United States District Court, D. New Hampshire
N. LAPLANTE, District Judge.
patent infringement action relates to tilt and vibration
sensors. Defendants Tien-Ming Chou, OncQue Corporation, and
defendant and counter-claimant Bravotronics Corporation, have
moved for summary judgment that the patents asserted in this
action by plaintiff and counter-claim defendant SignalQuest,
Inc.,  are invalid and that Bravotronics does
not infringe them. Specifically, the defendants contend that
SignalQuest's patents are invalid because, during a
recentlyconcluded ex parte reexamination, SignalQuest
cancelled a dependent claim related to the shape of the
embodiment of one part of the invention, thus - defendants
contend - disclaiming that particular embodiment and
invaliding the patent to the extent SignalQuest contends the
reissued claims cover that embodiment. And even if the
patents are valid, the defendants argue, defendants do not
infringe because they do not sell any of the accused products
in the United States.
court has jurisdiction pursuant to 28 U.S.C. §§ 1338
(patents) and 1331 (federal question). After hearing oral
argument, the court denies the defendants' motion. As
discussed more fully below, SignalQuest has submitted
evidence sufficient to raise a question of material fact as
to whether the defendants have made offers to sell the
accused infringing devices within the United States. And the
defendants have not demonstrated that they are entitled to
judgment of invalidity as a matter of law.
Applicable legal standard
judgment is appropriate where "the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(c). The movant bears the burden of showing
the absence of a genuine issue of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
The opposing party may defeat such a motion by presenting
competent evidence of record demonstrating a genuine issue of
material fact. See Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 256 (1986). The court views the evidence
presented in the light most favorable to the non-moving party
and draws all reasonable inferences in that party's
favor. Id. at 255. But the court need not
countenance "conclusory allegations, improbable
inferences, and unsupported speculation."
Medina-Munoz v. R.J. Reynolds Tobacco Co., 896 F.2d
5, 8 (1st Cir. 1990).
case, SignalQuest has asserted three related patents against
the defendants. The defendants moved for summary judgment
that they do not infringe SignalQuest's patents and that
said patents are invalid in light of positions taken by
SignalQuest before the United States Patent and Trademark
Office ("USPTO") during reexamination.
patents describe an omnidrectional tilt and vibration sensor.
These sensors can be used to switch an electrical circuit ON
or OFF. Tilt the sensor one way, and a free-moving conductive
element comes in contact with two terminals, completing a
conductive path and turning the circuit ON; tilt it another
way, and the conductive element moves out of contact with one
or both of the terminals, disrupting the conductive path and
turning the circuit OFF.
SignalQuest patents were granted on June 27, 2006, and
February 5, 2008. After SignalQuest amended its complaint in
this action to accuse the defendants of infringing these
patents,  the USPTO instituted an ex parte
reexamination of the same. All three patents survived
reexamination, though not all claims survived. SignalQuest
cancelled some claims, rewrote or amended others, and added
still other claims. The court stayed the instant action while
the USPTO reexamined these patents. After all three patents
reissued in October 2014, the court lifted that stay. The
defendants then moved for summary judgment and the court held
a hearing on defendants' motions on January 26,
Patent Act provides that "whoever without authority...
offers to sell or sells any patented invention, within the
United States... infringes the patent." 35 U.S.C. §
271(a). Defendants seek summary judgment that they have not
infringed SignalQuest's patents because they have not
sold or offered any of the accused products for sale in the
United States after the patents reissued and because
intervening rights extinguish (document no. 1). Two months
later, SignalQuest amended its complaint to assert its own
patents against Chou and OncQue. See First Amended Complaint
(document no. 5). SignalQuest subsequently amended its
complaint three more times. The Fourth Amended Complaint
(document no. 76) is operative here. SignalQuest's claims
to pre-reexamination damages. See Mem. (document no. 86-1) at
10. SignalQuest concedes no sale of the accused products in
the United States, but offers evidence that, it submits,
raises a question of material fact as to whether defendants
offered the accused products for sale both before and after
its patents reissued. The court agrees.
Post-reexamination offers for sale
submits that defendants have offered the accused products for
sale in the United States on at least two occasions after the
patents reissued. As evidence of this, SignalQuest has
offered a quotation for the defendants' VBS-030600
product sent to a North Carolina-based company in late 2014,
see Plaintiff's Ex. 14, and a quotation for the same
product sent to International Assembly, a company based in
Texas, on or around March 25, 2015. Defendants concede that
both quotations were sent, but argue that neither quotation
rises to the level of an "offer to sell" under §
271(a). Even if they did, defendants contend, neither offer
was made "within the United States, " as that
statute requires. Neither ...