Combined Tactical Systems v. Defense Technology
| Decision Date | 18 November 2008 |
| Docket Number | No. 04 Civ. 08924(MGC).,04 Civ. 08924(MGC). |
| Citation | 589 F.Supp.2d 260 |
| Parties | COMBINED TACTICAL SYSTEMS INC., Plaintiff, v. DEFENSE TECHNOLOGY CORPORATION OF AMERICA, and Federal Laboratories, Inc., Defendants. |
| Court | U.S. District Court — Southern District of New York |
Venable Campillo Logan & Meaney, PC, by: Lance Venable, Esq., Michael Campillo, Esq., Phoenix, AZ, for Plaintiff.
Harrington, Ocko & Monk LLP, by: Kevin J. Harrington, Esq., White Plains, NY, for Plaintiff.
Kane Kessler, PC, by: Adam M. Cohen, Esq., Dana M. Susman, Esq., New York, NY, for Defendants.
Renner, Otto, Boisselle & Sklar, LLP, by: Mark C. Johnson, Esq., Jay R. Campbell, Esq., Donald L. Otto, Esq., Cleveland, OH, for Defendants.
Combined Tactical Systems, Inc. ("Combined Tactical"), brought this action for patent infringement against Defense Technology Corporation of America, Inc., and Federal Laboratories, Inc. ("Defense Technology").1 Defense Technology counterclaimed, seeking a declaratory judgment that two of Combined Tactical's patents are invalid. Defense Technology now moves for summary judgment under Fed. R.Civ.P. 56, on two grounds. First, that because disclosure is not continuous from the earliest filed patent to the two patents in suit, the patents in suit are not entitled to the priority date of the earliest filed application, and because these patents are not entitled to the earliest date, their claims are invalid under 35 U.S.C. § 102(b) as anticipated by the first-filed patent. Second, that the patents in suit are invalid for lack of enablement under 35 U.S.C. § 112. For the reasons that follow, Defense Technology's motion for summary judgment is granted with respect to one of the patents in suit and denied as to the other.
The following facts are undisputed.
Combined Tactical and Defense Technology are both in the business of low-lethality munitions, which are used by law enforcement, corrections, and military personnel to incapacitate individuals while minimizing the risk of serious injury or death.
In November of 1999, Combined Tactical applied for a patent for a low-lethality projectile. The application claimed a sock-like fabric tube, filled with lead shot, and tied in the middle to create a compartment for the lead shot on one side and an open-ended tail on the other. The tail was then folded in a certain way and the sock was stuffed into an empty 12-gauge shotgun shell.
In April of 2000, Defense Technology began selling a similar product, which it called a Drag Stabilized Bean Bag Round. This projectile was also constructed from a tube filled with lead shot, tied in the middle, and stuffed into an empty 12-gauge shell.
Combined Tactical's patent was issued in March of 2001 as U.S. Patent No. 6,202,562 ("the '562 patent"). In August of 2001, Combined Tactical sued Defense Technology and Federal Laboratories, Inc., for infringement of the '562 patent.
Combined Tactical filed an additional application for a low-lethality projectile, in August of 2000: another sock-like fabric tube, this time filled with rubber pellets, tied in the middle, folded, and placed into an empty 37-mm weapon shell or an empty 40-mm weapon shell. In its application, Combined Tactical did not claim the benefit of the '562 patent's filing date. The patent examiner rejected the claims in this new patent application, based in part on the prior art of Defense Technology's low-lethality projectile. To overcome that rejection, Combined Tactical amended its application in November of 2001, such that the application became a continuation-in-part seeking the benefit of the '562 patent. On April 23, 2002, U.S. Patent No. 6,374,742 ("the '742 patent") was issued to Combined Tactical for a rubber-pellet-filled low-lethality projectile for 37-mm and 40-mm shells.
On April 2, 2002, just before the '742 patent was issued, Combined Tactical applied for a third patent for a sock-like fabric tube to be filled with lead shot and used as a low-lethality projectile. This third application was filed as a continuation-in-part of the '742 patent. The application eventually matured into the two patents in suit.
On April 19, 2002, in an unpublished opinion after a Markman hearing, Judge Cote found that Combined Tactical's '562 patent required "`the deliberate and systemic creation of folds'" in the tail of the sock-like projectile, whereas the Defense Technology projectile did not have a folded tail and was instead "composed of four separate pieces." Combined Sys., Inc. v. Defense Tech., 230 F.Supp.2d 544, 546 (S.D.N.Y.2002) (quoting the unpublished Markman opinion). On November 18, 2002, Judge Cote held that Defense Technology's projectile did not infringe the '562 patent because it was not created by means of systemic and deliberate folds to the tail of the projectile. Id. at 547-49. The Federal Circuit affirmed. 350 F.3d 1207, 1216 (Fed.Cir.2003).
Throughout the litigation, Combined Tactical continued to prosecute its third patent application. The examiner stated that Combined Tactical's application contained two separate inventions: the first set of claims involved the flight shape of the low-lethality projectile, and the second set of claims involved the method for preparing the projectile. On November 21, 2002, Combined Tactical filed a divisional application, and in June of 2004, the two patents in suit were issued: U.S. Patent No. 6,755,133 ("the '133 patent"), protecting the flight shape of the projectile, and U.S. Patent No. 6,752,086 ("the '086 patent"), protecting the projectile's method of preparation.
The grandparent patent, '562, claimed a projectile filled with lead shot and placed in a 12-gauge shotgun shell. The parent patent, '742, claimed a projectile filled with rubber pellets and placed in a 37-mm or 40-mm shell. The patents in suit claimed, in '133, a projectile filled with lead shot and placed in "a weapon shell" of any size, and, in '086, a projectile filled with lead shot and placed in a 12-gauge shell.
Nothing in the claim language of the '133 or '086 patents states that the tail must first be folded in an organized fashion prior to insertion in the shell. Combined Tactical Sys., Inc. v. Defense Tech. Corp. of Am., 426 F.Supp.2d 140, 146, 148 (S.D.N.Y.2006) (Markman opinion). This new claim language, with the tail-folding procedure removed, gave Combined Tactical another chance to seek to invalidate Defense Technology's 12-Gauge Drag Stabilized Bean Bag Round. Accordingly, Combined Tactical sued Defense Technology for infringement of the '133 and '086 patents.
To determine whether the patents in suit are invalid under 35 U.S.C. § 102(b), two issues must be addressed. The first question is whether there is continuity of disclosure from the grandparent application to the parent application to the patents in suit. If there is not continuity of disclosure, then the second question is reached: whether the grandparent '562 patent anticipates the '086 patent and the '133 patent, invalidating them under § 102(b).
At issue in this action is a series of continuation-in-part patent applications. A continuation application is an application filed after, but during the pendency of, a prior application for the same invention. The continuation application's specification describes the same invention as its parent application, but makes new claims regarding what is original about the invention. If certain requirements are met, the continuation application assumes the filing date of the parent application. When a continuation application is successful, prior art appearing after the filing date of the first application and before the filing date of the continuation application cannot be used to defeat the claims of the continuation application. Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 555-56 (Fed.Cir.1994); Donald S. Chisum, 4A Chisum on Patents § 13.03 (2008); Mark A. Lemley & Kimberly A. Moore, "Ending Abuse of Patent Continuations," 84 B.U. L.Rev. 63, 64-68 (2004).
A continuation-in-part application is a continuation application that partly discloses new matter and partly discloses matter from a previous application. The new matter takes the filing date of the continuation-in-part application and the previously disclosed matter takes the filing date of the previously filed application. Univ. of W. Va. Bd. of Trustees v. VanVoorhies, 278 F.3d 1288, 1297 (Fed.Cir.2002).
The practice of filing continuation applications was approved by the Supreme Court long ago, see Godfrey v. Eames, 68 U.S. (1 Wall.) 317, 325-26, 17 L.Ed. 684 (1863), and was subsequently developed through common law. In § 120 of the Patent Act of 1952, Congress codified the requirements for a continuation application's entitlement to the filing date of a previously filed application. Pub.L. No. 82-593, 66 Stat. 792, 800. That section now reads in relevant part:
[a]n application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States ... which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.
Patents are presumed to be valid. 35 U.S.C. § 282. Defense Technology seeks to overcome this presumption, arguing that the continuation-in-part applications of Combined Tactical fail to meet the first requirement of § 120. This...
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