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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. Because
Armstrong 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 Warners 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 Warners 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 Courts 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 Warners
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 Warners obviousness argument even on its own
terms, the Court assumes that if the capturing bracket were obvious, the claimed invention
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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 partys 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
Courts 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 Hrg 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 stilts 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 Warners counsel conceded at the summaryjudgment
hearing. Hrg 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 patents 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 Warners 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, Warners stilts have had four different types of yokes.
For purposes of Forest Groups 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 Warners 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 Courts claim construction. While conceding that Warners
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 Warners 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 Groups 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 Groups doctrine-of-equivalents argument,
however, the Court rejects Warners 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 claims 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 Warners 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 doctrines 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
Groups evidence of infringement is insufficient as a matter of law. Forest Groups 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. . . .
Plaintiffs 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 stilts 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 Armstrongs affidavit, the analysis points away from
infringement.
The function implicit in Armstrongs 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 stilts 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, Armstrongs testimony is that the accused stilts 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 yokes resiliency comes from Armstrongs 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 patents 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 Armstrongs 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 courts 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 [Armstrongs] 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
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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 Armstrongs 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 Armstrongs 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 Warners
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 Warners 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.
Warners entire inequitable-conduct argument hinges on its assessment of the importance
of the WalBoard prior art. Warners 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 Warners 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 Armstrongs 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 Armstrongs patent attorney establishes, by clear and convincing
evidence, that Armstrong intended to deceive the PTO. The Court therefore denies Warners
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. Plaintiffs 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. Plaintiffs 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. Plaintiffs 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 plaintiffs 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. Schiltz
United States District Judge
EXHIBIT A
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All About Powder Coating
Powder Coated Products
The Powder Coated Tough Mark
Companies That Powder Coat
Manufacturers of Powder Coated
Products
Retail Stores/Catalogers That Sell
Powder Coated Products
The Latest News
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Five advantages of powder
All About Powder Coating
It Looks Like Paint But It Acts Like Armor
It's tough. It looks great. And it lasts a long, long time. Powder
coating is a superior finish that's found on hundreds of products
you come in contact with each day. It makes products durable,
attractive, and scratch-resistant, too.
How Does It Work?
Powder coating is a dry finishing process. Finely ground particles
of pigment and resin are electrostatically charged and sprayed
onto the products to be coated.
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.
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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
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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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