MITCHELL S. GOLDBERG, District Judge.
This patent infringement case is currently on remand from the United States Court of Appeals for the Federal Circuit. Plaintiff, Southco, Inc. ("Southco"), has alleged that Defendant, Fivetech Technology, Inc. ("Fivetech") infringed U.S. Patent No. 6'468'012 ("the '012 Patent"), which pertains to "captive screws." Presently before me is (1) Fivetech's motion for summary judgment of invalidity; (2) Southco's motion for partial summary judgment of infringement; (3) Fivetech's cross motion for summary judgment of noninfringement; and (4) Southco's motion to strike Fivetech's untimely cross motion for summary judgment. For the reasons that follow: I will deny Fivetech's motion for summary judgment of invalidity; I will deny Southco's motion for partial summary judgment of infringement; and, I will grant Southco's motion to strike Fivetech's untimely cross motion for summary judgment.
"A captive screw is a particular type of fastener for attaching two parts," typically two panels of sheet metal.
Southco brought this lawsuit alleging that Fivetech infringed multiple patents and trademarks that Southco had registered with the U.S. Patent and Trademark Office ("PTO"). Fivetech filed several counterclaims in response. After a period of discovery, Fivetech sought summary judgment of noninfringement with respect to the three patents and two trademarks it was accused of infringing.
The Honorable Mary A. McLaughlin (ret.) granted Fivetech's motions for summary judgment of noninfringement with respect to U.S. Patent Nos. 5,851,095 ('095 Patent); 6,280,131 ('131 Patent); and, the patent currently at issue before me, 6,468,012 ('012 Patent). Judge McLaughlin further granted Fivetech's motion for summary judgment on U.S. Trademark Nos. 2,478,685 and 3,678,153.
Because Fivetech prevailed on the issue of noninfringement with respect to all of the patents and trademarks involved in the case, it voluntarily withdrew its counterclaims for certain state law torts (without prejudice). Judge McLaughlin then certified her rulings as final judgments pursuant to Federal Rule of Civil Procedure 54(b), and Southco appealed those judgments to the United States Court of Appeals for the Federal Circuit.
On April 10, 2015, the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the case for further proceedings.
However, with respect to the '012 Patent, the Federal Circuit concluded that the district court "improperly granted summary judgment of noninfringement . . . because Southco presented evidence raising a genuine question of material fact as to noninfringement, [and] improperly construed the terms `rigidly secure' and `material from said knob flows into said chamfer[.]'"
This matter was reassigned to my docket while Fivetech's Petition for Writ of Certiorari before the United States Supreme Court was pending. On December 7, 2015, the Supreme Court denied Fivetech's Petition.
Thereafter, I held a status conference and ordered the parties to file "any relevant motions" in accordance with the Federal Circuit's decision as it related to the '012 Patent. (Doc. No. 293.) Fivetech filed its current motion for summary judgment arguing invalidity. Southco filed its current motion for partial summary judgment of infringement with respect to Claim 7 of the '012 Patent. Fivetech then filed a cross motion for summary judgment of noninfringement, but did so approximately one month beyond the deadline established by my scheduling order. In response, Southco filed a motion to strike Fivetech's untimely cross motion. All four motions have been fully briefed, and are ripe for consideration.
A party moving for summary judgment bears the initial burden of demonstrating that there are no genuine issues of material fact in dispute, and that judgment is appropriate as a matter of law. Fed. R. Civ. P. 56(a);
An issue is "genuine" if a reasonable jury could rule in favor of the non-moving party based on the evidence presented.
In assessing summary judgment, the evidence is viewed through the prism of the evidentiary standard of proof that would apply at a trial on the merits.
Fivetech insists that the Federal Circuit's claim constructions on appeal presented new invalidity issues on remand, and as result, these issues are ripe for consideration. Specifically, Fivetech argues that the '012 Patent is invalid as a matter of law for violation of the "written description" and "enablement" requirements set forth in 35 U.S.C. § 112, first paragraph. (Def.'s Mot. Summ. J. 6-7, 17-26.) While Fivetech recognizes that the '012 Patent is presumed valid, and that it must point to clear and convincing evidence to support a finding of invalidity, Fivetech stresses that the "evidence is overwhelming that the claims . . . far exceed the scope [of] what was described as the invention and what was enabled [such that no] reasonable juror could find otherwise." (Id. at 17.)
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Section 35 U.S.C. § 112, first paragraph, states:
The United States Court of Appeals for the Federal Circuit has interpreted this language as setting forth both a written description requirement and an enablement requirement which are independent of one another.
"The essence of the written description requirement is that a patent applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention."
"To satisfy the written description requirement, the applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and demonstrate that by disclosure in the specification of the patent."
"Whether a specification satisfies the written description requirement is a question of fact."
Fivetech argues that the invention described in the '012 Patent is "essentially an improved press-fit that employs a chamfer on the lower edge of the screw to receive displaced knob material during a bottom-up press-fit." (Fivetech Mot. Summ. J. 23.) Thus, Fivetech insists that the disclosed invention is really a process for manufacturing captive screws (i.e., a bottom-up press-fit method of attaching a screw head into a knob).
Southco responds that the "captive screw" of the '012 Patent is the claimed invention, and the specific claims of the Patent recite structural features, i.e., the structural relationship and configuration between the threaded screw, knob, and ferrule which make up the claimed captive screw. (Southco Resp. 3.) While Southco recognizes that a "press-fit" process may be used to manufacture the claimed screws, and while Southco maintains that the specification teaches to that effect, Southco insists that none of the asserted claims requires that such a process (or any other process) be used. As such, Southco contends that Fivetech's reliance on the absence of Fivetech's injection-molding manufacturing process from the '012 Patent specification is entirely irrelevant for purposes of the written description requirement. (
As a threshold issue, I first note that Fivetech submitted a procedurally deficient motion for summary judgment. This Court's Policies and Procedures plainly state that "[a]ny motion for summary judgment filed pursuant to Fed. R. Civ. P. 56 shall include a short and concise Statement of Undisputed Facts as a separate exhibit." (P&P at 7 ¶ 10.) Fivetech failed to submit a statement of undisputed facts. Fivetech's motion could be denied on this basis alone.
That aside, much of Fivetech's motion and accompanying brief are comprised of attorney argument. While a patent can be found invalid for violating the written description requirement based "solely on the face of the patent specification," Fivetech—as the moving party—bears the burden of citing to relevant portions of the record to initially demonstrate the absence of materially disputed facts.
Fivetech also stresses that its injection-molding process does not appear in the specification. However, the Federal Circuit has instructed that a "patentee need only describe the product as claimed, and need not describe an unclaimed method of making the claimed product."
Viewing the evidence of record and the reasonable inferences drawn therefrom in the light most favorable to Southco, I conclude that Fivetech has not set forth undisputed clear and convincing evidence of facts underlying invalidity such that no reasonable jury could find the written description requirement to be satisfied. As such, whether the claims of the '012 Patent are overly broad requires consideration by a fact finder.
Section § 112, first paragraph, contains a separate enablement requirement for patentability. "Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention."
"The enablement requirement is met where one skilled in the art, having read the specification, could practice the invention without `undue experimentation.'"
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Additionally, "[a]lthough a specification need not disclose what is well known in the art, [t]ossing out the mere germ of an idea does not constitute enabling disclosure. A patent cannot simply rely on the knowledge of a person of ordinary skill to serve as a substitute for the missing information in the specification."
A party must prove invalidity premised upon nonenablement by clear and convincing evidence, and this determination must be made as of the filing date of the patent application.
In support of its lack of enablement argument, Fivetech states that the '012 Patent "teaches how to accomplish a bottom-up press-fit of a screw head into a knob, employing a chamfer specifically positioned on the lower periphery of the screw head in order to facilitate the bottom-up press-fit." (Fivetech. Mot. Summ. J. 7.) Fivetech asserts that "[n]owhere does the invention described in the '012 Patent teach one of ordinary skill in the art how to injection mold a knob onto a screw head, or what role, if any, a chamfer located on the lower periphery of the screw head would play in an injection molding process." (
The Federal Circuit has recognized that "[t]he enablement requirement is met if the description enables any mode of making and using the invention."
Moreover, although Fivetech generally cites to the
While I recognize that the issue of enablement is a legal determination, challenges to validity based on enablement require "weighing many factual considerations." Here, when viewed in the light most favorable to Southco, I conclude that Fivetech has not set forth sufficient undisputed clear and convincing evidence that would permit resolution of this issue at this stage. Accordingly, Fivetech's motion will be denied in this regard.
Because Southco is now the moving party, I will view the evidence and reasonable inferences in Fivetech's favor.
The Federal Circuit reversed Judge McLaughlin's grant of summary judgment of noninfringement as to Claim 7 of the '012 Patent.
On the issue of infringement, "[s]ummary judgment is appropriate when it is apparent that only one conclusion as to infringement could be reached by a reasonable jury."
Regarding the second step, an accused device can infringe the asserted claims of a patent either literally or under "the doctrine of equivalents."
Independent Claim 7 of the '012 Patent states:
'012 Patent, col. 7 ll. 3-16 (emphasis added). Southco argues that each limitation in Claim 7 of the '012 Patent is literally present in the accused product.
Fivetech devotes its entire response to disputing that the accused product contains a "chamfer" on the bottom of the screw head. The parties agree that a "chamfer" is an angled or beveled edge. (Southco Mot. Summ. J. 7-8; Fivetech Resp. 2.) Thus, I will focus my analysis on whether Southco has demonstrated that a reasonable jury could only reach one conclusion as to the presence of the "annular chamfer" limitation in the accused product.
Southco asserts that the following figures, which are included in the '012 Patent, illustrate an embodiment of a captive screw with the specific features of Claim 7. The portions highlighted in yellow correspond to the annular chamfer limitation (29) presently at issue:
In arguing that the accused product contains a chamfer, Southco again relies heavily on an engineering drawing of the accused product produced by Fivetech during discovery:
Southco maintains that this drawing indisputably establishes the existence of a chamfer on the bottom of the accused product's screw head. (Southco Mot. Summ. J. 9.)
Although Fivetech does not dispute that the engineering drawing is representative of the accused product, Fivetech does dispute that the drawing irrefutably depicts a chamfered edge. (Fivetech Resp. 16.) Additionally, Fivetech's President, Gary Ting-Jui Wang, submitted a declaration wherein he attests that the "standard screws" used in the accused product contain a "natural round" edge on the bottom of the screw head as a result of the "cold forming process" used to manufacture them. (Decl. of Gary Ting-Jui Wang, ¶¶ 1-9, Doc. No. 207-2.) He further states that he believes the screws used by Southco require a "specially-designed mold or an extra step of cutting or shaving the edge of the screw head to form the chamfer area[.]" (Id. at ¶ 9.)
Viewing this evidence in the light most favorable to Fivetech, I cannot conclude, as a matter of law, that a reasonable jury would only reach one conclusion as to whether or not the drawing depicted above exhibits an angled or beveled edge on the bottom of the screw head such that the annular chamfer limitation is literally present in the accused product.
In further support of its motion, Southco relies on the expert report of Dr. John D. Pratt, who examined the accused product and concluded that it contains the limitation of an annual chamfer peripheral to the bottom surface of the screw head. (Southco Mot. Summ. J. 11; Report of Dr. John D. Pratt, Ph.D., P.E., Ex. 1 at pp. 57, 60-61.) Dr. Pratt referred to certain images in opining that the accused product infringes Claim 7 of the '012 Patent. Regarding "Infringement Evidence" of Claim 7, Dr. Pratt's report states that "[r]eferring to Figures 1 & 2 [pictured below]: The Series 46 fasteners include a screw (1) with a threaded shaft portion (5) having a head portion (2) having a top surface (3), bottom surface (4) and
Fivetech disputes the sufficiency of Dr. Pratt's expert report, arguing that it does not establish the absence of a materially disputed fact with respect to the chamfer limitation. Fivetech stresses that if the accused product really did have a chamfered edge, Dr. Pratt could have and should have—but did not—measured the length of the edge, and ascertained the precise angle of the edge (in degrees). (Fivetech Resp. 3-4.) Because this information was not included in Dr. Pratt's report, Fivetech insists that Dr. Pratt's report is conclusory and merely "alleges" that a chamfered edge exists without supplying the necessary underlying undisputed factual evidence to support his conclusion. (Id. at. 4, 12-13.) Additionally, Fivetech asserts that it is not indisputably discernable from the drawings and/or photographs submitted to this Court (and relied upon by Dr. Pratt) whether or not the edge depicted is chamfered, as Southco maintains, or rounded, as Fivetech maintains. (
In reviewing Figures 1 and 2 above, it appears that the alleged annular chamfer limitation is not even depicted in Figure 1. As it relates to Figure 2, I agree with Fivetech that a reasonable jury could decline to find the annular chamfer limitation literally present based on this image. As Fivetech points out, Dr. Pratt's report did not set forth any specific measurements for the length and/or the angle of the alleged annular chamfer when he concluded that it is in fact present in the accused product.
Next, Southco cites to the following figure in support of its position that the annular chamfer limitation is literally present in Fivetech's accused product:
This image was also included in Dr. Pratt's Report, but was not cited as evidence of infringement with respect to the annular chamfer limitation. Nevertheless, Southco maintains that this image also indisputably reflects that the chamfer is present. Once again, when viewed in the light most favorable to Fivetech, I conclude that a reasonable jury could decline to find the chamfer limitation met based on this image.
Ultimately, viewing the evidence of record in the light most favorable to Fivetech, I cannot conclude, as a matter of law, that a reasonable jury would only reach one conclusion as to the literal presence of an annular chamfer in the accused product. Therefore, Southco's motion for partial summary judgment will be denied.
Fivetech simultaneously filed a cross motion for summary judgment of noninfringement (which also includes additional invalidity arguments) with its response in opposition to Southco's partial motion for summary judgment of infringement. Fivetech's cross motion was filed approximately one month after the deadline for filing such motions as set out in my scheduling order. Fivetech never requested an extension of this deadline, nor did it seek leave to file this motion. As such, Southco moved to strike Fivetech's untimely submission. Fivetech does not dispute that its cross motion was filed after the deadline established by this Court's scheduling order. (Fivetech Resp. in Opp. to Southco Mot. to Strike 2 n.1, 16.)
In support of its motion to strike, Southco cites to Federal Rule of Civil Procedure 16(f)(1)(C), which states in relevant part: "[o]n motion or on its own, the court may issue any just orders . . . if a party or its attorney . . . fails to obey a scheduling or other pretrial order." (Southco Mot. to Strike 5.) Additionally, Rule 16(f)(2) provides that "[i]nstead of or in addition to any other sanction, the court must order the party, its attorney, or both to pay the reasonable expenses—including attorney's fees—incurred because of any noncompliance with this rule, unless the noncompliance was substantially justified or other circumstances make an award of expenses unjust." (emphasis added).
The United States Court of Appeals for the Third Circuit has instructed that, "[a]s the plain language of Rule 16(f) indicates, monetary sanctions for noncompliance with Rule 16 pretrial orders are required and appropriate absent a showing that the violation was `substantially justified' or the award of expenses is `unjust' under the circumstances of the case."
It is undisputed that Fivetech filed an untimely cross motion for summary judgment. Moreover, Fivetech devotes just three (3) pages of its eighteen-page (18) response in opposition to Southco's motion to strike to explaining why Southco's motion to strike should be denied. Fivetech offers no substantial reasons to justify its tardiness. (Fivetech Resp. in Opp. to Southco Mot. to Strike 16-18.) There simply is no genuine dispute concerning noncompliance with this Court's clear scheduling order that would qualify as "substantial justification."
Regarding whether an award of expenses would be "unjust", I reiterate that Fivetech never sought leave to file, nor did it request an extension of the deadlines. And this is not the first time that Fivetech has disregarded scheduling orders. Indeed, the Federal Circuit found that Judge McLaughlin's reliance on Fivetech's untimely expert report when granting summary judgment of noninfringement was an abuse of discretion—given that it was only produced at summary judgment (after the deadline for expert discovery had expired), and because Southco did not have an opportunity to depose Fivetech's expert.
For all these reasons, and pursuant to Federal Rule of Civil Procedure 16(f), I will grant Southco's motion to strike Fivetech's untimely cross motion for summary judgment. I will further order Fivetech's counsel to pay the "reasonable expenses" (i.e., attorneys' fees) incurred by Southco in preparing its motion to strike.
For the reasons explained above: Fivetech's motion for summary judgment of invalidity of the '012 Patent is denied; Southco's partial motion for summary judgment of infringement of Claim 7 of the '012 Patent is denied; Southco's motion to strike Fivetech's untimely cross motion for summary judgment is granted, and Fivetech's counsel shall pay the reasonable expenses incurred by Southco in preparing its motion to strike.
An appropriate Order follows.