Izume Products v. Koninklijke Philips Electronics
| Decision Date | 27 April 2004 |
| Docket Number | No. CIV.02-156-SLR.,CIV.02-156-SLR. |
| Citation | 315 F.Supp.2d 589 |
| Parties | IZUMI PRODUCTS COMPANY, Plaintiff, v. KONINKLIJKE PHILIPS ELECTRONICS N.V., a Dutch corporation; Philips Electronics North America Corporation; a Delaware corporation; and Philips Domestic Appliances and Personal Care B.V., a Dutch corporation, Defendants. |
| Court | U.S. District Court — District of Delaware |
Jack B. Blumenfeld, Esquire, Rodger D. Smith, Esquire, Morris Nichols Arsht & Tunnell, Wilmington, DE, Harold A. Barza, Esquire, Bruce G. Chapman, Esquire, Quinn Emanuel Urquhart Oliver & Hedges, LLP, Los Angeles, CA, for Plaintiff/Counterclaim Defendant.
Richard L. Horwitz, Esquire, David E. Moore, Esquire, Potter Anderson & Corroon, LLP, Wilmington, DE, John M. DiMatteo, Esquire, Leslie M. Spencer, Esquire, Willkie Farr & Gallagher LLP, New York City, for Defendants/Counterclaim Plaintiffs.
Izumi Products Company ("Izumi") filed an action against Koninklijke Philips Electronics and Philips Electronics North America Corporation N.V. on March 1, 2002 for willful infringement of U.S. Patent No. 5,408,749 (the "'749 patent") related to electric razors. (D.I.1) On May 9, 2002, both defendants denied the allegations of infringement and asserted nine affirmative defenses including invalidity, noninfringement, estoppel, and laches. (D.I.5) Koninklijke Philips Electronics and Philips Electronics North America Corporation N.V. also filed a counterclaim for declaratory judgment of noninfringement, invalidity, and unenforceability due to inequitable conduct. (Id.) Izumi denied the allegations of the counterclaim on May 29, 2002. (D.I.7) Izumi filed an amended complaint on December 29, 2002 to add Philips Domestic Appliance and Personal Care B.V. as a defendant in its infringement suit against Koninklijke Philips Electronics and Philips Electronics North America Corporation N.V.. (D.I. 39 at ¶ 4) On January 15, 2003, Philips Domestic Appliance and Personal Care B.V. denied infringement of the '749 patent, asserted the same defenses as Koninklijke Philips Electronics and Philips Electronics North America Corporation N.V., and also filed a counterclaim for declaratory judgment of noninfringement, invalidity, and unenforceability due to inequitable conduct. (D.I.53) The court will refer to Koninklijke Philips Electronics, Philips Electronics North America Corporation N.V., and Philips Domestic Appliance and Personal Care B.V. collectively as "Philips."
Izumi is a corporation organized under the laws of Japan with its principal place of business in Matsumoto, Nagano-Ken, Japan. (D.I. 1 at ¶ 1) Koninklijke Philips Electronics N.V. is a corporation organized under the laws of the Netherlands with its principal place of business in the Amsterdam and with business operations in the State of Delaware. (Id. at ¶ 2) Philips Electronics North America Corporation is a corporation organized under the laws of the State of Delaware with its principal place of business in New York. (Id. at ¶ 3) Philips Domestic Appliances and Personal Care B.V. is organized under the laws of the Netherlands with its principal place of business in Amsterdam. (D.I. 39 at ¶ 4) The court has original federal question jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a).
On December 9, 2002, Koninklijke Philips Electronics and Philips Electronics North America Corporation N.V. moved to bifurcate the issues of liability and damages or, in the alternative, to stay discovery of damages. (D.I.34) The court denied this motion on February 27, 2003. (D.I.77) Presently before the court are the parties' numerous summary judgment motions relating to infringement, invalidity, laches, and lost profits.
The patent in suit generally relates to an electric rotary razor. ('749 patent, col. 1 at 11. 5) More particularly, the patent in suit covers an electric rotary razor that includes an inner cutter located under an outer cutter. (Id. at 11. 6, 12-13) As facial hair or "whiskers" penetrate through the outer cutter, they are cut by a shearing force between the inner and outer cutters, much like a strand of hair is severed when caught between the blades of a pair of scissors. (Id. at 11. 12-14) An example of an inner cutter is shown in the figure below.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
(Id., fig. 2) An example of an outer cutter is shown in the figure below.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
(Id., fig. 3)
The electric rotary razor invention recited in the '749 patent was designed to reduce the contact pressure of the inner cutter against the bottom surface of the outer cutter by decreasing the size of the inner cutter blade. (Id., col. 2 at 11. 19-24) It also was designed to prevent shaving debris and other substances from adhering to the blades of the inner cutter. (Id. at 11. 25-28) To accomplish these two design objectives, "the rear portion of the cutting edge surface (or the portion which faces a direction opposite to the rotational direction of the inner cutter) is cut out." (Id. at 11. 40-43) The court shall refer to this "cut out" on the inner cutter as "recessed inner cutter."
The application which eventually became the '749 patent was filed on December 7, 1993. The '749 patent granted on April 25, 1995 with three claims, all of which are in dispute in the litigation at bar. Claims 1 and 3 are independent claims, and claim 2 is dependent on claim 1. These claims recite:
1. An electric razor comprising:
at least one outer cutter with openings through which whiskers penetrate;
at least one inner cutter having a plurality of cutter blades, each one of said cutter blades having a cutting edge surface at an upper end thereof that slides on an inside surface of said outer cutter, said cutter blades being inclined in a direction of rotation of said inner cutter; and
a recess comprising an indentation formed immediately beneath said cutting edge surface and facing in a direction opposite from said direction of rotation of said inner cutter in each one of said plurality of cutter blades whereby said cutting edge surface is made thinner than a thickness of said cutter blade.
2. An electric razor according to claim 1, wherein said inner cutter further comprises a cutter disk with a through hole at a center thereof and a plurality of cutter arms extending from an outer edge of said cutter disk in a vertical direction relative to said cutter disk and said plurality of said cutter blades extend from said cutter arms.
3. An inner cutter used in an electric rotary razor comprising:
a cutter disk with a through hole at a center thereof;
a plurality of cutter arms extending from an outer edge of said cutter disk in a vertical direction relative to said cutter disk; a cutter blade extending from each one of said cutter arms and inclined in a rotational direction of said inner cutter, each one of said cutter blades being provided with a cutting edge surface at an end surface of said cutter blade and with a recess formed below said cutting edge surface, and wherein
said recess is formed on a rear surface of said cutter blade, said rear surface facing an opposite direction from the rotational direction of said inner cutter.
(Id., col. 7 at 11. 14-27; col. 8 at 11. 1-24)
Izumi manufactures electric rotary razors with recessed inner cutters according to the claims of the '749 patent for Remington. Remington, in turn, sells these razors in the United States under the Remington label. (D.I. 182 at 4)
Izumi alleges that 116 different electric rotary razors with common features infringe the '749 patent.1 (D.I. 217 at 1) Specifically, they have three outer cutters with slots through which whiskers penetrate and three inner cutters with several cutting blades. (D.I. 173 at 5) The accused infringing electric rotary razors also employ a cutter disk with a hole in it. Arms extend from the cutter disk in a vertical direction. (Id. at 6) Cutting blades extend from the arms and are inclined in the direction of rotation. (Id.)
The inner cutters used on the various accused infringing electric rotary razors contain a groove on the backside to reduce the cutting surface. The court shall refer to this groove on the inner cutter as a "grooved inner cutter" to distinguish it from the recessed inner cutter of the claimed invention. (D.I. 217 at 5) The Rota '93 was the first grooved inner cutter blade used by Philips. Over time, Philips introduced other grooved inner cutter blades identified as the Cirrus, Cleo, Apollo, Neptunus Luna, and Jupiter for use in its electric rotary razors. (Id.) For example, the 7885XL electric rotary razor uses the Apollo inner cutter blade whereas the 6709X electric rotary razor employs the Neptunus-Luna inner cutter blade. (Id.)
Philips Domestic Appliance and Personal Care B.V. manufactures the accused infringing electric rotary razors and ships them to Philips Electronics North America Corporation N.V.. (D.I. 173 at 4) Norelco Products Company, a subsidiary of Philips Electronics North America Corporation N.V., sells the accused infringing electric rotary razors in the United States. (Id.)
A court shall grant summary judgment only 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 judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party bears the burden of proving that no genuine issue of material fact exists. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "Facts that could alter the outcome are `material,' and disputes...
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