Dorman Prods., Inc. v. Paccar, Inc., CIVIL ACTION NO. 13-6383

CourtUnited States District Courts. 3th Circuit. United States District Court (Eastern District of Pennsylvania)
Citation201 F.Supp.3d 663
Docket NumberCIVIL ACTION NO. 13-6383
Parties DORMAN PRODUCTS, INC., Plaintiff, v. PACCAR, INC., Defendant.
Decision Date22 August 2016

Anthony S. Volpe, Max S. Morgan, Ryan William O'Donnell, Volpe & Koenig PC, Philadelphia, PA, for Plaintiff.

Brian F. McMahon, Carmen E. Bremer, James W. Anable, John D. Denkenberger, Christensen O'Connor Johnson Kindness PLLC, Seattle, WA, Stanley H. Cohen, Caesar Rivise Bernstein Cohen & Pokotilow, Ltd., Philadelphia, PA, for Defendant.

MEMORANDUM

DuBois, United States District Judge

I. INTRODUCTION

This case involves three design patents owned by PACCAR, Inc. PACCAR designs and manufactures heavy duty trucks.

Dorman Products, Inc., which supplies automotive replacement parts, filed a Complaint against PACCAR in this Court. In the Complaint, Dorman seeks a declaratory judgment of patent invalidity as to one of the patents owned by PACCAR and claims that PACCAR engaged in unfair competition and various business torts by sending cease-and-desist letters to Dorman's vendors. PACCAR alleges in its Answer and Counterclaims that the aftermarket replacement headlights sold by Dorman infringe on three of PACCAR's design patents, claiming both infringement under 25 U.S.C. § 271 and willful infringement under 35 U.S.C. § 284. In response to PACCAR's counterclaims, Dorman raises, inter alia , various invalidity defenses and the defense of non-infringement.

Presently before the Court are the parties' Motions for Summary Judgment and Daubert Motions. Following oral argument, the Court disposes of the Motions as set forth below.

II. BACKGROUND
A. Patents in Suit

PACCAR designs and manufactures heavy-duty trucks including Peterbilt and Kenworth trucks. PACCAR owns U.S. Design Patents Nos. 426,905, 525,731, and 526,429.

1. Patent No. D426,905

United States Design Patent No. 426,905 ("the '905 patent") was issued on June 20, 2000, and claims "[t]he ornamental design of an exterior surface configuration of a truck headlight, as shown and described." Dorman Mot. for Summ. J., Ex. 1. The '905 patent includes five figures depicting various perspectives of the claimed design for a left truck headlight. In addition, the patentee explains "[t]he design envisioned contains a second portion whose image is mirror symmetrical to the one shown." Figure 1 of the '905 patent is shown below.1

It is PACCAR's position that the '905 patent claims the ornamental design that is commercially embodied in the surface lens of the headlight on PACCAR's Peterbilt 386/387 trucks. See, e.g. , PACCAR Mot. for Summ. J., Statement of Material Facts ¶ 86.

2. Patent No. D525,731

United States Design Patent No. 525,731 ("the '731 patent") was issued on July 25, 2006, and claims "the ornamental design for a truck headlamp, as shown and described." Dorman Mot. for Summ. J., Ex. 3. The '731 patent includes fourteen figures depicting various perspectives of the claimed design for a left and right truck headlight. Figure 1 of the '731 patent is shown below.

It is PACCAR's position that the '731 patent claims the ornamental design that is commercially embodied in the headlight used on PACCAR's Kenworth T660 truck. See, e.g. , PACCAR Mot. for Summ. J., Statement of Material Facts ¶ 87.

3. Patent No. D526,429

United States Design Patent No. 526,429 ("the '429 patent") was issued on August 8, 2006, and claims "[t]he ornamental design for a surface configuration of [sic] truck headlamp, as shown and described." Dorman Mot. for Summ. J., Ex. 2. The '429 patent includes fourteen figures depicting various perspectives of the claimed design for a left and right truck headlight. Figure 1 of the '429 patent is shown below:

It is PACCAR's position that the '429 patent claims the ornamental design that is commercially embodied in the surface lens of the headlight used on PACCAR's Kenworth T660 truck. See, e.g. , PACCAR Mot. for Summ. J., Statement of Material Facts ¶ 88.

B. Dorman's Replacement Parts

Dorman is an automotive replacement parts supplier to the aftermarket and mass merchandise markets. PACCAR Mot. for Summ. J., Statement of Material Facts ¶ 8. Dorman manufactured and sold replacement headlights for (1) Peterbilt 386/387 trucks, as Dorman Products Nos. 888–5403 and 888–5404, and (2) Kenworth T660 trucks, as Dorman Products Nos. 888–5401 and 888–5402. PACCAR Mot for Summ. J., Statement of Material Facts ¶ 10–11. Dorman sells its parts to various automotive parts retailers. PACCAR Mot. for Summ. J., Statement of Material Facts ¶ 8.

C. Procedural History

On September 24, 2013, PACCAR, through counsel, sent a letter to Dorman alleging that Dorman's replacement headlights for Peterbilt 386/387 and Kenworth T660 trucks infringed the '905, '731, and '429 patents. Dorman Mot. for Summ. J., Ex. 69. PACCAR demanded that Dorman stop selling the replacement parts. Id. On October 3, 2013, Dorman, through counsel, responded that it was reviewing PACCAR's contentions. Dorman Mot. for Summ. J., Ex. 70.

On October 22, 2013, PACCAR, through counsel, sent cease-and-desist letters to three of Dorman's retailer customers, O'Reilly Automotive, Inc., Fleet Truck Parts, and Raney Truck Parts, Inc. Dorman Resp. to PACCAR Mot. for Summ. J., Exs. 12, 13, 15. These letters demanded that the retailers cease selling Peterbilt 386/387 and Kenworth T660 replacement headlights manufactured by Dorman and alleged that sale of the headlights constituted infringement of PACCAR's design patents. Id. PACCAR sent a second cease-and-desist letter to O'Reilly on November 1, 2013. Dorman Mot. for Summ. J., Ex. 72.

On November 1, 2013, Dorman filed a Complaint in this Court. In its Complaint, Dorman sought a declaratory judgment under 28 U.S.C. §§ 2201 and 2202 that the '905 patent was invalid. Dorman also asserted tort claims: (1) for unfair competition under the Lanham Act, 15 U.S.C. § 1125(a) ; (2) for unfair competition under the Pennsylvania Unfair Trade Practices and Consumer Protection Law ("UTPCPL"), 73 P.S. § 201 et seq., and Pennsylvania common law; and (3) for tortious interference with business relations under Pennsylvania common law.

On November 14, 2013, PACCAR filed an Answer and Counterclaims. In its Counterclaims, PACCAR asserted claims for infringement of the '905, '731, and '429 patents. PACCAR also asserted claims for willful infringement under 35 U.S.C. § 284. On December 5, 2013, Dorman filed an Answer to PACCAR's counterclaims and asserted, inter alia , the invalidity of the '731 and '429 patents.

The Court has jurisdiction over Dorman's declaratory judgment claim and PACCAR's patent infringement counterclaims pursuant to 28 U.S.C. §§ 1331 and 1338. The Court has jurisdiction over Dorman's tort claims pursuant to 28 U.S.C. §§ 1331 and 1367.

On December 5, 2013, Dorman filed a Motion to Dismiss, in which it sought, inter alia , dismissal of PACCAR's claims for willful infringement. By Order dated February 21, 2014, the Court denied the Motion without prejudice to Dorman's right to raise the issue by motion for summary judgment.

On April 8, 2014, Dorman filed a Motion to Stay pending inter partes review of the '731 and '429 patents before the United States Patent and Trademark Office ("PTO"). The Court granted the Motion to Stay by Memorandum and Order dated June 16, 2014. The PTO affirmed the validity of the challenged claims of the '731 and '429 patents in inter partes review. Following the PTO decision, the Court returned the case to the active docket by Order dated December 17, 2014.

In August 2015, prior to the close of fact and expert discovery, the parties filed multiple seriatim Motions for Summary Judgment on various issues as well as Motions to Exclude various expert opinions. The Court, by Order dated November 4, 2015, denied all such Motions as premature and not ripe for decision because discovery was ongoing and the record was not complete. The Court issued a Scheduling Order dated November 18, 2015, that required each party to file a motion for summary judgment covering all issues ripe for decision as a matter of law and a Daubert motion covering all challenged experts following the close of discovery.

Presently before the Court are Dorman and PACCAR's respective Motions for Summary Judgment and Daubert Motions filed pursuant to that Order. Following the decision of the United States Court of Appeals for the Federal Circuit in The Medicines Company v. Hospira, 827 F.3d 1363, 2016 WL 3670000 (Fed.Cir. July 11, 2016) (en banc), the Court requested supplemental briefing on the effect of that decision on the on-sale bar issues in this case, which the parties submitted. The Court held oral argument on the pending motions on August 1, 2016.

III. MOTIONS FOR SUMMARY JUDGMENT

In its Motion for Summary Judgment, Dorman argues that: (1) all three patents in suit are invalid as a matter of law under 35 U.S.C. § 102(b) because they were the subject of a commercial offer for sale more than one year prior to their respective filing dates; (2) the '429 patent is invalid as a matter of law under 35 U.S.C. § 102(b) because it was publicly disclosed more than one year prior to its filing date; (3) PACCAR's willful infringement claims fail as a matter of law; and (4) that Dorman's replacement part for the right headlight for the Peterbilt 386/387 model trucks does not infringe the '905 patent because PACCAR disclaimed the right headlight during prosecution. PACCAR, in its Motion for Summary Judgment argues that: (1) no reasonable jury could conclude that Dorman's replacement headlights do not infringe the asserted patents; (2) Dorman's business tort claims fail as a matter of law; and (3) PACCAR's affirmative defense of invalidity based on the on-sale bar under 35 U.S.C. § 102(b) fails as a matter of law.

For the reasons that follow, the Court denies Dorman's Motion for Summary Judgment and grants PACCAR's Motion for Summary Judgment on the on-sale bar issue and concludes that the patents in suit were...

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