541 F. App'x 964
Fed. Cir.2013Background
- MGE sued Zund alleging infringement of U.S. Pat. Nos. 6,619,168 and 6,672,187, patents covering automatic adjustment of graphics cutters by sensing registration marks or sheet reference features.
- The district court issued a Markman claim construction, then later revised its construction to allow that initial-position marks and reference features need not be unique or visually distinguishable from ordinary registration marks.
- MGE moved for summary judgment of infringement; Zund moved for summary judgment of non-infringement and invalidity (anticipation, on-sale bar, indefiniteness); the district court granted summary judgment of infringement to MGE and denied Zund’s invalidity motion.
- After the summary judgment order, the district court concluded that it had effectively granted summary judgment of no-invalidity to MGE, barred Zund from further invalidity discovery or presenting new prior-art evidence at trial, and entered an injunction against Zund.
- Zund appealed the injunction; the Federal Circuit held it had jurisdiction over the injunction appeal, affirmed claim construction and infringement, but vacated the district court’s sua sponte ruling that no invalidity existed and vacated the injunction, remanding for further proceedings on invalidity.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of “initial-position/orientation-determining marks” (’168) and “reference features” (’187) | Claims and specification support MGE’s broader constructions (need not be unique) | Zund: terms require unique/physical features distinct from ordinary marks | Affirmed district court’s revised constructions — neither term requires uniqueness or excludes preprinted marks |
| Grant of summary judgment of infringement | MGE: accused systems meet the claims under the court’s revised constructions | Zund: noninfringement because systems use ordinary registration marks, not unique initial marks or reference features | Affirmed summary judgment of infringement to MGE |
| Preclusion of invalidity discovery and sua sponte grant of no-invalidity | MGE: summary judgment and related orders resolved invalidity; estoppel from inter partes reexamination limits Zund | Zund: denial of its invalidity motion did not preclude further evidence; new evidence (videos, purchase receipts) could show earlier prior art | Vacated the district court’s sua sponte entry of judgment on invalidity and remanded for further proceedings and discovery; district court erred procedurally in depriving Zund of notice and opportunity |
| Jurisdiction to hear appeal | MGE: appeal from summary judgment may be premature due to pending Rule 60(b) motion | Zund: appeal from injunction is immediately appealable under 28 U.S.C. §1292(a)(1) | Court had jurisdiction over the injunction appeal; appeal of liability order not before the court, but injunction appeal sufficed to decide same issues |
Key Cases Cited
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir.) (claim construction reviewed de novo)
- Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309 (Fed. Cir.) (summary judgment review standard)
- Pandrol, USA v. Airboss Ry Prods., Inc., 320 F.3d 1354 (Fed. Cir.) (validity and infringement are distinct; denial of infringement SJ does not waive invalidity defense)
- Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir.) (court may not grant SJ for patentee based solely on denial of alleged infringer’s SJ)
- Fin Control Sys. Pty Ltd. v. OAM, 265 F.3d 1311 (Fed. Cir.) (sua sponte SJ improper without adequate notice/opportunity)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S.) (summary judgment standards and court’s power to act sua sponte with notice)