The opinion of the court was delivered by: Thomas A. Varlan United States District Judge
MEMORANDUM OPINION AND ORDER
This civil action is before the Court on plaintiff's Motion for Summary Judgment of Invalidity of U.S. Patent No. 4,802,482 Under U.S.C. § 112 [Doc. 53]. Defendant has responded in opposition to the pending motion [Doc. 57] and plaintiff has filed a reply brief [Doc. 59] in support of its motion for summary judgment, making the motion ripe for determination. For the reasons set forth herein, plaintiff's motion for summary judgment will be DENIED.
This patent infringement case involves certain claims in a patent held by defendant, Tri-Tronics, Inc. The patent at issue, U.S. Patent No. 4,802,482 ("the '482 patent"), concerns a remote animal training device that uses a portable transmitter with controls for selecting various degrees of electrical stimulation to be applied to the animal wearing the device. [Doc. 54 at 3.] As plaintiff notes in its motion for summary judgment, a defining feature of this device is that the emission of electrical stimulation can be controlled by the operator of the transmitter, as the transmitter generates starting and stopping signals that "control the time of initiation and the time of termination of the electrical stimulation independent of any preselected timed stimulation period." [Id.]
Plaintiff, Radio Systems Corporation, manufactures and sells dog training collars utilizing electrical stimulation and these dog training products are in competition with similar products manufactured and sold by defendant. After receiving a letter from defendant in April 2005 alleging that five of its products infringe the '482 patent, plaintiff filed suit seeking a declaratory judgment that its products do not infringe the '482 patent. Defendant then filed a counterclaim for patent infringement, claiming that plaintiff has infringed Claims 7, 9, 10, and 12 of the '482 patent with five of its products: the ProHunter 2400, FieldTrainer 400, FieldTrainer 400S, SportHunter 1800, and WetlandHunter 2000. Plaintiff now moves for summary judgment [Doc. 53] on the grounds that the '482 patent is invalid and unenforceable under 35 U.S.C. § 112. Plaintiff makes two arguments as to why it should be granted summary judgment: (1) that Claims 7(a) and 12(a) of the '482 patent are indefinite and therefore void; and (2) that the entire '482 patent is invalid and void for failing to disclose the inventors' best mode of carrying out the invention.
Under Fed. R. Civ. P. 56(c), summary judgment is proper if "the pleadings, depositions, answers to interrogatories, admissions on file, together with the affidavits, if any, show that there is no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law." The burden of establishing there is no genuine issue of material fact lies upon the moving party. Celotex Corp. v. Catrett, 477 U.S. 317, 330 n.2 (1986). The court must view the facts and all inferences to be drawn therefrom in the light most favorable to the non-moving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). To establish a genuine issue as to the existence of a particular element, the non-moving party must point to evidence in the record upon which a reasonable jury could find in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The genuine issue must also be material; that is, it must involve facts that might affect the outcome of the suit under the governing law. Id. In the context of a motion for summary judgment based on a claim of patent invalidity, the Federal Circuit has stated the following:
To grant summary judgment on a factual question, all disputed material facts must be resolved in favor of the non-movant, and consideration must be given to the evidentiary standard of proof. A disputed fact is material if it may affect the outcome of the suit. When the non-movant cannot prevail even on its view of the facts, with doubts resolved in its favor, the moving party is entitled to judgment as a matter of law.
High Concrete Structures, Inc. v. New Enterprise Stone and Lime Co., Inc., 377 F.3d 1379, 1382 (Fed. Cir. 2004) (internal citations removed).
The judge's function at the point of summary judgment is limited to determining whether sufficient evidence has been presented to make the issue of fact a proper jury question, and not to weigh the evidence, judge the credibility of witnesses, and determine the truth of the matter. Id. at 249. Thus, "[t]he inquiry performed is the threshold inquiry of determining whether there is the need for trial -- whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Id. at 250.
Here, defendant argues that plaintiff has infringed Claims 7, 9, 10, and 12 of the '482 patent. In its motion for summary judgment, plaintiff argues that those four claims are indefinite and accordingly void and that the entire '482 patent is void for failing to disclose the inventors' best mode of embodying invention. The Court will address these arguments in turn.
At the outset, the Court notes that issued patents, like the '482 patent that is the focus of the pending motion for summary judgment, are subject to a statutory presumption of validity. 35 U.S.C. § 282. Accordingly, "close questions of indefiniteness in litigation involving issued patents are properly resolved in favor of the patentee," Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1371 (Fed. Cir. 2004) (internal quotations removed), and "overcoming the presumption of validity requires that any facts supporting a ...