Kapusta v. Gale Corp., Civ. S-03-1232 LKK.
| Decision Date | 13 October 2006 |
| Docket Number | No. Civ. S-03-1232 LKK.,Civ. S-03-1232 LKK. |
| Citation | 457 F.Supp.2d 1051 |
| Parties | Joseph V. KAPUSTA, Plaintiff, v. GALE CORPORATION, Defendant. |
| Court | U.S. District Court — Eastern District of California |
Chris Gibson, Boutin Dentino Gibson Di Giusto Hodell, Inc., Sacramento, CA, David Aldrich, Saint Onge Steward Johnston and Reens, Stamford, CT, Gene Winter—Pro Hac Vice, Steven Simonis—Pro Hac Vice, St. Onge Steward Johnston & Reens, LLC, Stamford, CT, for Plaintiff.
Kathleen E. Finnerty, Greenberg Traurig, LLP, Sacramento, CA, for Defendant.
This case is on remand from the Federal Circuit, which vacated this court's previous Claim Construction Order. Pending before the court now are plaintiffs three motions for summary judgment and defendant's motion for summary judgment. First, plaintiff argues that it is entitled to summary judgment on the issue of infringement. Second, plaintiff contends that defendant should be precluded from arguing that plaintiffs patent is invalid because defendant will be unable to establish the level of ordinary skill in the art. Third, plaintiff argues that its patent cannot be invalidated on grounds of anticipation, because none of defendant's prior art references disclose each and every limitation of plaintiffs patent. Last, defendant claims that plaintiffs patent is invalid because he abandoned the application and that the patent is unenforceable because of inequitable conduct.
For the reasons set forth below, the motion for infringement is granted; the motion for no invalidity under § 103(a) is denied; the motion for no invalidity under § 102(b) is granted in part and denied in part; and the motion for summary judgment of patent invalidity and unenforceability is denied.
I. Facts
Plaintiff Joseph Kapusta has brought an action for patent infringement against defendant Gale Corporation. At issue are Kapusta's patent, U.S. Patent 6,043,663 (the "'663 patent"), and Gale's Pocket Toners 1, 2, and 6 (collectively, the "accused products"). The patented invention relates to devices that detect malfunctions in coaxial cables. The court previously issued a Claim Construction Order on August 4, 2004 construing the '663 patent and, specifically, the meaning of the phrase "hand-grip size case." The Federal Circuit vacated that order on November 15, 2005, and the matter is now before the court on remand. Kapusta v. Gale Coij>., No. 05-1091, 155 Fed.Appx. 518, 523 (Fed. Cir. Nov. 15, 2005).
Kapusta first moves for summary judgment with respect to infringement. The threshold and ultimately determinative issue with regard to this motion concerns the parties' Stipulation for Entry of Final Judgment of November 2, 2004, as that document dictates what facts remain in dispute. The parties submitted their stipulation after this court issued its Claim Construction Order construing the term "hand-grip size case." Paragraph six of the stipulation states that "[t]he parties agree that each claim element specified in claims 1, 2 and 3 of the '663 patent, other than the term `hand grip size case' described in paragraph 5 above, are present in the Gale Pocket Toner products." PL's Statement of Undisputed Fact ("SUF") 3. Gale does not dispute this statement to the extent that it was qualified and contingent upon this court's Claim Construction Order. However, it contends that the stipulation was voided once the Federal Circuit vacated that order.
There is no dispute that at least certain stipulations were made expressly contingent upon the non-reversal of this court's claim construction. For example, paragraph five of the stipulation states that:
The parties stipulate if the claims of the '663 patent are interpreted as specified in the claim construction order dated August 5, 2004, then the Gale Pocket Toner products ... do not infringe claims 1-3 of the '663 patent, because they do not fall within the scope of the Court's interpretation of the term "hand grip size case."
Likewise, paragraph seven states:
Because the parties hereby stipulate to judgment of non-infringement based on the Court's claim construction ruling, the remaining claims and issues in Kapusta summary judgment motion and in this action are moot and can be dismissed. If the United States Court of Appeals for the Federal Circuit reverses the Court's claim construction, then Gale may proceed with its defense of invalidity and unenforceability on remand.
Gale takes the position that paragraph six, like paragraphs five and seven, was also conditioned upon the continued operation of this court's Claim Construction Order. Because the Federal Circuit vacated that order on November 15, 2005, the court must now determine the nature of the stipulation.
The second major issue before the court pertains to expert reports. Kapusta contends that Gale will be unable to provide expert testimony regarding a critical elemerit in its defense that the patent is invalid. This court's Status (Pretrial Scheduling) Conference order from March 20, 2006 instructed that "the written report specified in Fed.R.Civ.P. 26A2B shall be filed not later than thirty (30) days [after the deadline for expert designation]." Order at 2. Thus, in this case, expert reports were due no later than May 19, 2006. PL's SUF 2. However, an expert witness for defendant, Mr. Robert Gale, failed to provide plaintiff with an expert report. PL's SUF 3. The parties disagree as to whether Mr. Gale was required to submit such a report under Rule 26.
Moreover, the parties dispute whether Mr. Gale was the only technical expert identified by defendant to testify. Def.'s SUF 1. Defendant notes that it previously identified Mark Scheitrum as one of its technical experts and mailed Mr. Scheitrum's expert report to plaintiff on April 23, 2004. Finnerty Decl. in Support of Def.'s Opp'n to PL's Mot. for Summ. J. ("Finnerty Decl."), Exhs. A, B. Mr. Scheitrum's report stated: "The electrical knowledge and skill required ... was known to the vast majority of electrical engineers and technicians for many years prior to the filing of the Kapusta Patent." Id, Rep. at 3-4. Kapusta disputes whether this statement is sufficient to establish the level of ordinary skill in the art, which Gale needs in order to prove invalidity under 35 U.S.C. § 103(a).
The third major issue before the court pertains to prior art. The parties dispute whether two prior art references anticipate Claims 1 and 3 of the '663 patent, thereby rendering them obvious and invalid. The first prior art reference is U.S. Patent No. 4,281,283 issued to Ross et al. ("Ross"). The parties dispute whether Ross discloses or illustrates "a test circuit comprising ... a first probe and a second probe, wherein said first probe and said second probe comprise a central conductor and surrounding shield, respectively, of a test circuit connector which is releasably connectable to a coaxial cable connector mounted on a first end of the coaxial cable to be tested." Def.'s SUF 6. They also dispute whether the Ross reference discloses "a device capable of generating a signal in response to a completion of a circuit involving said first test circuit, said test circuit and the coaxial cable to be tested," as well as whether a "third probe" or "fourth probe" is disclosed. Def.'s SUF 13.
The second prior art reference is U.S. Patent No. 4,553,085 issued to Canzano ("Canzano").1 Gale disputes whether Canzano discloses or illustrates "a test circuit comprising, in series, a battery, a device capable of generating a signal in response to completion of said circuit, a first probe and a second probe." Def.'s SUF 8. However, Gale disputes this fact only to the extent that it is determined that its accused products infringe any claim of the '663 patent. Id. Gale does not wish to dispute this fact to the extent that the accused products do not infringe the '663 patent. Put directly, Gale's wishes in this regard are irrelevant: the court will examine the evidence proffered, and if it suggests a dispute of material fact, then summary judgment must be denied.
The remaining prior art references discussed by the parties are undisputed. These include U.S. Patent No. 1,372,570 to Smith ("Smith"), U.S. Patent No. 2,459,351 to Weincord ("Weincord"), and U.S. Patent No. 2,413,484 to Berger ("Berger"). It is undisputed that Smith, Weincord, and Berger do not disclose the "test circuit comprising ..." limitation. Def.'s SUF 2, 4, 10. Furthermore, it is undisputed that these references do not disclose the "device capable of generating a signal ..." limitation. Def.'s SUF 11-12, 14. Nevertheless, Gale notes that these limitations would have been obvious to a skilled artisan. Def.'s SUF 2, 4,10-12,14.
Last, Gale moves for summary judgment on the grounds of abandonment and inequitable conduct. At issue is Kapusta's conduct during the pendency of his application. The facts here are mostly undisputed. On October 13, 1983, Kapusta filed an application for a patent with the Patent Office. Def.'s SUF 3. Soon thereafter, in 1983-84, Kapusta entered into an agreement with a company, Lemco, that would manufacture and distribute a product believed to be covered by the pending application, and began to receive royalty payments pursuant to this agreement. Def.'s SUF 4-5.
In September of 1984, Kapusta was diagnosed with kidney cancer, and his right kidney was removed as a result. Def.'s SUF 6. As a result of financial losses caused by the cost of his cancer treatment, Kapusta lost both his house and his business. Def.'s SUF 7. Thereafter, in June 1985, he moved in with family. Id.
On November 1, 1985, the Patent Office issued a final office action in the prosecution of the application. Def.'s SUF 8. In late 1985, Kapusta's patent attorney, Walter Spruegel, told Kapusta that there was a possibility that the application could go abandoned if further...
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