Wahpeton Canvas Co. v. Bremer
| Decision Date | 22 May 1995 |
| Docket Number | No. C 93-4093.,C 93-4093. |
| Citation | 893 F. Supp. 863 |
| Court | U.S. District Court — Northern District of West Virginia |
| Parties | WAHPETON CANVAS CO., South Dakota, Inc., a South Dakota Corporation, and Primewood, Inc., a North Dakota Corporation, Plaintiffs, v. Donald BREMER, an individual doing business as Sioux City Tarp Manufacturing and Canvas Repair, Defendant. |
Lester J. Savit of Jones Day Reavis & Pogue, Chicago, IL, for plaintiffs.
Edmund J. Sease of Zarley, McKee, Thomte, Voorhees & Sease, Des Moines, IA, for defendant.
TABLE OF CONTENTS
I. INTRODUCTION ................................................ 865
II. FINDINGS OF FACT ............................................ 865
A. Uncontested Facts ........................................ 865
B. Contested Facts .......................................... 867
III. CONCLUSIONS OF LAW .......................................... 867
A. Standard for Summary Judgment ............................ 867
B. Repair versus Reconstruction ............................. 869
C. Sale to Svartoien ........................................ 871
1. Agency Theory ......................................... 871
2. Sale of the Kit ....................................... 872
D. Validity of the Reissue Oath ............................. 872
IV. CONCLUSION .................................................. 874
In this patent infringement action, Defendant Donald Bremer's motion for summary judgment and partial summary judgment raises four discrete issues: first, whether replacement of less than all of the parts of the patented roll-up tarp unit at any given time constitutes legally permissible repair and not infringing reconstruction; second, whether the authorized, but surreptitious, purchase by an employee of Plaintiff Wahpeton Canvas Company from Defendant of a complete patented roll-up tarp unit constitutes an act of infringement; third, whether the sale of a complete, but unassembled, roll-up tarp unit infringes the patent in suit; and finally, whether claims 14 through 32 of the patent in suit are invalid due to a defective reissue oath.
This lawsuit involves alleged infringement by Defendant Donald Bremer d/b/a Sioux City Tarp Manufacturing and Canvas Repair ("Bremer") of a patent for a roll-up tarp for trailers owned by Plaintiff Primewood, Inc. and assigned to Plaintiff Wahpeton Canvas Co., South Dakota, Inc. (collectively "Wahpeton"). On October 20, 1993, Wahpeton filed suit against Bremer alleging that Bremer's making, using, and selling of a roll-up tarp infringed the patent in suit. On April 7, 1994, Bremer filed his second amended answer and counterclaim in which he alleged violations of Sherman Act, 15 U.S.C. §§ 1 and 2. Specifically, Bremer alleges in his counterclaim that Wahpeton has instructed its authorized dealers not to sell repair parts to Bremer and others similarly situated. Second Am. Answer and Countercl. at ¶ 14. Bremer asserts that by engaging in this course of conduct, of refusing to sell repair parts, Wahpeton and its authorized dealers have entered into an illegal tying arrangement to monopolize the secondary market for the sale of repair services and repair parts in violation of sections 1 and 2 of the Sherman Act. Id. at ¶ 18.
This matter comes before the court on Bremer's Motion for Summary Judgment and Partial Summary Judgment (# 35). Wahpeton has filed a timely resistance to Bremer's motion. A hearing on Bremer's motion was held on March 17, 1995. Wahpeton was represented at the hearing by Lester J. Savit of Jones Day Reavis & Pogue, Chicago, Illinois, and A.J. Stoik of Klass, Hanks, Stoos, Stoik & Villone, Sioux City, Iowa. Bremer was represented by Edmund J. Sease of Zarley, McKee, Thomte, Voorhees & Sease, Des Moines, Iowa. The matter is now deemed fully submitted.1
The court concludes that it has jurisdiction over this matter pursuant to 28 U.S.C. § 1332, 28 U.S.C. § 1331, and 28 U.S.C. § 1338(a).
For the purposes of this summary judgement motion only, the court finds the following facts:
Wahpeton is the assignee of United States Patent Re. 31,746 ("'746 patent"), entitled "Roll-Up Tarp for Trailers."2 The '746 patent is a reissue patent. The '746 patent pertains to roll-up trailer covers. One side edge of the cover is attached to a longitudinal upper edge of a trailer box and the other side, or free edge of the cover is associated with a roll tube. A universal joint connects the roll tube to a crank turnable from the ground to roll and unroll the cover. A latching means is employed to secure the cover in place. Securing the crank locks the cover in place. As the Federal Circuit has explained:
The latching means disclosed in the '746 patent is a plate mounted along and angularly depending from the entire upper edge of the truck box opposite that to which the cover is attached. Latching is accomplished by turning the crank counterclockwise to unroll the cover over the truck box and plate until the roll tube dangles below the plate, then continuing to turn the crank counterclockwise and rerolling the tube in the same direction to reroll the cover onto the tube and thus to draw the tube upwardly until it securely engages the underside of the plate and is wedged between the plate and the truck wall.
Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1549 (Fed.Cir.1989).3
On November 27, 1984, a reissue patent for the '746 patent was issued by the United States Patent and Trademark Office. In its submissions for a reissue patent, the '746 patent's inventors, William J. Shorma and Jerry R. Dimmer, as well as their counsel, James P. Ryther, submitted declarations in support of the reissue. John J. Feldhaus, the attorney who drafted the original patent also submitted a declaration. In his declaration, Feldhaus states that he conducted the patent interview without the assistance of either the inventors or their attorney.4 Shorma and Dimmer both state in their declarations that the error in the original patent resulted from the failure of their attorney, John J. Feldhaus, to understand the scope of the invention.5
Bremer is in the business of selling tarps. Bremer's business also provides repair service and sells replacement parts for '746 roll-up tarps which were originally sold by Wahpeton or a Wahpeton authorized dealer. Wahpeton sells genuine parts to its regular customers, including Wilson Trailer in Sioux City, Iowa. In the past, Bremer has been able to secure replacement parts for '746 roll-up tarps from Wilson Trailer. Bremer maintains sufficient quantities of parts in stock that his business could construct a complete '746 roll-up tarp. Bremer admits to having constructed eight to ten complete '746 roll-up tarps for farm grain wagons in the past.6
On July 5, 1990, Wahpeton sent a letter to Bremer accusing Bremer of infringing the '746 patent. A copy of the '746 patent was enclosed in the letter. On January 5, 1993, Wahpeton sent a second letter to Bremer informing Bremer that a defendant in a lawsuit had testified that Bremer was installing units infringing the '746 patent. The letter notified Bremer of a consent decree entered in that lawsuit and of an injunction entered in that lawsuit prohibiting any further infringement of the '746 patent by either the defendant in that lawsuit, or those acting in concert with that defendant who received notice of the injunction.
To investigate whether Bremer was selling infringing products, Wahpeton sent an investigator, Marc Svartoien, to Bremer to purchase a roll-up system from Bremer. On September 21, 1993, Marc Svartoien placed an order with Bremer's employee, Jack Miller, for a roll-up tarp for a 16 foot trailer. Svartoien had been requested by Wahpeton to request such a unit from Bremer. On September 23, 1993, Svartoien purchased from Bremer a box containing all of the parts necessary for construction of a complete '746 roll-up tarp unit. Although the parts purchased by Svartoien were never assembled, Miller assumed that Svartoien would assemble all of the parts sold into a unit.
Subsequent investigation by Wahpeton revealed that since 1992 Bremer has had a third party, Kaiser Aluminum, manufacture approximately 700 copies of latch plate. Latch plate is a long flat piece of aluminum used to secure the free side of the roll-up tarp on a '746 roll-up tarp unit. Latch plate was not used in the construction of prior art roll-up tarps units, which were secured with straps or ratchets.
The parties dispute whether Bremer has offered for sale manufactured '746 roll-up tarps other than the kit sold to Svartoien and the eight to ten entire units Bremer admits to have manufactured for grain wagons. It is also contested whether Bremer has engaged in infringing activities such as converting prior art roll-up devices to infringing units, or committed contributory infringement by making repairs to infringing units. Whether Bremer is still able to purchase parts from Wilson Trailers is also disputed by the parties. Furthermore, the record is unclear as the purposes for which Bremer used the latch plate purchased from Kaiser Aluminum.
The Eighth Circuit recognizes "that summary judgment is a drastic remedy and must be exercised with extreme care to prevent taking genuine issues of fact away from juries." Wabun-Inini v. Sessions, 900 F.2d 1234, 1238 (8th Cir.1990). On the other hand, the Federal Rules of Civil Procedure have authorized for nearly 60 years "motions for summary judgment upon proper showings of the lack of a genuine, triable issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 2555, 91 L.Ed.2d 265 (1986). Thus, "summary judgment...
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