ABB ROBOTICS v. GMFanuc ROBOTICS

• Decision Date: 10 August 1993
• Docket Number: No. 92-C-58.,92-C-58.
• Citation: 828 F. Supp. 1386
• Parties: ABB ROBOTICS, INC., and Cincinnati Milacron, Inc., Plaintiffs, v. GMFanuc ROBOTICS CORPORATION, Defendant.
• Court: U.S. District Court — Eastern District of Wisconsin

828 F. Supp. 1386

ABB ROBOTICS, INC., and Cincinnati Milacron, Inc., Plaintiffs, v. GMFanuc ROBOTICS CORPORATION, Defendant.

No. 92-C-58.

United States District Court, E.D. Wisconsin.

August 10, 1993.

Donald H. Carlson, Riordan, Crivello, Carlson, Mentkowski & Steeves, S.C., Milwaukee, WI (Walter D. Ames, Watson, Cole, Grindle & Watson, Washington, DC, of counsel), for plaintiffs.

Ernie L. Brooks, Brooks & Kushman, Southfield, MI, Howard A. Pollack, Godfrey & Kahn, S.C., Milwaukee, WI, for defendant.

DECISION AND ORDER

RANDA, District Judge.

Before the Court is Defendant GMFanuc Robotics Corporation's ("Fanuc") Motion for Summary Judgment on the grounds of Laches and Estoppel in this patent infringement action filed by Plaintiffs ABB Robotics, Inc. ("ABB") and Cincinnati Milacron, Inc. ("CM"). For the reasons set forth more fully below, Fanuc's Motion as to both Laches and Estoppel will be granted.

PRELIMINARY BACKGROUND

The Parties

ABB is the American subsidiary of ABB Sweden, which is in turn a subsidiary of ABB ASEA, a multinational corporation based in Switzerland. Robotics is one of many industries in which ABB ASEA is involved. CM is an Ohio Company that was an active participant in the robotics industry throughout the 1980s. Fanuc, a Michigan based manufacturer of robotic devices, was created in the early 1980s as a joint venture between GM and Fanuc LTD, (a Japanese company) as a result of the growing automation of the car industry. The patent at issue is No. 4,068,536 ('536) (also referred to as the "Stackhouse patent") which concerns a robotic wrist.

Chronology of Events

In early 1984, CM contacted Fanuc regarding certain robot control patents which CM believed Fanuc would be required to take a license under. Correspondence and discussions began between Counsel for CM, Richard Eby and Counsel for Fanuc, David Syrowik. In letters dated July 9, 1984, and January 21, 1985, Syrowik indicated that Fanuc did not require a license under any of the control patents. (the '536 patent had apparently not yet been discussed) (Exhs. 6 & 7, attached to Fanuc's Motion) In August of 1985, CM, through Richard Eby, raised the issue again with respect to two particular control patents. Negotiations followed which resulted in Fanuc taking a license under some of CM's patents.

In early 1984, at approximately the same time that CM and Fanuc were discussing the CM control patents, Fanuc was developing a new paint-spray robot, designated the P-150. In January of 1985, Fanuc filed an application for a patent on its hollow robot wrist design (utilized in the P-150). That patent, No. 4,708,580 ('580), ultimately issued on November 24, 1987)¹ Fanuc displayed the P-150 commercially at a major robotics industry exhibition in June of 1985. Part of the display included informational brochures detailing the workings of the improved robotic wrist. (a copy of which is attached as Exhibit 53 to Fanuc's Reply)

Eby and Syrowik met on September 18, 1985 and discussed an agreement whereby Fanuc would take a license under CM's control patents. In addition, they discussed the possibility that the P-150 infringed the '536. At the meeting Eby indicated that CM was serious about the enforcement of its patent rights under the '536. Syrowik maintained that the P-150 did not infringe the '536. (Syrowik Aff. ¶¶ 3-5, Exh. 15 of Fanuc's Motion) That the '536 was discussed by Eby and Syrowik is supported by a letter from Eby to Syrowik on September 25, 1985. (Exh. 16, Fanuc's Motion) That letter states, "This letter is to follow up our meeting of September 18, 1985 ... We also requested that you study the P-150 painting robot relative to Milacron's Patent No. 4,068,536, and you indicated you would respond by the end of November, 1985". On January 21, 1986 Syrowik wrote Eby, "I would like to apologize for the delay in getting back to you on our evaluations of the Cincinnati three roll wrist patent (i.e., the '536) In summary, it is GMF's position that we have no need for a license under the Stackhouse patent."

It was not until July 24, 1986 that CM contacted Fanuc and requested a meeting to discuss "robot wrist designs from the perspective of Milacron's patent." (The parties do not dispute that this is a reference to the P-150 and the '536 patent.) (Exh. 19, Fanuc's Motion) In response, Fanuc sent CM a letter again disputing infringement and enclosing two pages which depicted and described the wrist assembly of the P-150. (Exh. 20, Fanuc's Motion; Exh. N., ABB/CM's Cross Motion) On September 3, 1986, CM and Fanuc met to discuss the issue further and Fanuc reiterated its position that the P-150 did not infringe. (Exh. 15, Syrowik Aff., ¶ 7) CM management held a meeting and decided not to sue Fanuc. (Exh. 2, Rehfeldt Dep., p. 13; Exh. 14, Cole Dep., p. 12) No further discussion took place.

In 1988, CM granted a license under certain CM robotics patents to ABB Sweden. In 1990, ABB entered into an asset purchase agreement with CM wherein ABB obtained CM's Industrial Robot Division and an exclusive license from CM under the '536 patent. ABB SWEDEN, through its various subsidiaries is a major competitor of Fanuc. Around this same time, Fanuc, as part of its own patent enforcement efforts, contacted a number of companies, including subsidiaries of ABB Asea, informing them of Fanuc patents, including the '580 (incorporated in the P-150). Thereafter, correspondence between ABB Asea and Fanuc began, beginning in June of 1991, wherein ABB Asea charged Fanuc with infringement of the '536 patent. (Exh. 46, Fanuc's Motion) Fanuc denied infringement and responded to ABB Asea that any enforcement action would be barred by laches and estoppel. (Exh. 48, Fanuc's Motion) On January 17, 1992, ABB and CM filed this suit against Fanuc. Further facts will be discussed in the legal analysis.

LEGAL ANALYSIS

Summary Judgment Standard

Summary judgment is appropriate when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with 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." (emphasis added) Fed. R.Civ.P. 56(c). A fact is genuinely disputed only when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Judge Posner, in Palucki v. Sears, Roebuck & Company, 879 F.2d 1568 (7th Cir.1989), stated:

A district judge faced with such a motion must decide, subject of course to plenary appellate review, whether the state of the evidence is such that, if the case were tried tomorrow, the plaintiff would have a fair chance of obtaining a verdict. (emphasis added)

Id. at 1573-74.

Summary Judgment is equally appropriate in the context of a patent infringement case. Soot v. General Electric Company, 681 F.Supp. 157, 162 (S.D.N.Y.1987), citing Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831 (Fed.Cir. 1984); A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020, 1039 (Fed. Cir.1992) ("If the decision on laches is made on summary judgment, there must, in addition, be no genuine issues of material fact, the burden of proof of an issue must be correctly allocated, and all pertinent factors must be considered.") (citations omitted). The defenses of laches and estoppel are established by a "preponderance of the evidence". Id. at 1045-46.

To prove laches, Fanuc must show that (1) the delay in filing suit was unreasonable; and (2) that to permit ABB/CM to proceed with the suit would materially prejudice Fanuc. With respect to laches, if the delay is longer than 6 years, a presumption arises that both (1) and (2) have been proven.² The presumption causes the burden of production, (not the burden of proof) to be shifted to ABB/CM and they must come forward with evidence "sufficient to support a finding of the nonexistence of a fact" as to either element (1) or (2).³ In a laches analysis, the clock starts ticking when the patentee — CM and then ABB — "knew or should reasonably have known of the infringement".⁴

I. LACHES

A. Presumption of Laches

The question of when a patentee "knew or should have known" is one of fact. Aukerman at 1038 ("If the patentee is successful on this factual issue, no presumption arises." (citation omitted)) In the instant case, ABB/CM "vigorously contest as issues of fact" when the laches period began. (ABB/CM's Cross Motion at 2) ABB/CM argue that it was not until August 12, 1986 when CM received detailed drawings from Fanuc that it knew the "structure of the P-150 robot". (ABB/CM's Cross Motion at 7) ABB/CM argues that the laches period does not begin until that point because "one cannot tell a book by its cover or, in this case, the internal structure of an industrial robot from its shroud." (ABB/CM's Cross Motion at 9) Therefore, the period of delay is less than six years (this action was filed on January 12, 1992), the presumption of laches does not arise, and Fanuc must go forward with proof of unreasonable delay and material prejudice. Fanuc argues that CM knew perhaps as early as November of 1984 that Fanuc was developing the P-150. Support for this argument is a CM memorandum which notes, "GMF has developed and ready to announce their own 3 roll wrist."⁵ (Fanuc's Motion at 13; Exh. 13) This would mean that ABB/CM delayed more than seven years in bringing suit.

Fanuc also argues that the laches period began at some point in the summer of 1985. In January of 1985, Fanuc filed its patent application for the hollow wrist utilized in the P-150 and P-155 robots. In June of 1985, it displayed the P-150 at a major robotics industry exhibition. Accompanying the demonstration was a brochure with drawings which describe the attributes of the P-150. (Exh. 53, attached to Fanuc's Reply) Whether these publications are detailed enough so that CM...