Lisle Corp. v. A.J. Mfg. Co.

• Decision Date: 31 October 2003
• Docket Number: No. 02 C 7024.,02 C 7024.
• Citation: 289 F.Supp.2d 1048
• Parties: LISLE CORPORATION, an Iowa corporation Plaintiff, v. A.J. MANUFACTURING COMPANY, an Illinois Corporation Defendant.
• Court: U.S. District Court — Northern District of Illinois

289 F.Supp.2d 1048

LISLE CORPORATION, an Iowa corporation Plaintiff, v. A.J. MANUFACTURING COMPANY, an Illinois Corporation Defendant.

No. 02 C 7024.

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

October 31, 2003.

Jon O. Nelson, Janice V. Mitrius, Matthew P. Becker, Phoebe K Phillips, Banner & Witcoff, Ltd., Chicago, IL, for Lisle Corporation, an Iowa corporation, plaintiff.

Thomas John Ring, Peter A. Tomaras, Gary R. Gillen, Jonathan A Harris, Wildman, Harrold, Allen & Dixon, Chicago, IL, James J. Conlon, James J. Conlon & Associates, Chicago, IL, for A.J. Manufacturing Company, Inc., an Illinois corporation, defendant.

MEMORANDUM OPINION AND ORDER

COAR, District Judge.

Lisle Corporation ("Lisle") filed suit against A.J. Manufacturing Company ("A.J.") alleging that it infringed U.S. Patent No. 5,287,776 (the "'776 patent") by manufacturing and selling a specialized automotive inner tie rod tool. On June 19, 2003, this Court issued its construction of the claim in the '776 patent. Since that ruling, several motions have been filed. Defendant A.J. has filed a Motion for Reconsideration of the claim construction ruling, each of the parties has filed a motion for summary judgment, and Defendant A.J. has filed a Motion to Strike. The Court will address all of those motions here, beginning with the Motion for Reconsideration.

I. A.J.'s Motion for Reconsideration

"To prevail on a motion for reconsideration under Rule 59, the movant must present ... newly discovered evidence or establish a manifest error of law or fact." Oto v. Metropolitan Life Ins. Co., 224 F.3d 601, 606 (7th Cir.2000) (citing LB Credit Corp. v. Resolution Trust Corp., 49 F.3d 1263, 1267 (7th Cir.1995)). A manifest error of law occurs when a court disregards, misapplies, or fails to recognize controlling precedent. Id.

A.J.'s motion for reconsideration urges that the Court made a manifest error of law in its claim construction by failing to consider whether its construction of the '776 patent claims rendered the patent indefinite under 35 U.S.C. § 112, ¶ 2. Section 112, paragraph 2 requires patent claims to "particularly point[] out and distinctly claim[] subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. If the claims fail to "particularly point out and distinctly claim" the subject matter of the invention, then the patent would fail for indefiniteness. "`[D]etermination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims.'" Exxon Research & Engineering Co. v. United States, 265 F.3d 1371, 1376 (Fed.Cir.2001). Consequently, claim indefiniteness is appropriate for disposition on a summary judgment motion. See Id. (citing "multitude of recent authorities stating that indefiniteness is a question of law").

Whether it is appropriate to pursue indefiniteness on a motion for reconsideration following construction of a claim is another matter. In the vast majority of cases, claim indefiniteness is decided in connection with a summary judgment motion. See Intellectual Property Development, Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1318 (Fed.Cir.2003) (noting the district court decided the indefiniteness question on summary judgment); Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1320 (Fed.Cir.2003) (same); Intel Corp. v. VIA Tech., Inc., 319 F.3d 1357, 1364 (Fed.Cir. 2003) (same); All Dental Prodx, LLC v. Advantage Dental Products, 309 F.3d 774, 777 (Fed.Cir.2002) (same); S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1365 (Fed.Cir. 2001) (same); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1321 (Fed.Cir. 2001) (same). Patents benefit from a statutory presumption of validity that can only be overcome by clear and convincing evidence of invalidity. Intel Corp. v. VIA Tech., Inc., 319 F.3d 1357, 1366 (Fed.Cir. 2003). Where neither party has briefed the issue of indefiniteness in their claim construction submissions, there can be no manifest legal error in the claim construction for failing to invalidate the patent for indefiniteness sua sponte. This would disturb the statutory presumption of validity that can only be overcome on indefiniteness grounds by a showing of clear and convincing evidence.

Parties will occasionally assert a position on indefiniteness prior to a decision on claim construction. See Creo Products, Inc. v. Presstek, Inc., 305 F.3d 1337, 1346 (Fed.Cir.2002) (discussing preservation of indefiniteness issue for appeal through invalidity argument presented "[i]n its briefing to the district court on claim construction"); Chiron Corp. v. Genentech, Inc., No. Civ.S-00-1252 WBSGGH, 2002 WL 32123928, at *2 (E.D.Cal. June 24, 2002) ("[the Defendant] initially raised the question of ... indefinite[ness] in its opening claim construction brief"). To raise the issue after claim construction on a motion for reconsideration, however, is indeed rare. A.J.'s position with the motion for reconsideration is similar to a strategy the court dismissed in A.K. Stamping Co., Inc. v. Instrument Specialties Co., Inc., 106 F.Supp.2d 627 (D.N.J.2000). In A.K. Stamping, the defendant urged a new theory of patent invalidity on a motion for reconsideration of a preliminary injunction ruling. The court refused to consider the new argument and the evidence submitted therewith, holding that the defendant could not explain its failure to brief the issue in its initial submissions. A.K. Stamping Co., Inc., 106 F.Supp.2d at 665-66. In A.K. Stamping, the evidence that the defendant sought to present on its motion for reconsideration could be used at later stages in the litigation. 106 F.Supp.2d at 666 n. 10 ("Of course, [the defendant] may offer this evidence for consideration at the trial of this matter."). The same is true here. A.J.'s indefiniteness argument is an integral part of their summary judgment motion, and the Court will address it there.

For the reasons given above, A.J.'s Motion for Reconsideration on the basis of indefiniteness is denied. Although the Court finds no basis to reconsider its opinion based on indefiniteness, the Court, sua sponte, has detected a manifest error of fact in its claim construction of the disputed "detachably cooperative" term. In its opinion, the Court clearly held that the term "detachably cooperative" attempts to capture both the concept of detachability and the concept of cooperation. (A.J. Mot. Summ. J., Ex.H (Court's June 19, 2003 Markman order) at 13.) Immediately after that portion of the opinion, the Court explained how it was the rotation of the tube and retainer that is central to both detachment and cooperation. (Id. at 13-14.) The error arose in the final explanation of the concept of "detachably cooperative" where the Court held that "this phrase refers to the rotation of the retainer and the tabs." (Id. at 14.) The Court's claim construction strove to acknowledge that the retainer of the invention rotates in a "detachably cooperative" fashion in so far as rotation can result in detachment or in cooperation. It is rotation of the retainer that is detachably cooperative, not rotation of the retainer and the tabs. The phrase "detachably cooperative" does not refer to rotation of the tabs, it only refers to rotation of the retainer (which can result in rotation of the tabs depending on the direction of the rotation and the position of the tabs). The inclusion of the tabs with the rotation was in error, as they will only rotate when the retainer is "engaged therewith".

The Court will explain again here how its construction of the term "detachably cooperative" to refer to the rotation of the retainer resolved the apparent contradiction that arises from a purely grammatical interpretation of "detachably cooperative." The detachability aspect of the term requires that the retainer (and tube) be detachable from the wrench disc and tie rod. The cooperation aspect of the term requires that the retainer (and tube) be able to cooperate with the wrench disc and tie rod. In order to utilize either the detachable aspect of the invention or the cooperative aspect of the invention, the tube and/or the affixed retainer must be rotated.¹ If the retainer is rotated one way, the retainer and tube will disengage from the wrench disc and the tie rod; when the tabs on the wrench disc are aligned with the slots on the end of the tube, the retainer and tube can detach from the wrench disc and tie rod. If the retainer is rotated the other way, the retainer and tube cooperate with the wrench disc to rotate the tie rod that is interlocked with the disc. This term "detachably cooperative" remains problematic from a grammatical standpoint, but the Court's construction of the term, as amended here, is consistent with the specification and the prosecution history of the '776 patent.

To clarify, then, the Court finds that it made a manifest error of fact in its claim construction of the phrase "Said retainer being detachably cooperative with the tabs to rotate the disc and a tie rod engaged therewith" in the '776 patent. The Court now amends its claim construction so that this phrase is construed to mean: Rotation of the retainer can result in separation or disengagement or it can result in rotation of the disc and a tie rod that is interlocked with the disc.

II. Motions for Summary Judgment

A. Summary Judgment Standard

The Court applies the same summary judgment standard to patent cases as it does to other types of cases. See, e.g., Becton Dickinson & Co. v. C.R. Bard., Inc., 922 F.2d 792, 795-96 (Fed.Cir.1990). Summary judgment is appropriate only "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with 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." Fed. R. Civ. Pro. 56(c); see also Schmidt v. Ottawa Medical...