Kothmann Enterprises, Inc. v. Trinity Industries, No. Civ.A. H-01-2668.

CourtUnited States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
Writing for the CourtRosenthal
Citation394 F.Supp.2d 923
Docket NumberNo. Civ.A. H-01-2668.
Decision Date30 September 2005
PartiesKOTHMANN ENTERPRISES, INC., successor by merger to Kothmann and Kothmann, Inc. Plaintiff, v. TRINITY INDUSTRIES, INC., Defendant.
394 F.Supp.2d 923
KOTHMANN ENTERPRISES, INC., successor by merger to Kothmann and Kothmann, Inc. Plaintiff,
v.
TRINITY INDUSTRIES, INC., Defendant.
No. Civ.A. H-01-2668.
United States District Court, S.D. Texas, Houston Division.
September 30, 2005.

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Andrew Paul Mouton, Mouton Mouton et al., Big Spring, TX, Charles J. Rogers, Thomas L. Warden, Conley Rose, PC Houston, TX, Max Lalon Tribble, Jr., Susman Godfrey, Houston, TX, for Plaintiff.

Steven E. Ross, Thomas Copeland Wright, Gardere, Wynne & Sewell, Dallas, TX, Thomas Michael Wall, Gardere, Wynne & Sewell, Houston, TX, Russell Clay Brown, Wellborn, Houston, Adkinson, et al., Henderson, TX, for Defendant.

MEMORANDUM AND OPINION

ROSENTHAL, District Judge.


This patent infringement suit involves roadside safety devices designed to absorb the forces generated when vehicles collide with guardrails and other objects along highways and roads to reduce injury and damage. Kothmann Enterprises, Inc. ("KEI") alleges that two devices manufactured and sold by Trinity Industries, Inc. ("Trinity") — the Mobile Protection System ("MPS-350") and the Attenuating Crash Cushion ("TRACC") — infringe certain claims of United States Patent No. 6,022,003 (the '003 Patent) and United States Patent No. 6,505,820 (the '820 Patent). Trinity has denied infringement and asserted that the patents are invalid and unenforceable. The parties have filed motions seeking summary judgment as to KEI's ownership, Trinity's alleged infringement, and the validity of the patents. The parties had also filed motions seeking summary disposition of Trinity's affirmative defenses of inequitable conduct and laches. This court denied summary judgment but bifurcated the case, holding a bench trial on the equitable defenses in May 2005.1

Based on a careful review of the pleadings, the motions and responses, the parties' submissions, the parties' arguments, and the applicable law, this court enters the following rulings on the pending motions for summary judgment on ownership, infringement, and validity. The results of those rulings are set out below.

• KEI owns both the '003 Patent and the '820 Patent. KEI's motion for

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summary judgment as to ownership is granted.2

• The MPS-350 and TRACC do not infringe the asserted claims of the '003 Patent. Trinity's motion for summary judgment as to noninfringement is granted.3

• The MPS-350 and TRACC do not literally infringe the asserted claims of the '820 Patent, and prosecution history estoppel bars KEI from asserting infringement under the doctrine of equivalents. KEI's motion for summary judgment on infringement of the asserted claims of the '820 Patent is denied; Trinity's motion for summary judgment of noninfringement is granted.4

• The asserted claims of the '003 Patent and the '820 Patent are not invalid for lack of a written description or as anticipated by prior art. Trinity's motion for summary judgment on invalidity is denied.5

A separate order will issue setting out findings and conclusions on the equitable defenses presented in the bench trial.

The reasons for these rulings are set out in detail below.

I. Background

The asserted claims of the '003 Patent and the '820 Patent describe roadside safety devices that absorb impact energy from a crashing vehicle while minimizing intrusion into the vehicle's passenger compartment. The application for what issued as the '003 Patent was filed on November 7, 1994; the patent issued on February 8, 2000.6 On August 8, 2001, Kothmann and Kothmann, Inc. ("KKI"), KEI's predecessor, filed this suit, alleging that it owned the '003 Patent and that Trinity's MPS-350 and TRACC devices infringed claims 6, 8, and 12. (Docket Entry No. 1 ¶¶ 6, 9). The divisional application for what issued as the '820 Patent was filed on October 1, 1999. That patent issued on January 14, 2003, subject to a terminal disclaimer.7 On that same date, KEI filed its first amended complaint in this lawsuit, asserting that Trinity's MPS-350 and the TRACC infringed claims 6, 8, and 12 of the '003 Patent and that the TRACC infringed claims 3, 4, 11, and 14 of the '820 Patent.8

In April 2002, this court held a four-day evidentiary hearing on KKI's motion for a preliminary injunction. The parties presented evidence on infringement, validity, and enforceability. In September 2002, shortly before this court issued its ruling, KEI filed U.S. Patent Application No. 10/236,755 ("the '755 Application") as a continuation of the '003 and '820 Patents.

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In September 2002, this court denied the motion for a preliminary injunction. In detailed findings and conclusions, this court explained that KKI had not met its burden of showing a reasonable likelihood of success on the merits of its claim that the TRACC and MPS 350 infringed the asserted claims of the '003 Patent. (Docket Entry No. 62).

In September 2003, after an evidentiary hearing, this court issued a Markman order construing the disputed terms of the '003 Patent and the '820 Patent.9 (Docket Entry No. 90). Within a few weeks, a continuation application and amendment in the '755 Application were filed, adding language to address — and change — an aspect of the Markman ruling unfavorable to KEI's infringement allegations in this suit. In 2004, the patent examiner issued a notice of allowance of the pending claims in the '755 Application. The '755 Application was pending in May 2005 when this court held a bench trial on Trinity's affirmative defenses of inequitable conduct, laches, and equitable estoppel. (Docket Entry Nos. 229 — 31).

A. The Accused Devices: the MPS-350 and the TRACC

Trinity's Highway Safety Products Division manufactures and sells over 10,000 products, including the MPS-350 and the TRACC. The MPS-350 is a "truck-mounted attenuator," an energy-absorbing device attached to the rear of a road work truck or utility vehicle. The device is designed to provide a controlled stop for a vehicle that impacts the work vehicle. The TRACC is a "crash cushion" that attaches to the end of a guardrail, bridge pier, or other longitudinal roadside barrier, to absorb the impact of a vehicle striking the end of the barrier. Both devices are patented: the MPS-350 by United States Patent No. 5,947,452 (the "MPS 350 Patent") and the TRACC by United States Patent No. 6,293,727 (the "TRACC Patent"). Trinity manufactures and sells the MPS-350 and the TRACC through a license agreement with the patent owner. James Albritton is the inventor of both devices and testified as an expert witness for Trinity in this litigation. Albritton began developing the MPS-350 in April 1995; Trinity has been selling it since September 1996. In 1997, Albritton gave a presentation on the design and operation of the MPS-350 at a meeting of the Transportation Research Board in Washington, D.C. Dr. Dean Sicking, one of the inventors of the '003 and '820 Patents, attended the meeting. (Docket Entry No. 42, Preliminary Injunc. Hearing Tr., vol. II, p. 15).

Albritton began developing the TRACC in the summer of 1996 and completed the design in July 1998. Trinity began selling the TRACC in February 1999. The TRACC is designed to be attached to the end of a guardrail, bridge pier, or other longitudinal barrier to absorb the impact of a vehicle that hits the end of the barrier. The end of the TRACC that faces the road — the impact head — is covered with a plastic nose and reflectors. When a vehicle hits the impact head, it pushes a sled located on the base of the structure, through the center of a set of longitudinally-aligned side panels. The panels run parallel to one another with a hollow space or channel between them. The sections of the side panels are designed so that the end of each section fits inside the next consecutive section. When a vehicle hits the impact head, the sled moves and pushes the end of the first section, making the sections stack into each other or "telescope" until the vehicle stops or reaches

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the last section. As the sections telescope, cutting occurs along the base of the structure. Two square hollow beams run parallel to one another for the length of the system. These beams are located under, and in the direction of, the side panels. The inside wall of each beam has an one-inch gap, or channel, running longitudinally approximately half-way up the height of the beam. This wall is called the "backup plate," or flange plate. Vertical metal plates called "rip plates" are bolted to the backup plates, over the one-inch channels. A "cutter plate" is mounted on the bottom of the sled and extends across the two beams. The cutter plate is a one-half inch thick metal plate with rounded edges. The cutter plate is rectangular, with two v-shaped angles cut into the leading edge. The plate is positioned so that as the sled pushes the cutter plate along the beams, the outer leg of the "v" on each side of the cutter plate contacts the rip plate at a forty-five degree angle. As the cutter plate passes between the beams and through the rip plates, the contacting edges of the cutter plate cut into the rip plates, pushing or stretching the metal around the edges of the backup plates and into the hollow beams.

The MPS 350, the "truck-mounted attenuator," is approximately fourteen feet long. It consists of a cutter plate, beams containing a channel, and rip plates. Like the TRACC, the MPS 350 uses two modes of energy absorption, the telescoping of the side panels and the cutting of the rip plates. Like the TRACC's cutter plate, the MPS 350's cutter plate is positioned so that the contacting edges of the plate strike the rip plates at a forty-five degree angle. The rip plates are bolted to the backup plates. Unlike the TRACC, in which the cutter plate is pushed along the beams, in the MPS 350, the beams are pushed into a mounted cutter...

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2 practice notes
  • Sportstar Athletics, Inc. v. Wilson Sporting Goods Co., Civ. A. H-15-1438
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • January 30, 2017
    ...if it owns the patent (i.e., is the "patentee") by issuance or assignment. Kothmann Enterprises, Inc. v. Trinity Industries, Inc., 394 F. Supp. 2d 923, 941(S.D. Tex. 2005). "'A party that has been granted all substantial rights under a patent is considered the owner and is entitled to bring......
  • Duramed Pharm.s Inc. v. Paddock Laboratories Inc., No. 09 Civ. 1905(LBS).
    • United States
    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • June 1, 2010
    ...PVA MBCs were “disclosed in the prior art.” Festo X, 493 F.3d at 1379; see also Kothmann Enterprises, Inc. v. Trinity Industries, Inc., 394 F.Supp.2d 923, 965 (S.D.Tex.2005) (“Trinity began selling the TRACC in 1999, long before the amendment was submitted to the PTO on July 27, 2002.... [P......
2 cases
  • Sportstar Athletics, Inc. v. Wilson Sporting Goods Co., Civ. A. H-15-1438
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • January 30, 2017
    ...if it owns the patent (i.e., is the "patentee") by issuance or assignment. Kothmann Enterprises, Inc. v. Trinity Industries, Inc., 394 F. Supp. 2d 923, 941(S.D. Tex. 2005). "'A party that has been granted all substantial rights under a patent is considered the owner and is entitled to bring......
  • Duramed Pharm.s Inc. v. Paddock Laboratories Inc., No. 09 Civ. 1905(LBS).
    • United States
    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • June 1, 2010
    ...PVA MBCs were “disclosed in the prior art.” Festo X, 493 F.3d at 1379; see also Kothmann Enterprises, Inc. v. Trinity Industries, Inc., 394 F.Supp.2d 923, 965 (S.D.Tex.2005) (“Trinity began selling the TRACC in 1999, long before the amendment was submitted to the PTO on July 27, 2002.... [P......

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