Intamin, Ltd. v. Magnetar Technologies Corp.
| Decision Date | 22 May 2009 |
| Docket Number | Case No. CV 04-0511 GAF (JWJx). |
| Parties | INTAMIN, LTD., Plaintiff, v. MAGNETAR TECHNOLOGIES CORP et al., Defendants. |
| Court | U.S. District Court — Central District of California |
John B. Sganga, David G. Jankowski and Christopher L. Ross of Knobbe, Martens, Olson & Bear, LLP, Irvine, CA, for Defendant Magnetar Technologies Corp. et al.
Ted S. Ward of Berke, Kent & Ward LLP, Los Angeles, CA, for Plaintiff Intamin, Ltd.
MEMORANDUM AND ORDER REGARDING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT
In 2004, Plaintiff Intamin, Ltd. filed this lawsuit alleging a braking system manufactured by Defendant Magnetar Technologies Corp. infringes Intamin's U.S. Patent Number 6,062,350 ("the '350 patent"), titled "Braking System for an Amusement Device," which describes a magnetic braking system used on amusement park rides. Magnetar moved for summary judgment of non-infringement; Judge Taylor, then assigned to the case, granted the motion and entered judgment for Magnetar. Magnetar appealed to the Federal Circuit which vacated a portion of the claim construction which it deemed to be inadequate and incomplete. Intamin, Ltd. v. Magnetar Technologies, Corp., 483 F.3d 1328 (Fed.Cir.2007). The matter was remanded to this Court which, after a thorough review of the decision and several status conferences with counsel, set a schedule for briefing and hearing on the validity of dependent claim 10, which is the only claim that Magnetar's system might infringe. The Court has now conducted the hearing, has read and considered the briefs, and concludes that summary judgment should be entered in favor of Magnetar.
The '350 patent describes a braking system, designed principally for use in a "drop tower" type ride, in which pairs of magnets of alternating polarities are attached to the passenger car and straddle a conducting rail that extends the length of the ride. The movement of the conducting rail through a magnetic field developed by the magnets creates an "eddy current" that brakes the fall of the car. Magnetar's braking system, used principally in roller coasters, works in reverse. It utilizes a conducting fin attached to the moving car and pairs of magnets attached to the track at various points along the ride through which the conducting fin passes. The resulting "eddy current" acts as a braking force on the moving roller coaster car.
Magnetar's braking system is described by dependent claim 10 in the '350 patent, but that claim is invalid because it omits an essential element of the independent claim on which it is based—a conducting rail configured for attachment to the tower (the fixed device part) and "adapted to extend the length of the fixed device part." As to the independent claim, the Magnetar device does not infringe it literally because it does not include a conducting rail adapted to extend the length of the ride. Likewise, it does not infringe under the doctrine of equivalents because the patent prosecution history reveals that a broadly worded patent that would have encompassed the Magnetar configuration was rewritten to narrow the claim to systems utilizing a conducting rail that extends the length of the ride. In addition, the '350 patent's specification contains a description of a braking system like that used by Magnetar but does not validly claim that system. For these reasons, which are discussed in greater detail below, Magnetar's motion for summary judgment is GRANTED.
Intamin, as assignee, allegedly owns the rights to the '350 patent, which discloses a magnetic braking system used in an amusement park ride that includes a fixed framework "preferably designed as dropping framework." (Jankowski Decl., Ex. 1, Abstract.) Intamin brought this suit against Magnetar, which manufactures and markets a competing magnetic braking system sold under various names including "Soft Stop Magnetic Brakes" and "Soft Stop Magnetic Braking Systems," and are used primarily in roller coaster rides. Intamin contends Magnetar has directly infringed, contributorily infringed, and induced infringement of the patent through the sale of its system to amusement park owners and operators. Suit was filed on April 30, 2004.
In response, Magnetar denied liability for infringement, and asserted various affirmative defenses including invalidity due to obviousness, lack of novelty, Intamin's failure to comply with the requirements of 35 U.S.C. § 112, and Intamin's engaging in bad faith conduct in its dealings with the United States Patent & Trademark Office ("PTO"). Magnetar also asserted counterclaims against Intamin seeking declaratory relief of non-infringement, invalidity, and unenforceability due to inequitable conduct. On the latter point, Magnetar based its defense on a 1992 article published by named inventor Peter Rosner that allegedly describes the braking system disclosed in the '350 patent. Since the article was written more than one year prior to the filing of the patent application, Magnetar alleges that it constituted "prior art" that should have been, but was not, included in the applicant's prior art submissions. Because this prior art allegedly bears on the patentability of Intamin's magnetic braking system, Magnetar claimed that Intamin perpetrated a fraud on the patent office. The answer and counterclaim was filed on June 15, 2004. (Docket No. 7.)
After a relatively brief period of discovery, Magnetar in December 2004 filed a motion for summary judgment of non-infringement of Claim 1 of the '350 patent. The motion, which incorporated arguments pertaining to claim construction of three terms within the patent, asserted that three elements of the single independent claim in the patent are not present in the allegedly infringing device: (1) an "intermediary" between adjacent magnet elements; (2) a metal fin or similar conducting element configured for "attachment to the fixed part" of the ride; and (3) a conducting element that "extends the length" of the fixed part of the ride. Because, according to Magnetar, none of its braking system include these elements, they do not infringe the patent. Magnetar presented evidence that its system placed the conducting fin, which did not extend the length of the fixed part, on the moving portion of the ride (e.g., a roller coaster car) and installed the magnets to the fixed portion of the ride at locations where braking was required. Magnetar also demonstrated that it did not employ a non-magnetic intermediary between its magnets, but rather placed the magnets directly in contact with each other in a Halbach array. Through these arguments, Magnetar sought to demonstrate the absence of essential limitations in its systems, either literally or through the doctrine of equivalents. Moreover, since all of the remaining claims were dependent on Claim 1, Magnetar contended that it could not have infringed on any of the dependent claims. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n. 9 (Fed.Cir. 1989). Magnetar also sought Rule 11 sanctions because it contended that the lawsuit was brought for an improper purpose—to punish Magnetar because Edward Pribonic, who later became Magnetar's president, testified against Intamin in a personal injury case. In that lawsuit, brought by a plaintiff who was injured when he was ejected from an amusement park ride, Pribonic opined that the plaintiff's injuries resulted from defects in the Intamin design that would allow a passenger to be ejected from the ride.
Intamin opposed the motion for summary judgment on multiple grounds. With respect to the "intermediary" element, Intamin argued that an adhesive or a magnet, both used by Magnetar, could constitute an "intermediary" within the meaning of Claim 1 of the '350 patent. Indeed, with respect to the use of a magnet, Intamin noted that dependent Claim 2 reads, "the braking device of claim 1 wherein said intermediary is non-magnetic." (Jankowski Decl., Ex. 1 at 13.) Intamin argued that Magnetar's proposed construction would nullify the language of Claim 2. Moreover, Intamin argued that the intermediary could be a magnet because they do not provide the "main braking force."
Regarding the attachment of the conducting device to the "fixed part," Intamin argued that that embodiment of its invention was claimed in dependent Claim 10, which expressly disclosed the device in Claim 1 but "wherein said energizing portion is configured for attachment to said fixed device part, and said conductive portion is configured for attachment to said movable device part." (Jankowski Decl., Ex. 1 at 14.) Finally, Intamin asserted that the "extend the length" argument fails because, under standard rules of claim construction, the omission of words like "entire" or "whole" before the word length (e.g., extend the whole/entire length of the fixed device part) eliminates the contention that "extend the length" meant the entire length of the fixed device part.
In late January 2005, Judge Taylor issued an order granting Magnetar's motion for summary judgment and its Rule 11 motion for sanctions. (01/24/05 Order (Docket No. 60).)
Judge Taylor concluded that Magnetar was entitled to summary judgment because elements of Claim 1 of the '350 patent were missing from the allegedly infringing system. A summary of his conclusions is set forth in the table below. In short, he concluded that the "intermediary" could not be magnetic and had to be something other than air or adhesive, noting that to conclude otherwise would render the language meaningless, and further noting that the specification seemed to expressly contemplate a non-magnetic material between adjacent pairs of magnets. He concluded that the claim contemplated that the...
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