Dethmers Mfg. Co. v. Automatic Equipment Mfg. Co.

• Decision Date: 14 January 2004
• Docket Number: No. C 96-4061-MWB.,C 96-4061-MWB.
• Citation: 299 F.Supp.2d 903
• Parties: DETHMERS MANUFACTURING COMPANY, INC., Plaintiff, v. AUTOMATIC EQUIPMENT MFG. CO., Defendant.
• Court: U.S. District Court — Northern District of Iowa

299 F.Supp.2d 903

DETHMERS MANUFACTURING COMPANY, INC., Plaintiff, v. AUTOMATIC EQUIPMENT MFG. CO., Defendant.

No. C 96-4061-MWB.

United States District Court, N.D. Iowa, Western Division.

January 14, 2004.

Brian J. Laurenzo, Michael C. Gilchrist, Dorsey & Whitney, David A. Tank, Davis, Brown, Koehn, Shors & Roberts, Des Moines, IA, for Plaintiff/Counter Defendant.

Daniel L. Hartnett, Crary-Huff-Inkster-Hecht-Sheehan-Ringenberg-Hartnett-Storm, Sioux City, IA, Donald R. Schoonover, Schoonover Law Firm, Fremont Hills, MO, John T. Wiedemann, Warren M. Haines, II, Calfee, Halter & Griswold, LLP, Cleveland, OH, Tim Engler, Harding, Shultz & Downs, Lincoln, NE, William A. Rudy, Lathrop & Gage, Kansas City, MO, for Defendant.

Daniel L. Hartnett, Crary-Huff-Inkster-Hecht-Sheehan-Ringenberg-Hartnett-Storm, Sioux City, IA, Tim Engler, Harding Shultz & Downs, Lincoln, NE, Warren M. Haines, II, Calfee, Halter &amp Griswold, LLP, Cleveland, OH, Donald R. Schoonover, Schoonover Law Firm, Fremont Hills, MO, William A. Rudy, Lathrop & Gage, Kansas City, MO, for Counter Claimant.

MEMORANDUM OPINION AND ORDER REGARDING DEFENDANT'S MOTION FOR RECONSIDERATION OF MOTION FOR SUMMARY JUDGMENT OF INVALIDITY OF RE. 35,482

BENNETT, Chief Judge.

                TABLE OF CONTENTS
                I.   INTRODUCTION .....................................................................905
                     A. Factual Background ........................................................905
                     B. Procedural Background .....................................................907
                II.  LEGAL ANALYSIS ...............................................................909
                     A. Arguments Of The Parties ..................................................909
                        1. Automatic's opening argument ...........................................909
                        2. Dethmers's response ....................................................910
                        3. Automatic's reply ......................................................911
                     B. Standards For Reconsideration .............................................911
                        1. The "law of the case" doctrine .........................................911
                        2. Strands of the doctrine ................................................912
                           a. Reconsideration without intervening appellate review ................912
                           b. Reconsideration after appellate review ..............................912
                        3. The prerequisite to application of the "law of the case" doctrine ......914
                     C. Change In Controlling Legal Authority .....................................915
                        1. The Supreme Court's decision in Festo ..................................916
                        2. "Application" of Festo in Eggert .......................................918
                        3. Is the Supreme Court's rule "new"? .....................................920
                        4. Application of the "Festo rule" by the appellate court in this case ....921
                III. CONCLUSION ...................................................................922
                

In a previous ruling in this patent infringement case, this court observed that the adage "the devil is in the details" is perhaps particularly applicable to patent law. See Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co., 23 F.Supp.2d 974, 981 (N.D.Iowa 1998) (Dethmers I). Indeed, it was on the basis of the "detail" that the addition of certain limitations to claims in an original patent application had not been made in an effort to overcome a prior art rejection that this court declined the defendant's invitation to apply the "recapture rule" to invalidate the plaintiff's subsequent reissue patent, which lacked those limitations. However, the defendant asserts that the Supreme Court has since changed the "details" of the "recapture rule" in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002), thereby justifying reconsideration of the defendant's motion for summary judgment of invalidity of the plaintiff's reissue patent. Consequently, this court is once again "bedeviled" by "details" in the application of the "recapture rule" in this case.

I. INTRODUCTION

A. Factual Background

Whether or not a party is entitled to summary judgment ordinarily turns on whether or not there are genuine issues of material fact, see FED. R. CIV. P. 56(c), even in patent cases. See, e.g., Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994) ("Summary judgment is appropriate in a patent case, as in other cases...."); Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575 (Fed.Cir.1994) ("The grant of summary judgment [in a patent case] is appropriate where the standards set forth in Rule 56(c) are satisfied."). However, in this case, the parties dispute the proper resolution of questions of law, which may be particularly amenable to summary judgment. See, e.g., Dana Corp. v. United States, 174 F.3d 1344, 1347 (Fed. Cir.1999) ("Summary judgment was appropriate here because no material facts were disputed, many being stipulated, and the only disputed issues were issues of law."). Nevertheless, some statement of the factual background is appropriate to put in context the issues presented.

The pertinent factual background to this case can be summarized briefly from a much more extensive discussion of the factual background in the court's ruling on the defendant's original motion for summary judgment of patent invalidity. See Dethmers I, 23 F.Supp.2d at 983-98. Both plaintiff Dethmers Manufacturing Company (Dethmers) and defendant Automatic Equipment Manufacturing (Automatic) make tow bars, based on their respective patents, for towing automobiles behind recreational vehicles. Two of Dethmers's patents are at issue in this ruling. The first is United States Patent No. 5,232,240 (the '240 patent), which is a patent for a "Towing Hitch," and the second is a reissue of the '240 patent, United States Patent No. Re32,482 (the Re482 patent). Although it is not at issue in the present ruling, Automatic's patent for its tow bars, United States Patent No. 5,356,166 (the '166 patent), was also at issue in this litigation and in previous rulings on dispositive motions.

Key factual matters include the prosecution history of the original '240 patent and the relationship between that patent and the Re482 patent. In the course of the prosecution of the original '240 patent by the inventor, the examiner pointed out that the connection of the apparatus by "pivot arms" to the towed vehicle stated in dependent claim 2 of the application contradicted the connection means stated in independent claim 1 of the application. Consequently, the applicant elected to use "pivot arms" as the only means of connection in the patent to overcome the patent examiner's rejection of the patent application for internal inconsistencies pursuant to 35 U.S.C. § 112. This court concluded in Dethmers I, and the parties do not dispute here, that the election of "pivot arms" as the connection means was not made to surrender the subject matter of other connection means in an effort to overcome a prior art rejection. See id. at 1018. Similarly, this court concluded in Dethmers I — and, again, the parties do not dispute that conclusion here — that the choice of "pivot block" language in application claim 4 was not to overcome a prior art rejection, but to overcome the examiner's objection concerning a lack of connection between certain pivot means in the apparatus and the rear portion of the apparatus. Id. With the amendments to include both "pivot arms" and a "pivot block," the '240 patent issued on August 3, 1993.

However, after Dethmers acquired the '240 patent from the inventor, Dethmers sought a reissue of the patent on the ground that "`the original patent [was] partly invalid because of errors without any deceptive intent on the part of [the inventor].'" See id. at 991 (quoting the reissue application declaration). The reissue application specified that "`[t]he errors were in [the inventor] claiming less than he had a right to claim in the patent.'" Id. (again quoting the reissue application declaration). To overcome these "errors," Dethmers submitted amendments to the claims of the '240 patent, which involved both alterations and deletions. See id. This court catalogued the differences between the '240 patent and the Re482 patent in some detail in Dethmers I. See id. at 991, 1018. For present purposes, suffice it to say that the Re482 patent eliminates any reference to a "pivot arms" limitation and replaces references to a "pivot block" in the '240 patent with references to a "pivot member" or "pivot means" in the Re482 patent. The reissue patent was eventually issued on March 25, 1997.

In this litigation, Dethmers contends, inter alia, that Automatic is infringing the Re482 patent. However, Automatic denies infringement and contends, further, that the Re482 patent is invalid, in large part owing to improper changes from the original '240 patent.

B. Procedural Background

Although the procedural background to this case is quite complicated, the court will focus here on the parts of the procedural background that are actually of present significance. Dethmers filed this action on June 26, 1996, seeking primarily a declaratory judgment, pursuant to 28 U.S.C. §§ 2201 and 2202, of non-infringement of Automatic's '166 patent and declaratory, injunctive, and damages relief for Automatic's alleged infringement of Dethmers's Re482 patent. Dethmers amended its complaint on April 24, 1997, and again on November 20, 1997, adding other claims, but the patent infringement claims are the only ones pertinent to the present discussion. Automatic answered the original complaint and the first amended complaint, and asserted various counterclaims, but moved to dismiss or, in the alternative, for summary judgment on various claims and issues in the second amended complaint. Then, on March 11, 1998, Automatic filed a motion for summary judgment on the invalidity...