Componex Corp. v. Electronics for Imaging, Inc.

58 F. Supp. 3d 912, 2014 U.S. Dist. LEXIS 156875, 2014 WL 5683947
CourtDistrict Court, W.D. Wisconsin
DecidedNovember 4, 2014
DocketNo. 13-cv-384-wmc
StatusPublished

This text of 58 F. Supp. 3d 912 (Componex Corp. v. Electronics for Imaging, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. Wisconsin primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Componex Corp. v. Electronics for Imaging, Inc., 58 F. Supp. 3d 912, 2014 U.S. Dist. LEXIS 156875, 2014 WL 5683947 (W.D. Wis. 2014).

Opinion

OPINION & ORDER

WILLIAM M. CONLEY, District Judge.

Plaintiff Componex Corporation alleges that defendant Electronics For Imaging, Inc. (“EFI”), infringes two of its patents for printing technology. The court has already addressed Componex’s infringement claims on summary judgment with respect to U.S. Patent No. 6,685,076 (“the '076 patent”). (Dkt. # 152.) This opinion addresses Componex’s claims of infringement of U.S. Patent No. 6,113,059 (“the '059 patent”) and follows the court’s earlier claim construction with respect to that patent issued on July 18, 2014. (Dkt. #119, 2014 WL 3556064.) The parties have also cross-moved for summary judgment on infringement of the '059 patent. For the reasons that follow, the court will partially grant EFI’s motion for summary judgment because most of its products do not use lugs for balancing the roller. Because EFI concedes that there are disputed issues of fact with respect to its use of lugs to balance at least two of its products, however, the case must proceed to trial. For that reason, this opinion will also address lingering issues related to allegedly infringing products that survived summary judgment.

BACKGROUND

I. The Parties

Plaintiff Componex is a company located in Edgerton, Wisconsin, that manufactures printing rollers, also known as “idler rollers.” As described in more detail below, Componex manufactures and sells “dead shaft” idler rollers encompassed by one or more claims of the '059 patent under the trademark ‘WINertia.”

[914]*914Defendant EFI is a publicly-traded company that sells digital printers and printing technology, including software. (Declaration of Peter Benoit (“Benoit Decl.”) (dkt. # 51) ¶ 3.) Among the products EFI offers are several different models .of its VUTEk Superwide-format printers. (Id.) VUTEk printers are used by specialty print shops to create high-quality, large-format banners, posters and displays.

II. Printing Roller Technology

Printing rollers are routinely used for what is known as “web handling,” ie., the transportation, shaping, and/or storage of thin materials — such as paper, foil, or rolled metal — in a continuous and flexible form. (Declaration of Tim Walker (“Walker Decl.”) (dkt. # 56) at ¶ 5.) Central to the '059 patent are what are known as “idler rollers.” An idler roller is a roller that rotates by traction, typically created by the moving web as it is pulled or pushed under the roller itself. (Id. ¶ 6d.) Idler rollers can be employed in web handling to, among other things, change web direction, prevent droop or flutter, monitor average web tension and provide an applied force to bend the web for guiding. Idler rollers are referred to as “live shaft” or “dead shaft.” A live shaft roller is one where the shaft is fixed to and rotates with the roller, whereas a dead shaft roller is one where the shaft (also known as the axis) does not rotate with the roller. (Id. ¶ 6b.)

Rollers can also be balanced or unbalanced. Ordinarily, rollers are balanced only in applications requiring high speed printing. (Id. ¶ 15.) When balancing is needed, it can be done either by the addition of mass to the rotor, by the removal of material, or in some cases by relocating the shaft axis (“mass centering”). Removal of mass can be accomplished by, among other things, drilling, milling, or grinding. (Id. ¶ 20.)

III. The Material Claims of the '059 Patent

The '059 patent describes a dead shaft idler roller (ie., a roller that rotates around a nonmoving shaft or axle) composed in a single piece of two concentrically disposed tubes connected with radial spokes instead of using a thicker single tube. (See, e.g., '059 patent, 2:15-27.)

[[Image here]]

Figure 1: An Embodiment of Invention from the '059 patent: Idler (54), Balancing Pins (72) & Balancing Lug (32)

As illustrated above, the '059 patent teaches the inclusion of built-in “balancing lugs” (32) and “balancing pins” (72). [915]*915These features can be removed or inserted after manufacture in order to balance the roller and “eliminate the problem of weights rolling around loose inside the idler” itself. (Id. 2:26-27.) Each of the independent claims in the '059 patent require “balancing lugs”; many of the independent claims also require “balancing pins.” (See, e.g., id. claims 1-4, 12-22.) Componex asserts infringement of claims 1-4 and 12-22 of the '059 patent. (Pl.’s Br. for Summ. J. (dkt.# 37) 8-9.)

Claim 1 is illustrative of the patented invention:

[A] A member suitable for an idler, comprising:
[B] a one-piece unitarily formed tube, wherein said tube comprises, an outer elongate tube having a first outside surface and a first inside surface;
[C] an inner elongate tube having a second outside surface and a second inside surface, wherein said inner elongate tube is concentrically disposed within said outer elongate tube;
[D] a plurality of radially disposed and spaced apart spokes rigidly interconnecting said inner elongate tube to said outer elongate tube;
[E] and a plurality of spaced apart balancing lugs having holding members for receiving balancing pins, wherein said lugs are radially disposed about said member between said outer elongate tube and said inner elongate tube; and
[F] wherein no balancing lugs are disposed on said second inside surface of said inner elongate tube.

'059 patent, at 8:1-10 (emphasis added).

OPINION

An analysis of patent infringement requires a two-step process: “first, the scope of the claims are determined as a matter of law, and second, the properly construed claims are compared to the allegedly infringing device to determine, as a matter of fact, whether all of the limitations of at least one claim are present, either literally or by a substantial equivalent, in the accused device.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed.Cir.2002); Split Pivot, Inc. v. Trek Bicycle Corp., 987 F.Supp.2d 838, 844-47 (W.D.Wis.2013). Since the court previously construed the claims in question, this opinion will focus solely on a comparison of claims to the allegedly infringing products.

In its earlier claim construction opinion, this court granted EFI’s motion for summary judgment with respect to claims 5-22 based upon Componex’s concession that there was no evidence of balancing pins in EFFs products. (Dkt. # 119 at 19.)

While the court has adopted EFFs construction, it will only grant EFFs motion for summary judgment of non-infringement with respect to claims 5-22 based both on: (1) the absence in the factual record of use of balancing pins by EFI, except for idlers sold to it by Componex; and (2) as confirmed at the hearing held on July 16, 2014, the fact that balancing pins are required for each of those claims. At this juncture, the court will reserve judgment with respect to claims 1-4 until after the filing of the parties’ charts listing the claims and products that remain at issue.

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Cite This Page — Counsel Stack

Bluebook (online)
58 F. Supp. 3d 912, 2014 U.S. Dist. LEXIS 156875, 2014 WL 5683947, Counsel Stack Legal Research, https://law.counselstack.com/opinion/componex-corp-v-electronics-for-imaging-inc-wiwd-2014.