Intra Corp. v. Hamar Laser Instruments, Inc.

• Decision Date: 17 June 1987
• Docket Number: No. 86-CV-2414-DT.,86-CV-2414-DT.
• Parties: INTRA CORPORATION and Eagle Technologies, Inc., Plaintiffs, v. HAMAR LASER INSTRUMENTS, INC., Defendant.
• Court: U.S. District Court — Western District of Michigan

662 F. Supp. 1420

INTRA CORPORATION and Eagle Technologies, Inc., Plaintiffs, v. HAMAR LASER INSTRUMENTS, INC., Defendant.

No. 86-CV-2414-DT.

United States District Court, E.D. Michigan, S.D.

June 17, 1987.

COPYRIGHT MATERIAL OMITTED

Alex Rhodes, Rhodes and Boller, Southfield, Mich., for plaintiffs.

Robert Powell, Dickinson, Wright, Moon, Van Dusen & Freeman, Detroit, Mich., for defendant.

MEMORANDUM OPINION AND ORDER

WOODS, District Judge.

Plaintiffs Intra Corporation and Eagle Technologies, Inc. (hereinafter collectively referred to as "Intra") seek a declaratory judgment that two patents issued to Martin R. Hamar, president of defendant Hamar Laser Instruments, Inc. ("Hamar"), are invalid, unenforceable, and not infringed by Intra's laser alignment system. Intra alleges that the subject matter of both patents would have been obvious at the time they were made to a person having ordinary skill in the art of machine alignment technology. Intra further alleges that Hamar engaged in inequitable conduct in the Patent Office, falsely marked unpatented equipment, and breached an express warranty by selling an alignment system that was unfit for its intended use. Hamar, on the other hand, claims that Intra willfully infringed both patents by disassembling its laser alignment system and using the information obtained to manufacture and sell infringing laser alignment systems.

The Court, having conducted a trial and having heard arguments by counsel, submits the following findings of fact and conclusions of law:

A. General Findings

1. Intra is a Michigan corporation with its principal place of business in Westland, Michigan.

2. Eagle is a Michigan corporation with its principal place of business in Westland, Michigan.

3. Hamar is a Connecticut corporation with its principal place of business in Wilton, Connecticut.

4. Intra has been in existence for approximately ten years.

5. The primary business activity of Intra is the design and manufacture of mechanical and electronic gauges and gauging systems for the automotive, aircraft, and defense industries.

6. Eagle was incorporated by the owners of Intra in May, 1985, for the purpose of designing, developing, and selling non-contact gauging systems.

7. Hamar has been in existence for approximately twenty years.

8. The exclusive business activity of Hamar has been the design, manufacture, and sale of laser alignment systems.

9. Martin R. Hamar, the president of Hamar, has had several patents issue, including: U.S. Patent No. 3,902,810; U.S. Patent No. 4,045,129; U.S. Patent No.

4,297,031; U.S. Patent No. 4,382,680; U.S. Patent No. 4,483,618; and U.S. Patent No. 4,566,202.

B. The Patents in Suit

10. Hamar is the owner of the two patents in suit, namely, U.S. Patent No. 4,566,202 (the '202 patent) and U.S. Patent No. 4,483,618 (the '618 patent).

11. The '202 patent covers a laser apparatus for projecting the axis of rotation of a rotating tool holder.

12. The '618 patent covers an apparatus and method for determining whether the axis of a laser beam is passing through a desired measurement point.

i. The '202 Patent

13. United States Patent Application Serial No. 588,624 was filed by Hamar on December 6, 1983, and issued as U.S. Patent No. 4,566,202 on January 28, 1986.

14. Martin R. Hamar conceived of the inventions claimed in the '202 patent during January of 1983.

15. Hamar acknowledged in the application that

Laser alignment systems have been developed which have many uses including the alignment of parts for assembling machines such as turbines. Currently systems of laser beams and targets are available to facilitate the alignment of parts along an axis as well as assessment and correction of pitch and yaw.... Despite the many very desireable sic features of the available laser or mechanical alignment devices or techniques, none have been able to efficiently and accurately enable true projection of an axis of rotation and/or quick accurate alignment of a work piece with an axis of rotation.

16. The application as filed included sixteen (16) apparatus claims and one (1) method claim.

17. An Information Disclosure Statement, filed with the application, revealed four patents—all of which had been issued to Martin R. Hamar: U.S. Patent No. 4,045,129; U.S. Patent No. 4,297,031; U.S. Patent No. 3,902,810; and U.S. Patent No. 4,382,680.

18. U.S. Patent No. 3,902,810 was the most relevant of the patents disclosed to the Patent Examiner. It showed the combination of a laser emitter and a rotably mounted electronic target, made up of four photocells. The target produces electrical output signals used to identify the location of points at which the laser beam strikes the target. The laser emitter and target aligns members along a nonrotating axis.

19. None of the four patents listed in the disclosure statement showed a laser adapted for mounting to a rotating member, or suggested the combination of a laser adapted to be amounted in a rotating member and a photocell target. There was no illustration of a photocell target in the application. The word "photocell" was not included in the application as originally filed. Moreover, none of the four disclosed patents related to the alignment of machine tools.

20. The application was classified in Class 33 of U.S. Patents and assigned to Primary Examiner Martin in Group Art Unit 246.

21. On February 8, 1984, Examiner Martin in his initial office action rejected all seventeen (17) claims. According to the Examiner:

2. Claims 1-16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Moller U.S. Patent No. 2,146,906 or Raiha U.S. Patent No. 4,438,567 in view of Eggenschwyler U.S. Patent No. 3,801,205. Moller or Raiha each discloses a projection device which is mounted in the chuck of a machine tool. The main difference between the subject matter sought to be patented and Miller or Raiha is the type of light. It would not be patentable to substitute for the light sources of Moller or Raiha, the common expedient of a laser as in Eggenschwyler, since such a substitution would be obvious to one having ordinary skill in this art. The manner of using recited in lines 17-22 of independent claim 1, and lines 9-13 of independent claim 9 cannot be relied upon to patentably distinguish the invention over prior art which shows the structure to be obvious. In regard to claims 4, 15, and 16, the selection of the type of laser clearly falls within the ordinary skill of a person working in the art; and besides produces nothing unobvious in the combination. Also, in regard to claims 5, 6, and 7 the selection of the type of power supply falls within the skill of an ordinary person working in this art. In regard to claim 17, the recited steps do not define anything unobvious over the prior art.

3. Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Griffin U.S. Patent No. 2,557,029. Griffin discloses an optical centering gauge of using anticipation the recited steps. The structure of the elements used in performing the method cannot be relied upon to patentably distinguish the method over Griffin.

Hamar's attorney did not contest the above assertions of the Examiner.

22. On May 2, 1985, Hamar's attorney and Martin Hamer conducted an interview with Examiner Martin in the U.S. Patent and Trademark Office. During the interview, Martin Hamer demonstrated the Hamar spindle laser apparatus. The Examiner's record of the interview indicates that an agreement was reached that "Claims which define the target `T 204' in combination with the laser would be more favorably received."

23. Following the interview, Hamer's attorney filed an amendment in which independent claims 1 and 9 were amended to add the element of a photocell target. Claim 17 was cancelled. Two target drawings from Hamar's earlier U.S. Patent No. 3,902,810 were added to more elaborately describe the Hamar T-204 target described in the original application. Minor amendments to the specifications also were entered to reference a photocell target and read-out meter. No additional prior art was added into the record. All of the amended claims were allowed.

ii. The '618 Patent

24. United States Patent Application Serial No. 381,078 was filed by Hamar on May 24, 1982, and issued as U.S. Patent No. 4,483,618 on November 24, 1984.

25. The patent application, as filed, contained 23 claims.

26. On March 14, 1983, Martin Hamer through his attorneys filed a prior art statement with the U.S. Patent and Trademark Office, disclosing three of Hamar's earlier patents: U.S. Patent No. 3,902,810; U.S. Patent No. 4,045,129; and U.S. Patent No. 4,294,031.

27. On February 29, 1984, the U.S. Patent and Trademark Office issued its first office action in Application Serial No. 381,078. Claims 19 and 20 were allowed as filed. Claims 10 and 16 were objected to as containing allowable subject matter but being dependent from a rejected base claim. Claims 21-23 were rejected under 35 U.S.C. § 102 as being anticipated by U.S. Patent No. 3,765,764 to Niss. Claims 1-9, 11-15, and 17-18 were rejected under 35 U.S.C. § 103 as being obvious over U.S. Patent No. 3,902,810 to Hamar, U.S. Patent No. 3,799,674 to Guillet, et al., U.S. Patent No. 3,765,764 to Niss, and U.S. Patent No. 3,824,020 to Pease. The Examiner cited U.S. Patent No. 3,723,013 to Stirland, et al., U.S. Patent No. 3,734,627 to Edwards, and U.S. Patent No. 4,105,339 to Wirtanen as showing relevant alignment and measurement systems. According to the Examiner:

It is known to dispose a detector relative to a position to be measured and direct a beam of light along a path to the detector, using the detector to determine the position of the detector relative to the light beam: this is shown by Hamar and Guillet et al. Using this to measure two or more points relative to each other, as in Niss, is obvious. It is notorious in the art that plane mirrors can be used to reflect light from one path to another,

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