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ORDER - 1

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF WASHINGTON

AT TACOMA

PACTOOL INTERNATIONAL LTD., 

Plaintiff,

v.

KETT TOOL COMPANY INC., et al.,

Defendants.

CASE NO. C06-5367BHS

 ORDER GRANTING IN PART 

 AND DENYING IN PART 

 PLAINTIFF’S MOTION FOR 

 PARTIAL SUMMARY

 JUDGMENT OF 

 LITERAL INFRINGEMENT 

This matter comes before the Court on Plaintiff PacTool International Ltd.’s

(“PacTool”) motion for partial summary judgment of literal infringement (Dkt. 59). The

Court has considered the pleadings filed in support of and in opposition to the motion and

the remainder of the file and hereby grants in part and denies in part the motion for the

reasons stated herein.

I. PROCEDURAL AND FACTUAL BACKGROUND

This action was filed on June 29, 2006. Dkt. 1. This is a patent case arising under

federal patent law. See generally Dkt. 63. This Court has original subject matter

jurisdiction over the action pursuant to 28 U.S.C. §§ 1331 (federal question jurisdiction)

and 1338(a) (an Act of Congress governing patent cases). PacTool’s amended complaint

alleges that Defendant Kett Tool Company Inc. (“Kett”) and H. Rowe Hoffman

(“Hoffman”) have been and are infringing – directly, contributorily and/or by inducement

– technology contained in patents owned by PacTool by manufacturing, using, selling

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ORDER - 2

and/or offering for sale products that infringe such technology. Dkt. 63 at 3-6. The

products at issue contain fiber-cement cutting technology that PacTool maintains is

protected by its patents. Id. at 2. 

In December of 2007, Kett requested reexamination of the patents-in-suit in the

United States Patent and Trademark Office. See Dkt. 30. On February 1, 2008, the Court

granted Kett’s request for a stay of this litigation until the reexamination procedures were

completed. Dkt. 39. The reexamination proceedings were terminated in December of

2009 and the stay was terminated on December 18, 2009. See Dkt. 48. On April 1, 2010,

the Court granted PacTool’s motion to amend its complaint to add Hoffman as a

Defendant. Dkt. 61.

On March 25, 2010, PacTool filed a motion for partial summary judgment of

literal infringement. Dkt. 59. On April 12, 2010, Kett filed a response (Dkt. 66) and on

April 16, 2010, PacTool replied (Dkt. 71). 

On April 26, 2010, Defendants filed their motion requesting the Court to dismiss

or transfer this action for improper venue, or in the alternative, to transfer this action to

the Southern District of Ohio pursuant to 28 U.S.C. § 1404. Dkt. 75. Further, Hoffman

requested that the Court dismiss or transfer the causes of action against him for lack of

personal jurisdiction and/or for failure to state a claim upon which relief can be granted. 

Id. On July 7, 2010, the Court issued an order granting in part and denying in part Kett

and Hoffman’s motion and transferred the case to the Southern District of Ohio. Dkt. 93. 

On July 8, 2010, Kett filed a statement noting the death of Hoffman. Dkt. 94. On July

14, 2010, PacTool filed a motion for reconsideration of the Court’s order regarding

transfer. Dkt. 96. On August 25, 2010, the Court granted PacTool’s motion and

reopened the case. Dkt. 103.

On September 23, 2010, the Court ordered the parties to file briefing on whether it

was necessary for the Court to conduct a claim construction proceeding prior to deciding

PacTool’s motion for partial summary judgment. Dkt. 106. After considering the parties’

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ORDER - 3

submissions, on December 15, 2010, the Court issued an order in which it concluded that

claim construction was not necessary for the Court to decide PacTool’s motion for partial

summary judgment of literal infringement (Dkt. 129) and renoted PacTool’s motion (Dkt.

59), which is now before the Court. 

II. DISCUSSION

A. Summary Judgment Standard

Summary judgment is proper only if the pleadings, the discovery and disclosure

materials on file, and any affidavits show that there is no genuine issue as to any material

fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).

The moving party is entitled to judgment as a matter of law when the nonmoving party

fails to make a sufficient showing on an essential element of a claim in the case on which

the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323

(1986). There is no genuine issue of fact for trial where the record, taken as a whole,

could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec.

Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must

present specific, significant probative evidence, not simply “some metaphysical doubt”).

See also Fed. R. Civ. P. 56(e). Conversely, a genuine dispute over a material fact exists if

there is sufficient evidence supporting the claimed factual dispute, requiring a judge or

jury to resolve the differing versions of the truth. Anderson v. Liberty Lobby, Inc., 477

U.S. 242, 253 (1986); T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d

626, 630 (9th Cir. 1987).

The determination of the existence of a material fact is often a close question. The

Court must consider the substantive evidentiary burden that the nonmoving party must

meet at trial – e.g., a preponderance of the evidence in most civil cases. Anderson, 477

U.S. at 254; T.W. Elec. Serv., Inc., 809 F.2d at 630. The Court must resolve any factual

issues of controversy in favor of the nonmoving party only when the facts specifically

attested by that party contradict facts specifically attested by the moving party. The

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ORDER - 4

nonmoving party may not merely state that it will discredit the moving party’s evidence at

trial, in the hopes that evidence can be developed at trial to support the claim. T.W. Elec.

Serv., Inc., 809 F.2d at 630 (relying on Anderson, supra). Conclusory, nonspecific

statements in affidavits are not sufficient, and missing facts will not be presumed. Lujan

v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888-89 (1990). 

B. Literal Infringement 

Determining patent infringement requires that a court determine whether someone

(1) without authority (2) makes, uses, offers to sell, sells, or imports (3) the patented

invention (4) within the United States, its territories, or its possessions (5) during the term

of the patent. Cyrix Corp. v. Intel Corp., 77 F.3d 1381 (Fed. Cir. 1996). Typically,

determining whether a claim in a patent has been infringed is a two-step process. Baxter

Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575. First, it is necessary to determine

what the words in the claim mean. Markman v.Westview Instr. Inc., 517 U.S. 370, 374

(1996). Second, once a claim is interpreted, it is necessary to determine if the claim

covers the accused device. Id. “Literal infringement of a claim exists when every

limitation recited in the claim is found in the accused device, i.e., when the properly

construed claim reads on the accused device exactly.” Strattec Sec. Corp. v. General

Auto. Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997). 

Here, although Kett has argued that the Court should conduct a claim construction

hearing in this case (see Dkts. 66, 113), the Court has concluded that claim construction is

not necessary to decide the instant motion as Kett has not identified any claim terms at

issue in the motion that need to be construed. See Dkt. 129. Accordingly, the issue of

literal infringement, for purposes of deciding PacTool’s motion, turns on whether the

accused devices infringe the claims as written. See Baxter, 49 F.3d at 1583. 

The claims at issue in the instant motion are Claim 16 of the ‘303 Patent and

Claims 10 and 19 of the ‘998 Patent. Dkt. 59 at 10-17. In PacTool’s motion, it lays out a

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ORDER - 5

chart separating the claims into elements and explains how each element reads on the

accused devices. Id.

1. Accused Devices

There are two groups of accused devices that PacTool maintains infringe on its

claims. The first is represented by Kett Model KC-193. The Court concludes that Kett’s

argument that this model has been discontinued is irrelevant to whether the device

infringed on PacTool’s claims as Kett does not argue that the KC-193 was still being sold

after the ‘303 and ‘998 patents were issued. See 35 U.S.C. § 271(6) (stating that

infringement is measured from the date of issuance of a patent).

Next, PacTool maintains that the evidence it has presented establishes that the

second group of accused devices, depicted in Bates KETT03295 and KETT0331-32 (Dkt.

59-3 at 46, 48-49), are “representative of all of Kett’s fiber-cement cutting shears.” Dkt.

71 at 12. While Kett makes an argument that the conversation between counsel for

PacTool and counsel for Kett should not be used for evidence and alludes to the fact that

this conversation may have been for purposes of settlement, Kett does not present any

evidence that the statement is false or was made during a settlement discussion. 

Moreover, Kett never alleges that the statement is false, but simply states that PacTool

has not proven the statement to be true. In addition, counsel for PacTool submitted a

declaration stating that the statement at issue did not take place during settlement

discussions. Dkt. 71-2 at 2. Therefore, based on the evidence presented and Kett’s lack

of response, the Court concludes that PacTool has established that Kett’s accused devices,

depicted in Bates KETT03295 and KETT0331-32 (Dkt. 59-3 at 46, 48-49), are

representative of all Kett’s fiber-cement cutting shears currently sold (Dkts. 59-2 at 1-2,

71 at 12 & 71-2 at 2). 

2. Preamble to Claim 16 of the ‘303 Patent and Claims 10 and 19 of the

‘998 Patent

The preamble to Claim 16 of the ‘303 patent and Claims 10 and 19 of the ‘998

patent are identical to each other and consist of the following language: “A fiber-cement

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ORDER - 6

cutting tool, comprising: . . . .” Dkt. 59-3 at 87, 90 and 93. Kett states in its objections to

the claim charts that, with respect to these preambles, it admits that its accused devices

are cutting tools but denies that they are used exclusively for cutting fiber cement. Id. 

However, the fact that Kett’s accused devices are not used exclusively for fiber-cement

cutting does not defeat PacTool’s argument that they literally infringe the claims because

Kett’s products, when used to cut fiber cement, still fit within the language stated in the

preambles. Therefore, Kett’s objection to the preamble language does not defeat

PacTool’s motion regarding literal infringement. 

3. Claim 16 of the ‘303 Patent 

Kett admits that, with the exception of two elements, all other elements of Claim

16 of the ‘303 Patent are infringed by Kett’s accused devices. Dkt. 59-3 at 87-89. Kett’s

objection regarding these elements is that its accused devices do not infringe Claim 16

because the spacing of the devices falls outside the range listed in Claim 16. Dkt. 66 at

14. The element at issue in Claim 16 states as follows: “the first side surface being

spaced apart from the first interior by 0.04 to 0.055 inches and the second side surface

being spaced apart from the second interior surface by 0.04 to 0.055 inches.” Dkt. 59-3 at

88-89. PacTool contends that, according to the deposition testimony of Kett’s past and

present presidents, William Berlier and Kathy Conlon, the actual spacing for Kett Model

KC-193 is 0.040 to 0.045 inches, which falls within the range stated in Claim 16, and that

the spacing used in the KC-193 is the same used for all Kett products used to cut fiber

cement. Dkt. 59 at 12. In Mr. Berlier’s deposition he is asked, “[s]o are you confident

that the spacing between the cutting blade in that device and the inside of the side knives

is somewhere in the range of [0.04 to 0.055] inches?” Dkt. 59-3 at 52. He then answers,

“I think it’s very reasonable to think that.” Id. He is then asked, “[a]nd would that be

true for all of the Kett products that are used to cut fiber cement?” Id. Mr. Berlier then

states, “Um-hum.” In Ms. Conlon’s deposition, she is asked, “[s]o, in fact, every tool,

every fiber cement shear product that Kett manufactures and sells with the thin blade will

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ORDER - 7

have a gap of [0.04 to 0.045] inches, correct?” Id. at 58. Counsel for Kett then objects,

stating that the question assumes facts not in evidence and lacks foundation. Id. Ms.

Conlon then states, “[t]he [0.038] to the [0.043] the way I’m reading it is on the blade

itself, so that would be adding the [0.02]. Yes, that would be within that range.” Id. Ms.

Conlon is then asked, “[o]f [0.04] to [0.045]?” to which she answers, “Yes.” Id. 

In Kett’s objections to the claim charts, Kett states that its accused devices do not

necessarily fit within the spacing range listed in the element of Claim 16. Dkt. 59-3 at

88-89. In Kett’s response to the instant motion, it states specifically that “the distance

between the center blade and a side knife in the Kett Model KC-193 could be as small as

0.0324 inches or as large as 0.0606 inches, well outside of both of the ranges recited in

Claim 16 of the ‘303 patent.” Dkt. 66 at 14. In support of this statement, Kett relies on a

declaration submitted by Alexander Rozumovich, Director of Engineering for Kett, in

which he states that “[t]he distance between the center blade and a side knife in the Kett

Model KC-193 could be as small as 0.0324 inches or as large as 0.0606 inches.” Dkt. 65-

2 at 2. In its reply to Kett’s response, PacTool maintains that Mr. Rozumovich’s

statement that the spacing in Kett’s KC-193 “could” be as small as 0.0324 or as large as

0.0606 inches is mere speculation and that he “offers no document, drawing, testimony or 

[other] evidence to support the fact that what he suggests ‘could’ take place ever in fact

took place.” Dkt. 71 at 13.

The Court concludes that, based on the answers given in the depositions of Mr.

Berlier and Ms. Conlon, and the declaration submitted by Mr. Rozumovich, a question of

fact may exist as to whether Claim 16 of the ‘303 patent is literally infringed by Kett’s

accused devices. Specifically, the deposition testimony submitted by PacTool and the

declaration submitted by Kett appear to create a question of fact regarding the spacing of

the center blade and the side knives of the accused devices such that the Court cannot

grant summary judgment of literal infringement based on the evidence before it. 

However, the Court notes that if either party has additional evidence it believes supports

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its position such that this issue can be decided as a matter of law, the Court will consider

a subsequent motion on the issue if filed prior to the dispositive motion deadline. 

4. Claims 10 and 19 of the ‘998 Patent

Kett admits that, with the exception of two elements, all other elements of Claims

10 and 19 of the ‘998 Patent are infringed by Kett’s accused devices. Dkt. 59-3 at 91-92,

94-95. Kett’s objection to these elements is that its accused devices are used to cut onehalf-inch cement board and that when they are used to cut this size board, they do not

infringe on the spacing listed in Claims 10 and 19 of the ‘998 patent. The element at

issue, which is identical in both Claims 10 and 19, states as follows: “wherein the first

side spacing and the second side spacing are from 13% to 22% of a thickness of a fibercement workpiece to be cut with the blade.” PacTool asserts that Kett’s accused devices,

both Kett Model KC-193 (Dkt. 59-3 at 38) and the devices depicted in Kett drawings –

Bates KETT03295 and KETT0331-32 (id. at 46, 48-49) – literally infringe Claims 10 and

19 when the devices are used to cut one-quarter inch fiber cement. Dkt. 59 at 12-17. Kett

does not specifically dispute PacTool’s assertion that its accused devices infringe the

spacing percentages listed in Claims 10 and 19 when cutting one-quarter-inch fiber

cement; rather, Kett maintains that its devices are used to cut one-half-inch fiber cement

and when doing so, do not infringe the claims. PacTool maintains that the evidence

clearly shows that Kett’s devices are capable of cutting one-quarter-inch fiber cement,

that Kett has not shown otherwise, and that, therefore, the accused devices literally

infringe Claims 10 and 19. 

In addition to its other arguments, Kett relies on a Federal Circuit case for the

proposition that “a device that ‘is capable of being modified to operate in an infringing

manner is not sufficient, by itself, to support a finding of infringement.’” Dkt. 66 at 15

(quoting Telemac Cellular, 247 F.3d 1316, 1330 (Fed. Cir. 2001)). However, in Telemac,

the Court of Appeals specifically relied on a restriction built into the accused device that

prevented the device from infringing the patent in affirming the district court’s conclusion

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that plaintiff’s allegations of literal infringement failed. Here, unlike in Tarmac, Kett has

not asserted that its accused devices are equipped with some kind of restriction that

prevents them from cutting one-quarter-inch fiber cement and therefore infringing Claims

10 and 19. Moreover, Kett has not specifically stated that its devices are not used to cut

one-quarter-inch fiber cement; rather, it states that PacTool has not proven that the

devices cut one-quarter-inch fiber cement. The Court concludes that, based on the

evidence, the accused devices are capable of cutting one-quarter-inch fiber cement and

may infringe on the claims as discussed below. 

In support of its assertion that the accused devices, as depicted in Bates

KETT03295 and KETT0331-32 (Dkt. 59-3 at 46, 48-49), cut one-quarter-inch fiber

cement, PacTool cites to the deposition testimony of Hoffman in which he states that the

accused device “[c]uts anything quarter inch on.” Dkt. 59-3 at 63. In addition, PacTool

cites to Kett’s website which states that the accused device is capable of cutting fiber

cement “up to 1/2" thick.” Dkt. 71-2 at 4. When the spacing given for these accused

devices is compared with one-quarter-inch fiber cement, the devices literally infringe

Claims 10 and 19 because they fit within the 13% to 22% limitations listed in the claims. 

Therefore, the Court concludes that PacTool is entitled to summary judgment of literal

infringement of Claims 10 and 19 of the ‘998 patent by the accused devices as depicted in

Bates KETT03295 and KETT0331-32 (Dkt. 59-3 at 46, 48-49).

In arguing that the KC-193 literally infringes Claims 10 and 19, PacTool relies on

the deposition testimony of Mr. Berlier and Ms. Conlon, along with Kett literature for

Kett Model KC-193, to show that the KC-193 is capable of cutting one-quarter-inch fiber

cement and that, when doing so, infringes Claims 10 and 19. In asserting that KC-193

infringes these claims, PacTool relies on the spacing for this device of 0.040 to 0.045

inches, which it alleges is supported by Mr. Berlier and Ms. Conlon’s testimony. As the

Court previously concluded with respect to Claim 16 of the ‘303 patent, based on the

deposition testimony and the declaration of Mr. Rozumovich, there is a question of fact as

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ORDER - 10

to whether the spacing in KC-193 is between 0.040 to 0.045. Therefore, the Court

concludes that PacTool is not entitled to summary judgment of literal infringement of

Claims 10 and 19 of the ‘998 patent by Kett Model KC-193. As the Court stated above, if

either party wishes to present additional evidence to show that this issue should be

resolved as a matter of law, the Court will consider a subsequent motion on the issue if

filed prior to the dispositive motion deadline. 

5. Kett’s Additional Arguments

First, Kett’s arguments regarding claim construction do not affect the Court’s

decision on the instant motion as the Court has ruled that claim construction was not

necessary prior to deciding the motion. See Dkt. 129. Second, Kett’s argument that the

claims involved in the instant motion should have been reexamined is without merit as

Kett could have sought reexamination on those claims. Third, Kett’s assertions regarding

judicial economy do not affect the Court’s decision on the motion as the Court has

discretion to rule on literal infringement while issues of invalidity and unenforceability

are pending. Next, Kett’s argument that PacTool’s claims are invalid and/or

unenforceable and that Claims 10 and 19 of the ‘998 patent are indefinite may be

considered in a separate motion for summary judgment. Finally, Kett’s contention that

PacTool’s motion is without merit because it is not supported by expert testimony is

irrelevant as the Court has concluded that PacTool has presented evidence sufficient to

support granting the motion in part. There is no specific requirement that a motion for

summary judgment of literal infringement be supported by expert testimony. 

 

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III. ORDER

Therefore, it is hereby ORDERED that PacTool’s motion for summary judgment

of literal infringement (Dkt. 59) is GRANTED in part and DENIED in part as

discussed herein. 

DATED this 31st day of January, 2011.

A 

BENJAMIN H. SETTLE

United States District Judge

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