models are prior art and were accused of infringement.
The Court denied summary judgment, accepting Infinity’s characterization of the DOC-IT accusation as inadvertent, finding no evidence of deliberate admission or prejudice to Oki Data, and noting disputed factual issues on claim limitations.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether DOC-IT models anticipate the asserted claims	The DOC-IT accusation was inadvertent; DOC-IT in fact does not meet all claim limitations (expert testimony)	DOC-IT models are prior art and Infinity’s repeated accusation admits DOC-IT practices every claim element, proving anticipation	Denied summary judgment — factual disputes and inadvertent nature of accusation preclude treating it as conclusive admission
Whether plaintiff’s accusation operates as a binding judicial/admissions estoppel	The accusations were an error, inadvertent, and made among 104 accused products; should be allowed to withdraw	The multiple accusations constitute deliberate admissions that should be treated as binding	Court accepted inadvertence, exercised discretion not to treat the statements as conclusive admissions
Whether anticipation can be decided on summary judgment here	There are genuine disputes of material fact, including expert disagreement on claim elements	Anticipation is a question of fact but may be decided on summary judgment when no genuine dispute exists	Because disputes exist over whether DOC-IT meets all claim limitations, anticipation not appropriate for summary disposition
Whether defendant suffered prejudice from the mistaken accusation sufficient to bar withdrawal	Infinity’s mistake occurred early, before core technical production; no evidence of detrimental reliance by Oki Data	Oki Data argued it relied on the accusation and that it forms basis for invalidating patents	Court found no evidence of detrimental reliance and that invalidating patents would be disproportionate relief

Key Cases Cited

Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (Sup. Ct. 1986) (summary judgment burden and standards)
Anderson v. Liberty Lobby, 477 U.S. 242 (Sup. Ct. 1986) (genuine dispute and "scintilla" standard)
Celotex Corp. v. Catrett, 477 U.S. 317 (Sup. Ct. 1986) (summary judgment when nonmovant lacks evidence on essential element)
Reeves v. Sanderson Plumbing Prods., 530 U.S. 133 (Sup. Ct. 2000) (drawing inferences for nonmovant; credibility and weighing limits)
In re Gleave, 560 F.3d 1331 (Fed. Cir. 2009) (anticipation requires every claim limitation in single reference)
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) (anticipation requires limitations arranged as claimed)
Encyclopedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345 (Fed. Cir. 2010) (anticipation is question of fact but may be resolved on summary judgment when no dispute)
Evans Cooling Sys., Inc. v. GMC, 125 F.3d 1448 (Fed. Cir. 1997) (prior-art product accusation treated as basis for suit when intentional)
Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363 (Fed. Cir. 2000) (accusing prior-art products can be sole basis of infringement claim)
Heritage Bank v. Redcom Labs., Inc., 250 F.3d 319 (5th Cir. 2001) (admissions must be deliberate, clear, and unequivocal to be binding)