Kenall Mfg. Co. v. Genlyte Thomas Group LLC

• Decision Date: 20 July 2006
• Docket Number: No. 05 C 1138.,05 C 1138.
• Citation: 439 F.Supp.2d 854
• Parties: KENALL MANUFACTURING COMPANY, Plaintiff/Counter-Defendant, v. GENLYTE THOMAS GROUP LLC Defendant/Counter-Plaintiff.
• Court: U.S. District Court — Northern District of Illinois

439 F.Supp.2d 854

KENALL MANUFACTURING COMPANY, Plaintiff/Counter-Defendant, v. GENLYTE THOMAS GROUP LLC Defendant/Counter-Plaintiff.

No. 05 C 1138.

United States District Court, N.D. Illinois, Eastern Division.

July 20, 2006.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Peter N. Jansson, Matthew M. Fannin, Jansson, Shupe, Munger & Antaramian, Ltd., Racine, WI, for Plaintiff.

James E Milliman, James R. Higgins, Jr., Robert J. Theuerkauf, Middleton Reutlinger, Louisville, KY, David M. Frischkorn, Marcus Jay Thymian, S. Richard Carden, McDonnell, Boehnen, Hulbert & Berghoff, Ltd., Chicago, IL, for Defendant.

MEMORANDUM OPINION AND ORDER

CASTILLO, District Judge.

The only thing that the multitude of summary judgment motions and expert reports filed in this hotly-disputed patent case make clear is that multiple issues of material fact remain to be determined. Instead of moving this case toward a timely resolution, the parties are driving up the costs of litigation with superfluous briefing that has repeatedly failed to abide by this Court's local rules. After wading through the wasted sea of paper filed in support of each of the parties' motions, all four motions are hereby denied for the reasons contained herein. (R. 56,¹ Genlyte Mot. Summ. J.; R. 62, Kenall Mot. Summ. J.; R. 83, Invalidity Mot.; R. 92, Mot. to Strike.)

PROCEDURAL HISTORY

On February 25, 2005, Kenall Manufacturing Company ("Kenall") filed suit against Genlyte Thomas Group, LLC ("Genlyte") seeking a declaratory judgment that Kenall's products do not infringe upon Genlyte's Patent Number 5,038,254 ("the '254 Patent"). (R. 1, Compl.) Genlyte counterclaimed that Kenall directly infringed on the '254 Patent in violation of 35 U.S.C. § 271(a): specifically, that Kenall's MedMaster MPC22 and MPC24 light fixtures contain each and every element and limitation of at least claim 1 of the '254 Patent. (R. 8, Answer & Countercl.)

On February 2, 2006, after briefing by the parties, this Court issued a ruling construing the disputed claim terms in the '254 Patent in accordance with Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995). See Kenall Mfg. Co. v. Genlyte Thomas Group LLC, 413 F.Supp.2d 937 (N.D.Ill.2006). The parties disputed the meaning of the two independent claims of the '254 Patent—claims 1 and 3—which state, in relevant part:

A medical lighting system comprising: a body; means for ceiling-mounting said body; a first light fixture within said body oriented to direct light downwardly to a selected reading area under said body; a second light fixture within said body oriented to direct light downwardly and outwardly to a vertical wall surface outwardly adjacent from said body whereby light is reflected back to a broad area under said body.

(R. 63, Kenall Mem. Supp. Summ. J., Ex. 1, '254 Patent at col.3, ll.37-48.) This Court held that: (1) "oriented to direct light downwardly" means "set or arranged to direct more light in a downward direction than in an upward or outward direction;" (2) "a vertical wall surface outwardly adjacent from said body" means "a vertical wall surface next to or near either end of said body;" and (3) "oriented to direct light downwardly and outwardly" means "set or arranged to direct more light in a downward and outward direction than in an upward direction." Kenall, 413 F.Supp.2d at 949. Incorporating these claim constructions, claims 1 and 3 of the '254 Patent read, in relevant part:

A medical lighting system comprising: a body; means for ceiling-mounting said body; a first light fixture within said body set or arranged to direct more light in a downward direction than in an upward or outward direction to a selected reading area under said body; a second light fixture within said body set or arranged to direct more light in a downward and outward direction than in an upward direction to a vertical wall surface next to or near either end of said body whereby light is reflected back to a broad area under said body.

After this Court issued its Markman opinion, the parties filed cross-motions for summary judgment, claiming that this Court's claim construction ruling definitively shows that Kenall's products infringe, or do not infringe, on the '254 Patent. (R. 56, Genlyte Mot. for Summ. J.; R. 62, Kenall Mot. for Summ. J.) Six weeks later, on May 22, 2006, Kenall filed a second motion for summary judgment arguing that the '254 Patent is indefinite and thus invalid as a matter of law. (R. 84, Mem. Supp. Invalidity Mot. at 1.) Genlyte responded with a motion to strike Kenall's invalidity motion. (R. 94, Mot. to Strike.)²

UNDISPUTED FACTS

Rather than submitting a Northern District of Illinois Local Rule 56.1 statement of facts, Kenall submitted an unorthodox "Proposed Findings of Fact and Conclusions of Law" along with its brief in support of its motion for summary judgment of non-infringement. (R. 64.) Genlyte did not object to the form of Kenall's statement of facts and responded to Kenall's proposed statement of facts as if it were a proper 56.1 statement. (R. 73, Genlyte Resp. to Kenall's Facts.) Like Genlyte, this Court will presume that the proposed findings of facts section of Kenall's "Proposed Findings of Fact and Conclusions of Law," are, in essence, Kenall's 56.1 statement of undisputed material facts.

This Court, however, cannot save Kenall from its failure to respond to Genlyte's Rule 56.1 statement of undisputed facts, which Genlyte filed in conjunction with its motion for partial summary judgment of infringement. (R. 56-2.) Rather than responding to Genlyte's statement of undisputed facts, Kenall merely "comments" that "Genlyte's proposed findings of fact fall short of providing enough data upon which this Court could possibly base a finding of infringement," and instructs this Court to disregard Genlyte's allegedly improper claim construction and light measurements. (R. 75, Kenall Resp. at 12.) This is an obvious violation of Local Rule 56.1(b), which mandates that a party opposing a motion for summary judgment file:

a concise response to the movant's statement that shall contain: (A) numbered paragraphs, each corresponding to and stating a concise summary of the paragraph to which it is directed, and (B) a response to each numbered paragraph in the moving party's statement, including, in the case of any disagreement, specific references to the affidavits, parts of the record, and other supporting materials relied upon.

L.R. 56.1(b)(3). Furthermore, "[a] material facts set forth in the statement required of the moving party will be deemed to be admitted unless controverted by the statement of the opposing party." Id. Because Kenall failed to file a 56.1(b)(3) statement disputing Genlyte's facts, this Court will deem the facts alleged in Genlyte's 56.1 statement admitted. See Hudson v. West Harvey/Dixmoor Sch. Dist. No. 147, 168 F.Supp.2d 851, 852 (N.D.Ill. 2001) (citing Jupiter Aluminum Corp. v. Home Ins. Co., 225 F.3d 868, 871 (7th Cir.2000) (upholding strict application of Local Rule 56.1)).

Fortunately for Kenall, Genlyte's 56.1 statement of facts does not state sufficient facts upon which this Court could grant summary judgment in Genlyte's favor. Rather, Genlyte's 56.1 statement contains many legal conclusions as to whether the accused Kenall products infringe on the '254 Patent and additional claim construction arguments. The Court will not deem these self-serving legal conclusions admitted as they fail to comply with Local Rule 56.1. Greer v. Bd. of Educ. of City of Chi., 267 F.3d 723, 727 (7th Cir.2001). This Court has parsed out the parties' conclusions of law from their allegations of fact, and finds the relevant undisputed facts to be as follows.

I. The Parties

Kenall is an Illinois corporation with offices in Gurnee, Illinois, and Genlyte is a limited liability company with its principal place of business in Louisville, Kentucky. (R. 73, Genlyte Resp. to Kenall Facts at ¶¶ 1-2.) The '254 Patent was filed with the United States Patent and Trademark Office ("USPTO") on December 18, 1990 and issued on August 6, 1991 in the names of inventors William C. Fabbri and Roy Crane. (R. 56, Genlyte Facts at ¶ 20.) By assignment, Genlyte became and is now the owner of the '254 Patent. (Id. at ¶ 22.) The term of the '254 Patent expires on December 18, 2010. (Id. at ¶ 24.)

II. MedMaster MPC24

Kenall manufactures the MedMaster MPC24 ("MPC24") and the MedMaster MPC22 ("MPC22") and sells them in the United States without authority from Genlyte. (Id. at ¶¶ 32-33.) The MPC24 and MPC22 are medical lighting systems for use in hospital patient rooms. (Id. at ¶ 34.) The MPC24 is designed to be ceiling-mounted over a hospital patient bed with the sides of the lighting system aligned in a parallel relationship with the longer sides of the bed, and the ends of the system perpendicular to the sides and parallel to a room wall near the head of the bed. (R. 73, Genlyte Resp. to Kenall's Facts at ¶ 9.) The MPC24 product includes reading, ambient, and examination light fixtures. (Id. at ¶ 8.) The light source of the ambient light fixture of the MPC24 multi-fixture product is Biax type fluorescent tubes. (Id. at ¶ 10.) These tubes are placed perpendicular to the ends of the product and to the room wall at the end of the bed (the "head wall" or "vertical wall"). (Id.) The MPC24's ambient fixture contains a white painted reflector. (R. 56, Genlyte Facts at ¶ 40.)

The Independent Testing Laboratories, Inc. ("ITL") photometric report number ITL54658 provides the photometrics³ for the reading light fixture of the MPC24. (Id. at ¶ 42.) According to ITL54658, the reading light of the MPC24 directs 1307 lumens to the area between 0 degrees (straight down to the patient bed) and 45 degrees. (Id. at ¶ 44.) The ITL54658 provides that the reading light of the MPC24 directs 803 lumens to the area between 45 and 90 degrees (along the ceiling or horizontal). (Id. at ¶ 45.) The ITL54658 report...