Lacks Industries v. McKechnie Vehicle Components
| Decision Date | 01 July 1999 |
| Docket Number | No. 96-CV-75692.,96-CV-75692. |
| Citation | 55 F.Supp.2d 702 |
| Parties | LACKS INDUSTRIES, INC., Plaintiff, v. McKECHNIE VEHICLE COMPONENTS USA, INC., d/b/a Thompson International, and Hayes Wheels International, Inc., Defendants. |
| Court | U.S. District Court — Eastern District of Michigan |
Remy J. Van Ophem, Van Ophem Meehan & Van Ophem, PC, Troy, MI, David W. Wicklund, Shumaker, Loop & Kendrick, LLP, Toledo, OH, for Plaintiff Counsel.
Stephen E. Glazek, Barris, Sott, Denn & Driker, PLLC, Detroit, MI, for Defendant Hayes Wheels Counsel.
J. Michael Huget, Butzel Long, Ann Arbor, MI, for Defendant McKechnie Vehicle Counsel.
William J. Clemens, Livonia, MI, Co-Counsel for Deft. Hayes Wheels.
Before me is a multi-patent infringement dispute between competitors in the automotive wheel cover industry. Defendants McKechnie Vehicle Components USA, Inc. ("McKechnie") and Hayes Wheels International, Inc. ("Hayes") have jointly filed six cross-motions for partial summary judgment, raising numerous issues of literal noninfringement and patent validity. Plaintiff Lacks Industries, Inc. ("Lacks") has filed a cross-motion for partial summary judgment on the issue of literal infringement.
All three parties are involved in the manufacture and sales of cladded wheels: automotive wheels that have a decorative cover, or cladding, attached to their outer face (the side facing out from the automobile). Cost and aesthetic considerations have driven the development of cladded wheels. Automobile buyers increasingly desire wheels with a shiny chrome look, and automobile manufacturers and suppliers want to meet this growing consumer demand without having to plate the entire wheel in chrome — apparently an expensive process. Chrome-plated cladding is the compromise. Attached as a snug, plastic or metal skin over the outer wheel face, cladding gives the wheel a chrome look, but at less cost than full chrome-plating of the wheel itself.
On June 25, 1992, plaintiff's Product Development Director, Lee Chase, filed a patent application, No. 904,180, with the U.S. Patent Office, in which he claimed various cladded wheel inventions. During the course of its prosecution, that original application was divided into at least two parts. One part, re-filed on June 7, 1995, was later issued as U.S. Patent No. 5,577,809 ("the '809 patent") on November 26, 1996. The other part, re-filed on March 29, 1995, was later issued as U.S. Patent No. 5,636,906 ("the '906 patent") on June 10, 1997. Further experiments led Chase to apply for a third patent on June 6, 1995. This application resulted in U.S. Patent No. 5,597,213 ("the '213 patent"). Chase is listed as the inventor on all three patents, and Lacks as the assignee. Lacks presently manufactures, assembles, and sells a cladded wheel product based on the '809,-'906, and '213 patents.
In mid-1992, Jeff Beam, an employee of defendant McKechnie, also conceived a cladded wheel invention. He filed his application on September 3, 1993, and the patent was issued on November 29, 1994 as No. 5,368,370 (). Beam is listed as the inventor, and McKechnie as the assignee. McKechnie has worked with Hayes to manufacture, assemble, and sell a cladded wheel product based on the '370 patent.
Lacks' suit against McKechnie and Hayes alleges infringement of its '809,- patents and that Lacks' patents are invalid and unenforceable. A consent order issued August 7, 1998 dismissed with prejudice certain claims of the seven summary judgment motions address issues arising out of the remaining claims.
Federal Rule of Civil Procedure 56(c) provides that a summary judgment shall issue "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." A genuine issue of material fact does not exist "[w]here the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The movant has the burden of showing that no genuine issue of material fact exists. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
Once the movant meets its Rule 56(c) burden, the nonmovant "must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). "The mere existence of a scintilla of evidence in support of the [nonmovant's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [nonmovant]." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). When weighing the evidence offered by the parties on a motion for summary judgment, I must view the evidence and all inferences drawn from that evidence "in the light most favorable to the party opposing the motion." Matsushita, 475 U.S. at 587, 106 S.Ct. 1348.
In its cross-motion for partial summary judgment, Lacks asserts that defendants have literally infringed claim 1 of its '809 patent, claims 1, 11, and 16 of its '906 patent, and claims 25 and 40 of its '213 patent. In their motions for partial summary judgment, defendants assert literal noninfringement with respect to claims 1 and 2 of the '809 patent, claims 1, 2, 4-6, 8, 9, 11, 12, and 14-16 of the '906 patent, and claims 1, 3, 7-9, 32, 35, 37-39, and 40 of the '213 patent. Because Lacks does not contest defendants' literal noninfringement assertions with respect to claims 7, 9, 32, 35, 37, 38, and 39 of the '213 patent, only claims 1, 3, 8, 25, and 40 of that patent are in dispute in the noninfringement motions before me. The parties do not raise an issue of infringement under the doctrine of equivalents.
To establish literal infringement, "every limitation set forth in a claim must be found in the accused product or process exactly." Becton Dickinson and Co. v. C.R. Bard, Inc., 922 F.2d 792, 796 (Fed. Cir.1990). Determining literal infringement is a "two-step process." Id. In the first step I must determine the meaning and scope of the claims in dispute: a step "more commonly known as claim construction." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir. 1995). The second step requires me to compare the construed claims with the product or process accused of infringement. Id. The first step is a question of law, see id. at 979, while the second step is a question of fact, see North American Vaccine v. American Cyanamid Co., 7 F.3d 1571, 1574 (Fed.Cir.1993).
When construing a claim under the first step, I must consider the intrinsic evidence of record: the claim language, the specification, and, if produced, the prosecution history. See Markman, 52 F.3d at 979. "The appropriate starting point, however, is always with the language of the asserted claim itself." Phonometrics, Inc. v. Northern Telecom, Inc., 133 F.3d 1459, 1464 (Fed.Cir.1998). This is so because "[t]he language of the claims...defines the bounds of the patentee's exclusive rights." Wiener v. NEC Electronics, Inc., 102 F.3d 534, 539 (Fed. Cir.1996).
In construing the claim language at issue, I am guided by the principle that "claim language is interpreted to ascertain the meaning that a person of ordinary skill in the art would give to the claims in dispute." Schering Corp. v. Amgen, Inc., 18 F.Supp.2d 372, 380 (D.Del.1998) (citing Wiener, 102 F.3d at 539). Although words in a claim generally have their ordinary meaning, "a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996). Even when a patentee does not give a word a special meaning, the specification still "acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." Id. As such, the specification is often "the single best guide to the meaning of a disputed term." Id.
If the intrinsic evidence does not resolve the ambiguities of disputed claim language, I may then consider extrinsic evidence, such as expert testimony regarding how those skilled in the art would interpret the disputed claim. See id. at 1583. While extrinsic evidence may be used "as an aid in arriving at the proper construction of the claim," it "may not be used to vary or contradict the otherwise unambiguous meaning of the claim." Desper Products, Inc. v. QSound Labs., Inc., 157 F.3d 1325, 1333 (Fed.Cir.1998). In most cases, intrinsic evidence will suffice to resolve ambiguity, and so, in those cases, any consideration of the extrinsic evidence would be "improper." See Vitronics, 90 F.3d at 1583.
The parties have not formally treated the Markman issue of claim construction as separate from the other issues in this case. In other words, the parties have subsumed their disputes over the meaning and scope of claim language within their larger arguments concerning literal infringement and/or validity. I do not find this problematic, however, because they have thoroughly identified the disputed claims — through their extensive pleadings and three hearings before me — and have, for the most part, either explicitly or implicitly offered their preferred constructions of those claims.
Based on the record before me, I am satisfied that I can "independently assess the claims, the specification, and if necessary the prosecution...
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Lacks Industries v. McKechnie Vehicle
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