Omegaflex, Inc. v. Parker Hannifin Corp.
| Citation | 425 F.Supp.2d 171 |
| Decision Date | 31 March 2006 |
| Docket Number | No. CIV.A. 02-30022-MAP.,CIV.A. 02-30022-MAP. |
| Parties | OMEGAFLEX, INC., Plaintiff v. PARKER HANNIFIN CORPORATION, Defendant |
| Court | U.S. District Court — District of Massachusetts |
William J. Cass, Steven Michael Coyle, Michael J. Rye, Cantor Colburn LLP, Bloomfield, CT, Brian J. Hairston, Connolly Bove Lodge & Hutz LLP, Wilmington, DE, Charles Francis O'Brien, Cantor Colburn
LLP, Bloomfield, CT, for Omegaflex, Inc., Counter Defendant.
Kenneth G. Cole, Luke L. Dauchot, Thompson Hine LLP, Cleveland, OH, Bruce E. Falby, DLA Piper Rudnick Gray Cary U.S. LLP, Boston, MA, Rudolf E. Hutz, Connolly Bove Lodge & Hutz LLP, Wilmington, DE, Jeffrey C Metzcar, Thompson Hine LLP, Dayton, OH, Harold Pezzner, Connolly Bove Lodge & Hutz LLP, Wilmington, DE, for Parker Hannifin Corporation, Counter Claimant.
MEMORANDUM AND ORDER REGARDING PLAINTIFF'S MOTIONS FOR SUMMARY JUDGMENT AND DEFENDANT'S SUBSTITUTE MOTION FOR SUMMARY JUDGMENT (Dkt. Nos. 55, 57, & 83)
Plaintiff, OmegaFlex, Inc. ("OmegaFlex"), has filed this two-count action alleging that Defendant, Parker Hannifin Corporation ("Parker"), has infringed its patents on a fitting used to effectuate leaktight, metal-to-metal seals in flexible gas piping systems. Defendant denies infringement and has filed a counterclaim challenging the validity of Plaintiffs patents.
Plaintiff now moves for summary judgment on its own claim of infringement and on Defendant's counterclaim charging that its patents are invalid. Defendant opposes these motions and seeks summary judgment of invalidity of the claims of Plaintiffs patents.
For the reasons set forth below, the court will: (1) allow Plaintiffs motion for summary judgment of infringement, (2) allow Plaintiffs motion for summary judgment that its patents are not invalid, and (3) deny Defendant's substitute motion for summary judgment of invalidity.
On June 27, 2000, the United States Patent and Trademark Office ("PTO") issued Patent No. 6,079,749 ("the '749 patent") to Plaintiff. Shortly thereafter, Defendant requested that the PTO reexamine the '749 patent, and the PTO ultimately provided Plaintiff with a Reexamination Certificate.1 On August 6, 2002, the PTO issued to Plaintiff Patent No. 6,428,052 ("the '052 patent"). These two patents (collectively "the patents-in-suit") are part of the same family of patents: the '052 patent is a continuation of the '749 patent, which, in turn, is a continuation-in-part of a prior patent, United States Patent No. 5,799,989 ("the '989 patent").
The patents-in-suit relate to a preassembled fitting for corrugated tubing. '749 patent, col.1 ll.13-16; '052 patent, col.1 ll.16-19. A corrugated tube is a pliable metal hose with undulating peaks and valleys. The patents-in-suit teach a device for connecting one length of corrugated tubing to another, or for connecting one length of such tubing to the hardware of a piping system that conveys natural gas. (Dkt. No. 46, Ex. 7, Seering Report 6, 8.)
Plaintiff's fittings generally consist of: (1) a fitting body, i.e., the primary component of the fitting; (2) a nut for engaging the body; (3) a sealing device, such as a collet2 or split ring washer; and (4) a metal tubular insert or "locating sleeve" extending from the top of the body. See, e.g., '749 patent, co1.8 ll.37-48. Among other things, the locating sleeve maintains the necessary alignment between the body and the corrugated tubing.3
To use Plaintiff's fitting, the installer begins by snapping the corrugated tubing into the fitting. This action causes some portion of the sealing device to come to rest within a valley of the corrugated tubing. When the installer subsequently tightens the nut, the sealing device and the corrugated tubing move forward over the locating sleeve onto the fitting body. This process flares the cut end of the corrugated tubing creating a metal-to-metal seal by folding the convolutions of the tubing back against themselves.
Although fittings for corrugated tubing existed prior to Plaintiff's inventions, these devices required special sealing tools known as "flare tools" or employed less reliable sealing mechanisms such as rubber gaskets.4 Plaintiff asserts that by simplifying the installation process, its inventions increased safety, saved money, and addressed a long-felt need of those in the field.
In January 1998, less than one year after Plaintiff commercialized its technology in a product called the "AutoFlare" fitting, Defendant began manufacturing and selling the "FastMate" fitting. This device was an embodiment of United States Patent No. 6,036,237 (), which the PTO issued to Michael Sweeney, a longtime Parker employee,5 on March 14, 2000.
The original version of the FastMate fitting consisted of a fitting body, nut, and collet. (See Dkt. No. 85, Ex. 13, Geary Report 3.) Defendant promoted this product as a labor-saving, cost-effective way to connect corrugated tubing. (Dkt. No. 61, Ex. 21, Fox Dep. 60-61, Oct. 30, 2003; Dkt. No. 61, Ex. 22, Dougher Dep. 195, 205-08, Oct. 29, 2003.) However, numerous contractors who purchased the first FastMate fitting found it difficult to install (Fox Dep. 61), and many complained about "random leakage problems in the field," (Dkt. No. 60, Ex. 6, Fisher Dep. 87, Oct. 23, 2003).
In May 1998, Defendant responded to such complaints by issuing a "product alert" to its representatives charged with training customers. (Dkt. No. 61, Ex. 16, Parflex Product Alert; see also Dkt. No. 60, Ex. 14, Fitzpatrick Dep. 90-93, Feb. 19, 2004 (indicating this was the only "product alert" issued by Defendant's Parflex Division over a four-year period).) Apparently, this remedy proved ineffective as customers subsequently began returning large quantities of FastMate fittings (Dougher Dep. 76-77), and Defendant was forced to recall the product. In November 1998, Defendant released a revised FastMate fitting that incorporated a locating sleeve. (Dkt. No. 61, Ex. 17, Moner Dep. 301, Oct. 8, 2004.)6 Unlike its predecessor, this version has met with customer approval and enjoyed commercial success.
On February 11, 2002, Plaintiff filed a one-count complaint alleging that Defendant's redesigned FastMate fitting infringed the '749 patent. In an answer tendered on July 26, 2002, Defendant asserted numerous defenses7 and brought a counterclaim pursuant to Fed.R.Civ.P. 13(a) and 20(a) seeking declaratory judgment of patent invalidity, unenforceability, and noninfringement.8
On September 30, 2002, Plaintiff served Defendant with interrogatories seeking information regarding the bases of its invalidity allegations. In a response dated July 11, 2003, Defendant stated that: (1) the '989 patent constituted "prior art" to various claims of the patents-in-suit that rendered these claims invalid under 35 U.S.C. §§ 102 and 103; (2) Defendant did "not intend to assert invalidity under 35 U.S.C. § 111"; (3) certain dependent claims of the patents-in-suit were inconsistent with their parent claims, rendering them invalid under 35 U.S.C. § 112; and (4) other claims of the patents-in-suit would also be indefinite under section 112 "if the claims are not interpreted to differ from the FastMate fittings." As Plaintiff later pointed out, Defendant never sought to supplement these answers.
On September 26, 2003, Plaintiff sought a Rule 30(b)(6) deposition regarding, among other things, Defendant's invalidity contentions. (Dkt. No. 70, Ex. 3, Pl.'s Notice Rule 30(b)(6) Dep. 1, 7.)9 In response, Defendant took the position that "such contentions should be properly explored through interrogatories or expert witnesses." Accordingly, Defendant chose not to provide a witness to answer questions concerning any prior art that might invalidate the patents-in-suit. Defendant also elected not to designate a representative to discuss other facts that might make the patents-in-suit unenforceable. (Dkt. No. 70, Ex. 4, Oct. 10, 2003 Pezzner to Coyle Letter 3.)
At the close of fact discovery in the spring of 2004, the court issued a scheduling order for initial expert reports by the party bearing the burden of proof, rebuttal reports, and expert depositions. (See Dkt. No. 36, Further Scheduling Order.) Pursuant to that order, Defendant submitted the expected expert testimony of David Geary on June 22, 2004. (See Geary Report.)10
In his report, Geary sought to answer a single question: whether the patents-insuit were invalid for obviousness. Significantly, Geary did not address whether the patents-in-suit might be invalid under 35 U.S.C. §§ 102, 111, or 112.11
Noting that the Sweeney patent "contains each element of the '749 and '052 patents except for the ... locating sleeve" (id. at 3), Geary concluded that the prior art would have (1) motivated a person of ordinary skill in the art to add a locating sleeve to the fitting described by Sweeney and (2) provided a reasonable expectation that making such a modification would lead to a certain degree of success. In support of this conclusion, Geary referenced a device known as the "Parker Compressed Fitting," but did not cite the '989 patent as an invalidating reference. During a subsequent deposition, Geary expounded on the significance of the Parker Compressed Fitting to his obviousness analysis (Geary Dep. 220-22), but once again made no effort to analyze the claims of the '989 patent.
On July 2, 2004, Plaintiff submitted the report of its expert, Dr. Warren Seering. In his report, Seering opined that the term "sealing device," as used in the patents-insuit, "would be understood by one of ordinary skill in the art ... to be any suitable mechanical device . . . which would participate in the creation of a tight closure." (Seering Report at 22-23.)
On July 13, 2004, Plaintiff...
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...the origin of the subject matter sought to be patented. Id. (citation omitted). See also Omegaflex, Inc. v. Parker Hannifin Corp., 425 F.Supp.2d 171, 180-81 & nn. 16-19 (D.Mass.2006) (elaborating on the factors listed above). Where prior art manifests all elements of a challenged invention,......