JOHN McBRYDE, District Judge.
Before the court for decision is the motion for summary judgment of defendants, American Eurocopter Corporation,
The motion for summary judgment is directed to the claims made by plaintiff in Count III of the second amended complaint. Counts I and II were dismissed by final judgment as to certain parties and claims signed May 12, 2010. By the remaining count plaintiff accuses defendants of infringing and/or inducing infringement and/or contributing to the infringement of United States Patent No. 5,462,242 ("'242 patent"), which plaintiff owns as the assignee of the patent. The subject of the '242 patent is a landing-gear assembly for use on a helicopter.
Plaintiff's claim of infringement relates to the "making, using [sic] offering for sale, and/or selling within the United States, and/or importing into the United States helicopters with infringing landing gear assemblies, including without limitation [defendants'] EC120 helicopter...." Second Am. Compl. at 17, ¶ 77. More specifically, plaintiff alleges that:
Id. at 18, ¶ 77.
Plaintiff seeks recovery from defendants of damages to compensate it for defendants' alleged infringement, together with costs and interest, attorneys' fees under 35 U.S.C. § 285, and an injunction against further infringement.
Defendants' motion seeks a summary adjudication that neither of them infringed the '242 patent for each of the following reasons:
Mot. at 1-2. Eurocopter adds a fifth reason for noninfringment as to it:
Id. at 2.
In the interest of judicial economy, the court is addressing in this memorandum opinion only the first two reasons.
Patent '242 was issued October 31, 1995, pursuant to an application filed November 5, 1993. It shows Bell Helicopter Textron,
The title of the patent is "Helicopter Landing Gear Assembly." Of the twenty-six claims in the patent, three (claims 1, 10, and 19) are independent. Each of the others is dependent on one of the independent claims, thus incorporating all of the elements of the independent claim. Plaintiff opposes the motion for summary judgment in reliance on independent claim 10 and dependent claims 11-12 and 16-18. Independent claim 10 is worded as follows:
Mot., App. at 35 [col. 7, lines 9-38]. Claims 11-12 and 16-18, which are dependent on claim 10, are worded as follows:
Id. [col. 7, lines 39-48, 59-67; col. 8, lines 1-4].
A party is entitled to summary judgment on all or any part of a claim as to which there is no genuine issue of material fact and as to which the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party has the initial burden of showing that there is no genuine issue of material fact. Anderson, 477 U.S. at 256, 106 S.Ct. 2505. The movant may discharge this burden by pointing out the absence of evidence to support one or more essential elements of the non-moving party's claim "since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial." Celotex Corp. v. Catrett, 477 U.S. 317, 323-25, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the moving party has carried its burden under Rule 56(c), the non-moving party must do more than merely show that there is some metaphysical doubt as to the material facts. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The party opposing the motion may not rest on mere allegations or denials of the pleadings, but must set forth specific facts showing a genuine issue for trial. Anderson, 477 U.S. at 248, 256, 106 S.Ct. 2505. To meet this burden, the nonmovant must "identify specific evidence in the record and articulate the `precise manner' in which that evidence support[s][its] claim[s]." Forsyth v. Barr, 19 F.3d 1527, 1537 (5th Cir.1994). An issue is material only if its resolution could affect the outcome of the action. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Unsupported allegations, conclusory in nature, are insufficient to defeat a proper motion for summary judgment. Simmons v. Lyons, 746 F.2d 265, 269 (5th Cir.1984).
The words "improved" and "replacement" are used throughout the '242 patent and its prosecution history, either separately or together in the term "improved replacement."
The first sentence of the "Abstract" makes reference to "[a]n improved helicopter landing gear assembly."
Under the subheading "Field of the Invention," below the heading "Background of the Invention," the first sentence states that the invention relates "in particular to an improved replacement landing gear assembly" of a specified type. Id. at 32 [col. 1, lines 7-10]. There are descriptions under the further subheading "Description of
In the first sentence under the heading "Summary of the Invention," the statement is made that "[i]t is the general object of the invention to provide an improved replacement helicopter landing gear assembly to substantially increase useful service life," id. [col. 1, lines 61-63], which is followed by a summary description of the invention.
Under the heading "Description of the Preferred Embodiment," the statements are made that "[t]he diameter of the outer surface 26 of the crosstubes 14 has to remain unchanged from the prior art crosstubes so that the new crosstubes can be used as replacements for the old crosstubes...," id. at 33 [col. 4, lines 21-24], and that "[t]he prior art crosstubes that this preferred embodiment is designed to be a replacement for, were constructed of the aluminum alloy ...," id. at 33 [col. 4, lines 25-28]. Under that same heading reference is made twice to "improvements," and twice to an "improvement," made by the invention over prior art landing gear assemblies. Id. [col. 4, lines 25-28, 33]; 34 [col. 5, lines 18, 55; col. 6, line 7].
The preamble to each of the independent claims starts with the words "[w]hat is claimed is ... [a]n improved replacement helicopter landing gear assembly," followed by a general description of the components of the assembly contemplated by the invention and then by the words "the improvement comprising."
The word "replacement" in each of the preambles was added by an amendment filed in response to the Examiner's rejection of the claims as originally stated. Id. at 43-46. Under the heading "Applicant's Claimed Invention," the explanation was given in the amendment document that prior-art landing gear assemblies have a short useful life brought about by premature failure caused by corrosion and fatigue and that "[t]o avoid failure, the crosstubes have to be replaced frequently." Id. at 46. Under that same heading, the following additional explanations were provided:
Id. at 47-48. The amendment document added that the "above improvements are claimed in the independent claims." Id. at 48.
Under the heading of "Nonobviousness of Claim 10," the amendment document again spoke of the need for the invention to have a crosstube outer diameter the same as the crosstube being replaced. Id. at 52. The amendment document also made reference to various solutions attempted by the industry to solve landing gear problems and to the "industry's failure to build a replacement landing gear assembly having a useful life close to that of the landing gear of the present invention." Id. at 53.
Defendants argue that:
Br. in Supp. of Mot. at 13-14. In response, plaintiff maintains that "the terms `improved' and `replacement' in the claim preamble mean an improvement to and replacement for prior art landing gear assemblies, or components thereof." Br. in Opp'n at 17.
The court agrees with plaintiff that the word "improved," as used in the preambles to the claims, denotes no more than that the invention is thought to be an improvement over prior art landing gear assemblies; and, the court agrees with defendants that the word "replacement," as used in the preambles, denotes the intent that the invention, an improved helicopter landing gear assembly, is to be used as a
Plaintiff takes the position that even if the word "replacement" indicates that the anticipated use of the invention would be as replacements for landing gear assemblies previously installed on helicopters, defendants are no better off because an anticipated use of the invention does not create an added limitation, and that the absence of use-as-replacement language in the claimed improvements causes the anticipated use to be irrelevant. There is case authority providing superficial support for plaintiff's position. "Absent an express limitation to the contrary, any use of a device that meets all of the limitations of an apparatus claim written in structural terms infringes that apparatus claim." Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed.Cir.2009). "[A] preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002) (internal quotation marks omitted) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed.Cir.1997)).
However, the more persuasive authority is that "clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention." Id. at 808. Paraphrasing language the Federal Circuit used in Omega Engineering, Inc. v. Raytek Corp., the fact that the prosecution history discloses that "the applicant took a position before the PTO that would lead a competitor to believe that the applicant had disavowed coverage of [landing gear assemblies other than those that were to be used as replacements for previously installed assemblies]" is an important consideration. 334 F.3d 1314, 1325 (Fed.Cir. 2003).
The court has concluded that the addition by the amendment document
55 F.3d 615, 620 (Fed.Cir.1995) (citations, internal quotation marks, parentheses, and footnote omitted). The key effect to be given to the wording of a preamble was explained by the Federal Circuit in In re Paulsen as follows:
30 F.3d 1475, 1479 (Fed.Cir.1994). If a word in the preamble "breathes life and meaning into the claims" it "is a necessary limitation to them." Id.
The adding by the amendment document of the word "replacement" to each of the preambles represents an additional structural limitation because, at the least, it adds to the claims the concept expressed in the specifications and prosecution history that the structure of the invention must be compatible with the assembly it is to replace, i.e., the outer diameter of the crosstubes of the replacement landing gear assembly must be the same as the crosstubes on the assembly it is to replace. Recall, the specifications said that "[t]he diameter of the outer surface 26 of the crosstubes 14 has to remain unchanged from the prior art crosstubes so that the new crosstubes can be used as replacements for the old crosstubes." Mot., App. at 33 [col. 4, lines 21-24]. And, the amendment document makes clear that the mere use of the word "replacement" in the preamble implies additional criteria that must be met. Telling is the following language from the amendment document:
Id. at 47 (emphasis added). The same point is made specifically as to independent claim 10. Id. at 52.
Without the addition of the word "replacement" to the wording of the independent claims, there would be nothing in the independent claims providing, for instance, the obviously-intended limitation that the structure of each specimen of the invention must have crosstubes having the same outer diameter of the crosstubes that exist on the landing gear assembly that is to be replaced by an assembly made to the other limitations of the patent.
For the reasons stated above, the court concludes that the landing gear assemblies installed as original equipment by defendants, or either of them, on helicopters do not infringe the '242 patent.
This brings the court to the issue of whether the patent was infringed by the making and supplying by one or both defendants of landing gear assemblies, or parts thereof, for use in the replacement or repair of originally installed landing gear assemblies.
In addition to taking the position that original equipment landing gear assemblies on defendant's helicopter do not infringe the patent by reason of the "improved replacement landing gear assembly" language, defendants argue in that same section of their brief that:
Br. in Supp. of Mot. at 13-14 (references omitted). Defendants maintain that: "There is no replacement landing gear assembly offered for sale that contains the bracket, the cross tube and the strap (or stop) on the cross tube. Instead, only the individual replacement parts can be purchased by customers." Id. at 15-16 (record references omitted). In conclusion, defendants argue that:
Id. at 17.
Plaintiff responds that, even if defendants sell only component parts and not the entire landing gear assemblies, defendants cannot avoid liability for infringement. Br. in Opp'n at 23. In support of its response, plaintiff relies on 35 U.S.C. § 271 (c), which states in pertinent part that:
35 U.S.C. § 271(c).
As the Federal Circuit explained in Fujitsu Ltd. v. Netgear Inc., to establish contributory infringement as contemplated by § 271(c), "the patent owner must show ... 1) that there is direct infringement, 2) that the accused infringer had knowledge of the patent, 3) that the component has no substantial non-infringing uses, and 4) that the component is a material part of the invention." 620 F.3d 1321, 1326 (Fed.Cir.2010). In their reply, defendants maintain that contributory infringement cannot be shown because there is no evidence that any component it furnished was used by a third party in a direct infringement of the '242 patent. Reply. at 11-12. The court agrees with defendants.
The unchallenged summary judgment evidence is that defendants do not sell a replacement landing gear assembly that contains a bracket, a strap, and a crosstube. Instead, the record shows that defendants sell only individual components of the type landing gear installed on the EC120 and not entire replacement assemblies. Mot., App. at 4, ¶ 4, There is no evidence that any of defendants' customers replaced all three required parts of the landing gear assembly on a single helicopter. "[I]t is not enough to simply show that a product is capable of infringement; the patent owner must show evidence of specific instances of direct infringement." Fujitsu Ltd., 620 F.3d at 1329. Consequently, even if the court assumes, arguendo, that a combination of components of defendants' assembly would infringe, there is no summary judgment evidence of any direct infringement, with the result that there is no summary judgment evidence of a fact that must exist for defendants to be liable for contributory infringement.
The independent claims of the '242 patent require, inter alia, that:
According to defendants, "[t]he ordinary meaning of these limitations requires that 1) the bracket seats on the strap, and 2) the stop surface of the strap contacts the bracket to minimize movement." Br. in Supp. of Mot. at 18. Defendants argue that:
Br. in Supp. of Mot. at 23.
The court agrees that when the strap limitations mentioned above are properly construed, defendants' landing gear assembly does not infringe the '242 patent because
On the subject of the stop surfaces on the strap, the specification states that "[i]f forces are applied to bracket 22 or to crosstube 14 that tend to slide the bracket longitudinally along strap 20, one of the stop surfaces 34 will engage side 60 of contact bands 58 of one of the brackets 22 and prevent the movement of bracket 22 with respect to strap 20 or crosstube 14." Id. at 33 [col. 4, lines 13-18]. According to the claims, the mating of a stop surface on the bracket is what minimizes the lateral movement of the bracket on the strap, id. at 34 [col. 6, lines 25-27]; and, the ordinary meaning of the term "mating" requires that there at least be contact between the stop surface and the bracket at some point in time.
The summary judgment evidence shows without dispute that the EC 120 helicopter landing gear assembly does not meet the strap limitations. There is no strap on the front crosstube of that assembly used in connection with the brackets that secures the crosstube to the helicopter fuselage. Id. at 36. The bracket on the rear crosstube clamps around a rubber gasket surrounding the crosstube, not a strap. The gasket cannot be considered to be a strap inasmuch as it has no holes in it. Id. The only pieces with holes for connection to the crosstubes are the stop pieces. Id. However, the bracket does not clamp around or seat on top of the stop pieces. Id. Consequently, there cannot be lateral movement of the bracket on the strap or stop that can be minimized. In addition, there is no stop surface on each stop on the rear crosstube that contacts or otherwise mates with the bracket. Id. at 36, 41. The side of the stop only contacts the side of the rubber gasket.
For the reasons given above, the undisputed summary judgment evidence of probative value is that the landing gear assembly of the EC 120 helicopter cannot be found to infringe any claim of the '242 patent.
For each of the alternative reasons discussed above, the court has concluded that plaintiff has failed to adduce summary judgment evidence raising a genuine issue of material fact that the helicopter landing gear assembly manufactured and sold by defendants infringed the '242 patent. There might well be merit to one or more of the other reasons given by defendants for a ruling of noninfringement, but there would be nothing to gain by a study and resolution of the competing contentions of the parties as to those other reasons inasmuch as the rulings the court has made on each of the first two reasons are dispositive.
Therefore,
The court ORDERS that defendants' motion for summary judgment be, and is hereby, granted, and that all claims made by plaintiff in count III be, and are hereby, dismissed.
Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed.Cir.2005) (quotation marks omitted) (quoting Key Pharms v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed.Cir.1998)).