Semmler v. American Honda Motor Co., Inc., C2-95-316.

• Decision Date: 02 May 1997
• Docket Number: No. C2-95-316.,C2-95-316.
• Citation: 990 F.Supp. 967
• Parties: Franz SEMMLER, Plaintiff, v. AMERICAN HONDA MOTOR CO., INC. and Honda Motor Co., Ltd., Defendants.
• Court: U.S. District Court — Southern District of Ohio

990 F.Supp. 967

Franz SEMMLER, Plaintiff, v. AMERICAN HONDA MOTOR CO., INC. and Honda Motor Co., Ltd., Defendants.

No. C2-95-316.

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

May 2, 1997.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Richard G. Taft, Strauss & Troy, Cincinnati, OH, Victor M. Wigman, Wigman, Cohen, Leitner & Myers, Washington, DC, Herbert Stanley Rosenblum, Rosenblum & Rosenblum, Alexandria, VA, for plaintiff.

Mary Ellen Fairfield, Vorys, Sater, Seymour & Pease, Columbus, OH, Nicholas L. Coch, Rogers & Wells, New York City, for defendants.

MEMORANDUM OPINION AND ORDER

GRAHAM, District Judge.

In this patent infringement suit, the plaintiff Franz Semmler ("Semmler"), owner of U.S. Patent No. 4,207,845 (the "Semmler patent") asserts claims against defendants American Honda Motor Co., Inc. and Honda Motor Co., Ltd. ("Honda"). The Semmler patent relates to an automotive fuel control device. Semmler applied for his patent on December 28, 1976. It was issued on June 17, 1980.

After a Markman hearing¹ on the issue of claims interpretation, this Court construed the claims of the Semmler patent to refer to a device which interrupts the supply of fuel each and every time the speed of the engine exceeds the speed normally associated with the position of the throttle in order to effect a fuel savings which would be considered important and substantial to one skilled in the art in 1976. See Memorandum Opinion and Order, September 30, 1996; Order of December 16, 1996 (granting in part and denying in part motion for clarification and/or reconsideration of memorandum opinion and order of September 30, 1996).

Claim 1 of the Semmler patent describes an apparatus which includes: 1) a means for interrupting fuel supply under closed throttle conditions when a speed value is exceeded (closed throttle fuel cut); 2) a means for interrupting the fuel supply when a predetermined maximum vehicle speed is exceeded (speed governor); and 3) a means for interrupting the fuel supply during open throttle conditions whenever the engine is overrunning based on a comparison of engine speed and the position of the throttle (open throttle overrunning fuel cut). Claim 5 is limited to the open throttle overrunning fuel cut device described in Claim 1. Claim 17 is limited to an apparatus which includes means for interrupting the supply of fuel whenever the engine is overrunning which is independent of the position of the throttle (open and closed throttle overrunning fuel cut).

All three of the independent claims include the limitation that the claimed apparatus interrupts the fuel supply whenever the engine is overrunning to effect a considerable fuel saving. The closed throttle fuel cuts in Claims 1 and 17 and the speed governor described in Claim 1 were known in the prior art. The accused device does incorporate a closed throttle fuel cut but Semmler does not assert that his patent covers such a device. The claims of infringement are directed, instead, to the means for effecting the open throttle overrunning fuel cut described in Claims 1, 5 and 17.

Claims 1 and 5 of the patent include the following elements: 1) a selecting means (throttle) for regulating the supply of fuel to the engine which is moveable to select a supply between maximum supply and idling supply; 2) means for interrupting the supply of fuel which comprises a control device and means for switching said control device; 3) means for monitoring engine speed; 4) means for monitoring the state of the selecting means; and 5) a control circuit in which the two monitoring means are linked together, and which provides a fixed relationship between the selecting means and engine speed so that whenever the engine is overrunning, the supply of fuel is interrupted to effect a considerable fuel saving. Claim 17 contains all of the elements of Claims 1 and 5, except that Claim 17 does not specifically describe the control circuit which provides the fixed relationship which interrupts the fuel supply. Instead, Claim 17 claims a means for effecting an interruption of the fuel supply whenever the engine is overrunning, whereby considerable fuel saving is obtained.

According to the Semmler patent, overrunning occurs whenever the speed of the engine exceeds the speed which is associated with a particular throttle setting. This is the fixed relationship which is incorporated into the control circuit which links together engine speed and throttle position and effects the fuel cuts. In the specification of his patent, Semmler acknowledges that the relationship between throttle position and engine speed varies with the demand on the engine which may range from no demand to heavy demand. Jt.Ex.I, Semmler Patent, Col. 7, Lines 34-56. He teaches that the overrunning fixed relationship for the control circuit should be set so the vehicle can always reach its maximum speed within an expected engine demand range which is based on the anticipated range of road load conditions. See September 30, 1996, Mem. Op. & O., pp. 13, 14. The range of road load conditions would extend from light demand when the vehicle is lightly loaded and traveling on a level road to high demand when the vehicle is heavily loaded climbing a hill. Automotive engineers refer to this range of engine demand as the road load line.

This matter is now before the Court on defendants' motions for summary judgment on invalidity and non-infringement. The procedure for granting summary judgment is found in Fed.R.Civ.P. 56(c), which 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 judgment as a matter of law.

The evidence must be viewed in the light most favorable to the nonmoving party. Adickes v. S.H. Kress & Co., 398 U.S. 144, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970). Summary judgment will not lie if the dispute about a material fact is genuine, "that is, 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). However, summary judgment is appropriate if the opposing 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 Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). See also Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The nonmoving party must "present affirmative evidence in order to defeat a properly supported motion for summary judgment." Liberty Lobby, 477 U.S. at 257. It is not sufficient for the nonmoving party to merely "show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586.

"Summary judgment is as appropriate in a patent case as in any other where no genuine issue of material fact is present and the movant is entitled to judgment as a matter of law." Spectra Corp. v. Lutz, 839 F.2d 1579, 1581 n. 6 (Fed.Cir.1988). However, "it must be employed carefully, `for an improvident grant may deny a party a chance to prove a worthy case.'" Lemelson v. TRW, Inc., 760 F.2d 1254 (Fed.Cir.1985) (citation omitted).

I. INVALIDITY

A. LEGAL STANDARDS

The validity of a patent, like any other issue, may be determined on summary judgment. See, e.g., Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed.Cir.1991); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1567 (Fed.Cir.), cert. denied, 488 U.S. 892, 109 S.Ct. 228, 102 L.Ed.2d 218 (1988); Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1020 (Fed.Cir.1985). A patent is presumed valid and the burden of persuasion is, and always remains, on the party asserting invalidity. 35 U.S.C. § 282; Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1359 (Fed.Cir.1983). The defendant has the burden of establishing the invalidity of the claims of the patent by clear and convincing evidence. Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 1423 (Fed.Cir.1988) The burden of persuasion may be more easily met where the challenger produces prior art that is more pertinent than that considered by the Patent and Trademark Office ("PTO"). Id. Issues addressing the validity of a patent include anticipation, obviousness and indefiniteness.

B. ANTICIPATION (35 U.S.C. § 102)

Section 102(a) of Title 35, United States Code, provides that a person shall not be entitled to a patent when:

the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent[.]

1. Dolza Patent

Honda asserts that the Semmler patent is invalid under 35 U.S.C. § 102(a), because it is anticipated by U.S. Patent No. 2,891,527 issued to Dolza on June 23, 1959. Dolza was not before the PTO when it considered Semmler. Dolza bears a striking similarity to Semmler. It is more relevant than any of the prior art before the PTO. Like Semmler, Dolza describes a device for interrupting the fuel supply to an automobile engine during overrunning in order to save fuel. Defendants' Motion for Summary Judgment, Appendix, Dolza Patent, Col. 6, Lines 39-42. Like the Semmler patent, it defines overrunning as the situation when the speed of the engine exceeds the normal engine speed for the throttle setting. Id., Col. 4, Lines 50-55. However, the structure disclosed in Dolza is purely mechanical, whereas the structure disclosed in Semmler is electrical.

Honda previously moved for summary judgment on the ground of obviousness in light of Dolza, and this Court held:

The claims of the Semmler patent are anticipated by the language of Dolza which contemplates...