Preemption Devices v. Minnesota Min. and Mfg. Co.

• Decision Date: 26 September 1985
• Docket Number: Civ. A. No. 80-0268.
• Parties: PREEMPTION DEVICES INC. v. MINNESOTA MINING AND MANUFACTURING CO.
• Court: U.S. District Court — Eastern District of Pennsylvania

630 F. Supp. 463

PREEMPTION DEVICES INC. v. MINNESOTA MINING AND MANUFACTURING CO.

Civ. A. No. 80-0268.

United States District Court, E.D. Pennsylvania.

September 26, 1985.

Joel S. Goldhammer, Seidel, Gunda, Goldhammer & Abbott, P.C., Philadelphia, Pa., for 3M.

Roger Hewell, Dann Durfman Hewell & Skillman, Philadelphia, Pa., for PDI.

MEMORANDUM AND ORDER

GILES, District Judge.

Minnesota Mining and Manufacturing Company ("3M") has initiated contempt proceedings against Preemption Devices, Inc. ("PDI"), seeking various court-imposed sanctions for PDI's allegedly willful and knowing violation of the injunction previously issued by this court on April 26, 1983. Specifically, 3M contends that PDI has sold the OE-29 emitter, the OR-1/OR-2 optical detector, and the PSO-1 phase selector into infringing systems. Further, 3M asserts that PDI has made, intends to make, and has sold or intends to sell the LS-164 optical emitter, the OD-155 optical detector, the Model 262 preemption device, and the PD-2 preemptor. 3M claims that the aforementioned devices are the same or substantially the same as the enjoined devices: the OE-29 optical emitter, the OEC-29 optical emitter controller, the OR-2 optical detector, and the PSO-1 phase selector. Since the former devices are not "colorably different" from the latter devices, 3M contends that PDI is in contempt of this court's injunctive order. On the other hand, PDI contends that it has not knowingly violated this court's injunction. PDI contends that 3M has failed to show that the sale of the OE-29, the OR-1/OR-2, and the PSO-1 constitutes contributory infringement. Further, PDI believes that its sale of, or intention to sell, the "new" devices is not in violation of the injunction because they are more than colorably different from the devices referenced in the injunction and, hence, are not within the scope of the injunction. From June 29 to July 3, 1984, the parties appeared before this court for a hearing on 3M's contempt motion. The court heard testimony and received other evidence. The parties submitted proposed findings of fact and conclusions of law. Based on the record evidence, the court makes the following findings of fact and conclusions of law.

I. FINDINGS OF FACT

A. Background

1. PDI initially brought this action seeking a declaration that United States Patent No. RE 28,100 was invalid. PDI admitted that if the patent was valid it was guilty of willful and deliberate infringement of claims 1, 3-7, and 9-10 of U.S. Patent RE 28,100. Preemption Devices Inc. v. Minnesota Mining and Manufacturing Co., 559 F.Supp. 1250, 1252 (E.D.Pa.1983).

2. In a decision dated March 18, 1983, as amended by order dated April 25, 1983, this court found claims 1, 3-7, and 9-10 of U.S. Patent RE 28,100 valid. In accordance with plaintiff's prior admission, I found that PDI had willfully and intentionally infringed defendant's patent. Id. at 1265.

3. On April 25, 1983, this court also issued a permanent injunction providing as follows:

That the plaintiff, its officers, employees and agents are permanently enjoined from making, using or selling, or offering for sale, light-activated traffic signal remote control systems or components in infringement of U.S. Letters Patent No. RE 28,100, specifically including the components of such systems identified and illustrated in the brochures attached as Exhibits to the Complaint herein as "Phase Selector" (Exhibit A), "Two Way Optical Detector" (Exhibit B), and "Optical Emitter Controller" (Exhibit C).

559 F.Supp. at 1265.

4. The scope of the above-quoted injunction is clear on its face. The injunction addresses both the specific and the general. The order enjoins PDI from making, using, selling and offering for sale PDI's Model PSO-1 phase selector, Model OR-2 optical emitter, and OEC-29 controller in infringement of the United States Patent No. RE 28,100. Generally, it prohibits PDI from making, using, selling and offering for sale any light-activated traffic signal remote control systems or components thereof in infringement of United States Patent No. RE 28,100. Id. The "in infringement" language of the injunction is not superfluous. Under section 271(c) of Title 35 of the United States Code, the sale of a non-patented component part of a patented system must fit within the test which it prescribes. In order for the injunction to be violated, the code provisions must be violated.

5. William H. Long, along with Light Energy Systems, Inc. ("LES"), developed a light-activated traffic control device designed to aid emergency vehicles in reaching their destinations. Defendant 3M acquired the assets of LES, including the right to the patent. 3M as the holder of the Long-LES patent, was granted a reissue of the patent—Patent No. RE 28,100. This patent, referred to as the "Long Patent," is the focal point of this lawsuit.

6. 3M manufactures and sells a system which incorporates the Long Patent under the trademark "OPTICOM." As previously concluded, OPTICOM is a priority device which enables emergency vehicles to control the color shown on a traffic light in favor of their direction of travel. 559 F.Supp. at 1253.

7. OPTICOM is comprised of a light source, a receiver and computer circuitry. A flashing high-intensity light, which flashes at a predetermined pulse rate, is mounted on the emergency vehicle. Both the receiver and the computer control module are located at or near the traffic light. They are external to the signal controller. The receiver is sensitive only to the kind of high intensity light emitted from the transmitter. 559 F.Supp. at 1253. The computer control module is able to sense the present phase of the light—red, amber or green. This is accomplished by circuitry which is connected across each of the lamps in a traffic light. For example, when a light shows red, the circuitry attached to the red lamp senses the increased voltage telling the computer that the signal is in the red phase. The phase selector circuitry then commands the signal's own controller to cycle ahead to the desired color. The traffic signal is thereby phased through its normal sequence. Id.

8. In the earlier proceedings, I found critical distinctions between the prior art, the Shepherd and the Ramsey patents, and the Long Patent. The Shepherd and Ramsey patents are similar to the Long Patent only in the general goal they achieve: to allow an emergency vehicle easier and more speedy access to its destination. Long differs radically from the Shepherd and Ramsey patents in the method by which it achieves the requisite signal change. The Long Patent is designed to provide a further refinement of the general goal of the other two devices. It allows the vehicle to pass quickly and easily through an intersection but creates less of a danger to the emergency vehicle and cross street traffic.

9. All three patents contain some device external to the traffic signal which triggers the mechanical movements necessary to obtain a green signal for the emergency vehicle when it crosses the intersection. However, unlike the Long Patent which utilizes a high energy light as an activating device, the other two patents use different sources of energy. The Shepherd patent teaches activation by sound, radio or light. 559 F.Supp. at 1254. The suggested light source is not any form of high intensity light, but rather a gas discharge tube. The Ramsey patent, on the other hand, uses a radio signal as its activating force. Id. The latter energy sources were, however, not without problem. The Shepherd Device, with its light-activated system, was open to activation by extraneous light sources such as the sun. Id. The radio emissions utilized under Ramsey could themselves lead to an accidental triggering of traffic lights on parallel streets. Furthermore, under the Ramsey patent, the driver of the emergency vehicle must push one of three buttons corresponding to the direction in which he is traveling. Consequently, human error could result in an undesireable light pattern. Id. OPTICOM, on the other hand, does not require knowledge of the direction of travel nor discrimination between various directional buttons. Id. Also, it does not produce unwanted signal changes on parallel streets nor is it subject to accidental activation by external sources. Id.

10. OPTICOM is a "phase selection" device. However, the Long Patent may be distinguished from Ramsey and Shepherd on the basis of the mechanism used to advance the signal to the desired phase. That is, its control module senses the present phase of the traffic signal and its phase selection circuitry then commands the signal's controller to cycle ahead to the desired color. I previously credited the testimony of 3M's expert, Dr. Parkinson, with establishing that the Ramsey and Shepherd patents teach preemption rather than phase selection. In other words, as the name implies, preemption devices preempt the signal's own control mechanism. Id. at 1254. Because an external system is used with preemption, physical modification of the signal's controller is required. OPTICOM utilizes the existing controller within the signal, leaving the internal mechanisms of the signal untouched. The introduction of an outside control mechanism further distinguishes preemption devices from the Long Patent. Since preemption devices take over the function of changing signals, they need not have a device which senses the present phase of the light as the emergency vehicle approaches. OPTICOM's computer module on the other hand is able to sense the present phase of the traffic light and utilize the signal's own controller to obtain the desired light phase. 559 F.Supp. at 1254.

11. I found the most critical difference between the Long Patent and the Shepherd and Ramsey patents to be the light patterns displayed at the intersection when these devices are in operation. 559 F.Supp. at 1254. A system based on Shepherd will result in either a display of...