Welker Bearing Co. v. Phd, Inc.
| Decision Date | 12 December 2007 |
| Docket Number | No. 06-13345.,06-13345. |
| Citation | 528 F.Supp.2d 683 |
| Parties | WELKER BEARING COMPANY, Plaintiff, v. PHD, INC., Defendant. |
| Court | U.S. District Court — Eastern District of Michigan |
Jeffrey A. Sadowski, Brad A. Rayle, Dean W. Amburn, Howard & Howard, Bloomfield Hills, MI, for Plaintiff.
Dale R. Brown, Dawn R. Rosemond, Barnes & Thornburg, Fort Wayne, IN, Kathleen A. Clark, Dawson and Clark, Detroit, MI, for Defendant.
Plaintiff Welker Bearing Company commenced this suit in this Court on July 25, 2006, alleging that certain pin clamps offered or sold by Defendant PHD, Inc. infringe two patents held by Plaintiff. Defendant denies these allegations of infringement, and also has asserted an affirmative defense of patent invalidity. This Court's jurisdiction rests upon Plaintiffs assertion of claims under the federal patent laws, 35 U.S.C. § 1 et seq. See 28 U.S.C. § 1338(a).
Through cross-motions filed on May 31 and June 18, 2007, each of the parties seeks summary judgment in its favor as to the infringement or non-infringement of the two patents-in-suit, U.S. Patent No. 6,786,478 (the "1478 patent") and U.S. Patent No. 6,913,254 (the "1254 patent"). In addition, Defendant filed a May 31, 2007 motion seeking the Court's acceptance of its proposed construction of claim 1 of the '254 patent.
Each of these motions has been fully briefed by the parties, and the Court heard oral argument on these motions on November 29, 2007. Having reviewed the parties' written submissions and the record as a whole, and having considered the arguments of counsel at the November 29 hearing, the Court now is prepared to rule on these three motions. This opinion and order sets forth the Court's rulings on these matters.
Although the specific patent claims and products involved in this suit are discussed in greater detail below, as pertinent to the particular issues raised by the parties, it is helpful at the outset to describe the general nature of the inventions and products at issue here. In particular, this case concerns pin clamps that are used, in the automobile industry and in other industrial settings, to hold a work piece (such as a sheet of metal) securely in place during welding or other manufacturing processes. These pin clamps feature a locating pin that is inserted into a hole in the work piece, whereupon clamping fingers emerge out of the locating assembly and hold the work piece in place.
Plaintiff Welker Bearing Company and one of its contract employees, Joseph M. Pavlik, jointly own the rights to two patents for such pin clamps. The first of the two patents-in-suit, U.S. Patent No. 6,786,478 (the "'478 patent"), was issued on September 7, 2004. The second patent-in-suit, U.S. Patent No. 6,913,254 (the "'254 patent"), was issued on July 5, 2005. Mr. Pavlik has granted Plaintiff an exclusive license to all of his rights in these two patents.
The two patents-in-suit are quite similar. Indeed, the patent examiner initially rejected the '254 patent on non-statutory "double patenting" grounds. To overcome this rejection, Plaintiff executed a "Terminal Disclaimer" on January 12, 2005, under which Plaintiff disclaimed the terminal part of the statutory term of the '254 patent that otherwise would have extended beyond the expiration of the '478 patent.
In this case, Plaintiff asserts that these patents are infringed by two of Defendant's products. Defendant began development of the first of these products, the "PHD Series PLC Clamp I" ("Clamp I"), in late 2003, in response to the demands of one of its major customers, General Motors. During the development process, Defendant's employees were shown one of Plaintiffs pin clamps, but Defendant denies that it saw the internal workings of Plaintiffs clamp until October of 2004. As discussed in greater detail below, Defendant contends that Clamp I never proceeded beyond the prototype phase, that only a handful were made, and that none were sold. Defendant further asserts that it did not engage in any sort of commercial activity relative to Clamp I at any point after the '478 patent was issued on September 7, 2004.
On November 15, 2004, the parties met to discuss the possibility of licensing the '478 patent. When these discussions failed to produce an agreement, Defendant commenced an effort to design around Plaintiff's patent. This process resulted in the second of Defendant's products at issue here, the "PHD Series PLC Clamp II" ("Clamp II"), which was made commercially available in June of 2005. As addressed below, the disposition of this infringement suit turns largely upon the extent of Defendant's success in designing around the inventions disclosed in the two patents-insuit.
The Court turns first to Defendant's motion for claim construction, in light of the impact of this matter upon the issues raised in the parties' remaining motions. The interpretation of patent claims is "exclusively within the province of the court." Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 1387, 134 L.Ed.2d 577 (1996). The principal focus of claim construction is the language of the claims themselves, as "the claims are of primary importance, in the effort to ascertain precisely what it is that is patented." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (internal quotation marks and citation omitted). "[T]he words of a claim are generally given their ordinary and customary meaning"— that is, "the meaning that the terms] would have to a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1312-13 (internal quotation marks and citations omitted). In some cases, this "ordinary meaning" is simply the "widely accepted meaning of commonly understood words," but it may prove necessary in other cases to consider whether a claim's terms "have a particular meaning in a field of art" that is "not immediately apparent" to those outside this field. 415 F.3d at 1314.
While claim construction begins with the language of the claim itself, it bears emphasis that a patent's claims "do not stand alone," but rather "are part of a fully integrated written instrument" that also includes a specification. 415 F.3d at 1315 (internal quotation marks and citation omitted). Thus, "claims must be read in view of the specification, of which they are a part," and the specification is "the single best guide to the meaning of a disputed term." 415 F.3d at 1315 (internal quotation marks and citation omitted). Moreover, "the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." 415 F.3d at 1313. "The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." 415 F.3d at 1316 (internal quotation marks and citation omitted).
Beyond the four corners of the written instrument, the Court also may consider "intrinsic evidence"—consisting of "the complete record of the proceedings before" the Patent and Trademark Office ("PTO"), including "the prior art cited during the examination of the patent"—and "extrinsic evidence"—which includes "expert and inventor testimony, dictionaries, and learned treatises." 415 F.3d at 1317 (internal quotation marks and citations omitted). Yet, the intrinsic evidence "is less useful for claim construction purposes" than the claim language itself, and the extrinsic evidence is still "less significant than the intrinsic record in determining the legally operative meaning of claim language." 415 F.3d at 1317 (internal quotation marks and citations omitted). With these standards in mind, the Court turns to the claim construction task implicated by Defendant's motion—namely, the interpretation of the disputed elements of claim 1 of the '254 patent.
Although the parties fault each other for their failure to reach an agreement as to precisely which aspects of claim 1 remain in dispute, it is evident from their submissions that Plaintiff and Defendant disagree only as to one element of this claim. Specifically, the parties dispute the meaning to be given to the claim language referencing a "mechanism" for moving the pin clamp's fingers into and out of the locating assembly. Through the present motion, Defendant contends that the term "mechanism" as used in claim 1 should be viewed as a means-plus-function limitation, such that this term must be construed as encompassing only the corresponding structure described in the patent specification for performing the function of this "mechanism." The Court agrees.
The disputed term is found near the end of claim 1, which reads in its entirety:
1. A locating and clamping assembly comprising:
a body defining an internal cavity and an opening from said cavity to the exterior of said body a locating pin disposed in said cavity and extending along an axis A out of said opening to a distal end;
an actuator for moving said locating pin rectilinearly along said axis A into and out of said opening;
at least one finger supported by said locating pin adjacent said distal end; said assembly characterized by a mechanism for moving said finger along a straight line into and out of said locating pin perpendicular to said axis A in response to said rectilinear movement of said locating pin.
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Welker Bearing Co. v. Phd, Inc.
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