Transmatic, Inc. v. Gulton Industries, Inc.

• Decision Date: 08 April 1994
• Docket Number: No. 90-70987.,90-70987.
• Citation: 849 F. Supp. 526
• Parties: TRANSMATIC INC., Plaintiff, v. GULTON INDUSTRIES, INC., Defendant.
• Court: U.S. District Court — Western District of Michigan

849 F. Supp. 526

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

No. 90-70987.

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

April 8, 1994.

COPYRIGHT MATERIAL OMITTED

Owen E. Perry, Richard W. Hoffmann, Troy, MI, for plaintiff.

Bernard Cantor, Birmingham, MI, Ira Levy, William F. Dudine, Jr., New York City, for defendant.

OPINION AND ORDER

ROSEN, District Judge.

I. INTRODUCTION

In the 1967 movie "The Graduate," Dustin Hoffman's character, Benjamin, is taken aside at his graduation party by a friend of his parents, and, with his arm around young Benjamin's shoulder, this family friend tells Benjamin that he has just one word of advice for Benjamin to guide his future: "Plastics." It is unclear in the movie if Benjamin ever got the message. (In the short term, he seemed to have been distracted into other pursuits involving another parental friend, Mrs. Robinson (Anne Bancroft), and her daughter, Elaine (Katherine Ross)).

However, Benjamin Domas, the inventor of the plastic cornice lighting fixture at issue in this case, certainly did get the message about a decade later when he created his device in the late 1970s. By exploiting the versatility and utility of plastics to make his pultruded fixture, Mr. Domas set in motion litigation before the U.S. Patent & Trademark Office ("PTO") and before this Court spanning about fifteen years. Today, this Court hopes to bring at least its own involvement in this matter to an end.

II. BACKGROUND

Transmatic is the owner (by assignment from Mr. 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 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 mass-transit vehicle lighting 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 Plaintiff's motion to add Gulton as Defendant.

On January 7, 1992, at the request of Defendant, this Court issued an order staying the case pending the outcome of the PTO's 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

On March 31, 1993, this Court issued an opinion and order deciding, inter alia, cross-motions for summary judgment. Transmatic, Inc. v. Gulton Indus., Inc., 818 F.Supp. 1052 (E.D.Mich.1993). The Court held (1) the Domas patent was valid because it was not obvious from the prior art; (2) the accused device did not literally infringe the Domas patent; (3) a question of material fact existed on whether the accused device infringed under the doctrine of equivalents; (4) Plaintiff did not demonstrate that there was no question of material fact on whether Defendant willfully infringed and on whether Plaintiff was entitled to increased damages and attorney fees under 35 U.S.C. § 285; and (5) Plaintiff failed to show the absence of a material question of fact on Gulton's defense that Plaintiff engaged in inequitable conduct before the PTO. 818 F.Supp. at 1060-72.

The remaining issues in the case — namely, equivalent infringement, willfulness, and inequitable conduct — were tried to an advisory jury⁴ on October 25-November 15, 1993. On November 8, the Court granted Defendant's motion for judgment as a matter of law on willfulness. Tr. 1098-1101. The Court instructed the jury on the liability issues of equivalent infringement and inequitable conduct and on damages on November 12. The jury was provided with a detailed special interrogatory verdict form, and it returned its advisory verdict on November 15. That verdict read as follows:

JUROR VERBEKE: We, the jury, after considering the evidence, unanimously find as follows: Infringement under the doctrine of equivalents. Prior art. Does the claim urged by Transmatic under the doctrine of equivalents encompass prior art.

No.

Does the Luminator accused device, when compared with the Domas patent, Claim 1, perform substantially the same function?

Yes.

In substantially the same way?

Yes.

To achieve substantially the same result?

Yes.

Inequitable conduct. In prosecuting the Domas patent claim applications, did the inventor and/or his attorney meet their obligations to disclose all material, non-communicative matters — I'm sorry — disclose all material, non-cumulative matters to the patent office?

Yes.

Transmatic's damages due to lost profits was: $3,023,773.

Tr. 1456.

Upon instruction of the Court, the parties submitted proposed findings of fact and conclusions of law.⁵ After reviewing these, as well as all of the evidence presented at trial, the Court is now prepared to enter judgment in this case.

III. FINDINGS AND CONCLUSIONS

A. FINDINGS AND CONCLUSIONS ON VALIDITY AND LITERAL INFRINGEMENT.

1. The Court, seeing no reason to revisit the issues of validity and literal infringement, adheres to its decisions rendered in its March 31, 1993 summary judgment opinion.

B. FINDINGS AND CONCLUSIONS ON EQUIVALENT INFRINGEMENT.

1. Introduction.

2. The law of the doctrine of equivalents is well-settled:

Under the doctrine of equivalents, a patentee must show that the accused device performs substantially the same function, in substantially the same way, to achieve substantially the same result. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607, 70 S.Ct. 854, 855, 94 L.Ed. 1097 (1950). "The `substantially the same way' prong of the test may be met if an equivalent of a recited limitation has been substituted in the accused device." Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1325-26, 21 U.S.P.Q.2d 1161, 1164-65 (Fed.Cir.1991), cert. denied, ___ U.S. ___, 112 S.Ct. 2942, 119 L.Ed.2d 566 (1992). Thus, infringement requires that each limitation of a claim be met exactly or by a substantial equivalent.

Read Corp. v. Portec, Inc., 970 F.2d 816, 822 (Fed.Cir.1992).

2. Unclean Hands.

3. Defendant argues that because the doctrine of equivalents is an equitable doctrine, an unclean hands defense is available to it. Moreover, Defendant argues that Plaintiff's failure to fulfill its duty of candor with the PTO and its failure to seek a reissuance of the Domas patent to include the additional flange extending beyond the light housing should preclude it from relying on the doctrine of equivalents.

4. The Court holds, for the reasons set out infra, Part III-D, that Plaintiff fulfilled its duty of candor to the PTO. Furthermore, the Court does not find that Plaintiff's failure to make a reissue application to extend the limitations of the patent to include the additional flange is sufficient, without more, to bar Plaintiff from claiming equivalent infringement.

5. Defendant cited Haynes Int'l, Inc. v. Jessop Steel Co., 8 F.3d 1573 (Fed.Cir.1993), modified 15 F.3d 1076 (Fed.Cir.1994), in support of its proposition that a failure to extend claims through a reissue application could be a bar to invoking the doctrine of equivalents. In that case, the patentee sought a ruling of infringement on the equivalents of its chromium-based alloy. A split panel of the Federal Circuit held that the patentee's cancellation of broader claims and its failure to relitigate those broader claims in a continuation application provided a basis for prosecution estoppel such that the patentee could not invoke the doctrine of equivalents. 8 F.3d at 1578, modified 15 F.3d at 1076-77.

6. The Court does not believe that Haynes supports Defendant's unclean hands argument in the instant case. First, Haynes was a prosecution estoppel case, a legal theory which has never been at issue here. Second, upon reconsideration, the Federal Circuit expressly excluded its prior reference to a failure to file a reissue application as a possible ground for prosecution estoppel. Third, the patentee's failure to file a continuation application alone was not grounds for prosecution estoppel; the Haynes court specifically rested its finding of estoppel on both the failure to continue prosecution and the cancellation of the broader claims in the first place. 8 F.3d at 1578. Thus, as noted above, even if the Court were to hold...