Combined Systems v. Defense Technology Corp.

• Decision Date: 18 November 2002
• Docket Number: No. 01 CIV 78333.,01 CIV 78333.
• Citation: 230 F.Supp.2d 544
• Parties: COMBINED SYSTEMS, INC., Plaintiff, v. DEFENSE TECHNOLOGY CORP. OF AMERICA and Federal Laboratories, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

230 F.Supp.2d 544

COMBINED SYSTEMS, INC., Plaintiff, v. DEFENSE TECHNOLOGY CORP. OF AMERICA and Federal Laboratories, Inc., Defendants.

No. 01 CIV 78333.

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

November 18, 2002.

Lance C. Venable, Michael F. Campillo, Ellis, Venable & Busam LLP, Phoenix, AZ, for Plaintiff.

Adam M. Cohen, Kane Kessler, P.C., New York, Donald L. Otto, Jay R. Campbell, Renner, Otto, Boisselle & Sklar LLP, Cleveland, OH, for Defendants.

OPINION AND ORDER

COTE, District Judge.

The parties in this action are competitors. They manufacture and sell, primarily to law enforcement authorities, a shotgun shell designed to have a low likelihood of killing a human being upon impact. On August 21, 2001 Combined Systems, Inc. ("CSI") filed this action alleging that the "Drag Stabilized Bean Bag Round," or "23DS" projectile, manufactured and sold by defendants Defense Technology Corporation of America and Federal Laboratories, Inc., (collectively "DTCA") infringes its U.S. patent no. 6,202,562 ("562 patent"). The defendants have filed a counterclaim seeking a declaratory judgement invalidating the 562 patent.

The defendants have filed motions for summary judgment on both the infringement claim and their counterclaim. For the following reasons, the motion on the infringement claim is granted, and the motion on the declaratory judgment counterclaim for patent invalidity is denied.

BACKGROUND

The 562 patent contains one claim. Pursuant to Markman v. Westview Instruments, 52 F.3d 967, 979 (Fed.Cir.1995)(en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the elements of the claim were construed in an opinion issued on April 19, 2002 ("April 19 Opinion"), which is incorporated herein.

The 562 patent describes a method for "shaping" an "anti-personnel projectile launched from a 12 gauge shotgun shell" having a "low lethality consequence." The projectile essentially consists of a tubular sock-like object filled with lead shot. The open end at the rear of the projectile is tied off to seal the lead shot inside the projectile. The projectile body is thus divided into two sections by the tie—a forward portion, the "compartment," containing lead shot and a rear free-flowing portion, the "tail." The projectile is loaded into a 12 gauge shotgun shell and launched by igniting the propellant at the base of the shell. The projectile is designed to expand upon impact to minimize its lethality. The 23DS projectile, the allegedly infringing product, manufactured by DCTA, is also a low lethality anti-personnel projectile. It is also constructed from a tubular product that has been filled with lead shot and tied off to create a compartment containing the shot and an open end. Its tail, however, is composed of four separate pieces.

The method of preparing the projectile for insertion into the shotgun shell and the manner of insertion are of particular relevance to the instant motions. The claim for the 562 patent describes the step of "shaping" the projectile in preparation for its insertion into the shell as: "forming folds in said tubular sock-like projectile body immediately forward of said rear opening thereof." As exemplified by the figures in the patent illustration, these folds are formed in the tail of the projectile. The next step, according to the patent, is "inserting said formed folds of said tubular sock-like projectile body into said projectile compartment front opening."

As construed in the April 19 Opinion, the "forming folds" clause does not refer to "any gathers in the material that incidentally occur when a string is pulled to close the compartment"; rather, the ordinary meaning of the word "fold" combined with the gerund "folding" "requires the deliberate and systemic creation of folds." The April 19 Opinion also construed the claim as meaning that "the folds referenced in the claim are formed prior to— not during—insertion in the empty shotgun shell."

In support of their motion for summary judgment on the infringement claim, the defendants advance two principal arguments. First, they contend that DTCA does not deliberately and systemically form folds in the tail of the 23DS projectile as required by the claim. And, second, to the extent "folds" are created when the 23DS projectile is inserted into a shell, these folds are formed incident to, and not prior to, its insertion into the shell. Defendants also raise a prosecution history estoppel argument. In support of their motion for summary judgment on their counterclaim, defendants contend that plaintiff's 562 patent is invalid due to plaintiff's violation of the one year on-sale bar.

DISCUSSION

Summary judgment may not be granted unless the submissions of the parties taken together "show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Rule 56(c), Fed.R.Civ.P. The moving party bears the burden of demonstrating the absence of a material factual question, and in making this determination the Court must view all facts in the light most favorable to the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When the moving party has asserted facts showing that the non-movant's claims cannot be sustained, the opposing party must "set forth specific facts showing that there is a genuine issue for trial," and cannot rest on the "mere allegations or denials" of his pleadings. Rule 56(e), Fed.R.Civ.P.; accord Am. Airlines, Inc. v. United States, 204 F.3d 1103, 1108, 1112 (Fed.Cir.2000). Thus, in determining whether to grant summary judgment, this Court must (1) determine whether a genuine factual dispute exists based on evidence in the record; and (2) determine, based on the substantive law at issue, whether the fact in dispute is material. Even though patent infringement is a fact-intensive inquiry, summary judgment is as appropriate in a patent case as in other cases. See C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc., 911 F.2d 670, 672 (Fed.Cir.1990).

1. Infringement of 562 Patent

An infringement analysis is a two-step process in which the scope of the claim is first determined and then the accused device is compared to the properly construed claim to determine whether all of the claim elements are present either literally or by a substantial equivalent. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1359-60 (Fed.Cir.2000) (citation omitted). See also Bowers v. Baystate Techs., 302 F.3d 1334, 1351 (Fed.Cir. 2002). The comparison of the claim with the accused device is a question of fact. Bai v. L & L Wings, 160 F.3d 1350, 1353 (Fed.Cir.1998).

Under the theory of literal infringement, the patentee may prove infringement by demonstrating that the accused device contains each and every limitation of the claim. Bowers, 302 F.3d at 1351. Under the doctrine of equivalents, the patentee may prove infringement by establishing that the accused device contains each limitation of the claim or its equivalent. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 39 n. 8, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997); accord Bell Atlantic Network Serv., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1279-80 (Fed.Cir.2001). The plaintiff relies on both doctrines to prove infringement in this case.

a. Literal Infringement

Defendants argue that the 23DS projectile does not literally infringe the 562 patent, since the manufacturing process for the 23DS projectile does not include the systemic and deliberate forming of folds prior to the projectile's insertion into the shotgun shell. To raise an issue of fact in this regard, the plaintiff relies exclusively on a videotape of defendants' manufacturing process. The plaintiff contends that the tape shows that one of two technicians, a female, systemically forms folds in the projectile's tail prior to insertion into the shell.

The plaintiff's evidence is insufficient to raise a question of fact that would prevent a grant of summary judgment. The manufacturing process documented in the video does not show the systemic and deliberate forming of folds nor does it show the forming of any such folds prior to the projectile's insertion into the shell. One technician, a male, does not form folds at any point in the process of preparing it for insertion or inserting it into the shell. To prepare the projectile for insertion, he grasps the compartment of the projectile with his right hand and uses his left hand to straighten the tails with a twisting motion. He then grasps the entire projectile with his right hand, holding it near the tips of the tails with the compartment resting against the inside of his palm. He holds the shell in his left hand and initiates the insertion of the projectile into the shell by pushing the projectile, tails first, with his right hand into the shell.

The female technician follows a similar method for preparing the projectile for insertion into the shell, but her execution of the method produces slightly different results. In preparing the shell for insertion, she too grasps the compartment of the projectile in her right and uses her left hand to straighten the tails with a twisting motion. She is not, however, as vigorous in straightening the tails with the twisting motion. Consequently, the tails of the projectiles she has prepared for insertion are not as straight prior to insertion as the tails of the projectiles prepared by the male technician.

Her method of inserting the projectile into the shell diverges more substantially from the method used by the male technician. As she initiates the process of inserting the projectile into the shell she does not always hold the tails near their tips. When she holds the tails at a point closer to the compartment, the tails bend over her finger as she pushes them into the...