Simmons, Inc. v. Bombardier, Inc., 1:01-CV-00048 PGC.
| Decision Date | 27 July 2004 |
| Docket Number | No. 1:01-CV-00048 PGC.,1:01-CV-00048 PGC. |
| Citation | 328 F.Supp.2d 1188 |
| Parties | SIMMONS, INC., Plaintiff, v. BOMBARDIER INC. and Bombardier Motor Corporation of America, and Bombardier Recreation Products, Inc., Defendants. |
| Court | U.S. District Court — District of Utah |
David G. Mangum, David M. Bennion, Margaret N. McGann, Parsons, Behle & Latimer, Salt Lake City, UT, Cynthia M. Klaus, Larkin, Hoffman, Daly & Lindgren, Ltd., Bloomington, MN, Alan M. Anderson, Sharna A. Wahlgren, Christopher K. Larus, Stuart K. Ford, Laura J. Borst, Fulbright & Jaworski, LLP, Minneapolis, MN, for Plaintiff.
James S. Jardine, Rick L. Rose, Rick B. Hoggard, Samuel C. Straight, David E. Finkelson, Ray, Quinney & Nebeker, Salt Lake City, UT, Scott J. Pivnick, Robert J. Walters, Pillsbury Winthrop, LLP, Washington, DC, Kevin T. Kramer, William P. Atkins, James R. Menker, Pillsbury Winthrop, LLP, McLean, VA, for Defendants.
ORDER AND MEMORANDUM OPINION ON MOTIONS FOR SUMMARY JUDGMENT
Plaintiff Simmons Inc. has alleged that the Defendants (referred to collectively as Bombardier) have infringed claims 1, 2, 6, 9, 10, and 11 of U.S. Patent No. 5,386,594 (the "594 patent" or "patent 594"). The prosecution history of the 594 patent is long and complicated and will be set forth as relevant below. Litigation over the 594 patent also has a history, including prior litigation in the District of Minnesota.1 This matter achieved a temporary resolution in this District before Judge Kimball when a summary judgment of non-infringement was granted to Bombardier based on Judge Kimball's thorough review of claim construction issues.2 However, the Federal Circuit reversed the grant of summary judgment and rather than resolving the disputed issues themselves, remanded.3 This court now has the responsibility of attempting to resolve the remaining issues. The parties were before the court for oral argument on July 20, 2004 on several motions, including: (1) Plaintiff's Motion for Summary Judgment on Claim Construction; (2) Defendant's Motion for Summary Judgment of Non-Priority Under 35 U.S.C. § 120; (3) Plaintiff's Motion for Summary Judgment on No Inequitable Conduct; (4) Defendants' Motion for Summary Judgment of Non-Infringement and/or Invalidity of Simmons' Patent; (5) Plaintiff's Motion for Summary Judgment of No Anticipation; (6) Plaintiff's Motion for Summary Judgment of No Obviousness; and (7) Defendants' Motion for Summary Judgment of Non-Willfulness. The court found oral arguments instructive. The court took the matter under advisement and now issues its ruling.
This action involves a dispute among competing manufacturers of snowmobile skis. Verlin Simmons started Simmons, Inc., in 1988. Simmons is a Utah company which manufactures and sells a variety of snowmobile related parts and accessories, including a commercial embodiment of United States Patent No 5,836,594 under the federally registered mark Flexi-Ski.
On April 10, 2001, Simmons filed a complaint alleging that Bombardier's Precision Ski infringed the 594 patent. Bombardier manufactures and sells snowmobiles and related products, including snowmobile skis under the Ski-Doo mark.
The claimed invention relates to skis used on snowmobiles and similar vehicles to support such vehicles, to facilitate their movement across snow and ice, and to provide directional guidance for them. Simmons alleges that Bombardier's Precision Ski infringes claims 1, 2, 6, 9, 10, and 11 of the 594 patent. Claims 1 and 10 are independent claims. Claims 2 and 9 are claims that depend from claim 1. This means that an infringing device must have all of the elements or limitations of independent claim 1 as well as those of the dependent claims. Specifically, claim 2 depends from claim 1 and adds the limitation that the bottom and side portions form a channel. Claim 6 of the 594 patent depends from claim 2 and specifies the additional limitation that the front portion of the "bottom" of the snowmobile ski based specified in claim 1 "compris[e] a concavity." Claim 9 depends from claim 1 and adds the limitation that the side portions taper down at the front and up at the rear of the ski. Claim 10 is an independent claim which is a combination of the limitations of claims 1 and 9. Claim 11 depends from claim 10 and is a combination of claims 10 and 2.
Plaintiff's Motion for Summary Judgment on Claim Construction (# 207-1)
The first step a court must take in a patent infringement case is to construe the claims of the patent to determine their scope.4 Claim construction is an issue of law for the district court to decide.5
The court generally must "presume that the terms in the claim mean what they say" and "give full effect to the ordinary and accustomed meaning of the claim terms."6 However, the "intrinsic evidence" must still be examined "to determine whether the patentee has set forth an explicit definition of a term contrary to its ordinary meaning, has disclaimed subject matter, or has otherwise limited the scope of the claims."7
The court will discuss below only the language that is disputed. The court otherwise finds that the proposed constructions put forth by Simmons are correct. Thus, where Bombardier does not dispute the construction put forth by Simmons, the court adopts Simmons' construction.
Claim 1 of the 594 patent reads in full:
A snowmobile ski, comprising:
a base extending in a longitudinal direction and having a bottom for moving over snow, the base also extending in a lateral direction between a first and second edge thereof and having a top adapted to be connected to a snowmobile;
a first side portion extending in the longitudinal direction and extending downward from the first edge; a second side portion extending in the longitudinal direction and extending downward from the second edge; a first guide rod disposed on a bottom of the first side portion; and a second guide rod disposed on a bottom of the second portion.
• "base"
The court adopts Simmons' construction of the term base:
The claim term "base" means the structure which supports all of the other claimed structures of the snowmobile ski, and upon which all of the other claimed structures of the snowmobile ski stand or are mounted.
According to Random House Webster's Unabridged Dictionary, "base" means "the bottom support of anything: that on which a thing stands or rests: a metal base for the table."8 The alternate construction proposed by Bombardier does not change the plain meaning as set forth by Simmons. The primary dispute — whether or not the side portions are a part of the base or whether they are separate structures supported by the base — is resolved by other language in claim 1 and does not need to be resolved at this point.
• "bottom for moving over snow"
The Federal Circuit determined this to mean "the underside for moving over snow" which is not limited to being flat.9
• "base also extending in a lateral direction between a first and second edge thereof"
The court adopts Simmons' construction of the above terms with the exception of the additional word "approximately" and the substitution of the word "base" for "ski". The changes are noted in italics:
The claim term "base also extending in a lateral direction between a first edge and a second edge thereof" means the structure which supports all of the other claimed structures of the snowmobile ski (base) extends the width of the snowmobile ski in a direction approximately perpendicular to the longitudinal direction between first and second edges of the base. The term "edge" means the end or outermost lateral boundary of the snowmobile ski base.
The court agrees with Bombardier that "lateral" is not limited to being perfectly perpendicular to a longitudinal center line. For example, while longitudinal and lateral lines on a globe are perpendicular at the equator, they do not remain perfectly perpendicular around the surface of the globe. Thus, the limitation of "perpendicular" is not required by the claim language. However, it is clear that the claim terms "longitudinal" and "lateral" in the claim are referring to opposing directions so that the term "approximately perpendicular" gives the language its plain and ordinary meaning.
The primary dispute in this case is over the single word "edge." "Edge" can mean, as put forth by Simmons, "a line or border at which a surface terminates."10 Thus, Simmons argues that "edge" must be the outermost lateral boundary of the snowmobile ski base. The court accepts this definition because of the context of the claim.
Bombardier would have this court define "edge" so as to make the side portions a component separate and apart from the base. It is true, as Bombardier argues, that the claim language clearly contemplates the base extending in a lateral direction between the two edges of the base and not necessarily the edges of the entire ski. Nevertheless, subsequent language in the claim makes clear that the base does in fact extend the entire width of the ski. The plain and ordinary meaning of the term base is something which "supports" a structure. Webster's defines "base" as "the bottom part of anything: the support or foundation...."11 When referring to the base of a particular structure (as is the case here) the plain and ordinary meaning of base is clearly something which generally bears the weight of that structure — in this case, the weight of the ski. Thus, any ski which fits within the language of claim 1 is going to have "side portions" which are part of the "base" for the simple fact that it is the side portions which will bear the weight of the ski. This is clear from the fact that the guide rods are "disposed on a bottom" of the side portions. The purpose of the guide rods requires that they touch the ground and have weight upon them while the ski is in use.
"Claim language is given its plain, ordinary, or accustomed...
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