Sukup Mfg. Co. v. Sioux Steel Co.
| Citation | 357 F.Supp.3d 801 |
| Decision Date | 11 February 2019 |
| Docket Number | No. C17-3073-LTS (Lead Case),C18-3017-LTS (Related Case),C17-3073-LTS (Lead Case) |
| Parties | SUKUP MANUFACTURING CO., Plaintiff/Counter Defendant, v. SIOUX STEEL COMPANY, Defendant/Counter Claimant. |
| Court | U.S. District Court — Northern District of Iowa |
Allison Elizabeth Kerndt, Jeffrey D. Harty, David T. Bower, Matthew Roger Eslick, Nyemaster Goode West Hansell & O'Brien PC, Des Moines, IA, for Plaintiff/Counter Defendant.
Michael J. Frey, Hellige Frey & Roe, Sioux City, IA, Daniel Woodard Redding, Pro Hac Vice, James Robert Higgins, Jr., Pro Hac Vice, Robert John Theuerkauf, Pro Hac Vice, Middleton Reutlinger PSC, Louisville, KY, for Defendant/Counter Claimant.
This action is before me for submission to the parties of a ruling on patent claims construction after a Markman hearing.1 Defendant Sioux Steel Company (Sioux Steel) holds United States Patent No. 6,499,930 ('930 patent) which, as will be discussed, involves a grain bin unloading system. Plaintiff Sukup Manufacturing Co. (Sukup) seeks a declaratory judgment under 28 U.S.C. §§ 2201 and 2202 that its Zero-Entry Paddle Sweep products do not infringe the '930 patent. See Doc. No. 1.2
The parties dispute the construction of certain claim terms contained in the '930 patent.
Sukup filed its complaint (Doc. No. 1) on November 16, 2017. On August 3, 2018, the parties filed a joint claim construction and prehearing statement. Doc. No. 31. This was later amended and submitted with a joint appendix. See Doc. Nos. 37, 38. On September 13, 2018, the parties presented a technical tutorial on the background of the technology at issue in the case. See Doc. No. 36. On September 19, 2018, Sukup filed its opening claim construction brief. Doc. No. 43. Sioux Steel submitted its rebuttal claim construction brief (Doc. No. 44) on September 24, 2018, and Sukup submitted a reply (Doc. No. 45) on October 1, 2018. Prior to the Markman hearing, Sioux Steel submitted another rebuttal (Doc. No. 50) and Sukup submitted a supplement (Doc. No. 52). The parties appeared for a Markman hearing on October 30, 2018. Sioux Steel submitted a supplement (Doc. No. 56) and post-hearing claim construction brief (Doc. No. 57) on November 13, 2018. Sukup submitted a supplemental brief (Doc. No. 58) on November 14, 2018.
This case involves a "grain bin unloading system" with five claims and up to 13 terms at issue. Grains bins are used to store harvested grain, such as wheat and corn, to protect the grain from weather conditions prior to the grain being used or sold. See Doc. No. 42 at 10. After grain is harvested, it is generally dried and then loaded into the grain bin through an opening in the roof. Id. To unload a cylindrical grain bin, the grain flows under the force of gravity through a well or sump in the floor to a discharge conveyor or other system under the grain bin, which transports the grain to a truck or other means of transport. Id. When the grain reaches the angle of repose, gravity no longer works to evacuate the grain bin, resulting in an "inverted cone" formation of the grain. Id. The residual grain can amount to 20 to 25 percent of grain in the bin, which must be physically removed through some mechanism. Id. This can be done by sweeping the grain toward the opening by a mechanical sweep. Id. at 10-11.
The '930 patent discloses a "Grain Bin Unloading System,"3 which is described in the abstract as follows:
An unloading system for a grain bin. The unloading system includes a sweep conveyor for sweeping grain from the interior of the grain bin to a well in the floor of the grain bin. The sweep conveyor includes an elongated frame, a first sprocket at one end of the frame, an endless chain extending between the first and second sprockets, a plurality of spaced apart paddles attached to the chain, and a motor for causing the chain to rotate whereby the paddles will drag or sweep grain to the well in the floor of the grain bin.
Doc. No. 38-1 at 2. Or, as illustrated in the patent:
The '930 patent originally made six claims. It was amended in 2016 to include 15 more claims. See Doc. No. 38-1 at 10. Of the 21 total claims, five are at issue. They include the following:
The original application that led to the '930 patent was filed on September 17, 2001, by the inventor, Carl R. Dixon. See Doc. No. 38-2 at 2. The application contained six claims, including one independent claim (Claim 1) and five dependent claims (Claims 2-6). Initially, the claims were rejected as being obvious in light of the prior art. Id. at 58-61. Dixon then amended Claim 1 to:
define the frame of applicant's unloading system as including an elongated hood having a top panel, a first side wall, and a second side wall, and an opened bottom; and to define the paddles of applicant's unloading system as for engaging grain on the floor of the grain bin through the opened bottom of the hood of the frame.
Doc. No. 38-2 at 72. The United States Patent and Trademark Office (USPTO) allowed the claims, see id. at 85, and issued the '930 patent on December 31, 2002. See Doc. No. 38-1 at 2. On June 16, 2011, Dixon assigned the '930 patent to Sioux Steel.
On September 4, 2012, a competitor filed a request for ex parte reexamination of the '930 patent, challenging all six claims. See Doc. No. 38-3 at 2-29. The USPTO granted the request for reexamination. On February 18, 2013, Sioux Steel added claims 7-21. On April 10, 2013, the USPTO issued a Final Rejection, rejecting claims 1-21. Id. at 180. Sioux Steel appealed and the Patent Trial and Appeal Board (PTAB) reversed the Examiner's decision, concluding that the six original claims were confirmed patentable and new claims 7-21 were deemed patentable over the newly cited prior art. Id. at 421-22; 432-41; 464-69. The ex parte Reexamination Certificate was issued on January 7, 2016. Id. at 476-77.
The accused product is Sukup's Zero-Entry Paddle Sweep. While not particularly relevant to claim construction for the '930 patent, it does provide some context of why these...
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