P.A.T., Co. v. Ultrak

• Citation: 948 F.Supp. 1506
• Decision Date: 02 December 1996
• Docket Number: Civil Action No. 95-2273-EEG.
• Parties: P.A.T., CO. and Kustom Signals, Inc., Plaintiffs, v. ULTRAK, INC., Defendant.
• Court: U.S. District Court — District of Kansas

948 F.Supp. 1506

P.A.T., CO. and Kustom Signals, Inc., Plaintiffs, v. ULTRAK, INC., Defendant.

Civil Action No. 95-2273-EEG.

United States District Court, D. Kansas.

December 2, 1996.

Michael Yakimo, Jr., D.A.N. Chase, Ginnie C. Derusseau, Chase & Yakimo, Overland Park, KS, for P.A.T., Co., Kustom Signals Inc.

Scott A. McCreight, Lawrence Ray Lassiter, McCreight & Lassiter, L.C., Kansas City, MO, Thomas L. Cantrell, Jeffrey E. Bacon, Dallas, TX, Stephen J. Wyse, Jenkins & Gilchrist, P.C., Dallas, TX, for Ultrak, Inc.

MEMORANDUM AND ORDER

EARL E. O'CONNOR, District Judge.

This matter is before the court on defendant's motion for partial summary judgment (Doc. # 21), plaintiffs' motion to strike defendant's motion for partial summary judgment (Doc. # 27) and for oral argument on the motion (Doc. # 32), and the request by all parties for the court's interpretation of certain disputed terms of the claims in suit of plaintiffs' patents. The court held a hearing on November 19, 1996, pursuant to the principles set forth in Markman v. Westview Instruments, Inc., ___ U.S. ___, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The court has reviewed the parties' briefs and submissions and is now prepared to rule. As an initial matter, plaintiffs' motion for oral argument on defendant's summary judgment motion will be denied because the court has determined that oral argument will not be of material assistance in resolving the motion.

Plaintiffs allege that defendant's surveillance system infringes their patents for a vehicle mounted surveillance and videotaping system, specifically, U.S. Patent 4,789,904 (the "'904 patent") and U.S. Patent 4,949,186 (the "'186 patent") (collectively, the "Peterson patents"). Plaintiff P.A.T., Co. ("PAT-CO") is the owner by assignment of both the '904 and '186 patents. Plaintiff Kustom Signals, Inc. ("KSI") manufactures and sells the patented system, under the trademark EYEWITNESS, pursuant to a license from PATCO.

Relying on a third-party patent, U.S. Patent 4,112,818 (the "Garehime patent" or "the '818 patent"), defendant contends that portions of plaintiffs' patents are invalid for anticipation, pursuant to 35 U.S.C. § 102(a) and (b). Specifically, defendant seeks summary judgment on claims 1, 6, and 7 of the '904 patent and 9, 11, 13, and 15 of the '186 patent ("the challenged claims"). Alternatively, defendant seeks to invalidate the challenged claims under 35 U.S.C. § 103 for obviousness in light of the Garehime prior art patent.

Uncontroverted Facts

The '904 apparatus patent and the '186 method patent were issued to inventor Roger D. Peterson.¹ Peterson's invention, which is the subject of the '904 and '186 patents, is a vehicle mounted surveillance and videotaping system for use by law enforcement personnel to videotape stops for routine traffic violations. The subject matter of the Garehime patent is a video surveillance and weapon system designed for the protection of a limited region. The Garehime patent was issued in 1978 while the '904 patent was issued in 1988 and the '186 patent was issued in 1990.

A. The Peterson Patents.

The Peterson patents disclose a system that "provides an audio and visual record" of events which can be used in any type of public or private transportation. Independent claim 1 of the '904 patent discloses the following claimed invention:

A vehicle mounted surveillance system, comprising:

(a) a camera;

(b) a video recorder;

(c) a control head for operator control by a person in the vehicle;

(d) a vault for housing the video recorder;

(e) power supply for providing power for operating said camera, said video recorder and said control head; and

(f) connector means for interconnecting said camera, said video recorder and said control head to form a surveillance system operatively connected to said power supply to enable on/off operation thereof.

Dependent claim 6 of the '904 patent calls for the system described in claim 1, wherein the control head is mounted inside the vehicle and includes power on/off and record/stop switches. Dependent claim 7 of the '904 patent calls for the control head of the system described in claim 6 to have a status indicator means for displaying the operational status of the surveillance system.

The central focus of the invention disclosed in the Peterson patents is to create a video record of events. The '186 method patent discloses the operation of the video surveillance system described in the '904 patent. Claim 9 of the '186 patent calls for:

A method of forming a record of events on a tape, comprising the steps of:

(a) initially installing a video recorder in a vault at a location hidden from view in a vehicle;

(b) loading a tape for recording by the recorder;

(c) connecting a camera to the recorder to provide video input for tape recording thereby;

(d) operating the camera and video recorder to enable a recording on tape to be made; and

(e) providing vehicle electrical power for video recorder operation.

Dependent claim 11 of the '186 patent discloses "[t]he method of claim 9 including the step of automatically activating the surveillance system upon actuation of the vehicle's emergency system." Dependent claim 13 of the '186 patent discloses "the method of claim 9 including the step of preserving the integrity of the audio-visual record for subsequent use." Dependent claim 15 of the '186 patent discloses "the method of claim 9 including the step of maintaining the temperature within said vault in a range of 40° F. to 90° F. for providing optimum environment[sic] condition for operation of said video recorder."

B. The Garehime Patent.

The Garehime patent discloses a surveillance and weapon system which is designed "for the protection of aircraft and other confined regions, as for example other vehicles such as ships, trains, and the like, and various enclosures that are frequently subject to criminal attacks such as banks, prisons, courtrooms, stores, offices."

The Garehime '818 patent claims "a weapon and optical scope means in fixed alignment so that the aim thereof is substantially coincident" with "pan and tilt movability." The weapon and optical scope are to be mounted behind a one-way vision screen means which is to be "arranged to substantially completely obscure said weapon and scope means from the view of persons in said limited region." The Garehime patent also discloses an "electronic image sensor means," i.e., a camera, "optically coupled with said scope means to receive an optical image therefrom." The image sensor is connected to a video surveillance screen located on the control console.

In addition, the Garehime patent specification discloses "a video and audio recorder generally designated for preserving a record of events in which the surveillance system is utilized." The video recorder is housed in the control console, which includes a viewing screen, and a sophisticated array of system controls and status indicators, including on/ off and record/stop switches. The control console shown in the drawings is housed inside the cockpit of the aircraft. When in operation, the control console is isolated in a lockable compartment or room which is separate from the area under surveillance. When not in operation, the control console may be folded to a closed and locked position, in which state it resembles a utility or work table. The Garehime patent calls for the interconnection of the camera, video recorder, and control console so that the system is operatively connected to the control console. Finally, the Garehime system calls for a power supply for powering the system.

As described in the patent specification, a "particularly important aspect" of the Garehime invention is that it is "completely hidden" from the view of the subject. This characteristic makes it difficult for the subject to defend against the system's weapon and creates a deterrent effect because a subject cannot determine whether or not the system is present.

Analysis

I. Standards Governing Summary Judgment.

The Federal Rules of Civil Procedure should be applied in patent cases no differently than they are applied in any other type of case. SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed.Cir.1985). Thus, summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); accord Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 2509-10, 91 L.Ed.2d 202 (1986).

The moving party bears the initial burden of showing that there is an absence of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265 (1986); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576-77 (Fed.Cir.1991). Essentially, the inquiry as to whether an issue is genuine is "whether the evidence presents a sufficient disagreement to require submission to the jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson, 477 U.S. at 251-52, 106 S.Ct. at 2512. An issue of fact is genuine if the evidence is sufficient for a reasonable jury to return a verdict for the nonmoving party. Id. at 248, 106 S.Ct. at 2510. This inquiry necessarily implicates the substantive evidentiary standard of proof that would apply at trial. Id. at 252, 106 S.Ct. at 2512.

"When a sufficiently supported motion has been submitted, the burden of coming forward and showing that there is a genuine issue of material fact shifts to the non-movant." Scripps, 927 F.2d at 1571; see also Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 1355-56, 89 L.Ed.2d 538 (1986). In deciding a summary judgment motion, we must view the evidence, and resolve all doubts, in...