Carlisle Corp. v. Hayes
| Decision Date | 28 January 1986 |
| Docket Number | Civ. No. 85-0912-R(IEG). |
| Citation | 635 F. Supp. 962 |
| Parties | CARLISLE CORPORATION, a Plaintiff, v. Charles L. HAYES, an individual, doing business as Hayes Products, Defendant. Charles L. HAYES, an individual, doing business as CH PRODUCTS, Counter-claimant, v. CARLISLE CORPORATION, a corporation, Counter-defendant. |
| Court | U.S. District Court — Southern District of California |
LeRoy T. Rahn and David D. Dillard, Christie, Parker & Hale, Pasadena, Cal., for plaintiff.
Albin H. Gess, Price, Gess & Ubell, Newport Beach, Cal., for defendant.
The motion for summary judgment pursuant to Rule 56 on the first amended counterclaim brought by defendant Joseph B. Hayes dba Hayes Products ("Hayes"), and the motion for summary judgment on the second and third amended counterclaims, or in the alternative, for separate trials pursuant to Rule 42(b) on the second and third counterclaims, and a stay of discovery, brought by plaintiff Carlisle Corporation ("Carlisle") came on regularly for hearing on December 16, 1985, before the Honorable John S. Rhoades. Defendant Hayes appeared by and through its counsel of record, Albin H. Gess and Price, Gess & Ubell; Plaintiff Carlisle appeared by and through its counsel of record, LeRoy T. Rahn, David A. Dillard and Christie, Parker & Hale.
Upon hearing argument and considering the record and authorities cited, the court took the matter under submission. After a further consideration of the record, authorities cited, and the transcript of the hearing, for reasons that shall be given in the forthcoming Memorandum Decision, the Court rules as follows:
A. DEFENDANT HAYES' MOTION FOR SUMMARY JUDGMENT
1. Motion on the theory that U.S. Patent No. 4,490,710 issued to Kopsho, et al. ('710 patent) is invalid under 35 U.S.C. § 102 is denied.
2. Motion on the theory that the '710 patent is invalid under 35 U.S.C. § 103 is denied.
3. Motion on the theory that the '710 patent is unenforceable because it was obtained through "inequitable conduct" or fraud on the Patent & Trademark Office is denied.
B. PLAINTIFF CARLISLE'S MOTION FOR SUMMARY JUDGMENT
Plaintiff Carlisle's motion for summary judgment on the second and third amended counterclaims is denied.
C. PLAINTIFF CARLISLE'S MOTION FOR SEPARATE TRIALS
Plaintiff Carlisle's motion for separate trials for the second and third amended counterclaims, and for a stay of discovery on these counterclaims is granted.
D. PLAINTIFF CARLISLE'S MOTION FOR SANCTIONS
Plaintiff Carlisle's motion that the court levy sanctions against Hayes pursuant to Rule 11 is denied.
IT IS SO ORDERED.
Pursuant to the Order issued and filed on January 13, 1986, in the above-entitled action, the Court herein sets forth its reasons for its decision.
Plaintiff Carlisle Corporation ("Carlisle") and defendant Charles B. Hayes d.b.a. Hayes Products ("Hayes") both seek summary judgment in this patent infringement case. This lawsuit involves computer joysticks, devices computer users employ to move a cursor from place to place on a computer display screen.
On November 5, 1982, Carlisle applied for, and on December 25, 1984, was issued U.S. Patent No. 4,490,710 for a "Control Stick Assembly" (the "`710 patent"). On July 22, 1983, Hayes applied for, and on December 18, 1984, was issued U.S. Patent No. 4,489,304 for a "Spring Disconnect Mechanism for Self Centering Multiple Axis Analog Control Stick" (the "Hayes patent").
Prior to the issuance of these patents, computer joysticks on the market generally operated in one of two modes. One kind was a "return-to-center" mode in which the joystick automatically springs back into the center (or "neutral") position. These devices usually require some kind of spring mechanism. There were also joysticks that employed a "free-floating" mode. When released, these joysticks do not spring back into the neutral position but rather remain in the position at which they were released. Both the '710 patent and the Hayes patent provide a convenient means by which the user may switch between the two modes automatically.
Upon learning of the Hayes patent, Carlisle filed the complaint in this action for patent infringement and declaratory judgment. The complaint set forth two claims: First, that the Hayes patent infringed the '710 patent; second, for a declaratory judgment that the Hayes patent interferes with the '710 patent and therefore is unenforceable. Subsequently, Hayes dedicated his patent to the public, and the parties stipulated to a dismissal of this second claim.
Defendant answered and counterclaimed. Hayes' amended counterclaim sets forth three counterclaims: First, that the '710 patent is invalid and unenforceable; second, in a counterclaim based on Section 2 of the Sherman Act, Hayes alleged that Carlisle had attempted to monopolize the market for "joystick control devices" by attempting to enforce the '710 patent, which Hayes claims was obtained through fraud on the Patent & Trademark Office ("PTO"); third, an unfair competition counterclaim under state law, which is based upon the same facts as alleged in the Sherman antitrust claim.
It is Hayes' contention that Carlisle perpetrated its fraud on the PTO by knowingly and intentionally withholding material prior art from the Patent Examiner. In essence, Hayes alleges that Carlisle withheld from the PTO information on patents for certain "dual function" joysticks, i.e., joysticks that operate in two modes like the '710 patent and the Hayes patent. In particular, in his moving papers Hayes refers to two types of "dual function" joysticks which he maintains are material prior art. First, there are several patents for joysticks that employ an adjustable "friction clutch mechanism" and a spring centering mechanism. By adjusting the friction clutch mechanism, the force of the spring return mechanism is neutralized, allowing the joystick to attain a "free-floating" mode. In the second kind of withheld prior art, a joystick with a spring return-to-center mechanism was accompanied by written instructions on how to take apart the back of the joystick and remove the centering mechanism manually so that the joystick can be converted into the "free-floating" mode.
Carlisle does not dispute that it knew of this prior art, nor does it dispute that it did not disclose certain of the prior art to the PTO. However, Carlisle does dispute that the allegedly withheld prior art was material, and has also raised a question as to its intent in withholding the prior act.
Defendant Hayes moves for summary judgment on the first amended counterclaim, a declaratory judgment action seeking a finding that the '710 patent is invalid and unenforceable. In his moving papers, Hayes presents three theories: First, that the '710 patent is invalid because certain of its claims were "anticipated" by the prior art under 35 U.S.C. § 102; second, that the '710 patent is invalid because all of its claims are "obvious" under 35 U.S.C. § 103 to "a person of ordinary skill in the art;" and third, that the '710 patent is unenforceable because Carlisle breached its duty of candor to the PTO by failing to disclose material prior art.
Plaintiff Carlisle moves for summary judgment on the second and third counterclaims, i.e., the Sherman antitrust claim and the state unfair competition claim. In the alternative, Carlisle asks the Court to apply Federal Rule of Civil Procedure 42(b) and order the second and third counterclaims tried separately, and to stay discovery on these counterclaims. Finally, Carlisle has moved the Court to levy sanctions against Hayes under Federal Rule of Civil Procedure 11.
Generally, courts do not grant summary judgment motions in patent or antitrust litigation. See Poller v. C.B.S., Inc., 368 U.S. 464, 82 S.Ct. 486, 7 L.Ed.2d 458 (1962); Vermont Structural Slate Co. v. Tatko Bros. Slate Co., 233 F.2d 9 (2d Cir.), cert. denied, 352 U.S. 917, 77 S.Ct. 216, 1 L.Ed.2d 123 (1956); 10A Wright & Miller, Federal Practice & Procedure § 2732.1 (2d ed. 1983). The reasons usually given are that antitrust actions involve questions of intent of the alleged monopolizer, and patent cases often involve complex technical matters which are better given over to the testimony of experts at a trial. Id. Nevertheless, summary judgment is appropriate in patent cases under certain circumstances. Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1571, (Fed.Cir. 1984); Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 778-79 (Fed.Cir.1983). However, these circumstances are limited to cases where the principles involved are simple and the district judge determines that expert testimony is not necessary. Id.; Medical Laboratory Automation, Inc. v. Labcon, Inc., 500 F.Supp. 54, 57 (N.D.Ill.), aff'd, 670 F.2d 671 (7th Cir.1981). Moreover, whether expert testimony is necessary in a particular case is firmly within the discretion of the district court. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed.Cir.1984); Crom Corporation v. Crom, 677 F.2d 48, 50 (9th Cir. 1982).
If a court determines that a patent case is susceptible to summary disposition, then Fed.R.Civ.P. 56 should be applied in accordance with the same standards as are applicable in any other type of suit. Union Carbide, supra, 724 F.2d at 1571. Rule 56(c) of the Federal Rules of Civil Procedure provides that the court shall render a summary judgment if the papers submitted "show 1 that there is no genuine issue as to any material fact and 2 that the moving party is entitled to a judgment as a matter of law." The moving party has the burden of demonstrating that summary judgment is proper. Adickes v. S.H. Kress Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 1608, 26 L.Ed.2d 142 (1970); International Union of Bricklayers v. Martin Jaska, Inc., 752 F.2d 1401, 1405 (9th...
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