Transmatic, Inc. v. Gulton Industries, Inc., 90-70987.

• Decision Date: 31 March 1993
• Docket Number: No. 90-70987.,90-70987.
• Citation: 27 USPQ 2d 1561,818 F. Supp. 1052
• Parties: TRANSMATIC, INC., Plaintiff, v. GULTON INDUSTRIES, INC., Defendant.
• Court: U.S. District Court — Western District of Michigan

818 F. Supp. 1052

27 USPQ 2d 1561

TRANSMATIC, INC., Plaintiff, v. GULTON INDUSTRIES, INC., Defendant.

No. 90-70987.

United States District Court, E.D. Michigan, S.D.

March 31, 1993.

COPYRIGHT MATERIAL OMITTED

Richard Hoffman, Owen E. Perry, Troy, MI, for plaintiff.

Bernard Canter, Troy, MI, Ira Jay Levy, New York City, for defendant.

OPINION AND ORDER

ROSEN, District Judge.

I. INTRODUCTION

Plaintiff Transmatic, Inc. ("Transmatic") instituted this patent infringement action in this Court on April 10, 1990. This Opinion and Order reflects the Court's ruling on the following pending motions: (1) Plaintiff's motion to lift the stay; (2) Defendant's motion to review the Magistrate Judge's decision regarding Defendant's motion to compel admissions and interrogatories; (3) Dismissed-Defendant Mark IV's motion for sanctions and attorney's fees; (4) Plaintiff's motion for order in limine to exclude expert witnesses, limit expert witness testimony, and exclude declarations in the record; (5) Cross-motions for partial summary judgment on the validity of claim 1 of the patent-in-suit; (6) Plaintiff's motion for partial summary judgment of infringement; (7) Plaintiff's motion for partial summary judgment on whether the infringement was willful, whether damages should be increased to three times the amount, and whether this is an exceptional case entitling Plaintiff to attorney fees; and (8) Plaintiff's motion for partial summary judgment to dismiss Defendant's affirmative defense of inequitable conduct.

II. FACTUAL BACKGROUND

Transmatic is the owner (by assignment from the inventor Mr. Ben V. Domas) of patent No. 4,387,415, which was duly issued on June 7, 1983 for an invention entitled "Cornice Lighting Fixtures." This is a lighting fixture that is placed in the cornice of mass transit vehicles, such as busses. It consists of an elongated concave trim panel ("trim panel") that holds an advertising card, and an elongated fluorescent light along to one edge of the card holder that illuminates the advertising card and provides general illumination for the vehicle. The light source is formed by a "light housing" and a diffusing "light cover" which together enclose a fluorescent light tube.

As described in the patent, the trim panel and light housing are parts of a unitary member, which is made as a pultrusion¹ from resin and glass fibers, and has a uniform cross-section along its length. The lighting fixture may form one wall of an air duct for ventilation in the vehicle. Thus, this fixture is a single-piece unit made from a pultrusion and lights the advertising cards from the front (front-lighting fixture), as opposed to from the back (back-lighting fixture).²

In 1983, subsequent to the issuance of the patent-in-suit, Plaintiff reconfigured its trim panel. Plaintiff added an approximately three inch flange that extended above the light housing along the length of the housing, which had previously formed the upper edge of the illuminated device. This flange is incorporated into the pultruded fixture as one single piece and now itself forms the upper edge of the fixture. Defendant's accused fixture, manufactured subsequent to Plaintiff's reconfigured device, also incorporates this flange as a unitary pultruded part of the fixture.

The original complaint named Mark IV Industries ("Mark IV") as the Defendant and alleged that Mark IV was Plaintiff's competitor in selling lighting fixtures for buses. In a December 21, 1990 Order, this Court granted Defendant Mark IV's motion for summary judgment, because Mark IV only manufactured and sold this type of fixture (called the Luminator fixture) through its wholly-owned subsidiary Gulton Industries, Inc. ("Gulton"). In that order, however, the Court granted Plaintiffs motion to add Gulton as Defendant.

On January 7, 1992, this Court issued an Order staying the case pending the outcome of the Patent and Trademark Office's ("PTO") reexamination of the patentability of the instant fixture. On December 1, 1992 the PTO issued a reexamination certificate confirming the validity of the instant patent.³

Having reviewed the parties' respective briefs and the exhibits attached thereto, and having heard counsels' oral arguments on February 4, 1993, the Court is now prepared to rule on the eight pending motions, and this Opinion and Order sets forth that ruling.⁴

III. ANALYSIS

A. THE STANDARDS GOVERNING CONSIDERATION OF A MOTION FOR SUMMARY JUDGMENT.

Summary judgment is proper "if the pleadings, depositions, answer to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c).

Three 1986 Supreme Court decisions — Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); and Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) — ushered in a "new era" in the standards of review for a summary judgment motion. These cases, in the aggregate, lowered the movant's burden on a summary judgment motion.⁵ According to the Celotex Court,

In our view, the plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof.

Celotex at 322, 106 S.Ct. at 2552.

After reviewing the above trilogy, the Sixth Circuit established a series of principles to be applied to motions for summary judgment. They are summarized as follows:

* Cases involving state of mind issues are not necessarily inappropriate for summary judgment.

* The movant must meet the initial burden of showing "the absence of a genuine issue of material fact" as to an essential element of the non-movant's case. This burden may be met by pointing out to the court that the respondent, having had sufficient opportunity for discovery, has no evidence to support an essential element of his or her case.

* The respondent cannot rely on the hope that the trier of fact will disbelieve the movant's denial of a disputed fact, but must "present affirmative evidence in order to defeat a properly supported motion for summary judgment."

* The trial court no longer has the duty to search the entire record to establish that it is bereft of a genuine issue of material fact.

* The trial court has more discretion than in the "old era" in evaluating the respondent's evidence. The respondent must "do more than simply show that there is some metaphysical doubt as to the material facts." Further, "where the record taken as a whole could not lead a rational trier of fact to find" for the respondent, the motion should be granted. The trial court has at least some discretion to determine whether the respondent's claim is plausible.

See Street v. J.C. Bradford & Co., 886 F.2d 1472, 1479-80 (6th Cir.1989). The Court will apply the above principles in deciding the summary judgment motions in this case.

B. PLAINTIFF'S MOTION TO LIFT THE STAY.

At the hearing, both parties consented to lifting the stay and, therefore, the Court grants this motion.

C. DEFENDANT'S MOTION TO REVIEW THE MAGISTRATE JUDGE'S DECISION DENYING ITS MOTION TO COMPEL ADMISSIONS AND INTERROGATORIES.

On August 30, 1991, Magistrate Judge Morgan issued an Opinion and Order denying Defendant's motion to compel answers to the requests to admit and motion to compel certain interrogatories.

After conducting a hearing on said motion, the Magistrate Judge denied Defendant's motion because Defendant sought discovery that went to its burden of establishing invalidity pursuant to 35 U.S.C. § 282. In other words, the discovery requests sought impermissibly to shift the burden of proof from Defendant to Plaintiff, and the requests violated a major principle of patent law that the validity of the invention must be considered as a whole.⁶

The Magistrate Judge's Order is a non-dispositive discovery matter and, thus, the Court may only reverse the Magistrate Judge's ruling if it was "clearly erroneous or contrary to law." Fed.R.Civ.P. 72(a); Local Rule 72.1(d)(1).

1. Defendant's Arguments In Support Of Reversal.

Defendant specifically attacks the Magistrate Judge's order in many respects, including that the Magistrate Judge: (1) denied discovery into the obviousness factors; (2) erroneously labelled Defendant's requests to admit as seeking legal conclusions and interpretations; (3) erroneously applied the "as a whole" doctrine to limit discovery into the obviousness elements; (4) failed to realize that the requests were tailored to minimize the issues, time, and expense of trial; (5) erroneously found that the discovery would not lead to the discovery of admissible evidence; and (6) erroneously found that the disputed discovery sought conclusions of obviousness.

2. Plaintiff's Arguments In Support Of the Order.

Plaintiff insists that the order is not clearly erroneous because it recognizes that the discovery seeks to force Plaintiff to interpret documents that are already in Defendant's possession. Also, because the interrogatories require a detailed explanation of any response to a request for admission other than an unqualified admission, Plaintiff, for example, would have the burden of searching all prior art to determine what specific portion of its design, if any, existed.

3. The Magistrate Judge's Order is not Clearly Erroneous or Contrary to Law.

The Magistrate Judge's Order is not clearly erroneous or contrary to law and, therefore, the Court refuses to reverse it. As the Court noted at the hearing, although the Court would probably have granted this motion to compel, that is not the issue. Rather, the Court may only reverse the...