Opinion
Civil No. 99-1356 (JRT/FLN).
September 7, 2004
Alan Gary Carlson and Dennis Bremer, CARLSON CASPERS VANDENBURGH LINDQUIST, Minneapolis, MN; and Douglas A. Strawbridge, ANCHOR WALL SYSTEMS, Minnetonka, MN for plaintiff.
Randall Thomas Skaar and Scott Gregory Ulbrich, PATTERSON THUENTE SKAAR CHRISTENSEN, Minneapolis, MN and Malcolm Lane Moore, MOORE HANSEN SUMNER, Minneapolis, MN for defendants.
MEMORANDUM OPINION AND ORDER
This long-running dispute involves six patents, grouped into two families, which for convenience the Court will refer to as the '363 family and the '015 family. The patents disclose and disclaim, inter alia, the interlocking feature of masonry blocks that can be stacked to form retaining walls that resist ground pressure without requiring any additional support (such as cement, mortar, or locking pins). The '015 patents relate to plaintiff's "rear-lipped Diamond" retaining wall block, which is a smaller block that can be used by homeowners and "do-it-yourselfers," while the '363 family relates to plaintiff's larger "Vertica" retaining wall block used primarily by architects, engineers, and contractors. This Opinion and Order addresses numerous pending motions, including plaintiff's motion in limine to limit evidence on invalidity; plaintiff's motion for partial summary judgment on validity and enforceability, two motions by defendants for summary judgment; and motions to strike by both sides.
PROCEDURAL HISTORY
Instead of attempting to provide a global "Facts" section encompassing adequate facts for all pending motions, this Opinion and Order sets out relevant background facts in the discussion of each particular motion.
I. DISTRICT COURT HISTORY
United States District Judge David S. Doty granted partial summary judgment of noninfringement to defendants. Performing the claim construction, the Court defined the terms "back surface", "protrusion" and "mate" in the '363 family of patents. The Court found no literal infringement on the '363 family based on his construction of the terms.
Judge Doty also addressed the '015 family of patents; Judge Doty construed "generally parallel," but declined to construe "substantially horizontal." Judge Doty found no literal infringement based on his definition of "generally parallel."
Judge Doty also determined that the Federal Circuit's en banc opinion in Festo Corp. v. Shoketsu Kinzoku Kogyo Kaunshiki Co., 234 F.3d 558 (Fed. Cir. 2000), required an absolute bar to the application of the doctrine of equivalents because he found that Anchor made a narrowing amendment to certain claims of the '015 patent during prosecution. After Judge Doty's decision, the Supreme Court reversed the Federal Circuit, and rejected an absolute bar approach to prosecution history estoppel. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).
II. FEDERAL CIRCUIT
Plaintiff appealed to the United States Court of Appeals for the Federal Circuit. The Federal Circuit ("the Circuit") reversed in part, affirmed in part, and remanded. Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298 (Fed. Cir. 2003).
A. Claim Construction
The Circuit first provided a summary of the patents at issue, and then addressed the District Court's claim construction — most of which the Circuit corrected. In particular, the Circuit constructed the at-issue terms as follows: TERM CIRCUIT DEFINITION REJECTED DEFINITION an interlocking of the protrusion with the insets
"back surface" "a surface at the back of the construed to require a back block" surface "spanning the full width of the block" "protrusion" "something that protrudes" construed to require the limitation of "have a central narrow portion" "mate" "to join or fit together" and not construed to require three rejecting the third limitation as limitations (1) a close set out by J. Doty confinement of the protrusion within the inset(s) of two or more blocks; (2) an ability to secure the blocks in place in a forwards and backwards directions; and (3) "generally "envisions some amount of limited to the ordinary parallel" deviation from exactly parallel" meaning of parallel — "a mathematical concept"; "everywhere equal distant" "substantially Provided no definition but noted No definition horizontal" "the entire omission of a claim interpretation analysis from the opinion, and the conclusory factual findings on infringement each provide an independent basis for remand" B. Application of Corrected Claim ConstructionApplying these terms, the Circuit held that it was error to find no infringement on summary judgment. The Circuit concluded that it "cannot determine with certainty, based on the factual record before us, whether there are any genuine issues of material fact regarding infringement by the accused products in light of our revised claim construction." Id. at 1312. Therefore, the Circuit remanded for the District Court to determine whether outstanding issues of fact preclude a grant of summary judgment motions.
C. Doctrine of Equivalents
Due to the Supreme Court's reversal of the Federal Circuit's Festo opinion, the Circuit vacated that portion of the District Court's opinion and remanded "to determine, in the first instance, whether Anchor can rebut the Festo presumption." Id.
D. Additional Matters
Claim 70 of the '713 patent (of the ' 015 patent family) was also addressed by both the District Court and the Circuit. Judge Doty granted partial summary judgment on this issue, but the parties disputed whether that partial summary judgment was intended to apply to both literal infringement and infringement pursuant to the doctrine of equivalents, or whether it was only a determination of no literal infringement. It does not appear that Anchor challenged Judge Doty's determination that Claim 70 of the '713 patent is not literally infringed. Anchor did argue, however, that genuine issues of material fact remained for infringement under the doctrine of equivalents.
The Circuit surmised that language in the District Court's opinion made it "appear that the District Court granted partial summary judgment to Rockwood only with respect to literal infringement and did not address infringement of claim 70 of the '713 patent under the doctrine of equivalents." Id. at 1313 (emphasis added). The Circuit concluded:
To the extent that the district court's judgment constituted a grant of partial summary judgment of noninfringement of Claim 70 of the '713 patent under the doctrine of equivalents, we vacate that portion of the judgment and remand to the district court to articulate whether any triable issues of fact with respect to infringement of this claim by equivalents exists. If none exists, or if the issue was never briefed or argued to the district court, summary judgment in Rockwood's favor may be appropriate. Otherwise, trial on this issue, and resolution of any other relevant issues remaining in this case (e.g., validity) would be appropriate.Id.
ANALYSIS
I. PLAINTIFF'S MOTIONS IN LIMINEPlaintiff asks the Court to preclude defendants from arguing defenses identified after the close of discovery. Specifically, plaintiff wants to prevent defendants from arguing any of the theories of the case that were disclosed in an August, 2001, unverified "supplemental" discovery response. Included in this response were arguments that the '363 patent family was invalid under § 102 in view of the "Japanese Reference" and the Rockwood Classic block. The supplemental response also stated additional grounds of invalidity for the '015 family of patents. Defendants argued that the '015 family was invalid under § 103 in view of a combination of the Johnson Block with an Anchor block; that the '015 family was invalid and unenforceable on the ground that Anchor allegedly committed inequitable conduct in prosecuting the patents; and that the '015 family was invalid under § 102 in view of the Keystone Garden Wall block.
Plaintiff did not stipulate to these tardy identifications, and plaintiff further suggests that it conducted no discovery regarding these defenses. Plaintiff argues that it is common for courts to preclude an infringement defendant from arguing a theory or relying on prior art evidence that should have been, but was not, identified in response to contention interrogatories. To be admissible, plaintiff argues, defendants must show their tardy identification was either justified or harmless.
Defendants suggest that their supplemental disclosure was "seasonable," and further that plaintiff waived this argument by responding on the merits at the prior summary judgment motion, without moving to strike or objecting to the argument. Although plaintiff did note, in its response to defendant's motion to strike the declaration of Janopaul [Docket No. 100] that the supplemental interrogatory was untimely, plaintiff did not formally move to strike the supplemental response. In addition, plaintiff did not discuss, in its opposition to defendants' motion for summary judgment before Judge Doty, that the defense should be stricken. Instead, plaintiff responded on the merits to the Japanese art argument. However, defendants did not raise the "Classic Block" ground for invalidity during the prior summary judgment motion.
"For litigation to function efficiently, parties must provide clear and accurate responses to discovery requests. Parties are `entitled to accept answers to previous interrogatories as true, and to refrain from seeking additional discovery directed to the same issue.'" ELCA Enters., Inc. v. Sisco Equip. Rental Sales, Inc., 53 F.3d 186, 189 (8th Cir. 1995) (affirming exclusion of evidence where "ELCA did not candidly respond to the defendants' questions. Instead, after misleading the defendants for several months, ELCA made an eleventh-hour attempt to switch the basis for its alleged damages. . . . We will not validate such lack of candor . . .") (quoting Averbach v. Rival Mfg. Co., 879 F.2d 1196, 1201 (3d Cir. 1989)).
"A party that . . . fails to disclose information required by Rule 26(a) . . . shall not be permitted to use [the nondisclosed information] as evidence at a trial, at a hearing, or on a motion" unless such failure was "harmless" or there was "substantial justification" for the failure. Fed.R.Civ.P. 37(c)(1). "Rule 16 gives the district court the authority to set management deadlines and to impose sanctions for their violation." Trost v. Trek Bicycle Corp., 162 F.3d 1004, 1008 (8th Cir. 1998) (citing Fed.R.Civ.P. 16(b), (c)(5)-(7), (f)). The Court is permitted to exclude untimely evidence unless the failure to disclose was "either harmless or substantially justified." Id.
Rule 26(e)(2) of the Federal Rules of Civil Procedure imposes upon a party "a duty to seasonably amend a prior response to an interrogatory . . . if the party learns that the response is in some material respect incomplete or incorrect and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing."
The Court is concerned that defendant failed to raise the Japanese art defense in a timely manner. However, plaintiff addressed the Japanese reference argument on the merits in the prior round of summary judgment motions without moving to strike the tardy discovery response. Judge Doty excluded plaintiff's tardy expert testimony in which plaintiff attempted to address the merits of the Japanese reference defense. Judge Doty noted that plaintiff should have objected to the late disclosure, rather than submitting its own tardy response. In this way, Judge Doty strictly enforced the scheduling deadline, and that strict enforcement was upheld by the Circuit. This Court will continue in that manner, and will not exclude the defense of anticipation by the Japanese prior art, because plaintiff should have objected or moved to strike during the previous round of summary judgment motions.
A related issue the Court must resolve is the motion to exclude testimony by witness Janopaul as that testimony relates to the Japanese art. Plaintiff submits a fact affidavit from witness Janopaul in support of its argument on the merits of the Japanese reference. A purported expert declaration on these same issues was struck by Judge Doty, and that decision was upheld by the Circuit. However, the affidavit now under consideration is not an expert affidavit, but merely a fact affidavit. The Court therefore will allow it. The Court will not, however, allow additional discovery on the Japanese art issue.
The Court will allow plaintiff to engage an individual to provide a translation of the Japanese reference, to the extent plaintiff disagrees with the translation provided by defendants.
Unlike the Japanese reference, the defense of invalidity based on plaintiff's own Pinned Diamond block was not raised in the prior summary judgment motion. Defendants suggest that they have "good cause" for the tardy disclosure of this defense. Specifically, defendants argue that the documents relating to this defense have at all times been in plaintiff's possession, because the defense is premised on a protest that plaintiff made to the United States Patent Office. Defendants indicate that these documents should have been timely disclosed to defendants, but were not. Defendants instead received the documents in relation to litigation defendants are engaged in with another party. The Court is satisfied that defendants disclosed this defense as soon as practicable, and that the disclosure, if untimely, was substantially justified. In addition, the Court is not persuaded that plaintiff has been caught "flat-footed," and is therefore prejudiced by the defense. Plaintiff clearly contemplated the relationship between the at-issue patents and the Pinned Diamond block as it sought to patent the at-issue blocks. Plaintiff's expert, Carl Moy, cited the Anchor protest as material he considered in his report addressing the defendants' expert report on invalidity. The motion to exclude this defense is therefore denied.
The defense of invalidity based on Rockwood Classic block was not addressed in the prior round of summary judgment. Defendants nonetheless argue that objection to this theory of defense has been waived. For this waiver argument, defendants primarily rely on a First Circuit case, DesRosiers v. Moran, 949 F.2d 15, 21-22 (1st Cir. 1991). In DesRosiers, an inmate sued the prison where he was incarcerated for alleged constitutional violations. The inmate raised a failure to comply with discovery argument at a pretrial conference. The issue was not resolved, and he failed to raise the issue again until trial. Although the inmate raised the issue at trial, the trial court deferred ruling on it, and the inmate did not re-raise the discovery issue. The trial court ultimately determined that the argument was waived, because the inmate knew about the discovery violation, and had several opportunities to cure the violation. The appellate court refused to grant a retrial, in part because the plaintiff had sought none of the possible remedies for discovery violations. The court noted:
Ordinarily, if a failure to make timely discovery comes to light before or during trial, the remedy is to order the information produced and to take immediate steps to cure any prejudice. Depending on the nature of the breach, such curative steps might involve a continuance, see, e.g., Jackson [v. Harvard Univ.], 900 F.2d [464], 468-69 [(1st Cir. 1990)], a mistrial, see, e.g., Taylor v. Illinois, 484 U.S. 400, 413 (1988) (listing possible remedies for discovery violations, including the declaration of a mistrial), a preclusionary order, see, e.g., Navarro de Cosme v. Hospital Pavia, 922 F.2d 926, 932 (1st Cir. 1991); Fashion House, Inc. v. K Mart Corp., 892 F.2d 1076, 1081-82 (1st Cir. 1989), or striking the responsible party's pleadings, see, e.g., Marquis Theatre Corp. v. Condado Mini Cinema, 846 F.2d 86, 88-90 (1st Cir. 1988).Id. at 21-22.
The instant case differs significantly — plaintiff does not ask the Court for a retrial, instead, plaintiff asks the Court to determine, in the first instance, whether a discovery violation indeed occurred. Several remedies are feasible, including allowing plaintiff an opportunity to conduct limited discovery. However, the remedy of additional discovery is not sought by plaintiff. Plaintiff argues that this case is ready for trial. The Court agrees that further delay in this five-year-old dispute would not serve the interests of the parties, or the Court's interest in the prompt and efficient resolution of disputes.
Instead, the Court will exclude the defense of invalidity based on Rockwood's Classic block, because that was not raised as a defense at prior summary judgment. The best time to object and move to strike the defense likely would have been at the time of the tardy submission. Perhaps the next best time to object is when the issue is first raised by the defense. Because the issue was not raised in the previous summary judgment motion, it is appropriately raised now. The Court continues Judge Doty's practice of strict enforcement of discovery deadlines, and therefore grants plaintiff's motion to exclude the defense of invalidity based on the Rockwood Classic block. That defense may not be raised in trial, and will not be addressed in this summary judgment opinion and order.
II. STANDARD FOR SUMMARY JUDGMENT IN A PATENT CASE
"Summary judgment is appropriate in a patent case, as in other cases[,] . . . when the standards set forth in Rule 56(c) are satisfied." Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994); Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575 (Fed. Cir. 1994). That is, summary judgment is appropriate 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 judgment as a matter of law." Fed.R.Civ.P. 56. The propriety of summary judgment ordinarily turns on whether or not there are genuine issues of material fact that must be resolved by the trier of fact. On the other hand, questions of law are particularly amenable to summary judgment precisely because they do not turn on factual disputes. See, e.g., Varilease Tech. Group, Inc. v. United States, 289 F.3d 795, 798 (Fed. Cir. 2002). "A disputed fact is material if it might affect the outcome of the suit such that a finding of that fact is necessary and relevant to the proceedings." Eli Lilly Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)).
"While the burden rests on the party moving for summary judgment to show `that there is an absence of evidence to support the non-moving party's case,' the nonmoving party must affirmatively demonstrate by specific factual allegations that a genuine issue of material fact exists for trial." Id. at 971 (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986)). On a motion for summary judgment, the Court views all the facts in the light most favorable to the nonmoving party and gives that party the benefit of all reasonable inferences that can be drawn from the facts. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
III. PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT ON VALIDITY AND ENFORCEABILITY
Defendants argue that the '015 patent family is invalid and unenforceable because plaintiff failed to list Richard Stehly, a former company president, as an inventor on the patents. The patents instead named as inventors Dick Sievert and Michael Woolford, both former employees of plaintiff. Plaintiff requests summary judgment, suggesting that no evidence supports a finding that Stehly is an inventor. Even if the evidence did support such a finding, plaintiff's argument continues, there is no evidence that the failure to include Stehly as an inventor was the product of any deceptive intent.
Mr. Sievert is deceased.
The following recitation presents either undisputed facts, presents the facts in the light most favorable to the nonmoving party (here, defendants), or clearly identifies the disputed facts.
Glen Bolles, CEO of Anchor, contacted Dick Stehly sometime in 1987 to talk about Stehly possibly working for Anchor. (Jan. 8, 2004 Decl. of D. Stehley, Ex. 2 to Ulbrich Decl. [Docket No. 157]). Anchor acquired Anchor Block Company ("ABC"), in 1988; Anchor's CEO (Glenn Bolles) asked Dick Sievert to design two retaining wall blocks. The parties disagree about Sievert's role in the company. Plaintiff suggests Sievert was the "block designer," while defendants say he was "manager of block production." The parties agree that Sievert designed the "Diamond" block. The "Diamond" design initially included pins to interlock the blocks together. Sievert also designed a "Terrastone"/"Aztech" block, which was rectangular and used a tongue-and-groove interlocking design.
Attorney Ulbrich presented the Court with numerous declarations. Unfortunately, the declarations are all entitled "Declaration of Scott G. Ulbrich." This practice has made it difficult for the Court to locate particular documents, and renders citation cumbersome. In the future, counsel is ordered to number declarations, i.e., "Second Declaration . . .", if counsel anticipates submitting more than one declaration.
When these blocks were first exhibited, competitors complained that the blocks infringed patents, so plaintiff set about redesigning them. Plaintiff held several meetings, some of which Stehly attended. Plaintiff claims that Sievert was the only employee who initially believed the rear lipped product could be invented and manufactured. Plaintiff also claims that Sievert, Bolles, and Ted Guth (operations manager) drew concept sketches, but Stehly did not draw any concept sketches.
Plaintiff emphasizes that there is no evidence that Stehly conceived of the rearlipped design, or played any part in selecting the final Diamond design. Plaintiff concedes that Stehly testified (as did others) that he made foam versions of the blocks in April of 1989, but plaintiff claims that this was "long after" the design was conceived and discussed by others.
Defendants' version of events is meaningfully different. Defendants criticize plaintiff for attempting to mislead the Court into conflating invention of the lipped Aztech with the lipped Diamond block. Defendants suggest that Sievert focused on the Aztech block re-design and was busy overseeing the large production runs of the "new lipped Aztech block" until at least March of 1989. Stehly, according to defendants, was focused on redesigning the Pinned Diamond block. Defendants suggest that when Stehly created the different sets of foam molds, he was able to determine how to configure the block so that it could be mass produced.
Defendants refer to these foam blocks as "prototypes" and note that Stehly had the blocks on display in his office before Mike Woolford (one of the named inventors) joined Anchor. From this, defendants argue that the Court can infer that Stehly must have been an inventor.
It is not disputed that Stehly was asked to resign from Anchor on June 9, 1989. It is also not disputed that Woolford began work for Anchor only after Stehly left. As part of the severance negotiations, Stehly asked for a royalty for his work on the Diamond product. Defendants also emphasize that Stehly was not informed of the design applications Anchor filed. Defendants characterize this as something of a cover-up or conspiracy. In addition, defendants set forth testimony by several witnesses, including one of the named inventors, that indicates that Stehly played some role in the invention.
B. Applicable Law and Application
Patents are presumed valid and enforceable. 35 U.S.C. § 282. "[E]ach patent also receives the presumption that its named inventors are the true and only inventors. Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997). When an invention is the work of several inventors, they must jointly apply for the patent. 35 U.S.C. § 116; 35 U.S.C. § 111. Omission of an inventor invalidates a patent unless the omission was an error "without any deceptive intention." Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371, 1379 (Fed. Cir. 2001) (citing 35 U.S.C. § 256; 35 U.S.C. § 102(f) (additional citation omitted)).
In this case, defendants claim that the patent is invalid because the application did not state that Stehly was one of the inventors. To rebut the presumption that the patent's named inventors are the true and only inventors, defendants must present clear and convincing evidence that the omitted individual actually invented the claimed invention. Acromed, 253 F.3d at 1379 (citing Environ Prods. v. Furon Co., 215 F.3d 1261, 1265 (Fed. Cir. 2000)).
"Conception is the touchstone of inventorship." Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994). For an individual to be a joint inventor, therefore, that person "must have contributed to the conception of the invention." Acromed, 253 F.3d at 1380 (citation omitted). "Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is applied in practice." BJ Servs. Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368, 1373 (Fed. Cir. 2003) (citing Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994)). "Beyond conception, a purported inventor must show that he made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and [did] more than merely explain to the real inventors well-known concepts and/or the current state of the art." Acromed, 253 F.3d at 1380 (quotation omitted).
On a motion for summary judgment, the Court shall "view the evidence through the prism of the evidentiary standard of proof that would pertain at a trial on the merits." Eli Lilly Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). Where the clear and convincing standard is applicable, a nonmovant cannot survive summary judgment by presenting facts sufficient to satisfy the preponderance of the evidence standard. Liberty Lobby, 477 U.S. at 255-56. The clear and convincing standard has been defined by the Supreme Court as follows: "if [the plaintiff] could place in the ultimate factfinder an abiding conviction that the truth of its factual contentions are `highly probable.'" Colorado v. New Mexico, 467 U.S. 310, 316 (1984) (addressing water rights between Colorado and New Mexico) (citing C. McCormick, Law of Evidence § 320, p. 679 (1954)). The Court continued, "[t]his would be true, of course, only if the material [plaintiff] offered instantly tilted the evidentiary scales in the affirmative when weighed against the evidence . . . offered in opposition." Id. (citing McBaine, Burden of Proof: Degrees of Belief, 32 Calif. L.Rev. 242, 251-54 (1944)). See also Cruzan v. Dir., Mo. Dep't of Health, 497 U.S. 261, 282 (1990) (labeling the clear and convincing evidence standard as an "intermediate standard"); Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed. Cir. 1988); Cornell v. Nix, 119 F.3d 1329, 1334-35 (8th Cir. 1997) (discussing "clear and convincing" standard in habeas corpus context).
A purported co-inventor's testimony, standing alone, cannot meet the "clear and convincing" standard. Trovan, Ltd. v. Sokymat SA, Irori, 299 F.3d 1292, 1302 (Fed. Cir. 2002) (citing Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993)). While it is true that "[c]orroborating evidence may take many forms," it is preferable to have "physical records that were made contemporaneously with the alleged prior invention." Id. (citing Sandt Tech., Ltd. v. Resco Metal Plastics Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001) (additional citation omitted). "Circumstantial evidence about the inventive process may also corroborate." Id. Further, "oral testimony of someone other than the alleged inventor may corroborate." Id. (citation omitted).
Plaintiff's argument is persuasive, and the standard defendants must meet is high. See, e.g., Hess, 106 F.3d at 981 (affirming district court's conclusion after a trial that plaintiff was not coinventor even though plaintiff was able to point to "snippets of the [defendants'] testimony in which, he asserts, the [defendants] conceded that Mr. Hess was responsible for significant portions of the invention the '071 patent disclosed. Those statements, however, cannot bear the weight Mr. Hess gives them. In the context of the entire record, they do not refute the factual sufficiency of the evidence supporting the district court's decision."). That said, defendants have pointed to more than a small amount of evidence that would enable the Court, as the fact finder, to determine that Stehly was an inventor and that failing to name him on the patent was with deceptive intent. BJ Servs. Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368, 1373 (Fed. Cir. 2003) ("Inventorship is a question of law with factual underpinnings."). For these reasons, plaintiff's motion for summary judgment on validity and enforceability is denied.
IV. DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT AND INVALIDITY FOR THE '363 FAMILY OF PATENTS
Defendants assert three grounds for summary judgment for plaintiff's infringement claims for the '363, '183, and '129 Patents. First, defendants claim that Anchor's '363 patents are invalid because they were anticipated by a Japanese Patent Publication. Second, defendants claim that their "Classic block" is invalidating prior art that was developed and sold prior to the priority date of Anchor's patent claims. Finally, and alternatively, defendants argue that their blocks do not infringe because they do not "mate" as that term was constructed by the Federal Circuit.
Plaintiff suggests that defendants' noninfringement arguments are frivolous and would require the Court to ignore the Federal Circuit's claim construction. Plaintiff further argues that defendants' alleged bases of invalidity were raised for the first time after the close of discovery, and depend upon secret witnesses and inadmissible, unauthenticated documents. Because the Court decided that the Japanese reference was adequately disclosed, the Court will address on the merits defendants' argument regarding the Japanese reference. The Court will not address defendants' argument that the Classic Block was prior art, because the Court has granted plaintiff's motion to exclude that theory of defense. A. Background
The following background is either undisputed, or is presented in the light most favorable to the nonmoving party — here, the plaintiff.
Anchor is the assignee of three relevant patents, the '363, '183, and '129 patents. Anchor alleges that defendants' "Classic block" product infringes claim 4 of the '363 Patent, claims 14, 15, 18, 32, 38, 39, 40 and 42 of the '183 Patent, and claims 1, 3, 5, 6, 8, 14, 25, and 27 of the '129 patent. Defendants argue that the asserted claims of the '183 patent are only entitled to a priority date of May 4, 1993, and the asserted claims of the '129 Patent are entitled only to a priority date of October 1, 1993.
The full U.S. Patent Nos. are, respectively, 5,490,363, 5,704,183 and 5,711,129.
B. Applicable Law and Application
Patents are presumed valid. 35 U.S.C. § 282. However, "[a] patent is invalid for anticipation when the same device or method, having all of the elements and limitations contained in the claims, is described in a single prior art reference." ATD Corp. v. Lydall, Inc., 159 F.3d 534, 545 (Fed. Cir. 1998); 35 U.S.C. § 102(b). "An anticipating reference must describe the patented subject matter with sufficient clarity and detail to establish that the subject matter existed and that its existence was recognized by persons of ordinary skill in the field of the invention." Id. An invention is anticipated if it "was patented or described in a printed publication in this or a foreign county . . . more than one year prior to the date of application for patent in the United States." Helfix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000) (quoting 35 U.S.C. § 102(b)). An invention is anticipated "if a patentee's invention has been made by another, prior inventor who has not abandoned, suppressed or concealed the invention." Dow Chem. Co. v. Astro-Valcourt, Inc., 267 F.3d 1334, 1339 (Fed. Cir. 2001); 35 U.S.C. § 102(g). For the accused infringer to succeed on an anticipation invalidity claim, the infringer must show that the prior art reference discloses "each and every limitation of the claimed invention." Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) ("[A]nticipation [occurs] if a single prior art reference discloses each and every limitation of the claimed invention."). The accused infringer must also show that the prior art is enabling, and must show that the prior art describes the claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the field of the invention. Id.; see also Freeman v. Minn. Mining and Mfg. Co., 675 F. Supp. 877 (D. Del. 1987) (denying summary judgment because a material question of fact as to enabling existed).
In analyzing anticipation arguments, courts first construe the claim, then compare the construed claim to the prior art. Helfix, 208 F.3d at 1346. The second step — comparing the construed claim to the prior art — is a question of fact. Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1339 (Fed. Cir. 2003).
An accused infringer challenging the validity of a patent "bears the burden of showing invalidity by facts supported by clear and convincing evidence." Robotics Vision Sys., Inc. v. View Eng'g, Inc., 189 F.3d 1370, 1377 (Fed. Cir. 1999) (emphasis added). Oral testimony is rarely enough to show invalidity and typically must be bolstered by some additional evidence. See, e.g., Lacks Indus. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1349-50 (Fed. Cir. 2003) (discussing a priority dispute). As discussed above, where the clear and convincing standard is applicable, a nonmovant cannot survive summary judgment by presenting facts sufficient to satisfy the preponderance of the evidence standard. Liberty Lobby, 477 U.S. at 255-56. The clear and convincing standard is met "if [the plaintiff] could place in the ultimate factfinder an abiding conviction that the truth of its factual contentions are `highly probable.'" Colorado v. New Mexico, 467 U.S. at 316 (citation omitted).
1. Japanese reference
The Japanese reference was published November 10, 1984 and the '363 family of patents have an effective filing date (according to defendants) of October 6, 1992. The applicable statutory section (§ 102(b)) requires that to be considered prior art the reference need only predate the invention by one year. Defendants then argue the remainder of the requirements by comparing, in chart form, the Japanese art with the claim language of the patents in suit.
The Court is not persuaded that defendants have established by any standard, let alone a clear and convincing one, that the Japanese reference anticipates, and therefore invalidates, the '363 and '129 patents.
It is true that the Japanese reference appears similar — it seems to disclose masonry blocks that make up retaining walls. Nonetheless, given the reference (and that is all the Court is given) some attributes could be different. Defendants' argument — made by labeling the Japanese reference using language from plaintiff's claims, and then making the conclusory statement that no reasonable jury could find the Japanese reference does not anticipate — is insufficient as a matter of law, and as a matter of common sense. Skilled as they might be in the art of trial advocacy, there is no indication in the record that the defendants' trial attorneys are competent to translate or interpret the Japanese reference or its drawings.
Plaintiff argues, not without force, that the Japanese reference appears to disclose blocks intended to be used with mortar to build retaining walls. Defendants disagree with this proposition, but defendants misplace the burden in their argument. It is not plaintiff's burden to show that the prior art did not anticipate — it is defendants' burden to demonstrate, by clear and convincing evidence, that the Japanese reference does anticipate. If it is just as feasible that the Japanese reference discloses blocks with significant differences, or if the Japanese reference was not enabling, then defendants have not met their burden on summary judgment.
The differences Anchor also points to are as persuasive as defendants' analysis of the reference. Therefore defendants' motion for summary judgment on the ground that the '363 and '129 patents are invalid due to anticipation by the Japanese reference, is denied.
2. The "mate" argument
Defendants argue that the Classic block does not literally infringe because it does not "mate." Anchor argues that this is the construction of "mate" that was rejected by the Federal Circuit. This Court agrees. Defendants advertise the Classic block as "locking" together — and also advertise the Classic block's "interlocking" features. The Circuit defined "mate" as "to join or fit together." 340 F.3d at 1309. This definition supports plaintiff's argument, especially when it is read against the rejected more narrow construction, which required two limitations that were determined by the Circuit to be erroneous. Id. (rejecting the following limitations (1) a close confinement of the protrusion within the inset(s) of two or more blocks; (2) an ability to secure the blocks in place in a forwards and backwards direction; and approving as unchallenged the limitation of an interlocking of the protrusion with the insets).
Plaintiff argues that no reasonable jury could find that the Classic block does not "mate" therefore summary judgment for Anchor is appropriate. Though the Court agrees that plaintiff has the better argument, it is not the case that a reasonable jury would have no choice but to find plaintiff's argument persuasive. This question of fact is within the province of the jury, and will be so submitted.
V. DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT AND INVALIDITY FOR THE '015 FAMILY OF PATENTS
As to this family of patents, the Federal Circuit remanded several issues. First, the Circuit indicated that the District Court must determine if there is literal infringement as a matter of law, given the Circuit's construction of "generally parallel." The Court will also address the proper construction of "substantially horizontal" and address the Festo presumption. Finally, the Court addresses claim 70 and '713. Specifically, the Court will determine whether potential infringement of the doctrine of equivalents was briefed and argued to Judge Doty. If so, the Court will address whether claim 70 of the '713 patent infringed under the doctrine of equivalents.
In this motion, defendants request summary judgment that the accused Cottage Stone II, III, and IV block products do not infringe plaintiff's asserted U.S. Patents Nos. 5,827,015 ("the ` 015 Patent") and 6,142,713 ("the ` 713 patent"). Defendants argue that under the "corrected" claim construction, as provided by the Federal Circuit, the accused blocks are not "generally parallel" as the Circuit construed that claim. Defendants claim the accused products do not infringe the limitations of the asserted claims of the '015 Patent under the doctrine of equivalents, because the doctrine is unavailable for certain claim limitations due to narrowing amendments made for patentability purposes.
Finally, defendants make a "prosecution laches" argument — suggesting that plaintiff unreasonably and unjustifiably delayed prosecution of the '015 patent in order to permit the retaining wall block market to develop, which prejudiced defendants and other competitors.
A. Background
Anchor's '015 and '713 are "related parent-child" pair of utility that disclose blocks used to form retaining walls. The top and bottom surfaces of the blocks are flat (no ridges or gaps). The accused infringing blocks are defendants' "Cottage Stone" blocks. The blocks are relatively similar, except the Cottage Stone II blocks have grooves in the bottom, and a concave bottom. Defendants say this is a substantial improvement, because with defendants' blocks, the previous course of blocks does not have to be free of debris before adding the next layer.
Defendants' Cottage Stone II block was the subject of a patent application filed on August 19, 1999. The patent examiner determined that the design was sufficiently different from plaintiff's '015 so as to be entitled to a patent, and the patent 6,250,850 issued on June 26, 2001.
Cottage Stone III was designed, according to defendants, before January 10, 2000. The alleged infringed block ('713) did not obtain patent allowance until November 7, 2000. The novel features in the Cottage Stone III were notches in the sidewalls, a channeled area on the bottom surface in front of the rear lip, even more of a concave bottom, and a displaced rear lip. Again, the blocks can tolerate debris on the prior layer/course. The rear lip was offset to increase strength, and the notches make the blocks lighter and more consumer friendly.
Cottage Stone IV was designed, according to defendants, prior to May 4, 2001. Essentially, the Cottage Stone IV altered the face to make it more attractive. Patent No. 6,183,168 B1 ("the '168 patent") was issued as to Cottage Stone IV. Infringement of the '168 patent does not appear at issue, because defendants were granted summary judgment, and plaintiff did not appeal.
Defendants allege that plaintiff unreasonably and unjustifiably delayed the prosecution of their allegedly infringed block products so that they could entice competitors to start using similar designs. According to defendants, when plaintiff finally allowed the patents to issue, plaintiff began suing competitors. Defendants argue that plaintiff did this by creating a family of patents ('015, '713, and '168 patents) which are all children of a chain of patents plaintiff originally filed in 1989. It was not until 1998 that plaintiff finally allowed a patent to issue to cover its successful Diamond and Windsor block designs.
B. Analysis
1. Literal infringement
Defendants argue there is no literal infringement because, even given the Federal Circuit's construction of "generally parallel," the Cottage Stone blocks are not generally parallel. Defendants invite the Court to revisit the claim construction to make it more specific — an invitation that, while perhaps the Court could entertain, the Court declines. The Federal Circuit construed the claim as specifically as the Circuit found necessary. If the Circuit had intended "generally parallel" to have an outside limit, it would have, and certainly could have, included such a limit.
Although the Court declines to define "generally parallel" more specifically than did the Circuit, the Court finds merit in defendants' argument that the accused blocks do not infringe. Considering the Cottage Stone blocks' grooves, the multifaceted and curved lower face, and the concave bottom, defendants' argument is persuasive. Defendants present an expert who opines that between 74.46 and 82.21% (depending on which version of Cottage Stone) of the lower face is "non-parallel." Defendants also point out that plaintiff itself has argued that the "few wrinkles" are important (explaining this point by comparing modern hairpins/bobby pins with old style straight hair pins). On the other hand, plaintiff presents an expert who indicates that the blocks are generally parallel. Accepting defendants' argument risks reading "generally" out of the claim, an error this Court will not repeat. Because a reasonable jury could find that the accused blocks are "generally parallel" given the Circuit's definition, the Court will not grant defendants' motion for summary judgment on this basis.
Defendants also argue that Cottage Stone III and IV cannot literally infringe, because the "rear lip does not have a `rear face which is an extension of the block rear face.'" As plaintiff points out, neither the District Court nor the Circuit construed the term "extension." Given the Circuit's definition of "protrusion" as "something that protrudes" the Court defines "extension" as "something that extends." The debate is how specific this limitation is — if the back surface of the rear lip must be in the same plane as the rear-most surface of the block, then defendants' blocks do not literally infringe. However, this reading is too narrow because extension is merely "something that extends."
It is true that the lip is offset in the Cottage Stone versions and is not offset in plaintiff's versions. However, the Court cannot find that reasonable minds could not find literal infringement here. The Court is not persuaded that an "extension" of the rear lip necessarily excludes an offset lip. Such a reading also calls to mind the rejected construction of "back" which erroneously required "a back surface "spanning the full width of the block."
2. Substantially horizontal
The Federal Circuit did not define "substantially horizontal" and specifically ordered the District Court to do so. The Court therefore construes this term, using the multi-step approach set out by the Federal Circuit. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996); see also Markman v. Westview Instr., Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) ( en banc), aff'd, 517 U.S. 370 (1996).
The steps include (1) determine the ordinary meaning of the claims themselves; (2) analyze ordinary meaning in light of the intrinsic evidence; and (3) consult extrinsic evidence when permitted. Vitronics, 90 F.3d at 1582-83.
The dictionary definition of "horizontal" provided by defendants is "a line or plane assumed, for the purpose of measurement or description, to be parallel with the horizon." New Comprehensive Int'l Dictionary of the English Language, p. 608, Fund Wagnalls (1978). Another dictionary, Merriam-Webster's Collegiate Dictionary, p. 558, Mish Morse (10th ed.), provides several entries for "horizontal." The most relevant of those is as follows: "1b: parallel to, in the plane of, or operating in a plane parallel to the horizon or to a base line." ("Horizon" is defined in Merriam-Webster's Collegiate Dictionary as "the apparent junction of earth and sky.")
The most relevant entry for "substantial" in Merriam-Webster's Collegiate Dictionary is "being largely, but not wholly that which is specified." Merriam-Webster's, p. 1170. This is not too far off the definition for "generally" discussed by the Federal Circuit. See also Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1360-61 (Fed. Cir. 2003) (discussing construction of "substantially" and rejecting construction that "substantially uniform thickness" meant varying by .001 inches or less).
The Court therefore construes "substantially horizontal" as allowing for some deviation from exactly horizontal, and horizontal as "a line or plane parallel to the horizon or a base line." Such a reading also comports with the prosecution history. Plaintiff specified during the prosecution that "substantially horizontal" was meant to cover blocks that had `modifications' in their bottom surfaces. (Strawbridge '015 Decl., Ex. 49 at 15.)
Defendants' argument that there is no literal infringement requires a finding that, because of the concaveness and grooves in the bottom of the Stone Blocks, no reasonable jury could determine that the bottom surface is "substantially horizontal." The Court again finds merit in this argument, but also finds that a reasonable jury could find literal infringement, given the modifier, "substantially."
3. Festo doctrine of equivalents
The Federal Circuit directed the District Court to determine "whether Anchor can rebut the Festo presumption" in relation to infringement of claims 38 and 50 of the '015 patent. Anchor Wall Sys., Inc. 340 F.3d at 1312. Defendants suggest that plaintiff invoked the Festo presumption, and that Judge Doty found that plaintiff invoked the presumption of amendment estoppel with respect to the limitation "generally parallel." 252 F. Supp.2d at 854. The parties disagree about the precise issue this Court must address. Defendants indicate that the only question here is whether plaintiff can rebut the Festo presumption. Plaintiff, on the other hand, argues that the presumption has not been invoked. Plaintiff contends that the Festo presumption does not apply because "[t]hese claims had the `generally parallel' language from the beginning." Plaintiff continues, "the `generally parallel' limitation in these claims is, if anything, broader than the `parallel' and `planar' limitations recited in the original claims of the application which matured into the '015 patent."
Despite plaintiff's efforts, given the clear language of the Circuit, the Court agrees with defendants, and will begin its analysis by assuming that the Festo presumption has been invoked, and will addresses whether plaintiff can rebut the Festo presumption.
In addition, it is clear that Judge Doty found that the Festo presumption had been invoked. Plaintiff does not argue that this particular holding was appealed.
The Festo presumption refers to the scope and extent to which prosecution history estoppel is a bar to the doctrine of equivalents. The Supreme Court held that a narrowing amendment during prosecution is not a complete bar to the doctrine of equivalents. Rather, only those amendments relating to a "substantial question of patentability" raise the bar. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), remanded to 344 F.3d 1359 (Fed. Cir. 2003).
The Supreme Court identified three factors by which a patentee may overcome the Festo presumption. Id.; see also 344 F.3d 1359, 1368 (discussing three ways to rebut the presumption). First, the patentee may show that the equivalents were unforeseeable at the time of amendment, and thus, beyond a fair interpretation of what was surrendered. 344 F.3d at 1369 (citation omitted). The patentee may alternatively show that the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question. Id. "In other words, this criterion asks whether the reason for the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent." Id. Finally, the patentee may show "some other reason suggesting that the patentee could not reasonably have described the insubstantial substitute in question." Id. at 1370.
When a party invokes the second noted method — that the rationale for the narrowing amendment was only tangentially related to the equivalent in question — the party must provide objective evidence "based solely upon the public record of the patent's prosecution." Id. at 1369. The Federal Circuit instructs, "whether the patentee has established a merely tangential reason for a narrowing amendment is for the court to determine from the prosecution history record without the introduction of additional evidence, except, when necessary, testimony from those skilled in the art as to the interpretation of that record." Id.
Plaintiff raises the second noted method, arguing that the purpose of using the `generally parallel' limitation bore absolutely no relation to the equivalent in question. (Pl.'s Opp'n Br. at 19.) Citing to the declaration of plaintiff's in-house attorney, plaintiff argues that the purpose of reciting "generally parallel" was to clarify that the invention was not limited to blocks having exactly parallel surfaces. Id. Defendants suggest that plaintiff has not pointed to evidence sufficient to overcome the Festo presumption because it has pointed to no admissible or relevant evidence. Defendants suggest that the Court is limited strictly to the prosecution history to determine whether the Festo presumption has been overcome. That is a slight exaggeration, as the Court may look to testimony from those skilled in the art to interpret the prosecution history. Festo, 344 F.3d at 1369. The Court cannot determine, on this record, that plaintiff will be unable to rebut the Festo presumption. Plaintiff has presented sufficient evidence to preclude summary judgment for defendants on this issue.
Defendants make a motion to strike evidence submitted by plaintiff regarding this issue. The Court, as set out below, denies this motion, therefore plaintiff has submitted evidence to overcome the presumption.
Defendants further argue that even if the Festo bar did not preclude plaintiff from arguing the doctrine of equivalents, the curved lower surface of the Cottage Stone products is not an equivalent to "generally parallel" under the doctrine of equivalents because this feature is independently patented in the claims of Rockwood's '850 Patent. The grant of a patent on the accused device is evidence of the substantiality of differences. Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1570 (Fed. Cir. 1996). Defendants argue, "[r]easonable minds . . . would not differ with the patent examiner in finding" that defendants' blocks did not infringe. (Memo. in Supp. of Summ. J. at 21.) Defendants' prediction might be correct — it might be that a factfinder will agree. This is not the same, however, as saying that "reasonable minds could not differ." Because reasonable minds could differ on this conclusion, summary judgment is not appropriate.
Defendants cite Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1570 (Fed. Cir. 1996) for the proposition that the doctrine of equivalents cannot be applied if the accused infringing device is covered by a separate patent that references the alleged infringed patent. The Court is not convinced that the Zygo opinion stands for such an unyielding proposition. The Zygo Court certainly found that the doctrine of equivalents did not apply, and discussed the fact that the alleged infringer had cited the allegedly infringed product, but no court has cited Zygo for the broad proposition cited by defendants. See, e.g., Aeroquip Corp. v. United States, 37 Fed. Cl. 139, 146 (Fed.Cl. 1997) (describing Zygo as follows: "In Zygo, the Federal Circuit noted that the accused infringer cited the accuser's patent while the accused was seeking to patent its own interferometer. The court found that granting a patent to the accused after citation to and consideration of the accuser's patent was relevant to the issue of whether the accused's invention was substantially similar.") (emphasis added).
4. Claim 70 of '713
Claim 70 of the '713 patent presents a separate issue. The Circuit vacated the District Court's opinion "[t]o the extent that [the opinion] constituted a grant of partial summary judgment of noninfringement of Claim 70 of the '713 patent under the doctrine of equivalents." 340 F.3d at 1313. The Circuit remanded for this Court "to articulate whether any triable issues of fact with respect to infringement of this claim by equivalents exists." Id. The Circuit also noted, however, that "if the issue was never briefed or argued to the district court, summary judgment in Rockwood's favor may be appropriate." Id. (emphasis added).
The Court begins, therefore, by determining if the issue was ever briefed or argued; if it was not, the Court will grant defendants' motion for summary judgment on this discrete issue.
Defendants, predictably, argue that the issue was not briefed or argued. Plaintiff argues it was. Given the task of discerning what was raised and argued previously, this Court is at a distinct disadvantage, as it was not involved in the case during the prior round of summary judgment. Therefore, the Court relies on the parties to familiarize the Court with this issue, and to provide the Court with clear and specific evidence regarding the question. Regrettably, neither party adequately supports or explains its position. For example, plaintiff points to a statement in its Supplemental Answers to Interrogatories, in which plaintiff states "that the claims of the '713 and '168 patents alleged [that are] infringed literally by the Cottage Stone III are also infringed under the doctrine of equivalents . . . because the lower/bottom surface/face of the Cottage Stone III is functionally equivalent to the lower/bottom surface/face of the claimed block, because it keeps the courses of blocks level." (Bremer Decl. in Opp'n to Defs.' Mot. for Summ. J. at Ex. 9 (emphasis added).) That the issue was raised in a supplemental interrogatory response does not mean, however, that it was briefed and argued to the District Court in the prior summary judgment argument. The Court was able to locate reference to this argument in briefs to the Federal Circuit, and plaintiff provided an excerpt from its previous summary judgment brief that arguably raises the issue. In response, defendants do not explain how plaintiff's prior summary judgment brief does not raise the issue. Defendants also do not address plaintiff's supplemental interrogatory responses. Defendants instead rely on a footnote in the previous summary judgment order. This Court cannot discern why the Court provided the cited footnote, and the footnote does not appear to constitute a holding but rather a summary to aid the reader.
The at-issue footnote is at 252 F. Supp. 2d at 851 n. 18. The Court also wonders why, if the footnote were dispositive, the Circuit would have remanded with the direction to address whether the issue had in fact been raised below.
Defendants have not provided sufficient evidence to the Court to rebut plaintiff's suggestion that this issue was raised and argued. Therefore, the Court turns to the Circuit's direction to "articulate whether any triable issues of fact with respect to infringement of this claim [claim 70 of the '713 patent] by equivalents exists." 340 F.3d at 1313.
As the Circuit noted, "infringement under the doctrine of equivalents frequently turns on questions of fact, such as whether the allegedly infringing device performs substantially the same function in substantially the same way to achieve substantially the same result as the claimed invention." Id. (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997)). Plaintiff here argues that defendants' blocks are equivalent, and that the changes are superficial only and were made merely to avoid infringement. However, plaintiff provides little by way of argument, and instead makes the conclusory statement that "Defendants have had the chance to argue the merits, and have opted not to. The issue . . ., thus, is an issue of fact to be resolved by a jury at trial." Given the utter lack of briefing on the merits of this issue, the Court cannot determine the issue on summary judgment. The motion for summary judgment is therefore denied, and this issue will be submitted to the jury.
5. Prosecution laches
Defendants argue that Anchor unreasonably and unjustifiably delayed prosecution of the '015 patent in order to permit the retaining wall block market to develop, which prejudiced defendants and other competitors. Both parties requests summary judgment on defendant's affirmative defense of prosecution laches.
Prosecution laches "is an equitable defense to a charge of patent infringement" that has been recognized, though not thoroughly discussed, by the Federal Circuit. See Stambler v. RSA Security, Inc., 243 F. Supp. 2d 74, 75 (D. Del. 2003) (lamenting that "neither Congress nor the Federal Circuit has provided any further guidance on the legal standards applicable to the prosecution laches defense" and granting summary judgment to plaintiff on defendant's affirmative defense of prosecution laches); see also Symbol Techs. v. Lemelson Med., 277 F.3d 1361 (Fed. Cir. 2002) (recognizing that the equitable doctrine of laches may be applied to bar enforcement of patent claims that issued after an unreasonable and unexplained delay in prosecution even though the applicant complied with pertinent statutes and rules), remanded to 301 F. Supp. 2d 1147 (D. Nev. 2004).
This doctrine has been used to combat what some commentators describe as a frequently "used and abused" practice of "continuation" applications. See generally Mark A. Lemley and Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L.Rev. 63, 64 (2004). "Continuation" is the term used to describe an applicant's ability to get perpetual "bites at the apple" by resubmitting applications. Id. Continuations allow "applicants dissatisfied with the course of patent prosecution" to "abandon an application and file a continuation." Id. "Alternatively, a patentee can prosecute one or more patents to issue and also keep a continuation application on file, hoping to win a better patent from the PTO in the future." Id. Patentees control whether or not a patent issues, even if the PTO has approved the patent. Id. ("Even when the examiner concludes that an invention is patentable and issues a `notice of allowance,' the patent applicant always retains the right to abandon the application that was deemed patentable and start the process over again."). "Applicants similarly manipulate the system by taking the patent awarded by the PTO, but also seeking additional or broader claims arising out of the same patent application." Id. (also discussing problems with continuation).
These commentators believe that these practices constitute "abuse" of the continuation process. Other commentators no doubt believe that these practices are good for competition. There is no disagreement that the practices are allowed by the PTO.
Although the Federal Circuit has not given district courts a great deal of guidance in applying prosecution laches, other district courts addressing the issue have first evaluated "whether a patent was obtained after an unreasonable and unexplained delay in prosecution." Symbol Techs., 301 F. Supp. 2d at 1155 (citations and internal quotations omitted). "[I]n reviewing the record to determine whether the delay at issue was unreasonable and unexplained, the court must consider the fact that prosecution laches is an equitable tool which has been used sparingly in only the most egregious of cases." Id. (quotations omitted).
See generally Michael T. Hawkins, Comment, Prosecution Laches in the Wake of Symbol Technologies, What is "Unreasonable and Unexplained" Delay?, 87 Minn. L.Rev. 1621 (2003) (discussing the Federal Circuit's opinion, and endeavoring to articulate "a prosecution laches test that appropriately balances the interest in providing fair incentives to inventors with the interest of protecting those who are prejudiced by unreasonably delayed patent claims").
For example in Symbol Technologies (on remand), the district court, after a trial, held that an "18 to 39 year delay in filing and prosecuting the asserted claims under the fourteen patents-in-suit after they were first purportedly disclosed in the 1954 and 1956 applications was unreasonable and unjustified and that the doctrine of prosecution laches renders the asserted claims unenforceable." Id. at 1155. Compare Chiron Corp. v. Genentech, Inc., 268 F. Supp. 2d 1139, 1143-44, 1148 (E.D. Cal. 2002) (denying summary judgment to patentee on laches issue because delay of more than fifteen years from earliest filing date to issuance was unexplained); with Stambler, 243 F. Supp. 2d at 76 (holding "[a]s a matter of law" that "the Stambler patents did not issue after an unreasonable delay" where patents issued less than two and one-half years (measured from the application date) or less than seven years (measured from the original application); Intuitive Surgical, Inc. v. Computer Motion, Inc., No. 01-203-SLR, 2002 WL 31833867, at *4-6 (D. Del. Dec. 10, 2002) (conducting trial on the issue and finding no laches where delay from earliest claim of priority to issuance was nine years).
Applying these principles here, Anchor first argues that defendants have waived the equitable defense of prosecution laches by failing to raise it until three years into this litigation. Anchor concedes that defendants pled "laches" in their initial answer, but Anchor suggests "prosecution laches" is an entirely different defense. Neither party cites to case law in support of their respective views on this question. Courts and commentators, however, clearly treat prosecution laches as a "new" defense, while the more straightforward defense of laches certainly is not new. See, e.g., Lemley and Moore, supra, at 65 (noting that "In the last ten years, [the courts] created an entirely new defense of prosecution laches." The authors later note, however, that prosecution laches is really a "revived" defense).
The Court agrees that "laches" is distinct from "prosecution laches." However, plaintiff was on notice that laches, of some sort, would be a defense in this matter. Plaintiff did not inquire with any specificity about the type of laches that would be at issue. The Court therefore declines to exclude the defense for failure to plead.
Plaintiff supports its position by detailing the prosecution history of the at-issue patents. Plaintiff attempts to distinguish this case from ones in which prosecution laches has succeeded as a defense by noting that, due to the enactment of GATT, "all of the claims in Anchor's '015 patent . . . and Anchors '713 . . . patent expire no later than June of 2010 . . ." This is relevant because one reason courts apply laches is to prevent patentees from wrongfully obtaining extra-long patents by filing continuation after continuation. However, this is only one rationale, and is not necessarily determinative of the issue.
It has been fourteen years since plaintiff began prosecutions (1990). This is toward the high end as compared to the few cases discussing the doctrine. Plaintiff notes that it has been prosecuting the patent applications non-stop and has allowed eight patents to issue. Plaintiff also has been defending its patents against alleged infringement (in the "Keystone" cases), and has prosecuted and received several foreign patents. Despite these arguments, neither party has presented sufficient evidence to convince the Court that summary judgment is appropriate on this issue.
V. DEFENDANTS' MOTION TO STRIKE
A. Bremer Rule 56(f) declaration
Plaintiff submitted a declaration of Dennis C. Bremer in connection with plaintiff's opposition to defendants' motion for summary judgment regarding the '363 family of patents. Defendants object to the declaration, arguing it is procedurally deficient, and is contrary to plaintiff's prior representations to the Court. Defendants also argue the declaration is an improper attempt to file a reply in plaintiff's motion in limine dispute and should be struck on that basis as well.
All evidentiary material made in support of or in opposition to a motion for summary judgment "shall be made on personal knowledge, shall set forth such facts as would be admissible in evidence and shall show affirmatively that the affiant is competent to testify to the matters stated therein." Fed.R.Civ.P. 56(e); see, e.g., Stuart v. Gen. Motors Corp., 217 F.3d 621, 635 n. 20 (8th Cir. 2000) (stating that documents that fail to comply with Rule 56(e) cannot be considered in deciding motion for summary judgment); Townsend v. American Express Fin. Corp., No. Civ. 02-4260, 2004 WL 45501 (D. Minn. Jan. 5, 2004) (striking two letters in opposition to summary judgment, the first because the letter was unsigned and there was no evidence authenticating it, and the second as inadmissible hearsay). Affidavits based upon "information and belief" are insufficient as a matter of law. Pioneer Hi-Bred Int'l, Inc. v. Ottawa Plant Food, Inc., 283 F. Supp. 2d 1018, 1027 (N.D. Iowa 2003) (citing Automatic Radio Mfg. Co. v. Hazeltine Research, 339 U.S. 827, 831 (1950)). Affidavits not meeting these standards are not properly relied upon by the Court. Id. Thus, a court may strike portions of affidavits that lack personal knowledge, contain hearsay, or rest upon conclusory statements.
The Court is not persuaded by defendants' objections and declines to strike the declaration. The declaration is not impermissibly contrary and is not procedurally improper. Plaintiff is required only to state what additional discovery is necessary and how it is relevant to the opposition of the pending motion for summary judgment. Those requirements are satisfied in this declaration.
B. Pages 12-13 and 21-23 of Plaintiff's Brief in Opposition to Defendants' Motion for Summary Judgment on Invalidity.
This motion is denied. Some arguments plaintiff makes in opposing summary judgment are also made in plaintiff's motion in limine, however, the theory of both motions is the same — namely, that defendants' invalidity defenses should be excluded. These pages are not improper and will not be stricken.
C. Janopaul declaration (in re the '363 patents)
This declaration will not be stricken for the reasons set forth in the Court's discussion of the Japanese reference defense.
D. Strawbridge declaration
Defendants move to strike portions of two declarations of Douglas A. Strawbridge. Strawbridge is the general counsel for Anchor. He is properly a fact witness and was disclosed as an expert witness as well. Since he is an officer of Anchor, he was not required to submit an expert report. To the extent his declaration contains "expert" opinion, it is permissible.
E. Janopaul declaration (re: the '015 family)
Plaintiff argues that this declaration is consistent with Janopaul's expert report and should not be excluded on that ground. The Court reviewed the Janopaul deposition and it was clear that, while Janopaul understands masonry blocks, he is not familiar with patent law terms. Some of the need for clarification likely stems from counsel for defendants insisting on using very "legal" terms, when he could have easily asked questions that Janopaul would have understood. The Court will not strike the declaration.
VI. PLAINTIFF'S MOTION TO STRIKE THE AKIRA YAMADA DECLARATION
Defendants submit the declaration of Akira Yamada dated May 13, 2004. Yamada purports to be a professional translator, and translates patent documents from English to Japanese, and Japanese to English. He submits an affidavit in which he avers that the translation of the Japanese reference as submitted by defendants is "to the best of [his] knowledge and belief, . . . true." Plaintiff attacks as insufficient Yamada's affidavit, arguing it does not satisfy the requirements of Rules 604 or 901 of the Federal Rules, or Rule 56(e).
Defendants point out that it does not even need to submit an affidavit as foundation for the Japanese reference because it has been before the Court for years without objection. Defendant also addresses the merits, suggesting that Yamada is qualified, and the declaration satisfies the requirements of the federal rules. Defendant finally points out that the Reference has the seal of the Japanese Patent office and the signature of the certifying officer, and therefore needs no additional certification.
The affidavit will not be stricken for failure to comply with Rule 604. Yamada does not purport to be the individual who created the translation, therefore, Rule 604 does not require exclusion of the affidavit. In addition, plaintiff did not choose to challenge the authenticity of the translation in the previous round of summary judgment motions. However, the Court will allow plaintiff to submit its own translation, should plaintiff desire to do so.
This case will be placed on the Court's next available trial calendar.
ORDER
Based upon the foregoing, the submissions of the parties, the arguments of counsel and the entire file and proceedings herein, IT IS HEREBY ORDERED that:
1. Plaintiff's motion in limine [Docket No. 124] is GRANTED in part and DENIED in part as follows:
a. The motion is DENIED insofar as it seeks to exclude the defense of invalidity based on the Japanese reference.
b. The motion is DENIED insofar as it seeks to exclude the defense of invalidity based on Anchor's prior art of the Pinned Diamond Block product.
c. The motion is GRANTED insofar as it seeks to exclude the defense of invalidity based on the Rockwood Classic block.
2. Plaintiff's motion for partial summary judgment of validity and enforceability [Docket No. 128] is DENIED.
3. Defendants' motion for summary judgment (re: the '363 family of patents) [Docket No. 133] is DENIED.
4. Defendants' motion for partial summary judgment (re: the '015 family of patents) [Docket No. 136] is DENIED.
5. Defendants' motion to strike [Docket No. 167] is DENIED;
6. Plaintiff's motion to strike the declaration of Akira Yamada [Docket No. 172] is DENIED.