The Gleason Works v. Oerlikon Geartec Ag, No. 98-CV-6275L.

CourtUnited States District Courts. 2nd Circuit. United States District Court of Western District of New York
Writing for the CourtLarimer
Citation238 F.Supp.2d 504
PartiesTHE GLEASON WORKS, Plaintiff, v. OERLIKON GEARTEC AG, et al., Defendants.
Decision Date25 November 2002
Docket NumberNo. 98-CV-6275L.
238 F.Supp.2d 504
THE GLEASON WORKS, Plaintiff,
v.
OERLIKON GEARTEC AG, et al., Defendants.
No. 98-CV-6275L.
United States District Court, W.D. New York.
November 25, 2002.

Page 505

Michael Wolford, Wolford & LeClair, LLP, Rochester, NY, John M. Romary, Jeanne M. Tanner, Liam O'Grady, Robert A. Matthews, Jr., Christopher P. Foley, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, for Plaintiff.

Lawrence Cruz, John Linderman, McCormick, Paulding & Huber, LLP, Hartford, CT, Paul J. Yesawich, III, Neal

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L. Slifkin, Harris Beach LLP, Pittsford, NY, Lawrence Cruz, Wm. Tucker Griffith, for Defendant.

DECISION AND ORDER

LARIMER, Chief Judge.


This is a patent infringement action brought by plaintiff The Gleason Works ("Gleason") against defendants Oerlikon Geartec, AG ("Oerlikon") and Liebherr-America, Inc. ("Liebherr").1 Gleason is the holder of United States Patent No. 4,981,402 ("the '402 patent"), which was issued on January 1, 1991 and is entitled, "Multi-Axis Bevel and Hypoid Gear Generating Machine." Gleason's complaint alleges that defendants manufacture and sell in the United States gear-making machines that infringe the '402 patent. Gleason seeks damages, injunctive relief, declaratory relief, attorneys' fees and costs.

A number of motions are pending before the Court, including defendants' motion for partial summary judgment of invalidity for best mode violation2, and plaintiff's cross-motion to strike defendants' invalidity defenses or in the alternative for partial summary judgment on the issues of best mode and enablement. The following Decision and Order constitutes my ruling on those motions, as well as on the construction of disputed claim terms.

I. Summary of the Invention

The claimed invention is a computer-controlled machine ("the new machine") and a method for generating gears in a particular manner. In any gear-generating machine, gears are cut from metal blanks called the "work" or "work gears," which are simply gears without teeth. The teeth are cut into the work with the "tool," which is a disc with cutting blades along its edge, and which spins around an axis as it cuts teeth into the work gear.

When gears are being cut, the tool and work must be in a particular position relative to each other at any given point in the generating process. Previously, in most conventional machines this was achieved by having the work and tool each move along a number of axes; typically, the tool would also be tilted at various angles as needed to cut the gears in the desired shape and position.

The new machine disclosed by the '402 patent simplifies this process by reducing the number of axes along which the tool and work move. The new machine also mimics the effects of "tool tilt" without requiring that the tool actually be tilted; in other words, in the new machine, the tool remains in a fixed orientation relative to the base of the machine, rather than being tilted at various angles, as in earlier machines. The result is a simpler machine and simpler process that can generate gears as effectively and easily as prior, more complex machines using more cumbersome processes.

II. Claim Construction as Prerequisite to Best-Mode Analysis

As stated, one of the issues before me is whether plaintiff, the patentee, has complied with the best mode requirement of 35 U.S.C. § 112 (1994), which provides that a patent specification "shall set forth the best mode contemplated by the inventor

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of carrying out his invention." The Court of Appeals for the Federal Circuit has held that "the first step in a best mode inquiry ... must be to define the invention by construing the claims." Bayer AG v. Schein Pharm., Inc., 301 F.3d 1306 (Fed. Cir.2002) (citing Northern Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281, 1286-87 (Fed.Cir.2000)). "Once the invention has been defined by examining the claims, the finder of fact-be it the court or a jury-can proceed to determine whether the inventor subjectively possessed a best mode of practicing the claimed invention, and if so whether the specification adequately discloses that mode." Bayer AG, 301 F.3d 1306, 2002 WL 1830197, *12. Accordingly, the Court will proceed to construe the disputed claims before addressing the motions for summary judgment.

III. Claim Construction-General Standards

In a patent infringement case which is to be tried to a jury, it is the court's task to construe the claims of the patent. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). In determining the meaning of disputed terms, the court should look first to the language of the claims themselves. Bell & Howell Document Mgmt. Prod. Co. v. Altek Sys., 132 F.3d 701, 705 (Fed.Cir.1997); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). The words of the claims are to be given their ordinary and customary meaning, unless the patent or its file history makes clear that a particular special definition is intended. K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362-63 (Fed.Cir.1999); Multi-form Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed.Cir.1998); Vitronics, 90 F.3d at 1582; Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir.), cert. denied, 519 U.S. 911, 117 S.Ct. 275, 136 L.Ed.2d 198 (1996).

"[S]econd, it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." Vitronics, 90 F.3d at 1582; Markman, 52 F.3d at 979. Because the specification contains a written description of the invention which must be clear and complete enough to enable those of ordinary skill in the art to practice the invention, the specification "is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582.

"Third, the court may also consider the prosecution history of the patent, if in evidence." Id. The Court of Appeals for the Federal Circuit has described the prosecution history as "often of critical significance in determining the meaning of the claims." Id. (citing Markman, 52 F.3d at 980).

If this "intrinsic" evidence, i.e. the claims, the specification, and the prosecution history, is unambiguous, the court may not look to other, extrinsic evidence. Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 976-77 (Fed.Cir.1999), cert. denied, 529 U.S. 1066, 120 S.Ct. 1672, 146 L.Ed.2d 482 (2000); Pitney Bowes, Inc., v. Hewlett-Packard Co., 182 F.3d 1298, 1308-9 (Fed.Cir.1999); Vitronics, 90 F.3d at 1583. Extrinsic evidence is that evidence which is external to the patent and file history, such as expert testimony, inventor testimony, dictionaries, and technical treatises and articles. Vitronics, 90 F.3d at 1584. The court may receive extrinsic evidence to educate itself about the invention and the relevant technology, but it may not use extrinsic evidence to arrive at a claim construction

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that is clearly at odds with the construction mandated by the intrinsic evidence. See Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed.Cir.1998). Extrinsic evidence, then, may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language.

IV. Disputed Claims in the '402 Patent

The parties' motion papers and oral argument have narrowed the number of claim terms in dispute to a relative few. The core dispute here focuses on the words "adjusting" and "controlling," which appear at various points throughout the claims, and certain other terms closely related to the "adjusting" and "controlling" functions of the machine. In particular, the parties disagree about whether the '402 patent discloses a "two-step" or a "one-step" process for adjusting the rotation of the work gear in order to control the relative rotations of the work and the tool, so as to maintain the predetermined timed relationship ("PTR") between them. Maintenance of the PTR in a predetermined relative rolling motion ("PRRM") is crucial to the successful generation of the gears.

In the new machine, values representing the relative positions of the tool and work in a conventional machine (i.e., a machine in which the tool is tilted) are transformed into corresponding values in the coordinate system of the new machine. However, the patent states that the rotation of the work gear must also be "adjusted" in order to maintain the predetermined rolling motion and timed relationship between the tool and the work gear. See, e.g., '402 Patent, col 29., lines 47-52, 59-66; col. 30, lines 1-7. Specifically, the work rotation in the new machine is adjusted by a certain variable, which plaintiff dubbed "alpha," in order to mimic the effect of tilt. In addition, when a continuous-indexing process is used, i.e., when all of a gear's teeth are being cut at the same time (as opposed to intermittent indexing, when the teeth are cut one at a time), an additional variable, "beta," is added to the work rotation. In short, these adjustments are necessary to mimic the effect of tilt in the new machine.

Defendants contend that the claims should be construed to require a two-step process for adjusting the relative rotation of the tool and work gear. This process, according to defendants, includes an intermediate step which determines an adjusting value, either alpha or beta, and a second step in which that value is added to a predetermined value in order to establish a resultant control signal for rotating the tool and work gear.

Plaintiff argues that the claims should not be so limited. Plaintiff states that the '402 patent, properly construed, simply requires that the work rotation, and other parts of the machine, be moved to compensate for the effect of a tilted...

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2 practice notes
  • Gilmore v. University of Rochester Strong Memorial, No. 05-CV-6037L.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Western District of New York
    • September 1, 2005
    ...Nextel of New York, Inc. v. City of Mount Vernon, 361 F.Supp.2d 336, 340 (S.D.N.Y.2005); Gleason Works v. Oerlikon Geartec AG, 238 F.Supp.2d 504, 520 (W.D.N.Y.2002). I do not find that the defenses in question are insufficient as a matter of law, or that plaintiff will be prejudiced by allo......
  • Keystone Mfg. Co., Inc. v. Jaccard Corp., No. 03-CV-648S.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Western District of New York
    • September 29, 2005
    ...and then determine the structure in the specification that corresponds to that function); Gleason Works v. Oerlikon Geartec AG, 238 F.Supp.2d 504, 512 (W.D.N.Y.2002) Consequently, this Court finds that resolution of the claim construction issue is not necessary at this point to decide Jacca......
2 cases
  • Gilmore v. University of Rochester Strong Memorial, No. 05-CV-6037L.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Western District of New York
    • September 1, 2005
    ...Nextel of New York, Inc. v. City of Mount Vernon, 361 F.Supp.2d 336, 340 (S.D.N.Y.2005); Gleason Works v. Oerlikon Geartec AG, 238 F.Supp.2d 504, 520 (W.D.N.Y.2002). I do not find that the defenses in question are insufficient as a matter of law, or that plaintiff will be prejudiced by allo......
  • Keystone Mfg. Co., Inc. v. Jaccard Corp., No. 03-CV-648S.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Western District of New York
    • September 29, 2005
    ...and then determine the structure in the specification that corresponds to that function); Gleason Works v. Oerlikon Geartec AG, 238 F.Supp.2d 504, 512 (W.D.N.Y.2002) Consequently, this Court finds that resolution of the claim construction issue is not necessary at this point to decide Jacca......

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