Wooster Brush Co. v. Newell Operating Co.
| Decision Date | 06 April 1999 |
| Docket Number | No. 5:98-CV-2356.,5:98-CV-2356. |
| Citation | 46 F.Supp.2d 713 |
| Parties | The WOOSTER BRUSH COMPANY, Plaintiff, v. NEWELL OPERATING COMPANY,, d/b/a and through its division, EZ Paintr Company, Defendant. |
| Court | U.S. District Court — Northern District of Ohio |
Harry D. Cornett, Jr., Jeffrey Alden Healy, Thomas E. O'Connor, Jr., Arter & Hadden, Columbus, OH, Mark J. Skakun, III, Ralph D. Amiet, Buckingham, Doolittle & Burroughs, Akron, OH, for Wooster Brush Company, plaintiff.
Michael L. Brody, Winston & Strawn, Chicago, IL, Laura J. Gentilcore, Ray L. Weber, Edward G. Greive, Renner, Kenner, Greive, Bobak, Taylor & Weber, Akron, OH, Christopher B. Schneider, Micah R. Onixt, Schiff, Hardin & Waite, Chicago, IL, for Newell Operating Company defendant.
On March 1, 1999, Plaintiff Wooster Brush Co. moved this Court for summary judgment [Doc. 27]. In seeking summary judgment in this patent infringement action, Plaintiff Wooster Brush argues that no material facts support Defendant-Counterplaintiff Newell Operating Company's claim that Wooster Brush infringes United States Patent Number 5,195,242 (the '242 patent).
Because the Court finds no material facts supporting Defendant Newell's counterclaim alleging infringement, the Court grants Plaintiff Wooster Brush's motion for summary judgment.
Plaintiff Wooster Brush and Defendant Newell (doing business through its division EZ Paintr Company) compete in the business of manufacturing paint rollers. In this action, Wooster Brush seeks judgment finding that its process for manufacturing paint roller covers does not infringe the '242 patent. The '242 patent is owned by Defendant Newell after assignment from the patent's inventor, Chandra Sekar. In response, Plaintiff Wooster Brush argues that it manufactures paint rollers using a process taught in United States Patent Number 5,572,790 (the '790 patent), also under a license from inventor Chandra Sekar. Defendant Newell counter-claims, alleging infringement.
In the mid-nineteenth century, paint rollers began to be used. Originally, paint rollers were permanently attached to a handle. At that time, rollers were heavy, bulky and difficult to clean.
After World War II, removable and disposable rollers were developed. Because these products avoided difficulties with the cleaning of permanent rollers, they were easier to use. Initially, these roller covers were primarily strips of paper spiraled onto a mandril and bound together on cores. While an improvement over permanent rollers, these disposable covers deteriorated quickly. Much of this deterioration was caused by solvents used in paint cleaners.
To avoid the problem of deterioration associated with the use of solvents, roller manufacturers began using polypropylene, a plastic. While the use of a polypropylene core ameliorated the solvent deterioration, it was difficult to bond cover materials to.
In late 1988, Chandra Sekar developed a process for making a paint roller. He applied for a patent on the process. The '242 patent, entitled "Method of Making a Paint Roller," was issued for this process on March 23, 1993. The '242 patent described a process for making paint rollers by bonding strips in an overlapping fashion through the use of a thermoplastic material, allowing the core to bond as it cools and then adding an adhesive to the outer surface of the core and thereafter a cover which bonds as the adhesive cools.
In May 1995, and after having obtained the '242 patent, Sekar went on to develop a different process for the making of paint rollers. In this new process, Sekar did not use two applications of polypropylene as taught in the '242 patent. Instead, he spiraled only a single strip of polypropylene around the mandril and did so in an abutting rather than overlapping relationship. Unlike the '242 patent, this new process applied liquefied polypropylene to the exterior of the wound strip, rather than with the laying of the initial strip. Moreover, Sekar's new process formed the roller core and applied the fabric in one process and with one application of liquid polypropylene.
Soon after developing this new technique, Sekar sought a new patent. The patent was eventually granted as the '790 patent. In the application, Sekar's lawyers disclosed two of Sekar's earlier patents, U.S. Patent No. 5,398,409 (the "409 Patent") and the '242 patent as prior art. After the United States Patent and Trademark Office objected because Sekar's application might involve double-patenting, Sekar filed a terminal disclaimer. In that terminal disclaimer, defendant limited the term of the '790 patent to the term of the '409 Patent. Importantly, Sekar never limited the '790 patent to the term of the '242 patent. After receiving Sekar's limitation of the '790 patent to the term of the '409 patent, the Patent and Trademark Office issued the '790 patent.
The Patent and Trademark Office issued Sekar the '790 patent after notice of the '242 patent. The Patent and Trademark Office did this without a terminal disclaimer limiting the term of the '790 patent.
The '790 patent thus does not describe several steps used in the '242 patent. The '790 patent does not have separate step of forming the core with first-applied hot thermoplastic. The '790 patent does not have a separate step for applying adhesive to the newly-formed core to allow attachment of the cover. Instead, the '790 patent describes "a single application of adhesive"—simultaneously bonding the sole strip to itself and to the fabric. In addition, the '790 patent uses a single abutting strip, not one or more overlapping strips.
The '790 patent has been commercially successful. The '790 patent process produces paint rollers significantly faster than older processes, including the '242 patent process. While the '242 patent process has never been used commercially, the '790 patent process is used by at least three manufacturers.
Fed.R.Civ.P. 56(c) states the procedure for granting summary judgment and says in pertinent part:
[t]he judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.
In considering a motion for summary judgment, the court must view the facts and all inferences to be drawn therefrom in the light most favorable to the non-moving party. Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970); 60 Ivy Street Corp. v. Alexander, 822 F.2d 1432, 1435 (6th Cir. 1987); SEC v. Blavin, 760 F.2d 706, 710 (6th Cir.1985). The moving party has the burden of showing conclusively that no genuine issue of material fact exists. 60 Ivy Street Corp., 822 F.2d at 1435.
Essentially factual disputes about matters essential to adjudication preclude the Court from granting summary judgment. See id. But not every factual dispute between the parties will prevent summary judgment. Rather, the disputed facts must be material. They must be facts which, under the substantive law governing the issue, might affect the outcome of the suit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
The factual dispute must also be genuine. The facts must be such that if they were proven at trial a reasonable jury could return a verdict for the non-moving party. Id. at 248, 106 S.Ct. 2505. The disputed issue does not have to be resolved conclusively in favor of the non-moving party, but that party is required to present some significant probative evidence which makes it necessary to resolve the parties' differing versions of the dispute at trial. 60 Ivy Street, 822 F.2d at 1435 (citing First Nat'l Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968)); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).
Thus, the judge's function at the point of summary judgment is limited to determining whether sufficient evidence has been presented to make the issue a proper jury question, and not to judge the evidence and make findings of fact. "[A]t the summary judgment stage the judge's function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." 60 Ivy Street, 822 F.2d at 1436 (quoting Anderson, 477 U.S. at 249, 106 S.Ct. 2505).
The Court reviews Plaintiff Wooster Brush's motion and relevant portions of the record in light of this standard and concludes that Defendant Newell's infringement claim must fail.
In seeking a declaration that it does not infringe the '242 patent, Plaintiff Wooster Brush says its process differs in several important respects from the process taught with the '242 patent. First, Wooster Brush says its process has no "overlapping" of a thermoplastic strip with applying hot thermoplastic to form the core. Instead, the Wooster Brush process uses abutting or closely spaced strips, but never overlapping.
Second, Wooster Brush does not use a separate step to apply adhesive to glue the cover to the newly-formed core. Third, unlike the '242 patent, Wooster Brush does apply hot thermoplastic before the strip(s) are wound onto a mandril.
In support of its argument that its process does not infringe the '242 patent, Plaintiff Wooster Brush argues that the Patent and Trademark Office's issuance of the '790 patent suggests a presumption that the '790 patent describes a new process.
Defendant Newell does not argue that Plaintiff Wooster Brush literally infringes claim 8 of the '242 patent. Instead, Newell claims that...
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