Eagle Comtronics v. Northeast Filter Co.

• Decision Date: 12 March 1993
• Docket Number: No. 90-CV-573.,90-CV-573.
• Citation: 816 F. Supp. 152
• Parties: EAGLE COMTRONICS, INC., Plaintiff, v. NORTHEAST FILTER CO., INC. and Timothy M. Holdsworth, Defendants.
• Court: U.S. District Court — Northern District of New York

816 F. Supp. 152

EAGLE COMTRONICS, INC., Plaintiff, v. NORTHEAST FILTER CO., INC. and Timothy M. Holdsworth, Defendants.

No. 90-CV-573.

United States District Court, N.D. New York.

March 12, 1993.

COPYRIGHT MATERIAL OMITTED

Scolaro Shulman Cohen Lawler & Burstein, Syracuse, NY (Walter D. Kogut, of counsel), Parkhurst Wendel & Rossi, Arlington, VA (Roger W. Parkhurst, of counsel), for plaintiff.

Richard C. Conover, Bozeman, MT, for defendants.

MEMORANDUM-DECISION AND ORDER

McCURN, Chief Judge.

INTRODUCTION

Plaintiff, Eagle Comtronics ("Eagle"), commenced this suit in May 1990, seeking damages from Northeast Filter Co., Inc. ("Northeast") and Timothy M. Holdsworth ("Holdsworth") resulting from their alleged infringement of Eagle's '803 patent. On November 21, 1991, this court issued a memorandum-decision and order ("November 21st Order") that granted plaintiff's motion for partial summary judgment as to all of defendants' affirmative defenses and counterclaims based upon patent invalidity, laches, and equitable estoppel. See Eagle Comtronics, Inc. v. Northeast Filter Co., 22 U.S.P.Q.2d 1134, 1991 WL 247551, 1991 U.S.Dist. LEXIS 16965 (N.D.N.Y. Nov. 21, 1991). As a result of this order, a number of paragraphs were struck from defendants' answers and amended answers pursuant to Fed.R.Civ.P. 12(f). See id. In this same order, the court denied defendants' cross-motion for summary judgment on the issue of patent invalidity based upon the court's conclusion that the doctrine of assignor estoppel prevented defendants from raising such claims in response to this litigation. See id.

The court now has before it the parties' cross-motions for partial summary judgment pursuant to Fed.R.Civ.P. 56. By way of its motion, Eagle seeks to have this court find that both defendants infringed claim 17 of its '803 patent by manufacturing and selling the "Permatrap" filter in the United States. In addition, Eagle seeks to have this court conclude that such infringement was willful. Finally, Eagle asks this court to declare this case exceptional and award Eagle reasonable attorney fees pursuant to 35 U.S.C. § 285.

Defendants, likewise, move for partial summary judgment. They seek to have this court declare that they have not infringed Eagle's '803 patent. They also request that this court denominate this case exceptional and award them reasonable attorney fees pursuant to 35 U.S.C. § 285. Finally, they seek to have this court impose sanctions upon plaintiff's attorney pursuant to Fed. R.Civ.P. 11. The court will discuss each of these motions in turn.

DISCUSSION¹

I. Summary Judgment Standard

As this court stated in its November 21st Order, "summary judgment is appropriate where `there is no genuine issue as to any material fact' and `the moving party is entitled to a judgment as a matter of law.'" Eagle Comtronics, 1991 WL 247551 at *1, 1991 U.S.Dist. LEXIS 16965 at * 4-5 (quoting Shamrock Technologies, Inc. v. Medical Sterilization, Inc., 903 F.2d 789, 791, 14 U.S.P.Q.2d 1728, 1730 (Fed.Cir.1990) (citing in turn Fed.R.Civ.P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265, 273 (1986)). Moreover, the Federal Circuit has held that if these prerequisites are satisfied, "summary judgment is as appropriate in a patent case as in any other." Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1561 (Fed.Cir.1988) (citations omitted). The mere existence of some alleged factual dispute, however, will not defeat such a motion. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202, 211 (1986). Rather, pursuant to Rule 56 of the Federal Rules of Civil Procedure ("Rule 56"), there must be no genuine issue of material fact. Id. at 248, 106 S.Ct. at 2510, 91 L.Ed.2d at 211 (emphasis in the original). For purposes of this rule, material facts are defined as those which might affect the outcome of the suit under the governing law. Id. In patent cases, the Federal Circuit is the source of the case law which governs this court's analysis. See Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422, 1439, 223 U.S.P.Q. 1074, 1087 (Fed.Cir.1984).

In deciding whether to grant summary judgment, the court's function is to determine whether there is a genuine issue for trial, not to weigh the evidence and determine the truth of the matter. Anderson, 477 U.S. at 249, 106 S.Ct. at 2511, 91 L.Ed.2d at 212. Accordingly, the court must leave credibility determinations, weighing of evidence and drawing of legitimate inferences from the facts to the jury. Id. at 255, 106 S.Ct. at 2513, 91 L.Ed.2d at 216. The party seeking summary judgment bears the initial burden of informing the court of the basis for its motion and identifying those portions of "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any," which it believes demonstrate the absence of any genuine issue of material fact. Celotex Corp., 477 U.S. at 323, 106 S.Ct. at 2558, 91 L.Ed.2d at 274.

Once the moving party has met this burden, the burden shifts to the non-movant to demonstrate that there is a genuine issue of material fact. Although the court must draw all inferences in favor of the non-movant, the non-movant must do more "than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538, 552 (1986). "Speculation, conclusory allegations and mere denials are not enough to raise genuine issues of fact." Greenblatt v. Prescription Plan Servs. Corp., 783 F.Supp. 814, 819-20 (S.D.N.Y.1992) (citing Anderson, 477 U.S. at 248, 106 S.Ct. at 2510 (interpreting the "genuineness" requirement)); see also Shamrock Technologies, 903 F.2d at 792-93, 14 U.S.P.Q.2d at 1731. Rather, to meet its burden, the non-movant must present affirmative evidence from which a jury might return a verdict in its favor. Anderson, 477 U.S. at 257, 106 S.Ct. at 2514, 91 L.Ed.2d at 217 (emphasis added); see also Greenblatt, 783 F.Supp. at 819-20. Nevertheless, although the non-movant is expected to set forth specific facts showing that there is a genuine issue for trial, such evidence need not ensure that the jury will return a verdict in its favor. See Anderson, 477 U.S. at 257, 106 S.Ct. at 2514, 91 L.Ed.2d at 217. With these guidelines in mind, the court must determine whether either of the parties is entitled to the relief they seek.

II. Plaintiff's Motion for Summary Judgment²

Pursuant to 35 U.S.C. § 271(a) "whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent." 35 U.S.C. § 271(a) (West 1984). There is no dispute in this case that Northeast and Holdsworth made and sold the Permatrap filter in the United States. Thus, for purposes of this motion, the only question the court must resolve is whether defendants' Permatrap filter literally infringes Eagle's '803 patent.

Eagle applied for and received its '803 patent for an invention entitled "Split Tuning Filter." According to the patent, this filter is "particularly suitable for use in: (1) removing one or more single or multiple frequency scrambling signals injected into a TV channel to eliminate the possibility of intelligible reception of video and/or audio information; or (2) removing a video carrier in a TV channel to prevent its reception." See Defendants' Exhibit CC at 011. Eagle contends that defendants' Permatrap filter literally infringes claim 17 of this patent.³

"Literal infringement requires that every limitation of the patent claim must be found in the accused device." Richdel Div. of Garden Am. Corp. v. Aqua-Trol Corp., 681 F.Supp. 141 (E.D.N.Y.1988), aff'd, 871 F.2d 1097, 10 U.S.P.Q.2d 1959 (Fed.Cir.1989) (quoting Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1054 (Fed.Cir.1988)). The burden is on the patent owner to prove literal infringement by a preponderance of the evidence. SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed.Cir.1988). Determination of whether a patent claim has been literally infringed involves a two step analysis. Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1562, 15 U.S.P.Q.2d 1039, 1042 (Fed.Cir.1990) (citing ZMI v. Cardiac Resuscitation Corp., 844 F.2d 1576, 1578, 6 U.S.P.Q.2d 1557, 1559 (Fed.Cir.1988)). First, the court must define the claim, a legal question of claim interpretation. SmithKline Diagnostics, Inc. v. Helena Lab., 859 F.2d at 889. Second, the court must determine whether each limitation of the properly construed claim is found in the accused product, a question of fact. Id. at 889; see also Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1258, 9 U.S.P.Q.2d 1962, 1967 (Fed.Cir.1989). A product cannot escape a finding of infringement, however, merely because it has added elements or functions to the patented device if it has adopted the main features of that device. Simmons Fastner Corp. v. Illinois Tool Works Inc., 663 F.Supp. 697 (N.D.N.Y. 1987) (citing Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1482 (Fed.Cir.1984)); see also Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 945 (Fed.Cir.), cert. denied, 498 U.S. 920, 111 S.Ct. 296, 112 L.Ed.2d 250 (1990). The court will discuss each prong of this two-part test seriatim.

A. Claim Interpretation

At issue in this case is the language of the fourth element of claim 17. This element provides for "(4) a pair of signal isolation shields spaced apart a predetermined amount and defining opposite sides of said isolation area, each said shield extending perpendicularly at least above a component mounting surface of said circuit board." See Defendants' Exhibit CC at 014 (emphasis added). To ascertain the meaning of a patent claim, the court must begin with the language of the claim itself. SmithKline...