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Warner Mfg. Co. v. Armstrong et al.: US District Court: PATENT - declaratory judgment of non-infringement;1The Court will generally refer to defendants collectively as “Forest Group.” BecauseArmstrong is also a witness in this case and was the patent applicant, the Court will refer to him specifically by name as appropriate. UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA WARNER MANUFACTURING CO., Plaintiff, v. WILLIAM D. ARMSTRONG, JOE LIN, and THE FOREST GROUP, INC., Defendants. Case No. 05-CV-0612 (PJS/JJG) ORDER Paul E. Lacy, THE LAW OFFICE OF PAUL E. LACY, LTD., for plaintiff. James Richard Mary, Jr., RICHARD MARY, APLC; Richard R. Arrett, VIDAS ARRETT & STEINKRAUS, for defendants. This matter is before the Court on the motion of plaintiff Warner Manufacturing Co. for summary judgment. Warner, a maker of stilts, seeks a declaratory judgment that Warner’s stilts do not infringe claim 1 of United States Patent No. 5,645,515 (the ‘515 patent), that claim 1 of the patent is invalid, and that the patent is unenforceable. For the reasons that follow, the Court grants Warner’s motion with respect to infringement and denies the motion with respect to invalidity and unenforceability. I. BACKGROUND Defendants William Armstrong and Joe Lin are the named inventors of the ‘515 patent, an improvement patent related to stilts worn primarily by construction workers. Armstrong and Lin have assigned the patent to defendant the Forest Group, Inc.1 - 2 - Forest Group informally accused Warner of making stilts that infringe the ‘515 patent. Warner then brought this declaratory-judgment action in March 2005. Shortly after a claimconstruction hearing on March 20, 2007, the Court issued an order construing disputed terms of claim 1 of the ‘515 patent, in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). Markman Order [Docket No. 73]. Further detail about the patented stilt design is provided in that order and need not be repeated here. In light of the Court’s claim construction, Warner has moved for summary judgment of noninfringement, invalidity, and unenforceability. Although a judgment on any of these grounds would relieve Warner of liability, the Federal Circuit has established a general rule that courts should decide both invalidity and infringement when those issues are properly presented in a single case. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983); Mycogen Plant Science, Inc. v. Monsanto Co., 61 F. Supp. 2d 199, 242 (D. Del. 1999) (“In a case where the court is presented with patent validity and infringement issues, the Federal Circuit instructs that the court should decide both issues.”). Accordingly, the Court addresses all of Warner’s arguments below. II. DISCUSSION A. Standard of Review Summary judgment is appropriate “if 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 dispute over a fact is “material” only if its resolution might affect the outcome of the suit under the governing substantive law. Anderson v. Liberty 2As a general rule, a party challenging a patent claim on obviousness grounds must show that the claim as a whole is obvious, not just that a particular limitation within the claim is obvious. See 35 U.S.C. § 103(a) (“subject matter as a whole” must be nonobvious); Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1479-80 (Fed. Cir. 1998) (“In determining obviousness, the invention must be considered as a whole and the claims must be considered in their entirety.”). In this case, Warner assumes that the obviousness of the claimed invention as a whole reduces to the question whether the “capturing bracket” is obvious. Because Forest Group does not dispute this assumption, and because the Court rejects Warner’s obviousness argument even on its own terms, the Court assumes that if the “capturing bracket” were obvious, the claimed invention - 3 - Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute over a fact is “genuine” only if the evidence is such that a reasonable jury could return a verdict for either party. Ohio Cas. Ins. Co. v. Union Pac. R.R., 469 F.3d 1158, 1162 (8th Cir. 2006). In considering a motion for summary judgment, a court must assume that the nonmoving party’s evidence is true. Taylor v. White, 321 F.3d 710, 715 (8th Cir. 2003). B. Validity Warner contends that claim 1 of the ‘515 patent is invalid under § 103 because it is obvious. To be entitled to summary judgment on this ground, Warner must show that a reasonable jury would find, by clear and convincing evidence, that claim 1 of the ‘515 patent is obvious. See, e.g., Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1353 (Fed. Cir. 2003) (“obviousness . . . must be established by clear and convincing evidence”). Warner has failed to make this showing. Warner argues that claim 1 of the ‘515 patent is obvious because one particular feature of the claimed invention — the “capturing bracket” — is obvious in light of a single piece of prior art: a stilt illustrated in an August 1993 cost sheet from WalBoard Tools. Pl. Mem. Supp. Mot. S.J. at 3-5 [Docket No. 78] (“Pl. S.J. Mem.”). The Court finds that this piece of prior art does not render claim 1 obvious.2 would be obvious too. - 4 - This Court construed the claim limitation “capturing bracket” in claim 1 of the ‘515 patent to mean “[a] bracket (1) into which the lower end of the leg support fits and (2) that prevents significant downward or lateral movement of the lower end of the leg support.” Markman Order at 8. Such a bracket could be U-shaped, with the open portion of the U toward — and closed by — the inside of the stilt (as depicted in Figures 2 and 3 of the ‘515 patent), or it could be a socket of some kind into which the lower end of the leg support fits. But to “capture” the leg support, the bracket itself must surround the leg support; otherwise, the bracket would not “prevent[] significant downward or lateral movement of the lower end of the leg support,” as the Court’s claim construction requires. The bracket on the stilt pictured in the WalBoard catalog does not surround the leg support. Instead, the bracket is U-shaped, with the open portion of the U facing toward the outside of the stilt and a bolt passing transversely from one side of the U, through the leg pole, to the other side of the U. While the sides of the U-shaped bracket prevent the leg support from moving laterally in two directions, the bracket alone does nothing to prevent either downward or outward movement of the leg support. Perhaps the base plate of the stilt prevents downward movement, as Forest Group argued at the summary-judgment hearing, but the bracket itself does not prevent such movement. See Hr’g Tr. at 8-10, July 10, 2007. And because the open part of the U bracket is toward the outside of the stilt, nothing prevents the leg support from flying outward if the transverse bolt fails. In short, the WalBoard stilt is not very different from the prior art cited to the U.S. Patent and Trademark Office (“PTO”) during prosecution of the ‘515 patent application. Both the prior - 5 - art cited to the PTO and the WalBoard stilt rely primarily on fasteners to prevent the lower end of a leg support from moving. The “capturing bracket” of the claimed invention, by entirely enclosing (i.e., capturing) the leg support, adds a level of protection beyond that provided by fasteners alone. Warner attempts to bolster its obviousness argument by suggesting that a capturing bracket could be created from the WalBoard stilt by taking that stilt’s yoke, which holds the upper portion of the leg support, and combining it with the bracket at the bottom of the WalBoard stilt. Pl. S.J. Mem. at 4. Even this design, however, remains dependent on a fastener to keep the lower leg of the stilt in place, as Warner’s counsel conceded at the summaryjudgment hearing. Hr’g Tr. at 12-13, July 10, 2007. This hypothetical design is essentially two separate U-shaped brackets with their open ends facing each other to create an opening for the leg support, and with a bolt passing transversely through the sides of the two brackets and the center of the support. It is not a “capturing bracket” at all, and it does not make such a bracket obvious. The ‘515 patent’s approach of enclosing the leg support in a “capturing bracket” or socket does not strike the Court as being a radical innovation. But the WalBoard prior art alone, on which Warner’s entire argument rests, does not provide clear and convincing evidence that claim 1 of the ‘515 patent was obvious at the time of the patent application. C. Infringement Claim 1 of the ‘515 patent covers only stilts with a “resiliently lined yoke,” a claim limitation that the Court construed as follows: A yoke or clamp lined with a material that is capable of being elastically or reversibly deformed. The lining must be distinct - 6 - from the yoke or clamp itself, but need not be made of a different material. Markman Order at 6. Warner argues that this claim limitation is not present in its stilts, and that therefore, as a matter of law, its stilts do not infringe claim 1 of the ‘515 patent either literally or under the doctrine of equivalents. The Court agrees. It is undisputed that, over time, Warner’s stilts have had four different types of yokes. For purposes of Forest Group’s infringement allegations, these yokes can be grouped into two categories. The first category includes three types of yokes: (1) a plain yoke of extruded aluminum (used on Warner’s current model of stilts); (2) a painted yoke of extruded aluminum; and (3) an anodized yoke of extruded aluminum. The second category includes a single type of yoke: an extruded-aluminum yoke that has been powder coated. The Court addresses each category in turn. 1. Category One: Purportedly Resilient-Bodied Yokes The three yokes in the first category have one thing in common: They are not resiliently lined. A plain extruded-aluminum yoke obviously lacks a lining of any kind. Forest Group seems to hope that with more time, it can gin up a literal-infringement case against stilts with plain aluminum yokes based on the Court’s claim construction. While conceding that Warner’s stilts “d[o] not contain a ‘lining’ made from a separate material,” Forest Group says that it “has not completed scientific testing of the yoke to determine if it has different properties which could possibly fit within the definition of ‘a [sic] distinct from the yoke or clamp itself.’” Def. Opp. Mot. S.J. at 9 [Docket No. 81]. The time for such testing has passed. If Forest Group had evidence that a plain, solid extruded-aluminum yoke could be said to have a lining “distinct from the yoke or clamp itself” 3Armstrong states in his affidavit that Warner has made “[a] painted yoke made of extruded aluminum which protects the leg pole through its resiliency; and . . . [a]n anodized yoke made of extruded aluminum which protects the leg pole through the resiliency of the yoke.” Armstrong Aff. at 4 (emphasis added). - 7 - — a dubious proposition, to put it mildly — Forest Group was obligated to submit that evidence in response to Warner’s summary-judgment motion. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986) (party opposing summary judgment must provide “significantly probative” evidence to defeat summary judgment); Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986) (“[o]ne of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims and defenses”). As to the painted and anodized yokes, Forest Group has no evidence that either paint or anodization provides a “resilient lining.” Forest Group’s only evidence about the properties of any yokes — whether plain, painted, or anodized comes from an affidavit of Armstrong. As to all three types of yokes, Armstrong does not assert that any of these yokes is resiliently lined. Rather, he argues that the entire yoke is itself resilient.3 This group of yokes can therefore be called “purportedly resilient-bodied” yokes. Because plain, painted, and anodized yokes lack a resilient lining, Forest Group cannot establish that they literally infringe the ‘515 patent. Forest Group is instead limited to arguing that these yokes infringe the ‘515 patent under the doctrine of equivalents, because a resilientbodied yoke protects the enclosed leg pole from damage through overtightening, just as would a resiliently lined but non-resilient-bodied yoke. In effect, Forest Group argues that solid rubber yoke would be equivalent, for infringement purposes, to a rubber-lined metal yoke. The Court disagrees. - 8 - Before turning to the merits of Forest Group’s doctrine-of-equivalents argument, however, the Court rejects Warner’s contention that the doctrine does not apply in this case. Warner argues that Forest Group is foreclosed, as a legal matter, from arguing infringement under the doctrine of equivalents because of actions taken by Armstrong during the prosecution of the ‘515 patent. Pl. S.J. Mem. at 6-7. Warner is mistaken. The PTO rejected claim 1 of the ‘515 patent as obvious. PTO Office Action, June 19, 1996 (Lacy Decl. Ex. D [Docket No. 40]). In response, Armstrong amended the patent application to add, at the end of claim 1, the phrase “said lower end and said capturing bracket engaged by a fastener so as to remain engaged despite failure of said fastener.” Amendment at 2-4, Dec. 20, 1996 (Lacy Decl. Ex. D [Docket No. 42]). In making that amendment, Armstrong did not surrender any claim scope with respect to the resiliently lined yoke. Warner appears to think that a patent applicant who narrows one claim limitation to overcome a rejection thereby loses, as a result of prosecution-history estoppel, the right to assert that other claim limitations are met under the doctrine of equivalents. This is simply not the law. The doctrine of prosecution-history estoppel prevents a patentee from reclaiming, through the doctrine of equivalents, that portion of a claim’s scope that was surrendered in the course of prosecution to gain allowance of a patent. See Hughes Aircraft Co. v. United States, 140 F.3d 1470, 1476 (Fed. Cir. 1998) (“the key to prosecution history estoppel is the surrender or disclaimer of subject matter by the patentee, which the patentee is then unable to reclaim through the doctrine of equivalents”). Prosecution-history estoppel thus necessarily applies at the level of individual limitations within claims, and not at the level of entire claims. See Insituform Techs., Inc. v. Cat Contracting, Inc., 385 F.3d 1360, 1367 (Fed. Cir. 2004) (discussing - 9 - presumption that “a narrowing amendment made for a reason of patentability surrenders the entire territory between the original and the amended claim limitation”) (emphasis added). Armstrong narrowed the capturing-bracket limitation to gain allowance; he did not amend in any way, let alone narrow, the resiliently-lined-yoke limitation. Accordingly, Armstrong is free, as a legal matter, to argue that Warner’s stilts infringe claim 1 of the ‘515 patent because the stilts meet the resiliently-lined-yoke limitation under the doctrine of equivalents. Because the ‘515 patent is an improvement patent in a crowded field, the doctrine of equivalents has a narrow scope with respect to claim 1. See, e.g., Data Race, Inc. v. Lucent Techs., Inc., 73 F. Supp. 2d 698, 740 (W.D. Tex. 1999) (“inventions in a crowded field are often restricted to a narrow range of equivalents, if any”). That is, to be equivalent to an element in claim 1 of the ‘515 patent, an element of an accused device must be very similar to the patented claim element. For several reasons, the Court holds that no reasonable jury could find that a plain, painted, or anodized yoke is equivalent to the resiliently lined yoke described in claim 1 of the ‘515 patent. Infringement under the doctrine of equivalents is generally determined by applying the “function-way-result” test: An accused device includes the “equivalent” of a claim element only if the accused device includes an element that achieves substantially the same function as the claim element, in substantially the same way, with substantially the same result. Bus. Objects, S.A. v. Microstrategy, Inc., 393 F.3d 1366, 1374 (Fed. Cir. 2005) (“Infringement under the doctrine of equivalents occurs when a claimed limitation and the accused product perform substantially the same function in substantially the same way to obtain substantially the same result.”). As noted above, this doctrine applies narrowly in a case (like this) involving a simple - 10 - improvement patent. In addition, the doctrine’s application is limited by the “all-elements rule,” under which “the doctrine of equivalents does not apply if applying the doctrine would vitiate an entire claim limitation.” Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005). The all-elements rule forecloses application of the doctrine of equivalents in this case. The claim element at issue, a “resiliently lined yoke,” has been construed by this Court to mean “[a] yoke or clamp lined with a material that is capable of being elastically or reversibly deformed. The lining must be distinct from the yoke or clamp itself, but need not be made of a different material.” Markman Order at 6 (emphasis added). This claim limitation requires a resilient lining. This Court concludes, as did Judge Atlas of the United States District Court for the Southern District of Texas in a separate case involving the ‘515 patent, that to hold that an unlined yoke is equivalent to a yoke with a lining would vitiate this limitation entirely. See Forest Group, Inc. v. Bon Tool Co., No. H-05-4127, Mem. and Order at 9 (S.D. Tex. Aug. 3, 2007) (“The claim limitation in the ‘515 Patent requires a resiliently lined yoke. Finding infringement under the doctrine of equivalents based on an unlined yoke would entirely vitiate this claim element and is impermissible.”) (Pl. Supp. Mem. Ex. 2 [Docket No. 87]). A stilt with an unlined but resilient-bodied yoke therefore cannot, as a matter of law, infringe claim 1 of the ‘515 patent under the doctrine of equivalents. Further, even if the all-elements rule did not prevent application of the doctrine of equivalents, no reasonable jury could find infringement under that doctrine, because Forest Group’s evidence of infringement is insufficient as a matter of law. Forest Group’s evidence consists solely of an affidavit by Armstrong. His key assertions are: - 11 - The resilient lining as referenced in the patent protects the leg pole from damage when the [yoke] is over tightened through the absorption of the excess energy by the resiliency of the lining. . . . Plaintiff’s yoke protects the leg pole from damage when the yoke is over tightened through the absorption of the excess energy by the resiliency of the yoke, including the resiliency of the lining. . . . The substitution of a yoke which through its overall resiliency protects the leg pole for a yoke with a separate resilient lining would be obvious to one skilled in the art. Armstrong Aff. at 3 [Docket No. 81]. The last-quoted assertion, about obviousness, would be relevant if Warner were trying to patent the accused stilt; it is simply irrelevant to whether the Warner stilt’s yoke is equivalent to a resiliently lined yoke. Further, none of the quoted paragraphs addresses the “function-wayresult” test for infringement under the doctrine of equivalents. To the extent that a “functionway- result” analysis is implicit in Armstrong’s affidavit, the analysis points away from infringement. The “function” implicit in Armstrong’s affidavit is “protect[ing] the leg pole from damage when the yoke is over tightened”; the implicit “result” is affording such protection. Id. The implicit “way” the resiliently lined yoke of claim 1 of the ‘515 patent achieves this function and result is “through the absorption of the excess energy by the resiliency of the lining.” Id. But according to Armstrong, the “way” the accused stilt’s yoke protects the leg pole is “through the absorption of the excess energy by the resiliency of the yoke, including the resiliency of the lining.” Id. This last clause — “including the resiliency of the lining” — is unsupported by the evidence, since Armstrong has no evidence that a plain, painted, or anodized aluminum yoke has a resilient lining. Accordingly, Armstrong’s testimony is that the accused stilt’s yoke and the - 12 - patented yoke protect enclosed leg poles in different ways: one way is through a resilient lining, the other way is through a resilient yoke body. The claim element of a “resiliently lined yoke” is therefore not present in the accused stilts, because the accused stilts fail the “way” portion of the “function-way-result” test. Finally, the Court finds noninfringement as a matter of law on an additional, independent ground. Although the analysis above depends on assuming that an aluminum yoke (whether plain, painted, or anodized), is “capable of being elastically or reversibly deformed,” Markman Order at 6, the Court holds that no reasonable jury could find this to be true. The only evidence of an extruded-aluminum yoke’s resiliency comes from Armstrong’s affidavit, in which he states that such a yoke, when tightened, “will bend or deform before the leg pole will cramp or deform. Upon releasing of the stress, the yoke will return to its original shape and configuration.” Armstrong Aff. at 3. It may be true that an aluminum yoke exhibits some resiliency. But aluminum is a fairly stiff metal; it is not rubber. The degree of resiliency contemplated by the ‘515 patent, however, is macroscopic, not microsopic, as evidenced by the ‘515 patent’s discussion of lining a metal yoke with foam rubber. U.S. Patent No. 5,645,515 col. 3:14-16 (“The inner surface of yoke pieces 64, 66 are lined with a resilient padding material 70, such as foam rubber.”). The degree of resiliency — if any — that might be provided by an extruded-aluminum yoke is not the degree of resiliency contemplated by the ‘515 patent. A “resiliently lined yoke” must be capable of being “elastically or reversibly deformed,” as this Court has already held. The Court now further holds that such elastic or reversible deformation must the type of gross deformation of which something like rubber is capable. - 13 - No reasonable juror could find that an extruded-aluminum yoke is capable of being “elastically or reversibly deformed” on the scale required by the ‘515 patent. In particular, no reasonable jury could make this finding based on the naked assertions in Armstrong’s affidavit — assertions unaccompanied by evidence of any measurements or test results — about the properties of extruded-aluminum yokes. See Forest Group, Inc. v. Bon Tool Co., No. H-05- 4127, Mem. and Order at 8-9 (S.D. Tex. Aug. 3, 2007) (finding testimony by Armstrong about the resiliency of plain aluminum yokes to be “conjecture and speculation”); see also Zelinski v. Brunswick Corp., 185 F.3d 1311, 1317 (Fed. Cir. 1999) (affirming district court’s grant of summary judgment of noninfringement under the doctrine of equivalents where party opposing summary judgment had offered only conclusory expert testimony). 2. Category Two: Powder-Coated Yokes The parties agree that at some point, Warner made an aluminum yoke that was powder coated. Armstrong describes the yoke as: A yoke made of extruded aluminum which is resilient and is powder coated so as to produce a coating which is advertised as being resilient and which as per [Armstrong’s] own experiments does in fact protect the leg pole when the yoke is over-tightened[.] Armstrong Aff. at 4. If Armstrong intended to say that powder coating is a “resilient lining,” he chose singularly ineffective phrasing to do so. The Court will assume, however, that by saying that powder coating is “advertised as being resilient” and “does in fact protect the leg pole,” Armstrong intended to assert that powder coating is a resilient lining. The Court finds that no reasonable jury could agree that powder coating is a resilient lining. Neither party has provided any evidence as to what powder coating is. Fortunately, though, the Court can take judicial notice of the nature (and, in particular, the resiliency) of - 14 - powder coating. Rule 201(b) of the Federal Rules of Evidence authorizes a court to take judicial notice of facts that are “either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b). The nonresilient nature of powder coating is both generally known and capable of accurate and ready determination by resort to indisputable sources. Powder coating is a durable, baked-on finish, generally for metal. According to the Powder Coating Institute — a trade association whose members include DuPont Industrial Coatings and other large companies in the powder-coating industry — powder coating involves taking finely ground particles of pigment and resin, applying an electrical charge to them, adhering the electrically charged particles to a product to be coated, and heating the product in an oven to melt and fuse the particles into a hard finish. Powder Coating Institute, For Consumers — All About Powder Coating, http://www.powdercoating.org/consumers (last visited Oct. 5, 2007) (attached as Exhibit A, and permanently archived at http://www.webcitation.org/5SMqTCvBZ). Powder coating “looks like paint but it acts like armor.” Id. Numerous products that people encounter every day are powder coated, including refrigerators, stoves, car parts, tractors, barbecue grills, and tool boxes. Powder Coating Institute, The Benefits of Powder Coating — Where Is Powder Coating Used?, http://www.powdercoating.org/benefits/used.htm (last visited Oct. 5, 2007) (attached as Exhibit A, and permanently archived at http://www.webcitation.org/5SMqIKTFh). As anyone who has - 15 - bumped his knee on a powder-coated stove knows, powder coating is hard, not resilient. This is why the Powder Coating Institute compares powder coating to “armor.” Given the nature of powder coating, no reasonable juror could find that a powder-coated aluminum yoke has a resilient lining. For infringement purposes, then, a powder-coated yoke is no different from a plain, painted, or anodized aluminum yoke. For the reasons given above in connection with those types of yokes, a powder-coated yoke is not, either literally or under the doctrine of equivalents, a “resiliently lined yoke” within the meaning of claim 1 of the ‘515 patent. D. Unenforceability In its summary-judgment motion, Warner asks for summary judgment based on “patent misuse.” Pl. Mot. S.J. at 1 [Docket No. 76]. In the memorandum supporting its summaryjudgment motion, Warner asserts that Armstrong’s alleged withholding of material prior art from the PTO “can only be construed as an intent to deceive, and constitutes inequitable conduct, and patent misuse.” Pl. S.J. Mem. at 2. Warner argues that the ‘515 patent is unenforceable as a result of Armstrong’s deceptive conduct before the PTO. As an initial matter, the Court points out that the doctrines of “patent misuse” and of “inequitable conduct” are entirely distinct. Patent misuse occurs when a patentee “exploit[s] a patent in an improper manner by violating the antitrust laws or extending the patent beyond its lawful scope.” 6 Donald S. Chisum, Chisum on Patents § 19.04 (2007). The three “classic” acts of patent misuse are: (1) requiring the purchase of unpatented goods for use with patented apparatus or processes, (2) prohibiting production or sale of competing goods, and - 16 - (3) conditioning the granting of a license under one patent upon the acceptance of another and different license. Id. § 19.04[3]. Warner provides no evidence of any action by Armstrong that even approximates patent misuse. To the extent that Warner moves for summary judgment based on the defense of patent misuse, the Court denies the motion. Inequitable conduct, rather than patent misuse, appears to be the real basis for Warner’s summary-judgment motion. Warner argues that Armstrong intentionally deceived the PTO by failing to disclose, during prosecution of the ‘515 patent, the WalBoard catalog and stilts discussed above in connection with Warner’s obviousness argument. To establish that Armstrong committed inequitable conduct by failing to provide the WalBoard prior art to the PTO, Warner must prove both that Armstrong withheld the prior art with the intent to mislead or deceive the examiner, and that the prior art was material. See Digital Control Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006). Further, Warner must prove a threshold level of both fraudulent intent and materiality by clear and convincing evidence. Id. Whether withholding a reference amounts to inequitable conduct is a function of both materiality and intent: The more material the withheld reference is, the less evidence of deceptive intent is needed; the more evidence of deceptive intent is provided, the less evidence of materiality is needed. See id. Warner’s entire inequitable-conduct argument hinges on its assessment of the importance of the WalBoard prior art. Warner’s argument is captured in a single paragraph of its brief: Here, the WalBoard brochure and stilt were not only material, they were invalidating prior art. In addition, the inventors were not merely aware of the brochure, but submitted it to their patent attorney, and experimented with the stilt itself. It is clear that the - 17 - inventors intended to mislead the PTO concerning patentability. The ‘515 patent is unenforceable for inequitable conduct. Pl. S.J. Mem. at 9-10. As noted above (in connection with Warner’s invalidity argument), however, the Court disagrees with Warner about the materiality of the WalBoard prior art. The WalBoard brochure and the stilt do not, as a matter of law, come anywhere close to rendering the ‘515 patent invalid for obviousness. Warner has provided no evidence of Armstrong’s deceptive intent other than the bare facts that Armstrong provided his patent attorney with the WalBoard prior art, and his patent attorney did not provide it to the PTO. While that prior art was probably material to the ‘515 patent, it was not so material that a reasonable jury would have to find that the mere withholding of the WalBoard prior art by Armstrong’s patent attorney establishes, by clear and convincing evidence, that Armstrong intended to deceive the PTO. The Court therefore denies Warner’s motion for summary judgment on inequitable conduct. ORDER Based on the foregoing and on all of the files, records, and proceedings herein, IT IS HEREBY ORDERED THAT plaintiff Warner Manufacturing Co.’s motion for summary judgment [Docket No. 76] is GRANTED IN PART and DENIED IN PART as follows: 1. Plaintiff’s motion for summary judgment of noninfringement is GRANTED. The Court hereby DECLARES that the accused stilts of plaintiff Warner Manufacturing Co. DO NOT INFRINGE U.S. Patent No. 5,645,515. 2. Plaintiff’s motion for summary judgment with respect to invalidity is DENIED. The Court hereby DECLARES that claim 1 of U.S. Patent No. 5,645,515 has not been proved to be invalid. - 18 - 3. Plaintiff’s motion for summary judgment with respect to patent misuse and inequitable conduct is DENIED. The Court hereby DECLARES that U.S. Patent No. 5,645,515 has not been proved to be unenforceable. 4. To the extent that plaintiff seeks additional injunctive or declaratory relief as requested in plaintiff’s First Amended Complaint [Docket No. 5], such relief is DENIED. LET JUDGMENT BE ENTERED ACCORDINGLY. Dated: November 15 , 2007 s/Patrick J. Schiltz Patrick J. 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The parts to be coated are electrically grounded, so that the charged particles adhere to them until melted and fused into a solid coating in a curing oven. The result is an attractive, durable, high-quality finish. The powder coating process itself offers another advantage -- it is environmentally friendly...virtually pollution-free! Unlike liquid paint, no solvents are used, so only negligible amounts of VOCs are released into the air. In addition, unused or oversprayed powder can be recovered, so any waste is minimal and can be disposed of easily and safely. The Powder Coating Institute - The Benefits of Powder Co... http://www.powdercoating.org/benefits/used.htm 1 of 2 10/05/2007 9:37 AM Where Is Powder Coating Used? Thousands of products and parts are currently powder coated: Appliances The appliance industry benefits from powder coating on front and side panels of ranges and refrigerators, washer tops and lids, dryer drums, air-conditioner cabinets, water heaters, dishwasher racks, and cavities of microwave ovens. Powder coating has also replaced porcelain enamel on many washer and dryer parts. Automotive The automotive industry uses powder coating on wheels, bumpers, hubcaps, door handles, decorative trim and accent parts, truck beds, radiators, filters, and numerous engine parts. A clean powder topcoat has been developed to protect auto bodies. BMW and Volvo are using it on their new model cars, and GM, Ford, and Chrysler have formed a consortium to test this technique on their production lines. Architecture/Building Nowhere else are the benefits of architectural powder coating more evident than on the thousands of commercial, industrial, government, residential, historic and institutional buildings from around the world. For 30 years, powder coating has been the finish of choice for a superior, more colorful, longer lasting and more durable finish. Click here for a list of possible applications. Powder coating is specified because of its durability, scratch resistance, gloss retention, weatherability, resistance to chalking, the unlimited range of colors, finishes, glosses and textures, the fact that it meets AAMA specifications and because it is an environmentally friendly finishing process, making it an important part of a sustainable or green building project that incorporates low-emitting products. Virtually any part and any product in your next project might lend itself to powder coating including metal, aluminum, composites, wood, plastic, glass and ceramic. Powder coating is superior to liquid paint, anodizing, PVDF and Kynar500®. Everyday Products There are also innumerable everyday uses for powder coated products such as lighting fixtures, antennas, and electrical components. Farmers have powder coated tractors and farm equipment. Fitness buffs use golf clubs and golf carts, ski poles and bindings, snowmobiles, bicycles, and exercise equipment that are powder coated. Shop owners have The Powder Coating Institute - The Benefits of Powder Co... http://www.powdercoating.org/benefits/used.htm 2 of 2 10/05/2007 9:37 AM powder coated display racks, shelves, store fixtures, and vending machines. Office workers use metal furniture, computer cabinets, mechanical pencils and pens, thumbtacks, and other desk accessories that are powder coated. Parents have powder coated baby strollers, cribs, metal toys, and wagons. And home owners have lawn mowers, snowblowers, barbecue grills, patio furniture, garden tools, electronic components, bathroom scales, tool boxes, and fire extinguishers which benefit from a powder coated finish. Non-Metal Products While powder coating started as an alternative to finishing metal products only, the development of powder that can be cured at lower temperatures has allowed powder coating to expand to non-metal surfaces such as ceramics and some wood and plastic applications. Powder coating on wood is growing by leaps and bounds. Manufacturers of home-office furniture, kitchen cabinets, children's furniture, and outdoor grill tables are discovering that powder coating makes these "hard use" products retain their new look much longer. |
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Michael E. Douglas, Attorney at Law, Saint Paul MN. All Rights
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