A.K. Stamping Co. v. Instrument Specialties Co., Civ.A.98-5576(JAG).

Citation106 F.Supp.2d 627
Decision Date11 April 2000
Docket NumberNo. Civ.A.98-5576(JAG).,Civ.A.98-5576(JAG).
PartiesA.K. STAMPING CO., INC., Plaintiff, v. INSTRUMENT SPECIALTIES CO., INC. and Indravadan Patel, Defendants.
CourtUnited States District Courts. 3th Circuit. United States District Courts. 3th Circuit. District of New Jersey

Carmine A. Iannaccone, James P. Flynn, Sanford J. Hodes, Epstein, Becker & Green, P.C., Newark, NJ, for plaintiff A.K. Stamping Co., Inc.

Richard L. Plotkin, Pitney, Hardin, Kipp & Szuch, Florham Park, NJ, Regis E. Slutter, George A. Hovanec, Jr., Harold R. Brown, Burns, Doane, Swecker & Mathis, L.L.P., Alexandria, VA, for defendant Instrument Specialties Co., Inc.

Ronald L. Davison, Starr, Gern, Davison & Rubin, P.C., Roseland, NJ, for defendant Indravadan Patel.

OPINION

GREENAWAY, District Judge.

This matter comes before the Court on plaintiff A.K. Stamping Co., Inc.'s ("AKS") motion seeking a preliminary injunction, and the cross-motion of defendant Instrument Specialties Co., Inc. ("ISC") seeking summary judgment. AKS argues that ISC is infringing upon one of its patents and a preliminary injunction is necessary to halt that alleged infringement. ISC, in contrast, argues that AKS's patent is invalid and, in any event, it has not been infringed. For the reasons discussed below, ISC's motion for summary judgment is granted in part and denied in part and AKS's motion for a preliminary injunction is granted.

BACKGROUND

In a Verified Amended Complaint, dated January 13, 1999, AKS alleged various breaches of federal patent law and state law by ISC.1 AKS is a New Jersey corporation that designs and manufactures, among other things, tools and components for use in the computer, electronics, telecommunications, and medical industries. ISC is a Delaware corporation that likewise designs and manufactures products for the computer industry.

The subject matter at issue is AKS's "Card Cage Shielding Contactor" (the "Shield"), a metal implement used to reduce the distortion and disruption to personal computers caused by unwanted electromagnetic ("EMI") and radio frequency ("RFI") emissions. See Diagram A, Fig. 2 (depicting Shield and computer chassis).2 A computer's chassis contains a "card cage portion" with openings to receive new circuit cards.3 A circuit card is installed by placing it within the chassis opening and securing the attached mounting bracket to the chassis. Though necessary to permit the installation of supplemental circuit cards, these openings increase the machine's susceptibility to unwanted emissions. With advancements in computer technology — particularly increases in computer speed — harmful emissions have increased as well.

The Shield was designed to minimize those negative effects, while continuing to permit easy installation of circuit cards. Previous card cage shields had proven problematic because they were insufficiently flexible and often snagged on the mounting bracket during installation and removal. In response to discussions with customers in the computer industry concerning their needs for improved shielding, AKS employees began developing the Shield.

During October 1995, AKS employee Leonard G. Meier met on several occasions with representatives of Sequent Computer ("Sequent") concerning Sequent's interest in a new "EMI gasket" that would better address the problems associated with emissions from card cage openings.4 At a meeting on October 19, 1995, Meier proposed and sketched a part to meet Sequent's needs (the "October sketch") (attached here as Diagram B). The October sketch depicted a form of shield with longitudinal bands and tabs at the bottom of the Shield. "Fingers" with nearly squared-off corner breaks are struck from the bands, remaining attached to the Shield only at the base of each finger, and running longitudinally along each band and latitudinally across the bottom.

Over the course of 1995, Meier also met with representatives of Apple Computer ("Apple") to discuss Apple's card cage shielding needs. Specifically, Apple sought a highly compressible card cage shield that would minimize the potential for snagging during insertion and removal of card cage mounting brackets.

Following Meier's discussions with AKS's customers, he and James H. Bostrom of AKS discussed the design problems and concluded that altering the orientation and shape of the contact fingers would eliminate certain snagging difficulties and enhance protection from emissions. Together with Mark Andrews, Meier and Bostrom refined the idea. On November 28, 1995, Andrews completed a technical computer drawing of the product that had been discussed with Apple (the "November drawing") (attached here as Diagram C).

In January 1996, AKS completed the invention and began marketing the Shield to IBM and certain other customers. AKS continued to develop proper tooling to manufacture the Shield, and in April 1997, AKS commenced broad marketing of the Shield. On December 3, 1996, AKS filed an application for a patent on the Shield with the United States Patent and Trademark Office (the "PTO").

The alleged infringing item is ISC's Backplane Shielding, ISC product number 9510 (the "Backplane"), designed to be placed between the computer chassis and the circuit card openings to protect against EMI/RFI emissions. AKS contends that it bears all of the novel features of the Shield and infringes claims 1-4 of the '632 patent.

Prior to development of the Shield, ISC had been involved in the computer tooling business and had marketed two computer shielding products designed to reduce harmful emissions. Neither of those earlier products bore the traits of the Backplane of which AKS complains. In October 1996, in response to a customer request, ISC began developing the Backplane. Production and sales of the Backplane commenced in March 1997. AKS learned that ISC was marketing the Backplane at some point during the Summer of 1998. In August 1998, counsel for AKS notified ISC's president that the Backplane fell within certain of the claims of the pending patent, and that AKS would consider the sale and marketing of the Backplane to be infringing once the patent issued.5

On January 5, 1999, the PTO issued patent number 5,856,632 on the Shield (the "'632 patent") to AKS. Within days, AKS filed the amended complaint, and now has filed a motion seeking a preliminary injunction enjoining ISC from infringing the '632 patent. In addition to opposing that motion, ISC has filed a cross-motion for summary judgment.

DISCUSSION
I. ISC's Motion For Summary Judgment

ISC argues that it is entitled to summary judgment on AKS's patent infringement claims because the '632 patent is invalid, unenforceable and, in any event, is not infringed by the Backplane. ISC also contends that it is entitled to summary judgment on AKS's unfair competition and tortious interference claims. Procedurally, this Court shall address ISC's summary judgment arguments before resolving AKS's motion seeking a preliminary injunction.

Summary judgment is appropriate under Fed.R.Civ.P. 56(c) when the moving party demonstrates that there is no genuine issue of material fact and the evidence establishes the moving party's entitlement to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Orson, Inc. v. Miramax Film Corp., 79 F.3d 1358, 1366 (3d Cir.1996). In making this determination, the Court must draw all reasonable inferences in favor of the non-movant. See Hullett v. Towers, Perrin, Forster & Crosby, Inc., 38 F.3d 107, 111 (3d Cir.1994); National State Bank v. Federal Reserve Bank of New York, 979 F.2d 1579, 1581 (3d Cir.1992).

Once the moving party has satisfied its initial burden, the party opposing the motion must establish that a genuine issue as to a material fact exists. See Jersey Cent. Power & Light Co. v. Lacey Township, 772 F.2d 1103, 1109 (3d Cir.1985). The party opposing the motion for summary judgment cannot rest on mere allegations and instead must present actual evidence that creates a genuine issue as to a material fact for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Siegel Transfer, Inc. v. Carrier Express, Inc., 54 F.3d 1125, 1130-31 (3d Cir.1995). "[U]nsupported allegations in [a] memorandum and pleadings are insufficient to repel summary judgment." Schoch v. First Fidelity Bancorporation, 912 F.2d 654, 657 (3d Cir. 1990); see also Fed.R.Civ.P. 56(e) (requiring non-moving party to "set forth specific facts showing that there is a genuine issue for trial"). "There can be `no genuine issue as to any material fact' where the nonmoving party's proof is deficient in meeting an essential part of the applicable legal standard, since such failure renders all other facts immaterial." London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1537-38 (Fed.Cir.1991) (quoting Celotex, 477 U.S. at 323, 106 S.Ct. 2548). In determining whether there are any issues of material fact, the court must resolve all doubts as to the existence of a material fact against the moving party and draw all reasonable inferences — including on issues of credibility — in favor of the non-moving party. See Watts v. University of Delaware, 622 F.2d 47, 50 (3d Cir.1980).

A. Noninfringement6

An infringement analysis involves two steps. First, the Court construes the disputed claims in the '632 patent. Following that analysis — claim construction — the properly construed claims are compared to the allegedly infringing product. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claim construction is a question of law. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996). The second step, whether the accused method or product infringes the asserted claim "is a question of fact, to be submitted to a jury." Markman...

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