The Bell systems significantly change the operation of the message service.
Plaintiff could also argue that the Kraus Voicegram may be used after a caller gets a busy signal or no answer, and thus that it is substantially similar to the AC system. However, unlike the AC user, the caller would have to hang up and place a second phone call to the voicegram service center. Once the second call was made, the system would still function in a substantially different way. Thus, although in a broad sense, the function and result could be similar (providing someone with a recorded message), the ways in which that result is obtained are entirely distinct. The message travels through different channels and the billing procedures are completely dissimilar.
All the differences defendant cited make it clear that the Kraus patent and the Bell systems do not perform substantially the same function in substantially the same way to obtain substantially the same result. Defendant has met its burden of demonstrating the lack of any genuine issue of material fact, and plaintiff has failed to come forward with specific facts that show there is a genuine issue for trial. See generally, Spectra Corp. v. Lutz, 839 F.2d 1579, 5 U.S.P.Q.2D (BNA) 1867 (Fed. Cir. 1988); George v. Honda Motor Co. Ltd., 802 F.2d 432, 231 U.S.P.Q. (BNA) 382 (Fed. Cir. 1986); Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 223 U.S.P.Q. (BNA) 706 (Fed. Cir. 1984).
Even if plaintiff could show a genuine issue of material fact on infringement under the doctrine of equivalents, the prosecution history of his claim would estop him from asserting equivalence. The doctrine of prosecution history estoppel is an equitable device for determining the permissible scope of patent claims. Mannesmann, 793 F.2d at 1284. This doctrine bars a plaintiff from construing his claims in a way that would revive subject matter that he surrendered during his prosecution of the patent. Thus, the doctrine "prevents a patentee from enforcing its claims against otherwise legally equivalent structures if those structures were excluded by claim limitations added in order to avoid prior art." Id. See also Pennwalt, 833 F.2d at 934 n. 1.
In prosecuting Kraus Claim 18, the Patent Examiner rejected that claim as unpatentable over prior art. In response, Kraus substituted a new application (Application Claim 21, herein referred to as Kraus Claim 18) which included limitations he had not previously placed in that claim. In arguing for the patentability of the new claim, Kraus quoted and underlined certain language in the limitations to highlight the distinctions between his patent and the prior art. (See Messenheimer Exhibit 2). Thus, Kraus added new language to Claim 18 to overcome the Examiner's prior art rejection:
(1) The recording circuit from the sending telephone set to the service center must be on a "sending circuit preselected by said sending set."
(2) This preselected sending circuit is connected "at a recording starting time and [interrupted] at a recording terminating time to determine a voicegram recording time length."
(3) The delivery from the sending circuit to the receiving set must occur "in a receiving circuit preselected by said sending set for connecting said service center to said receiving set."
(4) The connection of the receiving circuit preselected by the sending set is connected "at a delivery starting time and [interrupted] at a delivery terminating time to determine a reproduction voicegram delivery time length as the difference between said delivery starting and delivery terminating times."
(5) Producing concomitantly with "said respective voicegram recording and reproduction voicegram delivery time lengths information including . . . [information] for computing a charge to said sending set of the cost of said voicegram recording and said reproduction voicegram delivery." (Messenheimer Affidavit at para. 28); (Messenheimer Exhibit 2).
Similar changes were made with respect to Kraus Claims 1 and 24. (See Messenheimer Affidavit at para. 38 and 45). Under the doctrine of prosecution history estoppel, Kraus can not invoke the doctrine of equivalents to resurrect the unamended claims he relinquished to successfully prosecute his patent. See Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 681, 7 U.S.P.Q.2D (BNA) 1315 (Fed. Cir. 1988); Builders Concrete v. Bremerton Concrete Products, 757 F.2d 255, 260, 225 U.S.P.Q. (BNA) 240 (Fed. Cir. 1985). Thus, Kraus is estopped from asserting that the billing systems of the patents at issue are not significantly distinct. Although it was not made of record in the patent office prosecution of the Kraus patent, Riesz U.S. Patent No. 2,998,489 (Defendant's Exhibit 11) illustrates the type of prior art Kraus had to overcome.
The Riesz patent is a message delivery system which is originated by the calling party and whose object is to deliver a message at any time. Uncontradicted testimony in the Porter and Farris affidavits establishes that if Kraus Claim 18 is construed to render unessential the charging information production or computation features recited in Krause Claim 18, then Kraus Claim 18 would be invalid as reading on the prior art. (See Messenheimer Affidavit at para. 71-75). In his deposition, Kraus admitted that his charging system was an "integral part of the patent" and was "essential." Kraus Deposition at 24). Especially after having admitted to the significance of the change, Kraus can not extend the doctrine of equivalents to cover a broad claim that he was previously compelled to relinquish. The same analysis applies to Kraus Claims 1 and 24. (See Messenheimer Affidavit at para. 76-83).
Neither plaintiff's brief nor his oral argument responded to defendant's estoppel argument. We find no genuine issue of material fact precluding our granting summary judgment on the ground that the prosecution history of the patent estops plaintiff from proving infringement.
In conclusion, the evidence clearly establishes that defendant did not infringe upon plaintiff's patent. Defendant has shown that it neither literally infringed upon the Kraus patent nor that it infringed under the doctrine of equivalents. Furthermore, defendant has shown that even if the devices were equivalent, plaintiff is estopped from claiming infringement. Plaintiff has not raised any genuine issue of material fact precluding our granting summary judgment. Thus, for the all the reasons adduced above, defendant's motion for summary judgment is granted.
An appropriate Order follows.
AND NOW this 17th day of May, 1989, upon consideration of MOTION for SUMMARY JUDGMENT, filed by defendant on March 27, 1989, OPPOSITION thereto, filed by plaintiff on April 3, 1989, and REPLY BRIEF, filed by defendant on April 5, 1989, it is hereby ORDERED that defendant's motion is Granted. Judgment is hereby entered for defendant and against plaintiff.