Cedarapids, Inc. v. Nordberg, Inc., C93-0096.
| Citation | 895 F. Supp. 1230 |
| Decision Date | 10 August 1995 |
| Docket Number | No. C93-0096.,C93-0096. |
| Parties | CEDARAPIDS, INC., on Behalf of its EL-JAY DIVISION, Plaintiff, v. NORDBERG, INC., Defendant. |
| Court | United States District Courts. 8th Circuit. Northern District of Iowa |
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Stephen J. Holtman and Donald R. Schoonover of Simmons, Perrine, Albright & Ellwood, L.L.P., Cedar Rapids, IA, for plaintiff Cedarapids.
Lawrence J. Crain and Roger D. Greer of Greer, Burns & Crain, Ltd., Chicago, IL, for defendant Nordberg.
TABLE OF CONTENTS
I. BACKGROUND .................................................................. 1236
II. STANDARDS FOR SUMMARY JUDGMENT .............................................. 1238
III. FINDINGS OF FACT ............................................................ 1240
A. Undisputed Facts ......................................................... 1240
B. Disputed Facts ........................................................... 1243
IV. LEGAL ANALYSIS .............................................................. 1246
A. Invalidity ............................................................... 1246
1. Enablement and definiteness ........................................... 1246
a. Enablement ......................................................... 1247
b. Definiteness ....................................................... 1251
2. Prior art ............................................................. 1255
a. Anticipation ....................................................... 1255
b. Obviousness ........................................................ 1259
i. Scope and content of prior art .................................. 1260
ii. Level of ordinary skill in the art .............................. 1262
iii. Objective evidence of nonobviousness ............................ 1262
iv. Differences between the prior art and claimed invention ......... 1263
B. Infringement ............................................................. 1266
1. Literal infringement .................................................. 1267
a. Claim construction ................................................. 1267
b. Determination of whether the claims "read" on the accused device ... 1271
2. Infringement under the "doctrine of equivalents" ...................... 1272
V. CONCLUSION .................................................................. 1277
At its nub, this patent litigation is about a method to make a specific type of rock crusher crush more rock in less time. In this lawsuit for declaratory judgment concerning the validity and infringement of a patent, the parties have filed cross motions for summary judgment on essentially the same issues, albeit from different perspectives. The patent in suit is for a method to increase the performance of "a conical crusher," which is an apparatus that crushes rock for a variety of commercial purposes, including asphalt paving. Both parties argue the validity, or invalidity, of the patent in terms of "enablement" and "definiteness," pursuant to 35 U.S.C. ? 112, and in terms of "anticipation" and "obviousness" under the prior art, pursuant to 35 U.S.C. ?? 102(a) and 103, respectively. Both also argue infringement, or noninfringement, under theories of literal infringement and "doctrine of equivalents" infringement. In addition, the plaintiff has moved to bifurcate trial of the liability and damages issues.
This lawsuit for declaratory judgment was filed in the United States District Court for the District of Oregon on March 15, 1993. The Oregon court, however, ordered transfer of the lawsuit to the Northern District of Iowa on April 2, 1993. In this lawsuit, plaintiff Cedarapids, Inc., seeks declaration that it is not infringing U.S. Patent No. 4,697,745 (hereinafter, the "'745 patent"), which is owned by defendant Nordberg, Inc., and further declaration that the '745 patent is invalid on several grounds. On May 17, 1993, Nordberg filed a counterclaim alleging that Cedarapids is infringing the '745 patent. The '745 patent is for a "high performance conical crusher," which is a device used to crush rock, mineral ores, and other hard materials into products more readily usable for commercial purposes or for further processing. Nordberg asserts that the '745 patent is for an optimal interrelationship of "speed" and "throw," two aspects of crusher performance, resulting in increased efficiency and output without increasing the size of the crusher chamber. Nordberg claims to have incorporated the '745 patent into its HP300 conical crusher. Cedarapids has developed an allegedly infringing product called a Rollercone II.
This case was reassigned to the undersigned on May 10, 1995. It is currently before the court on the following matters: (1) Cedarapids' February 14, 1994, motion for summary judgment (docket no. 23), which was resisted on March 18, 1994; (2) Cedarapids' March 1, 1995, motion to bifurcate trial of liability and damages (docket number 49), which was resisted on March 20, 1995; and (3) Nordberg's April 17, 1995, motion for summary judgment on counterclaim (docket number 55), which was resisted on May 15, 1995.
The court held oral arguments on the motions on July 31, 1995. Plaintiff Cedarapids was represented by counsel Stephen J. Holtman and Donald R. Schoonover of Simmons, Perrine, Albright & Ellwood, L.L.P., of Cedar Rapids, Iowa. Tim Kennedy, General Counsel for Cedarapids, Inc., was also present, but took no part in the proceedings and did not enter an appearance. Defendant Nordberg was represented by counsel Lawrence J. Crain and Roger D. Greer of Greer, Burns & Crain, Ltd., of Chicago, Illinois.
The court's disposition of the cross-motions for summary judgment, of course, has significant implications for the motion to bifurcate trial. If the entire matter is disposed of on summary judgment, the motion to bifurcate trial will obviously be mooted. Disposition of the summary judgment motions might, on the other hand, require a trial on damages only, or a trial on both liability and damages. The court therefore turns first to the cross-motions for summary judgment.
Cedarapids's motion for summary judgment was filed February 14, 1994. In its motion, Cedarapids asserts that Nordberg has conceded the only facts necessary to grant Cedarapids's motion, and consequently to deny Nordberg's cross-motion for summary judgment. Cedarapids points to Nordberg's concession that "it was well known in the crusher industry that variations in crusher speed, throw, power draw, crusher setting, feed size, feed type, ambient operational temperature, among other factors, could influence crusher productivity in tons per hour...." Thus, Cedarapids argues, Nordberg has conceded the obviousness of the alleged "invention" embodied in the '745 patent.
More specifically, Cedarapids asserts that the supposedly patentable aspect of the '745 patent was anticipated, pursuant to 35 U.S.C. ? 102(a), by any one of four prior art references. Cedarapids contends that even if no one prior art reference anticipated the '745 patent, the prior art as a whole demonstrates the "obviousness" of the '745 patent, and the patent is therefore invalid pursuant to 35 U.S.C. ? 103. Cedarapids also contends that the patent is invalid pursuant to 35 U.S.C. ? 112, because it is insufficiently specific for persons familiar with the art to make and use the claimed invention from the patent without undue experimentation, an argument based on "enablement," as well as because it is too "indefinite" as to what constitutes the alleged invention. Cedarapids's enablement argument is essentially that the claimed invention does not specify the increases in speed and throw necessary to obtain the optimal performance. Its definiteness argument is that it is unclear whether the '745 patent pertains to a retrofit, redesign, or replacement of an existing crusher, and thus it is unclear what conduct would be infringing. Cedarapids contends that the plain meaning of the first claim of the '745 patent is that it pertains only to a retrofit situation. Hence, Cedarapids argues that, if the patent is valid, Cedarapids is not infringing the patent, because its allegedly accused device is not a retrofit of an existing crusher using the method defined in the '745 patent, but a newly-designed device.
Nordberg's resistance to Cedarapids's motion for summary judgment and its own cross-motion for summary judgment assert the validity of the '745 patent and Cedarapids's infringement of that patent. Nordberg asserts that there are genuine issues of material fact as to infringement and validity in its resistance to Cedarapids's motion for summary judgment. However, in its own motion for summary judgment, Nordberg asserts that as a matter of law its invention was not "obvious." Nordberg attacks Cedarapids's assertion that the so-called "Sawant Paper," by one of the co-inventors of Nordberg's crusher, concedes the obviousness of the invention. Rather, Nordberg argues that this paper identifies the variables for improved performance of crushers, but only the invention itself attained the optimal combination of variables. Nordberg asserts that Cedarapids's own witnesses asserted that the invention was not obvious, because they had to conduct extensive tests to verify the accuracy of the patent's statement of the effects of specified changes to "speed" and "throw." Nordberg also asserts that its '745 patent has not been anticipated by any prior art. As to infringement, Nordberg argues that Cedarapids's Rollercone II is sufficiently like its own...
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...court's infringement determination), cert. denied, 510 U.S. 1100, 114 S.Ct. 943, 127 L.Ed.2d 232 (1994); Cedarapids, Inc. v. Nordberg, Inc., 895 F.Supp. 1230 (N.D.Iowa 1995) (citing Miles Labs., and considering validity or invalidity of a patent in suit on summary judgment before addressing......