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Allan Block Corp. v. County Materials Corp.: US District Court : PATENT - concrete block patents

1
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Allan Block Corporation,
Plaintiff,
v. Civil No. 05-2879 (JNE/JJG)
ORDER
County Materials Corp.,
Defendant.
Darren Schwiebert, Esq., Fredrikson & Byron, P.A., appeared for Plaintiff Allan Block
Corporation.
Felicia J. Boyd, Esq., and Shawn Gordon, Esq., Faegre & Benson LLP, and Gary A. Ahrens,
Esq., Michael Best & Friedrich LLP, appeared for Defendant County Materials Corp.
This is an action by Allan Block Corporation against County Materials Corp. (County)
for patent infringement, breach of contract, breach of the covenant of good faith and fair dealing,
and tortious interference with contractual relations. The patents-in-suit are U.S. Patent No.
4,909,010 (f010 Patent) and U.S. Patent No. 5,484,236 (f236 Patent). County seeks a declaration
that the patents are invalid. The case is before the Court on Countyfs motions for partial
summary judgment, Allan Blockfs motion for partial summary judgment, and a Report and
Recommendation dated October 17, 2008. For the reasons set forth below, the Court concludes
that County has not satisfied its burden of demonstrating that the asserted claims of the patentsin-
suit are anticipated. The Court concludes that the asserted claims of the f236 Patent are
obvious. The Court dismisses Allan Blockfs claims for patent infringement, breach of contract
based on failure to return molds, breach of contract based on non-disparagement provisions,
breach of the covenant of good faith and fair dealing, and tortious interference with contractual
relations.
2
I. BACKGROUND
Allan Block develops and licenses concrete blocks and related technology for use in the
construction of segmental retaining walls. It owns the f010 Patent and the f236 Patent, entitled
gConcrete Block for Retaining Wallsh and gMethod of Forming Concrete Retaining Wall
Block,h respectively. The f010 Patent issued on March 20, 1990, from an application filed
December 17, 1987. The f236 Patent issued on January 16, 1996, from an application filed
October 25, 1993. Robert Gravier is the inventor of both patents-in-suit.
Allan Block licenses its blocks and technology to regional manufacturers that receive
exclusive rights to manufacture blocks in a particular area and to sell the blocks in exchange for
royalty payments. In 1993, Allan Block and Countyfs predecessor entered into an agreement for
the production and sale of blocks. County later assumed this agreement. Allan Block entered
into similar agreements with Illinois Concrete Company, Inc., and Quality Concrete Products,
Inc. (Quality), in 1994 and 1997, respectively. County later acquired the assets of Quality, and
County and Allan Block continued to operate pursuant to the terms of Allan Blockfs agreement
with Quality. County also acquired Illinois Concrete, but Allan Block did not allow County to
assume the agreement with Illinois Concrete. In 2005, Allan Block terminated its agreements
with County, Quality, and Illinois Concrete. Allan Block refers to the County and Quality
agreements as the gCounty Agreementsh; the Court does the same in this Order.
Allan Block claims that County breached the County Agreements by failing to cease use
of Allan Blockfs technology, to return the technology to Allan Block, and to cease manufacture
of the licensed block upon the agreementsf termination; by using Allan Blockfs technology to
develop another block known as the Victory Block; by developing, manufacturing, and selling
the Victory Block without Allan Blockfs permission; and by disparaging Allan Blockfs blocks.
3
Allan Block also asserts a claim against County for breach of the covenant of good faith and fair
dealing based on Countyfs alleged hindrance of Allan Blockfs purchase of molds from Illinois
Concrete after the termination of Allan Blockfs agreement with Illinois Concrete. In addition,
Allan Block claims that County tortiously interfered with Allan Blockfs agreement with Illinois
Concrete by inducing Illinois Concrete to sell molds and technology to County instead of
returning them to Allan Block. Finally, Allan Block claims that County infringed the f010
Patent and the f236 Patent by making and selling the Victory Block and by making and selling
Allan Blockfs products without Allan Blockfs consent.
II. DISCUSSION
Summary judgment is proper gif the pleadings, the discovery and disclosure materials on
file, and any affidavits show that there is no genuine issue as to any material fact and that the
movant is entitled to judgment as a matter of law.h Fed. R. Civ. P. 56(c). The movant gbears the
initial responsibility of informing the district court of the basis for its motion,h and must identify
gthose portions of [the record] which it believes demonstrate the absence of a genuine issue of
material fact.h Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the movant satisfies its
burden, the party opposing the motion must respond by submitting evidentiary materials that gset
out specific facts showing a genuine issue for trial.h Fed. R. Civ. P. 56(e)(2); see Matsushita
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). In determining whether
summary judgment is appropriate, a court must look at the record and any inferences to be drawn
from it in the light most favorable to the party opposing the motion. Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 255 (1986).
4
A. Countyfs motions
1. Infringement
In Counts Seven and Eight of its Amended Complaint, Allan Block claims that County
infringed the f236 Patent and the f010 Patent, respectively. County moves for summary
judgment on Allan Blockfs infringement claims. An infringement analysis has two steps. First,
the court determines the meaning and scope of the patent claims asserted to be infringed.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), afffd, 517
U.S. 370 (1996). Second, the court compares the properly construed claims to the device
accused of infringing. Id. Claim construction is an issue of law, and infringement is a question
of fact. Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1356 (Fed. Cir. 2007), cert.
dismissed, 129 S. Ct. 394 (2008).
a. Countyfs Victory Block
The f010 Patent
Allan Block asserts that Countyfs Victory Block1 infringes claims 1, 2, 4, and 5 of the
f010 Patent. The partiesf dispute turns on the phrase gsaid frontal surface defining a lower
vertical portion normal to said bottomh which appears in claim 1. Claim 1, the sole independent
asserted claim, recites:
A concrete block for use in construction of retaining walls and the like,
said block including:
a. bottom, top, rear, side and frontal surfaces,
b. said bottom, rear and side surfaces being generally planar and arranged
generally normal to one another;
1 County makes a Victory Standard Block and a Victory Corner Block. The parties do not
assert that the differences between the standard and corner blocks are material for present
purposes. For the sake of simplicity, the Court uses gVictory Blockh in this Order.
5
c. said top including a first support area defined over a predetermined area
of said top for the support of additional blocks, a vertically extending
shoulder adjacent said frontal surface of said block and extending entirely
therealong to provide a continuous block positioning member in close
association to said frontal surface and a second top surface at the
uppermost end of said extending shoulder;
d. said frontal surface defining a lower vertical portion normal to said
bottom and an upper, rearwardly inclined portion extending from said
vertical portion terminating at said second top surface;
e. said support area and said vertical shoulder providing a locating surface
to receive an additional vertically positioned block thereon wherein the
additional block is positioned rearwardly from the front surface of the
receiving and supporting block whereby a wall of tiers of such blocks
extend rearwardly and upwardly from a support surface.
(Emphasis added.) In an Order dated April 26, 2007, the Court construed the phrase gsaid
frontal surface defining a lower vertical portion normal to said bottomh to mean gthe frontal
surface has a lower vertical portion which is normal to (i.e., abuts to form a right angle with) the
bottom surface.h
To facilitate explanation of the partiesf arguments, a diagram of the Victory Block that
the parties used in their briefs appears below. According to County, area 24 is the front surface
of the Victory Block, area 16 is the bottom, and areas 18 and 20 form a recess. Because the front
and bottom surfaces of the Victory Block do not meet to form a right angle, County contends that
the Victory Block does not infringe the f010 Patent.
Allan Block responds that areas 16, 18, and 20 are the Victory Blockfs bottom surface,
that area 24 is the lower vertical portion of the front surface, and that the front portion of the
bottom surface, area 20, abuts to form a right angle with the lower vertical portion of the front
6
THE VICTORY BLOCK
surface.2 In support, Allan Block relies on the expert report of Alain Dorais. Dorais states that
the Victory Blockfs bottom surface gis the part . . . that faces generally downwardly when in
use,h that gthe bottom surface . . . is actually made up of multiple surfaces,h that gthe bottom
surface . . . is generally planar,h and that the lower vertical portion of the frontal surface abuts
and forms a right angle with area 20. The Court is not persuaded.
Dorais acknowledges that ggenerally planarh means ggenerally flat.h He gives three
reasons why the bottom surface of a retaining wall block such as the Victory Block is generally
flat: (1) git is important for the bottom row blocks in a wall to lie flat on the groundh; (2) ga
block with a generally flat bottom surface can be offset at any position relative to the
corresponding lower blocksh; and (3) gbecause the top surface of this type of retaining wall
2 The f236 Patentfs description of the block disclosed in the f010 Patent flatly contradicts
Allan Blockfs argument here:
U.S. Pat. No. 4,909,010 which is assigned to the assignee of the present
invention [Allan Block] discloses a novel block having a textured front surface,
and which is ideal for constructing retaining wall systems with a setback. The
blocks interlock to create a strong barrier wall. The setback is determined by the
thickness of the front lip. The blocks are formed in pairs by splitting a single
molded block. There is no lower channel defined in the molded block, thus, a
wall cannot be built with no setback.
f236 Pat., col. 1, ll. 44-52 (emphasis added).
7
block is generally flat, the bottom surface should also be flat.h According to Dorais, the multiple
surfaces of areas 16, 18, and 20 satisfy this understanding of ggenerally planarh because (1) gin a
wall made of Victory Standard Blocks, the bottom row of Victory Standard Blocks lies flat on
the groundh; (2) gthe bottom surface (16, 18, 20) of the Victory Standard Block allows the
Victory Standard Block to be offset in any desirable fashion, while still maintaining proper
weight distributionh; and (3) gwhen a Victory Standard Block rests on two lower Victory
Standard Blocks in a retaining wall, the bottom surface (16, 18, 20) of the upper block interfaces
with the first support area (8) of the lower blocks.h He continues, gThere are no projections
extending downwardly from the bottom surface (16, 18, 20), so walls made of Victory Standard
Blocks would have no obvious instability problems (at least due to this aspect of the bottom
surface (16, 18, 20)).h Dorais ignores that area 18 extends downwardly from area 20 to area 16
and that his reasoning explains only why the actual bottom of the Victory Block, area 16, is
generally planar.
Although ggenerallyh is a word of approximation, Anchor Wall Systems, Inc. v.
Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1310-11 (Fed. Cir. 2003), areas 16, 18, and 20
do not form a generally planar surface. Cf. Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed.
Cir. 2005) (en banc) (stating that gconclusory, unsupported assertions by experts as to the
definition of a claim term are not useful to a courth and that expert testimony clearly at odds with
a claim construction mandated by the written record of a patent should be discounted). They
occupy three distinct planes, areas 16 and 20 are in parallel planes separated by an inch, and area
18fs plane sharply intersects those of areas 16 and 20.
The front surface of the Victory Block, area 24, abuts area 20, which is not the Victory
Blockfs bottom. Area 24 does not abut area 16, the Victory Blockfs bottom, to form a right
8
angle. Viewing the record in the light most favorable to Allan Block, the Court concludes that
Allan Block has not raised a genuine issue of material fact as to whether the Victory Block
infringes the f010 Patent. See Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263,
1278 (Fed. Cir. 2004) (gDynacorefs expertfs opinions are precisely conclusory assertions,
reached using words in ways that contradict their plain meaning, that a critical claim limitation is
found in the accused device. The district court was correct in ruling that they did not create a
material factual dispute for trial.h). The Court therefore grants County summary judgment on
Allan Blockfs claim that the Victory Block infringes the f010 Patent.
The f236 Patent
Allan Block claims that the method of making the Victory Block infringes claims 1, 2, 7,
11, 12, 14, 15, and 16 of the f236 Patent. The independent claims are claims 1 and 16. The
partiesf dispute here turns on the phrase gwherein the height of said lip is substantially equal to
the depth of said recess,h which appears in claims 1 and 16. Claim 1 illustrates the claim
limitation at issue:
A method of creating a construction block adapted to form retaining walls
or the like, comprising the steps of:
(a) forming a member having a major upper surface and major lower
surface and a plurality of edges, said upper major surface having a ridge
extending laterally across a midsection thereof between an opposed pair of
said edges with said ridges extending upwardly and away from said upper
major surface by a predetermined first dimension, said lower major
surface having a notch extending laterally across a midsection thereof
between said opposed pair of edges with said notch extending upwardly
from said lower major surface by a dimension substantially equal to said
predetermined first dimension, wherein said laterally extending ridge is
parallel to and disposed vertically above said laterally extending notch;
and
(b) splitting said member along a center of both said ridge and said notch
to define a pair of said construction blocks, wherein each said construction
block has rough textured front surface defined by splitting the member in
half, a recess extending laterally thereunder, and a lip extending laterally
9
thereover wherein the height of said lip is substantially equal to the depth
of said recess.
(Emphasis added.) In the April 26 Order, the Court noted that gsubstantially,h a word of
approximation, modifies gequal.h Discerning no evidence that would permit identification of the
permissible deviation from equality, the Court declined to construe the phrase.
County moves for summary judgment on the ground that the height of the Victory
Blockfs lip, gHh in the diagram above, is not substantially equal to the depth of the blockfs
recess, gDh in the diagram above. Allan Block contends that a genuine issue of material fact
exists as to whether the lip height and the recess depth are substantially equal. The parties do not
dispute that the lip height is . inch and the recess depth is one inch. County emphasizes the
magnitude of the deviation by noting that the lip height is 25% smaller than the recess depth and
that the recess depth is 33% larger than the lip height. The difference is still . inch.
As noted in the claim construction, the f236 Patentfs specification describes the
relationship between, and the function of, the lip and the recess. Briefly, the lip and recess
inhibit shifting of blocks after assembly into a wall. There is evidence in the record that the
Victory Blockfs lip and recess serve this purpose. Whether the . inch difference in the Victory
Blockfs lip height and recess depth reveals that they are not gsubstantially equalh is an issue to
be resolved by the finder of fact. See Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351,
1368-70 (Fed. Cir. 2008) (gThis functional approach is necessary and appropriate, because the
deliberate imprecision inherent in the word eaboutf makes it impossible to ecapture the essencef
of the claimed invention in strict numeric terms.h); PPG Indus. v. Guardian Indus., Corp., 156
F.3d 1351, 1355 (Fed. Cir. 1998) (g[A]fter the court has defined the claim with whatever
specificity and precision is warranted by the language of the claim and the evidence bearing on
the proper construction, the task of determining whether the construed claim reads on the
10
accused product is for the finder of fact.h). Viewing the record in the light most favorable to
Allan Block, the Court concludes that a reasonable finder of fact could conclude that the Victory
Blockfs lip height and recess depth are substantially equal. The Court therefore declines to grant
County summary judgment on Allan Blockfs claim that the method of making the Victory Block
infringes the f236 Patent.
b. Allan Blockfs products
In its Amended Complaint, Allan Block alleges that County infringes the f236 Patent and
the f010 Patent by making, using, offering for sale, or selling concrete blocks sold under the
trademark gAllan Blockh without Allan Blockfs consent. In response to Countyfs initial motion
for partial summary judgment, Allan Block noted that County had not moved for summary
judgment on Allan Blockfs claims for patent infringement based on Countyfs unauthorized sales
of Allan Blockfs products. Asserting that Allan Block had not pursued these claims during
discovery, County filed another motion for partial summary judgment.
County argues that summary judgment is appropriate because Allan Block failed to
disclose infringement claims based on unauthorized sales of Allan Blockfs products in its patent
infringement contentions. The Pretrial Scheduling Order required Allan Block to prepare a claim
chart that identified:
(1) which claim(s) of its patent(s) it alleges are being infringed; (2) which specific
products or methods of defendant[] it alleges literally infringe each claim; and (3)
where each element of each claim listed in (1) is found in each product or method
listed in (2), including the basis for each contention that the element is present.
In its patent infringement contentions, dated July 11, 2006, Allan Block contends that the
Victory Block infringes the patents-in-suit. Allan Block did not assert that County infringed by
making unauthorized sales of Allan Blockfs products. Asked in an interrogatory to identify each
County product that allegedly infringes the patents-in-suit, Allan Block incorporated its patent
11
infringement contentions. Allan Block amended its interrogatory response based on the Courtfs
construction of certain claims, but still did not assert that County infringed by making
unauthorized sales of Allan Blockfs products. Having failed to include its assertion that County
infringed the patents-in-suit in its patent infringement contentions and interrogatory answers,
Allan Block cannot pursue the claims. See O2 Micro Intfl Ltd. v. Monolithic Power Sys., Inc.,
467 F.3d 1355, 1369 (Fed. Cir. 2006); SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278,
1292 (Fed. Cir. 2005).
Even if Allan Block had included in its patent infringement contentions its assertion that
County infringed the patents-in-suit by making unauthorized sales of Allan Blockfs products,
Allan Block does not direct the Court to evidence that raises a genuine issue of material fact as to
whether the patents-in-suit read on Allan Blockfs products. Allan Block maintains that the
patents-in-suit cover nineteen of Allan Blockfs products, but Allan Block has not submitted any
evidence that demonstrates that the patents-in-suit read on its products. Allan Block nevertheless
asserts that Countyfs Victory Block gis for all relevant purposes identical to the Allan Blockh
such that gif the Victory Block infringes, the Allan Block must also infringe.h3 Allan Block
maintains that its expert gspecifically addressed the issue in his report, opining that the Allan
Block is covered by the patents-in-suit.h The Court is not persuaded. Allan Block cannot
establish infringement by comparing its block to the Victory Block. See Johnson & Johnston
Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002) (g[T]he law of infringement
compares the accused product with the claims as construed by the court. Infringement, either
literally or under the doctrine of equivalents, does not arise by comparing the accused product
ewith a preferred embodiment described in the specification, or with a commercialized
3 As discussed above, the Victory Block does not infringe the f010 Patent.
12
embodiment of the patentee.fh (quoting SRI Intfl v. Matsushita Elec. Corp. of Am., 775 F.2d
1107, 1121 (Fed. Cir. 1985)); Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1481-82 (Fed.
Cir. 1984) (gInfringement is not determined . . . by comparison between commercial products
sold by the parties.h). Moreover, the opinion relied on by Allan Block is conclusory with respect
to the f236 Patent and does not address the f010 Patent. g[I]t is well settled that an expertfs
unsupported conclusion on the ultimate issue of infringement is insufficient to raise a genuine
issue of material fact.h Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1046 (Fed. Cir.
2000).
Relying on the doctrine of marking estoppel, Allan Block asserts that County cannot deny
that the patents-in-suit cover Allan Blockfs products. The Federal Circuit has neither endorsed
nor rejected marking estoppel. Slip Track Sys., Inc. v. Metal Lite, Inc., 113 F. Appfx 930, 934
(Fed. Cir. 2004); High Frequency Prods., Inc. v. Wynnfs Climate Sys., Inc., 91 F.3d 167 (Fed.
Cir. 1996) (unpublished table decision); SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859
F.2d 878, 890 (Fed. Cir. 1988) (concluding marking estoppel inapplicable, g[w]hatever the
validity of the emarking estoppelf line of casesh). Marking estoppel provides, under certain
circumstances, that ga party that marks its product with a patent number is estopped from
asserting that the product is not covered by the patent.h SmithKline, 859 F.2d at 890 n.9. g[I]t
has been held that placing a patent number on a product will estop a manufacturer from denying
that his product embodies the patent for purposes of liability for both patent infringement
damages and patent license royalties.h Boyd v. Schildkraut Giftware Corp., 936 F.2d 76, 79 (2d
Cir. 1991) (citations omitted); see SmithKline, 859 F.2d at 890. For present purposes, the Court
assumes, without deciding, that the doctrine is viable and applicable.
13
County contends that Allan Block has not offered any evidence to support its claim for
damages. In an interrogatory answer, Allan Block asserted that Countyfs unauthorized
manufacture and sales of Allan Blockfs products after March 30, 2005, in Champaign, Illinois,
damaged Allan Block and that the damages included unpaid royalties at a minimum. Allan
Block stated that it would rely on its expert to calculate its damages. The expert retained by
Allan Block opined that Allan Block lost royalties in the amount of approximately ,000 based
on Countyfs sales of the Victory Block. The expert did not disclose any opinion as to the
amount of damages Allan Block allegedly experienced due to Countyfs unauthorized
manufacture and sale of Allan Blockfs products. County brought a motion to compel discovery
directed in part toward Allan Blockfs damages. The magistrate judge discerned that Allan
Blockfs expert had opined only as to the amount of Allan Blockfs lost royalties due to Countyfs
sale of the Victory Block. The magistrate judge ordered Allan Block to disclose other monetary
damages: gIf Allan [Block] seeks other monetary damages, it must specify the types (including
identifying under which legal claim or claims the alleged damages arise) and amounts of any
such damages by July 1, 2008.h Allan Blockfs response to this Order did not disclose damages
based on Countyfs unauthorized manufacture and sales of Allan Blockfs products, and the Order
itself belies Allan Blockfs contention that the Order gexpressly excluded royalty damages for
patent infringement as being subject to the motion.h On this record, Allan Block has not
satisfied its burden to raise a genuine issue of material fact to support its claim for damages due
to Countyfs unauthorized manufacture and sale of Allan Blockfs products. See Transclean Corp.
v. Bridgewood Servs., Inc., 290 F.3d 1364, 1370 (Fed. Cir. 2002).
Finally, Allan Block contends that County should be enjoined from further production of
Allan Blockfs products. County contends that Allan Blockfs claim is moot to the extent it seeks
14
injunctive relief because County ceased production of Allan Blockfs products years ago. gThe
fact that the defendant has stopped infringing is generally not a reason for denying an injunction
against future infringement unless the evidence is very persuasive that further infringement will
not take place.h W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1281-82 (Fed. Cir.
1988). Here, Allan Block does not dispute Countyfs contention that it has neither manufactured
nor sold Allan Blockfs products for years. It is undisputed that County returned Allan Blockfs
molds to Allan Block. According to Allan Block, g[t]he molds are necessary to produce Allan
Block products.h Consequently, County is incapable of manufacturing additional Allan Block
products. Insofar as Allan Block seeks to enjoin County from further production of Allan Block
products, Allan Blockfs claim is moot. See Friends of the Earth, Inc. v. Laidlaw Envtl. Servs.
(TOC), Inc., 528 U.S. 167, 189 (2000). Moreover, Allan Block does not dispute Countyfs
assertion that the f010 Patent expired, and a district court cannot enjoin infringement of an
expired patent. See Lans v. Digital Equip. Corp., 252 F.3d 1320, 1328 (Fed. Cir. 2001).
2. Invalidity of the asserted claims of the f236 Patent
County moves for summary judgment on its contention that the asserted claims of the
f236 Patent are invalid because they are obvious. A patent is presumed valid. 35 U.S.C. 282
(2000); KSR Intfl Co. v. Teleflex Inc., 127 S. Ct. 1727, 1737 (2007). Consequently, gthe
evidentiary burden to show facts supporting a conclusion of invalidity, which rests on the
accused infringer, is one of clear and convincing evidence.h Takeda Chem. Indus., Ltd. v.
Alphapharm Pty., Ltd., 492 F.3d 1350, 1355 (Fed. Cir. 2007), cert. denied, 128 S. Ct. 1739
(2008); see 35 U.S.C. 282. A patent may not issue when gthe differences between the subject
matter sought to be patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having ordinary skill in the art
15
to which said subject matter pertains.h 35 U.S.C. 103(a) (2000); see KSR, 127 S. Ct. at 1734.
gThe ultimate judgment of obviousness is a legal determinationh based on underlying factual
determinations. KSR, 127 S. Ct. at 1745-46. To determine whether a patent claim is obvious, a
court considers (1) the scope and content of the prior art; (2) differences between the prior art
and the claims at issue; and (3) the level of ordinary skill in the art. Id. at 1734; Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). Secondary considerations such as commercial
success, long felt but unresolved needs, or the failure of others may also be considered. KSR,
127 S. Ct. at 1734; Graham, 383 U.S. at 17-18.
The Supreme Court recently reiterated that a patent is not proved obvious simply by
pointing out its constituent elements in the prior art:
[A] patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the prior
art. Although common sense directs one to look with care at a patent application
that claims as innovation the combination of two known devices according to
their established functions, it can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. This is so because
inventions in most, if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be combinations of
what, in some sense, is already known.
KSR, 127 S. Ct. at 1741. Reasons to combine elements need not come from published articles or
the explicit content of published patents:
In many fields it may be that there is little discussion of obvious techniques or
combinations, and it often may be the case that market demand, rather than
scientific literature, will drive design trends. Granting patent protection to
advances that would occur in the ordinary course without real innovation retards
progress and may, in the case of patents combining previously known elements,
deprive prior inventions of their value or utility.
Id.
gIn determining whether the subject matter of a patent claim is obvious, neither the
particular motivation nor the avowed purpose of the patentee controls. What matters is the
16
objective reach of the claim.h Id. at 1741-42. One way to prove a patent obvious is to
demonstrate that gthere existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patentfs claims.h Id. at 1742. A patent claim can also be
proved obvious by showing that the combination of elements was obvious to try:
When there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense. In that instance the fact that a combination was
obvious to try might show that it was obvious under 103.
Id.
a. Level of ordinary skill in the art
Countyfs expert, Robert Drysdale, defines the person of ordinary skill in the art as ga
person having an understanding of block and retaining wall stability requirements, or their
equivalent, with five to ten yearsf experience in the design and manufacturing of precast concrete
structures such as block and retaining walls.h4 Allan Blockfs expert, Alain Dorais, asserts that
the relevant art is gsegmental retaining wall block design and manufacturingh and that gone of
skillh in that art is a person ghaving some combination of a technical or engineering college
degree and/or at least five yearsf experience in designing, developing, and/or manufacturing
segmental retaining wall blocks and/or corresponding molds.h
County contends that Doraisf opinions are girrelevanth because Dorais opines as to a
person of skill in the art instead of a person of ordinary skill in the art. County claims that
Dorais repeatedly confirmed at his deposition that gone skilled in the arth is a level of skill higher
than gone of ordinary skill in the art.h In support, County cites one page of a groughh transcript
of the deposition where Dorais, discussing a Russian patent, distinguishes gone of ordinary skill
4 Allan Blockfs cursory challenge to Drysdalefs qualifications does not persuade the Court
that he is necessarily disqualified from offering an opinion in this case.
17
in the arth from gone of skill in the art.h In response, Allan Block cites testimony of Dorais
where he discusses his expert report and states that the person of ordinary skill in the art is not
different from the person of skill in the art. The portion of Doraisf testimony on which Allan
Block relies suggests that he may have given different answers earlier in his deposition. The
parties have not directed the Court to Doraisf earlier testimony, and the excerpts of Doraisf
testimony submitted apparently do not include his earlier answers. Drawing all reasonable
inferences in Allan Blockfs favor, the Court assumes for present purposes that Doraisf definition
of one of skill in the art describes the level of ordinary skill in the art.
b. Scope and content of the prior art
For present purposes, the Court credits Doraisf assertion that the relevant art is
gsegmental retaining wall block design and manufacturing.h The use of blocks to create
retaining walls.and thus methods of designing and manufacturing blocks.did not originate in
the f236 Patent. Discussing the prior art, the f236 Patent acknowledges that g[r]etaining walls
are commonly employed to retain highly positioned soil, such as soil forming a hill, to provide a
usable level surface therebelow such as for playgrounds and yards, or to provide artificial
contouring of the landscape which is aesthetically pleasant.h f236 Patent, col. 1, ll. 15-19.
Similarly, the f010 Patent acknowledges the commercial availability of many gconcrete blocks
for the construction of retaining walls and the like.h f010 Patent, col. 1, ll. 63-65.
The f236 Patent acknowledges that blocks known in the prior art were not limited to
cubes of concrete.5 For instance, the f236 Patent cites the f010 Patent as disclosing a block that
has a front lip whose thickness determines the setback of a retaining wall; U.S. Patent No.
5,017,049 as teaching a composite masonry block that contains grooves in the upper and lower
5 Or, as the sides are not of equal length, parallelepipeds of concrete.
18
major surfaces, and opposing flanges; U.S. Patent No. 5,031,376 as teaching blocks that are
formed in pairs, that contain grooves to facilitate splitting, and that include flanges; and U.S.
Patent No. 5,214,898 as teaching ga block for building retaining walls having a lip and groove
arrangement such that the block can be stacked to form a retaining wall with no setback at all.h
f236 Patent, col. 1, l. 44 to col. 2, l. 37.
The use of lips and grooves in blocks stacked vertically did not originate in U.S. Patent
No. 5,214,898. For instance, U.S. Patent No. 1,544,478, which issued in 1925, almost seventy
years before U.S. Patent No. 5,214,898, disclosed a reinforced building block whose face was
offset horizontally and vertically. Although the block disclosed in U.S. Patent No. 1,544,478 is a
masonry block, one of ordinary skill in the art would readily recognize the potential applicability
of lips and recesses in retaining wall blocks. See KSR, 127 S. Ct. at 1742.
The ability to create blocks that contained vertical passages was also known in the prior
art. For instance, referring to Figure 3, which appears below, the f010 Patent disclosed vertical
gweight reduction passagesh in blocks:
[L]ightening or weight reduction passages 21a-21b are provided vertically
through the block 10 and a pair of apertures or passages 22a-22b communicate
with such passages 21a-21b through surface 20a to define a passage from the
weight reducing areas 21a-21b through the rear-most surface 16 of the block. The
block 10 then provides a primary support base 15 which is positioned on the
ground or other foundation surface with the next vertically oriented tier of blocks
being arranged in the interlocking area formed by the surfaces of the top 20a, 20b,
and 20c. In this particular arrangement, it should be obvious that weight reducing
passages 21a-21b of several vertically oriented blocks will be in general
alignment for either filling of the same with dirt or other materials or for the
insertion of vertical tie elements such as re-bars or the like. These apertures 21a-
21b then perform a dual function in initial weight reduction of the block for ease
of handling thereof and ultimate filling thereof or tying of vertically oriented
blocks to one another.
f010 Patent, col. 3, l. 63 to col. 4, l. 15.
19
THE f010 PATENT, FIGURE 3
The f236 Patent also recognizes that g[i]t is known in the prior art to form blocks in pairs,
whereupon a composite block is split to form a pair of substantially identical blocks to
economize the production of the blocksh and that gsplitting a composite block allows the
formation of an irregular and aesthetically pleasant textured front surface for each of the blocks
defined.h f236 Patent, col. 1, ll. 33-36. For example, the f010 Patent discloses a method of
making a pair of concrete blocks for use in retaining walls by splitting a composite block along a
splitting channel. To facilitate an understanding of the method disclosed in the f010 Patent,
Figure 4 from the f010 Patent appears below. The method disclosed is:
Applicantfs method of molding the individual blocks 10 results in a new
method of manufacture to obtain a particular decorative surface on the vertical
section 17b of the frontal area 17 of the block 10. Two blocks are molded as a
single unit with the surfaces 17b being formed after molding. Obviously in a
molded two part unit the tapered surfaces 17a of two facing blocks provides a
gsplittingh channel. Simply cracking the blocks along the meeting surfaces of the
tapered portion 17a results in the blocks splitting to form surface 17b. The result
of such splitting will provide an open aggregate surface and thus a decorative
surface for each of the molded blocks. It is felt that this method for providing the
frontal decorative surface is unique in the art as most exposed aggregate surfaces
are obtained either through sandblasting or exposed aggregate molding
techniques.
20
THE f010 PATENT, FIGURE 4
f010 Patent, col. 4, l. 60 to col. 5, l. 7.
c. Differences between the prior art and the claims at issue
The f236 Patentfs examiner gave the following Statement of Reasons for Allowance:
The prior art does not teach a method of forming a block wherein the major upper
surface has a ridge extending laterally across a midsection thereof and a lower
major surface has a notch extending laterally across a midsection thereof so that
the block can be split along a center of both ridge and notch to define a pair of
construction blocks.
Claim 1
Claim 1 of the f236 Patent differs from the method disclosed in the f010 Patent by adding
a notch in the lower major surface. As claim 1 reveals, the ridge and notch become lips and
recesses, respectively, in a pair of retaining wall blocks upon the splitting of the member. Blocks
produced by the method of claim 1 have recesses; the f010 Patentfs blocks do not. Claim 1 of
the f236 Patent combines a known method of producing retaining wall blocks, with known
molding techniques, to produce blocks with known features.
The parties dispute whether there was any reason to combine these elements, but the
Court discerns a readily apparent reason to combine them in the marketfs reaction to the f010
Patentfs blocks. In his expert report, Dorais wrote: gIn the early 1990s, even after Allan Blockfs
21
f010 Patent block came on the market, many were skeptical of front-lip blocks. Many believed
that the f010 Patent block resulted in walls that were set back too much.h Similarly, Gravier, the
inventor of the f010 Patent and the f236 Patent, stated in a declaration dated December 3, 2007,
that the f010 Patentfs block gmet with commercial success,h but that gmethods of manufacturing
such block were not conducive to producing variable setback blocks.h So there was a known
problem: the f010 Patent yielded blocks whose setback was too great.
One of ordinary skill in the art would readily recognize at least two known solutions to
this problem. First, a person of ordinary skill in the art would know that the thickness of the
front lip in the f010 Patentfs block could be reduced to produce blocks of lesser setback. Limits
to this solution are, however, readily apparent. Reduction of the thickness of the front lip yields
a weaker front lip, and a weaker front lip ultimately compromises the stability of the retaining
wall. Second, a person of ordinary skill in the art would know that a recess instead of a front
surface that is normal to the bottom surface would reduce the setback of the f010 Patentfs blocks.
As noted above, it was known in the prior art that a lip and recess permitted formation of a wall
without any setback. Given a front lip of a fixed width, simple geometry reveals that the setback
of the f010 Patentfs block may be reduced by a recess of a lesser width or eliminated by a recess
of equal width.
Having identified a recess as the solution to the problem of too much setback in the f010
Patentfs blocks, a person of ordinary skill in the art would turn to how to make the blocks with
recesses. One might take the blocks produced by the method disclosed in the f010 Patent and
chisel a recess, but this process is likely slow and inefficient. Possessing years of education and
experience, the person of ordinary skill in the art would not be limited to such an unrefined
solution. See KSR, 127 S. Ct. at 1742 (gA person of ordinary skill in the art is also a person of
22
ordinary creativity, not an automaton.h). The person of ordinary skill in the art knows that
individual blocks can be formed with lips and recesses. The person also knows that pairs of
blocks can be formed from a composite block containing a ridge with tapered surfaces and that
the tapered surfaces form a splitting channel. When split, the ridge becomes front lips of a pair
of blocks. Since front lips of a pair of blocks can be formed by splitting a composite member
along a ridge, the person of ordinary skill in the art would recognize that recesses could also be
formed by forming a notch in the composite block beneath the ridge. Again, the ability to mold
recesses in concrete was known in the prior art. Adding the notch to the method disclosed in the
f010 Patent is an obvious solution to the known problem of too much setback in the f010
Patentfs blocks.
The remaining arguments raised by Allan Block to avoid the implication of the analysis
above do not persuade the Court. Allan Block asserts that Drysdale failed to explain how or why
a person of ordinary skill in the art would have combined the elements discussed in his report to
arrive at the invention of claim 1.6 Review of his report reveals, however, that his opinions are
based on the assertion that claim 1 is obvious in light of the common sense of one of ordinary
skill in the art. See id. at 1742-43. Although assertions that a patent is obvious in light of the
common sense of one of ordinary skill in the art do not suffice in every case, the combination of
front lips and recesses in a method of making retaining wall blocks is not so complex as to
6 Allan Block asked Drysdale whether he analyzed gwhy or how one of skill in the arth
would combine the references discussed in his report with respect to the validity of the f236
Patent, and he responded that he had not. County contends that the question is irrelevant because
the inquiry into a patentfs validity depends on a person of ordinary skill in the art. Earlier in the
deposition, Allan Block asked Drysdale whether he used gone skilled in the arth to mean the
same thing as gone of ordinary skill in the art,h and he responded that he was gwilling to accept
that equality.h Viewing the record in the light most favorable to Allan Block, the Court reads the
testimony of Drysdale to mean that he did not analyze how or why a person of ordinary skill in
the art would make the combinations discussed in his report.
23
necessarily require expert testimony to explain it. See Advanced Tech. Materials, Inc. v. Praxair,
Inc., 228 F. Appfx 983, 985 (Fed. Cir. 2007) (noting that expert testimony will not be necessary
in many patent cases and that a court may recognize and apply at summary judgment a teaching
plainly disclosed in a prior art reference); cf. Proveris Scientific Corp. v. Innovasystems, Inc.,
536 F.3d 1256, 1267 (Fed. Cir. 2008) (holding district court did not abuse its discretion in
requiring expert testimony to establish invalidity where patentfs subject matter was gsufficiently
complex to fall beyond the grasp of an ordinary laypersonh). The Court notes that the case on
which Allan Block relies, Innogenetics, N.V. v. Abbott Laboratories, 512 F.3d 1363 (Fed. Cir.
2008), addresses technology pertaining to gdiagnostic tools that not only detect but also classify
hepatitis C virus (HCV) genotypes in a biological sample, which facilitates tailoring the
treatment of patients with different genotypes.h 512 F.3d at 1368. The asserted patent claimed
ga method of genotyping HCV based on distinct genetic sequences that can be found in the 5
prime untranslated region (5 UTR) of the HCV genome.h Id. The claimed method taught
gspecifically hybridizing probes, or short strands of nucleic acids, to a target sequence in the 5
UTR via complementary base pairing principles, and then detecting the formation of any
complexes formed between the probes and the nucleic acids of the 5 UTR.h Id. The technology
at issue in Innogenetics was undoubtedly of sufficient complexity to fall beyond the grasp of an
ordinary layperson. Id. at 1373. This case involves concrete blocks and methods of creating
them.
Next, Allan Block relies on Doraisf assertion that git would not have occurred to [him] as
of 1993 to produce the block disclosed in either the f010 Patent or [U.S. Patent No. 1,544,478]
by first forming a two-block member with a notch like that of the f236 Patentfs claim 1.h In
KSR, an expert stated that the asserted claim gwas a simple, elegant, and novel combination of
24
features.h 127 S. Ct. at 1739 (internal quotation marks omitted). Another expert opined that the
claim was nonobvious because its placement of a sensor differed from that disclosed in a prior
patent. Id. The Supreme Court concluded that the expertsf assertions did not preclude the
district court from granting summary judgment on the issue of obviousness. Id. at 1745-46. The
same conclusion applies here.
Finally, Allan Block asserts that secondary considerations reveal that claim 1 is not
obvious. Allan Block asserts generally that the f236 Patent has enjoyed commercial success.
gEvidence of commercial success, or other secondary considerations, is only significant if there
is a nexus between the claimed invention and the commercial success.h Ormco Corp. v. Align
Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006); see J.T. Eaton & Co. v. Atl. Paste & Glue
Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). Here, Allan Block relies on a declaration submitted
by Gravier to support its assertion of commercial success. Gravier states that blocks produced
according to f236 Patent have met with tremendous commercial success, that virtually all of
Allan Blockfs segmental retaining wall blocks are now manufactured using methods claimed in
the f236 Patent, that licensed producers sell more than 15 million square feet of block per year
under the f236 Patent, and that this commercial success is attributable in substantial part to the
patented method of manufacture. Gravierfs declaration is, at most, weak evidence of commercial
success. Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360-61 (Fed. Cir. 1999); In re
Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
Allan Block also states that the f236 Patent satisfied a long felt need. According to
Gravier, g[t]he ability to vary wall set-backs from no setback to a specified, desired setback
utilizing substantial[ly] the same manufacturing equipment and molds has been a long-felt need
in the segmental retaining wall industry.h To his knowledge, no one was using ga method to
25
create a front lip and notch locking mechanism on segmental retaining wall blocksh before the
f236 Patent. To the extent that Gravier suggests that the invention claimed in the f236 Patent
was the first to create lips and recesses in segmental retaining wall blocks, the f236 Patent itself
belies the suggestion. As noted above, in its gDiscussion of the Prior Art,h the f236 Patent cites
U.S. Patent No. 5,214,898 as gteach[ing] a block for building retaining walls having a lip and
groove arrangement such that the block can be stacked to form a retaining wall with no setback
at all.h f236 Patent, col. 2, ll. 29-32. gAdmissions in the specification regarding the prior art are
binding on the patentee for purposes of a later inquiry into obviousness.h PharmaStem
Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007), cert. denied, 128 S. Ct.
1655 (2008); see Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir.
1988) (gA statement in a patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.h); In re Nomiya, 509 F.2d 566, 571
& n.5 (C.C.P.A. 1975) (g[A] statement by an applicant, whether in the application or in other
papers submitted during prosecution, that certain matter is eprior artf to him, is an admission that
that matter is prior art for all purposes . . . .h). Gravierfs otherwise conclusory assertion that the
f236 Patent satisfied a long-felt but unresolved need is insufficient to raise a genuine issue of
material fact. See In re Kahn, 441 F.3d 977, 990-91 (Fed. Cir. 2006).
Finally, Allan Block contends that there is evidence of copying by others. Viewing the
record in the light most favorable to Allan Block, the Court concludes that there is evidence of
copying by others. Nevertheless, ga showing of copying is only equivocal evidence of nonobviousness
in the absence of more compelling objective indicia of other secondary
considerations.h Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000).
Here, the other secondary factors are weak at best.
26
In light of the level of ordinary skill in the art, the scope and content of the prior art, and
the differences between the prior art and claim 1 of the f236 Patent, the Court concludes that
claim 1 is obvious. The secondary factors on which Allan Block relies are insufficient to alter
this conclusion. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
Claim 2
Claim 2 of the f236 Patent recites:
The method as specified in claim 1 further comprising the step of
selectively defining the width of said laterally extending notch to correspond to a
selected wall setback defined when said blocks are stacked with the lip of a lower
said block disposed within and substantially filling the recess of a said block
stacked thereupon.
County contends that claim 2 is obvious because g[v]arying dimensions of blocks to vary the
amount of wall setback was known in the art.h Allan Block contends that County failed to
establish that claim 2 is obvious for the same reasons discussed in connection with claim 1.
As noted above, it was known in the prior art that use of lips and recesses in segmental
retaining wall blocks allowed for the construction of retaining walls without any setback. f236
Patent, col. 2, ll. 29-32. It was also known in the prior art that retaining walls made of blocks
that had a front lip but no lower channel necessarily had a setback. f236 Patent, col. 1, ll. 49-52.
One of ordinary skill in the art would readily discern as a matter of simple geometry that the
narrower the width of the recess (or lower channel) in a block, the greater the setback in the
retaining wall, given a fixed front lip. See KSR, 127 S. Ct. at 1740-42. The Court concludes that
claim 2 is obvious.
27
Claim 7
Claim 7 of the f236 Patent recites:
The method as specified in claim 1 further comprising the step of forming
at least one vertically extending core each side of said laterally extending ridge
and said notch.
County contends that claim 7 is obvious because g[t]he use of cores in blocks has long been
known.h Allan Block contends that County has not demonstrated that claim 7 is obvious for the
reasons discussed in connection with claim 1.
As noted above, the use of cores in segmental retaining wall blocks was known in the
prior art. For instance, the f010 Patent disclosed the use of weight reduction passages in
retaining wall blocks and a method of forming a pair of retaining wall blocks by splitting a
member along a ridge. In the member disclosed in the f010 Patent, weight reduction passages
would be on each side of the splitting channel. The addition of cores on each side of the ridge
and notch requires nothing more than the common sense of one of ordinary skill in the art. The
Court concludes that claim 7 of the f236 Patent is obvious.
Claim 11
Claim 11 of the f236 Patent recites:
The method as specified in claim 1 further comprising the step of defining
said laterally extending notch to have a trapezoidal cross section, and defining
said laterally extending ridge to have a pair of tapered surfaces.
Claim 11 results in blocks whose lips and recesses are slanted, and County contends that such
surfaces would have been an obvious design choice. Allan Block contends that claim 11 is not
obvious for the reasons asserted in connection with claim 1. The method disclosed in the f010
Patent includes a ridge with tapered surfaces that form a splitting channel. Accordingly, the
ability to taper the outer surfaces of the ridge was well within the knowledge of one of ordinary
skill in the art. The use of tapered surfaces in the ridge and a notch having a trapezoidal cross
28
section is a predictable variation that is well within the grasp of one of ordinary skill in the art.
Claim 11 is obvious.
Claim 12
Claim 12 of the f236 Patent recites:
The method as specified in claim 1 further comprising the step of defining
said member to have a rectangular profile such that each said defined pair of
construction blocks has a rectangular profile.
It was well known in the prior art that a pair of blocks could be produced by splitting a member
and that the blocks would have a rectangular profile. See f236 Patent, col. 1, ll. 33-54; f010
Patent, Fig. 5. The ability to define the member of claim 1 to have a rectangular profile so as to
produce blocks that have a rectangular profile was well within the grasp of one of ordinary skill
in the art. Claim 12 is obvious.
Claim 14
Claim 14 of the f236 Patent recites:
The method as specified in claim 1 further comprising the step for forming
a retaining wall from said defined construction blocks.
To one of ordinary skill in the art, the formation of a retaining wall using retaining wall blocks
would be obvious. Claim 14 is obvious.
Claim 15
Claim 15 of the f236 Patent recites:
The method as specified in claim 14 wherein said retaining wall is formed
to have a setback.
The formation of a retaining wall with a setback using retaining wall blocks was well known in
the prior art. Claim 15 is obvious.
Claim 16
Claim 16 of the f236 Patent recites:
29
The method of creating a construction block adapted to form retaining
walls or the like comprising the steps of:
(a) preparing a mold box for receiving raw concrete with the mold box
having opposed front and rear walls and opposed side walls and with the
opposed lateral side walls having parallelly disposed horizontally aligned
rectangular core bar receiving openings formed along the lower edges
thereof;
(b) inserting an elongated rectangular core bar within said mold box
extending between said parallelly disposed horizontally aligned openings
for forming a notch;
(c) loading raw concrete within said mold box while forming cores within
said raw concrete along a vertical axis normal to the axis of said core bar
to form a member having a major upper surface and major lower surface
and a plurality of edges, said major upper surface formed with a ridge; and
(d) splitting said member along a center of both said ridge and said notch
to define a pair of said construction blocks, wherein each said construction
block has rough textured front surface defined by splitting the member in
half, a recess extending laterally thereunder, and a lip extending laterally
thereover wherein the height of said lip is substantially equal to the depth
of said recess.
County maintains that claim 16 is similar to claim 1 except that it specifies use of a mold box
and a core bar. According to County, these are minor additional requirements within the
knowledge of one of ordinary skill in the art. Consequently, County argues, claim 16 is obvious.
In support, County cites Drysdalefs report in which Drysdale states that g[t]he use of a
rectangular mold box and rectangular core bar were both within the knowledge of one skilled in
the arth and that g[t]he use of core bars to form apertures during the molding process would have
been well within the knowledge and common sense of one skilled in the art.h Allan Block
contends that claim 16 is not obvious for the reasons advanced in connection with claim 1. For
essentially the same reasons set forth above, the Court concludes that claim 16 is obvious.
30
In short, the asserted claims of the f236 Patent are invalid. The Court therefore dismisses
Allan Blockfs claim for infringement of the f236 Patent. See Viskase Corp. v. Am. Natfl Can
Co., 261 F.3d 1316, 1323 (Fed. Cir. 2001).
3. Willful infringement
County contends that it cannot be held liable for willful infringement. At the motion
hearing, the Court stated that consideration of this issue was premature. Further review reveals
that the issue is amenable to summary judgment. See D. Minn. LR 16.2, 2005 advisory
committeefs note.
g[T]o establish willful infringement, a patentee must show by clear and convincing
evidence that the infringer acted despite an objectively high likelihood that its actions constituted
infringement of a valid patent.h In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)
(en banc), cert. denied, 128 S. Ct. 1445 (2008). If a patent is not infringed, then it cannot be
willfully infringed. Strattec Sec. Corp. v. Gen. Auto. Specialty Co., 126 F.3d 1411, 1420 (Fed.
Cir. 1997). Having dismissed Allan Blockfs infringement claims, the Court concludes that
County cannot be liable for willful infringement.
4. Disparagement
In Count Four of its Amended Complaint, Allan Block claims that County breached the
County Agreements by disparaging Allan Blockfs block in Countyfs marketing of the Victory
Block. County argues that summary judgment is appropriate because the alleged disparagement
took place months after the termination of the County Agreements. Although a contractual
provision may survive the underlying contractfs expiration, Burke v. Fine, 608 N.W.2d 909, 912
(Minn. Ct. App. 2000),7 no language in the County Agreements indicates that the non-
7 The agreements contain Minnesota choice-of-law clauses.
31
disparagement provisions survive termination of the agreements. Consequently, Countyfs
introduction of the Victory Block to the market in 2006, several months after the termination of
the County Agreements, did not breach the agreementsf non-disparagement provisions. See id.
5. Breach of contract
In Count One of its Amended Complaint, Allan Block claims that County breached the
County Agreements by failing to cease use of Allan Blockfs technology, to return Allan Blockfs
technology and molds to Allan Block, and to cease manufacture of the licensed block upon the
agreementsf termination. County moves for summary judgment on this claim insofar as the
claim is based on Allan Blockfs lost use of the molds.
In a Report and Recommendation dated October 17, 2008, the Honorable Jeanne J.
Graham, United States Magistrate Judge, recommended that Countyfs motion to exclude
damages related to molds be granted in part and that County be granted summary judgment on
Allan Blockfs claims for damages based on lost use of molds. Allan Block objected to the
Report and Recommendation, and County responded. Based on a de novo review of the record,
the Court adopts the Report and Recommendation. See D. Minn. LR 72.2(b). The Court
therefore dismisses Count One insofar as Allan Block claims that County breached the County
Agreements by failing to return molds.
6. Covenant of good faith and fair dealing
In Count Five of its Amended Complaint, Allan Block asserts a claim against County for
breach of the covenant of good faith and fair dealing. In an interrogatory answer, Allan Block
explained the basis of its claim:
County Materials had knowledge of the [Illinois Concrete] Production Agreement
and its terms regarding non-assignability without Allan Blockfs permission, the
ownership of the Molds and Technology by Allan Block, the limited use
provisions relating to the Technology and the Molds, and the requirement that
32
[Illinois Concrete] return Allan Blockfs Technology and Molds upon termination
of the Production Agreement. Notwithstanding that knowledge, County Materials
purportedly purchased and took possession of the assets of [Illinois Concrete],
including the Technology and Molds, refusing to return the Technology and
Molds to Allan Block upon request, and using the Technology and Molds to
develop and manufacture the Victory Block. . . . Allan Block has been damaged
by County Materialsf breach of the covenant of good faith and fair dealing . . . .
County contends that summary judgment is appropriate because it was not a party to the
agreement between Allan Block and Illinois Concrete and did not assume that agreement. At the
motion hearing, Allan Block asserted that this claim rests on its agreements with County.
In In re Hennepin County 1986 Recycling Bond Litigation, 540 N.W.2d 494 (Minn.
1995), the Minnesota Supreme Court summarized the law regarding the implied covenant of
good faith and fair dealing:
Under Minnesota law, every contract includes an implied covenant of good faith
and fair dealing requiring that one party not gunjustifiably hinderh the other
partyfs performance of the contract. Similarly, we have held that the party to a
contract cannot take advantage of the failure of a condition precedent when the
party itself has frustrated performance of that condition.
In Minnesota, the implied covenant of good faith and fair dealing does not
extend to actions beyond the scope of the underlying contract.
540 N.W.2d at 502-03 (citations omitted); see Team Nursing Servs., Inc. v. Evangelical Lutheran
Good Samaritan Socfy, 433 F.3d 637, 641-42 (8th Cir. 2006). Here, County was not a party to
the agreement between Allan Block and Illinois Concrete, and County did not assume that
agreement. Thus, Allan Block cannot maintain a claim against County for breach of the implied
covenant of good faith and fair dealing in that agreement. See State ex rel. Hatch v. Cross
Country Bank, Inc., 703 N.W.2d 562, 569 (Minn. Ct. App. 2005) (gUnder long-standing
contract-law principles, a nonparty to a contract generally will not be bound by that contract.h).
Allan Blockfs characterization of its claim as one based on its agreements with County is
not persuasive in light of its interrogatory response quoted above. See N. States Power Co. v.
33
Fed. Transit Admin., 358 F.3d 1050, 1057 (8th Cir. 2004) (g[W]hile we recognize that the
pleading requirements under the Federal Rules are relatively permissive, they do not entitle
parties to manufacture claims, which were not pled, late into the litigation for the purpose of
avoiding summary judgment.h). In addition, Countyfs actions with regard to Illinois Concrete
are outside the scope of Allan Blockfs production and sales agreements with County and Quality.
See In re Hennepin County, 540 N.W.2d at 502-03. Finally, for the reasons set forth in the
October 17 Report and Recommendation, Allan Block has not raised a genuine issue of material
fact as to damages sustained due to lost use of molds. For these reasons, the Court grants
summary judgment to County on Allan Blockfs claim for breach of the implied covenant of good
faith and fair dealing.
7. Tortious interference with contractual relations
In Count Six of its Amended Complaint, Allan Block claims that County tortiously
interfered with the agreement between Allan Block and Illinois Concrete by inducing Illinois
Concrete to sell molds and technology to County instead of returning them to Allan Block.
gMinnesota law requires that five elements be established in a claim of tortious interference with
a contractual relationship: e(1) the existence of a contract; (2) the alleged wrongdoerfs
knowledge of the contract; (3) intentional procurement of its breach; (4) without justification;
and (5) damages.fh Noble Sys. Corp. v. Alorica Cent., LLC, 543 F.3d 978, 982 (8th Cir. 2008)
(quoting Kallok v. Medtronic, Inc., 573 N.W.2d 356, 362 (Minn. 1998)). For the reasons set
forth in the October 17 Report and Recommendation, Allan Block has not raised a genuine issue
of material fact as to the damages it sustained from Countyfs alleged tortious interference. The
Court therefore dismisses this claim.
34
8. Injunction and fees
In the event that breach of contract or patent infringement occurred, County contends that
Allan Block is not entitled to a permanent injunction that prevents County from making and
selling the Victory Block. County also asserts that Allan Block cannot recover attorney fees
under the County Agreements. Consideration of an award of attorney fees to Allan Block or the
entry of a permanent injunction against County at this time is premature, though the Court notes
that Allan Block has conceded that it cannot recover its attorney fees under the County
Agreements.
B. Allan Blockfs motion
Allan Block seeks summary judgment on Countyfs affirmative defenses and
counterclaims asserting that the f010 Patent and the f236 Patent are invalid due to anticipation or
obviousness. Anticipation is a question of fact. Voda v. Cordis Corp., 536 F.3d 1311, 1322
(Fed. Cir. 2008). gAnticipation requires disclosure of each and every claim limitation in a single
prior art reference, either explicitly or inherently.h In re Omeprazole Patent Litig., 483 F.3d
1364, 1371 (Fed. Cir. 2007). Allan Block asserts that County has no evidence to support its
anticipation contentions. In support, Allan Block points to Drysdalefs deposition testimony
where he states that he did not find a single piece of prior art that contained all elements of the
asserted claims. County does not direct the Court to any evidence that raises a genuine issue of
material fact. The Court therefore concludes that County has not satisfied its burden of
demonstrating that the asserted claims of the patents-in-suit are invalid due to anticipation.
Largely reiterating the arguments raised in opposition to Countyfs motion, Allan Block
moves for summary judgment on Countyfs affirmative defenses and counterclaims that the f010
Patent and the f236 Patent are obvious. For the reasons set forth above, the Court denies Allan
35
Blockfs motion as to the f236 Patent. Similar reasoning leads the Court to conclude that
summary judgment in Allan Blockfs favor on Countyfs invalidity assertions regarding the f010
Patent is not warranted. Finally, the Court is not persuaded that the alleged deficiencies in
Countyfs Prior Art Statement warrant summary judgment in Allan Blockfs favor.
III. CONCLUSION
Based on the files, records, and proceedings herein, and for the reasons stated above, IT
IS ORDERED THAT:
1. Countyfs Motion to Exclude Allan Blockfs Damages Related to Molds
[Docket No. 302] is GRANTED IN PART as set forth in the Report and
Recommendation [Docket No. 358].
2. Countyfs Motion for Partial Summary Judgment [Docket No. 313] is
GRANTED IN PART and DENIED IN PART.
3. Allan Blockfs Motion for Summary Judgment on Patent Validity [Docket
No. 330] is GRANTED IN PART and DENIED IN PART.
4. Countyfs Motion for Summary Judgment for Counts 7 and 8 of the
Amended Complaint [Docket No. 335] is GRANTED.
5. Count One of the Amended Complaint is DISMISSED insofar as it is
based on Countyfs alleged failure to return molds.
6. Count Four, Count Five, Count Six, Count Seven, and Count Eight of the
Amended Complaint are DISMISSED.
7. County has not satisfied its burden of establishing that the asserted claims
of U.S. Patent No. 4,909,010 and U.S. Patent No. 5,484,236 are invalid
due to anticipation.
8. Claims 1, 2, 7, 11, 12, 14, 15, and 16 of U.S. Patent No. 5,484,236 are
invalid due to obviousness.
Dated: December 17, 2008
s/ Joan N. Ericksen
JOAN N. ERICKSEN
United States District Judge
 

 
 
 

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