Jamesbury Corp. v. Litton Indus. Products, Inc.
| Decision Date | 10 February 1988 |
| Docket Number | No. 87-1106,87-1106 |
| Citation | 839 F.2d 1544,5 USPQ 2d 1779 |
| Parties | , 5 U.S.P.Q.2d 1779 JAMESBURY CORP., Plaintiff-Appellant, v. LITTON INDUSTRIAL PRODUCTS, INC., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Robert C. Miller of Oblon, Fisher, Spivak, McClelland & Maier, Arlington, Va., argued for plaintiff-appellant. With him on the brief was Arthur I. Neustadt of Oblon, Fisher, Spivak, McClelland & Maier. Of counsel were Charles L. Gholz, of Oblon, Fisher, Spivak, McClelland & Maier and Richard H. Berneike, of Combustion Engineering, Inc.
Donald R. Dunner, of Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued for defendant-appellee.
Before SMITH, NIES, and ARCHER, Circuit Judges.
Jamesbury Corp. (Jamesbury) sued Litton Industrial Products, Inc. (Litton), for infringement of its patent, United States patent No. 2,945,666 (the '666 patent). The United States District Court for the District of Connecticut granted summary judgment in favor of Litton on the issues of laches and estoppel. 1 We affirm.
(1) Whether the district court erred in holding that the law of the case doctrine did not preclude it from reconsidering the initial denial of summary judgment in light of the subsequent history of the case.
(2) Whether the district court erred in holding that Jamesbury was barred by laches from recovering damages which occurred prior to the filing of its complaint.
(3) Whether the district court erred in holding that Jamesbury's suit for infringement was barred by equitable estoppel.
The '666 patent, which relates to the manufacture of ball valves, was issued on July 19, 1960, and assigned to Jamesbury. The '666 patent has been the subject of numerous suits since 1962. First, Jamesbury sued Pacific Valves, Inc. (Pacific Valves), for infringement in New Jersey in February 1962. Then, on July 10, 1963, Jamesbury filed suit against the United States in the Court of Claims for infringement, alleging that "the defendant has used numerous ball valves embodying the invention manufactured by Electric Boat Division, General Dynamics Corp., Groton, Connecticut, by Pacific Valves, Inc., Long Beach, California, and others." On December 16, 1963, in response to a Government request to identify the "others," Jamesbury named 10 companies, including Worcester Valve Co. (Worcester Valve) and Litton's predecessor in interest, UTD Corp., Contromatics Division (Contromatics). 2
The Pacific Valves litigation was settled, and the case was dismissed in April 1965. In May 1965, Jamesbury filed suit against Worcester Valve in Massachusetts, and against the Lunkenheimer Co. in Ohio. The Court of Claims action was amended in June 1965 to name Worcester Valve specifically as an infringer. On May 16, 1967, Commissioner Lane issued a recommended decision in the Court of Claims case finding that claims 7 and 8 of the patent were valid and infringed by the Government's use of valves made by Worcester Valve and Electric Boat Division. Jamesbury also filed a declaratory judgment action in Texas against KTM Industries on October 30, 1970. 3
Jamesbury's ownership of the '666 patent was challenged in the Worcester Valve litigation by an intervenor, the E.W. Bliss Co. The district court severed the ownership issue, and the Worcester Valve, Lunkenheimer, and Court of Claims cases were stayed pending determination of ownership. The United States Court of Appeals for the First Circuit affirmed the district court's determination that Jamesbury was the rightful owner of the '666 patent on May 26, 1971. 4 On June 29, 1971, Jamesbury moved to remand the Court of Claims case to its trial division for further proceedings and findings on a question of inventorship, raised in the Worcester Valve case but not decided, and on additional prior art brought up by Worcester Valve in settlement negotiations. This motion was granted on October 1, 1971. The Worcester Valve litigation was settled in March 1972.
On September 20, 1974, Trial Judge Colaianni issued a supplemental opinion in the Court of Claims case concluding that claims 7 and 8 of the patent were valid and infringed. The Court of Claims affirmed and adopted the opinions of Commissioner Lane and Judge Colaianni on July 11, 1975. 5 In February 1980, Judge Colaianni filed a recommended decision assessing damages of $10.2 million. Of the total, 20 percent was attributable to ball valves manufactured by Contromatics. 6 The case was later settled for $8 million.
Jamesbury wrote to the president of UTD Corp. on October 12, 1967, advising him that, in the opinion of Jamesbury's Engineering Department, Contromatics' ball valves infringed the '666 patent and that Jamesbury was prepared to discuss a licensing agreement. On October 31, 1967, UTD responded that its patent attorneys had studied the patent and had concluded that there was no infringement. UTD suggested a meeting with Jamesbury to discuss the issue. Jamesbury accepted UTD's invitation in a letter which included a copy of Commissioner Lane's ruling in the Court of Claims action. The letter noted that the patent had been held valid and infringed by the Government which "purchases its valves from various suppliers." It closed with a statement that Jamesbury's patent attorney was available to discuss its position with UTD's attorneys. A meeting was held in December, but the issue was not resolved. On January 5, 1968, Jamesbury wrote to UTD that
[w]e have reported your position to our attorneys and the subject is under careful consideration.
Jamesbury had no further contact with UTD until this suit was filed on February 10, 1976.
Litton moved for dismissal based on the defenses of laches and equitable estoppel. Judge Blumenfeld, the district court judge originally assigned to this case, treated it as a motion for summary judgment since both parties relied on affidavits and other matters outside the pleadings. The motion was denied because the court determined that there were triable issues of fact concerning both defenses. 7 Litton then moved for summary judgment on the ground that claims 7 and 8 were invalid for overclaiming. Judge Blumenfeld granted this motion, but the Second Circuit reversed because the test used by the district court to determine the patentability of a combination having a novel element was too narrow. 8
The case was tried during September 1983. At the close of the evidence, Litton moved for a directed verdict on several issues, including laches. Its motions were denied, and the case was submitted to the jury. The jury returned a verdict for Litton, responding to a special interrogatory that the claims were invalid for lack of novelty. The jury did not reach any other issue because of the way the interrogatories were constructed. 9 Jamesbury appealed the invalidity determination to this court. Litton did not cross-appeal the denial of its motion for a directed verdict on the laches issue which Jamesbury asserts here it should have done. We reversed the invalidity judgment, concluding that the jury instructions had been prejudicial. We also held that the district court erred in not granting Jamesbury's motion for judgment n.o.v. with respect to validity. The case was remanded for disposition of the other issues raised at trial. 10
On remand, Jamesbury requested that Judge Blumenfeld recuse himself which he did, and the case was reassigned to Judge Dorsey. Litton moved for summary judgment on the issues of laches, estoppel, and prejudgment interest. Judge Dorsey granted the motion on the defenses of laches and estoppel. Jamesbury appeals the November 5, 1986, grant of summary judgment by the district court on the laches and estoppel defenses.
Summary judgment, in a patent case as in any other type of case, is appropriate when there are no genuine issues of material fact and the movant is entitled to judgment as a matter of law. 11 The district court must view the evidence in the light most favorable to the nonmoving party, and any doubt as to the existence of issues of material fact must be resolved in favor of the party opposing the motion. 12 The movant bears the burden of demonstrating the absence of any genuine issue of material fact. 13 However, when the movant has supported his motion as provided by Fed.R.Civ.P. 56(c), then the opposing party has the burden of coming forward with evidence directed to specific facts showing that there is a genuine issue for trial. 14 Mere denials or conclusory statements are not sufficient. 15
In reviewing the grant of summary judgment, we must determine whether the district court erred in concluding that there were no genuine issues of fact, and that Litton was entitled to judgment as a matter of law. 16 In support of its motion for summary judgment, Litton submitted a list of 26 "Undisputed Facts." These "facts" came from admissions by Jamesbury, from responses to discovery requests, and from depositions and trial testimony. Jamesbury failed to challenge any of the facts in its response to Litton's motion. Instead, its statement identifying the issues of material fact for trial (required by local rule) is supported solely by statements taken from the district court's earlier opinion denying summary judgment. Nothing which appears in Jamesbury's statement identifies any specific evidence raising a disputed issue of material fact. Therefore, the district court did not err in concluding that there were no factual disputes precluding summary judgment.
Jamesbury claims the district court erroneously assumed that (1) there was infringement by Contromatics beginning in 1963 and (2) Jamesbury was aware of it because in 1963 Jamesbury asserted that valves made by Contromatics for the Government infringed Jamesbury's patent. Jamesbury argues that it could not have charged Contromatics with infringement...
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