## Facts

- Matsushita Electric Industrial Co., Ltd. (MEI), a Japanese corporation, sued Cinram International, Inc. (Cinram), a Canadian optical-media replicator, for infringement of patents relating to optical information media, including DVDs.
- MEI initially asserted five patents; Cinram took licenses to three, MEI withdrew another, and the case proceeded on U.S. Patent Nos. 5,681,634 and 5,972,250.
- The asserted patents address two-substrate optical discs bonded with resin and the problem of resin protruding into the center hole during bonding, which can interfere with disc mounting on a player spindle.
- The claimed solution includes a structural region near the center hole described as a “stopper” that blocks resin from entering the hole during bonding.
- Cinram manufactured DVDs using a process that dispensed UV-curable resin near the center region, then cured it; MEI contended Cinram’s discs and/or process contained the claimed stopper structure or an equivalent.
- Cinram denied infringement and asserted invalidity based on prior art disc structures and bonding techniques, arguing anticipation and obviousness.
- The court addressed multiple cross-motions for summary judgment concerning infringement (literal and equivalents), invalidity (anticipation and obviousness), and a request to bifurcate certain issues.

## Issues

1. Whether Cinram was entitled to summary judgment of noninfringement (literal or under the doctrine of equivalents) of the ’634 and ’250 patents.
2. Whether Cinram was entitled to summary judgment that asserted claims were invalid for anticipation under 35 U.S.C. § 102.
3. Whether Cinram was entitled to summary judgment that asserted claims were invalid for obviousness under 35 U.S.C. § 103.
4. Whether case-management considerations warranted bifurcation of non-patent issues from infringement and validity issues.

## Decision

- The court applied the Rule 56 standard, requiring judgment as a matter of law only where no genuine dispute of material fact existed, with evidence viewed in the nonmovant’s favor.
- On infringement, the court concluded that disputes in the record—particularly competing expert evidence about the accused disc geometry, resin behavior, and whether a stopper (or its equivalent) was present—prevented summary judgment of noninfringement on key limitations.
- On the doctrine of equivalents, the court held that evidence supporting the function/way/result equivalence theory created triable fact questions and barred summary judgment for Cinram where asserted.
- On invalidity, the court declined to grant summary judgment of anticipation or obviousness where the parties materially disputed whether the prior art disclosed (or would have made obvious) the claimed stopper-related structure and its claimed configuration.
- On bifurcation, the court addressed efficiency and potential prejudice and structured proceedings to prioritize the technically complex patent liability issues while reserving flexibility as to other matters.

## Legal Principles

- Summary judgment is proper only when there is no genuine dispute of material fact and the movant is entitled to judgment as a matter of law; courts draw reasonable inferences for the nonmovant.
- Patent infringement analysis proceeds by construing the claims and then comparing the accused product/process to the construed claims; factual disputes about how the accused product operates or is structured can preclude summary judgment.
- The doctrine of equivalents may apply where the accused feature performs substantially the same function in substantially the same way to achieve substantially the same result; competing expert evidence commonly creates fact issues for trial.
- Anticipation requires a single prior art reference to disclose every claim element; disputes over whether a reference teaches the claimed structure and arrangement can defeat summary judgment of invalidity.
- Obviousness turns on the scope and content of the prior art, differences from the claims, and the level of ordinary skill (and may include secondary considerations); conflicting evidence on motivation/teaching and claimed differences can require trial.

## Conclusion

The court largely denied the parties’ cross-motions for summary judgment because material factual disputes—especially those grounded in competing technical and expert evidence about the “stopper” feature and prior art disclosures—required resolution at trial, while managing the case to focus first on the central patent infringement and validity questions.


Matsushita Elec. Indus. Co. v. Cinram Int'l, Inc., 299 F. Supp. 2d 348 (D. Del. 2004)