Donnelly Corp. v. Gentex Corp.

• Court: U.S. District Court — Western District of Michigan
• Writing for the Court: ENSLEN
• Citation: Donnelly Corp. v. Gentex Corp., 918 F.Supp. 1126 (W.D. Mich. 1996)
• Decision Date: 13 March 1996
• Docket Number: No. 1:93 CV 530.,1:93 CV 530.
• Parties: DONNELLY CORPORATION, Plaintiff, v. GENTEX CORPORATION, Defendant.

918 F. Supp. 1126

DONNELLY CORPORATION, Plaintiff, v. GENTEX CORPORATION, Defendant.

No. 1:93 CV 530.

United States District Court, W.D. Michigan, Southern Division.

March 13, 1996.

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COPYRIGHT MATERIAL OMITTED

Grant J. Gruel, Thomas R. Behm, Gruel, Mills, Nims & Pylman, Grand Rapids, MI, John Augustine O'Brien, Fitzpatrick, Cella, Harper & Scinto, New York City, for plaintiff.

William L. Fette, Cornell, Dalzell, Fette, Ramey, & Shek, Kalamazoo, MI, John Tramontine, Fish & Neave, New York City, for defendant.

OPINION

ENSLEN, Chief Judge.

This matter is before the Court on the motions of both Plaintiff Donnelly Corporation and Defendant Gentex Corporation to preclude the other from introducing certain evidence at the upcoming jury trial of this matter. Of the many motions, most will be denied, some will be granted and others will be granted in part and denied in part.

I.

This controversy stems from the United States Patent Office's grant of a patent for a "Perimeter Coated Electro-Optic Mirror" to Donnelly Corporation on November 19, 1991. The inventors of this device, Niall Lynam and Richard Gahan (who are employees of Donnelly) prior to the issue of the patent were working on means of making the Donnelly electro-optic mirrors more aesthetically pleasing. The electro-optic mirrors they designed are used for the purpose of dimming the reflections of headlights from traffic while traveling at night. They discovered in connection with the '112 patent that by coating the perimeter of the mirror with a darkly colored seal that one could construct the mirror with a thinner bezel since the reflection of the seal would be imperceptible.

Donnelly has charged in connection with this lawsuit that Defendant Gentex has infringed the patent by making and selling electro-optic mirrors which embody the '112 patent. Thus, Donnelly seeks relief under Title 35 United States Code Sections 271, 283, 284 and 285.

Gentex, however, has relied on several defenses. Among them are that the patent is invalid because under Title 35 United States Code Sections 101, 102 and 103 the invention is not novel (having been anticipated by prior art), was in public use or sale more than a year in advance of the patent, and was obvious to a person of ordinary skill in the art at the time the patent was granted. Gentex also asserts that to the extent that there was any infringement (which it denies) Donnelly is not entitled to lost profit damages and should only receive small royalty damages under Title 35 United States Code Section 284.

In light of the issues pertinent to this cause, the parties have filed many motions in limine concerning the upcoming jury trial.

II.

Preliminarily, the Court notes that it has authority under Federal Rules of Evidence 103, 104, 402 and 403 (as well as the Court's inherent authority to manage trials) to make rulings concerning preliminary questions as to the admissibility of evidence. Luce v. United States, 469 U.S. 38, 41 n. 4, 105 S.Ct. 460, 463 n. 4, 83 L.Ed.2d 443 (1984); Colorado National Bank v. First National Bank, 459 F.Supp. 1366, 1368 (W.D.Mich. 1978); Johansen v. Combustion Engineering, Inc., 834 F.Supp. 404, 405 (S.D.Ga.1993), aff'd, 67 F.3d 314 (11th Cir.1995). Such rulings are a matter of judgment and are within the wide discretion of the Court. Bills v. Aseltine, 52 F.3d 596, 607 (6th Cir.1995), cert. den., ___ U.S. ___, 116 S.Ct. 179, 133 L.Ed.2d 118 (1995).

III.

A. Presumption of Validity

First of all, both parties have filed motions in limine concerning evidence to prove the substantive elements of liability in this patent infringement case. To begin the analysis, Gentex has brought a motion to preclude Donnelly from referring to the presumption of the patent's validity in the presence of the jury. This motion relates to Title 35 United States Code Section 282, which provides in pertinent part that a "patent shall be presumed valid ... and the burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity." Gentex does not challenge the existence of the presumption; rather, Gentex argues that the presumption functions as a procedural rule for observance by the Court (in the context of Rule 50 which relates to directed verdicts) and that the jury should not be informed of it since it could only distract the jury from its true function of determining under Title 35 whether Gentex has proven by clear and convincing evidence that the patent is invalid. This argument is buttressed by the language of Federal Rule of Evidence 301 (which dictates the procedural effect of presumptions in federal courts) and the observations of Judge Learned Hand, who long ago wrote concerning legal presumptions:

The presumption ... is a mere rule for the conduct of the trial. It puts upon the bailee the risk of a directed verdict if he does not meet it, but it does no more; once he has done so, it disappears from the case. Thus it can never concern the jury ... If the trial is properly conducted, the presumption will not be mentioned at all....

Alpine Forwarding Co. v. Pennsylvania R. Co., 60 F.2d 734, 736-37 (2nd Cir.1932), cert. den., 287 U.S. 647, 53 S.Ct. 93, 77 L.Ed. 559 (1932).

Upon consideration of such argument, it appears that Gentex is trying to unrealistically limit the legal instructions of the Court. The American Bar Association Sample Jury Instructions for patent infringement cases include an instruction that the patent is "presumed to be valid and enforceable" and that for this reason the alleged infringer has the burden to attack the patent's validity. Such instructions do not wrongly describe the effect of the presumption as evidentiary, but rather simply explain to the jury why the burdens are so assigned. It is for this reason that the Federal Circuit has upheld instructions relating to the presumption of validity. Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563-64 (Fed.Cir.1993), cert. den., ___ U.S. ___, 114 S.Ct. 1540, 128 L.Ed.2d 192 (1994); Bio-Rad Laboratories v. Nicolet Instrument Corp., 739 F.2d 604, 615 (Fed.Cir.1984), cert. den., 469 U.S. 1038, 105 S.Ct. 516, 83 L.Ed.2d 405 (1984); Tarkett, Inc. v. Congoleum Corp., 156 F.R.D. 608, 611 n. 5 (E.D.Pa.1994). Furthermore, the assertion by Gentex that the presumption "disappears" after evidence is presented itself misstates the effect of the presumption according to the Federal Circuit. Sinskey v. Pharmacia Ophthalmics, Inc., 982 F.2d 494, 498 (Fed.Cir.1992), cert. den., 508 U.S. 912, 113 S.Ct. 2346, 124 L.Ed.2d 256 (1993); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358-60 (Fed.Cir. 1984), cert. den., 469 U.S. 821, 105 S.Ct. 95, 83 L.Ed.2d 41 (1984); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed.Cir. 1983). The Federal Circuit's interpretation of the presumption under Title 35 is especially persuasive here since, as noted by the Plaintiff, Rule 301 does not technically dictate the effect of this presumption since this is an "Act of Congress" presumption which is outside the scope of Rule 301. See 1 Weinstein's Evidence, Section 3013 (1995). In any event, this motion in limine does not raise any concerns which cannot be sufficiently addressed by this Court adequately informing the jury of the nature of this legal presumption, which it will do at the appropriate time. Accordingly, the motion in limine (Dkt. No. 517) will be denied.

B. Extent of Infringement

Another significant legal issue raised by Gentex is whether to limit testimony concerning infringement to Gentex mirrors with a bezel less than six millimeters. Gentex requests this relief because Donnelly has consistently maintained in this litigation that the '112 patent invention (the color matched seal) was created for the purpose of permitting a narrow bezel. For example, Donnelly stated in the final pretrial order that the "invention of the narrow bezel patent solved a long standing problem in the art of electro-optic rearview mirrors, namely how to reduce the size of the bezel required in such devices." Final Pre-Trial Order, Para. III.A.6. This type of limitation would be very significant to Gentex because it so happens that about 95 percent of the alleged infringing Gentex products do not have bezels of less than 6 millimeters.

While Gentex's motion makes a certain amount of rough sense (viz., Gentex has not taken advantage of the alleged invention in the making of these products), it is inconsistent with the Title 35 of the United States Code as interpreted by the United States Supreme Court and the Federal Circuit Court of Appeals. According to the prevailing law, an invention is legally defined by the limitations of the patent claims. 35 U.S.C. Section 112; Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600-01, 5 L.Ed.2d 592 (1961); Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1258 (Fed.Cir.1989). Thus, to prove infringement means to prove that the infringing device contains each of the limitations of the patent claim in issue. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 607, 70 S.Ct. 854, 855-56, 94 L.Ed. 1097 (1950); Genentech, Inc. v. Wellcome Foundation Ltd., 29 F.3d 1555, 1561 n. 6 (Fed.Cir.1994); Corning, supra at 1258.¹ In this particular case, the pertinent claims define the invention as having a black or color matched seal. Nothing is stated in the limitations as to the size of the bezel. Though it was explained in the specification that a dark seal would allow for a narrower bezel, it is also apparent from the specification that a wider bezel could be used. The narrow bezel depicted is the best, but not only, means of practicing the invention. Therefore, as a matter of law, the claim is not limited to electrochromic mirrors with narrow bezels.² Thus, Donnelly will be permitted to seek damage for infringement as to Gentex products with wide bezels.

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