B-K Lighting, Inc. v. Vision3 Lighting
| Citation | 930 F.Supp.2d 1102 |
| Decision Date | 11 March 2013 |
| Docket Number | Case No. CV 06–02825 MMM (PLAx). |
| Court | U.S. District Court — Central District of California |
| Parties | B–K LIGHTING, INC., a California corporation, Plaintiff, v. VISION3 LIGHTING, a business entity of unknown form, and Fresno Valves & Castings, Inc., a California Corporation, Defendants. |
OPINION TEXT STARTS HERE
Brian Jason Philpott, Jaye G. Heybl, Koppel Patrick Heybl and Philpott, K. Andrew Kent, Rincon Venture Law Group, Westlake Village, CA, Steven E. Shapiro, Kim Shapiro Park and Lee, Los Angeles, CA, for Plaintiff.
This is a patent dispute between B–K Lighting, Inc. (“B–K”) and Fresno Valves & Castings, Inc. (“FVC”). On May 23, 2008, the court granted FVC's motion for summary judgment of invalidity, finding the patent-in-suit invalid on grounds of obviousness.1 B–K appealed.2 The Court of Appeals for the Federal Circuit affirmed in part and vacated in part, and remanded the case for further proceedings in accordance with its opinion. 3
The court's prior order on invalidity and the Federal Circuit's opinion on appeal detail the history of the patent-in-suit, the claims of the patent, and the history of this litigation.4 That information and evidence is incorporated by reference herein. The facts most relevant to this order are summarized briefly below.
This case concerns U.S. Patent No. RE39,084 (“the '084 patent”), issued on May 2, 2006. The patent names Douglas Hagen as the sole inventor and B–K as the assignee. The patent has 19 claims, protecting “an adjustable mount for use with light fixtures that provides an easy to use mechanism for adjusting and setting the desired lighting angle for light emanating from the light fixture” while maintaining “the integrity of the sealed light system.” 5 The mount is described as having “a novel structure whereby the lighting angle can be easily moved and set in all directions during installation, allowing the installer to stand back and evaluate the lighting effect without the need for an iterative process of tightening and loosening the installation screws in order to change the lighting angle or [the] need [ ] [to have] another person ... hold the fixture in place while the lighting angle is evaluated before the installation is made permanent.” 6
Patent claims 3, 12, 15, 18, 19, 21 and 22 include the element of a “first resistance means for limiting free pivotal movement of [the] base member relative to [the] support member wherein said first resistance means comprises a tapered opening in said support member and a tapered post in said base member, said tapered opening sized and configured to receive said tapered post and allow frictional pivoting of said tapered post therein.”
On February 11, 2008, the court held a Markman hearing to construe disputed terms in 13 of the 19 claims of the '084 patent.7 The court construed the term “first resistance means” as “a tapered opening in the support member and a tapered post in the base member, with the tapered opening sized and configured to receive the tapered post and allow frictional pivoting of the tapered post in the tapered opening and equivalents thereof.” 8
As stated, Douglas Hagen is the sole inventor named in the '084 patent. Hagen testified at his deposition that at the time the original patent application was filed, he had not decided on a particular angle for the taper of the post/opening element of the invention.9
David Counts is a B–K engineer who worked on development of the patented invention. He testified that the taper angle was the result of experimentation to find a self-releasing taper.10
Another B–K engineer, Gary Gillespie, testified that experimentation was required to perfect the taper and that B–K made several different prototypes.11 He stated there were a number of problems that had to be overcome in designing the taper.12 As Gillespie described it, “we played with [the taper] angle until we came up with an angle” that worked to “allow the fixture to be adjusted and relocked.” 13 Gillespie said that “anything over 16 degrees in machinery terms is considered a self-releasing taper,” and that B–K “came up with something larger than 16 degrees.” 14 He testified he was “surprised” and “very, very shocked” that the final taper actually worked.15
Patrick Case is a B–K engineer who helped commercialize the patented invention. He testified at his deposition that the angle of the taper was chosen “arbitrarily” at the beginning of the process, and that B–K “never deviated” from it thereafter.16 He also stated, however, that the angle of the taper was designed to be “easily self-releasing,” and “well away from the transition between self-holding and self-releasing” tapers. 17 Case said that the taper's length was specifically selected. 18 He also testified that numerous prototypes of the device were created over the course of two or three weeks.19
Hagen testified that the tapered post/opening interaction claimed in the ' 084 patent “was [his] idea.” 20 He admitted, however, that a full set of parameters for the taper (including depth, diameter, compression, and “all kinds of other issues”) were critical to the invention,21 and he acknowledged that he was not aware of these details nor of the precise angle of the taper. Hagen stated that he did not know whether a decision had been made to use either a “self-releasing” or a “self-locking” taper.22
At his deposition, Gillespie agreed that it was proper to describe Hagen as a “conceptual guy [who] would come up with product concepts.” 23 He testified that Hagen had conceived the idea of a heavy duty lamp mount that included a lighting element, a lighting support, a base member, a stud member, and a pass through for wiring that would permit 360 degree rotation.24 He testified that Hagen “storyboard[ed] his ideas, his concepts, and then provide[d] them to you or the engineering department for implementation.” 25 Gillespierecalled that development of Hagen's concept for the '084 device involved “many meetings, brainstorming sessions with—at any given time, it could be Doug Hagen, Bruce Kowkowlsky, Patrick Case, myself, Ryan Barrios, all ... in the room at the same time discussing what we needed to do to fix this thing.” 26
Gillespie testified that he could not definitely identify the “first one to actually say the word ‘taper,’ ” although he said that “the word ‘taper’ [might] have come from [Hagen].” 27 Gillespie testified that once the idea of a taper surfaced, he developed the taper's geometry and “pretty much everything else.” 28 As Gillespie recalls events, he conceived the taper's design and Case developed the geometry for the wireway.29 Gillespie had experience with self-releasing tapers due to his work as a machinist.30
Case testified that Hagen did not conceive the taper, and that he and Gillespie developed the concept for that element.31 Case could not recall whether he or Gillespie had conceived of the taper, however, and acknowledged that Gillespie could have developed the concept first.32 Case also conceded that Gillespie had spoken with Hagen outside his presence, and that he could not say “with any certainty” that Hagen had not given Gillespie the idea for the taper.33 Case testified that Hagen provided little direction regarding the design of the device and that each element of the device protected by the ' 084 patent was designed by some combination of him and Gillespie.34
FVC has identified seven prior art references, and argues that, in different combinations, they render each claim of the '084 patent obvious. The references are: U.S. Patent No. 4,143,413 (“Kelly”), which describes a “fitter for mounting a luminaire, such as an outdoor floodlight, on a mounting member such as a pole [comprised of] three castings”; 35U.S. Patent No. 4,008,910 (“Roche”), which describes a swivel joint used in electrical lighting fixtures; U.S. Patent No. 4,386,393 (“Pike”), which describes a pivot joint used to support a light fixture; U.S. Patent No. 5,290,313 (“Heldreth”), which describes a “modular prosthetic implant system”; the Hydrel 7100 (“Hydrel”), which is an adjustable mount for a light fixture; the 360 SL Knuckle (“360SL”), B–K's predecessor to the device described in the ' 084 patent; and the Coronado 720 (“Coronado”), an adjustable mount for a light fixture, and the commercial embodiment of U.S. Patent No. 5,599,091 (“Kira”).
B–K asserts that a knuckle included in FVC's Vision 3 FL series (“FL series”) of architectural flood lighting products (“the K2 knuckle”) infringes the ' 084 patent. FVC has obtained two patents for the K2 knuckle design: U.S. Patent No. 6,966,679, issued on November 22, 2005 to Monte Matts and Jay Showalter (“the '679 patent”), and U.S. Patent No. 7,108,405, issued on September 19, 2006 to Matts and Showalter (“the '405 patent”).36 The ' 679 patent claims a “self-locking taper” feature, included in the accused FL series products, that facilitates adjustment and locking in place of lighting fixtures.37
B–K commenced this action on May 10, 2006. In its answer to B–K's first amended complaint, FVC asserted ten affirmative defenses, including (1) non-infringement; (2) invalidity under 35 U.S.C. §§ 102, 103, and 112; and (3) invalidity for failure to name the correct inventor.38 FVC also filed a counterclaim seeking a declaratory judgment of invalidity, unenforceability, and non-infringement, as well as relief for unfair competition under Business & Professions Code § 17200.39 On October 9, 2007, the court issued an order directing the parties to disclose their...
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