Trust v. J & L Fiber Serv. Inc.

• Citation: 751 F.Supp.2d 348
• Decision Date: 13 September 2010
• Docket Number: No. 1:07–CV–1191 (LEK/DRH).,1:07–CV–1191 (LEK/DRH).
• Parties: ADVANCED FIBER TECHNOLOGIES TRUST, Plaintiff,v.J & L FIBER SERVICES, INC., Defendant.
• Court: United States District Courts. 2nd Circuit. United States District Court of Northern District of New York

751 F.Supp.2d 348

ADVANCED FIBER TECHNOLOGIES TRUST, Plaintiff,

v.J & L FIBER SERVICES, INC., Defendant.

No. 1:07–CV–1191 (LEK/DRH).

United States District Court, N.D. New York.

Sept. 13, 2010.Opinion Granting Reconsideration in Part Jan. 12, 2011.

Nicholas Mesiti, Shanna K. O'Brien, Alana M. Fuierer, Brett M. Hutton, Heslin, Rothenberg Law Firm, Albany, NY, for Plaintiff.David R. Cross, Quarles, Brady Law Firm, Milwaukee, WI, Edward R. Conan, Bond, Schoeneck Law Firm, Syracuse, NY, for Defendant.

MEMORANDUM–DECISION AND ORDER ¹

LAWRENCE E. KAHN, District Judge.

Plaintiff Advanced Fiber Technologies Trust (“AFT”), a trust organized under the laws of Canada with a principal place of business in Quebec, Canada, brought this action for patent infringement arising under 35 U.S.C. § 271, et seq. against Defendant J & L Fiber Services, Inc. (“J & L”), a Wisconsin corporation, on November 9, 2007. Compl. (Dkt. No. 1). Jurisdiction is predicated on 28 U.S.C. § 1331 and 28 U.S.C. § 1338(a).

AFT alleges that J & L's V–Max screen cylinder infringes upon a patent owned by AFT. See generally Dkt. No. 1. AFT seeks a preliminary and permanent injunction against J & L preventing J & L from further infringement; a finding of such infringement by J & L; damages, treble damages, costs, and attorneys fees; and the recall and destruction of all materials within the control of J & L that infringe on Plaintiff's patent. Compl.

On February 22, 2008, J & L filed its Answer and counterclaim, denying any alleged infringement; contending that the patent is invalid and unenforceable; asserting that Plaintiff's claims are barred; and requesting declaratory judgment as to the reissued patent's invalidity. Dkt. No. 12. Presently before the Court are J & L's Motion for the construction of claim terms (Dkt. No. 45) (“Construction Motion”) and Motion for summary judgment (Dkt. No. 50) (“J & L's Summary Judgment Motion”), and AFT's Motion for summary judgment as to infringement (Dkt. No. 33) (“Infringement Motion”) and Motion for summary judgment as to validity (Dkt. No. 51) (“Validity Motion”).

I. BACKGROUND

The instant action involves two patents owned by AFT that are directed to “screen plates, e.g., screen cylinders and flat screen plates, for use, for example, in the pulp and paper industry for screening pulps and to methods for their manufacture.” Dkt. Nos. 1, Ex. A; 45, Ex. A. The screen plate was originally described in U.S. Patent No. 5,200,072 (“'072 patent”), see Dkt. No. 1, Ex. A, which issued April 6, 1993 based upon an application filed August 16, 1990.² AFT SMF Resp. (Dkt. No. 75–2) ¶ 10. AFT purchased the ' 072 patent in March 2002 from a predecessor in interest, CAE ScreenPlates, Inc. J & L SMF. Resp. (Dkt. No. 39–11) ¶ 13. On September 12, 2003, AFT applied to the Patent Office to reissue the ' 072 patent. AFT SMF Resp. (Dkt. No. 75–2) ¶ 49. AFT's application included a declaration placing January 1990 as the earliest provable date of invention. Id. ¶ 50. On January 5, 2006, the Patent Office rejected all of the claims, citing Gillespie ( U.S. Patent No. 4,276,265) (“Gillespie”) ³ as a basis for the rejection. Id. ¶ 51. AFT responded to the rejection on May 5, 2006, emphasizing the scope of the applied for patent differed from the Gillespie and restating/clarifying the meaning of certain claim terms in their proposed reissue by way of reference to the Handbook of Pulp and Paper Technology. Id. ¶ 52. On December 18, 2007, the patent was reissued as U.S. Patent No. RE 39,940 (“'940 patent” or “reissue”), see Dkt. No. 45, Ex. A. ⁴ Id. ¶ II. 12. On November 9, 2007, shortly after being informed that a reissue was imminent, AFT filed the instant action. Compl.

As early as February 2000, J & L has had knowledge of claims that its V–Max screen cylinder (“V–Max”), which is used to screen pulp for the production of paper, infringes upon the '072 patent; it was initially informed of this alleged infringement by CAE ScreenPlates, Inc. AFT SMF Resp. (Dkt. No. 75–2) ¶ 40. J & L promptly responded on February 23, 200, stating it would investigate the matter. Ultimately, J & L did not alter its product or methods, allegedly because, after thorough investigation, it believed that the '072 patent was invalid and that the V–Max did not, anyhow, infringe on that patent. J & L informed CAE of these beliefs by letter dated December 20, 2001. Id. ¶¶ 41–42. Subsequent to its purchase of the '072 patent, AFT filed several additional notices of infringement with J & L, which again denied the patent's validity or the V–Max's infringement of the patent, and allegedly provided what it claimed to be prior art references in support of its position. Id. ¶¶ 43–45. The dispute culminated with the instant infringement action brought on November 9, 2007, under 35 U.S.C. § 271. Compl. In its Answer and Counterclaim, filed February 22, 2008, J & L denies any infringement and asserts that, at any rate, the '072 patent and '940 reissue (collectively, “the '940 patent”) are invalid and/or unenforceable. Dkt. No. 12, ¶¶ 23–25, see also J & L SMF. Resp. (Dkt. No. 39–11) ¶ 13.

In or around April 2008, AFT served its first set of interrogatories on J & L seeking the legal and factual basis for J & L's claims of non-infringement and invalidity, to which J & L responded with preliminary claim charts. See Mesiti Decl. (Dkt. No. 33–12) ¶ 6–7; see also Dkt. No. 60 at 3–4. On March 13, 2009, AFT filed a Motion for summary judgement on the issue of infringement. Dkt. No. 33. Discovery closed August 1, 2009. On September 30, 2009, J & L filed its Motion for the construction of claim terms. Dkt. No. 45. On October 1, 2009, J & L filed its own Motion for summary judgment. Dkt. No. 50. On the same day, AFT filed a Motion for summary judgment on the issue of validity. Dkt. No. 51.

II. CONSTRUCTION OF CLAIM TERMSA. The Court Shall Construe all Disputed Terms Identified to Date

AFT asks the Court to prohibit J & L from contesting the meaning of terms not previously identified by J & L in answers to interrogatories served upon it by AFT. AFT argues that J & L's construction request should be denied as untimely and that all disputed terms should have been identified during discovery. See Mem. in Opp'n to Construction Mot. (Dkt. No. 60) (“Opp'n Construction Mot.”) at 6–7. J & L counters that the disputed meaning of terms became apparent only after the close of discovery; J & L further contends that the sources underpinning its proposed constructions of disputed terms are objective, non-testimonial sources, and AFT suffers no prejudice from their being raised at this date. Reply Mem. in Supp. Construction Mot. (Dkt. No. 84) at 1.

AFT served interrogatories on J & L asking the latter for the basis of its invalidity and non-infringement arguments, including its proposed claim constructions, see O'Brien Decl., Ex. C (Dkt. No. 60–7) ¶¶ 5–6, 11. J & L admits it failed to do so. J & L's failure, however, is not unusual, and it does not present a sufficient basis for estopping J & L from seeking judicial construction of disputed terms identified after the discovery period closed. See SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1291–92 (Fed.Cir.2005); Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1375 (Fed.Cir.2005). Further, as discussed below, J & L bases its proposed constructions either on 1) the ordinary meaning of claim terms, as evidenced in objective sources that are widely known and available; or 2) the intrinsic evidence of the '940 patent, again publicly available, and most easily accessed by AFT. Thus, AFT suffers no significant prejudice as a result of J & L's failure to update its responses to AFT's interrogatories. SanDisk, 415 F.3d at 1290–92. Finally, AFT has itself recently identified disputed terms. See July 22, 2010 Claim Construction Hearing Transcript (Dkt. No. 106) (“Tr.”) 48–49; 53–56. In these circumstances, the Court finds it appropriate to construe all the disputed terms identified to date.

B. Claim Construction Analysis

The interpretation or construction of patent claims is a matter of law reserved for the courts. Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Courts are thus tasked with determining the meaning of terse or unfamiliar words used in a patent claim, while not changing or expanding the scope of the claimed invention. Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed.Cir.2001). In construing patent claims, courts are generally to give the terms and phrases being interpreted “their ordinary and customary meaning,” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996), as understood from the perspective of “a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005). There are exceptions to this general rule, as an inventor may “choose[ ] to be his own lexicographer and give terms uncommon meanings,” Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed.Cir.1992); however, “this must be done with reasonable clarity, deliberateness, and precision” or the ordinary meaning of terms will control. In Re Paulsen, 30 F.3d 1475, 1480 (Fed.Cir.1994).

Courts are to interpret claim terms primarily based on intrinsic evidence, namely, 1) the language of the claims themselves; 2) the patent's specification; and 3) the prosecution history of the patent. Vitronics, 90 F.3d at 1582; Markman v. Westview Instruments, Inc., 52 F.3d 967, 979–980 (Fed.Cir.1995). This intrinsic record “usually provides the technological and temporal context to enable the court to ascertain the meaning of the claim to one of ordinary skill in the art at the time of the invention.” V–Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1310 (Fed.Cir.2005) (citations omitted). At times, however, courts may appropriately consider...