1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

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

This matter comes before the Court having reviewed the parties’ briefs in response

to the Court’s order (Dkt. 106) on the issue of the Court conducting a claim construction

proceeding prior to deciding Plaintiff PacTool International Ltd.’s (“PacTool”) motion for

partial summary judgment of literal infringement (Dkts. 111, 113 & 115). The Court has

considered the parties’ briefs and the remainder of the file and hereby concludes that the

Court will not conduct a claim construction proceeding prior to deciding PacTool’s

motion for partial summary judgment of literal infringement.

I. PROCEDURAL AND FACTUAL BACKGROUND

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 Defendants have been and are

infringing – directly, contributorily and/or by inducement – technology contained in

Case 3:06-cv-05367-BHS Document 129 Filed 12/15/10 Page 1 of 4
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

ORDER - 2

patents owned by PacTool by manufacturing, using, selling and/or offering for sale

products that infringe such technology. Dkt. 63 at 3-6.

This action was filed on June 29, 2006. Dkt. 1. In December of 2007, Defendant

Kett Tool Company Inc. (“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 proceedings

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 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

requests 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 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 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. On October 8, 2010, PacTool filed its opening brief on the issue of

Case 3:06-cv-05367-BHS Document 129 Filed 12/15/10 Page 2 of 4
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

ORDER - 3

claim construction. Dkt. 111. On October 20, 2010, Kett filed its response (Dkt. 113),

and on October 25, 2010, PacTool filed its reply (Dkt. 115). 

II. DISCUSSION

PacTool’s motion for partial summary judgment involves the literal infringement

of claim 16 of the ‘303 Patent and claims 10 and 19 of the ‘998 Patent. Dkt. 59. PacTool

maintains that there is no dispute as to the claim terms, relying on the parties’ 2007

stipulation which removed the Markman hearing from the Court’s calendar and stated that

“[t]he parties conferred and concluded that the claim terms of the patents-in-suit need not

be construed in a separate hearing, and thus, the Markman Hearing (and briefing) were

unnecessary.” (Dkt. 21). Dkt. 59 at 12. Kett argues that there are disputed claim terms in

this case and that it would be prejudicial to Kett “to require it to be bound to a stipulation

that was made more than two and a half years ago” especially considering PacTool’s new

claims that it first asserted in its amended complaint. Dkt. 66 at 6. Kett asserts that the

Court should follow the Local Patent Rules and set a schedule for the claim construction

process in this case. Dkt. 66 at 5. 

Having reviewed the parties’ briefs and the remainder of the file herein, the Court

concludes that it is not necessary for the Court to conduct a claim construction proceeding

prior to deciding PacTool’s motion for partial summary judgment of literal infringement

as Kett has failed to identify terms that it believes need to be construed for purpose of

literal infringement. However, the Court further concludes that conducting claim

construction may be necessary before the Court decides Kett’s recently filed motion for

summary judgment. (Dkt. 125). Parties are to attempt to file a joint proposed schedule for

conducting the claim construction process. If the parties cannot reach an agreement, each

party may file its proposed schedule and limited argument in support of the schedule in a

brief not to exceed six pages. The Court notes that it is inclined to adopt a schedule that

will allow this case to proceed in an efficient and timely manner. 

Case 3:06-cv-05367-BHS Document 129 Filed 12/15/10 Page 3 of 4
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

ORDER - 4

III. ORDER

Therefore, the Court ORDERS as follows:

(1) No claim construction proceeding will be conducted prior to deciding

PacTool’s motion for partial summary judgment of literal infringement and PacTool’s

motion (Dkt. 59) is hereby RENOTED to December 15, 2010; 

(2) The parties are to file a joint proposed schedule, or each party is to file a

separate proposed schedule, for conducting the claim construction process as discussed

above;

(3) Kett’s motion for summary judgment (Dkt. 125) and all pending case

schedule deadlines are STAYED until the Court issues a schedule for conducting the

claim construction process and adjusts the current case schedule accordingly. 

DATED this 15th day of December, 2010.

A 

BENJAMIN H. SETTLE

United States District Judge

Case 3:06-cv-05367-BHS Document 129 Filed 12/15/10 Page 4 of 4