SABASTA v. BUCKAROOS, INC.

• Decision Date: 03 February 2010
• Docket Number: No. 4:06-cv-180.,4:06-cv-180.
• Parties: Steven W. SABASTA and Sioux Falls Insulation Supply, Inc., a South Dakota corporation, d/b/a Sioux City Insulation & Supply, Inc., Plaintiffs, v. BUCKAROOS, INC., Defendant.
• Court: U.S. District Court — Southern District of Iowa

683 F.Supp.2d 937

Steven W. SABASTA and Sioux Falls Insulation Supply, Inc., a South Dakota corporation, d/b/a Sioux City Insulation & Supply, Inc., Plaintiffs, v. BUCKAROOS, INC., Defendant.

No. 4:06-cv-180.

United States District Court, S.D. Iowa, Central Division.

February 3, 2010.

Daniel J. Lueders, William A. McKenna, Charles Johnson Meyer, Woodard Emhardt Moriarty McNett & Henry LLP, Indianapolis, IN, James S. Zmuda, Califf & Harper PC, Moline, IL, for Defendant.

Debra Lynne Hulett, Nyemaster Goode West Hansell & O'Brien PC, Des Moines, IA, Sander J. Morehead, Tim R. Shattuck, Woods Fuller Shultz & Smith PC, Sioux Falls, SD, for Plaintiffs.

ORDER

ROBERT W. PRATT, Chief Judge.

Plaintiffs, Steven W. Sabasta and Sioux Falls Insulation Supply, Inc. (referenced collectively hereinafter as "Plaintiff"¹ or "Sabasta"), filed the present action for patent infringement on April 17, 2006. Clerk's No. 1. Plaintiff's Complaint alleges that Sabasta is the original inventor of a roll-bending die used to make saddles for pipe insulation. Compl. ¶ 2. Sabasta was granted United States Patent No. 6,751,995 ("the '995 Patent") on June 22, 2004. Id. According to the Complaint, Defendant, Buckaroos, Inc. ("Buckaroos" or "Defendant"), has commercially exploited Sabasta's invention since March 2005 "by manufacturing and selling certain pipe insulation saddles² that were made with a process that infringes upon the '995 Patent." Id. ¶ 7.

Before the Court are two motions filed by Defendant: Buckaroos' Motion for Summary Judgment of Invalidity of Claims 1-6 and 14-15 (Clerk's No. 118) and Buckaroos' Motion for Summary Judgment of Inequitable Conduct (Clerk's No. 128). In its Motion for Summary Judgment of Invalidity of Claims 1-6 and 14-15, Buckaroos asserts that Claims 1-6 and 14-15 of the '995 Patent are invalid as obvious under 35 U.S.C. § 103. Clerk's No. 118 at 1-2. In its Motion for Summary Judgment of Inequitable Conduct, Buckaroos contends that Sabasta violated the duty of candor by failing to inform the United States Patent and Trademark Office ("USPTO" or "PTO") of certain material prior art. Clerk's No. 128 at 2. Sabasta filed resistances to both motions (Clerk's Nos. 161, 167), and Buckaroos filed replies (Clerk's Nos. 187, 214).³ The matters are fully submitted.

I. FACTUAL BACKGROUND

Sabasta first started making and selling pipe insulation saddles in approximately May 2000. Pl.'s Material Facts in Support of Resistance to Mot. for Summ. J of Invalidity (hereinafter "Pl.'s Material Facts 1") ¶ 1. These pipe saddles were made with a three roll-bending machine and did not have flared ends or ribs pressed into them. Id. ¶¶ 2-3. In mid-2000, Sabasta constructed a prototype ribbed and flared saddle. Id. ¶ 4. Sabasta, however, could not mass produce the prototype ribbed and flared saddle with the three-roll-bending equipment, but after researching the matter, determined that specially-fabricated dies used in conjunction with a two roll-bending machine could efficiently produce the ribbed and flared pipe saddles. Id. ¶¶ 5-6. Sabasta purchased a two roll-bending machine, the Acrotech Model 1618, in June 2001, and worked with Acrotech to fabricate specially designed dies. Id. ¶ 7; Def.'s Material Facts in Support of Mot. for Summ. J. of Inequitable Conduct (hereinafter "Def.'s Material Facts 2") ¶ 2, 7.

Acrotech is a company that makes roll-bending machinery. Acrotech has been promoting and selling the Acrotech Model 1618, a two roll-bending machine that uses an upper roll tube assembly, or "die," in conjunction with a lower pliable roller, since 1986. Def.'s Material Facts in Support of Mot. for Summ. J. of Invalidity (hereinafter "Def.'s Material Facts 1") ¶¶ 1, 5. The machine was sold with a manual and Acrotech has marketed and promoted materials in relation to the Acrotech 1618 machine for years. Id. ¶¶ 2-4. To use the Acrotech machine to make smaller diameter pieces, the standard roll tube assembly is replaced with a mounting block referred to as a "Small OD" attachment that uses a die arrangement such as a 1" or 2" shaft assembly. Id. ¶ 4. When the Acrotech machine is configured with the Small OD attachment, the die of each shaft assembly includes mounting portions at each end, where each die end engages two cam rollers on the Small OD attachment to align the die. Id. ¶ 5. The cam roller arrangement is standard equipment on the Acrotech machine with the Small OD configuration, and Sabasta was aware of this fact. Id. ¶¶ 6-7. Standard shaft assemblies in the Acrotech machine with the Small OD attachment include a threaded shaft at one end that is bolted to the machine. Def.'s Material Facts 1 ¶ 6. Sabasta received a manual for the Acrotech machine he purchased in 2001 and read it several times. Def.'s Material Facts 2 ¶¶ 8-9.

Sabasta first produced ribbed and flared saddles using the specially designed dies in September 2001, and first sold pipe saddles manufactured using the subject matter of the '995 Patent in October 2001. Id. ¶¶ 8-9. In July 2002, Sabasta contacted patent counsel to see about filing a patent on the subject matter of the '995 Patent. Pl.'s Material Facts in Support of Resistance to Mot. for Summ. J. of Inequitable Conduct (hereinafter "Pl.'s Material Facts 2") ¶ 2. Sabasta relied on his patent attorney to advise him regarding the patentability of his invention, and to submit appropriate documents, information, and argument to the USPTO. Id. ¶ 3. Sabasta provided numerous documents to his patent attorney, including photographs of ribbed and flared dies, and photographs of and documents relating to the Acrotech 1618 Machine. Id. ¶ 4.

Sabasta, via his attorneys, filed Patent Application No. 10/215,614 (the '614 Application)⁴ on August 9, 2002, and submitted certain prior art with his filing. Def.'s Material Facts 2 ¶¶ 10, 16; Pl.'s Material Facts 2 ¶ 6. Though Sabasta did submit an Information Disclosure Statement to the USPTO, he did not submit any information regarding the Acrotech Model 1618 machine or its manual in his disclosure. Def.'s Material Facts 1 ¶¶ 24-25. During the patent application process, Sabasta signed an oath acknowledging his duty of candor to the USPTO. Def.'s Material Facts 2 ¶ 12. The USPTO mailed an "Office Action" on October 8, 2003, rejecting claims 1-5, 10, 15, and 20 of the '614 Application under 35 U.S.C. § 103(a) in view of Howell (3,150,707).⁵ Id. ¶ 18; Def.'s Material Facts 1 ¶ 21. The Office Action also rejected claims 1 and 2 of the '614 Application under the same statutory authority over Okude⁶ in view of Hanson.⁷ Def.'s Material Facts 2 ¶ 18. On December 23, 2003, Sabasta submitted an Amendment to the '614 Application, amending as-filed independent claims 1 and 15 to incorporate as-filed dependent claims 6 and 16. Id. ¶ 19. The '995 Patent issued on June 22, 2004.

II. STANDARD FOR SUMMARY JUDGMENT

Summary judgment "shall be rendered forthwith 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). An issue is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A fact is material if the dispute over it might affect the outcome of the suit under the governing law. Id. The moving party has the burden of demonstrating the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Anderson, 477 U.S. at 248, 106 S.Ct. 2505. In meeting its burden, the moving party may support his or her motion with affidavits, depositions, answers to interrogatories, and admissions. See Celotex, 477 U.S. at 323, 106 S.Ct. 2548. Once the moving party has carried its burden, the nonmoving party must go beyond the pleadings and, by affidavits, depositions, answers to interrogatories, or admissions on file, designate the specific facts showing that there is a genuine issue for trial. See Fed.R.Civ.P. 56(e); Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548; Anderson, 477 U.S. at 257, 106 S.Ct. 2505. In order to survive a motion for summary judgment, the nonmoving party must present sufficient evidence for a reasonable trier of fact to return a verdict in his or her favor. Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548. On a motion for summary judgment, a court is required to "view the evidence in the light most favorable to the nonmoving party and give that party the benefit of all reasonable inferences." See United States v. City of Columbia, 914 F.2d 151, 153 (8th Cir.1990) (citing Woodsmith Pub. Co. v. Meredith Corp., 904 F.2d 1244, 1247 (8th Cir.1990)). A court does not weigh the evidence or make credibility determinations. See Anderson, 477 U.S. at 252, 106 S.Ct. 2505. A court only determines whether there are any disputed issues and, if so, whether those issues are both genuine and material. Id.

A court must keep in mind that summary judgment is not a paper trial. Accordingly, a "district court's role in deciding the motion is not to sift through the evidence, pondering the nuances and inconsistencies, and decide whom to believe." Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 920 (7th Cir.1994). In a motion for summary judgment, this Court has but one task, to decide, based on the evidence of record as identified in the parties' moving and resistance papers, whether there is any material dispute of fact that requires a trial. See id. (citing Anderson, 477 U.S. at 249, 106 S.Ct. 2505 and 10A Charles A. Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure § 2712 (3d ed. 1998)). The parties then share the burden of identifying the evidence that will facilitate this assessment. Waldridge, 24 F.3d at 921. Nevertheless, "summary judgments...