Saint Gobain Autover v. Xinyi Glass North America, Case No. 1:06CV2781.

• Decision Date: 12 October 2009
• Docket Number: Case No. 1:06CV2781.
• Citation: 666 F.Supp.2d 820
• Parties: SAINT GOBAIN AUTOVER USA, INC., et al., Plaintiffs, v. XINYI GLASS NORTH AMERICA, INC., et al., Defendants.
• Court: U.S. District Court — Northern District of Ohio

666 F.Supp.2d 820

SAINT GOBAIN AUTOVER USA, INC., et al., Plaintiffs, v. XINYI GLASS NORTH AMERICA, INC., et al., Defendants.

Case No. 1:06CV2781.

United States District Court, N.D. Ohio, Eastern Division.

October 12, 2009.

COPYRIGHT MATERIAL OMITTED

Kip T. Bollin, Matthew D. Ridings, Thompson Hine, Cleveland, OH, William T. Enos, Andrew K. Beverina, Arthur L. Neustadt, Barry J. Herman, Jean-Paul Lavalleye, Jeffrey B. McIntyre, Oblon, Spivak, McClelland, Maier & Neustadt, Alexandria, VA, for Plaintiffs.

James F. McCarthy, III, Laura A. Hinegardner, Katz, Teller, Brant & Hild, Cincinatti, OH, Joseph A. Sebolt, Ryan K. Liebengood, Sand & Sebolt, Canton, OH, for Defendants.

MEMORANDUM OPINION

SARA LIOI, District Judge.

This matter is before the Court on the motion of Defendants, Xinyi Glass North America, Inc. and Xinya Automobile Class Co., Ltd. (collectively "Xinyi" or "Defendants"), for summary judgment. (Doc. No. 122.) The motion is fully briefed and ripe for decision.

I. FACTUAL AND PROCEDURAL BACKGROUND

Plaintiffs Saint Gobain Autover USA, Inc., Saint Gobain Sekurit Mexico, S.A., DE C.V., and Saint Gobain Sekurit USA, Inc. (collectively "Saint Gobain" or "Plaintiffs") are the patent holder of the '395 and '669 patents.¹ (Doc. No. 9, Am. Compl. at ¶¶ 8-9). Plaintiffs accuse Defendants of intentionally inducing infringement, and/or contributorily infringing both the '395 and '669 patents by making, offering for sale, selling, and/or importing certain aspects of the patents.

Both patents-in-suit relate generally to glazings, i.e., windshields, for installation in motor vehicles. The '395 patent is entitled Method of Centering Windshield Glazings, and discloses and claims a method of centering a glazing upon a mounting bracket. The invention is summarized in the '395 patent, which states, in part:

The invention provides a profiled spacer which acts as a support and centering element for the glazing. The profiled spacer includes a lip portion which is oriented approximately parallel to the glazing surface and which projects beyond the peripheral or edge of the glazing. The lip portion, in the installation position of the glazing, rests against the flange of the window frame running parallel to the peripheral area of the glazing.

The profiled spacer described in the invention is dimensioned in thickness and length so that the lip portion may deform during insertion of the glazing into the window frame. The lip portion is bent from about 45 to 90 degrees relative to the original orientation of the lip portion. While the lip portion of the spacer carries the dead weight of the glazing on the one side, it simultaneously assumes the centering and sealing function for the surrounding gap between the peripheral area of the glazing and the flange of the window frame opposite the peripheral area. This results in said gap having a constant width. The covering of said gap by an additional sealing or decorative profile is therefore, no longer necessary. Hence, an extraordinarily economical solution is provided by the invention.

(Opp. Brief, Ex. 2, Col. 2:3-24.) Plaintiffs assert independent claims 14 and 15 of the '395 patent, as well as dependent claim 16.

The '669 patent, entitled Spacer for Windshield Bracket, discloses and claims a glazing with at least one profiled spacer with a lip portion projecting beyond the periphery of the glazing. The patent contains a virtually identical summary as that for the '395 patent above, though it also includes the following language:

A bead of adhesive lies adjacent the profiled spacer, in direct contact with the window frame and either the glazing or the spacer. Optionally, a second spacer is employed for increased support. The second spacer also lies adjacent the adhesive bead, preferably opposite the first spacer so as to retain the adhesive bead between the two spacers.

(Opp. Brief, Ex. 1, Col. 2:28-34.) With respect to the '669 patent, Plaintiffs assert dependent claims 1, 9, and 16, and independent claims 2-8, 10-12, 15, and 17-20.

Plaintiffs filed the present lawsuit on November 16, 2006. (Compl.) By the Amended Complaint, Plaintiffs seek an injunction against continued infringement, damages for past infringement, treble damages for willful infringement, and attorney's fees and costs. (Am. Compl. at 3.) On February 24, 2009, 2009 WL 580327, the Court issued a Memorandum Opinion on the subject of claim construction. Specifically, the Court found that the term "centering" and its related terms did not require construction, while the term "aligning" merited construction and related to the process of ensuring "a uniform distance between the bracket and the glazing along a contract surface of the spacer." (Doc. No. 118, Memo. Opinion at 22-23.)

Defendants seek summary judgment, pursuant to Fed.R.Civ.P. 56(c). In support of their motion, defendants offer as defenses non-infringement, obviousness, and non-enablement.

II. STANDARD OF REVIEW

Federal Rule of Civil Procedure 56(c) governs summary judgment motions and provides:

The judgment sought 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. [...]

Rule 56(e) specifies the materials properly submitted in connection with a motion for summary judgment:

Supporting and opposing affidavits shall be made on personal knowledge, shall set forth such facts as would be admissible in evidence, and shall show affirmatively that the affiant is competent to testify to the matters stated therein. [...] The court may permit affidavits to be supplemented or opposed by depositions, answers to interrogatories, or further affidavits. When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denial of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so respond, summary judgment, if appropriate, shall be entered against the adverse party.

However, the movant is not required to file affidavits or other similar materials negating a claim on which its opponent bears the burden of proof, so long as the movant relies upon the absence of the essential element in the pleadings, depositions, answers to interrogatories, and admissions on file. Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

In reviewing summary judgment motions, this Court must view the evidence in a light most favorable to the non-moving party to determine whether a genuine issue of material fact exists. Adickes v. S.H. Kress & Co., 398 U.S. 144, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970); White v. Turfway Park Racing Ass'n, 909 F.2d 941, 943-44 (6th Cir.1990). A fact is "material" only if its resolution will affect the outcome of the lawsuit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Determination of whether a factual issue is "genuine" requires consideration of the applicable evidentiary standards. Thus, in most civil cases the Court must decide "whether reasonable jurors could find by a preponderance of the evidence that the [non-moving party] is entitled to a verdict." Id. at 252, 106 S.Ct. 2505.

Summary judgment is appropriate whenever the non-moving party fails to make a showing sufficient to establish the existence of an element essential to that party's case and on which that party will bear the burden of proof at trial. Celotex, 477 U.S. at 322, 106 S.Ct. 2548. Moreover, "the trial court no longer has a duty to search the entire record to establish that it is bereft of a genuine issue of material fact." Street v. J.C. Bradford & Co., 886 F.2d 1472, 1479-80 (6th Cir.1989) (citing Frito-Lay, Inc. v. Willoughby, 863 F.2d 1029, 1034 (D.C.Cir.1988)). The non-moving party is under an affirmative duty to point out specific facts in the record as it has been established which create a genuine issue of material fact. Fulson v. Columbus, 801 F.Supp. 1, 4 (S.D.Ohio 1992). The nonmovant must show more than a scintilla of evidence to overcome summary judgment; it is not enough for the non-moving party to show that there is some metaphysical doubt as to material facts. Id.

III. LAW AND ANALYSIS

A. Plaintiffs' Motions in Limine

Before the Court reaches the merits of the dispositive motion, it must address several evidentiary matters. Plaintiffs have filed three motions in limine. The first motion (Doc. No. 130) seeks to preclude Defendants from relying upon certain theoretical calculations contained in the expert report of Dr. A. Jeffrey Giacomin. Two other motions seek to prevent Defendants from raising the defense of non-enablement (Doc. No. 131) and the defense of obviousness (Doc. No. 132).

1. Plaintiffs' motion to preclude defense of obviousness

In their Amended Answers, Defendants raised the affirmative defense of obviousness. (Doc. No. 11, Xinyi Automobile Glass Co. Am. Ans., ¶¶ 17, 18; Doc. No. 12, Xinya Glass North America Am. Ans., ¶¶ 17, 18). During fact discovery, Plaintiffs served interrogatory requests upon Defendants seeking to discover the basis for Defendants' invalidity defenses. (Doc. No. 132, Mot. in Limine, Ex. B.) On June 22, 2007, Defendants responded by stating that the invalidity defenses were raised "to avoid waiving the defense. Investigation continues and Xinyi will supplement its response to this interrogatory as additional information becomes available." (Ex. C at 2.)

Unsatisfied with this response, Plaintiffs sent two letters to defense counsel, August 7, 2007 and December 28, 2007, requesting a "substantive" response to the invalidity contention interrogatories. (Ex. D.) Defense counsel...