Hamilton Products, Inc. v. O'Neill

• Decision Date: 15 June 2007
• Docket Number: No. 5:05-cv-455-Oc-10GRJ.,5:05-cv-455-Oc-10GRJ.
• Citation: 492 F.Supp.2d 1328
• Parties: HAMILTON PRODUCTS, INC., Plaintiff, v. Michael C. O'NEILL, d/b/a Design Solutions, Ltd., Defendant.
• Court: U.S. District Court — Middle District of Florida

492 F.Supp.2d 1328

HAMILTON PRODUCTS, INC., Plaintiff, v. Michael C. O'NEILL, d/b/a Design Solutions, Ltd., Defendant.

No. 5:05-cv-455-Oc-10GRJ.

United States District Court, M.D. Florida, Ocala Division.

June 15, 2007.

David G. Henry, Cox Smith Matthews Incorporated, Dallas, TX, Garry D. Adel, Blanchard, Merriam, Adel & Kirkland, Ocala, FL, for Plaintiff.

Michael C. O'Neill, d/b/a Design Solutions, Ltd., Kennesaw, GA, Pro se.

ORDER

HODGES, District Judge.

This action concerning United States Patent No. 6,834,621 B1 ("the '621 patent"), and related confidentiality and licensing agreements, is before the Court for consideration of the Plaintiffs Motion for Summary Judgment (Doc. 40), to which the pro se Defendant has responded (Does. 44 & 48). The Defendant holds the '621 patent, which in general terms describes a device designed to function as the equivalent of a seatbelt restraint for pets in automobiles; the '621 patent is titled, "Animal Restraint System and Universal Seat Buckle." The claims of the '621 patent at issue involve the purportedly universal seatbelt buckle that is an intrinsic part of the device.

In its Complaint, the Plaintiff has purported to state eight claims against the Defendant. In six of those claims the Plaintiff seeks declaratory relief, and in two it seeks damages for fraud and fraudulent misrepresentation. However, the Plaintiff has moved for summary judgment on only the first two claims in the Complaint and, accordingly, seeks to have this Court declare that the patent at issue is invalid (Count I) or, failing that, seeks to have this Court declare that the Plaintiff has not infringed upon that patent (Count II). Upon review of the case file and all relevant papers, and for the reasons that follow, the Plaintiff's motion for summary judgment is due to be granted because the '621 patent is invalid as indefinite and because the claimed invention was obvious. The patent being invalid, no infringement has occurred.

Background and Facts

a. The Parties

The Plaintiff, Hamilton Products, Inc. ("Hamilton"), a Michigan corporation with its principal place of business in Ocala, Florida, designs and manufactures pet related products, including collars and leashes.

The Defendant, Michael C. O'Neill ("O'Neill"), a Georgia resident, is the holder of the '621 patent. O'Neill's educational background includes a high school diploma, the completion of a three-year "apprentice all-around machinist program" at General Electric Company,¹ the completion of a few years of evening college courses studying business and economics at Suffolk University in Boston², and a certificate as a certified computer engineer from Microsoft.³ Other than positions in sales and marketing, O'Neill has served as a "quality control engineer"⁴ at General Electric and a "computer systems engineer"⁵ at another company.

In approximately August of 2001, O'Neill filed invention disclosure documents with the United States Patent And Trademark Office ("USPTO") concerning a product the concept of which would come to be the subject of the '621 patent.⁶ In September 2001, O'Neill approached Hamilton with that concept. After Hamilton signed a non-disclosure agreement, O'Neill provided Hamilton with a PowerPoint computer presentation that described an "automobile animal restraint" with a "universal buckle." O'Neill asserted in the presentation that the "Universal buckle is the result of the considering dimensions [sic] of all auto manufacturer's buckle designs." The presentation contained a drawing of the universal buckle, and instead of specifying the dimensions of the buckle, the terms "minimum width," "minimum length," and "maximum slot length and width" were inserted. In addition, the presentation contained a warning that O'Neill had "filed Invention Disclosure Document Statements with the USPTO."

After presenting the PowerPoint demonstration, O'Neill began discussions with Hamilton representatives and eventually provided them with dimensions to create the universal buckle portion of his product. O'Neill never provided Hamilton with a prototype buckle and the dimensions that were transmitted to Hamilton are not in the record before the Court. In any event, Hamilton attempted to verify that the universal buckle was, actually, universal, and immediately determined that the buckle was not compatible with every make or model of vehicle. The buckle especially was not compatible with vehicles made prior to the mid-1990s. When Hamilton contacted O'Neill to discuss the fit issues, O'Neill allegedly informed Hamilton that he was a designer and not an engineer, and that Hamilton needed to make the product work. However, it is undisputed that O'Neill stated to Hamilton that he did not believe that one buckle could fit both vehicles currently in production and those produced prior to the mid-1990s due to a significant industry-wide change in how seat-belt buckles were designed during that period. After discussions with O'Neill, Hamilton employees, who were not engineers but had some experience with manufacturing and machine-shop tools, engaged in a few weeks of "tinkering" until they were satisfied with the concept of a universal buckle.

In late 2001, Hamilton and O'Neill signed a licensing agreement for O'Neill's product conception. Shortly thereafter, Hamilton began producing a product similar in design to that in O'Neill's Power-Point presentation. The product actually sold by Hamilton contained two buckles, one with a long and narrow shape and intended for use with newer vehicles, and one with a shorter and wider shape, for use with vehicles produced prior to the mid-1990s.⁷ In 2002, the product sold by Hamilton received an award as the best new product of 2002 at a pet products trade show. After a few years, O'Neill cancelled the licensing agreement with Hamilton. O'Neill asserted that Hamilton had not honored the terms of the agreement, primarily by failing to pay royalties. Hamilton continued to sell its product for two more years. However, due to purported lagging sales and fit problems indicating a lack of true universality, Hamilton withdrew the product from the market.⁸

b. Procedural History

On November 11, 2005, Hamilton filed the Complaint, in which Hamilton purported to state eight claims against O'Neill.⁹ In Counts I through VI, Hamilton seeks declarations from the Court and in Counts VII and VIII, Hamilton seeks damages for fraud and false representations. In Count I, Hamilton seeks a declaration that the '621 patent is invalid. In Count II, Hamilton seeks a declaration that no product it has ever sold infringes upon the '621 patent. In Counts III through VI, Hamilton seeks declarations that the confidentiality and licensing agreements it signed were void and, if valid, that Hamilton did not breach those agreements. However, Hamilton has moved for summary judgment only on Counts I and II. Accordingly, despite the parties' extended discussions concerning improprieties, the alleged fraud, and breach of the various agreements, the Court will limit its analysis to the patent issues at hand.

c. Prosecution of the '621 Patent

United States Patent No. 6,834,621 B1 ("the '621 patent"), which was issued on December 28, 2004, is titled "Animal Restraint System and Universal Seat Buckle" and contains thirty-six claims. Specifically, in claims 1, 12, 19, 21, 25, 28 and 35 (all of the independent claims) O'Neill — who was represented by counsel during the patent prosecution — specifies dimensions of the tongue and slot portions of the purportedly universal seat buckle. In pertinent part, those claims read as follows:

1. An animal restraint system for securing an animal in a vehicle comprising: ... a buckle for coupling to an automotive seat belt keeper, the buckle being carried by the tether and disposed between the length adjustor and the second end, wherein the buckle comprises a tether restraint section through which the tether is inserted, and wherein the buckle further comprises a tongue section extending from the tether restraint section, the tongue section having a slot formed therein, the tongue section having a thickness of less than approximately 0.13", an overall width of less than approximately 0.8, and a front wall portion having a width of less than approximately 0.23" the slot having an overall width of greater than approximately 0.53" and a length of greater than approximately 0.99".

* * *

12. An animal restraint system for securing an animal in a vehicle comprising: ... a buckle for coupling to a automotive seat belt keeper, the buckle being coupled to the loop, wherein the buckle further comprises a tongue section extending from a tether restraint section of the buckle, the tongue section having a slot formed therein, the tongue section having a thickness of less than approximately 0.13", an overall width of less than approximately 0.8", and a front wall portion having a width of less than approximately 0.23" the slot having an overall width of greater than approximately 0.53" and a length of greater than approximately 0.99".

* * *

19. An animal restraint system for securing an animal in a vehicle comprising: ... a length adjuster having an opening through which a portion of the tether is inserted, the length adjuster forming a loop for restraining the buckle, wherein the tongue section having a thickness of less than approximately 0.13", an overall width of less than approximately 0.8", and a front wall portion having a width of less than approximately 0.23" the slot having an overall width of greater than approximately 0.53" and a length of greater than approximately 0.99".

* * * 21. A buckle being mateable with a plurality of vehicle restraint system keepers comprising: ... a tongue section extending from the tether restraint section, the tongue having a slot formed therein; the tongue having an overall width of less than approximately 0.8", a thickness of less than approximately 0.13", and a...