Hildebrand v. Steck Mfg. Co., Inc.
| Decision Date | 06 October 2005 |
| Docket Number | No. 02-WY-1125-AJ(OES).,02-WY-1125-AJ(OES). |
| Parties | David L. HILDEBRAND, Plaintiff, v. STECK MANUFACTURING COMPANY, INC., ATC Products Inc., Cornwell Quality Tools Company, Mac Tools, Matco Tools, Snap-on Tools Company, Tools USA Equipment Company, Defendants. |
| Court | U.S. District Court — District of Colorado |
David L. Hildebrand, Denver, CO, pro se.
Charles Franklin Shane, David Carr Greer, Bieser, Greer & Landis, LLP, Dayton, OH, Craig M.J. Allely, Jennifer H. Weddle, Holland & Hart, LLP, Denver CO, James J. Conlon, James J. Conlon & Associates, Chicago, IL, for Defendants.
ORDER DENYING CROSS MOTIONS FOR SUMMARY JUDGMENT
The above-entitled matter comes before the Court on plaintiff David L. Hildebrand's Supplemental Motion for Summary Judgment, as well as the Renewed and Supplemental Motion for Summary Judgement filed by the above-named defendants. After careful consideration of both motions, the materials filed therewith and in opposition thereto, the applicable law, and being otherwise fully advised in the premises, the Court FINDS and ORDERS as follows:
Factual and Procedural Background1
The issues in this case implicate U.S. Patent No. 5,737,981 (hereinafter the " '981 Patent") issued to plaintiff David L. Hildebrand on April 14, 1998 (hereinafter "plaintiff" or "Mr. Hildebrand"). Mr. Hildebrand invented the device in question, a tool called the "Screw Off." The "Screw Off" is a threaded socket-type tool capable of removing locking lug nuts that, for a number of reasons, have been rendered unremovable. While this device has been called "simple," see Defendant's Initial Brief in Support of Summary Judgment at 1, the seven years of litigation accompanying it has not. Shortly after filing a patent application with the United States Patent and Trademark Office (USPTO), Mr. Hildebrand learned that defendant Steck Manufacturing Company, Inc. (hereinafter "defendant") had begun manufacturing and selling a tool virtually identical to the "Screw Off," called the "Lug Off." On April 14, 1998, the '981 Patent, entitled "Removal Device for Threaded Connecting Devices," issued to Mr. Hildebrand.2
After the issuance of this patent, and indeed continuing after this patent infringement lawsuit was filed, defendant Steck Manufacturing continued to manufacture, distribute, and sell the "Lug Off" product. In addition, co-defendants Cornwell Quality Tools Company, Matco Tools, Snap-On Tools Company, and Tools USA and Equipment Company continued to resell the "Lug Off" product; defendant MAC Tools continued to sell the "Quick Off" product; and Snap-On Tools held in its inventory and continued to sell 400 or 500 of the "LSR500" product through its mobile distributors. Mr. Hildebrand has alleged that the "Lug Off," the "Quick Off," and the "LSR500" tools are so identical to his "Screw Off" that they infringe on no fewer than six claims of the '981 Patent: claims 1, 8, 9, 10, 12, and 14.
Following the issuance of the '981 Patent on April 14, 1998, the defendants conducted their own patent search and located Richard Whalen's U.S. Patent No. 1,127,836 (hereinafter "'836 Patent"). On the basis of the teachings in the '836 Patent and references cited therein, as well as teachings and citations not discussed in the patents disclosed to the USPTO during the application process of the '981 Patent, defendants contest the validity of the '981 Patent.
Defendants moved for summary judgment on each of the remaining claims in Mr. Hildebrand's Complaint on the grounds that the patent at issue was: (1) invalid by anticipation of prior art pursuant to 35 U.S.C. § 102(b); (2) invalid based on obviousness of prior art pursuant to 35 U.S.C. § 103(a); and (3) invalid based on a violation of the duty of candor pursuant to 37 C.F.R. § 1.56. On April 18, 2003, this Court entered an Order Denying in Part and Granting in Part Defendant's Motion for Summary Judgment, concluding, in pertinent part, that the motion for summary judgment.
Federal courts have original jurisdiction over claims arising under federal patent law. 28 U.S.C. § 1338(a). Venue lies in this district pursuant to 28 U.S.C. § 1400(b).
"Claims lacking merit may be dealt with through summary judgment" under Rule 56 of the Federal Rules of Civil Procedure. Swierkiewicz v. Sorema N.A., 534 U.S. 506, 514, 122 S.Ct. 992, 152 L.Ed.2d 1 (2002). The fact that the instant claim sounds in patent law does not alter this analysis. Freedman Seating Co. v. American Seating Co., 420 F.3d 1350, 1356 (Fed.Cir.2005). A district court should grant summary judgment "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); Nelson v. Geringer, 295 F.3d 1082, 1086 (10th Cir.2002). "An issue of material fact is genuine if a reasonable jury could return a verdict for the non-movant." Jenkins v. Wood, 81 F.3d 988, 990 (10th Cir.1996). That "genuine" issue of fact is deemed "material" if it "might effect the outcome of the suit under the governing law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Dunbar v. Jackson Hole Mountain Resort Corp., 392 F.3d 1145, 1147 (10th Cir.2004).
When applying the aforementioned standards, the Court must, with respect to each motion, "view the evidence and draw reasonable inferences therefrom in the light most favorable to the nonmoving party." Schutz v. Thorne, 415 F.3d 1128, 1132 (10th Cir.2005) (internal quotation omitted). Procedurally, the moving party can carry its initial burden by producing affirmative evidence that negates an essential element of the nonmovant's case, or by establishing that the nonmovant lacks the quantum of evidence needed to satisfy its burden of persuasion at trial. Trainor v Apollo Metal Specialities, Inc., 318 F.3d 976, 979 (10th Cir.2002).
Once this has occurred, the procedural burden shifts to the party opposing summary judgment, who must go beyond the pleadings and, through the marshaling of evidence, affirmatively establish a genuine issue on the merits of the case. Fed.R.Civ.P. 56(e). The nonmovant must do more than simply deny the veracity of everything offered — show more than a mere "metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Likewise, "[t]he mere existence of a scintilla of evidence in support of the nonmovant's position is insufficient" to create a genuine dispute of material fact. Herrick v. Garvey, 298 F.3d 1184, 1190 (10th Cir.2002). To avoid summary judgment, the nonmoving party must, in the words of the Rule, "set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). The nonmoving party's failure of proof "renders all other facts immaterial," creating no genuine issue of fact, thereby entitling the moving party to the summary judgment it sought. Celotex Corp. v. Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
While Mr. Hildebrand purports to move for "entry of an order granting summary judgment in his favor," his February 15, 2005 supporting brief is predominantly a response in opposition to the defendants' renewed and supplemented motion for summary judgment. See Plaintiff's Supplemental Motion for Summary Judgment, at 1, 2; Plaintiff's Brief in Support, at 46. In the Court's view, it is manifest that Mr. Hildebrand seeks an order denying defendants' motion for summary judgment, not an entry of summary judgment in his favor on any of these issues. See Plaintiff's Brief in Support, at 46 (); Plaintiff' Response to Defendant's Motion to Strike/Memorandum in Opposition, at 29 (). Accordingly, the Court proceeds under the assumption that Mr. Hildebrand contends that there exist genuine triable issues as to all of the arguments contained in defendants' renewed and supplemental motion for summary judgment. However, before the Court analyzes those arguments, it briefly addresses two components of Mr. Hildebrand's Supplemental Motion for Summary Judgment — specifically, two issues that did not, and do not, survive this Court's April 8, 2003 Order Denying in Part and Granting in Part Plaintiff's Motion for Partial Summary Judgment.3
On May 1, 2003, Mr. Hildebrand, through his Motion to Reconsider, sought an order vacating "that portion of [the Court's] order granting summary judgment in favor of Defendants on the issue of obviousness." After some needed clarification, this motion was properly treated as a motion to alter or amend judgment pursuant to Rule 59(e), and ultimately granted as to the Court's April 18, 2003 Order. What needs no clarification, however, is the fact that Mr. Hildebrand was not seeking alteration of this Court's April 8 ruling on Plaintiff's Motion for Partial Summary Judgment, wherein the Court denied plaintiff's motion for summary judgment as to the defendants'"public use" and "on sale" defenses under 35 U.S.C. § 102(b) and counterclaims of tortious interference and unfair competition.4 Today, the Court notes that...
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