Buildex Inc. v. Kason Industries, Inc.

• Citation: 665 F. Supp. 1021
• Decision Date: 30 June 1987
• Docket Number: No. CV 82-1418.,CV 82-1418.
• Parties: BUILDEX INCORPORATED, Plaintiff, v. KASON INDUSTRIES, INC., Defendant.
• Court: U.S. District Court — Eastern District of New York

665 F. Supp. 1021

BUILDEX INCORPORATED, Plaintiff, v. KASON INDUSTRIES, INC., Defendant.

No. CV 82-1418.

United States District Court, E.D. New York.

May 27, 1987.

On Motion for Relief from Judgment, June 30, 1987.

COPYRIGHT MATERIAL OMITTED

Mark H. Sparrow, Jacobs & Jacobs, P.C., New York City, for plaintiff.

Paul J. Sutton, Sutton & Magidoff, New York City (Anthony Amaral, Jr., Esq., of counsel); for defendant.

MEMORANDUM AND ORDER

GLASSER, District Judge.

This patent infringement case was tried without a jury in this court, which has exclusive original jurisdiction over patent cases under 28 U.S.C. § 1338(a). Venue is proper under id. § 1400(b).

Plaintiff Buildex Incorporated ("Buildex") is a Delaware corporation with its principal place of business in this district. Defendant Kason Industries, Inc. ("Kason") is a New York corporation with its principal place of business in Shenandoah, Georgia. The Standard-Keil Hardware Manufacturing Co. Division ("S-K") is an unincorporated division of Buildex. S-K manufactures and sells hardware components for the food service industry. Traulsen & Co., Inc. ("Traulsen") manufactures reach-in refrigerators used in the food service industry and is a leading customer of S-K.

Buildex contends that Kason has infringed claims 1 through 11 of U.S. Letters Patent No. 4,150,265 ("the suit patent" or "the '265 patent"). This patent, for a hinge-activated switch, is in the name of Dermot Holden, who was employed by S-K from 1975 to 1977. He assigned the '265 patent to Buildex. The application for the suit patent was filed on March 14, 1977 and the patent was issued on April 17, 1979.

Buildex manufactures and sells to Traulsen hinges designated 2850T. Buildex contends that Kason hinge 1263 infringes the '265 patent, which covers the 2850T. Kason answers that its 1263 hinge (which is also called the 1267, after a notation that appears on the casing) does not infringe the patent. In addition, Kason counterclaims, on a variety of grounds, for a declaration that the '265 patent is invalid. Kason has voluntarily dismissed a second counterclaim charging Buildex and Instrument Systems Corporation with violating the antitrust laws. See Fed.R.Civ.P. 41(a)(1)(i).

With respect to Kason's counterclaim attacking the validity of the suit patent, the relevant statute, 35 U.S.C. § 282, requires the court to presume that the patent is valid. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1567 (Fed.Cir. 1983); accord, e.g., Foseco International Ltd. v. Fireline Inc., 607 F.Supp. 1537, 1549 (N.D.Ohio 1984). Kason's attack on the validity of the '265 patent requires "clear and convincing evidence or its equivalent, by whatever form of words it may be expressed." American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed.Cir.), cert. denied, 469 U.S. 821, 105 S.Ct. 95, 83 L.Ed.2d 41 (1984); accord, e.g., Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1139 (Fed.Cir.1985); see generally Carlisle Corp. v. Hayes, 635 F.Supp. 962, 965 (S.D.Cal.1986) (strong presumption patent is valid). Of course, in the event the court finds that Kason has not carried its burden of showing invalidity, it is not necessary to hold the '265 patent valid, since the court's holding would be based only on the record before it. See Environmental Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693, 699 n. 9 (Fed.Cir.1983), cert. denied, 464 U.S. 1043, 104 S.Ct. 709, 79 L.Ed.2d 173 (1984).

The situation is somewhat different with respect to Kason's defense that its 1263 hinge does not infringe the suit patent. Buildex has the burden of proving Kason's infringement by a preponderance of the evidence. See Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361 (Fed. Cir.1983). The patent holder has the burden of proving infringement whether it relies on a theory of literal infringement, see Texas Instruments, Inc. v. United States International Trade Commission, 805 F.2d 1558, 1562 (Fed.Cir.1986), or under the doctrine of equivalents, see id. at 1571.

The court turns first to the issue of infringement and determines that Buildex has carried its burden of demonstrating that Kason's 1263 hinge infringes the '265 patent. Although Kason has stipulated that all the elements of the 1263 hinge are recited in the '265 patent, it argues that its hinges as sold do not comprise the operable assembly of the whole combination recited in the claims of that patent. Specifically, Kason argues that its hinges do not include a door, a door frame, a fixed member mounted to the door frame, a pivotable member mounted to the door, or — in the case of the 1267 hinge — switch means or switch actuating means.

Kason's argument is unpersuasive. Buildex's 2850T hinge and Kason's 1263 hinge may be used only to mount a door on a door frame. Buildex sells the 2850T exclusively to Traulsen for use on refrigerator doors. Kason sells the 1263 for use on refrigerator doors. That Kason's hinges do not include all the objects depicted in the '265 patent is immaterial, because the door, door frame, and other objects to which Kason refers are not elements of the '265 patent. See Builders Concrete, Inc. v. Bremerton Concrete Products Co., 757 F.2d 255, 257 (Fed.Cir.1985) (literal infringement requires that accused device embody every element of the claim, without requiring slavish conformity to words of insignificance); cf. Lemelson v. United States, 752 F.2d 1538, 1551 (Fed.Cir.1985) (to show infringement, plaintiff must demonstrate presence of every element of claim, or its substantial equivalent, in accused device); Interdent Corp. v. United States, 531 F.2d 547, 552 (Ct.Cl.1976) (same).

There is no serious question that Kason's 1263 hinge is the device depicted in the '265 patent. If the '265 patent is not proven invalid by Kason, then Kason will have infringed the patent and induced its infringement within the meaning of 35 U.S.C. § 271(b). The court turns to Kason's counterclaim attacking the validity of the suit patent.

The invention embodied in the '265 patent stems from a problem that Traulsen was having with its refrigerators. Before 1976, Traulsen used standard cam-lift hinges in its refrigerators. These served to hold the door open and to provide for self-closing, depending on how they were used. To operate the refrigerator's light, Traulsen used a separate push-button rocker light switch. The problem was that the button of the light switch was exposed, which led, on occasion, to its being broken or to damage to food stored in the refrigerator. Because of the danger that food would become contaminated, the Food and Drug Administration complained about the separate rocker light switch.

In 1975, Erich Maier, Traulsen's Vice President of Manufacturing, met with three employees of Buildex's S-K Division: Dermot Holden, the Director of Engineering; Frank Loikitz, the Manager of Product Development; and Fred Weinmann, the Vice President of Operations. The dies that Traulsen had been using for their conventional cam-lift hinges had worn out, and the participants in the meeting explored the possibility that Traulsen would be interested in buying S-K's standard cam-lift hinges.

During the meeting, Maier raised the problem that Traulsen was having with the separate rocker light switch and asked S-K's representatives whether it would be possible to incorporate the light switch into the cam-lift hinge. Holden and S-K's engineers worked on the problem and came up with the hinge described in the '265 patent.

The parties differ on where the initiative lay. Kason contends that Holden, named as inventor on the '265 patent, is not the true inventor, but that Maier of Traulsen was. According to Kason, Maier had worked on the hinge problem himself before approaching S-K. Kason relies on Maier's deposition testimony — Maier died before trial — to prove that he showed a working model of his proposed hinge to S-K's employees, that he instructed S-K with specifications of what Traulsen wanted, that S-K's employees had not realized (until Maier told them) it was possible to incorporate a light switch into a cam-lift hinge, and that Maier demanded on behalf of Traulsen exclusive rights to buy the hinge so that his employer would benefit from his discovery. Of course, "a person shall be entitled to a patent unless ... he did not himself invent the subject matter sought to be patented...." 35 U.S.C. § 102(f). Thus, if Kason is correct about Maier's role, Holden was not the true inventor of the hinge depicted in the suit patent, and that patent is invalid.

Buildex takes an entirely different view of Maier's role. It maintains that Maier's testimony is, for a variety of reasons, unworthy of belief and that he did no more than ask S-K to find a way to incorporate the light switch into the cam-lift hinge. Buildex argues that Holden actually conceived and built an experimental prototype of the invention embodied in the '265 patent, and that Maier is at most a joint inventor.

Under 35 U.S.C. § 256, failure to name a joint inventor in a patent, provided there is no deceptive intention, may be corrected without invalidating the patent. See Glatt v. G.C. Murphy Co., 168 F.Supp. 50, 68 (D.Md.1958), aff'd, 270 F.2d 137 (4th Cir.1959). Initially, however, Kason has the burden of showing non-joinder of an inventor by clear and convincing evidence. Indecor, Inc. v. Fox-Wells & Co., 642 F.Supp. 1473, 1490 (S.D.N.Y.1986).

The court finds that Kason has failed to carry that burden in its attempt to prove that Maier was the true inventor. Although Maier's death before trial deprived the court of an opportunity to assess his demeanor, a reading of his deposition suffices to demonstrate that his testimony cannot provide clear and convincing evidence regarding the identity of the inventor. For instance, Holden, Loikitz, and Weinmann all testified that their first meeting with Maier took place at Traulsen. Maier testified that the meeting...