Markem-Imaje Corp. v. Zipher Ltd

2010 DNH 007

• Court: District Court, D. New Hampshire
• Decided: January 12, 2010
• Docket: CV-07-06-PB
• Status: Published

Opinion

Markem-Imaje Corp. v . Zipher Ltd CV-07-06-PB 1/12/10

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Markem-Imaje Corporation

v. Case N o . 07-cv-06-PB Opinion N o . 2010 DNH 007 Zipher Ltd., et a l .

O R D E R

Markem-Imaje Corporation seeks a declaratory judgment that

it has not infringed a patent held by Zipher Ltd. Markem’s

motion for summary judgment hinges on its proposed construction

of a single claim element.

The claim at issue1 claims a tape drive that is comprised

o f , among other things, a “controller,” two “tape spools,” and

two “motors.” One element limits the claim to tape drives in

which a controller

calculates a length of tape to be added or subtracted from tape extending between said spools in order to maintain tension in said tape between predetermined limit values and controls said motors to drive the spools to add or subtract the calculated length of tape to or from the tape extending between said spools.

(Pl.’s Mem. of Law in Supp. of Mot. for Summ. J., Doc. N o . 119-2,

at 4.)

I have previously construed the term “drive” to mean

1 The claim is described in detail in Markem-Imaje Corp. v Zipher Ltd., N o . 07-cv-06-PB, Doc. N o . 92 (D.N.H. Aug. 2 8 , 2008) “rotate” and the term “spools” to mean “more than one spool.”

See Markem-Imaje Corp. v . Zipher Ltd., N o . 07-cv-06-PB, Doc. N o .

92 (D.N.H. Aug. 2 8 , 2008); Markem-Imaje Corp. v . Zipher Ltd., N o .

07-cv-06-PB, Doc. N o . 117 (D.N.H. Sept. 1 , 2009). Relying on

these rulings, Markem argues that the element in question must be

read to limit the claim to tape drives in which both spools are

rotated to achieve each discrete tape tension adjustment.

Although Markem’s tape drives rotate both spools during the tape

tension adjustment process, only a single spool is rotated to

achieve each adjustment. If tape tension is too low, the take-up

spool is rotated to decrease the length of tape between the

spools and if tape tension is too high, the supply spool is

rotated to increase the length of tape between the spools. Thus,

Markem argues that its tape drives do not literally infringe the

patent in suit.

Zipher challenges Markem’s proposed construction and instead

argues that the claim element should be read to encompass tape

drives such as Markem’s in which both spools are rotated in the

tape tension adjustment process, but only a single spool is

rotated to effect each change in tape tension. Zipher argues

that its interpretation must be correct because the patent’s

specification states that “if the derived value of [tape tension]

is too high (above a predetermined limit), then a small step

adjustment can be made to either or both of the motors to add a

-2- short section of ribbon to the length of ribbon between the

spools.” (Def.’s Ex. A , US Patent ‘572, Doc. N o . 120-2, Col. 2 2 ,

l l . 17-20) (emphasis added).) According to Zipher, this

statement makes it clear that the claim encompasses tape drives

in which discrete tape tension adjustments can be achieved by the

rotation of a single spool.

Although I understand Zipher’s argument, I cannot reconcile

the language it cites in the specification with the language of

the claim itself. As Markem points out, the claim states that

the controller “controls said motors to drive the spools to add

or subtract the calculated length of tape to or from the tape

extending between the said spools.” (Pl.’s Mem. of Law in Supp.

of Mot. for Summ. J., Doc. N o . 119-2, at 4 (emphasis added).)

This use of the definite article suggests that both spools must

be rotated to achieve each change in tape length that the

controller determines is required to maintain tape tension.

Nothing else in either the specification or the prosecution

history calls Markem’s interpretation of the claim language into

question, and I am unwilling to deviate from the plain language

of the claim limitation itself simply because of a single

reference in the specification. See Stewart-Warner Corp. v . City

of Pontiac, 717 F.2d 269, 277 (6th Cir. 1983) (although patent

claims must be interpreted in light of specification, the

specification cannot be used to “cover advances clearly not

-3- claimed”). Accordingly, I adopt Markem’s proposed construction

and determine that it is entitled to summary judgment on the issue of literal infringement.2

The parties have also attempted to address Zipher’s

contention that Markem has infringed the disputed patent under

the doctrine of equivalents. Because the parties have not

presented their arguments on this issue with sufficient clarity,

however, I decline to address this issue at the present time.

Markem’s motion for summary judgment (Doc. N o . 119) is

granted with respect to its contention that it has not literally

infringed the patent in suit. In all other respects, its motion

is denied without prejudice.

SO ORDERED.

/s/Paul Barbadoro Paul Barbadoro United States District Judge

January 1 2 , 2010

cc: Daniel Milville Deschenes, Esq. Christopher H.M. Carter, Esq. Kurt L . Glitzenstein, Esq. J. Michael Jakes, Esq. Kara F. Stoll, Esq. Joyce Craig, Esq. Bryan K. Gould, Esq. Philip R. Braley, Esq.

2 Zipher argues in a conclusory fashion that I may not grant summary judgment on the literal infringement issue because material facts remain in genuine dispute. Because it has failed to identify the facts that it claims are in dispute, however, I decline to credit its argument on this point.

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