Haney v. Timesavers, Inc., Civ. No. 93-151-FR
| Decision Date | 19 October 1995 |
| Docket Number | Civ. No. 93-151-FR,93-703-FR and 94-804-FR.,92-270-FR |
| Citation | 900 F. Supp. 1378 |
| Parties | Donald E. HANEY, Plaintiff, v. TIMESAVERS, INC., et al., Defendants. |
| Court | U.S. District Court — District of Oregon |
David A. Fanning, Peter E. Heuser, M.H. Hartwell, Kolisch, Hartwell, Dickinson, McCormack & Heuser, Portland, OR, for Plaintiff.
James Campbell, Garth A. Winn, Klarquist, Sparkman, Campbell, Leigh & Whinston, Portland, OR, for Defendants.
The matters before the court are 1) Haney's motion for partial summary judgment concerning enforceability, invalidity under 35 U.S.C. § 112, and infringement of claim 14 (# 229); and 2) Timesavers' cross-motion for summary judgment on claim 14 of the '913 patent (# 239).
The plaintiff, Donald E. Haney, owns patent 5,081,794 (the '794 patent); patent 5,181,342 (the '342 patent); and patent 5,321,913 (the '913 patent) covering various orbital sanders. Haney has alleged in these consolidated actions that defendant Timesavers, Inc. (Timesavers) infringes his patents by making, using and selling sanders covered by claim 20 of the '794 patent, claims 2-6, 8-12, 14, 17-19, 21-24 and 26 of the '342 patent, and claims 3 and 14 of the '913 patent.
Haney contends that he is entitled to an order of summary judgment in his favor with respect to the affirmative defenses alleged by Timesavers that the '794 patent, the '342 patent, and the '913 patent are unenforceable because of inequitable conduct and laches.
Haney further contends that he is entitled to summary judgment in his favor with respect to the affirmative defenses alleged by Timesavers that the '913 patent is invalid because of enablement, overbreadth, indefiniteness, inoperability and concealment of the best mode.
Finally, Haney renews his motion for summary judgment that Timesavers infringes claim 14 of the '913 patent, which motion was denied by the Honorable Ancer L. Haggerty, United States District Court Judge on April 26, 1995.
Timesavers contends that it is entitled to summary judgment in its favor with respect to its affirmative defenses of enablement, overbreadth and indefiniteness to claim 14 of the '913 patent.
Timesavers further contends that Haney is not entitled to summary judgment in its favor with respect to Timesavers' affirmative defenses of inequitable conduct and laches as to the '794 patent, the '342 patent, and the '913 patent, and with respect to Timesavers' affirmative defenses of inoperability and concealment of the best mode of claim 14 of the '913 patent on the grounds that there are genuine issues of material fact to be resolved.
Finally, Timesavers contends that summary judgment in favor of Haney with respect to infringement of claim 14 of the '913 patent is not appropriate because the court has heretofore found that there are genuine issues of fact precluding a grant of summary judgment.
Summary judgment is appropriate where "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The initial burden is on the moving party to point out the absence of any genuine issue of material fact.
Once the initial burden of the moving party is satisfied, the burden shifts to the opponent to demonstrate through the production of probative evidence that there remains an issue of material fact to be tried. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). The non-moving party must make a sufficient showing on all essential elements of the case with respect to which the non-moving party has the burden of proof. Id.
The decision faced by the court is essentially the same decision faced by a court on a motion for a directed verdict — that is, whether the evidence on the motion for summary judgment presents a sufficient disagreement to require submission to a jury, or whether it is so one-sided that one party must prevail as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986). If reasonable minds could differ as to the conclusions drawn from the evidence in the record, the motion for summary judgment should be denied. Id.
Timesavers has alleged in its pleadings that Haney's '794 patent, '342 patent, and '913 patent are unenforceable because of the inequitable conduct of Haney during the prosecution of those applications before the Patent and Trademark Office (Patent Office). See Defendants' Answer to the First Amended Complaint for Patent Infringement, Civil No. 94-804-FR, pp. 8-11.
Timesavers contends that Haney committed inequitable conduct in the prosecution of his third patent, the '913 patent, through the following actions:
Timesavers' Memorandum in Response to Haney's Motion for Partial Summary Judgment, pp. 14-15.
Timesavers contends that the court should allow its defense of inequitable conduct on the part of Haney to go forward because Haney did not submit to the Patent Office the opinions of the court from prior litigation concerning infringement of the '794 patent and the '342 patent; Haney did not disclose to the Patent Office the declarations of Timesavers' experts, Paul Petersen and Richard Seed, from the prior litigation who explained the materiality of the prior art to Haney's sander; and Haney buried the references to the Meyer patent and the Peyches patent among a group of ninety-one other, mostly far less relevant, references.
Haney contends that there is no evidence of inequitable conduct on his part as to the prosecution of the '794 patent and the '342 patent. Haney further contends that Timesavers' charges of inequitable conduct during the prosecution of the '913 patent are factually incorrect and/or inadequate as a matter of law to support such a claim in this case.
Haney argues that the Patent Office was notified by the Clerk of the United States District Court for the District of Oregon as to the pending litigation involving the '794 patent and the '342 patent, and that Haney disclosed all relevant prior art, including the Meyer patent and the Peyches patent, to the Patent Office during the prosecution of the '913 patent in accordance with the applicable regulations. Haney argues that there is no evidence of any intent on his part to mislead the Patent Office by withholding material information.
The duty of an applicant to disclose material information is set forth in 37 C.F.R. § 1.56(a), which states, in part:
Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.
In FMC Corp. v. Manitowoc Co., 835 F.2d 1411 (Fed.Cir.1987), the United States Court of Appeals for the Federal Circuit explained:
"Inequitable conduct" is not, or should not be, a magic incantation to be asserted against every patentee. Nor is that allegation established upon a mere showing that art or information having some degree of materiality was not disclosed. To be guilty of inequitable conduct, one must have intended to act inequitably. Thus, one who alleges a "failure to disclose" form of inequitable conduct must offer clear and convincing proof of: (1) prior art or information that is material; (2) knowledge chargeable to applicant of that prior art or information and of its materiality; and (3) failure of the applicant to disclose the art or information resulting from an intent to mislead the Patent and Trademark Office.
Id. at 1415 (footnote omitted).
Timesavers has not come forth with any evidence to support its claim of inequitable conduct on the part of Haney during the prosecution of the '794 patent and the '342 patent. The remaining issue is whether Haney is entitled to summary judgment in his favor with respect to its alleged inequitable conduct during the prosecution of the '913 patent.
The evidence in this case establishes that Haney disclosed to the Patent Office the Meyer and Peyches references relied upon by Timesavers. On April 26, 1993, the Patent Office received from Haney a form on which Haney identified the Peyches patents. List of Prior Art Cited by Applicant, Prosecution History of Patent 5,312,913 (attached as Exhibit 3 to Timesavers' Memorandum in Response to Haney's Motion for Partial Summary Judgment). This notice of prior art was in accordance with the regulations of the Patent Office. There is no evidence that Haney breached any duty of disclosure as to prior art during the prosecution of the '913 patent.
Timesavers further contends that Haney engaged in inequitable conduct by not informing the Patent Examiner about material information from the prior litigation involving the '794 patent and the '342 patent. The Patent Office was notified, however, by this court of the existence of this litigation pursuant to the requirements of 35 U.S.C. § 290.
The Patent Office knew of the prior litigation and the prior art. Timesavers' complaints as to how this information was conveyed to the Patent Office cannot form the basis for a claim of inequitable conduct. The court cannot infer an intent to deceive on the part of Haney from the manner in which the information was conveyed to the Patent Office when the information was, in fact, conveyed. The...
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