Sears Ecological Applications v. Mli Associates
| Decision Date | 01 September 2009 |
| Docket Number | No. 6:07-CV-145 (DNH/GHL).,6:07-CV-145 (DNH/GHL). |
| Citation | 652 F.Supp.2d 244 |
| Parties | SEARS ECOLOGICAL APPLICATIONS CO., LLC, Plaintiff, v. MLI ASSOCIATES, LLC, Defendant. |
| Court | U.S. District Court — Northern District of New York |
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Lathrop & Gage LLP, of Counsel, Bernadette R. Reilly, Esq., William R. Hansen, Esq., William A. Rudy, Esq., Duane Morris LLP, of Counsel, John Dellaportas, Esq., New York, NY, Marjama Muldoon Blasiak & Sullivan LLP, of Counsel, Denis J. Sullivan, Esq., James R. Muldoon, Esq., Syracuse, NY, Bingham McCutchen LLP, of Counsel, Malcolm K. McGowan, Esq., Robert Danny Huntington, Esq., Washington DC, for Plaintiff.
Locke Lord Bissell & Liddell LLP, of Counsel, Alan B. Clement, Esq., Andrea L. Wayda, Esq., New York, NY, Locke Lord Bissell & Liddell LLP, of Counsel, Patrick C. Gallagher, Esq., Chicago, IL, Gilberti Stinziano Heintz & Smith, P.C., of Counsel, Timothy J. Lambrecht, Esq., Syracuse, NY, for Defendant.
Plaintiff Sears Ecological Applications Company ("SEACO") seeks judicial review pursuant to 35 U.S.C. § 146 of a decision by the United States Patent and Trademark Office Board of Appeals and Interferences ("the Board"). Defendant MLI Associates ("MLI") moves for summary judgment pursuant to Federal Rule of Civil Procedure 56 to affirm the Board's decision. SEACO opposes and cross-moves for summary judgment to reverse the Board's decision, or alternatively, to bar MLI's interfering patent applications pursuant to 35 U.S.C. § 135(b). MLI opposes both of SEACO's motions. Oral argument was heard on May 14, 2009 in Utica, New York. Decision was reserved.
SEACO and MLI are competitors in the deicing and anti-icing agent manufacturing industry. Both parties own a number of patents related to deicing and anti-icing technology. SEACO owns United States Patent Numbers 6,436,310 ("the '310 patent") and 6,440,325 ("the '325 patent"), and MLI owns United States Patent Numbers 5,876,621 ("the '621 patent"), 5,980,774 ("the '774 patent"), and 6,506,318 ("the '318 patent"). Acting under the belief that it was the proper owner of the subject matter claimed in SEACO's '310 and '325 patents, MLI filed two patent applications: (1) Patent Application Number 10/266,975 ("the '975 application") filed on October 8, 2002, and (2) Patent Application Number 10/690,894 ("the '894 application") filed on October 22, 2003. As is customary practice among competing inventors, MLI's patent applications made claims identical to the claims asserted in SEACO's '310 and '325 patents, thereby provoking an interference proceeding before the Board to determine the priority owner of the patented technology.
On December 14, 2005, the Board declared Interference No. 105,405 ("the Interference") between SEACO's '310 and '325 patents and MLI's '975 and '894 applications.1 An interference is a proceeding to determine the priority of an invention between a pending application and either an already-issued patent or another pending application. MANUAL OF PATENT EXAMINING PROCEDURE § 2300.01 (8th ed.2001 & rev. ed.2008). Parties to an interference proceeding must describe the allegedly interfering subject matter. These descriptions are referred to as "counts." See id. § 2301.03. A party's claims corresponding to a count in an interference proceeding, whether stated within an already-issued patent or a pending application, will be deemed invalid or unpatentable if that party loses the priority determination. Id.
Count One of the Interference stated the following subject matter:
A de-icing and anti-icing composition comprising an aqueous solution which contains a low molecular weight carbohydrate and a chloride or acetate salt in which the constituents are present in the following concentration:
Weight %
-----------------------------------------
Carbohydrate 3-60%
Salt Effective freezing point
lowering amount
Water Balance
-----------------------------------------
and where said carbohydrate has a molecular weight in the range of about 180 to 1500, and is at least one selected from the group consisting of glucose, fructose, and higher saccharides based on glucose or fructose, or mixtures thereof.
(
Count Two stated:
A de-icing and anti-icing composition comprising an aqueous solution which contains a low molecular weight amino acid or oligopeptide and a chloride or acetate salt in which the constituents are present in the following concentration:
Weight %
----------------------------------------------
Amino acid or 1-60%
oligopeptide
Salt Effective freezing point
lowering amount
Water Balance
----------------------------------------------
(Id. at 3.)
All claims pending in SEACO's '310 and '325 patents and MLI's '975 and '894 applications were determined to correspond to the subject matter described in either Count One or Count Two of the Interference. (Id.) On February 6, 2007, the Board issued an 80-page decision granting in part and denying in part both parties' preliminary motions. Ultimately, without deciding the issue of priority to the claimed subject matter, the Board invalidated SEACO's '310 and '325 patents.
SEACO moved to bar MLI's applications on a number of grounds, including (1) that claims 38-40, 42-44, 46, and 49 of MLI's '975 application and claims 36 and 37 of MLI's '894 application were untimely pursuant to 35 U.S.C. § 135(b) (SEACO Preliminary Motions 3 and 5); (2) that claims 38-40, 42-44, 46, and 49 of MLI's '975 application and claims 36 and 37 of MLI's '894 application were unpatentable for failure to comply with 35 U.S.C. § 112 (SEACO Preliminary Motions 4, 6, 8, and 12); and (3) that MLI was not entitled to the benefit of the November 9, 1999, September 28, 1999, or September 30, 1997 filing dates of previously filed applications for purposes of establishing priority of the invention described in Count One (SEACO Preliminary Motions 9 and 10). (Id. at 14-16) SEACO also moved to redefine the subject matter described in Count One and Count Two. (SEACO Preliminary Motions 7 and 11). (Id. at 17.)
MLI likewise moved to bar the claims asserted in SEACO's patents on various grounds, including (1) that claims 1-12 of SEACO's '310 patent and claims 1-20 of SEACO's '325 patent were unpatentable under 35 U.S.C. § 102, or alternatively, under 35 U.S.C. § 103 (MLI Preliminary Motion 5); (2) that claims 1-12 of SEACO's '310 patent and claims 9-14 and 18-20 of SEACO's '325 patent were unpatentable for failure to comply with 35 U.S.C. § 112 (MLI Preliminary Motion 2); (3) that SEACO was entitled to neither (a) the benefit of the January 4, 1999 and January 7, 1998 filing dates of two of its previous applications for purposes of establishing priority of the inventions described in Count One and Count Two, nor (b) the January 5, 2001 filing date of one of its previous applications for purposes of establishing priority of the invention described in Count Two (MLI Preliminary Motion 3); and (4) that it was entitled to the September 30, 1997 filing date...
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