Old Reliable Wholesale, Inc. v. Cornell Corp., Case No. 5:06 CV 2389.

• Decision Date: 24 March 2009
• Docket Number: Case No. 5:06 CV 2389.
• Parties: OLD RELIABLE WHOLESALE, INC., Plaintiff, v. CORNELL CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Ohio

609 F.Supp.2d 742

OLD RELIABLE WHOLESALE, INC., Plaintiff, v. CORNELL CORPORATION, Defendant.

Case No. 5:06 CV 2389.

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

March 24, 2009.

R. Eric Gaum, Walter E. Crooks, Electrolux North America, Shannon V. McCue, Cleveland, OH, for Plaintiff.

Gary L. Huusko, Severson, Matthew J. Schaap, Robert B. Bauer, Severson, Sheldon, Dougherty & Molenda, Apple Valley, MN, John M. Skeriotis, Brouse McDowell, Akron, OH, for Defendant.

MEMORANDUM OPINION

DAVID D. DOWD, JR., District Judge.

I. INTRODUCTION

In this patent infringement action, plaintiff Old Reliable Wholesale, Inc. (Old Reliable) alleges that certain products manufactured and/or sold by defendant Cornell Corporation (Cornell) infringe U.S. Patent No. 5,069,950 (the '950 Patent).¹ Cornell disputes that its products infringe the '950 Patent, and alleges that the '950 Patent is invalid. In their complaint and counterclaims, both parties seek attorney fees pursuant to 35 U.S.C. § 285.

The Court previously issued a Claims Construction Order, and established a discovery and dispositive motion schedule. Now pending before the Court are the parties' cross motions for summary judgment.²

Plaintiff Old Reliable moves for summary judgment on the grounds that Cornell has infringed the '950 Patent. Defendant Cornell moves for summary judgment on the grounds that the '950 Patent is invalid pursuant to 35 U.S.C. §§ 102 and 103.

For the reasons contained herein, the Court concludes that the '950 Patent is invalid and Cornell's motion for summary judgment is GRANTED. Having found the '950 Patent invalid, plaintiff Old Reliable's motion for summary judgment is DENIED.

II. FACTS

The parties do not dispute that plaintiff Old Reliable owns the '950 Patent. The application for this patent was filed on April 11, 1990, and the '950 Patent was issued on December 3, 1991.

The '950 Patent relates to an insulated roof board designed to allow air flow beneath the top layer. The air flow is achieved by a space, which consists of blocks configured to create channels, between an insulating bottom layer and a top layer.

Plaintiff's product using this invention is the AJC Inventsabord. Defendant Cornell sells insulated roofing products under the trade names Vent-Top ThermaCal 1 (V-T 1) and Vent-Top ThermaCal X1 (V-T X1). Old Reliable contends that these two products infringe the '950 Patent.

In addition to the allegedly infringing V-T 1 and V-T X1 insulated roofing panels, Cornell also sells another insulated roofing panel, Vent-Top ThermaCal 2 (V-T 2). Old Reliable does not allege that Cornell's V-T 2 product infringes the '950 Patent.

The parties do not dispute that V-T 2, USSR Patent SU775258 (Rozenblit Patent),³ and the Air-Flo insulated roof panel by Branch River Foam Plastics (Air-Flo) pre-date the '950 Patent.⁴ However, the parties do dispute whether V-T 2, Air-Flo and the Rozenblit Patent anticipate the '950 Patent, and whether the invention claimed in the '950 Patent was obvious.

III. LAW AND ANALYSIS

A. Summary Judgment Standard

Summary judgment pursuant to Rule 56(c) of the Federal Rules of Civil Procedure is appropriate when there is no genuine issue of material fact in dispute and the moving party is entitled to judgment as a matter of law.⁵ Summary judgment is as appropriate in a patent case as in any other. Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835 (Fed.Cir.1984). A critical factor in a motion for summary judgment in a patent case, as in non-patent cases, is the determination by the district court that is that there is no genuine issue of material fact in dispute. The party opposing the motion must point to an evidentiary conflict created on the record. The district court may not simply accept a party's statement that a fact is challenged, and mere denials or conclusory statements are insufficient. Barmag Barmer, 731 F.2d at 835-36 (citing Union Carbide v. American Can Co., 724 F.2d 1567, 1571 (Fed.Cir. 1984)). Established facts and inferences drawn from such facts must be construed in a light most favorable to the opposing party. Barmag Barmer, 731 F.2d at 836 (citing United States v. Diebold, 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962)).

B. 35 U.S.C. §§ 102 and 103

Defendant Cornell moves for summary judgment on the grounds that the '950 Patent is invalid under 35 U.S.C. §§ 102(b), (g) and 103.

1. 35 U.S.C. § 102

35 U.S.C. § 102 provides in relevant part:

A person shall be entitled to a patent unless—

. . . .

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for the patent in the United States,

. . . .

(g)(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

. . . .

If the claimed invention was patented, or described in a printed publication or in public use or on sale more than a year before the date of the application for the patent, then that prior art "anticipates" the patent. See Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed.Cir.2008) (35 U.S.C. § 102(b)).⁶ Similarly, if the claimed invention was made by a prior inventor who did not abandon, conceal or suppress the invention, then that prior invention "anticipates" the patent. See Z4 Technologies, Inc. v. Microsoft Corp., 507 F.3d 1340, 1352 (Fed.Cir.2008) (35 U.S.C. § 102(g)(2)). If the prior art or prior invention anticipates a patent, then the patent is invalid under § 102.

Anticipation means that the claimed invention was previously known. To anticipate the patent, a single prior art reference must contain or describe every element of the claimed invention, either expressly or inherently. See Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272, 1282 (Fed.Cir.2000). A prior art reference may anticipate without disclosing a feature of a claimed invention if that feature is necessarily present, or inherent, in an anticipating reference. Schering Corp. v. Geneva Pharmaceuticals, Inc., 339 F.3d 1373, 1377-79 (Fed.Cir.2003); Atlas Powder Co. v. Ireco, Inc. 190 F.3d 1342, 1347 (Fed.Cir.1999).

Anticipation is a question of fact, which may be resolved on summary judgment if there is no genuine issue of material fact. Zenith Electronics Corp. v. PDI Communication Systems, Inc., 522 F.3d 1348, 1356-57 (Fed.Cir.2008) (citing Gen. Elec. Co. v. Nintendo Co., Ltd., 179 F.3d 1350, 1353 (Fed.Cir.1999); Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1294 (Fed.Cir.2002)). Summary judgment is appropriate if no reasonable jury could find that the patent was not anticipated by the prior art. Id.

2. 35 U.S.C. § 103

35 U.S.C. § 103 provides in relevant part:

§ 103. Conditions for patentability; non-obvious subject matter

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

In order to be patentable, a claimed invention must be "non-obvious." A patent is invalid under § 103 if the difference between the prior art and the claimed invention is such that "the subject matter as a whole would have been obvious at the time to a person skilled in the art." Graham v. John Deere Co., 383 U.S. 1, 15, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

C. Claims Construction Order

The Court previously construed the term "integral" in claim 1 of the '950 Patent. See ECF 37. The Court's Claims Construction Order construed "integral" to mean that the spaced blocks are "formed with or joined to" the rigid insulating material, and need not be carved out of the insulating material, but may be "formed separately and attached."

D. The '950 Patent was Anticipated

1. V-T 2 Anticipates the '950 Patent

Cornell contends that its V-T 2 insulated roof board introduced in 1986, long before the Critical Date, contains every element of the '950 Patent, and that the only difference between V-T 2 and the allegedly infringing insulated roof board, V-T 1, is the oriented strand board⁷ (OSB).

Old Reliable does not allege that V-T 2 infringes the '950 Patent. Old Reliable does not dispute that V-T 2 was in printed publication, in public use or on sale before the Critical Date, or contend that V-T 2 was abandoned, suppressed or concealed. However, Old Reliable argues that V-T 2 does not anticipate the '950 Patent because, as a result of the presence of the OSB in V-T 2, the spacer blocks are not integral with the insulating material as claimed by the '950 Patent.

The issue of anticipation centers around claim 1 of the '950 Patent. All of the other claims are dependent on claim 1. Claim 1 of the '950 Patent states as follows:

1. A composite insulated roof board structure comprising:

(a) an insulated roof board member comprising (1) a main portion of a rigid coherent solid insulating material, and (2) a top portion comprising a plurality of spaced blocks above said main portion and integral therewith, said blocks defining therebetween a network of interconnected channels at the same level for horizontal venting of water vapor; and

(b) a relatively hard, dense protective top layer which is adhered to the tops of the blocks of said insulated roof board member.

Since the parties do not dispute that V-T 2 pre-dates the '950 Patent, the next consideration for the Court is whether the V-T 2 insulated roof board contains every element of claim 1. The Court finds that there is no genuine issue of material fact that the V-T 2 insulated roof board anticipates the '950 Patent.

Cornell's insulated roof board V-T 2...