Oleksy v. Gen. Elec. Co.

• Decision Date: 26 June 2013
• Docket Number: No. 06 C 01245,06 C 01245
• Parties: HENRYK OLEKSY, Plaintiff, v. GENERAL ELECTRIC CO., Defendant.
• Court: U.S. District Court — Northern District of Illinois

HENRYK OLEKSY, Plaintiff,

v.GENERAL ELECTRIC CO., Defendant.

No. 06 C 01245

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

Date: June 26, 2013

Judge Virginia M. Kendall

MEMORANDUM OPINION AND ORDER

Plaintiff, Henryk Oleksy, filed suit against General Electric Co. ("GE") alleging that GE infringed his patented method for determining machining instructions to cut the root sections of turbine blades. This protracted litigation has involved substantial motion practice and multiple discovery disputes. The parties submitted cross motions for summary judgment regarding the validity of the Oleksy patent pursuant to 35 U.S.C. § 101. The parties also submitted ten claim terms for construction. Additionally, Oleksy moved to strike certain of GE's affirmative defenses pursuant to Federal Rule of Civil Procedure 12(f) and GE moved to dismiss Oleksy's claim for contributory infringement pursuant to Fed. R.Civ.Pro. 12(b)(6). For the reasons set forth below, Oleksy's motion for summary judgment is granted and GE's is denied. GE's motion to dismiss the contributory infringement claim is granted. Oleksy's motion to strike is granted in part and denied in part. The claim terms are construed as set forth below.

STATEMENT OF FACTS¹

Oleksy worked at the Preferred Machine and Tools Products Corporation in Bedford Park, Illinois. (GE 56.1 ¶ 7.) While there, he developed a computer-controlled process for improving the manufacture of steam turbine blades at the Bedford Park plant. (Id. at ¶ 8; HO 56.1 Resp. ¶ 8.) The USPTO issued United States Patent No. 6,449,529 (the "Oleksy patent"), covering Oleksy's method, on September 10, 2002. (HO 56.1 ¶ 11.)

GE manufactures turbines. (GE 56.1 ¶ 13.) A turbine consists of a rotary wheel and blades. (Id.) The blades are connected to the wheel by a root section component. (Id.) Specifically, projections on the interior surface of the root sections, called "hooks," attach and hold turbine blades to the rotary wheel. (HO 56.1 ¶¶ 24-25; GE 56.1 Resp. ¶¶ 24-25.) To prevent the blades from wobbling, the curvature of the hook in the root section must be machined to specific dimensions. (GE 56.1 ¶ 14; HO 56.1 ¶ 26.)

The Oleksy patent claims a method of determining the machining instructions for purposes of milling root sections of turbine blades. (HO 56.1 at Ex. A.) This method uses a CNC milling machine to cut a concave internal hook in the root section of a turbine blade. (Id.) An alleged benefit of the Oleksy method is that it requires only one machine setup and therefore simplifies the procedure for machining the curved surface of the hook. (Id.)

Specifically, the Oleksy patent's abstract describes the patented method as: "[a] method of determining machining instructions during machining of a workpiece using a machine having a cutter, the surfaces of the workpiece being defined by a plurality of programmed instructionsobtained by trigonometric analysis of the required curvatures of the surfaces." (HO 56.1 at Ex. A.)

Claim 1 recites several components used in combination to accomplish the "method of determining machining instructions . . . during machining of a workpiece": (1) at least a three-axis milling machine having a spinning form cutter and a rotary table; (2) a workpiece to machine precise concave and convex surfaces within a metal block; (3) the surfaces of said workpiece defined by of a plurality of programmed instructions that are obtained by trigonometric analysis; (4) that the trigonometric analysis is performed using a diagram of concave and convex surfaces and movements of the cutter and rotary table; and (5) a root section having at least a first hook as a holding hook. (GE 56.1 ¶ 24; HO 56.1 ¶ 12; HO 56.1 Ex. A.) The claim states that the spinning form cutter moves in a convex path defined by trigonometric analysis, while the rotary table simultaneously rotates. (Id.) The resulting programmed instructions are used by the CNC machine to determine machining instructions that are used by the CNC machine to cut the required concave hook in the root section. (Id.)

Claim 2 recites "[t]he method of claim 1 wherein said trigonometric analysis of the required curvatures of the surfaces comprises analysis of a diagram of a graphical construction of the required curvatures of the surfaces and the movements of said spinning cutter and said rotary table relative to the application of said spinning form cutter to the required curvatures of said root section of said turbine blade, said graphical construction consisting essentially of a trigonometric analysis, said root section comprising at least one holding hook." (GE 56.1 ¶ 42; HO 56.1 ¶ 13; HO 56.1 Ex. A.)

Claim 3 recites "[t]he method of claim 1 wherein said trigonometric analysis of the required curvatures of the surfaces and movements of said spinning cutter and said rotary tabledetermines the path of said spinning form cutter as a curved convex radius of E plus R wherein E is the distance from center of rotary table to first holding hook and R is the radius on the first holding hook." (GE 56.1 ¶ 43; HO 56.1 ¶ 14; HO 56.1 Ex. A.)

Claim 4 recites "[t]he method of claim 1 wherein said trigonometric analysis of the required curvatures of the surfaces and movements of said spinning cutter and said rotary table determines the path of said spinning form cutter as a curved convex radius of E plus R wherein E+R of the convex radius is determined by points L,C, and A, L being the minimum distance P and distance M determined by angle +Q, the angle of rotation to the left, C being the minimum distance E determined by the angle 0; A being the minimum distance F and distance Y determined by angle -Q, the angle of rotation to the right; E being the distance from the center of rotary table to first holding hook, and R the radius on the first holding hook." (GE 56.1 ¶ 44; HO 56.1 ¶ 15; HO 56.1 Ex. A.)

The Oleksy Patent was reexamined by the Patent Office at the request of GE and the Patent Office affirmed patentability of all claims of the Oleksy Patent. (HO 56.1 ¶ 16.)

DISCUSSION

I. The Validity of Oleksy's Patent Under 35 U.S.C. § 101

A. Summary Judgment Standard

Summary judgment is proper when "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c)(2). In determining whether a genuine issue of fact exists, the Court must view the evidence and draw all reasonable inferences in favor of the party opposing the motion. See Bennington v. Caterpillar Inc., 275 F.3d 654, 658 (7th Cir. 2001). However, in doing so, the Court will limit its analysis of the factson summary judgment to evidence that is properly identified and supported in Local Rule 56.1 statement submitted by the parties. See Bordelon v. Chicago Sch. Reform Bd. of Trustees, 233 F.3d 524, 529 (7th Cir.2000). Where a proposed statement of fact is supported by the record and not adequately rebutted, the court will accept that statement as true for purposes of summary judgment. Id.

B. The Patent Is Valid Under Section 101

The parties agree that there is no genuine issue of material fact with respect to whether the Oleksy patent is valid because determining the validity of a patent is a question of law. See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011) ("Issues of patent-eligible subject matter are questions of law."); see also Parker v. Flook, 437 U.S. 584, 589 (1978) (deciding as a matter of law that, "[a] process is "within the statutory definition when it was either tied to a particular apparatus or operated to change materials into a 'different state or thing.'").

While a patent issued by the USPTO enjoys a presumption of validity, Section 101 of the Patent Act defines patentable subject matter. It provides that:

Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. § 101. However, "laws of nature, natural phenomena, and abstract ideas" are not patentable. Diamond v. Diehr, 450 U.S. 175, 185 (1981); see also Bilski v. Kappos, 130 S.Ct. 3218, 3222 (2010); Mayo Collaborative Services, dba Mayo Medical Laboratories v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012); Association for Molecular Pathology v. Myriad Genetics, Inc., No. 12-398, S.Ct. 2013 WL 2631062, at *7 (June 13, 2013). This is because "they are the basic tools of scientific and technological work." Gottschalk v. Benson,409 U.S. 63, 67 (1972); see also Mayo, 32 S.Ct. at 1293 (noting that "the Court has written that a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are manifestations of ... nature, free to all men and reserved exclusively to none.") (internal citations and quotations omitted).

While a law of nature or mathematical formula is not patentable by itself, the application of the law or formula may be patentable. See Diehr, 450 U.S. at 187 ("an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection"); Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 188 (1939) ("While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge and scientific truth may be."); Funk Brothers Seed Co. v. Kalo Inoculant Co., 68 S.Ct. 440, 441 (1948) ("If there is to be invention from [a discovery of a law of nature], it must come from the application of the law of nature to a new and useful end.") (internal citations omitted); Association for...