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May 17, 1989


The opinion of the court was delivered by: VAN ANTWERPEN


 Plaintiff Constantine Raymond Kraus brought a patent infringement action against defendant Bell Atlantic. In his complaint, Kraus alleges that Bell Atlantic infringed his United States Patent No. 3,728,486, entitled "Voicegram Service". In the instant matter, defendant moves for summary judgment on the grounds that there are no genuine issues of material fact and non-infringement is clear as a matter of law. Each party has submitted affidavits, and the Court held oral argument on the motion. For the reasons stated below, defendant's motion is granted.

 The Federal Circuit instructs a district court in approaching a motion for summary judgment in an infringement action to proceed "'with a care proportionate to the likelihood of its being inappropriate.'" Chemical Engineering Corp. v. Essef Industries Inc., 795 F.2d 1565, 1571, 230 U.S.P.Q. (BNA) 385 (Fed. Cir. 1986) (quoting D.M.I. Inc. v. Deere & Co., 755 F.2d 1570, 1573, 225 U.S.P.Q. (BNA) 236 (Fed. Cir. 1985)). The court must draw all reasonable inferences in favor of the non-moving party, and the movant must carry its burden of establishing the absence of any genuine material fact. Chemical Engineering, 795 F.2d at 1571. "Nonetheless where the movant has also supported its motion with affidavits establishing it is entitled to judgment, Fed.R.Civ.P. 56(e), the non-movant bears the burden of coming forward with specific facts to show that there is a genuine issue for trial." Id. General assertions of factual issues, general denials, and conclusory remarks are insufficient to carry the non-movant's burden. Id. Although infringement is a question of fact, summary judgment is appropriate in a patent case, as in any other case, where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. Townsend Engineering Co. v. Hitec Co. Ltd., 829 F.2d 1086, 1089, 4 U.S.P.Q.2D (BNA) 1136 (Fed. Cir. 1987).

 We will first outline the basic operations of the two devices at issue. The Kraus patent, entitled "Voicegram Service" is a telephonic telegram service. One who wishes to send a "telegram" uses a sending telephone set to dial the telephone number of a "voicegram service center" ("VSC") and the telephone number of the recipient. The sender then utters his message and the VSC both records it and times it. After measuring the length of the recording, the VSC delivers the recorded voicegram through an automatic call unit and measures the duration of the delivery. If the delivery does not succeed on the first try because the receiving set is engaged or does not answer, the VSC, at predetermined intervals, automatically repeats the effort to contact the recipient. The telegram sender is billed for this service based on the length of the recording and the delivery time.

 The message services which defendant has implemented are known as Answer Call ("AC"), Voice Mail ("VM"), and Message Storage Service ("MSS"). Answer Call is a system resembling the ordinary answering machine. It provides an "intercept" service that is actuated when a caller is unable to reach the intended telephone set because the line is engaged or no one answers the phone. When this happens, the call is intercepted and connected to the host storage computer at the telephone central office. The host computer then invites the caller to leave a message in the recipient's "mail box." The next time the subscriber uses the telephone that was busy or unanswered, he hears a particular tone. This notifies him that he has a message, and by dialing a code from any telephone, he can access his mailbox and listen to the message or messages. Bell Atlantic charges the Answer Call subscriber, not the message sender, a flat monthly fee for the service.

 Determination of patent infringement involves two steps: (1) the court must interpret or construe the asserted patent claims; and (2) the court must determine whether the claims encompass the defendant's accused device. Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279, 1282, 230 U.S.P.Q. (BNA) 45 (Fed. Cir. 1986). The interpretation or construction of claims is an issue of law, and the question whether the claims encompass the accused device is a question of fact. Id; Vieau v. Japax Inc., 823 F.2d 1510, 1515, 3 U.S.P.Q.2D (BNA) 1094 (Fed. Cir. 1987). Ultimately, to establish infringement, the plaintiff must show either literal infringement or infringement under the doctrine of equivalents. Literal infringement requires that the accused apparatus embody every element of the plaintiff's claim. Townsend Engineering, 829 F.2d at 1090. To determine whether a claim limitation is met literally, "the court must compare the accused structure with the disclosed structure, and must find equivalent structure as well as identity of claimed function for that structure." Pennwalt Corp. v. Durand-Wayland Inc., 833 F.2d 931, 934, 4 U.S.P.Q.2D (BNA) 1737 (Fed. Cir. 1987), cert. denied, 485 U.S. 961, 108 S. Ct. 1226, 99 L. Ed. 2d 426 (1988).

 Defendant argues that each of the claims of the plaintiff's patent contains several limitations which are not embodied in any apparatus or method of the defendant. Claim 18 of the Kraus patent includes the following limitations which do not appear in the defendant's Answer Call and Voice Mail devices: a receiving telephone set, a method of delivering a voicegram, a specific and multi-faceted billing system, a sending circuit for connecting the sending set to the service center, and a receiving circuit. (Defendant's Messenheimer Exhibit 1). Similarly, Kraus Claims 1 and 24 recite a system of signal pulses to interconnect the sending set to the sending service center, an analog signal, a first time length, a system of signal pulses to connect with the receiving set, a delivery of a voicegram, and various measurements of lengths of recordings for billing. (Defendant's Messenheimer Exhibits 3, 4). Again, these claim limitations are not literally readable on the defendant's accused Answer Call and Voice Mail systems. The same limitations in Kraus Claims 1, 18, and 24, outlined supra, are also not readable on the Message Storage Service. (Defendant's Messenheimer Exhibits 5, 6, 7).

 The affidavit of Donald Messenheimer, an experienced patent attorney, supports defendant's position. With regard to Kraus Claim 18, Messenheimer correctly points out that (1) the Answer Call and Voice Mail systems provide no method of delivering a voicegram; (2) the AC and VM system do not involve any receiving sets, as all telephone sets are originators or callers; (3) the AC and VM systems do not compute billing in the same manner as the Kraus patent; (4) the AC and VM systems do not store messages in a host computer in a sending circuit preselected by the sending set for connecting the sending set to a service center, but instead intercept calls and connect them to the central office only if the line is busy or there is no answer; (5) the AC and VM systems do not involve measuring message lengths; (6) the AC and VM systems do not deliver a message from the service center to a receiving set in a receiving circuit preselected by the sending set. Instead, the subscriber calls on a line or circuit of his own choosing if he desires to gain access to his messages. (Messenheimer Affidavit at paras. 17-19).

 These differences clearly establish that neither the AC, VM, nor the MSS systems literally infringe on the Kraus patent. Plaintiff has not supported his motion with and any evidence that specifically contradicts defendant's position, and plaintiff has offered nothing additional at oral argument to bolster his position. Plaintiff virtually concedes that there is no literal infringement. We must now address the question whether under doctrine of equivalents, defendant infringed upon the Kraus patent.

 The doctrine of equivalents requires a finding of infringement if an accused device performs substantially the same function, in substantially the same way, to obtain substantially the same result as the claimed invention. Graver Tank & Manufacturing Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608, 94 L. Ed. 1097, 70 S. Ct. 854 (1950); Pennwalt, 833 F.2d at 934. We must determine equivalency in the context of the patent, the prior art, and the particular circumstances of this case. Graver Tank, 339 U.S. at 609. A finding of equivalence is a determination of fact. Id. The trier of fact must balance the competing public policies of avoiding a "fraud on the patent", id. at 608, and the necessity that the public know with reasonable certainty the scope of the patent. Id. at 607. In order to prove infringement, the plaintiff must show the presence of every element or its substantial equivalent in the accused device. Pennwalt, 833 F.2d at 935. To qualify as a substantial equivalent, "the element substituted in the accused device for the element set forth in the claim must not be such as would substantially change the way in which the function of the claimed invention is performed." Id.

 Under the doctrine of equivalents, a court must interpret the scope of plaintiff's claims more liberally if the patent can be considered a "pioneer" patent. A pioneer invention is a "distinct step in the progress of the art, distinguished from a mere improvement or perfection of what had gone before." Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 562, 42 L. Ed. 1136, 18 S. Ct. 707 (1898). The concept of the "pioneer" patent reflects a judicial appreciation that a "broad breakthrough invention merits a broader scope of equivalents than does a narrow improvement in a crowded technology." Sun Studs Inc. v. ATA Equipment Leasing, Inc., 872 F.2d 978, 978 (Fed. Cir. 1989). The liberal approach to the pioneer patent flows not from the abstract concept, "pioneer," but simply from the relative sparseness of prior art in undeveloped fields of technology. Texas Instruments v. U.S. International Trade Commission, 846 F.2d 1369, 1370, 6 U.S.P.Q.2D (BNA) 1886 (Fed. Cir. 1988). The wide range of technological development between a pioneer invention and a modest improvement permits various gradations in the scope of equivalency. Sun Studs, slip op. at 20. The place of a particular invention in this continuum is a factual issue which depends on all the circumstances. Id. slip op. at 21. In the instant matter, it is clear that plaintiff's patent arose in a crowded art, and thus can not be considered a pioneer patent. ...

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