Lacks Industries v. McKechnie Vehicle

• Decision Date: 13 March 2003
• Docket Number: No. 01-1396.,No. 01-1371.,No. 01-1395.,01-1371.,01-1395.,01-1396.
• Parties: LACKS INDUSTRIES, INC., Plaintiff-Appellant, v. McKECHNIE VEHICLE COMPONENTS USA, INC. (doing business as Thompson International), Defendant-Cross Appellant, and Hayes Wheel International, Inc. (now known as Hayes Lemmerz International, Inc.), Defendant-Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

322 F.3d 1335

LACKS INDUSTRIES, INC., Plaintiff-Appellant, v. McKECHNIE VEHICLE COMPONENTS USA, INC. (doing business as Thompson International), Defendant-Cross Appellant, and Hayes Wheel International, Inc. (now known as Hayes Lemmerz International, Inc.), Defendant-Cross Appellant.

No. 01-1371.

No. 01-1395.

No. 01-1396.

United States Court of Appeals, Federal Circuit.

Decided March 13, 2003.

COPYRIGHT MATERIAL OMITTED

David W. Wicklund, Shumaker, Loop & Kendrick, LLP, of Toledo, OH, argued for plaintiff-appellant. With him on the brief was Jeffrey S. Creamer. Of counsel on the brief was Remy J. VanOphem, VanOphem & VanOphem, P.C., of Troy, MI.

J. Michael Huget, Butzel Long, of Ann Arbor, Michigan, argued for defendant-cross appellant McKechnie Vehicle Components USA, Inc. (doing business as Thompson International). With him on the brief was John C. Blattner.

Stephen E. Glazek, Barris, Sott, Denn & Driker, PLLC, of Detroit, MI, for defendant-cross appellant Hayes Wheel International, Inc. (now known as Hayes Lemmerz International, Inc.) Of counsel on the brief was William J. Clemens, MacMillan, Sobanski & Todd, LCC, of Livonia, MI. Of counsel was Kathryn A. Viviano, Barris, Sott, Denn & Driker, PLLC, of Detroit, MI.

Before NEWMAN, MICHEL and CLEVENGER, Circuit Judges.

Opinion for the court filed by Circuit Judge MICHEL. Opinion concurring in part and dissenting in part filed by Circuit Judge PAULINE NEWMAN. Opinion dissenting in part filed by Circuit Judge CLEVENGER.

MICHEL, Circuit Judge.

Plaintiff-appellant Lacks Industries, Inc. ("Lacks") appeals the rulings of the United States District Court for the Eastern District of Michigan: (1) granting summary judgment of noninfringement of method claims 1 and 2 of U.S. Patent No. 5,577,809 ("the `809 patent") and product claims 1, 2, 4-6, 8, 9, 11, 12, and 14-16 of U.S. Patent No. 5,636,906 ("the `906 patent"); (2) granting summary judgment of invalidity for obviousness of all the asserted claims of the `809 and `906 patents; (3) granting summary judgment of invalidity under § 102 of method claims 1, 3, and 8 of U.S. Patent No. 5,597,213 ("the `213 patent"); and (4) adopting a Special Master's findings after trial of invalidity of method claims 11-13, 20-22, and 24-25 of the `213 patent as a result of Lacks' commercial activities. Defendants-cross appellants Hayes Wheel International, Inc. ("Hayes") and McKechnie Vehicle Components USA, Inc. ("McKechnie") cross-appeal the court's decisions adopting the Special Master's findings after trial: (1) that claims 11-13, 20-22, and 24-25 of the `213 patent were not proven invalid under § 102(b) as a result of any offer to sell or public use by Hayes or McKechnie and (2) that defendants' product infringed claims 11-13, 20, and 24-25 of the `213 patent.

We affirm: (1) the grants of summary judgment of noninfringement of the '809 and '906 patents; (2) the grant of summary judgment of invalidity under § 102 of claims 1, 3, and 8 of the '213 patent; (3) the finding of infringement of claims 11-13, 20, and 24-25 of the '213 patent; and (4) the finding that claims 11-13, 20-22, and 24-25 of the '213 patent were not proven invalid as a result of the pre-critical date public use or sale by Hayes or McKechnie. Because the Special Master applied an incorrect legal standard, we vacate and remand his finding that claims 11-13, 20-22, and 24-25 of the '213 patent were invalid because of Lacks' pre-critical date sales promotion activities. Because we need not reach a mere affirmative defense, and decline to do so, we vacate the district court's grant of summary judgment of invalidity for obviousness of the asserted claims of the '809 and '906 patents.

I.

The parties are all involved in the manufacture and sales of cladded wheels: automotive wheels that have a decorative cover¹ attached to their outer face (the side facing out from the automobile). The development of these wheels has been driven by cost and aesthetic considerations. Apparently, automobile buyers increasingly desire wheels with a shiny chrome look. Automobile manufacturers and suppliers want to meet this growing consumer demand without having to plate the entire wheel in chrome, an expensive process. As a result, inventors have developed chrome-plated cladding that covers only the visible portion of the wheel. This cladding is attached as a snug, plastic or metal skin over the outer wheel face, thus giving the wheel a chrome-like appearance at less cost than chrome plating of the entire wheel.

Lacks owns by assignment (from named inventor Lee Chase) the '809, '906, and '213 patents, all covering various aspects of cladded wheels. Chase filed his original patent application, No. 904,180, on June 25, 1992. Thereafter he filed divisional applications on June 7, 1995 and March 29, 1995 which led to the '809 patent and the '906 patent, respectively. Both patents share a common specification, though the '809 patent is drawn to a method for making cladded wheels and the '906 patent is drawn to the cladding as an apparatus. The '213 patent sprang from the same work as the '809 and '906 patents, but matured from its own June 6, 1995 application and has a disclosure different from that of the '809 and '906 patents. The '213 patent discloses a method and apparatus for the assembly of a cladded wheel through the use of a temporary securing and positioning means and the selective application of an adhesive. Lacks currently manufactures, assembles, and sells a cladded wheel product based on these patents.

Lacks sued Hayes and McKechnie for infringement of the '809, '906, and '213 patents by their manufacture and sale of cladded wheels based on McKechnie's U.S. Patent No. 5,368,370 ("the '370 patent"). After Lacks filed suit, many of the asserted claims in the '809 and '906 patents were withdrawn by stipulation. Infringement of the remaining claims of those two patents and the asserted claims of the '213 patent was first addressed by the district court when confronted with multiple motions for partial summary judgment. Lacks moved for summary judgment of infringement of '809 patent claim 1; '906 patent claims 1, 11, and 16; and '213 patent claims 25 and 40. Defendants cross-moved for summary judgment of noninfringement of '809 patent claims 1 and 2; '906 patent claims 1-2, 4-6, 8-9, 11-12, and 14-16; and '213 patent claims 1, 3, 7-9, 32, 35, and 37-40.

In addressing the '809 and '906 patents, the district court first construed the disputed limitations. Claim 1 of the '809 patent is representative of the asserted claims of both the '809 and '906 patents² (disputed claim language underlined):

1. A method for providing a decorative surface on a vehicle wheel having a web portion and a peripheral rim portion for mounting a vehicle tire, said peripheral rim portion defining an axial peripheral lip circumscribing said peripheral rim portion and structural means interconnecting said web portion and said peripheral rim portion, said web portion and said peripheral rim portion defining a wheel face outer surface, said method comprising the steps of:

forming a thin solid ornamental panel of uniform thickness having an interior and exterior surface, said thin solid formed ornamental panel being shaped to cover said entire wheel face outer surface and not cover said axial peripheral lip so as to mate to said wheel and substantially conform said exterior surface of said thin solid formed ornamental panel to adjacent contours of said wheel face outer surface of said wheel;

applying a decorative layer on said exterior surface of said thin solid formed ornamental panel;

applying an adhesive to one of said wheel face outer surface of said wheel and said interior surface of said thin solid formed ornamental panel; and

positioning said interior surface of said thin solid formed ornamental panel against said adhesive so as to adhere said thin solid formed ornamental panel to said wheel face outer surface;

whereby said positioning step locates said thin solid formed ornamental panel so as to be substantially flush with adjacent portions of said wheel face outer surface of said wheel such that said decorative layer readily blends with said axial peripheral lip circumscribing said peripheral rim portion so as to provide a visual impression that said decorative layer is substantially flush with said adjacent portions of said wheel face outer surface and thereby appears to constitute an integral portion of said wheel.

'809 patent, cols. 10-12. First, the court construed the claim term "axial peripheral lip" in both the '809 and '906 patents to mean "that uncovered surface of the composite wheel that starts at the edge of the cladding, goes up and over the top of the projecting rim lip, and ends where the outer side of the rim lip merges with the tire mounting surface of the wheel rim." Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 55 F.Supp.2d 702, 711 (E.D.Mich.1999). Second, the court construed "wheel face outer surface" in both the '809 and '906 patents to mean "the entire area of the wheel's exposed face that lies within the circumscribing boundary of the inner shoulder of the axial peripheral lip." Id. at 712. Third, in light of the undisputed structure of the accused product³ and because the district court construed the claim terms such that the cladding must cover all of the outer face and none of the axial peripheral lip, the court granted summary judgment of noninfringement of the asserted claims of the '809 and '906 patents. Id. at 722-23.

The court also addressed several other issues. The court granted summary judgment of invalidity under § 102 of claims 1, 3, and 8 of the '213 patent because of the publication of Lacks' foreign patent applications corresponding to the '809 and '906 patents. Id. at 736-37. The court also granted summary judgment of invalidity for obviousness of the asserted claims of the '809 and '906 patents. Id. at 731. The court found...