substantially circular cross sections of his outer casing throughout its entire
length, Although there is a mid section of constant cross-section, the inlet

and outlet portions are still circular. ... Sturm does not have a scroll plate
means... extending towards the inlet side and the outlet side in a polygonal
configuration ... .

(Oct. 9, 1985 Amendment at 2-3 (emphasis added).)

Sunon argues that Papst thereby clearly and unmistakably surrendered the very subject
matter that it now seeks to recapture under the doctrine of equivalents. Papst convinced the
Examiner to allow Claim 29 by arguing that Claim 29 did not encompass a fan with a
“substantially circular cross section” at the outlet side. It is undisputed that the Accused Fans
have a profile that is substantially (if not completely) circular at the outlet side. Prosccution
history estoppel therefore bars Papst from reclaiming the subject matter that it disavowed during

prosecution.

Accordingly, there is no genuine issue as to whether the Accused Fans meet claim
limitation 4. Because Papst cannot establish that the Accused Fans meet all of the limitations of
Claim 29, summary judgment of noninfringement is granted.

I. Count II Is Dismissed

A. The Court Lacks Jurisdiction Over Count IL

In Count II, Papst accuses Sunon ‘laiwan of breaching the patent license agreement, (R.
1-1, Compl, § 12-16.) The Court originally had jurisdiction over Count II pursuant to 28 U.S.C.
§ 1367(a) because Count I presented a federal question. Because Count I no longer remains in
the case, the Court must determine whether, in its discretion, to retain jurisdiction over Count TT

pursuant to 28 U.S.C. § 1367(c). The Court declines to do so.

There is no independent basis for the Court to exercise jurisdiction over Count II. Count
13



a single claim element or its equivalent. Lockheed Martin Corp. v. Space Sys./Loral, Ine., 324

F.3d 1308, 1321 (Fed. Cir. 2003).
A. Literal Infringement

“An accused device literally infringes a claim if every limitation recited in the claim
appears in the accused device, i.e., the properly construed claim reads on the accused product
exactly.” Jeneric/Pentron, Ine. v. Dillon Co., 205 F.3d 1377, 1382 (Ped. Cir. 2000), quoting

Amhil Enters., Lid. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996),
B. Infringement Under The Doctrine of Equivalents

An accused device infringes a claim under the doctrine of equivalents if it performs
substantially the same overall function, in substantially the same way, to produce substantially
the same overall result as the claimed invention. Warner-Jenkinson, 520 U.S. at 40; Graver
Tank & Mfg. Co. v, Linde Air Prads. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856 (1950), The
doctrine of prosecution history estoppel may bar a patentee from asserting the doctrine of
equivalents to recapture subject matter that the patentee gave up during prosecution. Warner-
Jenkinson, 520 U.S. at 30,

BACKGROUND

The Court set forth a detailed description of the axial-flow fan that is the subject of the

°015 patent in the Markman Order. Claim 29 recites:

An axial-flow fan comprising
[LJ a drive motor means,
[2] @ scroll plate means surrounding an impeller means having a hub,

[3] an inner contour of said scroll plate means having a cylindrical
configuration in a vicinity of an axial median plane of the fan and extending
towards an inlet side of the fan and

4



invention or the equivalent of every claimed element. See Warner-Jenkinson, $20 U.S, at 29.
Thus, summary judgment as to literal infringement is proper if there is no genuine issue as to
whether the accused device lacks a single required element, Lockheed Martin, 324 F.3d at 1321.
In this case, summary judgment is proper because there is no genuine issue as to whether the

Accused Fans meet claim limitation 4, either lilerally or under the doctrine of equivalents.

Claim limitation 4 requires “an outlet side of the scroll plate means formed into a
polygonal profile circumscribing an impeller diameter.” The Court construed the “polygonal
profile” limitation to mean that the outlet side of the inner contour of the fan housing must be
non-circular in shape due to facets formed by the corner areas of the fan housing on the outlet
side. The Court further noted that a “polygon” is “a closed figure consisting of straight lines
joined end to end,” citing Webster's Third New International Dictionary. (Markman Order at 14

n.10.)
A. Literal Infringement

Papst contends thal the Accused Fans literally infringe Claim 29 becausc the Accused
Fans have a non-circular profile at the inner contour of the outlet side. Sunon argues that Papst
mischaracterizes the Markman Order by ignoring the undisputed definition of “polygon,” and
further argues that under the correct claim construction, the Accused Fans do not literally infringe
Claim 29 because they do not have a profile that consists of a closed-figure consisting of straight

lines. The Court agrees with Sunon.

1, The Markman Order

The parties did not dispute the meaning of the word “polygonal” in their claim

construction briefs. Instead, both parties focused on whether the “polygonal profile” limitation
9



infringement’ and secks further discovery as to certain of those fans. Sunon contends that the
following two models are representative of all of the accused fans: (1) model number SP101A,
part number 1123HST (the “SP Accused Fans”) and (2) model number SF11592A, part number
1092HSL (the “SF Accused Fans”).

A The Magistrate’s Ruling Regarding The SF Accused Fans

The parties have cngaged in numerous discovery disputes throughout the course of this
litigation.* On January 29, 2004, Papst filed a Fourth Motion to Compel in which it sought, inter
alia, production drawings prepared by Sunon Taiwan. Sunon argued that it could not produce
the documents because it lacked control over Sunon Taiwan, On February 4, 2004, Magistrate
Judge Bobrick denied Papst’s motion to compel and “admonishe[d] the parties that fact
discovery closed on January 30, 2004.” (R. 113-1, Minute Order.) Magistrate Judge Bobrick
further ruled that “no further fact discovery activity is allowed.” On February 26, 2004, Papst

filed in this Court an objection to the Magistrate’s ruling.

Papst argues that it needs the production drawings in order to oppose summary judgment
because the production drawings demonstrate that particular SF Accused Fans meet claim

limitation 11.5 Papst incorrectly argues that “(t]his structural difference [regarding Limitation

3 Specifically, Papst accuses the following Sunon fans of infringement: model number DP200A
(part number 2123XBT), DP200A (part number 2123XST), DP203A (part number 2123 LST),
SP100A (part number 1123XSL), SP1O0A (part number 1123XS7T), SP101A (part number
1123HBL), SP101A (part number 1123HBT), SP102A (part number 1123MST), SP103A (part
number 1123LBT), and SP103A (part number 1123LS1). (R. 147-1, Pl.’s Mem. in Opp. to
Summ. J. at 1 1.3.)

4 On October 16, 2003, the Court referred the parties to Magistrate Judge Bobrick to resolve the
discovery disputes, (R. 68-1, Minute Order.)

* The Court construed claim limitation 11 to require that the radial outer edge of the fan blades
extend into the corner areas of the fan. Papst “expects that, due to manufacturing tolerances of
6



[4] with an outlet side of the scroll plate means formed into a polygonal
profile citcumscribing an impeller diameter and

[5] accompanied by formation of corner areas, and

[6] a central, coaxial core means formed by the drive motor means, the
impeller hub and a mounting flange for the drive motor means,

(7] said core means having an annular surface reduced in diameter
towards the inlet side,

[8] the annular surface having an axial length extending for a given
distance along the length of the hub, and

[9] with respect to the axial median plane, the scroll plate means being
asymmetrical in the corner areas and

[LO] being cylindrical over a longer distance from the axial medial plane
to the inlet side than to the outlet side and

[11] wherein the impeller means has an outside edge which extends from
an arca adjacent the inlet side of the fan into the corner areas.

"OLS patent, col. 9, Il. 19-39 (emphases added)? The Court’s claim construction is set forth in
detail in the Markman Order and need not be repeated here.
ANALYSIS

‘To survive summary judgment, Papst must establish a genuine issue as to whether the
Accused Fans meet all cleven claim limitations of Claim 29, Lockheed Martin, 324 P.3d at
1321. Sunon argues that the Accused Fans do not meet claim limitations 3-5, 10, and 11.
Regarding limitation 4, the Court agrees that no reasonable jury could find that the Accused fans
meet the “polygonal profile” requirement either literally or under the doctrine of equivalents.
L The Accused Fans

Before determining whether there is a genuine issuc as to infringement, the Court must

determine which Sunon fans are at issue. Papst accuses twelve different Sunon AC fans of

? ‘The Court numbered the claim limitations for case of reference.
5


Pl.’s Mem. in Opp. to Summ. J. at 18.)

To survive summary judgment, Papst must establish a genuine issue as to whether the
accused devices meet every limitation of the claim, Lockheed Martin, 324 F.3d al 1321. Sunon
met its initial burden by proffering evidence that the pre-1999 fans do not infringe Claim 29, See
Vivid Tech,, 200 F.3d 795 at 807. Specifically, Sunon put forth evidence that the pre-1999 fans
are not materially different from the post-1999 fans, such that Sunon’s noninfringement
arguments with respect to the post-1999 fans apply with equal force to the pre-1999 fans. In its
sur-reply, Papst failed to address Sunon’s evidence and failed to proffer any evidence as to the
structure of the pre-1999 fans. Without any evidence of the structure of the accused devices sold
before 1999, the Court is left with nothing but a bare allegation of infringement. This is
insufficient to survive summary judgment. Lopes v. Hardware Distributors, Lid., No. 02-1146,
2003 WL 1949581 (Fed. Cir. Apr. 23, 2001) (“Without any evidence of the structure of the
accused [device] sold before May 12, 1995, [the patentee] leaves the court to surmise what the
structural configuration of the accused product was before May 12, 1995.... Thus, we
conclude that summary judgment of noninfringement pre-May 12, 1995 products was

appropriate.”),

Papst makes no attempt to meet its burden of showing how the pre-1999 fans meet the
limitations of Claim 29. Accordingly, summary judgment of noninfringement is granted as to the

prte-1999 fans for the same reasons addressed below regarding the post-1999 fans.

Il. The Accused Fans Do Not Infringe The ‘015 Patent Because They Do Not Meet The
*“Polygonal Profile” Limitation Either Literally Or Under The Doctrine Of
Equivalents

Under the all elements rule, an accused device must contain every claimed element of the

8



1 Minute Orékr Form (06/97)
0 United States District Court, Northern District of Mlinois
S

same of ase Jae Amy J. St. Eve Sting ude Oe

CASE NUMBER 03 C 1001 DATE 8/25/2004
CASE Papst vs. Sunonwealth
TITLE

[In the following box (a) indicate the party filing the motion, ¢.g., plaintiff, dcfendant, 3rd party plaintiff, and (b) state briefly the nature
of the motion being presented.]

MOTION:

DOCKET ENTRY:

(1) o Filed motion of [ use listing in “Motion” box above.]}

(2) a Brief in support of motion due

(3) oO Answer brief to motion duc. , Reply to answer brief due

(4) ao Ruling/Hearing onset for at

(5) o Status hearing[held/continued to] [set for/re-set for]on__——sset for at

(6) qo Pretrial conference[held/continued to] [set for/re-set for]on___ssetfor_ at.
(7) QO Trial[set for/re-set for]on__—_at

(8) Oo [Bench/Jury trial] [Hearing] held/continued to at

(9) o ‘This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to}

OOFRCP4(m) ClLocal Rule 41.1 CFRCP41(a)\(1) C/FRCP41(a)(2).
ao oi {Other docket entry] Enter Memorandum Opinion and Order. Sunon’s motion for summary judgment on

Count lis granted. The Court declines to exercise supplemental jurisdiction over Count Il. All pending motions are
denied as moot. Status hearing set for 9/7/04 is stricken. Any other pending dates are stricken.

(al [For further detail see order attached to the original minute order.]

No notices required, advised in open court.

No notices required. wnber uf nti

AUG 27 2004

date docketed

_ Docketing to mail notices. JM M

Mail AQ 450 form.

Notices mailed by judge's staff.

Notified counsel by telephone.

mo peepee ngs ocketing deputy initials
Copy to judge/magistrate judge. an Dyess
/ courtroom yh th ©. “py Agez dace mailed notlow
TH deputy's Bi ee Sh Tuk
initials
Date’time reeeivedhin
* central Clerk's Office ‘rsiling deputy initials



undisputed that the profile of the outlet side is substantially circular in all areas except for the

allegedly slightly flattened areas.

On summary judgment, the Court accepts Papst’s characterization of the shape of the
inner contour of the outlet side of the Accused Fans as having slightly flattened areas where the
circular profile meets the four edges of the box fan. Even accepting Papst’s characterization,
however, the Accused Fans do not literally infringe Claim 29 because they do not have a profile
that is “polygonal,” i.e., consisting of “a closed figure consisting of straight lines joined end to
end.” It is undisputed that the Accused Fans have an outlet side that is substantially circular but
for the slightly flattened transition areas that Papst contends are present along the four edges of
the Accused Fans. It is therefore undisputed that the Accused Fans lack profiles on the outlet
side that are in the shape of “a closed figure consisting of straight lines joined end to end.” The
Accused Fans do not literally infringe.

B. Doctrine of Equivalents

Sunon argues that the doctrine of argument estoppel bars Papst from claiming that the
substantially circular profile of the outlet side of the Accused Fans is equivalent to the
“polygonal profile” of claim limitation 4.° The Court agrees.

Prosecution history estoppel bars a patentee from asserting as an equivalent subject

matter that he surrendered during prosecution of the patent application. Allen Eng'g Corp. v.

® Papst did not respond to Sunon’s estoppel argument. This is improper. Papst must contest the
legal authority advanced by Sunon in order to sufficiently rebut Sunon’s arguments. Aaderson v.
Hardman, 241 F.3d 544, 545 (7° Cir. 2001). “A litigant who fails to press a point by supporting
it with pertinent authority, or by showing why it is sound despite a lack of supporting authority or
in the face of contrary authority, forfeits the point.” Pedfresne v. Village of Williams Bay, 917
F.2d 1017, 1023 (7 Cir. 1990).

1



referred to the overall shape of the fan or the shape of the inner contour at the outlet side.

In resolving this dispute, the Court rejected Papst’s position that the term “polygonal
profile” referred to the overall shape of the fan. The Court ruled that the word “polygonal”
referred to the inner contour of the fan and adopted Sunon’s proposed construction: “the outlet
side of the inner contour of the fan housing is non-circular in shape due to facets formed by the
corner areas of the fan housing on the outlet side.” (Markman Order at 14.) ‘The Court further
made clear that the undisputed term “polygon” means “a closed figure consisting of straight lines
joined end to end.” (Markman Order at 14.n.10.) The Court explicitly ruled that, while the claim
language did not require a polygon of a particular size or shape, it nonetheless required a
“polygon.” (Markman Order at 14) (stating that the claim requires that “the inner contour have a

‘polygonal profile,’ which can mean any polygonal shape.”).

Papst improperly ignores the Court’s definition of “polygon” and instead seizes on the
term “non-circular.” This is inconsistent with the Markman Order. The definition of “polygon”

is clearly part of the claim construction ruling which Papst may not disregard.

2. The Accused Fans
Papst contends that the Accused Fans have a profile on the outlet side that is not perfectly
circular but rather has four tiny transition areas or “facets” al the middle of each of the straight
sides of the box fan. (The shape resembles a circle that is slightly flattened where the circular
profile meets the four edges of the box fan.) Papst argues that these flattened areas of the circle
cause the inner contour of the fan housing to have a non-circular profile that meets the
“polygonal profile” limitation, (R. 147-1, Pl.’s Mem, in Opp. to Summ. J. at 9.) Sunon disputes

that the Accused Fans have straight-lined “facets” on the outlet side, and notes that it is

10



11] by itself would be sufficient to preclude grant of the requested summary judgment as to all

accused fans.” (R. 147-1 at 1.)

Whether the Accused Fans meet claim limitation 11, however, is irrelevant because the
Accused Fans do not meet claim limitation 4. Thus, even assuming that the Accused Fans meet
claim limitation 11, Papst cannot establish infringement. Under the all elements rule, Papst’s
failure to establish infringement as to one of the eleven claim limitations is fatal to Papst's
infringement claim. Deering, 347 F.3d at 1324. Accordingly, Papst is not entitled to the Sunon
Taiwan production drawings, and Papst’s motion objecting to the magistrate’s ruling is denied.

B. Pre-1999 Fans

The parties dispute whether Sunon’s summary judgment motion properly encompasses
fans that Sunon’s predecessor or Sunon’s parent sold before 1999 (the “pre-1999 fans”). Sunon
contends that summary judgment of noninfringement is warranted against the pre-1999 fans for
the same reasons summary judgment is warranted against the post-1999 fans (/.¢., the fans do not
meet all of the claim limitations) because there is no material difference between the pre- and
post-1999 fans, Papst argues that there is a genuine issue as lo whether the pre- and post- 1999
fans are materially different because “Sunon chose not to submit a competent declaration that all

accused products have the identical construction as the SP and SF Accused Products.” (R. 147-1,

the relevant component parts, the position of the outside edge of the fan blades with respect to
the ‘comer areas’ varies across various production runs of the SF fans so that many SF fans are
infringing while others are not.” (R. 147-1, Pl.’s Mem, in Opp, to Summ. J. at 2-3.) To support
this assertion, Papst identifies two SF fans (Exhibit A and Exhibit 28) that have the same model
and part numbers but nonctheless appear to differ structurally with respect to claim limitation 11.
Papst further appears lo argue that there are structural differences between particular SP Accused
Fans with respect to the “cylindrical configuration” requirement of claim limitations 3 and 10.
(R. 147-1, PL.’s Mem. in Opp. to Summ. J. at 17.)

7



IL. Patent Infringement

A determination of patent infringement is a two-step process in which the Court first
construes the claims. Cybor Corp. v, FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en
banc). The factfinder then compares the properly construed claims to the accused device to
determine, as a question of fact, whether all of the claim limitations are present in the accused
device. fd. at 1454; Int'l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1369 (Fed. Cir. 2004).

Because the ultimate burden of proving infringement rests with the patentee, an accused
infringer seeking summary judgment of noninfringement may meet its initial burden either by
providing evidence that would preclude a finding of infringement, or by showing that the
evidence fails to establish a material issuc of fact essential to the palentee’s case. Vivid Tech.,
Inc. v. American Sci. & Eng'g, Inc., 200 F.3d 795, 807 (Fed. Cir. 1999). Summary judgment of
noninfringement may be granted if, after viewing the alleged facts in the light most favorable to
the patentee and drawing all justifiable inferences in the patentee’s {avor, there is no genuine
issue as to whether the patent claims encompass the accused device. Novartis Corp. v. Ben
Venue Labs. Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001); Pitney Bowes, Inc. v. Hewlett-Packard

Co,, 182 F.3d 1298, 1304 (Fed. Cir. 1999).

“To prove infringement, the patentee must show that the accused device meets each claim
limitation.” Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc., 347 F.3d 1314,
1324 (Fed. Cir. 2003). This is known as the “all elements rule.” See Warner-Jenkinson Co. v.
Hilton Davis Chem. Co., $20 U.S. 17, 29, 117 S. Ct. 1040 (1997); Pennwalt Corp. v. Durand-

Wayland, Inc., 833 F.2d 931, 935-36 (Fed. Cir. 1987) (en banc). Summary judgment of

noninfringement is proper where there is no genuine issue as to whether the accused device lacks



I presents a question of state law, and the parties are not diverse undcr 28 U.S.C. § 1332(a)
because the parties are both foreign corporations (Papst is a German company and Sunon Taiwan
is a Taiwancse company). A foreign company cannot sue another foreign company in federal
court where there are no domestic parties in the dispute. 28 U.S.C. § 1332(a); Bank of Nova
Scotia v. S & W Berisford, Inc., 753 F. Supp. 237, 238 (N.D. Ill. 1990); /TT v. Vencap, 519 F.2d
1001, 1015 (2 Cir, 1975) (“Diversity jurisdiction under 28 U.S.C. § 1332 is defeated by the

presence of aliens both as plaintiffs and as defendants.”).

The Court may in its discretion retain supplemental jurisdiction even though it has
dismissed the non-diverse parties’ federal claim. 28 U.S.C. § 1367(c). Section 1367(c) allows a

district court to decline to exercise supplemental jurisdiction under the following circumstances:

(1) the claim raises a novel or complex issue of Stale law,
(2) the claim substantially predominates over the claim or claims over
which the district court has original jurisdiction,
(3) the district court has dismissed all claims over which it has original
jurisdiction, or
(4) in exceptional circumstances, there arc other compelling reasons for
declining jurisdiction.
28 U.S.C. § 1367(c). In this case, the issues involving the patent license are complex and the
Court has dismissed al! claims over which it had original jurisdiction. Accordingly, the Court
declines to retain supplemental jurisdiction over the remaining non-federal claim.
B Papst Failed To Timely Serve Sunon Taiwan
Moreover, even if the Court decided to exercise its supplemental jurisdiction over Count
Il, Plaintiff has failed to timely serve Sunon Taiwan, the only defendant named in Count II.

Federal Rule of Civil Procedure 4 governs service of process. Although the 120 day limitation of

Rule 4(m) does not apply to the service of process on a corporation in a foreign country, “this

14



explained how the subsequent 16-month delay is reasonable, James, 1997 WI, 151174 at *5.
CONCLUSION
There is no genuine issue as to whether the Accused Fans literally infringe the “polygonal
profile” limitation as construed by the Court in the Markman Order, and there is no genuine issue
as to whether prosecution history bars Papst from asserting the doctrine of equivalents as to the
“polygonal profile” limitation, Accordingly, summary judgment is granted in favor of Sunon as

to Count I. The Court declines to retain supplemental jurisdiction over Count II .

Dated: August 25, 2004 ENTERED

Cab. £

AMY J. ST. EVE)
Uniled States District Court Judge



agreement. On March 19, 2004, the Court issued an order construing Claim 29 of the ’015
patent, the only disputed claim, Paspf Licensing GmbH and Co., KG. v. Sunonwealth Elec.
Mach. Ind. Co,, Lid., No. 03 C 1001, 2004 WL 557385 (Mar. 19, 2004) (“Markman Order”).
Sunon thereafter moved for summary judgment of noninfringement as to Claim 29. For the
reasons stated herein, summary judgment is granted as to Count I, and Count Il is dismissed for
lack of jurisdiction.
LEGAL STANDARDS

1. Summary Judgment

Summary judgment is proper when “the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to a judgment as a
matter of law.” Fed. R. Civ. P. 56(c). A genuine issue of triable fact exists only if “the evidence
is such that a reasonable jury could return a verdict for the nonmoving party.” Pugh v. City of
Attica, 259 F.3d 619, 625 (7" Cir, 2001) (quoting Anderson v, Liberty Lobby, Inc., 477 U.S. 242,
248, 106 8. Ct. 2505, 2510 (1986)). The party seeking summary judgment has the burden of
establishing the lack of any genuine issuc of material fact, Celotex Corp. v. Catrett, 477 U.S.
317, 322-23, 106 S. Ct. 2548, 2552 (1986). A party will successfully oppose summary judgment
only if it presents “definite, competent evidence (o rebut the motion.” Equal Employment
Opportunity Comm'n v, Roebuck & Co., 233 F.3d 432, 437 (7" Cir. 2000). ‘The Court “considers
the evidentiary record in the light most favorable to the nonmoving party, and draws all

reasonable inferences in his favor.” Lesch v, Crown Cork & Seal Co., 282 F .3d 467, 471 (7

Cir. 2002).



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF [LLINOIS
EASTERN DIVISION

PAPST LICENSING GmbH AND CO, KG,

Plaintiff,
No. 03 C 1001
v.

SUNONWEALTH ELECTRIC MACHINE IND.
CO., LTD., SUNON INC., AND BEYOND
COMPONENTS OF ILLINOIS, INC.,

DOCKETEL
AUG 27 2004

)

)

)

)

)

)

)

)

)

)
Defendants. J
)

)
SUNON INC., )
)
Counter-Plaintiff, )

)

v. )

)

PAPST LICENSING GmbH AND CO. KG, )
)

)

Counter-Defendant.

MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Court Judge:

Plaintiff Papst Licensing GmbH and Co. KG (“Papst”), a German company, filed a two
count complaint against Defendants Sunon Inc., a California corporation, and Beyond
Components of Illinois, Inc., an Illinois corporation (collectively “Sunon”).' In Count I, Papst
accuses Sunon of infringing United States Patent No. 4,734,015 (“the °015 patent”) in violation

of 35 U.S.C. § 271. In Count II, Papst accuses Sunon Taiwan of breaching a patent license

‘ The complaint also names as a defendant Sunonwealth Electric Machine Co., Ltd. (“Sunon
Taiwan”), a Taiwanese company, but Papst has not yet served Sunon Taiwan. UY



Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002); American Permahedge, Inc. v.
Barcana, Inc., 105 F.3d 1441, 1445-46 (Fed. Cir. 1997), Argument-based estoppel may arise
where a patentee makes arguments during prosecution in order to secure the allowance of a
claim. See Elkay Mfg. Co. v, Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999) (holding that the
scope of coverage of the claims may change if a patentee has “relinquished [a] potential claim
construction in an amendment to the claim or in an argument to overcome or distinguish a
reference”); Allen Eng’g, 299 F.3d at 1350. Whether prosecution history estoppel applics is a

matter of law. Bai v. L&L Wings Inc., 160 F.3d 1350, 1354 (Fed. Cir. 1998).

During prosecution, Papst distinguished its claimed invention from prior art fans with
substantially circular profiles on the outlet side. In response to an obviousness rejection of Claim
17 in view of United States Patent No. 4,225,285 to Sturm in combination with United States
Patent No. 4,373,861 to Papst et. al, Papst® argued that the Sturm fan did not have a “polygonal

profile.” In traversing the rejection, Papst argued that

Sturm’s fan does not have substantially polygonal inlets and outlets with a
substantially circular mid section axially in the flow direction. Sturm has

’ This portion of the prosecution history relates to Claim 1. Claim 29 was introduced later
during prosecution by way of amendment. When the applicant introduced Claim 29, he stated
that Claim 29 is identical to Claim 1 except for a change in wording in the last line. The
applicant’s arguments made to overcome rejections with respect to Claim | are therefore binding
as to the identical “polygonal profile” limitation of Claim 29, even though Claim 29 was not
itself amended. Jntermatic Inc. y. Lamson & Sessions Co., 273 F.3d 1355, 1366-67 (Fed. Cir.
2001); Builder's Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 260 (Fed. Cir,
1985); see also Southwail Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1584 (Fed. Cir. 1995)
(“Once an argument is made regarding a claim term so as to create an estoppel, the estoppel will
apply to that term in other claims.”).

® As noted in the Court’s Markman Order, the Court adopts the parties’ convention and refers to
the arguments as having been made by Papst, when in reality the applicant Wrobel made these
arguments.

12



does not mean that plaintiffs have unlimited time to serve.” Travers Tool Co. v. Southern
Overseas Express Line, Inc,, No. 98 CV 8464(RO), 2000 WL 194781, at *1 (S.D.N.Y, Feb. 17,
2000); see ulso In re Crysen/ Montenay Energy Co., 166 B.R. 546, 553 (S.D.N.Y. 1994) (“The
mere fact that Congress exempted foreign service from the120-day requirement[] does not give
litigants an unlimited time in which to complete service.”). “Rather, where service is in a foreign
country, the Court uses a flexible due diligence standard to determine whether service of process
was timely.” Standard Commercial Tobacco Co. v. Mediterranean Shipping Co., No. 94 CIV
7040, 1995 WL 753901, at *1 (S.D.N.Y. Dec. 19, 1995). The “flexible due diligence” standard
is measured by the reasonableness of the plaintiff's effort as well as the prejudice to the
defendant from any delay. James v. Rutil (S.R.L.), No. IP 95-530-C-B/S, 1997 WL 151174 (S.D.
In. Mar, 14, 1997); People’s Ins. Co. of China v. M.V. Amalia Del Bene, No. 96-1088, 1996 WL

337256 (E.D. La, June 18, 1996).

In this case, Papst has not exercised reasonable diligence in attempting to serve Sunon
Taiwan. Papst filed its complaint on February 11, 2003. (R. 1-1, Compl.) On April 25, 2003,
Papst represented to the Court that its “process server has forwarded the appropriate documents,
including a fully executed Letters Rogatory from the Court, to the appropriate Taiwanese
governmental authorities. According to Papst Licensing’s process server who specializes in
foreign service, completion of service on Sunon Taiwan by the appropriate Taiwanese
governmental authorities can take up to several months, if not longer, to complete.” (R. 13-1,
Proposed Alternative Scheduling Plans at 1.) As of the date of this order — over one and a half’
years after Papst filed its complaint — Papst still has not served Sunon Taiwan, Although Papst

promptly initiated the complicated procedure required to serve process in Taiwan, Papst has not

15