Hay & Forage Indus. v. New Holland North America
| Decision Date | 04 September 1998 |
| Docket Number | No. 97-2150-JWL.,97-2150-JWL. |
| Citation | 25 F.Supp.2d 1180 |
| Parties | HAY & FORAGE INDUSTRIES, et al., Plaintiffs, v. NEW HOLLAND NORTH AMERICA, INC., Defendant. |
| Court | U.S. District Court — District of Kansas |
Thomas H. Van Hoozer, Warren N. Williams, John M. Collins, Stephen D. Timmons, Andrew G. Colombo, Hovey, Williams, Timmons & Collins, Kansas City, MO, for Litigant Hay & Forage Industries, plaintiff.
Jack T Bangert, Sherman, Taff & Bangert, P.C., Leawood, KS, Devon A. Rolf, Shook, Hardy & Bacon L.L.P., Kansas City, MO, Mark D. Katz, Sherman, Taff & Bangert, P.C., Kansas City, MO, Thomas J Macpeak, Robert V Sloan, Mark Boland, Steven M Gruskin, Sughrue, Mion, Zinn, Macpeak & Seas, PLLC, Washington, DC, for New Holland North America, Inc., defendant.
Devon A. Rolf, Shook, Hardy & Bacon L.L.P., Kansas City, MO, Thomas J Macpeak, Robert V Sloan, Mark Boland, Steven M Gruskin, Frank L Bernstein, Sughrue, Mion, Zinn, Macpeak & Seas, PLLC, Washington, DC, for New Holland North America, Inc., counter-claimant.
Plaintiffs allege that certain hay harvesting machines sold in the United States by defendant New Holland North America, Inc. ("New Holland") infringe upon U.S. Patent No. 5,272,859 ("'859 patent"), which is owned by plaintiff Hay and Forage Industries ("HFI"). The court held a Markman hearing on the matter on June 1, 1998, and subsequently issued an order construing the disputed claims of the '859 patent. See Hay & Forage Indus. v. New Holland North America, Inc., 25 F.Supp.2d 1170, (D.Kan. 1998). The matter is now before the court on four motions for partial summary judgment. Defendant seeks partial summary judgment of non-infringement as to claim 10 of the '859 patent (Doc. 115). Defendant also seeks partial summary judgment of invalidity for indefiniteness as to claim 10 (Doc. 117). Further, defendant seeks partial summary judgment of invalidity for violation of the best mode requirement (Doc. 119). Plaintiffs seek partial summary judgment dismissing defendant's defenses and counterclaims based on the '859 patent's alleged derivation from or co-inventorship by Mr. Marc Berlivet (Doc. 132).1 For the reasons set forth below, the court denies all four motions.
The following facts are undisputed. Both the plaintiffs and New Holland manufacture and sell in the United States hay harvesting machines known as mechanical drive, center pivot mower conditioners. Plaintiffs began selling their machines in 1992. New Holland entered the market in the fall of 1996. The plaintiffs' machine is manufactured and sold pursuant to the '859 patent.
Of primary importance in this case is a new feature the '859 patent added to the prior art of hay harvesting machines. This new feature was a "steering structure" interposed between the directional pulling mechanism (called the "tongue") and the cutting-power transfer mechanism (called the "junction box" or "gearbox") to transmit the swinging motion of the tongue to the junction box. Also relevant to the parties' dispute is a feature of the junction box disclosed in the '859 patent that allows for pivotal movement about an upright axis that is spaced horizontally from the axis upon which the mobile frame of the machine pivots about the tongue.
Claim 1 of the '859 patent is as follows:
[We claim,] [i]n a pull-type crop harvesting machine, the improvement comprising:
a mobile frame;
a pull-tongue pivotally coupled with the frame for horizontal adjusting movement about a first upright axis between a number of angular positions relative to the path of travel of the machine for varying the lateral position of the machine relative to a towing vehicle;
a harvesting header supported by the frame in a position for performing harvesting operations on a crop as the machine is towed across a field,
said header having driveable operating components associated therewith;
a mechanical drive line extending along and rotatably supported by the tongue for supplying driving power to said operating components in said angular positions of the tongue;
said box being pivotally mounted on the header for swinging movement about a second upright axis spaced horizontally from the first axis; and
steering structure connected between the junction box and the tongue for causing the junction box to swing responsively when the latter is pivoted about said first axis between its various angular positions.
(emphasis added). Claim 10 of the '859 patent is as follows:
In a pull type harvesting machine as claimed in [claims 1, 8, and 9],
said steering structure including telescoping linkage having a front pivotal connection with the tongue at a point which is at least approximately equidistant from said opposite ends of the telescopic (drive line) section [as claimed in claims 1, 8, and 9].
In the prior Markman proceeding, the court construed the steering structure clause of claim 1 and the entirety of claim 10. See Hay & Forage Indus., 25 F.Supp.2d 1170, 1176, 1178-80 The court's construction of claim 1 is not relevant to the pending motions. The court construed the "telescoping linkage" element of claim 10 to require a linkage having "overlapping sections, as if in overlapping cylindrical sections." Id. at 1178. The court construed the "front pivotal connection with the tongue at a point" element of claim 10 to require that the steering structure be "connected to the tongue at a spot which allows for pivotal movement." Id. at 1180. The court construed the "at least approximately equidistant" element of claim 10 to require a placement of the front pivotal connection "at least reasonably close to" the exact point on the tongue that is equidistant from the opposite ends of the telescoping drive line. Id. at 1180.
The following diagram, taken directly from the first page of the '859 patent, shows the preferred embodiment of the pertinent elements described in claims 1 and 10:
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
[T]he steering structure 138 comprises a tubular, telescoping linkage consisting of an inner section 140 and a concentrically disposed outer section 142. The inner tube 140 has at its forward end a ball and socket swivel connection 144 with a bracket 146 on the underside of the tongue 30. The opposite end of the inner tube 140 is slidingly received within the outer tube 142....
'859 patent.
Summary judgment is appropriate if the moving party demonstrates that there is "no genuine issue as to any material fact" and that it is "entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see also Transmatic, Inc. v. Gulton Indus., 53 F.3d 1270, 1274 (Fed.Cir.1995). In applying this standard, the court views the evidence and all reasonable inferences therefrom in the light most favorable to the nonmoving party. Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 670 (10th Cir.1998) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)). A fact is "material" if, under the applicable substantive law, it is "essential to the proper disposition of the claim." Id. (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)); Continental Plastic Containers v. Owens Brockway Plastic Prods., Inc., 141 F.3d 1073, 1076 (Fed.Cir.1998). An issue of fact is "genuine" if "there is sufficient evidence on each side so that a rational trier of fact could resolve the issue either way." Adler, 144 F.3d at 670 (citing Anderson, 477 U.S. at 248, 106 S.Ct. 2505); Continental Plastic Containers, 141 F.3d at 1076.
The moving party bears the initial burden of demonstrating an absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Adler, 144 F.3d at 670-71. In attempting to meet that standard, a movant that does not bear the ultimate burden of persuasion at trial need not negate the other party's claim; rather, the movant need simply point out to the court a lack of evidence for the other party on an essential element of that party's claim. Id. at 671 (citing Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)).
Once the movant has met this initial burden, the burden shifts to the nonmoving party to "set forth specific facts showing that there is a genuine issue for trial." Anderson, 477 U.S. at 256, 106 S.Ct. 2505; see Adler, 144 F.3d at 671 n. 1 (). The nonmoving party may not simply rest upon its pleadings to satisfy its burden. Anderson, 477 U.S. at 256, 106 S.Ct. 2505. Rather, the nonmoving party must "set forth specific facts that would be admissible in evidence in the event of trial from which a rational trier of fact could find for the nonmovant." Adler, 144 F.3d at 671. "To accomplish this, the facts must be identified by reference to affidavits, deposition transcripts, or specific exhibits incorporated therein." Id.
A party challenging a patent's validity has the burden to show invalidity by clear and convincing evidence. National Presto Indus. v. West Bend Co., 76 F.3d 1185, 1189 (Fed.Cir.1996). In deciding a motion for summary judgment on patent validity issues, the court must also consider this heightened standard. Id. (citing Anderson, 477 U.S. at 254, 106 S.Ct. 2505). Thus, if the court concludes that the patent challenger could not meet its burden of proving invalidity by clear and convincing evidence, summary judgment in favor of the patentee is...
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Hay & Forage Indus. v. New Holland North America
...but the court denied seven of the parties' eight motions for partial summary judgment. See Hay & Forage Indus. v. New Holland North America, Inc., 25 F.Supp.2d 1180 (D.Kan.1998) ("Hay & Forage II") (denying four motions for partial summary judgment); Hay & Forage Indus. v. New Holland North......
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Hay & Forage Indust. v. New Holland North America
... ... Patent No. 5,272,859 ("'859 patent"), which is owned by plaintiff Hay and Forage Industries ("HFI"). The court held a Markman hearing on the matter on June 1, 1998, and subsequently issued an order construing certain disputed claims of the '859 patent. See Hay & Forage Indus. v. New Holland North America, Inc., 25 F.Supp.2d 1170 (D.Kan. 1998). The parties filed summary judgment motions and cross motions, and the court denied summary judgment as to four of the motions, see Hay & Forage Indus. v. New Holland North America, Inc., 25 F.Supp.2d 1180 (D.Kan.1998), while ... ...