EPOS Technologies Ltd. v. Pegasus Technologies Ltd.

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

EPOS TECHNOLOGIES LTD., et al. *
*
v. * Civil Action WMN-07-416
*
PEGASUS TECHNOLOGIES LTD., et al. *
*
*
* * * * * * * * * * * *

MEMORANDUM

The central question in this long-running litigation is

whether digital pens manufactured by Plaintiff, EPOS

Technologies Ltd., infringe six patents held by Defendants,

Pegasus Technologies Ltd, and Luidia, Inc. The parties have

filed cross motions for summary judgment, ECF Nos. 167 (Pegasus

& Luidia) & 169 (EPOS), and after considering the parties’

briefing, as well as the pleadings, facts and applicable law,

the Court determines that the EPOS pens do not infringe any of

the claims asserted by Pegasus.1 The Court will, therefore,

grant EPOS’s motion for summary judgment in part, and deny

Pegasus’s motion for partial summary judgment as moot.2

1
The Court also determines that no hearing on the present
motions is necessary. LCvR 7(f).
2
Also pending is a motion to strike the Declaration of Michael
Sidman which was submitted in support of Pegasus’s motion for
partial summary judgment, ECF No. 188. EPOS argues that (1) Dr.
Sidman is unqualified to testify to the issues of infringement
and validity in this case, (2) that Dr. Sidman’s opinions which
contradict the Court’s claim construction should be stricken,
(3) that Dr. Sidman cannot contradict his deposition testimony,
I. FACTUAL AND PROCEDURAL BACKGROUND

Both EPOS and Pegasus develop and market digital pens. In

2007, after Pegasus sent letters to EPOS as well as EPOS’s

investors and business partners claiming that EPOS’s products

infringed four patents, EPOS filed suit seeking a declaration of

noninfringement or a determination of invalidity on the same

four patents. See ECF No. 1 (Complaint). After unsuccessfully

moving to dismiss EPOS’s Complaint, see ECF Nos. 25 & 26 (Mem. &

Order), Pegasus answered and asserted counterclaims. ECF No. 31

(Answer & Counterclaims). In addition to the four patents

identified in EPOS’s Complaint, Pegasus sought damages and

injunctive relief for infringement based on two other patents.

Pegasus’s counterclaims also added Luidia, Inc. (Luidia) as

counterclaim plaintiff and Dane-Elec S.A., Dane-Elec Memory

S.A., and Dane-Elec Corporation USA (collectively Dane-Elec),3 as

counterclaim defendants.

and (4) that certain of his opinions are conclusory and lack
foundation. For the purpose of ruling on the present motions
for summary judgment, the Court will deny EPOS’s motion. Many
of EPOS’s arguments overlap with arguments advanced in its
summary judgment briefing where the Court has addressed them as
needed.
In addition, there are several motions pending, by all
parties, for leave to file documents under seal, none of which
have been opposed. For good cause shown, the Court will grant
all of them: ECF Nos. 166, 173, 176, 178, 185, 186, 189, 196 &
201.
3
Dane-Elec Memory, S.A., is a company organized under the laws
of France of which Dane-Elec Corporation USA is a wholly-owned

2
 In total, there are six patents-in-suit: U.S. Patent Nos.

6,724,371 entitled “Presentation Board Digitizers”, 6,841,742

entitled “Presentation Board Digitizer Systems,” 6,326,565

entitled “Marking Device for Electronic Presentation Board,”

6,392,330 entitled “Cylindrical Ultrasound Receivers and

Transceivers Formed from Piezoelectric Film,” 6,501,461 entitled

“Retrofittable Apparatus for Converting a Substantially Planar

Surface into an Electronic Data Capture Device,” and 6,266,051,

which shares the same title as the ‘461 patent. In addition,

there are three EPOS products at issue, the Zpen, which has been

sold in the United States by Dane-Elec, the Gpen300, and the

Intellipen. Collectively, the Zpen, Gpen300, and Intellipen are

referred to as “the EPOS Products.”

In 2011, the Court held a Markman hearing to construe

numerous terms appearing in the patents-in-suit that were either

allegedly indefinite, or the meaning of which was disputed by

the parties. The Court issued a Markman Order construing 14

such terms. ECF No. 91.

subsidiary. ECF No. 48 ¶¶ 5,8. It imports, markets, and sells
ultrasonic digital pens including the ZPen, one of the accused
products in this litigation. ECF No. 48 ¶ 9. Dane Elec has not
joined in EPOS’s Motion for Summary Judgment. Nonetheless,
because the Court finds that none of the accused products
infringe the claims asserted by Pegasus, the Court will enter
judgment in Dane-Elec’s favor.

3
II. LEGAL STANDARDS4

Summary judgment is available, and appropriate, in a patent

infringement case just as it is in any other type of civil

litigation. See SRI Int'l v. Matsushita Elec. Corp. of Am., 775

F.2d 1107, 1116 (Fed. Cir. 1985). There must, however, be no

genuine dispute of material fact and the moving party must

establish that it is entitled to judgment as a matter of law.

Id.; Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48

(1986).

Here, Pegasus has the burden of proving infringement at

trial. Conroy v. Reebok Int’l, Ltd., 14 F.3d 1570, 1573 (Fed.

Cir. 1994) (“patentee must prove that the accused device

embodies every limitation in the claim, either literally or by a

substantial equivalent” by a preponderance of the evidence).

Therefore, EPOS is entitled to summary judgment if it can show

that (1) there is no dispute as to any material fact, and (2)

Pegasus “has failed to make a sufficient showing on an essential

element of [its] case with respect to which [it] has the burden

of proof.” Celotex Corp. v. Catrett, 477 U.S. 317, 322-23

(1986).

4
EPOS moved for summary judgment both on the ground that its
products do not infringe the patents-in-suit as well as
invalidity of the patents-in-suit. The legal standards which
govern these two issues are substantially different. Because
the Court will grant summary judgment on the issue of
infringement, however, it will forego an explanation of the
standards governing issues of validity.

4
 Establishing infringement is a two-step process which

involves (1) claim construction, and (2) comparing the accused

instrument to the construed claims. Markman v. Westview

Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)(en banc),

aff’d, 517 U.S. 370 (1996). The first inquiry, claim

construction, is a matter of law and summary judgment is

particularly appropriate where the “determination of

infringement turns solely on the legal question of the proper

construction of the claims.” Mantech Envtl. Corp. v. Hudson

Envtl. Servs, Inc., 152 F.3d 1368, 1371 (Fed. Cir. 1998).

The second step requires the patentee to establish that the

accused product meets every limitation of the patents’ claims,

literally or by their substantial equivalent. Conroy, 14 F.3d

at 1573; PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d

1359, 1364 (Fed. Cir. 2005). If even a single limitation is not

met by the accused device, there is, as a matter of law, no

infringement. Digital Biometrics, Inc. v. Identix, Inc., 149

F.3d 1335, 1349 (Fed. Cir. 1998).

Literal infringement exists when each limitation of the

claim is found in the accused device. Amhil Enters., Ltd. v.

Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996). By contrast,

“infringement under the doctrine of equivalents occurs when a

claimed limitation and the accused product perform substantially

the same function in substantially the same way to obtain

5
substantially the same result.” V-Formation, Inc. v. Benetton

Group SpA, 401 F.3d 1307, 1313 (Fed. Cir. 2005) (citing Warner-

Jenkinson Co. v. Hilton-Davis Chem. Co., 520 U.S. 17, 40

(1997)). Findings of infringement under the doctrine of

equivalents is, however, the exception and not the rule. London

v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir.

1991). As the court in London explained, this is because if

“the doctrine of equivalents is simply the second prong of every

infringement charge, regularly available to extend protection

beyond the scope of the claims, then claims will cease to serve

their intended purpose.” Id.

III. DISCUSSION

A. The EPOS Products Do Not Infringe The ‘565 Patent

Claim 1 of the ‘565 Patent reads:

A transmitter device for use with a system for
digitizing operative strokes of a handheld drawing
implement, the drawing implement having a body and an
operative tip, the transmitter device comprising:
A housing;

A transmitter mounted relative to said housing;

A microswitch that is responsive to a force
exerted on the operative tip of the drawing
implement towards said housing;

Electronic circuitry responsive to said
microswitch to affect operation of said
transmitter, wherein said electronic circuitry
operates said transmitter for a given time
interval after said microswitch ceases to
indicate a force exerted on said housing towards
the operative tip of the drawing implement.

6
All of the claims in the ‘565 Patent depend on Claim 1. EPOS

argues that it is entitled to summary judgment because its

products do not have a “drawing implement” and do not operate

for a “given time interval” as those terms have been construed

by the Court.

1. The EPOS Products Do Not Use “Drawing Implement[s]”

The EPOS Products use pen refill cartridges and the parties

dispute whether such cartridges meet the Court’s construction of

the term “drawing implement.” The Court construed “drawing

implement” as “a conventional writing utensil that can be used

alone or together with the invention.” ECF No. 91.

EPOS argues that the cartridges do not qualify as “drawing

implement[s]” because the refills are not intended to be used on

their own and are not conventionally used as writing utensils.

EPOS Mem. at 10. Pegasus responds by focusing on the phrase

“can be used alone” in the Court’s construction. It argues that

the refill cartridges meet the Court’s construction because they

can be used alone as demonstrated by EPOS’s chief technical

officer, Nathan Altman, at his deposition.5 Pegasus Opp’n at 16-

17.

EPOS prevails on this issue because, as the Court

interprets it, Pegasus’s position is nothing more than an

5
Mr. Altman wrote his name and drew a smiley face. Altman Dep.
453:14-455:7.

7
attempt to reargue the Court’s claim construction.

Specifically, it seeks to avoid the requirement that the

“drawing implement” be a “conventional writing utensil.” ECF

No. 91 (emphasis added). It is clear that Pegasus is advancing

– and relying on - the construction it would have preferred.

During the claim construction proceedings, Pegasus argued that

“‘drawing implement’ should not be limited to a ‘pen or marker’

and especially not ‘conventional’ or ‘stand-alone’ types.” ECF

No. 58 at 24 (emphasis added). Pegasus’s present focus on one’s

ability to write with a refill cartridge is analogous to its

argument during claim construction that because “a stubby No. 2

pencil [or] charcoal” can be used alone, they are drawing

implements. Id. at 23. The Court declined to adopt Pegasus’s

argument then and it will not revisit its construction of this

term now. Because the Court concludes that no reasonable jury

could find that pen refills used in the EPOS Products are

“drawing implement[s]” as that term has been construed, EPOS is

entitled to summary judgment.

2. The EPOS Products Do Not Operate for a “Given Time
Interval” After Being Lifted From the Writing
Surface

EPOS also argues that it is entitled to summary judgment on

the ‘565 Patent because its products do not operate for a “given

time interval” after being lifted from the writing surface. The

Court construed “given time interval” to mean “fixed at a few

8
seconds or less.” ECF No. 91. It is undisputed that the EPOS

Products operate for 25 seconds after they cease to detect any

input, whether that input comes from contact between the pen’s

tip and a writing surface or the user’s toggling other buttons

on the device. Altman Decl. ¶¶ 21-23, 25. Pegasus argues that

the EPOS Products literally infringe the ‘565 Patent because 25

seconds is a “given time interval” and, to the extent it is not

under the Court’s construction, Pegasus submits that the

construction is incorrect. Pegasus Opp’n at 19 (citing Sidman

Decl. ¶ 20). The Court has already thoroughly explained its

construction of this term and has made clear that while it was

expanding the term beyond the preference stated in the

specifications of the patent (i.e., “between 1 and about 2

seconds” ‘565, 5:3), it was doing so only “slightly.” ECF No.

90 at 18. EPOS is entitled to summary judgment on Pegasus’s

allegation of literal infringement because Pegasus’s argument

only attacks the Court’s claim construction and because no

reasonable jury could return a verdict for Pegasus based on that

construction.

Alternatively, Pegasus contends that the EPOS Products meet

the “given time interval” limitation of Claim 1 under the

doctrine of equivalents. As noted above, “[i]nfringement under

the doctrine of equivalents occurs when a claimed limitation and

the accused product perform substantially the same function in

9
substantially the same way to obtain substantially the same

result.” V-Formation, Inc., 401 F.3d at 1313. Pegasus

essentially ignores this inquiry6 and argues that, even though

the EPOS Products operate for 25 seconds after input is

detected, they infringe under the doctrine of equivalents

because 25 seconds includes a “given time interval.” Pegasus

Opp’n at 20 (citing Sidman Decl. ¶ 22). Pegasus’s position is

untenable because it would eliminate the limitation as construed

by the Court entirely. See Planet Bingo, LLC v. GameTech Int'l,

Inc., 472 F.3d 1338, 1344 (Fed. Cir. 2006) (citing Warner–

Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29

(1997)). Therefore, EPOS is also entitled to summary judgment

on Pegssus’s allegation of infringement under the doctrine of

equivalents.

B. The EPOS Products Do Not Infringe The ‘742 Patent

Pegasus has alleged infringement of Claims 2 through 8 of

the ‘742 Patent. All of them require use of a “drawing

6
The undisputed facts show that there is no infringement under
the doctrine of equivalents. First, the time-out circuit on the
EPOS Products is intended to allow the pen to turn on and off
without the need for an on/off switch, Altman Decl. ¶ 23, while
the time-out circuit taught by the patent operates for a “given
time interval” so as to allow the user to draw dashed lines
without losing any data as a result of necessary
resynchronization. ‘565, 4:42-5:4. In addition, the circuit on
the EPOS Products operates in a substantially different manner
than the one taught by the patent; the circuits in the EPOS
Products continue to operate after the pen is lifted from the
writing surface if the user toggles one of its other buttons.
Altman Decl. ¶¶ 22, 25.

10
implement.” In addition, Claim 5 requires a transmitter which

operates for a “given time interval after [ceasing] to indicate

force exerted on the outer housing towards the operative tip [of

the drawing implement].” ‘742, 14:38-40. The terms “drawing

implement” and “given time interval” as they appear in the ‘742

Patent were given the same construction as they were given in

the ‘565 Patent. ECF No. 91. Therefore, EPOS is entitled to

summary judgment on all of Pegasus’s claims under the ‘742

Patent.

C. The EPOS Products Do Not Infringe The ‘371 Patent

All of the claims in the ‘371 Patent require “an ultrasonic

receiver or transmitter device ... for receiving or transmitting

an intermittent ultrasound signal.” See, e.g., ‘361, 22:29-33,

50-52. EPOS argues that it is entitled to summary judgment on

Pegasus’ allegations of infringement because its products

transmit a continuous ultrasound signal.

The term “intermittent” has not previously been construed

by the Court and both parties advance construction arguments in

their briefing here. The Court finds much of the parties’

argument unnecessary because the term “intermittent” is

unambiguous. “[W]ords in patent claims are given their ordinary

meaning in the usage of the field of the invention, unless the

text of the patent makes clear that a word was used with a

special meaning.” Toro Co. v. White Consol. Indus., Inc., 199

11
F.3d 1295, 1299 (Fed. Cir. 1999). Neither party has suggested,

nor does the text of the patent reveal, that the word

“intermittent” was used with any special meaning. Therefore,

with one caveat, the Court will construe “intermittent” as

Pegasus has suggested - “something that ‘occurs occasionally, in

a non-continuous manner, in a random or unpredictable manner, or

at selected times.’” Pegasus Opp’n at 22 (quoting Steven M.

Kaplan, Wiley Electrical and Electronics Engineering Dictionary

383 (2004)).7

Pegasus takes the position that the term should cover any

instance when the device is in the user’s possession and not

just when the user is actively using the pen. Its stance is

best illustrated by its argument with regard to the EPOS

Products. Pegasus suggests that

[t]he EPOS pens transmit an intermittent
signal because the pens are specifically
designed to begin transmitting ultrasound
when the user presses the pen tip to the
paper and to cease transmitting ultrasound
after the pen times out. As a result, the
EPOS products transmit ultrasound
intermittently because they are only
transmitting at times when the user is
actively using the pen.

7
This definition of “intermittent” is also found outside of the
technical realm. EPOS cites Merriam Webster’s Collegiate
Dictionary which defines “intermittent” as “coming and going at
intervals: not continuous.” EPOS Mem. at 13; see also The
American Heritage Dictionary of the English Language, 4th ed.
(2000) (“stopping and starting at intervals”); Collins English
Dictionary (2003) (“occurring occasionally or at regular or
irregular intervals; periodic”).

12
Pegasus Opp’n at 22 (internal citations omitted). Pegasus’s

argument borders on the absurd. Accepting it would mean that

any device utilizing any form of ultrasound to transmit data

would meet this limitation. Such a construction would render

the term “intermittent” meaningless and be contrary to the

Patent Act’s requirement that claims “particularly point[] out

and distinctly claim[] the subject matter which the applicant

regards as his invention.” 35 U.S.C. § 112(b); see also

Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374,

1379 (Fed. Cir. 2006) (reversing where district court’s

construction of “adjustable” covered “almost any mechanical

device” and gave no consideration to “time, place, manner or

means of adjustment”). As a result, the Court construes

“intermittent” to refer only to those times when the user is

actively using the device.

Given this construction, it is clear that EPOS is entitled

to summary judgment on Pegasus’s claim of literal infringement

because it is undisputed that the EPOS Products generate a

continuous ultrasound signal. Altman Decl. ¶ 13. In addition,

it is clear that EPOS is entitled to summary judgment on

Pegasus’s claim of infringement under the doctrine of

equivalents. Pegasus’s suggestion that the “intermittent

ultrasound signal” taught by the ‘371 Patent and the EPOS

13
Products’ “continuous ultrasound signal” are equivalents would

eliminate the intermittent limitation entirely. As noted above,

the doctrine of equivalents cannot extend that far. Planet

Bingo, LLC, 472 F.3d at 1344; Warner–Jenkinson Co., 520 U.S. at

29. Therefore, the Court will grant EPOS’s motion for summary

judgment as it relates to Pegasus’s allegations of infringement

on the ‘371 Patent.

D. The EPOS Products Do Not Infringe The ‘330 Patent

Pegasus has alleged that the EPOS Products infringe Claims

16-18 of the ‘330 Patent. All of the asserted claims require “a

method for providing mechanical protection for an ultrasound

transducer used for given frequency of ultrasound signals while

minimizing interference with the ultrasound signals.” ‘330,

12:29-32. EPOS argues that its products do not infringe any of

the asserted claims because they do not transmit ultrasound

signals at a “given frequency,” but rather transmit across a

spectrum from approximately 25 kHz to 78 kHz. EPOS Mem. at 19.

The Court has not construed the term “given frequency.”

The parties dispute whether a “given frequency” must be a

specific frequency or can be a range of frequencies. The Court

finds that construing “given frequency” as “a specific

frequency” is appropriate because it is consistent with the

claim language and with the Patent’s specifications. The claims

make clear that the “given frequency” is used to determine the

14
position and construction of guards around the transducer.

‘330, 12:32-40. The guards are set at fixed distances which

depend on the wavelength of “the given frequency.” Id. As

EPOS notes, if “given frequency” did not mean “a specific

frequency” the claims would not offer any guidance for spacing

the guards. The specifications also treat “given frequency” as

“a single frequency.” See ‘330, 9:33-37 (“for a working

frequency of 90 kHz, corresponding to a wavelength in air of

about 4 mm, a grating step of 1.9 mm has been found to offer

minimal disruption to the transmission and reception of

signals”).

It is undisputed that the EPOS Products operate across

multiple frequencies. See Altman Decl. ¶ 12; Schafer Decl. ¶¶

22-23; Ex. K to Sidman Report at 13. Thus, the EPOS Products do

not operate at a “given frequency” as that term has been

construed by the Court.

E. The EPOS Products Do Not Infringe The ‘461 Patent

Claim 1 of the ’461 Patent reads:

A retrofittable apparatus for converting a
substantially planar surface into a writing surface
for an electronic data capture device, the apparatus
comprising;
A unitary sensor array that securely and rigidly
fixes a relation between a plurality of sensors
and that provides a tracking function to
determine the position of a marking implement on
the writing surface; and

15
 A means for affixing the unitary sensor array to
the substantially planar surface.

‘461, 9:42-50. All of the asserted claims depend on Claim 1.

EPOS argues that it is entitled to summary judgment because its

products do not use a “marking implement.” The Court has

construed the term “marking implement” as used in the ‘461

Patent to mean “an implement that has a marker tip (and not a

pen tip).” ECF No. 91. Pegasus’s only argument in opposition

is that the Court’s construction of “marking implement” is

incorrect. Again, the Court will not revisit its construction

of this term, and the opinions of Pegasus’s expert, which rely

on a contrary construction, are insufficient to generate a

dispute of material fact. LP Matthews, LLC v. Bath & Body

Works, Inc., 458 F. Supp. 2d 198, 2010 (D. Del. 2006); ICU Med.,

Inc. v. Alaris Med. Sys., 2007 U.S. Dist. LEXIS 13156, *42-44

(C.D. Cal. Jan. 22, 2007).

Pegasus also raises an argument for infringement under the

doctrine of equivalents. By doing so, Pegasus essentially seeks

to extend the Patent to cover that which has been expressly

excluded by the Court’s construction – an implement that has a

pen tip. As noted repeatedly throughout this opinion already,

the doctrine of equivalents cannot extend so far as to eliminate

the claim limitation – “not a pen tip” - entirely. The Court

16
will therefore grant summary judgment in EPOS’s favor in

Pegasus’s allegations of infringement of the ‘461 Patent.

F. The EPOS Products Do Not Infringe The ‘051 Patent

Both of the asserted claims in the ‘051 Patent depend on

Claim 1 which reads:

A retrofittable apparatus adapted for converting a
substantially planar surface into a writing surface
for an electronic data capture device, comprising:
A sensor array including at least two sensors
that are fixedly mounted within a single housing
to establish a fixed relationship between said at
least two sensors;

Said sensor array providing a tracking function
to determine the position of an implement on said
writing surface; and

A temporary attachment for removably affixing
said sensor array proximate to said substantially
planar surface.

‘051, 10:2-11. EPOS argues that its products do not infringe

the ‘051 Patent because they do not contain “a temporary

attachment.”

The parties dispute the meaning of “temporary attachment.”

EPOS argues that “temporary attachment” refers to the mechanism

that is used to connect the “retrofittable apparatus” or “sensor

array” to the “substantially planar surface.” EPOS Mem. at 36-

38. Pegasus counters by arguing that “‘temporary attachment’

refers to the ability to temporarily attach the base station to

the paper, not to attach the clip to the receiver.” Pegasus

Opp’n at 42. It suggests that summary judgment should be denied

17
because there are “outstanding issues of material fact” namely,

“whether ‘temporary attachment’ means that the device is

temporarily attached to the surface, or that the attachment is

temporarily attached to the device.” Id.

Contrary to Pegasus’s assertion, the meaning of “temporary

attachment” is a question of law appropriate for determination

by the Court. See, e.g., Hebert v. Lisle Corp., 99 F.3d 1109,

1117 (Fed. Cir. 1996) (“any dispute as to the meaning of claim

terms is the province of the court, not the jury”). Moreover,

the Court finds Pegasus’s suggested construction unsupportable

for several reasons. First, the plain language of Claim 1

dictates that the “retrofittable apparatus” which is used for

converting the “substantially planar surface” into “an

electronic data capture device” must contain “a temporary

attachment.” Second, this reading is clearly supported by the

Patent’s specifications. Figure 1 in the Patent illustrates the

“retrofittable apparatus” described in Claim 1 with attachments

which are removable from the “retrofittable apparatus.”8 Third,

Pegasus’ own expert identified the clip on the EPOS Products’

sensor, used to affix the sensor to the writing surface, as the

8
Figures 2 through 4 are to the same effect. In particular,
Figure 2 illustrates a preferred method whereby the sensor array
is attached to the writing surface by “double stick mounting
tape.” ‘051, 5:51-54. The Court understands it to be common
knowledge that double stick tape can be removed from items
affixed to both of its sides; in this case, the sensor array and
the wall or writing surface.

18
“temporary attachment,” see Sidman Rpt., Ex. I at 3, which is

consistent with Pegasus’s infringement contentions. See

Infringement Contentions at 19. Fourth, “claims are interpreted

with an eye toward giving effect to all terms in the claim,”

Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.

2006), and should not be construed so as to render terms

redundant or superfluous. See id.; Elekta Instrument S.A. v.

O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir.

2000)(reversing where court’s construction rendered term

superfluous); Messagephone, Inc. v. SVI Sys., Inc., 243 F.3d 556

(Fed. Cir. 2000)(reversing where construction rendered term

“redundant, by giving both terms the same meaning”). Adopting

Pegasus’s construction of “temporary attachment” would fall into

just such a trap because it would be given the same meaning as

the later term “for removably affixing.” Therefore, the Court

will construe “temporary attachment” as an element that can be

removed from the device’s “retrofittable apparatus.”

In light of this construction, EPOS is entitled to summary

judgment. It is undisputed that the EPOS Products use receiver

units equipped with spring loaded clips to grasp pieces or pads

of paper, and that those clips are permanently attached to the

receiver units. Altman Decl. ¶¶ 142-43. Thus, the EPOS

Products do not infringe the ‘051 Patent because they do not

meet the “temporary attachment” limitation of Claim 1.

19
 G. The Court Will Not Consider EPOS’s Claims of Invalidity

EPOS has also argued that certain of the patents or

asserted claims of the patents are invalid. In light of the

foregoing finding that none of the patents are infringed by the

EPOS Products, the Court will exercise its discretion to (1)

decline to consider EPOS’s arguments on the issue of validity,

and (2) dismiss EPOS’s claims for declarations of invalidity on

the ground that they are moot. Nestier Corp. v. Menasha Corp.-

Lewisystems Div., 739 F.2d 1576, 1581 (Fed. Cir. 1984) (where

the patent “was judged to have been not infringed . . . to then

adjudge the patent valid would be to decide an unnecessary

question as between these parties.”); Phonometrics, Inc. v. N.

Telecom Inc., 133 F.3d 1459, 1468 (Fed. Cir. 1998)(“a district

court has discretion to dismiss a counterclaim alleging that a

patent is invalid as moot where it finds no infringement”);

Angelo Mongiello's Children, LLC v. Pizza Hut, Inc., 70 F. Supp.

2d 196, 208 (E.D.N.Y. 1999)(declining to address summary

judgment motion as it related to invalidity after determining

that there was no infringement). Counts V through VIII of

EPOS’s Complaint, ECF No. 1, will be dismissed without prejudice

and, as a result, Pegasus and Luidia’s Motion for Partial

Summary Judgment of No Inequitable Conduct will be denied as

moot.

20
IV. CONCLUSION

For the foregoing reasons, EPOS’s motion for summary

judgment will be granted in part, Counts V through VIII of

EPOS’s Complaint will be dismissed without prejudice, Pegasus’s

motion for partial summary judgment will be denied as moot, and

EPOS’s motion to strike the affidavit of Michael Sidman will be

denied. A separate order will issue.

/s/
William M. Nickerson
Senior United States District Judge

DATED: January 9, 2013

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