Everpure, Inc. v. Cuno, Inc., Civ. No. N-88-170 (PCD).

Citation705 F. Supp. 725
Decision Date21 July 1988
Docket NumberCiv. No. N-88-170 (PCD).
CourtUnited States District Courts. 2nd Circuit. United States District Court (Connecticut)
PartiesEVERPURE, INC. v. CUNO, INC.

William Narwold, Cummings & Lockwood, Hartford, Conn., Frank Thienpont, Chicago, Ill., for plaintiff.

Stuart Rosen, Schatz & Schatz, Ribicoff & Kotkin, Hartford, Conn., John Cline, Steven Szczepanski, Willian, Brinks, Olds, Hofer, Gilson, Lione, Ltd., Chicago, Ill., for defendant.

RULING ON MOTION FOR PRELIMINARY INJUNCTION and MOTION FOR SUMMARY JUDGMENT

DORSEY, District Judge.

Plaintiff alleges infringement by defendant of its Patent No. 3,746,171 ('171).1 Pending are the following motions on which a hearing has been held and briefing has been completed: (a) plaintiff's motion for a preliminary injunction; and (b) defendant's motion for summary judgment and attorney fees pursuant to Fed.R.Civ.P. 11 and 35 U.S.C. § 285. A recitation of the undisputed facts is necessary for decision of both motions.

I. Facts

Plaintiff has been issued patent '171 for filtration equipment with an expiration of July 17, 1990. The patent describes a fixed head to which a replaceable filter cartridge is attached by a locking mechanism. The device is designed to be used with vending machines, commercial ice machines, and commercial coffee makers, all of which require highly purified water for product quality. Plaintiff manufacturers and sells both filtration units and replacement cartridge filters.2 It enjoys a significant market share partially because of the uniqueness of its filter's interconnection to its filtration head.

Plaintiff does not claim patent protection for the filtration function nor the filter cartridge itself, but rather for the filter cartridge and the head which are combined by means of an interlocking mechanism. That mechanism is created by the configuration of the neck of the filter cartridge, Exhibit 3B, which is inserted into, interconnects, and interlocks with the configuration of the filtration head. Exhibit 3A. Water is received through an inlet port in the head and passes into and through the cartridge, an escape port, an outlet line from the head, and then into the machine to which the filtration unit is attached. The head includes a manual valve which shuts off the water inlet. The valve control lever interlocks with a collar to prevent rotation of the cartridge and therefore connection until the valve is closed. The pressure within the filtration unit is diffused upon the disconnection of the cartridge.

The filter cartridge wears out, requiring periodic replacement during the much longer life span of the head. Replacing the cartridge requires no tools, eliminates the need for a remote water shut-off, is relatively simple and quick to accomplish, involves no spillage, and can be done without pressure in the waterline or the filtration unit as it is diffused before disconnection and the interlock prevents rotation of the collar until the water supply valve is closed.

Defendant also manufactures and sells water filters, Exhibit 5A, and replacement cartridges. Exhibit 5B. Its cartridges are designed to be used with its filtration head and in such form are not compatible with plaintiff's head. To broaden its access to the replacement cartridge market, defendant has manufactured an adapter, Exhibit 6A, which is designed to be attached to defendant's cartridge. The adapter duplicates the configuration of the neck of plaintiff's cartridge and thus permits one of defendant's cartridges to be inserted into and interlocked with one of plaintiff's heads. The adapter is not shown to have any useful purpose other than to permit defendant's cartridges to be used with plaintiff's filter head. Defendant markets its filters for such use at competitive prices, supplying the adapter without additional charge to owners of a head supplied by plaintiff.

II. Claims

Plaintiff alleges contributory infringement of claims 1, 4, 5 and 6, which describe the filter head, the filter, cartridge, and the clamping mechanism created by the interrelated configurations of its cartridge and head. Because the patent covers the filter head and cartridge in combination, the claim of infringement must pertain to the combination. Yet defendant does not manufacture nor sell a head comparable to plaintiff's, only the cartridge, providing the adapter to permit use of its cartridge with plaintiff's head. Thus, until defendant's cartridge is connected by its adapter to the head manufactured by plaintiff, there is no infringement. Defendant's alleged infringement occurs because it contributes to and/or induces the user to connect defendant's cartridge with plaintiff's head by use of the adapter. 35 U.S.C. § 271(b) and (c).3 Plaintiff seeks injunctive relief to preserve its patent and the attendant market monopoly.

Defendant claims: (1) Its sale of cartridges for use with its adapter constitutes a permissible repair and not an infringement; (2) plaintiff's unrestricted sale of its heads creates an implied license and defendant thus cannot be found to infringe; (3) plaintiff's claim constitutes misuse of its patent; (4) plaintiff is barred from enforcement of its patent by reason of its inequitable conduct before the United States Patent Office ("USPO"); and (5) plaintiff's patent is invalid by reason of sale and use prior to patent application.

III. Discussion

As a favorable ruling on defendant's motion would resolve the case, thus moot plaintiff's motion for a preliminary injunction, defendant's motion will be considered first.4

A. Summary Judgment Standard

Summary judgment may properly be granted where there is no dispute as to the material facts and it is clear that the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 2553-54, 91 L.Ed.2d 265 (1986). A court is not authorized to resolve factual questions on such a motion; rather, its task is to determine if any such factual questions exist. If such questions exist, and if they are material to the claims in issue, then the non-moving party has met its burden and summary judgment is improper. Palumbo v. Don-Joy Co., 762 F.2d 969, 973-74 (Fed.Cir.1985); Lemelson v. TRW, Inc., 760 F.2d 1254, 1260-61 (Fed.Cir.1985). "Further, as an additional precaution against denying a party its chance to prove a worthy case, any doubt as to the presence or absence of disputed issues of material fact must be resolved in favor of the presence of disputed issues, or in other words in favor of the party opposing summary judgment." Lemelson, 760 F.2d at 1261.

The onus placed upon a movant for summary judgment on a claim of inequitable conduct is especially heavy, as the claim necessarily involves determinations as to the intent of the party accused of practicing the fraud and the materiality of his alleged misrepresentations or omissions — issues which are typically not appropriate for resolution in a summary fashion. Kangaroos U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1573-74, 1577 (Fed.Cir.1985) (holding that evaluation of the intent element of inequitable conduct "is rarely enabled in summary proceedings"). Furthermore, in relation to a claim of infringement, summary judgment is proper where there is no genuine issue of material fact, the claims are properly construed and a finding of infringement is impossible. Porter v. Farmer's Supply Serv., Inc., 790 F.2d 882, 884 (Fed.Cir.1986).

1. Permissible Repair

Defendant first asserts its sales are permissible repair. 4 D. Chisum, Patents, § 16.033 (1987). This principle permits one lawfully using something covered by a patent to preserve and maintain the item in a usable, functional status by repairing the item, including replacing its component parts, without being accused of infringement. If the user has not directly infringed, there likewise can be no contributory infringement, Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 340-46, 81 S.Ct. 599, 601-05, 5 L.Ed.2d 592 (1981) ("Aro I"), nor induced infringement, Met-Coil Systems Corp. v. Corners Unlimited, Inc., 803 F.2d 684, 687 (Fed.Cir. 1986). See Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 497, 84 S.Ct. 1526, 1537, 12 L.Ed.2d 457 (1964).

Defendant asserts the principle is applicable here because patent '171 involves a filter head which has a longer lifespan, Deposition of Richard Suda, Vol. 2, ¶¶ 19-21 (30-40 year lifespan), than the filter cartridge, id. at Vol. 1 at 156; Vol. 2 at 22-23 (3-12 month lifespan), and which, therefore, contemplates that the cartridge will be periodically replaced. In effect, defendant argues that one who purchases a filter unit covered by plaintiff's combination patent has the right to replace the cartridge without being limited to doing so with a cartridge supplied by plaintiff, but rather has the right to use any replacement cartridge. From this argument, it would follow that defendant has the right to supply a replacement cartridge made by defendant, including an adapter for compatibility.

Plaintiff's filter head fixes the unit in place, channels the water into and out of the filter cartridge and, by its configuration, in conjunction with the configuration of the cartridge, receives and holds the cartridge in place with the functional features set forth above. The internal design and make-up of the cartridge performs the actual filtering. The patent covers the entire unit, or combination of elements, and the totality of the patent claims. Aro I, 365 U.S. at 344, 81 S.Ct. at 603. Neither the head nor the cartridge, apart from their configuration as designed to permit their interconnection, are claimed to be separately protected by the '171 patent. Rather, the patent covers the combination of the two elements. The stated purpose of the patent, the description of the components and their interrelationship, the asserted unique features and advantages of the invention's function, in addition to the claims, make...

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