Eaton Corp v. Parker-Hannifin Corp.
| Decision Date | 15 January 2003 |
| Docket Number | No. CIV.A.00-751-SLR.,CIV.A.00-751-SLR. |
| Citation | 243 F.Supp.2d 77 |
| Parties | EATON CORPORATION, Plaintiff, v. PARKER-HANNIFIN CORPORATION, Defendant. |
| Court | U.S. District Court — District of Delaware |
Richard D. Kirk, Morris, James, Hitchens & Williams LLP, Wilmington, DE, Ross & Hardies, Chicago, IL (Michael H. King, P.C., Kurt H Feuer, of counsel), Rader, Fishman & Grauer, PLLC, Bloomfield Hills, MI (Michael B. Stewart, John P Guenther, of counsel), for plaintiff.
Rudolf E. Hutz, Harold Pezzner, Esquire of Connolly, Bove, Lodge & Hutz, LLP, Wilmington, DE, Parker-Hannifin Corporation (James A. Baker, of counsel), for defendant.
On August 15, 2000, plaintiff Eaton Corporation filed this action against defendant Parker-Hannifin Corporation alleging willful infringement of U.S. Patent No. 5,226,682 ("the '682 patent"). (D.I.I) On January 22, 2001, defendant answered the complaint asserting non-infringement and invalidity of the '682 patent. (D.I.7) On August 7, 2001, plaintiff filed a first amended complaint adding allegations of willful infringement of U.S. Patent Nos., 5,553,895 ("the '895 patent") and 5,570,910 ("the '910 patent"). (D.I.16) On August 24, 2001, defendant answered the first amended complaint and again asserted non-infringement and invalidity arguments with respect to the '895 and '910 patents. (D.I.18)
The court has jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1338(a). Currently before the court are various motions for summary judgment. For the reasons that follow, the court will grant defendant's motion for partial summary judgment that claims 7-11 of the '682 patent are invalid (D.I.72); deny plaintiffs motion for partial summary judgment that defendant's alleged "1989 Ford Offer" is not prior art (D.I.75); grant plaintiffs motion for partial summary judgment that the patents in suit are valid with respect to defendant's alleged "Chiquita Coupling Design" (D.I.77); and deny plaintiffs motion for partial summary judgment of literal infringement of the patents in suit (D.I.79).
Plaintiff is an Ohio corporation and the assignee of the '682, '895 and '910 patents. Utilizing the technologies of these patents, plaintiff manufactures and sells releasable, push-in coupling assemblies suitable for use in extreme commercial environments, i.e., high pressure, vibration, contamination, etc. These couplings may be used to connect two members together in a releasable but stable fashion. Plaintiff produces and markets a line of coupling assemblies called the Type I, Type II and Type II + STC® couplings based on the inventions of '682, '895 and '910 patents respectively.
Defendant is also an Ohio corporation that manufactures and sells a diversified range of motion and control technologies and systems including fasteners and coupling assemblies. Defendant produces and markets the accused infringing devices, a line of coupling assemblies called the Generation I, Generation II and Generation III Perma-Push couplings.
The technology at issue in this case generally relates to coupling assemblies used to securely connect two members together. In particular, the coupling assemblies include two members; a male member and a female member. To connect the members, the male member is inserted into the female member which results in the two members becoming securely fastened together.
These couplings may be used to connect pipes, hoses, or other tube-shaped members together. Additionally, some embodiments may be used in high pressure, extreme temperature, high vibration, or other extreme environments. Industries such as the automotive, aerospace, or others that utilize hydraulic, pneumatic, or refrigerant systems are some examples of where this technology may be used.
The '682 patent entitled "Coupling Assembly" is directed to a coupling assembly utilizing an annular locking ring for connecting two members together. ('682 patent, col. 1 11. 17-19) The '682 patent issued to Marrison et al. on July 13, 1993 with 16 claims. The specific claims at issue in this case are claims 7-11. Claim 7 is an independent claim, claims 8, 10 and 11 depend from claim 7, and claim 9 depends from claim 8.
The '895 patent entitled "Coupling Assembly" is directed to a coupling assembly utilizing a split locking ring for connecting two members together. ('895 patent, col. 1 II. 15-23) The '895 patent may also be utilized to connect two members together and allow fluids to flow through them without leakage, particularly in high pressure environments. ('895 patent, col. 1 11. 4-10) The '895 patent issued to Karl et al. on September 10, 1996 with 45 claims. The claims at issue in this case are claims 1-3, 5-7, 27-29, 31-33, and 43-45. Claims 1, 27 and 43 are independent claims. Claims 2-3, 5-7, 28-29, 31-33, and 44-45 are dependent claims.
The '910 patent entitled "Coupling Assembly" is directed to a coupling assembly utilizing a locking ring retaining groove for connecting two members together. ('910 patent, col. 1 11. 5-10) The '910 patent issued Highlen on November 5, 1996 with 19 claims. Claims 1-19 are at issue in this case.
A court shall grant summary judgment only if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "Facts that could alter the outcome are `material,' and disputes are `genuine' if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct." Horowitz v. Fed. Kemper Life Assurance Co., 57 F.3d 300, 302 n. 1 (3d Cir.1995) (internal citations omitted).
If the moving party has demonstrated an absence of material fact, the nonmoving party then "must come forward with `specific facts showing that there is a genuine issue for trial'" Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (quoting Fed.R.Civ.P. 56(e)). The court will "view the underlying facts and all reasonable inferences therefrom in the light most favorable to the party opposing the motion." Pa. Coal Ass'n v. Babbitt, 63 F.3d 231, 236 (3d Cir.1995). The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment; there must be enough evidence to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
A. Defendant's Motion For Partial Summary Judgment That Claims 7-11 of the '682 Patent are Invalid
Defendant argues that claims 7-11 of the '682 patent are invalid for failure to comply with the best mode requirement of 35 U.S.C. § 112, 111. (D.I.72) This paragraph of § 112 states:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
"The purpose of the best mode requirement is to ensure that the public, in exchange for the rights given the inventor under the patent laws, obtains from the inventor a full disclosure of the preferred embodiment of the invention." Dana Corp. v. IPC Ltd. P'ship, 860 F.2d 415, 418 (Fed.Cir. 1988). The best mode requirement of § 112 "requires an inventor to disclose the best mode contemplated by him, as of the time he executes the application, of carrying out the invention." Bayer AG & Bayer Corp. v. Schein Pharms., Inc., 301 F.3d 1306, 1314 (Fed.Cir.2002) (citation omitted). "The existence of a best mode is a purely subjective matter depending upon what the inventor actually believed at the time the application was filed." Id. Because of the subjective nature of the best mode requirement, § 112 demands actual disclosure regardless of whether practicing that mode would be within the knowledge of one of ordinary skill in the art. Id.
In determining whether an inventor has disclosed the best mode, the Federal Circuit had adopted a two-part test. First, the fact-finder must determine whether, at the time of filing the application, the inventor possessed a best mode for practicing the invention. Id. at 1320. If the inventor did subjectively contemplate a best mode, the fact-finder must then determine whether the inventor's disclosure is adequate to enable one of ordinary skill in the art to practice the best mode of the invention. Id.
Turning to the facts in this case, claims 7-11 of the '682 patent relate to a second of three embodiments disclosed in the patent. In support of its invalidity argument, defendant first cites to the inventor, David Densel's, invention record. At pages 7-8 of the invention record, the inventor shows a diagram illustrating the male member interlocked with the female member. (D.I.74, Ex. 5) In the diagram, the inventor labels the angles of the shoulder of the male member and the chamfer of the female member. He then notes in the invention record:
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...analysis is a two step process in which the court first construes the claims as a matter of law. Eaton Corp. v. Parker-Hannifin Corp., 243 F.Supp.2d 77, 86 (D.Del.2003). The properly construed claims are then compared to the accused device to determine, as a question of fact, whether all of......