Oatey Co. v. Ips Corp.

• Citation: 665 F.Supp.2d 830
• Decision Date: 30 September 2009
• Docket Number: Case No. 03-CV-1231.
• Parties: OATEY COMPANY, Plaintiff, v. IPS CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Ohio

665 F.Supp.2d 830

OATEY COMPANY, Plaintiff, v. IPS CORPORATION, Defendant.

Case No. 03-CV-1231.

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

September 30, 2009.

COPYRIGHT MATERIAL OMITTED

Donald L. Otto, Jay R. Campbell, Todd R. Tucker, Mark C. Johnson, Renner, Otto, Boisselle & Sklar, Cleveland, OH, for Plaintiff.

Barry Van Sickle, Joseph A. Yanny, Kim D. Ashley, Michael A. Dinardo, Stacie J. Sundquist, Yanny & Smith, Los Angeles, CA, Patrick K. Smith, Koverman & Smith, Dayton, OH, Stephen M. O'Bryan, Michael J. Zbiegien, Jr., Taft, Stettinius & Hollister, Cleveland, OH, Kevin W. Kirsch, Ryan L. Willis, Taft Stettinius & Hollister, Cincinnati, OH, Peter M. Poulos, Case Western Reserve University—Adelbert Hall Office of the General Counsel, Cleveland, OH, for Defendant.

MEMORANDUM & ORDER

KATHLEEN McDONALD O'MALLEY, District Judge.

Before the Court are several motions for summary judgment, including Defendant's Motion for Summary Judgment Based on Invalidity ("Invalidity MSJ") (Doc. 128), which was filed by the Defendants, IPS Corporation ("IPS") on January 9, 2009.¹ IPS's Invalidity MSJ challenges the validity of Plaintiff Oatey Company's ("Oatey") patent, U.S. Patent No. 6,148, 850 ("'850 Patent"), on various grounds. For the reasons fully articulated below, IPS's Invalidity MSJ is GRANTED because the Court finds the '850 Patent invalid on obviousness grounds. Accordingly, the other pending motions are MOOT and this case is DISMISSED.

I. BACKGROUND

The six-year history of this patent litigation features a Markman hearing, stipulated dismissal, a trip to the United States Court of Appeals for the Federal Circuit and back, and buffet-style motions for summary judgment complete with voluminous briefing and oral argument. The patent at issue in this case, Oatey's '850 Patent, relates to an improvement to washing machine outlet boxes ("WMOB") that facilitates compliance with certain municipal plumbing codes and ease of installation. In its Markman Opinion (Doc. 67, Markman Opinion) the Court provided the following detailed description of WMOB and the '850 Patent based on the parties' Markman briefs and oral argument:

A. Overview of the Invention.

The Court begins its analysis with an overview of the plumbing problems that the patented invention is directed at solving. As anyone who has done their own laundry knows, a washing machine, during various points of its clothes-washing cycle: (1) receives hot and cold water; and (2) expels waste water. The hot and cold water arrive via plumbing supply pipes contained in the building or house where the washing machine resides; the waste water is pumped out of the washing machine through a drain pipe or hose, which is connected to the drainage system of the same building. In older homes, these supply and drain pipes are often not neatly grouped. For example, the washing machine's drain hose may simply expel the waste water into a large sink basin, which is itself connected to a drain in the floor. The end points of the cold and hot water supply pipes (e.g., wall-mounted faucets) may be some distance from this drain, and the two faucets may not be situated closely together. This arrangement is, at the very least, inelegant, and can make connection of a washing machine messy or difficult.

In contrast, relatively newer homes are frequently constructed with a built-in device known as a "washing machine outlet box" or "WMOB." See illustration below.² A fairly uncomplicated device, which was first invented in the 1950s, the WMOB is sized to fit between two wall studs, with the outer edge of the open-faced box flush with the wall. The simplest WMOB generally has: (1) two inlet holes (usually 1" in diameter), which receive the hot and cold water supply pipes, and that hold the hot and cold water faucets to which the washing machine hoses connect; and (2) an outlet hole (usually 1½ or 2" in diameter), which is connected to the house drainage system in which the drain hose from the washing machine is hooked. Thus, contained within the WMOB are all the connections necessary for the washing machine: the hot and cold supply pipe faucets, and also the drain connection. This design allows for a clean and neat plumbing installation and simplifies a homeowner's effort to connect his washing machine.

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While the simplest WMOB is essentially an open-faced box with three holes—two holes for supply pipes, and one hole for a drain pipe—inventors have created WMOB designs to accommodate various additional needs. For example, inventors have designed WMOBs to include electrical connections and dryer vent connections, as well as the plumbing connections. WMOBs are also often designed to allow for various configurations and juxtapositions for all of these connections, such as placement of the two supply faucets on the top or the side of the WMOB, instead of the bottom. Furthermore, plumbers often use WMOBs as a connection point for other home appliances that require a drain pipe, including air conditioners, water softeners, or swamp coolers.

Regarding this latter point, up until the 1980s, plumbers routinely connected drain lines from additional appliances to the WMOB by simply running the waste water hose from the appliance into the same drain port used by the washing machine. In other words, plumbers would hook both the drain hose from the washing machine and the drain hose from the air conditioner into the same WMOB outlet hole. In the 1990s, however, changes in municipal plumbing codes began to prohibit the sharing of a WMOB drain port by both a washing machine and another appliance. Accordingly, plumbing supply manufacturers began to design WMOBs with two separate drain ports.

One example of such a design is shown below. This illustration is a modified drawing of a dual-drain-port WMOB disclosed in U.S. Patent No. 6,125,881, which was issued in October of 2000 to LSP Products Group ("LSP"). As this illustration suggests, once the dual-drain-port WMOB is installed between the wall studs, a plumber must join each of the two drain ports to a single drain line, typically using various pieces of pipe to create a Y-shaped connector.

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Defendant IPS was one of the first large-scale manufacturers of WMOBs using injection-molded plastic, and IPS developed and patented a dual-drain-port WMOB as early as 1990. A drawing from IPS's U.S. Patent No. 4,934,410[, issued in 1990,] is shown [at left below]. This WMOB is configured with two drain ports, each located toward the outer edge of the WMOB, in between which are located two centrally-placed supply line ports.

Like the LSP dual-drain-port WMOB shown on the previous page, IPS's WMOB required a plumber to use a series of pieces of pipe to create a Y-shaped connector, to join the two drain ports to a single drain line. In fact, a plumber would often have to complete six or seven plumbing weld joints to complete these connections. See welds numbered in illustration at right [below].³

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As for plaintiff Oatey, it obtained the '850 patent in November of 2000, one month after the '881 patent issued to LSP. The two drawings below, taken from Oatey's '850 patent, show two drain ports next to each other on one side of the WMOB, and two supply line ports next to each other on the other side of the WMOB. The two drain ports lead to a common "tailpiece," which is connected by a plumber to the building's drainage system. It is this "tailpiece," in combination with the two drain ports, that was the primary novelty disclosed in Oatey's patent. As Oatey explains, to connect other, prior dual-drain-port WMOBs to the building's drainage system, "a plumber was required to piece and weld together several different plumbing pipe sections to connect separate tailpieces leading from each drain [port]." Oatey's Constr. Br. at 1. In contrast, the configuration of the drain ports and tailpiece in the Oatey WMOB "greatly reduces the number of joints necessary to connect the washing machine hose drain port and the condensate line drain port to the drain pipe. For example, in the preferred [WMOB], only one joint is needed between the tailpiece outlet and the [building's] drain pipe to connect both drain ports to the drain pipe." '850 Patent, col. 2, lines 12-19. Thus, "Oatey's WMOB is considerably faster and less expensive to install because it requires only a single weld." Oatey's Constr. Br. at 1. Put simply, plumbers found that Oatey's tailpiece which connected to both of the WMOB drain ports, was an improvement over having to piece together a Y-shaped connector, to join the two drain ports to the drain line.

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Oatey set out in its '850 patent the particularities of the structure and configuration of its novel WMOB tailpiece and the two drain ports.

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B. The Language of Oatey's Patent

Having described and illustrated its invention, Oatey made, among others, the following actual claims in its patent:

1. A washing machine outlet box comprising a housing including a bottom wall, first and second juxtaposed drain ports in said bottom wall, and a common tailpiece for both of said drain ports extending from said bottom wall, said tailpiece extending completely around both of said drain ports in said bottom wall said tailpiece having an outlet for connection to a drain pipe.

2. A washing machine outlet box as set forth in claim 1 wherein said tailpiece includes wall sections defining a first fluid, passageway from said first drain port to said outlet and a second fluid passageway from said second drain port to said outlet.

3. A washing machine outlet box as set forth in claim 1 wherein the said tailpiece is integrally formed with said bottom wall of said housing.

5. A washing machine outlet box...