Naso v. Ki Park, 93 Civ. 0915 (WCC).
| Decision Date | 01 July 1994 |
| Docket Number | No. 93 Civ. 0915 (WCC).,93 Civ. 0915 (WCC). |
| Citation | 856 F. Supp. 201 |
| Parties | Michael NASO, Frank Naso and Zeta Products, Inc., Plaintiffs, v. KI PARK, Celico International, Equity Leasing, Herbert Moelis and Microfilm Products Company, Defendants. |
| Court | U.S. District Court — Southern District of New York |
William T. Hough, Basking Ridge, NJ, for plaintiffs.
Baker & Friedman, New York City, for defendants; Ben C. Friedman, Paul D. Getzels, of counsel.
This action for alleged infringement of two patents covering film reels is before the Court on cross motions for summary judgment on the issue of infringement. The patents in suit are U.S. patent No. 4,798,352 issued January 17, 1989 (the '352 patent) and U.S. patent No. 4,683,111 (the '111 patent) issued September 5, 1989 on a continuation-in-part of the same original application Serial No. 118,654 filed November 9, 1987 in the names of plaintiffs Michael Naso and Frank Naso. For the reasons stated hereinafter, defendants' motion for summary judgment is granted in part and denied in part and plaintiffs' cross motion is denied.
The patented inventions
The '352 patent discloses and claims a film reel having, in the annular space between an outer collar around which the film is wound and an inner collar which is rotatably supported on the spindle of the machine, means for securing the end of a film which is threaded through a slot in the outer collar, which means comprises a post around which the film is wrapped so that the end portion of the film may be bent back to lie between the adjacent portion of the film and the inner collar and be frictionally held thereby. This annular space is accessible through an opening in the central portion of one of the two circular flanges which confine the edges of the film wound on the outer collar, that flange also having a radial slot which extends from the central opening to the periphery of the flange to facilitate threading the end of the film into the central opening by pressing it edgewise through the aligned slots in the flange and the outer collar and securing it by wrapping it around the inner collar and doubling it over around the post to trap its end between the film and the inner collar.
As is common in such reels, the inner collar does not have a smooth, cylindrical outer surface, but has extending radially outward from it a number of spaced, short ribs around which the film is wound, so that the film follows a path which is not circular but has a number of angular turns to enhance the frictional engagement of the film. In a preferred embodiment of the invention, the outer ends of the ribs are arcuately curved to limit the sharpness of the bends in the film.
In another preferred embodiment of the invention, to which the '111 patent is specifically directed, the inner surface of the outer collar is provided with a number of spaced short ribs which project radially inward between the outer ends of the ribs on the inner collar to press the film inwardly at those points and thus force the film to follow a convoluted path around the inner collar and further enhance its frictional engagement.
The '352 patent claims
Claim 1 of the '352 patent, one of only two independent claims of the patent, reads:
1. In a film reel having an upper face and an opposite side lower face, in combination having a film-threadable film-retaining core (a) that has an outer collar with an outer collar radially-inwardly positioned wall-surface and with an outer collar radially-outwardly positioned wall-surface, (b) that has an inner collar with an inner collar radially-inwardly positioned wall-surface and with an inner collar radially-outwardly positioned wall surface, defining a film-threading space between said outside collar's inside wall surface and said inside collar radially-outwardly positioned wall surface, (c) that has a collar's anchoring floor connecting with at-least a major portion of each of the inner collar radially-outwardly positioned wall-surface and the outer collar radially-inwardly positioned wall-surface, (d) that has a radially-extending core-anchoring wall radially-extending between and connecting-together said inner and outer collars, (e) a film-threading slot that extends-radially through said outside collar, and (f) the film-threading space extending from an open slot that extends-radially through said outside collar, the film-threading space extending substantially around said inside collar to terminate at said core-anchoring wall, and (g) said inner collar radially-inwardly positioned wall surface being a spindle-receptacle structure forming a spindle-receiving space of said opposite lower face, the improvement being in said core additionally as a part of said combination comprising: (1) said inner collar radially outwardly-positioned wall-surface including a plurality of wall structures each extending radially outwardly a predetermined distance to end as a wall structure distal-end defining a film-threading gap between said wall-structure distal-end and said outer collar's radially-inwardly extending wall-surface; and (2) a film anchoring post means for reversing direction of the threaded film to be wrapped there-around to reverse the film-threading direction, said film-anchoring post means being located within said film-threading space extending upwardly from said collars's (sic) anchoring floor, and said film-anchoring post means being positioned and spaced-away-from each of said core-anchoring wall, the inner collar radially-outwardly positioned wall surface and the radially-inwardly positioned wall surface.
Claim 15, the other independent claim, is similar to Claim 1 but adds the limitation:
on said upper face, at-least said inner collar radially inwardly-positioned wall-surface including a plurality of consecutive substantially separate sides joined at and forming corners there between as adjoining sides, concurrently forming on said lower face a multisided driving spindle revolvably drivable of the film reel ...
There is no dispute concerning the readability of this limitation on defendants' accused reels, and therefore no reason to discuss Claim 15 separately from Claim 1.
Claims 2 through 14 of the '352 patent are dependent, either directly or indirectly, on Claim 1 and Claims 16 through 23 are dependent, directly or indirectly, on Claim 15. Claims 2 through 5, 10 through 13, 16 and 17 add limitations as to which there is no dispute concerning their readability on defendants' accused reels, and there is therefore no reason to discuss them separately from Claim 1. Claims 6 through 8 and 19 through 22 add different limitations concerning the cross-sectional shape of the spindle-receiving hole. They are not charged to be infringed by defendants. Claims 9, 14 and 23 add limitations specifying that the distal ends of the outwardly extending ribs on the inner collar are formed into posts with arcuate outer surfaces of a "radius such that a major amount of surface contact thereof is made with a face of the film." Apparently plaintiffs do not charge infringement of these three claims by defendants.
The '111 patent claims
Claim 1, the only independent claim of the '111 patent, contains in its preamble recital of the environment of the patented improvement, all of the structural limitations of Claim 1 of the '352 patent, and adds the following description of the claimed improvement thereover:
at-least one flange mounted on and extending radially inwardly from said outer collar radially-inwardly positioned wall-surface, said one flange having a flange distal end, said flange being mounted at a location and extending in a direction such that said distal end is positioned within said film-threading space and is positioned between and in spaced-away relationship to adjacent ones of two of said plurality of wall structures, and said one flange extending radially inwardly a distance sufficiently (sic) to press against a film tautly threaded between adjacent ones of said plurality of wall structures when a film is threaded within said threading space.
Dependent Claim 2 adds the limitation that the flange extends at an angle of less than 90 degrees in the counter-clockwise direction (the direction of threading), and the specification asserts that this inclination of the flange tends to prevent loosening of the film when the reel is subjected to the shock of reversals of direction between alternate forward and reverse windings of the film. Claims 3 and 4 are both dependent upon Claim 2 and, for reasons which will be apparent hereinafter, need not be separately discussed.
Contentions of the parties
Defendants urge that they are entitled, as a matter of law, to a summary judgment of non-infringement of both patents in suit on the ground that their accused tape reels lack two features called for in Claim 1 of both patents:
(1) "a film-threading space between said outside collar's inside wall surface and said inside collar's radially-outwardly (sic) positioned wall surface," a...
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...see also Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 835 (Fed.Cir. 1984); Naso v. Ki Park, 856 F.Supp. 201, 204 (S.D.N.Y.1994) (Conner, J.) (a summary judgment of non-infringement may be appropriate where there are no genuine issues of material fact). This applies ......