Automotive Techs. Intern. v. Bmw of North America

• Citation: 378 F.Supp.2d 780
• Decision Date: 21 July 2005
• Docket Number: No. 01-CV-71700-DT.,01-CV-71700-DT.
• Parties: AUTOMOTIVE TECHNOLOGIES INTERNATIONAL, Plaintiff, v. BMW OF NORTH AMERICA, INC., et al., Defendants.
• Court: U.S. District Court — Eastern District of Michigan

378 F.Supp.2d 780

AUTOMOTIVE TECHNOLOGIES INTERNATIONAL, Plaintiff, v. BMW OF NORTH AMERICA, INC., et al., Defendants.

No. 01-CV-71700-DT.

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

July 21, 2005.

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Charles W. Shifley, Binal J. Patel, Matthew P. Becker, Ted Field, Banner & Witcoff, Ltd., Chicago, IL, for defendants General Motors Corp. and Delphi Automotive Systems.

OPINION AND ORDER GRANTING DEFENDANTS'"MOTION FOR SUMMARY JUDGMENT OF INVALIDITY OF THE '253 PATENT FOR FAILURE TO COMPLY WITH THE WRITTEN DESCRIPTION REQUIREMENT," DENYING DEFENDANTS'"MOTION FOR SUMMARY JUDGMENT OF THE INVALIDITY OF CLAIMS 1, 11, 20, 30, AND 39 OF THE '253 PATENT IN VIEW OF PRIOR ART," AND GRANTING DEFENDANT DELPHI CORPORATION's "MOTION FOR PARTIAL SUMMARY JUDGMENT OF INVALIDITY ... FOR LACK OF ENABLEMENT"

CLELAND, District Judge.

This is a patent infringement case where Plaintiff has sued Defendants for infringement of United States Patent No. 5,231,253 ("the '253 patent") based on Defendants' manufacture and/or use of side impact sensors for detecting acceleration forces in automobile air bag safety devices or systems. The '253 patent is titled "Side Impact Sensors" and claims certain sensors designed to be used for side impact sensing and initiating a vehicle's occupant protection apparatus (e.g. air bags). The court entered a claim construction order regarding the '253 patent on March 31, 2004. This case is currently before the court on three dispositive motions challenging the validity the '253 patent.

First, on October 15, 2004 Defendants American Honda Motor Company, DaimlerChrysler Corporation, DaimlerChrysler Motors Corporation, Ford Motor Company, Honda Motor Company Ltd., Hyundai Motor America, Hyundai Motor Company, Mazda Motor of America, Inc., Saab Cars USA, Inc., Siemens AG, Siemens Automotive Corporation, TK Electronics, Inc. Toyota Motor Sales USA, Inc., TRW Automotive U.S. LLC, and Visteon filed a motion for summary judgment of invalidity of the '253 patent for failure to comply with the written description requirement in 35 U.S.C. § 112 ¶ 1. This motion was fully briefed and, on January 5, 2005, the court held a hearing on the motion.

Second, Defendants American Honda Motor Company, DaimlerChrysler Corporation, DaimlerChrysler Motors Corporation, Ford Motor Company, Honda Motor Company Ltd., Hyundai Motor America, Hyundai Motor Company, Mazda Motor of America, Inc., Saab Cars Sales USA, Inc., TRW, Inc., and Visteon Corporation filed a motion for summary judgment on October 15, 2004 challenging the validity of Claims 1, 11, 20, 30, and 39 of the '253 patent based on anticipation and obviousness under Sections 102 and 103 of the Patent Act. See 35 U.S.C. §§ 102, 103. Defendants filed an amended brief in support of their October 15, 2004 motion on October 25, 2004. Plaintiff filed a response on November 24, 2004 and the court received Defendants' reply brief on December 23, 2004. The court held a hearing on this motion January 12, 2005.

Third, on February 3, 2005, Defendant Delphi Corporation ("Delphi") filed its "Motion for Partial Summary Judgment of Invalidity of U.S. Patent No. 5,231,253 for Lack of Enablement." Delphi moves for the court to find, as a matter of law, that the claims of the '253 patent that cover an electronic sensor are invalid for failure to fulfill the enablement requirement of 35 U.S.C. § 112, ¶ 1. Delphi's motion also has been fully briefed and the court heard oral argument from the parties on April 27, 2005.

For the reasons explained below, the court will grant Defendants' motion for summary judgment of invalidity for failure to comply with the written description requirement, deny Defendants' motion for summary judgment of invalidity of certain claims in view of the prior art, and grant Delphi's motion for partial summary judgment of invalidity for lack of enablement.

I. STANDARD

Under Federal Rule of Civil Procedure 56, summary judgment is proper when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). "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 non-moving party, do not raise a genuine issue of material fact for trial, entry of summary judgment is appropriate." 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)); see also All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 778 (Fed.Cir.2002).

Summary judgment is not appropriate when "the evidence presents a sufficient disagreement to require submission to a jury." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Searfoss v. Pioneer Consol. Corp., 374 F.3d 1142, 1148 (Fed.Cir.2004). The existence of some factual dispute, however, does not 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.'"). A fact is "material" for purposes of summary judgment when proof of that fact would have the effect of establishing or refuting 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).

In considering a motion for summary judgment, the court must view the facts and draw all reasonable inferences from those facts in a manner most favorable to the nonmoving party. Stryker Corp. v. Davol Inc., 234 F.3d 1252, 1257 (Fed.Cir.2000); Wexler v. White's Fine Furniture, Inc., 317 F.3d 564, 570 (6th Cir.2003) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)). The court is not to weigh the evidence to determine the truth of the matter, but must determine if there is a genuine issue for trial. Sagan v. United States, 342 F.3d 493, 497 (6th Cir.2003). The burden falls on the moving party to conclusively show that no genuine issue of material fact exists and that he is entitled to judgment as a matter of law. Wilkins v. Jakeway, 183 F.3d 528, 532 (6th Cir.1999); Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1569 (Fed.Cir.1997).

II. DEFENDANTS' WRITTEN DESCRIPTION REQUIREMENT MOTION

A. Background

In their motion based on an alleged failure to comply with the written description requirement, Defendants make essentially three arguments. First, Defendants argue that the claims of the '253 patent fail to satisfy the written description requirement because the claim limitation reciting "means for mounting" at locations on "a side of the vehicle between the centers of the front and rear wheels" is nowhere described in the specification. (Defs.' Mot. Br. at 1.) Second, Defendants argue that the asserted claims do not meet the written description requirement because they encompass a sensor that may be mounted at locations other than the side door of a vehicle, contrary to the "express and unequivocal requirement in the specification that `[a] crash sensor for sensing side impacts must be placed on the side door structure' and that `[t]his location is essential....'" (Id. at 2.) Third, Defendants argue that the May 1, 1992 amendment which added the claim limitations at issue "constitutes `new matter' added to the claims during prosecution of the patent, lacking the required description in the specification." (Id. at 1.)

On the other hand, Plaintiff argues that the claim language "between the centers of the front and rear wheels" is clearly illustrated in Figure 4 of the '253 patent specification and is fully described in the written text of the '253 patent specification. Plaintiff maintains that no new matter was added during prosecution and that the specification is not limited to a sensor mounted in a side door of a vehicle. It also argues that Defendants have failed to meet their burden to show that no reasonable jury could find the written description was satisfied, and that there is at least a triable issue of fact on invalidity.

The '253 patent describes "Side Impact Sensors" and the current dispute focuses on the location for mounting these sensors. The claim language at issue relates to each of the forty-five patent claims in the '253 patent with the exception of Claim 45. The language includes "a means for mounting" a sensor "onto at least one of a side door of the vehicle and a side of the vehicle between the centers of the front and rear wheels, in such a position and direction as to sense an impact onto the side of said vehicle." See, e.g., '253 Patent Claims 1, 15, and 29. In its order construing claims, the court ruled that these claims permit, but do not require, the sensors described to be mounted onto the side door of the vehicle. (03/31/04 Order at 28-30.)

The '253 patent is dated July 27, 1993 and resulted from the prosecution of several patent applications. Initially, Patent Application 314,603 (the " '603 application") was filed on February 23, 1989. Another patent application, No. 480,273 (the " '273 application"), was filed on February 15, 1990. The '273 application is a continuation-in-part application¹ of the '603 application and includes the disclosures found in the '253 patent. The '253 patent eventually issued from U.S. Patent Application No. 896,496 (the " '496 application"), which is a continuation of the '273 application. The parties agree that the '273 application and the '496 application have the same specification.

During p...