Vitronics v. Conceptronic CV-91-696-L 03/13/95

THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Vitronics Corporation

v. #C-91-696-L

Conceptronic, Inc.

ORDER

Analogous to the complexities typical to patent infringement

issues, since inception this case has followed a long and tumult­

uous course.

During the course of a hearing on December 7, 1994, counsel

for Conceptronic, Inc. indicated to the court concern over a

motion for clarification, submitted by the plaintiff, repre­

senting that the defendant had not directly infringed the '502

patent. The defendant incorporated the concern into an oral

motion for summary judgment. The court now considers whether the

representation by the plaintiff warrants judgment as a matter of

law. Plaintiff has filed an objection to defendant's oral motion

for summary judgment (Doc. 155) .

BACKGROUND

Plaintiff is a Massachusetts corporation with its principal

place of business in Newmarket, New Hampshire. Defendant is a Delaware corporation with its principal place of business in

Exeter, New Hampshire. Defendant is engaged in the design, manu­

facture and marketing of proprietary eguipment used to assemble

and repair surface mounted printed circuit boards.

Plaintiff was issued United States Patent Nos. 4,654,502

('502 patent) and 4,833,301 ('301 patent) for inventions entitled

"Method for Reflow Soldering of Surface Mounted Devices to

Printed Circuit Boards" and "Multi-Zone Thermal Process System

Utilizing Non-Focused Infrared Panel Emitters." The '502 patent

relates to a process for reflow soldering of surface mounted

devices to printed circuit boards. The '301 patent relates to

the apparatus used in the reflow soldering process.

Plaintiff commenced this patent infringement action on

November 26, 1991, charging infringement of the two patents.

Plaintiff claims that defendant has actively infringed on these

patents by making, using and selling without license from plain­

tiff, products which incorporate the inventions claimed in the

patents.

In attempting to narrow the issues for trial, at a hearing

conducted on December 7, 1994 defendant brought to the court's

attention a statement by the plaintiff, within a motion for

clarification, purporting to clarify the scope of infringement

liability. Within the motion for clarification, plaintiff stated

2 that

The claims of the '502 patent, one of the two patents alleged to be infringed, are method claims which are directly infringed not by Conceptronic but by its customer, the users of the ovens.

(Exhibit B) (emphasis added)

According to defendant, if the plaintiff contends that it is

the defendant's customers, and not the defendant, who violate

plaintiff's patent, then summary judgment is appropriate to

remove from trial the issue of direct infringement of the '502

patent by defendant Conceptronic. Further, defendant maintains

that even though Vitronics may now assert the exact opposite

position, namely that Conceptronic is or has directly infringed

the '502 patent, plaintiff should nonetheless be held to its

prior representation that Conceptronics has not directly in­

fringed the '502 patent. Fundamental to its reguest for summary

judgment, the defendant is concerned that Vitronics should not be

allowed to make a representation to the court and then argue, at

some later date, that the representation is or should be with­

drawn .

DISCUSSION

Summary judgment under Fed. R. Civ. P. 56(c) is proper only

if, viewing the record in the light most favorable to the non-

3 moving party, the documents on file disclose no genuine issue of

material fact and the moving party is entitled to judgment as a

matter of law. Jorge Rivera Surillo & Co. v. Falconer Glass

Indus.,

(1st Cir. 1994). "Only disputes over

facts that might affect the outcome of the suit" are material.

Anderson v. Liberty Lobby, Inc.,

(1986) . A

dispute over a material fact is genuine "if the evidence is such

that a reasonable jury could return a verdict for the non-moving

party." .Id.; Oliver v. Digital Equipment Corp.,

(1st Cir. 1988). The moving party initially must "demon­

strate the absence of a genuine issue of material fact." Celotex

Corp. v. Catrett,

(1986). Once the moving

party has made the reguired showing, the adverse party must "go

beyond the pleadings" and designate specific facts to demonstrate

the existence of a genuine issue for trial. Fed. R. Civ. P. 56

(c); Oliver,

.

The purpose of summary judgment is "to pierce the boiler­

plate of the pleadings and assay the parties' proof in order to

determine whether trial is actually reguired." Wynne v. Tufts

University School of Medicine,

(1st Cir. 1992);

Snow v. Harnischfeger Corp.,

(1st Cir. 1993).

In deciding on a motion for summary judgment, a "court must view

the record in the light most favorable to the nonmovant, accord­

4 ing the nonmovant all beneficial inferences discernable from the

evidence." Snow,

; Mesnick v. General Elec. Co . ,

(1st Cir. 1991) (citations omitted).

Moreover,

[a]lthough the same standard for summary judgment is used in patent cases as in other cases, the standard is somewhat more difficult to meet in patent cases, because not only must no genuine issues of material fact exist, but to grant summary judgment properly, the trial court must in addition construe the claim correctly and conclude that it would be not possible for the trier of fact to find infringement.

Safe Flight Instrument Corp. v. Sundstrand Data Control, Inc.,

(D.Del 1989), aff'd without opinion,

(Fed. Cir.), cert, denied,

(1990).

In light of the heightened standard enunciated for patent

cases, this court will approach a motion for summary judgment

cautiously. "Because . . . [patent] infringement is itself a

fact issue, a district court must approach a motion for summary

judgment of infringement or non-infringement with a care pro­

portioned to the likelihood of its being inappropriate." SRI

Int'l v. Matsushita Elec. Corp.,

(Fed. Cir.

1985) (citations omitted); see also Gillette Co. v. Warner-

Lambert C o .,

(D.Mass. 1988) (summary judgment

usually inappropriate in fact-driven patent infringement cases) ;

Precision Metal Fabricators, Inc. v. Jetstream Systems, Co., Div.

of Oerlikon Motch Corp.,

(N.D. Cal. 1988)

("Summary judgment is rarely appropriate in patent infringement

5 actions").

With these fundamental principles in mind, the court is

content that plaintiff's complaint and the compiled record

fulfill the threshold criteria of alleging material facts and

genuine issues. See Connecticut General Life Ins. Co. v. Uni­

versal Ins. C o .,

, 622 (1st Cir. 1988).Therefore,

the court opines defendant's motion for summary judgment must be

denied.

Apposite to the above conclusion, in the complaint for

patent infringement, the plaintiff expresses that

[o]n March 31, 1987, United States Patent No. 4,654,502, disclosing and claiming an invention entitled "METHOD FOR REFLOW SOLDERING OF SURFACE MOUNTED DEVICES TO PRINTED CIRCUIT BOARDS" (the '502 patent) was duly and legally issued to plaintiff Vitronics Corporation, as assignee from the name sole inventor Edward J. Furtek. By virtue of said assignment and issuance Vitronics is the sole owner of

. . . . •k -k k

Defendant Conceptronics has actively infringed and is believed to be actively infringing the '502 patent . . ., in violation of 35 U.S.C § 271(a), by making, using and selling, without license from Vitronics, products which incorporate . . . the normal and intended oper­ ation of which employ the invention claimed in the '502 patent.

Doc. 1.

Further, in addressing defendant's contention, concerning

infringement, at the hearing conducted before this court on

6 December 1 , 1994, plaintiff's attorney expressed that

[t]he damages, however, in this case would come from the extensive use of the ovens by the customers and that's what we're talking about. We are not conceding you (defendant) have never used the oven . . . .

Additionally and consistent with the complaint and the

representations made by plaintiff's attorney on December 7, 1994,

within its response to defendant's motion for summary judgment,

plaintiff offers that "[a]lthough it is certainly correct to say

that the method claims are directly infringed principally by

Conceptronic customers, the users of the ovens, Conceptronics has

also itself infringed the method claims." Doc. 155.

With the above evidence tending to allege that defendant

uses a reflow method similar to plaintiff's, plaintiff has placed

directly at issue a factual guestion pertaining to infringement

of the '502 patent. Further, in light of such evidence, plain­

tiff not only presents a guestion as to whether defendant induced

infringement but also presents a guestion of whether defendant in

fact directly infringed the '502 patent. This being the case,

there is a genuine issue of material fact presented and needy of

resolution.

As a brief but relevant aside, the court is somewhat

bewildered by defendant's contention that summary judgment is

proper in instances where a party makes alternative repre-

7 sentations or relies on alternative theories of liability. Not

surprisingly, the case law supporting such a postulate is rather

barren.

Even if the court were to subscribe to defendant's notion

that plaintiff has made alternative representations, this factor

alone does not warrant or justify granting summary judgment.

After all, parties are entitled to plead alternative grounds of

liability. See Cool Light Co. v. GTE Products Corp.,

(1st Cir. 1992) (Party entitled to plead alternative

theories of liability, but party is not entitled to recover

multiple awards of damages for a single harm). This ability to

plead alternative theories of liability is embodied in Fed. R.

Civ. P. 8(e). Fed. R. Civ. P. 8(e) provides, in pertinent, part

that

1) Each averment of a pleading shall be simple, concise, and direct. No technical forms of pleadings or motions are reguired.

2) A party may set forth two or more statements of a claim or defense alternatively or hypothetically, either in one count or defense or in separate counts or defenses. ... A party may also state as many separate claims or defenses as the party has regardless of consistency and whether based on legal, eguitable, or maritime grounds.

If a court subscribed to defendant's notion that a plaintiff

should be held to a representation advanced in a single paragraph

and within a single memorandum, then the court's empowered responsibility of regarding the entire record before moving on a

motion for summary judgment would be severely undermined. This

is particularly true, as is the case here, where the legal issues

are complex and the record is voluminous.

To recapitulate, relying on the representations offered by

the plaintiff, there are reasonable indications and inferences

that the representations by the plaintiff consistently allege

that defendant may be liable for not only infringing plaintiff's

patent, but also for contributing to or inducing the infringement

of the '502 patent.

CONCLUSION

Based on the evidence before the court and the recognized

maxim that guestions of patent infringement are factual in

nature, it is clear there are disputed guestions of fact between

the parties. Fundamentally, guestions arise as to whether or not

there is a direct infringement or contributory infringement of

United States Patent No. 4,654,502.

Although patent issues may be resolved by employing summary

resolution, when material facts are in dispute and expert and

documentary evidence are needed for prudent resolution, summary

judgment is not warranted. Texas Instruments, Inc. v. United

States International Trade Commission,

(Fed. Cir. 19 93); Quad Environmental Technologies Corporation v. Union

Sanitary District,

(Fed Cir. (Cal.) 1991).

Such is the case here.

For the aforementioned reasons, defendant's oral motion for

summary judgment is denied.

March 13, 1995

Martin F. Loughlin Senior Judge Michael Lenehan, Esg. Lawrence M. Green, Esg. Kenneth A. Sweden, Esg. Paul J. Hayes, Esg. George R. Moore, Esg.

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