Intellectual Property > IP Newsflash > Delaware Court Grants in Part a Summary Judgment Motion of Noninfringement
19 Feb '16

In a February 11, 2016, decision, Judge Andrews of the District of Delaware granted in part and denied in part a summary judgment motion of noninfringement filed by Defendant Micron Technology, Inc. Plaintiff HSM Portfolio sued Micron over patents relating to image sensors. Specifically, U.S. Patent No. 5,030,853 requires that each inverter in a chain increase in size by “less than a predetermined factor times the width of the N-channel of the immediately preceding inverter stage.” The court found that the patentee intended to use a specific equation in the specification to calculate the “predetermined factor.” Since Plaintiff relied on a different equation for the limitation, the court found that there is no literal infringement. Further, the court concluded that the specification expressly identifies a role for the claim limitation—using the specific equation to calculate the predetermined factor. Thus, the court held that Plaintiff cannot use the doctrine of equivalents to capture the subject matter based on a different equation.

After concluding that Defendant does not literally infringe certain claims of U.S. Patent No. 5,247,212, the court examined infringement under the doctrine of equivalents. The claims require a “clock input signal” and a “complementary FET inverter.” Defendant contended that the doctrine of equivalents did not apply because the patentee dedicated the disclosed but unclaimed subject matter to the public. But the court found that the specification does not identify the “unclaimed” subject matter as an alternative to any limitation in the claims. Thus, the disclosure-dedication rule does not apply, and the court denied Defendant’s motion for summary judgment of non-infringement under the doctrine of equivalents.

HSM Portfolio LLC & Tech. Props. Ltd. LLC v. Elpida Memory Inc., Civil Action No. 11-770-RGA, Dkt. No. 1205 (D. Del. Feb. 11, 2016).