Mas-Hamilton Group v. LaGard, Inc.
| Decision Date | 05 March 1997 |
| Docket Number | No. CIV. A. 94-349.,CIV. A. 94-349. |
| Citation | 21 F.Supp.2d 700 |
| Parties | MAS-HAMILTON GROUP, Plaintiff, v. LaGARD, INC., Defendant. |
| Court | U.S. District Court — Eastern District of Kentucky |
Denise H. McClelland, Frost & Jacobs, Lexington, KY, David E. Schmit, Scott T. Piering, Rita Mirma, Frost & Jacobs, LLP, Cincinnati, OH, for Plaintiff.
Gregory P. Parsons, Stites & Harbison, Lexington, KY, Michael D. Harris, Guy Porter Smith, Christopher Darrow, Poms, Smith, Lande & Rose, Los Angeles, CA, for Defendant.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
This action was tried before the Court, beginning on February 4, 1997, and concluding on February 10, 1997. This matter is now before the Court for entry of Findings of Fact and Conclusions of Law. Having considered the evidence introduced at trial, the parties' Proposed Findings of Fact and Conclusions of Law and objections thereto, and the applicable law, the Court hereby makes the following Findings of Fact and Conclusions of Law.
1. Plaintiff, Mas-Hamilton Group ("Mas-Hamilton"), is a Kentucky corporation having its principal place of business in Lexington, Kentucky. The principal shareholders of Mas-Hamilton are J.D. Hamilton (President) and his father, Jimmy Hamilton (Chairman). Mas-Hamilton is in the business of designing, manufacturing and selling high security electronic locks and related products.
2. Defendant, LaGard, Inc. ("LaGard") is a California corporation having its principal place of business in Torrance, California. The company is owned primarily by Klaus ("Nick") Gartner (CEO and Chairman), and Peter Phillips (now a consultant to LaGard). Mr. Gartner is a citizen of Germany and Mr. Phillips is a citizen of Great Britain. The president of LaGard is Larry Cutter.
3. LaGard is the owner of U.S. Patent No. 5,307,656 entitled "High Security Electronic Dial Combination Lock" (the "'656 patent"), which issued on May 3, 1994. The patent names as inventors Mr. Gartner, Mr. Cutter and Mr. Phillips.1 Gartner, Phillips, and Cutter applied for the patent on December 17, 1990.
4. On August 4, 1994, LaGard charged Mas-Hamilton's electronic high security lock with infringement of the '656 patent. PX71. At that time, the only lock sold by Mas-Hamilton was the X-07 lock. The X-07 lock (PX 124) is the only product manufactured or sold by Mas-Hamilton considered by the Court in connection with the infringement charges in this action.
5. In response to that infringement charge, Mas-Hamilton initiated the present action on September 8, 1994, seeking a declaratory judgment that it did not infringe the '656 patent.2 After an unsuccessful attempt to dismiss the case on jurisdictional grounds, LaGard counterclaimed for infringement of the '656 patent on July 18, 1995.3 In reply to the counterclaim, Mas-Hamilton asserted that the '656 patent was invalid and not infringed.
6. A patent issued by the Patent Office is presumed to be valid as to each claim independently of the other claims. 35 U.S.C. § 282; Jones v. Hardy, 727 F.2d 1524, 1528 (Fed.Cir.1984). In order to rebut this presumption, an accused infringer must establish by clear and convincing evidence the invalidity of each claim asserted to be invalid. Blonder-Tongue Laboratories v. University of Illinois Foundation, 402 U.S. 313, 335, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971); Shelcore, Inc. v. Durham Industries, Inc., 745 F.2d 621, 625 (Fed.Cir.1984).
7. It is also presumed that a Government agency, such as the United States Patent and Trademark Office, has properly done its job in examining a patent. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed.Cir.1984).
8. LaGard's patent covers an electronic combination lock. While the lock is a good design, inventor Nick Gartner testified at trial that he did not think anything in the lock industry is breakthrough. (Gartner, Trial Transcript Vol. III, afternoon session, p. 70).
9. In mechanical combination locks that existed before electronic locks, rotating the combination dial rotates a series of tumbler wheels and a cam wheel. The dial's back and forth rotation aligns gates or notches on the tumbler wheels. When the user dials the combination properly, all the gates align, which allows a fence to drop into the gates. When the fence drops into the gates, it allows a lever to move toward the cam wheel. The other end of the lever mounts on a withdrawal bolt. When the lever moves toward the cam wheel, a nose at the end of the lever drops into a curved indentation on the cam wheel. Because the shape of the indentation conforms to the nose's shape, the cam wheel holds the lever as the cam wheel rotates. Continued rotation of the cam wheel pulls the lever to the left, which, in turn, withdraws the bolt to allow a safe door to open.
10. Mechanical parts in this type of lock regularly move against each other. For example, the fence and the lever slide along the outside of the tumbler wheels and the cam wheel as one dials the combination. Experts including thieves and spies can listen or feel (or with X-rays see) when the fence and gates line up. With this information, they could defeat the lock.
11. In prior art electronic combination locks, dial rotation generates electronic signals. The signals activate an electric device, such as a solenoid, to release the lever so that the lever can engage the cam wheel. As with mechanical locks, continued rotation of the cam wheel pulls the lever to withdraw the bolt.
12. The invention described and claimed in LaGard's '656 patent combines several important features, which include:
a. The cam wheel turns freely without the bolt-pulling lever contacting the cam wheel until the user enters the proper combination.
b. The lever is secured away from the cam wheel until the user enters the proper combination.
c. Upon entering the proper combination, an internal mechanism positively drives the lever toward the cam wheel.
d. The internal mechanism includes an electro-mechanical driver such as a linear or rotating solenoid.
e. To reduce power needs, that solenoid only causes part of the mechanism to engage the cam wheel. Continued manual rotation of the cam wheel instead of electrical force from the solenoid continues to drive the mechanism, which pulls the lever into the cam wheel.
13. Plaintiff Mas-Hamilton has challenged validity on the following grounds:
a. Incorrect inventorship.
b. Prior invention by another under 35 U.S.C. § 102(g).
c. Derivation under 35 U.S.C. § 102(f).
d. The invention was "on sale" more than one year prior to the date of the application for patent under 35 U.S.C. § 102(b).
e. The invention was in public use more than one year prior to the date of application for patent under 35 U.S.C. § 102(b).
f. Failure to meet the best mode requirement under 35 U.S.C. § 112.
g. Lack of enablement under 35 U.S.C. § 112.
h. Vague or indefinite claims under 35 U.S.C. § 112.
i. Anticipation/obviousness under 35 U.S.C. §§ 102 and 103.
14. A person is entitled to a patent unless he did not himself invent the subject matter sought to be patented. 35 U.S.C. § 102(f); New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 883 (Fed.Cir.1992). A patent applicant must also submit an oath "that he believes himself to be the original and first inventor of the ... machine .. for which he solicits a patent". 35 U.S.C. § 115; Glaxo, Inc. v. Novopharm, Ltd., 52 F.3d 1043, 1051 (Fed.Cir.1995).
15. The inclusion of fewer or more than the true inventors in a patent renders it void. Jamesbury Corp. v. United States, 207 Ct.Cl. 516, 518 F.2d 1384, 1395 (1975); Iowa State Univ. Research Foundation, Inc. v. Sperry Rand Corp., 444 F.2d 406, 408 (4th Cir.1971). Misjoinder of inventors thus renders the patent invalid under 35 U.S.C. § 102(f). O.M.S. Inc. v. Dormont Manufacturing, Co., 39 U.S.P.Q.2d 1151, 1154 (W.D.Pa.1996). Such a patent with inventorship defects is unenforceable until corrective steps are taken. Merry Mfg. Co. v. Burns Tool Co., 335 F.2d 239, 242 (5th Cir.1964).
16. A patent invalid for improper inventorship may be corrected by the Patent Office or a court:
Whenever through error a person is named in an issued patent as the inventor ... and such error arose without any deceptive intention on his part, the Commissioner [of Patents] may ... with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error. The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned, and the Commissioner shall issue a certificate accordingly.
35 U.S.C. § 256.
17. The parties disagree as to which side has the burden of proof on the issue of deceptive intent. Defendant contends that in order to invalidate a patent for misjoinder of inventors, Plaintiff must show deceptive intent by clear and convincing evidence. Plaintiff, however, contends that once a patent challenger shows that a co-inventor has been improperly joined in a patent, the burden shifts to the patent owner to prove that the inventors were improperly named without deceptive intent.
18. Mas-Hamilton asserts that the '656 patent is invalid for incorrect inventorship because it incorrectly named Larry Cutter as an inventor. Furthermore, the patent application incorrectly stated that Nick Gartner and Peter Phillips were American citizens.
19. The '656 patent incorrectly names Mr. Cutter as a joint inventor with Mr. Gartner and Mr. Phillips. Cutter's contribution to the lock...
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