Scarborough v. Integricert, LLC.
| Decision Date | 12 August 2015 |
| Docket Number | CIVIL NO. 6:12-0396 |
| Court | U.S. District Court — Western District of Louisiana |
| Parties | RANDALL SCARBOROUGH v. INTEGRICERT, LLC. |
Before the Court is the Motion for Partial Summary Judgment filed by the plaintiff, Randall Scarborough ("Scarborough"). By this Motion, Scarborough seeks a partial judgment that patents in suit, the United States Patent Nos. 6,848,322 ("the 322 Patent") and 7,284,447 ("the 447 Patent"), are not invalid under the doctrines of anticipation and obviousness because the claims of neither Patent were anticipated nor obvious based on prior art. [rec. doc. 107].
For the following reasons, the Motion for Partial Summary Judgment filed by Scarborough [rec. doc. 107] is granted.
The Court will not set forth the entire history of this litigation nor the history of the reexamination of the Patents in suit as the pertinent history has already been set forth in the Court's contemporaneous Reasons for Ruling on the parties' Cross-Motions for Partial Summary Judgment on whether Integricert is entitled to application of the doctrine of absolute intervening rights. Rather, only pertinent portions of that history will be re-stated here..
Scarborough asserts that Integricert, LLC ("Integricert") is infringing several claims of the 322 and 447 Patents. In response, Integricert asserts affirmative defenses, includinganticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C. § 103.1 [See rec. docs. 14, 37 and 121].
The Court conducted a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 390, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ("the Markman hearing") on August 27, 2013.2 Before the claim terms could be construed, reexamination of five claims of the 447 Patent (Claims 1, 14, 15, 27 and 29) and all claims of the 322 Patent (Claims 1-21) was granted. Accordingly, the action was stayed. [rec. doc. 103]. The stay was lifted on February 5, 2015 after the PTO issued Certificates of Reexamination. [rec. doc. 109]. Upon reexamination, all claims of the 322 Patent were determined to be patentable as amended; four claims of the 447 Patent (Claims 1, 14, 15 and 27) were determined to be patentable as amended and one claim (Claim 29) was canceled.
During reexamination of the 447 Patent, the Examiner found Scarborough's arguments contained in his February 19, 2014 response to the Examiner's Non-Final Rejection "not persuasive." Accordingly, by Final Office Action dated June 3, 2014 the Examiner rejected Claims 1, 14, 15 and 27, finding that Bauer anticipated all elements recited in Claims 1, 14, 15 and 27, that Hogan anticipated Claims 1 and 27, that Simmons anticipated Claim 14 and that Richard anticipated Claim 27; the examiner also found that Bauer in view of Lemoine, Hogan and Weinhold rendered Claims 1, 14, 15 and 27 obvious. [rec. doc. 123-8, pg. 44-69].
In further response, on August 1, 2014, Scarborough submitted proposed amendments to his claims and again traversed the Examiner's rejection, setting forth detailed remarks for allowance of his amended claims over the cited prior art and issuance of a reexamination certificate. [rec. doc. 123-8, pg. 1-43].
On September 5, 2014, the Examiner allowed the proposed amendments over the cited prior art, subject to an informality requiring correction to Claim 1 (the addition of "or other device" inserted after "said pad eye"). In so doing, the Examiner "agreed" with Scarborough's August 1, 2014 submission remarks. Accordingly, pursuant to Ex parte Quayle, 25 U.S.P.Q. 74 (1935), prosecution on the merits was closed. [rec. doc. 122-12].
Following a telephonic interview wherein corrections to informalities in the amendment were discussed, on November 7, 2014, the Examiner issued a Statement of Reasons for patentability of Claims 1, 14, 15 and 27, as well as a Notice of Intent to issue an Ex-Parte Reexamination Certificate. [rec. doc. 122-15]. In his Reasons, the Examiner again "agreed" with Scarborough's August 1, 2014 submission remarks stating as follows:
[N]one of the references of record teach or suggest an apparatus for non-destructive testing weld strength and integrity of at least one attachment weld including an attachment structure for attaching to a pad eye or other device joined by the at least one attachment weld to another structure as now amended in claim 1; or providing the attachment weld joining a pad eye, lifting lug, or other device to another structure as now amended in claim 14; or providing at least one test piece comprising a pad eye and the attachment weld joining the pad eye to another structure as now amended in claim 27.3
The Examiner further stated that "Bauer tests 'valve stems', which are different to pad eyes, lifting lugs, or other device joined by the at least one attachment weld to another structure . . .", that "Hogan fails to teach or suggest a device used to test a weld that attaches a pad eye, lifting lug, or other device to another structure . . .", that "Simmons does not teach or suggest a method of testing an attachment weld that joins a pad eye, lifting lug, or other device to another structure in a non-destructive manner", that "McEntire fails to teach or suggest a device used to test a weld that attaches a pad eye, lifting lug, or other device to another structure", that "Richards fails to describe a device used to test, in a non-destructive manner, a weld that attaches a pad eye to an object", that "Lemoine fails to teach or suggest a device used to non-destructively test a weld that attaches a pad eye to an object", and that "Weinhold fails to teach or suggest a device used to non-destructively test a weld that attaches a pad eye to an object." [Id. at pg. 5-7]. The dependent claim (Claim 15) was held to be patentable for the same reasons as the corresponding independent claim (Claim 14).4 [Id. at pg. 8].
An Ex-Parte Reexamination Certificate was issued for the 447 Patent on January 13, 2015. [rec. doc. 106-2].
Due to technicalities, reexamination of the 322 Patent proceeded after that of the 447 Patent. The Examiner issued a Non-Final Rejection of Claims 1-21 on April 9, 2014, finding that Bauer anticipated all elements recited in Claims 1-4 and 7-20, that McEntire anticipated Claims 1, 3, 6 and 12, that Lemoine anticipated Claims 1, 3 and 12, that Simmons anticipatedClaims 1, 12, 13 and 16 ; that Bauer in view of Hogan rendered Claims 1-4 and 7-20 obvious, that Lemoine in view of Hogan rendered Claims 1, 3 and 12 obvious, that McEntire in view of Hogan rendered Claims 1, 3 and 6 obvious, and that Bauer or McEntire in view of Kriesten and Eksergian as evidenced by Gleeson rendered Claim 5 obvious. .
On July 8, 2014, Scarborough responded to the Examiner's Non-Final Rejection submitting proposed amendments to his claims substantially similar to those made with respect to the 447 Patent. Scarborough did not present the same arguments he presented to the Examiner's Non-Final Rejection as he had done with respect to the 447 Patent, presumably because the Examiner had already found those arguments "not persuasive" in his previously issued June 3, 2014 rejection of Claims 1, 14, 15 and 27 of the 447 Patent. [See rec. doc. 123-8, pg. 56-62]. Instead, Scarborough traversed the Examiner's rejection, setting forth detailed remarks for allowance and issuance of a reexamination certificate which are substantially identical to and consistent with those he submitted in his August 1, 2014 submission with respect to the 447 Patent.5 [rec. doc. 123-6].
As was the case with the 447 Patent, on September 5, 2014, the Examiner allowed the proposed amendments, subject to informalities requiring correction to Claims 7, 10, 11 and 12 (the deletion of "a" before "the" in Claims 7, 10 and 11 and "a" before "said" in Claim 12). In so doing, the Examiner "agreed" with Scarborough's July 8, 2014 submission remarks.Accordingly, pursuant to Ex parte Quayle, 25 U.S.P.Q. 74 (1935), prosecution on the merits was closed. [rec. doc. 122-13].
Following a telephonic interview wherein corrections to informalities in the amendment were discussed, on November 7, 2014, the Examiner issued a Statement of Reasons for patentability of Claims 1-21, as well as a Notice of Intent to issue an Ex-Parte Reexamination Certificate. [rec. doc. 123-7]. In his Reasons, the Examiner again "agreed" with Scarborough's July 8, 2014 submission remarks stating as follows:
[N]one of the references of record teach or suggest an apparatus or method for testing weld strength and integrity of an attachment weld including structure for attaching to a pad eye, lifting lug, or other device joined by the attachment weld to another structure as now amended in claims 1, 13, 20, and 21.6
The Examiner further stated that "Bauer tests 'valve stems', which are different to pad eyes, lifting lug, or other device joined by the at least one attachment weld to another structure . . .", that "Hogan fails to teach or suggest a device used to test a weld that attaches a pad eye, lifting lug, or other device to another structure . . .", that "Simmons does not teach or suggest a method of testing an attachment weld that joins a pad eye, lifting lug, or other device to another structure in a non-destructive manner", that "McEntire fails to teach or suggest a device used to test a weld that attaches a pad eye, lifting lug, or other device to another structure", that "Richards fails to describe a device used to test, in a non-destructive manner, a weld that attaches a pad eye to an object", that "Lemoine fails to teach or suggest a device used to non-destructively test a weld that attaches a pad eye to an object", and that "Weinhold fails to teach or suggest a device used to non-destructively test a weld that attaches a pad eye to an object." [Id. at pg. 5-6]. The dependent claims (Claims 2-12 and 14-19) were stated to be patentable for the same...
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