Berger v. Ohio Table Pad Co.

Decision Date11 January 2008
Docket NumberNo. 1:04-CV-277.,1:04-CV-277.
Citation539 F.Supp.2d 1069
PartiesDavid BERGER, et al., Plaintiffs, v. OHIO TABLE PAD COMPANY, et al., Defendants.
CourtU.S. District Court — Northern District of Indiana

Bryce H. Bennett, Jr., Kevin N. Tharp, Riley Bennett & Egloff LLP, James T. Young, Rubin & Levin PC, Indianapolis, IN, for Plaintiffs.

Jon A. Bragalone, Carson Boxberger LLP, Fort Wayne, IN, Todd T. Taylor, Taylor & Aust PC, Avilla, IN, for Defendants.



This case is a patent case involving magnetic table pads. All parties have moved for partial summary judgment on the Plaintiffs' infringement and declaratory judgment claims. While the Plaintiffs claim that two of the Defendants' table pad designs infringe upon their patent, the motions for partial summary judgment only pertain to the second, later design. The question presented by this case is what is a magnetically receptive structure?

A. Summary Judgment Standard

The Federal Rules of Civil Procedure mandate that motions for summary judgment be granted "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). "In other words, the record must reveal that no reasonable jury could find for the nonmoving party." Dempsey v. Atchison, Topeka, & Santa Fe Ry. Co., 16 F.3d 832, 836 (7th Cir.1994) (citations and quotation marks omitted). After adequate time for discovery, summary judgment must be given against a party "who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

A party seeking summary judgment bears the initial responsibility of informing a court of the basis for its motion and identifying those portions of the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, which it believes demonstrate the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323, 106 S.Ct. 2548. The moving party may discharge its "initial responsibility" by simply "`showing' — that is, pointing out to the district court — that there is an absence of evidence to support the non-moving party's case." Id. at 325, 106 S.Ct. 2548. When the non-moving party would have the burden of proof at trial, the moving party is not required to support its motion with affidavits or other similar materials negating the opponent's claim. Id. at 323, 325, 106 S.Ct. 2548; Green v. Whiteco Indus., Inc., 17 F.3d 199, 201 n. 3 (7th Cir.1994); Fitzpatrick v. Catholic Bishop of Chi., 916 F.2d 1254, 1256 (7th Cir.1990). However, the moving party may, if it chooses, support its motion for summary judgment with affidavits or other materials and thereby shift to the non-moving party the burden of showing that an issue of material fact exists. Kaszuk v. Bakery & Confectionery Union & Indus. Int'l Pension Fund, 791 F.2d 548, 558 (7th Cir. 1986); Bowers v. DeVito, 686 F.2d 616, 617 (7th Cir.1982); Faulkner v. Baldwin Piano & Organ Co., 561 F.2d 677, 683 (7th Cir.1977).

Once a properly supported motion for summary judgment is made, the non-moving party cannot resist the motion and withstand summary judgment by merely resting on its pleadings. Fed.R.Civ.P. 56(e); Donovan v. City of Milwaukee, 17 F.3d 944, 947 (7th Cir.1994). Federal Rule of Civil Procedure 56(e) establishes that the adverse party's response, by affidavits or as otherwise provided in Rule 56, must "set out specific facts showing a genuine issue for trial." Fed.R.Civ.P. 56(e); see also Anderson v. Liberty Lobby, 477 U.S. 242, 248-50, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Thus, to demonstrate a genuine issue of fact, the non-moving party must do more than raise 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); Juarez v. Ameritech Mobile Commc'ns, Inc., 957 F.2d 317, 322 (7th Cir.1992). Only material facts will preclude summary judgment; irrelevant or unnecessary facts do not preclude summary judgment even when they are in dispute. Anderson, 477 U.S. at 248-49, 106 S.Ct. 2505. If there is no genuine issue of material fact, the only question is whether the moving party is entitled to judgment as a matter of law. Miranda v. Wis. Power & Light Co., 91 F.3d 1011, 1014 (7th Cir.1996).

In viewing the facts presented on a motion for summary judgment, a court must construe all facts in a light most favorable to the non-moving party and draw all legitimate inferences and resolve all doubts in favor of that party. NLFC, Inc. v. Devcom Mid-Am., Inc., 45 F.3d 231, 234 (7th Cir.1995); Doe v. RR. Donnelley & Sons Co., 42 F.3d 439, 443 (7th Cir.1994); Beraha v. Baxter Health Care Corp., 956 F.2d 1436, 1440 (7th Cir.1992). A court's role, is not to evaluate the weight of the evidence, to judge the credibility of witnesses, or to determine the truth of the matter, but instead to determine whether there is a genuine issue of triable fact. Anderson, 477 U.S. at 249-50, 106 S.Ct. 2505; Doe, 42 F.3d at 443.

B. Facts and Procedural Background (1) The Plaintiffs' '577 Patent

On January 31, 2000, David Berger filed a patent application for a magnetically latching system for protective tabletop pads and was assigned U.S. Patent Application Number 09/494,164. There were no objections or modifications to the application, and on December 26, 2000, Patent Number 6,165,577 (the '577 patent) was issued to Berger. The '577 patent includes 2 independent claims, claims 1 and 19, and 17 dependent claims. The dependent claims are dependent on claim 1, which is at the center of the dispute. Claim 1 states:

1. A tabletop protective pad section for resting on a top surface of a table, the pad section comprising:

a base member having a first face for facing in an upward direction and a second face for facing in a downward direction, the first and second faces being oriented substantially parallel to each other, each of the first and second faces having a perimeter, the base member having a perimeter edge face extending between the perimeters of the first and second faces, a pair of side portions of the perimeter edge face being oriented, generally parallel to each other on opposite sides of the base member;

a magnetically-active structure mounted on the first side portion of the perimeter edge face of the base member; and

a magnetically receptive structure mounted on the second side portion of the perimeter edge face;

wherein the magnetically-active structure of the first side portion of a first one of the pad sections is magnetically couplable to the magnetically-receptive structure of the second side portion of a second one of the pad sections for removably holding the first and second pad sections in an adjacent condition.

(Patent '577 at 8, DE 48-2.) The following figures are reproduced from the '577 patent to illustrate the claimed invention.


(Patent '577 Drawing Sheets, DE 48-2.)

(2) The Defendants' '116 Patent

In 2002, the Defendants started to manufacture and sell table pads with magnetic latching. The first design consisted of a magnet being attracted to an opposed steel bar to hold the table pads in place. The second design, which the Defendants incorporated into the manufacture of their table pads on January 23, 2003, and continue to use today, consists of magnets of opposite polarity, or a magnet and a steel bar configuration, to hold the table pads in place. Only the second design is at issue at this summary judgment stage.

On October 9, 2003, Defendants Christopher Krauser and Gary Heal submitted an application to obtain a patent for the Defendants' second design. The application included 20 claims. The examining attorney rejected claims 1-2, 4-6, 12-14, and 16-18 as having been anticipated by the '577 patent. The remaining claims depended on the rejected claims, so the patent application was denied. The Defendants resubmitted the claims that were not rejected as independent claims, they inserted some of the rejected claims into the new independent claims, and the Patent Office accepted the application, issuing it as Patent Number 6,919,116 (the '116 patent), on July 19,2005.

The '116 patent describes a "table pad coupling system" consisting of table pads that have steel bars or magnets of a matching polarity. The '116 patent consists of nine claims. Claim 1 describes a table pad coupling system of three table pads. The first table pad contains magnets on opposing sides, with all the magnets having the same polarity. The first table pad sits in between the second and third table pads. The second table pad has ferrous1 members on its sides, and it sits adjacent to the first table pad. The third table pad sits on the other side of the first table pad and has on its sides magnets of the opposite polarity to the first table pad.

Claim 2 describes a table pad coupling system similar to claim 1, except that there is no table pad having a ferrous member. A table pad described in claim 2 has magnets on opposing sides of the same polarity, and it is positioned next to a table pad having magnets of opposing polarity.

Claim 3 is dependent on claim 2, and it describes an arrangement of a number of the table pads described in claim 2 wherein each table pad is positioned so that its magnets are of the opposite polarity of the magnets of the table pad adjacent to it.

Claim 4 describes a table pad coupling system in which the first table pad has two magnets of the same polarity that are on opposing...

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