Dayco Products, Inc. v. Total Containment, Inc.
| Decision Date | 21 June 2002 |
| Docket Number | No. 99-3042-CV-S-SOW.,99-3042-CV-S-SOW. |
| Citation | 218 F.Supp.2d 1129 |
| Parties | DAYCO PRODUCTS, INC., Plaintiff, v. TOTAL CONTAINMENT, INC., Defendant. |
| Court | U.S. District Court — Western District of Missouri |
Bruce Clifton Anderson, Daniel A. DeVito, Edward V. Filardi, Constance S. Huttner, Douglas R. Nemec, Skadden Arps Slate Meagher & Flom, LLP, New York City, Joel K. Goldman, Brian Wade, Husch & Eppenberger, LLC, Kansas city, MO, for plaintiff.
Lawrence M. Berkowitz, Amanda M. Feldmiller, George E. Feldmiller, Neil L. Johnson, Berkowitz, Feldmiller, Stanton, Brandt, Kansas city, MO, Randolph J. Huis, Volpe & Koenig, PC, Philadelphia, PA, for defendant.
Before the Court are plaintiff's Motion for Summary Judgment of Literal Infringement (Doc. # 128), defendant's Suggestions in Opposition, and plaintiff's Reply; defendant's Renewed Motion for Summary Judgment that Dayco's Patents Are Unenforceable Due to Inequitable Conduct (Doc. # 133), plaintiff's Suggestions in Opposition, and defendant's Reply; and defendant's Motion for Summary Judgment that Dayco's Patents Are Invalid Under 35 U.S.C. §§ 102 and 103 (Doc. # 135), plaintiff's Suggestions in Opposition, and defendant's Reply. For the reasons stated herein, plaintiff's motion is denied and defendant's motions are granted.
Plaintiff Dayco Products, Inc. ("Dayco") filed a Complaint in this Court alleging that defendant Total Containment, Inc. ("TCI") was infringing plaintiff's U.S. patents 5,129,686 ("the '686 patent"), 5,199,752 ("the '752 patent"), 5,297,822 ("the '822 patent"), 5,380,050 ("the '050 patent"), 5,430,929 ("the '929 patent"), and 5,486,023 ("the '023 patent"). During the discovery process, Dayco indicated that it was no longer asserting infringement of the '929 patent.
Previously, this Court conducted a Markman hearing, construed the claims in the patents-in-suit, and, based upon that claim construction, granted defendant TCI's motion for summary judgment based upon non-infringement on July 7, 2000. Dayco appealed this Court's order to the United States Court of Appeals for the Federal Circuit. The Federal Circuit affirmed this Court's grant of summary judgment of non-infringement of the '686 patent; however, the Federal Circuit held that under a proper claim construction, issues of material fact remained regarding infringement of the '752, '822, '050, and '023 patents. As a result, the Federal Circuit remanded the case to this Court for further proceedings.
Following the remand, each party has moved for summary judgment. Plaintiff Dayco argues that under the Federal Circuit's claim construction, Dayco is entitled to summary judgment based upon literal infringement of the patents-in-suit. Defendant TCI contends that Dayco's patents are (1) unenforceable due to inequitable conduct and (2) invalid under 35 U.S.C. §§ 102 and 103.
A motion for summary judgment should be granted if, viewing the evidence in the light most favorable to the non-moving party, there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed. R.Civ.P. 56(c); Rafos v. Outboard Marine Corp., 1 F.3d 707, 708 (8th Cir.1993) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). A defendant who moves for summary judgment has the burden of showing that there is no genuine issue of fact for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A plaintiff opposing a properly supported motion for summary judgment may not rest upon the allegations of its pleadings, "but must set forth specific facts showing there is a genuine issue for trial." Id.
Defendant TCI has renewed its motion for summary judgment arguing that Dayco's patents-in-suit are unenforceable due to Dayco's inequitable conduct in the Patent and Trademark Office ("PTO"). TCI asserts that Dayco intentionally withheld material prior art and information concerning a co-pending patent application from the patent examiner. Previously, this Court had dismissed TCI's motion as moot based upon this Court's finding of non-infringement.
The undisputed material facts relevant to defendant TCI's motion for summary judgment are as follows: the patents-in-suit are directed to a hose construction, a coupling therefor, and methods of making same. Each of the remaining patents-in-suit is a division of Dayco's U.S. Patent 5,037,143. The patents-in-suit share common subject matter and all were prosecuted by the same patent attorney, Joseph V. Tassone.
The specification for the '929 patent illustrates the common subject matter of all the patents-in-suit:
As previously set forth, one of the features of this invention is to provide a uniquely formed structure on an insert means of the coupling 32 so as to uniquely interconnect the coupling 32 of this invention to the hose 31 and still provide for a fluid sealed retention between the interiors thereof in substantially the same manner as set forth in the aforementioned U.S. Patent to Sanders et al., U.S.Pat. No. 5,129,686 whereby this U.S. patent is being incorporated into this disclosure by this reference thereto.
The PTO Examiner for all the patents-in-suit, except for Dayco's '929 patent, was Dave W. Arolla. The PTO Examiner for Dayco's '929 patent was Eric K. Nicholson. On June 11, 1993 Nicholson issued an Examiner's Action rejecting claims 1-22 in Dayco's application number 993,196 ("the '196 application"). Nicholson stated that these claims were being rejected "as being unpatentable over U.S. patent 3,381,981 to Wilson in view of U.S. patent 5,096,234 to Oetiker." Nicholson found that Wilson illustrated "all of the features of the present invention except the insert (1) is not radially outwardly expanded, as to claim 4 the projections (2) are not annular and as to claim 9 the coupling has internal threads not external threads."
Dayco responded to the Examiner's Action issued by Nicholson by cancelling claims 11-22, amending claim 1, and submitting arguments attempting to define over the prior art by comparison to a "prior known insert." Nicholson issued a Final Examiner's Action on December 30, 1993, rejecting claims 1-10 in Dayco's '196 application using language virtually identical to that contained in his previous rejection. On May 11, 1994, the PTO issued a Notice of Abandonment of Dayco's '196 application as a result of Dayco's express abandonment of the application. Then, on October 31, 1994, Nicholson issued an Examiner's Action rejecting claims 1-10 in Dayco's application for the '929 patent again using language virtually identical to that contained in his previous rejections.
At the time Nicholson issued his June 11 and December 30, 1993 Examiner's Actions in the '196 application, Dayco's applications for the '050 and '822 patents were pending before Examiner Arolla. Dayco filed its application for the '023 patent on November 10, 1994 and it was examined by Examiner Arolla as well.
Dayco was made aware of the existence of the '981 patent to Wilson in Examiner Nicholson's Actions on the '196 application and the '929 patent; however, neither the '050, '822, nor the '023 patents show the '981 patent as a cited prior art reference. Similarly, there is no evidence in the prosecution history of the '050, '822, or '023 patents that Dayco disclosed the Wilson '981 patent to the PTO during the course of applying for these patents. There is no evidence in the prosecution history of the '822, '752, or '050 patents that Dayco advised Examiner Arolla or that Examiner Arolla was aware of the existence of the co-pending '196 application. There is no evidence in the prosecution history of the '050 or '023 patents that Dayco advised Examiner Arolla or that Examiner Arolla was aware of the existence of the co-pending application that resulted in the '929 patent.
Patent rights are granted in an ex parte proceeding and the candor of the patentees and agents is critical to the patent system. Precision Instrument Mfg. Co. v. Automotive Maintenance Mach. Co., 324 U.S. 806, 818, 65 S.Ct. 993, 89 L.Ed. 1381 (1945); FMC Corp. v. Manitowoc Co., Inc., 835 F.2d 1411, 1415 (Fed.Cir.1987). The patent applicant and the applicant's attorney owe an uncompromising duty of candor, good faith, and honesty to the PTO during the prosecution of the patent application. Fox Industries, Inc. v. Structural Preservation Systems, Inc., 922 F.2d 801, 804 (Fed.Cir.1990). The duty to disclose information material to patentability has been codified in Title 37 of the Code of Federal Regulations at Section 1.56 which provides that, "Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section." Section 1.56 also states that, "The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned." Information is defined as material when it is not cumulative to information already of record and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of unpatentability.
37 C.F.R. 1.56.
A patent challenger seeking to establish that a patent is unenforceable based on inequitable conduct must prove by clear and convincing evidence that:
(1) The applicant withheld prior art...
To continue reading
Request your trial
-
Dayco Products, Inc. v. Total Containment, Inc.
...patents-in-suit") and granting summary judgment of invalidity as to certain claims of those patents. Dayco Prods., Inc. v. Total Containment, Inc., 218 F.Supp.2d 1129 (W.D.Mo.2002). Having granted summary judgment of unenforceability and invalidity, the district court concluded that there w......
-
Inequitable Conduct - What Standard for Materiality?
...2001). Only now are courts reviewing patents prosecuted under the new rule. See, e.g., Dayco Prods., Inc. v. Total Containment, Inc., 218 F. Supp.2d 1129, 1133 (W.D. Mo. But did the change in the PTO rule change the standard by which inequitable conduct is measured in the courts? The Federa......