Componex Corp. v. Elecs. for Imaging, Inc.
| Decision Date | 21 October 2014 |
| Docket Number | 13-cv-384-wmc |
| Court | U.S. District Court — Western District of Wisconsin |
| Parties | COMPONEX CORPORATION, Plaintiff, v. ELECTRONICS FOR IMAGING, INC., Defendant. |
Plaintiff Componex Corporation alleges that defendant Electronics For Imaging, Inc. ("EFI"), infringes two of its patents for printing technology. This opinion is limited to claims relating to the U.S. Patent No. 6,685,076 ("the '076 patent"). As is common in patent cases, the parties have filed cross-motions for summary judgment. Componex seeks summary judgment of infringement. EFI seeks summary judgment of non-infringement and invalidity. As part of these motions, the parties also ask the court to construe various terms expressed in the claims of the '076 patent. While largely adopting Componex's construction of the disputed terms,1 the court finds the patent itself is invalid on obviousness grounds given the Buysch patent teaches everything but welding "as a means for fixing" when welding was one of the few means for fixing, as evidenced by both common sense and prior art in the field at the time.
Plaintiff Componex, located in Edgerton, Wisconsin, manufactures printing rollers, also known as "idler rollers." The President of Componex, Cal Couillard, is the sole named inventor of the '076 patent. Couillard assigned the '076 patent to Engineered Metals Corporation, which in turn assigned it to Componex.
Defendant EFI is a publicly-traded company that sells digital printers and printing technology, including software. (Declaration of Peter Benoit ("Benoit Decl.") (dkt.# 51) ¶ 3.) Among the products EFI offers are several different models of its VUTEk Superwide-format printers. (Id.) VUTEk printers are used by specialty print shops to create high-quality, large-format banners, posters and displays. The VUTEk family of printers integrate computerized solutions that optimize print production. The printers typically consist of more than 3,000 parts. (Id.)
Printing rollers are routinely used for what is known as "web handling," which is the transportation, shaping, and/or storage of thin materials in a continuous and flexible form, such as paper, foil, or rolled metal. (Declaration of Tim Walker ("Walker Decl.") (dkt.#56) ¶ 5.) An idler roller is a roller that rotates by traction, typically created by the moving web as it is pulled or pushed under the roller itself. (Id. ¶ 6d.) Among other things, idler rollers can be employed in web handling to change web direction, preventdroop or flutter, monitor average web tension and provide an applied force to bend the web for guiding.
Rollers can be balanced or unbalanced. Typically, rollers are balanced only in applications requiring high printing speeds. (Id. ¶ 15.) When balancing is needed, it can be done either by the addition of mass to the rotor, by the removal of material, or in some cases by relocating the shaft axis (known as "mass centering"). Removal of mass can be accomplished by, among other things, drilling, milling or grinding. (Id. ¶ 20.)
Although the use of solid rollers is well established, hollow structures are increasingly used in order to decrease the mass of the roller itself. (Id. ¶ 21.) Where a roller is not solid, it is usually necessary to connect the various components of the hollow structure so that it moves together. (Id. ¶ 22.) Typically, this is accomplished by using two concentric tubes connected by spokes in much the same manner as a bicycle wheel has a hub and rim connected by spokes, except that a single "spoke" is substantially thicker in height and width and can, and sometimes does, run almost the entire length of the tube itself. (Id.) Such hollow structures may be manufactured in various ways. (Id. ¶ 24.) The entire roller can be formed as a single unit (known as an "extruded tube") or it can be created by joining several pieces of the hollow structure together (e.g., through bolts, screws or welding). (Id.)
Roller bending is a common problem that occurs in web handling. (Id. ¶ 7.) Like any material subject to pressure, how a roller bends will depend on how it is supported and the location and amount of the load, as well as other factors like the location, lengthand number of spokes attaching the inner and outer tube. (Id. ¶¶ 8-10.) Differences in design can thus alter the way in which these variables result in bending. (Id.)
The '076 patent claims a roller and a method of making a roller for use in commercial machinery. ('076 patent 1:11-12.) The '076 patent is directed to "nipped" rollers. (Id. at 1:1.) In commercial applications, materials such as paper, plastic or tissue are processed by looping material through two rollers assembled to form a small gap, or "a nip" between the rollers that exerts pressure on the material. (Id. at 1:44-50.)3
The specification of the '076 patent states that it is desirable to have uniform pressure across the two rollers. (Id. at 1:48-50.)
Image materials not available for display.
Figure 1: An Embodiment of Invention from the '076 patent: first and second welds (50),
Radial Gap (54) inner elongate tubing (14) and outer elongate tubing (30)
As illustrated above, the '076 patent teaches a welded tubing design with an outer tubing connected to inner tubing. (Id. at 2:8-35, and Fig. 1-3.) The '076 patent assertsadvantages of the invention which "substantially reduces the need for crowning rollers used in nipped application." 4 (Id. at 2:8-10.)
The application that matured into the '076 patent was filed on March 5, 2002, and, after prosecution, contained three independent claims. The independent apparatus claims (claims 1 & 2) recite a roller created by joining two concentric tubes such that there is a space between the larger tube's inner diameter and the smaller tube's outer diameter. (Id. claims 1, 2.) These tubes are joined using a "means for fixing" that is a weld at positions some distance from the outer shell's ends. (Id.) The independent method claim (claim 3) includes welding and pivoting limitations. (Id. claim 3.)
Componex asserts infringement of all three, independent claims of the '076 patent. (Pl.'s Br. for Summ. J. (dkt.# 37) 20-22.) These claims are set forth below with specific claim terms in dispute bolded.
Claim 1 of the patented invention states:
[C] an outer elongate tubing having an inner diameter which is larger than the outer diameter of the inner tubing, the outer tubing being disposed about the inner tubing;
('076 patent, at 6:25-43 (emphasis added).)
Claim 2 of the patented invention states:
[C] means for fixing the outer tubing relative to the inner tubing, wherein the means for fixing comprises a first weld between the second outside surface of the inner elongate tubing and the first inside surface of the outer elongate tubing, the first weld being positioned a distance inward from one end of the inner elongate tubing and the outer elongate tubing, and a second weld between the second outside surface of the inner elongate tubing and the first inside surface of the outer elongate tubing, the second weld being positioned a distance inward from an opposite end of the inner elongate tubing and the outer elongate tubing; and
[D] wherein the outer elongate tubing can pivot about the first and second welds, such that the outer elongate tubing can bow outward.
('076 patent, at 44-64 (emphasis added).)
Claim 3 of the patented invention states:
[C] drilling a plurality of holes in the outer elongate tubing, the holes being positioned inward from the ends of the outer elongate tubing;
('076 patent, at 7:1-7 (emphasis added).)
OPINIONAnalysis of patent infringement is a two-step process: "first, the scope of the claims are determined as a matter of law, and second, the properly construed claims are compared to the allegedly infringing device to determine, as a matter of fact, whether all of the limitations of at least one claim are present, either literally or by a substantial equivalent, in the accused device." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed. Cir. 2002); Split Pivot, Inc. v. Trek Bicycle Corp., 12-CV-639-WMC, 2013 WL 6564640, at *2-3 (W.D. Wis. Dec. 13, 2013).
Claim terms "are examined through the viewing glass of a person skilled in the art." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). This provides an objective baseline from which to begin the claim analysis. Innova Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381...
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