Auto. Technologies Int'l Inc. v. Delphi Corp..

• Citation: 776 F.Supp.2d 469
• Decision Date: 09 March 2011
• Docket Number: Case No. 08–11048.
• Parties: AUTOMOTIVE TECHNOLOGIES INTERNATIONAL, INC., Plaintiff/Counter–Defendant,v.DELPHI CORPORATION, et al., Defendants/Counter-Plaintiffs.
• Court: U.S. District Court — Eastern District of Michigan

776 F.Supp.2d 469

AUTOMOTIVE TECHNOLOGIES INTERNATIONAL, INC., Plaintiff/Counter–Defendant,

v.DELPHI CORPORATION, et al., Defendants/Counter-Plaintiffs.

Case No. 08–11048.

United States District Court, E.D. Michigan, Southern Division.

March 9, 2011.

Edward W. Goldstein, Goldstein, Faucett and Prebeg, Houston, TX, Henri O. Harmon, Andrew Kochanowski, Lisa R. Mikalonis, Sommers Schwartz, P.C., Southfield, MI, Matthew J.M. Prebeg, ClearmanPrebeg LLP, Houston, TX, for Plaintiff/Counter–Defendant.John R. Hutchins, Kenyon & Kenyon, Clyde E. Findley, David M. Schnorrenberg, Michael J. Songer, Crowell & Moring, LLC, Washington, DC, William Cosnowski, Jr., Delphi Corporation Legal Staff, Sidney L. Frank, Frank, Haron, George D. Moustakas, Harness, Dickey, Troy, MI, Kent P. Herman, Kenyon & Kenyon LLP, New York, NY, Frank A. Angileri, Marc Lorelli, Robert C.J. Tuttle, Brooks Kushman, Southfield, MI, Paul Richard Steadman, Kirkland & Ellis, Chicago, IL, for Defendants/Counter–plaintiffs.

OPINION AND ORDER GRANTING FOUR OF DEFENDANTS' MOTIONS FOR SUMMARY JUDGMENT AND TERMINATING AS MOOT TWO OF DEFENDANTS' MOTIONS

ROBERT H. CLELAND, District Judge.

Before the court are six motions for summary judgment relating to four issued patents, assigned to Plaintiff, describing various automotive technologies: U.S. Patent Nos. 6,833,516 (“'516 Patent”), 7,243,945 (“'945 Patent”), 7,407,029 (“'029 Patent”), and 6,484,080 (“'080 Patent”). The motions have been fully briefed, and the court heard oral argument on January 6, 2011. For the following reasons, the court will grant four of Defendants' motions and terminate the remaining two as moot.

I. BACKGROUND

This action began when now-Defendants/Counter-Plaintiffs (“Defendants”) ¹ filed suit against Plaintiff/Counter–Defendant (“Plaintiff”) seeking a declaratory judgment of the invalidity of certain patents. Counterclaims were filed, the pleadings were amended, and the parties were realigned by the court. Defendant Delphi manufactures and distributes a Passive Occupant Detection System (“PODS”) product, the purpose of which is to regulate airbag deployment under certain circumstances. The other Defendants in this action are Original Equipment Manufacturers (“OEMs”) who purchased and implemented the PODS device in the vehicles they manufacture and sell. Plaintiff alleges that the production and use of the PODS device without its consent infringes the four patents-in-suit, and seeks damages. Defendants ask the court for a declaratory judgment that the patents are invalid as anticipated.

The court held a Markman hearing and subsequently construed the claims on September 11, 2009. Two additional amended complaints followed, with Plaintiff settling on litigating the four above-named patents-in-suit. The case was consolidated with Case No. 10–10647. Defendants filed their six summary judgment motions in early July 2010, and the court issued an amended scheduling order on July 20, 2010, setting a briefing schedule for responses and replies to the summary judgment motions.

II. STANDARD

Under Federal Rule of Civil Procedure 56, summary judgment is proper when “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). “In deciding a motion for summary judgment, the court must view the evidence in the light most favorable to the non-moving party, drawing all reasonable inferences in that party's favor.” Sagan v. United States, 342 F.3d 493, 497 (6th Cir.2003). “Where the moving party has carried its burden of showing that the pleadings, depositions, answers to interrogatories, admissions and affidavits in the record, construed favorably to the nonmoving party, do not raise a genuine issue of material fact for trial, entry of summary judgment is appropriate.” ² Gutierrez v. Lynch, 826 F.2d 1534, 1536 (6th Cir.1987) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)).

The court does not weigh the evidence to determine the truth of the matter, but rather, to determine if the evidence produced creates a genuine issue for trial. Sagan, 342 F.3d at 497 (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). The moving party must first show the absence of a genuine issue of material fact. Plant v. Morton Int'l, Inc., 212 F.3d 929, 934 (6th Cir.2000) (citing Celotex, 477 U.S. at 323, 106 S.Ct. 2548). The burden then shifts to the nonmoving party, who “must do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The non-movant must put forth enough evidence to show that there exists a genuine issue to be decided at trial. Plant, 212 F.3d at 934 (citing Anderson, 477 U.S. at 256, 106 S.Ct. 2505).

The existence of a factual dispute alone does not, however, defeat a properly supported motion for summary judgment—the disputed factual issue must be material. See Anderson, 477 U.S. at 252, 106 S.Ct. 2505 (“The judge's inquiry, therefore, unavoidably asks whether reasonable jurors could find by a preponderance of the evidence that the plaintiff is entitled to a verdict—‘whether there is [evidence] upon which a jury can properly proceed to find a verdict for the party producing it, upon whom the onus of proof is imposed.’ ” (alteration and emphasis in original) (quoting Schuylkill and Dauphin Improvement Co. v. Munson, 81 U.S. 442, 448, 14 Wall. 442, 20 L.Ed. 867 (1871))). A fact is “material” for purposes of the summary judgment inquiry when proof of that fact would establish or refute an essential element of the claim or a defense advanced by either party. Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir.1984).

A patent is presumed valid under 35 U.S.C. § 282. “Consequently, ‘a moving party seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of invalidity so that no reasonable jury could find otherwise.’ ” Chrimar Sys., Inc. v. Cisco Sys., Inc., 318 F.Supp.2d 476, 491 (E.D.Mich.2004) (quoting Eli Lilly & Co. v. Barr Labs., 251 F.3d 955, 962 (Fed.Cir.2001)); see also Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 725 (Fed.Cir.2002) (holding that a party seeking to establish particular claims as invalid must overcome the presumption of validity in 35 U.S.C. § 282 by clear and convincing evidence).³ However, “[t]he burden of persuasion created by the presumption of validity of the patent as issued is more easily met when evidence is introduced of more pertinent prior art than that considered by the Patent Examiner during prosecution of the patent application.” Standard Mfg. Co. v. United States, 25 Cl.Ct. 1, 50 (Cl.Ct.1991) (citing Solder Removal Co. v. United States Int'l Trade Comm'n, 65 C.C.P.A. 120, 582 F.2d 628, 633 (1978)).

Finally, “[a] quite different burden is that of going forward with evidence—sometimes referred to as the burden of production—a shifting burden the allocation of which depends on where in the process of trial the issue arises.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed.Cir.2008). First the party alleging invalidity has the burden of going forward with evidence of anticipating prior art, and then the patent-holder has the burden of going forward with evidence

that it is not prior art because the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art. This requires [a party] to show not only the existence of the earlier application, but why the written description in the earlier application supports the claim.

Id. (citation omitted). This “means producing sufficient evidence and argument to show that an ancestor to the [patent at issue], with a filing date prior to the [alleged prior art] date, contains a written description that supports all the limitations of ... the claim being asserted.” Id. “Under 35 U.S.C. § 102 a claim is anticipated if each and every limitation is found either expressly or inherently in a single prior art reference.” King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.Cir.2010) (internal quotation marks omitted).

In order to establish invalidity on obviousness grounds, Defendants must show that “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” See 35 U.S.C. § 103(a).

Obviousness under 35 U.S.C. § 103(a) is ultimately a legal question, based on underlying factual determinations. See Richardson–Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed.Cir.1997). The factual determinations underpinning the legal conclusion of obviousness include 1) the scope and content of the prior art, 2) the level of ordinary skill in the art, 3) the differences between the claimed invention and the prior art, and 4) evidence of secondary factors, also known as objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

Eisai Co. v. Dr. Reddy's Labs., Ltd., 533 F.3d 1353, 1356 (Fed.Cir.2008); see also Para–Ordnance Mfg., Inc. v. SGS Imps. Int'l, Inc., 73 F.3d 1085, 1088 (Fed.Cir.1995) (“The ultimate determination of obviousness is a question of law, which we review de novo.”). “The scope and content of the prior art, differences between the prior art and the claimed invention, the level of ordinary skill in the art, and objective evidence of secondary considerations of patentability are fact determinations.” Para–Ordnance, 73 F.3d at 1088. Additionally, “[w]hat the prior art teaches and whether it teaches toward or away from the claimed invention also is a determination of fact.” Id. It is the movant's burden to prove invalidity by clear and convincing evidence. Eisai, 533 F.3d at...