Joy Technologies, Inc. v. Quigg

• Decision Date: 12 March 1990
• Docket Number: Civ. A. No. 88-3656-OG.
• Citation: 732 F. Supp. 227
• Parties: JOY TECHNOLOGIES, INC., Plaintiff, v. Donald J. QUIGG, Defendant.
• Court: U.S. District Court — District of Columbia

732 F. Supp. 227

JOY TECHNOLOGIES, INC., Plaintiff, v. Donald J. QUIGG, Defendant.

Civ. A. No. 88-3656-OG.

United States District Court, District of Columbia.

March 12, 1990.

Raymond G. Hasley, Michael Kushnick, Rose, Schmidt, Hasley & DiSalle, Pittsburgh, Pa., for plaintiff.

Lee Barrett, Nancy Slutter, Arlington, Va., for Com'r of Patents and Trademarks.

MEMORANDUM

BENNETT, Senior Circuit Judge.^*

This patent case is before the court on the summary judgment motion of the defendant Commissioner of Patents and Trademarks. The motion is denied because genuine issues of material fact exist concerning the objective indicia of nonobviousness. It appears from the parties' submissions that the plaintiff has failed to raise a genuine issue as to many of the other facts essential to deciding the case as a matter of law. Therefore, pursuant to Fed.R. Civ.P. 56(d), those facts shall be deemed established. They are identified in the Memorandum and are set forth in the order issued today.

I. Background

Joy Technologies, Inc. (Joy), is the assignee of U.S. Patent 4,042,864 (the '864 patent), which issued August 16, 1977, and named Melvin N. Norris as inventor. The patent includes 18 claims directed to an AC-DC traction drive control system for a mining machine, a mining machine embodying that system, and methods of operating such a machine.

On August 23, 1985, a business competitor of Joy's, National Mine Service Company (NMS), requested reexamination of the '864 patent by the Patent and Trademark Office (PTO). The PTO determined that substantial new questions of patentability existed and that the patent should be reexamined. The patent examiner rejected claims 1 to 4, 11, 12, 16, and 18 under 35 U.S.C. § 102 (1982) (lack of novelty) and section 103 (obviousness). Joy appealed to the Board of Patent Appeals and Interferences (Board). On October 31, 1988, the Board rendered its decision, reversing the section 102 rejection but affirming the section 103 rejection.

Joy filed this suit against the Commissioner of Patents and Trademarks (Commissioner) under 35 U.S.C. § 145 (1982), which creates a remedy by civil action for patentees and applicants dissatisfied with the decision of the Board. This court (Gasch, J., presiding) granted the Commissioner's partial summary judgment motion to dismiss Joy's claims relating to the PTO's exercise of discretion in initially granting the reexamination and the alleged unconstitutionality of reexamination proceedings, as well as to strike Joy's request for a jury trial. 12 USPQ2d 1112, 1989 WL 150027 (D.D.C.1989). Thereafter, the Commissioner filed the present motion for summary judgment that the invention of the '864 patent would have been obvious under section 103 and that the decision of the Board was correct.

II. The Standards for Summary Judgment

Rule 56(c) of the Federal Rules of Civil Procedure sets forth the standard for granting summary judgment. "The judgment sought shall be rendered forthwith 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." As the Supreme Court has stated, "summary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed `to secure the just, speedy and inexpensive determination of every action.'" Celotex Corp. v. Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 2555, 91 L.Ed.2d 265 (1986) (quoting Fed.R.Civ.P. 1).

Rule 56 further provides that "when a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so respond, summary judgment, if appropriate, shall be entered against the adverse party." Fed.R.Civ.P. 56(e). The Supreme Court stated in Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), "there is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (citations omitted). The nonmoving party must do more than merely raise some doubt as to the existence of a fact; the nonmoving party must present evidence sufficient to require submission of the issue to the trier of fact. Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1560, 7 USPQ2d 1548, 1550 (Fed.Cir.1988).

As the Federal Circuit has held, "with respect to whether there is a genuine issue, the court may not simply accept a party's statement that a fact is challenged. The party opposing the motion must point to an evidentiary conflict created on the record at least by a counter statement of a fact or facts set forth in detail in an affidavit by a knowledgeable affiant. Mere denials or conclusory statements are insufficient." Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835-36, 221 USPQ 561, 564 (Fed.Cir.1984). See also Russell v. Commissioner of Patents & Trademarks, 695 F.Supp. 572, 573, 8 USPQ2d 1452, 1453 (D.D.C.1988).

While the nonmovant must come forward with some evidence showing that there is a genuine issue of material fact, the established facts, as well as any inferences reasonably drawn from those facts, must be viewed in a light most favorable to the nonmovant. Barmag Barmer, 731 F.2d at 836, 221 USPQ at 564.

Finally, Rule 56(d) provides that if summary judgment is not rendered on the whole case and a trial is necessary, the court may make an order specifying the facts that appear without substantial controversy. Upon trial of the action, the facts so specified shall be deemed established. Fed.R.Civ.P. 56(d).

In this case, Joy has failed to show that there are genuine issues with respect to most of the facts of this case. The Commissioner's motion for summary judgment sets forth in great detail the material facts relevant to the obviousness question. The motion is well supported by the reexamination record. By contrast, Joy's opposition relies primarily on unsupported allegations of its attorneys and on conclusory denials and statements of its affiants. Thus, as to most of the facts of this case, Joy has failed to show there are triable issues. Nevertheless, it appears from the record and from the evidence Joy has submitted that there are genuine issues relating to the "secondary considerations" of nonobviousness. Therefore, summary judgment on the entire case is inappropriate.

Joy argued in its motion papers that summary judgment would deny its right under 35 U.S.C. § 145 to supplement the reexamination record with additional evidence. Joy also argues that this case involves a highly technical subject where explanatory testimony is necessary. The Federal Circuit has made it clear that summary judgment is appropriate in patent cases, as in any other case. Barmag Barmer, 731 F.2d at 835, 221 USPQ at 564. Moreover, Joy is not "deprived" of a trial where the Commissioner has submitted evidence supporting its position on the relevant issues, and Joy has failed to identify evidence sufficient to create a triable issue of material fact. See Avia Group, 853 F.2d at 1560-61, 7 USPQ2d at 1551. Joy has every right in this proceeding to supplement the reexamination record with additional evidence, whether at trial or in opposing a motion for summary judgment. Where it fails to provide evidence, including such supplemental evidence, so as to create a triable issue, summary judgment is appropriate.

III. The Patent at Issue

The '864 patent relates to an AC-DC traction drive control system for a coal mine shuttle car. Shuttle cars are used in coal mines to transfer the material being mined from the work area to an unloading area, where conveyor belts or cars transfer the material out of the mine. Because it is desirable to excavate only the coal seam, rather than the rock surrounding the coal seam, the shuttle car must often operate in a limited space. In addition, the coal mine is often an explosive environment, and legal restrictions limit the type of electrical circuitry that can be used on the shuttle car.

As described in the Joy patent, prior art shuttle cars are of two types, namely, the AC type and the DC type. AC type shuttle cars are powered by alternating current (AC) supplied by a trailing cable. They utilize AC motors for driving the wheels of the car. DC type shuttle cars utilize direct current (DC) supplied by a trailing cable to power DC drive motors. Each of the types of prior art shuttle cars has a number of advantages and disadvantages.

The shuttle car described in the Joy patent has a machine body and four steerable wheels. The wheels are separately driven by DC traction motors. Electrical power is supplied to the car by means of a trailing cable. The power supply is three phase alternating current (AC). The shuttle car includes conversion circuitry for converting the AC to DC in order to power the traction motors. The patent drawings and specification describe in detail the conversion circuitry; however, the circuitry is broadly claimed in the independent claims. Briefly, the incoming AC is applied to the primary windings of a transformer. The AC output from the secondary windings of the transformer is rectified to DC and applied to the traction motors.

The shuttle car described in the patent includes a control means which permits the transformer to be selectively activated in different winding configurations to provide different levels of output to the traction motors. The...